Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 1 of 23
`
`EXHIBIT C
`(Part 4 of 4)
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`

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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 2 of 23
`
`Application No. 10/819,514
`Attorney Docket No. 127072.00111
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`6. (Original) The system of claim 5 wherein the digital media asset includes one or more
`of a foreground image, a background image or audio.
`
`7. (Original) The system of claim 5 wherein the computer-readable storage medium
`further contains one or more programming instructions for performing the following:
`receiving digital media content having a digital media asset; and
`storing the digital media content in the computer-readable storage medium.
`
`8. (New) The method of claim 1, wherein the video sequence is a television broadcast.
`
`9. (New) The method of claim 8, wherein the video sequence is distributed via a data
`communications network.
`
`10. (New) The method of claim 1, further comprising:
`
`identifying a future presentation;
`
`forming a personalized future presentation by associating the personalized content with
`the future presentation at a trigger corresponding to a video sequence position in the future
`presentation; and
`
`storing the personalized future presentation.
`
`1 1. (New) The method of claim 1, wherein the generating is also based on a stored user
`
`profile.
`
`12. (New) The method of claim 1, further comprising presenting, with the digital media
`asset, an interaction opportunity to the user to solicit the user responses.
`
`13. (New) The method of claim 5, wherein the video sequence is a television broadcast.
`
`14. (New) The method of claim 13, wherein the video sequence is distributed via a data
`communications network.
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 3 of 23
`
`Application No. 10/819,514
`Attorney Docket No. 127072.00111
`
`REMARKS
`
`Applicants would like to thank the Examiner for the substantive review in this case. In
`the non-final Office Action, the Office rejected claims 1-7. More specifically:
`
`• Claims 1-4 were rejected under 35 U.S.C. § 101 as being directed to non-
`statutory subject matter;
`
`• Claims 1-7 were rejected under 35 U.S.C.
`and
`
`§ 101 as lacking patentable unity;
`
`• Claims 1-7 were rejected under 35 U.S.C.
`Patent No. 5,574,787 to Dedrick.
`
`§ 102(b) as being anticipated U.S.
`
`Claims 1, 3 and 5 have been amended and claims 8-14 have been newly added.
`Independent claims 1 and 5 have been amended to further define a personalized digital media
`asset. Support for the amendments to claims 1 and 5 can be found in the specification as
`
`originally published at paragraphs 0075, 0089, 0118, 0119 and Figure 3. Claim 3 has been
`amended to conform with amended claim 1. Support for claims 8-14 can be found in the
`
`specification as published at paragraphs 0008, 0075 and 0077-0079. Accordingly, no new matter
`has been added as a result of these amendments.
`
`Upon entry of these amendments, claims 1-14 will be pending. For the reasons set forth
`hereinbelow, Applicants request that the §§ 101 and 102(b) rejections associated with the
`
`pending claims be withdrawn.
`
`35 U.S.C. 4 101 Rejections
`
`Claims 1-4 were rejected under 35 U.S.C. § 101 as being directed to non-statutory subject
`matter. Specifically, claim 1 fails to recite a particular apparatus or transform an article to a
`different state. As amended, claim 1 now meets both standards of statutory subject matter. An
`article, a personalized digital media asset, is transformed from a first state, a logical data
`representation, to a stored personalized digital media asset on a particular apparatus, a computer-
`readable storage medium. For at least this reason, claim 1 recites statutory subject matter.
`Accordingly, Applicants request that the § 101 rejections associated with claims 1-4 be
`withdrawn.
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 4 of 23
`
`Application No, 10/819,514
`Attorney Docket No. 127072.00111
`
`Similarly, claims 1-7 were rejected under 35 U.S.C. § 101 as lacking patentable utility.
`Specifically, "storing the association" provides neither specific nor substantial utility. As
`amended, independent claims 1 and 5 both recite a form of "storing a personalized digital media
`asset on a computer-readable storage medium." Utility is provided in the amended claims as a
`personalized digital media asset is specifically stored on a computer readable medium. For at
`least this reason, claims 1 and 5 recite statutory subject matter. Accordingly, Applicants request
`that the § 101 rejections associated with claims 1-7 be withdrawn.
`
`Claims 1-4
`
`Amended independent claim 1 is not anticipated by Dedrick because Dedrick fails to
`teach or suggest each and every limitation of independent claim 1. See MPEP § 2131 (stating
`that a claim is anticipated only if each and every element set forth in the claim is found, either
`expressly or inherently described, in a single prior art reference). More particularly, Dedrick
`fails to teach or suggest, among other things, "receiving, from the user in response to the
`presenting, user responses to interactive opportunities; generating personalized content based
`upon the user responses; associating the personalized content with at least one trigger in the
`digital media asset, wherein each trigger indicates a time in the digital media asset when the
`personalized content is directly associated with the digital media asset" as required by claim 1.
`Dedrick discloses an information routing system including a router that transmits
`electronic information when connected to multiple parallel but bandwidth diverse channels. The
`information to be routed is appended to include a minimum transfer bandwidth required, and this
`appended data is read by the router and forwarded on a transfer channel having the required
`available bandwidth. See Dedrick at Abstract. The system of Dedrick does not alter the data to
`be transmitted, the system only appends a label to the data including the minimum required
`bandwidth for forwarding the data. See id. at Figure 8a, and 19:15-51.
`In contrast, claim 1 requires a generation of personalized content based upon a series of
`user responses to a digital media asset. The personalized content is associated with at least one
`trigger, the trigger indicating a time in the digital media asset when the personalized content is
`directly associated with the digital media asset. The trigger, the digital media asset and the
`personalized content is then stored on a computer-readable storage medium as a personalized
`digital media asset. This is in direct contrast to Dedrick where the transmitted data, narrative
`
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 5 of 23
`
`Application No. 10/819,514
`Attorney Docket No. 127072.00111
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`content, is not modified to include a trigger, but a label is appended to the data indicating
`
`minimum required transfer bandwidth. Dedrick teaches appending the data to include the
`attribute directly, not modifying the data to include a trigger indicating an association with a
`digital media asset, and thereby the personalized content, as is required by claim 1.
`
`Accordingly, for at least this reason, claim 1 is not anticipated by Dedrick because
`Dedrick fails to disclose each and every element of independent claim 1. See MPEP § 2131.
`Claims 2-4, which depend from and incorporate all of the limitations of claim 1, are likewise not
`anticipated by Dedrick. Accordingly, Applicants request that the rejections associated with
`claims 1-4 be reconsidered and withdrawn.
`
`Claims 5-7
`
`Amended independent claim 5 is not anticipated by Dedrick because Dedrick fails to
`teach or suggest each and every limitation of independent claim 5. See MPEP § 2131. More
`particularly, Dedrick fails to teach or suggest, among other things, "receiving, from the user in
`response to the presenting, user responses to interactive opportunities; generating personalized
`content based upon the user responses; associating the personalized content with at least one
`trigger in the digital media asset, wherein each trigger indicates a time in the digital media asset
`when the personalized content is directly associated with the digital media asset" as required by
`claim 5.
`
`For substantially the same reasons as set forth above in reference to claim 1, claim 5 is
`not anticipated by Dedrick because Dedrick fails to disclose each and every element of
`independent claim 5. See MPEP § 2131. Claims 6 and 7, which depend from and incorporate all
`of the limitations of claim 5, are likewise not anticipated by Dedrick. Accordingly, Applicants
`request that the rejections associated with claims 5-7 be reconsidered and withdrawn.
`
`Claims 8-14
`
`Newly added claims 8-12 further define claim 1 to include additional embodiments.
`Specifically, newly added claims 8 and 9 further define the video sequence to include a
`television broadcast distributed over a data communications network. Newly added claim 10
`defines an alternative embodiment including a future personalized presentation. Newly added
`claims 11-12 further define a digital media asset as being identified from a plurality of stored
`
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 6 of 23
`
`Application No, 10/819,514
`Attorney Docket No. 127072.00111
`
`digital media assets based upon a user selection. The user selection may be based upon user
`supplied answers to one or more questions, or to a stored user profile.
`
`Each of the newly added claims 8-12 depend from and incorporate all of the limitations
`of claim 1. As such, the newly added claims 8-12 are allowable over the prior art, specifically
`Dedrick.
`
`Newly added claims 13-14 further define claim 5 to include additional embodiments.
`Specifically, newly added claims 13-14 further define the video sequence to include a television
`broadcast distributed over a data communications network. Each of newly added claims 13-14
`depend from and incorporate all of the limitations of claim 5. As such, newly added claims 13-
`14 are allowable over the prior art, specifically Dedrick.
`
`All of the stated grounds of rejection have been properly traversed, accommodated or
`rendered moot. Applicants therefore respectfully request that the Examiner reconsider and
`withdraw all presently outstanding rejections and objections. There being no other rejections or
`objections, Applicants respectfully request that the current application be allowed and passed to
`issue.
`
`If the Examiner believes for any reason that personal communication will expedite
`prosecution of this application, I invite the Examiner to telephone me directly.
`
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 7 of 23
`
`Application No. 10/819,514
`Attorney Docket No. 127072.001 1 1
`
`A UTHORIZATION
`
`The Commissioner is hereby authorized to charge any additional fees which may be
`required for this Amendment and Response, or credit any overpayment, to Deposit Account No.
`50-0436.
`
`Respectfully submitted,
`PEPPER HAMILTON LLP
`
`Jdhn R. Brancolini
`Registration No. 57,218
`
`Pepper Hamilton LLP
`One Mellon Center, 50th Floor
`500 Grant Street
`Pittsburgh, PA 15219-2502
`Telephone: (412) 454-5000
`Facsimile:
`(412) 281-0717
`Date: March 2, 2009
`
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 8 of 23
`
`UNITED STA1LS PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`10/819,514
`
`04/07/2004
`
`David J. Russek
`
`127072.111
`
`5822
`
`21269
`
`7590
`
`PEPPER HAMILTON LLP
`ONE, MELLON CENTER, 50TH FLOOR
`500 GRANT STREET
`PITTSBURGH, PA 15219
`
`(15/27/201)9
`
`EXAMINER
`
`CHAMPAGNE, DONALD
`
`ART UNIT
`
`PAPER NUMBER
`
`3688
`
`MAIL DATE
`
`DELIVERY MODE
`
`05/27/2009
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 9 of 23
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`10/819,514
`
`Examiner
`
`RUSSEK, DAVID J.
`
`Art Unit
`
`3688
`Donald L. Champagne
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)1 Responsive to communication(s) filed on 02 March 2009.
`2a) This action is FINAL.
`2b)1] This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11,453 0.G. 213.
`
`Disposition of Claims
`
`4) Claim(s) 1-14 is/are pending in the application.
`4a) Of the above claim(s)
` is/are withdrawn from consideration.
` is/are allowed.
`5)I=1 Claim(s)
`6)1 Claim(s) 1-14 is/are rejected.
`7)0 Claim(s)
` is/are objected to.
`8)0 Claim(s)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`10)1 The drawing(s) filed on 07 April 2004 is/are: a)I accepted or b)E1 objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`1 1)0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)1] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`b)1=1Some * c)1=1 None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No.
`3.1=1 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`2)
`3)
`
`Notice of References Cited (PTO-892)
`Notice of Draftsperson's Patent Drawing Review (PTO-948)
`Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`
`4)
`
`5)
`6)
`
`Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`Notice of Informal Patent Application
`Other:
`.
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20090525
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 10 of 23
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`Application/Control Number: 10/819,514
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`Page 2
`
`Art Unit: 3688
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 101
`
`1. 35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter,
`or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
`requirements of this title.
`
`2. Claims 1-4 and 8-12 are rejected under 35 U.S.C. 101 because the claimed invention is not
`
`directed to statutory subject matter. Based on Supreme Court precedent, to be patent
`
`eligible under 35 U.S.C. 101 a method/process claim must (1) be tied to a particular
`
`machine or apparatus or (2) transform a particular article into a different state or thing (see
`
`at least Gottschalk v. Benson, 409 U.S. 70(1972); Diamond v. Diehr, 450 U.S. 192 (1981);
`
`Parker v. Flook, 437 U.S. 589 n.9 (1978); and Cochrane v. Deener, 94 U.S. 780, 788
`
`(1876)). Furthermore, the Supreme Court held that the use of a specific machine or
`
`transformation of an article must impose meaningful limits on the claim's scope to impart
`
`patentability (Benson, 409 U.S. 71-72). The involvement of the machine or transformation
`
`m ust not merely be insignificant extra-solution activity (Flook, 437 U.S. 590). Also see In re
`
`Bilski, No. 2007-1130, _F.3d_, 2008 WL4757.
`
`3. The instant claims fail to meet this test. The claims fail to transform a particular article into a
`
`different state or thing. The claims are tied to a machine or apparatus, a "display server"
`
`and a "computer-readable storage medium", but this is at best a nominal recitation that does
`
`not qualify as a specific machine and does not impose a meaningful limitation. Said
`
`machines or apparatus are used for "storing" and "displaying", which is regarded to be
`
`insignificant extra-solution activity that does not impose meaningful limits on the claim's
`
`scope. Limiting the "generating" and "associating" steps to use of a particular machine or
`
`apparatus might make the claims statutory.
`
`Claim Rejections - 35 USC § 102
`
`4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 11 of 23
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`Application/Control Number: 10/819,514
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`Page 3
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`Art Unit: 3688
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`5. Claims 1-14 are rejected under 35 U.S.C. 102(b) as being anticipated by Srinivasan et al.
`
`(U5006357042B21, hereafter "Srinivasan").
`
`6. Srinivasan teaches (independent claims 1 and 5) a method and system of associating
`
`attributes with digital media assets (col. 1 lines 38-42), the method comprising:
`
`identifying a digital media asset (a main video data stream, col. 1 lines 17-20) stored on
`
`a computer-readable storage medium (mass storage devices, col. 2 lines 1-8).
`
`presenting, to a user via a display server, the digital media asset as a video sequence
`
`(presenting the dynamic result as a display on the TV screen, col. 2 lines 1-8);
`
`receiving, from the user in response to the presenting, user responses to interactive
`
`opportunities (col. 15 lines 51-56);
`
`generating personalized content based upon the user responses (col. 31 lines 48-57);
`
`associating the personalized content with at least one trigger in the digital media asset
`
`(preferences made by users interactively, col. 31 lines 51-53), wherein each trigger indicates
`
`a time in the digital media asset when the personalized content is directly associated with
`
`the digital media asset (col. 32 line 57 to col. 33 line 3);
`
`storing a personalized digital media asset on a computer-readable storage medium, the
`
`personalized digital media asset comprising the digital media asset, the trigger, and the
`
`personalized content (col. 31 line 58 to col. 32 line 21); and
`
`presenting the personalized digital media asset as a video sequence to a user via a
`
`display screen so that the personalized content is presented at a point in the video
`
`sequence corresponding to the trigger (col. 31 lines 51-53 and col. 32 lines 15-21).
`
`7. Srinivasan also teaches at the citations given above claims 2 and 6 (inherently for television)
`
`and 7-9, 10 (the VOD, col. 31 line 58 to col. 32 line 21, reads on a "future presentation") and
`
`1 1-14.
`
`8. Srinivasan also teaches claim 3 (col. 7 lines 47-49).
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 12 of 23
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`Application/Control Number: 10/819,514
`
`Page 4
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`Art Unit: 3688
`
`Response to Arguments
`
`9. Applicant's arguments filed with an amendment on 2 March 2009 have been fully considered
`
`but they are moot in view of the new basis of rejection.
`
`Conclusion
`
`10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is
`
`reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
`
`1 1. A shortened statutory period for reply to this final action is set to expire THREE MONTHS
`
`from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of
`
`the mailing date of this final action and the advisory action is not mailed until after the end of
`
`the THREE-MONTH shortened statutory period, then the shortened statutory period will
`
`expire on the date the advisory action is mailed, and any extension fee pursuant to 37
`
`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
`
`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
`
`date of this final action.
`
`12. Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Donald L Champagne whose telephone number is 571-272-6717. The
`
`examiner can normally be reached Monday to Wednesday and Friday. The examiner can
`
`also be contacted by e-mail at donald.champagneguspto.aov, and informal fax
`
`communications (i.e., communications not to be made of record) may be sent directly to the
`
`examiner at 571-273-6717.
`
`13. The examiner's supervisor, James W. Myhre, can be reached on 571-272-6722.
`
`14. Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published
`
`applications may be obtained from either Private PAIR or Public PAIR. Status information
`
`for unpublished applications is available through Private PAIR only. For more information
`
`about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on
`
`1 Made of record with the IDS filed 30 September 2008, where the lead inventor's name is misspelled as
`"Srin".
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 13 of 23
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`Application/Control Number: 10/819,514
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`Page 5
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`Art Unit: 3688
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`access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-
`
`217-9197 (toll-free).
`
`15. AFTER FINAL PRACTICE — Consistent with MPEP § 706.07(f) and 713.09, prosecution
`
`generally ends with the final rejection. Examiner will grant an interview after final only when
`
`applicant presents compelling evidence that "disposal or clarification for appeal may be
`
`accomplished with only nominal further consideration" (MPEP § 713.09). The burden is on
`
`applicant to demonstrate this requirement, preferably in no more than 25 words.
`
`Amendments are entered after final only when the amendments will clearly simplify issues,
`
`or put the case into condition for allowance, clearly and without additional search or more
`
`than nominal consideration.
`
`16. Applicant may have after final arguments considered and amendments entered by filing an
`
`RCE.
`
`17. Applicant is advised that, unless a proposed amendment is filed after final and the examiner
`
`returns an advisory action with block 3(a) checked (signifying that further search or
`
`consideration is required), an amendment filed with an RCE COULD BE MADE FINAL IN
`
`THE FIRST ACTION in accordance with MPEP § 706.07(b).
`
`18. ABANDONMENT — If examiner cannot by telephone verify applicant's intent to continue
`
`prosecution, the application is subject to abandonment six months after mailing of the last
`
`Office action. The agent, attorney or applicant point of contact is responsible for assuring
`
`that the Office has their telephone number. Agents and attorneys may verify their
`
`registration information including telephone number at the Office's web site, www.uspto.gov.
`
`At the top of the home page, click on Site Index. Then click on Agent & Attorney Roster in
`
`the alphabetic list, and search for your registration by your name or number.
`
`25 May 2009
`
`/Donald L. Champagne/
`Primary Examiner, Art Unit 3688
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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 14 of 23
`
`U.S. Patent Application Serial No. 10/819,514
`Attorney Docket No. 127072.001 11
`Date of Document: November 25, 2009
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`
`David J. R .sek
`
`: Confirmation No.: 5822
`
`Serial No,:
`
`10/819,514
`
`:
`
`Group Art Unit: 3688
`
`Filed:
`
`April 7, 2004
`
`:
`
`Examiner: Donald Champagne
`
`Title: METHOD, SYSTEM AND SOFTWARE FOR ASSOCIATING
`
`ATTRIBUTES WITH IN DIGITAL MEDIAIPRES.ENTATIONS
`
`AMENDMENT AND REQUEST FOR CONTINUED -EXAMINATION
`
`Mail Stop RCE
`Commissioner for Patents
`P.O. Box 1.450
`Alexandria, VA 22313-1450
`
`This Amendment is filed in response to the Final Office Action mailed May 27,
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`2009 in the above-identified application, A Request for Continued Examination and Petition for
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`a Three-Month Extension of Time are submitted with this
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`Amendments to the Claims begin on page 2.
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`Remarks begin on page 4.
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`1 OTales000041 5
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`

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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 15 of 23
`
`U.S. Patent Application Serial No. 10/819,514
`Attorney Docket No. 127072.00111
`Date of Document: November 25, 2009
`
`In the preceding case, the Examiner indicated that claims 1-14 in the previous
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`REMARKS
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`application were not allowable over US006357042B2 (Srinivasan et al., hereafter referred to as
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`Srinivasan) under 35 ESC. §102(b). The Examiner cited particular sections of Stinivasan in
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`support of his arguments.
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`Without waiving any right to re-present the claims, Applicant has canceled claims
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`1-14 and presented new claims 15 and 16, Applicant respectfully submits that newly presented
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`claim 15 is not anticipated by Srinivasan under 35 U.S.C. §102(b) because, among other things.
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`Srinivasan does not utilize social network informationobtained from a source external to the
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`pre se n tati (e ,g \ ideo d sp lay o f S rin v a san ), Support fbr the utihzanon of social network or
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`social database informat'
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`can be found in paragraph 0089 of the originally filed application.
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`Furthermore, newly presented claim 15 articulates the creation of the second set
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`of digital media assets through rule based substitution. This is performed in order to allow parts
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`of the media display (o .g. background, timing, audio) to be 'varied in a way that does not destroy
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`the flow. Such substitution is supported by at least paragraphs 0119 and 0120 of the originally
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`filed application and are not disclosed or taught in Srinivasan, which simply teaches the selection
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`of a particular analog video stream at a branch point (e.g., see, col. 23,11. 57 --- 58 of Srinivasan),
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`Applicant submits that newly filed claim 15 and dependent claim 1' are
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`distinguished over Srinivasan, and that the application in is form for allowance, which is
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`respectfully requested,
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`If the Examiner believes for any reason that personal communication will
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`expedite prosecution of this application, I invite the Examiner to telephone me directly.
`
`-4-
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`10Tales0000416
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`

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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 16 of 23
`
`U.S. Patent Application Serial No. 10/819,514
`Attorney Docket No. 127072.00111
`Date of Document: November 25, 2009
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`A UTHORIZATH N
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`The Connnissioner is hereby authorized to charge any additional fees which may be
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`required for this Amendment and Response, or credit any overpayment, to Deposit Account No.
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`50-0436.
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`Respectfully submitted.submitted,
`
`PEPPER HAMILTON LIP
`
`James M. Singer
`Registration No. 45,111
`
`Pepper Hamilton LLP
`One Mellon Center, 50th Floor
`500 Grant Street
`Pittsburgh, PA 15219-2502
`Telephone: (412) 454-5000
`(412) 281-0717
`-Facsimile:
`Date: November 25, 2009
`
`1 OTales000041 7
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`

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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 17 of 23
`
`PTO/SB/06 (07-06)
`Approved for use through 1/31/2007. OMB 0651-0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`ersons are required to respond to a collection of information unless it displays a valid OMB control number.
`Under the Paperwork Reduction Act of 1995, no
`Application or Docket Number
`Filing Date
`PATENT APPLICATION FEE DETERMINATION RECORD
`10/819,514
`04/07/2004 0 To be Mailed
`Substitute for Form PTO-875
`
`APPLICATION AS FILED — PART I
`(Column 1)
`
`(Column 2)
`
`SMALL ENTITY
`
`OR
`
`SMALL ENTITY
`
`OTHER THAN
`
`FOR
`
`N UMBER FILED
`
`NUMBER EXTRA
`
`RATE ($)
`
`FEE ($)
`
`RATE ($)
`
`FEE ($)
`
`O BASIC FEE
`(37 CFR 1.16(a). (b), 01(c))
`
`O SEARCH FEE
`(37 CFR 1.16(k), (i), or (m))
`
`O EXAMINATION FEE
`(37 CFR 1.16(0). (p), 01(q))
`TOTAL CLAIMS
`(37 CFR 1.16(i))
`INDEPENDENT CLAIMS
`(37 CFR 1.16(h))
`
`['APPLICATION SIZE FEE
`(37 CFR 1.16(s))
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`minus 20 = *
`
`minus 3 = *
`
`N/A
`
`N/A
`
`N/A
`
`N/A 4_
`
`N/A
`
`N/A
`
`OR
`
`X $
`
`=
`
`x $
`
`x $
`
`If the specification and drawings exceed 100
`sheets of paper, the application size fee due
`is $250 ($125 for small entity) for each
`additional 50 sheets or fraction thereof. See
`35 U.S.C. 41(a)(1)(G) and 37 CFR 1.16(s).
`
`0 MULTIPLE DEPENDENT CLAIM PRESENT (37 CFR 1.16(j))
`
`* If the difference in column 1 is less than zero, enter "0" in column 2.
`
`TOTAL
`
`TOTAL
`
`APPLICATION AS AMENDED — PART II
`
`(Column 1)
`
`(Column 2)
`
`(Column 3)
`
`SMALL ENTITY
`
`OR
`
`SMALL ENTITY
`
`OTHER THAN
`
`11/25/2009
`
`RATE ($)
`
`RATE ($)
`
`ADDITIONAL
`FEE ($)
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`2
`1
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`20
`3
`
`Minus
`
`Minus
`
`Total (37 CFR
`1.165)
`Independent
`(37 CFR 116(5)
`
`=0
`=0
`
`0 Application Size Fee (37 CFR 1.16(s))
`
`Ei FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.165)
`
`PRESENT
`EXTRA
`
`ADDITIONAL
`FEE ($)
`
`X $26 =
`
`X $11O=
`
`TOTAL
`ADD'L
`FEE
`
`0
`0
`
`0
`
`OR X$
`
`OR X$
`
`OR
`
`TOTAL
`OR ADD'L
`FEE
`
`X$
`
`X$
`
`TOTAL
`ADD'L
`FEE
`
`OR
`
`OR
`
`OR
`
`OR
`
`X$ =
`
`X $
`
`TOTAL
`ADD'L
`FEE
`
`(Column 2)
`
`(Column 3)
`
`(Column 1)
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`Total (37 CM
`1.160))
`Independent
`(37 CFR 1.16(61)
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`Minus
`
`**
`
`Minus
`
`***
`
`0 Application Size Fee (37 CFR 1.16(s))
`
`ri FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16(j))
`
`PRESENT
`EXTRA
`
`RATE ($)
`
`ADDITIONAL
`FEE ($)
`
`RATE ($)
`
`ADDITIONAL
`FEE ($)
`
`AMENDMENT
`
`AMENDMENT
`
`* If the entry in column 1 is less than the entry in column 2, write "0" in column 3.
`
`** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 20. enter "20".
`
`*** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter "3".
`
`Legal Instrument Examiner:
`/Renee Collins/
`
`The "Highest Number Previously Paid For" (Total or Independent) is the highest number found in the appropriate box in column 1.
`
`This collection of information is required by 37 CFR 1.16. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering,
`preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you
`require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office. U.S.
`Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`10Tales0000418
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`

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`Case 6:20-cv-00810-ADA Document 73-12 Filed 04/23/21 Page 18 of 23
`
`U.S. Patent Application Serial No. 10/819,514
`Attorney Docket No. 127072.00111
`Date of Document: November 25, 2009
`
`A MENDMENTS TO THE CLAIMS
`
`What Is Claimed Is:
`
`1.-14. (Cancelled)
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`1 5. (New) A system for associating user attributes with digital media asset attributes and
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`creating a user specific composite digital media display, the system comprising:
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`a) a server;
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`b) a computer-readable storage medium operably connected;
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`c) wherein the computer-readable storage medium c