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Allen v. World - Interval Files First Response to Office Action
Wednesday, August 03 2011 @ 09:00 AM EDT

Interval Licensing has now filed its first response [PDF] to one of the office actions issued in the reexaminations of the four patents at issue in this case. The response was filed pertaining to U.S. Patent No. 6,788,314 (Reexamination No. 95/001577).

You will recall in this case the USPTO rejected all 15 claims of the patent, six independent claims and nine dependent claims. In its response Interval now concedes independent claim 5 and its related claim 6. So those two are off the board for good. That leaves five independent claims and eight original dependent claims. As is often the case in reexaminations, Interval has now added 16 new dependent claims which it asserts are supported by the original description. These will now become subject to reexamination, as well.

Interval argues that the remaining independent claims and dependent claims should stand because the examiner has misapplied or misinterpreted the scope of the prior art the examiner put forth. Without going into all of the details of Interval's response, here are the key assertions:


In the Office Action, the Examiner rejected claims 1, 3, 5, 7, 9-10, 12-13 and 15 under 35 U.S.C. 103(a) as obvious over U.S. Patent No. 5,748,190 to Kjorsvik (hereinafter "Kjorsvik"), and claims 2, 4, 6, 8, 11 and 14 under 35 U.S.C. 103(a) as obvious over Kjorsvik in view of W. Salm "Buying a Real Computer Monitor", Popular Electronics (Oct. 1984) pp. 102-103, 132 and 134 (hereinafter "Salm"). The rejections of claims 5 and 6 have been rendered moot by the cancellation of these claims. The Patent Owner traverses the remaining rejections of claims 1-4 and 7-15, and maintains that all of the pending claims 1-4 and 7-31 are patentable over the cited art, for at least two reasons, each of which is addressed in one of the following Sections A and B. Each reason, standing alone, is sufficient to overcome the obviousness rejections and independently render the claims of the '314 patent patentable over the cited art.

A. Kjorsvik and Salm Fail to Teach or Suggest the Claimed "Without the Content Data Being Aggregated at a Common Physical Location Remote from the Content Display System"

The Patent Owner agrees with the Examiner's determination that Kjorsvik's system aggregates content data (screensaver presentations) at a common physical location (a system database) remote from the user computers that display the presentations. However, the Patent Owner disagrees that it would have been obvious at the time the invention was made to modify Kjorsvik's system to eliminate this remote aggregation, as the Examiner has suggested. As explained below, Kjorsvik's invention is an "administration module" that centrally manages aggregated presentations in the remote system database for a network of user computers. The Examiner's proposal to eliminate aggregation of the presentations would eviscerate the centralized presentation management that is the heart of Kjorsvik's invention, and would prevent the administration module from operating in the manner intended. Because it is well-established law that modifications which render a reference inoperable cannot legally support an obviousness rejection, this rejection is improper and should be withdrawn.

1. Kjorsvik Teaches a Centralized Presentation Management System that Requires Aggregation of Presentations at a Common Physical Location (A System Database) Remote from User Computers

Kjorsvik's presentation system is purposefully designed to provide centralized, network-level management of screensaver presentations for display on multiple personal computers (PCs) 12, 14, 16 within a network 10. An "administration module" 26 effects the centralized presentation management by obtaining screensaver presentations (also called scripts), aggregating presentations on a remote system database 24 (located on network server 18), assigning particular presentations to individual users and groups of users, and scheduling sequences of presentations for display at the individual user computers. Kjorsvik at col. 2 lines 27-66; Figures 1-2.

. . .

2. It Would Not Have Been Obvious to Modify Kjorsvik to Eliminate Aggregation of Presentations on the Remote System Database

Each of the independent claims 1, 3, 7, 10 and 13 of the '314 patent is directed to content providers providing content data to a content display system independently and "without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system." '314 patent claims 1, 3, 7, 10 and 13, (emphasis added).

The Examiner acknowledges that Kjorsvik fails to teach or suggest this claim limitation, because Kjorsvik teaches that presentations are aggregated in a common physical location (the system database located on a network server) that is remote (on the network server) from the user PCs on which the presentations are displayed. However, the Examiner argues that Kjorsvik's teaching that presentations can be obtained from external systems eliminates the need to aggregate the presentations at the remote system database prior to being provided to the user PCs, because the presentations would be coming directly from the external network server. Office Action at pages 6-7, 11-12, 16-17, 21-22, 26-27, 31-32.

The Examiner's reasoning apparently assumes that Kjorsvik stores presentations on the remote system database only because the presentations are composed by the administration module. Relying on this assumption, the Examiner concludes that, if the composition function of the administration module were eliminated and all of the presentations were imported from external sources, then remote aggregation could be dispensed with because there would be no need to store presentations on the remote system database.

. . .

B. Kjorsvik and Salm Fail to Teach or Suggest the Claimed Display "In an Unobtrusive Manner That Does Not Distract a User of the Display Device ... From a Primary Interaction"

1. The Broadest Reasonable Interpretation of the Claimed Display "In an Unobtrusive Manner..." Excludes Screensavers

Each of the independent claims 1, 3, 7, 10 and 13 of the '314 patent is directed to providing information (e.g., an image or images generated from a set of content data) to a user in non-distracting ways that do not interfere with the user's primary interaction with a device such as a computer. As recited in each of the independent claims, the information is selectively displayed "in an unobtrusive manner...." '314 patent claims 1, 3, 7, 10 and 13 (emphasis added).

The proper interpretation of this claim term "in an unobtrusive manner..." has significant relevance in light of the prior art cited in this reexamination proceeding. In particular, the Patent Owner and the Third Party Requester (hereinafter "the Requester") disagree with respect to how broadly this claim term may reasonably be interpreted. The Patent Owner maintains that the claim term must be interpreted in light of the overall claim language and the specification, which mandates: (1) inclusion of the "unobtrusive" ("wallpaper") embodiment in which information is displayed to a user while the user is actively engaged in a primary interaction with the display device or apparatus; and (2) exclusion of the "Screensaver" embodiment in which information is displayed while the display device or apparatus is idle. The Requester urges an unreasonably broad interpretation that ignores the overall claim language and the specification.

. . .

2. Kjorsvik and Salm Fail to Teach or Suggest the Claimed Display "In an Unobtrusive Manner..."

The Examiner rejected all of the claims as obvious over Kjorsvik, either alone or in combination with Salm. In particular, the Examiner has asserted for each claim that Kjorsvik's Screensaver maps to the claimed display of images "in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus." Office Action at pages 5, 10, 15, 20, 25 and 30.

Patent Owner respectfully disagrees. As explained in the preceding section, this claim term requires the display of the images while a user is engaged in a primary interaction with the display device or apparatus, and does not encompass the display of screensavers. Kjorsvik does not disclose such a display. Instead, Kjorsvik discloses a Screensaver that is activated during idle periods. In particular, Kjorsvik teaches presentations (e.g., slideshows) that replace a "conventional" screensaver when the user's personal computer (PC) is not in use, i.e., inactive. See Kjorsvik at, e.g., col. 2 lines 13-18 (emphasis added):

. . .

Now we will await the examiner's response. Also, keep in mind that this is an inter partes reexamination. That means the party requesting the reexamination may continue to contribute to the reexamination as well.

If you can understand the fine points of Interval's arguments above, consider looking for prior art that suggests the now-refined combination(s) that Interval maintains are the real invention covered by this patent. If you want to see all of the new dependent claims Interval has added, you can fine them here [PDF].

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