-·
`
`UNITED STAT.·DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washinaton. DC 20231
`
`HARVEY
`
`FIRST NAMED INVENTOR
`
`J
`
`5634.208
`
`I THOMAS .J SCOTT .JR
`HO~JREY AND SIMON
`1299 PENNSYLVANIA AVENUE NW
`WASHINGTON DC 20004
`
`LM11/0402
`
`EXAMINER
`
`PAPER NUMBER
`
`~
`04/02/98
`
`DATE MAILED:
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissioner of Patents and Trademarks
`
`PT0.90C (REV. 2/951
`
`'SW.S.OOVERNMENT PRINTING OmCB 1995-319-826
`
`APPLE EX. 1011
`Page 1
`
`

`
`Office Action Summary
`
`HARVEY et al.
`
`Group Art Unit
`2737
`
`1Zl Responsive to communication(s) filed on ~J.:::.a:..:.n-=2::..:7..!..,...:1-=9:..:::9:..!.7 ____________________ _
`
`0 This action is FINAL.
`0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is~closE!d
`in accordance with the practice under Ex parte Quayle, 1935 C. D. 11; 453 O.G. 213.
`
`A shortened statutory period for response to this action is set to expire
`THREE month(s), or thirty days, whichever
`is longer, from the mailing date of this communication. Failure to respond within the period for response will cause the
`application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of
`37 CFR 1.136(a).
`
`Disposition of Claims
`IZl Claim(s) =2...:·5::..:5:::.__ _______________________ is/are pending in the application.
`
`Of the above, claim(s) - - - - - - - - - - - - - - - - - - - is /a re withdrawn from consideration.
`
`Claim(s) - - - - - - - - - - - - - - - - - - - - - - - - - - - is /a re allowed.
`IZl Claim(s) 2-55
`is/are rejected.
`0 Claim(s)
`0 Claims
`
`is/are objected to.
`
`are subject to restriction or election requirement.
`
`Application Papers
`0 See the attached Notice of Draftsperson's Patent Drawing Review, PT0-948.
`0 The drawing(s) filed on
`is/are objected to by the Examiner.
`0 The proposed drawing correction, filed on
`0 The specification is objected to by the Examiner.
`The oath or declaration is objected to by the Examiner.
`
`is Qpproved O:Hsapproved.
`
`Priority under 35 U.S.C. § 119
`0 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
`0 All 0 Some* 0 None
`of the CERTIFIED copies of the priority documents have been
`0 received.
`0 received in Application No. (Series Code/Serial Number) - - - - - - - -
`0 received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
`*CertHiedc~i~nMreceived:--------------~--------------~
`0 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`Attachment(s)
`1Zl Notice of References Cited, PT0-892
`0 Information Disclosure Statement{s), PT0-1449, Paper No(s).
`IZI Interview Summary, PT0-413
`0 Notice of Draftsperson's Patent Drawing Review, PT0-948
`0 Notice of Informal Patent Application, PT0-152
`
`----
`
`U. S. Patent and Trademark Office
`PT0-326 (Rev. 9-95)
`
`Office Action Summary
`
`Part of Paper No.
`
`14
`
`·--SEE OFFICE ACTION ON THE FOLLOWING PAGES---
`
`APPLE EX. 1011
`Page 2
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`•
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`Serial Number: 08/449,097
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`,.,
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`Art Unit: 2737
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`.QETAILED ACTION
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`•
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`,)
`· Page2 1
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`1.
`
`This Office Action is responsive to the amendment(s) filed l/27/97.
`
`DOUBLE PATENTING V.S. PATENTS
`
`2.
`
`After reviewing the restriction requirement under 35 USC 121 in US Patent 5,233,654 it is
`
`believed that the claims of the instant application are subject to a double patenting analysis against
`
`US Patent 5,233,654 and US Patent 5,335,277.
`
`3.
`
`In view of further analysis and applicant's arguments, the rejection of the claims in the
`
`instant application under double patenting based on the broad analysis of In re Schneller as set
`
`forth in paragraphs 7-10 of the previous Office Action has been withdrawn.
`
`DOUBLE PATENTING BETWEEN APPLICATIONS
`
`4.
`
`Conflicts exist between claims ofthe following related co-pending applications which
`
`includes the present application:
`
`#
`
`Ser. No.
`
`397371
`
`#
`
`2
`
`Ser. No.
`
`397582
`
`#
`
`3
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`Ser. No.
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`397636
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`5.
`
`37 CFR 1.78(b) provides that when two or more applications filed by the same applicant
`
`contain conflicting claims, elimination of such claims from all but one application may be required
`
`in the absence of good and sufficient reason for their retention during pendency in more than one
`
`application. The attached Appendix provides clear evidence that such conflicting claims exist
`
`between the 329 related co-pending applications identified above. However, an analysis of all
`
`claims in the 329 related co-pending applications would be an extreme burden on the Office
`
`requiring millions of claim comparisons.
`
`In order to resolve the conflict between applications, applicant is required to either:
`
`(1)
`
`file terminal disclaimers in each of the related 329 applications terminally disclaiming each
`
`of the other 329 applications, or;
`
`(2)
`
`provide an affidavit attesting to the fact that all claims in the 329 applications have been
`
`reviewed by applicant and that no conflicting claims exists between the applications. Applicant
`
`should provide all relevant factual information including the specific steps taken to insure that no
`
`conflicting claims exist between the applications, or;
`
`(3)
`
`resolve all conflicts between claims in the above identified 329 applications by identifYing
`
`how all the claims in the instant application are distinct and separate inventions from all the claims
`
`APPLE EX. 1011
`Page 9
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`

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`Serial Number: 08/449,097
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`Art Unit: 2737
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`Page 9
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`in the above identified 329 applications (note: the five examples in the attached Appendix are
`
`merely illustrative of the overall problem. Only correcting the five identified conflicts would not
`
`satisfY the requirement).
`
`Failure to comply with the above requirement will result in abandonment of the
`
`application.
`
`INFORMATION DISCLOSURE STATEMENTS
`
`6.
`
`Receipt is acknowledged of applicant's Information Disclosure Statements filed 12111195,
`
`12/22/95, 4117/96, and 4/7/97.
`
`In view ofthe unusually large number of references cited in the
`
`instant application (approximately 2,200 originally and 645 in the subsequent IDS) and the failure
`
`of applicant to point out why such a large number of references is warranted, these references
`
`have been considered in accordance with 37 C.F,R. 1.97 and 1.98 to the best ability by the
`
`examiner with the time and resources available.
`
`The foreign language references cited therein where there is no statement of relevance or
`
`no translation are not in compliance with 37 C.F.R. 1.98 and have not been considered.
`
`Numerous references listed in the IDS are subsequent to applicant's latest effective filing date of
`
`9/11/87, therefore, the relevancy of these references is unclear. Also cited are numerous
`
`references that are apparently unrelated to the subject matter of the instant invention such as: US
`
`Patent# 33,189 directed toward a beehive, GB 1565319 directed toward a chemical compound, a
`
`cover sheet with only the word "ZING", a computer printout from a library search with the words
`
`"LST" on it and a page of business cards including that of co-inventor James Cuddihy, ·among
`
`others. The relevancy of these references cannot be ascertained. Furthermore, there are several
`
`APPLE EX. 1011
`Page 10
`
`

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`Serial Number: 08/449,097
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`Art Unit: 2737
`
`Page 10
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`database search results listed in foreign languages (such as German) which list only the title and
`
`document information; no copy has been provided, therefore, these references have not been
`
`considered.
`
`CLAIM REJECTIONS- 35 USC§ 112
`
`7.
`
`Claims 2-55 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for
`
`failing to particularly point out and distinctly claim the subject matter which applicant regards as
`
`the invention.
`
`It is noted that, under section 112-2, a method claim must be drafted so as to positively
`
`recite the steps which comprise the method. Being such, it is maintained that the recitation "on
`
`the basis of a plurality of comparisons" in line 14 of claim 2 fails to conform to the required
`
`format of a method claim in that it implies that the recited method comprises a plurality of
`
`comparison steps yet, as currently drafted, claim 2 fails to positively recite said comparison steps.
`
`Similarly, the recitation "outputting selected other portions of said message stream" in line 15 of
`
`claim 2 also fails to conform to the required format of a method claim in that it implies that the
`
`recited method comprises a step for "selecting other portions of said message stream" yet, as
`
`currently drafted, claim 2 also fails to positively recite this step. Such clarifications are needed
`
`throughout the pending claims.
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`Line 13 of claim 2 includes the following alternative expression: "determining the length
`
`or format of at least one segment". The examiner maintains that it is unclear from applicant's
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`APPLE EX. 1011
`Page 11
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`

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`Serial Number: 08/449,097
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`Art Unit: 2737
`
`Page II
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`original disclosure how the term "length" and the term "format" have been used to define different
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`disclosed functions of the alleged invention (i.e. the term "format" actually appears to be inclusive
`
`of the term "length" taken in the context of the claim). If the two terms actually refer to the same
`
`thing when referenced back to applicant's original disclosure, then the use of the alternative "or"
`
`adds nothing but confusion to the claim. Clarification is required.
`
`Line 20 of claim 2 includes the following alternative expression: "availability, use or
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`usage". The examiner maintains that it is unclear from applicant's original disclosure how the
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`terms "availability", "use" and "usage" have been used to ,define different disclosed functions of
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`the alleged invention. If any two of terms "availability", "use" and "usage" actually have the same
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`meaning when referenced back to applicant's original disclosure, then the use of the alternative
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`"or" adds nothing but confusion to the claim.
`
`Claim 3 is confusing and indefinite because the preamble of the claim is directed to a
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`method "of processing signals at a receiver station" while the body of the claim only recites
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`processing steps which occur at "a transmission station". Clarification is required.
`
`The examiner notes that the term "information transmission" appears to have been used by
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`applicant in order to refer to a transmission which contains both programming and a message
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`stream (note lines 4 and 5 of claim 2). Being such, lines 3-8 of claim 3 are confusing and
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`indefinite because it is not clear how an "information stream", e.g. which contains the message
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`stream by definition, can be received (note line 2) at a transmission station prior to the generation
`
`and transmission ofthe message stream by said transmission station. Alternatively, theo
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`meaning/definition of the recited terminology "information stream" as defined/used in applicant's
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`original disclosure is not understood. Clarification is required.
`
`APPLE EX. 1011
`Page 12
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`

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`Serial Number: 08/449,097
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`Art Unit: 273 7
`
`Page 12
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`In claim 4, line 15, "said at least a first message" is confusing and is indefinite because it
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`has multiple antecedent basis when referenced back to the recitation of "at least a first message"
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`in lines ~-5 of claim 4 and the recitation of "at least a first message" in lines 9-10 of claim 4.
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`Similar clarification is needed for the recitation "said at least a first message" which appears in
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`lines 12 and 13 of claim 4.
`
`In claim 4, line 12, "said television programming" has multiple antecedent basis and is
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`indefinite (note the recitation of"television programming" in line 6 and in line 11 of claim 4).
`
`In claim 4, the recitations oflines 14 and 15 are confusing and indefinite when referenced
`
`back to the recitations oflines 3-13 because the recitations oflines 14 and 15 appear to required
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`the operation oflines 4-8 to be carried out yet, in clear conflict, the recitations oflines 3-13
`
`suggest that the operation of lines 4~8 only represents an alternative mode of operation (note the
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`term "or" in line 8 of claim 4). Cl~rification is required.
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`Applicant is asked to review all of the claims and to correct any section 112-2 problems
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`which are similar to those exemplified above.
`
`8.
`
`Claims 2 and 5-40 are rejected under 35 U.S. C. 112, first paragraph, as containing subject
`
`matter which was not described in the specification in such a way as to enable one skilled in the
`
`APPLE EX. 1011
`Page 13
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`

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`•
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`Serial Number: 08/449,097
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`Art Unit: 2737
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`Page 13
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`art to which it pertains, or with which it is most nearly connected, to make and/or use the
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`invention.
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`I. Applicant has now presented claims which are directed to the distribution of"digital television
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`signals". The following is noted:
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`As originally filed, applicant's disclosure lacks any specific description: a) as to how
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`the recited "digital television signals" of applicant's alleged invention(s) were formatted
`
`for transmission, over a television distribution system, using ~he method(s) that are now
`
`recited in the pending claims; and b) as to how the transmission circuitry of applicant's
`
`used to carry out said recited method(s) was specifically modified and/or configured for
`
`the purpose of handling "digital television signals" in the manner that is now recited in
`
`the pending claims. Apparent justification for not having provided such details in his
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`original disclosure appears to be based: 1) on applicant's allegation that the transmission
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`of"digital television signals", comprised of digital video and digital audio, was well
`
`known to those skilled in the art at the time of applicant's alleged invention [for example,
`
`see lines 30-33 on page 288 of applicant's disclosure]; and 2) on applicant's assumption
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`that the means required to transmit digitally formatted television signals were the same as,
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`and/or were at least interchangeable with, the means. conventionally used to transmit
`
`APPLE EX. 1011
`Page 14
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`

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`•
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`Serial Number: 08/449,097
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`Art Unit: 2737
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`Page 14
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`
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`analog television signals 1. The examiner maintains that, at the time of applicant's alleged
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`invention, these allegations and assumptions appear to have been erroneous.
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`The examiner emphasizes that he does not dispute the fact that it was well known in
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`the art to have broadcasted digitally formatted television signals under those "rare'
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`circumstances in which sufficient bandwidth was available for, and could be devoted to,
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`the transmission of such digital television signals. However, the examiner maintains that
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`such circumstances were in fact "rare" because of the extremely large bandwidth that was
`
`required to transmit such digital television signals even when the said signals had been
`
`compressed using state ofthe art bandwidth reduction techniques2
`
`; i.e. such a compressed
`
`1 For example, applicant's original disclosure described portions of the circuity of applicant's alleged invention(s) as
`
`having operated to transmit digitally formatted TV signals over a cable TV channel during a first period of time and as having then
`
`operated to transmit analog TV signals over the same cable TV channel during a subsequent period of time [note lines 1-5 on page
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`302 of applicant's disclosure). No discussion as to any difference in the required handling of these two different television signals was
`
`ever provided, suggested, or recognized via applicant's original disclosure.
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`Support for the examiner's position is provided via the following showing:
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`1) the publication "Digital Television Transmission With 34 Mbit/s" by Burkhardt et al. evidences a
`
`conventional transmission system in which a TV signal was broadcast in using digital signal format [see figure 3).
`
`Even though the bandwidth of the digital TV signal was compressed prior to transmission, said system still
`
`required a 22 MHZ channel to carry said digital signal [see the second full paragraph under the heading "Bit-Rate
`
`Reduction" on page 244); i.e. wherein 22 MHZ bandwidth is almost 4X that of a standard 6MHz analog TV
`
`channel.
`
`2) U.S. Patent No. 3,755,624 to Sekimoto also evidences a conventional system in which a TV signal was
`
`digitally formatted and bandwidth compressed prior to being broadcast. The bit-rate of this compressed digital
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`TV signal was 32 Mbitls which required a bandwidth more than 3X that of said standard analog TV channel
`
`APPLE EX. 1011
`Page 15
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`

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`Serial Number: 08/449,097
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`Art Unit: 273 7
`
`Page IS
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`digital signal still required a transmission bandwidth which was many times larger than that
`
`required by its analog counterpart. Because ofthis large difference in bandwidth
`
`requirements, the means conventionally u~ed to transmit digitally formatted television
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`signals were not the same, and/or were interchangeable with, the means conventionally
`
`used to transmit analog television signal; i.e. contrary to applicant's erroneous
`
`assumptions.
`
`Given the above, the examiner maintains that the descriptions found in applicant's
`
`original disclosure pertaining to the transmission of digitally formatted television signals
`
`were, at best, confusing. More specifically, as shown above, it is maintained that the
`
`bandwidth that was conventionally required to transmit "digital television signals" was
`
`many times greater than the bandwidth that was required to transmit analog TV signals
`
`and thus .the process of transmitting digital television signals through a transmission gi_ven
`
`medium was not equivalent to, and was not interchangeable with, the process used to
`
`transmit said same television signals through said same medium in an analog signal format;
`
`i.e. applicant's original disclosure at least failed to disclose or describe the digital signal
`
`format which enabled the transmission of digitally formatted television signals in the
`
`manner that was disclosed by applicant.
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`[note lines 10-13 of column 30).
`
`3) U.S. Patent No. 4,742,543 to Frederiksen illustrated a system in which a digitized TV signal was processed
`
`on the transmitter side digitally (see figure I). However, the Frederiksen system converted the TV signal into an
`
`analog signal format (@33) prior to broadcasting the signal. Such a signal conversion was described as having
`
`been necessary because the standard analog TV channel that was used to transmit the signal did not have enough
`
`bandwidth to carry TV signal ifleft in its digital signal format (note lines 18-23 of column 5).
`
`APPLE EX. 1011
`Page 16
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`

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`Serial Nu.mber: 08/449,097
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`Art Unit: 2737
`
`Page 16
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`In response to this Office action, applicant is requested to submit evidence (e.g. a
`
`U.S. Patent or a printed publication) which supports the allegations and assumptions of
`
`applicant's original, thereby showing that the means needed to format and transmit
`
`"digital television signals" in a manner that was compatible with the
`
`methods described and claimed by applicant were in fact well
`
`known to those skilled in the art at the time of applicant's alleged invention. Clarification
`
`is required.
`
`II. The examiner maintains that even those sections of applicant's original disclosure which were
`
`allegedly devoted to the handling and transmission of digital television signals, e.g. note "Example
`
`#7" which begins on page 288 of applicant's disclosure, provide no clues as to how such digital
`
`television signals were actually handled and transmitted by applicant's alleged invention. For
`
`example, such descriptions fail to explain: I) how the digital television signals of applicant's
`
`alleged invention were formatted and/or compressed in order to have allowed them to be handled
`
`via conventional TV broadcast circuitry; 2) how the digital television signals of applicant's alleged
`
`invention were formatted and/or compressed so that they could be transmitted over the same TV
`
`channel that was used to carry conventional analog TV broadcasts [see lines 1-5 on page 302 of
`
`applicant's disclosure]; 3) how the headend stations of applicant's alleged invention were
`
`modified in order to have handled/processed said digitally formatted television signals; 4) how the
`
`digital "SP AM'' messages of applicant's alleged invention were embedded within digitally
`
`formatted television signals, how said "SP AM'' messages were carried by said digitally formatted
`
`APPLE EX. 1011
`Page 17
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`

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`Serial Number: 08/449,097
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`Art Unit: 273 7
`
`Page 17
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`television signals, and how said "SP AM" messages were extracted from said digitally formatted
`
`television signals; 5) how the bit-rate of"SPAM'' messages that were carried in the digitally
`
`formatted television signals related to the bit-rate that was used to transmit the data of the
`
`digitally formatted signals and how it was related to the bit-rate of the "SP AM' messages that
`
`were carried in the analog TV signal transmissions [e.g. because of the apparent difference in
`
`bandwidth requirements between analog and digital television transmissions, it would appears that
`
`the bit-rate of the "SP AM'' messages contained in the digital TV signals would be different from
`
`the bit-rate of the "SP AM'' messages carried in the analog TV signals and, if so, it is not clear
`
`how the digital decoders of applicant's alleged could have recognized and handled such
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`differences]; etc ...
`
`ill. For the reasons set forth in parts "I" and "IT" of this paragraph, the examiner maintains that
`
`the pending claims which are directed to the handling/transmission of"digital television signals"
`
`were not enabled by applicant's original disclosure. The examiner maintains that said pending
`
`claims represented an "invitation to experimentation" when viewed in light of the state of the
`
`"digital television signal" transmission prior art which actually existed at the time of applicant's
`
`alleged invention and when viewed in light ofthe allegations and assumption on which applicant's
`
`own disclosure was apparently based. Clarification is required.
`
`APPLE EX. 1011
`Page 18
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`

`
`Serial Number: 08/449,097
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`Art Unit: 2737
`
`Page 18
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`9.
`
`Claims 2-55 are rejected under 35 U.S.C. 112, first paragraph, as containing subject
`
`matter which was not described in the specification in such a way as to reasonably convey to one
`
`skilled in the relevant art that the inventor(s), at the time the application was filed, had possession
`
`of the claimed invention.
`
`37 C.F.R. l. 75( d)(l) requires that:
`
`"the tenns and the phrases used in the claims must fmd clear support or antecedent basis
`
`in the description so that the meaning of the terms in the claims may be ascertainable by
`
`reference to the description".
`
`The following limitations were not supported by the specification as originally filed:
`
`The examiner notes that throughout the claims, applicant has elected to use the expression "at
`
`least one ...... "; i.e. a positive recitation. The examiner maintains that, in order to have support
`
`for the use of this positive recitation, the original disclosure must have described circumstances in
`
`which only one of said" at least one ...... " was used and must have also described circumstances
`
`in which more than one of said "at least one .. " was used. For example:
`
`1) Lines 11 and 12 of claim 2 state that selected control information is communicated to
`
`"at least one register memory". To show that the original disclosure provided adequate
`
`support for this recitation, it is maintained that applicant must show where the original
`
`disclosure described circumstances the recited method communicated said selected control
`
`information only to one register memory, and must also shqw where the original
`
`disclosure described circumstances in which the recited method communicated said
`
`selected control information to more than one register memory. For example, if the
`
`APPLE EX. 1011
`Page 19
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`

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`Serial Number: 08/449,097
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`Art Unit: 2737
`
`Page 19
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`original disclosure only described a system which comprised three register memories, then
`
`the recitation "at least one" is not supported by said disclosure: e.g. "at least three register
`
`memories" were required. Clarification/correction is needed (i.e. if such alternative
`
`descriptions cannot be found, then support for the term the term "at least one" does not
`
`exist and said term "at least one" must be deleted from the claim). Such is true for all
`
`recitations in which the term "at least one" appears.
`
`2) Lines 13 and 14 of claim 2 go on to recite that the "length or format" of"at least one
`
`segment" is determined on the basis of a plurality of comparisons at "said at least one
`
`register memory". Given the recitations of lines 11 and 12, it is maintained that applicant
`
`must further show where the original disclosure described circumstances in which the
`
`recited method provided each of the following steps and all of the recited alternatives: a)
`
`a step for communicating the selected control information to only one register memory
`
`wherein a plurality of comparisons are made at said one register memory in order to
`
`determine the length (and, alternatively, to determine the format) of only one (and,
`
`alternatively, of more than one) selected segment; and b) a step for communicating the
`
`selected control information to more that one register memory wherein a plurality of
`
`comparisons are made at said more than one register memory in order to determine the
`
`length (and, alternatively, to determine the format) of only one (and, alternatively, of more
`
`than one) selected segment.
`
`Clarification of the above is required.
`
`APPLE EX. 1011
`Page 20
`
`

`
`Serial Number: 08/449,097
`
`Art Unit: 2737
`
`Page 20
`
`With respect to claim 2, it is not clear where the original disclosure provided clear support or
`
`antecedent basis for the following terminology: a) an "information transmission" comprised of a
`
`"digital television signal" and a "message stream"; b) "one message" which is selected from a
`
`message stream of an information transmission comprised of a digital television signal and said
`
`message stream; c) "at least a first portion of the selected one message" which is inputted to a
`
`control processor; d) "control information" which is in said inputted at least a first portion of said
`
`selected one message; e) "at least one segment of said message stream" which is determined on
`
`the basis of a plurality of comparisons at least one register; f) "selected other portions of said
`
`message stream" which are outputted to a plurality of processors.
`
`For reasons set forth in paragraph 8 of this Office action, the meaning of the term "digital·
`
`television signal" as it appears in claim 2 is still not understood. For example: Does the term refer
`
`to a digital television signal which represents a full motion television program ?; Does the term
`
`refer to a digital television signal which represents still frame television programming; Does the
`
`term refer to some other kind of digital programming?; etc... Clarification is still required.
`
`With respect to claim 2, it is not clear where applicant's original disclosure described all of the
`
`positively recited alternative methods of processing signals at a receiver station. More
`
`specifically, clarification is needed to s