•
`
`UNITED STATES DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washinaton. DC 20231
`
`I
`APPLICATION NO. I FILING DATE
`08/485,507
`06/07/95
`
`FIRST NAMED INVENTOR
`HARVEY
`
`ATTORNEY DOCKET NO. I
`56:34.:304
`
`._T
`
`r
`
`THOMAS J SCOTT JR
`HOWREY AND SIMON
`1299 PENNSYLVANIA AVENUE NW
`WASHINGTON DC 20004
`
`LM61/0707
`
`EXAMINER
`VU,H
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED:
`
`07/07/9::::
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissioner of Patents and Trademarks
`
`PT0-90C (REV. 2/951
`
`1-File Copy
`
`-trli.S.OOVERNMENT PRINTING OrnCE 199S-319-826
`
`APPLE EX. 1031
`Page 1
`
`

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`•
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`Office Action Summary
`
`•
`
`-The MAILING DATE of this communication appears on the cover sheet beneath the correspondence address-
`
`Period for Response
`A SHORTENED STATUTORY PERIOD FOR RESPONSE IS SET TO EXPIRE _ ___,.,!:J~_ MONTH(S) FROM THE
`MAILING DATE OF THIS COMMUNICATION .
`
`• Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a response be timely filed after SIX (6) MONTHS
`from the mailing date of this communication .
`• If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days will be considered timely .
`• If NO period for response is specified above, such period shall, by default, expire SIX (6) MONTHS from the mailing date of this communication .
`• Failure to respond within the set or extended period for response will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`
`Status
`fi Responsive to communication(s) filed
`~ This action is FINAL.
`D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed in
`accordance with the practice under Ex parte Quayle, 1935 C.D. 1 1; 453 O.G. 213.
`
`Disposition of Claims
`f;J. Claim(s) _ _..£ _
`
`_....,,_,_-=-_____________________ is/are pending in the application.
`
`Of the above claim(s)
`
`?.:6.-
`
`D Claim(s)
`~· Claim(s) 2 -
`D
`
`D
`
`Application Papers
`
`is/are withdrawn from consideration.
`
`is/are allowed.
`
`is/are rejected.
`
`is/are objected to.
`
`are subject to restriction or election
`requirement.
`
`0 See the attached Notice of Draftsperson's Patent Drawing Review, PT0-948.
`is D approved D disapproved.
`0 The proposed drawing correction, filed on
`D The drawing(s) filed on
`is/are objected to by the Examiner.
`D The specification is objected to by the Examiner.
`0 The oath or declaration is objected to by the Examiner.
`
`Priority under 35 U.S.C. § 119 (a)-(d)
`
`D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 11 9(a)-(d).
`D All D Some* D None of the CERTIFIED copies of the priority documents have been
`D received.
`D received in Application No. (Series Code/Serial Number) ______________ _
`D received in this national stage application from the International Bureau (PCT Rule 1 7.2(a)).
`
`*Certified copies not received: ________________________ _
`
`Attachment(s)
`
`D Information Disclosure Statement(s), PT0-1449, Paper No(s). ___ _
`0 Notice of References Cited, PT0-892
`
`0 Notice of Draftsperson's Patent Drawing Review, PT0-948
`
`D Interview Summary, PT0-413
`
`DNotice of Informal Patent Application, PT0-152
`D Other _____________ _
`
`U. S. Patent and Tradema111 Office
`PT0-326 (Rev. 3-97)
`
`"U.S. GPO: 1997-417-381162710
`
`Part of Paper No. ___ _
`
`Office Action Summary
`
`APPLE EX. 1031
`Page 2
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`

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`Serial Number: 08/485,507
`Art Unit: 2733
`
`•
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`-2-
`
`1.
`
`This Office Action is responsive to the amendment(s) filed June 10, 1997.
`
`DETAILED ACTION
`
`DOUBLE PATENTING V.S. PATENTS
`
`2.
`
`After reviewing the restriction requirement under 35 U.S.C. 121 in US Patent
`
`5,233,654 it is believed that the claims of the instant application are subject to a
`
`double patenting analysis against US Patent 5,233,654 and US Patent 5,335,277.
`
`3.
`
`The non-statutory double patenting rejection, whether of the obviousness-type
`
`or non-obviousness-type, is based on a judicially created doctrine grounded in public
`
`policy (a policy reflected in the statute) so as to prevent the unjustified or improper
`
`timewise extension of the "right to exclude" granted by a patent and to prevent
`
`possible harassment. by multiple assignees.
`
`In re Goodman, 11 F.3d 1046, 29
`
`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`
`1985) In re VanOrnum, 686 F.2d 937,214 USPQ 761 (CCPA 1982); In re Vogel,
`
`422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528,
`
`163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1 .321 © may be
`
`used to overcome an actual or provisional rejection based on a non-statutory double
`
`patenting ground provided the conflicting application or patent is shown to be
`
`commonly owned with this application. See 37 CFR 1.130(b).
`
`APPLE EX. 1031
`Page 3
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`

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`Serial Number: 08/485,507
`Art Unit: 2733
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`•
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`-3-
`
`Effective January 1 , 1 994, a registered attorney or agent of record may sign
`
`a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply
`
`with 37 CFR 3.73(b).
`
`DOUBLE PATENTING BETWEEN APPL/CA TIONS
`
`4.
`
`Conflicts exist between claims of the following related co-pending applications
`
`which includes the present application:
`
`#
`
`1·
`
`4
`
`7
`
`Ser. No.
`
`397371
`
`435757
`
`437045
`
`10
`
`437791
`
`13
`
`437887
`
`16
`
`438206
`
`19
`
`439668
`
`22
`
`440837
`
`25
`
`441575
`
`28
`
`441749
`
`31
`
`441942
`
`34
`
`442327
`
`#
`
`2
`
`5
`
`8
`
`Ser. No.
`
`397582
`
`435758
`
`437629
`
`11
`
`437819
`
`14
`
`437937
`
`#
`
`3
`
`6
`
`9
`
`Ser. No.
`
`397636
`
`437044
`
`437635
`
`12
`
`437864
`
`15
`
`438011
`
`17
`
`438216
`
`18
`
`438659
`
`20
`
`439670
`
`21
`
`440657
`
`23
`
`441027
`
`26
`
`441577
`
`29
`
`441821
`
`32
`
`441996
`
`35
`
`442335
`
`24
`
`441033
`
`27
`
`441701
`
`30
`
`441880
`
`33
`
`442165
`
`36
`
`442369
`
`APPLE EX. 1031
`Page 4
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`

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`Serial Number: 08/485,507
`Art Unit: 2733
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`37
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`40
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`43
`
`46
`
`49
`
`52
`
`55
`
`58
`
`61
`
`442383
`
`444643
`
`444758
`
`444787
`
`445045
`
`445294
`
`446123
`
`446430
`
`446494
`
`64
`
`447380
`
`38
`
`442505
`
`41
`
`444756
`
`44
`
`47
`
`50
`
`53
`
`56
`
`59
`
`62
`
`65
`
`444781
`
`444788
`
`445054
`
`445296
`
`446124
`
`446431
`
`446553
`
`447414
`
`•
`
`-4-
`
`39
`
`42
`
`45
`
`48
`
`51
`
`54
`
`57
`
`60
`
`63
`
`66
`
`442507
`
`444757
`
`444786
`
`444887
`
`445290
`
`445328
`
`446429
`
`446432
`
`446579
`
`447415
`
`447447
`
`67
`
`70
`
`73
`
`76
`
`79
`
`82
`
`85
`
`88
`
`91
`
`447416
`
`447448
`
`447502
`
`447621
`
`447712
`
`447826
`
`447974
`
`448116
`
`448175
`
`94
`
`448326
`
`97
`
`448662
`
`68
`
`71
`
`447446
`
`447449
`
`74
`
`447529
`
`77
`
`447679
`
`80
`
`83
`
`86
`
`89
`
`92
`
`95
`
`98
`
`447724
`
`447908
`
`447977
`
`448141
`
`448251
`
`448643
`
`448667
`
`69
`
`72
`
`75
`
`78
`
`81
`
`447496
`
`447611
`
`447711
`
`447726
`
`84
`
`447938
`
`87
`
`90
`
`93
`
`96
`
`99
`
`448099
`
`448143
`
`448309
`
`448644
`
`448794
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`APPLE EX. 1031
`Page 5
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`•
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`-5-
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`100 448810
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`103 448916
`
`106 448977
`
`109 449097
`
`112 .449263
`
`11 5 449302
`
`118 449411
`
`121 449530
`
`124 449652
`
`127 449717
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`130 449800
`
`133 449901
`
`136 451377
`
`139 452395
`
`142 458760
`
`145 459218
`
`148 459521
`
`1 51 460043
`
`154 460120
`
`157 460256
`
`160 460394
`
`101 448833
`
`104 448917
`
`107 448978
`
`110 449110
`
`113 449281
`
`116 449351
`
`119 449413
`
`122 449531
`
`125 449697
`
`128 449718
`
`131 449829
`
`134 450680
`
`137 451496
`
`140 458566
`
`143 459216
`
`146 459506
`
`149 459522
`
`152 460081
`
`155 460187
`
`158 460274
`
`161 460401
`
`102 448915
`
`105 448976
`
`108 448979
`
`111 449248
`
`114 449291
`
`117 449369
`
`120 449523
`
`123 449532
`
`126 449702
`
`129 449798
`
`132 449867
`
`. 135 451203
`
`138 451746
`
`141 458699
`
`144 459217
`
`147 459507
`
`150 459788
`
`153 460085
`
`156 460240
`
`159 460387
`
`162 460556
`
`APPLE EX. 1031
`Page 6
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`•
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`-6-
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`163 460557
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`166 460634
`
`169 460677
`
`172 460743
`
`175 460770
`
`178 466887
`
`181 466894
`
`184 468044
`
`187 468641
`
`190 469056
`
`193 469103
`
`196 469108
`
`199 469496
`
`202 469623
`
`205 470051
`
`208 470054
`
`211 470448
`
`214 470571
`
`217 471238
`
`220 472066
`
`223 472980
`
`164 460591
`
`167 460642
`
`170 460711
`
`173 460765
`
`176 460793
`
`179 466888
`
`182 467045
`
`185 468323
`
`188 468736
`
`191 469059
`
`194 469106
`
`197 469109
`
`200 469517
`
`203 469624
`
`206 470052
`
`209 470236
`
`212 470476
`
`215 471024
`
`218 471239
`
`221 472399
`
`224 473213
`
`165 460592
`
`168 460668
`
`171 460713
`
`174 460766
`
`177 460817
`
`180 466890
`
`183 467904
`
`186 468324
`
`189 468994
`
`192 469078
`
`195 469107
`
`198 469355
`
`201
`
`469612
`
`204 469626
`
`207 470053
`
`210 470447
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`213 470570
`
`216 471191
`
`219 471240
`
`222 472462
`
`225 473224
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`APPLE EX. 1031
`Page 7
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`

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`•
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`-7-
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`226 473484
`
`229 473997
`
`232 474119
`
`235 474146
`
`238 474674
`
`241 475341
`
`244 477564
`
`247 477711
`
`250 477955
`
`253 478544
`
`256 478794
`
`259 478908
`
`262 479216
`
`265 479375
`
`268 479524
`
`271 480060
`
`274 480740
`
`277 482574
`
`280 483169
`
`283 483980
`
`286 484858
`
`227 473927
`
`230 473998
`
`233 474139
`
`236 474147
`
`239 474963
`
`242 475342
`
`245 477570
`
`248 477712
`
`251 478044
`
`254 478633
`
`257 478858
`
`260 479042
`
`263 479217
`
`266 479414
`
`269 479667
`
`272 480383
`
`275 481074
`
`278 482857
`
`281 483174
`
`284 484275
`
`287 484865
`
`228 473996
`
`231 473999
`
`234 474145
`
`237 474496
`
`240 474964
`
`243 477547
`
`246 477660
`
`249 477805
`
`252 478107
`
`255 478767
`
`258 478864
`
`261 479215
`
`264 479374
`
`267 479523
`
`270 480059
`
`273 480392
`
`276 482573
`
`279 483054
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`282 483269
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`285 484276
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`288 485282
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`APPLE EX. 1031
`Page 8
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`•
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`-8-
`
`289 485283
`
`292 486258
`
`295 486266
`
`298 487397
`
`301 487411
`
`304 487516
`
`307 487546
`
`310 487649
`
`313 487980
`
`316 487984
`
`319 488378
`
`322 488438
`
`325 488620
`
`328 485773
`
`',
`
`290 485507
`
`293 486259
`
`296 486297
`
`299 487408
`
`302 487428
`
`305 487526
`
`308 487556
`
`311
`
`487851
`
`314 487981
`
`317 488032
`
`320 488383
`
`291 485775
`
`294 486265
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`297 487155
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`300 487410
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`303 487506
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`306 487536
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`309 487565
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`312 487895
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`315 487982
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`318 488058
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`321 488436
`
`323 488439
`
`324 488619
`
`326 498002
`
`327 511491
`
`329 113329
`
`5.
`
`37 CFR 1.78(b) provides that when two or more applications filed by the same
`
`applicant contain conflicting claims, elimination of such claims from all but one
`
`application may be required in the absence of good and sufficient reason for their
`
`retention during pendency in more than one application. The attached Appendix
`
`provides clear evidence that such conflicting claims exist between the 329 related co-
`
`pending applications identified above. However, an analysis of all claims in the 329
`
`APPLE EX. 1031
`Page 9
`
`

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`•
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`Serial Number: 08/485,507
`Art Unit: 2733
`
`•
`
`-9-
`
`related co-pending applications would be an extreme burden on the Office requiring
`
`millions of claim comparisons.
`
`In order to resolve the conflict between applications, applicant is required to
`
`either:
`
`( 1)
`
`file terminal disclaimers in each of the related 329 applications terminally
`
`disclaiming each of the other 329 applications, or;
`
`(2)
`
`provide an affidavit attesting to the fact that all claims in the 329 applications
`
`have been reviewed by applicant and that no conflicting claims exists between the
`
`applications. Applicant should provide all relevant factual information including the
`
`specific steps taken to insure that no conflicting claims exist between the
`
`applications, or;
`
`· (3)
`
`resolve all conflicts between claims in the above identified 329 applications by
`
`identifying how all the claims in the instant application are distinct and separate
`
`inventions from all the claims in the above identified 329 applications (note: the five
`
`examples in the attached Appendix are merely illustrative of the overall problem. Only
`
`correcting the five identified conflicts would not satisfy the requirement).
`
`Failure to comply with the above requirement will result in abandonment of the
`
`application.
`
`INFORMATION DISCLOSURE STATEMENTS
`
`APPLE EX. 1031
`Page 10
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`

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`Serial Number: 08/485,507
`Art Unit: 2733
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`•
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`-10-
`
`6.
`
`Receipt is acknowledged of applicant's Information Disclosure Statements filed
`
`April 7, 1997.
`
`In view of the unusually large number of references cited in the
`
`instant application (approximately 2,200 originally and 645 in the subsequent IDS)
`
`and the failure of applicant to point out why such a large number of references is
`
`warranted, these references have been considered in accordance with 37 C.F.R. 1.97
`
`and 1 .98 to the best ability by the examiner with the time and resources available.
`
`The foreign language references cited therein where there is no statement of
`
`relevance or no translation are not in compliance with 37 C.F.R. 1.98 and have not
`
`been considered. Numerous references listed in the IDS are subsequent to applicant's
`
`latest effective filing date of 9/11 /87, therefore, the relevancy of these references is
`
`unclear. Also cited are numerous references that are apparently unrelated to the
`
`subject matter of the instant invention such as: US Patent # 33,189 directed toward
`
`a beehive, GB 1 56531 9 directed toward a chemical compound, a cover sheet with
`
`only the word "ZING", a computer printout from a library search with the words
`
`"LST" on it and a page of business cards including that of co-inventor James
`
`Cuddihy, among others. The relevancy of these references cannot be ascertained.
`
`Furthermore, there are several database search results listed in foreign languages
`
`(such as German) which list only the title and document information; no copy has
`
`been provided, therefore, these references have not been considered.
`
`APPLE EX. 1031
`Page 11
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`•
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`-11-
`
`Claim Rejections - 35 U.S. C. § 112
`
`7.
`
`Claims 6-19 are rejected under 35 U.S.C. 112, first paragraph, as containing
`
`subject matter which was not described in the specification in such a way as to
`
`reasonably convey to one skilled in the relevant art that the inventor(s), at the time
`
`the application was filed, had possession of the claimed invention.
`
`37 C.F.R. 1. 75(d)(1) requires that:
`
`"the terms and the phrases used in the claims must find clear support or
`
`antecedent basis in the description so that the meaning of the terms in the claims
`
`may be ascertainable by reference to the description".
`
`The following limitations were not supported by the specification as originally filed:
`
`In claims 3, 13 and 14, the steps of receiving, detecting, passing, modifying,
`
`locating, enabling and outputting.
`
`In claim 8, the steps of receiving, generating and modifying.
`
`In claim 9, the steps of receiving, effecting and modifying.
`
`8.
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the applicant regards as his
`invention.
`
`9.
`
`Claims 25-28 are rejected under 35 U.S.C. 112, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter
`
`which applicant regards as the invention.
`
`APPLE EX. 1031
`Page 12
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`•
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`-12-
`
`Regarding claim 25, line 3, recitation "said television programming" lacks clear
`
`antecedent basis.
`
`Regarding claim 26, line 3, recitation "said processor code" lacks clear
`
`antecedent basis.
`
`Regarding claim 27, line 3 recitation "said television programming" lacks clear
`
`antecedent basis.
`
`Regarding claim 28, line 3, recitation "said processor code" lacks clear
`
`antecedent basis.
`
`10.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102
`
`that form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless --
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or
`in public use or on sale in this country, more than one year prior to the date of application for patent
`in the United States.
`
`11. Claims 3-6, 8, 10, 13-16, 19-22, 24, 26, 28, 30 and 32 are rejected under 35
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`U.S.C. 1 02(b) as being anticipated by Fletcher et al (hereinafter referred to as
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`Fletcher) (USP 4,504,911 ).
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`As to claims 3, 13, 14, 24, 30 and 32, Fletcher teaches a system for enabling
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`programming presentation at a receiver station. The system comprises a tuner and
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`demod 308 as a receiver for receiving at least some of an information transmission,
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`video processor 306, comparator 302, buffer 304, generator 326, video and sync
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`recombiner 328 as one or more enabling devices, microprocessor 31 0 as processor
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`and CRT 330 as an output device. Tuner and demod 308 of terminal 300 receives an
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`information transmission from a remote data base (receiving information transmission
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`from remote source) wherein the information transmission comprises disabled video
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`signals. The comparator 302 and buffer 204 of terminal 300 together identify a
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`permission message and pass it to microprocessor 31 0 for processing (detecting the
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`presence of instruct-to-enable signal and passing it to processor). In response to the
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`received permission message microprocessor 31 0 of terminal 300 adjusts the way in
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`which terminal 300 grabs the specific control program (modifying a station in which
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`the station locates, identifies, or receives enabling information). Terminal 300 then
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`loads in the selected control program based on the page numbers defined in the
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`permission message (locating, identifying, or receiving enabling information). The
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`enabling information (control program) enables receiver (terminal 300) to enable the
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`disable information and to output programming presentation (enabling the grabbing
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`rows of video signals for displaying on the terminal display and control signals for
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`used by processor 31 0). See figures 4-7, col. 8, lines 53-62, col. 9, lines 33-40 and
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`lines 47-67, col. 42, lines 7-10, col. 43, lines 5-12 and col. 49, lines 28-36. It is
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`noted that the disable information (grabbed information) contains processor code
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`(control signal used by microprocessor 31 0).
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`As to claims 4, 19 and 20, the control programs correspond to the enabling
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`information or the second instruct-to-enable signal. Terminal 300 outputs the video
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`signals based on the received control programs.
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`As to claims 5, 21 and 22, the programming video signals correspond to the
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`second instruct-to-enable signal. The control programs are stored in the local memory
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`332 of terminal 300. See col. 44, lines 33-48.
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`As to claims 6, 1 5 and 16, the storage of the control programs in the local
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`memory 332 evidences the reception and identification of control programs.
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`As to claims 8, 10 and 28, since terminal 300 can further communicate and
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`transmit the one of the received programs to a remote device via a processor
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`controlled port of 1/0 interface 314 (see col. 45, lines 46-58), terminal 300 serves as
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`both a receiver station and a transmitter station. The permission message (instruct-to-
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`enable signal) is generated by the remote data base. The video signals and the
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`permission message are broadcasted over a TV distribution system. Fletcher teaches
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`the instruct-to-enable signal (characters 29 through 31 of permission row 1 204) that
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`causes the receiver (terminal 300) to enable the disabled information (characters 29
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`through 31 of permission row 1 204 enables terminal 300 to extract and grab program
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`packets
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`from the received data stream) by modifying the way the receiver
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`locates/identifies/receives the enabling information (control program).
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`Regarding claim 26, Fletcher further teaches the step of transmitting processor
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`code (see the transmission of control program).
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`12. Claims 3-9, 11-23, 25, 27, 29 and 31 are rejected under 35 U.S.C. 1 02(b) as
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`being anticipated by Block et al (hereinafter referred to as Block) (USP 4,225,884).
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`As to claims 3, 13, 14, 23, 29 and 31, Block teaches a method and system for
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`enabling program presentation at a subscriber station equipment which comprises
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`receiver 22, unscrambler 24 (enabling device), control unit 26 (processor), modulator
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`28 (output device). Receiver 22 receives the disabled television programming from the
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`central station equipment (receiving an information transmission containing disabled
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`information). Block teaches instruct-to-enable signal (program category code) causes
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`the receiver station (receiver system of figure 4) to modify in a fashion in which the
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`receiver station receives the enabling information (unscramble control signals VCS'
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`and ACS') and enables the disabled information based on the enabling information
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`(see the unscrambling of scrambled video and audio signals based on the (unscramble
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`control signals VCS' and ACS' in figure 4). See figures 4 and 6; col. 10, lines 50-63;
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`col. 6, line 62 to col. 7, line 14. It is noted that in Block's system the unscrambled
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`signals (disabled information) is TV programming.
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`As to claims 4, 19 and 20, the scrambling code signal corresponds to the
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`enabling information or the second instruct-to-enable signal. Unscrambler 24 and
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`modulator 28 output the unscrambled programming signals based on the scrambling
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`code signal.
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`APPLE EX. 1031
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`As to claim 5, 21 and 22, the scrambling code signal corresponds to the
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`second instruct-to-enable signal. The scrambling code signal is stored in the signal
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`storage device 68 of the receiver station. See figure 4 and col. 7, lines 5-8.
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`As to claims 6, 15 and 16, the temporary storage of the scrambling code signal
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`in comparator 66 evidences the reception and identification of scrambling code signal.
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`As to claims 7, 17 and 18, Block teaches that a receiver station can
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`communicate information that the program is actually viewed (evidencing the
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`outputting of the program presentation) to the central station via access unit 32 for
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`convenient billing purposes. See col. 5, lines 33-46.
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`As to claim 8, transmitter 16 received scrambled program signals (receiving at
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`a
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`transmission station an
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`information
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`transmission which contains disabled
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`information). Program ID code generator 50 generates a program code signal which
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`causes the receiver station to unscramble scrambled program by modifying the way
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`in which the receiver station locates, identifies, or receives the scrambling code
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`(generating an
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`instruct-to-enable signal). Transmitter 16 then broadcasts
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`the
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`scrambled program along with the program code. It is observed that at the receiver
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`the received program code is detected by detector 94 for used in the program
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`identification and reception of the scrambling code for the program. See figures 3 and
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`6. Block teaches instruct-to-enable signal (program category code) causes the receiver
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`station (receiver system of figure 4) to modify in a fashion in which the receiver
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`station receives the enabling information (unscramble control signals VCS' and ACS')
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`and enables the disabled information based on the enabling information (see the
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`unscrambling of scrambled video and audio signals based on the (unscramble control
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`signals VCS' and ACS' in figure 4). See figures 4 and 6; col. 10, lines 50-63; col. 6,
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`line 62 to col. 7 I
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`line 14.
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`As to claims 9 1 11-1 2, 25 and 27 I Block teaches that control unit 26 receives
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`from subscriber control unit 30 an accept signal ACC which effects the control unit
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`of the subscriber station equipment to generate scramble code signals for enabling
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`unscrambler 24 to unscramble the disable programming (receiving an instruct signal
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`to effect the receiver station to generate an instruct-to-enable signal). Scramble code
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`generator 50 receives from video sync detector a video sync signal (transmitter
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`control signal) for generating a scramble code signal and transmitting it to transmitter
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`1 6 (receiving a transmitter control signal). The scrambled video signal is transmitted
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`from the transmitter station to the receiver station. The accept signal ACC is
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`transmitted from the subscriber control unit 30 to the Control unit 26. The video sync
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`signal is transmitted from the video sync detector to the scramble code generator 50.
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`13. The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as
`set forth in section 1 02 of this title, if the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would have been obvious at
`the time the invention was made to a person having ordinary skill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
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`APPLE EX. 1031
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`14. Claims 7, 17 and 18 are rejected under 35 U.S.C. 1 03(a) as being unpatentable
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`over Fletcher in view of Block et al (USP 4,225,884).
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`Fletcher differs from the claims in that Fletcher does not teach the step of
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`communicating to a remote station information evidencing one of the step of enabling
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`disabled information and the step of outputting the programming presentation.
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`However, Block teaches that a receiver station can communicate information that the
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`program is actually viewed (evidencing the outputting of the program presentation)
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`to the central station for convenient billing purposes. Thus, It would have been
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`obvious to one skilled in the art at the time the invention was made to apply Block's
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`teaching of transmitting information that the program is actually viewed (evidencing
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`the outputting of the program presentation) from the receiver station to the central
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`station with the motivation being to provide a convenient way of sending billing
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`information.
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`15. Applicant's arguments filed June 10, 1997 have been fully considered but they
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`are not persuasive.
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`In response to Applicant's argument that Fletcher does not teach the step of
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`modifying in a fashion in which the receiver station locates the enabling information
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`in response to an instruct-to-enable signal, Applicant's attention is directed to col. 9,
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`lines 33-40 where Fletcher clearly teaches characters 29 through 31 of permission
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`row 1 204 comprises the page number associated with the first page of the specific
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`main or control program which is to be grabbed by the terminal 300 and are used by
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`the terminal 300 to identify which of several different main or control programs being
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`transmitted downstream from the remote database. Thus, in fletcher's system, the
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`way the receiver (terminal 300) locates the enabling information (a specific main or
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`control program) is modified by the instruct-to-enable signal (characters 29 through
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`31 of permission row 1 204).
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`In response to Applicant's argument that Fletcher does not teach the step of
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`causing the receiver to enable the disabled information by modifying a fashion in
`
`which the receiver locates, identifies, or receives the enabling information, Applicant's
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`attention is directed to col. 9, lines 33-40 where Fletcher teaches the instruct-to-
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`enable signal (characters 29 through 31 of permission row 1204) that causes the
`
`.receiver (terminal 300) to enable the disabled information (characters 29 through 31
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`of permission row 1 204 enables terminal 300 to extract and grab program packets
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`from
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`the
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`received data
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`stream) by modifying
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`the way
`
`the
`
`receiver
`
`locates/identifies/receives the enabling information (control program).
`
`In response to Applicant's argument that Block does not teach the receiver
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`station which enables disabled information based on the step of locating enabling
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`information, Applicant's attention is directed to figures 1-4 and 6; col. 3, line 62 to
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`col. 4, line 20; col. 5, lines 23-26; col. 6, lines 1-8; col. 6, line 62 to col. 7, line 4;
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`coL 9, lines 60-68; col. 10, lines 23-31 & 50-63, where Block teaches the receiver
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`(receiver system of figure 4) which enables disable information (scrambled video and
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`audio signals) based on the step of locating enabling information (program scrambling
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`codes and unscramble control signals VCS' and ACS').
`
`In response to Applicant's argument that Block does not teach the step of
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`generating an instruct-to-enable signal designating enabling information and that the
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`instruct-to-enable signal being effective to cause the receiver station to modify in a
`
`fashion in which the receiver station locates, identifies or receives the enabling
`
`information and enables the disabled information, Applicant's attention is directed to
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`figures 4 and 6; col. 10, lines 50-63; col. 6, line 62 to col. 7, line 14, where Block
`
`teaches instruct-to-enable signal (program category code) causes the receiver station
`
`(receiver system of figure 4) to modify in a fashion in which the receiver station
`
`receives the enabling information (unscramble control signals VCS' and ACS') and
`
`enables the disabled
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`information based on
`
`the enabling
`
`information (see
`
`the
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`unscrambling of scrambled video and audio signals based on the (unscramble control
`
`signals VCS' and ACS' in figure 4).
`
`In response to Applicant's argument that Block does not teach a transmitter
`
`station to generate an instruct-to-enable signal designating enabling information and
`
`that the instruct-to-enable signal being effective to cause the receiver station to
`
`modify in a fashion in which the receiver station locates, identifies or receives the
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`enabling information and enables the disabled information, Applicant's attention is
`
`directed to figures 4 and 6; col. 10, lines 50-63; col. 6, line 62 to col. 7, line 14,
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`where Block teaches instruct-to-enable signal (program category code) causes the
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`APPLE EX. 1031
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`receiver station (receiver system of figure 4) to modify in a fashion in which the
`
`receiver station receives the enabling information (unscramble control signals VCS'
`
`and ACS') and enables the disabled information based on the enabling information
`
`(see the unscrambling of scrambled video and audio signals based on the (unscramble
`
`control signals VCS' and ACS' in figure 4). It is also noted that the instruct-to-enable
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`signal is generated by the transmitter of the central station equipment.
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`16. Applicant's amendment necessitated the new ground(s) of rejection presented
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`in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and
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`any extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing
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`date of the advisory action. In no event will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`Any response to this final action should be mailed to:
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`APPLE EX. 1031
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`BoxAF
`
`Commissioner of Patents and Trademarks
`Washington, D.C. 20231
`
`or faxed to:
`
`(703) 308-9051, (for formal communications; please mark "EXPEDITED
`PROCEDURE")
`
`Or:
`
`(703) 308-5430 (for informal or draft communications, please label
`"PROPOSED" or "DRAFT")
`
`Hand-delivered responses should be brought to Cryst