throbber
PATENT
`
`In Re Application of
`
`John C. Harvey and James W. Cuddihy
`
`Examiner:
`
`FAILE, A.
`
`Serial No.
`
`08/449,097
`
`Group Art Unit:
`
`2737
`
`Filed:
`
`May 24, 1995
`
`Atty. Docket.
`
`05634.0208
`
`For: SIGNAL PROCESSING APPARATUS
`AND METHODS
`
`BOX: FEE AMENDMENT
`
`Assistant Commissioner of Patents
`and Trademarks
`Washington, D.C. 20231
`
`Sir:
`
`I.
`
`AMENDMENT UNDER 37 C.F.R. § 1.111
`
`This ttmendment is responsive to the Non-Final Office Action mailed
`
`April2, 1998. Applicants respectfully request that the following amendments be
`
`entered into the above-captioned application:
`
`In the Claims
`Applicants request entering of the below amendments to the claims. Claims Z-4~
`{1~2(25-2( 33;3!1,3(.38, ,f((-4'( 464t:50, 81-5'3 ifss are amended. For the
`PTO's convenience, claims that remain unchanged are included below in order to allow
`
`the Examiner to review all pending claims from this response in their numerical order.
`
`1
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`2.
`
`(Twice Amended) A method of processing signals at a receiver
`
`receiver station having a plurality of processors, said method
`
`receiv' g an information transmission containing a digital television
`
`detecting aid message stream in said information transmission;
`
`selecting on message of said detected m~ssage stream;
`
`inputting at 1 ast a first portion of said selected one message to a control
`
`processor;
`
`selecting control
`
`formation in said inputted first portion of said selected
`
`one message~ [and comm
`
`icating said selected control information to at least
`
`one register memory;]
`
`stream on the basis of a plurali of comparisons at said at least one register
`
`or format of at least one segment of said message
`
`memory;]
`
`selecting and outputting [s ected] under the control of said control
`
`processor, other portions of said me sage stream to said plurality of processors~,
`
`based on said control information;
`
`tions of said· message stream
`
`controlling the [reception or presen tion] timing of communicating [of]
`
`television programming in accordance with aid message stream; and
`
`[metering or monitoring] storin infor ation evidencin the availability,
`
`use or usage of said television programming or aid message stream.
`
`3.
`
`(Twice Amended) A method of pro ssing signals at a receiver
`
`station, said receiver station having a plurality of pro essors, said plurality of
`
`2
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`rocessor which controls a remainder of said
`
`steps of:
`
`eceiving an information transmission containing a message stream
`
`[(2)]
`
`ge erating a control portion of said message stream at said
`
`transmission stati n that is effective at a receiver station to cause said first control
`
`rocessor to select ortions of said messa e stream that control said control
`
`reception or presentatio of] television programming and (ii) controlling the
`
`eter or monitor the availability, use or usage of] said
`
`television programming [or aid message stream]; and
`
`[(3)]
`
`transmitting sai message stream to be received at said receiver
`
`station.
`
`4.
`
`(Twice Amended)
`
`method of processing signals in a network,
`
`comprising the steps of:
`
`[(l)]receiving an information t nsmission to be transmitted;
`
`[ (2) ]receiving an instruct signal hich is effective to one of:
`
`(a)
`
`effect a transmitters ation to generate at least a first message
`
`that is effective to enable a receiver tation to control the reception or
`
`presentation of television programm· g and meter or monitor the
`
`availability, use or usage of said televis·on programming or said at least a
`
`first message; [or] and
`
`(b)
`
`effect a first receiver station
`
`generate at least a first
`
`message that is effective to enable a second eceiver station to control the
`
`3
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`tion or presentation of television programming and meter or monitor
`
`ilability, use or usage of said television programming or said at
`
`[(3)]receiv g a transmitter control signal which operates at one of said
`
`transmitter station a d said first receiver station to communicate said at least a
`
`first message to a tr
`
`[(4)]transmitting s id information transmission, said instruct signal and
`
`5.
`
`(Unchanged) The method of claim 2, further comprising the step of
`
`programming said control processor to execute a controlled function in response
`
`to said one message.
`
`6.
`
`(Unchanged) The method of claim 5, further comprising the step of
`
`programming said control processor to compare information stored in at least a
`
`first of said at least one register memory with control function invoking
`
`information.
`
`message.
`
`The method of claim 6, further comprising the
`
`ing said control processor to compare information stored in at
`
`t least one register memory with information that
`
`a length or format of at least a portion of said one
`
`8.
`
`(Unchanged) The method of claim.2, wherein said at least one
`
`register memory includes an input signal register memory and said step of
`
`selecting control information in said inputted first portion of said selected one
`
`4
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`message and communicating said selected control information to a plurality of
`
`registers memories comprises:
`
`communicating said at least a first portion of said selected one message to
`
`said input signal memory;
`
`selecting information at said input signal memory to compare or
`
`communicate; and
`
`communicating said control information to at least a second of said at
`
`least one register memory.
`
`9.
`
`, (Unchanged) The method of claim 8, further colll:prising the step of
`,,
`communicating at least one of said other portions of said message stream to said
`
`input signal register memory.
`
`10. ·
`
`(UncJ;tanged) The method of d~~m 2, further comprising the step of
`
`controlling a switch to output at least one of said selected other portions of said
`
`message stream to a specific one of said plurality of processors.
`
`11.
`
`(Unchanged) The method of claim 10, further comprising the step
`
`of controlling said switch to communicate said at least one of said selected other
`
`portions of said message stream from one of (1) said control processor and (2) a
`
`buffer that inputs to said control processor.
`
`12.
`
`(Unchanged) The method of claim 10, wherein said switch outputs
`
`said at least one of said selected other portions to said control processor.
`
`5
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`..
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`13.
`
`(Unchanged) The method of claim 10, wherein ~aid switch outputs
`
`said at least one of said selected other portions to one of a signal processor and a
`
`central processor.
`
`14..
`
`(Unchanged) The method of claim 10, further comprising the step
`
`of programming said control processor to control said switch based on
`
`information contained in said message stream.
`
`15.
`
`(Unchanged) The method of claim 14, further comprising the steps
`
`of:
`
`programinmg said control processor with comparison information to
`
`serve as a basis for determining the length or format of said at least one segment
`
`of said message stream; and
`
`programming said control processor to compare information stored at
`
`said at least one register memory to said comparison information.
`
`16:
`
`(Unchanged) The method of claim 14, wherein said control
`
`processor and said switch are located on a single microchip.
`
`17.
`
`(Unchanged) The method of claim 2, wherein said control processor
`
`receives"'Said at least a first portion of said message from a first of said plurality
`
`of processors and controls outputting to a second of said plurality of processors.
`
`18.
`
`(Unchanged) The method of claim 17, wherein said first processor
`
`performs one of (1) converting information detected in said message stream
`
`based on protocols and (2) assembling processor code based on information
`
`detected in said message stream, said message further comprising the step of
`
`6
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`communicating machine language code to said second processor in said selected
`
`other portions of said message stream.
`
`19.
`
`(Once Amended) The method of claim 2, wherein [said control
`
`processor controls] a decryptor [to decrypt] decrypts at least some of said
`
`message stream, said method further comprising the step of outputting one or
`
`more of said selected other portions of said message stream to said decryptor.
`
`20.
`
`(Once Amended) The method of claim 19, further comprising the
`
`steps of:
`
`J)3.
`
`,
`
`[decrypting] selecting at least a portion of said message stream; and
`
`controlling said decryptor in accordance with said [decrypted] selected at
`
`least a portion of said message stream.
`
`21.
`
`'
`(Once Am-:-ended) The method of claim 20, wherein said
`
`[decryp~ed] selected at least a portion of said message stream comprises a
`
`decryption key.
`
`(Unchanged) The method of claim 21, further comprising the step
`
`22;"'
`_;.,
`of decrypti}lg at least some of said digital television signal in accordance with
`
`said decryption key.
`
`23.
`
`(Unchanged) The method of claim 19, further comprising the steps
`
`of:
`
`storing a decrypted portion of said at least some of said message at some
`
`or all of said at least one register memory; and
`
`processing decrypted portions of said message stream simultaneously.
`
`7
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`24.
`
`(Unchanged) The method of claim 23, further comprising the step
`
`of decrypting processor ·code contained in said message stream.
`
`(Once Amended)
`
`· The method of claim 2, wherein a standard
`
`informs said receiver station of a signal to be processed, said method
`
`further comp 'sing the step of [identifying] evaluating at least some of said
`
`selected one mes ge based on said standard.
`
`26.
`
`The method of claim 25, wherein further
`
`comprising the step of:
`
`storing at least a
`
`Word and a Standard Length me ory; and
`
`programming said receiver st ion to compare data received in said
`
`information transmission to information ontained at said one or more of a
`
`Standard Word and a Standard Length me
`
`27.
`
`(Unchanged) The method of cla,im 25, wherein said receiver
`
`identifies, based on said standard, one of(l) an end of a prior message and (2) a
`
`header in said selected one message.
`
`28.
`
`(Unchanged) The method of claim 25, further comprising the step
`
`of causing said control processor to process an interrupt signal based on said
`
`standard.
`
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`29.
`
`(Unchanged) The method of claim 2, further comprising the step of
`
`programming said receiver station to communicate a processor interrupt signal
`
`to at least one of said plurality of processors.
`
`30.
`
`(Unchanged) The method of claim 29, wherein two or more of said
`
`plurality of processors are adapted to communicate or respond to processor
`
`interrupt signals, said method further comprising the step of programming said
`
`receiver station to select at least one of said two or more processors to interrupt.
`
`31.
`
`(Unchanged) The method of claim 30, wherein said control
`
`processor selects said at least one of said two or more processors, said method
`
`further comprising the steps·of:
`
`detecting a processor interrupt signal in said information transmission;
`
`and
`
`inputting said processor interrupt signal to said control processor.
`
`32.
`
`(Unchanged) The method of claim 2, wherein said receiver station
`
`includes a video monitor and a first of said. plurality of processors generates a
`
`video signal to be displayed as part of said television programming, said method
`
`further comprising the step of outputting to said first processor a first of said
`
`selected other portions of said message stream which causes said first processor
`
`to communicate said video signal to said video monitor.
`
`The method of claim 32, wherein said receiver
`
`eaker and a second of said plurality of processors [to]
`
`generates an audio si
`
`containing audio to be emitted as part of said
`
`television programming, sai
`
`ethod further comprising the step of outputting
`
`9
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`:· 5 t
`id second processor a second of said selected other portions of said message
`~v ..-1 stream
`· ch causes which causes said second processor to communicate said
`~ ')I(J \audio signal t? s
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`34.
`
`(Unchanged) The method of claim 33, wherein said receiver station
`
`includes one or more of a tuner and a portion receiver 'and a third of said
`
`plurality of processors is adapted to control said one or more of a tuner and a
`
`portion receiver, said method further comprising the step of programming said
`
`third processor to control said one or more of a tuner and a portion receiver
`
`based oninformationcontained in said selected other portions of said message
`
`stream.
`
`(Once Amended) The method of claim 2, wherein at least one of
`
`ther portions of said message stream contains first processor code
`
`that controls at lea one of said plurality of processors to generate information
`
`· deo or audio signals, said method further comprising
`
`the steps of:
`
`selecting second processor c e contained in said selected one message;
`
`and
`
`communicating said first processor co
`
`in accordance with said second
`
`processor code.
`
`. 36.
`
`(Unchanged) The method of claim 35, wherein said second
`
`processor code programs said control processor to select control information in
`
`said message stream and communicate said selected control information to said
`
`at least one register memory, said method further comprising the step of
`
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`processing control information of a new composition and/or length in
`
`accordance with said second processor code.
`
`'-- - -
`
`receiver ation includes a second plurality of processors, said method further
`
`The method of claim 2, wherein [said] a second
`
`e steps of:
`
`receivin said information transmission at a signal generator operatively
`
`generating (1
`
`irst cadence information which is effective at said receiver
`
`station to execute a pre etermined instruction, and (2) at least one message
`element containing one or o(; instructions to be directed to a specific one of
`said second plurality of proc sors; and
`
`embedding said cadence
`
`formation and said at least one message
`
`element in said information trans
`
`· ssion; and
`
`communicating said informati
`
`transmission, said cadence information
`
`and said at least one message element to
`
`38.
`
`(Once Amended)
`
`register memories, said method further comprising e steps of:
`
`communicating to said signal generator second
`
`which operates at said plurality of [dedicated] register ~ni.~~~
`
`portion of one message of said message stream.
`
`39.
`
`(Unchanged) The method of claim 37, wherein said signal
`
`generator embeds said generated message stream in said information
`
`11
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`transmission, said method further comprising the step of communicating said
`
`television programming to said transmitter in said information transmission.
`
`(Once Amended) The method of claim 37, wherein said second
`
`n includes one of a tuner and a portion receiver operatively
`
`second plurality of processors, said method further
`
`==~it~tin~ an instruction which operates at said receiver
`
`station to control said one o said tuner and said portion receiver to receive a
`
`signal containing at least some
`
`said television programming; and
`
`transmitting said television
`
`·~~ sWpsof.
`
`format;
`
`(Once Amended) The method of claim 3, further comprising the
`
`a first instruction specifying a control function to be executed;
`
`econd instruction specifying a data structure, length, or
`
`d second instructions in a sequence, said sequence
`
`comprising a command; and
`communicating to [said] .a si al generator [second] cadence information
`
`which operates at said [plurality of ded ated register] receiver station to select a
`
`portion of one message of said message stre
`
`Mof:
`
`42.
`
`(Unchanged) The method of claim 41, further comprising the steps
`
`processing data specifying a condition which must exist at said receiver
`
`station; and
`
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`including said data specifying a condition in said command.
`
`43.
`
`(Unchanged) The method of claim 41, wherein said command
`
`operates at said receiver station to execute one or more instructions contained in
`
`an instruction set, said method further comprising the step of organizing said
`
`message stream to include said instruction set.
`
`44.
`
`(Unchanged) The method of claim 41, further comprising the step
`
`of transmitting operating instructions which enable said receiver station to
`
`execute said control function in response to said command.
`
`45.
`
`(Unchanged) The method of claim 41, wherein said command
`
`operates at said receiver station to present one or more receiver specific data at
`
`an output device, said receiver specific data generated in accordance with said
`
`instruction set, said method further comprising the step of transmitting one or
`
`more of (1) subscriber transaction data to be stored and processed at said receiver
`
`station and (2) meter-monitor data.
`
`46.
`
`(Once Amended) The method of claim 41, further comprising the
`
`step of transmhting a signal which operates at said receiver station to
`
`communicate a processor interrupt to at least a porti~n of said plurality of
`
`processors.
`
`The method of claim 46, further comprising the
`
`an instruction which operates at said receiver station to
`
`lurality of processor to [selected] select a second
`
`processor to be interrupted.
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`~
`48.
`(Unchanged) The method of claim 3, further comprising the steps
`
`of:
`
`selecting at least some of said television programming at said
`
`transmission station;
`
`selecting meter-monitor data; and
`
`organizing said message stream to include said selected at least some of
`
`said television programming and said selected meter-monitor data.
`/""
`
`49.
`
`(Unchanged) The method of claim 4, wherein said at least a first
`
`message contains first cadence information, a first execution segment, and an
`
`information segment, said information segment containing a first part of data
`
`and an instruction set, said method further comprising the steps of:
`
`generating one.or more second messages, each of said second messages
`
`containing second cadence information and some other part of said data and an
`
`instruction set;
`
`organizing said first and second messages in a sequence, said sequence
`
`comprising a message stream; and
`
`transmitting said message stream.
`
`(Once Amended) A method of claim 4, wherein said at least a
`
`ntains multiple elements of fixed length, said first message
`
`tion segment containing an instruction set, said method
`so(o
`age containing multiple elements of fixed length,
`
`said multiple elements comprising
`
`firstly embedding said first messa
`
`into an information transmission;
`
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`equently embedding said second message into said information
`
`id first message firstly and said second message subsequently in
`
`said information tr smission comprising [said]~ message stream; and
`
`51.
`
`(Unchanged) The method of claim ·4, wherein at least one receiver ,
`
`station includes a plurality of processors, said method further comprising the
`
`steps of:
`
`selecting code to be directed to said plurality of processors;
`
`generating one or more first elements or fields to identify a structure of
`
`said at least a first message;
`
`generating one or more second elements or fields to identify one or more
`
`processor instructions in said at least a first message;
`
`generating one or more third elements or fields to identify a data format in
`
`said at least a first message; and
`
`organizing said selected code in a sequence with a plurality of message
`
`components, said sequence including said generated first, second, and third
`
`elements or fields, said selected code organized in said sequence with said
`
`plurality of message components and said generated first, second, and third
`
`elements or fields comprising said at least a first message.
`
`52.
`
`steps of:
`
`The method of claim 4, further comprising the
`
`truction specifying a control function to be executed;
`
`generating a second ·
`
`uction specifying a data structure, length, or
`
`format;
`
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`rocessing data specifying a condition, said data in said structure, length,
`
`or forma specified by said second instruction;
`
`orga ·zing said first and second instructions and said processed data in a
`
`sequence, sai sequence comprising [said] ft command;
`
`transmitt g said at least a first message and said command.
`
`53.
`
`steps of:
`
`The method of claim 4, further comprising the
`
`receiving said infor
`
`tion transmission at a signal generator operatively
`
`connected to said transmitter;
`
`generating one or more se ond messages, said one or more second
`
`messages containing multiple elem
`
`ts of [both] fixed and variable length, said
`
`one or more second messages includin (1) cadence information which is
`
`effective at one or more receiver stations
`
`execute a predetermined instruction
`
`and (2) at least one variable length element ntaining one or more instructions
`
`to be directed to a processor;
`
`embedding said second message into said ·rst information transmission
`
`in a [first] sequence with said first message, said firs message and said second
`
`message in said first information transmission in said
`
`'rst] sequence comprising
`
`a message stream; and
`
`transmitting said information transmission and said
`
`54.
`
`(Unchanged) The method of claim 53, further comprising the step
`
`of transmitting at least some of said television programming.
`
`------------
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`· ...
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`e .....
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`Serial No. 08/449,097
`Docket No.: 05634.0208
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`..
`
`(Ortce Amended) The method of claim 4, wherein at least one
`
`receiver sta ·on includes a plurality of processors, said method further
`
`t least one fixed length message element containing specific
`
`cadence information hich operates at said at least one receiver station to
`
`rogrogrammed] preprogrammed operating
`
`instructions;
`
`generating a plurality· variable length message elements, each variable
`
`length element containing at leas one instruction and having one of (1) an
`
`internal length token, and (2) an ass
`
`iated signal designating a file, said.
`
`plurality of variable length message ele ents containing instructions directed to
`·'
`
`different ones of said plurality of processo ;
`
`organizing said generated at least one
`
`ed length message element and
`
`said generated plurality of variable length messa
`
`elements in a sequence, said
`
`at least one fixed length message element and said ge era ted plurality of variable
`
`length message elements in said sequence comprising =at~~:...=...JF-==~=
`
`"
`
`message stream; and
`
`transmitting said message stream.
`
`II.
`
`REMARKS
`
`A.
`
`Introduction
`
`The Non-Final Office Action dated April2, 1998 (Office Action) has been
`
`carefully revi~wed and the foregoing amendments made in response thereto.
`
`Claims 2-4, 7, 19-21, 25-26, 33, 35, 37-38, 40-41, 46-47, 50, 52-53 & 55 are
`
`amended. Claims 2-55 are pending in the application.
`
`17
`
`APPLE EX. 1012
`Page 17
`
`

`
`•
`
`Serial No. 08/449,097
`Docket No.: 05634.0208
`
`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 inventors,
`
`at the time the application was filed, had possession of the claimed invention.
`
`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 Applicants regard as the invention.
`
`Claims 2, 5-7, 19-25, 32 33, 37, 39 & 40 are rejected under 35 U.S.C. § 103 (a)
`
`as being unpatentable over Brennand et al., U.S. Pat. No. 4,744,080 in view of
`
`Drury, et al., U.S. Pat. No. 4,636,851.
`
`Claims 10 & 13-16 are rejected under 35 U.S.C. § 103 (a) as being
`
`unpatentable over Brennand et al. in view of Drury, et al., and further in view of
`
`Vigarie et al., U.S. Pat. No. 4,748,619.
`
`Claim 3 is rejected under 35 U.S.C. § 103 (a) as being unpatentable over
`
`Block et al., U.S. Pat. No. 4,225,884.
`
`Claims 3 & 41-48 are rejected under 35 U.S.C. § 103 (a) as being
`
`unpatentable over Brennand et al., U.S. Pat. No. 4,744,080 in view of Murray, U.S.
`
`Pat. No. 4,706,109.
`
`Claims 4 & 49-55 have not been rejected over the prior art and Applicants
`
`assume these claims would be in condition for allowance but for the § 112 first
`
`and second paragraph rejections.
`
`Claims 8, 9, 11, 17, 18, 26-31,35,35 & 38 have not been rejected over the
`
`prior art and Applicants assume these claims would be in condition for
`
`allowance but for the § 112 first and second paragraph rejections and if the prior
`
`art rejection of independent claim 2 is overcome.
`
`18
`
`APPLE EX. 1012
`Page 18
`
`

`
`e Serial No. 08/449,097
`
`Docket No.: 05634.0208
`
`Claims 2-55 remain active in this application. No new matter is presented
`
`in the foregoing amendments. Approval and entry of same is respectfully
`
`requested.
`
`B.
`
`Response to Requirement Imposed Upon
`Applicants to Resolve Alleged Conflicts Between
`Applicants' Applications.
`
`Applicants respectfully traverse the requirements of the Office Action
`
`paragraph 5.
`
`Paragraph 5 of the Office Action requires Applicants to ·either:
`
`(1)
`
`file terminal disclaimers in each of the related 328 applications
`
`terminally disclaiming each of the other 327 applications; or
`
`(2)
`
`provide an affidavit attesting to the fact that all claims in the 328
`
`applications have been reviewed by applicant and that no conflicting claims exist
`
`between the applications; or
`
`(3)
`
`resolve all conflicts between claims in the related 328 applications
`
`by identifying how all the claims in the instant application are distinct and
`
`separate inventions from all the claims in the above identified 328 applications.
`
`In addition, Examiner states that failure to comply with any one of these
`
`requirements will result in abandonment of the application.
`
`Examiner states that the requirement has been made because conflicts
`
`exist between claims of the related co-pending applications, including the
`
`present application. Examiner sets forth only th_e serial numbers of the co(cid:173)
`
`pending applications without an indication of which claims are conflicting.
`
`Examiner has also attached an Appendix providing what is deemed to be clear
`
`evidence that conflicting claims exist between the 328 related co-pending
`
`applications and the present application. Further, Examiner states that an
`
`19
`
`APPLE EX. 1012
`Page 19
`
`

`
`•
`
`Serial No. 08/449,097
`Docket No.: 05634.0208
`
`analysis of all claims in the 328 related co-pending applications would be an
`
`extreme burden on the Office requiring millions of claim con::tparisons.
`
`Applicants respectfully traverse these requirements in that Examiner has
`
`both improperly imposed the requirements, and has incorrectly indicated that
`
`abandonment will occur upon failure to comply with the requirement.
`
`Applicants' traversal is supported by the fact that 37 C.F.R. § 1.78 (b) does n?t,
`
`under the present circumstances, provide Examiner with authority to require
`
`Applicants to either: 1) file terminal disclaimers; 2) file an affidavit; or 3) resolve
`
`all apparent conflicts. Additionally, the penalty of abandonment of the instant
`
`application for failure to comply with the aforementioned requirement is
`
`improper for being outside the legitimate authority to impose abandonment
`
`upon an application. The following remarks in Section (B) will explain
`
`Applicants' basis for this traversal.
`
`1.
`
`The PTO's New Requirement is an
`Unlawfully Promulgated Substantive Rule
`Outside the Commissioner's Statutory Grant
`of Power
`
`The PTO Commissioner obtains his statutory rulemaking authority from
`
`the Congress through the provisions of Title 35 of the United States Code. The
`
`broadest grant of rulemaking authority-- 35 U.S.C. § 6 (a) --permits the
`
`Commissioner to promulgate regulations directed only to "the conduct of
`
`proceedings in the [PTO]". This provision does NOT grant the Commissioner
`
`authority to issue substantive rules of patent law. Animal Legal Defense Fund v.
`
`Quigg, 932 F.2d 920, 930, 18 USPQ2d 1677, 1686 (Fed. Cir. 1991).1 Applicants
`
`lAccord Hoechst Aktiengesellschaft v. Ouigg, 917 F.2d 522,526, 16 USPQ2d 1549, 1552 (Fed. Cir.
`1990); Glaxo Operations UK Ltd. v. Quigg. 894 F.2d 392, 398~99, 13 USPQ2d 1628, 1632-33 (Fed.
`Cir. 1990); Ethicon Inc. v. Quigg, 849 F.2d 1422, 1425,7 USPQ2d 1152,1154 (Fed. Cir 1988).
`
`20
`
`APPLE EX. 1012
`Page 20
`
`

`
`•
`
`Serial No. 08/449,097
`Docket No.: 05634.0208
`
`respectfully submit that the Examiner's creation of a new set of requirements
`
`based upon 37 CFR § 1.78(b) constitutes an unlawful promulgation of a
`
`substantive rule in direct contradiction of a long-established statutory and
`
`regulatory scheme.
`
`2.
`
`The PTO's Requirement is a Substantive Rule
`
`The first determination is whether the requirement as imposed by the PTO
`
`upon Applicants is substantive or a procedural rule. The Administrative
`
`Procedure Act offers general guidelines under which all administrative agencies
`
`must operate. A fundamental premise of administrative law is that
`
`administrative agencies must act solely within their statutory grant of power.
`
`Chevron v. Natural Resources Defense Council, 467 U.S. 837 (1984). The PTO
`
`Commissioner has NOT been granted power to promulgate substantive rules of
`
`patent law. Merck & Co., Inc. v. Kessler, 80 F.3d 1543 (Fed. Cir. 1996), citing,
`
`Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 930, 18 USPQ2d 1677, 1686 (Fed.
`
`Cir. 1991).
`
`The appropriate test for such a determination is an assessment of the rule'
`
`s impact on the Applicants' rights and interests under the patent laws. Fressola v.
`
`Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995). As the PTO Commissioner has no
`
`power to promulgate substantive rules, the Commissioner receives no deference
`
`in his interpretation of the statutes and laws that give rise to the instant
`
`requirement. Merck & Co., Inc. v. Kessler, 80 F.3d 1543 (Fed. Cir. 1996), citing,
`
`Chevron v. Natural Resources Defense Council, 467 U.S. 837 (1984). When agency
`
`rules either (a) depart from existing practice or (b) impact the substantive rights
`
`and interests of the effected party. the rule must be considered substantive. Nat'l
`
`Ass'n of Home Health Agencies v. Sche.iker, 690 F.2d 932, 949 (D.C. Cir. 1982), cert.
`
`denied, 459 U.S. 1205 (1983).
`
`21
`
`APPLE EX. 1012
`Page 21
`
`

`
`•
`
`Serial No. 08/449,097
`Docket No.: 05634.0208
`
`a.
`
`The PTO Requirement is Substantive
`Because it Radically Changes Long
`Existing Patent Practice by Creating a
`New Requirement Upon Applicants
`Outside the Scope of 37 C.F.R. § 1.78
`(b)
`
`The Examiner's requirement is totally distinguishable from the well
`
`articulated requirement authorized by 37 CFR § 1.78 (b), because it (1) creates
`
`and imposes a new requirement to avoid abandonment of the application based
`
`on the allegation that conflicts exist between claims of the related 328 co-pending
`
`applications, and (2) it results in an effective final double patenting rejection
`
`without the PTO's affirmative double patenting rejection of the claims. Long
`
`existing patent practice recognizes only two types of double patenting, double
`
`patenting based on 35 U.S.C. § 101 (statutory double patenting) and double
`
`patenting analogous to 35 U.S.C. § 103 (the well-known obviousness type double
`
`patenting).2 These two well established types of double patenting use an
`
`objective standard to determine when they are appropriate3 and have a
`
`determinable result on the allowability of the pending claims.
`
`The Examiner's new requirement represents a radical departure

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