Lupercal LLC v. CitiBank, N.A.

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

Exhibit PC24

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6 EXHIBIT PC24 6 Attorney Docket No: ADMI.0010002 PATENT IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re application of Wood et al. Serial No.: 12/831,503 Examiner: Tadesse Hailu Confirmation No.: 2556 Art Unit: 2173 Filed: 7/7/2010 For: SYSTEM, METHOD AND APPARATUS FOR MEDIA SUBMISSION Mail Stop AF Commissioner for Patents Alexandria, VA 22313-1450 AMENDMENT In response to the Official Action dated May 16, 2017, please amend the above- identified patent application in the following manner. 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 2of15 IN THE CLAIMS: Please amend the claims as indicated. A complete set of the claims is included below, as well as the current status of each claim. This listing of claims will replace all prior versions, and listings, of claims in the application. 1-104. (Canceled) 105. (Previously Presented) A non-transitory computer-readable medium having an image submission tool stored thereon for use on a user device, 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, 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; 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. 106. (Currently Amended) The non-transitory computer-readable medium of claim 105, wherein the image identifier section when executed causes the image submission tool to generate the first visual representation thumbnail from a first image fik and enabling a user Qf__t_h_f:)r_nc12& __l'\l~QJ_Y_li_~,s_i_q_11___t~)_q_l___tQ __ (,irflg __ [r_1(,{ __ gr9p_,__ _y_i_<J __;,i__~\\i_f:h__ hIQ\i:v','>_f:rjJ_1_t~rfc1t:_t':,,___,J __l'\t;_(;9_1FLi_l1_1_;,ig~ file as a one for one replacement for the first image file. 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 3of15 107. (Previously Presented) The non-transitory computer-readable medium of claim 105, wherein a change in a compression level of the pre-processed image is specified by the one or more pre-processing parameters. 108. (Previously Presented) The non-transitory computer-readable medium of claim 105, wherein a change in a cropping of the pre-processed image is specified by the one or more pre-processing parameters. 109. (Previously Presented) The non-transitory computer-readable medium of claim 105, wherein a change in a physical dimension of the pre-processed image is specified by the one or more pre-processing parameters. 110. (Previously Presented) The non-transitory computer-readable medium of claim 105, wherein a change in a quality of the pre-processed image is specified by the one or more pre- processing parameters. 111. (Previously Presented) The non-transitory computer-readable medium of claim 105, wherein a change in a file format of the pre-processed image is specified by the one or more pre-processing parameters. 112. (Previously Presented) The non-transitory computer-readable medium of claim 105, wherein a change in an encoding of the pre-processed image is specified by the one or more pre-processing parameters. 113. (Currently Amended) The non-transitory computer-readable medium of claim 105, wherein the image upload control section when executed causes the image submission tool to transmit the text information. 114. (Previously Presented) A computer implemented method performed by an image submission tool on a user device, comprising: 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 4of15 causing 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; causing the image submission tool to enable a user to confirm a submission of the pre-processed image; and causing the image submission tool to transmit the pre-processed image. 115. (Currently Amended) The method of claim 114, wherein the first ~ FepFeser-rwtien··ttnmil2D:0:i_l ___ is generated from a first image file ___;:tn_cl____cl_i_s_p_l_;:ty_~g___i_n ___ Cl._n ___i_11}_;:tg~ identifier section of a user interface Urnt contains the first thrnnbnail, the 1nethod further ~n<'l:l")_l_ing __Cl.___t1_~~r__~if__th~__i_mCJ.g13___ ~1:llm}~;:;-~ign__t_q9l__ _t9___9:rn_g __ <'l:n9: __ gr_g_p_ __Cl.___~~~gnt;i__i_mCJ.g~___fik_i_nt_q__t_!i13 image idemifier section as a one for one replacement for llle first image file. 116. (Previously Presented) The method of claim 114, wherein a change in a compression level of the pre-processed image is specified by the one or more pre-processing parameters. 117. (Previously Presented) The method of claim 114, wherein a change in a cropping of the pre-processed image is specified by the one or more pre-processing parameters. 118. (Previously Presented) The method of claim 114, wherein a change in a physical dimension of the pre-processed image is specified by the one or more pre-processing parameters. 119. (Previously Presented) The method of claim 114, wherein a change in a quality of the pre-processed image is specified by the one or more pre-processing parameters. 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 5of15 120. (Previously Presented) The method of claim 114, wherein a change in a file format of the pre-processed image is specified by the one or more pre-processing parameters. 121. (Previously Presented) The method of claim 114, wherein a change in an encoding of the pre-processed image is specified by the one or more pre-processing parameters. 122. (Previously Presented) The method of claim 114, further compnsmg causing the image submission tool to transmit the text information. 123. (Previously Presented) A user device, comprising: a processor; a transmitter; and a memory for storing an image submission tool for execution by the processor, 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, 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; 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 using the transmitter. 124. (Currently Amended) The user device of claim 123, wherein the first vtsua+ repre.wntmion thumbnail is generated from a first image file. and displayed m an image 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 6of15 j_t:l~r1Jifif,'.r_5_e;_~_ti9_11 __ QLfl __1~5_e;x___in_tf,'.r:fo:(,:_e;___(i_e;_ti_iqJX_e;g_ __t~)___tJ_1f,'. __ Qr:5_t___thwnt~n_;,ij_l_, __ m_1g___e;J_wQl_i_11g __ [ __1~~-e:r_~)f the image submission tool to cause an association of a second image file with the image it,i_e;n_tj_fi_e;_r_5_e;i;_ti_rm __;,i5__ fl __rmt:__ for__9r_1f,'._Ie:11_lflQf:_l1_1_e;J_1_t_fr,ir __t}_lf,'. __fi_1}t_lg1c1gt;__ [J_l_e;. 125. (Previously Presented) The user device of claim 123, wherein a change in a compression level of the pre-processed image is specified by the one or more pre-processing parameters. 126. (Previously Presented) The user device of claim 123, wherein a change in a cropping of the pre-processed image is specified by the one or more pre-processing parameters. 127. (Previously Presented) The user device of claim 123, wherein a change in a physical dimension of the pre-processed image is specified by the one or more pre-processing parameters. 128. (Previously Presented) The user device of claim 123, wherein a change in a quality of the pre-processed image is specified by the one or more pre-processing parameters. 129. (Previously Presented) The user device of claim 123, wherein a change in a file format of the pre-processed image is specified by the one or more pre-processing parameters. 130. (Previously Presented) The user device of claim 123, wherein a change in an encoding of the pre-processed image is specified by the one or more pre-processing parameters. 131. (Previously Presented) The user device of claim 123, wherein the transmitter further transmits the text information. 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 7of15 132. (Previously Presented) 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. 133. (Previously Presented) 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. 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 8of15 REMARKS Applicants respectfully assert that no new material is introduced as a result of the amendments herein. Applicants respectfully request consideration of the above-identified patent application in light of the remarks presented herein. Rejections Under 35 U.S.C §112,first paragraph The Examiner rejected claims 105-133 as failing to comply with the written description requirement. In the response filed November 26, 2016, Applicants identified detailed support in the specification for the claimed invention. The Examiner's "Response to Arguments" at pages 2-3 of the Office Action did not provide any reasoning behind his maintenance of the rejection. Applicants specifically request that the Examiner detail the reasoning behind his careful review of the evidence presented below. At page 6 of the Office Action, the Examiner firstly objected to the specification as follows: The Specification of the published application at [0030] recites a user removing or replacing the mistaken image. Other than that, The (sic) Specification does not support" ... to pre-process the replacement image to produce a pre-processed image " (Underline in Original) The Examiner admits that paragraph [0030] recites a user removing or replacing a mistaken image. Paragraph [0028] of the published application refers to FIG. 1 (reproduced below) when describing an example of a realty web page featuring the Prepare and Post tools functionality. The user associates images with a media object identifier and selects appropriate captions for the images, e.g., living room, family room, etc. Paragraph [0030] then notes that if a mistake is made such that the wrong image is placed in a media object identifier, the correct image may be placed in the media object identifier. The correct image will replace the mistaken image. 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 9of15 ~;:st t~~d~t ~~:-::~~~~~~~~r~ f~r }~~~~~· ~~~r~~'{~!~= t~y jf=(=k~db~~ ~~::~r~~ ~:~~>~~.!:\::~:. (~~: H::~~ ~~{,'1.\~:::· ~ f rt~~ ~~~~~~1,~:. ~:st. k:-~~ ~Jh~ th{;: ~~~~~j~~{ ~::!·: ..~~~:{~{ <=<~:·{:p:..~h~{ (:<x..J~~f:~:~~)'\>;;,·ri':(;~\~~, <;:>;i bN:;km; t~;;>;;:U;:' ~h' t,;g% (;<~L;~. '.~AN:t (;;:t:~:~:~:~~· k~i:,~;h) ~fo~~~~~;~~th.:::: <:<~f~~~(~~ ~·~~)r ~~~~~~h phc~~~;,:~:-d th,:,::~) (~::<:~ -~h~:,. ~;~:~"{,~:::t;~~h~~/': ~~~H~;~~-- r·.·.·.·.·.·.··.··.·.·.·.·.·.·.·.·.·.·.·.·.·.··.··.·.·.·.··~ ~ Di'::)~ ?~~~~~ c~ ~ ~:+:~=-~~ ~ b~:~t~\::'''T~t~ ~..;..;..;..;..;..;..;..;..;.:;..;..;..;.;..;.;..;..;..;..;..;..;..;~..;:..~..:..;::: ........·.-.......................................................·.·.-.-....................................... F~<:<::h:~ fr~~~-:: ~~·:.··· n~,~~~ ~;t:.d~~t~:s Paragraph [0030] further describes that when the user is satisfied that the listing includes the correct images, the user clicks the Send button and the images are uploaded and processed immediately according to the configuration of the Prepare and Post tools. Paragraph [0036] of the published application notes that the media object identifier is "configured to perform any preprocessing of the image that may be desired prior to upload." Thus, the pre-processing of the media object identifier can be performed on the original image or the replacement image that is associated with the media object identifier. Applicants submit that the specification supports the pre-processing of a replacement image associated with a media object identifier. The Examiner's suggestion otherwise is based on a flawed notion that replacing the image associated with a media object identifier would somehow prevent the media object identifier from operating as intended, which is to pre-process an associated image (original or replacement). At page 4 of the Office Action, the Examiner secondly objected to the specification as follows: But the Specification does not support "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 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 10of15 replacement image as specified for use by a receiving party" (Underline in Original) As an example, Applicants refer the Examiner to paragraph [0016]-[0020] and [0033] of the published application, which clarifies the role of pre-processing in preparing media for use by a receiving party as follows: [0016] The Prepare and Post tools refers to browser-side components which together provide the ability to submit and transport media objects over the web to be stored and served. Using the Prepare and Post tools, end users can submit images in an immediate, intuitive manner. No technical sophistication is required. In particular, understanding technical terms such as JPEG, resolution, pixel, kilobyte, transfer protocol, IP address, FTP etc., is not required, since the Prepare and Post tools handles all of these tasks for the user. The benefits of the Prepare and Post tool are: [0020] d) to PictureWorks web site partner, access to contributed media "made to order", it meets their imaging specifications every time without human intervention; (Emphasis Added) As these example excerpts describe, the pre-processed image is "made to order" for the web site partner prior. For example, if the web site partner has a particular imaging specification (e.g., aspect ratio), then the pre-processing of the media object identifier can pre-process the image to conform to the imaging specification of the web site partner. Applicants submit that these example sections of the specification provide a proper basis to support the claimed feature of a "conversion of the replacement image as specified for use by a receiving party". For the reasons stated above, Applicants submit that they had possession of the claimed invention at the time the application was filed. For at least these reasons, Applicants submit that the written description requirement rejection is traversed. Rejections Under 35 U.S. C §103 The Examiner rejected claims 105-133 as being unpatentable over U.S. Patent No. 6,237,010 to Hui et al. ("Hui") in view of U.S. Patent No. 5,479,206 to Ueno et al. ("Ueno"). 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 11of15 At page 7 of the Office Action, the Examiner alleges that Hui discloses all elements of claim 105 except for the claimed feature of "one or more pre-processing parameters received from a device separate from the user device". As detailed below, the Examiner has not set forth a prima facie case of obviousness with respect to example claim 105. 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 presents evidence from Hui to show this claim feature as follows: 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 (Bold in Original) See, page 7 of the Office Action. This quotation from Hui is misleading and erroneous. The complete and correct evidentiary passage at column 2, lines 6-21 of Hui recites the following: "displayed images are composed by adding or deleting, from FlashPix files corresponding to the displayed images, information related to the displayed images." (Emphasis Added) The Examiner has conveniently removed the last phrase of the quoted sentence from Hui. What Hui describes in the Abstract and column 2, lines 6-21 is that the "information related to the displayed images" is added or deleted, not the displayed images themselves. In other words, the Abstract and column 2, lines 6-21 of Hui does not disclose the claimed recitation "to enable a user to replace the initial image with a replacement image". The evidence presented by the Examiner explicitly refutes the Examiner's argument. In sum, the Examiner has misread the Abstract and column 2, lines 6-21 of Hui. This misreading cannot form a proper basis for a prima facie case of obviousness with respect to claim 105. Dependent claim 106 further recites an example embodiment where "the image identifier section when executed causes the image submission tool to generate the first 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 12of15 thumbnail from a first image file, and enabling a user of the image submission tool to drag and drop, via a web browser interface, a second image file as a one for one replacement for the first image file. Dependent claim 115 further recites an example embodiment where "the first thumbnail is generated from a first image file and displayed in an image identifier section of a user interface that contains the first thumbnail, the method further enabling a user of the image submission tool to drag and drop a second image file into the image identifier section as a one for one replacement for the first image file." Dependent claim 124 further recites an example embodiment where "the first thumbnail is generated from a first image file, and displayed in an image identifier section of a user interface dedicated to the first thumbnail, and enabling a user of the image submission tool to cause an association of a second image file with the image identifier section as a one for one replacement for the first image file." For at least the reasons noted above, Applicants submit that the Examiner has not set forth a prima facie case of obviousness with respect to claims 105, 106, 114, 115, 123, and 124. The rejection of those claims is therefore traversed. The Examiner further asserts that Hui's image correction process is equivalent to Applicants' pre-processing. Hui's image correction functions are applied to a collected image. Example image correction functions are illustrated in FIGS. 12-15 of Hui, and include color adjustment controls 109, tone adjustment controls 121, sharpen/blur control 127, and rotate control 129. Through the example user interfaces of FIGS. 12-15 of Hui, a user can specify a particular color adjustment, tone adjustment, sharpen/blur adjustment, and rotation adjustment that the user desires to apply to a particular collected image. Recognizing that the image correction parameters are chosen by a user operating the device for application to a particular collected image, the Examiner then admitted that Hui's image correction parameters are "not received from a device separate from the user device as required in the claim." The Examiner then introduced Ueno to make up for the admitted deficiencies of Hui. As the Examiner describes at page 9 of the Office Action, "Ueno further discloses that the electronic camera [executes] photography in conformity with the set control parameters 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 13of15 transmitted from the computer system." Examples of Hui's control parameters that enable the electronic camera to perform photography include shutter control and adjustment of white balance and black balance. See, e.g., column 12, lines 66-67 of Ueno. In other words, the control parameters downloaded from the host computer enable the electronic camera to take a picture. At page 4 of the Office Action, the Examiner also appears to suggest that Ueno could provide "parameters such as color, tone, filer (sic), spatial described in Hui." Applicants request that the Examiner point to specific evidence within Ueno that the Examiner relies on in making such an allegation. If the basis for such an allegation is from the Examiner's own knowledge, then Applicants request that the Examiner set forth an affidavit of such knowledge. Applicants submit that Hui is not combinable with Ueno as the Examiner suggests. First, Ueno's camera control parameters are used for a distinctly different purpose as compared to Hui's image correction parameters. As described above, Hui's image correction parameters are applied to an existing image that was previously collected. In other words, Hui performs an image correction to a photo that has previously been captured. Ueno's camera control parameters (e.g., shutter control, white balance, black balance), on the other hand, are used to adjust the camera settings when actually taking a photo. That the photo image does not yet exist in Ueno is acknowledged by the Examiner when he states that the control parameters are used when "executing photography." In summary, Ueno's control parameters are used to control the process that takes a photo, while Hui's image correction parameters are used to edit an existing photo. This basic, fundamental distinction illustrates the lack of correspondence or equivalence between Hui's image correction parameters and Ueno's camera control parameters. Ueno's camera control parameters are not a substitute for Hui's image correction parameters. This necessitates a conclusion that Ueno's camera control parameters cannot be used to modify Hui's disclosed image correction process. Second, the Examiner has not presented a proper basis to combine the disclosures of Hui and Ueno. The Examiner's states an unsupported motivation to combine as follows: 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 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 14of15 parameters received from a separate device (computer 30) with Hui's image parameters. The suggestion/motivation for doing so would have been to utilize/apply uniform image parameters to images displayed on the workbench across connected client devices. (Emphasis Added) See, pages 9-10 of the Office Action. The Examiner's motivational basis for creating uniformity is unsupported. The Examiner does not cite any suggestion by either Hui or Ueno that relates to the issue of uniformity. At best, the Examiner is using his own personal opinion as the basis for such a uniformity motivation. Ueno's camera control parameters (e.g., shutter control, white balance, black balance) do not relate to uniformity. These parameters are unique to the particular photograph being taken. Shutter control, white balance and black balance parameters would change over time depending on the composition of the photographic shot or the changing atmospheric conditions (e.g., cloud cover). To say that Ueno's camera control parameters would be useful for uniformity would be nonsensical to a photographer. Every new photo to be taken can necessitate a change in camera control parameters. In summary, the Examiner's stated basis for modifying Hui with the disclosure of Ueno is contradicted by Ueno itself, which teaches away from the motivation of uniformity. At worst, the Examiner's motivation to combine uses Applicants' disclosure as a roadmap for the combination. Paragraph [0019] of Applicants' published application lists notable benefits of the invention, including "to PictureWorks web site partner, access to a uniform, standardized, reliable and secure channel for media acquisition." The Examiner appears to be using Applicants' stated benefits of their invention as the motivation to combine Hui with Ueno. This is not allowable and is an impermissible basis for justifying a motivation to combine references. Applicants request that the Examiner identify any suggestion within Hui or Ueno that would justify the Examiner's proposed combination. For at least these additional reasons, Applicants submit that the Examiner has not set forth a prima facie case of obviousness with respect to claims 105, 114 and 123. The rejection of claims 105, 114 and 123 is therefore traversed. 6 Appl. No.: 14/107,261 Inventor: Wood et al. Page 15of15 Claims 106-113, 115-122 and 124-131 are dependent on claims 105, 114 and 123, respectively, and incorporate the features of the respective claim. Accordingly, the rejection of claims 106-113, 115-122 and 124-131 is traversed for at least the reasons noted above with respect to claims 105, 114 and 123. Conclusion All of the stated grounds of rejection have been properly traversed, accommodated, or rendered moot. Applicants therefore respectfully request that the Examiner reconsider all presently outstanding rejections, and that they be withdrawn. The Examiner is invited to telephone the undersigned representative if an interview might be useful for any reason. Respectfully submitted, Dated: September 30, 2017 By: /duane s. kobayashi/ Duane S. Kobayashi Law Office of Duane S. Kobayashi Reg. No. 41122 1325 Murray Downs Way Reston, VA 20194 Tel: 703-437-8000 Fax: 703-935-0276