00871-reexam petition neomedia

8/14/2019 00871-reexam petition neomedia

1/147

REQUEST FOR EX PARTE REEXAMINATIONPatent No. 6,199,048

613401-3

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Ex Parte Reexamination of:

Patent No. 6,199,048

Inventors: F. Hudetz and P. Hudetz

Issue Date: March 7, 2001Application No. 09/232,908Filing Date: January 15, 1999

For: System and Method for AutomaticAccess of a Remote Computer Over aNetwork

)

))))))))))))

Control Number: Not Yet Assigned

Group Art Unit: Not Yet Assigned

Examiner: Not Yet Assigned

Box: Ex Parte Reexam

Mail Stop Ex Parte ReexamCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450

Sir or Madam:

REQUEST FOR EX PARTE REEXAMINATION

The Electronic Frontier Foundation (EFF), a not-for-profit public organization that works

to protect free expression in all forms of electronic media, by and through its undersigned

attorneys, respectfully requests ex parte reexamination of claims 1-95 of U.S. Patent No.

6,199,048 (048 patent) [Exhibit A] to Hudetz et al., assigned on its face to NeoMedia

Technologies, Inc. The following Request submits twenty-three substantial new questions of

patentability based on prior art, in the form of patents and printed publications, not previously

cited by or presented to the Office. This prior art renders claims 1-95 unpatentable under at least

one of 35 U.S.C. 102(a), 102(b), 102(e) and 103.

The substantial new questions of patentability are raised primarily by:


2/147


613401-3

U.S. Patent No. 5,640,193 [Appendix A], entitled Multimedia Service Access by

Reading Marks on an Object; and

U.S. Patent No. 4,780,599 [Appendix B], entitled Apparatus for Retrieving Stored

Information about Various Items in Response to Coding on the Items.

These two pieces of prior art either fully anticipate the claims of the 048 patent or, when

combined with other references, render the claims of the 048 patent obvious. Consequently,

EFF respectfully requests that the Office order an ex parte reexamination of the 048 patent and

issue a certificate canceling claims 1-95.


3/147


4/147


-ii-

TABLE OF PRIOR ART RELIED UPON

Prior Art Publications (Appendix)

U.S. Patent No. 5,640,193 Multimedia Service Access by Reading Marks on An Object,U.S. Patent No. 5,640,193 (filed Aug. 15, 1994) (issued Jun. 17,

1997).

U.S. Patent No. 4,780,599 Apparatus for Retrieving Stored Information about VariousItems in Response to Coding on the Items, U.S. Patent No.4,780,599 (filed Jun. 28, 1985) (issued Oct. 25, 1988).

U.S. Patent No. 4,796,292 Data Transmission over the Public Switched Network, U.S.Patent No. 4,796,292 (filed Dec. 8, 1987) (issued Jan. 3, 1989).

U.S. Patent No. 4,907,264 Telephone Set with Subscriber Listing, U.S. Patent No.4,907,264 (filed Sep. 14 1988) (issued Mar. 6, 1990).

U.S. Patent No. 5,373,550 Transmission of Check Images by Way of a Public SwitchedTelephone Network, U.S. Patent No. 5,373,550 (filed Oct. 13,1992) (issued Dec. 13, 1994).

U.S. Patent No. 5,331,547 Process and Computer System for Control of Interface Softwareand Data Files, U.S. Patent No. 5,331,547 (filed Jan. 29, 1993)(issued Jul. 19, 1994).

European Patent No. 0 465 011 Method of Encoding an E-mail Address in a Fax Message andRouting the Fax Message to a Destination on a Network,European Patent No. EP 0 465 011 (filed Jun. 6, 1991) (issuedNov. 6, 1996).

U.S. Patent No. 5,420,943 Universal Computer Input Device, U.S. Patent No. 5,420,943(filed Oct. 29, 1992) (issued May 30, 1995).

U.S. Patent No. 5,398,336 Object-Oriented Architecture for Factory Floor Management,U.S. Patent No. 5,398,336 (filed Jul. 16, 1993) (issued Mar. 14,1995).

U.S. Patent No. 5,111,391 System and Method for Making Staff Schedules as a Functionof Available Resources as well as Employee Skill Level,Availability, and Priority, U.S. Patent No. 5,111,391 (filed Oct.5, 1989) (issued May 5, 1992).

U.S. Patent No. 5,115,326 Method of Encoding an E-mail Address in a Fax Message andRouting the Fax Message to a Destination on a Network, U.S.Patent No. 5,115,326 (filed Jun. 26, 1990) (issued May 19,1992).


5/147


-iii-

Anonymous: Internet Article 1 Internet-On-A-Disk #7 , December 3, 1994.

Anonymous: Internet Article 2 NL-KR Digest , October 3, 1988.

Computer Networks B. Ibrahim, Computer Networks and ISDN Systems , NorthHolland Publishing, November 1994.

RFC 1738 T. Berners-Lee, L. Masinter, M. McCahill, Uniform Resource Locators (URL) , Network Working Group, Request forComments 1738, December 1994.

HTTP 1991 T. Berners-Lee, The Original HTTP as defined in 1991 .

RFC 1034 P. Mockapetris, Domain Names- Concepts and Facilities, Network Working Group , Request for Comments 1034,November 1987.

RFC 1035 P. Mockapetris, Domain Names- Implementation and Specification, Network Working Group , Request for Comments1034, November 1987.

U.S. Patent No. 5,606,668 System for Securing Inbound and Outbound Data Packet Flowin a Computer Network, U.S. Patent No. 5,606,668 (filed Dec.15, 1993) (issued Feb. 25, 1997).

U.S. Patent No. 3,961,164 UPC Encodation Verifier, U.S. Patent No. 3,961,164 (filed Sep.13 1974) (issued Jun. 1, 1976).


6/147


-iv-

Exhibits

Exhibit A United States Patent No. 6,199,048 issued March 6, 2001.

Exhibit B Minutes of the Oral Proceedings from the prosecution of European Patent 0832 453.

Exhibit C EPO Communication to NeoMedia on 20.12.2000 from the prosecution of European Patent 0 832 453.

Exhibit D European Patent No. 0 832 453 issued November 16, 2005.

Exhibit E Claims submitted by NeoMedia to the EPO on 07.03.2005 during prosecutionof EP 453.

Exhibit F EPO Preliminary Opinion before Oral Hearing dated 29.11.2004 from theprosecution of European Patent 0 832 453.

Exhibit G T. Berners-Lee, The World Wide Web: A very short personal history , May 7,1998.

Exhibit H D. Rapp, Inventing Yahoo! , April 12, 2006.

Exhibit I Computer History Museum Exhibits Internet History - 1990s.

Exhibit J The History of Yahoo! How it All Started , 2005.

Exhibit K Mosaic The First Global Web Browser .

Exhibit L RFC 1945 Hypertext Transfer Protocol HTTP/1.0, May 1996.

Exhibit M Prosecution History of EP 453.


7/147


-v-

TABLE OF AUTHORITIES PAGE NO .

CASES

KSR Intl Co. v. Teleflex Inc. ,

550 U.S. ___, 127 S. Ct. 1727(2007)..........................................................................................34, 76STATUTES

35 U.S.C. 102(a) ..........................................................................................................................12, 13

35 U.S.C. 102(b) ................................................................................................................................75

35 U.S.C. 102(e) ....................................................................................................................12, 13, 75

35 U.S.C. 103.........................................................................................................................37, 40, 98

35 U.S.C. 304...................................................................................................................................139M.P.E.P. 2142 .................................................................................................................................35, 94

M.P.E.P. 2217 .................................................................................................................................13, 75

M.P.E.P. 2242 ......................................................................................................................................... 8


8/147


-1-

I. STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OFPATENTABILITY

NeoMedias Patent No. 6,199,048 (048 patent) [Exhibit A] claims a method, system, and

device for creating a network connection to a remote computer and has a priority date of June 20,

1995. All of the claims in the 048 patent share the same fundamental common characteristics: an

index is read off of an object (by scanning a barcode or the like), the index is then used in a

database to look up a pointer identifying a remote computer on a network, and a network

connection is created to the identified remote computer.

The idea of forming a network connection as a function of scanned input was far from new

in 1995. In fact, such functionality appeared in a wide variety of prior art in many different

contexts. For example, U.S. Patent No. 4,796,292, filed in 1987, describes a credit card

authorization network where [m]any terminals can be programmed to dial different numbers

based upon the information contained in the magnetic stripe on the card being processed. 1

Another patent filed in 1988, U.S. Patent No. 4,907,264, discloses a telephone which automatically

connects to another phone by scanning a bar code and mapping that code to a phone number in

memory. 2 Yet another example of this functionality can be seen in a patent filed in 1992, U.S.

Patent No. 5,373,550, which discloses an invention that can transmit images of checks to their

network destination by matching information stored in a database with information scanned off of

the check. 3 Each of these inventions demonstrates that the idea of forming a network connection

as a function of scanned input was well-known before 1995.

1 U.S. Patent No. 4,796,292 col.1 ll.41-44 (filed Dec. 8, 1987) [Appendix C]. Compare this to claim 14 of the 048Patent that claims a variation of the method where the step of reading a data carrier modulated with an indexcomprises accessing a magnetic card with a magnetic reader.

2 U.S. Patent No. 4,907,264 col.3 ll.43-48 (filed Sept. 14, 1988) [Appendix D].

3 U.S. Patent No. 5,373,550 col.1 ll.63-67; cols.3-4 ll.65-68:1-9; col.4 ll.42-46 (filed Oct. 13, 1992) [Appendix E].


9/147


-2-

Moreover, the exact methods, systems and devices of the 048 patent were also well-known

in the art in 1995. For instance, during NeoMedias prosecution of the 048 patents counterpart

before the European Patent Office (EPO), the EPO cited several pieces of prior art, none of which

were considered by the USPTO during the prosecution of the 048 patent. These pieces of prior art

demonstrate that linking indices via pointers to information used to form a network connection was

common practice for basic internet services, such as search engines, well before NeoMedias

claimed invention date. 4 The EPO further stated that the means of input for starting this matching

process, such as scanning an item with a barcode, was non-inventive. 5 These rejections go to the

heart of the claimed material in the 048 patent. As a result of these rejections, NeoMedia had to

substantially narrow its EPO claims beyond those in the 048 patent in order to obtain issuance.

Yet, in light of newly discovered prior art by EFF, it appears that even these narrower

claims obtained by NeoMedia from the EPO are invalid. Early during the European proceedings,

the EPO relied on a reference disclosing the use of bar codes corresponding to Uniform Resource

Locators (URLs) 6 to render the entire subject matter of the 048 patent anticipated. 7 NeoMedia

was able to traverse this reference only by demonstrating that the reference post-dated the priority

date of the application. However, EFF has now found an earlier reference from 1994, United

States Patent No. 5,640,193 (the 193 patent), that discloses the same correlation of bar codes with

URLs. 8 This reference anticipates the entire subject matter of the 048 patent, just as the art cited

4 Minutes of the Oral Proceedings from the prosecution of European Patent 0 832 453 ( EP 453 Oral Minutes ) at 4

[Exhibit B].5 Id .

6 URLs have been known as both Uniform Resource Locators and Universal Resource Locators. These phrasesare interchangeable. See http://searchnetworking.techtarget.com/sDefinition/0,,sid7_gci213251,00.html.

7 EPO Communication to NeoMedia on 20.12.2000 from the prosecution of European Patent 0 832 453 ( EP 45320.12.2000 Communication ) at 2-2.1 [Exhibit C].

8 U.S. Patent No. 5,640,193 col.4 ll.34-42; claims 2, 3, 23, 24, 25 (filed Aug. 15, 1994) [Appendix A].


10/147


-3-

by the EPO would have had it had an earlier publication date. At a minimum, it raises a substantial

new question of patentability.

The 193 patent, as well as a second anticipating reference, U.S. Patent No. 4,780,599 (the

599 patent), are two of the prior references discussed more fully in this petition. The 193 patent

discloses an apparatus and method for accessing multimedia content served over a network by

reading marks on objects. The 599 patent discloses an apparatus for storing, retrieving, and

displaying information on items by reading scanned codes on the items. These two pieces of prior

art predate the priority date of the 048 patent, were not considered by the USPTO during the

prosecution of the 048 patent, and clearly demonstrate that the idea of pairing scanned codes

found on objects with addresses to various network resources was already well-known. A

reasonable examiner would consider the teachings contained references important in determining

whether or not the claims are patentable.

Many substantial new questions of patentability are raised by these patents because they

independently anticipate nearly every claim of the 048 patent. Furthermore, when the 193 patent

and the 599 patent are combined with additional prior art references, a substantial new question of

patentability is raised for every claim of the 048 patent because these references render every

claim of the 048 patent obvious. EFF respectfully proposes the following rejections:

Claims 1-9, 16-22, 25-44, 51-57, 60-79, 86-87 and 90-95 are anticipated by the

193 patent.

Claims 1-3, 5, 18-21, 27, 29, 30, 31-34, 36-38, 40, 53-56, 62, 64-69, 71-73, 75,

91, 93-95 are obvious over the 193 patent in view of RFC 1738 [Appendix O],

HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix

R].


11/147


-4-

Claims 4, 6-9, 22-25, 39, 41-44, 57-60, 74, 76-79, and 88-89 are obvious over

the 193 patent in view of U.S. Patent No. 5,420,943 [Appendix H] and U.S.

Patent No. 3,961,164 [Appendix T].

Claims 10-14, 45-49, and 80-84 are obvious over the 193 patent in view of

U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix

J], and U.S. Patent No. 4,796,292 [Appendix C].

Claims 15, 50, and 85 are obvious over the 193 patent in view of U.S. Patent

No. 4,780,599 [Appendix B] and U.S. Patent 4,907,264 [Appendix D].


No. 5,420,943 [Appendix H].


No. 5,398,336 [Appendix I].


No. 5,115,326 [Appendix K] and European Patent No. 0 465 011 [Appendix G].

Claims 28, 63, and 92 are obvious over the 193 patent in view of Computer

Networks and ISDN Systems [Appendix N].

Claims 35 and 70 are obvious over the 193 patent in view of U.S. Patent No.

5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], and NL-KR

Digest [Appendix M].

Claims 1-4, 6-9, 15-17, 22-26, 34, 36-39, 41-44, 50-52, 57-61, 69, 71-74, 76-79,

and 85-90 are anticipated by the 599 patent.


12/147


-5-

Claims 1-3, 18-21, 27, 30-31, 34, 36-38, 53-56, 62, 65-66, 69, 71-73, 91, 94-95

are obvious over the 599 patent in view of RFC 1738 [Appendix O], HTTP

1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R].

Claims 4, 6-9, 22-25, 39, 41-44, 57-60, 74, 76-79, and 88-89 are obvious over

the 599 patent in view of U.S. Patent No. 5,420,943 [Appendix H] and U.S.

Patent No. 3,961,164 [Appendix T].

Claims 5, 40, and 75 are obvious over the 599 patent in view of U.S. Patent No.

5,640,193 [Appendix A] and U.S. Patent No. 5,373,550 [Appendix E].

Claims 10-14, 45-49, and 80-84 are obvious over the 599 patent in view of

U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix

J], and U.S. Patent No. 4,796,292 [Appendix C].


4,907,264 [Appendix D].

Claims 16, 32, 51, 67 and 86 are obvious over the 599 patent in view of U.S.

Patent No. 5,420,943 [Appendix H].


No. 5,398,336 [Appendix I].


No. 5,115,326 [Appendix K] and European Patent No. 0 465 011 [Appendix G].

Claims 28, 63, and 92 are obvious over the 599 patent in view of Computer

Networks and ISDN Systems [Appendix N].


13/147


-6-


No. 5,115,326 [Appendix K], European Patent No. 0 465 011 [Appendix G],

and U.S. Patent No. 5,398,336 [Appendix I].


5,606,668 [Appendix S].


5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], and NL-KR

Digest [Appendix M].

In light of the twenty-three substantial new questions of patentability raised by the 193

patent and the 599 patent, EFF respectfully requests that its petition be granted and all claims of

the 048 patent be canceled.

II. BACKGROUND

A. THE CLAIMED INVENTION (S) OF THE 048 PATENT

The 048 patent contains three independent claims: claims 1, 36, and 71. These

independent claims are directed at a method, system, and device, respectively. While the three

claims are slightly different in their form, they all contain virtually identical limitations. The

system in claim 36 and the device in claim 71 are essentially two different implementations which

carry out the method described in claim 1. Because all of the prior art references discussed herein

involve inventions running software that carry out the claimed method, all of the references

equally address each of the independent claims. Claim 1 is representative of the alleged invention:

1. A method of connecting a user computing device to one of a plurality of remote computers available for communication over anetwork comprising:

a) reading a data carrier modulated with an index;


14/147


-7-

b) accessing a database with the index, the databasecomprising a plurality of records that link an index to apointer which identifies a remote computer on a network;

c) extracting a pointer from the database as a function of theindex; and

d) using the pointer to establish communication with theremote computer identified thereby.

All of the dependent claims of the 048 patent add limitations which give specific examples

of ways in which the independent claims could be implemented. For example, claim 19 specifies

the method of claim 1 where the pointer is a URL, claim 30 defines the network as the

internet, and claim 35 associates the database with a search engine. Given these minor

variations, the prior art cited herein is broad enough to render all these permutations invalid.

B. THE PROSECUTION HISTORY OF THE 048 PATENT CLAIMS

The prosecution history of the 048 patent is relatively short. The 048 patent is the result

of divisional application 08/538,365. There were eleven initial claims presented to the examiner as

a part of the 048 prosecution. All eleven claims were objected to or rejected in the first office

action. Claim 1 was rejected for obviousness-type double patenting in light of U.S. Patent No.

5,978,773. Claims 1-4 were rejected in light of two pieces of prior art U.S. Patent Nos.

5,602,377 and 5,519,878. The remaining claims were objected to as dependent on the rejected

claims.

Following the first Office Action, the applicant canceled all original 11 claims and

submitted 95 entirely new claims. All 95 claims were allowed because the examiner believed that

none of the prior art previously before the USPTO contained the combined features of the claimed

material. No additional explanation was provided as to how these new claims overcame the

previous rejections and no additional prior art was cited to contest any of the new claims.


15/147


-8-

C. THE PROSECUTION H ISTORY OF THE 048 PATENT S EUROPEAN C OUNTERPART

The USPTO prosecution history of the 048 patent itself is not the only prosecution history

relevant to this request. M.P.E.P. 2242 states that the use of adverse decisions not involving the

patent are to be considered by the USPTO in determining whether to grant a reexamination, and

such information should be weighted based upon the given circumstances. 9 In this case, the EPO

rejected and narrowed claims that were substantially identical to the claims of the 048 patent

during the prosecution of the 048 patents European counterpart. 10

NeoMedia submitted a patent application on June 19, 1996 to the EPO through a PCT

application claiming priority to the same provisional and divisional applications as the 048 patent.

After rejecting the claims initially submitted, as well as many others later submitted, the EPO

ultimately granted European Patent 0 832 453 (EP 453) [Exhibit D] entitled System for Using

Article of Commerce to Access Remote Computer on November 16, 2005.

The specifications of the 048 patent and EP 453 are nearly identical to one another

almost every paragraph in the specification of the 048 patent appears verbatim in EP 453, and the

figures used to help illustrate the invention are identical between the patents. The primary

difference between the two patents lies in their claims, and this can be directly attributed to the

different prosecution histories and prior art cited by each patent office. Many pieces of highly

relevant prior art that were never a part of the USPTO prosecution history were cited by the EPO

in the course rejecting asserted claims. 11 The EPO prosecution and the USPTO prosecution were

parallel proceedings involving the same applicant on exactly the same subject matter. Thus, this

9 See M.P.E.P. 2242 II.D.

10 The entire prosecution history of EP 453 is attached as Exhibit N.

11 These references include: U.S. Patent Nos. 5,331,547, 5,155,326, 5,420,943, 5,111,391, and 5,398,336; EuropeanPatent No. 0 465 011; and other articles showing internet functionality. As set forth below in III, these pieces of prior art raise substantial new questions of patentability. The EPOs rejections of claims asserted by NeoMedia usingthis art are attached in Exhibits C and F. The references themselves are attached in Appendices F-N.


16/147


-9-

Office should give the maximum possible weight to the prior art behind the EPOs adverse

decisions in determining whether a substantial new question of patentability exists.

Specifically, early in the prosecution of EP 453, the EPO cited an article entitled

Distributing Uniform Resource Locators as Bar Codes Images published by IBM because the

EPO felt that the article anticipates such subject-matter in its entirety. 12 In response, NeoMedia

pointed out that the article in question was published in 1996 after the priority date of the patent

application. NeoMedias additional arguments on the merits of the article were not addressed by

the EPO, presumably because the date of the reference was sufficient to exclude the article from

consideration. The 193 patent, discussed fully in III.A-B, discloses relevant subject matter

identical to the IBM reference, namely the use of barcodes as indices to reference URLs on the

internet. Because the 193 patent was filed in 1994 (almost 1 full year before the 048 priority

date), it does not suffer from the deficiencies of the IBM reference. Instead, when viewed in

conjunction with the EPOs statement regarding the IBM reference, the 193 patent presents

evidence weighing heavily in favor of granting reexamination.

The oral proceedings on May 4, 2005, which occurred shortly before the conclusion of the

prosecution of EP 453, are also of interest. 13 The primary claim at issue there bore a striking

resemblance to claim 1 in the 048 patent. The presence of many limitations not present in the

048 patent, such as the use of an article of commerce, machine reading, and the internet can

already be seen in the primary claim at issue because of earlier rejections of claims made by the

EPO. The primary claim at issue at the hearing was:

1. A method for obtaining access at a client (28) to a resourceat a service provider (22) or other remote computer (24, 26) on the

12 EP 453 20.12.2000 Communication at 2-2.1 [Exhibit C].

13 See EP 453 Oral Minutes [Exhibit B].


17/147


-10-

Internet using a tangible article of commerce (48), said methodcomprising:

machine reading (84) at the client an indicium (46) affixed tosaid tangible article of commerce, said indicium encoding anidentification corresponding to said article or to another tangible

article of commerce;

querying with said identification a database (60) in saidservice provider (22) or in said other remote computer (24, 26) thatassociates said identification with one or more network addresses sothat said database returns (88) to the client the network address ornetwork addresses corresponding to said identification; and

using the returned network address, or one of the returnednetwork addresses, to connect the client to the resource that has thereturned network address. 14

The Examining Division repeated the position it had taken throughout the prosecution by

flatly stating that many of the claimed inventions in the application were not novel in light of well-

known prior art at the time of filing:

The features of a look-up table, the quering of a database in order toretrieve resource locations and the use of various input means (suchas keyboards or barcode scanners) were all well known before thedate of priority of the present application. Regarding search enginessuch as Yahoo and Lycos which were well known in 1995 theretrieving of URLs via a database was already frequently used. Theuse of various well known input means does not require an inventivestep. 15

The Examining Division of the EPO quickly dismissed any notion that the use of an index to look

up information in a database is novel. The EPO also considered well-known search engines, such

as Yahoo!, as relevant prior art that rendered much of the rest of the claimed invention in the

application as obvious. 16 These search engines were never considered during the prosecution of

the 048 patent.

14 Claims submitted by NeoMedia to the EPO on 07.03.2005 during prosecution of EP 453 [Exhibit E].

15 EP 453 Oral Minutes at 4 [Exhibit B].

16 EPO Preliminary Opinion before Oral Hearing dated 29.11.2004 from the prosecution of European Patent 0 832


18/147


-11-

The patentee then attempted to counter the EPOs argument by stating that [t]he inventive

step lies in the use of the existing codes for a novel purpose. 17 This argument was again rejected

by the Examining Division: [T]he use of a barcode for the purpose of retrieving data does not lead

to an inventive step, since this is the only and well known purpose of a barcode. 18

Ultimately, the Examining Division stated that the best path for the application to proceed

in the EPO was to concentrate on automatic linking to the Internet. 19 The one independent claim

of EP 453 prominently features this automatic limitation and is also expressly limited to

connections formed on the internet. 20

The EPOs statements about the novelty of barcodes during the prosecution of EP 453

hold equally true for the 048 patent. Inventions such as 599 patent, discussed more fully in

III.C-D but not cited in the prosecution of the 048 patent, demonstrate that barcodes were well-

known in the art by 1994 as tools to lookup the location of resources in a database and then fetch a

linked resource. Furthermore, internet searching technology created by companies like Yahoo!

mapped search requests to URLs well before the 048s priority date. In fact, by the end of 1994,

Yahoo! had received a million hits from more than 100,000 visitors using such methods to point

users to computers on the internet. 21

Moreover, even the allegedly-inventive limitation of automatic linking to the Internet

accepted by the EPO to issue EP 453 is questionable in light of the prior art discussed in this

petition. In issuing its allowance, the EPO stated that it could not find inventions before the

453 ( EP 453 Preliminary Opinion ) at 2.1-2.6 [Exhibit F].17 EP 453 Oral Minutes at 4.2 [Exhibit B].

18 EP 453 Oral Minutes at 4.3 [Exhibit B].


20 EP 453 claim 1 [Exhibit D].

21 David Rapp, Inventing Yahoo! (April 12, 2006), http://www.americanheritage.com/events/articles/web/20060412-


19/147


-12-

priority date of the application which include the automatic transmission and download of data

after the step of machine reading an indicium. 22 Inventions such as the 193 patent, discussed

fully in III.A-B, disclose exactly the type of functionality the EPO was unable to find.

III. MULTIPLE PIECES OF PRIOR ART RENDER THE 048 PATENT CLAIMSANTICIPATED AND/OR OBVIOUS AND RAISE SUBSTANTIAL NEWQUESTIONS OF PATENTABILITY

A. U.S. PATENT NO . 5,640,193 ANTICIPATES 048 CLAIMS 1-9, 16-22, 25-44, 51-57, 60-79, 86-87, AND 90-95

The 193 patent discloses an invention where multimedia content located on remote servers

is accessed and displayed to the user based on marks read by a scanning device. The read marks

could be anything from specially-tailored bar codes which directly map to specific network content

to regular alphanumeric characters taken straight from a newspaper which are then matched by the

invention to remote relevant content. The patent discloses that the read marks are interpreted so

that content located on potentially many different remote network servers can be automatically

found and further discloses automatically creating a network connection between the end-user and

the remote server where the content is located. The 193 patent even uses internet technologies,

such as URLs, to explain the concept behind its invention and specifically claims embodiments of

its invention that use the internet. 23 Figure 4 of the 048 patent shows that the simple idea of

pairing bar codes with URLs, previously suggested by the 193 patent in 1994, is fundamentally

what the 048 patent has claimed as its invention in 1995. This disclosure by the 193 patent

anticipates the 048 patent under 35 U.S.C. 102(a) and 102(e) and was never considered by the

USPTO during the prosecution of the 048 patent.

yahoo-internet-search-engine-jerry-yang-david-filo-america-online-google-ipo-email.shtml [Exhibit H].


23 These [scanned] codes could work in a similar way as the well-known Universal Resource Locatoridentifiers...only they would be read from paper (instead of typed into an application). 193 Patent col.4 ll.46-54[Appendix A]. See also 193 Patent claims 2, 3, 23, 24, and 25 [Appendix A].


20/147


-13-

As shown below and as directed by M.P.E.P. 2217, the 193 patent anticipates claim 1 in

the 048 patent under 35 U.S.C. 102(a) and 102(e) and thus raises substantial new questions of

patentability:

ClaimLimitations in048

193 - Multimedia Service Access by Reading Marks on an Object

Claim 11. A method of connecting a usercomputing deviceto one of aplurality of remote

computersavailable forcommunicationover a network comprising:

The 193 patent discloses a system that allows a user computingdevice to access one or more of a plurality of remote computersrunning electronic servers over a network:

"The invention provides an apparatus and method for enabling a userto control the selection of electronic services to be provided to the user

by one or more servers over a communication medium." 193 Patentcol. 1 ll. 33-35.

Depending on how much data is represented by the marks 10, it maybe possible to access any electronic object on the ITV network 18 witha single swipe[.] 193 Patent col. 4 ll. 58-60.

a) reading a datacarrier modulatedwith an index;

The 193 patent initiates its process in the same fashion as the 048patent by reading marks (or indicies) located on objects whichcontain the information used to carry out the subsequent steps:

"The apparatus includes a scanner means for reading marks on an

object and for communicating a request signal, having an object coderepresenting the read marks, to a user interface." 193 Patent col. 1 ll.33-35.

[T]he system illustratively consists of one or more hand-heldscanners or pens ( 11 ) that reads marks (e.g., bar codes) on thesurface of an object. 193 Patent col. 2 ll. 22-25.

The initial selection of server 13 could be made using pen 11 to tellthe interface 15 what server to address. 193 Patent col. 4 ll. 35-36.


21/147


-14-



b) accessing adatabase with the

index, thedatabasecomprising aplurality of records that link an index to apointer whichidentifies aremote computeron the network;

The 193 patent discloses the process of looking up information in adatabase based on the read mark which is then used to select the

location of a remote computer on the network offering the servicerequested by the user. Here, one skilled in the art would recognizethat well-known information retrieval techniques disclosed includebasic database techniques for selecting matching records from thedatabase:

In accordance with the present invention, a universal identifier isused to uniquely address every accessible electronic object on thisnetwork (sort of like a super phone number). 193 Patent col. 4 ll. 28-30.

"These [scanned] characters could specify a unique identifier for amultimedia program, or they could be plain text that relates to somemultimedia documents stored in the ITV [interactive television]network 18. The servers 13, 17 could match this text to keywordsthat describe stored documents on the network using well-knowninformation retrieval techniques. This would enable the servers toselect the multimedia document(s) that best match the keywordsthat the user scans, and offer them for viewing. 193 Patent col. 4ll. 46-54. (emphasis added).

In step 2, the interface 15 interprets the information sent by the pen11 and communicates with the multimedia server to request the moviethat the user has selected. 193 Patent col. 5 ll. 3-6.

c) extracting apointer from thedatabase as afunction of theindex; and

The 193 patent explains that the marks (or indices) read from theobject can then be used to look up where the desired resource islocated on the network. It was well-known in the art in 1995 that onecould use a basic database querying to map the index scanned by thepen to the resource to be retrieved.

Furthermore, the explicit reference to the idea of mapping the scannedmarks to URLs alone is enough to anticipate creation of a network connection claimed in 048:

"In accordance with the present invention, a universal identifier isused to uniquely address every accessible electronic object on thisnetwork (sort of like a super phone number). One way to use thescanner pen (hereafter pen) 11 is in combination with marks thatrepresent a unique identifier code for electronic objects accessibleon the ITV network 18. These codes could work in a similar wayas the well-known Universal Resource Locator identifiers...only


22/147


-15-



they would be read from paper (instead of typed into anapplication) or invisibly linked to on-screen buttons. 193 Patent col.

4 ll. 28-45. (emphasis added).In step 2, the interface 15 interprets the information sent by the pen11 and communicates with the multimedia server to request the moviethat the user has selected. 193 Patent col. 5 ll. 3-6.

d) using thepointer toestablishcommunicationwith the remotecomputer

identifiedthereby.

The 193 patent discloses using the location associated with the indexscanned by the pen to establish a connection with one of a plurality of possible remote servers where data is retrieved and sent back to theuser who scanned the index:

The communication network 14 may be provided by a cable TV

company or telephone company or both and can use wire pair orcoaxial cables, fiber optic cables, or wireless technology. 193Patent col. 3 ll. 35-38.

Multimedia server 13 can handle service requests from thousands of customers at the same time. Once a users input selection is processed,the server 13 sends multimedia data or programs down to the interfaceunit 15, which displays it on the users television (TV) receiver 16.The servers 13 and 17 may illustratively be part of one or moreinteractive television (ITV) networks 18, which may connect tocommunication network 14. 193 Patent col. 4 ll. 2-9.

The ITV network 18 may be part of a larger global server network which may include video-on-demand servers, interactive TV servers,video telephone servers, broadcast TV servers, game servers, and usercontrol panel servers. 193 Patent col. 4 ll. 22-25.

In step 2, the interface 15 interprets the information sent by the pen11 and communicates with the multimedia server to request the moviethat the user has selected. 193 Patent col. 5 ll. 3-6.

In step 301 , communication is established between the interface 15 and the server 13. This could be done by making a telephone callusing telephone 19a or, if there is a full-time connection set up, bydefault, then only a few data packets need to be addressed frominterface 15 to an appropriate server 13 via network. 193 Patent col.5 ll. 29-35.

"In step 305 , the interface communicates interpreted scanned data to aserver via network, along with information that identifies itself and,


23/147


-16-



optionally, pen. In step 306, the server communicates with otherservers (e.g., billing servers, name servers, object database

servers). In step 307, one of these servers begins to transmitelectronic information to interface. The steps 303-307 mayinvolve bidirectional communications. 193 Patent col. 5 ll. 48-56.(emphasis added).

Furthermore, the 193 patent disclosed the possibility that even theinitial connection created by the user interface can be selected basedon what is scanned by the pen:

The initial selection of server 13 could be made using the pen 11 totell the interface 15 what server to address. 193 Patent col. 5 ll. 35-36.

Just as claim 1 in the 048 patent is anticipated by the 193 patent, the two additional

independent claims in the 048 patent are also anticipated by the 193 patent because they attempt

to claim basic implementations of the same fundamental method. This is detailed in the table

below:

Additional Independent Claims in 048 Why the claim is anticipated bythe 193 just as Claim 1

Claim 36 A system comprising:

a . a user computing device;

b . an input device associated with the usercomputing device, configured to read a datacarrier modulated with an index;

c. means for storing a database comprising aplurality of records that link an index to apointer which identifies a remote computer;

wherein the user computing devicecomprises:

Claim 36 is a system which carriesout the method of claim 1. Claim 36identifies three components of thesystem: a user computing device,input device, and a means for storinga database. The wherein clause thenstates that these components carry

out what is described in claim 1.This claim is nearly identical toclaim 1, but simply written in adifferent format.

The 193 patent discloses all of thesepieces or their equivalents. Itdiscloses using a user computing


24/147


-17-

Additional Independent Claims in 048 Why the claim is anticipated bythe 193 just as Claim 1

means for accessing the database to extract apointer from the database as a function of the index; and

means for using the pointer to establishcommunication with the remote computeridentified thereby.

device (a multimedia computer/userinterface), an input device (a pen),and well-known informationretrieval techniques such as adatabase. As detailed earlier, the193 patent anticipates the methodfurther described in the claim.Therefore, claim 36 itself is alsoanticipated by the 193 patent.

Claim 71 A user computing device comprising:

a . an input device configured to read a datacarrier modulated with an index; and

b. computer processing means for executinga software program adapted to:

utilize the index to access a databasecomprising a plurality of records that link anindex to a pointer which identifies a remotecomputer;

retrieve from the database a pointer as afunction of the index; and

use the pointer to establish communicationwith the remote computer identified thereby.

Claim 71 is a device which carriesout the method of claim 1. Onceagain, this claim is simply arewritten version of claim 1 wherethe same functionality andlimitations are described in thecontext of a device. Claim 71 isanticipated by the 193 patent inexactly the same way as claim 1because the 193 patent discloses auser computing device (themultimedia computer/user interface)embodiment of its invention. See 193 Patent col. 3 ll. 40-45.

Finally, were NeoMedia to argue that despite the strong language in the EPO prosecution

history, its patent is still novel because it discloses automatic linking to the Internet, the 193

patent would still anticipate its claims. The specification of the 193 patent discloses that its

invention can carry out its functionality automatically - from initial scanning to display:

Depending on how much data is represented by the marks, it may bepossible to access any electronic object on the ITV network with asingle swipe 24

24 193 Patent col.4 ll.57-60 [Appendix A].


25/147


-18-

Desirably, there should be almost no time lag between steps 2[matching of index to pointer] and 3 [download and display of fetched resource]; but if there is a delay, then the multimedia serverwould output a message to the TV screen to indicate that the film isin the process of being retrieved. 25

When the customer scans these codes, video instructions instantlyplay to demonstrate how the part needs to be installed or serviced. 26

The 193 patent explicitly states that many times the only action required by the user is the initial

scan of the code to be read. It further states that the invention should carry out the critical steps of

matching the index to a pointer and the use the pointer to create a network connection without any

delay. The 193 patent also discloses, in Claims 2 and 3, a version of the invention which uses the

internet as the network over which the multimedia server communicates with the user.27

Thus,

NeoMedia cannot successfully argue that the automatic nature of its claimed invention allows it to

circumvent the 193 patent as an anticipating piece of prior art.

Every remaining claim in the 048 patent is a dependent claim that only slightly modifies

claim 1, 36 or 71. The chart below shows how the 193 patent anticipates dependent claims 2-9,

16-22, 25-35, 37-44, 51-57, 60-70, 72-79, 86-87, and 90-95 of the 048 patent.

Dependent Claim in 048 193 Patent Disclosures 28

Claim 2 The method of claim 1 whereinthe step of reading a data carriermodulated with an indexcomprises the step of reading alight pattern emanating from anobject and demodulating thelight pattern to obtain the index.

As disclosed above, the 193 patent renders allelements of the base claims anticipated.

In addition, the 193 discloses the use of scanningdevices, which were well-known in the art todemodulate reflected light to read a targeted code.See 193 Patent col. 2 ll. 22-25.

25 193 Patent col.5 ll.8-11 [Appendix A].

26 193 Patent col. 6 ll. 12-14 [Appendix A].

27 See also 193 Patent col. 4 ll. 35-37 [Appendix A].

28 The prior art references in this table alongside the 193 patent are not relied upon to invalidate the claims under 35U.S.C. 102; the additional art is only presented to help provide context of what was known in the art before thepriority date of the 048 patent.


26/147


-19-


Claim 3 The method of claim 2 whereinthe step of reading a lightpattern emanating from anobject and demodulating thelight pattern to obtain the indexcomprises scanning a bar codesymbol encoded with the index.


The scanning of bar codes is explicitly disclosed inthe 193 patent. See 193 Patent col. 2 ll. 22-25;col. 6 ll. 10-46.

Claim 4 The method of claim 3 whereinthe bar code symbol is encodedin accordance with an extrinsicstandard.


The 193 patent discloses that the scanned codecould be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.It was well-known in the art that many codes thatidentify items are coded to an extrinsic standard. 29

Claim 5 The method of claim 2 whereinthe step of reading a lightpattern emanating from anobject and demodulating thelight pattern to obtain the indexcomprises using opticalcharacter recognitiontechniques.


The 193 patent also discloses that alphanumericcharacters can be read by the scanning device. See 193 Patent col. 2 ll. 22-25; col. 4 ll. 45-57.

Claim 6 The method of claim 1 whereinthe index is at least a portion of

a Universal Product Code.


The use of a code found on goods is disclosed inthe 193 patent. See 193 Patent col. 6 ll. 10-17.The 193 patent also discloses that the scanned codecould be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.A UPC code is simply a specific coding schemethat was well-known in the art since the early1970s to be used as described by the 193 patent. 30

29 See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardizedbar codes or user-defined bar codes) [Appendix H]. See also , e.g. , U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13,1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding)[Appendix T].

30 Id .


27/147


-20-


Claim 7 The method of claim 1 whereinthe index is at least a portion of a EAN code.


The use of a code found on goods is disclosed inthe 193 patent. See 193 Patent col. 6 ll. 10-17.The 193 patent also discloses that the scanned codecould be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.A EAN code is simply a specific coding schemethat was well-known in the art to be used asdescribed by the 193 patent. 31

Claim 8 The method of claim 1 whereinthe index is at least a portion of an ISBN code.


The use of a code found on books is disclosed inthe 193 patent. See 193 Patent col. 6 ll. 38-46.The 193 patent also discloses that the scanned codecould be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.A ISBN code is simply a specific coding schemethat was well-known in the art to be used asdescribed by the 193 patent. 32

Claim 9 The method of claim 1 whereinthe index is at least a portion of an ISSN code.


The use of a code found in magazines ornewspapers is disclosed in the 193 patent. See 193 Patent col. 6 ll. 10-17. The 193 patent alsodiscloses that the scanned code could be an integralpart of the scanned item used to identify the item.See 193 Patent col. 2 ll. 22-27. A ISSN code issimply a specific coding scheme that was well-known in the art to be used as described by the 193patent. 33

31 Id .

32 Id .

33 Id .


28/147


-21-


Claim 16 The method of claim 1 whereinthe steps of accessing adatabase and extracting apointer therefrom are carriedout on a server computerlocated remotely from the usercomputing device.


The 193 patent discloses the lookup step of themethod occurring on a server located remotely fromthe user. See 193 Patent col. 4 ll. 46-57. Thisadditional limitation was also a technique that waswell-known in the art. 34

Claim 17 The method of claim 1 whereinthe database is distributed overmore than one computer.


The 193 patent explicitly discloses the lookup stepof the method occurring on multiple servers. See 193 Patent col. 4 ll. 46-57. This additionallimitation was also a technique that was well-known in the art. 35

Claim 18 The method of claim 1 whereinthe pointer comprises a network address.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45. A URL is simply one form of a network address. 36

Claim 19 The method of claim 1 whereinthe pointer comprises aUniform Resource Locator.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45.

Claim 20 The method of claim 1 whereinthe pointer comprises the nameof a remote computer.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45. A URL is one means for naming a remotecomputer.

34 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which abarcode is scanned and a remote database is accessed to provide product related information) [Appendix H].

35 See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software inwhich a database is distributed across numerous database servers and that database can be accessed by scanning barcodes) [Appendix I].

36 See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O].


29/147


-22-


Claim 21 The method of claim 1 whereinthe pointer comprises an IPaddress.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45. A URL is a string that contains informationthat can be ultimately resolved to an IP addressthrough DNS. 37

Claim 22 The method of claim 1 whereinthe index is comprised of a firstfield and a second field.


Also as described above, the 193 patent anticipatesthe use of standard bar code formats, such as UPCcodes, as the index. Such codes include multiplefields as a part of the definition of the code. 38 Thus, all elements this claim are disclosed by the193 patent.

Claim 25 The method of claim 24wherein the first field is amanufacturer identificationnumber and the second field is aproduct identification number.


Also as described above, the 193 patent anticipatesthe use of standard bar code formats, such as UPCcodes, as the index. Such codes include multiplefields as a part of the definition of the code,including a manufacturer identification number anda product identification number. 39 Thus, allelements this claim are disclosed by the 193 patent.

Claim 26 The method of claim 1 whereinthe step of using the pointer toestablish communication withthe remote computer identifiedthereby is executedautomatically by the usercomputing device without userintervention.


The 193 patent explicitly discloses that itsfunctionality should occur automatically after theinitial scan. See 193 Patent col.4 ll.57-60; col.5ll.8-11. This additional limitation was also atechnique that was well-known in the art. 40

37 See Mockapetris, P., RFC 1034: Domain Names Concepts and Facilities, November 1987 [Appendix Q]; See also Mockapetris, P., RFC 1035: Domain Names Implementation and Specification, November 1987 [Appendix R].

38 See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significanceof various segments of standard UPC codes).

39 Id .

40 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearingon faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. Seealso, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].


30/147


-23-


Claim 27 The method of claim 26wherein the automaticcommunication by the usercomputing device with theremote computer is executed bya web browser program runningon the user computing device.


The 193 patent explicitly discloses the use of webbrowsers, such as NCSA Mosaic, as an example of a client interface. See 193 Patent col. 4 ll. 26-44.

Claim 28 The method of claim 1 whereinthe step of using the pointer toestablish communication withthe remote computer identifiedthereby is executed by a userselecting hypertext link returnedto the user computing device bythe database.


The 193 patent discloses matching URLs with barcodes and displaying the results on a web browser.See 193 Patent col.4 ll.46-54. One of the mainpurposes of a web browser is to display HTMLdocuments, which include hypertext links. 41 The193 patent also discloses the possibility that theuser may have multiple matches for the scannedcode and a selection of one of those matches wouldhave to be made by the user. See 193 Patent col. 4ll. 46-57.

Claim 29 The method of claim 1 whereinthe network over which the usercomputing device establishescommunication with the remotecomputer is a wide areanetwork.


The 193 patent explicitly discloses the use of themost widely-known wide area network, the internet,when describing the matching of bar codes toURLs. See 193 Patent col.4 ll.46-54.

Claim 30 The method of claim 29wherein the wide area network is the Internet.


The 193 patent explicitly discloses the use of theinternet when describing the matching of bar codesto URLs. See 193 Patent col.4 ll.46-54.

Claim 31 The method of claim 29wherein the wide area network is a proprietary online service.


The 193 patent discloses that its network may be anetwork provided by a cable TV company ortelephone company. See 193 Patent col. 3 ll. 35-36. The 193 patent also discloses that its network

41 See, e.g., B. Ibrahim, Computer Networks and ISDN Systems , North Holland Publishing, November 1994 (showinghow HTML and hyperlinks are used to display information and allow a user to navigate through that information)[Appendix N].


31/147


-24-


can be either part of either a closed proprietarynetwork or part of a larger global server network.See 193 Patent col. 4 ll. 7-25.

Claim 32 The method of claim 31wherein the database is residenton an online service providercomputer with which the usercomputing device hasestablished directcommunication.


The 193 patent discloses the lookup step of themethod occurring on a server which is in directcommunication with local pieces of the invention.See 193 Patent col. 4 ll. 46-57.

Claim 33 The method of claim 32wherein the online serviceprovider computer additionallyprovides a gateway to theInternet.


The 193 patent discloses that its network may bepart of a larger global server network, such as theinternet. See 193 Patent col. 4 ll. 22-25.

Claim 34 The method of claim 1 whereinaccess to the database requiresentry of a password.


It was well-known in the art that electronicresources, such as databases, are commonly securedthrough a user name/password mechanism.

Claim 35 The method of claim 1 whereinthe database is associated with asearch engine.


The 193 patent explicitly discloses the use of theinternet when describing the matching of bar codesto URLs. See 193 Patent col.4 ll.46-54. The 193patent also discloses that well-known informationretrieval techniques could be used to match thescanned codes with items to be retrieved for theuser. The most well-known information retrievaltechnique for the internet is a search engine. 42

42 See, e.g., U.S. Patent No. 5,331,547 Fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning abar code) [Appendix F]. See also, e.g., Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! andLycos as well-known search engines) [Appendix L]. See also, e.g., NL-KR Digest, October 3, 1988 p. 2-3 (disclosingthe feature list for a text-based search engine) [Appendix M].


32/147


-25-


Claim 37 The system of claim 36 whereinthe user input device comprisesmeans for reading a lightpattern emanating from anobject and demodulating thelight pattern to obtain the index.



Claim 38 The system of claim 37 whereinthe means for reading a lightpattern emanating from anobject and demodulating thelight pattern to obtain the indexcomprises means for scanning abar code symbol encoded withthe index.



Claim 39 The system of claim 38 whereinthe means for scanning a barcode symbol is adapted to scana bar code symbol encoded inaccordance with an extrinsicstandard.



Claim 40 The system of claim 37 whereinthe means for reading a light

pattern emanating from anobject and demodulating thelight pattern to obtain the indexcomprises means for usingoptical character recognitiontechniques.





33/147


-26-


Claim 41 The system of claim 36 whereinthe input device is configured toread an index comprising atleast a portion of a UniversalProduct Code.



Claim 42 The system of claim 36 whereinthe input device is configured toread an index comprising atleast a portion of a EAN code.


The use of a code found on goods is disclosed inthe 193 patent. See 193 Patent col. 6 ll. 10-17.The 193 patent also discloses that the scanned codecould be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.A EAN code is simply a specific coding schemethat was well-known in the art to be used asdescribed by the 193 patent. 45

Claim 43 The system of claim 36 whereinthe input device is configured toread an index comprising atleast a portion of an ISBN code.


The use of a code found on books is disclosed inthe 193 patent. See 193 Patent col. 6 ll. 38-46.The 193 patent also discloses that the scanned codecould be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.A ISBN code is simply a specific coding schemethat was well-known in the art to be used asdescribed by the 193 patent. 46

44 Id .

45 Id .

46 Id .


34/147


-27-


Claim 44 The system of claim 36 whereinthe input device is configured toread an index comprising atleast a portion of an ISSN code.



Claim 51 The system of claim 36 whereinthe means for storing a databaseis located on a server computerlocated remotely from the usercomputing device.



Claim 52 The system of claim 36 whereinthe means for storing a databaseis distributed over more thanone computer.



Claim 53 The system of claim 36 whereinthe pointer comprises a network address.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45. A URL is simply one form of a network address. 50

47 Id .

48 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which abarcode is scanned and a remote database is accessed to provide product related information) [Appendix H].


50 See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O].


35/147


-28-


Claim 54 The system of claim 36 whereinthe pointer comprises aUniform Resource Locator.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45.

Claim 55 The system of claim 36 whereinthe pointer comprises the nameof a remote computer.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45. A URL is one means for naming a remotecomputer.

Claim 56 The system of claim 36 whereinthe pointer comprises an IPaddress.


The 193 patent explicitly discloses the use of URLs as the pointer. See 193 Patent col. 4 ll. 28-45. A URL is a string that contains informationthat can be ultimately resolved to an IP addressthrough DNS. 51

Claim 57 The system of claim 36 whereinthe index is comprised of a firstfield and a second field.


Also as described above, the 193 patent anticipatesthe use of standard bar code formats, such as UPCcodes, as the index. Such codes include multiplefields as a part of the definition of the code. 52 Thus, all elements this claim are disclosed by the193 patent.

Claim 60 The system of claim 59 whereinthe first field is a manufactureridentification number and thesecond field is a productidentification number.


Also as described above, the 193 patent anticipatesthe use of standard bar code formats, such as UPCcodes, as the index. Such codes include multiplefields as a part of the definition of the code,including a manufacturer identification number and

51 See Mockapetris, P., RFC 1034: Domain Names Concepts and Facilities, November 1987 [Appendix Q]; See also Mockapetris, P., RFC 1035: Domain Names Implementation and Specification, November 1987 [Appendix R].

52 See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significanceof various segments of standard UPC codes).

53 Id .


36/147


-29-


a product identification number. 53 Thus, allelements this claim are disclosed by the 193 patent.

Claim 61 The system of claim 36 whereinthe means for using the pointerto establish communicationwith the remote computeridentified thereby executesautomatically by the usercomputing device without userintervention.



Claim 62 The system of claim 61 whereinthe automatic communicationby the user computing devicewith the remote computer is

executed by a web browserprogram running on the usercomputing device.


The 193 patent explicitly discloses the use of web

browsers, such as NCSA Mosaic, as an example of a client interface. See 193 Patent col. 4 ll. 26-44.

Claim 63 The system of claim 36 whereinthe means for using the pointerto establish communicationwith the remote computeridentified thereby executes by auser selecting hypertext link returned to the user computing

device by the database.


The 193 patent discloses matching URLs with barcodes and displaying the results on a web browser.See 193 Patent col.4 ll.46-54. One of the mainpurposes of a web browser is to display HTML

documents, which include hypertext links.55

The193 patent also discloses the possibility that theuser may have multiple matches for the scannedcode and a selection of one of those matches wouldhave to be made by the user. See 193 Patent col. 4ll. 46-57.

54 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearingon faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. Seealso, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].

55 See, e.g., B. Ibrahim, Computer Networks and ISDN Systems , North Holland Publishing, November 1994 (showinghow HTML and hyperlinks are used to display information and allow a user to navigate through that information)[Appendix N].


37/147


-30-


Claim 64 The system of claim 36 whereinthe network over which the usercomputing device establishescommunication with the remotecomputer is a wide areanetwork.


The 193 patent explicitly discloses the use of themost widely-known wide area network, the internet,when describing the matching of bar codes toURLs. See 193 Patent col.4 ll.46-54.

Claim 65 The system of claim 64 whereinthe wide area network is theInternet.


The 193 patent explicitly discloses the use of theinternet when describing the matching of bar codesto URLs. See 193 Patent col.4 ll.46-54.

Claim 66 The system of claim 64 wherein

the wide area network is aproprietary online service.

As disclosed above, the 193 patent renders all

elements of the base claims anticipated.

The 193 patent discloses that its network may be anetwork provided by a cable TV company ortelephone company. See 193 Patent col. 3 ll. 35-36. The 193 patent also discloses that its network can be either part of either a closed proprietarynetwork or part of a larger global server network.See 193 Patent col. 4 ll. 7-25.

Claim 67 The system of claim 66 whereinthe database is resident on an

online service providercomputer with which the usercomputing device hasestablished directcommunication.


The 193 patent discloses the lookup step of themethod occurring on a server which is in directcommunication with local pieces of the invention.See 193 Patent col. 4 ll. 46-57.

Claim 68 The system of claim 67 whereinthe online service providercomputer additionally providesa gateway to the Internet.


The 193 patent discloses that its network may bepart of a larger global server network, such as theinternet. See 193 Patent col. 4 ll. 22-25.

Claim 69 The system of claim 36 whereinaccess to the database requiresentry of a password.


It was well-known in the art that electronicresources, such as databases, are commonly securedthrough a user name/password mechanism.


38/147


-31-


Claim 70 The system of claim 36 whereinthe database is associated with asearch engine.


The 193 patent explicitly discloses the use of theinternet when describing the matching of bar codesto URLs. See 193 Patent col.4 ll.46-54. The 193patent also discloses that well-known informationretrieval techniques could be used to match thescanned codes with items to be retrieved for theuser. The most well-known information retrievaltechnique for the internet is a search engine. 56

Claim 72 The user computing device of claim 71 wherein the user inputdevice comprises means for

reading a light patternemanating from an object anddemodulating the light patternto obtain the index.



Claim 73 The user computing device of claim 72 wherein the means forreading a light patternemanating from an object anddemodulating the light patternto obtain the index comprisesmeans for scanning a bar codesymbol encoded with the index.



Claim 74 The user computing device of claim 73 wherein the means forscanning a bar code symbol isadapted to scan a bar codesymbol encoded in accordancewith an extrinsic standard.



56 See, e.g., U.S. Patent No. 5,331,547 Fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning abar code) [Appendix F]. See also, e.g., Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! andLycos as well-known search engines) [Appendix L]. See also, e.g., NL-KR Digest, October 3, 1988 p. 2-3 (disclosingthe feature list for a text-based search engine) [Appendix M].



39/147


-32-


Claim 75 The user computing device of claim 72 wherein the means forreading a light patternemanating from an object anddemodulating the light patternto obtain the index comprisesmeans for using opticalcharacter recognitiontechniques.



Claim 76 The user computing device of claim 71 wherein the inputdevice is configured to read anindex comprising at least aportion of a Universal ProductCode.



Claim 77 The user computing device of claim 71 wherein the inputdevice is configured to read anindex comprising at least aportion of a EAN code.


The use of a code found on goods is disclosed inthe 193 patent. See 193 Patent col. 6 ll. 10-17.The 193 patent also discloses that the scanned code

could be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.A EAN code is simply a specific coding schemethat was well-known in the art to be used asdescribed by the 193 patent. 59

Claim 78 The user computing device of claim 71 wherein the inputdevice is configured to read anindex comprising at least aportion of an ISBN code.


The use of a code found on books is disclosed inthe 193 patent. See 193 Patent col. 6 ll. 38-46.The 193 patent also discloses that the scanned code

could be an integral part of the scanned item used toidentify the item. See 193 Patent col. 2 ll. 22-27.A ISBN code is simply a specific coding scheme

58 Id .

59 Id .

60 Id .


40/147


-33-


that was well-known in the art to be used asdescribed by the 193 patent. 60

Claim 79 The user computing device of

claim 71 wherein the inputdevice is configured to read anindex comprising at least aportion of an ISSN code.

As disclosed above, the 193 patent renders all

elements of the base claims anticipated.


Claim 86 The user computing device of claim 71 wherein the softwareprogram is adapted to utilize theindex to access a databaselocated on a server computerremote from the user computingdevice.



Claim 87 The user computing device of claim 71 wherein the softwareprogram is adapted to utilize the

index to access a databasedistributed over more than onecomputer.



61 Id .62 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which abarcode is scanned and a remote database is accessed to provide product related information) [Appendix H].



41/147


-34-


Claim 90 The user computing device of claim 71 wherein the softwareprogram is adapted to use thepointer to establishcommunication with the remotecomputer identified therebyautomatically without userintervention.



Claim 91 The user computing device of claim 90 wherein the automaticcommunication by the usercomputing device with theremote computer is executed bya web browser program runningon the user computing device.


The 193 patent explicitly discloses the use of webbrowsers, such as NCSA Mosaic, as an example of a client interface. See 193 Patent col. 4 ll. 26-44.

Claim 92 The user computing device of claim 71 wherein the softwareprogram is adapted to use thepointer to establishcommunication with the remotecomputer identified thereby byusing a user-selected hypertextlink returned to the usercomput

00871-reexam petition neomedia

Documents