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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`INVENTOR(S): Elie Camhi and Lawrence S. Kamhi
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`SERIAL NO.: 08/234,727
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`FILED: April 28, 1994
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`TITLE: Simultaneous Recording and Playback Apparatus
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`EXAMINER: Truong, K.
`\
`(A Continuation of SIN 07/872,435 filed April 23, 1992.[-
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`ART UNIT: 2615
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`Hon. Commissioner of Patents and Trademarks
`Washington, DC 20231
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`RESPONSE
`
`This is in response to the Official Action dated
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`August 11, 1995, and the Examiner Interview Summary Record
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`(EISR) dated 4/5/94 and. mailed 8/11/95. Reexamination and
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`reconsideration of the instant application is respectfully
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`requested. Claims 1 through 12 are in this application. No
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`new matter has been added. Applicant acknowledges the
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`withdrawal of previous rejections based upon Levine in U.S.
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`Patent #4,908,713 and Young in U.S. ~atent #4,706,121.
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`With respect to the aforementioned EISR, applicant notes
`
`that it is seriously incomplete. According to memory and
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`records of the interview, the Examiner's comments regarding
`
`his refusal to enter the rule 116 amendment, presenting only
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`claim 6, were only a minor portion of the lengthy (53 min.)
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`interview. The overwhelming majority of the conversation
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`involved the identification of limitations disclosed in the
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`I
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`Unified Patents Exhibit 1012, p. 1
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`instant application not shared by the prior art, and the
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`manner and language suitable for use to amend the claims for
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`integration of those limitations. The discussed limitations
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`and language were then implemented by the Preliminary
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`Amendment filed 4/28/94 with the FWC application.
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`Claim I and claims 5-8 remain rejected under 35 USC §I03
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`as being unpatentably obvious over Sata, et al.
`
`for reasons
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`somewhat different from those set forth in the prior Official
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`Actions. Applicant respectfully traverses this rejection,
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`and to the extent applicable, repeats and reasserts the prior
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`traversals of such rejection.
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`With regard to Sata's failure to explicitly teach means!
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`again concedes that it » ~.
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`for powering the apparatus, applicant
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`would be obvious to include such, and
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`thereof is implied.
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`that the inclusion ~ ~
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`The Examiner contends that the memory unit of the_
`instant invention is duplicated by memory unit~-"sata.
`(The withdrawal of the Examiner's contention that the memory
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`unit of the instant invention is duplicated by memory unit 31
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`of Sata is appreciated.) Applicant respectfully points out"
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`that memory 4 as shown and described by Sata is well known as
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`a conventional magneto optical disk drive wherein a laser is
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`used to heat a location of the media in the presence of a
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`magnetic field to thereby alter the optical properties of the
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`location.
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`Indeed, it is clear from Sata's teachings that he
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`specifically intends that his device be limited to such
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`magneto optical drive in so far as the recording head and
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`Unified Patents Exhibit 1012, p. 2
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`means for moving it between tracks on the recording medium,
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`structure essential to the magneto optical drive, are
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`repeatedly referenced in each one of the six aspects
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`presented in the Summary of the Invention, in each embodiment
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`exemplification presented in the Description of the Preferred
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`Embodiments, in each of the drawing figures, and in everyone
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`of the claims. This significant limitation is not shared by
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`the instant invention, which, as pointed out in prior
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`correspondence (-~a;--:-e--{mplemented without moving parts.
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`this respect the absence of such limitation in the instant
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`invention reflects a significant improvement over the
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`structure of Sata.
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`Regarding the Examiner's contention that it would be
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`"obvious if not inherent" to add a(keyboard\having a record
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`key and a playback key to Sata, applicant asserts that this
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`is not so in the case of Sata. Sata's device not only fails
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`to include a record key, it cannot accommodate a record key
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`since it is always recording.
`So far as structure necessary
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`to implement a control scenario is concerned, Sata teaches in I ~!2Cv'f "/
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`a totally different direction by explicitly requiring full ~"\ . Jl i'''-
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`cons&le-ca~~ble of generating read designating data and track
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`designating data necessary to find the desired starting place
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`for playback in a full time recording device. To do as the
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`Examiner here suggests, it would be necessary to disregard
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`Sata's requirements that the device be recording at all
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`times, and that read designating data and track designating
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`Unified Patents Exhibit 1012, p. 3
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`data be used for retrieval of stored information. There is
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`nothing within the teachings of Sata that would suggest or
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`motivate such action.
`
`With regard to the Examiner's statement (at page 4, line
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`3 of the Official Action,) that "Sata et ale does in fact
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`teach an operator con~~e", applicant again directs attention
`--J---~--
`to column 6, ~ines 8-11 where Sata himself explicitly admits
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`the failure to teach said operator console or how it
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`generates the read designating data and track designating
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`data essential to playback function. How is this read
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`designating data and track position designating data
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`ascertained for a particular recorded portion?
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`In the
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`Official Action dated 12/12/93 the Examiner admitted did not
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`know how the device of Sata would operate without inclusion
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`of additional structure. This failure to disclose an element
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`essential to the basic operation of the device renders his
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`device inoperative and his disclosure incomplete and improper
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`as a reference.
`
`At page 4, lines 4-6 of the Official Action, the
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`Examiner repeats a statement made in the Official Action
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`dated 11/17/94, and possibly on other occasions, that he
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`considers inclusion of a keyboard having a record key and a
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`playback key to be an inherent characte~istic of Sata, et ale
`~- ....
`Applicant respectfully repeats that this argument is totally
`./
`unsupported by the facts. Where a reference teaches a device
`-
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`that explicitly records continuously and all the time, it
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`would not be obvious to add a record key to contrb~
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`Unified Patents Exhibit 1012, p. 4
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`function for which no control scenario is provided.
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`Similarly in the case of the playback, it is not obvious to
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`add the playback key of the present invention because there
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`is no way such a key can provide the read designating data
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`and track designating data essential to the recorder taught
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`by Sata.
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`Additionally, the Examiner fails to point out any
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`motivation or suggestion which exists for a person of skill
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`in the art to implement an alternative simultaneous recording
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`and playback device by deletion of Sata's structure and
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`control scenario, and the addition of a keyboard having a
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`record key and a playback key "wherein the record key is
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`first actuated to begin a recording by initiating storage of
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`program information in said memory unit, and said playback
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`key is subsequently actuated to begin time delay playback of
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`the recording from the beginning thereof by initiating
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`retrieval of the program information stored in said memory
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`unit, with the interval of the time delay being the same as
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`the time elapsed between the actuation of said record key and
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`the subsequent actuation of the playback key" as is the case
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`in claims 1 & 5-8 in the instant application.
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`Applicant respectfully reminds the Examiner that
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`obviousness cannot be evaluated in hindsight, and that some
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`motivation to make the changes must exist, and no motivation
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`of any kind by Sata has been offered by the Examiner to
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`support the contention that it would be obvious to make the
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`changes and improvements of the present invention, or to
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`Unified Patents Exhibit 1012, p. 5
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`adapt Sata to a different usage. This proposed "obvious"
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`course of modification would certainly require undue
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`experimentation, especially if undertaken without suggestion
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`or motivation. The absence of any such suggestion or
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`motivation terribly weakens the Examiner's argument that it
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`would be obvious to add particular elements to prior art
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`which prior art necessarily possesses structure expressly
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`incompatible and unsuited to the addition of said particular
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`elements.
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`In fact, Sata's direct incompatibility with the
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`structural limitations of the instant invention makes the
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`changes and improvements therein even less obvious.
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`To do what the Examiner suggests to be obvious is in
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`fact to drastically alter Sata so as to adapt the apparatus
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`to a use different th~n "to provide a video recording
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`apparatus which does not require much time when repeatedly
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`reproducing the desirable recorded part", the solitary object
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`disclosed in the introductory line of Sata's Summary of the
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`Invention.
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`It is therefore clear that the structure of
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`Sata's device makes it intended for and suited to use by a
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`broadcaster in a television studio for generating repeated
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`instant replay type re presentation of information previously
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`viewed. This is completely unlike the invention of the
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`instant application, which structure is suited to use by
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`consumer type television viewers for the capture and playback
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`of information missed due to temporary interruption, and the
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`time shifting of subsequent program information.
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`The differences between the device taught by Sata and
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`Unified Patents Exhibit 1012, p. 6
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`the instant invention are additionally significant as they
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`result not only in greatly enhanced utility, but consequently
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`the marketability of a simultaneous recording and playback
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`apparatus. This further undercuts the Examiner's obviousness
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`rejection, because if the instant invention truly were
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`obvious from the teachings of Sata, it surely would have been
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`done by now in order to exploit these important advantages.
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`This is particularly true in the situation of a highly
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`crowded and competitive art such as consumer electronics,
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`where it is in the interest of public policy to recognize
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`even a small step forward.
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`Accordingly, since:
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`a) the instant invention does not share limitations
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`applicable to Sata; and
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`b) since it does have numerous limitations which are not
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`shared by Sata;
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`c) these structural and functional differences making the
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`instant simultaneous recording and playback device suited
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`to a different use; and
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`d) the Examiner's contention of obviousness being entirely
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`unsupported by citation to anything containing suggestion
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`or motivation for a person of ordinary skill in the art to
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`adapt Sata's device to a different usage by addition and
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`deletion of the numerous above identified limitations;
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`j
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`applicant respectfully submits that the instant invention as
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`set forth in claims I & 5-8 are patentably distinguishable
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`from the disclosure of Sata, and the rejection thereof
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`7
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`Unified Patents Exhibit 1012, p. 7
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`overcome.
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`Claims 2-4 & 9-10 have been newly rejected under 35 USC
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`§103 as being unpatentably obvious over Sata, et ale in view
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`of Zato. Applicant respectfully traverses this rejection.
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`In U.S. Patent #4,626,827 Zato teaches multiple remote
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`control units with a common keypad in a single housing. The
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`keys of the device perform the same function in each of the
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`different controlled devices. With regard to the Examiner's
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`assertion that Zato shows the obviousness of applying a
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`remote control to Sata at the operator console, even if it
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`were obvious to apply a remote control device to any piece of
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`consumer electronics, such added remote control device would
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`merely implement those pre existing functions remotely. Sata
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`does not have a pre existing controllable record function,
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`but instead records continuously. The manner of ascertaining
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`and generating necessary read designating data and track
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`designating data in order to initiate playback is
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`undisclosed. Applicant respectfully submits that it cannot
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`be seriously contended that it would be obvious to implement
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`this with the playback key of Zato's remote. As mentioned
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`earlier, since Sata must record continually, there is no need
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`for Zato's record key, and since initiation of Sata's
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`playback function requires read designating data and track
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`designating data which Zato's playback key cannot generate, a
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`person of ordinary skill in the art would never look to
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`combine Sata with Zato to achieve the present invention. As
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`pointed out above, the structure taught by Sata does not
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`Unified Patents Exhibit 1012, p. 8
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`duplicate the functions of the instant invention, and still
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`would not even if Sata's pre existing functions were
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`implemented remotely.
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`For these reasons the rejection of claims 2-4 & 9-10
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`based upon Sata in view of Zato is therefore believed to be
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`overcome, and additionally by reason of claim dependency from
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`claim 1, which as mentioned above is patentably
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`distinguishable from Sata.
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`Claim 11 has been newly rejected under 35 USC §103 as
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`being unpatentably obvious over Sata, et al. in view of
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`Kruger, et al. Applicant respectfully traverses this
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`rejection.
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`Kruger, et al., in U.S. Patent #4,488,179 teaches
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`a device having a signal switcher with plurality of input
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`channels and at least two television tuners, one of said
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`tuners being adapted to receive encoded supplemental
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`information broadcast during the television blanking
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`interval, and provides means for displaying the encoded
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`information and further means for generating a cursor upon
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`the display for selection of the supplemental information,
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`and such selected information can be used to override
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`manually keyed selections for controlling the components
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`connected to the signal switcher for future unattended
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`operation.
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`(See column 2, lines 32-37.) Even if a person of
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`ordinary skill in the art were for some reason motivated to
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`build a simultaneous recording and playback apparatus having
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`multiple input channels, they would not look to the dual TV
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`Unified Patents Exhibit 1012, p. 9
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`tuner device of Kruger wherein one of the tuners receives
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`supplemental encoded information broadcast in the blanking
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`interval and uses that information to override manual
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`control.
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`Applicant respectfully submits that neither Sata nor
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`Kruger suggest or motivate combination with each other in any
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`way. As above, the functions provided by Kruger are not
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`complimentary to the requirements of Sata's recorder, a
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`person of skill in the art would not look to Kruger to
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`resolve the deficiencies of Sata. Since Kruger's device does
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`not generate the information required by Sata's recorder, and
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`since Sata's recorder is directed at current recording and
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`simultaneous playback of prior recording according to an
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`operator indication of the beginning and ending of an
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`interruption, and Kruger's device directed at operation
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`controlled according to supplementary information broadcast
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`during the blanking period, applicant submits that the two
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`cannot be combined. Even if Sata and Kruger were combined,
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`the result would not be the same as the instant invention as
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`set forth in claim 11. Claim 11 provides for multiple
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`programmable inputs for signals to be recorded, unlike the
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`secondary "input" tuner channel in Kruger's device which
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`provides information used to pre program future unattended
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`operation. Similar to the situation when Young (U.S. Patent
`
`#4,706,121) was used as a basis for rejection of this claim,
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`the secondary "input" of Kruger's is always received, but
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`never recorded, whereas the inputs of claim 11 are not
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`I
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`10
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`Unified Patents Exhibit 1012, p. 10
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`received unless selected, and they can be recorded when
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`selected. The rejection of claim 11 based upon Sata in view
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`of Kruger is therefore believed to be overcome for these
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`reasons, and additionally by reason of claim 11 dependency
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`from claim 1, which as mentioned above is patentably
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`distinguishable from Sata.
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`Claim 12 has been newly rejected under 35 USC §l03 as
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`being unpatentably obvious over Sata, et al. in view of
`
`Olivio. Applicant respectfully traverses this rejection.
`
`Olivio, in U.S. Patent #5,172,111 teaches a program
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`material screening device having the ability to selectively
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`disable the normal functioning of a downstream playback or
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`display device, said material screening device being
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`responsive to a material content signal which must be added
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`to the program information signal, thereby enabling
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`censorship to be selectively locally implemented. Sata's
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`device, if functional, captures a selected segment as it is
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`being broadcast and viewed for repeated reproduction, whereas
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`somewhat conversely, Olivio's prevents a selected segment
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`from ever being viewed.
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`A person of ordinary skill in the art would not look to
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`combine Olivio with Sata even if some suggestion or
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`motivation existed to develop the invention recited in claim
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`12 of the instant application. Even if Olivio and Sata were
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`combined, the result would be a simultaneous recording and
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`playback device having a censorship circuit for control of
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`the meaningfully perceivable presentation of explicit
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`1/
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`Unified Patents Exhibit 1012, p. 11
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`material, which operates responsively to a material content
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`signal which must be provided in addition to the normal
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`program information. This is not the same as the invention
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`of claim 12, which is designed to detect information within
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`the original unmodified program information signal.
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`In the
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`instant invention it is the user who identifies and selects a
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`program segment for special processing. The filter detects
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`information which has already been received and recorded, and
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`which the broadcaster would not be inclined to admit is
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`present. A device using Olivio's teachings, on the other
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`hand, would have the broadcaster identifying segments for
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`special processing, and the reception and recording thereof
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`prevented.
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`According to these differences, the invention of claim
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`12 is suited to the detection of information hidden within
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`the program information which hidden information is intended
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`It.
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`to be presented to the user in only subconsciously
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`perceivable form, which is completely different from a
`combination of Sata and Olivio which is suited to detectio~-O
`of explicit information intended to be presented to the user
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`~!1
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`in extendedly consciously perceivable form, and such
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`detection is achieved according to a material content signal
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`which must be added to the program information signal.
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`Attention is directed to the specification at page 18 where
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`details of the intended usage and operation of the invention
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`set forth in claim 12 are provided. The rejection of claim
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`12 based upon Sata in view of Olivio is therefore believed to
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`,~
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`Unified Patents Exhibit 1012, p. 12
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`be overcome for these reasons, and additionally by reason of
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`claim 12 dependency from claim 1, which as mentioned above is
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`patentably distinguishable from Sata.
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`By reason of the foregoing remarks, applicant
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`respectfully submits that the outstanding rejections have
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`been overcome, and the claims of the instant invention
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`distinguished patentably from the cited references.
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`Favorable action on the instant application is therefore
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`believed to be in order, and is respectfully requested.
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`,
`Dated: ~\J. 13 1915
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`~tfUflY su:mitted.
`
`Ike Aruti~. 34,538
`
`257-37 149th Road
`Rosedale, NY 11422-3022
`Tel. (718) 525-8823
`
`l.s
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`Unified Patents Exhibit 1012, p. 13