;·,
`
`'\.,/
`UNITED STATES DiFARTMENT OF COMMERCE
`Patent and Trademark Office
`Address: a:IMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`RUNG DATE
`
`ATTORNEY DOCKET NO.
`
`08/48!:5,507
`
`06/07/95
`
`HARVEY
`
`THOMAS .J SCOTT JR
`HOWREY AND SIMON
`12':19 PENNSYLVANIA AVENUE NW
`WASHINGTON DC 20004
`
`:26M!/l:210
`
`VU.H
`ART UNIT
`
`2607
`DATE MAILED:
`
`PAPeR NUMIIEA
`
`/a
`
`12/10/96
`
`This Is a communication from lha examiner In charge of your application.
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`OFRCEAcnONSUMMARY
`~pensive tocommunlcatlon(s) filed on _____ ____Jb!IOil_-___:(:....1.,1o<':....--L'7....:~:::._ __________ __ _
`0 This acUon Is FINAL.
`0 Since this appfication is in condition for allowance except for fonnal matters, prosecution as to the merits Is closed in
`accordance with the pracUce under Ex parte Quayle, 1935 D.C. 11; 453 O.G. 213.
`J --- month(s), or thirty days,
`-
`A shortened staMory period for response to this action is set to expire
`whichever is longer, from the mailing date of this communication. Failure to respond within the period for response will cause
`the application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of 37 CFR
`1.136(a).
`
`Disposition of Claims
`~m(s) -----...f£--1-------------------- is/are pending in the application.
`Of the above, claim(s) _ _;_ ____________________ is/are withdrawn from consideration.
`
`0 CJim(s) - - - - - - - - ' - - - - - - - - - . . , . . - - - - - - - - - - - - - - - - is /a re allowed.
`ifclaim(s) - - - - -+ - - ' - - - - - - - - - - - - - - - - - - - - - - - - i s /a re rejected.
`0 Claim(s) - - - - - - - - - - - - - - - - - - - - - - - - - - - - - is /a re objected to.
`0 Claims _______________________ are subject to restriction or election requirement.
`
`Application Papers
`0 See the attached Notice of Draftsperson's Patent Drawing Review, PT0-948.
`0 Jhe drawing(s) filed on
`is/are objected to by the Examiner.
`0 The proposed drawing correction, filed on
`is 0 approved 0 disapproved.
`0 The specification is objected to by the Examiner.
`0 The oath or declaration is objected to by the Examiner.
`Priority unc:ier 35 u.s.c. § 119
`0 ACkn()VIledgement Is made of a claim for foreign priority under 35 U.S.C. § 119(a)·(d).
`0 All 0 Some• 0 None
`of the CERTIFIED copies of the priority documents have been
`0 received.
`0 received in Application No. (Series Code/Serial Number)-----------
`0 received In this national stage application from the International Bureau (PCT Rule 17.2(a)).
`*Certffiedco~esnmrecelved: _______________________________________ .
`
`0 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`Attachment( a)
`~otice of Reference Cited, PT0-892
`0 lnfonnation Disclosure Statement(s), PT0-1449. Paper No(s). ______ _
`0 Interview Summary, PTD-413
`0 Notice of Draflsperson's Patent Drawing Review, PT0-948
`0 Notice of Informal Patent Application, PT0-152
`- SEE OFFICE ACTION ON THE FOLLOWING PAGES -
`
`PTOL-326 (Rav. 10/95)
`
`• US GPO: 1996-409-290140029
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 1
`
`

`
`Serial Number: 08/485,507
`Art Unit: 2607
`
`-2-
`
`1.
`
`Preliminary amendments of 6/7/95 and 6/12/96 have been received and
`
`entered. Claims 1 and 2 have been canceled. Information disclosure statements filed
`
`on 12/11/95, 12/22/95, 2/6/96 and 4/17/96 have also been received and considered.
`
`2.-
`
`Claim 5 is objected to because of the following informalities: disabled
`
`information and instruct-to-enable information are not the same. Therefore, the claim
`
`seems to be self-contradictory. Words such as "include" or "comprise" perhaps would
`
`have better served the intended meaning of the claim than the existing word "is" in
`
`line 1 of claim 5. Appropriate correction is required.
`
`3.
`
`Claims 8-9 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.
`
`Regarding claim 8,
`
`line 13, the recitation "said broadcast or cablecast
`
`transmission" lacks proper antecedent basis.
`
`Regarding claim 9, line 19, the recitation "said instruct-to-enable signal" lacks
`
`clear antecedent basis since it is unclear as to whether it refers to the instruct-to-
`
`enable signal generated by the transmission station (see line 1 0) or to the instruct-to-
`
`enable signal generated by the receiver station (see line 14). Referring to lines 18-19,
`
`the recitation "said transmitter station" also lacks clear antecedent basis.
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 2
`
`

`
`Serial Number: 08/485,507
`Art Unit: 2607
`
`-3-
`
`4.
`
`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.
`
`5.
`
`Claims 3-6 and 8 are rejected under 35 U.S.C. 1 02(b) as being anticipated by
`
`Fletcher et al (hereinafter referred to as Fletcher) (USP 4,504,911).
`
`As to claim 3, Fletcher teaches a system for enabling programming presentation
`
`at a receiver station. The system comprises a tuner and demod 308 as a receiver for
`
`receiving at least some of an information transmission, video processor 306,
`
`comparator 302, buffer 304, generator 326, video and sync recombiner 328 as one
`
`or more enabling devices, microprocessor 310 (processor) and CRT 330) as an output
`
`device. Tuner and demod 308 of terminal 300 receives an information transmission
`
`from a remote. data base (receiving information transmission from remote source)
`
`wherein
`
`the
`
`information
`
`transmission comprises disabled video signals. The
`
`comparator 302 and buffer 204 of terminal 300 together identify a permission
`
`message and pass it to microprocessor 31 0 for processing (detecting the presence of
`
`instruct-to-enable signal and passing it to processor). In response to the received
`
`permission message microprocessor 31 0 of terminal 300 adjusts the way in which
`
`terminal 300 grabs the specific control program (modifying a station in which the
`
`station locates, identifies, or receives enabling information). Terminal 300 then loads
`
`in the selected control program based on the page numbers defined in the permission
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 3
`
`

`
`Serial Number: 08/485,507
`Art Unit: 2607
`
`-4-
`
`message (locating, identifying, or receiving enabling information). The control program
`
`enables terminal 300 to grab rows of video signals for displaying on the terminal
`
`display (enabling disable information and outputting programming presentation). See
`
`figures 4-7, col. 8, lines 53-62, col. 9, lines 33-40 and lines 47-67, col. 42, lines 7-
`
`10, col. 43, lines 5-12 and col. 49, lines 28-36.
`
`As to claim 4, the control programs correspond to the enabling information or
`
`the second instruct-to-enable signal. Terminal 300 outputs the video signals based
`
`on the received control programs.
`
`As to claim 5, the programming video signals correspond to the second instruct-
`
`to-enable signal. The control programs are stored in the local memory 332 of terminal
`
`300. See col. 44, lines 33-48.
`
`As to claim 6, the storage of the control programs in the local memory 332
`
`evidences the reception and identification of control programs.
`
`As to claim 8, since terminal 300 can further communicate and transmit the one
`
`of the received programs to a remote device via a processor controlled port of 1/0
`
`interface 314 (see col. 45, lines 46-58), terminal 300 serves as both a receiver station
`
`and a transmitter station. The permission message (instruct-to-enable signal) is
`
`generated by the remote data base. The video signals and the permission message are
`
`broadcasted over a TV distribution system.
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 4
`
`

`
`Serial Number: 08/485,507
`Art Unit: 2607
`
`-5-
`
`6.
`
`Claims 3-9 are rejected under 35 U. S.C. 1 02(b) as being anticipated by Block
`
`et al (hereinafter referred to as Block) (USP 4,225,884).
`
`As to claim 3, Block teaches a method and system for enabling program
`
`presentation at a subscriber station equipment which comprises receiver 22,
`
`unscrambler 24 (enabling device), control unit 26 (processor), modulator 28 (output
`
`device). Receiver 22 receives the disabled television programming from the central
`
`station equipment (receiving an
`
`information
`
`transmission containing disabled
`
`information). The knob selection signal from subscriber control unit 30 is passed to the
`
`combination of category code generator which is a part of the control unit 26
`
`(processor). The category code generator then generates a category code signal which
`
`os used by the control unit to modify the fashion in which the unit locates, identifies,
`
`or receives category programs and their corresponding program scrambling codes and
`
`unscramble control signals VCS' and ACS' (modifying a fashion in which the station
`
`locates, identifies, or receives enabling information). The station then locates and
`
`receives a scrambling code signal RSC and unscramble control signals VCS' and ACS'
`
`(locates,
`
`identifies and
`
`receives enabling
`
`information). Unscrambler 24 then
`
`unscrambles the scrambled program based on the unscramble control signals VCS'
`
`and ACS' (enabling disabled information based on the step of locating enabling
`
`information). Finally, modulator 28 outputs the program presentation based on the
`
`unscrambled program it receives from unscrambler 24. See figures 1-4 and 6, col. 3,
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 5
`
`

`
`Serial Number: 08/485,507
`Art Unit: 2607
`
`-6-
`
`line 62 to col. 4, line 20, col. 5, lines 23-26 and lines 33-37, col. 6, lines 1-8, col. 6,
`
`line 62 to col. 7, line 4, col. 9, lines 60-68, col. 10, lines 23-31 and lines 50-63.
`
`As to claim 4, the scrambling code signal corresponds to the enabling
`
`information or the second instruct:· to-enable signal. Unscrambler 24 and modulator 28
`
`output the unscrambled programming signals based on the scrambling code signal.
`
`As to claim 5, the scrambling code signal corresponds to the second instruct-to-
`
`enable signal. The scrambling code signal is stored in the signal storage device 68 of
`
`the receiver station. See figure 4 and col. 7, lines 5-8.
`
`As to claim 6, the temporary storage of the scrambling code signal in
`
`comparator 66 evidences the reception and identification of scrambling code signal.
`
`As to claim 7, Block teaches that a receiver station can communicate
`
`information that the program is actually viewed (evidencing the outputting of the
`
`program presentation) to the central station via access unit 32 for convenient billing
`
`purposes. See col. 5, lines 33-46.
`
`As to claim 8, transmitter 16 received scrambled program signals (receiving at
`
`a
`
`transmission station an
`
`information
`
`transmission which contains disabled
`
`information). Program ID code generator 50 generates a program code signal which
`
`causes the receiver station to unscramble scrambled program by modifying the way
`
`in which the receiver station locates, identifies, or receives the scrambling code
`
`(generating an
`
`instruct-to-enable signal). Transmitter 16 then broadcasts the
`
`scrambled program along with the program code. It is observed that at the receiver
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 6
`
`

`
`Serial Number: 08/485,507
`Art Unit: 2607
`
`-7-
`
`the received program code is detected by detector 94 for used in the program
`
`comparison and identification of the scrambling code for the program. See figures 3'
`
`and 6.
`
`As to claim 9, Block teaches that control unit 26 receives from subscriber
`
`control unit 30 an accept signal ACC which effects the control unit of the subscriber
`
`station equipment to generate scramble code signals for enabling unscrambler 24 to
`
`unscramble the disable programming (receiving an instruct signal to effect the receiver
`
`station to generate an instruct-to-enable signal). Scramble code generator 50 receives
`
`from video sync detector a video sync signal (transmitter control signal) for generating
`
`a scramble code signal and transmitting it to transmitter 16 (receiving a transmitter
`
`control signal). The scrambled video signal is transmitted from the transmitter station
`
`to the receiver station. The accept signal ACC is transmitted from the subscriber
`
`control unit 30 to the Control unit 26. The video sync signal is transmitted from the
`
`video sync detector to the scramble code generator 50.
`
`7.
`
`The following is a quotation of 35 U.S. C. 1 03(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(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.
`
`I
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 7
`
`

`
`•
`
`Serial Number: 08/485,507
`Art Unit: 2607
`
`-8-
`
`8.
`
`Claim 7 is rejected under 35 U.S.C. 1 03(a) as being unpatentable over Fletcher
`
`in view of Block et al (USP 4,225,884).
`
`Fletcher differs from the claim in that Fletcher does not teach the step of
`
`communicating to a remote station information evidencing one of the step of enabling
`
`disabled information and the step of outputting the programming presentation.
`
`However, Block teaches that a receiver station can communicate information that the
`
`program is actually viewed (evidencing the outputting of the program presentation) to
`
`the central station for convenient billing purposes. Thus, It would have been obvious
`
`to one skilled in the art at the time the invention was made to apply Block's teaching
`
`of transmitting information that the program is actually viewed (evidencing the
`
`outputting of the program presentation) from the receiver station to the central station
`
`with the motivation being to provide a convenient way of sending billing information.
`
`9.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. Yanagimachi et al (USP 3,936,595), Jeffers et al (USP
`
`4,739,51 0) and Matsumoto et al {USP 4,245,245) teach different tv/video program
`
`reception systems with program selection control.
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 8
`
`

`
`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-2-
`
`1.
`
`This action is in response to the amendment filed June 12,
`
`1996.
`
`2.
`
`This action wi~l not attempt to determine the effective
`
`filing date of this application. The action will apply art
`
`against the claims using two possible effective filing dates,
`
`i.e. serial number 06/317,510, filed November 3, 1981, and serial
`
`number 07/096,096, filed September 11, 1987. Applicants can
`
`overcome the art rejections by establishing that the art applied
`
`does not meet the claimed limitations or that the art does not
`
`have an early enough 'filing date.
`
`The action will make initial double patenting rejections
`
`presuming that all·of the present claims were fully disclosed in
`
`both the 1 81 and 1 87 cases.
`In any rejections made under 35 usc 112, first paragraph,
`
`applicants will be asked to clarify, where required by the
`
`examiner, how the present claims are fully disclosed in both the
`
`1 81 and 1 87 cases.
`
`3. Applicants are reminded of their duty to maintain a line of
`
`(patentable demarcation between related applications. It has been
`
`noted by the PTO that many of the pending applications have
`
`similar claimed subject matter.
`
`In the related 327 applications
`
`(the serial numbers' are included in a list below), it is
`
`estimated that there may be between 10,000 and 20,000 claims.
`
`Applicants should insure that substantially duplicate claims do
`
`not appear in different cases, and should bring to the PTO's
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 9
`
`

`
`•
`
`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-3-
`
`attention instances where similar claims have been treated
`
`inconsistently, i.e •. rejected in one case but not in another.
`
`4. Applicants are cautioned that their continual use of
`
`alternatives in the claims raises questions concerning the exact
`
`claim meaning. More importantly, it raises questions whether the
`
`disclosure supports every possible embodiment or permutation that
`
`can be created by the alternative language.
`
`5.
`
`The double patenting rejections in this action are based on
`
`the premise that all of the present claims were fully .disclosed
`
`in u.s. Patents 4,694,490; 4,704,725; 4,965,825; and 5,109,414.
`
`Since there was a restriction made in 5,233,654, there will be no
`
`double patenting made on that patent or 5,335,277.
`
`6.
`
`The. PTO's copie~ of the parent files are in poor form since
`
`they have been copied many time by members of the public. The
`
`files also are missing some of the papers. The double patenting
`
`rejections below presumes that there were no requirements for
`
`restriction made in·any of the parent files.
`
`7.
`
`There are three types of double patenting rejections:
`
`a)
`
`statutory double patenting rejection under 35 usc 101,
`
`b) Nonstatutory obvious type double patenting,
`
`c) Nonstatutory non-obviousness type double patenting.
`
`In this action, the rejections of the third type that are
`
`directed to the claims of the parent patented files will have two
`
`different versions. The first rejects the claims because they
`
`have not been established to be independent and distinct from the
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 10
`
`

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`•
`
`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-4-
`
`patented claims. The second version includes that premise, and
`
`further supports the rejection by establishing that
`
`representative claims from this application have common subject
`
`matter with representative ones of the patented claims.
`
`8.
`
`Claims 3-9 (a~l of the claims in this application) are
`
`rejected under the judicially created doctrine of non-obviousness
`non-statutory double patenting over the patented claims in u.s.
`Patents 4,694,490; 4,704,725; 4,965,825; and 5,109,414 since the
`
`claims, if allowed, would improperly extend the "right to
`
`exclude" already granted in those patents.
`
`The subject matter claimed in the instant application is
`
`fully disclosed in the patents and is covered by the patents
`
`since the patents and the application are claiming common subject
`
`matter, as follows: a signal processing apparatus and method
`
`including an interactive communications system apparatus and
`
`method. Furthermore, there is no apparent reason why applicants
`
`were prevented from presenting claims corresponding to those of
`
`the instant application during prosecution of the parent
`
`applications which matured into patents.
`
`In re Schneller, 397
`
`F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
`
`A review of the claims in each of the four parent patents
`
`(5,109,414; 4,964,825; 4,704,725; 4,694,490) was made. These
`
`patented claims do not appear "independent and distinct" from the
`
`claims in this application. The present claims are directed to a
`
`method and apparatus for controlling communications including
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 11
`
`

`
`•
`
`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-5-
`
`television communications or programming. The claims in patent
`
`5,109,414 were directed to a processing system and method for
`
`signal distribution including television. The claims in patent
`
`4,965,825 were directed to a system and process for signal
`
`processing including carrier communications. The claims in
`
`patent 4,704,725 were directed to a method of communicating data
`
`to receiver stations. The claims in patent 4,694,490 were
`
`directed to a method for communicating and processing television
`
`programs.
`
`Applicants• invention can be envisioned at in three parts.
`
`As with most cable TV systems, there is a head end station which
`
`generates the video programming. Applicants have included an
`
`intermediate station which receives transmissions, from the head
`
`end or subscriber stations, and distributes the programming to
`
`each subscriber. The subscriber station receives the
`
`programming, and can communicate to the intermediate station with
`
`requests or instructions. Even if the claims directed to each
`
`station were "independent and distinct" from the claims directed
`
`to the other stations, there would be no reason to "restrict"
`
`between the three stations since their overall function is so
`
`interrelated that the stations have the same search area, i.e the
`
`PTO could not establish a burden if required to search for all
`
`three stations.
`
`It is believed that CCPA in Schneller used the "independent
`
`and distinct" standard as the main factor in its determination
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 12
`
`

`
`•
`
`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-6-
`
`that the double pate~ting rejection should be affirmed. The CCPA
`
`stated that the fundamental reason supporting the principle of
`
`non-statutory double patenting rejections is to prevent
`
`unjustified timewise extension of the right to exclude granted by
`
`a patent no matter how the extension is brought about. Further
`
`the CCPA stated at 158 USPQ 210 (214):
`
`"··· To conform to this reason and to prevail here,
`appellant has the burden of establishing that the invention
`in his patent is "independent and distinct" from the
`invention of the appealed claims. The public policy
`considerations underlying 35 U.S.C. 121 permit separate
`patents on "independent and distinct" inventions which are
`initially "claimed in one application." The statute places
`initial responsibility for this determination on the
`Commissioner of Patents. Where, as here, no such
`determination has been made, it is necessary to scrutinize
`carefully an applicant's voluntary alleged determination of
`this issue for it can lead to the improper proliferation of
`patents on the same invention with the inherent result of
`extending timewise a patentee's right to exclude others from
`the invention disclosed in the original application and on
`which his patent has issued."
`
`The CCPA further stated at page 215 the length of time between an
`
`earlier patent and a later filed application should be
`
`considered. The filing date of this application was over seven
`
`years after the first patent issued (serial number 06/317,510,
`
`filed November 3, 1981, patented as 4,694,490 on September 15,
`
`1987) and over four years after the first CIP issued as a patent
`
`(serial number 07/096,096, filed September 11, 1987, patented as
`
`4,965,825 on October 23, 1990).
`
`To the extent that one would view Schneller and In re
`
`Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986) to be in
`
`conflict, it is clear that Schneller is the controlling precedent
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 13
`
`

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`•
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`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-7-
`
`to the factual situation here.
`
`In Schneller, the Court
`
`specifically distinguished a situation of the same applicant from
`
`one where the application and patent had different inventive
`
`entities.
`
`In Kaplan, the inventive entities between the patent
`
`and application were ·different, as was required at the time of
`
`the Kaplan invention, since Kaplan's filing date was before the
`
`Patent Law Amendments Act of 1984.
`
`In this present case, as with
`
`Schneller, the inventive entities of the application and patent
`
`are the same. Clearly, Kaplan was required, or entitled, to file
`
`separate applications, whereas applicants and Schneller did not
`
`have reason to do so. Finally, decisions of a three-judge panel
`
`of the Federal Circuit cannot overturn prior precedential
`decisions of the CCPA. See UMC Elec. co. v. United states 2
`
`USPQ2d 1465.
`
`9.
`
`Claims 3-9 (all of the claims in this application) are
`
`rejected under the judicially created doctrine of non-obviousness
`non-statutory double patenting over the patented claims in u.s.
`
`Patents 4,694,490; 4,704,725; 4,965,825; and 5,109,414 since the
`
`claims, if allowed, would improperly extend the "right to
`
`exclude" already granted in those patents.
`
`This rejection incorporates the rejection above. That
`
`double patenting rejection is further supported by Schneller
`
`because the great majority of the patented claims are
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 14
`
`

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`•
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`Serial Number: 08/485,507
`Art Unit: 2619
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`•
`
`-8-
`
`"comprising" type claims. 1 While it is recognized that the
`
`specific claim limitations in the application may not have been
`
`claimed in the patents, that alone does not establish grounds for
`
`overcoming this rejection. The patent claims were directed to
`
`parts of applicants• total disclosed system or process.
`
`Therefore the recitation of "comprising" enables those patented
`
`claims to "cover" claim features now recited by applicants•
`
`present application.qlaims.
`
`Since the head end, intermediate~ and subscriber stations
`
`are part of the overall system, claims to one part "cover" the
`
`other part(s) under' the Schneller decision· (page 215), since the
`
`preferred embodiment would include all three parts of the main
`
`system, i.e. head, intermediate, and subscriber stations. For
`
`example, claims to the subscriber station still cover the
`
`intermediate station because the subscriber station would be
`
`processing information that had to come from the intermediate
`
`station. A second example would be that claims to one aspect or
`
`function of the intermediate station would cover the invention of
`
`another aspect or fu~ction of the intermediate station since both
`
`functions could be performed with the other. Applicants•
`
`disclosed system includes similar features in the head,
`
`intermediate, and subscriber stations. For example, the stations
`
`1The claims that recite neither "comprising" nor
`"consisting" are considered to recite open claim language, i.e.
`equivalent to "comprising". See, for example, claim 1 of Patent
`5,109,414.
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 15
`
`

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`•
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`Serial Number: 08/485,507
`Art Unit: 2619
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`•
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`-9-
`
`can transmit and receive, and have computer, processor and
`
`controller capabilities. For that reason, the disclosure will
`
`permit broadly drafted claims to read on either the head,
`
`intermediate, or subscriber station. Patent claims that recite
`
`receiving and transmitting can cover both intermediate and
`
`subscriber stations. The fact that patent claims and application
`
`claims are directed to different elements does not prohibit this
`
`rejection if there is common or interrelated subject matter
`
`recited. The Court in Schneller stated at page 215:
`
`They "cover" the preferred form ABCXY, common to'the
`"
`patent and this application, in the same sense. The fact
`that X and Y are distinct elements, performing, independent
`functions, so ~hat either can be employed without the other,
`does not change this fact. Neither does appellant's
`omission of reference to the lip_Y from his patent claims."
`
`Application ciaim 8 is a representative claim. It is
`
`directed to a method of enabling a program presentation by
`
`receiving an information transmission containing disabled
`
`information, generating an instruct to enable signal designating
`
`enabling information which is effective to cause a receiver to
`
`enable the disabled information and transmitting the transmission
`
`and instruct to enable signal.
`
`A review of representative ones of the patented claims will
`
`demonstrate that th~ patented claims cover the invention claimed
`
`i
`
`in this application:
`
`a)
`
`In patent 4,694,490, claim 7 is representative of the
`
`claimed method for communicating TV program information to a
`
`receiver station. The receiver station receives the video
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 16
`
`

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`•
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`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-10-
`
`data, displays it, detects the presence of overlay
`
`information using an instruct signal, and has computers
`
`generate and transmit this overlay info to the display.
`
`b)
`
`In patent 4,704,725, claim 3 is representative, and, as
`
`summarized below, recites a method of communicating data
`
`comprising:
`
`c)
`
`a) multiple receivers, each with a computer,
`b)
`transmitting instruct to transmit signals to the
`computers,
`detecting the signals and coupling them to the
`selected computers,
`having the computers control their own selected
`output device.
`
`d)
`
`c)
`
`In patent 4,965,825, claim 24 is representative, and,
`
`as summarized below, recites generating a computer output
`
`having the steps of:
`
`a)
`b)
`
`c)
`
`having multiple receivers, each with a computer,
`transmitting an instruct to generate signal to the
`computers,
`causing the computers to generate individual user
`output information.
`
`d)
`
`In patent:5,109,414, claim 15 is representative, and,
`
`as summarized below, recites a signal processing system
`
`(including):
`
`a)
`b)
`c)
`
`d)
`
`e)
`
`receiver/distribution means,
`switch means,
`control signal detector means for transferring
`data to storage means,
`storage means for storing and transferring data to
`processor means,
`processor means for controlling.
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 17
`
`

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`•
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`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-11-
`
`While claim 15 is an apparatus claim, a method claim and
`
`apparatus claim do not in themselves establish groups that
`
`are "independent and distinct".
`
`The patented claims,are also primarily directed to methods or
`
`structure to control element(s) either directly at that station
`
`or at another remote station. This control is generally
`
`completed with the reception or recognition of an instruct
`
`signal. The same common concept exists in application claim 8.
`
`All of the claims, both patented and pending in this application,
`
`when considered together, effectively recite parts of the
`
`preferred embodiment, i.e. a head, intermediate, and subscriber
`
`station. The patented claims "cover" the claims of the
`
`application because.the patented limitations do not exclude the
`
`limitations of this;application.
`
`In the arguments above, the examiner, when discussing
`
`several of the patents, stated that the patented claims were
`
`broad enough to read on multiple stations. While it is believed
`
`this analysis is correct, it is not critical to this rejection.
`
`Since the patented claims recite limitations that are
`
`interrelated with other similar features claimed in this
`
`I
`
`application, it is the examiner's position that those patented
`
`claims "cover" the application claims because all of these
`
`claimed features (both in the patent and application) describe
`
`what is effectively the preferred embodiment.
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 18
`
`

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`•
`
`Serial Number: 08/485,507
`Art Unit: 2619
`
`•
`
`-12-
`
`The claims in this application, if allowed without a
`
`terminal disclaimer, would continue patent protection of the
`
`preferred embodiment, i.e. the complete system of the head,
`
`intermediate, and subscriber stations, beyond the expiration of
`
`applicants• parent patents.
`
`10. A determination of a possible non-statutory double patenting
`
`rejection obvious-type in each of the related 327 applications
`
`over each other will be deferred until a later time. This action
`
`is taken if view of.the possibility that many of these
`
`applications may be: abandoned or merged.
`
`11. Claims 3-9 are:rejected under the judicially created
`doctrine of double patenting over the claims of copending u.s.
`application 08/113,329 and the following related u.s.
`applications (all of the application are series 08):
`
`APPLE Exhibit 1047
`Apple v. PMC
`IPR2016-00755
`Page 19
`
`

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`•
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`serial Number: 08/485,507
`Art Unit: 2619
`
`ser. No.
`#
`397371
`1
`435757
`4
`437045
`7
`437791
`10
`437887
`13
`438206
`16
`439668
`19
`440837
`22
`441575
`25
`441749
`28
`441942
`31
`442327
`34
`442383
`37
`444643
`40
`444758
`43
`444787
`46
`445045
`49
`445294
`52
`446123
`55
`446430
`58
`446494
`61
`447380
`64
`67
`447416
`447448
`70