ReexamRequest 326

Request for Ex Parte Reexamination, U.S. Patent No.
9,207,924
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re patent of Premkumar Jonnala et al. § Attorney Docket No.: 698162.0011

§
U.S. Patent No. 9,207,924 §
§
Issue Date: December 8, 2015 § Customer No.: 160672
§
Filing Date: December 31, 2014 §
§
For: APPARATUS FOR ENABLING §
DELIVERY AND ACCESS OF §
APPLICATIONS AND §
INTERACTIVE SERVICES §
REQUEST FOR EX PARTE REEXAMINATION OF

U.S. PATENT NO. 9,207,924
Mail Stop “Ex Parte Reexam”

Attn: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Commissioner:
Pursuant to the provisions of 35 U.S.C. §§ 301-307, Unified Patents, LLC (“Requester”)

hereby requests an ex parte reexamination of claims 9-15 (the “Challenged Claims”) of U.S. Patent
No. 9,207,924 (“the ’924 Patent,” Ex. 1001), which issued on December 8, 2015 to Premkumar
Jonnala and Keertikiran Gokul and expires on July 28, 2031. The ’924 Patent matured from U.S.
Patent Application No. 14/587,732, which was filed on December 31, 2014 and has an earliest
claim of priority to Provisional Application 61/370,472, filed on August 10, 2010. The ’924 Patent
is presently assigned to Aprese Systems Texas, LLC (“Aprese”). The assignment to Aprese is
recorded in the U.S. Patent and Trademark Office (“USPTO”) at reel/frame 050303/0060.
Requester submits that this Request presents prior art references and analyses that are
noncumulative of the prior art that was before the Examiner during the original prosecution of
the ’924 Patent and that the Challenged Claims are invalid over these references. Requester
Request for Ex Parte Reexamination, U.S. Patent No. 9,207,924
therefore requests that an order for reexamination and an Office Action rejecting the Challenged
Claims be issued.
Ex Parte Patent Reexamination Filing Requirements
Pursuant to 37 C.F.R. § l.510(b)(l), statements pointing out at least one substantial new
question of patentability (“SNQ”) based on material, non-cumulative reference patents and printed
publications for the Challenged Claims are provided in Section I of this Request.
Pursuant to 37 C.F.R. § l.510(b)(2), reexamination of the Challenged Claims is requested,
and a detailed explanation of the pertinence and manner of applying the cited references to the
Challenged Claims is provided in Section II and Exhibit AA of this Request.
Pursuant to 37 C.F.R. § 1.510(b)(3), copies of every patent or printed publication relied
upon or referred to in the statement pointing out each SNQ or in the detailed explanation of the
pertinence and manner of applying the cited references are provided as Exhibits 1001-1009 of this
Request.
Pursuant to 37 C.F.R. §1.510(b)(4), a copy of the ’924 Patent is provided as Exhibit 1001
of this Request, along with a copy of any disclaimer, certificate of correction, and reexamination
certificate issued corresponding to the patent.
Pursuant to 37 C.F.R. § 1.510(b)(5), the attached Certificate of Service indicates that a
copy of this Request, in its entirety, has been served on Patent Owner at the following address of
record for Patent Owner, in accordance with 37 C.F.R. § l.33(c):
Keertikiran Gokul
1426, Lomond Ct.
Allen, Texas 75013
Also submitted herewith is the fee set forth in 37 C.F.R. § l.20(c)(l).
Pursuant to 37 C.F.R. § 1.510(b)(6), Requester hereby certifies that the statutory estoppel
provisions of 35 U.S.C. § 315(e)(l) and 35 U.S.C. § 325(e)(l) do not prohibit Requester from filing
this ex parte patent reexamination request.
ii
TABLE OF CONTENTS
I. Substantial New Questions Of Patentability ....................................................... 1
A. U.S. Patent 9,207,924 ........................................................................................... 1
1. Summary ................................................................................................................... 1
2. The Challenged Claims ............................................................................................. 2
3. Specification .............................................................................................................. 4
4. Claimed Embodiments .............................................................................................. 7
5. Prosecution History ................................................................................................... 8
B. Claim Construction ............................................................................................... 9
1. “plurality of information”........................................................................................ 10
C. Listing of Prior Art Patents and Printed Publications ........................................ 11
D. Ground 1: Katzer Presents Substantial New Questions of Patentability ............ 12
1. Overview of Katzer ................................................................................................. 12
2. Katzer is analogous art ............................................................................................ 15
3. Katzer Presents Substantial New Questions of Patentability .................................. 16
E. Ground 2: Katzer in View of Chen Presents Substantial New Questions of
Patentability ........................................................................................................ 18
1. Overview of Chen ................................................................................................... 18
2. Chen is analogous art .............................................................................................. 22
3. Katzer in View of Chen Presents Substantial New Questions of
Patentability ............................................................................................................. 22
F. Ground 3: Katzer in View of Chen in Further View of Bloebaum Presents
Substantial New Questions of Patentability ....................................................... 26
1. Overview of Bloebaum ........................................................................................... 27
2. Bloebaum is analogous prior art .............................................................................. 29
3. Katzer in View of Chen in Further View of Bloebaum Presents substantial
New Questions of Patentability ............................................................................... 30
G. Ground 4: White Presents Substantial New Questions of Patentability ............. 33
1. Overview of White .................................................................................................. 34
2. White is analogous prior art .................................................................................... 36
3. White Presents a Substantial New Question of Patentability .................................. 37
H. Ground 5: White in View of Chen Presents Substantial New Questions of
Patentability ........................................................................................................ 39
iii
II. Detailed APPLICATION OF the Prior Art to Every Claim for Which Reexamination Is
Requested 42
A. Proposed Rejection of the Claims ...................................................................... 42
B. Secondary Considerations .................................................................................. 53
III. Disclosure of Concurrent Litigation and Reexamination Proceedings ............. 54
IV. Conclusion ........................................................................................................ 55
TABLE OF EXHIBITS
Exhibit Description
Ex. 1001 U.S. Patent No. 9,207,924 (“’924 Patent”)
Ex. 1002 File History of U.S. Patent No. 9,207,924
Ex. 1003 Declaration of Dr. Andrew Wolfe (“Wolfe Decl.”)
Ex. 1004 U.S. Patent No. 7,970,436 (“Katzer”)
Ex. 1005 U.S. Patent No. 7,324,833 (“White”)
Ex. 1006 U.S. Patent No. 7,280,097 (“Chen”)
Ex. 1007 U.S. Patent No. 7,218,313 (“Marcus”)
Ex. 1008 U.S. Publication No. 2007/0093275 (“Bloebaum”)
Ex. 1009 U.S. Patent No. 8,887,155 (the “’155 Patent”)
Ex. 1010 Amended Complaint, Aprese Systems Texas, LLC v. Toyota Motor
Manufacturing Texas, Inc. et al, Case No. 6:20-cv-01046 (W.D.T.X.
Mar. 11, 2021)
Ex. AA Claim chart comparing claims 9-15 of the ’924 Patent to Katzer, Chen,
Marcus, Bloebaum
Ex. BB Claim chart comparing claims 9-15 of the ’924 Patent to White, Chen,
Marcus, Bloebaum
iv
I. SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
Prior to describing the substantial new questions of patentability (“SNQ”) presented in this
Request, provided below is an overview of the ’924 Patent, a summary of its prosecution history,
a discussion of claim construction, and a summary of the prior art being discussed in the present
Request.
A. U.S. Patent 9,207,924
1. Summary
The ’924 Patent is directed to “a system, a method and a computer program product that
facilitate access to one or more applications by a computing device.” See ’924 Patent (Ex. 1001),
Abstract. Copies of the ’924 Patent and its file history are provided as Exhibits 1001 and 1002,
respectively.
The ’924 Patent states that the advent of portable computing devices such as smart phones,
which the ’924 Patent refers to as a type of “consumer device” or “CD,” has provided users with
access to numerous applications. See Ex. 1001, 1:30-59. Examples of these applications “include
but are not limited to, mobile applications, plugins, applets, scripts, URLs providing a link to
different applications, web pages, web content, audio, video, images, applications based on various
platforms such as Android and iOS, and other similar services.” See Ex. 1001 3:51-56. However,
the ’924 Patent alleges that “choosing an application for a given task can be tedious and/or difficult
and/or time consuming.” See Ex. 1001, 1:58-59.
The ’924 Patent does not purport to have invented the concept of applications on mobile
devices, nor does it purport to have invented the execution, installation, or accessing of such
applications. The ’924 Patent admits that all such aspects of mobile applications were well-known
in the art, and merely purports to provide a method for allowing the user of a portable computing
device access to an appropriate application in a given scenario. See generally Ex. 1001, 1:20-3:12.
The specification generally provides for communication between two devices—a “consumer
device” or “CD” (e.g., a smart phone) and a “provider device” or “PD” (e.g., a car audio system).
Various disclosed embodiments of a “consumer device” include “portable media devices (PMD),
personal digital assistants (PDA), media servers, devices such as mobile phones, PCs, server
computers, laptops, set top boxes such as those associated with television sets, or the like.” See
Ex. 1001, 25:43-47. Various disclosed embodiments of a “provider device” include “set top boxes
such as those associated with television sets, media servers, PCs, server computers, laptops,
1
wifi [sic] routers such as those associated with providing wireless network connectivity including
802.11b, 802.11n, 802.11g; audio receivers such as those associated with music systems, plug
computers such as sheeva plug, or the like devices.” See Ex. 1001, 25:43-47. Exemplary disclosed
embodiments of a “consumer device” are provided by, for example, Figs. 1A and 1B, while such
embodiments of a “provider device” are provided by, for example, Figs. 2B and 2C, reproduced
below.
In general, the Challenged Claims are directed to communication between two devices – a
“consumer device” (or “CD”) and a “provider device (or “PD”) – and determining, accessing,
and/or executing an application based on the information exchanged in that communication. See
generally Ex. 1001.
2. The Challenged Claims
9. A non-transitory computer-readable storage medium having at least a computer-readable
program stored therein, said computer-readable program comprising sets of instructions
executable by a processor, said computer-readable program comprising a one or more set
of instructions when executed by a processor enables a provider device to at least:
i. associate said provider device with a consumer device;
ii. receive a first plurality of information from said consumer device, said first
plurality of information comprising information related to a one or more
applications;
iii. determine at least a portion of a second plurality of information, based on at
least information comprising at least a portion of said first plurality of information;
iv. send at least a portion of said second plurality of information to said consumer
device, sending at least a portion of said second plurality of information to said
consumer device enables said consumer device to at least:
at least one or more of determine a first application comprising sets of
instructions executable by a processor, access said first application and
execute a set of instructions associated with said first application; and
v. associate a first user interface element with at least a first set of
instructions, said first user interface element associated with said provider
device, an interaction with said first user interface element enables
execution of said first set of instructions, execution of said first set of
2
instructions enables at least one or more of determining at least a portion of

said second plurality of information and sending at least a portion of said
second plurality of information to said consumer device.
10. The non-transitory computer-readable storage medium of claim 9, wherein at least

execution of a set of instructions associated with said computer-readable program further
enables said provider device to at least process audio related information that is at least one
or more of sent to said consumer device and received from said consumer device.

enables said provider device to at least display information or play video associated with
or received from said consumer device, on a display associated with said provider device.
12. The non-transitory computer-readable storage medium of claim 9, wherein said non-
transitory computer-readable storage medium is associated with said provider device, said
first user interface element associated with said provider device, further wherein said first
user interface element comprises at least one of a touch screen, a physical button, a software
widget, a touch pad, a scroll wheel, a mouse, a key pad, a soft key, an audio input device,
an audio output device, a video input device, a display, a bar code reader and a switch.

enables said provider device to at least associate with said consumer device using at least
one of a wired communication technology, a wireless communication technology, USB,
Bluetooth, Wi-Fi and other communication technologies.1
14. The non-transitory computer-readable storage medium of claim 9, wherein said non-
transitory computer-readable storage medium is associated with said provider device, said
1
Requester notes that dependent claim 13 does not appear to further limit independent claim 9, in
violation of (pre-AIA) 35 U.S.C. §112, ¶ 4. Reciting communication using “at least one of” wired,
wireless, or “other” communication technologies does not appear to substantively narrow the scope
of the communication between the consumer and provider devices in claim 9.
3
provider device is one of a smart phone, a tablet, a smart device, a mobile device, a laptop,
a desktop and a gaming console.

enables said provider device to at least play at least one or more of an audio content, a
video content and an audiovisual content.
3. Specification
The ’924 Patent specification is largely directed to embodiments for managing, accessing,
and/or using applications stored on a consumer device (“CD”). The four disclosed embodiments
further discuss the identification, generation, and/or processing of “contextual tags” that “provide[]
any information relating to the environment of the user and/or the computing device.” See id.,
23:24-408. These contextual tags are then used (sometimes in combination with other information)
to identify and/or select a particular application available on the consumer device. Id. Notably,
all of the disclosed embodiments include a generator device (“GD”). See, e.g., Ex. 1001 at Fig.
97, 114, 125; 168:30-169:22, 184:60-185:61, 198:65-200:62. This GD generates contextual tags
and/or “tag related information,” which the specification refers to as “TRI.” Id., 5:20-32.
4
In response to the alleged shortcomings in the prior art, the ’924 Patent discloses that the
“consumer device,” on which a user may want to run an application, and “provider device”
communicate via a wired or wireless connection. See Ex. 1001, 156:32-34. The ’924 Patent
further discloses that a user may interact with user interface engine 220 of the provider device to
enable a consumer device to execute an application. See Ex. 1001, 35:61-25:37. For example, a
user may interact with a user interface of a computer at a coffee shop or a library to enable a smart
phone to associate with the computer, hence allowing a transaction of information to occur. See
Ex. 1001, 35:61-25:37. A further embodiment of the system disclosed and purportedly invented
5
by the ’924 Patent is provided by Fig. 56, which has been reproduced below. Fig. 56 discloses a
“consumer device,” here portable media device 14702, communicatively coupled to a “provider
device,” here embodied in computer system 14704.
The following table summarizes the specification of the ’924 Patent:

U.S. Patent 9,207,924
1:1-3:12 Background
3:16-15:4 Summary of the invention
15:8-22:22 Brief description of the figures
22:27-23:14 Summary of alleged novelty with respect to the first embodiment
23:16-166:8 Detailed description of first embodiment
166:10-17 Summary of alleged novelty with respect to the second embodiment
166:19-169:22 Detailed description of the second embodiment
169:24-31 Summary of alleged novelty with respect to the third embodiment
169:35-185:60 Detailed description of the third embodiment
6
185:62-186:2 Summary of alleged novelty with respect to the fourth embodiment

186:4-200:63 Detailed description of the fourth embodiment
200:64-202:36 Summary of alleged novelty with respect to further embodiments
4. Claimed Embodiments
The Challenged Claims are much broader than any of the disclosed embodiments. With
respect to claim 9, the ’924 Patent claims a non-transitory computer-readable medium storage
having a program with instructions that, when executed by a processor, enables a “provider device”
(or “PD”) to be associated with a “consumer device,” receive a “first plurality of information”
from the “consumer device,” determine and send a “second plurality of information” based at least
in part on the “first plurality of information” to the “consumer device,” at least a portion of said
“second plurality of information” and/or its method of sending to the “consumer device” is enabled
by an interaction with a “user interface element” associated with the said “provider device.” See
Ex. 1001, cl. 9. The sending of the “second plurality of information” to the “consumer device” in
turn enables the “consumer device” to determine, execute, and/or access an application. See id.
None of the claims of the ’924 Patent recite a generator device (of “GD”), context,
contextual tags, or TRI. Further, while other claims of the ’924 Patent are directed to managing
and/or installing applications on a consumer device (“CD”) (see, e.g., claims 1-8 and 22-25), these
features are not recited in the Challenged Claims, which only require, inter alia, accessing and
executing an application. Moreover, while other related patents that share the same specification
have claims explicitly directed to the identification and use of “contextual tags,” none of the claims
of the ’924 Patent recite these features. For example claims 12-20 of U.S. Patent No. 8,887,155
(“the ’155 Patent”), which shares the same specification and parent application as the ’924 Patent
are specifically directed to the identification and processing of “context” and “contextual tag[s].”
See Ex. 1009 at cl. 12. However, the claims of the ’924 Patent, including the Challenged Claims
only require receiving a first and second “plurality of information,” which is a broad term that is
not limited to only “context,” “contextual tag[s],” and/or related information.
In its ongoing litigation against Toyota, Patent Owner Aprese Systems LLC has asserted
the Challenged Claims against the Apple CarPlay, Android Auto, and Toyota Entune applications
implemented in various Toyota automobiles. See Ex. 1010 at ¶¶ 16-18, 44-61. These applications
enable a user’s smart phone (or other similar device) to communicate with the automobile’s in-
dash multimedia system. See id. at ¶ 14. Patent Owner identifies the user’s mobile device as the
7
claimed “consumer device” (or “CD” as it is referred to in the ’924 Patent specification) and the
automobile multimedia system as the claimed “provider device” (or “PD”). See id. at ¶ 52. In the
example of Apple CarPlay, a user connects their CD to the automobile PD. Id. at 16. Once
connected, the PD will display icons based on the apps and settings received from the CD. Id.
Using CarPlay, the CD can also share multimedia content or navigation with the PD that is
displayed on the PD’s in-dash display. Id.
5. Prosecution History
As noted above, the ’924 Patent matured from U.S. Patent Application No. 14/587,732 (the
“’732 application”), which was filed on December 31, 2014 with an earliest claimed priority date
of August 10, 2010. The ’732 application was originally filed with 26 claims, including original
independent claims 1, 9, 16, and 22. Similar to the issued claims of the ’924 Patent, the ’732
Application’s original claims were generally directed to an exchange of information between a
“client device” (later amended to be “consumer device” in various claims) and a “provider device,”
and at least one of determining, accessing, or installing an application on the “client device.” See
Ex. 1002, 1083-89. The four original independent claims were eventually canceled and replaced
with new claims 27-30 in the Applicant’s amendment on June 1, 2015. See Ex. 1002, 682-93.
New claims 27, 28, 29, and 30 subsequently issued as claims 1, 9, 16, and 22 of the ’924 Patent,
respectively. Ex. 1002, 672.
The ’732 Application was examined as part of the Track I Prioritized Prosecution program.
The Examiner issued a first (non-final) Office Action on March 3, 2015, rejecting all original
claims based on prior art. The Examiner conducted interviews with the Applicant on April 30 and
May 20, 2015. The file history includes both arguments and proposed amendments to original
independent claims 1, 9, 16, and 22 that the Applicant submitted prior to each interview.
Following these interviews, the Applicant submitted claim amendments on June 1 and
June 8, 2015. While the Applicant submitted remarks with these amendments, they do not provide
any additional support for the allowability of the amended claims. The Applicant’s arguments
only refer to the earlier interviews with the Examiner and makes conclusory statements that the
prior art does not disclose each and every limitation of the amended claims. Ex. 1002, 709
(emphasis added).2
2
The additional claim amendments on June 8, 2015 do not appear to be material with respect to
8
The Examiner issued the Notice of Allowance on July 6, 2015. The Notice of Allowance
does not identify specific arguments or amendments that distinguished the amended claims over
the prior art. However, the file history of the ’732 Application contains three arguments related to
original claim 9 and new claim 28 raised by the Applicant. First, Applicant alleged that the claims
required ‘direct’ communication between the claimed “consumer” and “provider” devices,
distinguishing the prior art’s alleged use of a third, intermediary device (a server) between the
“consumer” and “provider” devices. Second, Applicant alleged that prior art did not disclose that
the claimed “provider device” is enabled to determine and/or send information to the claimed
“consumer device” due to association with user interface element. Third, Applicant alleged that
the prior art does not disclose that the sending of information to the consumer device causes
activation and/or execution of an application on the consumer device. See Ex. 1002, 709.
None of these three arguments are applicable to the new grounds of rejection presented in
this Request.
B. Claim Construction
The ’924 Patent has not yet expired and will not expire during this requested reexamination.
Accordingly, the claims must be given their “broadest reasonable interpretation consistent with the
specification.” MPEP §§ 2240, 2258; In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984). Under
the broadest reasonable interpretation (“BRI”) standard, claim terms are giving their ordinary and
customary meaning as would be understood, in the context of the entire disclosure, by a person of
ordinary skill in the art at the time of the ’924 Patent (a “POSITA”).3 In re Translogic Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). An applicant may rebut that presumption by providing a
the Examiner’s Reasons for Allowance. The only amendment to pending claim 28 (which matured
into the patented claim 9) was to the preamble. See Ex. 1002, 688. However, this was not the
subject of any of the Applicant’s arguments.
3
As Dr. Wolfe explains, a POSITA would have held a Bachelor’s degree in Electrical and
Computer Engineering, and two to three years of experience in development and programming
related to embedded systems, interactive graphics and/or multi-media processing. Alternatively,
a POSITA would have a post-graduate degree in computer science, electrical engineering, or a
closely-related field, and fewer years of practical experience. See Wolfe Decl., ¶ 59. Equivalent
knowledge and experience can possibly be acquired in other ways and would also be sufficient.
9
definition of the term in the specification with reasonable clarity, deliberateness, and precision. In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
As shown below, claims 9-15 are unpatentable under any reasonable construction under
this standard. Requester reserves the right to advocate a different claim interpretation in any other
forum or proceeding if necessary. While the ’924 Patent has been asserted in one pending district
court action, no claim constructions have been proposed or adjudicated.
1. “plurality of information”
This term should be given its ordinary and customary meaning. See Wolfe Decl., ¶ 64.
However, under the BRI standard, a POSITA would not have understood “plurality of information”
to necessarily include the “context,” “contextual tags,” and/or “TRI” disclosed in the specification.
See id. In light of the particular definitions in specification, a POSITA would have understood
“context,” “contextual tags,” and/or “TRI” to be specific types of information within the much
broader universe of the general “information” recited in claim 1. Id. In the context of the entire
disclosure, a POSITA would not have understood the BRI of the claimed “plurality of information”
to be limited to only certain examples of information disclosed in the specification. Id.
This is further supported when considered in view of patents related to the ’924 Patent and
sharing a common disclosure.
The doctrine of claim differentiation stems from “the common sense notion that different
words or phrases used in separate claims are presumed to indicate that the claims have different
meanings and scope.” Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed.
Cir. 1999). Although the doctrine is at its strongest “where the limitation sought to be ‘read into’
an independent claim already appears in a dependent claim,” Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed. Cir. 2004), there is still a presumption that two independent claims have
different scope when different words or phrases are used in those claims, Kraft Foods, Inc. v. Int'l
Trading Co., 203 F.3d 1362, 1365-69 (Fed. Cir. 2000).
Claims in related patents must be interpreted “consistently” when they “derive from the
same parent application and share many common terms.” Trustees of Columbia Univ., 811 F.3d at
1369 (quoting NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005),
abrogated on other grounds recognized in Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1047
10
(Fed. Cir. 2016)). “Although these claims have since issued in separate patents, it would be
improper to construe this term differently in one patent than another, given their common ancestry.”
Abtox, Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997), modified on reh'g, 131 F.3d 1009,
1010 (Fed. Cir. 1997); see also, Clare v. Chrysler Grp., LLC, 819 F.3d 1323, 1330 (Fed. Cir. 2016)
(acknowledging that the doctrine of claim differentiation can be applied across related patents).
As noted above, the related ’155 Patent includes certain independent claims that (like the
Challenged Claims) recite (in relevant part) only “receiving a plurality of information” and other
claims that recite (in relevant part) providing “at least one contextual tag” and “a second plurality
of information” as distinct claim terms. Compare Ex. 1009 at cl. 1 with id. at cl. 12 (emphasis
added). Accordingly, under the doctrine of claim differentiation, the “plurality of information”
and “at least one contextual tag” recited in the claims of the ’155 Patent must be construed to have
different scope.
The same interpretation must necessarily be applied to the Challenged Claims of the ’924
Patent. Under the BRI standard, the scope first and second “pluralit[ies] of information” recited
in the Challenged Claims of the ’924 Patent are neither limited to nor required to include a
“context,” “contextual tag,” or “TRI” disclosed in the ’924 Patent.
C. Listing of Prior Art Patents and Printed Publications
Reexamination of the Challenged Claims is requested in view of the following references:
 Ex. 1004 (“Katzer”) U.S. Patent No. 7,970,436 to Katzer et al. was filed on September 22,
2006 and issued on June 28, 2011. Katzer is prior art under at least pre-AIA 35 U.S.C.
§ 102(e).
 Ex. 1005 (“White”) U.S. Patent No. 7,324,833 to White et al. was filed on September 23,
2004, issued on January 29, 2008, and claims priority to March 28, 2000. White is prior art
under at least pre-AIA 35 U.S.C. § 102(b).
 Ex. 1006 (“Chen”) U.S. Patent No. 7,280,097 to Chen et al. was filed on October 11, 2005
and issued on October 9, 2007. Chen is prior art under at least pre-AIA 35 U.S.C. § 102(b).
 Ex. 1007 (“Marcus”) U.S. Patent No. 7,218,313 to Marcus et al. is incorporated by reference
“in its entirety” into Chen, and therefore is part of the Chen disclosure. See Chen 11:10-17.
Additionally, Marcus was co-pending substantially contemporaneously with Chen; it was
filed on October 31, 2003 and issued on May 15, 2007, and would independently qualify as
prior art under at least 35 U.S.C. §102 (b).
11
 Ex. 1008 (“Bloebaum”) U.S. Pub. No. 2007/0093275 to Bloembaum et al. is the patent
application publication of Application No. 11/163,613, filed on October 25, 2005, and
published on April 26, 2007. Bloebaum is prior art under at least pre-AIA 35 U.S.C. § 102(b).
None of the references listed above were cited during prosecution of the ’924 Patent. A
Form SB-08 and copies of the cited references are submitted herewith.
This request is also supported by the declaration of Dr. Andrew Wolfe (Ex. 1003, “Wolfe
Decl.”). To the extent that additional references are discussed in Dr. Wolfe’s declaration, copies
of these additional references are also being submitted, and are included on Form SB-08.
D. Ground 1: Katzer Presents Substantial New Questions of Patentability
As shown below, Katzer raises an SNQ because “the teaching of the (prior art) patents and
printed publications is such that a reasonable examiner would consider the teaching to be important
in deciding whether or not the claim is patentable.” See MPEP 2242. For example, Katzer as
discussed below and in further detail in the attached exhibits, discloses each limitation of the
Challenged Claims, including the concept of using the interface of one device to enable a second
device to access and/or execute an application, as most pertinent to claim 9 of the ’924 Patent.
Further, Katzer is a new reference that was not previously considered in the prosecution of
the ’924 Patent or any parent application. As discussed below, none of the arguments and/or claim
amendments that allegedly distinguished the ’924 Patent over the prior art of record apply to Katzer.
Accordingly, Katzer raises new issues regarding the patentability of the Challenged Claims and
does not present the “same question of patentability as to the claim has not been decided by the
Office in an earlier concluded examination or review of the patent.” See MPEP § 2242.
1. Overview of Katzer
Katzer, titled “Wireless Interface Extension for Mobile Devices,” relates to a system in
which a user may utilize a wireless user interface to interact with applications on a mobile device.
See Ex. 1004, Abstract. Katzer generally describes that a shortcoming existed in the art because
the utility of the many applications a user may use on a mobile device was limited due to the size
of the display and/or input controls for the mobile device. See Ex. 1004, 1:20-28; see also Wolfe
Decl., ¶ 30. Thus, Katzer discloses a wireless user interface with a processor such that the
processor communicates with a mobile device via wireless communication and “enables a user to
use the user interface to interact with at least one user application on the mobile device.” See Ex.
1004, 1:20-28. An exemplary embodiment is disclosed by Figure 1 of Katzer, reproduced below.
12
Figure 1 discloses a wireless interface extension 1004 mounted on the dashboard of an automobile
and in communication with mobile device 102.5 See Ex. 1004, 2:42-45. The mobile device 102
has a display 104 and a touch-sensitive surface 106 with which a user may interact. See Ex. 1004,
2:50-52. Additionally, the wireless interface extension 100 includes a touch screen that can
provide the function of display 104 and touch-sensitive surface 106 on the mobile device 102. See
Ex. 1004, 2:64-66. The user may utilize the touch screen of the wireless interface extension 100
to interact with various applications on the mobile device 102. See Ex. 1004, 3:4-16. For example,
Katzer discloses that the mobile device 102 may accept data entry from the user via the wireless
interface extension 100, “including numbers to dial or various parameter values for configuring
the operation of the mobile device 102,” and may further “execute one or more software or
firmware applications in response to user commands.” See Ex. 1004, 3:10-16.
4
I.e., the “provider device” of claim 9 of the ’924 Patent.
5
I.e., the “consumer device” of claim 9 of the ’924 Patent.
13
Katzer provides further details into the wireless interface extension 100 in Figure 3,
reproduced below. The wireless interface extension contains processor 302 and user interface 308,
which contains a touch screen 312. As disclosed by Katzer, the user may select inputs on touch
screen 312 to control applications being executed on the mobile device. See Ex. 1004, 6:1-9. Such
inputs to applications being executed on mobile device 102 are sent to the mobile device by the
wireless interface extension’s processor 302—by executing “instructions, codes, computer
programs, [and] scripts” which it accesses from computer readable storage (e.g., “hard disk, floppy
disk, optical disk (these various disk based systems may all be considered secondary storage 684),
14
ROM 686, RAM 688, or the network connectivity devices 692”)—via the wireless communication
link 304. For example, Katzer discloses that “the user may provide input on the touch screen 312
of the wireless interface extension 100 to control a navigation application on the mobile device
that is output to the touch screen 312.” See Ex. 1004, 6:1-9.
Thus, Katzer provides a system to control the execution of an application being executed on a
mobile device through inputs made to a separate device, disclosed in Katzer as the wireless
interface extension. Just like claim 9 of the ’924 Patent, Katzer discloses two devices being in
direct communication such that a user may make inputs into one device (i.e., wireless interface
extension or “provider device”) to access and/or execute applications on the other device (i.e.,
mobile device or the “consumer device”).
2. Katzer is analogous art
Katzer is analogous art to the ’924 Patent. See Wolfe Decl., ¶ 33. “Two separate tests
define the scope of analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Katzer is within the field of endeavor of the ’924 Patent, and particularly relevant to claim
9 of the ’924 Patent, because it relates to communication between two devices using the interface
of one device to access and/or execute an application (i.e., a navigation application) on the other.
See Ex. 1001, cl. 9; Ex. 1004, Abstract; Wolfe Decl., ¶¶ 30-33. Further, Katzer is reasonably
15
pertinent to various problems identified by the ’924 Patent and purportedly addressed by claim 9
such as: (1) accessing applications of one device by another device (see id., 3:56-4:12); and (2)
providing for a user interface associated with a first device such that a user may make inputs in the
user interface associated with the first device to enable a second device to access and/or execute
applications on the second device. Id.
3. Katzer Presents Substantial New Questions of Patentability
A reasonable examiner would have considered the disclosure of Katzer important when
assessing patentability with respect to the Challenged Claims. As discussed above, Katzer
discloses a system in which a user may utilize a wireless user interface to interact with applications
on a mobile device. See Ex. 1004, Abstract. Furthermore, Katzer was not considered during the
prosecution of the ’924 Patent, and discloses the limitations and/or elements that the Applicant
argued where lacking in the prior art applied during prosecution. Thus, Katzer presents an SNQ.
As discussed above, the Applicant’s arguments and claim amendments identified raised
three arguments against the prior art of record in overcoming the Examiner’s grounds of rejection:
(1) the use of “direct” communication between the claimed “consumer” and “provider” devices;
(2) that a “provider device” is enabled to determine and/or send information to the claimed
“consumer device” due to association with user interface element; and (3) that the sending of
information to the consumer device causes activation and/or execution of an application on the
consumer device. See Ex. 1002, 709. However, as discussed below and shown in more detail in
Exhibit AA, Katzer discloses each of these limitations.
First, Katzer discloses ‘direct’ communications between two devices, mobile device 102
and wireless interface extension 100 (i.e., the claimed “consumer device” and “provider device,”
respectively). For example, Katzer discloses “interface extension 100 mounted on the dashboard
of an automobile in communication with . . . mobile device 102 of one of the occupants” and that
“mobile device 102 receives control directly from the wireless interface extension 100.” Ex. 1004,
2:42-45; 5:54-55.
16
’924 Patent Katzer
’924 Patent, Fig. 56.
Second, Katzer discloses that the claimed “provider device” is enabled to determine and
send information to the claimed “consumer device” due to association with user interface element.
For example, Katzer discloses that the wireless interface extension determines and processes a user
input “recognized by the user applications 310 on the mobile device.” See Ex. 1004, 6:10-28. For
instance, a “user may provide input on the touch screen 312 of the wireless interface extension 100
to control a navigation application on the mobile device that is output to the touch screen 312.”
See id., 6:6-9.
Finally, Katzer discloses the sending of information to the consumer device causes
activation and/or execution of an application on the consumer device. For example, Katzer
17
discloses that the wireless interface extension communicates “the user input to at least one user
application on a mobile device.” See Ex. 1004, 1:40-45.
Ultimately, because Katzer discloses each and every limitation of the Challenged Claims,
it presents an SNQ. In particular, Katzer discloses the elements that the Applicant cited to
distinguish the Challenged Claims over the prior art during the prosecution of the ’924 Patent.
Hence, a reasonable examiner would consider the disclosure of Katzer important in determining
whether the Challenged Claims are patentable because Katzer was never before the Examiner or
otherwise considered during prosecution. As described above and in more detail in Exhibit AA,
respectively, Katzer discloses the purported point of novelty of the Challenged Claims, namely
enabling a user interface of one device to determine and send direct communications to another
device to enable access to and/or execution of applications. Thus, Katzer presents an SNQ.
E. Ground 2: Katzer in View of Chen Presents Substantial New Questions of

Patentability
Requester incorporates by reference the above disclosures related to Katzer and Chen with
respect to Grounds 2 and 3. As shown below, Requester submits that the prior art references raise
an SNQ. For example, the references when considered as a whole, as discussed below and in
further detail in Dr. Wolfe’s Declaration and Exhibit AA, disclose each limitation of the
Challenged Claims, including using an interface of one device to enable a second device to access
and/ or execute an application, as claimed in the Challenged Claims.
Further, Katzer and Chen are both new references that were not previously considered. As
discussed herein, none of the arguments and/or claim amendments that allegedly distinguished
the ’924 Patent over the prior art of record apply to Katzer or Chen. Accordingly, Katzer in view
of Chen raises new issues regarding the patentability of the Challenged Claims and does not
present the “same question of patentability as to the claim has not been decided by the Office in
an earlier concluded examination or review of the patent.” See MPEP § 2242.
1. Overview of Chen
Chen, titled “Human Interface Input Acceleration System,” relates to a system in which a
user may utilize an input accelerator device to remotely operate a hand-held host electronic device
such as a cell phone. See Ex. 1006, Abstract. The input accelerator device can be utilized to
control various aspects or functions of the hand-held host electronic device such as to eliminate or
minimize the need for a user to directly interface with the hand-held host electronic device. See
18
Ex. 1006, Abstract. Chen discloses that because electronic devices have become increasingly
sophisticated and physically smaller, there exists a problem in the art of a user being able to
optimally interact with electronic devices. See Ex. 1006, 1:19-29. The inventors of Chen
“recognized that conventional human interface and input systems for hand-held electronic devices
tended to be relatively inflexible, cumbersome, and inefficient to use,” see Ex. 1006, 4:27-29, and
“developed a flexible and efficient human interface and input system and techniques that may be
implemented on a variety of small hand-held accessory devices.” See Ex. 1006, 5:44-47.
A particular embodiment of Chen is disclosed in Figure 1, reproduced below. In Figure 1,
the input accelerator device 1006 includes input elements (not shown) such as keys, buttons,
touch pads, actuators, etc., see Ex. 1006, 9:6-10, such that the “input elements are selectively
mapped to one or more functions of the software applications stored on the hand-held host device
117.”7 See Ex. 1006, 9:11-13 (emphasis and coloring added). Chen describes that once a user
interfaces with the input accelerator device, such as to actuate or select an input element, processor
204 of the accelerator device executes instructions stored in memory 206 to generate and covert
an electrical signal into an input signal 122, which is then transmitted to the hand-held host device
117 via communication link 111. See Ex. 1006, 9:22-28. The input signal 122 then causes the
hand-held host device 117 “to execute the software function mapped to the actuated input
element.” See Ex. 1006, 4:28-30. Various inputs to the input accelerator device are mapped to
different functions in the hand-held host device, such as text input, game play, and scrolling
through or navigating a list. See Ex. 1006, 5:54-58. This way, the inventors of Chen addressed
the need for controlling the function of a hand-held host device via user interaction with another
device (i.e., the input accelerator device).
6
I.e., the “provider device” of claim 9 of the ’924 Patent.
7
I.e., the “consumer device” of claim 9 of the ’924 Patent.
19
Chen discloses that interface and input system 114 includes at least an input controller to
“interpret and generate input signals in response to user interaction.” See Ex. 1006, 11:10-17.
Specifically, as shown below in Figure 3, the interface and input system includes an input
controller 316, which may include one or more processors. See Ex. 1006, 11:29-30. The input
controller 316 receives electrical signals 312 from the interface and converts them into input
signals 122 which are subsequently sent to the hand-held host device. See Ex. 1006, 11:30-35.
20
Furthermore, as a POSITA would have appreciated, particularly by Chen’s incorporation

of related disclosures, Chen’s input accelerator device would have been capable of processing
inputs made by the user and communicating to the hand-held host device specific functions and/or
commands based on such user input for the hand-held host device to execute.” See Wolfe Decl.,
¶ 40 (citing Ex. 1007). For example, if the hand-held host device is executing a text application,
then the input controller 316 may map one or more input elements of the input assembly to “one
or more symbols, such as characters, letters, numbers, icons, other types of symbols, or
combinations of different types of symbols.” See id. (citing Ex. 1007, 8:6-11). Additionally, if
the hand-held host device is executing a gaming application, the input controller may map the
input of the input assembly to gaming functions. See id. Thus, Chen discloses that the input
accelerator device 100 is itself capable of processing inputs made by the user and communicating
to the hand-held host device specific functions and/or commands based on such user input for the
hand-held host device to execute. Thus, just like claim 9 of the ’924 Patent, Chen discloses two
devices being in communication such that a user may make inputs into one device (i.e., input
accelerator device or “provider device”) to access and/or execute applications on the other device
(i.e., hand-held host device or the “consumer device”).
21
2. Chen is analogous art

Chen is analogous art to the ’924 Patent. See Wolfe Decl, ¶ 127. Chen is within the field
of endeavor of the ’924 Patent, and particularly relevant to the Challenged Claims, because it
relates to communication between two devices (i.e., an input accelerator device and a hand-held
host electronic device) and using the interface of one device to access and/or execute an application
(i.e., audio content) on the other. See Ex. 1001, cl. 9; Ex. 1006, 6:11-26; Wolfe Decl., ¶¶ 38-40.
Further, Chen is reasonably pertinent to various problems identified by the ’924 Patent and
purportedly addressed by claim 9 such as: (1) accessing applications of one device by another
device (see Ex. 1001, 3:56-4:12); and (2) providing for a user interface associated with a first
device such that a user may make inputs in the user interface associated with the first device to
enable a second device to access and/or execute applications on the second device. See id.
3. Katzer in View of Chen Presents Substantial New Questions of Patentability
A reasonable examiner would have considered the disclosure of Katzer in view of Chen
important when assessing patentability with respect to Challenged Claims. As discussed above,
Katzer discloses a system in which a user may utilize a wireless user interface to interact with
applications on a mobile device. See Ex. 1004, Abstract. Additionally, Chen discloses a system
in which a user may make inputs in one device to control various aspects or functions of another
device. See Ex. 1006, Abstract. Furthermore, Katzer and Chen were not considered during the
prosecution of the ’924 Patent, and disclose the very limitations and/or elements which the
Applicant argued where lacking in the prior art applied during prosecution. Thus, Katzer in view
of Chen presents an SNQ.
a. Motivation to Combine Katzer and Chen
To the extent that Katzer does not disclose that the wireless user interface (i.e., “the
provider device”) is enabled to perform the following limitations of claim 9: (1) “determine at
least a portion of a second plurality of information, based on at least information comprising at
least a portion of said first plurality of information,” and/or (2) “send at least a portion of said
second plurality of information to said consumer device, sending at least a portion of said second
plurality of information to said consumer device enables said consumer device to at least: at least
one or more of determine a first application comprising sets of instructions executable by a
processor, access said first application and execute a set of instructions associated with said first
application,” see Ex. 1001, cl. 9 (emphasis added), Chen discloses and/or renders obvious these
22
claim elements. See Wolfe Decl., ¶¶ 127-133, 135-138; see also Exhibit AA for further details.
Specifically, Chen explains how a user’s interaction with and/or input to the input
accelerator device (i.e., “provider device”) enables the input accelerator device to interpret and
generate input signals in response to user interaction (i.e., the recited “determine at least a portion
of a second plurality of information, based on at least information comprising at least a portion
of said first plurality of information”). See Ex. 1005, 11:10-17. Furthermore, Chen explains that
user interfaces with the input accelerator device may result in an electrical signal being generated
and converted into an input signal, which is then transmitted to the hand-held host device so to
enable the hand-held host device to at least execute software (i.e., the recited “send at least a
portion of said second plurality of information to said consumer device, sending at least a portion
of said second plurality of information to said consumer device enables said consumer device to
at least: at least one or more of determine a first application comprising sets of instructions
executable by a processor, access said first application and execute a set of instructions
associated with said first application”). See Ex. 1005 4:28-30.
A POSITA would have understood that applying Chen’s disclosure that a user interface
may process inputs made by a user and map such inputs to specific functions to be executed by
software on another device to Katzer’s system of a wireless interface extension being used to
interact with applications on a mobile device would be accomplished with a reasonable expectation
of success. See Wolfe Decl, ¶ 127-132. While Katzer discloses processing user inputs, (e.g.,
“convert[ing] . . . inputs to forms recognized by the user applications 310 on the mobile device
102,” see Ex. 1004 6:10-28), the additional processing disclosed in Chen would have
advantageously allowed Katzer’s wireless interface extension to process a user’s interactions as
specific commands to be sent to the mobile device, and hence would have made the system more
efficient. See id. For example, Katzer discloses that “the user may provide input on the touch
screen 312 of the wireless interface extension 100 to control a navigation application on the mobile
device that is output to the touch screen 312.” See Ex. 1004, 6:1-9. Katzer further discloses that
the user may use the wireless interface extension to control music applications on the mobile
device. See Ex. 1004 4:27-33. Modifying the wireless interface extension of Katzer’s “provider
device” to process user interactions and map them to functions to be executed by applications on
the consumer device to “perform various customized functions in response to user interact” (see
Ex. 1004 3:4-16), would save processing power on the consumer device and allow it to more
23
efficiently execute the application(s) running on it. See Wolfe Decl, ¶ 127-132.
Further, a POSITA would have been motivated to combine Katzer and Chen. Both
references are directed to the same field of endeavor: using a first device to access and/or execute
applications on another device. See id. Moreover, Katzer and Chen are each directed to improving
the efficiency of controlling the applications of one device via user input into another device. See
id. Further, both references use the same techniques utilizing wired and/or wireless
communications between two devices such that a user’s inputs to an interface of one device enable
the execution of a function by the other device. See id. These techniques have predictable results
because the underlying communications and processing concepts were well-known and prevalent
in the art at the time of the ’924 Patent. See id.
At most, incorporating Chen’s disclosure into Katzer would have required minor
modifications to the wireless interface extension using well-known and routine techniques and,
therefore, would have led to predictable results regarding the organization of object information.
See id. Accordingly, a POSITA would have understood that the combination of Katzer with Chen
combines prior art elements according to known methods to yield predictable results and/or uses
known techniques to improve similar methods in the same way to yield predictable results. See
id.; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
b. Applicant’s prosecution arguments do not apply to Katzer and Chen
three arguments against the prior art of record in overcoming the Examiner’s grounds of rejection:
(1), the use of “direct” communication between the claimed “consumer” and “provider” devices;
(2) that a “provider device” is enabled to determine and/or send information to the claimed
“consumer device” due to association with user interface element; and (3) that the sending of
information to the consumer device causes activation and/or execution of an application on the
consumer device. See Ex. 1002, 709. However, as discussed below and shown in more detail in
Exhibit AA, Katzer discloses each of these limitations.
First, Chen (like Katzer) also discloses ‘direct’ communications between two devices,
hand-held host device 117 and input accelerator device 100 (i.e., the claimed “consumer device”
and “provider device,” respectively) via communication link 111. See Ex. 1006, 9:22-28.
24
The ’924 Patent Katzer and Chen
Katzer, Fig. 1.
Chen, Fig. 1.
25
Second, like Katzer, Chen discloses that the claimed “provider device” is enabled to
determine and send information to the claimed “consumer device” due to association with user
interface element. For example, Chen discloses that input elements on the input accelerator device
are “selectively mapped to one or more functions of the software applications stored on the hand-
held host device,” see Ex. 1006 9:11-13, and that inputs made on the input accelerator device are
“transmitted over the communication link 111 to the hand-held host device.” See Ex. 1006, 9:22-
28.
Finally, like Katzer, Chen discloses the sending of information to the consumer device
causes activation and execution of an application on the consumer device. For example, Chen
discloses that the transmitted input signals “are processed by the hand-held host device 117 to
execute the software function mapped to the actuated input element.” See id.
Ultimately, because Katzer in view of Chen discloses the Challenged Claims, or at least
renders obvious, each and every limitation of the Challenged Claims, it presents an SNQ. In
addition, Katzer in view of Chen discloses the elements that the Applicant argued distinguished
the claims over the prior art during the prosecution of the ’924 Patent. Hence, a reasonable
examiner would consider the disclosure of Katzer in view of Chen important in determining
whether claims 9-15 are patentable because Katzer in view of Chen was never before the Examiner
or otherwise considered during prosecution. As described above and in more detail in Dr. Wolfe’s
Declaration and in the chart attached as Exhibit AA, Katzer in view of Chen disclose all of the
purported points of novelty and each limitation of the Challenged Claims, namely the central
concept of enabling a user interface of one device to determine and send direct communications to
another device to enable access to and execution of applications. Thus, Katzer in view of Chen
presents an SNQ.
F. Ground 3: Katzer in View of Chen in Further View of Bloebaum Presents

Substantial New Questions of Patentability
Requester incorporates by reference the disclosure related to Katzer and Chen above with
respect to Ground 2. As shown below, Requester submits that the prior art references raise an
SNQ. For example, the references discussed below and in further detail in the attached charts,
when considered as an ordered combination, teach each limitation of the Challenged Claims,
including the concept of using the interface of one device to enable a second device to access and
execute an application.
26
Further, Katzer, Chen, and Bloebaum are all new that were not previously considered of
the ’924 Patent or any related application. As discussed below, none of the arguments and/or claim
amendments that allegedly distinguished the ’924 Patent over the prior art of record apply to any
of these references. Accordingly, Katzer in view of Chen and Bloebaum raises new issues
regarding the patentability of the Challenged Claims and does not present the “same question of
patentability as to the claim has not been decided by the Office in an earlier concluded examination
or review of the patent.” See MPEP § 2242.
1. Overview of Bloebaum
Bloebaum, titled “Displaying Mobile Television Signals on a Secondary Display Device,”
relates to displaying the content of one device on another device. See Ex. 1008, Abstract.
Generally, Bloebaum discloses that a mobile television may receive a broadcast such that the
broadcast can be selected by a user to be displayed on a secondary device. See Ex. 1008, Abstract;
Wolfe Decl., ¶¶ 41-43. Bloebaum describes that because portable mobile communications devices
such as mobile phones have become more sophisticated, a feature such devices are capable of is
receiving and displaying mobile broadcast television signals. See Ex. 1008, ¶ 0002. However,
Bloebaum goes on to explain that though receiving and displaying such mobile broadcast
television signals on a mobile phone may be convenient, the user is constrained to viewing that
content only on the mobile phone, and not on other devices. See Ex. 1008, ¶ 0003. Thus,
Bloebaum discloses a system in which a user may select to display the content being broadcasted
on a primary device8 onto at least a secondary device.9 See Ex. 1008, ¶ 0003.
For example, Bloebaum discloses an exemplary system utilizing multiple displays to
display multiple channels of a mobile television broadcast in Figure 1, reproduced below. Figure
1 portrays a mobile communication device 110, which Bloebaum discloses may be a cellular
telephone. See Ex. 1008, ¶ 0016. The mobile communication device 110 may be connected to a
mobile radio access network (M-RAN) 120, and receive mobile television broadcasts to display.
See Ex. 1008, ¶ 0020. The mobile communication device 110 (Bloebaum’s primary device) has
a user interface and a main processor/control logic unit which includes an application to
Bloebaum’s enable secondary devices, such as television 160 and notebook computer 170, to
display content received by the mobile communication device 110. See Ex. 1008, ¶ 0019.
8
I.e., the recited “consumer device” of claim 9 of the ’924 Patent.
9
I.e., the recited “provider device” of claim 9 of the ’924 Patent.
27
Bloebaum discloses further details of its system in Figure 4, reproduced below. Figure 4
is a flow diagram of a method of utilizing Bloebaum’s system to display content received by
primary device 405 on secondary device 407. See Ex. 1008, ¶ 0028. In Figure 4, the primary
device 405 includes a mobile television device receiver, which receives a mobile television
broadcast from a service provider. See Ex. 1008, ¶ 0028. The viewer then may identify and select
one or more channels to be associated with primary device 410 and secondary device 430 using a
user interface on the primary device 410. See Ex. 1008, ¶ 0030. The primary device then captures
the content, unpacks and decodes the data in steps 415 and 420, if necessary, and then is ready to
display such content at step 425. See Ex. 1008, ¶ 0029. Similarly, content that has been selected
to be displayed on the secondary device is unpacked by the primary device at step 435, and sent to
28
the secondary device at step 440. See Ex. 1008, ¶ 0029. The secondary device receives the re-
broadcasted content at step 445, decodes it at step 450, and displays it at step 455. See Ex. 1008,
¶ 0029. Thus, through the disclosed method, Bloebaum discloses the re-broadcasting of content
on one device (i.e., the primary device) onto another device (i.e., the secondary device). Thus,
similar to claim 9 of the ’924 Patent, Bloebaum discloses two devices being in direct
communication, such that content associated with one device (i.e., Bloebaum’s disclosed primary
device or the claimed “provider device”) may be displayed on another device (i.e., Bloebaum’s
disclosed secondary device or the claimed “consumer device”).
2. Bloebaum is analogous prior art

Bloebaum is analogous art to the ’924 Patent. See Wolfe Decl, ¶ 43. Bloebaum is within
the field of endeavor of the ’924 Patent, and particularly relevant to claim 9 of the ’924 Patent,
because it relates to direct communications between two devices (i.e., a primary and a secondary
29
device) and the second device receiving information related to an application on the first device.
See Ex. 1001, cl. 9; Wolfe Decl., ¶¶ 162-167. Further, Bloebaum is reasonably pertinent to various
problems identified by the ’924 Patent and purportedly addressed by claim 9 such as accessing
applications of one device by another device. See Ex. 1001 3:56-4:12; Wolfe Decl, ¶¶ 162-167.
3. Katzer in View of Chen in Further View of Bloebaum Presents substantial

New Questions of Patentability
A reasonable examiner would have considered the disclosure of Katzer in view of Chen
and further in view of Bloebaum important when assessing patentability with respect to Challenged
Claims. As discussed above, Katzer and Chen disclose a system in which a user may utilize a user
interface on a provider device (e.g., a car stereo) to interact with applications on a consumer device
(e.g., a user’s smartphone). See Wolfe Decl, ¶¶ 162-167. Bloebaum discloses a system for
displaying content of one device on another device. For example, Bloebaum discloses that a user
may display content being broadcasted on a primary device, such as a mobile communication
device, on a secondary device, such as a television or a notebook computer. See id. at ¶¶ 41-43.
None of Katzer, Chen, or Bloebaum were considered during the prosecution of the ’924 Patent or
any parent application, and disclose the very limitations and/or elements which the Applicant
argued where lacking in the prior art applied during prosecution. Thus, Katzer in view of Chen
and Bloebaum presents an SNQ.
a. Motivation to Combine Katzer, Chen, and Bloebaum
To the extent that the disclosure of Katzer and Chen do not disclose that the wireless
interface extension (i.e., the “provider device”) is enabled to “receive a first plurality of
information from said consumer device, said first plurality of information comprising information
related to a one or more applications,” Bloebaum provides such disclosure. See Wolfe Decl,
¶¶ 162-167.
Specifically, Bloebaum explains how a secondary device (i.e., the claimed “provider
device”) receives rebroadcast signals from the primary device to display the content from the
primary device on the secondary device (i.e., “receive a first plurality of information from said
consumer device, said first plurality of information comprising information related to a one or
more applications”). See id.; Ex. 1008, ¶ 0025. Bloebaum further discloses that content stored on
or received by a primary device may be transmitted to and received by a secondary device such
that the secondary device may display such content. Ex. 1008, ¶ 0004. Additionally, in step 445
30
of Figure 4 above, Bloebaum discloses that the secondary device receives content from the primary
device.
A POSITA would have understood that incorporating Bloebaum’s rebroadcasting from a
primary device to a secondary device in the system of Katzer and Chen would be accomplished
with a reasonable expectation of success. See Wolfe Decl, ¶¶ 162-167. As discussed above, Katzer
and Chen disclose using an interface on a provider device (e.g., a car stereo) to interact with
applications on a consumer device (e.g., a user’s smartphone). See id.
A POSITA would have been motivated to apply Bloebaum’s method of rebroadcasting
display content from a primary device to a secondary device to Katzer’s system of utilizing a
wireless user interface to interact with applications on a mobile device and Chen’s system of an
input accelerator device being utilized to remotely operate a hand-held host electronic device such
as a cell phone. See id. This would have advantageously allowed Katzer/Chen’s systems to display
on the wireless user interface the content from the mobile device more accurately. See id. For
example, Katzer discloses that a “user may provide input on the touch screen 312 of the wireless
interface extension 100 to control a navigation application on the mobile device that is output to
the touch screen 312.” See Ex. 1004, 6:6-9 (emphasis added). Thus, because Katzer discloses
that an application on the mobile device is displayed on the user interface extension, a POSITA
would have readily appreciated that the rebroadcasting disclosures of Bloebaum are directly
relevant to this point and particularly point out various methods of doing so. See Ex. 1008,
Abstract; Wolfe Decl., ¶¶ 162-167. Additionally, the methods disclosed by Bloebaum would have
provided for a more accurate representation of the content from the mobile device on the wireless
interface extension of Katzer. See Wolfe Decl, ¶¶ 162-167. Moreover, such capability was well-
known in the art and routinely implemented in similar systems well before the priority date of the
’924 Patent, and so would have been little more than an obvious combination of familiar prior art
elements according to known methods to yield predictable results. See id.; see also KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, a POSITA would have had a reasonable
expectation of success in implementing the disclosure of Bloebaum to provide for a display on the
wireless user interface of Katzer, combined with the user interface capabilities of Chen. See Wolfe
Decl, ¶¶ 162-167. At most, incorporating Bloebaum’s disclosure into Katzer/Chen would have
required minor modifications to the communication between the wireless interface extension and
the mobile device using well-known and routine techniques and, therefore, would have led to
31
predictable results regarding the organization of object information. See id.

b. Applicant’s prosecution arguments do not apply to Katzer in view of
Chen and Bloebaum
Katzer in view of Chen and Bloebaum presents an SNQ. Unlike the prior art cited during
prosecution, this combination teaches, suggests, and motivates its disclosure to be used as called
for by the Challenged Claims of the ’924 Patent, and further discloses each and every limitation
of the Challenged Claims.
three arguments against the prior art of record in overcoming the Examiner’s grounds of rejection.
First, the claims are allegedly directed to “direct” communication between the claimed “consumer”
and “provider” devices and the prior art allegedly does not disclose “direct” communication
between such devices. Second, the prior art allegedly does not disclose that the claimed “provider
device” is enabled to determine and/or send information to the claimed “consumer device” due to
association with user interface element. Third, the prior art allegedly does not disclose that the
sending of information to the consumer device causes activation and/or execution of an application
on the consumer device. See Ex. 1002, 709. None of these arguments can be applied to the
proposed ground of rejection in view of Katzer, Chen and Bloebaum.
First, like Katzer, Chen, and Bloebaum discloses ‘direct’ communications between two
devices, primary device 405 and secondary device 407 (i.e., the claimed “consumer device” and
“provider device,” respectively). See Wolfe Decl., ¶¶ 43.
’924 Patent Bloebaum

Bloebaum, Fig. 4.
32
Second, as discussed above, Katzer discloses that the claimed “provider device” is enabled
to determine and send information to the claimed “consumer device” due to association with user
interface element. See Ex. 1004, 6:10-28.
Finally, as discussed above, Katzer also discloses the sending of information to the
consumer device causes activation and execution of an application on the consumer device. See
Ex. 1004, 1:40-45.
Ultimately, because Katzer in view of Chen and Bloebaum discloses the Challenged
Claims, or at least renders obvious, each and every limitation of the Challenged Claims, it presents
an SNQ. Katzer in view of Chen and Bloebaum discloses the elements that the Applicant argued
distinguished the claims over the prior art during the prosecution of the ’924 Patent. Hence, a
reasonable examiner would consider the disclosure of Katzer in view of Chen and Bloebaum
important in determining whether claims 9-15 are patentable because these references were not
before the Examiner or otherwise considered during prosecution. As described above and in more
detail in the chart attached as Exhibit AA, the disclosure of Katzer in view of Chen and Bloebaum
go directly to all the purported points of novelty (and each and every limitation) of the Challenged
Claims of ’924 Patent, namely the central concept of enabling a user interface of one device to
determine and send direct communications to another device to enable access to and execution of
applications. Thus, Katzer in view of Chen and Bloebaum presents an SNQ.
G. Ground 4: White Presents Substantial New Questions of Patentability
White raises an SNQ. For example, White discussed below and in further detail in the
attached charts discloses, or at least renders obvious, each limitation of the Challenged Claims,
including the concept of using the interface of a first device to enable a second device to access
and execute an application.
Further, White is a new reference that was not previously considered during the prosecution
of the ’924 Patent or any parent application. As discussed below, none of the arguments and/or
claim amendments that allegedly distinguished the ’924 Patent over the prior art of record apply
to White. Accordingly, White raises new issues regarding the patentability of the Challenged
Claims and does not present the “same question of patentability as to the claim has not been
decided by the Office in an earlier concluded examination or review of the patent.” See MPEP §
2242.
33
1. Overview of White
White, titled “System and Method for Connecting a Portable Audio Player to an
Automobile Sound System,” relates to a system and method for connecting an electronic device
(e.g., a cell phone) to an automobile sound system, such that a user may utilize the interface of the
automobile audio system to select and access audio content stored in the memory of the electronic
device. See Ex. 1005, Abstract. White generally discloses that the electronic device and an
automobile audio system communicative via a wired or wireless connection, such that audio
content on the electronic device may be played through the automobile sound system. See Ex.
1005, 15:10-45; Wolfe Decl. ¶¶ 34-37. White discloses that this content may be accessed via the
internet or stored locally on the electronic device. See Ex. 1005, 2:46-63; 12:38-44.
An exemplary embodiment is provided in Figure 9, reproduced below. The electronic
device 907 is communicatively coupled to the automobile audio system via interface cable/bus
line 911, and “[a]udio information communicated to electronic device 907 [i.e., the claimed
“consumer device”] may be transferred to audio system 901 [i.e., the claimed “provider device”]
such that a user may listen to selected audio information.” See Ex. 1005, 17:56-58 (emphasis and
coloring added). Interface 904 is a component of audio system 901 (White’s “provder device”)
that provides a physical connection point for electronic device 907 (White’s “consumer device”)
to the audio system 901 (“provder device”). Ex. 1005, 17:38-51. While Fig. 9 depicts interface
904 as external to audio system 901, White expressly discloses that interface 904 may be
implemented as “as a standard interface integrated into the audio system, thereby allowing [direct]
communication between electronic device 907 (the claimed “consumer device”), audio system
901 (the claimed “provider device”) and/or console 900.” Id., 18:1-4; Wolfe Decl at ¶¶ 34-37.
Furthermore, White’s automobile audio system 901 may have a user interface that allows
the user to “select an audio information source that is an audio file saved in the [electronic device’s]
memory,” or “to navigate through a plurality of audio files.” See Ex. 1005, cl. 16, 17. White
additionally discloses that the electronic device 907 (the “consumer device”) is “configured to
communicate interface information to the different electronic device [i.e., audio system 901, the
“provider device”] in order to allow a user to view at least a partial representation of a graphical
user interface that includes the graphical interface item on the associated display [of audio system
901].” See Ex. 1005, cl. 1.
34
Figure 8 of White, reproduced below, provides details regarding one method of utilizing
the embodiment described by Figure 9. Figure 8 provides a flow diagram of a method of providing
audio content to a remote device, such as an automobile sound system. See Ex. 1005, 15:10-18.
After a user selects audio information at step 801, that information is formatted at step 806 and
wirelessly communicated to a selected remote device at step 807. See Ex. 1005, 15:10-45. For
example, a user may select an audio file that is on the electronic device to be played through an
automobile sound system. See Ex. 1005, 17:56-58. After the audio information is received by the
remote device (i.e., automobile sound system) at step 808, the remote device may determine
whether additional data needs to be received at step 809, and if not, the audio content can be
executed at step 810. See id., see also Ex. 1005, 7:41-8:9. Though not explicitly shown in Figure
8, White discloses that the user may use an interface associated with the remote device to navigate
the audio files available on the mobile device and/or select a particular audio file for playback.
See Ex. 1005, cl. 1, 16. Thus, just like claim 9 of the ’924 Patent, White discloses two devices
being in communication such that a user may make inputs into one device (i.e., the audio system
901 which is the claimed “provider device”) to access and/or execute applications on the other
device (i.e., the electronic device 907 which is the claimed “consumer device”).
35
Additionally, White discloses that “[t]he present invention is not limited to communicating
only audio information. One skilled in the art can appreciate that other types of information, such
as video, textual, etc. may be communicated utilizing the systems and methods disclosed herein
without departing from the spirit and scope of the present invention.” See Ex. 1005, 3:8-13. Thus,
White not only discloses the execution of applications related to audio information, but other types
of defined applications as well. See Ex. 1001, 3:51-56.
2. White is analogous prior art
White is analogous art to the ’924 Patent. See Wolfe Decl, ¶ 36. White is both within the
field of endeavor and reasonably pertinent to one or more problems concerning the purported
invention of the ’924 Patent. See id. White is within the field of endeavor of the ’924 Patent, and
particularly relevant to claim 9, because it relates to communication between two devices (i.e., an
36
electronic device and an automobile audio system) and using the interface of one device to access
and/or execute an application (i.e., audio content) on the other. See Ex. 1001, cl. 9; Wolfe Decl.
¶¶ 34-37. Further, White is reasonably pertinent to various problems identified by the ’924 Patent
and purportedly addressed by claim 9 such as: (1) accessing applications of one device by another
device (see id. 3:56-4:12); and (2) providing for a user interface associated with a first device such
that a user may make inputs in the user interface associated with the first device to enable a second
device to access and/or execute applications on the second device. See id.
3. White Presents a Substantial New Question of Patentability
A reasonable examiner would have considered the disclosure of White important when
assessing patentability with respect to the Challenged Claims. As discussed above, White
discloses a system and method of connecting an electronic device to the audio system of an
automobile such that a user may utilize the interface of the automobile audio system to select audio
content stored in the memory of the electronic device. See Ex. 1005, Abstract. Additionally,
White was not considered during the prosecution of the ’924 Patent, and discloses the limitations
and/or elements which the Applicant argued where lacking in the prior art applied during
prosecution. Thus, White presents an SNQ.
three arguments against the prior art of record in overcoming the Examiner’s grounds of rejection.
White discloses, or at least renders obvious, each of the limitations of at least Claim 9, including
all three concepts identified as distinguishable from the prior art cited during prosecution.
First, White discloses ‘direct’ communications between electronic device 907 (i.e., the
claimed “consumer device”) and audio system 901 (i.e., the claimed “provider device”). See
Wolfe Decl. ¶¶ 34-37. As discussed above, White discloses that interface 904 can be implemented
as an integrated part of audio system 901 and allows for direct communication between electronic
device 907 and audio system 901. See Ex. 1005 at 17:38-51, 18:1-4. White discloses that this
results in the accessing/execution of an application on one device. See generally Ex. 1005.
37
’924 Patent White
White, Fig. 9.
Second, White discloses that the claimed “provider device” is enabled to determine and
send information to the claimed “consumer device” due to association with user interface element.
See Wolfe Decl. ¶¶ 34-37. For example, White discloses that the automobile sound system allows
users to navigate through a list of songs and, once it determines that a selection is made, the
automobile sound system sends the selection to the electronic device. See Ex. 1005, cl. 17, 28.
Finally, White discloses the sending of information to the consumer device causes
activation and execution of an application on the consumer device. See Wolfe Decl. ¶¶ 34-37. For
example, White discloses that such user interactions with the automobile sound system are sent to
the portable electronic device for execution of a relevant application (e.g., a music application) on
the portable mobile device. See Ex. 1005, cl. 1, 3, 15, 17, 28.
Ultimately, because White teaches, suggests, and motivates its disclosure to be used in a
way suggested by the claims of the ’924 Patent, and further discloses, or at least renders obvious,
each and every limitation of claims 9-15, it presents an SNQ. White discloses the elements that
the Applicant argued distinguished the claims over the prior art during the prosecution of the ’924
Patent. Hence, a reasonable examiner would consider the disclosure of White important in
determining whether claims 9-15 are patentable because White was never before the Examiner or
otherwise considered during prosecution. As described above and in more detail in Dr. Wolfe’s
Declaration and in the chart attached as Exhibit BB, the disclosure of White go directly to all of
the purported points of novelty (and each and every limitation) of the Challenged Claims of ’924
38
Patent, namely the central concept of enabling a user interface of one device to determine and send
direct communications to another device to enable access to and execution of applications. Thus,
White presents an SNQ.
H. Ground 5: White in View of Chen Presents Substantial New Questions of
Patentability
Requester incorporates by reference the disclosure related to White and Chen above with
respect to Grounds 1 and 2, respectively. As shown below, Requester submits that White in view
of Chen presents an SNQ. For example, White in view of Chen as discussed below and in further
detail in Dr. Wolfe’s Declaration and in the attached charts, when considered in combination,
discloses each limitation of the Challenged Claims, including the concept of using the interface of
one device to enable a second device to access and/or execute an application, as required by claim
9 of the ’924 Patent.
Further, White and Chen are new references that were not previously considered. As
discussed above, none of the arguments and/or claim amendments that allegedly distinguished
the ’924 Patent over the prior art of record apply to White or Chen. Accordingly, White in view
of Chen raises new issues regarding the patentability of the Challenged Claims and does not
present the “same question of patentability as to the claim has not been decided by the Office in
an earlier concluded examination or review of the patent.” See MPEP § 2242.
To the extent that White does not disclose that the automobile audio system (i.e., “the
provider device”) is enabled to perform the following limitations of claim 9: (1) “determine at least
a portion of a second plurality of information, based on at least information comprising at least a
portion of said first plurality of information,” and/or (2) “send at least a portion of said second
plurality of information to said consumer device, sending at least a portion of said second plurality
of information to said consumer device enables said consumer device to at least: at least one or
more of determine a first application comprising sets of instructions executable by a processor,
access said first application and execute a set of instructions associated with said first
application,” see Ex. 1001, cl. 9 (emphasis added), White in view of Chen discloses and/or renders
obvious these claim elements. See Wolfe Decl. ¶¶ 257, 265-272, 274-278; see also Ex. BB for
further details. Specifically, Chen explains how a user’s interaction with and/or input to the input
accelerator device (i.e., “provider device”) enables the input accelerator device to interpret and
generate input signals in response to user interaction (i.e., “determine at least a portion of a second
plurality of information, based on at least information comprising at least a portion of said first
39
plurality of information”). See Ex. 1005, 11:10-17; Wolfe Decl. ¶¶ 257, 265-272. Furthermore,
Chen explains that user interfaces with the input accelerator device may result in an electrical
signal being generated and converted into an input signal, which is then transmitted to the hand-
held host device so to enable the hand-held host device to at least execute software (i.e., “send at
least a portion of said second plurality of information to said consumer device, sending at least a
portion of said second plurality of information to said consumer device enables said consumer
device to at least: at least one or more of determine a first application comprising sets of
instructions executable by a processor, access said first application and execute a set of
instructions associated with said first application”). See Ex. 1005 4:28-30; Wolfe Decl. ¶¶ 257,
274-278.
A POSITA would have been motivated to apply Chen’s disclosure that a user interface
may process inputs made by a user and map such inputs to specific functions to be executed by
software on another device to White’s system of connecting an electronic device to an automobile
audio system such that a user may utilize the interface of the automobile audio system to select
and/or navigate through audio content stored in the memory of the electronic device. See Wolfe
Decl., ¶¶ 256-262. This would have advantageously allowed White’s automobile audio system to
process a user’s interactions as specific commands to be sent to the electronic device, and hence
would have made the system more efficient. See id. For example, claim 17 of White claims that
a “portable electronic device is configured to communicate interface information to the different
electronic device [i.e., the automobile sound system] in order to allow the user to view the
graphical menu on the associated display.” See Ex. 1005, Cl. 17. Additionally, claim 17 further
claims that “a user can interact with the different electronic device [i.e., automobile sound system]:
(1) to navigate through a plurality of audio files; (2) to view at least a portion of the graphical menu
on the associated display, wherein the portion comprises the name; and (3) to select an available
audio file for processing.” See Ex. 1005, Cl. 17. Modifying the automobile sound system of White
to processing the user interactions and mapping them to functions to be executed by applications
on the electronic device such as navigating through and/or selecting audio files would save
processing power on the consumer device and to allow it to more efficiently execute the
application(s) running on it. See Wolfe Decl., ¶¶ 256-262. Moreover, as disclosed by Chen, such
capability was well-known in the art and routinely implemented in similar systems well before the
priority date of the ’924 Patent, and so would have been little more than an obvious combination
40
of familiar prior art elements according to known methods to yield predictable results. See id.; see
also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, a POSITA would have had a
reasonable expectation of success in implementing the user interface system disclosed by Chen in
the system disclosed by White. See Wolfe Decl, ¶¶ 256-262. At most, incorporating Chen’s
disclosure into White would have required minor modifications to the automobile sound system
using well-known and routine techniques and, therefore, would have led to predictable results
regarding the organization of object information. See id.
A reasonable examiner would have considered the disclosure of White in view of Chen
important when assessing patentability with respect to the Challenged Claims. As discussed
above, White discloses a system and method of connecting an electronic device to the sound
system of an automobile such that a user may utilize the interface of the automobile sound system
to select audio content stored in the memory of the electronic device. See Ex. 1004, Abstract.
Additionally, Chen discloses a system in which a user may make inputs in one device to control
various aspects or functions of another device. See Ex. 1005, Abstract. Furthermore, White and
Chen were not considered during the prosecution of the ’924 Patent, and disclose the exact
limitations and/or elements which the Applicant argued where lacking in the prior art applied
during prosecution. Thus, White in view of Chen presents an SNQ.
White in view of Chen presents an SNQ. Unlike the prior art cited during prosecution,
White in view of Chen discloses and discloses each and every limitation of the Challenged Claims,
including the limitations which likely resulted in the allowance of the Challenged Claims, as
discussed in greater detail above.
Thus, White in view of Chen renders obvious each and every element of claims 9-15, and
therefore presents an SNQ. A reasonable examiner would consider the combined disclosure of
these references important in determining whether claims 9-15 are patentable because the
references were never before the Examiner or otherwise considered during prosecution. As
described above and in more detail in the chart attached as Exhibit BB, the combination of White
and Chen goes directly to all of the purported points of novelty (and each and every limitation) of
the Challenged Claims. Namely, the proposed combination discloses, or at least renders obvious,
all claim limitations of claim 9-15, including the central concept of utilizing the user interface of
one device to enable another device to access and/or execute applications.
41
II. DETAILED APPLICATION OF THE PRIOR ART TO EVERY CLAIM FOR

WHICH REEXAMINATION IS REQUESTED
A. Proposed Rejection of the Claims
The present request presents multiple proposed rejections based on anticipation and
obviousness, based on the primary references White and Katzer, and various combinations of the
primary references with secondary references Chen and Bloebaum.
Requester notes that the proposed rejections below are based on anticipation under 35
U.S.C. § 103(b) and/or (e) and obviousness under 35 U.S.C. § 103(a). Requester notes that, even
if there are minor differences between cited disclosures of the prior art and the claimed concepts,
the claims are still obvious, as a POSITA would not have appreciated some new synergy or
unexpected results from the limitations given the disclosures of the prior art and the general
knowledge of a POSITA. When compared with the prior art described below and in light of the
knowledge of a POSITA, any “differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103 (pre-AIA). The
proposed rejections are listed below and are described in further detail in the attached claim charts.
See Exhibit BB.
Proposed Rejection 1: Claims 9, 10, 11, 12, 13, 14, and 15 are anticipated in view of Katzer
Proposed Rejection 2: Claims 9, 10, 11, 12, 13, 14, and 15 are obvious over Katzer in view of Chen
Proposed Rejection 3: Claims 9, 10, 11, 12, 13, 14, and 15 are obvious over Katzer in view of Chen
in further view of Bloebaum
Proposed Rejection 4: Claims 9, 10, 11, 12, 13, 14, and 15 are anticipated and/or rendered obvious
in view of White
Proposed Rejection 5: Claims 9, 10, 11, 12, 13, 14, and 15 are obvious over White in view of Chen
The claim charts provided as Exhibits AA and BB provide a detailed analysis mapping
each and every element of the above-listed claims to the prior art. Below, Requester summarizes
the proposed grounds.
42
Proposed rejection 1:
Regarding claim 9, Katzer discloses a non-transitory computer-readable storage
medium having at least a computer-readable program stored therein, said computer-
readable program comprising sets of instructions executable by a processor, said computer-
readable program comprising a one or more set of instructions when executed by a processor
enables a provider device to at least (although the preamble may not be limiting; see Ex. 1004
Abstract, 8:32-47, 8:48-61, 9:38-42, Fig. 6):
i. associate said provider device with a consumer device (see Ex. 1004 Abstract, 1:46-
53, 3:63-4:12, Fig. 1, Fig. 3);
plurality of information comprising information related to a one or more applications (see
Ex. 1004 1:46-53, 1:40-45, 7:21-26, 2:26-41, 4:27-33);
iii. determine at least a portion of a second plurality of information, based on at least
information comprising at least a portion of said first plurality of information (see Ex. 1004
1:40-45, 1:46-53, 6:10-28, Fig. 3, Fig. 6);
device (see Ex. 1004 1:40-45, 3:63-4:12, 7:21-26), sending at least a portion of said second
plurality of information to said consumer device enables said consumer device to at least:
at least one or more of determine a first application comprising sets of instructions
associated with said first application (see Ex. 1004 1:40-45, 3:4-16, 5:61-6:9, Fig. 3); and
v. associate a first user interface element with at least a first set of instructions, said
first user interface element associated with said provider device (see Ex. 1004 Abstract, 4:13-
26, 4:27-33, 6:10-28, 9:38-42, Fig. 3), an interaction with said first user interface element
enables execution of said first set of instructions, execution of said first set of instructions
enables at least one or more of determining at least a portion of said second plurality of
information and sending at least a portion of said second plurality of information to said
consumer device (see Ex. 1004 Abstract, 4:27-33, 5:54-60, 5:61-6:9, 6:10-28, 9:38-42, Fig. 3).
Regarding claim 10, Katzer discloses the non-transitory computer-readable storage
medium of claim 9, wherein at least execution of a set of instructions associated with said
computer-readable program further enables said provider device to at least process audio
43
related information that is at least one or more of sent to said consumer device and received
from said consumer device (see Ex. 1004 1:40-45, 1:46-53, 2:26-41, 3:44-62, 4:27-33, 6:10-28,
7:21-26, Fig. 3, Fig. 6).
computer-readable program further enables said provider device to at least display
information or play video associated with or received from said consumer device, on a
display associated with said provider device (see Ex. 1004 1:40-45, 1:46-53, 2:26-41, 4:27-33,
7:21-26).
medium of claim 9, wherein said non-transitory computer-readable storage medium is
associated with said provider device, said first user interface element associated with said
provider device, further wherein said first user interface element comprises at least one of a
touch screen, a physical button, a software widget, a touch pad, a scroll wheel, a mouse, a
key pad, a soft key, an audio input device, an audio output device, a video input device, a
display, a bar code reader and a switch (see Ex. 1004 6:10-28, 8:12-22, 8:62-9:19, Fig. 3).
computer-readable program further enables said provider device to at least associate with
said consumer device using at least one of a wired communication technology, a wireless
communication technology, USB, Bluetooth, Wi-Fi and other communication technologies.
(see Ex. 1004 2:50-60, 5:16-23, 7:48-8:5).
associated with said provider device, said provider device is one of a smart phone, a tablet, a
smart device, a mobile device, a laptop, a desktop and a gaming console (see Ex. 1004 Abstract,
8:32-47, 8:48-61, Fig. 6).
computer-readable program further enables said provider device to at least play at least one
44
or more of an audio content, a video content and an audiovisual content (see Ex. 1004 1:40-
45, 4:27-33, 3:44-62, Fig. 2.).
Regarding claim 9, Katzer in view of Chen discloses a non-transitory computer-
readable storage medium having at least a computer-readable program stored therein, said
computer-readable program comprising sets of instructions executable by a processor, said
computer-readable program comprising a one or more set of instructions when executed by
a processor enables a provider device to at least (although the preamble may not be limiting;
see Ex. 1004 Abstract, 8:32-47, 8:48-61, 9:38-42, Fig. 6):
53, 3:63-4:12, Fig. 1, Fig. 3);
Ex. 1004 1:46-53, 1:40-45, 7:21-26, 2:26-41, 4:27-33);
1:40-45, 1:46-53, 6:10-28, Fig. 3, Fig. 6; see also Ex. 1006 9:1-13, 9:22-28, 11:29-30, Fig. 1; see
also Ex. 1007 8:66-9:25);
associated with said first application (see Ex. 1004 1:40-45, 3:4-16, 5:61-6:9, Fig. 3; see also
Ex. 1006 9:1-13, 9:22-28, 11:29-30, Fig. 1; see also Ex. 1007 8:66-9:25); and
45
Regarding claim 10, Katzer in view of Chen discloses the non-transitory computer-
readable storage medium of claim 9, wherein at least execution of a set of instructions
associated with said computer-readable program further enables said provider device to at
least process audio related information that is at least one or more of sent to said consumer
device and received from said consumer device (see Ex. 1004 1:40-45, 1:46-53, 2:26-41, 3:44-
62, 4:27-33, 6:10-28, 7:21-26, Fig. 3, Fig. 6).
least display information or play video associated with or received from said consumer device,
on a display associated with said provider device (see Ex. 1004 1:40-45, 1:46-53, 2:26-41, 4:27-
33, 7:21-26).
readable storage medium of claim 9, wherein said non-transitory computer-readable storage
medium is associated with said provider device, said first user interface element associated
with said provider device, further wherein said first user interface element comprises at least
one of a touch screen, a physical button, a software widget, a touch pad, a scroll wheel, a
mouse, a key pad, a soft key, an audio input device, an audio output device, a video input
device, a display, a bar code reader and a switch (see Ex. 1004 6:10-28, 8:12-22, 8:62-9:19,
Fig. 3).
least associate with said consumer device using at least one of a wired communication
technology, a wireless communication technology, USB, Bluetooth, Wi-Fi and other
communication technologies. (see Ex. 1004 2:50-60, 5:16-23, 7:48-8:5).
medium is associated with said provider device, said provider device is one of a smart phone,
46
a tablet, a smart device, a mobile device, a laptop, a desktop and a gaming console (see Ex.
1004 Abstract, 8:32-47, 8:48-61, Fig. 6).
least play at least one or more of an audio content, a video content and an audiovisual content
(see Ex. 1004 1:40-45, 4:27-33, 3:44-62, Fig. 2.).
Regarding claim 9, Katzer in view of Chen in further view of Bloebaum discloses a non-
transitory computer-readable storage medium having at least a computer-readable program
stored therein, said computer-readable program comprising sets of instructions executable
by a processor, said computer-readable program comprising a one or more set of
instructions when executed by a processor enables a provider device to at least (although the
preamble may not be limiting; see Ex. 1004 Abstract, 8:32-47, 8:48-61, 9:38-42, Fig. 6):
53, 3:63-4:12, Fig. 1, Fig. 3);
Ex. 1004 1:46-53, 1:40-45, 7:21-26, 2:26-41, 4:27-33; see also Ex. 1008 Abstract, ¶¶ 0002-0004,
¶¶ 0027-0029, Fig. 1, Fig. 4);
1:40-45, 1:46-53, 6:10-28, Fig. 3, Fig. 6; see also Ex. 1006 9:1-13, 9:22-28, 11:29-30, Fig. 1; see
also Ex. 1007 8:66-9:25);
47
associated with said first application (see Ex. 1004 1:40-45, 3:4-16, 5:61-6:9, Fig. 3; see also
Ex. 1006 9:1-13, 9:22-28, 11:29-30, Fig. 1; see also Ex. 1007 8:66-9:25); and
from said consumer device (see Ex. 1004 1:40-45, 1:46-53, 2:26-41, 3:44-62, 4:27-33, 6:10-28,
7:21-26, Fig. 3, Fig. 6).
Regarding claim 11, Katzer in view of Chen in further view of Bloebaum discloses the
non-transitory computer-readable storage medium of claim 9, wherein at least execution of
a set of instructions associated with said computer-readable program further enables said
provider device to at least display information or play video associated with or received from
said consumer device, on a display associated with said provider device (see Ex. 1004 1:40-
45, 1:46-53, 2:26-41, 4:27-33, 7:21-26).
non-transitory computer-readable storage medium of claim 9, wherein said non-transitory
computer-readable storage medium is associated with said provider device, said first user
interface element associated with said provider device, further wherein said first user
interface element comprises at least one of a touch screen, a physical button, a software
widget, a touch pad, a scroll wheel, a mouse, a key pad, a soft key, an audio input device, an
audio output device, a video input device, a display, a bar code reader and a switch (see Ex.
1004 6:10-28, 8:12-22, 8:62-9:19, Fig. 3).
48
provider device to at least associate with said consumer device using at least one of a wired
communication technology, a wireless communication technology, USB, Bluetooth, Wi-Fi
and other communication technologies. (see Ex. 1004 2:50-60, 5:16-23, 7:48-8:5).
non-transitory computer-readable storage medium of claim 9, wherein said non-transitory
computer-readable storage medium is associated with said provider device, said provider
device is one of a smart phone, a tablet, a smart device, a mobile device, a laptop, a desktop
and a gaming console (see Ex. 1004 Abstract, 8:32-47, 8:48-61, Fig. 6).
provider device to at least play at least one or more of an audio content, a video content and
an audiovisual content (see Ex. 1004 1:40-45, 4:27-33, 3:44-62, Fig. 2.).
Regarding claim 9, White discloses a non-transitory computer-readable storage
medium having at least a computer-readable program stored therein, said computer-
cl. 28, cl. 29, 12:38-53, 15:10-24, 15:65-16:17, Fig. 3, Fig. 8, Fig. 9):
i. associate said provider device with a consumer device (see Ex. 1005 2:64-3:7, 17:38-
51, 17:52-67, Fig. 9);
Ex. 1005 cl. 1, cl. 3, cl. 17, cl. 28, 14:51-65, 15:10-24, 15:42-53, Fig. 8);
cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28);
49
device (see Ex. 1005 cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28), sending at least a portion of said
second plurality of information to said consumer device enables said consumer device to at
least:
associated with said first application (see Ex. 1005 cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28, 15:65-
16:17, Fig. 8); and
first user interface element associated with said provider device (see Ex. 1005 cl. 1, cl. 3, cl.
15, cl. 16, cl. 17, cl. 28), an interaction with said first user interface element enables execution
of said first set of instructions, execution of said first set of instructions enables at least one
or more of determining at least a portion of said second plurality of information and sending
at least a portion of said second plurality of information to said consumer device (see Ex.
1005 see Ex. 1005 cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28).
Regarding claim 10, White discloses the non-transitory computer-readable storage
from said consumer device (see Ex. 1005 cl. 1, cl. 3, cl. 17).
computer-readable program further enables said provider device to at least display
information or play video associated with or received from said consumer device, on a
display associated with said provider device (see Ex. 1005 cl. 1, cl. 3, cl. 17).
associated with said provider device, said first user interface element associated with said
provider device, further wherein said first user interface element comprises at least one of a
touch screen, a physical button, a software widget, a touch pad, a scroll wheel, a mouse, a
50
key pad, a soft key, an audio input device, an audio output device, a video input device, a
display, a bar code reader and a switch (see Ex. 1005 cl. 1, cl. 3, cl. 15).
computer-readable program further enables said provider device to at least associate with
said consumer device using at least one of a wired communication technology, a wireless
communication technology, USB, Bluetooth, Wi-Fi and other communication technologies.
(see Ex. 1005 8:42-54, 15:25-41, Fig. 8).
associated with said provider device, said provider device is one of a smart phone, a tablet, a
smart device, a mobile device, a laptop, a desktop and a gaming console (see Ex. 1005 cl. 28,
29).
computer-readable program further enables said provider device to at least play at least one
or more of an audio content, a video content and an audiovisual content (see Ex. 1005 3:8-
21,15:65-17, Fig. 8).
Regarding claim 9, White in view of Chen discloses a non-transitory computer-readable
storage medium having at least a computer-readable program stored therein, said computer-
cl. 28, cl. 29, 12:38-53, 15:10-24, 15:65-16:17, Fig. 3, Fig. 8, Fig. 9):
i. associate said provider device with a consumer device (see Ex. 1005 2:64-3:7, 17:38-
51, 17:52-67, Fig. 9);
Ex. 1005 cl. 1, cl. 3, cl. 17, cl. 28, 14:51-65, 15:10-24, 15:42-53, Fig. 8);
51

cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28; see also Ex. 1006 9:1-13, 9:22-28, 11:29-30, Fig. 1; see also
Ex. 1007 8:66-9:25);
device (see Ex. 1005 cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28), sending at least a portion of said
second plurality of information to said consumer device enables said consumer device to at
least:
associated with said first application (see Ex. 1005 cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28, 15:65-
16:17, Fig. 8; see also Ex. 1006 9:1-13, 9:22-28, 11:29-30, Fig. 1; see also Ex. 1007 8:66-9:25);
and
first user interface element associated with said provider device (see Ex. 1005 cl. 1, cl. 3, cl.
15, cl. 16, cl. 17, cl. 28), an interaction with said first user interface element enables execution
of said first set of instructions, execution of said first set of instructions enables at least one
or more of determining at least a portion of said second plurality of information and sending
at least a portion of said second plurality of information to said consumer device (see Ex.
1005 see Ex. 1005 cl. 1, cl. 3, cl. 15, cl. 16, cl. 17, cl. 28).
Regarding claim 10, White in view of Chen discloses the non-transitory computer-
least process audio related information that is at least one or more of sent to said consumer
device and received from said consumer device (see Ex. 1005 cl. 1, cl. 3, cl. 17).
least display information or play video associated with or received from said consumer device,
on a display associated with said provider device (see Ex. 1005 cl. 1, cl. 3, cl. 17).
52
medium is associated with said provider device, said first user interface element associated
with said provider device, further wherein said first user interface element comprises at least
one of a touch screen, a physical button, a software widget, a touch pad, a scroll wheel, a
mouse, a key pad, a soft key, an audio input device, an audio output device, a video input
device, a display, a bar code reader and a switch (see Ex. 1005 cl. 1, cl. 3, cl. 15).
least associate with said consumer device using at least one of a wired communication
technology, a wireless communication technology, USB, Bluetooth, Wi-Fi and other
communication technologies. (see Ex. 1005 8:42-54, 15:25-41, Fig. 8).
medium is associated with said provider device, said provider device is one of a smart phone,
a tablet, a smart device, a mobile device, a laptop, a desktop and a gaming console (see Ex.
1005 cl. 28, 29).
least play at least one or more of an audio content, a video content and an audiovisual content
(see Ex. 1005 3:8-21,15:65-17, Fig. 8).
B. Secondary Considerations
This Request demonstrates that the Challenged Claims of the ’924 Patent are unpatentable
as obvious in view of the prior art references. The Applicant did not identify any evidence of
secondary considerations during prosecution, and the clear disclosure in the prior art cannot be
overcome by any supposed “secondary considerations.” See Wolfe Decl, ¶ 301.
53
III. DISCLOSURE OF CONCURRENT LITIGATION AND REEXAMINATION

PROCEEDINGS
The ’924 Patent is the subject of one prior or pending district court litigation, as listed
below. The ’924 Patent has not been subject to any inter partes review proceedings, prior
reexaminations, or other post-grant proceedings:
Title Civil Action # Court Filed On Terminated

Aprese Systems Texas, LLC v. Toyota Motor
6:20-cv-01046 W.D.Tex. 11/12/2020 ―
Manufacturing Texas, Inc. et al.
54
IV. CONCLUSION
The Commissioner is hereby authorized to charge to Deposit Account No. 50-6990 the Ex
Parte Reexamination fee of $12,000 under 37 C.F.R. § 1.20(c)(1). Requester believes no other fee
is due with this submission, however the Commissioner is hereby authorized to charge any fee
deficiency or credit any over-payment to Deposit Account No. 50-6990.
Please direct all correspondence in this matter to the undersigned.
Dated: March 26, 2021 Respectfully submitted,
By: /s/ Cono A. Carrano

Cono A. Carrano (Reg. No. 39,623)
Brock F. Wilson (Reg. No. 59,463)
Sohrab Hajarian (Reg. No. 75,442)
AKIN GUMP STRAUSS HAUER & FELD

Robert S. Strauss Tower
2001 K Street N.W.
Washington, DC 20006
Telephone: (202) 887-4000
Fax: (202) 887-4288
Email: [email protected]
Counsel for Requester Unified Patents, LLC
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Request for Ex Parte Reexamination, U.S. Patent No.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re patent of Premkumar Jonnala et al. § Attorney Docket No.: 698162.0011

REQUEST FOR EX PARTE REEXAMINATION OF

Mail Stop “Ex Parte Reexam”

Pursuant to the provisions of 35 U.S.C. §§ 301-307, Unified Patents, LLC (“Requester”)

Ex. 1001 U.S. Patent No. 9,207,924 (“’924 Patent”)

Ex. 1002 File History of U.S. Patent No. 9,207,924

Ex. 1003 Declaration of Dr. Andrew Wolfe (“Wolfe Decl.”)

Ex. 1004 U.S. Patent No. 7,970,436 (“Katzer”)

Ex. 1005 U.S. Patent No. 7,324,833 (“White”)

Ex. 1006 U.S. Patent No. 7,280,097 (“Chen”)

Ex. 1007 U.S. Patent No. 7,218,313 (“Marcus”)

Ex. 1008 U.S. Publication No. 2007/0093275 (“Bloebaum”)

Ex. 1009 U.S. Patent No. 8,887,155 (the “’155 Patent”)

I. SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY

instructions enables at least one or more of determining at least a portion of

10. The non-transitory computer-readable storage medium of claim 9, wherein at least

11. The non-transitory computer-readable storage medium of claim 9, wherein at least

13. The non-transitory computer-readable storage medium of claim 9, wherein at least

15. The non-transitory computer-readable storage medium of claim 9, wherein at least

The following table summarizes the specification of the ’924 Patent:

185:62-186:2 Summary of alleged novelty with respect to the fourth embodiment

’924 Patent Katzer

’924 Patent, Fig. 56.

E. Ground 2: Katzer in View of Chen Presents Substantial New Questions of

Furthermore, as a POSITA would have appreciated, particularly by Chen’s incorporation

2. Chen is analogous art

The ’924 Patent Katzer and Chen

’924 Patent, Fig. 56.

F. Ground 3: Katzer in View of Chen in Further View of Bloebaum Presents

2. Bloebaum is analogous prior art

3. Katzer in View of Chen in Further View of Bloebaum Presents substantial

predictable results regarding the organization of object information. See id.

’924 Patent, Fig. 56.

’924 Patent White

II. DETAILED APPLICATION OF THE PRIOR ART TO EVERY CLAIM FOR

iii. determine at least a portion of a second plurality of information, based on at least

III. DISCLOSURE OF CONCURRENT LITIGATION AND REEXAMINATION

Title Civil Action # Court Filed On Terminated

Dated: March 26, 2021 Respectfully submitted,

By: /s/ Cono A. Carrano

AKIN GUMP STRAUSS HAUER & FELD

Counsel for Requester Unified Patents, LLC

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