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`Serial No.
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`Docket No.
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`Filed
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`For
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`Group Art Unit
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`Examiner
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`534%le
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`PATENT
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`1N THE,UNITED STATES PATENT AND TRADEMARK OFFICE
`
`John¥CT’H»Mey and
`James W. Cuddihy
`
`08/447,496
`
`5634.121
`
`May 23, 1995
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`SIGNAL PROCESSING APPARATUS AND METHODS
`
`2614
`
`David E. Harvey
`
`RECEIVED
`
`MAR 1 1 2003
`
`Technology Center 2600
`
`Commissioner for Patents.
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`Washington, DC. 20231
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`AMENDMENT AND REQUEST FOR RECONSIDERATION UNDER 37 C.F.R. § 1.111
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`1.
`
`AMENDMENT
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`This Amendment and Request for Reconsideration replies to the Office action mailed -
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`September 6, 2002. Applicants respectfully request that the following amendments be entered into
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`the above-captioned application:
`
`A.
`
`In The Claims
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`Applicants request entry of the follo mg amend énts t0 the claims.
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`/ /// // / / /ed.— ‘— “'
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`7— Cl "ims 2:5:‘9r1'4716‘and' ‘1'8121‘are’ame'fi
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`Claims 2-5, 9-14, 16 and 18—21 are pending.
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`_"
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`'
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`Zynga Exhibit 1007
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`

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`____.——__________ a...s
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`
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`C
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`O.
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`Serial No. 08/447,496
`Docket No. 5634.]21
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`2.
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`(Four Times Amended)
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`A method of processing signals at a receiver station
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`based on at least one information transmission, the method comprising the steps of:
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`(a)
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`receiving information content and a first control signal in said at least one information
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`transmission, said information content describing at least one of a product and a service;
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`(b)
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`generating a benefit datum in response to said first control signal by processing
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`subscriber specific data;
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`é \
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`(c)
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`delivering said information content and said benefit datum at an output device at said
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`receiver station, wherein said information content and said benefit datum explain a benefit of
`acquiring said product or service specific to said subscriber;
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`(d)
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`receiving a subscriber input after said step of delivering; and
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`f:
`
`_
`
`"ut.
`eni
`'sairivr'
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`controlling
`d ece e stationbas do sadsubscriber mp
`(e)
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`
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`3.
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`(Twice Amended)
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`The method of claim 2, further comprising the step of storing
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`said subscriber specific data at a computer at said receiver station.
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`4.
`(Twice Amended)
`@ said subscriber specific data.
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`
`
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`The method of claim 2 wherein said subscriber input modifies
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`5.
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`(Three Times Amended)
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`A method of communicating recommendations to a
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`subscriber, said method comprising the steps of:
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`(l) storing subscriber specific data of said subscriber at a subscriber station;
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`(2) receiving at said subscriber station at leastione first instruct signaLwhich_is,effective_to_
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`2F$
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`cause said subscriber station to present a first subscriber specific recommendation to said subscriber
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`based on said stored subscriber specific data;
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`(3) receiving subscriber input at said subscriber station responsive to said first subscriber
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`specific recommendation; and
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`

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`173
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`(4) transmitting information to a remote station based on said subscriber input.
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`Serial No. 08/447,496
`Docket No. 5634.121
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`9.
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`(Three Times Amended)
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`The method of claim 5, said method further comprising
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`receiving at said subscriber station at least one second instruct signal which is effective to cause said
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`12-f-
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`,
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`subscriber station to present a second subscriber specific recommendation based on said subscriber
`input and said stored subscriber specific data.
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`10.
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`(Twice Amended)
`-
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`The method of claim 2, wherein said information content
`.
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`//
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`l 5 comprises a commercial.
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`11.
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`(Three Times Amended)
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`The method of claim 10, wherein said commercial is
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`stored at said receiver station prior to said step of delivering.
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`Vb
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`12.
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`(Three Times Amended)
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`The method of claim 10, wherein said commercial is
`
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`selected from a plurality of commercials based on said subscriber specific data.
`.
`_M
`T".— -___—___—————\
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`13.
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`(Twice Amended)
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`The method of claim 11, wherein said step of delivering
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`comprises delivering said commercial from storage at said receiver station.
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`FF,
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`The method of claim 13 wherein said step of delivering is
`(Twice Amended)
`l4.
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`m.-- t.._- —.._.___._.___
`performed based on a schedule.
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`F8
`stored at said receiver station.
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`16.
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`(Three Times Amended)
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`The method of claim 14, wherein said schedule is
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`

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`_——____________—____
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`Serial No. 08/447,496
`Docket No. 5634.121
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`18.
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`(Three Times Amended)
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`A method of processing signals at a receiver station
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`based on one of at least one broadcast transmission and at least one cablecast transmission, the
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`method comprising the steps of:
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`(a)
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`receiving at said receiver station a first control signal and at least one of video and
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`audio in said at least one transmission;
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`. (b)
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`generating information by processing data at said receiver station in response to said
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`first control signal;
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`(c)
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`delivering said at least one of video and audio at an output device at said receiver
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`station;
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`(d)
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`(e)
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`receiving a subscriber response to said delivered at least one of video and audio;
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`completing a second control signal based on said received subscriber response and
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`said generated information; and
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`(f)
`controlling said receiver station in accordance with said second control signal.
`‘___—_______________—___—L—————_————————————
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`19.
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`(Twice Amended)
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`The method of claim 5, wherein said instruct signal is received
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`from a first transmitter, and said subscriber specific recommendation is further based on information
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`specific to said first transmitter.
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`FIB
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`F1!
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`20.
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`(Twice Amended)
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`The method of claim 19, wherein said first transmitter receives
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`at least a portion of said instruct signal from a second transmitter, and said subscriber specific
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`recommendation is further based on information specific to said second transmitter.
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`>_______—________—_—__—_
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`21.
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`(Amended)
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`A method of delivering a receiver specific output at a video receiver
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`station to explain a benefit of an offer made to a specific user through said video receiver station
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`including:
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`

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`Serial No. 08/447,496
`Docket No. 5634.121
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`receiving at least one information transmission at said video receiver station, said at least one
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`information transmission including video, generally applicable information and a control signal;
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`storing said generally applicable information and said control signal at said video receiver
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`station;
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`outputting said video at a video monitor;
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`selecting at least one receiver specific benefit datum to output from said generally applicable
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`information in accordance with said control signal; and
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`outputting said selected at least one receiver specific benefit datum in a time of specific
`relevance during said outputting of said video in response to at least asecond control signal, wherein
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`said outputting of said video and said outputting of said selected at least one receiver specific benefit
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`datum explain said benefit of said offer to said specific user of said video receiver station.
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`II.
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`REMARKS
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`Applicants have reviewed the Office action mailed September 6, 2002 and fully address
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`herein the following objections and rejection contained therein.
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`Sections 11 and III of the Office action recite a number of issues that are neither rejections of
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`nor objections to the claims of the instant application. Applicants address Sections H and IH of the
`Office action below, but note that the issues raised are not relevant to the patentablity of the claims
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`in this application. For this reason, Sections H and HI of the Office action are improper and should
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`therefore be withdrawn in their entireties.
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`Section IH of the Office action is followed by Sections IV.-VI that assert the following
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`objections to and rejections of the pending claimsiaind drawings.
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`In Section IV the Examiner objects to the drawings under 37 CPR. § 1.83(a).
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`In Section V.1, claims 2—5, 9—14, 16 and 18-21 were rejected under 35 U.S.C. § 112, first
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`paragraph, as containing new matter and/or subject matter which was not described in the
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`specification in such a way as to reasonably convey to one skilled in the relevant art that the
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`inventor(s), at the time the application was filed, had possession of the claimed invention.
`5
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`Serial No. 08/447,496
`Docket No. 5634.121
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`In Section V.2, claims 2-5, 9-14, 16 and 18-21 were rejected under 35 U.S.C. § 112, first
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`paragraph, as containing subject matter which was not described in the specification in such a way as
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`to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to
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`make and/or use the invention.
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`In Section VI, claims 2-5, 9-14, 16 and 18-21 were rejected under 35 U.S.C. § 112, second
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`paragraph, as being indefinite.
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`In Section VH, claims 2-5, 9-14, 16 and 18-21 were rejected under 35 U.S.C. § 102(e) as
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`being anticipated by Campbell et al.; claims 5 and 18-21 were rejected under 35 U.S.C. § 102(e) as
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`being anticipated by Saeki et al.; and claim 18 was rejected under 35 U.S.C. § 102(e) as being
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`anticipated by Block et al.
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`Applicants reply herein to each ground of rejection presented in the Office action.
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`Applicants hereby request reconsideration and further examination of the instant application.
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`A. Response To Sections II & 111 Of The Office Action
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`Sections H and III of the Office action discusses a list of 30 “Examples” of issues that have
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`been raised in some of applicants’ copending applications. The Examiner alleges that in some cases
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`applicants have “handled and addressed” these issues inconsistently in different applications. The
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`Examiner states that the list of “Examples” will be maintained by the Patent Office “in an attempt to
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`ensure consistency in the way that these issues are handled between applications in the future.”
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`Office action, p. 3.
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`Applicants respectfully submit that the “Examples” are simply irrelevant to the prosecution
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`_ of the instant application for a number of reasons. The Examiner in SectionAII hasiacknowledged ,,
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`that the list of 30 Examples is not relevant to certain applications because applicants have not
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`asserted priority in those applications to the filing date of applicants’ 1981 application:
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`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
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`6
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`Serial No. 08/447,496
`Docket No. 5634.121
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`the 11/3/81 date based on the 06/317,510 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
`
`there have been
`and are presented herein because in the past
`disagreements between the priority date that the applicants are entitled
`to. The examiner will withdraw paragraph HI 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.
`
`The Examiner’s position that he will withdraw the irrelevant 30 Examples only if “applicants
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`confirm on record in the next communication that the instant application is entitled to only the 1987
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`priority date” is improper. Whether or not a particular claim is afforded the benefit of an earlier
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`filing date under § 120 simply depends on whether the requirements of § 120 are met for 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 the
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`intervening references. 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 actioni’). Further, none of the Examples even, refers to any claims that arepresently pending,
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`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
`7
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`Serial No. 08/447,496
`Docket No. 5634. l2l
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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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`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 responses1 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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`’ w‘ExamleI-S address various issues concerning applicants’ ability to Claiin priority to their"
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`1981 application and the proper test for demonstrating priority under 35 U.S.C. § 120. Because
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`More detailed responses to many of the Examples appear in, among other places,
`I
`applicants’ 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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`Serial No. 08/447,496
`Docket No. 5634.121
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`applicants have not asserted priority to their 1981 application for any of the pending claims in the
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`instant 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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`in their 1987 specification for each and every pending claim in the instant application in Appendix
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`B. 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
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`1981 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
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`under § 120 and their ability to support claims pending in the ‘571 Application using applicants’
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`1,987 specification. Applicants believe that the issues raised in Example 3 are irrelevant to the
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`instant application and submit that the Examiner has rnischaracterized applicants’ position regarding
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`their ability to demonstrate written description support in both the 1987 and 1981 specifications for
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`the 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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`

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`Serial No. 08/447,496
`Docket No. 5634. 121
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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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`Example 4
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`In Example 4, the Examiner discusses a claim limitation (i.e., “locally generating” images)
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`relevant to certain claims pending in applicants’ ‘571 Application. Applicants respectfully disagree
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`with the Examiner’s assertion in Example 4 that Teletext decoders locally generate images for output
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`or 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 art 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
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`disclosed in applicants’ 1987 specification in the context of an Office action and a Response filed in
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`the ‘571 Application. The Examiner asserts in Examples 5 and 27 that applicants’ 1987 “packetized
`k SPAM” structure represents little more than applicants’own version of a “conventional extended 7
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`Teletext system.” In Example 27, the Examiner further asserts that certain structures recited in some
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`of applicants’ claims pending in the ‘571 Application (namely, a receiver, a signal detector, a
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`processor, and an output device) are also “found within a conventional CPU/MP/computer
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`implemented Teletext” receiver. These examples are not discussed or applied in the context of any
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`10
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`

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`Serial No. 08/447,496
`Docket No. 5634.12]
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`of the claims pending in the instant application and the Examiner does not reject any of the pending
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`claims based on the arguments made in Examples 5 and 27. If and when the Examiner makes
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`rejections of specific pending claims on the basis of issues raised in Examples 5 and 27, applicants
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`will further respond to such a rejection. Notwithstanding the lack of relevance of Examples 5 and 27
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`to this application, applicants strenuously disagree with the Examiner’s disparaging assertions and
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`characterization of the subject matter disclosed in applicants’ 1987 specification. Finally, applicants
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`note that they have previously addressed how applicants’ claims differ from many “Teletext” prior
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`art references in prior responses filed in copending applications.
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`Example 6
`
`In Example 6, the Examiner discusses applicants’ ability to obtain priority to their 1981 filing
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`date for claiming “computer software.” The Examiner discusses this issue with respect to arguments
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`advanced in applicants’ ‘571 Application related to applicants’ prior use of the term “programming”
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`in claims pending in the ‘571 Application. Applicants have fully addressed the issues raised in
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`Example 6 in the ‘571 Application. The issues raised in Example 6, however, are not relevant to the
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`instant application because applicants have not asserted priority under § 120 to the date of their 1981
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`application for any of the pending claims in the instant application. In fact, in Example 6, the
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`Examiner acknowledges that applicants’ 1987 specification does disclose the downloading of
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`computer software. Notwithstanding the lack of relevance of Example 6 to this application,
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`applicants disagree with the Examiner’s position regarding applicants’ ability to obtain priority to
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`their 1981 filing date for claims that include the term “programming.”
`
`Example 7
`In Example 7, the Examiner alleges that Teletext decoders ’found’in the priorart are “57;;
`
`
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`processors” as the term “signal processor” is used within the context of applicants’ claims pending in
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`the ‘571 Application. Again, the issues raised in Example 7 are not discussed in the context of any
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`claim currently pending in the instant application. Applicants do not understand the relevance of
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`Example 7 to any of the claims currently pending in the instant application and no attempt is made to
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`11
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`Serial No. 08/447,496
`Docket No. 5634.121
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`apply the discussion in Example 7 to the instant claims. Notwithstanding the lack of relevance of
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`Example 7 to this application, applicants respectfully disagree with the Examiner’s assertions and
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`characterization of Teletext decoders found in the prior art and the signal processor disclosed by
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`applicants. Applicants submit that the signal processors disclosed in applicants’ specifications
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`perform functions that are not disclosed in the cited Teletext prior art references. Finally, applicants
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`will address these issues if and when an actual rejection is made by the Examiner based on the issues
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`raised in Example 7.
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`. Example 8
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`In Example 8, the Examiner asserts that it is applicants’ position that applicants’
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`claimed/disclosed technology is not “correlated/analogous” to Teletext technology. The Examiner,
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`however, fails to provide any details regarding his position that “conventional Teletext systems”
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`generally are correlated or similar to applicants’ claimed technology. Indeed, such generalized
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`“correlations” or “analogies” are wholly irrelevant to the issue of whether or not applicants’ claims
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`are patentable. Applicants’ position is that none of the specific references, related to Teletext or
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`otherwise, alone or in combination, teach the methods and apparatus claimed by applicants. The
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`Examiner further argues that applicants have previously indicated it is their belief that the scope of
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`many of their pending claims encompasses the “Weather Star” system/receiver technology. First,
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`the question of whether or not a particular system would be covered by a pending claim is wholly
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`irrelevant to the examination of the instant claims, unless such system is prior art. The Examiner has
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`not established that the Weather Star system is prior art. Second, although the Examiner vaguely
`’5‘
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`pending amended claims,” he makes no reference to a specific application or a
`refers to applicants
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`' specific claim. Due’to the Examiner’sbroad’freatment of these issues, applicants cannot re’spondin
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`any meaningful manner to the issues raised in Example 8.
`
`Example 9
`
`In Example 9, the Examiner discusses an issue that arose in the prosecution of the ‘571
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`Application regarding whether “digital television signals/programming” was well known in the
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`12
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`Serial No. 08/447,496
`Docket No. 5634.121
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`relevant art at the time that applicants filed their specifications. In their 1/28/02 Response filed in
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`the ‘571 Application, applicants fully addressed the Examiner’s rejections under § 112, second
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`paragraph, of claims with limitations of “digital television.” Further, applicants maintain their
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`position stated in the ‘571 Application regarding the Schwartz et al. reference. Applicants note that
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`there are no rejections of or objections to any of applicants’ pending claims in the instant application
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`based on the issues raised in Example 9, and applicants reserve the right to further respond to the
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`issues raised in Example 9 if any of these assertions are relied on to object to or rejectany claim in
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`the future.
`
`Example 10
`
`In Example 10, the Examiner discusses two references of Zaboklicki: DE 2,914,981 and
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`GB#2,016,874. Despite the Examiner’s characterization of applicants’ arguments regarding these
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`references, applicants maintain that neither Zaboklicki reference anticipates or renders obvious any
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`of applicants’ pending claims in the instant application. Applicants have previously addressed issues
`
`raised in Example 10 in the ‘571 Application, and applicants will continue to address in detail any
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`rejection under § 102 or § 103 in which a Zaboklicki reference is applied.
`
`Examples 11, 12, 15 and 16
`
`In Examples 11, 12, 15 and 16, the Examiner discusses applicants’ use of the term
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`“programming” in the 1981 and 1987 specifications. More specifically, Examples 11, 12, 15 and 16
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`assert that applicants cannot claim a 1981 priority date for claims including the term “computer
`
`programming,” because of an allegedly narrow definition of that term in the 1981 specification. The
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`issues raised in Examples 11, 12, 15 and 16 are only relevant if applicants rely on § 120 to obtain the
`benefit of their 1981 filing date. As applicants have not claimed priority to their 1961 application for
`
`47
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`any claims currently pending in this application, the issue is not relevant to the instant application. If
`
`and when the Examiner asserts that the issues found in Examples 11, 12, 15 and 16 are relevant to
`
`the claims pending in the instant application, applicants will respond at the appropriate time.
`
`13
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`Serial No. 08/447.496
`Docket No. 5634.121
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`Finally, applicants have fully addressed the “programming” issues raised in these examples in
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`several prior responses filed in the ‘571 Application.
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`Example 13
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`In Example 13, the Examiner discusses whether or not radio and television arts represent
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`non—analogous arts. The Examiner states that applicants have previously asserted that the radio and
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`television arts are non—analogous arts. The Examiner’s assertions in Example 13 do not form the
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`basis for any rejection of or objection to any specific claim pending in the instant application. To the
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`extent necessary, applicants will further address the issues raised by the Examiner in Example 13 if
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`and when such issues are ever raised in the context of a rejection of or objection to a specific
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`pending claim based on specific applied references in the identified arts.
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`Example 14
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`In Example 14, the Examiner discusses issues related to a claim recitation (simultaneous and
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`sequential) in the context of two of applicants’ copending applications (i.e., the ‘571 Application and
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`Application Ser. No. 08/469,078. The Examiner’s assertions in Example 14 do not form the basis
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`for any rejection of or objection to any specific claim pending in the instant application. To the
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`extent necessary, applicants will further address the issues raised by the Examiner in Example 14 if
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`and when such issues are ever raised in the context of a rejection of or objection to a specific
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`pending claim. Additionally, applicants note that they have fully addressed issues related to the
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`Examiner’s concerns regarding “simultaneous and sequential” in their January 28, 2002 Response
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`filed in the ‘571 Application.
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`,-_.-Examples-17_-20_and_23:26-. . -_
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`Examples 17-20 and 23—26 discuss various issues related to applicants’ ability to obtain a
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`priority date based on their 1981 application and the proper legal test to be applied when analyzing
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`an applicants’ ability to obtain a priority date under § 120. None of the issues discussed in Examples
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`17-20 and 23—26 is relevant to the instant application because applicants have not asserted a 1981
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`14
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`priority date for the claims pending in the instant application. Further, applicants have addressed the
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`issues related to priority in detail in their responses filed in the ‘571 Application and Application
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`Serial No. 08/447,496
`Docket No. 5634.121
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`Ser. No. 08/487,526.
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`Example 21
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`In Example 21, the Examiner describes and compares the technology disclosed by applicants
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`in their 1981 and 1987 specifications and asserts that the technology disclosed in applicants’ two
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`specifications is “vastly different.” While it is true that the 1987 application includes many
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`enhancements and improvements, applicants maintain that the subject matter disclosed in their 1981
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`application is also disclosed in the 1987 application. Second, because applicants have not asserted a
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`1981 priority date for the claims pending in the instant application, applicants’ 1981 specification
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`and any comparison between applicants’ 1981 and 1987 specifications are not relevant to the instant
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`application. Finally, the issues raised in Example 21 have previously been addressed in the ‘571
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`Application. Applicants will continue to provide appropriate factual and legal arguments as to why
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`they are entitled to a 1981 priority date in all cases where it is relevant.
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`Example 22
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`In Example 22, the Examiner discusses a perceived difficulty in interpreting terminology in
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`applicants’ claims in light of the 1981 and 1987 specifications. More specifically, the Examiner
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`asserts that certain terminology in applicants’ claims takes on different interpretations when such
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`terminology is read on different teachings from applicants’ 198] and 1987 disclosures. The alleged
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`“problem” described in Example 22 is simply not applicable to the instant application because
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`applicants have not asserted a priority date based on their 1981 application for any claim pending in
`the instantapplication. In the instant applicationJonly the 1987 specification is used to support the
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`pending claims. Accordingly, the issues raised by the Examiner in Example 22 are not relevant to
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`the instant application. Further, applicants have fully addressed Example 22 in the ‘571 Application.
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`15
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`Serial No. 08/447,496
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`Example 28
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`In Example 28, the Examiner discusses a specific claim pending in the ‘571 Application
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`(claim 56). Specifically, the Examiner questions applicants’ written description support for the
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`recitation “interactive ultimate receiver station” previously appearing in claim 56 of the ‘571
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`Application. Applicants maintain that both the 1981 and 1987 specifications unquestionably
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`disclose “interactive receiver stations.” See, e. g., 1981 Specification col. 20, 11. 23-27, and “Local
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`Input” in Figure 6D; 1987 Specification, p. 288, 11. 1-20. The Examiner’s assertions in Example 28
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`do not form the basis for any rejection of or objection to any specific claim pending in the instant
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`application. To the extent necessary, applicants will further address the issues raised by the
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`Examiner in Example 28 if and when such issues are ever raised in the context of a rejection of or
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`objection to a specific pending claim. Finally, applicants note that they have already fully addressed
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`Example 28 in the ‘571 Application.
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`Example 29
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`Example 29 discusses limitations directed to combining images (e.g., where a “portion” of an
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`image is “replaced” by a portion of another image) which are allegedly present in claims in
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`applicants’ ‘571 Application. Applicants maintain that applicants’ specificat