Like.com vs. Ugmode Prosecution history of patent *** CONFIDENTIAL *** Prepared by Ugmode, Inc

Overview Original broad claims rejected for failing conditions of patentability: – novelty (Sec. 102) – non-obvious subject matter (Sec. 103) – elected to withdraw claims relating to “merchandise objects” The claims were then narrowed, and rejected for: – failure to define a statutory process (Sec. 101) – lack of enabling support within the specification (Sec. 112) A request for continued examination was submitted: – with minor language edits to indicate operation on a “processor” – referencing passages in the specification and patent applications The patent was allowed with amendments: – immediately following a telephone conference with the Examiner – added language to refer specifically to “merchandise objects”

Original claims Dependent Claims 2-9: programmatic, web-based, specifying criteria, etc… Dependent Claims 10-12: method for selecting advertisements Dependent Claims 13-16: method applied to merchandise objects Additional Claims: system and computer system, similar to above

All claims rejected or withdrawn Examiner found two species (Sec. 121): – Claims 10-12,25: related to advertising – Claims 13-16,26: related to merchandise – Like.com elects to withdraw merchandise claims Claims 1-3, 6-9, 17-18: anticipated by prior art (Sec. 102) – Wang, US Patent # 6,035,055 Claims 4-5, 24: obviousness rejection (Sec. 103) – Combine Wang with Berche (App. 2001/ ) Claims 10-12,25: obviousness rejection (Sec. 103) – Combine Wang with Gindele (US Patent # 6,785,421) Claims 19-23,27-30: obviousness rejection (Sec. 103) – Combine Wang with methods “exceedingly well known in the art”

Amendments

Final rejection Process claims rejected under Sec. 101: – “The instant claims neither transform underlying subject matter nor positively recite structure associated with another statutory category, and therefore do not define a statutory process.” Claims rejected under Sec. 112: – Specification does not convey that Like.com had possession of the claimed invention, nor enable one skilled in the art to make use of the invention. – “Referring to claim 1, the limitations ‘identifying a set of features that are specific to the determined category of the identified object in each image content item’ and ‘determining information based on the set of features for the determined category that characterizes the identified object,’ are not sufficiently described in the specification, as originally filed. The Examiner was unable to find an instance in the Applicants' specification that supports this feature. Moreover, the Examiner was even unable to identify what the claimed ‘category’ corresponds to in the specification.”

Request for Continued Examination Minor edits to define a statutory process: References to passages in the specification:

Allowance, with amendments...

Questions Why was language for “merchandise” added to the independent claims at the last minute? – There are still some dependent claims that relate to advertising. – Wouldn’t this constitute two distinct species of patentability, as the Examiner objected in the non-final rejection? Was Modista specifically targeted, given the timing? – Oct. 2008: Like.com final rejection – Dec. 2008: Modista website launch – Feb. 2009: Modista / Zappos.com partnership – Mar. 2009: Modista online article in Fortune – Mar. 2009: Like.com Request for Continued Examination – Apr. 2009: Like.com Allowance, with amendments 6 months