`/pi:/Télgfq
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`mé
`
`Examiner:
`
`Groody, I.
`
`Group Art Unit:
`
`2607
`
`Atty Dkt.
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`5634,0304
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`l31‘llillllllllllllllllllllllllllli‘
`if ‘F Wm/97
`'9
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`’?
`
`In Re Application of:
`
`Iohn C. Harvey and Iames W. Cuddihy
`
`Serial No.
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`08/485,507
`
`Filed:
`
`For:
`
`]une 7, 1995
`
`SIGNAL PROCESSING APPARATUS
`AND METHODS
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`xyx/\/s/5/\/\/\/\_z\J\4
`
`Honorable Commissioner of Patents
`and Trademarks
`
`Washington, D.C. 20231
`
`Sir:
`
`AMENDMENT AND REQUEST FOR RECONSIDERATION
`
`In response to the Office Action mailed on December 10, 1996. Applicants submit
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`the following Amendment and Remarks.
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`It is not believed that extensions of time or fees for net addition of claims are
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`required, beyond those which may otherwise be provided for in documents
`
`accompanying this paper. However, in the event that additional extensions of time are
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`necessary to allow consideration of this paper, then such extensions of time are hereby
`
`petitioned under 37 CFR § 1.136(a), and any fees required therefor (including fees for
`
`net addition of claims) are hereby authorized to be charged to Howrey & Simon Deposit
`Account No. 08-3038.
`
`I.
`
`AMENDMENT
`
`Kindly enter the following amendment:
`
`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 1
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 1
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`».
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`\
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`In the Clai
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`s:
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`Please a end the claims as follows:
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`3.
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`(Amended) A method of enabling a programming presentation at a
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`receiver station, said receiver station having a receiver for receiving at least so r e of an
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`information transmission,i one [or more] enabling device operativ
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`connected
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`to said receiver, a processor operatively connected to 1 at least on of said one or
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`more] enabling device[s], and an output device operatively co v ected to g at least
`one [of said one or more] enabling device[s], said method cmprising the steps of:
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`receiving grid [an] information transmission fro v. if a local source and a [or]
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`remote source, said information transmission cont a ing disabled information;
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`detecting the presence of an instruct—to— -.. able signal, said instruct-to-enable
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`‘ signal designating enabling information;
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`passing said instruct—to—enable s" ; alto said processor;
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`modifying a fashion in whic said receiver station locates [, identifies, or
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`receives] sag enabling informat‘ n in response to said instruct—to-enable signal;
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`locating [, identifyin or receiving] said enabling information based on said step
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`of modifying a fashion;
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`enabling said 2 isabled information based on said step of locating [, identifying,
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`or receiving] said nabling information; and
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`outpu v g said programming presentation based on said step of enabling said
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`disabled " v ormation.
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 2
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
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`4.
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`(Amended) The method of claim 3, wherein said enabling information
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`
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`(Amended) The
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`.5.
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`a second instruct—to—enable sign
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`
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`at least some of said enabling '
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`
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`to said receiver, a processor
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`more] enabling deVice[s
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`.u d an output de ce operatively connected to said at least
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`one [of said 0
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`'
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`-
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`..
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`'
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`-
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`vice[s], said method comprising the steps of:
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 3
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 3
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`9
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`u
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`'
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`J)
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`.
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`(1)
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`receiving said [an] information transmission at a transmission st tion, said
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`information transmission containing disabled information;
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`
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`(2)
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`generating an instruct-to-enable signal designating enab
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`g information,
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`
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`said instruct-to-enable signal effective to cause said receiver stati
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`to enable said
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`disabled information by modifying a fashion in which said r eiver station one of
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`,
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`locates, identifies, and [or] receives said enabling inform on; and
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`(3)
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`transmitting said [broadcast or cablecas
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`information transmission and
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`said instruct—to—enable '
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`C/K _ informationtransmission,
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`9.
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`(Amended) A In hod 0 ~ ab ' g a programming presentation at a
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`receiver station, said receiver st ion hav'
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`; a eceiver for receiving at least some of an
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`at lea t one
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`-~ abling device operatively connected
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`v
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`to said receiver, a processor op rati ely connecte
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`to said at least one [of said one or
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`information, said infor ' ation transmission to be transmitted;
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`(2)
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`receiv' v g an instruct signal which is effective to accomplish one of:
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`(a)
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`
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`[effect] effecting a [transmission] transmitter station to generate an
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`instruct—to-enale signal designating enabling information, said instruct—to—enable
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`signal effect’ e to cause said receiver station to [enable said disabled information by]
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`'
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`,
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`] a fashion in which said receiver station one of locates, identifies, [or] and
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`
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 4
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 4
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`‘
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`receives said enabling information and enable said disabled information based on :.‘
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` [or] and
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`
`
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`fb)
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`efmiflgicl [effect a] receiver station to ; - - rate [an] i
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`signal effective to cause said rceiver station .u ' able said disabled information by
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`modifying a fashion in whic said rec er statio locates, identifies, or receives said
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`instruct-to-enable signal desi r ating - .. 'd enabling info vr ation[, said instruct—to-enable
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`
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`(3)
`receiving -
`mittercontrolsign whichoperatesatsaidtransmitter
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`enabling information];
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`Q)
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`
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`transmitting said information transmission, said instruct signal and said
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`A transmitter control signal.
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`' Please dd the following claims:
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`,
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`10.
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`The method of claim 8, further comprising t - step of transmitting said
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`ffective to cause said transmitter station
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`'fy, and receive said enabling information
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`to cause said trans itter station to transmit said enabling information in a manner
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`which is effec ‘e to cause said receiver station to one of locate, identify, and receive
`said enabl' g information in said modified fashion.
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 5
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 5
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`13
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`A method of enabling a programming presentation at a receive station,
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`said receiver station having a receiver for receiving at least some of an ' vormation
`
`
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`transmission, at least one enabling device operatively connected to s - d receiver, a
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`processor operatively connected to said at least one enabling devie, and an output
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`
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`device operatively connected to said at least one enabling devi e, said method
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`
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`receiving said information transmission from one f a local source and a remote
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`comprising the steps of:
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`9%
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`
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`information; and
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`outputting said pro - vs mming presentation based on said step of enabling said
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`disabled information.
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`
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`14.
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`A meth of enabling a programming presentation at a receiver station,
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`said receiver stati having a receiver for receiving at least some of an information
`
`
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`transmission, a east one enabling device operatively connected to said receiver, a
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`processor 0 eratively connected to said at least one enabling device, and an output
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`
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 6
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 6
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`1‘
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`.I
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`device operatively connected to said at least one enabling device, said met od
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`comprising the steps of:
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`receiving said information transmission from one of a loca source and a remote
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`source, said information transmission containing disabled in rmation;
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`detecting the presence of an instruct-to-enable si al, said instruct—to—enable
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`signal designating enabling information;
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`The method of claim 14, further comprising the step of storing information
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`evi encing said step of modifying a fashion in which said receiver station receives said
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`: abling information.
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 7
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 7
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`’
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`3
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`.
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`.
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`17.
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`The method of claim 13, further comprising the step of com cating to
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`a remote station information evidencing one of said step of enabling said di . bled
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`information and said step of outputting said programming presentation
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`18.
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`The method of claim 14, further comprising the step 0 communicating to
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`a remote station information evidencing one of said step of ena ing said disabled
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`information and said step of outputting said programming resentation.
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`19.
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`The me n - e
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`:
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`. "m 13, wherein said e = bling information includes a
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`second instruct-to—enable si. al, said me -~ cl fur er comprising the step of delivering
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`at least some of said progra
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`ing presentatio t said output device based on said
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`second instruct-to—enable si. al.
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`0/
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`20.
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`enabling information includes a
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`Themethod ofclaim14, hereinsai
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`
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`second instruct-to-enable si al, s cl method fu
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`1 er comprising the step of delivering
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`at least some of sa' s
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`,- ora n
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`g pres -
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`. tion at said output device based on said
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`second instruct-to—enable si 1-_ nal.
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`21.
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`The met d of claim 13, further comprising the step of storing at least
`‘w
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`some of said enabl' r g information.
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`22.
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`J e method of claim 14, further comprising the step of storing at least
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`some of sa' enabling information.
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`The method of claim 3, wherein said disabled information contains
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`tele . sion programming.
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 8
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 8
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`1
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`24.
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`The method of claim 3, wherein said disabled information conta'
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`processor code.
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`25.
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`The method of claim 9, wherein said receiver station enab s television
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`programming in accordance with said enabling information, said me od further
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`3 comprising the step of transmitting said television programming.
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`26.
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`The method of claim 9, wherein said receiver st ion enables processor
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`code in accordance with said enabling information, said -‘ hod further comprising the
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`step of transmitting said processor code.
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`27.
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`The method of claim 10, wherein said eceiver station enables television
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`programming in accordance -
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`ith 2 ' enabling ' ormation, said method further
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`comprising the step of trans
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`itting said - ev' ion programming.
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`The method of laim 10, wh rein = id receiver station enables processor
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`
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`28.
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`29.
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`The method f cl "
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`13, wherein aid disabled information contains
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`
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`code in accordance with sai enabling ' ormatio , said method further comprising the
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`step of transmitting said p ocessor ode.
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`
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`televis' - rogramming.
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`30.
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`The metho n of claim 13, wherein said disabled information contains
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`processor code.
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`31.
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`Th method of claim 14, wherein said disabled information contains
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`television pro amming.
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`3
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`The method of claim 14, wherein said disabled information contains
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`proce or code.
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 9
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`APPLE Exhibit 1043
`Apple v. PMC
`IPR2016-00755
`Page 9
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`
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`II.
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`REMARKS AND REQUEST FOR RECONSIDERATION
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`Claims 3-9 are pending in this application. Claims 3, 8-9, and 13-14 are
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`independent claims. By the foregoing amendment, claims 3-6, and 8-9 are amended.
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`New claims 10-32 are added. These changes are believed not to introduce new matter.
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`Claims 3-32 are now pending in this application.
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`Claim 5 stands rejected because of certain informalities cited by the Examiner.
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`The rejection asserts that the claim language appears to be self-contradictory and that
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`appropriate correction is required. Applicants have amended claim 5 to clarify the
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`confusion regarding ”disabled information” and ”instruct to enable information.”
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`Therefore, the Applicants respectfully request that this rejection be withdrawn.
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`Rejections Under 35 U.S.C. § 112
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`Claims 8-9 stand rejected under 35 U.S.C. § 112, second paragraph, as being
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`indefinite. The rejection asserts that claim 8 lacks proper antecedent support. The
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`Applicants have amended the claim to more clearly identify which elements are
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`intended to be claimed in each limitation. Similarly, claim 9 was amended to more
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`clearly identify which elements are intended to be claimed in each limitation.
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`Therefore, the Applicants respectfully request that the rejection be withdrawn.
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`Claims 3-9 stand further rejected under 35 U.S.C. § 112, second paragraph, as not
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`being described in full, clear, concise and exact terms as to enable any person skilled in
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`the art to make and use the same. Applicants respectfully traverse this rejection,
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`however, in order to advance the prosecution of the present application, Applicants
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`10
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 10
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`APPLE Exhibit 1043
`Apple v. PMC
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`‘
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`.
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`.1
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`1
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`shall provide a summary of the pertinent disclosure including citation to examples
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`supporting the claimed subject matter. The present application asserts priority based
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`on the 1987 disclosure, filed on September 11, 1987, as Ser. No. 07/ 096,096, and issued
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`October 23, 1990, as U.S. Pat. No. 4,965, 825.
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`In their 1987 continuation-in—part specification, applicants disclose "an integrated
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`system of programming communication" which encompasses many inventions and
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`deliberately includes many embodiments. Their teaching technique is to introduce the
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`principles of their integrated system in a series of related examples. Each example
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`builds upon structure and principles introduced earlier. Examining basic principles in
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`detail in early examples, enables the specification with concreteness to expand and
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`extend the scope of the teaching in later examples.
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`Starting with "One Combined Medium" on page 19 which focuses on the
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`creation and delivery of a receiver specific graph in a broadcast or cablecast television
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`program, "Wall Street Week," the specification introduces concepts of personalization of
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`mass media and broadcast control of receiver station computing equipment. At page 28
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`et seq. it describes apparatus that include signal processors and signal decoders and
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`introduces the concept of a signal processor system. At page 40 et seq. it teaches the
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`composition of signal information and the organization of message streams.
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`Then in a series of four examples, #1 through #4, which begin on pages 108, 143,
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`162, and 197 respectively, the specification demonstrates how receiver stations
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`communicate signal processor apparatus and methods (”SPAM”) processor code and
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`data of the integrated system of programming communication to some apparatus they
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`11
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 11
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`APPLE Exhibit 1043
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`actuate, how decryption occurs, how metering and monitoring take place, and how
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`actuated apparatus perform. Each example builds on concepts introduced earlier in the
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`specification to provide a detailed teaching of its own subject matter, and a particularly
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`important teaching occurs from pages 156 through 162 where the specification teaches
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`the structure and operating capabilities of a controller of a decoder.
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`Building on all that precedes it, example #5, which begins on page 248, then
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`relates how the integrated system processes a multichannel communications system,
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`which conveys different types of signals, in order to monitor programming availability
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`and enable receiver station apparatus to receive desired programming.
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`From pages 278 through 312, in example #6 and especially example #7, which
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`includes both digital and analog television signals and relates to the "Wall Street Week"
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`program (and which has further disclosure at pages 427 through 447), the specification
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`teaches regulating reception and use of programming of the integrated system of
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`programming communication.
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`At page 312 et seq. it relates further monitoring concepts.
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`From page 324 through page 390 the specification teaches a series of transmitter
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`station and transmitter network concepts. This portion of the specification also relies on
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`all previous disclosure in that special attention is given to intermediate transmission
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`stations which, as receiver stations, respond to programming transmissions of the
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`integrated system as well as storing, organizing, generating, and transmitting
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`programming. At page 340 et seq. example #8 teaches distribution to, storage and
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`organization at, and retransmission from intermediate transmission stations (”ITS”) of
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`12
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 12
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`APPLE Exhibit 1043
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`SPAM programming —— most specifically television spot commercials. At page 354 et
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`seq. example #9 teaches automating intermediate transmission station combined
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`medium operations by describing how an intermediate transmission station responds to
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`an intermediate generation set and other elements of the integrated system to generate
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`processor code and data and transmit the code and data with SPAM programming --
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`spot commercial unit Q of example #8 —— all of which are subsequently shown in the
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`specification to operate at receiver stations to deliver receiver specific programming at
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`video monitors, speakers, printers, and transmitters (telephones which communicate to
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`remote data collection stations). At page 374 et seq. example #10 extends the transmitter
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`and network automating concepts of examples #8 and #9 by disclosing a plurality of
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`intermediate transmission stations generating processor code and data, in the fashion of
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`example #9, and inserting different code and data into a network originated transmission
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`of SPAM programming -- again the unit Q television spot commercial.
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`From page 390 through 516, the specification discloses further ultimate receiver
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`station (”URS") automation concepts, including regulating the URS environment (page
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`396 et seq.), controlling multiple receivers and output devices to present coordinated
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`output (page 406 et seq.), receiving selected programming of the integrated system (page
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`419 et seq.), certain integrated system computer system concepts (page 427 et seq. ), whose
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`example #7 (page 427 et seq.) description relies on the receiving selected programming
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`concepts of pages 419-427. At page 447 et seq. the specification discloses certain data
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`maintenance, timing control, efficiency, and other concepts involved in controlling
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`combined media operations. At page 457 et seq. the specification discloses certain
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`13
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`APPLE Exhibit 1043
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`lPR2016-00755
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`Page 13
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`APPLE Exhibit 1043
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`timing, imaging, communication, and transmission processing concepts that relate to
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`efficient delivery of integrated system programming. At page 463 et seq. the
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`specification relates to user specific audio, print, and other combined media besides
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`receiver specific video.
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`With all this preparation, the specification teaches, from page 469 through page
`516, the combined media presentation of examples #9 and #10 at a plurality of ultimate
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`receiver station (which are responding to signals sent by different intermediate
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`transmission stations).
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`At page 516 et seq. the specification discloses enhancing and extending
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`functionality of the integrated system by reprogramming receiver apparatus and
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`enabling receiver stations to process transmissions having new forms of composition.
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`Finally, at page 533 et seq. the specification discloses "Summary Example” (#11)
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`which teaches a very large scale integrated data processing and communications
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`problem and its solution(s), using all of the disclosed integrated system with iterative
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`broadcasting, response, and refinement.
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`Because of the integrated nature of the disclosure, no part of the specification is
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`intended to by considered in isolation. However, in the present application, the claims
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`relate to modifying a fashion in which a receiver station locates enabling information in
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`response to an instruct-to-enable signal. One place where the specification discloses
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`such modifying begins on page 279 line 4 and goes through page 286, line 6. Another
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`place in the specification disclosing modifying a fashion is from page 457 through 463.
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`The claims also relate to enabling disabled information in response to an instruct-to-
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`14
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`APPLE Exhibit 1043
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`Apple v. PMC
`lPR2016-00755
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`Page 14
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`APPLE Exhibit 1043
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`enable signal. One place where the specification discloses enabling information and
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`disabled (encrypted) information begins on page 297 line 20 and goes through to page
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`298, line 21.
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`Applicants provide these specific embodiments in support of the pending claims
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`as by way of example only. The claims must be read as broadly as is reasonable in light
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`of the specification, and Applicants in no way intend that their submission of
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`excerpts / examples be construed to unnecessarily restrict the scope of the claimed
`
`subject matter.
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`Applicants therefore request that the rejection of Claims 3-9 under U.S.C. § 112,
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`second paragraph, be withdrawn.
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`Rejections under 35 U.S.C. § 102
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`Claims 3-6 and 8 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
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`U.S. Patent No. 4,054,911 to Fletcher et al. (”Fletcher”).
`
`Fletcher teaches an information retrieval system capable of capturing packets of
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`displayable video data and / or control program instructions. The system uses
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`processing control instructions to control the operation of processing the data. Fletcher
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`provides a terminal 300 to grab video displayable rows of data. Terminal 300 identifies
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`the correct or authorized selected control program from a permission message. Certain
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`characters in the permission message inform the terminal 300 as to which control
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`program is to be grabbed by the specific terminal. After terminal 300 receives its
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`15
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`APPLE Exhibit 1043
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`lPR2016-00755
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`Page 15
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`APPLE Exhibit 1043
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`)
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`permission message it is then ready to receive specific control program from a remote
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`data base.
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`Applicant's claim 3 recites a method to enable programming presentation at a
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`receiver station. The method includes, among other steps, the step of modifying a
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`fashion in which the receiver station locates enabling information in response to an
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`instruct—to—enable signal. Therefore, only certain pre-programmed receiver stations are
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`able to correctly process the signal.
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`Fletcher's system grabs transmitted data at the terminal in response to the
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`permission message which is received before the transmitted data is received. The
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`rejection alleges that microprocessor 310 adjusts the way terminal 300 grabs the specific
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`control program in the same way Applicants teach modifying a fashion in which the
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`receiver station locates enabling information in response to an instruct—to—enable signal.
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`However, the Applicants respectfully traverse this assertion.
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`Fletcher does not suggest modifying a fashion in which the receiver station
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`locates enabling information in response to an instruct-to-enable signal. Fletcher's
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`terminal 300 simply retrieves the transmitted data or it does not. The determination is
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`based on the permission message. This is markedly different than what the Applicants
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`claim. The Applicants claim a station which does not merely accept or reject data, but
`the station can modify the manner in which it locates the enabling information.
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`Therefore, Fletcher fails to disclose each and every limitation of claim 3. Accordingly,
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`the rejection of this claim under 35 U.S.C. § 102 is improper. A withdrawal of this
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`rejection is respectfully requested.
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`Claims 4-6 also stand rejected under 35 U.S.C. § 102 as being anticipated by
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`Fletcher. Claims 4-6 are dependent from claim 3 discussed above. Accordingly, since
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`claim 3 is not anticipated by Fletcher, for the reasons stated above, so too are claims 4-6
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`not anticipated. Therefore, Fletcher fails to disclose each and every limitation of claims
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`4-6. Accordingly, the rejection of this claim under 35 U.S.C. § 102 is improper. A
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`withdrawal of this rejection is respectfully requested.
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`Claim 8 stands rejected under 35 U.S.C. § 102 . Claim 8 recites, among other
`
`steps, generating an instruct-to-enable signal designating enabling information, the
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`instruct-to-enable signal being effective to cause the receiver station to enable the
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`disabled information by modifying a fashion in which the receiver station locates,
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`identifies, or receives the enabling information.
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`The rejection fails to specifically address all the limitations in claim 8. For
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`example, claim 8 teaches causing the receiver station to enable the disabled information
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`by modifying a fashion i.n which the receiver station locates, identifies, or receives the
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`enabling information. The rejection does not address this limitation; it does not discuss
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`where Fletcher allegedly teaches this specific limitation. Nevertheless, the Applicants
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`respectfully assert that Fletcher does not teach this specific limitation. Therefore,
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`Fletcher fails to disclose each and every limitation of claim 8. Accordingly, the rejection
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`of this claim under 35 U.S.C. § 102 is improper. A withdrawal of this rejection is
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`respectfully requested.
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`Claims 3-9 stand rejected under 35 U.S.C. § 102(b) as being anticipated by U.S.
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`Patent No. 4,225,884 to Block et al.
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`(’’Block’’).
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`Block relates to a method and system for subscription television access and
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`billing. Block discloses a system whereby subscribers can choose from among a menu
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`of television programs (commonly known as ”pay-per-view” television). Block teaches
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`transmitting a signal consisting of scrambled audio and video programming. The
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`subscriber has the option of viewing the program on the television set for a small fee.
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`Additionally, the subscriber station communicates with the signal broadcaster
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`regarding billing information on the programs which were actually viewed.
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`Block's signal is received by the subscriber station where it can be unscrambled.
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`The signal is also routed to a control and storage unit, with the unscrambler operating
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`in response to control signals from the control and storage unit. The control and storage
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`unit detects the code signals for unscrambling and billing purposes. The unit also
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`detects the scramble code and compares it to a separately supplied scramble code. A
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`program code is then stored based on the particular program being viewed.
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`As to claim 3, Block does not teach a receiver station which enables disabled
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`information based on the step of locating enabling information. Block unscrambles the
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`scrambled signal using unscrambler 24 based on the unscramble control signals VCS'
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`and ACS’. The rejection asserts that this is the same as Applicants enabling disabled
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`information based on the step of locating enabled information. However, the two
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`limitations are distinct. Block's receiver station merely receives a scrambled signal
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`which can be unscrambled by the subscriber. Nothing in Block suggests or teaches the
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`limitation claimed by the Applicants. Therefore, the rejection under 35 U.S.C. § 102 is
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`improper. A withdrawal of this rejection is respectfully requested.
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`As to the rejection of claims 4-7, the Applicants point out that these claims are
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`dependent on claim 3, which is an independent claim. As argued above, claim 3 is not
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`anticipated by Block. Therefore, it follows that dependent claims 4-7 are not anticipated
`
`by Block. Therefore, a withdrawal of this rejection is requested.
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`As to claim 8, it teaches, among other things, generating an instruct-to-enable
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`signal designating enabling information, the instruct-to-enable signal being effective to
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`cause the receiver station to enable disabled information by modifying a fashion in
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`which the receiver station one of locates, identifies, and receives the enabling
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`information. Block does not modify a fashion to effect a receiver station in the way
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`taught by the Applicants. Therefore, Block fails to disclose concepts and limitations of
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`claim 8. The rejection under 35 U.S.C. § 102 is improper. A withdrawal of this rejection
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`is respectfully requested.
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`Claim 9 recites effecting a transmitter station to generate an instruct-to-enable
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`signal designating enabling information, the instruct-to-enable signal being effective to
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`cause the receiver station to modify a fashion in which said receiver station one of
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`locates, identifies, and receives the enabling information and enables the disabled
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`information based on the enabling information. Block does not modify a fashion at a
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`receiver station like that claimed by the Applicants. Therefore, Block fails to disclose
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`concepts and limitations of claim 9. The rejection under 35 U.S.C. § 102 is improper. A
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`withdrawal of this rejection is respectfully requested.
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`J
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`.
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`Rejections under 35 U.S.C. § 103
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`Claim 7 stands rejected under 35 U.S.C. § 103(a) as being allegedly unpatentable
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`over Fletcher (U.S. Patent No. 4,054,911) in View of Block (U.S. Patent No. 4,225,884)
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`Applicants agree that Fletcher fails to teach the claimed step of communicating to
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`a remote station information evidencing one of the step of enabling disabled
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`information and the step of outputting the programming presentation. Applicants,
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`however, disagree that a combination of Fletcher and Block teaches or suggests the
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`claimed invention, or that the references themselves even suggest such a combination.
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`Fletcher discloses an information retrieval system which loads downstream data
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`and processes the control of the data. Fletcher provides a terminal 300 to grab video
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`displayable rows of data. Terminal 300 identifies the correct or authorized selected
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`control program from a permission message. Certain characters in the permission
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`message inform the terminal 300 as to which control program is to be grabbed by the
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`specific terminal. After terminal 300 receives its permission message it is then ready to
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`receive specific control program from a remote data base.
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`This differs markedly from the Applicant's claimed invention, which recites,
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`among other steps, the step of modifying a fashion in which the receiver station locates,
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`identifies or receives enabling information in response to an instruct-to enable signal. In
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`doing this, the varying or modifying cited above, results in only certain preinformed
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`receiver stations being able to correctly process the signal. Fletcher therefore fails to
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`teach or suggest Applicants’ claimed invention. Moreover, for at least this very reason,
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`)
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`.
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`.
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`even the combination of Fletcher and Block would fail to teach or suggest Applicants’
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`invention.
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`For at least the reasons presented above, the teachings of Fletcher and Block,
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`alone or in combination, fail to teach or suggest Applicants’ claimed invention.
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`Applicants therefore respectfully request that the Examiner withdraw the rejection of
`
`claim 7 under 35 U.S.C. §103 and pass claim 7 to allowance.
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`Double Patenting Rejections
`
`Claims 3-9 are twice rejected under the judicially created doctrine of non-
`
`obviousness, non—statutory double patenting over the patented claims in U.S. Patents
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`4,694,490; 4,704,725; 4,965,825; and 5,109,414. As to the double patenting rejections,
`
`applicants’ views are fully discussed in applicants’ reply brief to the rejections in
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`application number 08/ 113,329, and that reply brief is incorporated by reference herein.
`
`Moreover, the claims of the present application are patentably distinct from the
`
`representative claims of U.S. Patents 4,694,490; 4,704,725; 4,965,825; and 5,109,414.
`
`As an initial matter, the examiner's rejection of the present application under the
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`Schneller double patenting theory based on Harvey U.S. Patents 4,694,490 and 4,704,725
`
`is improper because the present application does not claim the benefit of those
`
`applications under 35 U.S.C. § 120. Thus, there could never have been a basis for
`
`claiming the present subject matter in those applications. Therefore, the rejection based
`
`on Harvey U.S. Patents 4,694,490 and 4,704,725 should be withdrawn.
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`Moreover, the PTO fails to specifically identify all claims from cited Harvey
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`patents that cover