Lupercal LLC v. CitiBank, N.A.

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

Exhibit PC13

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4 EXHIBIT PC13 4 UNITED STATES 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. 12/831,503 07/07/2010 Lisa T. Wood ADMI.0010002 2556 34611 7590 03/14/2018 EXAMINER LAW OFFICE OF DUANE S. KOBAYASHI 1325 Murray Downs Way HAILU. TADESSE Res ton, VA 20194 ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 03/14/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): dskobayashi@verizon.net PTOL-90A (Rev. 04/07) Case 6:19-cv-00201-ADA Document 35-13 Filed 11/15/19 Applicant(s) Application No. Page 3 of 14 12/831,503 Wood etal. Office Action Summary Examiner Art Unit AIA Status TADESSE 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 3 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 30 September 2017 0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on 2a)O This action is FINAL. 2b) ~ 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 C.D. 11, 453 O.G. 213. Disposition of Claims* 5) ~ Claim(s) 105-133 is/are pending in the application. 5a) Of the above claim(s) _ _ is/are withdrawn from consideration. 6) O Claim(s) _ _ is/are allowed. 7) ~ Claim(s) 105-133 is/are rejected. 8) O Claim(s) _ _ is/are objected to. 9) O 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 PPHfeedback@uspto.gov. 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) O Interview Summary (PT0-413) Paper No(s)/Mail Date _ _ . 2) O Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b) 4) 0 Other: _ _ . Paper No(s)/Mail Date _ _ . U.S. Patent and Trademark Office PTOL-326 (Rev. 11-13) Office Action Summary Part of Paper No./Mail Date 20180308 4 Application/Control Number: 12/831,503 Page2 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 and Response filed with RCE on September 30, 2017. Please note the Amendment and Response papers filed on September 30, 2017 are labeled by a wrong application number 14/107, 261. The correct application number should read as 12/831,503. 2. Claims 105-133 have been presented for examination. Response to Arguments 3. Applicant's arguments filed September 30, 2017 have been fully considered. In regard to the 35 USC§ 112 rejection, the applicant's response/arguments is not persuasive. No sufficient support indicated to overcome the rejection because the indicated paragraphs 0016 and 0020 do not disclose or support to teach "to pre-process the replacement image to produce a pre- processed image. 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 party" In regard to the 35 USC§ 103 rejection, the applicant argues about the motivation given to combine Hui et al (US 6,237,010) and Ueno et al (US 5,479,206). In the previous Office Action, it was the examiner's position that "one or more pre-processing parameters received from a device separate from the user device" is no disclosed by Hui. But after further reviewing the claimed limitation, "one or more preprocessing ... a device separate from the user device", it is clear that Hui does teach the argued limitation. For example in addition to software, files, including Flash Pix image files 22, are stored on computer disk 16. These 4 Application/Control Number: 12/831,503 Page3 Art Unit:2173 FlashPix files may be generated by application programs 19, or obtained from other sources, such as the World Wide Web, an external hardware device (e.g., a camera, a scanner), etc. Flashpix files store (1) the image in multiple resolutions, (2) viewing parameters which comprise transformations and the like that affect how the image is displayed, and (3) information relating to the image, such as the date that the image was formed, the hardware device that formed the image, settings on such a hardware device, etc. In addition, FlashPix files can also include an "extension list", which is used to store additional information for an image. See Column 4, lines 14-28, column 4, lines 55-67, and column 5, lines 65-column 6, lines 15. Thus, since Hui discloses FlashPix files may be generated by application programs 19, or obtained from other sources, such as the World Wide Web, an external hardware device (e.g., a camera, a scanner), etc., Ueno, the secondary reference is not needed or no longer applied. Applicants submit that the Examiner's usage of Hui to show Applicants' claimed recitation "to enable a user to replace the initial image with a replacement image" is in error. The examiner disagrees. The examiner interpreted "a replacement image" as a replaced, modified, edited or changed image. Thus, several sections of Hui describes correcting or editing or replacing one image by another modified or edited image when a FlashPix image is corrected, as in step S307, viewing parameters in the FlashPix file corresponding to the image are changed, but the raw image data for the image itself is not changed. Column 2, lines 6-21, also column 10, see Image Correction. Since the claimed" ... a replacement image" does not necessary mean a new image, by broad interpretation, Hui reads over the limitation. As per the applicant's argument directed to the amended dependent claims 106, 115 and 124, Hui in view of the Admitted Prior at teaches the claimed invention. 4 Application/Control Number: 12/831,503 Page4 Art Unit:2173 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. 4. Claims 105-133 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 105 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 ... " 4 Application/Control Number: 12/831,503 Pages Art Unit:2173 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 parlv;" Unsupported languages should be canceled from the claims or appropriate corrections are required. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of pre-AIA 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 - (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371 (c) of this title before the invention thereof by the applicant for patent. The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)). 5. Claims 105, 107-114, 116-123, and 125-133 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Hess et al (US 6058417). 4 Application/Control Number: 12/831,503 Page6 Art Unit:2173 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 5301. 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 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), wherein the pre-processing by the image submission tool is controlled by one or 4 Application/Control Number: 12/831,503 Page? Art Unit:2173 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 (For example in addition to software, files, including FlashPix image files 22, are stored on computer disk 16. These FlashPix files may be generated by application programs 19, or obtained from other sources, such as the World Wide Web, an external hardware device (e.g., a camera, a scanner), etc. See Column 4, lines 14-28, column 4, lines 55-67, and column 5, lines 65- column 6, lines 15. 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 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. 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 4 Application/Control Number: 12/831,503 Pages Art Unit:2173 As per claims 107(medium), 116(method), and 125(device), Hui discloses that the pre- processed image has a compression level as specified by the one or more pre-processing parameters (Hui, during collection step, image is acquired and scan resolution, image size, image scale, and/or output size, etc., is specified, Fig. 7, column 7, lines 29-53). As per claims 1OS(medium), 11 ?(method), and 126(device), Hui discloses that the pre- processed image is cropped in a manner specified by the one or more pre-processing parameters (Hui, during collection step, image is acquired and scan resolution, image size, image scale, and/or output size, etc., is specified by the user, Fig. 7, column 7, lines 29-53). As per claims 109(medium), 118(method), and 127(device), Hui discloses that the pre- processed image has a physical dimension as specified by the one or more pre-processing parameters ((Hui, during collection step, image is acquired and scan resolution, image size, image scale, and/or output size, etc., is specified by the user, Fig. 7, column 7, lines 29-53). As per claims 11 O(medium), 119(method), and 128(device), Hui discloses that the pre- processed image has a quality as specified by the one or more pre-processing parameters (Hui, during collection step, image is acquired and scan resolution, image size, image scale, and/or output size, etc., is specified by the user, Fig. 7, column 7, lines 29-53). As per claims 111 (medium), 120(method), and 129(device), Hui 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 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). 4 Application/Control Number: 12/831,503 Page9 Art Unit:2173 As per claims 113(medium), 122(method), and 131 (device), Hui 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). As per claims 132, Hui discloses that the user device of claim 123, wherein the submission section causes the image submission tool to enable a user to confirm a submission of a plurality of pre-processed images as part of a batch submission (Hui, Figs. 24 and 25, column 1, lines 6-12, column 2, lines 51-57, column 18, lines 10-12). As per claims 133, Hui discloses that the user device of claim 132, wherein the submission section causes a display of a plurality of thumbnails associated with the plurality of pre-processed images in the batch submission (Hui, Figs. 24 and 25, column 18, lines 10-12). 6. Claims 105, 114 and 123 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Hess et al (US 6058417). Hess relates generally to the field of online commerce. More particularly, Hess relates to information presentation and management in an online trading environment, such as an online shopping site, an online auctioning site, an online e-commerce site, an online person-to-person trading site, or the like. As per claims 105, 114 and 123, Hess discloses a non-transitory computer-readable medium having an image submission tool stored thereon for use on a user device (e.g. instructions stored memory of Fig., 3 or storage of 4), the image submission tool (Figs. 6A and 68) including: an image identifier section (Fig. 68) that when executed, causes the image submission tool to generate a first thumbnail of an initial image (see Gallery page Figs. 9A- 98), 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 4 Application/Control Number: 12/831,503 Page1 O Art Unit:2173 caption for the replacement image, and to pre-process the replacement image to produce a pre- processed image (see Item Maintenance section, column 6), 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 (e.g., at step 810, the predetermined page format, e.g.,, the Gallery template is obtained from remote database, Fig, 8; column 9, lines 10- 45. Also see Item Presentation section, column 8-9) a submission section that when executed, causes the image submission tool to enable a user to confirm a submission of the pre-processed image; and an image upload control section that when executed, causes the image submission tool to transmit the pre-processed image (user aa user selects a document by submitting a URL, see Client-Server environment, column 4). Claim Rejections - 35 USC§ 103 The following is a quotation of pre-A IA 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. 7. Claims 106, 115 and 124 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 Admitted Prior Art. As per clams 106, 115 and 124, Hui disclose a system, for use on a computer system, creates and publishes a set of images, each image in the set being stored in a Flas!1Pix file which contains at least the image in multiple resolutions< viewing parameters for viewing the 4 Application/Control Number: 12/831,503 Page11 Art Unit:2173 image, and information related to the image. The system includes displaying, on a computer·· generated workbench, a plurality of images retrieved frorn FlashPix files, and correcting images displayed in the workbench. See at least abstract. Thus, Hui discloses "the image identifier section when executed causes the image submission tool to generate the first H1umbnail from a first irnage file," But Hui is does nol clearly discloses" enablinq a user of the image submission tool to drag and drop, via a web browser interface, a second image tile as a one for one replacement for the first image file". However, the claimed limitation is only sl1own/recited in the Background of the invention section, it is adrnitted prior art See [0007] below. [0007] a broad-based solution to the foregoing problem requires a web-based media submission tool that allows for submission of media objects in a convenient, intuitive manner. A company named Caught in the Web, has attempted to create a broad-based media submission tool known as "ActiveUpload". ActiveUpload allows an arbitrary file to be dragged and dropped onto a web page control for upload to the web server. At the time of the invention, it would have been obvious to a person of ordinary skill in the art to incorporate the well-known drag-drop operation into Hui's interaction system so that the drag and drop operation would be utilized during manipulations (e.g., collecting, correcting composing, and/or publishing) of the displayed thumbnails. Therefore, it would have been obvious to combine Hui with the Admitted Prior art to obtain trie invention as specified in claims 106, 115 and 124 CONCLUSION 8. It is noted that any citation to specific pages, columns, figures, or lines in the prior art references any interpretation of the references should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. In re Heck, 699 F.2d 1331-33, 216 USPQ 1038-39 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). 4 Application/Control Number: 12/831,503 Page12 Art Unit:2173 9. Information regarding the status of an application may be obtained from the patent application information retrieval (PAIR) system. Status information for published application 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, please see pair-direct.uspto.gov web site. Should you have questions regarding access to the PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 10. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Tadesse Hailu, whose telephone number is (571) 272-4051, e-mail address J,g_)Js~-~~i~sLfl@LtLt@.u~~~ltQ_,gg_y_, and the Fax number is (571) 273-4051. The Examiner can normally be reached on M-F from 10:30 - 7:00 ET. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's supervisor, Kieu Vu, can be reached at (571) 272- 4057 Art Unit 2173. /TADESSE HAILU/ Primary Examiner, Art Unit 2173