Application No. 14/057,672
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`REMARKS
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`Claims 1, 3-22 and 26-28 are pending. By this Amendment, claims 2, 21-25 and 28 are
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`canceled, claims 1, 9, 16, 17 and 26 are amended and no new claims are added.
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`Double Patenting
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`Claims 1-22 and 26-28 were rejected on the ground of non-statutory double patenting as
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`being unpatentable over claim 1 of U.S. Patent No. 7,548,875.
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`Claims 1-22 and 26-28 were provisionally rejected on the ground of non-statutory double
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`patenting as being unpatentable over claims 98 and 127 of copending Application No.
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`12/322,615.
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`Applicants will submit a terminal disclaimer once allowable subject matter is identified.
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`35 USC § 10]
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`Claims 1, 3-22 and 26-28 were rejected under 35 U.S.C. 101 because the claimed
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`invention is directed to non-statutory subject matter.
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`Applicants respectfully traverse.
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`Applicants have amended the independent claims to include limitations regarding the structure
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`that clearly warrant removal of the 101 rejection.
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`Applicants’
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`response is based on the Interim Guidelines on Patent Subject Matter
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`Eligibility promulgated by the USPTO on December 16, 2014.
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`In view of the Supreme Court
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`decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., Applicants respectfully
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`submit that the instant claims recite patentable subject matter under an analysis of Part 1. The
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`claims do not recite abstract
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`ideas such as, for example, fundamental economic practices,
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`methods of organizing human activities, ideas of themselves, or mathematical relationships or
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`mathematical formulas. Instead, the claims recite, for example, methods of wirelessly delivering
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`digital media from one or more servers to a wireless device having a digital signal processor for
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`transmission of media by OFDM, which is plainly outside of the ideas intended to be deemed
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`non-patentable by the Supreme Court.
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`Assuming, arguendo, that the instant claims are not identified as patentable subject
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`matter under Part 1, the instant claims recite significantly more than any abstract idea itself under
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`an analysis of Part 2. The claims recite the inventive results of an engineering solution to the
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`problem of the existing state of wireless delivery of rich media files. As a result, the instant
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`claims provide an improvement to wireless delivery of rich media technology. The rejection of
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`the remaining claims should be removed.
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`35 USC § 103
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`Claim 1 was rejected under 35 U.S.C. l03(a) as being unpatentable over Fritsch (US Pat.
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`6,247,130), previously applied, in view of Kochian (US Pat. 6,278,976) previously applied.
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`Claims 3 and 5-15 were rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Fritsch (US Pat. 6,247,130), previously applied, and Kochian (US Pat. 6,278,976) previously
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`applied, as applied to claim 1, further in view of Park et al. (US Pat. 6,470,030) previously
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`applied.
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`Claim 4 was rejected under 35 U.S.C. lO3(a) as being unpatentable over Fritsch (US Pat.
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`6,247,130), previously applied, and Kochian (US Pat. 6,278,976) previously applied, and Park et
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`al. (US Pat. 6,470,030) previously applied, as applied to claim 2, further in view of Lee (US Pat.
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`6,418,330) previously applied.
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`Claims 16, 17, 26 and 27 were rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Gudorf (US Pub. 2002/0116082) previously applied,
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`in view of Park et al. (US Pat.
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`6,470,030) previously applied.
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`Claims 18-20 were rejected under 35 U.S.C. 103(a) as being unpatentable over Gudorf
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`(US Pub. 2002/0116082) previously applied, and Park et al. (US Pat. 6,470,030) previously
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`applied, as applied to claim 16, further in view of Fritsch (US Pat. 6,247,130) previously applied.
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`Claims 21 and 28 were rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Fritsch (US Pat. 6,247,130), previously applied, in view of Chen et al. (US Pub. 2003/0115041)
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`previously applied.
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`Claim 22 was were rejected under 35 U.S.C. 103(a) as being unpatentable over Fritsch
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`(US Pat. 6,247,130), previously applied, and Chen et al. (US Pub. 2003/0115041) previously
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`applied, as applied to claim 21, further in view of Park (US Pat. 6,470,030) previously applied.
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`Applicants respectfiilly traverse. Applicants have canceled claims 2, 21-25 and 28 so the
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`response will deal with only the currently pending claims.
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`The Examiner asserts that Fritsch discloses a wireless device capable of receiving rich
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`media. Referring to the rejections based on Fritsch, Applicants respectfully submit that Fritsch
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`does not disclose electronic wireless devices with enough specificity, as claimed. Particularly,
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`Fritsch merely discloses a single boilerplate instance where the term “wireless” is used:
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`As a general overview, the present invention includes a system and method for
`maintaining a music web site on the Internet. Consumers may access the web site
`via a personal computer or any other wired or wireless Internet access device,
`such as WebTV, personal digital assistant, cellular telephone, etc., to obtain a
`variety of services and products.
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`(Fritsch, col. 2, 1. 64 — col. 3, 1. 2, emphasis added.) Otherwise, the entirety of Fritsch is directed
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`towards desktop computer or personal computer (PC) access to a vendor’s website.
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`It is difficult but necessary that the decision maker forget what he or she has been taught .
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`.
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`. about the claimed invention and cast the mind back to the time the invention was made (often
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`as here many years), to occupy the mind of one skilled in the art. W.L. Gore & Associates, Inc.
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`v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
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`(1984). To reach a proper determination under 35 U.S.C. § 103,
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`the examiner must step
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`backward in time and into the shoes worn by the hypothetical “person of ordinary skill in the art”
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`when the invention was unknown and just before it was made. In view of all factual information,
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`the examiner must then make a determination whether the claimed invention “as a whole” would
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`have been obvious at that time to that person.
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`(MPEP § 2142.) The disclosure of Fritsch does
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`not rise to the level required such that the claimed invention as a whole would have been obvious
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`to one skilled in the art, at the time the invention was made. Particularly, Fritsch does not
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`disclose the details necessary for wireless delivery of digital media to electronic wireless devices.
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`In response to the Exa1niner’s position on subject matter in the preamble, applicants have
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`amended independent claims 1, 9 and 16.
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`In order to advance prosecution, applicants have
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`amended the independent claims to read so that the digital signal processor configured for
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`OFDM is in the body of the claim. The rejection of claims 1 and 3-15 should be removed.
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`Application No. 14/057,672
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`With respect to the rejection of Claims 16, 17-20, 26 and 27 being unpatentable over
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`Gudorf (US Pub. 2002/0116082) in combination with Park et al. (US Pat. 6,470,030)
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`and
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`Fritsch, applicants respectfully traverse. Gudorf discloses a general purpose computer
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`configured to upload to a content server. The only delivery mechanism that has been mentioned
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`in the patent is sending and receiving information over the World Wide Web, such as through
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`web pages or files. For example, as cited by the Office Action:
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`First, the user encodes audio compact discs from red book format or an analog
`source into electronic digital files (step 202). The files are preferably compatible
`With MPEG-3 format or Sony’s ATRAC3 format and are encoded with a general
`purpose computer, such as computer 60, or a dedicated device. The user then
`causes end user computer 60 to access the content server 70 via the Internet 80
`(such as by logging onto a Web page) (step 204), supplies its User ID 112 (step
`206) and then uploads the files to the content server 70 (step 208).
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`(Gudorf, para. [0025]; emphasis added.) Particularly, Gudorf does not disclose the details
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`necessary for wireless delivery over a cellular network of digital media to a wireless device. To
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`firrther distinguish the present case, applicants have amended to include a cellular
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`communications network. The term “cellular” does not appear in Gudorf. As Gudorf is silent as
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`to any of the details of how wireless delivery over a cellular network of digital media to a
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`wireless device might be implemented, the rejections of Claims 16, 17-20, 26 and 27 should be
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`removed.
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