Lupercal LLC v. CitiBank, N.A.

Western District of Texas, txwd-6:2019-cv-00201

Exhibit PC12

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1 EXHIBIT PC12 1 UNITED STA TES p ATENT 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. 12/831,503 07/07/2010 Lisa T. Wood ADMI.0010002 2556 34611 7590 02/29/2016 EXAMINER LAW OFFICE OF DUANE S. KOBAYASHI P.O. Box 3207 HAILU, TADESSE Reston, VA 20195 ART UNIT PAPER NUMBER 2173 MAILDATE DELIVERY MODE 02/29/2016 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) Case 6:19-cv-00201-ADA Document 35-12 Filed 11/15/19 Applicant(s) Application No. Page 3 of 11 12/831,503 WOOD ET AL. Office Action Summary Examiner Art Unit AIA (First Inventor to File) Status TADEESE HAILU 2173 No -- The MAILING DA TE 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 .J. MONTHS 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)~ Responsive to communication(s) filed on 121712015. 0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on _ _. 2a)~ This action is FINAL. 2b)0 This action is non-final. 3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on _ _; the restriction requirement and election have been incorporated into this action. 4)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 G.D. 11, 453 O.G. 213. Disposition of Claims* 5)~ Claim(s) 105-131 is/are pending in the application. 5a) Of the above claim(s) _ _ is/are withdrawn from consideration. 6)0 Claim(s) _ _ is/are allowed. 7)~ Claim(s) 105-131 is/are rejected. 8)0 Claim(s) _ _ is/are objected to. 9)0 Claim(s) _ _ are subject to restriction and/or election requirement. * If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a participating intellectual property office for the corresponding application. For more information, please see http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PF'Hfeedback(wuspto.aov. Application Papers 10)0 The specification is objected to by the Examiner. 11)0 The drawing(s) filed on _ _ is/are: a)O accepted or b)O 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). Priority under 35 U.S.C. § 119 12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). Certified copies: a)O All b)O Some** c)O None of the: 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. _ _ . 3.0 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) ~ Notice of References Cited (PT0-892) 3) 0 Interview Summary (PT0-413) Paper No(s)/Mail Date. _ _ . 2) ~ Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b) Paper No(s)/Mail Date 7!6!15.7!29!15.11123/15.12114!15.1!13!16.. 4) 0 Other: _ _ . U.S. Patent and Trademark Office PTOL-326 (Rev. 11-13) Office Action Summary Part of Paper No./Mail Date 20160223 1 Application/Control Number: 12/831,503 Page 2 Art Unit: 2173 DETAILED ACTION 1. The present application is being examined under the pre-AIA first to invent provisions. This Office Action is in response to the Amendment filed December 7, 2015. Claims 1-104 have been canceled; and new claims 105-131 have been presented for examination. 2. Information Disclosure Statement submitted on 7/6/2015, 7/29/2015, 11 /23/2015 12/14/2015, and 1/13/2016 have been considered and entered into the file. Response to Arguments 3. No argument was presented. Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.-The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 1 Application/Control Number: 12/831,503 Page 3 Art Unit: 2173 4. Claims 105-131 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 104 recites in part: (similar languages also recited in the independent claims 114 and 123). an image identifier section that when executed, causes the image submission tool to generate a first thumbnail of an initial image, to enable a user to replace the initial image with a replacement image, to generate a second thumbnail of the replacement image, to enable a user to enter text information as a caption for the replacement image, and to pre-process the replacement image to produce a pre- processed image. wherein the pre-processing by the image submission tool is controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the replacement image as specified for use by a receiving party; The Specification of the published application at [0030] recites a user removing or replacing the mistaken image. Other than that, The Specification does not support~ to pre-process the replacement image to produce a pre- processed image ... " Furthermore, The Specification of the published application at [0015] recites that the Prepare and Post.TM. tools, which prepares and submits media objects from inside a standard browser, referred to as the first location, to a second location or server. But the Specification does not support "wherein the pre-processing bv the image submission tool is controlled bv one or more pre-processing parameters received from a device separate from the user device in a conversion of the replacement image as specified for use bv a receiving partv:" 1 Application/Control Number: 12/831,503 Page 4 Art Unit: 2173 Unsupported languages should be canceled from the claims or appropriate corrections are required. Claim Rejections - 35 USC § 103 The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 5. Claims 105-131 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hui et al (US 6,237,010) in view of Ueno et al (US 5,479,206). As per claim 105, Hui et al ("Hui") discloses a non-transitory computer-readable medium (Fig. 1) having an image submission tool stored thereon for use on a user device (computer-executable process steps stored on a computer-readable medium, the process steps for use on a computer system to create and publish (i.e., submit or post) a set of images, Abstract), the image submission tool including an image identifier section that when executed, causes the image submission tool to generate a first thumbnail of an initial image (for example, as shown in FIGS. 4 to 10, GUI 41 includes computer-generated workspace 59, which displays images collected (i.e., generated) by collecting step S301. Preferably these images are displayed as thumbnail versions of original, larger sized images, column 6, lines 46-53), to enable a user to replace the initial image with a replacement image (process 1 Application/Control Number: 12/831,503 Page 5 Art Unit: 2173 steps include code to compose displayed images by adding or deleting, from FlashPix files corresponding to the displayed images, Abstract, column 2, lines 6- 21), to generate a second thumbnail of the replacement image (for example, following tone correction of image 107, a new image can be selected for correction by pointing and clicking on an image in workbench 60, column 12, lines 11-17, and 48-53), to enable a user to enter text information as a caption for the replacement image (in addition to displaying images, workspace 59 can display information associated with each image, such as text (caption) or audio icon 96 shown in FIG. 10, column 9,lines 60-65, column 17, lines 40-43), and to pre-process the replacement image to produce a pre-processed image (compose displayed images by adding or deleting, from FlashPix files corresponding to the displayed images, information related to the displayed images, and/or corrected images displayed on the workbench; after correcting and composing images, the image is then published. Abstract), a submission section that when executed, causes the image submission tool to enable a user to confirm a submission of the pre-processed image (Workspace 59 is generated by process steps 21, and comprises a display area for displaying thumbnail versions 94 of the images collected (i.e., submitted to the workspace) in step 5301. Examples of thumbnail images 94 displayed in workspace 59 by step 5302 are shown, for example, in FIG. 10, column 9, lines 41-49); and an image upload control section that when executed, causes the image submission tool to transmit the pre-processed image (To begin publication in step 1 Application/Control Number: 12/831,503 Page 6 Art Unit: 2173 5311, a user selects "Publish" radio button 45 by, e.g., clicking thereon using pointing device 7, column 17, lines 8-22). FIG. 21 shows an example of a graphical user interface used by the present invention to publish composed and/or corrected images to the World Wide Web. Furthermore, Hui does teach processing images prior to uploading (i.e. pre- pressing), wherein as illustrated in process of Fig. 3 pre-processing includes collecting, correcting and composing images or thumbnails images. Furthermore, Hui discloses several parameters including viewing parameters which comprise transformations and the like that affect how the image is displayed (Abstract), However, although Hui disclose preprocessing parameters, said parameters are not received from a device separate from the user device as required in the claim. Ueno, according to a first aspect of his invention, discloses that the electronic camera, which has electronic image pick-up processing means for photographing a subject and producing image data representing an image of the photographed subject, and a computer system equipped with a display unit and an input unit and connected to the electronic camera by a communication line (see Host computer 30 and camera 10, Fig. 1). Ueno further discloses that the electronic camera executing photography in conformity with the set control parameters transmitted from the computer system (column 6, lines 46-53, and claim 34). At the time of the invention, it would have been obvious to a person of ordinary skill in the art to incorporate Ueno's image parameters received from a separate device (computer 30) with Hui's image parameters. The suggestion /motivation for doing so 1 Application/Control Number: 12/831,503 Page 7 Art Unit: 2173 would have been to utilize/apply uniform image parameters to images displayed on the workbench across connected client devices. Therefore, it would have been obvious to combine Hui with Ueno to obtain the invention as specified in claim 105. As per claim 114, Independent claim 114 is a method claim corresponding to computer-readable medium claim 105, and is believed to be unpatentable for at least the same reasons as described above in connection with claim 105 As per claim 123, Independent claim 123 is a device claim corresponding to computer-readable medium claim 105, and is believed to be unpatentable for at least the same reasons as described above in connection with claim 105 As per claims 106(medium), 115(method), and 124(device), Hui in view of Ueno discloses that the image identifier section when executed causes the image submission tool to generate the first visual representation from a first image file (Hui, FIGS. 4 to 10, Abstract, column 2, lines 6-21). As per claims 107(medium), 116(method), and 125(device), Hui in view of Ueno discloses that the pre- processed image has a compression level as specified by the one or more pre-processing parameters (Hui, column 7, lines 36-44, Figs. 7 and 16). As per claims 108(medium), 11 ?(method), and 126(device), Hui in view of Ueno discloses that the pre- processed image is cropped in a manner specified by the one or more pre-processing parameters (Hui, column 7, lines 39-44, Fig.7). As per claims 109(medium), 118(method), and 127(device), Hui in view of Ueno discloses that the pre- processed image has a physical dimension as specified by the 1 Application/Control Number: 12/831,503 Page 8 Art Unit: 2173 one or more pre-processing parameters (Hui, column 7, lines 39-44, column 14, lines 14-19, Figs. 7, and 16). As per claims 11 O(medium), 119(method), and 128(device), Hui in view of Ueno discloses that the pre- processed image has a quality as specified by the one or more pre-processing parameters (Hui, column 16, lines 60-column 17, lines 7, Fig. 16). As per claims 111 (medium), 120(method), and 129(device), Hui in view of Ueno discloses that the pre- processed image has a file format as specified by the one or more pre-processing parameters (Hui, column 8, lines 27-34). As per claims 112(medium), 121 (method), and 130(device), Hui in view of Ueno discloses that the pre- processed image has an encoding as specified by the one or more pre-processing parameters (Hui, column 5, lines 42-63). As per claims 113(medium), 122(method), and 131 (device), Hui in view of Ueno discloses that the image upload control section when executed causes the image submission tool to transmit the text information (Hui, Abstract, column 17, lines 40-43, Figs. 20 and 21). Conclusion 6. 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). 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 1 Application/Control Number: 12/831,503 Page 9 Art Unit: 2173 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 date of this final action. /TADEESE HAILU/ Primary Examiner, Art Unit 2173