IN THE UNITED STATES PATENT AND'TRADEMARK OFFICE
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`Serial No. 08/470,571
`Docket No. 05634.0261
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`PATENT
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`Applicants
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`Serial 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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`John C. HARVEY and
`James W. Cuddihy
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`08/470,571
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`June 6, 1995
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`SIGNAL PROCESSING APPARATUS AND METHODS
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`2614
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`HARVEY, David E.
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`Mail Stop AF
`Commissioner for Patents
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`'
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`J
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`PO. Box 1450
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`Alexandria, VA 22313
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`APPEAL BRIEF
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`In accordance with 37 C.F.R. § 41.37, appellants submit this appeal brief in the above
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`captioned application. Appellants appeal the final rejection of claims 56-58, 60—63, 65—74, 80,
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`81, 84, 85, 87, 89—91, 93—95, 98, 100, 102, 103, 106—109, and 183-197 set forth in the Office
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`action mailed April 28, 2004 (the “Final Office Action"). A Notice of Appeal was filed in
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`accordance with 37 C.F.R. § 41.31 on September 20, 2004. Attached hereto is a check for
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`$1520.00 covering the fee set forth in 37 C.F.R. 41.20(b)(2) and the three—month extension fee
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`under 37 C.F.R. § 1.136. Any additional fees that may be due but are not attached may be
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`charged to Deposit Account No. 06-1075.
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`This application must be treated as special by the Office. This application has been
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`pending for over nine years (having been filed on June 6, 1995) and, by claim of priority to
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`Application No. 06/317,519 filed November 3, 1981, has an effective pendency of more than 23
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`years. The Office treats as special “[a]pplications pending more than 5 years, including those
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`which, by relation to a prior United States application, have an effective pendency of more than 5
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`years.” M.P.E.P. §§ 707.02 and 708.01(I). Accordingly, this application should be advanced out
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`of turn and acted upon expediently.
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`02/09/2005 305mm 00000071 00470571
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`_
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`01 FC:1402
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`500.0000
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`Zynga EXhlblt 1004
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`.
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`.
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`BEST AVAIMBEE GOP-Y
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`.\
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`Serial No. 08/470,571
`Docket No. 05634.0261
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`Real Party In Interest
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`The real party in interest is Personalized Media Communications, LLC (“PMC”) having a
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`place of business at 708 Third Ave., New York, New York, 10017.
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`Related Appeals And Interferences
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`The application is a continuation of Ser. No. 08/113,329, filed August 30, 1993, which
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`remains pending and is a continuation of Ser. No. 56,501, filed May 3, 1993, now Pat. No.
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`5,335,277, which is a continuation of Ser. No. 849,226, filed March 10, 1992, now Pat. No.
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`5,233,654, which is a continuation of Ser. No. 588,126, filed September 25, 1990, now Pat. No.
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`5,109,414, which is a continuation of Ser. No. 96,096, filed September 11, 1987, now Pat No.
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`4,965,825, which is a continuation-in-part of Ser. No. 829,531, filed February 14, 1986, now Pat.
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`No. 4,704,725, which is a continuation of Ser. No. 317,510, filed November 3, 1981, now Pat.
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`No. 4,694,490. Additionally, US. Patent 5,887,243 has issued from an application with an
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`identical disclosure to the instant application and a claim of priority to the above chain of
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`applications. These applications and patents have been involved in the following appeals and
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`judicial proceedings.
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`Pat. Nos. 4,965,825; 5,109,414 and 5,335,277 were asserted in the US. District Court,
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`Eastern District of Virginia in the case styled Personalized Mass Media Corp. v. The Weather
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`Channel, Inc. et al., Doc. No. 2:950v242. The case was settled prior to any substantive decision
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`by the Court, although one procedural decision was published at 899 F.Supp. 239 (E.D.Va.
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`1995).
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`Pat. No. 5,335,277 was involved in the matter of Certain Digital Satellite System (DDS)
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`Receivers and Components Thereof before the United States International Trade Commission
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`(“Commission”), Investigation No. 337-TA-392. The Administrative Law Judge (“ALJ”) issued
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`an “Initial Determination Granting Motion for Summary Determination of Invalidity of Claim 35
`of the ‘277 Patent” on May 16, 1997. This determination was appealed to the US. Court of
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`Appeals for the Federal Circuit (“Federal Circuit”), which affirmed the Commission decision in a
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`Serial No. 08/470,571
`Docket No. 05634.0261
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`decision decided January 7, 1999. The ALJ issued “Initial and Recommended Determinations”
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`on October 31, 1997. The Commission adopted certain of the ALJ’s findings and took no
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`position on certain other issues in a “Notice Of Final Commission Determination Of No
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`Violation Of Section 337 Of The Tariff Act Of 1930,” dated December 4, 1997. This
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`determination was appealed to the Federal Circuit, which affirmed—in—part, reversed-in—part,
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`vacated—in-part, and remanded in a decision decided November 24, 1998 published at 161 F.3d
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`696, 48 U.S.P.Q.2d 1880. On remand, the complainant moved to terminate the investigation.
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`The Commission issued a “Notice Of Commission Decision To Terminate The Investigation
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`And To Vacate Portions Of The Initial Determination” on May 13, 1999.
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`Pat. Nos. 4,965,825; 5,109,414 and 5,335,277 were asserted in the U.S. District Court,
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`Northern District of California in the case styled Personalized Media Communications, LLC v.
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`Thomson Consumer Electronics et al., Doc. No. C-96 20957 SW (EAI). The case was stayed
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`during the Commission proceedings and was thereafter voluntarily dismissed by the plaintiffs.
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`The Court issued no substantive decisions.
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`Each of the issued patents with the exception of Pat. No. 4,704,725 is also asserted in the
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`US. District Court, District of Delaware in the case styled Pegasus Development Corp. v.
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`DIRECTV Inc., Doc. No. CA 00-1020 (“Delaware Action”). Special Master Robert L. Harmon
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`has issued a “Report And Recommendation Of Special Master Regarding Claim Construction.”
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`The Court has taken no further action in this case as it has been stayed pending the
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`reexamination proceedings discussed below.
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`Each of the issued patents is asserted in a suit pending in the US. District Court,
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`Northern District of Georgia in the case styled Personalized Media Communications, LLC v.
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`Scientific-Atlanta, Inc. et al., Doc. No. 1:02—CV—824 (CAP) (“Atlanta Action”). This suit is
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`proceeding, as it has not been stayed pending the reexamination proceedings.
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`The Defendants in the Delaware Action and the Atlanta Action have submitted requests
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`for reexamination for each of the issued patents. Each of the reexamination requests have been
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`granted. The pending reexamination proceedings are as follows:
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`

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`Serial No. 08/470,571
`Docket No. 056340261
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`Pat. No. 4,694,490
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`Control No. 90/006,800,
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`Pat. No. 4,704,725
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`Control Nos. 90/006,697 and 90/006,841,
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`Pat. No. 4,965,825
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`Control No. 90/006,536,
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`Pat. No. 5,109,414
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`Control No. 90/006,838,
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`Pat. No. 5,233,654
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`Control Nos. 90/006,606, 90/006,703 and 90/006,839,
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`Pat. No. 5,335,277
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`Control Nos. 90/006,563 and 90/006,698, and
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`Pat. No. 5,887,243
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`Control No. 90/006,688.
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`The Office has not yet issued a substantive action in any of these proceedings.
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`In pending Application No. 08/113,329 to which this application claims priority, an
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`appeal was noticed on August 20, 1996, and briefed September 13, 1996. Prosecution was
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`reopened without consideration and the disputed rejection withdrawn in an Office action mailed
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`October 10, 1997.
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`An appeal was noticed on October 7, 2004, in copending Application No. 08/487,526,
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`which includes an identical disclosure to the instant application and a claim of priority to the
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`same chain of applications set forth above.
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`Status Of Claims
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`Claims 56-58, 60-63, 65-74, 80, 81, 84, 85, 87, 89—91, 93-95, 98, 100, 102, 103, 106-109,
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`and 183-197 are pending and stand rejected. The rejections of each of these claims are appealed.
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`Claims 1-55, 59, 64, 75—79, 82, 83, 86, 88, 92, 96, 97, 99, 101, 104, 105, and 110-182 have been
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`cancelled.
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`Status Of Amendments
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`No amendments to the claims have been entered or proposed subsequent to final
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`rejection.
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`Summary Of The Invention
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`The claims are generally directed to telecommunications methods in which an image
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`generated locally at a receiver station is presented with images transmitted to the receiver station.
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`Serial No. 08/470,571
`Docket No. 05634.0261
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`The locally generated images are based on user specific subscriber data, thereby permitting a
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`broadcast to be personalized for a particular user. The initial embodiment described in the
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`description of the preferred embodiments (Spec. pp. 19—28) provides general support for these
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`claims. In this embodiment, a television Viewer watching the well-known program on stock
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`market investing, “Wall Street Week,” sees a presentation including general graphics regarding
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`generic market performance, e.g., performance of the Dow Jones Industrial Average, combined
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`with locally generated images regarding the performance of the specific user’s portfolio. Claims
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`56, 80, 84, 93 and 187 are the independent claims that remain pending and are involved in this
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`appeal. A concise explanation of the subject matter of each of these claims is set forth below.
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`1.
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`Claim 56
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`Claim 56 is directed to a method for presenting a video presentation at a video apparatus,
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`where the video presentation includes a remotely originated image and a locally generated
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`image. The remotely originated image comes from a remote video source. The locally
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`generated image is generated by processing remotely originated data received from a remote data
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`source and user specific data. The remotely originated data is received based on a step of
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`contacting the remote data source. The user specific data received at the video apparatus is
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`specific to a user of the video apparatus. The remotely originated image and the locally
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`generated image are displayed simultaneously.
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`The specification describes, for example, a method for presenting the “Wall Street Week”
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`television program including a studio-generated graphic of generic market performance and a
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`locally generated image of the performance of the user’s portfolio. (Spec. p. 25,1. 23 to p. 26, 1.
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`12.) The studio-generated image is transmitted from the television station, which in turn receives
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`the image from a remote television studio. (Spec. p. 20, 11. 21-29.) The locally generated image
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`is generated by processing stock price data received from a remote data service, and a user’s
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`portfolio data. (Spec. p. 24, l. 22 to p. 25, l. 8.) The stock price data is received based on
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`telephoning a remote data service. (Spec. p. 449, 11. 26—35. The section of the specification
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`Serial No. 08/470,571
`Docket No. 056340261
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`subtitled “Controlling Computer—Based Combined Media Operations” at pp. 447—457 addresses
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`details of systematic inputting and maintaining of up—to—date user specific data at each user
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`station in the context of the initially described example regarding the “Wall Street Week”
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`program.) The user’s portfolio data is received by a microprocessor and contains the information
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`on the specific portfolio of financial instruments owned by the user. (Spec. p. 21, 11. 5—14.) The
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`locally generated image and the studio generated graphic are simultaneously displayed. (Spec. p.
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`26,11. 4-11.)
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`2.
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`Claim 80
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`Claim 80 is directed to a method of controlling a video presentation from an “origination
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`transmitter station” (“OTS”) that transmits at least one control signal and at least one instruct
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`signal to control operations at a downstream “intermediate transmitter station” (“ITS”) and a
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`further downstream receiver station. The OTS transmits a signal having video and an instruct
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`signal that controls operations at the receiver station. The OTS also transmits a control signal
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`that controls operations at the ITS. The control signal is operative at the ITS to control the
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`communication of the video and the instruct signal at the ITS. The instruct signal is operative at
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`the receiver station to generate or output locally generated video for display with the remotely
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`originated video at the receiver station.
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`The specification describes, for example, a method of controlling the presentation of the
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`“Wall Street Week” television program from a program originating studio (Spec. p. 25, 1. 33 to p.
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`26, 1. 1) that transmits program identification signals that control operations at an ITS (Spec. p.
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`328, 11. 8-13, the section of the specification subtitled “Automating Intermediate Transmission
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`Stations” at pp. 324-340 describes the control of an ITS) and an instruction signal that controls
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`the user’s receiver station (Spec. p. 25, 1. 33 to p. 26, l. 1). The program originating studio
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`transmits a television signal, including video, and the instruction signal that controls operations
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`at the user’s receiver station. (Spec. p. 25, l. 23 to p. 26, l. 12.) The program originating studio
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`also transmits the program identification signals that are used to control operations at the ITS.
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`Serial No. 08/470,571
`Docket No. 056340261
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`(Spec. p. 328, 11. 8—13.) The program identification signals are operative at the ITS to control the
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`transmission of the associated television programming, including the video and instruction
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`signals embedded therein. (Spec. p. 328, 11. 8—13.) The instruction signals are operative at the
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`user’s receiver station to generate and output a locally generated graphic of the user’s stock
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`performance (Spec. p. 25, 11. 1—6, p. 26, 11. 4-8) for display with the television video at the user’s
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`receiver station (Spec. p. 26, 11. 8-11).
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`3.
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`Claim 84
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`Claim 84 is directed to a method for a transmitter station to transmit a plurality of discrete
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`signals that are organized at a receiver station into signals that have specified effects at the
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`receiver station.
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`In claim 84, video and two discrete signals are received and transmitted by the
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`transmitter station. The discrete signals include information for organizing into an organized
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`signal. The organized signal is effective at the receiver station to generate or output a locally
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`generated image coordinated with remotely originated video. The locally generated image is
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`based on user specific data. The user specific data is stored at the receiver station prior to
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`providing the organized signal and is based on information supplied by a user of the receiver
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`station.
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`The specification describes, for example, a transmitter station (Spec. p. 324, 1. 7 to p. 325,
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`l. 9) for transmitting a plurality of discrete signals (Spec. p. 21, l. 1 to p. 22, l. 8) that are
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`organized at a receiver station (Spec. p. 30, 11. 7-9) into instruction signals that have specified
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`effects at users’ receiver stations. A television program transmission, including video and
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`embedded signals, is received and transmitted by the transmitter station. (Spec. p. 20, l. 21 to p.
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`21, 1. 4.) Signal words (Spec. p. 14, l. 22 to p. 15, l. 6) embedded in the television transmission
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`are organized into instruction signals. (Spec. p. 30, 11. 7-9; p. 69, 11. 10-12; and p. 74, 11. 10-13.)
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`Instruction signals are effective at the receiver station to generate (Spec. p. 24, 11. 22—27) and
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`output a locally generated image with the transmitted television video (Spec. p. 25, l. 33 to p. 26,
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`l. 11). The locally generated image is based on the portfolio of financial instruments owned by
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`Serial No. 08/470,571
`Docket No. 056340261
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`the user. (Spec. p. 21, 11. 5-14.) The portfolio data is stored at the receiver station prior to
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`providing the organized instruction signals and based on information supplied by a user of the
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`receiver station. (Spec. p. 21, 11. 5-14.)
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`4.
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`Claim 93
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`Claim 93 is directed to a method for a receiver station to receive discrete signals that are
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`organized into a complete instruction with a specified effect. In claim 93, the receiver station
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`receives, detects, and passes discrete signals found in an information transmission to a processor.
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`The receiver station organizes the first discrete signal with the second discrete signal into an
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`organized signal. The organized signal is effective to generate an image by processing user
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`specific subscriber data. The user specific data is stored at the receiver station prior to the
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`organizing of the organized signal and is based on information supplied by a user of the receiver
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`station. The result is an outputted presentation of a video image and a coordinated display using
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`the generated image and the video image.
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`The specification describes, for example, a receiver station that receives (Spec. p. 20, 11.
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`25—26), detects (Spec. p. 35,11. 4-16), and passes (Spec. p. 29, 1. 30 to p. 30, l. 6) discrete signals
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`(Spec. p. 14,1. 22 to p. 15, 1. 6) found in a television program transmission to a
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`buffer/comparator (Spec. p. 29, 1. 30 to p. 30, 1. 6). The receiver station organizes the discrete
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`signals into instructions. (Spec. p. 30, 11. 7-9.) In response to one instruction, a graphic of a
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`user’s stock portfolio performance is generated by processing the user’s portfolio data. (Spec. p.
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`24, 11. 22—27.) The user’s portfolio data is stored at the receiver station prior to the organization
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`of the instruction and is based on information supplied by the user of the receiver station. (Spec.
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`p. 21, 11. 5-14.) The result is an outputted presentation of the video of the television program and
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`a coordinated display using the graphic of the user’s portfolio performance and a studio
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`generated graphic of generic market performance. (Spec. p. 25, 1. 33 to p. 26, l. 11.)
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`

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`Serial No. 08/470,571
`Docket No. 056340261
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`5.
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`Claim 187
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`Claim 187, similar to claim 93, is directed to a method for a receiver station to receive
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`discrete signals that are organized into a complete instruction with a specified effect. In claim
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`187, the receiver station receives, detects, and passes discrete signals found in an information
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`transmission to a processor. The receiver station organizes the first discrete signal with the
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`second discrete signal into an organized signal. An image is generated by processing user
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`specific subscriber data. The user specific data is stored at the receiver station prior to the
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`organizing of the organized signal and is based on information supplied by a user of the receiver
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`station. Based on the organized signal, a presentation is output including a video image and a
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`coordinated display using the generated image and the video image.
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`The specification describes, for example, a receiver station that receives (Spec. p. 20, 11.
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`25—26), detects (Spec. p. 35, 11. 4-16), and passes (Spec. p. 29, 1. 30 to p. 30, 1. 6) discrete signals
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`(Spec. p. 14, l. 22 to p. 15, 1. 6) found in a television program transmission to a
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`buffer/comparator (Spec. p. 29,1. 30 to p. 30, l. 6). The receiver station organizes the discrete
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`signals into instructions. (Spec. p. 30, 11. 7-9.) A graphic of a user’s stock portfolio performance
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`is generated by processing the user’s portfolio data. (Spec. p. 24, 11. 22—27.) The user’s portfolio
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`data is stored at the receiver station prior to the organization of the instruction and is based on
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`information supplied by the user of the receiver station. (Spec. p. 21, 11. 5—14.) Based on one of
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`the instructions, a presentation is output including video of the television. program and a
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`coordinated display using the graphic of the user’s portfolio performance and a studio generated
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`graphic of generic market performance. (Spec. p. 25, 1. 33 to p. 26, 1. 11.)
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`Grounds Of Rejection To Be Reviewed On Appeal
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`Appellants find error in each of the outstanding rejections and requests that each ground
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`of rejection in the Final Office Action be reviewed. The rejections presented in the Final Office
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`Action are as follows:
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`

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`Serial No. 08/470,571
`Docket No. 05634.0261
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`Claims 56, 80, and 84 (and all claims depending therefrom) stand rejected under 35
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`U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which appellants regard as the invention.
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`Claims 56—58, 60-63, 65-72, 74, 93-95, 100, 102, 103, 106-109, 187—189, and 191-197
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`stand rejected under 35 U.S.C. § 102(b) as being anticipated by Japanese published application
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`no. 55-028691.
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`Claim 73 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Japanese
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`published application no. 55-028691 in view of U.S. Patent 2,757,226.
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`Claims 56-58, 60-63, 65, 66, 73, 89-91, 93—95, 98, 100, 102, 103, 106-109, and 187—197
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`stand rejected under 35 U.S.C. § 103(a) as being unpatentable over “Telesoftware - Value Added
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`Teletext” by J. Hedger et al. in view of “The Use of MicroCobol for Telesoftware” by E. C.
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`Sedman and further in view of either British Patent 1 405 141 or US. Patent 4,213,698.
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`Claims 56—58, 60-63, 65—74, and 89—91 stand rejected under 35 U.S.C. § 103(a) as being
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`unpatentable over US. Patent 4,253,157 in view of US. Patent 4,213,698.
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`Claims 93—95, 98, 100, 103, 106—108, 187, 195, and 196 stand rejected under 35 U.S.C.
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`§ 103(a) as being unpatentable over British Patent} 556 366 in view of US. Patent 4,213,698.
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`Claims 93-95, 98, 100, 103, 106—108, 187—191, and 193-196 stand rejected under 35
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`U.S.C. § 103(a) as being unpatentable over “Teletext Receiver LS1 Data Acquisition and
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`Control” by G.O. Crowther et al. in view of US. Patent 4,213,698.
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`Claims 80, 81, 84, 85, 87, 183—191, and 193-196 stand rejected under 35 U.S.C. § 103(a)
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`as being unpatentable over British Patent 1 370 535 in View of US. Patent 4,290,062.
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`Claims 188-191, 193, and 194 stand rejected under 35 U.S.C. § 103(a) as being
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`unpatentable over British Patent 1 556 366 in view of US. Patent 4,213,698 and further in view
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`of “Teletext Receiver LSI Data Acquisition and Control” by 6.0. Crowther et al.
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`Claims 102, 109, 192, and 197 stand rejected under 35 U.S.C. § 103(a) as being
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`unpatentable over British Patent 1 556 366 in view of US. Patent 4,213,698 and further in view
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`of Japanese published application no. 55—028691.
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`10
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`

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`Serial No. 08/470,571
`Docket No. 05634026]
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`Claims 80 and 81 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
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`German Patent 23 56 969 in view of British Patent 959,274 and further in view of “CEEFAX -
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`The Generation, Distribution and Transmission of a National Teletext Service” by J. P.
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`Chambers.
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`Claim 93 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
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`“Development & Applications of the Antiope-Didon Technology” by J. Guillermin in View of
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`“Antiope Teletext Captioning” by Claude Sechet and further in View of the “CBS/CCETT North
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`American Broadcast Teletext Specification (Extended Antiope).”
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`Claims 84, 94, 95, 98, 100, 107, 108, and 187 stand rejected under 35 U.S.C. § 103(a) as
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`being unpatentable over “Antiope Teletext Captioning” by Claude Sechet in view of the
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`“CBS/CCETT North American Broadcast Teletext Specification (Extended Antiope).”
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`Claim 80 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over “The
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`Automation of Small Television Stations” by George Young et al. in View of “Microprocessor
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`for CATV Systems” by ED. Tunmann et al. and further in view of US Patent 4,213,698.
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`Claim 80 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over “The
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`Automation of Small Television Stations” by George Young et al. in view of “Microprocessor
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`for CATV Systems” by ED. Tunmann et al. and further in view of the “CBS/CCETT North
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`American Broadcast Teletext Specification (Extended Antiope).”
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`Claims 80 and 81 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
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`“The Automation of Small Television Stations” by George Young et al. in view of the
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`“CBS/CCETT North American Broadcast Teletext Specification (Extended Antiope).”
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`Claims 84, 85, 184, and 185 stand rejected under 35 U.S.C. § 103(a) as being
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`unpatentable over the “CBS/CCETT North American Broadcast Teletext Specification
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`(Extended Antiope).”
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`Claims 56-58, 60-63, 65-74, 89-91, 93—95, 98, 100, 102, and 187—197 stand rejected
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`under the judicially created doctrine of obviousness-type double patenting as being unpatentable
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`over claims 9-13 of US. Patent No. 4,694,490.
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`1]
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`

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`Serial No. 08/470,571
`Docket No. 056340261
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`Argument
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`1.
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`Introduction
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`This application has a long history. Filed June 6, 1995, it claims priority to a chain of
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`seven applications, six of which have issued as letters patent and one of which remains pending.
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`There have been ten actions mailed by the Office regarding this application (the finality of two
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`Office actions have been withdrawn under 37 C.F.R. § 129(a)). Appellants have responded to
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`each action resulting at each turn in a new set of rejections. The majority of the rejections in the
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`Final Office Action were applied for the first time in the Final Office Action. Appellants and the
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`Office have differed over interpretations of numerous claim limitations, prior art references, and
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`provisions of the patent law.
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`The lengthy Final Office Action reflects the contentious prosecution history. However,
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`many of the issues in dispute between the Examiner and appellants have been rendered moot or
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`are not relevant to the rejections presented in the Final Office Action. Appellants submit that
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`many sections of the Final Office Action and its seven appendices address the Examiner’s
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`positions on claim terms, prior art, and legal principles that do not bear on the actual claim
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`rejections presented in this application.
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`The Final Office Action introduces numerous new grounds of rejection. In asserting the
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`few grounds of rejection maintained from the previous Office action, the Final Office Action
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`does not address appellants’ arguments submitted in response to the previous Office action.
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`Appellants filed a response to the Final Office Action on September 20, 2004 (“September 2004
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`Response”), pointing out the errors in all grounds of rejection, including the new grounds of
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`rejection. The Office mailed an extensive advisory action on November 24, 2004 (“Advisory
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`Action”). The Office mailed a revised advisory action on December 20, 2004 (“Revised
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`Advisory Action”), by which the Examiner withdrew and replaced the arguments set forth in Part
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`1 of Section 1 of the Advisory Action.
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`12
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`

`

`Serial No. 08/470,571
`Docket No. 05634.0261
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`2.
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`The Claims Comply With The Requirements Of The Second
`Paragraph Of 35 U.S.C. § 112
`
`A.
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`Term “Locally Generate” Is Definite
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`In Section E2 (1) of the Final Office Action, the Examiner rejects claims 56, 80, 84, and
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`all claims depending therefrom under 35 U.S.C. § 112, second paragraph, as being indefinite.
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`Specifically, the Examiner rejects appellants’ use of the term “locally generated.” At page 59 of
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`the Final Office Action the Examiner states: “[A]pplicants’ insistence that the recited ‘locally
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`generated’ image terminology should be read in some ‘narrowed’ manner that overcomes the
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`teletext ‘prior art’ continues to render the recited ‘locally generated’ image terminology of the
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`claims indefinite.” The Examiner does not address this rejection or appellants’ response to this
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`rejection in the Advisory Action. Accordingly, it is not clear whether this rejection has been
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`withdrawn. Appellants respectfully request clarification regarding the status of this rejection.
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`Title 35 U.S.C. § 112, second paragraph states: “The specification shall conclude with
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`one or more claims particularly pointing out and distinctly claiming the subject matter which the
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`applicant regards as his invention.” “The essential inquiry pertaining to this requirement is
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`whether the claims set out and circumscribe a particular subject matter with a reasonable degree
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`of clarity and particularity.” M.P.E.P. § 2173.02 (8‘h Ed. Rev. 2 2004). “In rejecting a claim
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`under the second paragraph of 35 U.S.C. 112, it is incumbent on the examiner to establish that
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`one of ordinary skill in the pertinent art, when reading the claims in light of the supporting
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`specification, would not have been able to ascertain with a reasonable degree of precision and
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`particularity the particular area set out and circumscribed by the claims.” Ex Parte Wu, 10
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`U.S.P.Q.2d 2031, 2033 (Bd. Pat. App. & Inter. 1989).
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`The Examiner has not alleged, let alone established, that the claim term “locally
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`generated” precludes one of ordinary skill in the art from ascertaining with a reasonable degree
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`of precision and particularity the claimed subject matter. The Examiner is required to give the
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`claim terms their broadest reasonable interpretation during examination. See In Re American
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`Acad. OfScience Tech Ctr., 367 F.3d 1359, 70 U.S.P.Q.2d 1827 (Fed. Cir. 2004). M.P.E.P.
`
`l3
`
`

`

`Serial No. 08/470,571
`Docket No. 056340261
`
`§ 2111 outlines the procedure to be followed to interpret claim terms. Following this procedure,
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`appellants have urged an interpretation of “locally generated” that is based on the dictionary
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`definition of “generate,” that is consistent with the specification, and that is consistent with the
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`position that has been taken by appellants during the course of prosecution of the instant
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`application (see Section 3.B below). There has been no attempt by appellants to improperly
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`“narrow” the term “locally generated” as suggested by the Examiner. Appellants’ interpretation
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`of the term “locally generated” -- i.e., “brought into existence at a particular location” —— is
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`justified by the intrinsic and extrinsic evidence. In contrast, the Examiner has not even
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`attempted to follow the procedure set forth in M.P.E.P. § 2111 to arrive at proposed
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`interpretation of this disputed claim term. Appellants therefore respectfully submit that the term
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`“locally generated” is clear and definite. The rejection under 35 U.S.C. § 112, second paragraph
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`based on the term “locally generated” should therefore be‘reversed.
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`B.
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`Functional Descriptions Are Not Indefinite
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`In Sections E2 (H) and (III) of the Final Office Action, the Examiner rejects claims 80,
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`84, and the claims dependent therefrom as being “indefinite and confusing” because it is not
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`clear whether certain functional descriptions set forth in the claims are part of the recited method
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`or whether the functional descriptions should be treated merely as descriptions of intended use.
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`Appellants note that the Examiner asserted this rejection with respect to claims 80 and 84
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`in the Office action mailed July 17, 2002 (“Prior Office Action”) and appellants fully responded
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`in the Amendment And Request For Reconsideration filed January 9, 2003 (“January 2003
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`Response”) at page 85. The Examiner does not acknowledge appellants’ response. Appellants
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`again presented their position at pages 18-19 of the September 2004 Response. The Advisory
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`Action does not address the § 112, second paragraph, rejections. Appellants respectfully request
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`clarification regarding whether the Examiner has withdrawn this rejection.
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`In the Final Office Action, the Examiner requires clarification regarding whether the
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`“functional descriptions” set forth in the claims are part of the recited method or whether the
`
`14
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`

`

`Serial No. 08/470571
`Docket No. 056340261
`
`“functional descriptions” should be treated merely as descriptions of intended use. This is not a
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`proper rejection. Claims 80 and 84 pertain to the transmission of certain specified signals. The
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`language to which the Examiner objects clearly and unambiguously define what the specified
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`signals are. For example, in claim 80 a signal is transmitted that includes an instruct signal
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`which is operative at a receiver station to instruct the receiver station to generate or output a
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`locally generated portion of a video presentation. Also in claim 80, a control signal is
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`transmitted that is effective at a remote intermediate transmitter station to control communication
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`of video and the instruct signal to the receiver station. Similarly, in claim 84, first and second
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`discrete signals are received, transferred to a transmitter, and transmitted. Claim 84 sets forth
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`that information included in these discrete signals is for organizing to provide an organized
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`signal. The organized signal instructs a receiver station to generate or output a locally generated
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`image for display coordinated with video. Thus, while the functional descriptions are not steps
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`of the methods recited in claims 80 and 84, the descriptions properly limit the claim because they
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`specify with particularity what is being transmitted. Appellants note that “[t]here is nothing
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`inherently wrong with defining some part of an invention in functional terms. Functional
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`language does not, in and of itself, render a claim improper.” M.P.E.P. § 2173.05(g) (8th Ed.
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`Rev. 2, 2004) (citing In re Swinehart, 439 F.2d 210, 169 U.S.P.Q. 226 (C.C.P.A. 1971)).
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`The Examiner, for the above reasons, has failed to set forth a proper rejection under the
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`second paragraph of § 112. Appellants respectfully request that the rejections under 35 U.S.C.
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`§ 112 be reversed.
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`3.
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`Issues Of Claim Interpretation
`
`Before turning to the specific claim rejections under 35