IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Docket No.: PMC—003REX7
`
`(PATENT)
`
`In re Reexamination Application of:
`John C. Harvey et al.
`
`Patent No. 5,335,277
`
`Control Nos.: 90/006,563
`
`90/006,698
`
`Filed: March 14, 2003
`
`July 7, 2003
`
`Confirmation No.: 7085
`
`Art Unit: 3992
`
`For: SIGNAL PROCESSING APPARATUS AND
`
`Examiner: Ovidio Escalante
`
`METHODS
`
`REPLY BRIEF
`
`MS Appeal Brief — Patents
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`As permitted under § 41.41, this brief is filed within two months of the date of the
`
`Examiner’s Answer mailed September 24, 2008. Appellant noticed this appeal over two years
`
`ago on June 16, 2006. An Appeal Brief was filed August 16, 2006. An Examiner’s Answer was
`
`not received until October 2, 2007. A Reply Brief was filed December 3, 2007. The Reply Brief
`
`was acknowledged and jurisdiction was transferred to the Board on December 19, 2007. Over
`
`seven months later, on July 30, 2008, the Board issued an Order Returning Undocketed Appeal
`
`which returned jurisdiction to the Examiner. The Examiner issued a new Examiner’ s Answer on
`
`September 24, 2008. Due to the extraordinarily long pendency of this appeal, Appellant filed a
`
`Supplemental Appeal Brief on September 30, 2008, to provide the Board with a update status of
`
`the related appeals cited in the previously filed briefs.
`
`The Order Returning Undocketed Appeal identified several inconsistencies in the
`
`grounds of rejection as stated in the Final Office Action, the Appeal Brief and the orginal
`
`Examiner’s Answer. These inconsistencies were addressed and corrected in the new Examiner’s
`
`LIBW/16628511
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`PMC Exhibit 2006
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`APP“? V- PMC
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`Page 1
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`PMC Exhibit 2006
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`Answer mailed September 24, 2008. However, even with these corrections, the status of claim
`
`34 was not consistently addressed in or clear from the Final Office Action, the Advisory Action
`
`or the new Examiner’ s Answer. Appellant’ s representative brought this matter to the attention of
`
`the Examiner in a telephone interview on October 24, 2008. The Examiner mailed a
`
`communication clarifying the status of claim 34 on October 31, 2008. Appellant summarizes the
`
`substance of the interview in the arguments with respect to claim 34 below. This Reply Brief
`
`responds to the Examiner’s Answer mailed September 24, 2008, and the supplemental
`
`communication mailed October 31, 2008. This Reply Brief, along with the Supplemental Appeal
`
`Brief filed September 30, 2008, supplements the Appeal Brief.
`
`LIBW/1662851.1
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`PMC Exhibit 2006
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
`
`1.
`
`RELATED APPEALS, INTERFERENCES, AND JUDICIAL PROCEEDINGS
`
`Since the Supplemental Brief was filed September 30, 2008, the following actions
`
`have occurred in the related appeals listed in the Appeal Brief:
`
`In reexamination Control No. 90/006,838,
`
`regarding related U.S. Patent
`
`5,109,414, Appeal No. 2008-4864, an Oral Hearing has been set for November 19, 2008.
`
`In reexamination Control No. 90/006,688,
`
`regarding related U.S. Patent
`
`5,887,243, Appeal No. 2008-4816, an Oral Hearing has been set for November 19, 2008.
`
`LIBW/1662851.1
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`PMC Exhibit 2006
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`APP“? V- PMC
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`PMC Exhibit 2006
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`IPR2016-00754
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
`
`2.
`
`STATUS OF CLAIMS
`
`U.S. Patent 5,335,277 issued with claims 1-56. These claims are subject to
`
`reexamination. The Examiner confirmed claims 1, 5, 8, 9, 16, 21, 24-26, 29, 31, 36, 37, 39, 40,
`
`43, 53 and 54 in the final Office action mailed March 16, 2006 (Final Office Action). The
`
`Examiner rejected claims 2-4, 6, 7, 10-15, 17-20, 22, 23, 27, 28, 30, 32, 33-35, 38, 41, 42, 44-52,
`
`55 and 56 in the Final Office Action. In the Advisory Action mailed July 21, 2006, the
`
`Examiner withdrew the rejection of and confirmed claim 3. Appellant appeals the final
`
`rejections of claims 2, 4, 6, 7, 10-15, 17-20, 22, 23, 27, 28, 30, 32, 33 - 35, 38, 41, 42, 44-52, 55
`
`and 56.
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`LIBW/1662851.1
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`PMC Exhibit 2006
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`3.
`
`GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL
`
`Appellant finds error in each of the outstanding rejections in the Final Office Action
`
`maintained in the EXaminer’s Answer. Appellant requests that the each of the following
`
`rejections presented in the Final Office Action and maintained in the EXaminer’s Answer be
`
`reviewed.
`
`1. Claim 2 stands rejected:
`
`0
`
`under 35 U.S.C. §103(a) as being unpatentable over GB #1,556,366 to Betts in
`
`View of JP #56—8975 to Okada et al. (Appeal Brief, at p. 51; Answer, at p. 157;
`
`Reply Brief, at p. 21); and
`
`0
`
`under 35 U.S.C. §102(b) as being anticipated by each of the following:
`
`O
`
`“A Television Facsimile System” by fijii (Appeal Brief, at p. 51;
`
`Answer, at p. 32; Reply Brief, at p. 22),
`
`O U.S. Patent No. 4,042,958 to Saylor et al. (Appeal Brief, at p. 51; Answer,
`
`at p. 33; Reply Brief, at p. 22), and
`
`O U.S. Patent No. 4,135,213 to Wintfeld et al. (Appeal Brief, at p. 51;
`
`Answer, at p. 157; Reply Brief, at p. 22).
`
`2. Claim 4 stands rejected under §103(a) as being unpatentable over U.S. Patent No.
`
`4,306,250 to Summers et al. in View of JP #51—138317 to Ikeda et al. (Appeal Brief, at p.
`
`53; Answer, at p. 173; Reply Brief, at p. 24).
`
`3. Claim 6 stands rejected:
`
`0
`
`under §102(b) as being anticipated by U.S. Patent No. 3,848,082 to Summers
`
`(Appeal Brief, at p. 54; Answer, at p. 40; Reply Brief, at p. 25), and
`
`0
`
`under §102(b) or (e) as being anticipated by U.S. Patent No. 4,295,223 to
`
`Shutterly (Appeal Brief, at p. 54; Answer, at p. 37; Reply Brief, at p. 27).
`
`4. Claim 7 stands rejected:
`
`0
`
`under §103(a) as being unpatentable over Summers (Appeal Brief, at p. 56;
`
`Answer, at p. 190; Reply Brief, at p. 30) and “Broadcast Text Information in
`
`France” by Marti (Appeal Brief, at p. 56; Answer, at p. 166; Reply Brief, at p.
`
`30);
`
`0
`
`under §102(b) or (e) as being anticipated by Shutterly (Appeal Brief, at p. 56;
`
`LIBW/1662851.1
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`5
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`PMC Exhibit 2006
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`IPR2016-00754
`Page 5
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`

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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
`
`Answer, at p. 43; Reply Brief, at p. 30),
`
`0
`
`under §102(b) as being anticipated by “The Concept of Universal ‘Teletext’
`
`(broadcast and interactive video) Decoder, Microprocessor Based” (hereinafter,
`46
`959
`
`Concept of Universal ‘Teletext
`
`)( Appeal Brief, at p. 56; Answer, at p. 48;
`
`Reply Brief, at p. 30), and
`
`0
`
`under §102(e) as being anticipated by U.S. Patent No. 4,829,569 to Seth—Smith et
`
`a_l. (Appeal Brief, at p. 56; Answer, at p. 46; Reply Brief, at p. 31).
`
`5. Claim 10 stands rejected:
`
`0
`
`under § 102(b) as being anticipated by both of:
`
`O DE 2,904,981 to Zaboklicki (Appeal Brief, at p. 64; Answer. at p. 28;
`
`Reply Brief, at p. 32), and
`
`O U.S. Patent No. 4,528,589 to Block et al. (hereinafter “Block
`
`‘589”)(Appeal Brief, at p. 64; Answer, at p. 52; Reply Brief, at p. 33), and
`
`0
`
`under § 102 (b) or (e) as being anticipated by y (Appeal Brief, at p. 64;
`
`Answer, at p. 50; Reply Brief, at p. 32), and
`
`6. Claim 11 stands rejected under §103(a) as being unpatentable over Summers for the same
`
`reasons stated with respect to claim 7 (Appeal Brief, at p. 67; Answer, at p. 191; Reply
`
`Brief, at p. 33).
`
`7. Claim 12 stands rejected:
`
`0
`
`under §103(a) as being unpatentable over Summers for the same reasons stated
`
`with respect to claim 7 (Appeal Brief, at p. 68; Answer, at p. 191; Reply Brief, at
`
`p. 34); and
`
`0
`
`under §102(b) as being anticipated by each of the following:
`
`O Zaboklicki (Appeal Brief, at p. 68; Answer, at p. 29; Reply Brief, at p. 34),
`
`O U.S. Patent No. 4,054,911 to Fletcher et al. (Appeal Brief, at p. 68;
`
`Answer, at p. 55; Reply Brief, at p. 34), and
`
`O
`
`“Telesoftware: Home Computing Via Broadcast Teletext” by H:e:dgg
`
`(Appeal Brief, at p. 68; Answer, at p. 53; Reply Brief, at p. 34).
`
`8. Claim 13 stands rejected under §102(b) as being anticipated by Zaboklicki (Appeal Brief,
`
`at p. 72; Answer, at p. 30; Reply Brief, at p. 34).
`
`LIBW/1662851.1
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`PMC Exhibit 2006
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`APP“? V- PMC
`|PR2016-00754
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`Page 6
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`PMC Exhibit 2006
`Apple v. PMC
`IPR2016-00754
`Page 6
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`

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`ATTORNEY DOCKET: PMC—003REX7
`
`CONTROL NUMBERS: 90/006,563
`90/006,698
`
`9. Claim 14 stands rejected under §103(a) as being unpatentable over each of the following
`
`combinations of references:
`
`0 U.S. Patent No. 4,025,851 to Hazelwood et al. and “Television Frame
`
`Synchronizer” by Imai et al. in View of either “Vertical Interval Signal
`
`Applications” by Etkin or U.S. Patent No. 3,866,123 to Hetrich (Appeal Brief, at
`
`p. 73; Answer, at p. 178; Reply Brief, at p. 35); and
`
`0 Hazelwood et al. and Imai et al in View of “A System of Data Transmission in the
`
`Field Blanking Period of the Television Signal” by 1 (Appeal Brief, at p. 73;
`
`Answer, at p. 183; Reply Brief, at p. 36).
`
`10. Claim 15 stands rejected:
`
`0
`
`under: §102(b) or (e) as being anticipated by each of the following:
`
`O U.S. Patent No. 4,503,462 to Kelly et al. (Appeal Brief, at p. 74; Answer,
`
`at p. 59; Reply Brief, at p. 37);
`
`O U.S. Patent No. 4,323,922 to den Toonder et al. (Appeal Brief, at p. 74;
`
`Answer, at p. 63; Reply Brief, at p. 38);
`
`O U.S. Patent No. 4,331,973 to Eskin et al. (Appeal Brief, at p. 74; Answer,
`
`at p. 65; Reply Brief, at p. 38);
`
`O U.S. Patent No. 4,390,901 to Keiser (Appeal Brief, at p. 74; Answer, at p.
`
`57; Reply Brief, at p. 39); and
`
`O U.S. Patent No. 4,488,179 to K:ruge_r (Appeal Brief, at p. 74; Answer, at p.
`
`61; Reply Brief, at p. 39); and
`
`0
`
`under § 102(b) as being anticipated by DT Patent Document No. 2,614,188 to
`
`J ahnel (Appeal Brief, at p. 74; Answer, at p. 149; Reply Brief, at p. 38).
`
`ll. Claim 17 stands rejected:
`
`0
`
`under §102(b) as being anticipated by each of the following:
`
`O U.S. Patent No. 4,205,343 to Barrett (Appeal Brief, at p. 76; Answer, at p.
`
`69; Reply Brief, at p. 39),
`
`O U.S. Patent No. 4,484,027 to Lee et al. (Appeal Brief, at p. 76; Answer, at
`
`p. 72; Reply Brief, at p. 39),
`
`O U.S. Patent No. 4,531,021 to Bluestein (Appeal Brief, at p. 76; Answer, at
`
`LIBW/1662851.1
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`IPR2016-00754
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`p. 73; Reply Brief, at p. 39),
`
`O
`
`O
`
`U.S. Patent No. 4,535,355 to E (Appeal Brief, at p. 76; Answer, at p. 74;
`
`Reply Brief, at p. 39), and
`
`U.S. Patent No. 4,599,647 to George et al. (Appeal Brief, at p. 76;
`
`Answer, at p. 76; Reply Brief, at p. 39),
`
`0
`
`under §102(b) or (e) as being anticipated by each of the following:
`
`O
`
`U.S. Patent No. 4,405,942 to Block et al. (“Block ‘942”)( Appeal Brief, at
`
`p. 76; Answer, at p. 152; Reply Brief, at p. 39),
`
`U.S. Patent No. 4,337,483 to Guillou (hereinafter, “Guillou ‘483”)(Appeal
`
`Brief, at p. 76; Answer, at p. 70; Reply Brief, at p. 39),
`
`U.S. Patent No. 4,323,921 to Guillou (“Guillou ‘921”) (Appeal Brief, at p.
`
`76; Answer, at p. 71; Reply Brief, at p. 39), and
`
`U.S. Patent No. 4,598,288 to Yarbrough (hereinafter, Yarbrough ‘288)
`
`(Appeal Brief, at p. 76; Answer, at p. 75; Reply Brief, at p. 39), and
`
`0
`
`under §102(e) as being anticipated by each of the following:
`
`O
`
`U.S. Patent No. 4,613,901 to Gilhousen et al. (Appeal Brief, at p. 76;
`
`Answer, at p. 77; Reply Brief, at p. 39),
`
`U.S. Patent No. 4,634,808 to Moerder (Appeal Brief, at p. 76; Answer, at
`
`p. 78; Reply Brief, at p. 39);
`
`U.S. Patent No. 4,636,854 to Crowther et al. (Appeal Brief, at p. 76;
`
`Answer, at p. 79; Reply Brief, at p. 39),
`
`U.S. Patent No. 4,739,510 to Jeffers et al. (Appeal Brief, at p. 76; Answer,
`
`at p. 80; Reply Brief, at p. 39),
`
`U.S. Patent No. 4,821,097 to Robbins (Appeal Brief, at p. 76; Answer, at
`
`p. 81; Reply Brief, at p. 39),
`
`Seth—Smith et al. (Appeal Brief, at p. 76; Answer, at p. 82; Reply Brief, at
`
`p. 39), and
`
`U.S. Patent No. 4,887,296 to Horne (Appeal Brief, at p. 76; Answer, at p.
`
`83; Reply Brief, at p. 39).
`
`12. Claim 18 stands rejected:
`
`0
`
`under §102(b) or (e) as being anticipated by each of the following:
`
`LIBW/l66285l.l
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
`
`O Block ‘942 for the same reasons stated with respect to claim 17 (Appeal
`
`Brief, at p. 79; Answer, at p. 153; Reply Brief, at p. 42);
`
`O Guillou ‘483 (Appeal Brief, at p. 79; Answer, at p. 85; Reply Brief, at p.
`
`42); and
`
`O U.S. Patent No. 4,339,798 to Hedges et al. (Appeal Brief, at p. 79;
`
`Answer, at p. 84; Reply Brief, at p. 42);
`
`0
`
`under §102(b) as being anticipated by each of the following:
`
`O Bluestein (Appeal Brief, at p. 79; Answer, at p. 86; Reply Brief, at p. 42);
`
`and
`
`O U.S. Patent No. 4,558,180 to Scordo (Appeal Brief, at p. 79; Answer, at p.
`
`87; Reply Brief, at p. 42); and
`
`0
`
`under § l02(e) as being anticipated by Seth—Smith et al. (Appeal Brief, at p. 79;
`
`Answer, at p. 88; Reply Brief, at p. 42).
`
`13. Claim 19 stands rejected:
`
`0
`
`under §103(a) as being unpatentable oVer U.S. Patent No. 4,322,745 to Saeki et
`
`a_l. in View of “Satellite Security” by Davis (Appeal Brief, at p. 80; Answer, at p.
`
`170; Reply Brief, at p. 43); and
`
`0
`
`under §102(b) as being anticipated by each of the following:
`
`O U.S. Patent No. 4,045,814 to Hartung et al. (hereinafter, Hartung ‘814)
`
`(Appeal Brief, at p. 80; Answer, at p. 89; Reply Brief, at p. 43), and
`
`O U.S. Patent No. 4,163,254 to Block et al. (hereinafter, Block ‘254)
`
`(Appeal Brief, at p. 80; Answer, at p. 91; Reply Brief, at p. 43).
`
`14. Claim 20 stands rejected:
`
`0
`
`under §103(a) as being unpatentable oVer Saeki et al. in View of Davis for the
`
`same reasons stated with respect to claim 19 (Appeal Brief, at p. 81; Answer, at p.
`
`172; Reply Brief, at p. 43); and
`
`0
`
`under §102(b) or (e) as being anticipated by (Appeal Brief, at p. 81;
`
`Answer, at p. 151; Reply Brief, at p. 43).
`
`15. Claim 22 stands rejected:
`
`0
`
`under §103(a) as being unpatentable oVer Saeki et al. in View of DaVis for the
`
`LIBW/1662851.1
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`same reasons stated with respect to claim 19 (Appeal Brief, at p. 81; Answer, at p.
`
`172; Reply Brief, at p. 43); and
`
`0
`
`under §102(b) as being anticipated by Block ‘254 (Appeal Brief, at p. 81; Answer,
`
`at p. 93; Reply Brief, at p. 43), and
`
`0 Under §102(b) or (e) as being anticipated by U.S. Patent No. 4,388,643 to
`
`Aminetzah (Appeal Brief, at p. 81; Answer, at p. 95; Reply Brief, at p. 43).
`
`16. Claim 23 stands rejected
`
`0
`
`under §102(b) or (e) as being anticipated Block ‘942 (Appeal Brief, at p. 82;
`
`Answer, at p. 154; Reply Brief, at p. 44);
`
`0
`
`under §102(b) as being anticipated by U.S. Patent No. 3,919,462 to Hartung et al.
`
`(hereinafter, Hartung ‘462) (Appeal Brief, at p. 82; Answer, at p. 97; Reply Brief,
`
`at p. 44); and
`
`0
`
`under §102(e) as being anticipated by Gilhausen et al. (Appeal Brief, at p. 82;
`
`Answer, at p. 99; Reply Brief, at p. 44).
`
`17. Claim 30 stands rejected under §102(b) as being anticipated by U.S. Patent No. 4,142,156
`
`to Freund (Appeal Brief, at p. 83; Answer, at p. 101; Reply Brief, at p. 44).
`
`18. Claim 32 stands rejected:
`
`0
`
`under §102(b) or (e) as being anticipated by U.S. Patent No. 4,305,101 to
`
`Yarbrough (hereinafter, Yarbrough ‘101) (Appeal Brief, at p. 84; Answer, at p.
`
`104; Reply Brief, at p. 44); and
`
`0
`
`under §102(b) as being anticipated by K:rugg (Appeal Brief, at p. 84; Answer, at
`
`p. 107; Reply Brief, at p. 44).
`
`19. Claim 33 stands rejected under §102(b) or (e) as being anticipated by K:ruge_r (Appeal
`
`Brief, at p. 85; Answer, at p. 110; Reply Brief, at p. 45).
`
`20. Claim 34 stands rejected under § 102 (b) or (e) as anticipated by K:rugg (Appeal Brief, at
`
`85, Answer, at p. 110, Reply Brief, at p. 45).
`
`21. Claim 35 stands rejected under §102(b) or (e) as anticipated by K:rugg (Appeal Brief, at
`
`p. 86; Answer, at p. 113; Reply Brief, at p. 46).
`
`22. Claim 38 stands rejected under §102(b) or (e) as being anticipated by each of the
`
`following:
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`0 U.S. Patent No. 4,329,684 to Monteath et al. (Appeal Brief, at p. 86; Answer, at p.
`
`116; Reply Brief, at p. 46);
`
`0 U.S. Patent No. 4,331,974 to Cogswell et al. (Appeal Brief, at p. 86; Answer, at p.
`
`114; Reply Brief, at p. 46); and
`
`0 Kruger (Appeal Brief, at p. 86; Answer, at p. 119; Reply Brief, at p. 46).
`
`23. Claims 41 and 42 stand rejected under §103(a) as being unpatentable over Summers for
`
`the same reasons stated with respect to claims 7 and 12 (Appeal Brief, at p. 88; Answer,
`
`at p. 191; Reply Brief, at p. 46).
`
`24. Claim 44 stands rejected:
`
`0
`
`under §103(a) as being unpatentable over U.S. Patent No. 4,233,628 to Ciciora in
`
`View of either page 78 of the “National Cable Television Association Executive
`
`Seminar Series” document entitled “Videotex Services” and “’Touch—Tone’
`
`Teletext: A Combined TeleteXt—Viewdata System” by Robinson et al. (Appeal
`
`Brief, at p. 88; Answer, at p. 163; Reply Brief, at p. 46);
`
`0
`
`under §102(b) or (e) as being anticipated by both of the following:
`
`O Ciciora (Appeal Brief, at p. 88; Answer, at p. 125; Reply Brief, at p. 46);
`
`Q1
`
`O Appeal Brief, at p. 88; Answer, at p. 124; Reply Brief, at p. 46);
`
`and
`
`0
`
`under §102(b) as being anticipated by “CEEFAX: Proposed New Broadcasting
`
`Service,” 1/1974 by Edwardson (Appeal Brief, at p. 88; Answer, at p. 125; Reply
`
`Brief, at p. 46).
`
`25. Claim 45 stands rejected:
`
`0
`
`under §103(a) as being unpatentable over Monteath et al. and UK #2,034,995 to
`
`Egg (Appeal Brief, at p. 89; Answer, at p. 187; Reply Brief, at p. 47); and
`
`0
`
`under §102(b) or (e) as being anticipated by each of:
`
`O Eskin et al. (Appeal Brief, at p. 89; Answer, at p. 127; Reply Brief, at p.
`
`47); and
`
`O K:ruge_r (Appeal Brief, at p. 89; Answer, at p. 129; Reply Brief, at p. 47).
`
`26. Claim 46 stands rejected on the following bases:
`
`LIBW/1662851.1
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`under §103(a) as being unpatentable oVer “ORACLE—Broadcasting the Written
`
`Word” by James in View of Guillou ‘921 (Appeal Brief, at p. 90; Answer, at p.
`
`192; Reply Brief, at p. 47) and Edwardson in View of Guillou ‘921 (Appeal Brief,
`
`at p. 90; Answer, at p. 190; Reply Brief, at p. 47); and
`
`under §102(b) as being anticipated by Guillou ‘483 (Appeal Brief, at p. 90;
`
`Answer, at p. 146; Reply Brief, at p. 47).
`
`27. Claim 47 stands rejected under §102(b) as being anticipated by Zaboklicki (Appeal Brief,
`
`at p. 92; Answer, at p. 24; Reply Brief, at p. 47).
`
`28. Claim 48 stands rejected under §102(b) as being anticipated by Zaboklicki (Appeal Brief,
`
`at p. 93; Answer, at p. 24; Reply Brief, at p. 48).
`
`29. Claim 49 stands rejected under §102(b) as being anticipated by Zaboklicki (Appeal Brief,
`
`at p. 93; Answer, at p. 31; Reply Brief, at p. 48).
`
`30. Claim 50 stands rejected:
`
`under §102(b) as being anticipated by both of the following:
`
`O Zaboklicki (Appeal Brief, at p. 94; Answer, at p. 24; Reply Brief, at p. 48);
`
`and
`
`O U.S. Patent No. 3,886,302 to Kosco (Appeal Brief, at p. 94; Answer, at p.
`
`131; Reply Brief, at p. 48); and
`
`under §102(b) or (e) as being anticipated by both of the following:
`
`O Monteath et al. (Appeal Brief, at p. 94; Answer, at p. 132; Reply Brief, at
`
`p. 48); and
`
`O Eskin et al. (Appeal Brief, at p. 94; Answer, at p. 134; Reply Brief, at p.
`
`48).
`
`31. Claim 51 stands rejected:
`
`under §103(a) as being unpatentable oVer U.S. Patent No. 4,317,215 to Tabata et
`
`a_l. in View of “Some Applications of Digital Techniques in TV ReceiVers” by
`
`Doyle et al. (Appeal Brief, at p. 95; Answer, at p. 174; Reply Brief, at p. 48);
`
`under §102(b) as being anticipated by Zaboklicki (Appeal Brief, at p. 95; Answer,
`
`at p. 27; Reply Brief, at p. 48); and
`
`under §102(b) or (e) as being anticipated by both of the following:
`
`LIBW/1662851.1
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`O Monteath et al. (Appeal Brief, at p. 95; Answer, at p. 136; Reply Brief, at
`
`p. 48), and
`
`O Eskin et al. (Appeal Brief, at p. 95; Answer, at p. 138; Reply Brief, at p.
`
`48).
`
`32. Claim 52 stands rejected under §102(b) as being anticipated under §102(b) by U.S. Patent
`
`No. 3,936,595 to Yanagimachi et al. (Appeal Brief, at p. 97; Answer, at p. 140; Reply
`
`Brief, at p. 49).
`
`33. Claim 55 stands rejected under §102(b) or (e) as being anticipated by den Toonder et al.
`
`(Appeal Brief, at p. 98; Answer, at p. 142; Reply Brief, at p. 49).
`
`34. Claim 56 stands rejected:
`
`0
`
`under §103(a) as being unpatentable over U.S. Patent No. 3,786,420 to Stambler
`
`(Appeal Brief, at p. 99; Answer, at p. 168; Reply Brief, at p. 49); and
`
`0
`
`under §102(b) as being anticipated by Shutterly (Appeal Brief, at p. 99; Answer,
`
`at p. 144; Reply Brief, at p. 49).
`
`35. Claims 6, 7, 20, 27 and 28 stand rejected under the judicially created doctrine of
`
`obViousness—type double patenting. (Appeal Brief, at p. 100; Answer, at p. 196; Reply
`
`Brief, at p. 49.) Claims 6 and 7 stand rejected over claim 4 of the U.S. Patent 4,965,825
`
`patent. Claim 20 stands rejected over claim 9 of the ’825 patent. Claims 27 and 28 stand
`
`rejected over claims 4 and 5 of the ’825 patent.
`
`The following rejection asserted in the Final Office Action has been withdrawn by the
`
`Examiner in the Advisory Action mailed July 21, 2006.
`
`0 The rejection of claim 3 under §102(b) as being anticipated by U.S. Patent No.
`
`4,323,922 to den Toonder et al.
`
`The following rejections asserted in the Final Office Action have been withdrawn by the
`
`Examiner in the Examiner’ s Answer.
`
`0 The rejection of claim 10 under §103(a) as being unpatentable over Marti in View
`
`of “The Antiope Videotext System” by Graf;
`
`0 The rejection of claim 10 under § 102 (b) and (a) as being anticipated by Marti;
`
`and
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`LIBW/1662851.1
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`0 The rejection of claim 30 under § 102(b) as being anticipated by “The Vertical
`
`Interval: A Genera1—Purpose Transmission Path” by Anderson.
`
`LIBW/1662851.1
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`4.
`
`ARGUMENT
`
`A.
`
`PATENT OWNER’S RESPONSE WITH RESPECT TO CLAIM OF
`
`PRIORITY UNDER 35 U.S.C. §120
`
`i.
`
`The Requirements of Section 120
`
`Appellant maintains that at least claims 7, 10, 17, 18 and 23 are entitled to the effective
`
`filing date, November 3, 1981, of parent Application Serial No. 96,096, for the reasons set forth
`
`in the Appeal Brief. There is no dispute that the claims 7, 10, 17, 18 and 23 meet all the
`
`requirements for claiming the benefit of priority under 35 U.S.C. § 120 except the requirement
`
`that the prior—filed application must disclose the claimed invention of the later—filed application
`
`in the manner provided by the first paragraph of 35 U.S.C. § 112. The Examiner has not
`
`analyzed claims 7, 10, 17, 18 or 23 to determine that they are not disclosed by the parent
`
`application in the manner provided by the first paragraph of 35 U.S.C. § 112. Rather, “the
`
`examiner does not accept the Patent Owner’ s claim of Section 120 priority because the examiner
`
`maintains that the Patent Owner has not provided sufficient evidence to establish ‘continuity of
`
`disclosure’ required under Section 120.” (Answer at 14.) The Examiner explained his position
`
`as follows:
`
`as understood by the examiner, “continuity of
`Specifically,
`disclosure” is determined based on “the invention” being claimed.
`As such, the examiner believes that the procedure for determining
`whether “continuity of disclosure” exists is as follows:
`
`the claimed “invention”/“subject
`1) One determines what
`matter”
`comprises by reading/construing the claim in
`question, in accordance with the requirements of section 112-
`1, via the instant 557 page 1987 CIP disclosure;
`
`2)
`
`One
`
`then
`
`determines
`
`whether
`
`the
`
`claimed
`
`“invention”/“subject matter”, as described and claimed by the
`instant 557 page 1987 CIP disclosure, was described in
`accordance with requirements of Section 112-1 in the
`original 44 page specification to which Section 120 priority is
`alleged;
`
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`ATTORNEY DOCKET: PMC—003REX7
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`to both determinations is “yes”,
`the answer
`If
`3)
`“continuity of disclosure” has been established.
`
`the
`
`(Answer at 11-12.)
`
`As a preliminary matter, the Examiner cites no legal authority whatsoever to support his
`
`“continuity of disclosure” test. The Examiner’s Answer points to no language from any statute,
`
`rule, case or even the Manual of Patent Examining Procedure (“MPEP”) discussing, explaining
`
`or supporting his so—called test. In fact, the Examiner’s proposed “continuity of disclosure” test
`
`appears in none of those. Rather, as discussed below, each of those sources further support the
`
`positions stated by the Patent Owner in the Appeal Brief.
`
`The Code of Federal Regulations states that a “continuing application, which may be a
`
`continuation, divisional or continuation—in—part application, may be filed under the conditions
`
`specified in 35 U.S.C. 120, 121 or 365(c) and §1.78(a).” 37 C.F.R. §1.53(b). A “continuation—in-
`
`part application (which may disclose and claim subject matter not disclosed in the prior
`
`application)
`
`must be filed under” 37 C.F.R. §1.53(b). Id. Here, there is no dispute that
`
`applicants filed the application for the ’277 patent pursuant to Rule 5 3(b) and complied with the
`
`requirements of 37 C.F.R. §1.78(a).
`
`Section 120 reads in pertinent part as follows:
`
`An application for patent for an invention disclosed in the manner
`provided by the first paragraph of section 112 of this title in an
`
`which is filed
`application previously filed in the United States,
`by an inventor or
`inventors named in the previously filed
`application shall have the same effect, as to such invention, as
`though filed on the date of the prior application.
`
`(Emphasis added.) Thus, Section 120 makes no reference to any “continuity of disclosure” test,
`
`let alone the test proposed by the Examiner. Rather, §120 refers to “an invention” and whether
`
`that invention is properly disclosed “in an application previously filed ....” Pursuant to 37
`
`C.F.R. § 1.75, the subject matter the applicant regards as his invention is recited in the claims.
`
`Thus, taking 35 U.S.C. §120 and 37 C.F.R. §1.75 together, the proper test here is whether a
`
`claim of a later application is “disclosed in the manner provided by the first paragraph of section
`
`112 .
`
`.
`
`. in an application previously filed.” Indeed, this proper test that the Examiner should
`
`have applied is further reflected in 37 C.F.R. §1.78, which states:
`
`. may claim an invention
`.
`(a)(1) A nonprovisional application .
`disclosed in one or more prior—filed copending nonprovisional
`
`LIBW/16628511
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`ATTORNEY DOCKET: PMC—003REX7
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`CONTROL NUMBERS: 90/006,563
`90/006,698
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`. In order for an application to claim the benefit of
`.
`.
`applications .
`a prior—filed copending nonprovisional application .
`.
`.
`, each prior-
`filed application must name as an inventor at least one inventor
`named in the later—filed application and disclose the named
`inventor’s invention claimed in at least one claim of the later—filed
`
`application in the manner provided by the first paragraph of 35
`U.S.C. 112.
`
`Since the Examiner has not disputed that claims 7, 10, 17, 18 and 23 are supported by the 1981
`
`specification, those claims should be entitled to priority under §120.
`
`A review of the M.P.E.P. sections relating to continuation—in—part applications and
`
`priority under 35 U.S.C. §120 further reveals that the EXaminer’s analysis is erroneous.
`
`M.P.E.P. § 201.08 describes a continuation—in—part application as follows:
`
`A continuation—in—part is an application filed during the lifetime of
`an earlier nonprovisional application, repeating some substantial
`portion or all of the earlier nonprovisional application and adding
`matter not disclosed in the said earlier nonprovisional application.
`.
`.
`. For more information on claiming the benefit of a prior
`nonprovisional application, see MPEP §201.11.
`
`(Emphasis in original.) Following the guidance to see MPEP §201.11 “for more information,”
`
`one finds that §201.111 recites the following “conditions for a later—filed application to receive
`
`the benefit of the filing date of a prior—filed application under 35 U.S.C. §120:”
`
`(A) The prior—filed application must disclose the claimed
`invention of the later—filed application in the manner provided by
`the first paragraph of 35 U.S.C. 112 for a benefit claim under 35
`U.S.C. 120....
`
`(B) The later—filed application must be copending with the
`prior—filed nonprovisional application for a benefit claim under 35
`U.S.C. 120....
`
`(C) The later—filed application must contain a reference to the
`prior—filed application in the first sentence(s) of the specification or
`in an application data sheet, for a benefit claim under 35 U.S.C.
`120 .
`.
`.
`.
`
`(D) The later—filed application must be filed by an inventor or
`inventors named in the prior—filed application for a benefit claim
`under 35 U.S.C. 120. .
`.
`.
`
`1 In prior versions of the MPEP, section 201.11 was captioned “Continuity Between Applications: When
`Entitled to Filing Date.” A focus on that prior title rather than the substance of that section may explain
`the Examiner’s confusion.
`
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`(E) If the later—filed application is a utility or plant application
`filed on or after November 29, 2000, .
`.
`.
`.
`
`(F) If the prior—filed application is a provisional application
`
`prior—filed
`
`application was
`
`the
`If
`(G)
`.
`.
`.
`application .
`(H) If the prior—filed application was filed under 35 U.S.C. lll,
`the prior—filed application must be entitled to a filing date and the
`basic filing fee of the prior—filed application must have been paid.
`
`an international
`
`Of these, item (E) relating to applications filed after November 29, 2000, item (F) relating to
`
`provisional applications, item (G) relating to international applications clearly do not apply.
`
`Further, item (B) relating to copendency, item (C) relating to reference being made to the prior
`
`application,
`
`item (D) relating to the applications naming common inventors, and item (H)
`
`relating to the filing fee being paid in the parent application all unquestionably are satisfied by
`
`the present application. This leaves only item (A), which may be referred to as the “disclosure
`
`requirement” and is further discussed in MPEP 20l.ll as follows:
`
`I. DISCLOSURE REQUIREMENT
`
`The later—filed application must be an application for a
`patent for an invention which is also disclosed in the prior
`application (the parent or original nonprovisional application or
`provisional application); the disclosure of the invention in the prior
`application and in the later—filed application must be sufficient to
`comply with the requirements of the first paragraph of 35 U.S.C.
`ll2.
`.
`.
`. The prior—filed application must disclose the common
`named inventor’s invention claimed in the later—filed application in
`the manner provided by the first paragraph of 35 U.S.C. 112. See
`37 CFR l.78(a)(l). Accordingly, the disclosure of the prior—filed
`application must provide adequate support and enablement for the
`claimed subject matter of the later—filed application in compliance
`with the requirements of 35 U.S.C. 112, first paragraph.
`
`>!<>!<>!