During an original examination, if disclosure has been added to a specification and an
`
`examiner believes claims in an application are unsupported by the specification as originally
`
`filed, the proper procedure is to object under 35 U.S.C. § 132 to any alleged new matter
`
`appearing in the specification, and reject the claims as unsupported under Section 112. See
`
`MPEP § 706.03(o). Thereafter, if the applicant does not overcome the objection and rejection,
`
`the applicant has the option of refiling the application as a CIP including a new oath or
`
`declaration in support of the new matter, with the rejected claims being relegated to the actual
`
`filing date of the CIP for prior art purposes. However, in the absence of a CIP, an original
`
`examiner cannot simply elect to assign a later effective priority date to claims the examiner
`
`believes are unsupported by an original specification, and then proceed to cite intervening art
`
`based upon the newly determined date. Such a procedure would amount to creation of a “de
`
`facto CIP” by the original examiner, an undertaking plainly unsupported by statute, regulation,
`
`case law, or MPEP provision, or any other authority or precedent.
`
`During reexamination, it is well established that the scope of the proceeding is limited,
`
`and is considerably narrower than the scope of the original examination. See 37 C.F.R. 1.552.
`
`Accordingly, it is undisputed that a reexamination examiner can have no greater authority than
`an original examiner. As a result, because an original examiner cannot create a “defaeto CIP,”
`
`reassign priority dates, and reject claims over intervening prior art, it is clear that a
`
`reexamination examiner cannot do that either.
`
`In the present case, no CIP was ever required by the original examiner or filed by the
`
`Applicant, and the original examiner therefore could not -— and did not -- reassign priority dates
`
`to the original claims. The Patentee therefore respectfully submits that the present Examiner
`
`Page 01001
`
`

`

`likewise lacks authority -- and therefore jurisdiction -- to reassign priority dates to the pending
`
`unamended claims in reexamination that originally issued in the ‘734 Patent.
`
`The Issue of Compliance with 35 U.S.C. § 112 was Considered and Passed on
`During the Original Examination Resulting in the ‘734 Patent and the Office
`Therefore Lacks Jurisdiction to Revisit the Same Issue in this Proceeding
`
`The Patentee respectfully submits that the Office further lacks jurisdiction under the facts
`
`in this proceeding to challenge the priority date of the unamended originally issued claims in
`
`reexamination, because the issue of those claims’ entitlement to the filing date of the original
`
`application previously was considered and decided during the original examination of the ‘734
`
`Patent.
`
`The Issue of Compliance With 35 U.S.C. § 112 Was Considered and Passed
`On By the Original Examiner
`
`The Office has asserted in the present Office Action that additional unsupported
`
`disclosure was added to the specification of the ‘734 Patent during the original prosecution of the
`
`application that issued as the ‘734 Patent, as well as in its predecessor applications. The Office
`
`has asserted further that the original examiner, Examiner Nguyen, did not consider or have
`
`reason to consider the issue of whether the additions to the specification constituted new matter.
`
`In support of these assertions, Examiner Foster has provided a helpful chart in the Office Action
`
`in the related copending reexamination of the ’573 Patent, showing when and under what
`
`circumstances additions to the specification and resulting claim amendments were made in the
`
`‘S73 Patent and its predecessor application. No corresponding chart was provided in the instant
`
`Office Action for the ‘734 Patent. Examiner Foster has, however, pointed to specific elements
`
`added to the claims in the prosecution of the ‘734 Patent.
`
`Page 01002
`
`

`

`In order to demonstrate that Examiner Nguyen did in fact consider the various additions
`
`to the specification and concluded those additions did not constitute new matter and the subject
`
`claims therefore were supported under Section 112, Patentee has reproduced Examiner Foster’s
`
`chart in amended form.‘
`
`It is appropriate to also consider the prosecution of the ‘S73 Patent in
`
`the present reexamination because the ‘734 Patent eventually issued from a continuation of the
`
`‘S73 Patent.2 As a result, any Section 112 issues dealt with and resolved in the prosecution of
`
`the ‘S73 Patent necessarily were resolved as well for the benefit of the prosecution of the ‘734
`
`Patent. Accordingly, the chart also has been amended by adding three columns, subtitled
`
`respectively “Consideration by Examiner Nguyen,” “Response by Applicant,” and “Subsequent
`
`Action by Examiner Nguyen.” That chart is set forth immediately below:
`
`Office Action in Application
`08/023 098 and response
`
`'
`
`Response by
`Applicant
`
`Grandchild Application
`Grandparent Application
`08/023,098 filed February
`07/206,497 filed June 13,
`26, 1993
`1988
`Date First
`Date First
`Date First
`Appearing in Appearing
`Appearing
`in Claims of Specification
`in Claims
`Grandparent of
`of
`Application Grandparent
`Grandchild Grandchild
`Application
`Application Application
`February
`February 26, Considered in
`26, 1993
`1993
`Office Action
`February 24,
`1992 in Parent
`Application of
`‘734 Patent
`
`Issuance of
`‘734 Patent
`
`Subsequent
`Action by
`Examiner
`Nguyen
`
`Transferring December
`Money from 22, 1988
`Second
`February
`Party to a
`28, 1990
`First Party
`(Charging a
`
`Objection/rejection Claims
`specifically
`allowed in
`responded to in
`February 5,
`June 25, 1992
`1997
`response in Parent
`Office
`Application
`Action
`
`' The chart was initially amended to add rows showing additional alleged new matter pointed out by Examiner
`Foster in the instant Office Action.
`
`2 Application serial number 08/023,098 (the ‘"098 Application”) was filed as a continuation of application serial
`number 07/586,391 (the ‘"391 Application”), which eventually issued as the ‘573 Patent. The ‘391 application was
`in turn a continuation of application serial number 07/206,497 (the “’497 Application”), originally filed on June 13,
`1988. The ‘098 Application is therefore the grandchild of the ‘497 Application. A further file wrapper continuation,
`serial number 08/607,648 (the ‘"648 Application”) was filed from the ‘098 Application, and eventually issued as the
`‘734 Patent.
`
`-27-
`
`Page 01003
`
`

`

`Providing a
`Credit Card
`Number
`
`December
`22, 1988
`
`January 3,
`1994
`
`Controlling
`Use of
`First/Second
`
`December
`22, 1988
`
`February
`26, 1993
`
`February 26,
`1993
`
`Transmitting
`
`February
`28, 1990
`
`February
`26, 1993
`
`February 26,
`1993
`
`Specific
`Video
`Download
`Procedures
`
`First Party
`in
`Possession
`of
`Transmitter
`
`Second
`
`Party in
`Possession
`of Receiver
`and Second
`
`Memory
`
`Account
`
`February
`28, 1990
`
`February
`26, 1993
`
`February 26,
`1993
`
`August 24,
`1990 (not
`entered)
`
`August 24,
`1990 (not
`entered)
`
`February
`26, 1993
`
`February 26,
`1993
`
`February
`26, 1993
`
`February 26,
`1993
`
`January 3,
`1994
`
`Considered in
`Office Action
`February 24,
`1992 in Parent
`
`Application of
`‘734 Patent
`
`Considered in
`Office Action
`
`February 24,
`1992 in Parent
`Application of
`‘734 Patent
`
`Considered in
`Office Action
`
`February 24,
`1992 in Parent
`
`Application of
`‘734 Patent
`
`No new matter
`issues were
`ever raised
`
`Considered in
`Office Action
`February 24,
`1992 in Parent
`
`Application of
`‘734 Patent
`Considered in
`Office Action
`February 24,
`_ 1992 in Parent
`Application of
`‘734 Patent
`
`No formal
`
`objection or
`rejections
`made
`
`Objection/rejection
`specifically
`responded to in
`June 25, 1992
`response in Parent
`Application
`
`Objection/rejection
`responded to in
`June 25, 1992
`response in Parent
`Application
`
`Objection/rejection
`responded to June
`25, 1992 in Parent
`Application
`
`No response was
`ever necessary
`since no issue was
`ever raised
`
`Objection/rejection
`responded to in
`June 25, 1992
`response in Parent
`Application
`
`Objection/rejection
`specifically
`responded to in
`June 25, 1992
`response in Parent
`Application
`
`Declaration filed
`with amendment
`
`introducing text to
`claims and
`specification
`
`Claims
`allowed in
`
`February 5,
`1997
`Office
`Action
`
`Claims
`allowed in
`February 5,
`1997
`Office
`Action
`
`Claims
`allowed in
`
`February 5,
`l 997
`Office
`Action
`
`Claims
`allowed in
`
`February 5,
`1997
`Office
`Action
`Claims
`allowed in
`
`February 5,
`1997
`Office
`Action
`Claims
`allowed in
`February 5,
`1997
`Office
`Action
`
`Claims
`allowed in
`
`February 5,
`1997
`Office
`Action
`
`The foregoing chart shows that substantially all of the alleged new matter issues were
`
`dealt with in the direct parent application, serial number 07/586,391 (the ‘"391 Application”),
`
`which eventually issued as the ‘573 Patent. Thus, Examiner Nguyen already had considered
`
`those additions and amendments in the Office Action of February 24, 1992, prior to the filing of
`
`-23-
`
`Page 01004
`
`

`

`the grandchild application. That consideration included an objection to the specification as
`
`containing new matter under Section 132, and corresponding rejections of the relevant claims
`
`under Section 112. The Applicant responded to, and overcame, that objection and those
`
`rejections in the Response of June 25, 1992.
`
`In that Response, the Applicant included arguments
`
`and a Declaration under 37 CFR 1.132 establishing that the additions to the specification had
`
`ample antecedent support in the originally filed specification because the subject matter of the
`
`additions was implicitly disclosed and understood by those skilled in the art. Afier considering
`
`this Response by the Applicant, Examiner Nguyen withdrew the objection to the specification
`
`and the Section 112 rejections of the claims, and thereby determined the claims were allowable.
`
`During prosecution of the grandchild application, the only element incorporated that can
`
`be alleged to be “new” is the recitation of an “account.” However, when this element was
`
`introduced to the claims and specification by amendment, it was accompanied by a Declaration
`
`under 37 CFR 1.132 establishing that the addition to the specification had ample antecedent
`
`support in the originally filed specification because the subject matter of the addition implicitly
`
`was disclosed and understood by those skilled in the art. This Declaration was accepted by
`
`Examiner Nguyen without comment.
`
`Coincidentally, the prosecution history of the ‘734 Patent shows that, in the first Office
`
`Action after the filing of the grandchild application, Examiner Nguyen did issue an objection to
`
`the specification and rejection of the claims under 35 U.S.C. § 112, first paragraph, as failing to
`
`provide an adequate written description. Examiner Nguyen stated that the specification as filed
`
`“fails to make clear what problems in the prior art the present invention intends to overcome.”
`
`Office Action issued July 1, 1993, page 2. Although the objection and rejection were not “new
`
`matter” based, this nonetheless shows that Examiner Nguyen in fact did review the disclosure
`
`Page 01005
`
`

`

`and claims for compliance with 35 U.S.C. § 112, first paragraph. The Applicant overcame this
`
`rejection by providing an additional summary of the problems associated with the prior art and
`
`pointing out that the description provided in the originally filed specification made it clear what
`
`these problems were. Examiner Nguyen thereafier withdrew the Section 112, first paragraph
`
`rejection.
`
`In view of all of the foregoing, Patentee respectfully submits that the amended chart set
`
`forth above demonstrate indisputably that Examiner Nguyen did consider, or at least had every
`
`reason and opportunity to consider, the very same new matter and Section 112 rejections the
`
`Office has made in the present Office Action. Further, the fact that Examiner Nguyen did make
`
`an objection to the specification and rejection of the claims based on Section 112, first
`
`paragraph, demonstrates she in fact carefully reviewed the specification and claims for
`
`compliance with the requirements of that section. Moreover, even though no objection or
`
`rejections were made by Examiner Nguyen concerning the additional “video feature” disclosure
`
`and claim elements, it is clear from Examiner Nguyen’s overall thorough analysis of the other
`
`Section 132 and Section 112 issues that she also had every reason and opportunity to consider
`
`and object to the “video feature” disclosure and reject those claims as well. She did not,
`
`however, do that. As a result, it is clear Examiner Nguyen at least implicitly considered and
`
`passed on the “video feature” specification additions and claims as well, thereby allowing all of
`
`the pending claims to issue in the February 5, 1997 Office Action.
`
`2.
`
`'ll‘heiOffice Lacks Jurisdiction to Review Again the Same Section 112 llssues
`Determined by the Original Examiner
`
`As established above, the question of Section 112 support, and hence the appropriate
`
`priority date for the claims in the issued ‘734 Patent, were considered and passed on by
`
`Examiner Nguyen in the original examination. The Patentee therefore respectfully submits that,
`
`-30-
`
`Page 01006
`
`

`

`as a matter of established law, the Office lacks jurisdiction under the facts in this proceeding to
`
`challenge again the Section 112 support and the 1988 priority date of the same claims in
`
`reexamination.
`
`In Patlex v. Quiqq, 680 F.Supp. 33, (D.D.C. 1988), the United States District Court for
`
`the District of Columbia addressed a situation substantially identical to the circumstances of the
`
`present reexamination.
`
`In that case, the District Court reversed, on summary judgment, a
`
`decision by the Board of Patent Appeals and Interferences (“BPAI”) upholding the final rejection
`
`of three claims in a reexamination proceeding. The claims in question had issued in a patent that
`
`resulted from a string of continuation and divisional applications relating back to an original
`
`priority application. The reexamination examiner took the position that the three claims were not
`
`entitled to the original priority date, and instead reassigned a later effective priority date, based
`
`on the reexamination examiner’s determination that the specification had not enabled the three
`
`claims under Section 112 as of the original filing date.
`
`The District Court determined, however, that the issue of whether the three claims were
`
`enabled under Section 112 previously had been considered and decided by the original examiner,
`
`and the Court therefore explicitly held that the reexamination examiner lacked jurisdiction to
`
`consider that issue again:
`
`[original]
`[original priority] filing date was decided in the
`Entitlement to the
`examination. Plaintiffs contended then they were entitled to the [original priority] filing
`date, and the first Examiner considered then whether the [original] disclosure was
`enabling. Consequently, in order to reexamine
`[the patent] on the basis of whether the
`claims were anticipated by
`[later prior art], the reexamination examiner had to
`“reexamine” the question of whether the specification of the
`[original application]
`contained an enabling disclosure of the subject matter claimed in the
`[patent]. Q
`noted above, however, the reexamination statute does not contemplate a “reexamination”
`of the sufficiency of a disclosure. Rather it is limited to reexamination of patentability
`based on prior art patents and publications. Hence, the Court concludes that the
`Examiner and the Board lack jurisdiction in this case to “reexamine" the sufficiency of
`the specification of the
`[original application].” Id. at 36. (Emphasis added)
`
`-3]-
`
`Page 01007
`
`

`

`The holding of the Patlex case, therefore, is clear. Where, as in the present case, an original
`
`examiner already has considered and detennined the sufficiency of a specification’s disclosure
`
`under Section 1 12 and the resulting entitlement of claims to an original priority date, there is no
`
`“substantial new” question of patentability for reexamination, as required by 35 U.S.C. §§ 301,
`
`et seq. As a result, the Office lacks jurisdiction to “reexamine” that same issue for those same
`
`claims in a subsequent reexamination proceeding.
`
`Patentee therefore respectfully requests that, for this reason as well, the Offi ce withdraw
`
`the current Section 112 rejections and reassignment of later priority dates for the originally
`
`issued unamended claims.
`
`C.
`
`lln Any Event, the Claims as llssued in the ‘734 lPatent Plainly Were Supported by
`the Originally Filed Specification
`
`As previously described, the Office has asserted in the present Office Action, inter-alia,
`
`that the claims as originally issued in the ‘734 Patent rely for written description support on
`
`certain alleged new matter added to the specification during the original prosecution of the ‘734
`
`Patent. The Office also has asserted that the claims directed to the video embodiment of the
`
`invention are not supported by disclosure that was enabling as of the original June 13, 1988
`
`filing date claimed by Patentee. As set forth above in Sections lII(A) and (B) above, Patentee’s
`
`position is that the Office lacks jurisdiction to review issues of adequate written description and
`
`enablement, especially where the particular issue was dealt with explicitly in the original
`
`prosecution of the patent in reexamination. Nonetheless, Patentee further respectfully traverses
`
`these rejections because, in any event, it is clear the originally filed specification in fact does
`
`provide both adequate written description for all of the issued claims and an enabling disclosure
`
`for those claims directed to the “video feature” of the invention.
`
`Page 01008
`
`

`

`The Claims as Issued in the ‘734 Patent are Supported by Adequate Written
`Description in the Originally Filed Specification
`
`In the Office Action in the related copending reexamination of the ‘573 Patent, Examiner
`
`Foster provided a helpful chart showing alleged new matter added to the specification of the ‘S73
`
`Patent during prosecution. Patentee reproduced an amended version of that chart above in
`
`Section III(B)(1), thereby demonstrating the alleged new matter was considered by Examiner
`
`Nguyen and was determined, in fact, not to be new matter. However, for the sake of
`
`thoroughness and to reinforce that Examiner Nguyen correctly determined the issues, Patentee
`
`provides below an analysis demonstrating that each element in Claims 1 through 34 as originally
`
`issued in the ‘734 Patent in fact was supported, either explicitly or implicitly, by the original
`
`specification filed on June 13, 1988.
`
`i)
`
`The Proper Standard for Determining if Claims are Adequately Supported
`by a Specification as Filed
`
`As a preliminary matter, Patentee wishes to point out that the standard for written support
`
`in the absence of ipsis verbis recitation of a claim limitation is not strictly the inherency or
`
`required interpretation standard urged by the ‘Office. Rather, the proper standard generally is
`
`whether the written description reasonably conveys to the skilled artisan that the inventor was in
`
`possession of the claimed subject matter.
`
`The issue of whether the written description requirement has been met is a question of
`
`fact, to be determined on a case-by—case basis. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562
`
`(Fed. Cir. 1991). The legal standard for determining whether the facts of a particular case meet
`
`the written description requirement is not in dispute, however.
`
`In Vas—Cath, the CAFC held that
`
`“[t]he test for sufficiency of support in a patent application is whether the disclosure of the
`
`application relied on ‘reasonably conveys to the skilled artisan that the inventor had possession
`
`Page 01009
`
`

`

`at that time of the later claimed subject matter.”’ Vas—Cath 935 F.2d at 1563 (emphasis added).
`
`As further held by the CAFC in Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989
`
`(Fed. Cir. 2000), “[t]he written description does not require the applicant ‘to describe exactly the
`
`subject matter claimed, [instead] the description must clearly allow persons of ordinary skill in
`
`the an to recognize that [the inventor] invented what is claimed.’’’ Union Oil, 208 F.3d at 997.
`
`Because the written description requirement is fact-based, various decision makers have
`
`at times appeared to drift from the “reasonably conveys” standard mandated by the CAFC. The
`
`CAFC, however, has never wavered from this standard. For example, in Hyatt v. Boone, 146
`
`F.3d 1348 (Fed. Cir. 1998) the court reviewed a BPAI decision holding that one party to an
`
`interference (Hyatt) lacked the necessary written description in his originally filed application to
`
`support a later claim drawn to a count of the interference. The phraseology used by the BPAI in
`
`setting forth the standard for compliance with the written description requirement was that “the
`
`written description must be sufficient, when the entire specification is read, that the ‘necessary
`
`and only reasonable construction’ that would be given it by a person of ordinary skill in the art is
`
`one that clearly supports each positive limitation in the count.” Hyatt, 146 F.3d at 1353. The
`
`appellant argued that the “necessary and only reasonable construction” standard applied by the
`
`BPAI was different from and more rigorous than the “reasonably conveys standard” set forth in
`
`Vas-Cath.
`
`The CAFC determined, however, that the different phraseology used by the BPAI in fact
`
`i a set different standard for meeting the written description requirement. Rather, the
`
`standard remains that “the written description must include all of the limitations. . .or the
`
`applicant must show that any absent text is necessarily comprehended in the description
`
`provided and would have been so understood at the time the patent application was filed.” Hyatt,
`
`Page 01010
`
`

`

`at 1354-55 (emphasis added). Moreover, the CAFC has on subsequent occasions repeatedly
`
`reinforced that the standard of Vas-Cath remains in effect. See, e. g. Pandrol USA, LP v. Airboss
`
`Ry. Products, Inc., 424 F.3d 1161 (Fed. Cir. 2005)(“[t]he applicant must.. .convey with
`
`reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in
`
`possession of the invention.”).
`
`In contrast, the general standard @e_smt require that the “only
`
`reasonable interpretation” of the general features in the specification be the more specific
`
`features in the claims. Vas-Cath at 1566 (“[t]he [district] court further erred in applying a legal
`
`standard that essentially required the drawings of the ‘081 design application to necessarily
`
`exclude all diameters other than those within the claimed range.”)(emphasis in original).
`
`In addition to Hyatt, the Office has cited In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)
`
`and Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) as establishing a strict
`
`inherency standard for finding written support for a claim element not having ipsis verbis support
`
`in the specification.
`
`In the first instance, Patentee respectfully submits that the citation of In Re
`
`Robertson is inapposite.
`
`In Robertson, the CAFC reiterated the well known standard for
`
`determining anticipation or obviousness of a claim by prior art where the prior art does not
`
`include literal disclosure of one or more elements of the claim. As such, Robertson was a case
`
`directed solely to Section 102/103 issues, and does not even mention Section 112. Moreover,
`
`nowhere in Hyatt or Lockwood does either court even allude to an inherency standard for
`
`showing support for claim limitations not described ipsis verbis in the specification. Rather, the
`
`CAFC simply held in Lockwood that “exact terms need not be used in haec verba. . ., the
`
`specification must contain an equivalent description of the claimed subject matter.” Lockwood,
`
`107 F.3d at 1572 (citations omitted).
`
`Page 01011
`
`

`

`Patentee therefore respectfully submits that the requirement of an inherency standard
`
`under Section l 12 is unsupported by Hyatt, Robertson, or Lockwood. Rather the proper standard
`
`to be applied by the Office in determining compliance with the written description requirement
`
`remains “whether the disclosure of the application as originally filed reasonably conveys to the
`
`artisan that the inventor had possession at that time of the later claimed subject matter, rather
`
`than the presence or absence of literal support in the specification for the claim language.” In re
`
`Kaslow, 707 F.2d 1366 (Fed. Cir. 1983).
`
`ii)
`
`All Features of Claims 1 Through 34 in the ‘734 lPatent Find Written
`Support in the Originally filed Specification
`
`Applying the proper standard for compliance with the written description requirement
`
`under Section ll2, Patentee respectfully submits that all of the limitations in Claims 1 through
`
`34 in the ‘734 Patent were supported by the originally filed specification. To illustrate this point,
`
`Patentee has prepared a detailed chart showing each feature of the invention, the claims in which
`
`those features are recited, and where support in the originally filed specification is found for each
`
`feature. That chart is set forth immediately below:
`
`Claims
`Reciting
`Feature
`
`Written Description of
`Feature in Original
`Specification
`
`p. l, lns. 7-9
`p. 2, lns. 8-10, 20-26
`
`(video) p. 5, lns. 36-43
`
`Comments
`
`ipsis verbis
`
`p. 3, lns. 35-40
`
`ipsis verbis
`
`1, 4, ll, 16,
`19, 26
`
`p. 2, lns. 47-50
`p. 3, lns. 20-40
`Fig. 1
`p. 4, lns. 21-23
`
`The original as filed
`specification states
`throughout that digital audio
`or digital video signals are
`sold and transferred via
`tele hone lines. A skilled
`
`'
`A method/system for
`transferring desired digital
`video or digital audio signals
`
`forming a connection
`through telecommunications
`lines between a first memory
`of a first party and a second
`memory of a second party
`
`first party location and
`second party location remote
`from the first party location,
`the second party location
`determined by the second
`_ arty
`
`Page 01012
`
`

`

`the first party memory
`having a first party hard disk
`having a plurality of digital
`video or digital audio
`signals, including coded
`digital video or digital audio
`signals
`
`the first memory having a
`sales random access
`
`memory chip
`
`telephoning the first party
`controlling the first memory
`by the second party
`
`providing a credit card
`number of the second party
`to the first party so that the
`second party is charged
`money
`
`p. 1, lns. 13-15
`p. 2, lns. 8-10, 20-23,
`38-52
`
`p. 3,1ns. 12-15, 35-37
`
`artisan would readily
`understand this to
`
`comprehend transfers
`between two remote
`locations.
`
`Since the digital audio or
`digital video signals are
`transferred to the user’s
`(second party’s) control unit,
`a skilled artisan would
`
`readily understand that the
`second party can detennine
`the second location.
`
`ipsis verbis
`
`ipsis verbis
`
`The original as filed
`specification states
`throughout that digital audio
`or digital video signals are
`sold and transferred via
`
`telephone lines. A skilled
`artisan would readily_
`recognize this as
`comprehending the
`telephoning of the first party
`by the second party to
`initiate a transaction. This
`
`was addressed previously in
`the declaration of Arthur
`
`Hair submitted May 5, 1992.
`
`The original as filed
`specification states
`throughout that the
`invention provides for
`electronic sales of digital
`audio or digital video
`signals. A skilled artisan
`would readily recognize
`credit card sales as being
`comprehended within
`electronic sales. This was
`
`addressed previously in the
`affidavit of Arthur Hair
`
`dated May 5, 1992.
`
`Page 01013
`
`

`

`electronically coding the
`digital video or digital audio
`signals to form coded digital
`audio signals into a
`confi guration that would
`prevent unauthorized
`reproduction
`
`storing a replica of the
`coded desired digital video
`or digital audio signals from
`the hard disk to the sales
`
`random access memory chip
`
`transferring the stored
`replica of the coded desired
`digital video or digital audio
`signal from the sales random
`access memory chip of the
`first party to the second
`memory of the second party
`through telecommunications
`lines while the second
`memory is in possession and
`control of the second party
`
`ipsis verbis
`
`p. 4, lns. 15-23
`
`ipsis verbis
`
`p. 4, lns. 15-23
`
`p. 4, In. 35 to p. 5, In. 21
`
`The original as filed
`specification includes ipsis
`verbis support for storing a
`replica of the coded desired
`digital audio or digital video
`signal to the first party sales
`random access memory,
`then transferring it to the
`memory of the second party.
`A skilled artisan would
`readily recognize that the
`second memory is in
`possession and control of the
`second party, since the
`specification as originally
`filed states throughout that
`the user can store, sort and
`play thousands of songs
`from the user unit. A skilled
`
`artisan would clearly
`understand that this means
`
`the second party controls
`and possesses the second
`memory. This was
`previously addressed in the
`declaration of Arthur Hair
`
`filed May 5, 1992.
`
`storing the transferred
`digital video or digital audio
`signals in the second
`memory
`
`a second party integrated
`circuit which controls and
`executes commands of the
`
`second party connected to a
`second party control panel
`
`p. 2, lns. 23.27
`
`ipsis verbis
`
`p. 3, lns. 26-28
`p. 4, lns. 15-20
`Fig.
`l
`
`ipsis verbis
`
`Page 01014
`
`

`

`p. 4, lns. 12-20
`
`commanding the second
`party integrated circuit with
`the second party control
`panel to initiate the purchase
`of the desired digital video
`or digital audio signals from
`the first party hard disk
`
`The original as filed
`specification includes ipsis
`verbis support for using the
`second party control panel to
`command the second party
`integrated circuit to execute
`commands of the second
`
`party. A skilled artisan
`would readily recognize that
`a user would command the
`
`second party integrated
`circuit to initiate a purchase
`of digital video or digital
`audio signals, since that is
`the purpose of the system.
`
`the second memory includes
`a second party hard disk and
`an incoming random access
`memory chip
`
`3, 5, 8,13,
`16,21, 30
`
`p. 3, lns. 26-31
`Fig. 1
`
`ipsis verbis
`
`the second memory includes
`a playback random access
`memory chip
`
`3, 5,16, 21,
`30
`
`playing the desired digital
`video or digital audio signal
`from the second party hard
`disk
`
`a first party control unit (in
`possession and control of the
`first party)
`
`4,11, 16,
`19, 26,28
`
`a second party control unit
`(in possession and control of
`the second party)
`
`19,26, 28
`
`ipsis verbis
`
`ipsis verbis
`
`The as filed original
`specification includes ipsis
`verbis support for a first
`party control unit, where the
`authorized agent is the first
`party.
`A skilled artisan would
`readily recognize that the
`first party control unit is in
`possession and control of the
`first party because as an
`“agent authorized to
`electronically sell and
`distribute” digital audio or
`digital video, the first party
`would necessarily have to
`possess and control the
`source of the digital audio
`and digital video.
`
`The as filed original
`specification includes ipsis
`verbis support for a second
`party control unit, where the
`user is the second party.
`A skilled artisan would
`
`Page 01015
`
`

`

`readily recognize that the
`second memory is in
`possession and control of the
`second party, since the
`specification as originally
`filed states throughout that
`the user can store, sort and
`play thousands of songs
`from the user unit. A skilled
`
`artisan would clearly
`understand that this means
`the second party controls
`and possesses the second
`party control unit.
`This was previously
`addressed in the declaration
`of Arthur Hair filed May 5,
`1992.
`
`The as filed original
`specification has ipsis verbis
`support for a first party
`control unit with a hard disk,
`and sales random access
`
`memory chip.
`A skilled artisan would
`
`readily recognize that the
`first party control unit would
`include a means or
`‘
`mechanism for executing an
`electronic sale because the
`electronic sale is described
`
`in the original specification
`as separate from electronic
`transfer and electronic
`distribution.
`
`The as filed original
`specification has ipsis verbis
`support for a control panel
`connected to the second
`party control unit. A skilled
`artisan would readily
`understand that the second
`
`party hard disk corresponds
`to a second memory.
`
`the first party control unit
`has a first party hard disk, a
`sales random access
`
`memory chip, and means or
`mechanism for
`
`electronically selling desired
`digital video or digital audio
`signals
`
`p. 2, lns. 8-10
`p. 3, lns. 20-40
`Fig. l
`
`the second party control unit
`has a second memory
`connected to the second
`
`party control panel
`
`p. 3, lns. 26-31
`Fig.
`1
`
`the second party control unit
`has means for playing
`desired digital video or
`digital audio signals
`connected to and controlled
`
`by the second party control
`panel
`
`p. 3, lns. 26-33
`Fig.
`l
`
`ipsis verbis
`
`Page 01016
`
`

`

`selling digital video or
`digital audio signals through
`telecommunica