;fE-ek~
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`AITORNEY DOCKET: 52090.000410
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Examiner: HARVEY, David E.
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`)
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`) Group Art Unit: 3992
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`)
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`)
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`Patent Number
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`4,965,825
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`Control Number:
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`90/006,536
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`Filing Date:
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`February 4, 2003
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`Confirmation Number: 3222
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`Mail Stop Appeal Brief- Patent
`Central Reexamination Unit
`Office of Patent Legal Administration
`United States Patent & Trademark
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
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`APPEAL BRIEF
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`In accordance with 37 C.F.R. § 41.37, appellant submits this appeal brief in the above
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`captioned application. Appellant appeals the final rejection of claims 1, 2 and 14-25 set forth in
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`the Office Action mailed September 28, 2006 (the "Office Action"). A Notice of Appeal was
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`filed in accordance with 37 C.F.R. § 41.31 on November 28, 2006. Commissioner is hereby
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`authorized to charge undersigned's Deposit Account No. 50-0206 in the amount of $500.00 to
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`cover fee set forth in 37 C.F.R. 41.20(b)(2). Any additional fees that may be due but are not
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`attached may be charged to Deposit Account No. 50-0206.
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`01/31/2007 nSALDAHA 00000081 500206
`:500.00 DA
`IH f"C:1402
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`90086536
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`PMC Exhibit 2008
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`IPR2016-01520
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`ATIORNEY DOCKET: 52090.000410
`CONTROL NUMBERS: 90/006,536
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`I. REAL PARTY IN INTEREST
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`The real party in interest is the Patent Owner, Personalized Media Communications, LLC
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`("PMC") having a place of business at 708 Third Ave., New York, New York, 10017.
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`2
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`ATIORNEY DOCKET: 52090.000410
`CONTROL NUMBERS: 90/006,536
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`II. RELATED APPEALS AND INTERFERENCES
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`U.S. Patent 4,965,825 issued from application Ser. No. 96,096, filed September 11, 1987,
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`which is a continuation-in-part of Ser. No. 829,531, filed February 14, 1986, Pat. No. 4,704,725,
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`which is a continuation of Ser. No. 317,510, filed November 3, 1981, Pat. No. 4,694,490.
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`U.S. Patent No. 4,965,825 is part of a chain of patents that includes additional issued
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`patents and various pending applications. U.S. Patent 5,335,277 issued from application Ser. No.
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`56,501, filed May 3, 1993, which is a continuation of Ser. No. 849,226, filed March 10, 1992,
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`Pat. No. 5,233,654, which is a continuation of Ser. No. 588,126, filed September 25, 1990, Pat.
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`No. 5,109,414, which is a continuation of Ser. No. 96,096. Application Ser. No. 113,329, filed
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`August 30, 1993, which remains pending, is a continuation of application Ser. No. 56,501.
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`Various applications claim priority to Application Ser. No. 113,329, including application Ser.
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`No. 470,571, filed June 6, 1995; application Ser. No. 487,526, filed June 7, 1995; and application
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`Ser. No. 480,060, filed June 7, 1995, now Pat. No. 5,887,243.
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`Each of appellant's seven related patents are involved in reexamination proceedings. The
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`reexamination proceedings pending against appellant's related issued patents are as follows:
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`Pat. No. 4,694,490 Control No. 90/006,800,
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`Pat. No. 4,704,725
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`Control Nos. 90/006,697 and 90/006,841
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`Pat. No. 5,109,414
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`Control No. 90/006,838,
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`Pat. No. 5,233,654 Control Nos. 90/006,606, 90/006,703 and 90/006,839,
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`Pat. No. 5,335,277
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`Control Nos. 90/006,653 and 90/006,703, and
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`Pat. No. 5,887,243
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`Control No. 90/006,688.
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`The above applications and patents have been involved in the following appeals and
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`judicial proceedings.
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`3
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`ATIORNEY DOCKET: 52090.000410
`CONTROL NUMBERS: 90/006,536
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`Pat. Nos. 4,965,825; 5,109,414 and 5,335,277 were asserted in the U.S. District Court,
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`Eastern District of Virginia in Personalized Mass Media Corp. v. The Weather Channel, Inc. et
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`al., Doc. No. 2:95cv242. The case was settled prior to any substantive decision by the Court,
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`although one procedural decision was published at 899 F.Supp. 239 (E.D.Va. 1995).
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`Pat. No. 5,335,277 was involved in the matter of Certain Digital Satellite System (DDS)
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`Receivers and Components Thereofbefore the United States International Trade Commission
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`("Commission"), Investigation No. 337-TA-392. The Administrative Law Judge ("ALJ") issued
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`an "Initial Determination Granting Motion for Summary Determination of Invalidity of Claim 35
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`of the '277 Patent" on May 16, 1997. This determination was appealed to the U.S. Court of
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`Appeals for the Federal Circuit ("Federal Circuit"), which affirmed the Commission decision in a
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`decision decided January 7, 1999. The AU issued "Initial and Recommended Determinations"
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`on October 31, 1997. The Commission adopted certain of the ALJ' s findings and took no
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`position on certain other issues in a "Notice Of Final Commission Determination Of No
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`Violation Of Section 337 Of The Tariff Act Of 1930," dated December 4, 1997. This
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`determination was appealed to the Federal Circuit, which affirmed-in-part, reversed-in-part,
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`vacated-in-part, and remanded in a decision decided November 24, 1998, and published at 161
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`F.3d 696,48 U.S.P.Q.2d 1880. On remand, the complainant moved to terminate the
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`investigation. The Commission issued a "Notice Of Commission Decision To Terminate The
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`Investigation And To Vacate Portions Of The Initial Determination" on May 13, 1999.
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`Pat. Nos. 4,965,825; 5,109,414 and 5,335,277 were asserted in the U.S. District Court,
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`Northern District of California in Personalized Media Communications, LLC v. Thomson
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`Consumer Electronics et al., Doc. No. C-96 20957 SW (EAI). The case was stayed during the
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`4
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`A TIORNEY DOCKET: 52090.000410
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`Commission proceedings and was thereafter voluntarily dismissed by the plaintiffs. The Court
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`issued no substantive decisions.
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`Each of the related issued patents with the exception of Pat. No. 4,704,725 is also
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`asserted in the U.S. District Court, District of Delaware in Pegasus Development Corp. v.
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`DIRECTV Inc., Doc. No. CA 00-1020 ("Delaware Action"). Special Master Robert L. Harmon
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`has issued a "Report And Recommendation Of Special Master Regarding Claim Construction."
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`On March 29, 2003, Special Master Harmon issued at letter clarifying his report. The Court has
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`taken no further action in this case as it has been stayed pending the resolution of the
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`reexamination proceedings.
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`Each of the issued patents has also been asserted in a suit pending in the U.S. District
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`Court, Northern District of Georgia in the case styled Personalized Media Communications, LLC
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`v. Scientific-Atlanta, Inc. et al., Doc. No. 1:02-CV-824 (CAP) ("Atlanta Action"). The Court has
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`issued an order construing the claims at issue that adopts with minor modifications the Special
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`Master's Report and Recommendation construing the claim term disputed in that litigation. The
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`Court has taken no further action in this case as it has been stayed pending the resolution of the
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`reexamination proceedings.
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`In pending Application Ser. No. 113,329, an appeal was noticed on August 20, 1996, and
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`briefed September 13, 1996. Prosecution was reopened without consideration and the disputed
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`rejection withdrawn in an Office action mailed October 10, 1997.
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`An appeal was noticed on September 20, 2004, in Application Ser. No. 470,571. An
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`Appeal Brief was submitted on February 8, 2005. An Examiner's Answer was mailed on
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`October 6, 2005. A Reply Brief was filed on December 6, 2005. On April 11, 2006, the Board
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`issued an Order Returning Undocketed Appeal to Examiner. A Substitute Appeal Brief was filed
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`5
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`ATIORNEY DOCKET: 52090.000410
`CONTROL NUMBERS: 90/006,536
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`Apri126, 2006. A new Examiner's Answer was mailed on June 27, 2006. A new Reply Brief
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`was filed on July 3, 2006. This appeal is awaiting docketing at the Board.
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`An appeal was noticed on October 7, 2004, in Application Ser. No. 487,526. An Appeal
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`Brief was filed on March 7, 2005. An Examiner's Answer was mailed on January 31,2006. A
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`Reply Brief was filed on March 27, 2006. The Reply Brief was noted on June 23, 2006.
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`An appeal was noticed on October 18, 2005, and briefed December 19, 2005, in
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`reexamination Control No. 90/006,800, regarding U.S. Patent 4,694,490. The Examiner's
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`Answer was mailed July 21, 2006. A Reply Brief was filed September 20, 2006.
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`An appeal was noticed on October 24, 2005, and briefed December 27, 2005, in merged
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`reexamination Control Nos. 90/006,697 and 90/006,841, regarding U.S. Patent 4,704,725. The
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`Examiner's Answer was mailed April 21, 2006. A Reply Brief was filed June 21, 2006.
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`An appeal was noticed on May 30,2006, and briefed June 30, 2006, in merged
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`reexamination Control Nos. 90/006,606, 90/006,703, and 90/006,839, regarding U.S. Patent
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`5,233,654.
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`An appeal was noticed on June 16, 2006, and briefed August 16, 2006, in merged
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`reexamination Control Nos. 90/006,563, and 90/006,698, regarding U.S. Patent 5,335,277.
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`An appeal was noticed on November 28, 2006, in reexamination Control No. 90/006,688,
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`regarding U.S. Patent 5,887,243.
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`An appeal was noticed on December 22, 2006, in reexamination Control No. 90/006,838,
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`regarding U.S. Patent 5, 109,414.
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`6
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`ATIORNEY DOCKET: 52090.000410
`CONTROL NUMBERS: 90/006,536
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`III.STATUS OF CLAIMS
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`U.S. Patent 4,965,825 issued with claims 1-25. These claims are subject to
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`reexamination. The Examiner confirmed claims 3-13 in the final Office action mailed
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`September 28, 2006 (Office Action). The Examiner rejected claims 1, 2, and 14-25 in the final
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`Office action. Appellant appeals the final rejections of claims 1, 2 and 14-25.
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`7
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`A ITORNEY DOCKET: 52090.000410
`CONTROL NUMBERS: 90/006,536
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`IV.STATUS OF AMENDMENTS
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`Appellant has proposed no amendments to the claims subsequent to the final Office
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`acton.
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`AITORNEY DOCKET: 52090.000410
`CONTROL NUMBERS: 90/006,536
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`V. SUMMARY OF CLAIMED SUBJECT MATTER
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`The appealed claims are generally directed to processing signals in a communications
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`system such a television distribution system. A concise explanation of the subject matter defined
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`in each of the independent claims 1, 2, 14, 20, 21, 24 and 25 involved in the appeal is set forth
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`below.
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`A.
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`Claim 1
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`Claim 1 defines apparatus in a signal processor system. The apparatus includes carrier
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`transmission receiving means and means for demodulating the carrier transmission to detect an
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`information transmission on the carrier transmission. The apparatus includes detector means for
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`detecting an embedded signal in the information transmission and removing it from the
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`information transmission. The apparatus includes first control means responsive to the detected
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`signal to activate or deactivate equipment external to the signal processor system. The apparatus
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`includes second control means activated by the detected signal to monitor the performance or
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`output of the first control means. The apparatus includes a recorder means for receiving and
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`recording data collected by the monitor means and control means for instructing the recorder to
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`direct recorded information to a remote site.
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`The '825 patent discloses numerous embodiments of the apparatus set forth by claim 1.
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`For example, the '825 patent discloses mixers, a switch and a local oscillator that are used to
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`receive cable transmissions ('825 fig. 2, col. 16, ll. 46-60) and a filter and demodulator that
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`defines a particular television transmission ('825 fig. 2A, col. 19, ll. 54-60). Digital detectors
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`detect embedded signals in the television transmission and remove the embedded signals from
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`the television transmission. '825 fig. 2A, col. 19, I. 58- col. 20, I. 23. A processor provides
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`signals to external equipment. '825 fig. 2, col. 17, ll. 56-65. The signal processor is disclosed as
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`ATTORNEY DOCKET: 52090.000410
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`activating and deactivating various external equipment. In one embodiment, the signal processor
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`controls activation and deactivation ofdecryptor. '825 fig. 4, col. 16, ll. 8-12, col. 166, ll. 48-62,
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`col. 167, I. 49 - col. 168, I. 7. The signal processor may also control external devices such as
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`tuners. '825 figs. 7 and 7F, col. 264, ll. 47-63. Controllers and decoders(' 825 fig. 2 and 2D, col.
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`19, ll. 3-5 and col. 22, ll. 21-24) monitor the performance and output of the signal processor
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`('825 fig. 2, col 17, I. 56- col. 18 ,I. 16 and col. 22, ll. 18-22). A digital recorder receives and
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`records data collected by the controllers. '825 fig. 2, col. 18, ll. 51-54. A controller is disclosed
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`that controls the apparatus to instruct the recorder to direct the recorded information to a remote
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`site through a telephone connection. '825 fig. 2, col. 18, ll. 31-35.
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`B.
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`Claim 2
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`Claim 2 also defines apparatus in a signal processor system. The apparatus includes
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`carrier transmission receiving means and means for demodulating the carrier transmission to
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`detect an information transmission on the carrier transmission. The apparatus includes detector
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`means for detecting an embedded signal in the information transmission and removing the
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`detected signal from the information transmission. The apparatus includes control means
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`responsive to the detected signal to activate or deactivate equipment external to the signal
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`processor system. The apparatus includes monitor means activated by the detected signal to
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`monitor the performance or output of the external equipment. The apparatus includes a recorder
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`means for receiving and recording data collected by the monitor means. The apparatus includes
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`control means for instructing the carries receiving means to receive the appropriate carrier
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`transmission within a predetermined time interval and to direct the received carrier transmission
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`to the demodulating means. The apparatus includes a control means fore instructing the recorder
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`to direct recorded information to a remote site.
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`10
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`A TIORNEY DOCKET: 52090.000410
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`The '825 patent discloses numerous embodiments of the apparatus set forth by claim 2.
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`The '825 patent discloses mixers, a switch and a local oscillator that are used to receive cable
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`transmissions (' 825 fig. 2, col. 16, II. 46-60) and a filter and demodulator that defines a particular
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`television transmission ('825 fig. 2A, col. 19, 11. 54-60). Digital detectors detect embedded
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`signals in the television transmission and remove the embedded signals from the television
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`transmission. '825 fig. 2A, col. 19, I. 58- col. 20, l. 23. A processor provides signals to external
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`equipment. '825 fig. 2, col. 17, 11. 56-65. The signal processor is disclosed as activating and
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`deactivating various external equipment. In one embodiment, the signal processor controls
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`activation and deactivation ofdecryptor. '825 fig. 4, col. 16, 11.8-12, col. 166,11. 48-62,col.
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`167, I. 49 - col. 168, I. 7. The signal processor may also control external devices such as tuners.
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`'825 figs. 7 and 7F, col. 264, II. 47-63. Controllers monitor signal usage. '825 fig. 2, col. 18, 11.
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`19-35. These controllers monitor the performance or output of the external equipment. '825 fig.
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`7F, col. 262, 11. 58-63. A digital recorder receives and records data collected by the controllers.
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`'825 fig. 2, col. 18, 11. 51-54. A controller instructs the local oscillator such that appropriate
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`frequencies are received at predetermined time intervals. '825 fig. 2, col. 138, 11. 46-51. A
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`controller is disclosed that controls the apparatus to instruct the recorder to direct the recorded
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`information to a remote site through a telephone connection. '825 fig. 2, col. 18, 11. 31-35.
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`C.
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`Claim 14
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`Claim 14 defines a method of processing signals. In the claimed method a carrier
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`transmission is received. The carrier transmission is demodulated to detect an information
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`transmission thereon. Embedded signals are detected and identified on the information
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`transmission. The embedded signals are passed to devices to be controlled. The devices are
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`controlled based on instructions identified within the embedded signals. The receipt and passing
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`of the embedded signals to the devices is recorded.
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`11
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`ATTORNEY DOCKET: 52090.000410
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`The '825 patent discloses several embodiments of the method set forth by claim 14. For
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`The '825 patent discloses receiving cable television transmissions. '825 col. 16, ll. 46-60. The
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`'825 patent discloses using demodulator techniques for detecting information in the cable
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`television transmissions. '825 col. 19, ll. 54-60. Embedded signals are detected on television
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`carrier transmissions. '825 col. 19, 1. 58- col. 20, 1. 23. These detected signal are identified.
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`'825 col. 17, ll. 14-29. The embedded signals are passed to external equipment. '825 col. 17, 11.
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`56-65. The '825 patent discloses many examples of devices that are controlled by signals passed
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`to the devices. In one example, embedded signal instruct decryptors to decrypt signals. '825 col.
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`16, 11. 8-12, col. 166, ll. 48-62, col. 167, 1. 49- col. 168, 1. 7. Embedded signals also control
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`devices such as tuners. '825 col. 264, ll. 47-63. Other devices are controlled to accomplish other
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`tasks, such as printing material related to television output. '825 col. 262, 1. 41 -col. 263, 1. 34.
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`Recorders record received embedded signals. '825 col. 18, ll. 51-54. Recorders also record
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`embedded signals that are passed to other devices. '825 col. 228, 1. 21 -col. 229, 1. 10.
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`D.
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`Claim20
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`Claim 20 is directed to a method of generating computer output at a multiplicity of
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`receiver stations. The receiver stations each include a computer adapted to generate and transmit
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`user specific signals to output devices. At least some of the computers are programmed to
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`process modification control signals to modify the computers' method of processing data and
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`generating output information content. Each of the computers is programmed to accommodate a
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`special user application. In the claimed method, an instruct-to-generate signal is transmitted to
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`the computers at a time when corresponding user specific output information does not exist. The
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`presence of the instruct-to-generate signal is detected at selected receiver stations and the
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`instruct-to-generate signal is coupled to the computers associated with the selected stations. In
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`response to the instruct-to-generate signal, the computers associated with the selected stations are
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`12
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`caused to generate their user specific output information content. An output signal is thereby
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`transmitted to output devices of the selected stations. The output signals comprise the user
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`specific output information content and user specific signal of its associated computer. The
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`output signals at the multiplicity of receiver stations are different with each output signal specific
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`to a specific user.
`
`The '825 patent discloses multimedia presentations that are coordinated locally in time
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`and place based on broadcast or cablecast transmissions that result in generating computer output
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`at a multiplicity of receiver stations. '825 col. 7, 11. 11-17. The disclosed signal processing
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`apparatus has the ability to modify the operation of its controllers and includes computers that
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`process modification control instructions and are programmed to accommodate user applications.
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`'825 col. 11, 11. 32-61 and col. 15, 11. 43-68. In several examples, the '825 patent discloses user
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`specific output content in the form of the performance of a user's own stock portfolio
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`performance. '825 col. 15, 11. 1-4. Signals are transmitted to instruct computers at the users'
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`stations to generate a graphic of each users' stock portfolio performance at time when the users'
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`stock portfolio performance as not yet been calculated. '825 col. 13, I. 54- col. 14, I. 31. The
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`presence of these signals instructing the generation of graphic overlays are detected. '825 col.
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`13, 11. 56-57 and col. 19, I. 44- col. 20, I. 27. These signals are transferred to the computers at
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`the receiver stations that generate the graphic of the users' stock portfolio performance. '825
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`col. 13, 11. 57-58. The computers at the receiver stations generate the graphic of the users' stock
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`portfolio performance in response to the transmitted and detected signals. '825 col. 14, 11. 23-29.
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`An output signal including the graphic overlay of the users' stock portfolio performance is
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`transmitted to a television monitor. '825 col. 14, I. 68- col. 15 I. 4. The overlay at each receiver
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`13
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`station is calculated from data regarding the user's portfolio and is thus different at each receiver
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`station with each overlay specific to a specific user. '825 col. 12, 11. 15-24 and col. 14, 11. 9-15.
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`E.
`
`Claim 21
`
`Claim 21 is directed to a method of generating computer output at a multiplicity of
`
`receiver stations. The receiver stations each include a computer adapted to generate and transmit
`
`user specific output and user specific signals to output devices. At least some of the computers
`
`are programmed to process modification control signals to modify the computers' method of
`
`processing data and generating output information content. Each of the computers is
`
`programmed to accommodate a special user application. In the claimed method, an instruct-to-
`
`generate signal is transmitted to the computers at a time when corresponding user specific output
`
`information does not exist. In response to the instruct-to-generate signal, the computers are
`
`caused to generate their user specific output information content. An output signal is thereby
`
`transmitted to output devices of the receiver stations. The output signals comprise the user
`
`specific output information content and user specific signal of its associated computer. The
`
`output signals at the multiplicity of receiver stations are different with each output signal specific
`
`to a specific user.
`
`The '825 patent discloses multimedia presentations that are coordinated locally in time
`
`and place based on broadcast or cablecast transmissions that result in generating computer output
`
`at a multiplicity of receiver stations. '825 col. 7, 11. 11-17. The disclosed signal processing
`
`apparatus has the ability to modify the operation of its controllers and includes computers that
`
`process modification control instructions and are programmed to accommodate user applications.
`
`'825 col. 11, II. 32-61 and col. 15, 11. 43-68. In several examples, the '825 patent discloses user
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`specific output content in the form of the performance of a user's own stock portfolio
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`performance. '825 col. 15, 11. 1-4. Signals are transmitted to instruct computers at the users'
`
`14
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`AITORNEY DOCKET: 52090.000410
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`stations to generate a graphic of each users' stock portfolio performance at time when the users'
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`stock portfolio performance as not yet been calculated. '825 col. 13, 1. 54 - col. 14, 1. 31. The
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`computers at the receiver stations generate the graphic of the users' stock portfolio performance
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`in response to these signals. '825 col. 14, 11. 23-29. An output signal including the graphic
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`overlay of the users' stock portfolio performance is transmitted to a television monitor. '825 col.
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`14, 1. 68- col. 15 1. 4. The overlay at each receiver station is calculated from data regarding the
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`user's portfolio and is thus different at each receiver station with each overlay specific to a
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`specific user. '825 col. 12, 11. 15-24 and col. 14, 11. 9-15.
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`F.
`
`Claim 25
`
`Claim 25 is directed to a method of generating computer output at a multiplicity of
`
`receiver stations. The receiver stations each include a computer adapted to generate and transmit
`
`user specific signals to output devices. At least some of the computers are programmed to
`
`process modification control signals to modify the computers' method of processing data and
`
`generating output information content. Each of the computers is programmed to accommodate a
`
`special user application. In the claimed method, the presence of a transmitted instruct-to-
`
`generate signal is detected at selected receiver stations and the instruct-to-generate signal is
`
`coupled to the computers associated with the selected stations. In response to the instruct-to-
`
`generate signal, the computers associated with the selected stations are caused to generate their
`
`user specific output information content. An output signal is thereby transmitted to output
`
`devices of the selected stations. The output signals comprise the user specific output information
`
`content and user specific signal of its associated computer. The output signals at the multiplicity
`
`of receiver stations are different with each output signal specific to a specific user.
`
`The '825 patent discloses multimedia presentations that are coordinated locally in time
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`and place based on broadcast or cablecast transmissions that result in generating computer output
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`at a multiplicity of receiver stations. '825 col. 7, 11. 11-17. The disclosed signal processing
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`apparatus has the ability to modify the operation of its controllers and includes computers that
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`process modification control instructions and are programmed to accommodate user applications.
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`'825 col. 11, 11. 32-61 and col. 15, 11. 43-68. In several examples, the '825 patent discloses user
`
`specific output content in the form of the performance of a user's own stock portfolio
`
`performance. '825 col. 15, 11. 1-4. Embedded signals are transmitted to instruct computers at the
`
`users' stations to generate a graphic of each users' stock portfolio performance. '825 col. 13, I.
`
`54 - col. 14, I. 31. The presence of these signals instructing the generation of graphic overlays
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`are detected. '825 col. 13, 11. 56-57 and col. 19, I. 44- col. 20, I. 27. These signals are
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`transferred to the computers at the receiver stations that generate the graphic of the users' stock
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`portfolio performance. '825 col. 13, 11. 57-58. The computers at the receivers generate the
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`graphic of the users' stock portfolio performance in response to the transmitted and detected
`
`signals. '825 col. 14, 11. 23-29. An output signal including the graphic overlay of the users'
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`stock portfolio performance is transmitted to a television monitor. '825 col. 14, I. 68- col. 15 I.
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`4. The overlay at each receiver station is calculated from data regarding the user's portfolio and
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`is thus different at each receiver station with each overlay specific to a specific user. '825 col.
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`12,11. 15-24 and col. 14, 11. 9-15.
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`A TIORNEY DOCKET: 52090.000410
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`VI. ISSUES TO BE REVIEWED ON APPEAL
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`Appellant finds error in each of the outstanding rejections in the Final Office Action.
`
`Appellant requests that the each of the following rejections presented in the Final Office Action
`
`be reviewed.
`
`In the Final Office Action, the Examiner stated the following claim rejections:
`
`1. Claim 1 was rejected under § 102 as being anticipated by British Patent 1 430 641 to
`
`Auer, Jr. (O.A. at § 1.2.A), U.S. Patent No. 4,360,828 to Briggs, Jr. et al. (O.A. at §
`
`I.2.B), U.S. Patent 4,156,847 to Tazawa et al. (O.A. at§ I.2.C) and U.S. Patent No.
`
`4,592,546 to Fascenda et al. (O.A. at § 1.2.D)
`
`2. Claims 2, 14, 16, 18 and 19 were rejected under §103(a) as being unpatentable over U.S.
`
`Patent No. 4,360,838 to Briggs or Tazawa et al. in view of U.S. Patent No. 4,292,650 to
`
`Hendrickson (O.A. at §II.l.A and B).
`
`3. Claims 14, 15 and 17-19 were rejected under§ 102 as being anticipated by U.S. Patent
`
`No. 4,388,643 to Aminetzah (O.A. at §1.2.F);
`
`4. Claim 20 was rejected under §102 as being anticipated by U.S. Patent 4,829,569 to Seth-
`
`Smith et al. (O.A. at §1.2.G).
`
`5. Claims 22-23 and 25 were rejected under § 102 as being anticipated by Seth-Smith et al.
`
`(O.A. at §1.2.H, I, and K).
`
`6. Claim 24 was rejected under § 102 as being anticipated by each of Seth-Smith et al. (O.A.
`
`at §1.2.J) and "A Playcable Publication" (O.A. at §1.2.L).
`
`7. Claims 20-25 were rejected under §103(a) as being unpatentable over:
`
`•
`
`"ANTI OPE VIDEOTEXT SYSTEM," "Captioning of Television Transmissions by
`the ANTIOPE System" and the CBS "PETITION FOR RULEMAKING." (O.A. at
`§§ll.l.G-H); and
`• CBS "PETITION FOR RULEMAING" in view of JP 55-045248 to Tsuboka or,
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`alternatively, "Broadcast Text Information in France" by Marti (O.A. at §§II.l.C-F).
`
`8. Claims 20, 21, 22, 24 and 25 additionally were rejected under the judicially created
`
`doctrine of obviousness-type double patenting.
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`A TIORNEY DOCKET: 52090.000410
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`VII. ARGUMENT
`
`A. PATENT OWNER'S RESPONSE WITH RESPECT TO CLAIM OF
`PRIORITY UNDER 35 U.S.C. §120
`
`Application Serial No. 96,096 which issued as the '825 patent was filed September 11,
`
`1987. However, the '825 patent claims priority to November 3, 1981, which is the filing date of
`
`the earliest application (U.S. Patent No. 4,694,490). The Examiner applies art alleged published
`
`between November 3, 1981 and Sepetember 11, 1987, against claims 1, 20, and 22-25, thus
`
`raising the issue of whether those five claims are entitled to priority to the 1981 filing date.
`
`1. The Requirements of Section 120
`
`In Callicrate v. Wadsworth Mfg., 427 F.3d 1361, 1373,77 U.S.P.Q.2d 1041, 1051 (Fed.
`
`Cir. 2005), the Federal Circuit described the requirements for obtaining priority under 35 U.S.C.
`
`§ 120 as follows:
`
`In the United States, a claim of pnonty to an earlier filed
`application(s) is governed by the provisions of 35 U.S.C. § 120.
`Section 120 provides, in part:
`
`An application for patent for an invention disclosed
`in the manner provided by the first paragraph of
`section 112 of this title in an application previously
`filed in the United States ... shall have the same
`effect, as to such invention, as though filed on the
`date of the prior application, if filed before the
`patenting or abandonment of or termination of
`proceedings on the first application or on an
`application similarly entitled to the benefit of the
`filing date of the first application[.]
`
`35 U.S.C. § 120 (effective Nov. 29, 2000) (emphasis added). As
`indicated in the highlighted language, a "patent may only claim
`priority to an earlier application if the earlier application fulfills the
`requirements of § 112, first paragraph. In turn, that paragraph
`requires, in part, that the application 'shall contain a written
`description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as
`to enable any person skilled in the art to which it pertains, or with
`
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`which it is most nearly connected, to make and use the same."'
`Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1253 (Fed. Cir.
`2004) (quoting 35 U.S.C. § 112, IJI 1).
`
`Thus a proper determination of whether a claim is entitled to priority under§ 120 requires an
`
`analysis of whether the claimed invention is sufficiently described and enabled by the parent
`
`specification. Appellant has demonstrated through the expert declarations of Dr. Alan C. Bovik
`
`that application Ser. No. 317,510, filed Nov. 3, 1981, (the 1981 specification) contains a
`
`description and demonstrates possession of the invention of claims 1, 20 and 22-25 of the '825
`
`patent. 1 Claims 1, 20 and 22-25 are, thus, entitled to benefit of the November 3, 1981, filing date
`
`under§ 120.
`
`2. T