`
`
`O
`
`C‘
`
`UNITED STATES DEPARTMENT OF COMIMERCE
`United States Patent and Trademark Office
`Address: CONEMISSIONER OF PATENTS AND TRADEMARKS
`Washington, DC, 20231
`www,uspw.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N01
`
`08/480,392
`
`06/07/1995
`
`JOHN C. HARVEY
`
`5634,} IO
`
`9205
`
`21967
`
`7590
`
`09/03/2002
`
`HUNTONWILLIAMS “INTELLECTUAL PROPERTY DEPARTMENT
`
`1900 K STREET, N.W.
`MEHTA, BHAVESH M
`SUITE 1200
`WASHINGTON, DC 200001109
`
`261 1
`
`'
`
`DATE MAILED: 09/03/2002
`
`\
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 07-01)
`
`ZYNGA EX. 1004
`
`W’
`
`
`
`Office Action Summary
`
`Application No.
`08/480,392
`
`Applicant(s)
`
`Harvey et al.
`
`—-| IIIIIllllllllIIIIIIIIIIIIII
`
`— The MAILING DA TE of this communication appears on the cover sheet with the correspondence address —
`
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE
`THE MAILING DATE OF THIS COMMUNICATION
`-Extensions of time may be available under the provisions of 37 CFR 1.136 (a) In no event however may a reply be timelyIfiled after SIX (6) MONTHS from the
`mailing date of this communication
`. If the period for reply specified above is less than thirty (30) days. a reply within the statutory minimum of thirty (30) days will be considered timely.
`- If NO period for reply is specified above. the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 USC. § 133).
`- Any reply received by the Office later than three months alter the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment, See 37 CFR 1.704(b).
`Status
`
`MONTH(S) FROM
`
`3
`
`1)I Responsive to communication(s) filed on
`
`Jun 18 2002
`
`2a)D This action is FINAL.
`
`2b)I This action is non-final.
`
`3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quay/935 CD. 11; 453 0.6. 213.
`
`Disposition of Claims
`
`4)I Claim(s) 3-15 17 18 20-22 30-40 42 45 46 51-64 68 72-74 82-89 and 9:
`
`is/are pending in the applica
`
`4a) Of the above, claim(s)
`
`5)EI Claim(s)
`
`6). Claim(s) 3-15 17 18 20—22 30-40 42 45 46 51-64 68 72-74 82-89 and 93
`
`is/are withdrawn from considers
`
`is/are allowed.
`
`is/are rejected.
`
`is/are objected to.
`
`are subject to restriction and/or election requirem
`
`is/are dB accepted or b)CI objected to by the Examiner.
`
`7) E] _C|aim(s)
`
`8) El Claims
`
`Application Papers
`
`9):] The specification is objected to by the Examiner.
`
`10) :l The drawing(s) filed on
`
`
`
`
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`11) :I The proposed drawing correction filed on
`
`is: aD approved b)Ddisapproved by the Examiner.
`
`If approved, corrected drawings are required in reply to this Office action.
`
`12)I:I The oath or declaration is objected to by the Examiner.
`
`Priority under 35 U.S.C. §§ 119 and 120
`
`13) :1 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`
`
`
`All b) CI Some" c)
`
`I:None of:
`
`a)
`
`1. CI Certified copies of the priority documents have been received.
`
`2. CI Certified copies of the priority documents have been received in Application No.
`
`3. CI Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*See the attached detailed Office action for a list of the certified copies not received.
`
`14) CI Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`a)I:I The translation of the foreign language provisional application has been received.
`
`15) El Acknowledgement is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
`
`Attachment(s)
`
`1) mmfice of References Cited (PTO-892)
`2) EINotice of Draflsperson's Patent Drawing Review (PTO-948)
`
`4) Dimerview Summary (PTO-413) Paper No(s).
`- » 2 5) BNét'IUe of Informal Patent Application (PTO-152)
`
`.
`
`[:Ilnfonnation Disclosure Statement(s) (PTO-1449) Paper No(s).
`3)
`Ur S. Patent and Trademark Office
`
`6) DOther:
`
`PTO-326 (Rev. 04-01)
`
`Office Action Summary
`
`Part of Paper No. 33
`
`
`
`Application/Control Number: 08/480,392
`
`Page 2
`
`Art Unit: 2614
`
`SECTION I:
`
`During the present prosection, many of the same issues have been raised
`in different ones of the many copending applications.
`In at least some
`cases, these issues appear to have been handled and addressed
`inconsistently between applications. Thus, the following “list” of positions
`taken by the examiner/Office in regard to such overlapping issues has been
`created, and will be maintained by the Office, in an attempt to ensure
`consistency in the way that these issues are handled between applications
`
`in the future.
`
`THE EXAMPLES:
`
`In lines 2—8 on page 142 of the amendment filed on 1/28/2002 in
`1)
`application SN 08/470,571, applicant suggests that the examiner has
`objected to the fact that applicant provided citations showing dual support
`for the claims with respect to both the 1981 and 1987 disclosures. No such
`objection has ever been raised by the examiner. To the contrary, the
`examiner found applicant’s citations of dual support to be one of the most
`helpful aids that applicant has provided to date (i.e. when presented in the
`form of claim charts).
`Having said this, the fact remains that examiner/Office was
`unquestionably misled by the many statements made by applicant
`concerning the “consequences” of Section 120 “priority”. The reason that
`these statements misled the examiner/Office seems to be self evident from
`
`the statements themselves. For example, in the last 7 lines on page 24 of
`the Appeal Brief filed in SN 08/113,329 on 9/17/1996, applicant states:
`
`“The case law makes clear that the only inquiry concerning
`claims filed in a subsequent continuation application pursuant
`to Section 120 is whether they are adequately supported in
`under Section 1 12, first paragraph, in the initial application.
`the support exists, the inquiry is at an end.”
`
`If
`
`
`
`Application/Control Number: 08/480,392
`
`Page 3
`
`ArtUnit: 2614
`
`And statements made in the remarks section of many amendments in
`which applicant states:
`
`“The present application claims priority under 35 USC § 120 of
`the following applications..... Consequently, Applicants will
`demonstrate disclosure only with respect to the ‘81 case,...”
`[e.g. see lines 9-21 on page 000507 of the Appendix in the document mailed on 9/10/01 in SN
`08/474,139]
`
`These statements misled the examiner/Office into believing that, as a
`consequence of Section 120, applicant was permitted to use the disclosure
`of his 1981 parent application alone, e.g. in place of the instant 1987
`disclosure, to fulfill section 112 requirements when addressing/replying to
`Section 112 rejections. However, the examiner/Office now understands
`that, because applicant’s past 1981 parent disclosure was not incorporated
`into the instant disclosure, the 1981 specification cannot be relied upon by
`applicant for showings of section 112 support when addressing/responding
`to rejections made under Section 112;
`i.e. all section 112 Support must
`come from the instant “1987" disclosure alone.
`
`The “objections” made by the examiner in 08/470,571 were raised
`because the examiner perceived a continuation, on the part of the
`applicant, of the same arguments that misled the examiner/Office in the
`first place. By raising these “objections”,
`the examiner hoped to elicit a
`response from applicant acknowledging the fact that the instant “1987"
`disclosure was the only disclosure which could be used to fulfill the
`requirements of section 112 with respect to the limitations of the currently
`pending amended claims (the significance of the 1981 disclosure is
`relegated only to the secondary issue of Section 120 priority). The
`examiner wanted to be sure that the examiner and applicant were now on
`the same page concerning this issue. And, on at least one occasion, such
`an acknowledgment appears to have been provided by applicant [see the
`last 5 lines on page 141 of the amendment filed on 1/28/2002 in SN
`08/470,571].
`
`
`
`Application/Control Number: 08/4803 92
`
`Page 4
`
`Art Unit: 2614
`
`2) Applicant does not believe that “common subject matter” is required
`for “priority” under Section 120.
`Instead, according to applicant, the only
`thing that applicant needs to do in order to obtain the earlier 1981 filing
`date for his pending amended claims is to show that each of his pending
`amended claims can be given different 1987 and 1981 claim interpretations
`which allows each claim to be supported, in parallel, by “different subject
`matter” from the 1981 and 1987 specifications.
`
`“[Section] 120 does not require an applicant to
`demonstrate that the disclosures relied upon under §120
`have anything in common besides their ability to
`separately comply with §112-1 with respect to the claims
`for which priority is sought. Accordingly, the Examiner’s
`focus on comparing the support from the two applications
`for similarity or common subiect matter is improper and
`irrelevant because all applicants are required to do is
`satisfy §120 is show that each'disclosure meets the
`requirements of §112-1 for a given claim.” (emphasis
`added)
`[Page 141 of applicant's response filed on 1/28/2002 in application S.N. 08/470,571]
`
`“Accordingly, the law requires a two part test in which the
`applicant separately demonstrates § 1 12 support for each
`application.
`In the FDA, the examiner distorts this
`straightforward test by imposing a third element of the
`test whereby the § 112 support from each application
`consists of ‘common subject matter.
`[see the last 10 lines on page 137 of the response filed on 1/28/2002 in SN 08/470,571].
`
`Applicant’s position seems to be wrong.
`
`“However, as mentioned earlier, a continuing application
`is entitled to rely on the earlier filing date of an earlier
`application only with respect to subiect
`matter common to both applications” (emphasis added)
`[In Transco Products, Inc, v. Performance Contracting, Inc, 32 USPQZd 1077 [”18]]
`
`‘
`
`
`
`Application/Control Number: 08/480,392
`
`Page 5
`
`Art Unit: 2614
`
`“Any claim in a continuation-in-part application that is .
`directed solely to subject matter adequately disclosed
`under 35 U.S. C. 112 in the parent application is entitled to
`the filing date of the parent application. ”
`[In Transco Products, Inc, v. Performance Contracting, Inc, 32 USPQZd 1077 [“18]]
`
`“Assuming the common inventorship, copendency, and
`cross-reference required by section 120, that section
`further requires only that the invention be disclosed in the
`parent application in such manner as to comply with the
`first paragraph of section 112 and be the same invention as
`that disclosed in the later application.” (emphasis added)
`[Kirschnen 305 F.2d 897 (C.C.PA1962)]
`
`In the last 5 lines on page 141 of the response filed on 1/28/2002 in
`3)
`08/470,571, applicant acknowledged that the 1981 application was not
`incorporated into the 1987 application. As a consequence, applicant also
`appears to understands that all Section 112 support must come solely from
`the “instant” 1987 disclosure if the requirements of section 112 are to be
`satisfied.
`lf applicant knows such to be true, then it is not understood how
`applicant can still adopt the following position:
`
`“the [examiner’s] assumption that ‘all limitations of the
`currently pending claims are necessarily directed to that which
`is described in the present 1987 disclosure’ is mistaken and
`wholly unsupported." 1
`[lines 8-10 on page 144 of the amendment filed in 08/470,571 on 1/28/2002].
`
`Namely, if all section 112-1 support for all of the claims’ limitations must
`
`1 Contrary to applicant’s position, the examiner maintains that a pending claim must necessarily be directed to that which
`is described in the instant specification. This is not to say that the resulting scope ofthe pending claim is limited only to that which it
`must necessarily be directed.
`
`
`
`Application/Control Number: 08/480,392
`
`Page 6
`
`Art Unit: 2614
`
`necessarily come from the instant “1987" disclosure alone (e.g. in light that
`the disclosure of the 1981 parent was not formally incorporated into the
`instant 1987 disclosure), then how can a limitation of a claim be directed to
`(Le. and obtain required section 112-1 support from) anything but that
`which is described within the said instant 1987 disclosure? ls applicant
`suggesting that the pending amended claims are not necessarily directed
`
`to, do not necessarily derive section 112-1 support from, and are not
`necessarily claiming, subject matter that is found in the instant 1987
`disclosure?
`
`4) Applicant has alleged that “Teletext decoders” did not “locally generate”
`the images that they outputted/displayed. According to applicant, Teletext
`decoders only transferred, to their outputs, displayable image data that was
`received at their inputs. The examiner rejects such a notion. The following
`is noted:
`_
`,
`_
`a) That, as was exemplified via the discussion provided on page 5 of
`the appendix that was attached to a 1981 “PETITION FOR
`RULEMAKING” submitted to the FCC 2, it was notoriously well
`known in the art that transmitted Teletext data typically comprised a
`“series of instructions” which instructed the Teletext decoders on how
`
`to “generate” the desired images which were to be
`outputted/displayed;
`
`b) That conventional Teletext decoders typically comprised
`“character generators”; i.e. such “character generators” would not
`have been required had the received Teletext data actually
`comprised displayable image data as alleged by applicant; and
`
`c) That transmitted Teletext data typically comprised of ASCII-type
`codes; i.e. wherein one of ordinary skill in the art would have
`understood the fact that these ASCII-type codes are not themselves
`displayable. Specifically, these ASCII-type codes only identified the
`
`2 SEE: APPENDIX E and APPENDIX F ofthe latest Office action in SN 470,571.
`
`
`
`Application/Control Number: 08/480,392
`
`Page 7
`
`Art Unit: 2614
`
`way in which locally stored pixel patterns which were locally
`retrieved and locally assembled into image frames, e.g. via the
`“character generators”, in order to locally generate the images that
`were outputted/displayed.
`
`Clearly, Teletext decoders operated to “locally generate” the images that
`they outputted and displayed!
`3
`
`A
`
`5) Applicant’s 1987 inventions used a “SPAM” transmission packet
`structure to transmit ancillary information through the TV broadcast
`networks. By using the “SPAM” packet structure, a transmission scheme
`was established in which a piece of coherent “information”, e.g. such as a
`complete “processor instruction”, could be broken down into a plurality of
`“partial information” segments and communicated through the TV network
`within/as respective “discrete (packet) signals”. On the receiver side of the
`1987 inventions, the partial information from the plurality of discrete signals
`could be recovered and re—organized back into the original piece of
`coherent “information (e.g. re—organized back into the single complete
`processor instruction).
`‘
`Applicant has alleged the above described “partial information”
`transmission scheme is a key feature which distinguishes applicant’s
`alleged 1987 inventions over Teletext “prior art”. Applicant’s allegation is
`founded on a huge misunderstanding/misrepresentation of the Teletext
`“prior art”.
`In fact, via such arguments,
`it appears that applicant is
`effectively trying to re—invent the foundation on which the Teletext “prior art”
`
`3 Character data was “always” transmitted in an encoded non-displayable format by “typical” Teletext transmission
`systems; e. g. the only exception to this “typical” configuration that the examiner is aware of is “typical” Chinese/Japanese ideograph
`Teletext systems being that there were simply too many Chinese/Japanese characters to encode efficiently. Graphics data, on the
`other hand, was “typically” encoded such that designated bits of each transmitted graphic code could be mapped by the decoder to
`regions of the display screen so as to generate the graphics image frame that was to be displayed. Yet, even here, a local graphics
`generator was still required to convert the graphics codes into displayable pixel data. Such a local graphics generator was
`conventionally implemented either with dedicated logic circuitry or with a “graphics generator” of the “character generator” variety
`[SEE: the discussion under the headings “Producing the display” and “Graphics” on page 398 of the article “CEEFAX/ORACLE:
`reception techniques (part I)” by Money in the 7/1975 issue of“TELEVISION”; and lines 13-21 in column 9 of US Patent
`
`#3,982,065].
`
`
`
`Application/Control Number: 08/480,392
`
`Page 8
`
`Art Unit: 2614
`
`was actually built [e.g. see the arguments which begin at the top of page
`354 and extend to the bottom of page 356 in the response filed on 1/28/02
`in SN O8/470,571].
`Specifically, standardized Teletext was based on the recognition that
`vacant lines occurring during the VBI of TV signal transmissions could be
`used to transmit/communicate embedded frames/”pages” of
`character/graphics information along with the TV programming. However,
`it was instantly recognized that each video line did not have sufficient
`bandwidth to carry an entire frame/page of the character/graphics data.
`Therefor, the prior art Teletext systems established Teletext packet
`structures by which “partial image/information” segments (e.g. such as
`single “rows” of character and control information) could be communicated
`via respective discrete packetized signals which were embedded within
`respective discrete television line intervals. On the receiver side of the
`Teletext “prior art”,
`the partial information segments from the plurality of
`discrete packetized signals were recovered and re-organized back into the
`original frame/pages of character/graphics information in order to “locally .
`generate” a Teletext image for display. But the clear correlation that exists
`between applicant’s “SPAM” transmission scheme and prior art Teletext
`transmission schemes does not end here!
`
`In addition to the transmission of character/graphic frames/pages, those
`of ordinary skill in the art quickly recognized that the prior art Teletext
`transmission schemes could be “extended” so as to carry other kinds of
`information; eg. “Telesoftware”(i.e. computer programming), remote
`control signaling, etc,...
`This additional information was carried using the same packetized Teletext
`structure previously established for the character/graphic image data. For
`example, Telesoftware was also broken down into “partial information”
`segments to be carried as “rows” of character-like data within respective
`Teletext packets of one or more Teletext pages (e.g. depending on the size
`of the Telesoftware program that was being communicated). On the
`receiver side, the “partial information” segments of the additional
`information were then recovered from the transmitted discrete packet
`signals and were re-organized back into its original form (eg. the complete
`“Telesoftware” program was reconstructed from the discrete partial
`programming segments).
`
`
`
`Application/Control Number: 08/480,392
`
`Page 9
`
`Art Unit: 2614
`
`it is still the examineI’s position that applicant’s 1987
`Given the above,
`packetized “SPAM” structure represents little more than applicant’s own
`version of a conventional “extended” Teletext system [SEE part “A” under
`“Section XI” in the Office action mailed 8/27/01 in SN 08/470,571]. And
`again, for the reasons addressed above, the examiner continues to refute
`applicant’s position that claim recitations directed to “discrete signals” and
`“partial information” contribute anything to avoiding applied Teletext “prior
`art”; i.e. applicant’s allegations to the contrary represent nothing but “straw
`men."
`
`6) Applicant points out that term “computer software/programming" has
`been defined as: “a series of instructions which controls the operation of a
`computer’. Stretching this definition, applicant erroneously suggests that
`
`the term “computer software” encompasses: “any series of instructions
`which controls the operation of a computer”. And finally, using this
`improperly stretched definition, applicant argues that each series of
`transmitted cuing-typ4e codes which were described in his 1981 parent
`application implicit/y4 taught the transmission and/or downloading of
`“computer software’ in view that each of these series of codes represented
`“instructions which controlled the operation of a computer”. Applicant’s
`argument is lame. For if one were to accept applicant’s argument,
`then in
`applicant’s new world:
`‘
`a) a computer mouse and computer keyboard suddenly become
`generators of “computer software” because they too generate series
`of instructions which are used to control the operation of a computer;
`
`b) Teletext data itself, when received by a CPU implemented
`decoder, suddenly becomes “computer software” because it too
`
`4 Applicant is reminded that what might be “implied” by the 1981 disclosure is irrelevant to section 112-] support issues.
`Section 1 12 support for a claimed feature is only provided if the claimed feature was actually disclosed;
`i.e. the feature must at least
`be “inherent” in the disclosure (not simply “implicit”).
`
`
`
`Application/Control Number: 08/480,392
`
`Page 10
`
`Art Unit: 2614
`
`represents series of instructions which are used to instruct a
`computer as to how to generate an image for display;
`
`c) etc, . ..
`
`Clearly, applicant’s argument twists the definition of “computer software” in
`a way that is repugnant to its conventional use/meaning in order to obtain a
`1981 effective filing date for something that he did not have in his
`possession, and/or did not disclose5 until 1987; e.g. namely, the
`downloading of computer software.
`'
`[notez parts “15)” and “16)” of this section too]
`
`7) While applicant has alleged that his “computer software/programming”
`recitations should be stretched so as to retroactively find support from
`things which were not “computer software/programming” 6(i;e. a series of
`cuing—type codes/signals from his 1981 disclosure), applicant also takes
`the opposite approach by alleging that circuit structures which operated to
`process signals (i.e. specifically Teletext decoders) are not encompassed
`by the “signal processor” recitations of his pending amended claims.
`7
`The examiner disagrees. The examiner points out that not only are
`Teletext decoders “signal processors” in any conventional sense of such
`terminology, but that Teletext decoders are in fact “signal processors”
`specifically within the context of applicant’s own alleged invention. More to
`the point, the Teletext decoders of the applied prior art are like “SPAM”
`decoders of applicant’s alleged inventions in that both decoders operated
`to extract and process packets of encoded information distributed to them,
`at least “preferably”, via the VBI of broadcasted and/or cable casted TV
`
`In the supplemental response tiled 5/06/2002 in 08/470,571, applicant now submits a different version of essentially the
`5
`same argument [see part “P)” in “SECTION I” of the latest Office action mailed in 08/470,571].
`
`6 This erroneous reading has been used in order to erroneous allege a 1981 “priority” date for current claim recitations
`which are directed to the 1987 “computer software/programing” features of the instant 1987 C1? specification.
`
`7 This erroneous reading has been used to try to distinguish which is now claimed over applied “prior art” of record.
`
`
`
`Application/Control Number: 08/480,392
`
`Page 11
`
`Art Unit: 2614
`
`programming; i.e. wherein the packets of encoded information comprised
`Teletext data packets in the case of prior art Teletext decoders and
`comprised SPAM data packets in the case of the SPAM decoders of
`applicants alleged invention. 8 Being such, applicant’s allegation that
`conventional Teletext decoders should somehow be excluded by the
`“signal processor” recitations of his pending claims seems to fall under the!
`heading of: “NONSENSE.”
`9
`
`8) The examiner maintains that applicant’s own “SPAM” transmission
`system, at least as described in the context of television distribution,
`constitutes little more than applicant’s own version of an “extended Teletext
`system" 10. However. when Teletext “prior art” has been applied against
`applicant’s claims, applicant has become hostile to the suggestion that
`there is any correlation between his “SPAM” transmission system and
`
`In fact, for reasons which will be addressed in more detail below, the examiner maintains that the “SPAM” data packets
`8
`of applicant’s alleged invention represent, for all intents and purposes, little more than applicant’s own version of a Teletext system in
`which the function of its Teletext data packets have been “extended” so as to carry more than just the normal displayable
`character/graphics code (e.g. “extended” to carry control signals, Telesoftware, etc,...).
`
`9 NOTE:
`
`1) that typical Teletext decoders sequentially performed steps of signal slicing/separation, serial-to-parallel
`conversion, signal storage, ASCII code to pixel data translation, etc... all which were recognized as having
`comprised steps of “signal processing” [the last 16 lines on page 5 of the appendix that is attached to the
`“PETITION FOR RULEMAKING” which was filed with the FCC on 3/26/1981 by the “United Kingdom
`Teletext Industry Group” which explicitly indicates Teletext decoders as having performed “signal processing”]',
`and
`
`2) that such processing was even true in the unusual “ideograph” decoders of applicant’s argument [i.e. see the
`block labeled “Teletext signal processor” in figure 10 of the NHK article “A Teletext System for Ideographs” by
`Numaguchi et al. ].
`
`10 The temt “extended Teletext” is being used here to refer to Teletext systems which have been “extended” so as to carry
`other types of information beyond the nonnal/typical coded Teletext character/graphic information. One alleged novel feature of
`applicant’s SPAM packets was its ability to carry and distribute computer software. However, contrary to applicant’s allegation,
`packets of “extended Teletext” systems had long been used to carry and distribute computer software too. In fact, the term
`“Telesoftware” had been specifically coined so as to refer to the “software” that was carried by “extended Teletext systems. The point
`being, that SPAM and Teletext data packets are equivalent right down to there recognized ability to carry other fomts of information
`including “Telesoftware”.
`
`
`
`Application/Control Number: 08/480,392
`
`Page 12
`
`Art Unit: 2614
`
`11 Yet, on the other hand,
`conventional Teletext transmission systems.
`applicant appears to openly believe that the scope of many of his pending
`amended claims encompasses the “WEATHER STAR” system/receiver
`technology which, to the extent understood by the examiner, is in fact a
`Teletext based technology. 12
`If applicant’s claimed/disclosed “SPAM”
`systems/receivers encompass Teletext based systems/receivers such as
`the “WEATHER STAR” system/receiver technology, then how in the world
`can applicant possibly suggest that “SPAM” and Teletext are not
`correlated/analogous technologies/arts with respect to the‘ applied prior
`art? Clearly there is a conflict between the two positions.
`
`9) Applicant and applicant’s originally filed 1987 disclosure both seem to
`have alleged that “digital television signals/programming”, of the type that
`is recited in many of applicant’s pending amended claims, was notoriously
`well known in the art at the time of his alleged, invention. The examiner has
`challenged applicant’s apparent allegations and has requested that
`applicant submit “prior art” to show such to be true.
`In response to the
`examiner’s requests, applicant has submitted US. Patent #3,906,480 to
`Schwartz et al. as having evidenced the conventional “digital television
`signal” technology on which his disclosure and amended claims were/are
`allegedly based [note the last 11 lines on page 97 and lines 3-6 on page 98
`of the amendment filed on 6/7/2000 in SN 08/470,571]. The examiner
`continues to be mystified by this submission. The examiner points out that
`the cited Schwartz et al. patent describes a computer display system in
`which a computer was used to generate, albeit digitally, frames of vector
`encoded graphic/character information which were then transferred, via a
`data bus, to “digital TV monitors” for display thereon. As far as the
`examiner can tell, the Schwartz et al. disclosure has absolutely nothing to
`do with the transmission of “digitized TV signals/programming” in any
`conventional sense of such terminology. Simply trying to figure out how the
`Schwartz et al. patent might be related to anything that was originally
`
`H Yet a large portion, if not the majority, of the “prior art” cited by applicant pertains to Teletext.
`
`12 SEE: the article “Landmark forms cable weather news network” which is already of record.
`
`
`
`Application/Control Number:- 08/480,392
`
`Page 13
`
`Art Unit: 2614
`
`disclosed by applicant in his 1987 disclosure, much less trying to figure out
`how it could have been used to enable that which was originally disclosed
`by applicant in his 1987 disclosure, represents an insurmountable
`invitation to experimentation unto itself.
`If Schwartz et al. has been cited by
`applicant out of carelessness, then its submission to the Office for required
`review and consideration represents nothing less than an unnecessary
`drain on already limited PTO resources.
`If, on the other hand, Schwartz et
`a_|. was cited out of necessity (eg. if it actually represents the best showing
`of his “digital television” recitation that applicant is/was aware of),
`then its
`very presence in the record only goes to support the examiner’s position
`that which is now claimed by applicant, i.e. via the subsequently
`introduced “digital television” recitations, is not supported and/or enabled
`by applicant’s originally filed 1987 disclosure.
`
`10) Applicant has made many attempts to have the Zaboklicki reference-
`[DE 2,914,981] removed from consideration.
`In many responses [eg the
`communication filed 7/13/2000 in 08/470,571], applicant has argued that
`the applied Zaboklicki reference should be removed from consideration
`simply because the teachings and descriptions provided by this applied
`prior art reference differ from teachings and descriptions provided by other
`non-applied members of its patent family (namely, GB #2,016,874). Such
`a position is absurd.
`lf Zaboklicki DE 2,914,981 teaches that which
`applicant now claimed, then the fact that Zaboklicki GB #2,016,874 might
`not have provided these same teachings (even if true) is irrelevant to the
`fact that the claims ARE unpatentable over Zaboklicki DE 2,914,981.
`‘3
`
`11) Within the originally filed abstract of applicant’s 1981 past parent
`specification (i.e. note S.N. 06/317,510),
`the term “programming’ was
`explicitly defined to mean:
`
`It is important to note that Zaboklicki [DE 2,914,981] included an extensive “List of References” section which
`3
`described the operation of the Zaboklicki system element-by-element. This section was absent from Zaboklicki [GB 2,016,874].
`This additional description in Zaboklicki [DE 2,914,981] is not trivial in that it goes a long way to understanding the invention which
`was disclosed in the applied Zaboklicki prior art; cg. namely DE 2,914,981 (not GB 2,016,874).
`
`
`
`Application/Control Number: 08/480,392
`
`Page 14
`
`Art Unit: 2614
`
`“everything transmitted over television or radio intended for
`communication of entertainment or to instruct or inform”.
`
`[see lines 4-7 in the abstract of US patent #4,694,490]
`
`Today this definition is in conflict with applicant’s present needs (e.g. it too
`refutes applicant’s claim to the earlier 1981 priority date 14). Being such,
`applicant has argued that this explicitly stated definition should be ignored
`and given no weight because the “abstrac
`as applicant alleges, was not
`technically part of his 1981 written description. The examiner rejects this
`allegation too. The examiner points out: that the originally filed abstract
`was certainly part of the originally filed disclosure of applicant’s 1981
`parent application on which all issues must be considered/based and that
`the definition of “programming” that was provided by this originally filed
`abstract is completely consistent with the way that it was used throughout
`the 1981 disclosure.
`
`12) Applicant seems willing to acknowledge that the “1987 inventions” that
`are