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`
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`
`‘
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`‘
`
`Serial No.
`
`Docket No.
`
`Filed
`
`For
`
`Group Art Unit
`
`Examiner
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`John C. Harvey and James W. Cuddihy
`
`08/480,392
`
`5634.310
`
`June 7, 1995
`
`SIGNAL PROCESSING APPARATUS AND METHODS
`
`2611
`
`Bhavesh M. Mehta
`
`RECEIVED
`
`MAR 0 5 2003
`
`Technotogy Center 2800
`
`Confirmation No.:
`
`9205
`
`Commissioner for Patents
`
`Washington, DC 20231
`
`».
`
`Transmitted herewith is a Petition for Three Month Extension of Time Under 37 C.F.R. § 1.136,
`and an Amendment and Request for Reconsideration Under 37 C.F.R. § 1.111.
`
`CLAM As AMENDED
`
`
`Rate
`i
`Claims
`Remaining After
`Amendment
`
`Highest Number
`Previously Paid
`For
`
`Extra
`
`.
`Large Entity
`
`'
`Small Entity
`
`Amount
`
`i
`
`
`
`i .
`
`ll iiii i
`
`
`
`
`
`
`18.00 __F
`Numberofcmmsmaxcessomo ——n s
`84.00
`$ 4200
`$ 0.00
`Independent Claims in Excess of3 n_ $
`
`$ 280.00
`$140.00
`
`First Presentation of Multiple Dependent Claims
`
`
`
`
`
`
`Extension Fee:
`One Month
`
`$ 110.00
`$ 55.00
`$ 0.00
`
`
`
`Two Months
`b)
`$ 410.00
`$205.00
`$ 0.00
`
`
`
`$ 930.00
`$ 465.00
`$ 930.00
`0)
`Three Months
`
`
`
`
`
`$1450.00
`$ 725.00
`$ 0.00
`Four Months
`
`
`
`
`
`$1970.00
`$ 985.00
`$ 0.00
`Five Months
`
`
`
`
`
`———
`Other:
`
`
`
`
`CHI!WEED
`
`No additional fee is required.
`A check in the amount of $ 930.00
`
`is attached.
`
`to Deposit Account No. 06- 1075.
`Charge $
`Charge any additional fees or credit any overpayment to Deposit Account No. 06—1075.
`
`Small Entity Status Claim:
`is hereby requested.
`is of record in this application.
`
`Date: March3 2003
`
`~
`FISH & NEAVE
`1251 Avenue of the Americas
`New York, New York 10020
`
` Respectfully submitte
`
`
`
`
` oseph M. Guili
`Reg. No. 36,539
`Tel.: (212) 596—9000
`Fax: (21.2) 596—9090
`
`ZYNGA EX. 1005
`
`

`

`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`L/ a”?
`
`Applicants
`
`Serial No.
`
`Docket No.
`
`Filed
`
`For
`
`Group Art Unit
`
`Examiner
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`John C. Harvey and
`James W. Cuddihy
`
`08/480,392
`
`5634.310
`
`June 7, 1995
`
`SIGNAL PROCESSING APPARATUS AND METHODS
`
`2611
`
`Bhavesh M. Mehta
`
`.
`.
`Commissmner for Patents
`
`Washington, DC. 20231
`
`RECEEVED
`
`MAR 0 5 2003
`
`Technology Center 2600
`
`AMENDMENT AND REQUEST FOR RECONSIDERATION UNDER 37 C.F.R. § 1.111
`
`1.
`
`AMENDMENT
`
`This Amendment and Request for Reconsideration replies to the Office action mailed
`
`September 3, 2002. Applicants respectfully request that the following amendments be entered into
`
`the above—captioned application:
`
`Pleaseamendclaims3-7, 20—22, 30-40,42,45,46/51-53 55, 57-64, 68, 73, 74, 82-86, and
`
`93asfollows. g/l//Please cancel/claims 8-1 fi/nd/87-89 withoutprejudice.
`
`
`
`Claims 54 and 56 remain unchanged.
`
`Claims 3-7, 20-22, 30—40, 42, 45, 46, 51-64, 68, 73, 74, 82-86, and 93 are pending.
`
`

`

`W—
`
`3.
`
`(Twice Amended)
`
`A method for storing programming at a programming storage station,
`
`said storage station having a storage device capable of storing programming, and an automatic
`
`control unit for controlling said storage device to store information, said method comprising the
`
`Serial No. 08/480,392
`Docket No. 5634.310
`
`steps of:
`
`storing a control signal operative to store programming;
`
`\
`(AX
`
`locating an available programming storage space among a plurality of available storage
`spaces based on said stored control signal operative to store programming; and
`
`storing first programming at said located available programming storage space.
`
`4.
`
`(Twice Amended)
`
`The method of claim 3, wherein said control signal operative to store
`
`programming designates programming required at a future time, said method further comprising the
`
`step of
`
`identifying required programming.
`
`5.
`
`(Twice Amended)
`
`The method of claim 3, wherein said control signal operative to store
`
`programming designates programming required at a future time, said method further comprising the
`
`step of
`
`identifying programming which is not required.
`
`6.
`
`(Twice Amended)
`
`The method of claim 3, further comprising the step of comparing
`
`information received at said programming storage station to said control signal operative to store
`
`programming.
`
`7.
`
`(Twice Amended)
`
`The method of claim 3, further comprising the steps of:
`
`inputting a portion of a stored signal to said automatic control unit; and
`
`processing said inputted portion to locate said available programming storage space.
`_______________________________________________
`2
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`‘_______________________________—————————————
`
`20.
`
`(Amended)
`
`The method of claim 3, wherein said first programming includes an
`
`incomplete programming element, and second programming operates to complete said incomplete
`
`programming element by processing a class of data, said method further comprising the step of
`
`receiving a control signal which designates said incomplete programming element or said
`
`%9\
`
`classofdata.
`
`2].
`
`(Amended)
`
`The method of claim 20, wherein said class of data designates programming
`
`transmitter data, said method further comprising the step of
`
`receiving and storing said programming transmitter data.
`
`22.
`
`(Amended)
`
`The method of claim 20, wherein said class of data designates subscriber data,
`
`said method further comprising the step of
`
`storing subscriber data.
`
`
`1H2?
`
`30.
`
`(Amended)
`
`Themethodofclaim 3, wherein acontrol signalcauses saidautomaticcontrol
`
`unit to control a peripheral device, said method further comprising the step of
`
`receiving and storing said control si nal.
`
`
`31.
`
`(Twice Amended)
`
`The method of claim 30, wherein said peripheral device comprises a
`
`switch operatively connected to said storage station.
`
`
`32.
`
`(Amended)
`
`The method of claim 30, wherein said peripheral device comprises a memory
`
`H6 operativelyconnected to said storage station.
`
`33.
`
`(Amended)
`
`The method of claim 30, wherein said first programming is received in a
`
`television signal, said method further comprising the step of
`
`3
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`detecting an identifier that identifies a portion of said first programming.
`
`34.
`
`(Amended)
`
`The method of claim 33, wherein said television signal comprises an analog
`
`television signal.
`
`35.
`
`(Amended)
`
`The method of claim 30, wherein said control signal is detected in a
`
`information transmission that contains said first programming, said method further comprising the
`
`step of
`
`storing said control signal with said first programming.
`
`36.
`
`(Amended)
`
`The method of claim 35, wherein said control signal is embedded in said
`
`information transmission.
`
`
`37.
`
`(Twice Amended)
`
`A method for storing programming at a storage station, said storage
`
`station having a plurality of storage locations each capable of storing at least one of television and
`
`radio programming; a transfer device capable of communicating said at least one of television and
`
`fim radioprogramming to andfromeach ofsaid pluralityofstorage locations; and acontroller for
`
`controlling said plurality of storage locations and said transfer device, said method comprising the
`
`steps of:
`
`receiving an information transmission including at least one of television and radio
`
`programming;
`
`selecting a storage location;
`
`transferring said received information transmission to said selected storage location;
`
`storing said received information transmission at said selected storage location; and
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.3[0
`
`storing an intermediate generation set in respect of said stored information transmission, said
`
`intermediate generation set comprising computer program information that causes an intermediate
`
`transmission station apparatus to generate a program instruction set.
`
`38.
`
`(Twice Amended)
`
`The method of claim 37, wherein said controller is operatively
`
`connected to said storage station, said method further comprising the steps of:
`
`communicating said intermediate generation set to said controller; and
`
`modifying said information transmission in accordance with said intermediate generation set.
`
`39.
`
`(Twice Amended)
`
`The method of claim 38, wherein a signal generator is operatively
`
`.
`
`\
`
`E &connectedtosaidstoragestationandmodifiessaidinformationtransmissionbyembedding
`(fiQ information into said information transmission, said method further comprising the steps of:
`controlling said storage station to transfer said information transmission to said signal
`
`generator;
`
`generating at least some of said information in accordance with said intermediate generation
`
`set; and
`
`communicating said information to said signal generator.
`
`40.
`
`(Twice Amended)
`
`The method of claim 39, wherein a transmitter is operatively connected
`
`to said signal generator, said method further comprising the step of
`
`transmitting said modified information transmission.
`
`
`
`42.
`
`(Amended)
`
`The method of claim 38, wherein said information transmission is modified by
`
`embedding at least one of video and audio into said information transmission.
`
`
`
`

`

`C______________________________________
`
`45.
`
`(Twice Amended)
`
`The method of claim 37, further comprising the step of embedding said
`
`intermediate generation set in said information transmission.
`
`Serial No. 08/480,392
`Docket No. 5634.310
`
`46.
`
`(Twice Amended)
`
`The method of claim 45, wherein said information transmission
`
`includes television programming, said intermediate generation set being embedded in said
`
`information transmission before said television programming.
`
`
`
`
`51.
`
`(Twice Amended)
`
`A method of storing information at a storage station, said storage
`
`station including a storage location capable of storing programming, a receiver for receiving at least
`
`audio from a remote transmitter station, a transfer device capable of communicating said
`
`q programming to and from said storage location, and a processor capable ofcontrolling said storage
`location and said transferdevice, said method comprising the steps of:
`
`,\/\/
`
`receiving an information transmission including programming,
`
`_
`
`a first portion of said programming to be outputted for a duration of time, only some
`
`of said duration of time including a time interval of specific relevance,
`
`a second portion of said programming including audio, at least said second portion of
`
`said programming being received from said remote transmitter station;
`
`communicating said received information transmission to said storage location;
`
`storing said first and second portions of said programming at said storage location; and
`
`storing at least one of computer code and data at said storage station, said at least one of
`
`computer code and data being operative at an ultimate receiver station to enable said ultimate
`
`receiver station to select audio of said second portion and cause an audio output device to output said
`
`selected audio of said second portion during said time interval of specific relevance.
`
`52.
`
`(Twice Amended)
`
`The method of claim 51, further comprising the steps of:
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`communicating said at least one of said computer code and said data to said processor; and
`
`under control of said processor, modifying said programming in accordance with said at least
`
`[)e‘m 8 oneofsaidcomputercodeandsaiddata.
`
`53.
`
`(Twice Amended)
`
`The method of claim 52, wherein said programming is modified by
`
`embedding information in said programming.
`
`54.
`
`(Unchanged) Th method of claim 52, wherein said programming is modified by combining
`
`
`
`audio into said programmi
`
`55.
`
`(Twice Amended)
`
`A method of storing information at a storage station, said storage
`
`station including a storage location capable of storing programming, a receiver for receiving at least
`
`0 audio from a remote transmitter station, a transfer device capable of communicating said
`programmingto and from said storage location, and a processor capable of controlling said storage
`
`location and said transfer device, said method comprising the steps of:
`
`receiving an information transmission including said programming,
`
`a first portion of said programming including audio,
`
`a first part of said audio to be outputted at an ultimate receiver station before a
`
`time interval of specific relevance
`
`a second part of said audio to be outputted at said ultimate receiver station
`
`after said time interval of specific relevance,
`
`a second portion of said programming including video, at least said first portion of
`
`said signal being received from said remote transmitter station;
`
`communicating said received information transmission to said storage location;
`
`storing said first and second portions of said programming at said storage location; and
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`storing at said storage station at least one processor instruction which 18 effectlve to modify
`
`said information transmission for transmission to said ultimate receiver station.
`
`
`
`
`(Unchanged)
`
`
`effective to modify said p ogramming.
`
`
`57.
`
`(Twice Amended)
`
`A method of enabling a station of a particular kind to deliver complete
`
`programming, said station including a storage device, and said method comprising the steps of:
`
`storing programming at said storage device, said programming comprising a computer
`
`program and a portion to be completed by accessing prestored data at said station of a particular
`
`kind,
`
`wherein said computer program is operative to complete said portion when executed at said
`
`station of a particular kind, said execution of said computer program enabling a processor at said
`station of a particular kind to select a specific datum from said prestored data and place information,
`
`which results from a processing of said selected datum, into said portion to be completed, thereby
`
`completing said programming; and
`
`storing a control signal, which is operative at at least one particular kind of station, said
`
`control signal operative to cause said execution of said computer program,
`
`whereby said station of a particular kind is enabled to deliver complete programming.
`
`
`58.
`
`(Amended)
`
`The method of claim 57, wherein said prestored data designates programming
`
`transmitter data, said method further comprising the step of
`
`receiving and storing programming transmitter data.
`
`59.
`
`(Amended)
`
`The method of claim 57, wherein said prestored data designates subscriber
`
`data, said method further comprising the step of storing subscriber data.
`
`8
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`60.
`
`(Amended)
`
`The method of claim 57, wherein said control signal comprises a series or
`
`stream of sequentially transmitted control instructions, said method further comprising the step of
`
`storing in said control signal two or more control instructions in a specific order with
`
`information designating a time period.
`
`\‘b‘
`The method ofclaim 60, wherein said series or stream ofsequentially
`(Amended)
`®‘61.
`w transmitted control instructions is to be included in a message stream, said method further
`
`comprising the step of
`
`storing an instruction which is effective to instruct said processor to process at least one
`
`message of said message stream.
`
`
`62.
`
`(Twice Amended)
`
`The method of claim 57, wherein said portion to be completed
`
`comprises generally applicable information.
`
`The method of claim 62, wherein said generally applicable information is to
`(Amended)
`5 63.
`be included in machine language code.
`
`64.
`
`(Twice Amended)
`
`The method of claim 62, wherein said generally applicable information
`
`includes higher language code and said computer program operates to generate a module including
`
`said hi her lan ua ecode.
`
`
`
`
`68.
`
`(Amended)
`
`The method of claim 57, wherein a control signal causes a controller
`
`operatively connected to said storage station to control a peripheral device, said method further
`
`
`
`storing said control signal.
`
`comprising the step of
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`73.
`
`(Amended)
`
`The method of claim 57, wherein said storage station is an intermediate
`
`transmitter station, said method further comprising the step of
`
`‘5 transmitting said first programming.
`
`74.
`
`(Amended)
`
`The method of claim 57, wherein said storage device is an ultimate receiver
`
`82.
`
`(Twice Amended)
`
`A method of enabling a mass medium programming storage device to
`
`store and deliver mass medium programming, said storage device comprising a storage location
`
`capable of storing said mass medium programming, a transfer device capable of communicating said
`
`mass medium programming to and from said storage location, and a processor capable of controlling
`
`said transfer device and said storage location to receive, store, and communicate said mass medium
`
`-
`
`7 (0
`
`programming, comprising the steps of:
`
`-
`
`receiving an information transmission including said mass medium programming, said mass
`
`medium programming having an identification datum and a programming element which is to be
`
`completed regarding a class of data;
`
`communicating said information transmission to said storage location;
`
`storing said information transmission at said storage location; and
`
`storing at least one of an intermediate generation set and a program instruction set at said
`
`mass medium programming storage device, said at least one of an intermediate generation set and a
`
`program instruction set including a control signal which designates at least one of said programming
`
`element to be completed and said class of data and which is operative to complete said programming
`
`element to be com leted.
`
`’//////
`
`The method ofclaim 82, wherein said class ofdata designates programming
`(Amended)
`/\ 83.
`\8(\
`transmitter data, said method further comprising the step of:
`
`10
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`storing said programming transmitter data.
`
`84.
`
`(Amended)
`
`The method of claim 82, wherein said class of data designates subscriber data,
`
`said method further comprising the step of:
`
`storing said subscriber data.
`
`¢%\\
`
`85.
`
`(Amended)
`
`The method ofclaim 82, wherein saidcontrol signalcomprises sequentially
`
`‘
`
`transmitted control instructions, said method further comprising the step of:
`
`embedding in said control signal at least two control instructions in a specific order with
`
`information designating a time period.
`
`86.
`
`(Amended)
`
`The method of claim 85, wherein said sequentially transmitted control
`
`instructions comprise a message stream, said method further comprising the step of:
`
`storing an instruction which is effective to instruct said processor to process at least one
`
`message of said message stream.
`
`
`
`93.
`
`(Amended)
`
`The method of claim 82, wherein a control signal causes a controller
`
`LJX\% operativelyconnectedtosaidstoragedevicetocontrolaperipheraldevice,saidmethodfurther
`
`comprising the step of:
`
`storing said control signal.
`
`II.
`
`REMARKS
`
`Applicants have reviewed the Office action mailed September 3, 2002, and fully address
`
`herein the following rejections contained therein.
`
`The Office action begins with Section I that recites a number of issues that are neither
`
`rejections of nor objections to the claims of the instant application. Applicants address Section I of
`
`11
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`the Office action below, but note that the issues raised are not relevant to the patentablity of the
`
`claims in this application. For this reason, Section Iof the Office action is improper and should
`
`therefore be withdrawn in its entirety.
`
`Section I of the Office action is followed by Sections II-V that assert the following rejections
`
`of the pending claims.
`
`Claims 51-64, 68, and 72-74 stand rejected under 35 U.S.C. § 112, second paragraph, as
`
`being indefinite for failing to particularly point out and distinctly claim the subject matter which
`
`applicants regard as the invention.
`
`Claims 3-15, 17, 18, 20-22, 30—40, 42, 45, 46, 51-64, 68, 72-74, 82—89, and 93 stand rejected
`
`under 35 U.S.C. § 112, first paragraph, as containing subject matter which was not described in the
`
`specification in such a way as to reasonably convey to one skilled in the relevant art that the
`
`inventors, at the time the application was filed, had possession of the claimed invention.
`
`Claim 34 stands rejected under 35 U.S.C. § 112, first paragraph, as allegedly containing
`subject—matter that was not described in the specification in such a way as to enable one skilled in the
`
`art to make and/or use the invention.
`Claim 3 stands rejected under 35 U.S.C. § 103(a) as allegedly being rendered unpatentable by
`
`the publication “Vertical Interval Signal Applications” by Etkin in view of WO 80/02093 to Vikene.
`
`Claims 3—15, 17, 18,20, 21, 30-40, 42, 45, 46, 51-64, 68, 72-74, 82-89, and 93 stand rejected
`
`under 35 U.S.C. § 103(a) as allegedly being rendered unpatentable by Etkin in view Vikene, and
`
`further in view of US. Patent No. 4,199,791 to Corey and the publication “The Vertical Interval: A
`
`General-Purpose Transmission Path” by Anderson.
`
`Applicants reply herein to each ground of rejection presented in the Office action. Applicants
`
`respectfully request reconsideration and further examination of the instant application.
`
`12
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`A. Response To Section I Of The Office Action.
`
`The Office action begins by identifying a list of 30 “Examples” of issues that have been
`
`raised in some of applicants’ copending applications. The Examiner alleges that in some cases
`
`applicants have “handled and addressed” these issues inconsistently in different applications. The
`
`Examiner states that the list of “Examples” will be maintained by the Patent Office “in an attempt to
`
`ensure consistency in the way that these issues are handled between applications in the future.”
`
`9/03/02 Office action, p. 2.
`
`Applicants respectfully submit that the “Examples” are simply irrelevant to the prosecution
`
`of the instant application for a number of reasons. The Patent Office itself has acknowledged that
`
`the list of 30 Examples is not relevant to certain applications because applicants have not asserted
`
`priority in those applications to the filing date of applicants’ 1981 application:
`
`It is examiners position that after a series of interview, it has been
`mutually agreed upon that the instant application is entitled the earlier
`priority date of 9/11/87 based on the 07/096,096 application and not
`i the 11/3/81 date based on the 06/317,51O application. Therefore, the
`written description and the enablement under 112 1St paragraph should
`be limited to the 1987 specification only. Additionally, the remarks set
`forth in Paragraph III, items 1-30 [the “Examples”] of the instant office
`action are carried over from other office actions in similar cases and
`
`are presented herein because in the past there have been disagreements
`between the priority date that the applicants are entitled to. The
`examiner will withdraw paragraph III from subsequent actions in the
`instant case application if applicants confirm on record in the next
`communication that the instant application is entitled to only the 1987
`priority date and the citations for claim support will be only provided
`for the 1987 specification.1
`
`The Examiner’s position that he will withdraw the irrelevant 30 Examples only if “applicants
`
`confirm on record in the next communication that the instant application is entitled to only the 1987
`
`This paragraph was included in Office-actions in the following applications: 08/487,397
`1
`mailed 9/06/02; 08/438,011 mailed 9/06/02; 08/447,496 mailed 9/06/02; and 08/479,215 mailed
`9/05/02.
`
`13
`
`

`

`Serial No. 08/480,392
`Docket No. 5634.310
`
`priority date” is improper. Whether or not a particular claim is afforded the benefit of an earlier
`
`filing date under § 120 simply depends on whether the requirements of § 120 are metfor that claim.
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`A claim either is or is not entitled to an earlier filing date, and such a determination cannot be made
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`without conducting the appropriate claim-by-claim analysis required by the controlling authorities.
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`Of course, it is applicants’ decision whether or not to invoke § 120 in order to overcome an
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`intervening reference. In the instant application, applicants have not invoked § 120 to avoid any
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`intervening reference. Moreover, applicants have demonstrated specification support below only
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`with respect to the 1987 specification. Accordingly, the 30 Examples should be withdrawn.
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`Applicants question the relevance of the 30 Examples, as well as applicants’ need to respond
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`to these Examples, because none of the examples forms the basis for any objection to or rejection of
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`a pending claim. See 37 CPR. § 1.111 (“In order to be entitled to reconsideration or further
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`examination, the applicant .
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`.
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`. must reply to every ground of objection and rejection in the prior
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`Office action”). Further, none of the Examples even refers to anchlaims that are presently pending
`in the instant application. Accordingly, the 30 Examples simply have no bearing on the prosecution
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`of the claims pending in the instant application, and are therefore improper.
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`Applicants further question the basis for including the 30 Examples in the instant application
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`and applicants’ need to respond to the Examples, because the vast majority of the Examples have
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`appeared at least once before in other applications and because applicants have already responded to
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`the vast majority of the Examples on the record in their copending applications. For example, all 30
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`Examples appear in identical form in the 07/17/02 Office action received in application Ser. No.
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`08/470,571 (“the ‘571 Application”). Additionally, at least 20 of the current Examples previously
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`appeared in the 08/28/01 Office action in the ‘571 Application. Accordingly, applicants, in their
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`01/28/02 and 01/09/03 Responses filed in the ‘571 Application, have already fully responded on the
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`record to all of the 30 Examples listed in the instant application.
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`In addition to the identical “Examples” being repeated from other recent Office actions,
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`applicants note that many of the issues discussed in the 30 Examples have been raised by the
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`Serial No. 08/480.392
`Docket No. 5634.310
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`Examiner before in slightly different forms in applicants’ various copending applications. In
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`addressing such issues, applicants have at all times strived to respond in a consistent manner in all of
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`applicants’ copending applications. Accordingly, applicants believe that the Examiner is mistaken in
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`his assertion that applicants have “handled and addressed” the issues raised in the 30 Examples
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`“inconsistently.”
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`The 30 Examples are not relevant to the instant application, and applicants respectfully
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`request that the Examples be withdrawn and that the Examiner acknowledge the lack of relevance of
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`the 30 Examples to the prosecution of the instant application. Notwithstanding applicants’ position
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`regarding the lack of relevance of the 30 Examples to the prosecution of the instant case, applicants
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`provide the following responses2 to the 30 Examples. Applicants reserve their right to further
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`address any of the 30 Examples if, for example, they are ever raised in the context of an actual
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`rejection or objection.
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`Examples 1-3
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`_
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`_
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`A
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`,
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`.
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`~
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`-
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`7
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`>
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`-
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`-
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`‘
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`Examples 1-3 address various issues concerning applicants’ ability to claim priority to their 1981
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`application and the proper test for demonstrating priority under 35 U.S.C. § 120. Because applicants
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`have not asserted priority to their 1981 application for any of the pending claims in the instant
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`application, Examples 1-3 are wholly irrelevant to the instant application.
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`In Example 1, the Examiner discusses prosecution of applicants’ copending application Ser.
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`No. 08/470,571. More specifically, the Examiner focuses on the need to first demonstrate written
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`description support in applicants’ 1987 specification when claiming priority under § 120. Applicants
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`have not asserted priority under § 120 to the date of their 1981 application for any of the pending
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`claims in the instant application, and applicants have identified detailed written description support
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`More detailed responses to many of the Examples appear in, among other places, applicants’
`2
`01/28/02 Response, 05/06/02 Response to Interview Summary, and 01/09/03 Response filed in the
`‘571 Application.
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`15
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`Serial No. 08/480,392
`Docket No. 5634.3 l 0
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`in their 1987 specification for each and every pending claim in the instant application in Appendix B.
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`Further, applicants respectfully disagree with the Examiner’s characterization of their position
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`regarding priority in their copending applications. Finally, in addition to being totally irrelevant to
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`the instant application, applicants submit that the assertions made by the Examiner in Example 1 are
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`improper in the absence of any priority claim made by applicants under 35 U.S.C. § 120 to their 1981
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`application for any claim in the instant application.
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`In Example 2, the Examiner takes issue with applicants’ discussion and position regarding
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`the proper test for demonstrating priority under § 120. Again, the Examiner refers to applicants’
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`responses filed in the ‘571 Application. Although applicants continue to disagree with the
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`Examiner’s description and application of the legal test for demonstrating priority under § 120 (for
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`the detailed reasons set forth by applicants, e. g., in their 01/09/03 Response in the ‘571 Application),
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`the issue of priority under § 120 is simply not an issue in the instant application.
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`In Example 3, the Examiner further discusses applicants’ ability to demonstrate priority under
`_ § 120 and their ability to support claims pending in the ‘571 Application using applicants’ 1987
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`V
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`specification. Applicants believe that the issues raised in Example 3 are irrelevant to the instant
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`application and submit that the Examiner has mischaracterized applicants’ position regarding their
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`ability to demonstrate written description support in both the 1987 and 1981 specifications for the
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`claims pending in the ‘571 Application and other applications in which applicants are asserting
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`priority under § 120.
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`Applicants’ positions with respect to the various issues related to applicants’ ability to claim
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`priority to the date of their 1981 specification and the proper legal test for demonstrating priority
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`under § 120 has been discussed in detail in applicants’ submissions in the ‘571 Application.
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`Applicants will continue to provide the factual and legal bases that justify their claim of priority to
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`their 1981 application in those copending applications where such claim is appropriate and necessary
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`(i.e., if intervening art is applied and applicants elect to invoke § 120 to overcome such intervening
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`art).
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`16
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`Serial No. 08/480,392
`Docket No. 5634.310
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`Example 4
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`In Example 4, the Examiner discusses a claim limitation (i.e., “locally generating” images) relevant
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`to certain claims pending in applicants’ ‘571 Application. Applicants respectfully disagree with the
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`Examiner’s assertion in Example 4 that Teletext decoders locally generate images for output or
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`display in the same manner that is being claimed in certain ones of applicants’ copending
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`applications, and applicants have already addressed the issue of whether the prior an applied by the
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`Examiner teaches local generation of images in the ‘571 Application. If the Examiner bases a
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`rejection of or objection to any claim pending in the instant application on the issues found in
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`Example 4, or asserts that the issues found in Example 4 are in any way relevant to the instant
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`application, applicants will address any such assertions at the appropriate time.
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`Examples 5 and 27
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`In Examples 5 and 27, the Examiner discusses the “Teletext prior art” and the inventions disclosed in
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`applicants’ 1987 specification in the context of an Office action and a Response filed in the ‘571
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`_ Application. The Examiner asserts in Examples 5 and 27 that applicants’ 1987 “packetized SPAM”
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`structure represents little more than applicants’ own version of a “conventional extended Teletext
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`system.” In Example 27, the Examiner further asserts that certain structures recited in some of
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`applicants’ claims pending in the ‘571 Application (namely, a receiver, a signal detector, a processor,
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`and an output device) are also “found within a conventional CPU/MP/computer implemented
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`Teletext” receiver. These examples are not discussed or applied in the context of any of the claims
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`pending in the instant application and the Examiner does not reject any of the pending claims based
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`on the arguments made in Examples 5 and 27. If and when the Examiner makes rejections of
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`specific pending claims on the basis of issues raised in Examples 5 and 27, applicants will further
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`respond to such a rejection. Notwithstanding the lack of relevance of Examples 5 and 27 to this
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`application, applicants strenuously disagree with the Examiner’s disparaging assertions an