UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria. Virginia 223l3—l450
`www.uspIo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`l0/704,318
`
`1|/07/2003
`
`Henry c. Yuen
`
`51480/PAN/G207
`
`3367
`
`CHRISTIE, PARKER&HALE, LLP T
`po Box 7063
`AUSTIN. SHELTON w
`PASADENA, CA 91109-7068
`ART UNIT
`PAPER NUMBER
`
`2623
`
`MAIL DATE
`
`09/25/2007
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`C
`
`t E h_b_t 1013
`omcas,
`x I I-
`
`1
`
`Comcast, Exhibit-1013
`
`

`
`Office Action Summary
`
`Application No.
`
`10/704,318
`
`Examine,
`
`Shelton Austin
`
`Applicant(s)
`
`YUEN ET AL.
`
`An Unit
`
`2623 -
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`in no event. however. may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If No period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will. by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CF R 1.704(b).
`
`Status
`
`1)E Responsive to communication(s) filed on 07 November 2003.
`2a)EI This action is FINAL.
`2b)|Zl This action is non-final.
`3)E] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)X C|aim(s)1-_3Qis/are pending in the application.
`
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`
`5)E] Claim(s) __ is/are allowed.
`
`6)® Claim(s) Q2 is/are rejected.
`
`7)I:I Claim(s) __ is/are objected to.
`8)D Claim(s)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)[] The specification is objected to by the Examiner.
`10)IZ| The drawing(s) filed on 07 November 2003 is/are: a)X| accepted or b)I:] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11)E] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)l:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)I:I All
`b)I:l Some * c)I:I None of:
`
`1.I] Certified copies of the priority documents have been received.
`
`2.l:] Certified copies of the priority documents have been received in Application No. __
`3.EI Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2( )).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) E Notice of References Cited (PTO—892)
`2) E] Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) IX] lnforrnation Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date 11/7/2003.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`2
`
`4) D Interview Summary (PTO-413)
`Paper N°(S)/M3" 0318- __ -
`5) CI N°ti°e °f Informal Patent APP'icati°n
`6) C] Other: __.
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20070824
`
`2
`
`

`
`Application/Control Number: 10/704,318
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`Page 2
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`Art Unit: 2623
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`DETAILED ACTION
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`1.
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`unjustified or improper timewise extension of the “right to exclude" granted by a patent
`and to prevent possible harassment by multiple assignees. A nonstatutory
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`are not identical, but at least one examined application claim is not patentably distinct
`from the reference claim(s) because the examined application claim is either anticipated
`by, or would have been obvious over, the reference c|aim(s). See, e.g., In re Berg, 140
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`double patenting ground provided the conflicting application or patent either is shown to
`be commonly owned with this application, or claims an invention made as a result of
`activities undertaken within the scope of a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`37 CFR 3.73(b).
`
`Allowance of application claims 1-30 would result in an unjustified time-wise
`
`extension of the monopoly previously granted for the invention as specified in patent
`
`claim 8, therefore obviousness-type double patenting is proper.
`
`2.
`
`Claims 1—30 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 8-12 of U.S. Patent No. 6,239,794.
`
`Although the conflicting claims are not identical, they are not patentably distinct from
`
`3
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`

`
`Application/Control Number: 10/704,318
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`Page 3
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`Art Unit: 2623
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`each other because they are different definitions or descriptions of the same subject
`
`matter varying in breadth. For example, note the following relationship between the
`
`instant application claims and the patented claims.
`
`a) the preamble of application claim 1 corresponds to the preamble of patented
`
`claim 8;
`
`b) the claimed “simultaneously displaying a plurality of television program listings
`
`in a first area of the screen” (lines 4-5) step of application claim 1 corresponds to the
`
`“displaying in a second area of the screen some of the program listings...’’ (line 14-15)
`
`step of patented claim 8;
`
`c) the claimed “a currently broadcast television program received by the tuner in
`
`a second, nonoverlapping area of the screen..." (lines 5-7) step of application claim 1
`
`corresponds to the “simultaneously displaying in a first area of the screen the program
`
`telecast on the particular channe|...” (lines 12-14) step of patented claim 8;
`
`d) the claimed “and a detailed program description of the currently broadcast
`
`television program...in a third nonoverlapping area of the screen" (lines 7-10) step of
`
`application claim 1 corresponds to the “and displaying in a third area of the screen a
`
`description of the program displayed in the first area” (lines 20-21) step of patented
`
`claim 8.
`
`4
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`

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`Application/Control Number: 10/704,318
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`-
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`Page 4
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`Art Unit: 2623
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`e) the preamble of application claim 16 corresponds to the preamble of patented
`
`claim 12;
`
`f) the claimed “a display having a screen...” (line 2) of application claim 16
`
`corresponds to the “a television display having a screen...” (line 1-2) of patented claim
`
`12;
`
`g) the claimed “a tuner..." (lines 5-7) of application claim 16 corresponds to the
`
`“a television tuner...” (lines 2-3) of patented claim 12;
`
`h) the claimed “means for simultaneously displaying a plurality of television
`
`program listings in a first area of the screen...” (lines 4-5) of application claim 16
`
`corresponds to the “means for displaying some of the program |istings...in a first area
`
`of the screen...” (lines 9-11) of patented claim 12.
`
`i) the claimed “a currently broadcast television program...in a second area of the
`
`screen..." (lines 5-7) of application claim 16 corresponds to the “display in a second
`
`smaller and nonoverlapping area of the screen simultaneously with the program listings
`
`the...te|evision program...” (lines 15-21) of patented claim 12.
`
`5
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`

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`Application/Control Number: 10/704,318
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`Page 5
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`Art Unit: 2623
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`j) the claimed “and a detailed program description of the currently broadcast
`
`television program at a first level of detail in a third area of the screen..." (7-9) of
`
`application claim 16 corresponds to the "means for displaying in a third area of the
`
`screen the program description at the first level of detail...” (lines 22-24) of patented
`
`claim 12.
`
`k) the claimed “means responsive to an input device for substituting a program
`
`description of the currently broadcast television program at a second level of detail...'’
`
`(lines 10-14 of application claim 16 corresponds to the “means responsive to the input
`
`device for substituting the program description at the second level of detail...” (lines 25-
`
`28) of patented claim 12.
`
`It would have been obvious to one of ordinary skill in the art to readily recognize
`
`that the conflicting claims are different definitions or descriptions of the same subject
`
`matter varying in breadth.
`
`In this case, the application claims are broader and inclusive
`
`to the patented claims.
`
`Claims 2, 10, 17 and 24-30 of the application correspond to claims 8 and 11 of
`
`the patent.
`
`Claims 3-7, 9, 11-15, 19-23 of the application correspond to claim 8 of the patent.
`
`6
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`

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`Application/Control Number: 10/704,318
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`Art Unit: 2623
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`Page 6
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`Claim 8 and 18 of the application corresponds to claim 9 of the patent.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`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 —
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351(a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21(2)
`of such treaty in the English language.
`
`4.
`
`Claims 1, 3, 4, 6-9, 11, 12, 14, 15, 21-23, 25, 26 and 28-30 are rejected under 35
`
`U.S.C. 102(e) as being anticipated by Mankovitz (US 5,559,550).
`
`Regarding claims 1, 9 and 23, Mankovitz teaches a method for displaying an
`
`electronic program guide in an interactive television system having a tuner and a screen
`
`(Fig. 1—tuner 20 and screen 22), the method comprising:
`
`simultaneously displaying a plurality of television program listings in a first area of
`
`the screen (Fig. 9-1255), a currently broadcast television program received by the
`
`tuner in a second, nonoverlapping area of the screen (Fig. 9-1252) and a detailed
`
`program description of the currently broadcast television program displayed in the
`
`second area of the screen in a third nonoverlapping area of the screen (Fig. 9—1254).
`
`Regarding claims 3, 11 and 25, Mankovitz teaches displaying a second currently
`
`broadcast television program in the second area of the screen in response to a user
`
`7
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`

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`Application/Control Number: 10/704,318
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`Page 7
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`Art Unit: 2623
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`input and switching the display in the third area to a description of the second currently
`
`broadcast television program (col. 10, lines 56-67; col. 11, lines 40-48).
`
`Regarding claims 4, 12 and 26, Mankovitz teaches selecting one of the plurality
`
`of program listings displayed in the first area of the screen and controlling the tuner to
`
`display in the second area of the screen simultaneously with the program listings the
`
`currently telecast video program corresponding to the selected program listing (col. 10,
`
`lines 56-67; col. 11, lines 40-48).
`
`Regarding claims 6, 14 and 28, Mankovitz teaches selecting one of the plurality
`
`of program listings displayed in the first area of the screen and switching the display in
`
`the third area to a description of the program corresponding to the selected program
`
`listing (col. 10, lines 56-67; col. 11, lines 40-48).
`
`Regarding claims 7, 15 and 29, Mankovitz teaches switching the display in the
`
`third area to a description of the program corresponding to the selected program listing
`
`(col. 10, lines 56-67; col. 11, lines 40-48).
`
`Regarding claims 8, 22 and 30, Mankovitz teaches:
`
`successively marking on the screen current program listings displayed in the first
`
`area (col. 10, lines -2);
`
`8
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`

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`Application/Control Number: 10/704,318
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`Page 8
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`Art Unit: 2623
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`successively retrieving from a memory (Fig. 8A—program schedule memory
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`1282) channel identifications of the marked program listings (col. 9, line 67-col. 10, line
`
`2; col. 10, line 53-col. 11, line 2);
`
`using the retrieved channel identifications to set the tuner successively to receive
`
`the current telecast programs represented by the marked‘ program listings to
`
`successively display such programs in the second area of the screen as program
`
`listings are marked in the first area (col. 9, line 67-col. 10, line 2; col. 10, line 53-col. 11,
`
`line 2).
`
`Regarding claim 21, Mankovitz teaches a method for displaying an electronic
`
`program guide in an interactive television system having a tuner and a screen (Fig. 1—
`
`tuner 20 and screen 22), the method comprising:
`
`displaying in a first area of the screen a plurality of program listings (Fig. 9—
`
`1255);
`
`simultaneously displaying in a second area of the screen substantially all of a
`
`currently broadcast television program (Fig. 9-1252);
`
`simultaneously displaying in a third area of the screen a detailed program
`
`description of the current television program displayed in the second area of the screen
`
`(Fig. 9-1254); and
`
`switching the current television program displayed in the second area of the
`
`screen and the corresponding detailed program description displayed in the third area in
`
`response to a user input (col. 10, lines 56-67; col. 11, lines 40-48).
`
`9
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`

`
`Application/Control Number: 10/704,318
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`Page 9
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`Art Unit: 2623
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`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of 35 U.S.C. 103(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 102 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.
`
`6.
`
`Claims 1, 4, 5, 9, 12, 13, 23, 26 and 27 are rejected under 35 U.S.C. 103(a) as
`
`being unpatentable over Alten et al. (US 5,635,978) in view of Florin et al. (US
`
`5,583,560).
`
`Regarding claims 1, 9 and 23, Alten et al. (“Alten") teaches an interactive
`
`entertainment system, and corresponding method, comprising:
`
`a display having a screen (Fig. 12—“Te|evision”);
`
`a tuner coupled to the display (Fig. 12—“Tuner and Demodu|ator” 245); and
`
`means for simultaneously displaying a plurality of television program listings in a
`
`first area of the screen (Figs. 7a,7b,7c—Prog 1, Prog 2, etc.), a video in a second
`
`nonoverlapping area of the screen of the screen (Figs. 7a,7b,7c—Video Promo
`
`Window) and a detailed program description of the video displayed in the second area
`
`of the screen in a third nonoverlapping area of the screen (Figs. 7a,7b,7c—Promo Text
`
`Window).
`
`Alten, however, fails to clearly teach displaying a currently broadcast television
`
`program received by the tuner in an area of the screen.
`
`10
`
`10
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`

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`Application/Control Number: 10/704,318
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`Page 10
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`Art Unit: 2623
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`In analogous art, Florin et al. (“Florin”) teaches displaying a currently broadcast
`
`television program received by the tuner (Fig. 2-67) in an area of the screen (col. 15,
`
`lines 29-34—a picture-in—picture window continues to display the currently viewed
`
`program).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to modify Alten by displaying a currently broadcast
`
`television program received by the tuner, as taught by Florin, in order to allow the user
`
`to watch the program the user was watching before entering the list as the user is
`
`browsing (Florin: col. 15, lines 29-34).
`
`Regarding claims 4, 12 and 26, Alten and Florin selecting one of the plurality of
`
`program listings displayed in the first area of the screen and controlling the tuner to
`
`display in the second area of the screen simultaneously with the program listings the
`
`currently telecast video program corresponding to the selected program listing (Florin:
`col. 15, lines 46—49—current|y selected program being displayed in the picture-in-picture
`
`window is highlighted in the listings).
`
`Regarding claims 5, 13 and 27, Alten teaches means for selecting one of the
`
`plurality of program listings displayed in the first area of the screen without changing the
`
`currently broadcast television program displayed in the second area of the screen (col.
`
`9, lines 59-63; col. 15, lines 9-12—as user manually scrolls through the program guide,
`
`the promotional video will remain unchanged).
`
`1‘!
`
`11
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`

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`Application/Control Number: 10/704,318
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`Page 11
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`Art Unit: 2623
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`7.
`
`Claims 3, 6, 11, 14, 21, 25 and 28 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Alten in view Florin as applied to claims 1, 9 and 23 above, and
`
`further in view of Marshall et al. (US 5,523,796).
`
`Regarding claims 3, 11 and 25, Alten and Florin fail to clearly teach means for
`
`displaying a second currently broadcast television program in the second area of the
`
`screen in response to a user input and switching the display in the third area to a
`
`description of the second currently broadcast television program.
`
`In analogous art, Marshall et al. (“Marshall”) teaches means for displaying a
`
`second currently broadcast television program in the second area of the screen in
`
`response to a user input and switching the display in the third area to a description of
`
`the second currently broadcast television program (Fig. 8; col. 3, lines 45-50—user
`
`selects a different program from the grid and a video clip and related information about
`
`the program are displayed).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was made to modify Alten and Florin by displaying a second currently
`
`broadcast television program in the second area of the screen in response to a user
`
`input and switching the display in the third area to a description of the second currently
`
`broadcast television program, as taught by Marshall, in order to provide the user control
`
`over which video clips and related information about the program the user wishes to
`
`view at the convenience of the user (Marshall: col. 1, lines 12-61).
`
`12
`
`12
`
`

`
`Application/Control Number: 10/704,318
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`Page 12
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`Art Unit: 2623
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`Regarding claims 6, 14 and 28, Alten, Florin and Marshall teach selecting one of
`
`the plurality of program listings displayed in the first area of the screen and switching
`
`the display in the third area to a description of the program corresponding to the
`
`selected program listing (Marshall: col. 3, lines 45-50—user selects a different program
`
`from the grid and related information about the program is displayed).
`
`Regarding claim 21, Alten, Florin and Marshall teach a method for displaying an
`
`electronic program guide in an interactive television system having a tuner and a
`
`screen, the method comprising: displaying in a first area of the screen a plurality of
`
`program listings; simultaneously displaying in a second area of the screen substantially
`
`all of a currently broadcast television program; simultaneously displaying in a third area
`
`of the screen a detailed program description of the current television program displayed
`
`in the second area of the screen; and switching the current television program displayed
`
`in the second area of the screen and the corresponding detailed program description
`
`displayed in the third area in response to a user input (See the rejection of claims 1 and
`
`3 above).
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Shelton Austin whose telephone number is (571) 272-
`
`9385. The examiner can normally be reached on Monday through Thursday from 8:00-
`
`5:30. The examiner can also be reached on Fridays from 9:00-4:00.
`
`13
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`13
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`Application/Control Number: 10/704,318
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`Page 13
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`Art Unit: 2623
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Chris Grant, whose telephone number is (571) 272-7294, can be reached
`
`on Monday through Friday from 7:30-5:00. The supervisor can also be reached on
`
`alternate Fridays from 9:00-4:00. The fax phone number for the organization where this
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free).
`
`Shelton Austin
`
`9/13/2007
`
` Cl-lRlSTOPHER GRANT
`
`SUPERVISORY PATENT EXAMINER
`TECHNOLOGY CENTER 2600
`
`14
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`14