[!\PP"uCATION NO.
`08/44~.413
`
`FILING DATE
`05/24/9b
`
`)EPARTMENT OF COMMERC!
`UNITED STAT!
`Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`FIRST NAMED INVENTOR
`
`I ATIORNEY DOCKET NO.
`
`. ' ~.: ~ .!. . . . :
`
`L
`
`.
`•,
`•· '-·'
`
`EXAMINER
`
`ART UNIT
`
`DATE MAILED:
`
`PAPER NUMBER
`
`f!J
`
`Please find below and/or attached an Office communicationJ:oncerning this application or
`proceeding.
`·
`
`Commissioner of Patents and Trademark
`
`PT0·90C (Rev. 2/95)
`
`1· File Copy
`
`APPLE EX. 1033
`Page 1
`
`

`
`·'' Notice of Abandonment
`
`This application is abandoned in view of:
`
`0 applicant's failure to timely file a proper response to the Office letter mailed on - - - - - - - -
`
`0 A response (with a Certificate of Mailing or Transmission of
`) was received on
`- - - - - - - - . which is after the expiration of the period for response (including a total extension of time of
`__ month(s)) which expired on - - - - - - - -
`
`0 A proposed response was received on
`rejection.
`(A proper response to a final rejection consists only of: a timely filed amendment which places the application in condition
`for allowance; a Notice of Appeal; or the filing of a continuing application under 37 CFR 1.62 (FWC)).
`
`. but it does not constitute a proper response to the final
`
`0 No response has been received.
`
`0 applicant's failure to timely pay the required issue fee within the statutory period of three months from the mailing date of the
`Notice of Allowance.
`
`0 The issue fee (with a Certificate of Mailing or Transmission of _______ ) was received on - - - - - - -
`0 The submitted issue fee of$ ____ is insufficient. The issue fee required by 37 CFR 1.18 is$ ___ _
`
`0 The issue fee has not been received.
`
`0 applicant's failure to timely file new formal drawings as required in the Notice of Allowability.
`
`0 Proposed new formal drawings (with a Certificate of Mailing or Transmission of ________ ) were received
`on _______ _
`
`0 The proposed new formal drawings f i led - - - - - - - - are not acceptable.
`
`0 No proposed new formal drawings have been received.
`
`0 the express abandonment under 37 CFR 1.62(g) in favor of the FWC application filed on _______ _
`
`0 the letter of express abandonment which is signed by the attorney or agent of record, the assignee of the entire interest,
`or all of the applicants.
`
`0 the letter of express abandonment which is signed by an attorney or agent (acting in a representative capacity under 37
`CFR 1.34(a)) upon the filing of a continuing application.
`
`0 the decision by the Board of Patent Appeals and Interferences rendered on~...,....-,------- and because the period
`for seeking court review of the decision has expired and there are no allowed claims.
`
`12SJ the reason(s) below:
`
`See attached.
`
`u. s. Patent and Trademarl< Office
`PT0-1432 (Rev. 5-95)
`
`Notice of Abandonment
`
`PartofPaperNo. ___ 1_6 __
`
`APPLE EX. 1033
`Page 2
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`

`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . vi
`
`1.
`
`BACKGROUND: THE PORTFOLIO ..................................... 1
`
`a.
`
`The Primary Examiner Reserves the Right to Provide Further Information
`
`Regarding Applicants' Course of Conduct ............................. 3
`
`2.
`
`STATEMENT OF PUBLIC INTEREST ................................... 4
`
`a.
`
`Applicants' Targets: Courts Industry and Licensees ..................... 4
`
`3.
`
`THE LEGAL MYTH .................................................. 7
`
`4.
`
`FINAL NOTICE OF NON-RESPONSIVE AMENDMENT ..................... 9
`
`a.
`
`b.
`
`Initial Notice from the Primary Examiner . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
`
`Between September 1996 and October 1997 Applicants Relied Primarily on the
`
`1981 Specification. Contrary to the Requirements under 35 U S.C § 120 ..... 10
`
`c.
`
`Applicants Were Notified In Court As to the Proper Specification Under
`
`35 U.S C. § 120. Furthermore Applicants Failed to Bring Such
`
`Notification to the Attention of the U.S.P.T.O. Contrary toM PEP.
`
`2001 06(c) .................................................... 11
`
`II
`
`APPLE EX. 1033
`Page 3
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`

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`•
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`A,pplicants' Pattern of Improperly Identifying the Wrong Written Description In
`
`d.
`
`the Current Prosecution Began On or After Applicants Received Reproach for
`
`Improper Identification ofWritten Description In Court .................. 13
`
`e.
`
`The Principal Counsel's Parenthetical Remarks in Application No 081113 329
`
`Misinterpret In Re Bauman . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
`
`Applicants Have Misled the U. S.P T 0 In Other Instances . . . . . . . . . . . . . . . . 14
`
`Applicants Received Prior Notice in Court that Any Lapse By The Examiner Does
`
`f.
`
`g.
`
`Not Exculpate Counsel ........................................... 15
`
`h.
`
`1995· The Weather Channel Litigation The Doctrine ofLaches
`
`Inequitable Conduct and The Principal Counsel
`
`. . . . . . . . . . . . . . . . . . . . . . . . 17
`
`i.
`
`Applicants' Overall Conduct Has Caused Unjustifiable and Prejudicial Delay in
`
`Prosecution
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
`
`i.
`
`ii.
`
`The Number of Claims Filed By Applicants Is Unwarranted
`
`. . . . . . . . . 19
`
`I D S References Are Inappropriate and Irrelevant . . . . . . . . . . . . . . . . 19
`
`iii.
`
`Applicants' Preliminary Amendment Submissions Were Untimely
`
`Furthermore Applicants' Counsel's Request To Delay Prosecution Was
`
`Unreasonable ............................................ 20
`
`iv.
`
`Applicants Have Filed Substantially Duplicate Claims in Different
`
`Applications. Furthermore Applicants Failed to Make a Good Faith
`
`Effort Contrary to M.P.E.P. 2001.06(b) ........................ 20
`
`v.
`
`Interview of June 16. 1999 . . . . . .
`
`. .......................... 22
`
`( 1)
`
`Applicants' Principal Counsel Threatened to Seek a Writ of
`
`111
`
`APPLE EX. 1033
`Page 4
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`

`
`Mandamus ......................................... 22
`
`(2)
`
`Applicants Consistently Violated M P E P 2001 06(b) ....... 24
`
`(3)
`
`DIRECTV "Overlays" Appear to Have Been a Target ........ 25
`
`vi.
`
`Applicants have Acted Contrary to 37 C.F.R § 10 85(a)(4) (5},
`
`and (6} ................................................. 26
`
`( 1)
`
`Applicants have Misguided the Examining Corps ............ 27
`
`vu.
`
`Applicants Did Not Possess The Claimed Invention ................ 28
`
`(1)
`
`Applicants Did Not Possess Downloading Software ......... 29
`
`viii.
`
`Applicants Failed to Timely Complete the Alleged Consolidation
`
`Agreement
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 1
`
`5.
`
`APPLICANTS MAY EITHER OWE FEES, OR BE DUE A REFUND ........... 31
`
`a.
`
`b.
`
`Applicants Have Perpetuated Small/Large Entity Confusion ............... 31
`
`There Are No Apparent Differences in Subject Matter for
`
`Large/Small Inventions ........................................... 32
`
`c.
`
`Applicants' Subject Matter Groupings Do Not Appear to Justify a Fee
`
`d.
`
`e.
`
`f.
`
`Discrepancy ................................................... 32
`
`The Payment Record Demonstrates Discrepancies Within the Same Grouping
`
`. 33
`
`Erroneous Fee Payments Would Violate the Alleged Agreement to Consolidate 34
`
`Applicants' Counsel Has Been Aware of Fee Discrepancies
`
`Since 1995 .................................................... 34
`
`1.
`
`Applicants Were Required to Update Small Entity Status ........... 34
`
`IV
`
`APPLE EX. 1033
`Page 5
`
`

`
`ii.
`
`Applicants Changed Entity Size Status Within
`
`Applications ............................................. 34
`
`iii.
`
`In May 2000 Applicants' Counsel Admitted to Paying Deficient Fees On
`
`and After September 26 1995 ................................ 35
`
`iv.
`
`Applicants Have Paid Small Entity Fees for Large Entity
`
`Licensees ............................................... 36
`
`6.
`
`COURTS ASSUME THAT THE PRIMARY EXAMINER DOES HIS JOB. ....... 36·
`
`7.
`
`CONCLUSION: THE PRIMARY EXAMINER IS DOING HIS ASSIGNED JOB .. 38
`
`APPENDIX
`
`v
`
`APPLE EX. 1033
`Page 6
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`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Bauman, 683 F.2d 405 (C.C.P.A. 1982) ............................... 11, 13, 14
`
`DH Technology Inc v. Synergystex International, 47 U.S.P.Q.2d 1865 (Fed Cir. 1998) ..... 33
`
`Ex parte Hull, 191 U.S.P.Q. 157 (P.T.O.B.A. 1975) .............................. 8, 16
`
`Molins PLC v Textron Inc, 48 F.3d 1172 (Fed. Cir. 1995) ........................... 37
`
`Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990) ................ 15
`
`Personalized Mass Media Corp v The Weather Channel Inc et al ,
`
`899 F. Supp. 239 (E.D. Va. 1995) ..................................... 3, 4, 8, 17, 18
`
`In re Certain Digital Satellite Sys (PSS) Receivers & Components Thereof, No. 337-TA-392
`
`(Int'l Trade Comm. Oct. 20, 1997) (Initial Determination),
`
`[Parts 1 and 2] 1997 lTC LEXIS 307 .................... 1, 2, 5, 6, 12, 15, 19, 25, 36, 37
`
`Statues
`
`19 U.S.C. § 1.337(a) (1994) .................................................. 12
`
`35 U.S.C. § 102 ......................................................... 22, 24
`
`35 U.S.C. § 112 ............................................ 8, 9, 15, 27, 28, 29, 30
`
`35 U.S.C. § 120 ......................................... 1, 8, 10, 11, 12, 13, 15, 27
`
`35 U.S.C. § 151 ............................................................ 37
`
`Uruguay Round Agreements Act, Pub. L. No. 103-465, § 532, 108 Stat. 4983 (1994) ........ 1
`
`VI
`
`APPLE EX. 1033
`Page 7
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`

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`J.
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`, ·! l' :
`~-·
`'-l ':z v • .;.c .1 tJ
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`13 C.F.R. § 121.12 ......................................................... 35
`
`37 C.F.R. § 1.9 ............................................................ 35
`
`37 C.F.R. § 1.27 ........................................................... 35
`
`37 C.F.R. § 1.28 ........................................................ 35, 36
`
`37 C.F.R. § 1.56 ........................................................... 28
`
`37 C.F.R. § 1.98 ........................................................... 20
`
`37 C.F.R. § 1.129(a) ........................................................ 33
`
`37 C.F.R. § 1.181 .............................. · ......................... 31,32
`
`37 C.F.R. § 1.313(b)(3) ...................................................... 23
`
`37 C.F.R. § 10.85 ....................................................... 26, 28
`
`Procedures
`
`M.P.E.P. 711.03(d) .......................................................... 3
`
`M.P.E.P. 714.03 ........................................................ 10, 38
`
`M.P.E.P. 1002.01 ........................................................... 4
`
`M.P.E.P. 2001.06(b) ......................................... 20, 21, 22, 24, 25, 26
`
`M.P.E.P. 2001.06(c) ..................................................... 12, 26
`
`VII
`
`APPLE EX. 1033
`Page 8
`
`

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`1.
`
`BACKGROUND: THE PORTFOLIO.
`
`In the period between March 2, 1995, and June 7, 1995, applicants• filed 328 applications, each of
`
`which contained a 557-page specification. These 328 applications were filed immediately prior to
`
`June 8, 1995, the effective date of the Uruguay Round Agreements Act, Pub. L. No. 103-465, §
`
`532, 108 Stat. 4983 (1994). (The Uruguay Round Agreements Act limited patent coverage to
`
`twenty years from the date of filing, whereas previously, patent coverage had existed seventeen
`
`years from the date of issuance, barring unenforceability due to inequitable conduct or laches.)
`
`These 328 specifications were continuations, under 35 U.S.C. 120 ("Section 120"), of applicants'
`
`557-page parent application no. 08/113,329 ('329), filed August 30, 1993 (the" '329
`
`application"). The '329 application is a s·ection 120 continuation of the 557-page application no.
`
`056,501 (the" '501 application") which was filed on May 3, 1993 and which subsequently
`
`matured into U.S. patent no. 5,335,277 ('277) on Aug. 2, 1994. See Appendix at 000504-506 for
`
`a list of applicants' 328 applications, plus the parent '329 application. The first six applications in
`
`the chain, including '277, are shown below.
`
`1 Applicant Harvey is President and CEO of assignee Personalized Media
`Communications, L.L.C. (PMC), a limited liability company formed under the laws of the State of
`Delaware with its principal place of business at 110 East 42nd Street, Suite 1704, New York, NY
`10017. PMC was formed in September, 1995 and, in December, 1995, acquired most of the
`assets and certain liabilities ofPersonalized Mass Media Corporation (PMMC). PMC's
`predecessor company, National Cable Clearinghouse, was founded in 1981 by Mr. Harvey. Its
`name was changed to PMMC in 1989. PMMC's assets were sold to PMC in 1995. See In re
`Certain Digital Satellite Sys. (DSS) Receivers & Components Thereof, No. 337-TA-392 (lnt'l
`Trade Comm. Oct. 20, 1997) (Initial Determination), [Part 2 of2] 1997 lTC LEXIS 307, *70,
`*71(FINDINGS OF FACT, Section A, 1-3). Applicant Harvey and his counsel Thomas J. Scott,
`Jr., both earned degrees from Yale University around 1966. Appendix at 569 and Id., [Part 2 of
`2] 1997 lTC LEXIS 307, *83-84 (FINDINGS OF FACT, Section D, 46-50).
`
`APPLE EX. 1033
`Page 9
`
`

`
`L
`
`The primary examiner adopts certain findings of fact by Administrative Law Judge Paul J.
`
`Luckem in the lTC Litigation. ~In re Certain Digital Satellite Sys. (PSS) Receivers &
`
`Components Thereof, No. 337-TA-392 (lnt'l Trade Comm. Oct. 20, 1997) (Initial
`
`Determination), [Part 2 of2] 1997 lTC LEXIS 307, *75, *76 (FINDINGS OF FACT, Section C,
`
`21 and 23):
`
`C. Patents And Patent Applications OfHarvey And Cuddihy As Co-Inventors
`
`21. PMMC is the named assignee on six issued United States patents naming
`
`John C. Harvey and James W. Cuddihy as co-inventors:
`
`Patent No.
`
`4,694,490
`('490 patent)
`
`Application
`Serial No.
`317,510
`('510 application)
`
`4,704,725
`('725 patent)
`
`829,531
`('531 application)
`
`4,965,825
`('825 patent)
`
`096,096 2
`(continuation-in-part
`'096 application)
`
`5,109,414
`588,126
`('414 patent) (' 126 application)
`
`5,233,654
`('654 patent)
`
`849,226
`('226 application)
`
`5,335,277
`('277 patent)
`
`056,501
`('501 application)
`
`Filing Date
`
`Issue Date
`
`Nov. 3, 1981
`
`Sept. 15, 1987
`
`Feb. 14, 1986
`
`Nov. 3, 1987
`
`Sept. 11, 1987
`
`Oct. 23, 1990
`
`Sept. 25, 1990
`
`Apr. 28, 1992
`
`Mar. 10, 1992
`
`Aug. 3, 1993
`
`May 3, 1993
`
`Aug. 2, 1994
`
`20n Sept. 11, 1987 applicants failed to specifically include or incorporate by reference the
`44-page parent '531 specification into the 557-page '096 specification (applicants' principal
`counsel failed to "incorporate by reference" the parent '531 application's 44 pages into the '096
`application's 577 pages). As a consequence, applicants failed to maintain "continuity" of the 44-
`page subject matter.
`
`2
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`APPLE EX. 1033
`Page 10
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`

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`L
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`•
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`23. The specifications for the '490 and '725 patents were identical and 22 patent
`columns in length [44 pages plus drawings]. The specification for the '096
`application, in contrast, was approximately 322 patent columns in length [557
`pages plus drawings] . . .
`
`a.
`
`The Primary Examiner Reserves the Right to Provide Further Information
`Regarding Applicants' Course ofConduct.
`
`Applicants and their counsel (Thomas Scott, Jr.) have been attempting to secure patents by
`
`pursuing their unique, but improper, prosecution strategy for many years. One court noted that
`
`Scott has been involved in [the] patent [portfolio] prosecution and strategy for
`many years, perhaps as far back as the 1970s. According to [the applicant],
`[Scott] is the most knowledgeable person about the disclosures on file in the PTO,
`[and] with the ... 300 [then actually 329] pending applications for related patents.
`Scott also is described by [applicants] as "the expert on all aspects of the
`Company's patent position: including ... the company's development of its future
`patent prosecution strategy."
`
`See Personalized Mass Media Corp v. The Weather Channel Inc. et al, 899 F. Supp. 239, 244
`
`(1995), Appendix at 000419.
`
`Applicants' prosecution "strategy" has involved the submission of tens of thousands of claims, as
`
`well as thousands prior art references, a substantial number of which are irrelevant. This
`
`"strategy" has burdened the U.S.P.T.O. with vast amounts of information and prosecution
`
`content. The primary examiner cannot possibly discuss all of the prosection content in this
`
`Notice, due to its sheer quantity. However, the primary examiner assumes that applicants are
`
`aware of their own prosecution content.
`
`M.P.E.P. 711.03(d) states as follows:
`
`3
`
`APPLE EX. 1033
`Page 11
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`

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`L
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`[T]he examiner "may be directed by the Commissioner to furnish a written
`statement ... setting forth the reasons for his or her decision upon the matters
`averred in the petition, supplying a copy thereof to the petitioner." Unless
`requested, however, such a statement should not be prepared. ~ M.P.E.P.
`1002.01.
`
`However, should applicants choose to refute this Final Notice, the primary examiner reserves the
`
`right to provide additional prosecution content providing further basis for this Notice.
`
`2.
`
`STATEMENT OF PUBLIC INTEREST.
`
`This Final Notice is proper. Applicants and their counsels have created an enormous prosecution
`
`burden on the U.S.P.T.O. with their prosection "strategy," as will be explained. This burden on
`
`the office has caused unjustifiable and prejudicial delay.
`
`a.
`
`Applicants' Targets· Courts Industry and Licensees.
`
`Applicants are aware that there are members of the public who have developed or invested in
`
`products and systems that have emerged in the market place related to applicants' crafted claims.
`
`Appendix at 000419 lists applicants' targets of litigation, including The Weather Channel and
`
`others which carry programming broadcast over the SATCOM satellite communications system,
`
`including the following (899 F. Supp. at 239):
`
`-Landmark Communications Inc.,
`-TCI of Virginia, Inc.,
`-Newport News Cablevision LTD,
`-Continental Cablevision ofRichmond,
`-Continental Cablevision of Virginia, Inc.,
`-Media General Cable of Fairfax County, Inc.,
`-Media General Cable ofFredericksburg, Inc.,
`-Comcast Cablevision of Chesterfield County, Inc.,
`-SBC Media Ventures, Inc.,
`-Jones Intercable of Alexandria, Inc.,
`-Falcon Holding Group, L.P., and
`
`4
`
`APPLE EX. 1033
`Page 12
`
`

`
`..
`
`-Adelphi Communications Corp.
`
`Other targets appear to be all cable television companies throughout the U.S. who carry the
`
`Weather Channel programming, as well as Weather Channel competitors. Moreover, the lTC
`
`Litigation identifies additional targets as follows (See [Part 2 of2] 1997 lTC LEXIS 307, *70-72
`
`(FINDINGS OF FACT, Section A, 4-15)):
`
`4. Respondent Hughes Network Systems (HNS) is a corporation organized
`and existing under the laws of the State of Delaware with its principal place
`ofbusiness at 11717 Exploration Lane, Germantown, MD 20876 ....
`
`5. HNS is in the business of designing, manufacturing, importing and selling
`in the United States consumer electronics products ....
`
`6. Respondent ... Hitachi Home Electronics (America), Inc. (Hitachi) is a
`corporation organized and existing under the laws of the State of California
`with its principal place of business at 3890 Steve Reynolds Blvd., Norcross,
`GA 30093 ....
`
`7. Hitachi is in the business of designing, manufacturing, importing and
`selling in the United States consumer electronics products ....
`
`8. Respondent DIRECTV is a corporation organized and existing under the
`laws ofthe State of California with its principal place ofbusiness at 2230 E.
`Imperial Highway, El Segundo, CA 90245 ....
`
`9. DIRECTV is in the business of selling and providing television
`programming through the transmission of satellite broadcast signals . . . .
`
`10. Respondent USSB is a corporation organized and existing under the
`laws of the State of Minnesota with its principal place of business at 3415
`University Avenue, St. Paul, MN 55114 ....
`
`11. USSB is in the business of selling and providing television programming
`through the transmission of satellite broadcast signals ....
`
`12. Respondent Thomson Consumer Electronics, Inc. (Thomson or TCE) is
`a corporation organized ... and existing under the laws of the State of
`Delaware with its principal place of business at 10330 N. Meridian Street,
`Indianapolis, IN 46290-1024 ....
`
`5
`
`APPLE EX. 1033
`Page 13
`
`

`
`..
`
`13. Thomson is engaged in the business of designing, manufacturing,
`importing, and selling in the United States consumer electronics products ...
`
`14. Respondent Toshiba America Consumer Products Inc. (Toshiba) is a
`corporation organized and existing under the laws of the State of New
`Jersey with its principal place of business at 82 Totowa Road, Wayne, NJ
`07470 ....
`
`15. Respondent Matsushita Electronic Corporation of America (Matsushita)
`is a corporation organized and existing under the laws of the State of
`Delaware with its principal place ofbusiness at One Panasonic Way,
`Secaucus, NJ 07094 ....
`
`Additional targets identified in the lTC Litigation are as follows, Appendix at 000462-478. See
`
`[Part 2 of2] 1997 lTC LEXIS 307, *148-180 (FINDINGS OF FACT, Sections G-H):
`
`-Hewlett Packard (fact 180),
`-ARC (fact 186),
`-Viacom International (fact 175),
`-Starsight (facts 164,198,312,320,323-325,334,337,339-341,350-
`352,360-362,368),
`-Sony (facts 171, 198) , and
`-the National Football League (facts 187-188,191-192).
`
`Numerous additional targets may exist who represent the public interest, such as courts, and
`
`industry in general which have developed, in good faith, products and systems that have emerged
`
`in the market place and which are thus potentially subject to applicants' tens of thousands of
`
`claims in their "portfolio."
`
`Applicants have been to court numerous times with their portfolio. The courts have given careful
`
`consideration to previous prosection, including the 329 applications. Appendix at 000422,
`
`000462-478. Among the findings of fact by courts are the following:
`
`6
`
`APPLE EX. 1033
`Page 14
`
`

`
`..
`
`/ ti l ' ,'' 1 ' ..
`':t.rv•.& u
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`The business of PMC consists primarily of licensing its intellectual property and
`prosecution of patent applications .... As of June 11, 1997, with respect to any of
`PMC's current licensees, PMC does not design any tangible products for those
`licensees, nor does it work with manufacturers of those licensees' products in any
`way, nor does PMC monitor the quality of those licensees' products or services in
`any way, nor does PMC do any kind of safety checking on the products produced
`by those licensees, nor does PMC participate in any marketing efforts made on
`behalf of the products or systems licensed under its patents.
`
`Appendix at 462. Rather than contributing to progress, it appears that applicants' primary
`
`business consists of attempting to license their portfolio to businesses engaged already in active
`
`production and development of products and systems applicants now claim as proprietary
`
`inventions.
`
`3.
`
`THE LEGAL MYTH.
`
`As an initial point, the primary examiner clarifies, for the record, that he has performed a survey
`
`ofthe pattern of prosecution in applicants' patent portfolio because the primary examiner has not
`
`received requested cooperation from applicants and their counsels in understanding what subject
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`matter applicants believe they are claiming, and because applicants have failed to supplement their
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`current deficient responses. The primary examiner realized, during the summer of 1999, that the
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`approximately 191 applications to which applicants allege priority benefit to 1981 (of a total
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`number of329 applications) are replete with a pattern of material misrepresentations oflaw and
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`related factual omission. As a consequence, the portfolio prosecution record adds up to a
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`virtually meaninglessness record as to the merits and thus, among other things, has caused
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`unjustifiable and prejudicial delay.
`
`7
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`APPLE EX. 1033
`Page 15
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`

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`•.
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`More specifically, the primary examiner realized that the patent portfolio record is replete with a
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`pattern of misrepresentations regarding Section 120 "consequence" (e.g., see Appendix at 507);
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`misleading references to the 44-page parent application as "the specification" (e.g., see Appendix
`
`at 508); material written description factual omissions in response to 35 U.S. C. § 112 (Section
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`112) rejections (both first and second paragraph), which failed to cite the 557-page specification;
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`finally, among other things, applicants caused conflicting file wrapper histories from one
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`.
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`application to another application. The primary examiner believes that applicants should be
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`estopped from simultaneously assuming conflicting positions among the various applications.
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`As related to applicants' responses in the 191 applications, the portfolio is replete with a pattern
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`of what appears to be intentional misrepresentation of the legal application of Sections 120 and
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`112. The sheer number of these inaccurate responses has resulted in the loss of many years of
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`the portfolio's prosecution, and has harmed the public interest. This pattern has caused
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`unjustifiable and prejudicial delay of the portfolio prosecution, and is grounds for rejection on the
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`basis oflaches (~amicus brief in support of Symbol Technologies v Lemelson Medical
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`Educational & Research Foundation Limited Partnership, Appendix at 000509-551; see also
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`Timothy R. DeWitt, Does Supreme Court Precedent Sink Submarine Patents?, Appendix at
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`000552-568; see also Personalized Mass Media Corp. v. The Weather Channel Inc. et al., 899 F.
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`Supp. 239 (E.D. Va. 1995), Appendix at 000419-424; see also Ex parte Hull, 191 U.S.P.Q. 157
`
`(P.T.O.B.A. 1975)).
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`8
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`APPLE EX. 1033
`Page 16
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`

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`It appears that, for applications in which applicants claim priority benefit to 1981, applicants have
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`been improperly characterizing the "the specification" as the 1981 44-page parent specification; in
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`fact, both the 1981 specification and the 1987 557-page specification were the appropriate
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`references. According to the applicants, all that was required to gain priority benefit would have
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`been to demonstrate written description in the 44-page parent specification. However, applicants
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`would have been required to demonstrate written description in both the 1987 and the 1981
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`specification, in order to claim priority benefit to 1981. However, the written description of the
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`1981 specification was not incorporated by reference or otherwise included in the 1987
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`specification. This pattern of references to the wrong specification, and the related material
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`omissions of written description to the correct (1987) specification, has resulted in unjustifiable
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`and prejudicial delay. Due to the lack of continuity ofwritten description back to 1981, the
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`current file history displays no justification for issuance of a patent in these applications.
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`Additional improprieties are addressed later in this notice.
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`4.
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`FINAL NOTICE OF NON-RESPONSIVE AMENDMENT.
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`Applicants' Request for Reconsideration (Request) is not responsive to the Initial Notice ofNon(cid:173)
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`Responsive. (The Initial Notice ofNon-Responsive applied to applicants' amendments.)
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`Applicants' nonresponsive amendments are not fully responsive to the previous office actions.
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`Applicants' continued failure to identity the proper written description, even after a request for
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`proper written description by the primary examiner, as required under Section 112, has further
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`caused unjustifiable and prejudicial delay. This is a Final Notice ofNon-Responsive Amendment
`
`9
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`APPLE EX. 1033
`Page 17
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`

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`from the primary examiner ("Final Notice").
`
`a.
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`Initial Notice from the Primary Examiner.
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`The primary examiner previously brought the pattern of material omissions of written description
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`to applicants' attention via the Initial Notice. According to the M.P.E.P., "[O]nce an inadvertent
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`omission is brought to the attention of the applicants, the question of inadvertence no longer
`
`exists." M.P.E.P. 714.03. Accordingly, it is irrelevant whether the Non-Responsive
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`Amendments "appear to be bona-fide." However, the Non-Responsive Amendments do not
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`"appear to be bona-fide " in view of the evidence before the primary examiner. 3 The material
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`omissions related to written description remain unacceptable and improper under the law.
`
`b.
`
`Between September 1996 and October 1997 Applicants Relied Primarily on the
`1981 Specification Contrary to the Requirements under 35 U.S C § 120.
`
`Between September 13, 1996 and October 20, 1997, applicants consistently referred primarily to
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`the 1981 specification in amendments submitted to the U.S.P.T.O. In doing so, applicants implied
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`to the U.S.P.T.O. that citations to the 1981 specification, alone, were sufficient to establish
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`priority benefit to 1981.
`
`3 These issues are related to materially analogous PATTERNS of communications
`between the applicants and the PTO in at least the co-pending application no. 's which are now
`subject to this notice: 08/437,044; 08/437,937; 08/438,206; 08/438,659; 08/440,837; 08/441,880;
`08/442,165; 08/442,335; 08/442,507; 08/444,756; 08/445,290; 08/446,429; 08/446,494;
`08/447, 711; 08/449, 110; 08/449,413; 08/449,702; 08/449,800; 08/451,377; 08/459,216;
`08/469,078; 08/470,448; 08/470,476; 08/471,024; 08/474, 139; 08/477,564; 08/478,794;
`08/482,573; 08/483,054; 08/483, 174; 08/483,980; 08/487,408; 08/487,649; 08/488,378;
`08/498,002; 08/511,491. However, such pattern extends to the entire patent portfolio
`prosecution corresponding to cases which allege priority benefit to the 44 page parent
`specification. An enumerated list of the portfolio minus the first six patents are illustrated in the
`APPENDIX at pages 000504-506.
`
`10
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`APPLE EX. 1033
`Page 18
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`

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`Although applicants made "parallel citations," citing references to the 1987 specification in
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`footnotes, applicants primarily cited the 1981 specification in the text of the amendments.
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`However, applicants knew, or should have known that "continuity of disclosure" required
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`substantive references to both the 1981 and the 1987 disclosures, as well as the current
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`disclosure.
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`On September 13, 1996, Thomas J. Scott, Jr., applicants' principal counsel, stated as follows, in
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`discussing In re Bauman, 683 F.2d 405, 407 (C.C.P.A. 1982):
`
`Thus the basic requirements of Section 120 have been summarized as
`(1) copendency (i.e. the later filed application must be filed before "the prior
`application" is patented, abandoned or the proceedings are terminated);
`(2) continuity of disclosure (i.e. it relies upon and is supported by the parent
`application's specification);
`(3) coinventorship (i.e. the subsequent application lists the same inventor(s) as
`the parent); and
`(4) specific reference to the earlier application (i.e. the continuation application
`references the parent).
`
`Appendix at 000481. It appears, then, that applicants were aware at least as early as September
`
`13, 1996, that "continuity of disclosure" was required. Between September 1996 and October
`
`1997, applicants' amendments failed to adequately reference all written disclosures necessary to
`
`establish "continuity of disclosure," which Thomas J. Scott, Jr. recognized to be a "basic
`
`requirement." The amendments cannot be considered fully responsive. The non-responsive
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`material omissions, related to written description, are unacceptable and improper under the law.
`
`Accordingly, the non-responsive Amendments do not appear to be bona-fide, since the legal
`
`requirements were known to applicants.
`c.
`Applicants Were Notified In Court As to the Proper Specification Under
`
`11
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`APPLE EX. 1033
`Page 19
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`

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`35 USC § 120 Furthermore Applicants Failed to Bring Such
`Notification to the Attention of the U.S P T 0 Contrary toM P E.P.
`2001 06(c).
`
`On October 20, 1997, in the lTC Investigation's Initial Determination, Administrative Law Judge
`
`Paul J. Luckem reproached applicants for improperly identifying written description from the
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`1981 44-page parent specification. 4 Specifically, applicants received judicial notice that the
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`written description for applicants' claims is necessarily found in the 1987 557-page specification
`
`and not the 1981 44-page parent specification. The non-responsive material omissions of written
`
`description are thus unacceptable and improper under the law. Accordingly, the Non-Responsive
`
`Amendments do not "appear to be bona-fide. "
`
`There was inquiry as to whether "continuity of disclosure"