· ..
`
`_,
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Application of
`
`John C. Harvey and James W. Cuddihy
`
`Examiner:
`
`Faile, A.
`
`Serial No.
`
`08/460,711
`
`Group Art Unit:
`
`2711
`
`Filed:
`
`June 2, 1995
`
`Atty. Dkt.
`
`05634.0212
`
`SIGNAL PROCESSING APPARATUS
`For:
`AND METHODS
`
`BOX: AFTER FINAL
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Sir:
`
`I.
`
`AMENDMENT AND REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. § 1.116
`
`This amendment is responsive to the Final Office Action mailed May 29, 1998.
`
`Applicants respectfully request that the following amendments be entered into the above(cid:173)
`
`captioned application:
`
`In the Claims
`
`Applicants request entering the below amendments to the claims. Claims 2-4 and 37 are
`
`amended. For the PTO's convenience, claims that remain unchanged are included below in
`
`order to allow the Examiner to review all pending claims from this response in their numerical
`
`order.
`
`2. (Twice Amended) A method of television signal processing at a receiver station, said
`
`receiver station having a plurality of processors and a digital switch, said method comprising the
`
`steps of:
`
`VIZIO, Inc. Exhibit 1014
`1 of 52
`
`

`
`'-·
`
`./
`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`receiving an information transmission containing digital television signals and a message
`
`stream;
`
`detecting said message stream in said information transmission;
`
`inputting a plurality of commands received in said message stream to a control processor;
`
`selecting a plurality of said digital television signals contained in said information
`
`transmission in response to said commands, said selected plurality of said digital television
`
`signals being information segments of said information transmission;
`
`controlling said digital switch to communicate each one of said selected plurality of said
`
`digital television [signal] signals to a signal processor;
`
`processing said selected plurality of said digital television signals to communicate video
`
`and audio signals to a television monitor.
`
`3. (Twice Amended) A method of delivering programming [at] to a video or audio
`
`programming storage station, said storage station comprising one or more storage locations
`
`capable of storing video or audio programming, a transmission device capable of communicating
`
`video or audio programming to or from said one or more storage locations, and a processor
`
`capable of controlling at least one of said one or more storage locations to receive, store, or
`
`communicate video or audio programming or capable of controlling said transmission device to
`
`communicate video or audio programming, comprising the steps of:
`
`(1)
`
`receiving a signal comprising video or audio programming, said signal comprising
`
`video or audio programming containing one of (i) a first intermediate generation set and (ii) at
`
`least some of a program instruction set;
`
`(2)
`
`receiving a first control signal which causes a transmitter station to communicate
`
`said signal comprising video or audio programming to a transmitter; and
`
`2
`
`VIZIO, Inc. Exhibit 1014
`2 of 52
`
`

`
`•
`
`./
`
`(3)
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`transmitting said one of (i) a first intermediate generation set and (ii) at least some
`
`of a program instruction set, said one of (i) a first intermediate generation set and (ii) at least
`
`some of a program instruction set to be stored at said video or audio programming storage
`
`station.
`
`4. (Twice Amended) A method of delivering programming [at] to a video or audio
`
`programming storage station, said storage station comprising one or more storage locations
`
`capable of storing video or audio programming, a transmission device capable of communicating
`
`video or audio programming to or from said one or more storage locations, and a processor
`
`capable of controlling at least one of said one or more storage locations to receive, store, or
`
`communicate video or audio programming or capable of controlling said transmission device to
`
`communicate video or audio programming, said method comprising the steps of:
`
`(1)
`
`receiving a signal comprising first video or audio programming and containing
`
`one of (i) a first intermediate generation set and (ii) at least some of a program instruction set;
`
`and
`
`(2)
`
`causing said one of (i) a first intermediate generation set and (ii) at least some of a
`
`program instruction set to be communicated to a transmitter at a specific time, thereby to transmit
`
`said one of (i) a first intermediate generation set and (ii) at least some of a program instruction
`
`set, said one of (i) a first intermediate generation set and (ii) at least some of a program
`
`instruction set to be stored at said video or audio programming storage station.
`
`5.
`
`A method of delivering programming at a video or audio programming storage
`
`station, said storage station comprising one or more storage locations capable of storing said
`
`video or audio programming, a transmission device capable of communicating said video or
`
`3
`
`VIZIO, Inc. Exhibit 1014
`3 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`audio programming to or from said one or more storage locations, and a processor capable of
`
`controlling at least one of said one or more storage locations to receive, store, or communicate
`
`said video or audio programming or capable of controlling said transmission device to
`
`communicate said video or audio programming, comprising the steps of:
`
`receiving a signal containing said video or audio programming;
`
`communicating said signal containing said video or audio programming to at least one of
`
`said one or more storage locations;
`
`storing said signal containing said video or audio programming at said at least one of said
`
`one or more storage locations; and
`
`storing one of (i) an intermediate generation set and (ii) at least some of a program
`
`instruction set at said video or audio programming storage station.
`
`6.
`
`The method of claim 2, further comprising the step of programming said control
`
`processor to control said digital switch on the basis of information contained in said message
`
`stream.
`
`7.
`
`The method of claim 2, wherein said television signals include part of a television
`
`program, said method further comprising the steps of:
`
`generating a balance of said television program; and synchronizing delivery of said
`
`received part of a television program and said generated balance of said television program at
`
`one of a television monitor and a television storage device.
`
`8.
`
`The method of claim 7, wherein a memory is operatively connected to said one of
`
`a television monitor and a television storage device, said generated balance of said television
`
`4
`
`VIZIO, Inc. Exhibit 1014
`4 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`program includes a receiver specific datum, and said step of synchronizing comprises storing said
`
`receiver specific datum in said memory and clearing at least some of said memory.
`
`9.
`
`The method of claim 7, wherein a memory is operatively connected to said one of
`
`a television monitor and a television storage device, and said step of synchronizing comprises
`
`setting a visible background color at some or all of said memory and producing a combined or
`
`sequential presentation of said received part of a television program and said visible background
`
`color.
`
`10.
`
`The method of claim 9, further comprising the step of detecting one or more
`
`processor instructions in said information transmission which operate to generate said balance or
`
`synchronize said presentation.
`
`11.
`
`The method of c!aim 7, further comprising the steps of:
`
`detecting one or more instruct signals in said information transmission;
`
`communicating said one or more instruct signals to at least one of said plurality of
`
`processors; and
`
`performing at least one of said steps of generating and synchronizing in response to said
`
`one or more instruct signals.
`
`12.
`
`The method of claim 11, wherein said digital switch communicates said one or
`
`more instruct signals to said at least one processor.
`
`13.
`
`The method of claim 11, wherein said control processor communicates said one or
`
`more instruct signals to said at least one processor.
`
`5
`
`VIZIO, Inc. Exhibit 1014
`5 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`14.
`
`The method of claim 2, wherein said control processor controls a first central
`
`processor to generate video and a second central processor to output a video signal, said method
`
`further comprising the steps of:
`
`detecting code in said information transmission; and
`
`controlling one of said signal processor, said first central processor, and said second
`
`central processor based on said code.
`
`15.
`
`The method of claim 14, wherein said code controls said control processor, said
`
`method further comprising the step of communicating at least one processor instruction to said
`
`one of said signal processor, said first central processor, and said second central processor in
`
`accordance with said code.
`
`16.
`
`The method of claim 14, wherein said code programs said control processor to
`
`respond to said commands, said method further comprising the step of controlling one of said
`
`signal processor and said digital switch in accordance with said code.
`
`17.
`
`The method of claim 16, wherein said method further comprises the step of
`
`controlling said digital switch to select or output said digital television signals in response to said
`
`commands.
`
`18.
`
`The method of claim 17, further comprising the step of controlling said digital
`
`switch to output said digital television signals to said signal processor.
`
`6
`
`VIZIO, Inc. Exhibit 1014
`6 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`19.
`
`The method of claim 16, wherein said method further comprises the step of
`
`controlling said signal processor to receive, select, or process said digital television signals or
`
`communicate said video and audio signals in response to said commands.
`
`20.
`
`The method of claim 19, further comprising the step of controlling said signal
`
`processor to output selected audio to a speaker in response to said commands.
`
`21.
`
`The method of claim 19, wherein one of said commands and said digital
`
`television signals is contained in a code portion of said information transmission and said
`
`receiver station includes a portion receiver, said method further comprising the step of:
`
`controlling said portion receiver to receive said code portion.
`
`22.
`
`The method of claim 21, further comprising the step of controlling said portion
`
`receive to receive an expanded or contracted code portion based on said commands.
`
`23.
`
`The method of claim 16, further comprising the step of storing or communicating
`
`to a remote station information evidencing detection of said commands or communication of said
`
`digital television signals.
`
`24.
`
`The method of claim 3, wherein said transmitter station is a remote intermediate
`
`transmitter station, said method further comprising the step of transmitting said first control
`
`signal.
`
`25.
`
`The method of claim 24, further comprising the step of transmitting a second
`
`control signal which causes said remote intermediate transmitter station to transmit one of (i) said
`
`program instruction set, (ii) a command, and (iii) a second intermediate generation set.
`
`7
`
`VIZIO, Inc. Exhibit 1014
`7 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`26.
`
`The method of claim 25, wherein said one of (i) said program instruction set, (ii) a
`
`command, and (iii) a second intermediate generation set is generated in accordance with said first
`
`intermediate generation set, said method further comprising the step of transmitting information
`
`to serve as a basis for generating said one of (i) said program instruction set, (ii) a command, and
`
`(iii) a second intermediate generation set.
`
`27.
`
`The method of claim 26, wherein said information to serve as a basis for
`
`generating is one of a formula and an item.
`
`28.
`
`The method of claim 25, wherein said video or audio programming storage station
`
`is operatively connected to said transmitter, said method further comprising the step of
`
`transmitting one or more third control signals which cause said remote intermediate transmitter
`
`station to execute said intermediate generation set before an interval of time during which said
`
`one of (i) said program instruction set, (ii) a command, and (iii) a second intermediate generation
`
`set is to be generated.
`
`29.
`
`The method of claim 24, further comprising the step of transmitting said signal
`
`comprising video or audio programming to said remote intermediate transmitter station.
`
`30.
`
`The method of claim 3, wherein said signal comprising video or audio
`
`programming is received at a signal generator operatively connected to said transmitter, said
`
`method further comprising the steps of:
`
`receiving a second control signal; and
`
`8
`
`VIZIO, Inc. Exhibit 1014
`8 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`causing said video or audio programming storage station to deliver said intermediate
`
`generation set at an output operatively connected to said signal generator in response to said
`
`second control signal.
`
`31.
`
`The method of claim 30, wherein said transmission device comprises one of ( 1) a
`
`matrix switch, (2) a digital switch, and (3) a computer, said one of (1) a matrix switch, (2) a
`
`digital switch, and (3) a computer including said output operatively connected to said signal
`
`generator, said method further comprising the steps of:
`
`receiving a third control signal; and
`
`controlling said transmission device to communicate said one of said signal containing
`
`video or audio programming and said intermediate generation (a) to one of said one or more
`
`storage locations and (b) from said one of said matrix switch, said digital switch, and said
`
`computer in response to said third control signal.
`
`32.
`
`The method of claim 4, wherein said signal comprising video or audio
`
`programming contains a series or stream of control instructions, said method further comprising
`
`the step of storing two or more of said control instructions in a specific order prior to said
`
`specific time.
`
`33.
`
`The method of claim 4, wherein said signal comprising video and audio
`
`programming contains generally applicable video or audio information to serve as a basis for
`
`selecting video or audio programming to output at said receiver station, said method further
`
`comprising the steps of:
`
`generating at least one of a plurality of control instructions which enable said receiver
`
`station to select and output said video or audio programming prior to said specific time; and
`
`9
`
`VIZIO, Inc. Exhibit 1014
`9 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`transmitting at least two of said plurality of control instructions in a specific order.
`
`34.
`
`The method of claim 33, wherein said plurality of control instructions comprises a
`
`message stream, said method further comprising the step of transmitting operating instructions
`
`which are effective to control said processor to process at least one message of said message
`
`stream.
`
`35.
`
`The method of claim 33, wherein said generally applicable information comprises
`
`some of one of (i) said program instruction set and (ii) a second intermediate generation set, said
`
`method further comprising the step of causing said video or audio programming storage station
`
`to store data to serve as a basis for generating a balance of said one of (i) said program
`
`instruction set and (2) a second intermediate generation set.
`
`36.
`
`The method of claim 33, wherein said generally applicable information includes at
`
`least some of a processor instruction, said method further comprising the step of transmitting one
`
`of assembly language code and a signal word to be assembled.
`
`37. (Amended) The method of claim [37] 36, wherein said at least some of a processor
`
`instruction is assembled at said receiver station, said method further comprising the step of
`
`transmitting said one of assembly language code and a signal word to be assembled.
`
`38.
`
`The method of claim 33, wherein said generally applicable information includes
`
`higher language code and a control signal operates to generate software by completing a module
`
`containing said higher language code, said method further comprising the step of receiving and
`
`10
`
`VIZIO, Inc. Exhibit 1014
`10 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`storing instructions which operate to compile or link said module or to complete said higher
`
`language code.
`
`39.
`
`The method of claim 34, wherein said generally applicable information includes
`
`said first video or audio programming, said method further comprising the steps of:
`
`transmitting second video or audio programming to be outputted in a combined or
`
`sequential presentation with said first video or audio programming.
`
`40.
`
`The method of claim 39, further comprising the step of transmitting a control
`
`signal which causes said video or audio programming storage station to store said second video
`
`or audio programming.
`
`41.
`
`The method of claim 5, wherein said video or audio programming includes an
`
`incomplete programming element, and said one of an intermediate generation set and at least
`
`some of a program instruction set operates to complete said incomplete programming element by
`
`processing a class of data, said method further comprising the step of receiving a control signal
`
`which designates at least one of said incomplete programming element and said class of data.
`
`42.
`
`The method of claim 41, wherein said class of data designates programming
`
`distributor data, said method further comprising the step of receiving and storing distributor data.
`
`43.
`
`The method of claim 41, wherein said class of data designates subscriber data,
`
`said method further comprising the step of receiving and storing subscriber data.
`
`44.
`
`The method of claim 5, wherein said video or audio programming is of a duration,
`
`said duration including a serie~ of time intervals of specific relevance, said method further
`
`11
`
`VIZIO, Inc. Exhibit 1014
`11 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`comprising the step of receiving and storing a control signal which contains a series or stream of
`
`sequentially transmitted control instructions, each control instruction to generate or output one or
`
`more user data.
`
`45.
`
`The method of claim 44, wherein said series or stream of sequentially transmitted
`
`control instructions is a message stream, said method further comprising the step of receiving and
`
`storing instructions which are effective to instruct said processor to process at least one message
`
`of said message stream.
`
`46.
`
`The method of claim 5, wherein said one of an intermediate generation set and at
`
`least some of a program instruction set operates to generate a control signal, said method further
`
`comprising the step of receiving and storing generally applicable information of said control
`
`signal.
`
`47.
`
`The method of claim 46, wherein said generally applicable information of said
`
`control signal is at least some of a processor instruction, said method further comprising the step
`
`of receiving and storing one of assembly language code and a signal word to be assembled.
`
`48.
`
`The method of claim 5, wherein in response to a specific control instruction said
`
`processor generates a series of user specific data, and a processor interrupt signal is inputted to
`
`said processor to enable the communication of one or more specific user specific data to an
`
`output device at a specific time, said method further comprising the step of receiving and storing
`
`at least some of said specific control instruction and said interrupt signal.
`
`12
`
`VIZIO, Inc. Exhibit 1014
`12 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`49.
`
`The method of claim 48, wherein said interrupt signal is inputted to said processor
`
`in response to a first further control instruction and said interrupt signal causes said processor to
`
`clear a specific memory location and store a generated user specific datum in the specific
`
`memory location to form a subsequent output, said method further comprises the step of
`
`receiving and storing said first further control instruction.
`
`50.
`
`The method of claim 49, wherein a second further control instruction causes said
`
`processor to cease communicating one or more receiver specific data to said output device and to
`
`commence or resume generating said series, said method further comprising the step of receiving
`
`and storing said second further control instruction.
`
`51.
`
`The method of claims 5, wherein a control program causes a controller operatively
`
`connected to said video or audio storage station to control one or more peripheral devices, said
`
`method further comprising the step of receiving and storing said control program.
`
`52.
`
`The method of claim 48, wherein said one or more peripheral devices include one
`
`of a matrix switch and a digital switch operatively connected to said video or audio storage
`
`station, said method further comprising the step of receiving and storing an identifier designating
`
`information to be communicated by said one of a matrix switch and a digital switch.
`
`53.
`
`The method of claim 48, wherein said video or audio programming storage station
`
`comprises one of (I) a video or audio tape player and (2) a memory operatively connected to a
`
`computer.
`
`13
`
`VIZIO, Inc. Exhibit 1014
`13 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`54.
`
`The method of claim 48, wherein said signal containing video or audio
`
`programming comprises an analog television signal.
`
`55.
`
`The method of claim 48, wherein said signal containing video or audio
`
`programming comprises a digital television signal.
`
`II.
`
`REMARKS
`
`A.
`
`Introduction
`
`The Final Office Action dated May 29, 1998 (Final Office Action) has been carefully
`
`reviewed and the foregoing amendments made in response thereto.
`
`Claim 2-4 and 37 are amended. Claims 2-55 are pending in the application.
`
`Claims 2-55 are rejected under 35 U.S.C. § 112, first paragraph, as containing subject
`
`matter which was not described in the specification in such a way as to reasonably convey to one
`
`skilled in the relevant art that the inventors, at the time the application was filed, had possession
`
`of the claimed invention.
`
`Claims 2-25 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 Applicants regard as
`
`the invention.
`
`Claims 2, 6-8, and 11-13 are rejected under 35 U.S.C. § 103 (a) as being unpatentable
`
`over "Digital Transmission of Broadcast Television with Reduced Bit Rate" by Kaneko et al..
`
`Claims 3-5 and 24-55 are rejected under 35 U.S.C. § 103 (a) as being unpatentable over
`
`"Videocassette Banks Automate Delayed Satellite Programming" by Chiddix in view of U.S. Pat.
`
`No. 4,025,851 to Haselwood et al. and "A System of Data Transmission in the Field Blanking
`
`Period of the Television Signal" by Hutt.
`
`Claims 2-55 remain active in this application. No new matter is presented in the
`
`foregoing amendments. Approval and entry of same is respectfully requested.
`
`14
`
`VIZIO, Inc. Exhibit 1014
`14 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`B. Withdrawal of Previous Requirement
`
`Applicants note with appreciation the withdrawal of the rejection of the claims in the
`
`present application under double patenting based on the broad analysis of In re Schneller as set
`
`forth in paragraphs 7-10 of the previous Office Action.
`
`C.
`
`Response to Requirement Imposed Upon Applicants to Resolve
`Alleged Conflicts Between Applicants' Applications.
`
`Applicants respectfully traverse the requirements of the Final Office Action paragraph 5.
`
`Paragraph 5 of the Final Office Action requires Applicants to either:
`
`(1)
`
`file terminal disclaimers in each of the related 329 applications terminally
`
`disclaiming each of the other 329 applications; or
`
`(2)
`
`provide an affidavit attesting to the fact that all claims in the 329 applications
`
`have been reviewed by applicant and that no conflicting claims exist between the applications; or
`
`(3)
`
`resolve all conflicts between claims in the related 329 applications by identifying
`
`how all the claims in the instant application are distinct and separate inventions from all the
`
`claims in the above identified 329 applications.
`
`In addition, Examiner states that failure to comply with any one of these requirements
`
`will result in abandonment of the application.
`
`Examiner states that the requirement has been made because conflicts exist between
`
`claims of the related co-pending applications, including the present application. Examiner sets
`
`forth only the serial numbers of the co-pending applications without an indication of which
`
`claims are conflicting. Examiner has also attached an Appendix providing what is deemed to be
`
`clear evidence that conflicting claims exist between the 329 related co-pending applications and
`
`the present application. Further, Examiner states that an analysis of all claims in the 329 related
`
`co-pending applications would be an extreme burden on the Office requiring millions of claim
`
`comparisons.
`
`Applicants respectfully traverse these requirements in that Examiner has both improperly
`
`imposed the requirements, and has incorrectly indicated that abandonment will occur upon
`
`15
`
`VIZIO, Inc. Exhibit 1014
`15 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`failure to comply with the requirement. Applicants' traversal is supported by the fact that 37
`
`C.F.R. § 1.78 (b) does not, under the present circumstances, provide Examiner with authority to
`
`require Applicants to either: 1) file terminal disclaimers; 2) file an affidavit; or 3) resolve all
`
`apparent conflicts. Additionally, the penalty of abandonment of the instant application for failure
`
`to comply with the aforementioned requirement is improper for being outside the legitimate
`
`authority to impose abandonment upon an application. The following remarks in Section (C)
`
`will explain Applicants' basis for this traversal.
`
`1.
`
`The PTO's New Requirement is an Unlawfully
`Promulgated Substantive Rule Outside the
`Commissioner's Statutory Grant of Power
`
`The PTO Commissioner obtains his statutory rulemaking authority from the Congress
`
`through the provisions of Title 35 of the United States Code. The broadest grant of rulemaking
`
`authority-- 35 U.S.C. § 6 (a)-- permits the Commissioner to promulgate regulations directed
`
`only to "the conduct of proceedings in the [PTO}". This provision does NOT grant the
`
`Commissioner authority to issue substantive rules of patent law. Animal Legal Defense Fund v.
`
`Quigg, 932 F.2d 920,930, 18 USPQ2d 1677, 1686 (Fed. Cir. 1991).1 Applicants respectfully
`
`submit that the Examiner's creation of a new set of requirements based upon 37 C.F.R. § 1.78(b)
`
`constitutes an unlawful promulgation of a substantive rule in direct contradiction of a long-
`
`established statutory and regulatory scheme.
`
`2.
`
`The PTO's Requirement is a Substantive Rule
`
`The first determination is whether the requirement as imposed by the PTO upon
`
`Applicants is substantive or a procedural rule. The Administrative Procedure Act offers general
`
`guidelines under which all administrative agencies must operate. A fundamental premise of
`
`administrative law is that administrative agencies must act solely within their statutory grant of
`
`I Accord Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526, 16 USPQ2d 1549, 1552 (Fed. Cir. 1990); G1axo
`Operations UK Ltd. v. Quigg, 894 F.2d 392,398-99, 13 USPQ2d 1628, 1632-33 (Fed. Cir. 1990); Ethicon Inc. v.
`Qillgg, 849 F.2d 1422, 1425, 7 USPQ2d 1152, 1154 (Fed. Cir 1988).
`
`16
`
`VIZIO, Inc. Exhibit 1014
`16 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`power. Chevron v. Natural Resources Defense Council, 467 U.S. 837 (1984). The PTO
`
`Commissioner has NOT been granted power to promulgate substantive rules of patent law.
`
`Merck & Co., Inc. v. Kessler, 80 F.3d 1543 (Fed. Cir. 1996), citing, Animal Legal Defense Fund
`
`v. Quigg, 932 F.2d 920,930, 18 USPQ2d 1677, 1686 (Fed. Cir. 1991).
`
`The appropriate test for such a determination is an assessment of the rule' s impact on the
`
`Applicants' rights and interests under the patent laws. Fressola v. Manbeck, 36 USPQ2d 1211,
`
`1215 (D.D.C. 1995). As the PTO Commissioner has no power to promulgate substantive rules,
`
`the Commissioner receives no deference in his interpretation of the statutes and laws that give
`
`rise to the instant requirement. Merck & Co., Inc. v. Kessler, 80 F.3d 1543 (Fed. Cir. 1996),
`
`citing, Chevron v. Natural Resources Defense Council, 467 U.S. 837 (1984). When agency rules
`
`either (a) depart from existing practice or (b) impact the substantive rights and interests of the
`
`effected party, the rule must be considered substantive. Nat'/ Ass'n of Home Health Agencies v.
`
`Scheiker, 690 F.2d 932,949 (D.C. Cir. 1982), cert. denied, 459 U.S. 1205 (1983).
`
`a.
`
`The PTO's Requirement is Substantive Because
`ii Radicaily Changes Long Existing Patent
`Practice by Creating a New Requirement Upon
`Applicants Outside the Scope of 37 C.F.R. § 1.78
`(b)
`
`The Examiner's requirement is totally distinguishable from the well articulated
`
`requirement authorized by 37 C.P.R. § 1.78 (b), because it (1) creates and imposes a new
`
`requirement to avoid abandonment of the application based on the allegation that conflicts exist
`
`between claims of the related 328 co-pending applications, and (2) it results in an effective final
`
`double patenting rejection without the PTO's affirmative double patenting rejection of the
`
`claims. Long existing patent practice recognizes only two types of double patenting, double
`
`patenting based on 35 U.S.C. § 101 (statutory double patenting) and double patenting analogous
`
`to 35 U.S.C. § 103 (the well-known obviousness type double patenting).2 These two well
`
`2MPEP § 804(B )(I) states, in an admittedly awkward fashion, that the inquiry for obviousness type double patenting
`is analogous to a rejection under 35 U.S.C. 103: "since the analysis employed in an obvious-type double patenting
`determination parallels the guidelines for a 35 U.S.C. 103 rejection, the factual inquires set forth in Graham v. John
`
`17
`
`VIZIO, Inc. Exhibit 1014
`17 of 52
`
`

`
`•
`
`• Serial No. 08/460,711
`
`Docket No. 5634.0212
`
`established types of double patenting use an objective standard to determine when they are
`
`appropriate3 and have a determinable result on the allowability of the pending claims.
`
`The Examiner's new requirement represents a radical departure from long existing patent
`
`practice relevant to conflicting claims between co-pending applications of the same inventive
`
`entity. Two well established double patenting standards are based on an objective analysis of
`
`comparing pending and allowed claims. However, in the present application, there are no
`
`allowed claims. The Examiner's new requirement to avoid a double patenting rejection
`
`presumes that conflicts exist between claims in the present application and claims in the 327
`
`copending applications. This presumption of conflicts between claims represents a radical
`
`departure from long existing patent practice as defined by 37 C.F.R. § 1.78 (b), which states:
`
`Where two or more applications filed by the same applicant contain conflicting
`claims, elimination of such claims from all but one application may be required in
`the absence of good and sufficient reason for their retention during pendency in
`more than one application.
`
`Clearly, the only requirement authorized by the rule is the elimination of conflicting
`
`dain1s fr·om all but one application whefe conflicting clairns have been delenniued to exist.
`
`Furthermore, in order to determine that conflicting claims do in fact exist in multiple
`
`applications, the only possible analysis is obviousness-type double patenting, since there are no
`
`allowed or issued claims by which to employ the 35 U.S.C. § 101 statutory double patenting
`
`analysis. Once obviousness-type double patenting analysis has been applied and conflicting
`
`claims have been determined to exist, only a provisional obviousness-type double patenting
`
`rejection is possible until claims