UNITED STAlES P A lENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.o. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
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`96/000,013
`
`03/1112013
`
`5,930,4444
`
`DRG]OOO1
`
`6826
`
`7590
`88635
`05109/2013
`Los Angeles Patent Group, LLP
`8200 Willshire Boulevard
`Suite 200
`Beverly Hills, CA 90211
`
`EXAMINER
`
`PATEL, HETUL B
`
`ART UNIT
`
`PAPER NUMBER
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`3992
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`MAIL DATE
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`DELIVERY MODE
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`05/09/2013
`
`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
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`Unified Patents Exhibit 1011, p. 1
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`

`

`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 1
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`Reasons for Substantial New Question of Patentability Determination
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`1. Review of Facts
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`l.
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`A Supplemental Examination Request was filed on March 8, 2013 and assigned control
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`number 96/000,0l3 ("the Request").
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`2.
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`On April 9, 20l3, the Office mailed a "Notice of Supplemental Examination Request
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`Filing Date" indicating that the Request was granted a filing date of March 11, 20 l3 since the
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`appropriate fees were not paid until March 11, 20l3.
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`3.
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`The Request requests supplemental examination of claims 1 and 14 of Camhi et aI., U.S.
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`Patent No 5,930,444 ("the '444 patent").
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`4.
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`Supplemental examination was not requested or considered for claims 2-l3 of the '444
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`patent.
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`II. Pertinent History of the '444 Patent
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`5.
`
`The '444 patent issued on July 27, 1999, from U.S. Patent Application No. 08/234,727,
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`filed April 28, 1994 ("the '727 application"). As noted on the front page of the '444 patent, the
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`'444 patent is a continuation of application no. 07/872,435, filed on April 23, 1992, which was
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`abandoned on June 14, 1994. Certificates of Correction were issued on November 27, 2012,
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`January 8, 2013 and March 5, 20l3, to correct minor, typographical errors.
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`6.
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`During the examination of the '727 application, the Office issued at least three (3) non-
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`final office actions. The last non-final office action issued on November 27, 1996 ("1996 Non-
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`Final Office Action"). In response to the 1996 Non-Final Office Action, a telephonic interview
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`was conducted between Applicants' representative Ike Aruti and Supervisory Patent Examiner
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`Unified Patents Exhibit 1011, p. 2
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`

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`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 2
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`Jim Dwyer on January 15, 1997 ("January 1997 Telephonic Interview"). The January 1997
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`Telephonic Interview resulted in creation of the "Examiner Interview Summary Record"
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`("January 1997 Interview Summary"). The Examiner notes however that the January 1997
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`Interview Summary was not mailed by the Office until April 30, 1997.
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`7.
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`A second telephonic interview occurred on April 30, 1997 between the same two
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`participants, i.e. between Applicants' representative Ike Aruti and Supervisory Patent Examiner
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`Jim Dwyer ("April 1997 Interview"). The April 1997 Interview resulted in an "Interview
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`Summary" mailed by the Office on April 30, 1997 ("April 1997 Interview Summary").
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`8.
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`In addition to vacating the 1996 Non-Final Office Action, the April 1997 Interview
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`Summary added that "[t]he playback key and its function in the claims was not entirely
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`addressed by the 103 rejection nor was applicant's arguments."
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`January 1997 Interview
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`Summary.
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`9.
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`In response to the January 1997 Interview Summary and the April 1997 Interview
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`Summary, Applicants filed a response on October 29, 1997 titled "SUPPLEMENTAL
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`AMENDMENT" ("1997 Response"). The 1997 Response contained, inter alia, "REMARKS"
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`("1997 Remarks") and claim amendments (i.e. amendments to existing independent claims l3
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`and 25 and added new claim 26) ("1997 Claim Amendments"). At the time of the 1997
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`Response (and thereafter as well), the only independent claims in the '727 application were
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`claims l3 and 25.
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`10.
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`In the 1997 Remarks, Applicants clarified the discussions made in both the January 1997
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`Interview Summary and the April 1997 Interview Summary. In particular, Applicants stated:
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`The claims in the instant application have been modified according to the
`instructions and recommendations of the Examiner, and is being filed before
`
`Unified Patents Exhibit 1011, p. 3
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`

`

`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 3
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`November 5, 1997 (approx.) as requested by the Examiner, so as to obviate the
`need for Examiner's Amendment. Applicant greatly appreciates the assistance of
`the Examiner in the resolution of the outstanding issues in this case. The addition
`of "and solely" to the base apparatus and method claims more clearly point out
`and distinctly claim the function of the playback key and associated control
`circuitry by which the instant invention achieves utility heretofore unmatched in
`the field through automatic indexing of the playback function so as to enhance the
`seamless recovery effect.
`
`1997 Remarks, page 2.
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`11.
`
`The Examiner notes that MPEP §7l3.04 states in part:
`
`It should be noted, however, that the Interview Summary Form will not be
`considered a complete and proper recordation of the interview unless it includes,
`or is supplemented by the applicant, or the examiner to include, all of the
`applicable items required below concerning the substance of the interview.
`[Emphasis added.]
`
`MPEP §7l3.04, Rev 2, July 1996.
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`12.
`
`Based upon a review of the January 1997 Interview Summary, April 1997 Interview
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`Summary, the 1997 Remarks, and in accordance with MPEP 7l3.04 (noted above), the Examiner
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`finds that the 1997 Remarks contain, at least in part, Applicants' record of the substance of the
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`January 1997 Telephonic Interview and the April 1997 Interview.
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`11.
`
`Based upon a review of the entire prosecution history of the '444 patent (albeit with
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`emphasis on April 1997 Interview Summary and the 1997 Remarks), the Examiner finds that
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`Applicants' 1997 Claim Amendments (i.e. the addition of "and solely" to independent claims l3
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`and 25) were made to indicate the precise function of the playback key.
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`In particular, the
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`Examiner finds that the 1997 Claim Amendments were made to indicate that the playback key
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`(and associated control circuitry) would alone initiate the automatic indexing of the playback
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`function so as to enhance the seamless recovery effect.
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`Unified Patents Exhibit 1011, p. 4
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`

`

`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 4
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`l3.
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`In response to the 1997 Response, the Office mailed a Notice of Allowance on February
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`1, 1999 ("Notice of Allowance"). The Notice of Allowance indicated that the allowed claims
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`were l3-26 with the only independent claims as l3 and 25. The '444 patent issued with 14
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`claims with claims 1 and 14 being the only independent claims.
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`14.
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`Based upon a review of the entire prosecution history of the '444 patent (albeit with
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`emphasis on Notice of Allowance), the Examiner finds that the prosecution history of the '444
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`patent does not expressly indicate an explicit rationale for allowance. l
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`15.
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`Because the Examiner finds that the prosecution history of the '444 patent does not
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`expressly indicate an explicit rationale for allowance and in light of the on January 1997
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`Interview Summary, April 1997 Interview Summary, 1997 Remarks, and the 1997 Claim
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`Amendments, the Examiner concludes that independent claims 1 and 14 of the '444 patent were
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`allowed because none of the references of record taught or suggested a control circuitry being
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`configured so that substantially simultaneous recording and playback of program information is
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`achieved when said record key is first actuated to begin a recording by initiating storage of the
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`broadcast program information in said memory unit, and said playback key is subsequently and
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`solely actuated to begin time delay playback of the recording from the beginning thereof by
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`initiating retrieval of the stored program information in said memory unit, with the interval of the
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`time delay being the same as the time elapsed between the actuation of said record key and the
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`subsequent actuation of said playback key.
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`1 A "rationale for allowance" may include an express "Reasons for Allowance" as set forth in MPEP §1302.14 and
`indicated in box 8 on form PTOL-37, i.e., the "Notice of Allowability" form, as an "Examiner's Statement of
`Reasons for Allowances;" or perhaps a simple discussion of why particular c1aim(s) are allowed over the prior art.
`While a 'Reasons for Allowance' is typically found in the Notice of Allowability, a 'rationale for allowance' may be
`found in any pertinent office action, board decision, court decision, or somehow evident from the record as a whole.
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`Unified Patents Exhibit 1011, p. 5
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`

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`Control Number: 96/000,0l3
`Art Unit: 3992
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`Page 5
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`III. Items of Information
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`16.
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`The Request asks for supplemental examination based on the following nine (9) items of
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`information:
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`l. U.S. Pat. No. 5,l34,499 issued to Takeo Sata et al. on July 28, 1992 ("Sata").
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`2. U.S. Pat. No. 4,856,081 issued to Bobby J. Smith on August 8, 1989 ("Smith").
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`3. U.S. Pat. No. 5,241,428 issued to Eric P. Goldwasser et al. on August 31, 1993
`("Goldwasser").
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`4. Paper No. 25 of the Prosecution History of the '444 patent (Amendment D submitted
`to the Patent Office on July 22, 1996) ("1996 Response").
`
`5. Paper No. 26 of the Prosecution History of the '444 patent (Office Action dated
`November 27, 1996) ("1996 Non-Final Office Action").
`
`6. Paper No. 27 of the Prosecution History of the '444 patent (Examiner Interview
`Summary dated January 15, 1997 but mailed on April 30, 1997, and hereinafter
`referred to as "January 1997 Interview Summary").
`
`7. Paper No. 28 of the Prosecution History of the '444 patent (Interview Summary dated
`April 30, 1997) ("April 1997 Interview Summary").
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`8. Paper No. 30 of the Prosecution History of the '444 patent (Supplemental Amendment
`E submitted to the Patent Office on October 29, 1997) ("1997 Response").
`
`9. Paper No. 34 of the Prosecution History of the '444 patent (Notice of Allowance
`dated February 1, 1999) ("Notice of Allowance").
`
`Unified Patents Exhibit 1011, p. 6
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`

`

`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 6
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`A. Items of Information Not Raising a Substantial New Question of Patentability
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`IV. Prior Art Analysis
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`1. Sata:
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`17.
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`Based upon a review of the prosecution history of the '444 patent, the Examiner finds that
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`Sata was considered and discussed during the examination of the '727 application. See e.g. <[3 in
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`the 1996 Non-Final Office Action, et seq.
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`18.
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`Sata, taken alone, does not raise a substantial new question of patentability as to at least
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`one claim of the '444 patent.
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`19.
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`Sata teaches about simultaneously recording and playback of program information (by
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`disclosing "the present embodiment can simultaneously play back and reproduce the previous
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`part of the television program the moment the VTR 8 continuously records the current part of the
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`television program."; See Col. 7, lines 28-32).
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`20.
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`Sata further teaches about using/operating an operator console for reading/playback
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`operation:
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`when the operator console is operated so that the read command data and track
`position designating data are fed to the read pick-up drive 5, the read pick-up
`drive 5 starts to read the video data from the track position designated by the track
`position designating data on the disk 4. Thereafter, the reading track position is
`sequentially renewed by the read pick-up drive 5 so that the reading operation will
`be continued.
`
`Sata, Column 6, lines 61-68.
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`21.
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`In particular, Sata fails to expressly teach or suggest:
`
`a.
`
`b.
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`a keyboard having a record key and a playback key; and
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`a control circuit, coupled to the keyboard, being configured so that substantially
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`simultaneous recording and playback of program information is achieved when said
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`Unified Patents Exhibit 1011, p. 7
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`

`

`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 7
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`record key is first actuated to begin a recording by initiating storage of the broadcast
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`program information in said memory unit, and said playback key is subsequently and
`
`solely actuated to begin time delay playback of the recording from the beginning thereof
`
`by initiating retrieval of the stored program information in said memory unit, with the
`
`interval of the time delay being the same as the time elapsed between the actuation of
`
`said record key and the subsequent actuation of said playback key.
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`22.
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`Accordingly, Sata alone does not raise a substantial new question of patentability with
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`respect to independent claims 1 and 14.
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`2. Smith:
`
`23.
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`Based upon a review of the prosecution history of the '444 patent, the Examiner finds that
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`Smith was also considered and discussed during the examination of the '727 application. See
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`e.g. <[4 in the 1996 Non-Final Office Action, et seq.
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`24.
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`Smith, taken alone, does not raise a substantial new question of patentability as to at least
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`one claim of the '444 patent.
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`25.
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`Smith teaches a keyboard (i.e. the remote control 10 shown in Fig. 1) having a record key
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`(i.e. the "REC" key shown in the second set of keys 30 in Fig. 1) for beginning a recording to the
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`storage media (i.e. video cassette); and a playback key (i.e. the "PLAY" key shown in the second
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`set of keys 30 in Fig. 1) for beginning a playback of the program information stored in the
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`storage media (i.e. video cassette) (See Col. 4, lines 27-34 and Fig. 1). Smith further teaches that
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`on the remote control a user can actuate/press a record key; and subsequently and solely can
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`actuate/press a playback key (See Col. 19, lines 27-49).
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`Unified Patents Exhibit 1011, p. 8
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`

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`Control Number: 96/000,0l3
`Art Unit: 3992
`
`26.
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`In particular, Smith fails to expressly teach or suggest:
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`Page 8
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`a control circuit, coupled to the keyboard, being configured so that substantially
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`simultaneous recording and playback of program information is achieved when said
`
`record key is first actuated to begin a recording by initiating storage of the broadcast
`
`program information in said memory unit, and said playback key is subsequently and
`
`solely actuated to begin time delay playback of the recording from the beginning thereof
`
`by initiating retrieval of the stored program information in said memory unit, with the
`
`interval of the time delay being the same as the time elapsed between the actuation of
`
`said record key and the subsequent actuation of said playback key.
`
`27.
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`Accordingly, Smith alone does not raise a substantial new question of patentability with
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`respect to independent claims 1 and 14.
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`3. Goldwasser:
`
`28.
`
`Based upon a review of the prosecution history of the '444 patent, the Examiner finds that
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`Goldwasser was not considered nor discussed during the examination of the '727 application.
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`29.
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`Goldwasser, taken alone, does not raise a substantial new question of patentability as to at
`
`least one claim of the '444 patent.
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`30.
`
`Goldwasser teaches a video recording apparatus (shown in Fig. 3) for simultaneously
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`recording and playback of video material to/from random access memory (RAM) (i.e. 53 in Fig.
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`3) (see Col. 2, lines 16-35 and Col. 6, lines 25-43). Goldwasser also teaches playing back the
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`recorded data from any portion of the RAM while simultaneously recording (See Col. 6, lines
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`Unified Patents Exhibit 1011, p. 9
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`

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`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 9
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`38-43). Furthermore, Goldwasser discloses a user control panel (i.e. 50 in Fig. 3) for generating
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`commands that can be used to control the video recorder (see Col. 6, lines 44-49).
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`31.
`
`In particular, Goldwasser fails to expressly teach or suggest:
`
`a.
`
`b.
`
`a keyboard having a record key and a playback key; and
`
`a control circuit, coupled to the keyboard, being configured so that substantially
`
`simultaneous recording and playback of program information is achieved when said
`
`record key is first actuated to begin a recording by initiating storage of the broadcast
`
`program information in said memory unit, and said playback key is subsequently and
`
`solely actuated to begin time delay playback of the recording from the beginning thereof
`
`by initiating retrieval of the stored program information in said memory unit, with the
`
`interval of the time delay being the same as the time elapsed between the actuation of
`
`said record key and the subsequent actuation of said playback key.
`
`35.
`
`Accordingly, Goldwasser alone does not raise a substantial new question of patentability
`
`with respect to independent claims 1 and 14.
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`4. Sata or Goldwasser in combination with Smith:
`
`36.
`
`Sata, Smith, and Goldwasser, each taken individually, as discussed above and presented
`
`in the Request, does not raise a substantial new question of patentability as to claims 1 and 14 of
`
`the '444 patent. Since none of Sata, Smith, and Goldwasser teaches or suggests claim limitations
`
`discussed above, the combination of Sata or Goldwasser with Smith also fails to raise a
`
`substantial new question of patentability as to claims 1 and 14 of the '444 patent.
`
`Unified Patents Exhibit 1011, p. 10
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`

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`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 10
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`37.
`
`Accordingly, Sata, or Goldwasser in view of Smith does not raise a substantial new
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`question of patentability with respect to independent claims 1 and 14.
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`5. Other items ofinformation:
`
`38.
`
`The 1996 Response, 1996 Non-Final Office Action, January 1997 Interview Summary,
`
`April 1997 Interview Summary, 1997 Response, and Notice of Allowance, as presented in the
`
`Request, do not raise a substantial new question of patentability as to at least one claim of the
`
`'444 patent. These items of information show the previous examiners' characterization of Sata
`
`and Smith. These items of information do not qualify as prior art under 35 U.S.c. §§ 102 or 103,
`
`nor do they contain information that raises any other issues of patentability with respect to claims
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`1 and 14 of the' 444 patent.
`
`39.
`
`In light of the above, a reasonable examiner would not consider the 1996 Response, 1996
`
`Non-Final Office Action, January 1997 Interview Summary, April 1997 Interview Summary,
`
`1997 Response, and Notice of Allowance important in determining whether claims 1 and 14 of
`
`the '444 patent are patentable.
`
`B.
`
`Items of Information Raising a Substantial New Question of Patentability
`
`40.
`
`In light of the above analysis, none of the Items of Information presented in the Request
`
`raise a substantial new question of patentability.
`
`Unified Patents Exhibit 1011, p. 11
`
`

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`Control Number: 96/000,0l3
`Art Unit: 3992
`
`Page 11
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`V. Conclusion
`
`4l.
`
`Accordingly, no substantial new question of patentability affecting at least one claim of
`
`the '444 patent is raised in the Request for supplemental examination.
`
`IHetul Patell
`Patent Reexamination Specialist
`Central Reexamination Unit, Art Unit 3992
`
`Conferees:
`
`IKENNETH J. WHITTINGTONI
`Patent Reexamination Specialist
`Central Reexamination Unit, Art Unit 3992
`
`IANDREW J. FISCHERI
`Supervisory Patent Reexamination Specialist,
`Central Reexamination Unit, Art Unit 3992
`
`Unified Patents Exhibit 1011, p. 12
`
`