REQUEST FOR EX PARTE REEXAMINATION Patent No.

6,199,048

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Ex Parte Reexamination of: Patent No. 6,199,048 Inventors: F. Hudetz and P. Hudetz Issue Date: March 7, 2001 Application No. 09/232,908 Filing Date: January 15, 1999 For: System and Method for Automatic Access of a Remote Computer Over a Network ) ) ) ) ) ) ) ) ) ) ) ) )

Control Number: Not Yet Assigned Group Art Unit: Not Yet Assigned Examiner: Not Yet Assigned Box: Ex Parte Reexam

Mail Stop Ex Parte Reexam Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 Sir or Madam:

REQUEST FOR EX PARTE REEXAMINATION
The Electronic Frontier Foundation (EFF), a not-for-profit public organization that works to protect free expression in all forms of electronic media, by and through its undersigned attorneys, respectfully requests ex parte reexamination of claims 1-95 of U.S. Patent No. 6,199,048 (‘048 patent) [Exhibit A] to Hudetz et al., assigned on its face to NeoMedia Technologies, Inc. The following Request submits twenty-three substantial new questions of patentability based on prior art, in the form of patents and printed publications, not previously cited by or presented to the Office. This prior art renders claims 1-95 unpatentable under at least one of 35 U.S.C. §§ 102(a), 102(b), 102(e) and 103. The substantial new questions of patentability are raised primarily by:

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

U.S. Patent No. 5,640,193 [Appendix A], entitled “Multimedia Service Access by Reading Marks on an Object;” and

U.S. Patent No. 4,780,599 [Appendix B], entitled “Apparatus for Retrieving Stored Information about Various Items in Response to Coding on the Items.”

These two pieces of prior art either fully anticipate the claims of the ‘048 patent or, when combined with other references, render the claims of the ‘048 patent obvious. Consequently, EFF respectfully requests that the Office order an ex parte reexamination of the ‘048 patent and issue a certificate canceling claims 1-95.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

TABLE OF CONTENTS PAGE NO. I. II. STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY ..............................................................................................................1 BACKGROUND .................................................................................................................6 A. B. C. III. THE CLAIMED INVENTION(S) OF THE ‘048 PATENT ....................................................6 THE PROSECUTION HISTORY OF THE ‘048 PATENT CLAIMS ........................................7 THE PROSECUTION HISTORY OF THE ‘048 PATENT’S EUROPEAN COUNTERPART ......8

MULTIPLE PIECES OF PRIOR ART RENDER THE ‘048 PATENT CLAIMS ANTICIPATED AND/OR OBVIOUS AND RAISE SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY...............................................................................12 A. B. C. D. U.S. PATENT NO. 5,640,193 ANTICIPATES ‘048 CLAIMS 1-9, 16-22, 25-44, 5157, 60-79, 86-87, AND 90-95 ..................................................................................12 U.S. PATENT NO. 5,640,193 IN COMBINATION WITH ADDITIONAL PRIOR ART RENDERS CLAIMS 1-95 OF THE ‘048 PATENT OBVIOUS ..........................................35 U.S. PATENT NO. 4,780,599 ANTICIPATES CLAIMS 1-4, 6-9, 15-17, 22-26, 34, 36-39, 41-44, 50-52, 57-61, 69, 71-74, 76-79, AND 85-90 ......................................75 U.S. PATENT NO. 4,780,599 IN COMBINATION WITH ADDITIONAL PRIOR ART RENDERS CLAIMS 1-95 OF THE ‘048 PATENT OBVIOUS ..........................................94

IV.

CONCLUSION................................................................................................................139

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

TABLE OF PRIOR ART RELIED UPON Prior Art Publications (Appendix) U.S. Patent No. 5,640,193 Multimedia Service Access by Reading Marks on An Object, U.S. Patent No. 5,640,193 (filed Aug. 15, 1994) (issued Jun. 17, 1997). Apparatus for Retrieving Stored Information about Various Items in Response to Coding on the Items, U.S. Patent No. 4,780,599 (filed Jun. 28, 1985) (issued Oct. 25, 1988). Data Transmission over the Public Switched Network, U.S. Patent No. 4,796,292 (filed Dec. 8, 1987) (issued Jan. 3, 1989). Telephone Set with Subscriber Listing, U.S. Patent No. 4,907,264 (filed Sep. 14 1988) (issued Mar. 6, 1990). Transmission of Check Images by Way of a Public Switched Telephone Network, U.S. Patent No. 5,373,550 (filed Oct. 13, 1992) (issued Dec. 13, 1994). Process and Computer System for Control of Interface Software and Data Files, U.S. Patent No. 5,331,547 (filed Jan. 29, 1993) (issued Jul. 19, 1994). Method of Encoding an E-mail Address in a Fax Message and Routing the Fax Message to a Destination on a Network, European Patent No. EP 0 465 011 (filed Jun. 6, 1991) (issued Nov. 6, 1996). Universal Computer Input Device, U.S. Patent No. 5,420,943 (filed Oct. 29, 1992) (issued May 30, 1995). Object-Oriented Architecture for Factory Floor Management, U.S. Patent No. 5,398,336 (filed Jul. 16, 1993) (issued Mar. 14, 1995). System and Method for Making Staff Schedules as a Function of Available Resources as well as Employee Skill Level, Availability, and Priority, U.S. Patent No. 5,111,391 (filed Oct. 5, 1989) (issued May 5, 1992). Method of Encoding an E-mail Address in a Fax Message and Routing the Fax Message to a Destination on a Network, U.S. Patent No. 5,115,326 (filed Jun. 26, 1990) (issued May 19, 1992).

U.S. Patent No. 4,780,599

U.S. Patent No. 4,796,292

U.S. Patent No. 4,907,264

U.S. Patent No. 5,373,550

U.S. Patent No. 5,331,547

European Patent No. 0 465 011

U.S. Patent No. 5,420,943

U.S. Patent No. 5,398,336

U.S. Patent No. 5,111,391

U.S. Patent No. 5,115,326

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Anonymous: Internet Article 1 Anonymous: Internet Article 2 Computer Networks

Internet-On-A-Disk #7, December 3, 1994. NL-KR Digest, October 3, 1988. B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994. T. Berners-Lee, L. Masinter, M. McCahill, Uniform Resource Locators (URL), Network Working Group, Request for Comments 1738, December 1994. T. Berners-Lee, The Original HTTP as defined in 1991. P. Mockapetris, Domain Names- Concepts and Facilities, Network Working Group, Request for Comments 1034, November 1987. P. Mockapetris, Domain Names- Implementation and Specification, Network Working Group, Request for Comments 1034, November 1987. System for Securing Inbound and Outbound Data Packet Flow in a Computer Network, U.S. Patent No. 5,606,668 (filed Dec. 15, 1993) (issued Feb. 25, 1997). UPC Encodation Verifier, U.S. Patent No. 3,961,164 (filed Sep. 13 1974) (issued Jun. 1, 1976).

RFC 1738

HTTP 1991 RFC 1034

RFC 1035

U.S. Patent No. 5,606,668

U.S. Patent No. 3,961,164

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Exhibits Exhibit A Exhibit B United States Patent No. 6,199,048 issued March 6, 2001. Minutes of the Oral Proceedings from the prosecution of European Patent 0 832 453. EPO Communication to NeoMedia on 20.12.2000 from the prosecution of European Patent 0 832 453. European Patent No. 0 832 453 issued November 16, 2005. Claims submitted by NeoMedia to the EPO on 07.03.2005 during prosecution of EP ‘453. EPO Preliminary Opinion before Oral Hearing dated 29.11.2004 from the prosecution of European Patent 0 832 453. T. Berners-Lee, The World Wide Web: A very short personal history, May 7, 1998. D. Rapp, Inventing Yahoo!, April 12, 2006. Computer History Museum – Exhibits – Internet History - 1990’s. The History of Yahoo! – How it All Started…, 2005. Mosaic – The First Global Web Browser. RFC 1945 – Hypertext Transfer Protocol – HTTP/1.0, May 1996. Prosecution History of EP ‘453.

Exhibit C

Exhibit D Exhibit E

Exhibit F

Exhibit G

Exhibit H Exhibit I Exhibit J Exhibit K Exhibit L Exhibit M

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

TABLE OF AUTHORITIES PAGE NO. CASES KSR Int’l Co. v. Teleflex Inc., 550 U.S. ___, 127 S. Ct. 1727(2007)..........................................................................................34, 76 STATUTES 35 U.S.C. § 102(a) ..........................................................................................................................12, 13 35 U.S.C. § 102(b) ................................................................................................................................75 35 U.S.C. § 102(e) ....................................................................................................................12, 13, 75 35 U.S.C. § 103.........................................................................................................................37, 40, 98 35 U.S.C. § 304...................................................................................................................................139 M.P.E.P. 2142 .................................................................................................................................35, 94 M.P.E.P. 2217 .................................................................................................................................13, 75 M.P.E.P. 2242 .........................................................................................................................................8

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

I.

STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY NeoMedia’s Patent No. 6,199,048 (‘048 patent) [Exhibit A] claims a method, system, and

device for creating a network connection to a remote computer and has a priority date of June 20, 1995. All of the claims in the ‘048 patent share the same fundamental common characteristics: an “index” is read off of an object (by scanning a barcode or the like), the index is then used in a database to look up a “pointer” identifying a remote computer on a network, and a network connection is created to the identified remote computer. The idea of forming a network connection as a function of scanned input was far from new in 1995. In fact, such functionality appeared in a wide variety of prior art in many different contexts. For example, U.S. Patent No. 4,796,292, filed in 1987, describes a credit card authorization network where “[m]any terminals can be programmed to dial different numbers based upon the information contained in the magnetic stripe on the card being processed.”1 Another patent filed in 1988, U.S. Patent No. 4,907,264, discloses a telephone which automatically connects to another phone by scanning a bar code and mapping that code to a phone number in memory.2 Yet another example of this functionality can be seen in a patent filed in 1992, U.S. Patent No. 5,373,550, which discloses an invention that can transmit images of checks to their network destination by matching information stored in a database with information scanned off of the check.3 Each of these inventions demonstrates that the idea of forming a network connection as a function of scanned input was well-known before 1995.

1 U.S. Patent No. 4,796,292 col.1 ll.41-44 (filed Dec. 8, 1987) [Appendix C]. Compare this to claim 14 of the ‘048

Patent that claims a variation of the method where “the step of reading a data carrier modulated with an index comprises accessing a magnetic card with a magnetic reader.”
2 U.S. Patent No. 4,907,264 col.3 ll.43-48 (filed Sept. 14, 1988) [Appendix D]. 3 U.S. Patent No. 5,373,550 col.1 ll.63-67; cols.3-4 ll.65-68:1-9; col.4 ll.42-46 (filed Oct. 13, 1992) [Appendix E].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Moreover, the exact methods, systems and devices of the ‘048 patent were also well-known in the art in 1995. For instance, during NeoMedia’s prosecution of the ‘048 patent’s counterpart before the European Patent Office (EPO), the EPO cited several pieces of prior art, none of which were considered by the USPTO during the prosecution of the ‘048 patent. These pieces of prior art demonstrate that linking indices via pointers to information used to form a network connection was common practice for basic internet services, such as search engines, well before NeoMedia’s claimed invention date.4 The EPO further stated that the means of input for starting this matching process, such as scanning an item with a barcode, was non-inventive.5 These rejections go to the heart of the claimed material in the ‘048 patent. As a result of these rejections, NeoMedia had to substantially narrow its EPO claims beyond those in the ‘048 patent in order to obtain issuance. Yet, in light of newly discovered prior art by EFF, it appears that even these narrower claims obtained by NeoMedia from the EPO are invalid. Early during the European proceedings, the EPO relied on a reference disclosing the use of bar codes corresponding to Uniform Resource Locators (URLs)6 to render the entire subject matter of the ‘048 patent anticipated.7 NeoMedia was able to traverse this reference only by demonstrating that the reference post-dated the priority date of the application. However, EFF has now found an earlier reference from 1994, United States Patent No. 5,640,193 (the ‘193 patent), that discloses the same correlation of bar codes with URLs.8 This reference anticipates the entire subject matter of the ‘048 patent, just as the art cited

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

[Exhibit B].
5 Id. 6 URLs have been known as both “Uniform Resource Locators” and “Universal Resource Locators.” These phrases

are interchangeable. See http://searchnetworking.techtarget.com/sDefinition/0,,sid7_gci213251,00.html.
7 EPO Communication to NeoMedia on 20.12.2000 from the prosecution of European Patent 0 832 453 (“EP ‘453

20.12.2000 Communication”) at ¶¶ 2-2.1 [Exhibit C].
8 U.S. Patent No. 5,640,193 col.4 ll.34-42; claims 2, 3, 23, 24, 25 (filed Aug. 15, 1994) [Appendix A].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

by the EPO would have had it had an earlier publication date. At a minimum, it raises a substantial new question of patentability. The ‘193 patent, as well as a second anticipating reference, U.S. Patent No. 4,780,599 (the ‘599 patent), are two of the prior references discussed more fully in this petition. The ‘193 patent discloses an apparatus and method for accessing multimedia content served over a network by reading marks on objects. The ‘599 patent discloses an apparatus for storing, retrieving, and displaying information on items by reading scanned codes on the items. These two pieces of prior art predate the priority date of the ‘048 patent, were not considered by the USPTO during the prosecution of the ‘048 patent, and clearly demonstrate that the idea of pairing scanned codes found on objects with addresses to various network resources was already well-known. A reasonable examiner would consider the teachings contained references important in determining whether or not the claims are patentable. Many substantial new questions of patentability are raised by these patents because they independently anticipate nearly every claim of the ‘048 patent. Furthermore, when the ‘193 patent and the ‘599 patent are combined with additional prior art references, a substantial new question of patentability is raised for every claim of the ‘048 patent because these references render every claim of the ‘048 patent obvious. EFF respectfully proposes the following rejections: • Claims 1-9, 16-22, 25-44, 51-57, 60-79, 86-87 and 90-95 are anticipated by the ‘193 patent. • Claims 1-3, 5, 18-21, 27, 29, 30, 31-34, 36-38, 40, 53-56, 62, 64-69, 71-73, 75, 91, 93-95 are obvious over the ‘193 patent in view of RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Claims 4, 6-9, 22-25, 39, 41-44, 57-60, 74, 76-79, and 88-89 are obvious over the ‘193 patent in view of U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent No. 3,961,164 [Appendix T].

Claims 10-14, 45-49, and 80-84 are obvious over the ‘193 patent in view of U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C].

Claims 15, 50, and 85 are obvious over the ‘193 patent in view of U.S. Patent No. 4,780,599 [Appendix B] and U.S. Patent 4,907,264 [Appendix D].

Claims 16, 51, and 86 are obvious over the ‘193 patent in view of U.S. Patent No. 5,420,943 [Appendix H].

Claims 17, 52, and 87 are obvious over the ‘193 patent in view of U.S. Patent No. 5,398,336 [Appendix I].

Claims 26, 61, and 90 are obvious over the ‘193 patent in view of U.S. Patent No. 5,115,326 [Appendix K] and European Patent No. 0 465 011 [Appendix G].

Claims 28, 63, and 92 are obvious over the ‘193 patent in view of Computer Networks and ISDN Systems [Appendix N].

Claims 35 and 70 are obvious over the ‘193 patent in view of U.S. Patent No. 5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], and NL-KR Digest [Appendix M].

Claims 1-4, 6-9, 15-17, 22-26, 34, 36-39, 41-44, 50-52, 57-61, 69, 71-74, 76-79, and 85-90 are anticipated by the ‘599 patent.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Claims 1-3, 18-21, 27, 30-31, 34, 36-38, 53-56, 62, 65-66, 69, 71-73, 91, 94-95 are obvious over the ‘599 patent in view of RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R].

Claims 4, 6-9, 22-25, 39, 41-44, 57-60, 74, 76-79, and 88-89 are obvious over the ‘599 patent in view of U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent No. 3,961,164 [Appendix T].

Claims 5, 40, and 75 are obvious over the ‘599 patent in view of U.S. Patent No. 5,640,193 [Appendix A] and U.S. Patent No. 5,373,550 [Appendix E].

Claims 10-14, 45-49, and 80-84 are obvious over the ‘599 patent in view of U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C].

Claims 15, 50, and 85 are obvious over the ‘599 patent in view of U.S. Patent 4,907,264 [Appendix D].

Claims 16, 32, 51, 67 and 86 are obvious over the ‘599 patent in view of U.S. Patent No. 5,420,943 [Appendix H].

Claims 17, 52, and 87 are obvious over the ‘599 patent in view of U.S. Patent No. 5,398,336 [Appendix I].

Claims 26, 61, and 90 are obvious over the ‘599 patent in view of U.S. Patent No. 5,115,326 [Appendix K] and European Patent No. 0 465 011 [Appendix G].

Claims 28, 63, and 92 are obvious over the ‘599 patent in view of Computer Networks and ISDN Systems [Appendix N].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Claims 29, 64, and 93 are obvious over the ‘599 patent in view of U.S. Patent No. 5,115,326 [Appendix K], European Patent No. 0 465 011 [Appendix G], and U.S. Patent No. 5,398,336 [Appendix I].

Claims 33 and 68 are obvious over the ‘599 patent in view of U.S. Patent No. 5,606,668 [Appendix S].

Claims 35 and 70 are obvious over the ‘599 patent in view of U.S. Patent No. 5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], and NL-KR Digest [Appendix M].

In light of the twenty-three substantial new questions of patentability raised by the ‘193 patent and the ‘599 patent, EFF respectfully requests that its petition be granted and all claims of the ‘048 patent be canceled. II. BACKGROUND A. THE CLAIMED INVENTION(S) OF THE ‘048 PATENT

The ‘048 patent contains three independent claims: claims 1, 36, and 71. These independent claims are directed at a method, system, and device, respectively. While the three claims are slightly different in their form, they all contain virtually identical limitations. The system in claim 36 and the device in claim 71 are essentially two different implementations which carry out the method described in claim 1. Because all of the prior art references discussed herein involve inventions running software that carry out the claimed method, all of the references equally address each of the independent claims. Claim 1 is representative of the alleged invention: 1. A method of connecting a user computing device to one of a plurality of remote computers available for communication over a network comprising: a) reading a data carrier modulated with an index;

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

b) accessing a database with the index, the database comprising a plurality of records that link an index to a pointer which identifies a remote computer on a network; c) extracting a pointer from the database as a function of the index; and d) using the pointer to establish communication with the remote computer identified thereby. All of the dependent claims of the ‘048 patent add limitations which give specific examples of ways in which the independent claims could be implemented. For example, claim 19 specifies the method of claim 1 where the “pointer” is a URL, claim 30 defines the “network” as the internet, and claim 35 associates the “database” with a search engine. Given these minor variations, the prior art cited herein is broad enough to render all these permutations invalid. B. THE PROSECUTION HISTORY OF THE ‘048 PATENT CLAIMS

The prosecution history of the ‘048 patent is relatively short. The ‘048 patent is the result of divisional application 08/538,365. There were eleven initial claims presented to the examiner as a part of the ‘048 prosecution. All eleven claims were objected to or rejected in the first office action. Claim 1 was rejected for obviousness-type double patenting in light of U.S. Patent No. 5,978,773. Claims 1-4 were rejected in light of two pieces of prior art – U.S. Patent Nos. 5,602,377 and 5,519,878. The remaining claims were objected to as dependent on the rejected claims. Following the first Office Action, the applicant canceled all original 11 claims and submitted 95 entirely new claims. All 95 claims were allowed because the examiner believed that none of the prior art previously before the USPTO contained the combined features of the claimed material. No additional explanation was provided as to how these new claims overcame the previous rejections and no additional prior art was cited to contest any of the new claims.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

C.

THE PROSECUTION HISTORY OF THE ‘048 PATENT’S EUROPEAN COUNTERPART

The USPTO prosecution history of the ‘048 patent itself is not the only prosecution history relevant to this request. M.P.E.P. 2242 states that the use of adverse decisions not involving the patent are to be considered by the USPTO in determining whether to grant a reexamination, and such information should be weighted based upon the given circumstances.9 In this case, the EPO rejected and narrowed claims that were substantially identical to the claims of the ‘048 patent during the prosecution of the ‘048 patent’s European counterpart.10 NeoMedia submitted a patent application on June 19, 1996 to the EPO through a PCT application claiming priority to the same provisional and divisional applications as the ‘048 patent. After rejecting the claims initially submitted, as well as many others later submitted, the EPO ultimately granted European Patent 0 832 453 (EP ‘453) [Exhibit D] entitled “System for Using Article of Commerce to Access Remote Computer” on November 16, 2005. The specifications of the ‘048 patent and EP ‘453 are nearly identical to one another – almost every paragraph in the specification of the ‘048 patent appears verbatim in EP ‘453, and the figures used to help illustrate the invention are identical between the patents. The primary difference between the two patents lies in their claims, and this can be directly attributed to the different prosecution histories and prior art cited by each patent office. Many pieces of highly relevant prior art that were never a part of the USPTO prosecution history were cited by the EPO in the course rejecting asserted claims.11 The EPO prosecution and the USPTO prosecution were parallel proceedings involving the same applicant on exactly the same subject matter. Thus, this
9 See M.P.E.P. 2242 §II.D. 10 The entire prosecution history of EP ‘453 is attached as Exhibit N. 11 These references include: U.S. Patent Nos. 5,331,547, 5,155,326, 5,420,943, 5,111,391, and 5,398,336; European

Patent No. 0 465 011; and other articles showing internet functionality. As set forth below in § III, these pieces of prior art raise substantial new questions of patentability. The EPO’s rejections of claims asserted by NeoMedia using this art are attached in Exhibits C and F. The references themselves are attached in Appendices F-N.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Office should give the maximum possible weight to the prior art behind the EPO’s adverse decisions in determining whether a substantial new question of patentability exists. Specifically, early in the prosecution of EP ‘453, the EPO cited an article entitled “Distributing Uniform Resource Locators as Bar Codes Images” published by IBM because the EPO felt that the article “anticipates such subject-matter in its entirety.”12 In response, NeoMedia pointed out that the article in question was published in 1996 – after the priority date of the patent application. NeoMedia’s additional arguments on the merits of the article were not addressed by the EPO, presumably because the date of the reference was sufficient to exclude the article from consideration. The ‘193 patent, discussed fully in §§ III.A-B, discloses relevant subject matter identical to the IBM reference, namely the use of barcodes as indices to reference URLs on the internet. Because the ‘193 patent was filed in 1994 (almost 1 full year before the ‘048 priority date), it does not suffer from the deficiencies of the IBM reference. Instead, when viewed in conjunction with the EPO’s statement regarding the IBM reference, the ‘193 patent presents evidence weighing heavily in favor of granting reexamination. The oral proceedings on May 4, 2005, which occurred shortly before the conclusion of the prosecution of EP ‘453, are also of interest.13 The primary claim at issue there bore a striking resemblance to claim 1 in the ‘048 patent. The presence of many limitations not present in the ‘048 patent, such as the use of an article of commerce, machine reading, and the internet can already be seen in the primary claim at issue because of earlier rejections of claims made by the EPO. The primary claim at issue at the hearing was: 1. A method for obtaining access at a client (28) to a resource at a service provider (22) or other remote computer (24, 26) on the

12 EP ‘453 20.12.2000 Communication at ¶¶ 2-2.1 [Exhibit C]. 13 See EP ‘453 Oral Minutes [Exhibit B].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Internet using a tangible article of commerce (48), said method comprising: machine reading (84) at the client an indicium (46) affixed to said tangible article of commerce, said indicium encoding an identification corresponding to said article or to another tangible article of commerce; querying with said identification a database (60) in said service provider (22) or in said other remote computer (24, 26) that associates said identification with one or more network addresses so that said database returns (88) to the client the network address or network addresses corresponding to said identification; and using the returned network address, or one of the returned network addresses, to connect the client to the resource that has the returned network address.14 The Examining Division repeated the position it had taken throughout the prosecution by flatly stating that many of the claimed inventions in the application were not novel in light of wellknown prior art at the time of filing: The features of a look-up table, the quering of a database in order to retrieve resource locations and the use of various input means (such as keyboards or barcode scanners) were all well known before the date of priority of the present application. Regarding search engines such as Yahoo and Lycos which were well known in 1995 the retrieving of URL’s via a database was already frequently used. The use of various well known input means does not require an inventive step.15 The Examining Division of the EPO quickly dismissed any notion that the use of an index to look up information in a database is novel. The EPO also considered well-known search engines, such as Yahoo!, as relevant prior art that rendered much of the rest of the claimed invention in the application as obvious.16 These search engines were never considered during the prosecution of the ‘048 patent.

14 Claims submitted by NeoMedia to the EPO on 07.03.2005 during prosecution of EP ‘453 [Exhibit E]. 15 EP ‘453 Oral Minutes at ¶ 4 [Exhibit B]. 16 EPO Preliminary Opinion before Oral Hearing dated 29.11.2004 from the prosecution of European Patent 0 832

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

The patentee then attempted to counter the EPO’s argument by stating that “[t]he inventive step lies in the use of the existing codes for a novel purpose.”17 This argument was again rejected by the Examining Division: “[T]he use of a barcode for the purpose of retrieving data does not lead to an inventive step, since this is the only and well known purpose of a barcode.”18 Ultimately, the Examining Division stated that the best path for the application to proceed in the EPO was to concentrate on “automatic linking to the Internet.”19 The one independent claim of EP ‘453 prominently features this automatic limitation and is also expressly limited to connections formed on the internet.20 The EPO’s statements about the novelty of barcodes during the prosecution of EP ‘453 hold equally true for the ‘048 patent. Inventions such as ‘599 patent, discussed more fully in §§ III.C-D but not cited in the prosecution of the ‘048 patent, demonstrate that barcodes were wellknown in the art by 1994 as tools to lookup the location of resources in a database and then fetch a linked resource. Furthermore, internet searching technology created by companies like Yahoo! mapped search requests to URLs well before the ‘048’s priority date. In fact, by the end of 1994, Yahoo! had received a million hits from more than 100,000 visitors using such methods to “point” users to computers on the internet.21 Moreover, even the allegedly-inventive limitation of “automatic linking to the Internet” accepted by the EPO to issue EP ‘453 is questionable in light of the prior art discussed in this petition. In issuing its allowance, the EPO stated that it could not find inventions before the

453 (“EP ‘453 Preliminary Opinion”) at ¶ ¶ 2.1-2.6 [Exhibit F].
17 EP ‘453 Oral Minutes at ¶ 4.2 [Exhibit B]. 18 EP ‘453 Oral Minutes at ¶ 4.3 [Exhibit B]. 19 EP ‘453 Oral Minutes at ¶ 4.4 [Exhibit B]. 20 EP ‘453 claim 1 [Exhibit D]. 21 David Rapp, Inventing Yahoo! (April 12, 2006), http://www.americanheritage.com/events/articles/web/20060412-

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

priority date of the application “which include the automatic transmission and download of data after the step of machine reading an indicium.”22 Inventions such as the ‘193 patent, discussed fully in §§ III.A-B, disclose exactly the type of functionality the EPO was unable to find. III. MULTIPLE PIECES OF PRIOR ART RENDER THE ‘048 PATENT CLAIMS ANTICIPATED AND/OR OBVIOUS AND RAISE SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY A. U.S. PATENT NO. 5,640,193 ANTICIPATES ‘048 CLAIMS 1-9, 16-22, 25-44, 51-57, 60-79, 86-87, AND 90-95

The ‘193 patent discloses an invention where multimedia content located on remote servers is accessed and displayed to the user based on marks read by a scanning device. The read marks could be anything from specially-tailored bar codes which directly map to specific network content to regular alphanumeric characters taken straight from a newspaper which are then matched by the invention to remote relevant content. The patent discloses that the read marks are interpreted so that content located on potentially many different remote network servers can be automatically found and further discloses automatically creating a network connection between the end-user and the remote server where the content is located. The ‘193 patent even uses internet technologies, such as URLs, to explain the concept behind its invention and specifically claims embodiments of its invention that use the internet.23 Figure 4 of the ‘048 patent shows that the simple idea of pairing bar codes with URLs, previously suggested by the ‘193 patent in 1994, is fundamentally what the ‘048 patent has claimed as its invention in 1995. This disclosure by the ‘193 patent anticipates the ‘048 patent under 35 U.S.C. §§ 102(a) and 102(e) and was never considered by the USPTO during the prosecution of the ‘048 patent.

yahoo-internet-search-engine-jerry-yang-david-filo-america-online-google-ipo-email.shtml [Exhibit H].
22 EP ‘453 Oral Minutes at ¶ 5.3 [Exhibit B]. 23 “These [scanned] codes could work in a similar way as the well-known Universal Resource Locator

identifiers...only they would be read from paper (instead of typed into an application).” ‘193 Patent col.4 ll.46-54 [Appendix A]. See also ‘193 Patent claims 2, 3, 23, 24, and 25 [Appendix A].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

As shown below and as directed by M.P.E.P. 2217, the ‘193 patent anticipates claim 1 in the ‘048 patent under 35 U.S.C. §§ 102(a) and 102(e) and thus raises substantial new questions of patentability: Claim Limitations in ‘048 Claim 1 1. A method of connecting a user computing device to one of a plurality of remote computers available for communication over a network comprising: ‘193 - Multimedia Service Access by Reading Marks on an Object

The ‘193 patent discloses a system that allows a user computing device to access one or more of a plurality of remote computers running electronic servers over a network: "The invention provides an apparatus and method for enabling a user to control the selection of electronic services to be provided to the user by one or more servers over a communication medium." ‘193 Patent col. 1 ll. 33-35.

“Depending on how much data is represented by the marks 10, it may be possible to access any electronic object on the ITV network 18 with a single swipe[.]” ‘193 Patent col. 4 ll. 58-60. a) reading a data The ‘193 patent initiates its process in the same fashion as the ‘048 carrier modulated patent – by reading marks (or indicies) located on objects which with an index; contain the information used to carry out the subsequent steps: "The apparatus includes a scanner means for reading marks on an object and for communicating a request signal, having an object code representing the read marks, to a user interface." ‘193 Patent col. 1 ll. 33-35. “[T]he system illustratively consists of one or more hand-held scanners or pens (11) that reads marks (e.g., bar codes…) on the surface of an object.” ‘193 Patent col. 2 ll. 22-25. “The initial selection of server 13 could be made using pen 11 to tell the interface 15 what server to address.” ‘193 Patent col. 4 ll. 35-36.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Claim Limitations in ‘048 b) accessing a database with the index, the database comprising a plurality of records that link an index to a pointer which identifies a remote computer on the network;

‘193 - Multimedia Service Access by Reading Marks on an Object

The ‘193 patent discloses the process of looking up information in a database based on the read “mark” which is then used to select the location of a remote computer on the network offering the service requested by the user. Here, one skilled in the art would recognize that “well-known information retrieval techniques” disclosed include basic database techniques for selecting matching records from the database: “In accordance with the present invention, a universal identifier is used to uniquely address every accessible electronic object on this network (sort of like a super phone number).” ‘193 Patent col. 4 ll. 2830. "These [scanned] characters could specify a unique identifier for a multimedia program, or they could be plain text that relates to some multimedia documents stored in the ITV [interactive television] network 18. The servers 13, 17 could match this text to keywords that describe stored documents on the network using well-known information retrieval techniques. This would enable the servers to select the multimedia document(s) that best match the keywords that the user scans, and offer them for viewing. ‘193 Patent col. 4 ll. 46-54. (emphasis added). “In step 2, the interface 15 interprets the information sent by the pen 11 and communicates with the multimedia server to request the movie that the user has selected.” ‘193 Patent col. 5 ll. 3-6. The ‘193 patent explains that the marks (or indices) read from the object can then be used to look up where the desired resource is located on the network. It was well-known in the art in 1995 that one could use a basic database querying to map the index scanned by the pen to the resource to be retrieved. Furthermore, the explicit reference to the idea of mapping the scanned marks to URLs alone is enough to anticipate creation of a network connection claimed in ‘048: "In accordance with the present invention, a universal identifier is used to uniquely address every accessible electronic object on this network (sort of like a super phone number). One way to use the scanner pen (hereafter pen) 11 is in combination with marks that represent a unique identifier code for electronic objects accessible on the ITV network 18. These codes could work in a similar way as the well-known Universal Resource Locator identifiers...only

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

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Claim Limitations in ‘048

‘193 - Multimedia Service Access by Reading Marks on an Object

they would be read from paper (instead of typed into an application) or invisibly linked to on-screen buttons. ‘193 Patent col. 4 ll. 28-45. (emphasis added). “In step 2, the interface 15 interprets the information sent by the pen 11 and communicates with the multimedia server to request the movie that the user has selected.” ‘193 Patent col. 5 ll. 3-6. The ‘193 patent discloses using the location associated with the index scanned by the pen to establish a connection with one of a plurality of possible remote servers where data is retrieved and sent back to the user who scanned the index: “The communication network 14 may be provided by a cable TV company or telephone company or both and can use wire pair or coaxial cables, fiber optic cables, or wireless technology.” ‘193 Patent col. 3 ll. 35-38. “Multimedia server 13 can handle service requests from thousands of customers at the same time. Once a user’s input selection is processed, the server 13 sends multimedia data or programs down to the interface unit 15, which displays it on the user’s television (TV) receiver 16. The servers 13 and 17 may illustratively be part of one or more interactive television (ITV) networks 18, which may connect to communication network 14.” ‘193 Patent col. 4 ll. 2-9. “The ITV network 18 may be part of a larger global server network which may include video-on-demand servers, interactive TV servers, video telephone servers, broadcast TV servers, game servers, and user control panel servers.” ‘193 Patent col. 4 ll. 22-25. “In step 2, the interface 15 interprets the information sent by the pen 11 and communicates with the multimedia server to request the movie that the user has selected.” ‘193 Patent col. 5 ll. 3-6. “In step 301, communication is established between the interface 15 and the server 13. This could be done by making a telephone call using telephone 19a or, if there is a full-time connection set up, by default, then only a few data packets need to be addressed from interface 15 to an appropriate server 13 via network.” ‘193 Patent col. 5 ll. 29-35. "In step 305, the interface communicates interpreted scanned data to a server via network, along with information that identifies itself and,

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

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Claim Limitations in ‘048

‘193 - Multimedia Service Access by Reading Marks on an Object

optionally, pen. In step 306, the server communicates with other servers (e.g., billing servers, name servers, object database servers). In step 307, one of these servers begins to transmit electronic information to interface. The steps 303-307 may involve bidirectional communications. ‘193 Patent col. 5 ll. 48-56. (emphasis added). Furthermore, the ‘193 patent disclosed the possibility that even the initial connection created by the user interface can be selected based on what is scanned by the pen: “The initial selection of server 13 could be made using the pen 11 to tell the interface 15 what server to address.” ‘193 Patent col. 5 ll. 3536.

Just as claim 1 in the ‘048 patent is anticipated by the ‘193 patent, the two additional independent claims in the ‘048 patent are also anticipated by the ‘193 patent because they attempt to claim basic implementations of the same fundamental method. This is detailed in the table below: Additional Independent Claims in ‘048 Why the claim is anticipated by the ‘193 just as Claim 1 Claim 36 is a system which carries out the method of claim 1. Claim 36 identifies three components of the system: a user computing device, input device, and a means for storing a database. The wherein clause then states that these components carry out what is described in claim 1. This claim is nearly identical to claim 1, but simply written in a different format. The ‘193 patent discloses all of these pieces or their equivalents. It discloses using a user computing

Claim 36

A system comprising: a. a user computing device; b. an input device associated with the user computing device, configured to read a data carrier modulated with an index; c. means for storing a database comprising a plurality of records that link an index to a pointer which identifies a remote computer; wherein the user computing device comprises:

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Additional Independent Claims in ‘048

Why the claim is anticipated by the ‘193 just as Claim 1

Claim 71

means for accessing the database to extract a device (a multimedia computer/user pointer from the database as a function of interface), an input device (a pen), the index; and and well-known information retrieval techniques such as a means for using the pointer to establish database. As detailed earlier, the communication with the remote computer ‘193 patent anticipates the method identified thereby. further described in the claim. Therefore, claim 36 itself is also anticipated by the ‘193 patent. A user computing device comprising: Claim 71 is a device which carries out the method of claim 1. Once a. an input device configured to read a data again, this claim is simply a carrier modulated with an index; and rewritten version of claim 1 where the same functionality and b. computer processing means for executing limitations are described in the a software program adapted to: context of a device. Claim 71 is anticipated by the ‘193 patent in exactly the same way as claim 1 utilize the index to access a database comprising a plurality of records that link an because the ‘193 patent discloses a index to a pointer which identifies a remote user computing device (the multimedia computer/user interface) computer; embodiment of its invention. See retrieve from the database a pointer as a ‘193 Patent col. 3 ll. 40-45. function of the index; and use the pointer to establish communication with the remote computer identified thereby.

Finally, were NeoMedia to argue that despite the strong language in the EPO prosecution history, its patent is still novel because it discloses “automatic linking to the Internet,” the ‘193 patent would still anticipate its claims. The specification of the ‘193 patent discloses that its invention can carry out its functionality automatically - from initial scanning to display: Depending on how much data is represented by the marks, it may be possible to access any electronic object on the ITV network with a single swipe24

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

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Desirably, there should be almost no time lag between steps 2 [matching of index to pointer] and 3 [download and display of fetched resource]; but if there is a delay, then the multimedia server would output a message to the TV screen to indicate that the film is in the process of being retrieved.25 When the customer scans these codes, video instructions instantly play to demonstrate how the part needs to be installed or serviced.26 The ‘193 patent explicitly states that many times the only action required by the user is the initial scan of the code to be read. It further states that the invention should carry out the critical steps of matching the index to a pointer and the use the pointer to create a network connection without any delay. The ‘193 patent also discloses, in Claims 2 and 3, a version of the invention which uses the internet as the network over which the multimedia server communicates with the user.27 Thus, NeoMedia cannot successfully argue that the automatic nature of its claimed invention allows it to circumvent the ‘193 patent as an anticipating piece of prior art. Every remaining claim in the ‘048 patent is a dependent claim that only slightly modifies claim 1, 36 or 71. The chart below shows how the ‘193 patent anticipates dependent claims 2-9, 16-22, 25-35, 37-44, 51-57, 60-70, 72-79, 86-87, and 90-95 of the ‘048 patent. Dependent Claim in ‘048 Claim 2 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index. ‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. In addition, the ‘193 discloses the use of scanning devices, which were well-known in the art to demodulate reflected light to read a targeted code. See ‘193 Patent col. 2 ll. 22-25.

25 ‘193 Patent col.5 ll.8-11 [Appendix A]. 26 ‘193 Patent col. 6 ll. 12-14 [Appendix A]. 27 See also ‘193 Patent col. 4 ll. 35-37 [Appendix A]. 28 The prior art references in this table alongside the ‘193 patent are not relied upon to invalidate the claims under 35

U.S.C. § 102; the additional art is only presented to help provide context of what was known in the art before the priority date of the ‘048 patent.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 3 The method of claim 2 wherein the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises scanning a bar code symbol encoded with the index. The method of claim 3 wherein the bar code symbol is encoded in accordance with an extrinsic standard.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The scanning of bar codes is explicitly disclosed in the ‘193 patent. See ‘193 Patent col. 2 ll. 22-25; col. 6 ll. 10-46. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. It was well-known in the art that many codes that identify items are coded to an extrinsic standard.29 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent also discloses that alphanumeric characters can be read by the scanning device. See ‘193 Patent col. 2 ll. 22-25; col. 4 ll. 45-57.

Claim 4

Claim 5

Claim 6

The method of claim 2 wherein the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises using optical character recognition techniques. The method of claim 1 wherein the index is at least a portion of a Universal Product Code.

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘193 patent.30

29 See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized

bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].
30 Id.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 7 The method of claim 1 wherein the index is at least a portion of a EAN code.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent.31 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found on books is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 38-46. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent.32 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found in magazines or newspapers is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISSN code is simply a specific coding scheme that was wellknown in the art to be used as described by the ‘193 patent.33

Claim 8

The method of claim 1 wherein the index is at least a portion of an ISBN code.

Claim 9

The method of claim 1 wherein the index is at least a portion of an ISSN code.

31 Id. 32 Id. 33 Id.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 16 The method of claim 1 wherein the steps of accessing a database and extracting a pointer therefrom are carried out on a server computer located remotely from the user computing device. The method of claim 1 wherein the database is distributed over more than one computer.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses the lookup step of the method occurring on a server located remotely from the user. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was well-known in the art.34 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the lookup step of the method occurring on multiple servers. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was wellknown in the art.35 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is simply one form of a network address.36 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is one means for naming a remote computer.

Claim 17

Claim 18

The method of claim 1 wherein the pointer comprises a network address.

Claim 19

The method of claim 1 wherein the pointer comprises a Uniform Resource Locator.

Claim 20

The method of claim 1 wherein the pointer comprises the name of a remote computer.

34 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a

barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].
35 See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in

which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].
36 See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 21 The method of claim 1 wherein the pointer comprises an IP address.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is a string that contains information that can be ultimately resolved to an IP address through DNS.37 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code.38 Thus, all elements this claim are disclosed by the ‘193 patent.

Claim 22

The method of claim 1 wherein the index is comprised of a first field and a second field.

Claim 25

The method of claim 24 wherein the first field is a manufacturer identification number and the second field is a product identification number.

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code, including a manufacturer identification number and a product identification number.39 Thus, all elements this claim are disclosed by the ‘193 patent. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses that its functionality should occur automatically after the initial scan. See ‘193 Patent col.4 ll.57-60; col.5 ll.8-11. This additional limitation was also a technique that was well-known in the art.40

Claim 26

The method of claim 1 wherein the step of using the pointer to establish communication with the remote computer identified thereby is executed automatically by the user computing device without user intervention.

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

Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R].
38 See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance

of various segments of standard UPC codes).
39 Id. 40 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing

on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 27 The method of claim 26 wherein the automatic communication by the user computing device with the remote computer is executed by a web browser program running on the user computing device. The method of claim 1 wherein the step of using the pointer to establish communication with the remote computer identified thereby is executed by a user selecting hypertext link returned to the user computing device by the database.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of web browsers, such as NCSA Mosaic, as an example of a client interface. See ‘193 Patent col. 4 ll. 26-44. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses matching URLs with bar codes and displaying the results on a web browser. See ‘193 Patent col.4 ll.46-54. One of the main purposes of a web browser is to display HTML documents, which include hypertext links. 41 The ‘193 patent also discloses the possibility that the user may have multiple matches for the scanned code and a selection of one of those matches would have to be made by the user. See ‘193 Patent col. 4 ll. 46-57. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of the most widely-known wide area network, the internet, when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that its network may be a network provided by a cable TV company or telephone company. See ‘193 Patent col. 3 ll. 3536. The ‘193 patent also discloses that its network

Claim 28

Claim 29

The method of claim 1 wherein the network over which the user computing device establishes communication with the remote computer is a wide area network. The method of claim 29 wherein the wide area network is the Internet.

Claim 30

Claim 31

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

41 See, e.g., B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994 (showing

how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048

‘193 Patent Disclosures28 can be either part of either a closed proprietary network or part of a larger global server network. See ‘193 Patent col. 4 ll. 7-25. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses the lookup step of the method occurring on a server which is in direct communication with local pieces of the invention. See ‘193 Patent col. 4 ll. 46-57. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that its network may be part of a larger global server network, such as the internet. See ‘193 Patent col. 4 ll. 22-25. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. It was well-known in the art that electronic resources, such as databases, are commonly secured through a user name/password mechanism.

Claim 32

Claim 33

The method of claim 31 wherein the database is resident on an online service provider computer with which the user computing device has established direct communication. The method of claim 32 wherein the online service provider computer additionally provides a gateway to the Internet. The method of claim 1 wherein access to the database requires entry of a password.

Claim 34

Claim 35

The method of claim 1 wherein As disclosed above, the ‘193 patent renders all the database is associated with a elements of the base claims anticipated. search engine. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. The ‘193 patent also discloses that “well-known information retrieval techniques” could be used to match the scanned codes with items to be retrieved for the user. The most well-known information retrieval technique for the internet is a search engine.42

42 See, e.g., U.S. Patent No. 5,331,547 Fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning a

bar code) [Appendix F]. See also, e.g., Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! and Lycos as well-known search engines) [Appendix L]. See also, e.g., NL-KR Digest, October 3, 1988 p. 2-3 (disclosing the feature list for a text-based search engine) [Appendix M].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 37 The system of claim 36 wherein the user input device comprises means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index. The system of claim 37 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for scanning a bar code symbol encoded with the index. The system of claim 38 wherein the means for scanning a bar code symbol is adapted to scan a bar code symbol encoded in accordance with an extrinsic standard.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. In addition, the ‘193 discloses the use of scanning devices, which were well-known in the art to demodulate reflected light to read a targeted code. See ‘193 Patent col. 2 ll. 22-25. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The scanning of bar codes is explicitly disclosed in the ‘193 patent. See ‘193 Patent col. 2 ll. 22-25; col. 6 ll. 10-46.

Claim 38

Claim 39

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. It was well-known in the art that many codes that identify items are coded to an extrinsic standard.43 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent also discloses that alphanumeric characters can be read by the scanning device. See ‘193 Patent col. 2 ll. 22-25; col. 4 ll. 45-57.

Claim 40

The system of claim 37 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for using optical character recognition techniques.

43 See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized

bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 41 The system of claim 36 wherein the input device is configured to read an index comprising at least a portion of a Universal Product Code.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated.

Claim 42

Claim 43

The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘193 patent.44 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is configured to elements of the base claims anticipated. read an index comprising at least a portion of a EAN code. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent.45 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is configured to elements of the base claims anticipated. read an index comprising at least a portion of an ISBN code. The use of a code found on books is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 38-46. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent.46

44 Id. 45 Id. 46 Id.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 44

‘193 Patent Disclosures28

Claim 51

Claim 52

Claim 53

The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is configured to elements of the base claims anticipated. read an index comprising at least a portion of an ISSN code. The use of a code found in magazines or newspapers is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISSN code is simply a specific coding scheme that was wellknown in the art to be used as described by the ‘193 patent.47 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the means for storing a database elements of the base claims anticipated. is located on a server computer located remotely from the user The ‘193 patent discloses the lookup step of the computing device. method occurring on a server located remotely from the user. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was well-known in the art.48 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the means for storing a database elements of the base claims anticipated. is distributed over more than one computer. The ‘193 patent explicitly discloses the lookup step of the method occurring on multiple servers. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was wellknown in the art.49 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the pointer comprises a network elements of the base claims anticipated. address. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is simply one form of a network address.50

47 Id. 48 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a

barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].
49 See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in

which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].
50 See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 54 The system of claim 36 wherein the pointer comprises a Uniform Resource Locator.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is one means for naming a remote computer. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is a string that contains information that can be ultimately resolved to an IP address through DNS.51 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code.52 Thus, all elements this claim are disclosed by the ‘193 patent. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code, including a manufacturer identification number and

Claim 55

The system of claim 36 wherein the pointer comprises the name of a remote computer.

Claim 56

The system of claim 36 wherein the pointer comprises an IP address.

Claim 57

The system of claim 36 wherein the index is comprised of a first field and a second field.

Claim 60

The system of claim 59 wherein the first field is a manufacturer identification number and the second field is a product identification number.

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

Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R].
52 See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance

of various segments of standard UPC codes).
53 Id.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048

‘193 Patent Disclosures28 a product identification number.53 Thus, all elements this claim are disclosed by the ‘193 patent. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses that its functionality should occur automatically after the initial scan. See ‘193 Patent col.4 ll.57-60; col.5 ll.8-11. This additional limitation was also a technique that was well-known in the art.54 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of web browsers, such as NCSA Mosaic, as an example of a client interface. See ‘193 Patent col. 4 ll. 26-44.

Claim 61

The system of claim 36 wherein the means for using the pointer to establish communication with the remote computer identified thereby executes automatically by the user computing device without user intervention. The system of claim 61 wherein the automatic communication by the user computing device with the remote computer is executed by a web browser program running on the user computing device. The system of claim 36 wherein the means for using the pointer to establish communication with the remote computer identified thereby executes by a user selecting hypertext link returned to the user computing device by the database.

Claim 62

Claim 63

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses matching URLs with bar codes and displaying the results on a web browser. See ‘193 Patent col.4 ll.46-54. One of the main purposes of a web browser is to display HTML documents, which include hypertext links. 55 The ‘193 patent also discloses the possibility that the user may have multiple matches for the scanned code and a selection of one of those matches would have to be made by the user. See ‘193 Patent col. 4 ll. 46-57.

54 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing

on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].
55 See, e.g., B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994 (showing

how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 64 The system of claim 36 wherein the network over which the user computing device establishes communication with the remote computer is a wide area network. The system of claim 64 wherein the wide area network is the Internet.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of the most widely-known wide area network, the internet, when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54.

Claim 65

Claim 66

The system of claim 64 wherein the wide area network is a proprietary online service.

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that its network may be a network provided by a cable TV company or telephone company. See ‘193 Patent col. 3 ll. 3536. The ‘193 patent also discloses that its network can be either part of either a closed proprietary network or part of a larger global server network. See ‘193 Patent col. 4 ll. 7-25. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses the lookup step of the method occurring on a server which is in direct communication with local pieces of the invention. See ‘193 Patent col. 4 ll. 46-57. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that its network may be part of a larger global server network, such as the internet. See ‘193 Patent col. 4 ll. 22-25. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. It was well-known in the art that electronic resources, such as databases, are commonly secured through a user name/password mechanism.

Claim 67

The system of claim 66 wherein the database is resident on an online service provider computer with which the user computing device has established direct communication. The system of claim 67 wherein the online service provider computer additionally provides a gateway to the Internet.

Claim 68

Claim 69

The system of claim 36 wherein access to the database requires entry of a password.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 70

‘193 Patent Disclosures28

The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the database is associated with a elements of the base claims anticipated. search engine. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. The ‘193 patent also discloses that “well-known information retrieval techniques” could be used to match the scanned codes with items to be retrieved for the user. The most well-known information retrieval technique for the internet is a search engine.56 The user computing device of claim 71 wherein the user input device comprises means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index. The user computing device of claim 72 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for scanning a bar code symbol encoded with the index. The user computing device of claim 73 wherein the means for scanning a bar code symbol is adapted to scan a bar code symbol encoded in accordance with an extrinsic standard. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. In addition, the ‘193 discloses the use of scanning devices, which were well-known in the art to demodulate reflected light to read a targeted code. See ‘193 Patent col. 2 ll. 22-25. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The scanning of bar codes is explicitly disclosed in the ‘193 patent. See ‘193 Patent col. 2 ll. 22-25; col. 6 ll. 10-46.

Claim 72

Claim 73

Claim 74

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. It was well-known in the art that many codes that identify items are coded to an extrinsic standard.57

56 See, e.g., U.S. Patent No. 5,331,547 Fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning a

bar code) [Appendix F]. See also, e.g., Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! and Lycos as well-known search engines) [Appendix L]. See also, e.g., NL-KR Digest, October 3, 1988 p. 2-3 (disclosing the feature list for a text-based search engine) [Appendix M].
57 See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized

bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 75 The user computing device of claim 72 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for using optical character recognition techniques. The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a Universal Product Code.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent also discloses that alphanumeric characters can be read by the scanning device. See ‘193 Patent col. 2 ll. 22-25; col. 4 ll. 45-57.

Claim 76

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘193 patent.58 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent.59 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found on books is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 38-46. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISBN code is simply a specific coding scheme

Claim 77

The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a EAN code.

Claim 78

The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISBN code.

58 Id. 59 Id. 60 Id.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048

‘193 Patent Disclosures28 that was well-known in the art to be used as described by the ‘193 patent.60

Claim 79

The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISSN code.

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The use of a code found in magazines or newspapers is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISSN code is simply a specific coding scheme that was wellknown in the art to be used as described by the ‘193 patent.61 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses the lookup step of the method occurring on a server located remotely from the user. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was well-known in the art.62 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated.

Claim 86

The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database located on a server computer remote from the user computing device.

Claim 87

The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database The ‘193 patent explicitly discloses the lookup step distributed over more than one of the method occurring on multiple servers. See computer. ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was wellknown in the art.63

61 Id. 62 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a

barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].
63 See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in

which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 90 The user computing device of claim 71 wherein the software program is adapted to use the pointer to establish communication with the remote computer identified thereby automatically without user intervention. The user computing device of claim 90 wherein the automatic communication by the user computing device with the remote computer is executed by a web browser program running on the user computing device. The user computing device of claim 71 wherein the software program is adapted to use the pointer to establish communication with the remote computer identified thereby by using a user-selected hypertext link returned to the user computing device by the database.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses that its functionality should occur automatically after the initial scan. See ‘193 Patent col.4 ll.57-60; col.5 ll.8-11. This additional limitation was also a technique that was well-known in the art.64 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of web browsers, such as NCSA Mosaic, as an example of a client interface. See ‘193 Patent col. 4 ll. 26-44. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses matching URLs with bar codes and displaying the results on a web browser. See ‘193 Patent col.4 ll.46-54. One of the main purposes of a web browser is to display HTML documents, which include hypertext links. 65 The ‘193 patent also discloses the possibility that the user may have multiple matches for the scanned code and a selection of one of those matches would have to be made by the user. See ‘193 Patent col. 4 ll. 46-57. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of the most widely-known wide area network, the internet, when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54.

Claim 91

Claim 92

Claim 93

The user computing device of claim 71, further adapted to establish communication with the remote computer over a wide area network.

64 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing

on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].
65 See, e.g., B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994 (showing

how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 94 The user computing device of claim 93 further adapted to establish communication with the remote computer over the Internet. The user computing device of claim 93 further adapted to establish communication with the remote computer over a proprietary online service.

‘193 Patent Disclosures28 As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated. The ‘193 patent discloses that its network may be a network provided by a cable TV company or telephone company. See ‘193 Patent col. 3 ll. 3536. The ‘193 patent also discloses that its network can be either part of either a closed proprietary network or part of a larger global server network. See ‘193 Patent col. 4 ll. 7-25.

Claim 95

B.

U.S. PATENT NO. 5,640,193 IN COMBINATION WITH ADDITIONAL PRIOR ART RENDERS CLAIMS 1-95 OF THE ‘048 PATENT OBVIOUS

The ‘193 patent contains the explicit suggestion66 to use scanned codes to access the internet when it states: One way to use the scanner pen (hereafter pen) is in combination with marks that represent a unique identifier code for electronic objects accessible on the ITV network. These codes could work in a similar way as the well-known Universal Resource Locator identifiers...only they would be read from paper (instead of typed into an application).67 This statement is then used as the basis for dependent claims 2 and 3 where the network used in the invention is the internet and the scanned codes map to URLs. Moreover, the patent specifically
66 See M.P.E.P. 2142 (stating that one of the elements necessary to establish a prima facie case of obviousness is to

establish a suggestion or motivation to modify the reference or combine the reference with other teachings); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. ___, 127 S. Ct. 1727 (2007) (stating that obviousness is found when one skilled in the art would have a reason to combine known elements and the combination of those elements does no more than yield predictable results). In this case, the ‘193 patent contains explicit suggestions to combine the invention of the ‘193 patent with various internet technologies, and the combination of all these elements only yields what one skilled in the art would expect.
67 ‘193 patent col.4 ll.46-54 [Appendix A]. This disclosure by the ‘193 patent also anticipates claims 19 and 54 of the

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

references in its Background section the use of the “information superhighway” (a common colloquial term for the internet) as a means for providing access to thousands of online objects. The combination of scanned codes with internet-related technology raises a substantial new question of patentability regarding the ‘048 patent because it would have been obvious to one skilled in the art that an invention carrying out this suggested combination would automatically and necessarily create a network connection based on the code scanned. Early in the prosecution of the ‘048 patent’s European counterpart, EP ‘453, the EPO cited an article entitled “Distributing Uniform Resource Locators as Bar Codes Images,” published by IBM, as a basis for rejected the subject matter of the claim as anticipated in its entirety.68 NeoMedia correctly pointed out that the article in question was published in 1996 – after the priority date of the patent application. However, the discovery of the same idea in the ‘193 patent resurrects the argument made by the EPO. In fact, in light of the other disclosures made in the ‘193 patent, the idea communicated to use bar codes as a replacement for URLs is even broader than the referenced article because the ‘193 patent envisions codes which do not necessarily have a direct mapping to the ultimate resource retrieved.69 One of the most common applications used to access the internet, both at the time of the invention as well as today, is a web browser. It was well-known in the art in 1995 that a user could type a URL70 into a web browser, and the web browser would then automatically attempt to download the network resource located at the address associated with the URL using a combination of internet technologies such as the Domain Name System, or DNS,71 and the

‘048 patent which explicitly define the “pointer” as a URL.
68 EP ‘453 20.12.2000 Communication at ¶¶ 2-2.1 [Exhibit C]. 69 ‘193 Patent col.4 ll.46-54 [Appendix A]. 70 See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O]. 71 See Mockapetris, P., RFC 1034: Domain Names – Concepts and Facilities, November 1987 [Appendix Q]; See also

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Hypertext Transfer Protocol, or HTTP.72 The ‘193 patent’s suggestion that machine-scanned input replace human-typed input in this process would render it obvious to one skilled in the art that this process would occur automatically once was initiated by the user’s scanning of the code. Independent claims 1, 36, and 71 are thus rendered obvious under 35 U.S.C. § 103 when the ‘193 patent is combined with these well-known internet technologies. Because the ‘193 patent was never considered by the USPTO during the prosecution of the ‘048 patent, the combinations of references listed below were also never considered by the USPTO. Independent Claims in ‘048 Patent Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As detailed in § III.A, the ‘193 patent discloses all the elements of claim 1. In addition, it was well-known in the art in 1995 that a user could type a URL into a web browser. See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O]. The web browser would then automatically attempt to download the network resource located at the address associated with the URL using a combination of internet technologies such as the Domain Name System, or DNS, and the Hypertext Transfer Protocol, or HTTP. See Mockapetris, P., RFC 1034: Domain Names – Concepts and Facilities, November 1987 [Appendix Q]; See also Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R]. See Berners-Lee T, et al., RFC 1945: Hypertext Transfer Protocol – HTTP/1.0, May 1996 [Exhibit L]. Even though the earliest RFC for HTTP was published after the ‘048’s priority date in 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first

Claim 1

A method of connecting a user computing device to one of a plurality of remote computers available for communication over a network comprising: a) reading a data carrier modulated with an index; b) accessing a database with the index, the database comprising a plurality of records that link an index to a pointer which identifies a remote computer on the network; c) extracting a pointer from the database as a function of the index; and d) using the pointer to establish communication with the remote computer identified thereby.

Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R].
72 See Berners-Lee T, et al., RFC 1945: Hypertext Transfer Protocol – HTTP/1.0, May 1996 [Exhibit L]. Even though

the earliest RFC for HTTP was published after the ‘048’s priority date in 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first documented as HTTP 0.9 in 1991 [Appendix P].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Independent Claims in ‘048 Patent

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] documented as HTTP 0.9 in 1991 [Appendix P]. This process of resolving a URL through a DNS lookup and then accessing the resource “pointed” to by the URL describes the exact functionality outlined in the claim. The ‘193 patent teaches a version of this process where the initial input from the user comes not from user-readable input, but from machine-readable input. See ‘193 Patent col. 4 ll. 46-54. The ‘048 patent’s suggestion that machine-scanned input replace human-typed input in this process is thus rendered obvious to one skilled in the art because the combination of these technologies, as disclosed in the prior art, only yields predictable results. As detailed in § III.A, the ‘193 patent discloses all the elements of claim 36. In addition, it was well-known in the art in 1995 that a user could type a URL into a web browser. See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O]. The web browser would then automatically attempt to download the network resource located at the address associated with the URL using a combination of internet technologies such as the Domain Name System, or DNS, and the Hypertext Transfer Protocol, or HTTP. See Mockapetris, P., RFC 1034: Domain Names – Concepts and Facilities, November 1987 [Appendix Q]; See also Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R]. See Berners-Lee T, et al., RFC 1945: Hypertext Transfer Protocol – HTTP/1.0, May 1996 [Exhibit L]. Even though the earliest RFC for HTTP was published after the ‘048’s priority date in 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first documented as HTTP 0.9 in 1991 [Appendix P]. This process of resolving a URL through a DNS lookup and then accessing the resource “pointed” to

Claim 36

A system comprising: a. a user computing device; b. an input device associated with the user computing device, configured to read a data carrier modulated with an index; c. means for storing a database comprising a plurality of records that link an index to a pointer which identifies a remote computer; wherein the user computing device comprises: means for accessing the database to extract a pointer from the database as a function of the index; and means for using the pointer to establish communication with the remote computer identified thereby.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Independent Claims in ‘048 Patent

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] by the URL describes the exact functionality outlined in the claim. The ‘193 patent teaches a version of this process where the initial input from the user comes not from user-readable input, but from machine-readable input. See ‘193 Patent col. 4 ll. 46-54. The ‘048 patent’s suggestion that machine-scanned input replace human-typed input in this process is thus rendered obvious to one skilled in the art because the combination of these technologies, as disclosed in the prior art, only yields predictable results. As detailed in § III.A, the ‘193 patent discloses all the elements of claim 71. In addition, it was well-known in the art in 1995 that a user could type a URL into a web browser. See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O].

Claim 71

A user computing device comprising: a. an input device configured to read a data carrier modulated with an index; and b. computer processing means for executing a software program adapted to:

The web browser would then automatically attempt to download the network resource located at the address associated with the URL using a combination of internet technologies such as the utilize the index to access a database comprising a plurality Domain Name System, or DNS, and the Hypertext of records that link an index to a Transfer Protocol, or HTTP. See Mockapetris, P., RFC 1034: Domain Names – Concepts and pointer which identifies a Facilities, November 1987 [Appendix Q]; See also remote computer; Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 retrieve from the database a [Appendix R]. See Berners-Lee T, et al., RFC 1945: pointer as a function of the Hypertext Transfer Protocol – HTTP/1.0, May 1996 index; and [Exhibit L]. Even though the earliest RFC for HTTP was published after the ‘048’s priority date in use the pointer to establish communication with the remote 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first computer identified thereby. documented as HTTP 0.9 in 1991 [Appendix P]. This process of resolving a URL through a DNS lookup and then accessing the resource “pointed” to by the URL describes the exact functionality outlined in the claim. The ‘193 patent teaches a version of this process where the initial input from the user comes not from user-readable input, but

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Independent Claims in ‘048 Patent

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] from machine-readable input. See ‘193 Patent col. 4 ll. 46-54. The ‘048 patent’s suggestion that machine-scanned input replace human-typed input in this process is thus rendered obvious to one skilled in the art because the combination of these technologies, as disclosed in the prior art, only yields predictable results.

The following charts show how the ‘193 patent, in combination with other prior art, renders obvious every remaining dependent claim in the ‘048 patent under 35 U.S.C. § 103. Because the ‘193 patent was never considered by the USPTO during the prosecution of the ‘048 patent, the combinations of references listed below were also never considered by the USPTO. ‘048 Patent Claims Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

Claim 2

Claim 3

The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises the step of reading a light pattern emanating from an object and demodulating the In addition, the ‘193 discloses the use of scanning light pattern to obtain the index. devices, which were well-known in the art to demodulate reflected light to read a targeted code. See ‘193 Patent col. 2 ll. 22-25. The method of claim 2 wherein As disclosed above, the ‘193 patent in combination the step of reading a light with RFC 1738, HTTP 1991, RFC 1034 and RFC pattern emanating from an 1035 renders all elements of the base claims object and demodulating the anticipated or obvious. light pattern to obtain the index comprises scanning a bar code The scanning of bar codes is explicitly disclosed in symbol encoded with the index. the ‘193 patent. See ‘193 Patent col. 2 ll. 22-25; col. 6 ll. 10-46.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

The method of claim 2 wherein the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises using optical character recognition techniques. Claim 18 The method of claim 1 wherein the pointer comprises a network address. Claim 5

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent also discloses that alphanumeric characters can be read by the scanning device. See ‘193 Patent col. 2 ll. 22-25; col. 4 ll. 45-57. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is simply one form of a network address. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is one means for naming a remote computer. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is a string that contains information that can be ultimately resolved to an IP address through DNS.

Claim 19 The method of claim 1 wherein the pointer comprises a Uniform Resource Locator.

Claim 20 The method of claim 1 wherein the pointer comprises the name of a remote computer.

Claim 21 The method of claim 1 wherein the pointer comprises an IP address.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Claim 27 The method of claim 26 wherein the automatic communication by the user computing device with the remote computer is executed by a web browser program running The ‘193 patent explicitly discloses the use of web on the user computing device. browsers, such as NCSA Mosaic, as an example of a client interface. See ‘193 Patent col. 4 ll. 26-44. Claim 29 The method of claim 1 wherein As disclosed above, the ‘193 patent in combination the network over which the user with RFC 1738, HTTP 1991, RFC 1034 and RFC computing device establishes 1035 renders all elements of the base claims communication with the remote anticipated or obvious. computer is a wide area network. The ‘193 patent explicitly discloses the use of the most widely-known wide area network, the internet, when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent in combination Claim 30 The method of claim 29 wherein the wide area network with RFC 1738, HTTP 1991, RFC 1034 and RFC is the Internet. 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses that its network may be a network provided by a cable TV company or telephone company. See ‘193 Patent col. 3 ll. 3536. The ‘193 patent also discloses that its network can be either part of either a closed proprietary network or part of a larger global server network. See ‘193 Patent col. 4 ll. 7-25. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses the lookup step of the method occurring on a server which is in direct

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

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

Claim 32 The method of claim 31 wherein the database is resident on an online service provider computer with which the user computing device has established direct communication.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] communication with local pieces of the invention. See ‘193 Patent col. 4 ll. 46-57. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses that its network may be part of a larger global server network, such as the internet. See ‘193 Patent col. 4 ll. 22-25. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

Claim 33 The method of claim 32 wherein the online service provider computer additionally provides a gateway to the Internet.

Claim 34 The method of claim 1 wherein access to the database requires entry of a password.

It was well-known in the art that electronic resources, such as databases, are commonly secured through a user name/password mechanism. Claim 37 The system of claim 36 wherein As disclosed above, the ‘193 patent in combination the user input device comprises with RFC 1738, HTTP 1991, RFC 1034 and RFC means for reading a light 1035 renders all elements of the base claims pattern emanating from an anticipated or obvious. object and demodulating the light pattern to obtain the index. In addition, the ‘193 discloses the use of scanning devices, which were well-known in the art to demodulate reflected light to read a targeted code. See ‘193 Patent col. 2 ll. 22-25. Claim 38 The system of claim 37 wherein As disclosed above, the ‘193 patent in combination the means for reading a light with RFC 1738, HTTP 1991, RFC 1034 and RFC pattern emanating from an 1035 renders all elements of the base claims object and demodulating the anticipated or obvious. light pattern to obtain the index comprises means for scanning a The scanning of bar codes is explicitly disclosed in bar code symbol encoded with the ‘193 patent. See ‘193 Patent col. 2 ll. 22-25; the index. col. 6 ll. 10-46. Claim 40 The system of claim 37 wherein As disclosed above, the ‘193 patent in combination the means for reading a light with RFC 1738, HTTP 1991, RFC 1034 and RFC pattern emanating from an 1035 renders all elements of the base claims object and demodulating the anticipated or obvious. light pattern to obtain the index comprises means for using The ‘193 patent also discloses that alphanumeric optical character recognition characters can be read by the scanning device. See techniques. ‘193 Patent col. 2 ll. 22-25; col. 4 ll. 45-57.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] Claim 53 The system of claim 36 wherein As disclosed above, the ‘193 patent in combination the pointer comprises a network with RFC 1738, HTTP 1991, RFC 1034 and RFC address. 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is simply one form of a network address. Claim 54 The system of claim 36 wherein As disclosed above, the ‘193 patent in combination the pointer comprises a with RFC 1738, HTTP 1991, RFC 1034 and RFC Uniform Resource Locator. 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. Claim 55 The system of claim 36 wherein As disclosed above, the ‘193 patent in combination the pointer comprises the name with RFC 1738, HTTP 1991, RFC 1034 and RFC of a remote computer. 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is one means for naming a remote computer. Claim 56 The system of claim 36 wherein As disclosed above, the ‘193 patent in combination the pointer comprises an IP with RFC 1738, HTTP 1991, RFC 1034 and RFC address. 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of URLs as the pointer. See ‘193 Patent col. 4 ll. 2845. A URL is a string that contains information that can be ultimately resolved to an IP address through DNS. Claim 62 The system of claim 61 wherein As disclosed above, the ‘193 patent in combination the automatic communication with RFC 1738, HTTP 1991, RFC 1034 and RFC by the user computing device 1035 renders all elements of the base claims with the remote computer is anticipated or obvious. executed by a web browser program running on the user The ‘193 patent explicitly discloses the use of web computing device. browsers, such as NCSA Mosaic, as an example of a client interface. See ‘193 Patent col. 4 ll. 26-44.

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‘048 Patent Claims

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] Claim 64 The system of claim 36 wherein As disclosed above, the ‘193 patent in combination the network over which the user with RFC 1738, HTTP 1991, RFC 1034 and RFC computing device establishes 1035 renders all elements of the base claims communication with the remote anticipated or obvious. computer is a wide area network. The ‘193 patent explicitly discloses the use of the most widely-known wide area network, the internet, when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. Claim 65 The system of claim 64 wherein As disclosed above, the ‘193 patent in combination the wide area network is the with RFC 1738, HTTP 1991, RFC 1034 and RFC Internet. 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. Claim 66 The system of claim 64 wherein As disclosed above, the ‘193 patent in combination the wide area network is a with RFC 1738, HTTP 1991, RFC 1034 and RFC proprietary online service. 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses that its network may be a network provided by a cable TV company or telephone company. See ‘193 Patent col. 3 ll. 3536. The ‘193 patent also discloses that its network can be either part of either a closed proprietary network or part of a larger global server network. See ‘193 Patent col. 4 ll. 7-25. Claim 67 The system of claim 66 wherein As disclosed above, the ‘193 patent in combination the database is resident on an with RFC 1738, HTTP 1991, RFC 1034 and RFC online service provider 1035 renders all elements of the base claims computer with which the user anticipated or obvious. computing device has established direct The ‘193 patent discloses the lookup step of the communication. method occurring on a server which is in direct communication with local pieces of the invention. See ‘193 Patent col. 4 ll. 46-57.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] Claim 68 The system of claim 67 wherein As disclosed above, the ‘193 patent in combination the online service provider with RFC 1738, HTTP 1991, RFC 1034 and RFC computer additionally provides 1035 renders all elements of the base claims a gateway to the Internet. anticipated or obvious. The ‘193 patent discloses that its network may be part of a larger global server network, such as the internet. See ‘193 Patent col. 4 ll. 22-25. Claim 69 The system of claim 36 wherein As disclosed above, the ‘193 patent in combination access to the database requires with RFC 1738, HTTP 1991, RFC 1034 and RFC entry of a password. 1035 renders all elements of the base claims anticipated or obvious. It was well-known in the art that electronic resources, such as databases, are commonly secured through a user name/password mechanism. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. In addition, the ‘193 discloses the use of scanning devices, which were well-known in the art to demodulate reflected light to read a targeted code. See ‘193 Patent col. 2 ll. 22-25. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The scanning of bar codes is explicitly disclosed in the ‘193 patent. See ‘193 Patent col. 2 ll. 22-25; col. 6 ll. 10-46. As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘193 patent also discloses that alphanumeric characters can be read by the scanning device. See ‘193 Patent col. 2 ll. 22-25; col. 4 ll. 45-57.

Claim 72 The user computing device of claim 71 wherein the user input device comprises means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index.

Claim 73 The user computing device of claim 72 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for scanning a bar code symbol encoded with the index. Claim 75 The user computing device of claim 72 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for using optical character recognition techniques.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Claim 91 The user computing device of claim 90 wherein the automatic communication by the user computing device with the remote computer is executed by a web browser program running The ‘193 patent explicitly discloses the use of web on the user computing device. browsers, such as NCSA Mosaic, as an example of a client interface. See ‘193 Patent col. 4 ll. 26-44. As disclosed above, the ‘193 patent in combination Claim 93 The user computing device of claim 71, further adapted to with RFC 1738, HTTP 1991, RFC 1034 and RFC establish communication with 1035 renders all elements of the base claims the remote computer over a anticipated or obvious. wide area network. The ‘193 patent explicitly discloses the use of the most widely-known wide area network, the internet, when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent in combination Claim 94 The user computing device of claim 93 further adapted to with RFC 1738, HTTP 1991, RFC 1034 and RFC establish communication with 1035 renders all elements of the base claims the remote computer over the anticipated or obvious. Internet. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. As disclosed above, the ‘193 patent in combination Claim 95 The user computing device of claim 93 further adapted to with RFC 1738, HTTP 1991, RFC 1034 and RFC establish communication with 1035 renders all elements of the base claims the remote computer over a anticipated or obvious. proprietary online service. The ‘193 patent discloses that its network may be a network provided by a cable TV company or telephone company. See ‘193 Patent col. 3 ll. 3536. The ‘193 patent also discloses that its network can be either part of either a closed proprietary network or part of a larger global server network. See ‘193 Patent col. 4 ll. 7-25.

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As disclosed above, the ‘193 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims Claim 4 The method of claim 3 wherein the bar code symbol is encoded in accordance with an extrinsic standard.

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 2227. It was well-known in the art that many codes that identify items are coded to an extrinsic standard. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].

Claim 6

The method of claim 1 wherein the index is at least a portion of a Universal Product Code.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims Claim 7 The method of claim 1 wherein the index is at least a portion of a EAN code.

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (disclosing that EAN codes have been in existence since 1977). As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found on books is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 38-46. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISBN (last

Claim 8

The method of claim 1 wherein the index is at least a portion of an ISBN code.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] visited July 24, 2007) (disclosing ISBN codes were created in 1966). As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found in magazines or newspapers is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISSN (last visited July 24, 2007) (disclosing ISSN codes were created in 1975). As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance -50-

Claim 9

The method of claim 1 wherein the index is at least a portion of an ISSN code.

Claim 22 The method of claim 1 wherein the index is comprised of a first field and a second field.

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] of various segments of standard UPC codes). Thus, all elements this claim are disclosed by the ‘193 patent.

Claim 23 The method of claim 22 wherein the step of accessing a database with an index comprises the steps of using only the first field of the index to access the database.

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the

Claim 24 The method of claim 23 wherein a plurality of indexes having the same first field and different second fields will result in extraction of the same pointer.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup. Different products made by the same manufacturer would then return the same pointer, even if other fields of the index, such as the product identification number, were different. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code, including a manufacturer identification number and a product identification number. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). Thus, all elements this claim are disclosed by the ‘193 patent.

Claim 25 The method of claim 24 wherein the first field is a manufacturer identification number and the second field is a product identification number.

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‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] Claim 39 The system of claim 38 wherein As disclosed above, the ‘193 patent renders all the means for scanning a bar elements of the base claims anticipated or obvious. code symbol is adapted to scan a bar code symbol encoded in The ‘193 patent discloses that the scanned code accordance with an extrinsic could be an integral part of the scanned item used standard. to identify the item. See ‘193 Patent col. 2 ll. 2227. It was well-known in the art that many codes that identify items are coded to an extrinsic standard. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Claim 41 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is configured elements of the base claims anticipated or obvious. to read an index comprising at least a portion of a Universal The use of a code found on goods is disclosed in Product Code. the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] Claim 42 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is configured elements of the base claims anticipated or obvious. to read an index comprising at least a portion of a EAN code. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (disclosing that EAN codes have been in existence since 1977). Claim 43 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is configured elements of the base claims anticipated or obvious. to read an index comprising at least a portion of an ISBN code. The use of a code found on books is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 38-46. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISBN (last

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] visited July 24, 2007) (disclosing ISBN codes were created in 1966).

Claim 44 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is configured elements of the base claims anticipated or obvious. to read an index comprising at least a portion of an ISSN code. The use of a code found in magazines or newspapers is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISSN (last visited July 24, 2007) (disclosing ISSN codes were created in 1975). The system of claim 36 wherein As disclosed above, the ‘193 patent renders all Claim 57 the index is comprised of a first elements of the base claims anticipated or obvious. field and a second field. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] of various segments of standard UPC codes). Thus, all elements this claim are disclosed by the ‘193 patent.

Claim 58 The system of claim 57 wherein the means for accessing a database with an index comprises means for using only the first field of the index to access the database.

As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes).

It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup. Claim 59 The system of claim 58 wherein As disclosed above, the ‘193 patent renders all a plurality of indexes having elements of the base claims anticipated or obvious. the same first field and different second fields will result in Also as described above, the ‘193 patent extraction of the same pointer. anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes).

It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup. Different products made by the same manufacturer would then return the same pointer, even if other fields of the index, such as the product identification number, were different. Claim 60 The system of claim 59 wherein As disclosed above, the ‘193 patent renders all the first field is a manufacturer elements of the base claims anticipated or obvious. identification number and the Also as described above, the ‘193 patent second field is a product identification number. anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code, including a manufacturer identification number and a product identification number. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). Thus, all elements this claim are disclosed by the ‘193 patent. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 2227.

Claim 74 The user computing device of claim 73 wherein the means for scanning a bar code symbol is adapted to scan a bar code symbol encoded in accordance with an extrinsic standard.

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‘048 Patent Claims

Claim 76 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a Universal Product Code.

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] It was well-known in the art that many codes that identify items are coded to an extrinsic standard. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found on goods is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) -58-

Claim 77 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a EAN code.

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Claim 78 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISBN code.

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (disclosing that EAN codes have been in existence since 1977). As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found on books is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 38-46. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISBN (last visited July 24, 2007) (disclosing ISBN codes were created in 1966). As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The use of a code found in magazines or newspapers is disclosed in the ‘193 patent. See ‘193 Patent col. 6 ll. 10-17. The ‘193 patent also discloses that the scanned code could be an integral part of the scanned item used to identify the item. See ‘193 Patent col. 2 ll. 22-27. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as -59-

Claim 79 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISSN code.

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Claim 88 The user computing device of claim 71 wherein the index is comprised of a first field and a second field, and wherein the software program is adapted to access a database with only the first field of the index.

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] described by the ‘193 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISSN (last visited July 24, 2007) (disclosing ISSN codes were created in 1975). As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘193 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 -60-

Claim 89 The user computing device of claim 88 wherein a plurality of indexes having the same first field and different second fields will result in extraction of the same pointer.

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup. Different products made by the same manufacturer would then return the same pointer, even if other fields of the index, such as the product identification number, were different.

‘048 Patent Claims

Claim 10 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises receiving a signal emanating from an article of commerce, the signal being modulated with the index.

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. This claim describes RFID technology. RFID chips are well-known in the art to be a technology that can serve as a substitute input means in place of scanned bar codes. See generally Radiofrequency identification, http://en.wikipedia.org/wiki/Rfid (last visited May 29, 2007) (describing RFID technology and how some entities, such as the Canadian Cattle Identification Agency, have opted to use RFID chips over standard bar codes). The combination of the ‘193 patent with any one of a variety of pieces of prior art would have rendered any substitute inputs means an obvious variation of the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed -61-

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Claim 11 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises inputting into the user computing device an audible signal modulated with information correlated to the index.

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an audible signal, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an voice recognition technology, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

Claim 12 The method of claim 11 wherein the step of inputting into the user computing device an audible signal modulated with information correlated to the index comprises the use of voice recognition techniques.

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‘048 Patent Claims

Claim 13 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises inputting into the user computing device an RF signal modulated with information correlated to the index.

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an RF signal, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:123 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious.

Claim 14 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises accessing a magnetic card with a magnetic card reader.

As with the RFID technology discussed above, a substitute means of input, such as a magnetic card reader, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. Claim 45 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device is adapted to elements of the base claims anticipated or obvious. receive a signal emanating from an article of commerce, the This claim describes RFID technology. RFID signal being modulated with the chips are well-known in the art to be a technology index. that can serve as a substitute input means in place of scanned bar codes. See generally Radiofrequency identification,

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] http://en.wikipedia.org/wiki/Rfid (last visited May 29, 2007) (describing RFID technology and how some entities, such as the Canadian Cattle Identification Agency, have opted to use RFID chips over standard bar codes).

The combination of the ‘193 patent with any one of a variety of pieces of prior art would have rendered any substitute inputs means an obvious variation of the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. Claim 46 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device comprises elements of the base claims anticipated or obvious. means for inputting into the user computing device an As with the RFID technology discussed above, a audible signal modulated with substitute means of input, such as an audible information correlated to the signal, is an obvious variation on the bar code index. means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. Claim 47 The system of claim 46 wherein As disclosed above, the ‘193 patent renders all the means for inputting into the elements of the base claims anticipated or obvious. user computing device an audible signal modulated with As with the RFID technology discussed above, a information correlated to the substitute means of input, such as an voice

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] index is configured to utilize recognition technology, is an obvious variation on voice recognition techniques. the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. Claim 48 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device comprises elements of the base claims anticipated or obvious. means for inputting an RF signal modulated with As with the RFID technology discussed above, a information correlated to the substitute means of input, such as an RF signal, is index. an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:123 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. Claim 49 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the input device comprises elements of the base claims anticipated or obvious. means for reading a magnetic stripe card. As with the RFID technology discussed above, a substitute means of input, such as a magnetic card reader, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input

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‘048 Patent Claims

Claim 80 The user computing device of claim 71 wherein the input device is adapted to receive a signal emanating from an article of commerce, the signal being modulated with the index.

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. This claim describes RFID technology. RFID chips are well-known in the art to be a technology that can serve as a substitute input means in place of scanned bar codes. See generally Radiofrequency identification, http://en.wikipedia.org/wiki/Rfid (last visited May 29, 2007) (describing RFID technology and how some entities, such as the Canadian Cattle Identification Agency, have opted to use RFID chips over standard bar codes). The combination of the ‘193 patent with any one of a variety of pieces of prior art would have rendered any substitute inputs means an obvious variation of the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an audible signal, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H].

Claim 81 The user computing device of claim 71 wherein the input device comprises means for inputting into the user computing device an audible signal modulated with information correlated to the index.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Claim 82 The user computing device of claim 81 wherein the means for inputting into the user computing device an audible signal modulated with information correlated to the index is configured to utilize voice recognition techniques.

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an voice recognition technology, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an RF signal, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:123 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

Claim 83 The user computing device of claim 71 wherein the input device comprises means for inputting an RF signal modulated with information correlated to the index.

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‘048 Patent Claims

Claim 84 The user computing device of claim 71 wherein the input device comprises means for reading a magnetic stripe card.

Disclosures in U.S. Patent 5,420, 943 [Appendix H], U.S. Patent 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as a magnetic card reader, is an obvious variation on the bar code means disclosed by the ‘193 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

‘048 Patent Claims

Disclosures in U.S. Patent 4,780,599 [Appendix B] and U.S. Patent No. 4,907,264 [Appendix D] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious.

Claim 15 The method of claim 1 wherein the steps of accessing a database and extracting a pointer therefrom are carried out on the user computing device.

The ‘193 patent discloses the lookup step of the method occurring on a server. See ‘193 Patent col. 4 ll. 46-57. It would be obvious to one skilled in the art to have this process occur in any number of locations, including on a user computing device. See ‘599 Patent col. 4 ll. 14-36 (disclosing an embodiment of the invention where all of the pieces of the invention reside in the same physical object) [Appendix B]. The ‘599 patent is discussed fully in § III.B. See also U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes are paired with pointer in a database stored in the user device) [Appendix D]. Claim 50 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the means for storing a database elements of the base claims anticipated or obvious. is located on the user computing device. The ‘193 patent discloses the lookup step of the

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‘048 Patent Claims

Disclosures in U.S. Patent 4,780,599 [Appendix B] and U.S. Patent No. 4,907,264 [Appendix D] method occurring on a server. See ‘193 Patent col. 4 ll. 46-57. It would be obvious to one skilled in the art to have this process occur in any number of locations, including on a user computing device. See ‘599 Patent col. 4 ll. 14-36 (disclosing an embodiment of the invention where all of the pieces of the invention reside in the same physical object) [Appendix B]. The ‘599 patent is discussed fully in § III.B. See also U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes are paired with pointer in a database stored in the user device) [Appendix D]. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses the lookup step of the method occurring on a server. See ‘193 Patent col. 4 ll. 46-57. It would be obvious to one skilled in the art to have this process occur in any number of locations, including on a user computing device. See ‘599 Patent col. 4 ll. 14-36 (disclosing an embodiment of the invention where all of the pieces of the invention reside in the same physical object) [Appendix B]. The ‘599 patent is discussed fully in § III.B. See also U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes are paired with pointer in a database stored in the user device) [Appendix D].

Claim 85 The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database located on the user computing device.

‘048 Patent Claims Claim 16 The method of claim 1 wherein the steps of accessing a database and extracting a pointer therefrom are carried out on a server computer located remotely from the user computing device.

Disclosures in U.S. Patent 5,420,943 [Appendix H] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses the lookup step of the method occurring on a server located remotely from the user. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a barcode is -69-

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,420,943 [Appendix H] scanned and a remote database is accessed to provide product related information) [Appendix H]. Claim 51 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the means for storing a database elements of the base claims anticipated or obvious. is located on a server computer located remotely from the user The ‘193 patent discloses the lookup step of the computing device. method occurring on a server located remotely from the user. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a barcode is scanned and a remote database is accessed to provide product related information) [Appendix H]. As disclosed above, the ‘193 patent renders all Claim 86 The user computing device of claim 71 wherein the software elements of the base claims anticipated or obvious. program is adapted to utilize the index to access a database The ‘193 patent discloses the lookup step of the located on a server computer method occurring on a server located remotely remote from the user from the user. See ‘193 Patent col. 4 ll. 46-57. computing device. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].

‘048 Patent Claims Claim 17 The method of claim 1 wherein the database is distributed over more than one computer.

Disclosures in U.S. Patent 5,398,336 [Appendix I] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the lookup step of the method occurring on multiple servers. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was wellknown in the art. See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in which a database is distributed across numerous database servers and that database can be accessed by -70-

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent 5,398,336 [Appendix I] scanning bar codes) [Appendix I]. Claim 52 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the means for storing a database elements of the base claims anticipated or obvious. is distributed over more than one computer. The ‘193 patent explicitly discloses the lookup step of the method occurring on multiple servers. See ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was wellknown in the art. See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I]. As disclosed above, the ‘193 patent renders all Claim 87 The user computing device of claim 71 wherein the software elements of the base claims anticipated or obvious. program is adapted to utilize the index to access a database The ‘193 patent explicitly discloses the lookup step distributed over more than one of the method occurring on multiple servers. See computer. ‘193 Patent col. 4 ll. 46-57. This additional limitation was also a technique that was wellknown in the art. See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].

‘048 Patent Claims

Claim 26 The method of claim 1 wherein the step of using the pointer to establish communication with the remote computer identified thereby is executed automatically by the user computing device without user intervention.

Disclosures in U.S. Patent 5,115,326 [Appendix K] and European Patent 0 465 011 [Appendix G] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses that its functionality should occur automatically after the initial scan. See ‘193 Patent col.4 ll.57-60; col.5 ll.8-11. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0

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465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G]. Claim 61 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the means for using the pointer elements of the base claims anticipated or obvious. to establish communication with the remote computer The ‘193 patent explicitly discloses that its identified thereby executes functionality should occur automatically after the automatically by the user initial scan. See ‘193 Patent col.4 ll.57-60; col.5 computing device without user ll.8-11. This additional limitation was also a intervention. technique that was well-known in the art. See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G]. As disclosed above, the ‘193 patent renders all Claim 90 The user computing device of claim 71 wherein the software elements of the base claims anticipated or obvious. program is adapted to use the pointer to establish The ‘193 patent explicitly discloses that its communication with the remote functionality should occur automatically after the computer identified thereby initial scan. See ‘193 Patent col.4 ll.57-60; col.5 automatically without user ll.8-11. This additional limitation was also a intervention. technique that was well-known in the art. See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].

‘048 Patent Claims Claim 28 The method of claim 1 wherein the step of using the pointer to establish communication with the remote computer identified thereby is executed by a user selecting hypertext link returned to the user computing device by the database.

Disclosures in Computer Networks and ISDN Systems [Appendix N] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses matching URLs with bar codes and displaying the results on a web browser. See ‘193 Patent col.4 ll.46-54. One of the main purposes of a web browser is to display HTML documents, which include hypertext links. See, e.g., B. Ibrahim, Computer

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‘048 Patent Claims

Disclosures in Computer Networks and ISDN Systems [Appendix N] Networks and ISDN Systems, North Holland Publishing, November 1994 (showing how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N].

The ‘193 patent also discloses the possibility that the user may have multiple matches for the scanned code and a selection of one of those matches would have to be made by the user. See ‘193 Patent col. 4 ll. 46-57. Claim 63 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the means for using the pointer elements of the base claims anticipated or obvious. to establish communication with the remote computer The ‘193 patent discloses matching URLs with bar identified thereby executes by a codes and displaying the results on a web browser. user selecting hypertext link See ‘193 Patent col.4 ll.46-54. returned to the user computing device by the database. One of the main purposes of a web browser is to display HTML documents, which include hypertext links. See, e.g., B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994 (showing how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N]. The ‘193 patent also discloses the possibility that the user may have multiple matches for the scanned code and a selection of one of those matches would have to be made by the user. See ‘193 Patent col. 4 ll. 46-57. As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent discloses matching URLs with bar codes and displaying the results on a web browser. See ‘193 Patent col.4 ll.46-54. One of the main purposes of a web browser is to display HTML documents, which include hypertext links. See, e.g., B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994 (showing how HTML

Claim 92 The user computing device of claim 71 wherein the software program is adapted to use the pointer to establish communication with the remote computer identified thereby by using a user-selected hypertext link returned to the user computing device by the database.

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‘048 Patent Claims

Disclosures in Computer Networks and ISDN Systems [Appendix N] and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N]. The ‘193 patent also discloses the possibility that the user may have multiple matches for the scanned code and a selection of one of those matches would have to be made by the user. See ‘193 Patent col. 4 ll. 46-57.

‘048 Patent Claims

Claim 35 The method of claim 1 wherein the database is associated with a search engine.

Disclosures in U.S. Patent No. 5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], and NL-KR Digest [Appendix M] As disclosed above, the ‘193 patent renders all elements of the base claims anticipated or obvious. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. The ‘193 patent also discloses that “well-known information retrieval techniques” could be used to match the scanned codes with items to be retrieved for the user.

The most well-known information retrieval technique for the internet is a search engine. See, e.g., U.S. Patent No. 5,331,547 Fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning a bar code) [Appendix F]. See also, e.g., Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! and Lycos as well-known search engines) [Appendix L]. See also, e.g., NLKR Digest, October 3, 1988 p. 2-3 (disclosing the feature list for a text-based search engine) [Appendix M]. Claim 70 The system of claim 36 wherein As disclosed above, the ‘193 patent renders all the database is associated with elements of the base claims anticipated or obvious. a search engine. The ‘193 patent explicitly discloses the use of the internet when describing the matching of bar codes to URLs. See ‘193 Patent col.4 ll.46-54. The ‘193 patent also discloses that “well-known information retrieval techniques” could be used to match the

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‘048 Patent Claims

Disclosures in U.S. Patent No. 5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], and NL-KR Digest [Appendix M] scanned codes with items to be retrieved for the user. The most well-known information retrieval technique for the internet is a search engine. See, e.g., U.S. Patent No. 5,331,547 Fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning a bar code) [Appendix F]. See also, e.g., Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! and Lycos as well-known search engines) [Appendix L]. See also, e.g., NLKR Digest, October 3, 1988 p. 2-3 (disclosing the feature list for a text-based search engine) [Appendix M].

C.

U.S. PATENT NO. 4,780,599 ANTICIPATES CLAIMS 1-4, 6-9, 15-17, 22-26, 34, 3639, 41-44, 50-52, 57-61, 69, 71-74, 76-79, AND 85-90

The ‘599 patent discloses an invention where codes scanned from items are matched with records in a database that point to resources that are retrieved and displayed to the user. The goal of the invention described in the ‘599 patent is to provide customers in stores with specific information on the items they scan. The information displayed to the customer could be anything ranging from the price of the item, pictures relating to the item, or even where similar items are located in the store. The ‘599 patent was never considered by the USPTO during the prosecution of the ‘048 patent. As shown below and as directed by M.P.E.P. 2217, the ‘599 patent anticipates claim 1 in the ‘048 patent under 35 U.S.C. § 102(b) and thus raises substantial new questions of patentability: Claim Limitations ‘599 - Apparatus for Retrieving Stored Information about in ‘048 Various Items in Response to Coding on the Items ‘048 Claim 1 ‘599 Claim 1 Additional ‘599 Patent Disclosures

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Claim Limitations ‘599 - Apparatus for Retrieving Stored Information about in ‘048 Various Items in Response to Coding on the Items 1. A method of connecting a user computing device to one of a plurality of remote computers available for communication over a network comprising: 1. An apparatus for storing and retrieving information associated with various coded items, said apparatus comprising: The apparatus described by the ‘599 patent, as described below, pairs codes found on saleable goods with addresses that link to information about that good. The main pieces of the ‘599 patent include a scanning device that reads the code, a data processing unit that pairs codes with addresses to a storage unit, a storage unit that contains information, and an output unit that displays the information fetched from the storage unit. The ‘599 explicitly describes embodiments of its invention where these pieces are not all part of the same unit, and thus the pieces of the invention need to communicate over a network of some sort, such as a local area network, in order to communicate with one another. “In this case, codes hitherto applied to the goods merely for pricing or taking inventory are used for the purpose of conveying direct information.” ‘599 Patent col. 2 ll. 38-40. “If the data processing and storage units are arranged separately from the hand device, the information contained in the storage unit is also conveyed with the above-mentioned wireless transmission system.” ‘599 Patent col. 4 ll. 30-34. (a) a reading device for The ‘599 gives many examples of reading codings associated reading devices that could be used with with individual items to the invention. The most typical is a produce coding signals; standard bar code scanner: “The reading device contains a lightsource and an optical system scanning the light produced by the light source, to direct it to the bar coding to be detected, and to direct the reflected light to a transducer.” ‘599 Patent col. 1 ll. 58-62

a) reading a data carrier modulated with an index;

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Claim Limitations ‘599 - Apparatus for Retrieving Stored Information about in ‘048 Various Items in Response to Coding on the Items b) accessing a database with the index, the database comprising a plurality of records that link an index to a pointer which identifies a remote computer on the network; (c) a data processing unit for receiving coding signals read by said reading device and transmitting address signals to said storage unit to retrieve stored information from the corresponding storage addresses, wherein at least one address signal has more than one coding signal at one time associated therewith, and wherein said data processing unit comprises a coding unit which in response to receipt of at least one coding signal produces an associated address signal for transmission to said storage unit, and said coding unit is selectively reprogrammable to change at least one coding signal associated with the address signal corresponding to any desired storage address of said storage unit while maintaining the address signal unchanged; and The ‘599 discloses a mapping of the code scanned into the invention with the address of digital resource to be displayed to the user which is then retrieved for the user: “[I]t is provided that the data processing unit comprise a programmable coding unit; that by means of the coding unit there can be stored on the one hand, address-signals for the information in the storage unit and, on the other hand, codes associated with one or more products; and that, by means of the reading device, and through the coding unit, the information can be called up from the storage unit and can be represented or made accessible on the output unit.” ‘599 Patent col. 2 ll. 57-66.

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

“The data processing unit contains suitable converters or coding units, so that the storage unit can be triggered in accordance with the information detected by the reading device. Within the scope of the invention, the coding unit is freely programmable and contains a memory in which address signals, on one hand, and codes, on the other hand, are associated with each other.” ‘599 Patent col. 3 ll. 24-31 (emphasis added). “In order to achieve particularly simple and reliable input and allocation of codes to the adress [sic] signals, a control unit is provided by means of which the code detected by a reading device is allocated to an address signal in the coding unit. To this end, the control unit may comprise keys or the like for feeding-in the address signals

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Claim Limitations ‘599 - Apparatus for Retrieving Stored Information about in ‘048 Various Items in Response to Coding on the Items after the feed-in, combination and allocation to the code detected by the reading device is carried out.” ‘599 Patent col. 4 ll. 58-65. “… a data processing unit having a first storage unit for storing information adapted to be retrieved in response to address signals corresponding to the codings read by the reading device….” ‘599 Patent col. 6 ll. 36-39. “The signals received by the receiver 60 are applied to a comparator 62 of the data processing unit 24. This comparator 62 is in communication with a coding unit having converters 64 suitable to release address signals sent to a subsequent output unit 32.” ‘599 Patent col. 7 ll. 20-25. “The coding unit according to the invention comprises a plurality of storage location for the address signals which can also be occupied even subsequently in the manner explained, without any difficulty.” ‘599 Patent col. 9 ll. 12-16. d) using the pointer to establish communication with the remote computer identified thereby. (b) a storage unit for storing information associated with individual items at respective storage addresses each accessible through a corresponding address signal; (d) an output unit for making retrieved information available to a user of the apparatus. The ‘599 gives an open definition of what can constitute the storage unit. In a broad sense, it is the repository where information to be displayed to the user is stored: “The storage unit is preferably designed as a video recorder, slide projector, a magnetic disc or video disc storage unit or the like for pictorial information.” ‘599 Patent col. 3 ll. 42-45. The ‘599, once again, uses a very open definition for what constitutes an output

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Claim Limitations ‘599 - Apparatus for Retrieving Stored Information about in ‘048 Various Items in Response to Coding on the Items unit. “The output unit is matched to the type of information contained in the storage unit and is preferably in the form of a monitor and/or printer and/or loudspeaker or the like.” ‘599 Patent col. 3 ll. 50-53. A connection is formed between the storage unit and the output unit which uses the address signal to display information in the storage unit to the user: “…and that, by means of the reading device, and through the coding unit, the information can be called up from the storage unit and can be represented or made accessible on the output unit.” ‘599 Patent col. 2 ll. 62-66. If address signals into the storage unit are URLs and the storage unit is the World Wide Web itself, the output unit would then be a computer running a web browser. The ‘599 definitions of these pieces are all broad enough to claim this particular embodiment. “If the data processing and storage units are arranged separately from the hand device, the information contained in the storage unit is also conveyed with the above-mentioned wireless transmission system.” ‘599 Patent col. 4 ll. 30-34. See also FIG. 1 (showing storage unit 30 remotely connected via network lines to optical reader 56).

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The remaining independent and dependent claims of the ‘048 patent are anticipated by the ‘599 patent for the same reasons as claim 1. As detailed in §§ III.A-B, the independent and dependent claims of the ‘048 patent are nothing more than re-written versions or more specific descriptions of various implementations of claim 1 and each of these claims are either expressly or inherently anticipated by the ‘599 patent. The additional independent claims of the ‘048 patent, claims 36 and 71, are anticipated by the ‘599 patent just as in claim 1. Additional Independent Claims in ‘048 Why the claim is anticipated by the ‘599 just as Claim 1 Claim 36 is a system which carries out the method of claim 1. Claim 36 identifies three components of the system: a user computing device, input device, and a means for storing a database. The wherein clause then states that these components carry out what is described in claim 1. This claim is nearly identical to claim 1, but simply written in a different format.

Claim 36

A system comprising: a. a user computing device; b. an input device associated with the user computing device, configured to read a data carrier modulated with an index; c. means for storing a database comprising a plurality of records that link an index to a pointer which identifies a remote computer; wherein the user computing device comprises:

Claim 71

The ‘599 patent discloses all of these pieces or their equivalents. It discloses using a user computing means for accessing the database to extract a device (a multimedia computer/user interface), an input device (a pen), pointer from the database as a function of and well-known information the index; and retrieval techniques such as a database. As detailed earlier, the means for using the pointer to establish ‘599 patent anticipates the method communication with the remote computer further described in the claim. identified thereby. Therefore, claim 36 itself is also anticipated by the ‘599 patent. A user computing device comprising: Claim 71 is a device which carries out the method of claim 1. Once a. an input device configured to read a data again, this claim is simply a carrier modulated with an index; and rewritten version of claim 1 where the same functionality and b. computer processing means for executing limitations are described in the a software program adapted to: context of a device. Claim 71 is anticipated by the ‘599 patent in -80-

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Additional Independent Claims in ‘048

Why the claim is anticipated by the ‘599 just as Claim 1 exactly the same way as claim 1 because the ‘599 patent discloses various embodiments of the invention where all of the function pieces are contained in a single device. See ‘599 Patent col. 4 ll. 1436.

utilize the index to access a database comprising a plurality of records that link an index to a pointer which identifies a remote computer; retrieve from the database a pointer as a function of the index; and use the pointer to establish communication with the remote computer identified thereby.

The following chart shows how the ‘599 patent also anticipates dependent claims 2-4, 6-9, 15-17, 22-26, 34, 37-39, 41-44, 50-52, 57-61, 69, 72-74, 76-79, and 85-90 of the ‘048 patent. Dependent Claim in ‘048 Claim 2 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index. The method of claim 2 wherein the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises scanning a bar code symbol encoded with the index. ‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. In addition, the ‘599 discloses prior art scanning devices which operate in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. In addition, the ‘599 discloses prior art scanning devices which read bar codes in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2.

Claim 3

73 The prior art references in this table alongside the ‘193 patent are not relied upon to invalidate the claims under 35

U.S.C. § 102; the additional art is only presented to help provide context of what was known in the art before the priority date of the ‘048 patent.

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Dependent Claim in ‘048 Claim 4 The method of claim 3 wherein the bar code symbol is encoded in accordance with an extrinsic standard.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated.

Claim 6

Claim 7

Claim 8

The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. It was well-known in the art that many codes that identify items are coded to an extrinsic standard.74 The method of claim 1 wherein As disclosed above, the ‘599 patent renders all the index is at least a portion of a elements of the base claims anticipated. Universal Product Code. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘599 patent.75 The method of claim 1 wherein As disclosed above, the ‘599 patent renders all the index is at least a portion of a elements of the base claims anticipated. EAN code. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.76 The method of claim 1 wherein As disclosed above, the ‘599 patent renders all the index is at least a portion of elements of the base claims anticipated. an ISBN code.

74 See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized

bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].
75 Id. 76 Id.

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Dependent Claim in ‘048

‘599 Patent Disclosures73 The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.77 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses that it will use existing in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.78 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses an embodiment of its invention where all of the pieces of the invention can exist in one handheld device. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art.79 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses an embodiment of its invention where the various pieces of the invention might reside in different locations. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art.80

Claim 9

The method of claim 1 wherein the index is at least a portion of an ISSN code.

Claim 15

The method of claim 1 wherein the steps of accessing a database and extracting a pointer therefrom are carried out on the user computing device.

Claim 16

The method of claim 1 wherein the steps of accessing a database and extracting a pointer therefrom are carried out on a server computer located remotely from the user computing device.

77 Id. 78 Id. 79 See, e.g., U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes

are paired with pointer in a database stored in the user device) [Appendix D].
80 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a

barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].

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Dependent Claim in ‘048 Claim 17 The method of claim 1 wherein the database is distributed over more than one computer.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent explicitly discloses a database existing across multiple computers. See Fig. 2. This additional limitation was also a technique that was well-known in the art.81 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Also as described above, the ‘599 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code.82 Thus, all elements this claim are disclosed by the ‘599 patent. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Standard bar code formats found on goods, such as UPC codes, include multiple fields as a part of the code.83 The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Standard bar code formats found on goods, such as

Claim 22

The method of claim 1 wherein the index is comprised of a first field and a second field.

Claim 23

The method of claim 22 wherein the step of accessing a database with an index comprises the steps of using only the first field of the index to access the database.

Claim 24

The method of claim 23 wherein a plurality of indexes having the same first field and different second fields will result in

81 See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in

which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].
82 See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance

of various segments of standard UPC codes).
83 Id.

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Dependent Claim in ‘048 extraction of the same pointer.

‘599 Patent Disclosures73 UPC codes, include multiple fields as a part of the code.84 The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Also as described above, the ‘599 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code.85 Thus, all elements this claim are disclosed by the ‘599 patent. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent explicitly discloses that its functionality should occur automatically after the initial scan. See Cols.2-3 ll.67-68:1-3. This additional limitation was also a technique that was well-known in the art.86 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. It was well-known in the art that databases are commonly secured through a user name/password mechanism.

Claim 25

The method of claim 24 wherein the first field is a manufacturer identification number and the second field is a product identification number.

Claim 26

Claim 34

The method of claim 1 wherein the step of using the pointer to establish communication with the remote computer identified thereby is executed automatically by the user computing device without user intervention. The method of claim 1 wherein access to the database requires entry of a password.

84 Id. 85 Id. 86 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing

on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].

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Dependent Claim in ‘048 Claim 37 The system of claim 36 wherein the user input device comprises means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index. The system of claim 37 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for scanning a bar code symbol encoded with the index. The system of claim 38 wherein the means for scanning a bar code symbol is adapted to scan a bar code symbol encoded in accordance with an extrinsic standard.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. In addition, the ‘599 discloses prior art scanning devices which operate in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. In addition, the ‘599 discloses prior art scanning devices which read bar codes in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. It was well-known in the art that many codes that identify items are coded to an extrinsic standard.87 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘599 patent.88

Claim 38

Claim 39

Claim 41

The system of claim 36 wherein the input device is configured to read an index comprising at least a portion of a Universal Product Code.

87 See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized

bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].
88 Id.

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Dependent Claim in ‘048 Claim 42 The system of claim 36 wherein the input device is configured to read an index comprising at least a portion of a EAN code.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.89 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.90 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses that it will use existing in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.91 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses an embodiment of its invention where all of the pieces of the invention can exist in one handheld device. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art.92

Claim 43

The system of claim 36 wherein the input device is configured to read an index comprising at least a portion of an ISBN code.

Claim 44

The system of claim 36 wherein the input device is configured to read an index comprising at least a portion of an ISSN code.

Claim 50

The system of claim 36 wherein the means for storing a database is located on the user computing device.

89 Id. 90 Id. 91 Id. 92 See, e.g., U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes

are paired with pointer in a database stored in the user device) [Appendix D].

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Dependent Claim in ‘048 Claim 51 The system of claim 36 wherein the means for storing a database is located on a server computer located remotely from the user computing device.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses an embodiment of its invention where the various pieces of the invention might reside in different locations. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art.93 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent explicitly discloses a database existing across multiple computers. See Fig. 2. This additional limitation was also a technique that was well-known in the art.94 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Also as described above, the ‘599 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code.95 Thus, all elements this claim are disclosed by the ‘599 patent. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Standard bar code formats found on goods, such as UPC codes, include multiple fields as a part of the code.96 The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. It was well known to one skilled in the art to use only one field, such as the

Claim 52

The system of claim 36 wherein the means for storing a database is distributed over more than one computer.

Claim 57

The system of claim 36 wherein the index is comprised of a first field and a second field.

Claim 58

The system of claim 57 wherein the means for accessing a database with an index comprises means for using only the first field of the index to access the database.

93 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a

barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].
94 See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in

which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].
95 See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance

of various segments of standard UPC codes).
96 Id.

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Dependent Claim in ‘048

‘599 Patent Disclosures73 manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Standard bar code formats found on goods, such as UPC codes, include multiple fields as a part of the code.97 The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Also as described above, the ‘599 patent anticipates the use of standard bar code formats, such as UPC codes, as the index. Such codes include multiple fields as a part of the definition of the code.98 Thus, all elements this claim are disclosed by the ‘599 patent. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent explicitly discloses that its functionality should occur automatically after the initial scan. See Cols.2-3 ll.67-68:1-3. This additional limitation was also a technique that was well-known in the art.99

Claim 59

The system of claim 58 wherein a plurality of indexes having the same first field and different second fields will result in extraction of the same pointer.

Claim 60

The system of claim 59 wherein the first field is a manufacturer identification number and the second field is a product identification number.

Claim 61

The system of claim 36 wherein the means for using the pointer to establish communication with the remote computer identified thereby executes automatically by the user computing device without user intervention.

97 Id. 98 Id. 99 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing

on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].

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Dependent Claim in ‘048 Claim 69 The system of claim 36 wherein access to the database requires entry of a password.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. It was well-known in the art that databases are commonly secured through a user name/password mechanism. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. In addition, the ‘599 discloses prior art scanning devices which operate in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. In addition, the ‘599 discloses prior art scanning devices which read bar codes in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. It was well-known in the art that many codes that identify items are coded to an extrinsic standard.100

Claim 72

The user computing device of claim 71 wherein the user input device comprises means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index. The user computing device of claim 72 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for scanning a bar code symbol encoded with the index. The user computing device of claim 73 wherein the means for scanning a bar code symbol is adapted to scan a bar code symbol encoded in accordance with an extrinsic standard.

Claim 73

Claim 74

100 See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use

standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Dependent Claim in ‘048 Claim 76 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a Universal Product Code.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘599 patent.101 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.102 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.103

Claim 77

The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a EAN code.

Claim 78

The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISBN code.

101 Id. 102 Id. 103 Id.

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Dependent Claim in ‘048 Claim 79 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISSN code.

‘599 Patent Disclosures73 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses that it will use existing in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent.104 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses an embodiment of its invention where all of the pieces of the invention can exist in one handheld device. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art.105 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses an embodiment of its invention where the various pieces of the invention might reside in different locations. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art.106 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent explicitly discloses a database existing across multiple computers. See Fig. 2. This additional limitation was also a technique that was well-known in the art.107 As disclosed above, the ‘599 patent renders all elements of the base claims anticipated.

Claim 85

The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database located on the user computing device.

Claim 86

The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database located on a server computer remote from the user computing device. The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database distributed over more than one computer. The user computing device of claim 71 wherein the index is comprised of a first field and a

Claim 87

Claim 88

104 Id. 105 See, e.g., U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned

codes are paired with pointer in a database stored in the user device) [Appendix D].
106 See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a

barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].
107 See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in

which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].

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Dependent Claim in ‘048 second field, and wherein the software program is adapted to access a database with only the first field of the index.

‘599 Patent Disclosures73 Standard bar code formats found on goods, such as UPC codes, include multiple fields as a part of the code.108 The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. Standard bar code formats found on goods, such as UPC codes, include multiple fields as a part of the code.109 The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent explicitly discloses that its functionality should occur automatically after the initial scan. See Cols.2-3 ll.67-68:1-3. This additional limitation was also a technique that was well-known in the art.110

Claim 89

The user computing device of claim 88 wherein a plurality of indexes having the same first field and different second fields will result in extraction of the same pointer.

Claim 90

The user computing device of claim 71 wherein the software program is adapted to use the pointer to establish communication with the remote computer identified thereby automatically without user intervention.

108 See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance

of various segments of standard UPC codes).
109 Id. 110 See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing

on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

D.

U.S. PATENT NO. 4,780,599 IN COMBINATION WITH ADDITIONAL PRIOR ART RENDERS CLAIMS 1-95 OF THE ‘048 PATENT OBVIOUS

The ‘599 was filed with the USPTO in 1985. It was not until 1990 that the most ubiquitous application of the internet, the World Wide Web, was invented.111 By mid-1995, the priority date for the ‘048 patent, the World Wide Web was well on its way to taking its modern form. Web browsers such as NCSA Mosaic (which would later become Netscape Navigator) had been in existence since 1993,112 and sites such as Yahoo! were beginning to become the major portals of the internet that people would recognize today.113 One of the primary reasons that the World Wide Web and Mosaic succeeded in the way that it did was the ability of Mosaic to display not just textual information, but also pictures.114 The ‘599 envisions many potentially different “storage units” which are tailored to the type of document ultimately presented to the end-user.115 The ‘599 also recognizes that the various documents the invention could access and display would need to be properly addressed for the invention to function.116 The use of the internet technologies, such as the World Wide Web, as an implementation of the disclosed storage unit would have been an obvious extension to the invention disclosed in the ‘599 that someone skilled in the art would have recognized in 1995.117

111 Tim Berners-Lee, The World Wide Web: A very short personal history (May 7, 1998),

http://www.w3.org/People/Berners-Lee/ShortHistory.html [Exhibit G].
112 http://www.computerhistory.org/exhibits/internet_history/internet_history_90s.shtml [Exhibit I]. 113 The History of Yahoo! – How it All Started…(2005), http://docs.yahoo.com/info/misc/history.html [Exhibit J]. 114 Mosaic – The First Global Web Browser, http://www.livinginternet.com/w/wi_mosaic.htm [Exhibit K]. 115 ‘599 Patent col.3 ll.42-45 [Appendix B]. 116 ‘599 Patent col.3 ll.24-31 [Appendix B]. 117 See M.P.E.P. 2142 (stating that one of the elements necessary to establish a prima facie case of obviousness is to

establish a suggestion or motivation to modify the reference or combine the reference with other teachings); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. ___, 127 S. Ct. 1727 (2007) (stating that obviousness is found when one skilled in the art would have a reason to combine known elements and the combination of those elements does no more than yield predictable results). The standard for obviousness described above has been met in this case because the primary objective of the ‘599 patent is to match scanned codes with addresses that link to multimedia resources and information. One skilled in the art would have immediately been motivated to utilize internet addresses, as opposed to

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Many internet applications, at their root, are an implementation of a distributed resource retrieval application. URLs, which are a basic internet technologies used in many of these applications, are even described as the “syntax and semantics of formalized information for location and access of resources via the Internet.”118 URL technology is combined with other technologies such as HTTP119 and DNS120 to make millions of documents available to users through everyday applications such as web browsers. One skilled in the art would quickly recognize that these applications would mesh perfectly with the ultimate objective of the ‘599 – displaying documents stored in potentially various locations by pairing with the codes scanned by the user with the addresses of those documents. The disclosure of this pairing in the ‘599 provides the motivation for one skilled in the art to combine this invention with these internet applications that fundamentally carry out the same function. It is also clear from the ‘599 that once applications such as web browsers, with their associated internet connections, were combined with the disclosed invention, the entire process would occur automatically once initiated. “The proposed device is an autonomous system and makes it possible to convey specific information concerning products to the interested person in a manner which is particularly reliable and easily adaptable to the relevant conditions.”121 Independent claims 1, 36, and 71 are thus rendered obvious when the ‘599 patent is combined with well-known internet technologies. Because the ‘599 patent was never considered

local addresses, due to the significantly increased storage capacity for the invention and the result would have been easily predictable.
118 Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O]. 119 See Berners-Lee T, et al., RFC 1945: Hypertext Transfer Protocol – HTTP/1.0, May 1996 [Exhibit L]. Even

though the earliest RFC for HTTP was published after the ‘048’s priority date in 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first documented as HTTP 0.9 in 1991 [Appendix P].
120 See Mockapetris, P., RFC 1034: Domain Names – Concepts and Facilities, November 1987 [Appendix Q]; See

also Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R].
121 ‘599 Patent cols. 2-3 ll. 67-68:1-3 [Appendix B].

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

by the USPTO during the prosecution of the ‘048 patent, the combinations of references listed below were also never considered by the USPTO. Independent Claims in ‘048 Patent Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As detailed in § III.A, the ‘599 patent discloses all the elements of claim 1. In addition, it was well-known in the art in 1995 that a user could type a URL into a web browser. See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O]. The web browser would then automatically attempt to download the network resource located at the address associated with the URL using a combination of internet technologies such as the Domain Name System, or DNS, and the Hypertext Transfer Protocol, or HTTP. See Mockapetris, P., RFC 1034: Domain Names – Concepts and Facilities, November 1987 [Appendix Q]; See also Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R]. See Berners-Lee T, et al., RFC 1945: Hypertext Transfer Protocol – HTTP/1.0, May 1996 [Exhibit L]. Even though the earliest RFC for HTTP was published after the ‘048’s priority date in 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first documented as HTTP 0.9 in 1991 [Appendix P]. This process of resolving a URL through a DNS lookup and then accessing the resource “pointed” to by the URL maps the functionality outlined in the claim. The ‘599 patent teaches a version of this process where the initial input from the user comes not from user-readable input, but from machinereadable input. The ‘048 patent’s suggestion that machine-scanned input replace human-typed input in this process is thus rendered obvious to one skilled in the art because the combination of these technologies, as disclosed in the prior art, only yields predictable results.

Claim 1

A method of connecting a user computing device to one of a plurality of remote computers available for communication over a network comprising: a) reading a data carrier modulated with an index; b) accessing a database with the index, the database comprising a plurality of records that link an index to a pointer which identifies a remote computer on the network; c) extracting a pointer from the database as a function of the index; and d) using the pointer to establish communication with the remote computer identified thereby.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Independent Claims in ‘048 Patent

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As detailed in § III.A, the ‘599 patent discloses all the elements of claim 36. In addition, it was well-known in the art in 1995 that a user could type a URL into a web browser. See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O]. The web browser would then automatically attempt to download the network resource located at the address associated with the URL using a combination of internet technologies such as the Domain Name System, or DNS, and the Hypertext Transfer Protocol, or HTTP. See Mockapetris, P., RFC 1034: Domain Names – Concepts and Facilities, November 1987 [Appendix Q]; See also Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 [Appendix R]. See Berners-Lee T, et al., RFC 1945: Hypertext Transfer Protocol – HTTP/1.0, May 1996 [Exhibit L]. Even though the earliest RFC for HTTP was published after the ‘048’s priority date in 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first documented as HTTP 0.9 in 1991 [Appendix P]. This process of resolving a URL through a DNS lookup and then accessing the resource “pointed” to by the URL maps the functionality outlined in the claim. The ‘599 patent teaches a version of this process where the initial input from the user comes not from user-readable input, but from machinereadable input. The ‘048 patent’s suggestion that machine-scanned input replace human-typed input in this process is thus rendered obvious to one skilled in the art because the combination of these technologies, as disclosed in the prior art, only yields predictable results.

Claim 36

A system comprising: a. a user computing device; b. an input device associated with the user computing device, configured to read a data carrier modulated with an index; c. means for storing a database comprising a plurality of records that link an index to a pointer which identifies a remote computer; wherein the user computing device comprises: means for accessing the database to extract a pointer from the database as a function of the index; and means for using the pointer to establish communication with the remote computer identified thereby.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

Independent Claims in ‘048 Patent

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As detailed in § III.A, the ‘599 patent discloses all the elements of claim 71. In addition, it was well-known in the art in 1995 that a user could type a URL into a web browser. See Berners-Lee T, et al., RFC 1738: Uniform Resource Locators (URL), December 1994 [Appendix O].

Claim 71

A user computing device comprising: a. an input device configured to read a data carrier modulated with an index; and b. computer processing means for executing a software program adapted to:

The web browser would then automatically attempt to download the network resource located at the address associated with the URL using a combination of internet technologies such as the utilize the index to access a database comprising a plurality Domain Name System, or DNS, and the Hypertext of records that link an index to a Transfer Protocol, or HTTP. See Mockapetris, P., RFC 1034: Domain Names – Concepts and pointer which identifies a Facilities, November 1987 [Appendix Q]; See also remote computer; Mockapetris, P., RFC 1035: Domain Names – Implementation and Specification, November 1987 retrieve from the database a [Appendix R]. See Berners-Lee T, et al., RFC 1945: pointer as a function of the Hypertext Transfer Protocol – HTTP/1.0, May 1996 index; and [Exhibit L]. Even though the earliest RFC for HTTP was published after the ‘048’s priority date in use the pointer to establish communication with the remote 1996, the RFC’s themselves state that the protocol had been in use since 1990. The protocol was first computer identified thereby. documented as HTTP 0.9 in 1991 [Appendix P]. This process of resolving a URL through a DNS lookup and then accessing the resource “pointed” to by the URL maps the functionality outlined in the claim. The ‘599 patent teaches a version of this process where the initial input from the user comes not from user-readable input, but from machinereadable input. The ‘048 patent’s suggestion that machine-scanned input replace human-typed input in this process is thus rendered obvious to one skilled in the art because the combination of these technologies, as disclosed in the prior art, only yields predictable results.

The following chart shows how the ‘599 patent, in combination with other prior art, renders obvious every remaining dependent claim in the ‘048 patent under 35 U.S.C. § 103. Because the -98-

REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘599 patent was never considered by the USPTO during the prosecution of the ‘048 patent, the combinations of references listed below were also never considered by the USPTO. ‘048 Patent Claims Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

Claim 2

In addition, the ‘599 discloses prior art scanning devices which operate in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent in Claim 3 The method of claim 2 wherein the step of reading a light pattern combination with RFC 1738, HTTP 1991, RFC emanating from an object and 1034 and RFC 1035 renders all elements of the demodulating the light pattern to base claims anticipated or obvious. obtain the index comprises scanning a bar code symbol In addition, the ‘599 discloses prior art scanning encoded with the index. devices which read bar codes in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent in Claim 18 The method of claim 1 wherein the pointer comprises a network combination with RFC 1738, HTTP 1991, RFC address. 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of a network address would be an obvious extension of the invention to one skilled in the art. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of

The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index.

Claim 19 The method of claim 1 wherein the pointer comprises a Uniform Resource Locator.

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‘048 Patent Claims

Claim 20 The method of claim 1 wherein the pointer comprises the name of a remote computer.

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] internet-related technology developed after the ‘599 patent, the use of a URL or any other form of an internet address, would be an obvious extension of the invention to one skilled in the art. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of any form of the name of a remote computer, such as a URL, would be an obvious extension of the invention to one skilled in the art. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

Claim 21 The method of claim 1 wherein the pointer comprises an IP address.

The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of a network address, and specifically an IP address, would be an obvious extension of the invention to one skilled in the art. Claim 27 The method of claim 26 wherein As disclosed above, the ‘599 patent in the automatic communication by combination with RFC 1738, HTTP 1991, RFC the user computing device with 1034 and RFC 1035 renders all elements of the the remote computer is executed base claims anticipated or obvious. by a web browser program The ‘599 patent explicitly discloses that its running on the user computing device. database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. The ‘599 patent also discloses that its output unit would be specifically tailored to the type of information stored in the storage unit. See ‘599 Patent col. 3 ll. 50-53. As described in detail above, in light of internet-related technology

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‘048 Patent Claims

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

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] developed after the ‘599 patent, the use of a webbrowser to display information stored on the internet would be an obvious variation of the ‘599 patent. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. It was well-known in the art that databases are commonly secured through a user name/password mechanism. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. In addition, the ‘599 discloses prior art scanning devices which operate in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the

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

Claim 34 The method of claim 1 wherein access to the database requires entry of a password.

Claim 37 The system of claim 36 wherein the user input device comprises means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index.

Claim 38 The system of claim 37 wherein the means for reading a light pattern emanating from an

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‘048 Patent Claims

object and demodulating the light pattern to obtain the index comprises means for scanning a bar code symbol encoded with the index. Claim 53 The system of claim 36 wherein the pointer comprises a network address.

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] base claims anticipated or obvious. In addition, the ‘599 discloses prior art scanning devices which read bar codes in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of a network address would be an obvious extension of the invention to one skilled in the art. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of a URL or any other form of an internet address, would be an obvious extension of the invention to one skilled in the art. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of any form of the name of a remote computer, such as a URL, would be an

Claim 54 The system of claim 36 wherein the pointer comprises a Uniform Resource Locator.

Claim 55 The system of claim 36 wherein the pointer comprises the name of a remote computer.

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‘048 Patent Claims

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] obvious extension of the invention to one skilled in the art. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

Claim 56 The system of claim 36 wherein the pointer comprises an IP address.

The ‘599 patent explicitly discloses that its database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of a network address, and specifically an IP address, would be an obvious extension of the invention to one skilled in the art. Claim 62 The system of claim 61 wherein As disclosed above, the ‘599 patent in the automatic communication by combination with RFC 1738, HTTP 1991, RFC the user computing device with 1034 and RFC 1035 renders all elements of the the remote computer is executed base claims anticipated or obvious. by a web browser program running on the user computing The ‘599 patent explicitly discloses that its device. database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.2431. The ‘599 patent also discloses that its output unit would be specifically tailored to the type of information stored in the storage unit. See ‘599 Patent col. 3 ll. 50-53. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of a webbrowser to display information stored on the internet would be an obvious variation of the ‘599 patent. Claim 65 The system of claim 64 wherein As disclosed above, the ‘599 patent in the wide area network is the combination with RFC 1738, HTTP 1991, RFC Internet. 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention.

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‘048 Patent Claims

Claim 66 The system of claim 64 wherein the wide area network is a proprietary online service.

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious.

Claim 69 The system of claim 36 wherein access to the database requires entry of a password.

It was well-known in the art that databases are commonly secured through a user name/password mechanism. As disclosed above, the ‘599 patent in Claim 72 The user computing device of claim 71 wherein the user input combination with RFC 1738, HTTP 1991, RFC device comprises means for 1034 and RFC 1035 renders all elements of the reading a light pattern emanating base claims anticipated or obvious. from an object and demodulating the light pattern to In addition, the ‘599 discloses prior art scanning obtain the index. devices which operate in exactly the manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent in Claim 73 The user computing device of claim 72 wherein the means for combination with RFC 1738, HTTP 1991, RFC reading a light pattern emanating 1034 and RFC 1035 renders all elements of the from an object and base claims anticipated or obvious. demodulating the light pattern to obtain the index comprises In addition, the ‘599 discloses prior art scanning means for scanning a bar code devices which read bar codes in exactly the symbol encoded with the index. manner described by the claim. See ‘599 Patent col. 1-2 ll. 57-68:1-2. As disclosed above, the ‘599 patent in Claim 91 The user computing device of claim 90 wherein the automatic combination with RFC 1738, HTTP 1991, RFC communication by the user 1034 and RFC 1035 renders all elements of the computing device with the base claims anticipated or obvious. remote computer is executed by a web browser program running The ‘599 patent explicitly discloses that its on the user computing device. database returns a pointer in the form of an address of a resource. See ‘599 Patent col.3 ll.24-

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‘048 Patent Claims

Claim 94 The user computing device of claim 93 further adapted to establish communication with the remote computer over the Internet.

Disclosures in RFC 1738 [Appendix O], HTTP 1991 [Appendix P], RFC 1034 [Appendix Q], and RFC 1035 [Appendix R] 31. The ‘599 patent also discloses that its output unit would be specifically tailored to the type of information stored in the storage unit. See ‘599 Patent col. 3 ll. 50-53. As described in detail above, in light of internet-related technology developed after the ‘599 patent, the use of a webbrowser to display information stored on the internet would be an obvious variation of the ‘599 patent. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. As disclosed above, the ‘599 patent in combination with RFC 1738, HTTP 1991, RFC 1034 and RFC 1035 renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention.

Claim 95 The user computing device of claim 93 further adapted to establish communication with the remote computer over a proprietary online service.

‘048 Patent Claims

Claim 4

The method of claim 3 wherein the bar code symbol is encoded in accordance with an extrinsic standard.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42.

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REQUEST FOR EX PARTE REEXAMINATION Patent No. 6,199,048

‘048 Patent Claims

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] It was well-known in the art that many codes that identify items are coded to an extrinsic standard. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42.

Claim 6

The method of claim 1 wherein the index is at least a portion of a Universal Product Code.

Claim 7

The method of claim 1 wherein the index is at least a portion of a EAN code.

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‘048 Patent Claims

Claim 8

The method of claim 1 wherein the index is at least a portion of an ISBN code.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (disclosing that EAN codes have been in existence since 1977). As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISBN (last visited July 24, 2007) (disclosing ISBN codes were created in 1966). As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42.

Claim 9

The method of claim 1 wherein the index is at least a portion of an ISSN code.

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‘048 Patent Claims

Claim 22 The method of claim 1 wherein the index is comprised of a first field and a second field.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISSN (last visited July 24, 2007) (disclosing ISSN codes were created in 1975). As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that is would be

Claim 23 The method of claim 22 wherein the step of accessing a database with an index comprises the steps of using only the first field of the index to access the

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‘048 Patent Claims

database.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized

Claim 24 The method of claim 23 wherein a plurality of indexes having the same first field and different second fields will result in extraction of the same pointer.

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‘048 Patent Claims

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). Thus, all elements this claim are disclosed by the ‘599 patent.

Claim 25 The method of claim 24 wherein the first field is a manufacturer identification number and the second field is a product identification number.

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‘048 Patent Claims

Claim 39 The system of claim 38 wherein the means for scanning a bar code symbol is adapted to scan a bar code symbol encoded in accordance with an extrinsic standard.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42.

It was well-known in the art that many codes that identify items are coded to an extrinsic standard. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Claim 41 The system of claim 36 wherein As disclosed above, the ‘599 patent renders all the input device is configured to elements of the base claims anticipated or read an index comprising at least obvious. a portion of a Universal Product Code. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T].

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Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] Claim 42 The system of claim 36 wherein As disclosed above, the ‘599 patent renders all the input device is configured to elements of the base claims anticipated or read an index comprising at least obvious. a portion of a EAN code. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (disclosing that EAN codes have been in existence since 1977). Claim 43 The system of claim 36 wherein As disclosed above, the ‘599 patent renders all the input device is configured to elements of the base claims anticipated or read an index comprising at least obvious. a portion of an ISBN code. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See

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Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] http://en.wikipedia.org/wiki/ISBN (last visited July 24, 2007) (disclosing ISBN codes were created in 1966).

Claim 44 The system of claim 36 wherein As disclosed above, the ‘599 patent renders all the input device is configured to elements of the base claims anticipated or read an index comprising at least obvious. a portion of an ISSN code. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISSN (last visited July 24, 2007) (disclosing ISSN codes were created in 1975). As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC,

Claim 57 The system of claim 36 wherein the index is comprised of a first field and a second field.

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Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It would be obvious to one skilled in the art to use only one field, such as the manufacturer identification number, for the lookup.

Claim 58 The system of claim 57 wherein the means for accessing a database with an index comprises means for using only the first field of the index to access the database.

As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer.

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Claim 59 The system of claim 58 wherein a plurality of indexes having the same first field and different second fields will result in extraction of the same pointer.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix

Claim 60 The system of claim 59 wherein the first field is a manufacturer identification number and the second field is a product identification number.

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Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). Thus, all elements this claim are disclosed by the ‘599 patent. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. It was well-known in the art that many codes that identify items are coded to an extrinsic standard. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent

Claim 74 The user computing device of claim 73 wherein the means for scanning a bar code symbol is adapted to scan a bar code symbol encoded in accordance with an extrinsic standard.

Claim 76 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a Universal Product Code.

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Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] col. 4 ll. 37-42. A UPC code is simply a specific coding scheme that was well-known in the art since the early 1970’s to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses prior art which reads bar code identifications found on goods. See ‘599 Patent col. 1 ll. 19-56. The ‘599 patent also discloses that it will use existing codes found on goods in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A EAN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (disclosing that EAN codes have been in existence since 1977).

Claim 77 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of a EAN code.

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Claim 78 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISBN code.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISBN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISBN (last visited July 24, 2007) (disclosing ISBN codes were created in 1966). As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that it will use existing codes in order to save on costs. See ‘599 Patent col. 4 ll. 37-42. A ISSN code is simply a specific coding scheme that was well-known in the art to be used as described by the ‘599 patent. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. See http://en.wikipedia.org/wiki/ISSN (last visited July 24, 2007) (disclosing ISSN codes were created in 1975).

Claim 79 The user computing device of claim 71 wherein the input device is configured to read an index comprising at least a portion of an ISSN code.

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Claim 88 The user computing device of claim 71 wherein the index is comprised of a first field and a second field, and wherein the software program is adapted to access a database with only the first field of the index.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32. Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that is would be possible for several different codes to be programmed so that they all return the same address signal from the database. See ‘599 Patent col. 7 ll. 28-32.

Claim 89 The user computing device of claim 88 wherein a plurality of indexes having the same first field and different second fields will result in extraction of the same pointer.

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Disclosures in U.S. Patent No. 5,420,943 [Appendix H] and U.S. Patent 3,961,164 [Appendix T] Also as described above, the ‘599 patent discloses the use of standard bar code formats, such as UPC codes, as the index. See, e.g., U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use standardized bar codes or user-defined bar codes) [Appendix H]. See also, e.g., U.S. Patent 3,961,164 col. 1 ll. 1-68 (filed Sept. 13, 1974) (disclosing a method to verify the accuracy of a scanned UPC code and giving a brief history of UPC encoding) [Appendix T]. Such codes include multiple fields as a part of the definition of the code. See EAN/UPC, http://www.autoid.org/Primer/ean_upc.htm (last visited May 29, 2007) (describing the significance of various segments of standard UPC codes). It was well known to one skilled in the art to use only one field, such as the manufacturer identification number in a UPC, for the grouping capability disclosed in the ‘599 patent. Different products made by the same manufacturer would then return the same pointer.

‘048 Patent Claims

Disclosures in U.S. Patent 5,640,193 [Appendix A] and U.S. Patent No. 5,373,550 [Appendix E] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The use of Optical Character Recognition technology in place of bar scanning technology was well-known in the art as a variation of the base claim. See ‘193 Patent col. 2 ll. 22-25. Also see U.S. Patent No. 5,373,550 col.1 ll.63-67; cols.3-4 ll.65-68:1-9; col.4 ll.42-46 (filed Oct. 13, 1992) [Appendix E].

Claim 5

The method of claim 2 wherein the step of reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises using optical character recognition techniques.

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Disclosures in U.S. Patent 5,640,193 [Appendix A] and U.S. Patent No. 5,373,550 [Appendix E] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious.

Claim 40 The system of claim 37 wherein the means for reading a light pattern emanating from an object and demodulating the light pattern to obtain the index comprises means for using optical character recognition techniques.

The use of Optical Character Recognition technology in place of bar scanning technology was well-known in the art as a variation of the base claim. See ‘193 Patent col. 2 ll. 22-25. Also see U.S. Patent No. 5,373,550 col.1 ll.63-67; cols.3-4 ll.65-68:1-9; col.4 ll.42-46 (filed Oct. 13, 1992) [Appendix E]. As disclosed above, the ‘599 patent renders all Claim 75 The user computing device of claim 72 wherein the means for elements of the base claims anticipated or reading a light pattern emanating obvious. from an object and demodulating the light pattern to The use of Optical Character Recognition obtain the index comprises technology in place of bar scanning technology means for using optical was well-known in the art as a variation of the character recognition base claim. See ‘193 Patent col. 2 ll. 22-25. Also techniques. see U.S. Patent No. 5,373,550 col.1 ll.63-67; cols.3-4 ll.65-68:1-9; col.4 ll.42-46 (filed Oct. 13, 1992) [Appendix E].

‘048 Patent Claims

Claim 10 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises receiving a signal emanating from an article of commerce, the signal being modulated with the index.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. This claim describes RFID technology. RFID chips are well-known in the art to be a technology that can serve as a substitute input means in place of scanned bar codes. See generally Radiofrequency identification, http://en.wikipedia.org/wiki/Rfid (last visited May 29, 2007) (describing RFID technology and how some entities, such as the Canadian Cattle Identification Agency, have opted to use RFID chips over standard bar codes). The combination of the ‘599 patent with any one

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Claim 11 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises inputting into the user computing device an audible signal modulated with information correlated to the index.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] of a variety of pieces of prior art would have rendered any substitute inputs means an obvious variation of the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious.

As with the RFID technology discussed above, a substitute means of input, such as an audible signal, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. Claim 12 The method of claim 11 wherein As disclosed above, the ‘599 patent renders all the step of inputting into the user elements of the base claims anticipated or computing device an audible obvious. signal modulated with information correlated to the As with the RFID technology discussed above, a index comprises the use of voice substitute means of input, such as an voice recognition techniques. recognition technology, is an obvious variation on the bar code means disclosed by the ‘599 patent.

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Claim 13 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises inputting into the user computing device an RF signal modulated with information correlated to the index.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an RF signal, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as a magnetic card reader, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H].

Claim 14 The method of claim 1 wherein the step of reading a data carrier modulated with an index comprises accessing a magnetic card with a magnetic card reader.

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Claim 45 The system of claim 36 wherein the input device is adapted to receive a signal emanating from an article of commerce, the signal being modulated with the index.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. This claim describes RFID technology. RFID chips are well-known in the art to be a technology that can serve as a substitute input means in place of scanned bar codes. See generally Radiofrequency identification, http://en.wikipedia.org/wiki/Rfid (last visited May 29, 2007) (describing RFID technology and how some entities, such as the Canadian Cattle Identification Agency, have opted to use RFID chips over standard bar codes). The combination of the ‘599 patent with any one of a variety of pieces of prior art would have rendered any substitute inputs means an obvious variation of the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

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‘048 Patent Claims

Claim 46 The system of claim 36 wherein the input device comprises means for inputting into the user computing device an audible signal modulated with information correlated to the index.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an audible signal, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an voice recognition technology, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

Claim 47 The system of claim 46 wherein the means for inputting into the user computing device an audible signal modulated with information correlated to the index is configured to utilize voice recognition techniques.

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Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] Claim 48 The system of claim 36 wherein As disclosed above, the ‘599 patent renders all the input device comprises elements of the base claims anticipated or means for inputting an RF signal obvious. modulated with information correlated to the index. As with the RFID technology discussed above, a substitute means of input, such as an RF signal, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. Claim 49 The system of claim 36 wherein As disclosed above, the ‘599 patent renders all the input device comprises elements of the base claims anticipated or means for reading a magnetic obvious. stripe card. As with the RFID technology discussed above, a substitute means of input, such as a magnetic card reader, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all Claim 80 The user computing device of claim 71 wherein the input elements of the base claims anticipated or device is adapted to receive a obvious.

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‘048 Patent Claims

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] This claim describes RFID technology. RFID chips are well-known in the art to be a technology that can serve as a substitute input means in place of scanned bar codes. See generally Radiofrequency identification, http://en.wikipedia.org/wiki/Rfid (last visited May 29, 2007) (describing RFID technology and how some entities, such as the Canadian Cattle Identification Agency, have opted to use RFID chips over standard bar codes). The combination of the ‘599 patent with any one of a variety of pieces of prior art would have rendered any substitute inputs means an obvious variation of the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an audible signal, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See

signal emanating from an article of commerce, the signal being modulated with the index.

Claim 81 The user computing device of claim 71 wherein the input device comprises means for inputting into the user computing device an audible signal modulated with information correlated to the index.

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‘048 Patent Claims

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

Claim 82 The user computing device of claim 81 wherein the means for inputting into the user computing device an audible signal modulated with information correlated to the index is configured to utilize voice recognition techniques.

As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an voice recognition technology, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 33-36:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as an RF signal, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See

Claim 83 The user computing device of claim 71 wherein the input device comprises means for inputting an RF signal modulated with information correlated to the index.

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‘048 Patent Claims

Disclosures in U.S. Patent No. 5,420,943 [Appendix H], U.S. Patent No. 5,111,391 [Appendix J], and U.S. Patent No. 4,796,292 [Appendix C] also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

Claim 84 The user computing device of claim 71 wherein the input device comprises means for reading a magnetic stripe card.

As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As with the RFID technology discussed above, a substitute means of input, such as a magnetic card reader, is an obvious variation on the bar code means disclosed by the ‘599 patent. See U.S. Patent No. 5,420,943 abstract (filed Oct. 29, 1992) (disclosing an invention that can use a variety of input mechanism for a computer) [Appendix H]. See also U.S. Patent No. 5,111,391 col 7-8, ll. 3336:1-23 (filed Oct. 5, 1989) (disclosing a computer system operated remotely through various input mechanisms) [Appendix J]. See also U.S. Patent No. 4,796,292 col. 1 ll. 41-44 (disclosing a network connection formed following the swipe of a magnetic card) [Appendix C]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

‘048 Patent Claims Claim 15 The method of claim 1 wherein the steps of accessing a database and extracting a pointer therefrom are carried out on the user computing device.

Disclosures in U.S. Patent No. 4,907,264 [Appendix D] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses an embodiment of its invention where all of the pieces of the invention can exist in one handheld device. See ‘599 Patent col. 4 ll. 14-36.

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‘048 Patent Claims

Disclosures in U.S. Patent No. 4,907,264 [Appendix D] This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes are paired with pointer in a database stored in the user device) [Appendix D]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses an embodiment of its invention where all of the pieces of the invention can exist in one handheld device. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes are paired with pointer in a database stored in the user device) [Appendix D]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated. The ‘599 patent discloses an embodiment of its invention where all of the pieces of the invention can exist in one handheld device. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 4,907,264 col. 2 ll. 1-12 (filed Sep. 14 1988) (disclosing a device where the scanned codes are paired with pointer in a database stored in the user device) [Appendix D].

Claim 50 The system of claim 36 wherein the means for storing a database is located on the user computing device.

Claim 85 The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database located on the user computing device.

‘048 Patent Claims Claim 16 The method of claim 1 wherein the steps of accessing a database and extracting a pointer therefrom are carried out on a server computer located

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses an embodiment of its -130-

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‘048 Patent Claims remotely from the user computing device.

Disclosures in U.S. Patent No. 5,420,943 [Appendix H] invention where the various pieces of the invention might reside in different locations. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a barcode is scanned and a remote database is accessed to provide product related information) [Appendix H]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. The ‘599 patent also discloses that its various pieces can exist in locations remote from one another. See ‘599 Patent col. 4 ll. 14-36. See also, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:144 (filed Oct. 29, 1992) (disclosing a device in which a barcode is scanned and a remote database is accessed to provide product related information) [Appendix H]. It would have been obvious to one skilled in the art to host the database at a location accessible through a service provider and to establish a direct connection to the database in order to utilize it. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses an embodiment of its invention where the various pieces of the invention might reside in different locations. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S.

Claim 32 The method of claim 31 wherein the database is resident on an online service provider computer with which the user computing device has established direct communication.

Claim 51 The system of claim 36 wherein the means for storing a database is located on a server computer located remotely from the user computing device.

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‘048 Patent Claims

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

Claim 67 The system of claim 66 wherein the database is resident on an online service provider computer with which the user computing device has established direct communication.

As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. The ‘599 patent also discloses that its various pieces can exist in locations remote from one another. See ‘599 Patent col. 4 ll. 14-36. See also, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.3568:1-44 (filed Oct. 29, 1992) (disclosing a device in which a barcode is scanned and a remote database is accessed to provide product related information) [Appendix H]. It would have been obvious to one skilled in the art to host the database at a location accessible through a service provider and to establish a direct connection to the database in order to utilize it. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses an embodiment of its invention where the various pieces of the invention might reside in different locations. See ‘599 Patent col. 4 ll. 14-36. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,420,943 col.1-2 ll.35-68:1-44 (filed Oct. 29, 1992) (disclosing a device in which a barcode is scanned and a remote database is accessed to provide product related information) [Appendix H].

Claim 86 The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database located on a server computer remote from the user computing device.

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‘048 Patent Claims Claim 17 The method of claim 1 wherein the database is distributed over more than one computer.

Disclosures in U.S. Patent No. 5,398,336 [Appendix I] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses a database existing across multiple computers. See Fig. 2.

This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I]. Claim 52 The system of claim 36 wherein As disclosed above, the ‘599 patent renders all the means for storing a database elements of the base claims anticipated or is distributed over more than one obvious. computer. The ‘599 patent explicitly discloses a database existing across multiple computers. See Fig. 2. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses a database existing across multiple computers. See Fig. 2. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent No. 5,398,336 fig. 6 (filed Jul. 16, 1993) (disclosing factory floor management software in which a database is distributed across numerous database servers and that database can be accessed by scanning bar codes) [Appendix I].

Claim 87 The user computing device of claim 71 wherein the software program is adapted to utilize the index to access a database distributed over more than one computer.

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‘048 Patent Claims

Claim 26 The method of claim 1 wherein the step of using the pointer to establish communication with the remote computer identified thereby is executed automatically by the user computing device without user intervention.

Disclosures in U.S. Patent 5,115,326 [Appendix K] and European Patent 0 465 011 [Appendix G] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its functionality should occur automatically after the initial scan. See Cols. 2-3 ll.67-68:1-3. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its functionality should occur automatically after the initial scan. See Cols. 2-3 ll.67-68:1-3. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S. Patent 5,115,326 abstract (filed Jun. 26, 1990) (disclosing a method of scanning bar codes appearing on faxes in order to automatically forward the fax to an email address represented by the bar code) [Appendix K]. See also, e.g., EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent explicitly discloses that its functionality should occur automatically after the initial scan. See Cols. 2-3 ll.67-68:1-3. This additional limitation was also a technique that was well-known in the art. See, e.g., U.S.

Claim 61 The system of claim 36 wherein the means for using the pointer to establish communication with the remote computer identified thereby executes automatically by the user computing device without user intervention.

Claim 90 The user computing device of claim 71 wherein the software program is adapted to use the pointer to establish communication with the remote computer identified thereby automatically without user intervention.

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

‘048 Patent Claims Claim 28 The method of claim 1 wherein the step of using the pointer to establish communication with the remote computer identified thereby is executed by a user selecting hypertext link returned to the user computing device by the database.

Disclosures in Computer Networks and ISDN Systems[Appendix N] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that the information returned to the user may include control means where the user can call up further information from the storage unit. See ‘599 Patent col. 5 ll. 19-36. If the storage unit contains information stored on the internet, then the use of hypertext links to navigate through information stored on the internet was well-known in the art. See generally B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994 (showing how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that the information returned to the user may include control means where the user can call up further information from the storage unit. See ‘599 Patent col. 5 ll. 19-36. If the storage unit contains information stored on the internet, then the use of hypertext links to navigate through information stored on the internet was well-known in the art. See generally B. Ibrahim, Computer Networks and ISDN

Claim 63 The system of claim 36 wherein the means for using the pointer to establish communication with the remote computer identified thereby executes by a user selecting hypertext link returned to the user computing device by the database.

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‘048 Patent Claims

Disclosures in Computer Networks and ISDN Systems[Appendix N] Systems, North Holland Publishing, November 1994 (showing how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N].

Claim 92 The user computing device of claim 71 wherein the software program is adapted to use the pointer to establish communication with the remote computer identified thereby by using a user-selected hypertext link returned to the user computing device by the database.

As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. The ‘599 patent discloses that the information returned to the user may include control means where the user can call up further information from the storage unit. See ‘599 Patent col. 5 ll. 19-36. If the storage unit contains information stored on the internet, then the use of hypertext links to navigate through information stored on the internet was well-known in the art. See generally B. Ibrahim, Computer Networks and ISDN Systems, North Holland Publishing, November 1994 (showing how HTML and hyperlinks are used to display information and allow a user to navigate through that information) [Appendix N].

‘048 Patent Claims

Claim 29 The method of claim 1 wherein the network over which the user computing device establishes communication with the remote computer is a wide area network.

Disclosures in U.S. Patent 5,115,326 [Appendix K], European Patent 0 465 011 [Appendix G], and U.S. Patent 5,398,336 [Appendix I] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. See also U.S. Patent 5,115,326 col. 1 ll. 28-37 (filed Jun. 26 1990) (disclosing a method of scanning a bar code on an incoming fax and forwarding the fax to an email address represented by the scanned code residing on a LAN, WAN, or other network) [Appendix K]. See also EP 0 465 -136-

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Claim 64 The system of claim 36 wherein the network over which the user computing device establishes communication with the remote computer is a wide area network.

011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G]; See also U.S. Patent 5,398,336 col. 16 ll. 29-65 (filed Jul. 16, 1993) (disclosing factory floor management software where the computers running the software have access to a wide area network either directly or through a gateway) [Appendix I]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. See also U.S. Patent 5,115,326 col. 1 ll. 28-37 (filed Jun. 26 1990) (disclosing a method of scanning a bar code on an incoming fax and forwarding the fax to an email address represented by the scanned code residing on a LAN, WAN, or other network) [Appendix K]. See also EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G]; See also U.S. Patent 5,398,336 col. 16 ll. 29-65 (filed Jul. 16, 1993) (disclosing factory floor management software where the computers running the software have access to a wide area network either directly or through a gateway) [Appendix I]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious.

Claim 93 The user computing device of claim 71, further adapted to establish communication with the remote computer over a wide area network. As described in detail above, it would have been obvious to one skilled in the art to modify the ‘599 patent to use a wide area network, such as the internet, to extend to storage capacity of the invention. See also U.S. Patent 5,115,326 col. 1 ll. 28-37 (filed Jun. 26 1990) (disclosing a method of scanning a bar code on an incoming fax and forwarding the fax to an email address represented by the scanned code residing on a LAN, WAN, or other network) [Appendix K]. See also EP 0 465 011 (filed Jun. 6, 1991) (disclosing the same) [Appendix G]; See also U.S. Patent 5,398,336 col. 16 ll. 29-65 (filed Jul. 16, 1993) (disclosing factory floor management software where the computers running the software have access to a

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wide area network either directly or through a gateway) [Appendix I].

‘048 Patent Claims

Disclosures in U.S. Patent No. 5,606,668 [Appendix S] Claim 33 The method of claim 32 wherein As disclosed above, the ‘599 patent renders all the online service provider elements of the base claims anticipated or computer additionally provides a obvious. gateway to the Internet. Additionally, it would be obvious to one skilled in the art that the online service provider would also provide a gateway to the internet because it was well-known in the art that networks such as those provided by online service providers would also include a gateway to the internet. See, e.g., U.S. Patent No. 5,606,668 fig. 1 (filed Dec. 15, 1993) (disclosing a closed network that provides access to the internet through a gateway) [Appendix S]. Claim 68 The system of claim 67 wherein As disclosed above, the ‘599 patent renders all the online service provider elements of the base claims anticipated or computer additionally provides a obvious. gateway to the Internet. Additionally, it would be obvious to one skilled in the art that the online service provider would also provide a gateway to the internet because it was well-known in the art that networks such as those provided by online service providers would also include a gateway to the internet. See, e.g., U.S. Patent No. 5,606,668 fig. 1 (filed Dec. 15, 1993) (disclosing a closed network that provides access to the internet through a gateway) [Appendix S].

‘048 Patent Claims

Claim 35 The method of claim 1 wherein the database is associated with a search engine.

Disclosures in U.S. Patent No. 5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], NL-KR Digest [Appendix M] As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. It would have been obvious to one with skill in the art to utilize such a search engine and its associated database to perform the matching of scanned codes and information about the items scanned because search engines were one of the

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Claim 70 The system of claim 36 wherein the database is associated with a search engine.

Disclosures in U.S. Patent No. 5,331,547 [Appendix F], Internet-On-A-Disk #7 [Appendix L], NL-KR Digest [Appendix M] most widely known accessible and searchable databases on the internet. See U.S. Patent No. 5,331,547 fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning a bar code) [Appendix F]. See also Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! and Lycos as well-known search engines) [Appendix L]. See also NL-KR Digest, October 3, 1988 p. 23 (disclosing the feature list for a text-based search engine) [Appendix M]. See also EP ‘453 Oral Minutes at 4 [Exhibit B]. As disclosed above, the ‘599 patent renders all elements of the base claims anticipated or obvious. It would have been obvious to one with skill in the art to utilize such a search engine and its associated database to perform the matching of scanned codes and information about the items scanned because search engines were one of the most widely known accessible and searchable databases on the internet. See U.S. Patent No. 5,331,547 fig. 2 (filed Jan. 29, 1993) (disclosing a search process initiated by scanning a bar code) [Appendix F]. See also Internet-On-A-Disk #7, December 3, 1994 p. 2-3 (disclosing Yahoo! and Lycos as well-known search engines) [Appendix L]. See also NL-KR Digest, October 3, 1988 p. 23 (disclosing the feature list for a text-based search engine) [Appendix M]. See also EP ‘453 Oral Minutes at 4 [Exhibit B].

IV.

CONCLUSION In view of the substantial new questions of patentability raised by U.S. Patent Nos.

5,640,193, 4,780,599, and other prior art, a new ex parte reexamination should be instituted pursuant to 35 U.S.C. § 304 and claims 1-95 of the ‘048 patent cancelled as anticipated or obvious.

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For the Examiner’s convenience, two copies of a CD have been included with this petition. The CD contains electronic copies of this request. Dated: July 26, 2007 Respectfully Submitted, Day Casebeer Madrid & Batchelder LLP

__/s/ Paul S. Grewal___________________ Paul S. Grewal Reg. No. 43,465

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