UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.goV
`
`10/704,318
`
`11/07/2003
`
`Henry C. Yuen
`
`GS-61 Cont 2
`
`CONF NATION N0
`3367
`
`09/22/2008
`
`75563
`7590
`ROPES &GRAY LLP
`PATENT DOCKETING 39/361
`1211 AVENUE OF THE AMERICAS
`NEW YORK, NY 10036-8704
`
`:
`
`SAINT cm IEAN D
`
`2623
`
`MAIL DATE
`
`09/22/2008
`
`PAPER NUMBER
`
`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)
`
`1
`
`Comcast, Exhibit—1015
`
`1
`
`Comcast, Exhibit-1015
`
`

`
`Office Action Summary
`
`Application No.
`
`10/704,318
`
`Examine,
`
`SHELTON AUSTIN
`
`App|icant(s)
`
`YUEN ET AL.
`
`A,, 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 Q 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 CFR 1.704(b).
`
`Status
`
`1)IXI Responsive to communication(s) filed on 25 February 2008.
`
`2a)IXI This action is FINAL.
`
`2b)I:I This action is non-final.
`
`3)I:I 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)IXI C|aim(s) i) is/are pending in the application.
`
`4a) Of the above c|aim(s)
`
`is/are withdrawn from consideration.
`
`5)IXI C|aim(s)i is/are allowed.
`
`6)IXI C|aim(s) 1 3-6 9 11-14 21 23 and 25-28 is/are rejected.
`
`7)IXI C|aim(s) 2 7 8 10 15 22 24 29 and 30 is/are objected to.
`
`8)I:I C|aim(s) j are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`
`10)I:I The drawing(s) filed on
`
`is/are: a)I:I accepted or b)I: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)I:I 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)I: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:I Some * c)I:I None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No.
`
`3.I:I 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(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attach ment(s)
`
`1) D Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) IXI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date 09/02/2008' 08/20/2008' 03/06/2008.
`U.S. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper N0(S)/M3” Data E
`5) I:I Noiioo of informal Paioiii Aloloiioaiioii
`6) |:| Other:
`.
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20080505
`
`2
`
`2
`
`

`
`Continuation Sheet (PTOL-326)
`
`Application No.
`
`3
`
`

`
`Application/Control Number: 10/704,318
`
`Page 2
`
`Art Unit: 2623
`
`DETAILED ACTION
`
`Terminal Disclaimer
`
`1.
`
`The terminal disclaimer filed on 02/25/2008 disclaiming the terminal portion of
`
`any patent granted on this application which would extend beyond the expiration date of
`
`US Patent No. 6,239,794 has been reviewed and is accepted. The terminal disclaimer
`
`has been recorded.
`
`Response to Arguments
`
`2.
`
`Applicant’s arguments, see pages 12 and 13, filed 02/25/2008, with respect to
`
`claims 1, 3, 4, 6-9, 11, 12, 14, 15, 21-23, 25, 26 and 28-30 rejected under 35
`
`U.S.C. 102(e) as being anticipated by Mankovitz have been fully considered and are
`
`persuasive. The rejection has been withdrawn.
`
`3.
`
`Applicant's arguments, see pages 13-16, filed 02/25/2008, with respect to claims
`
`1, 4-5, 9, 12-13, 23 and 26-27 rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Alten et al. in view of Florin et al. and with respect to claims 3, 6, 11, 14, 21, 25 and
`
`28 rejected under 35 U.S.C. 103(a) as being unpatentable over Alten et al. in view of
`
`Florin et al. and further in view of Marshall have been fully considered but they are not
`
`persuasive.
`
`Applicant argues (pages 14) that “one of ordinary skill in the art would not be
`
`motivated to make this alleged combination”, the alleged combination being the Alten
`
`and Florin references used against claims 1, 9 and 23, and that “one of ordinary skill
`
`4
`
`

`
`Application/Control Number: 10/704,318
`
`Page 3
`
`Art Unit: 2623
`
`would not make the proposed combination because it (a) flies in the face of the express
`
`teachings of Alten, and (b) would frustrate one of the basic purpose of the hybrid guide
`
`— to provide video promotions” (pages 15 and 16). Applicant states that one of ordinary
`
`skill would not make the proposed combination because the two embodiments of the
`
`Alten reference, the first being a passive guide and the second being a hybrid
`
`interactive/passive guide, would be violated. The combination could not work,
`
`according to applicant, for the passive guide because "the tuner cannot also be used to
`
`provide a simultaneous display of a currently—broadcast television program without
`
`obliterating the guide". The combination could not work, according to applicant, for the
`
`hybrid interactive/passive guide because “the promotional videos are to be retained”.
`
`The examiner respectfully disagrees with applicant’s arguments.
`
`Applicant should note that the Florin reference teaches using multiple tuners to
`
`provide picture—in—picture (pip) windows (Figs. 7a, 7b and 7c; col. 8, line 61—col. 9, line 3;
`
`col. 15, lines 29-34). These pip windows can be used in a guide setting in order to
`
`display a currently viewed program while viewing a program guide.
`
`In regards to the
`
`passive guide, applicant argues that "the tuner cannot also be used to provide a
`
`simultaneous display of a currently—broadcast television program without obliterating the
`
`guide", however, the tuner providing the program guide channel in the Alten reference
`
`would not be utilized to provide the currently viewed program since it is possible to have
`
`multiple tuners. Thus, a separate tuner would be used to display the currently viewed
`
`program.
`
`5
`
`

`
`Application/Control Number: 10/704,318
`
`Page 4
`
`Art Unit: 2623
`
`In regards to the hybrid interactive/passive guide, there is no reason that the
`
`"basic purpose of the hybrid guide” of the Alten reference would be frustrated by
`
`incorporating multiple tuners in order to display a currently viewed program along with
`
`the program guide and its promotional videos. The system could use one tuner for the
`
`program guide with promotional videos, and could use a separate tuner in order to
`
`display the currently viewed program.
`
`Accordingly, the rejections of claims 1, 3-6, 9, 11-14, 21, 23 and 25-28 are
`
`maintained.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`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.
`
`5.
`
`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—“Television”);
`
`a tuner coupled to the display (Fig. 12—“Tuner and Demodulator” 245); and
`
`6
`
`

`
`Application/Control Number: 10/704,318
`
`Page 5
`
`Art Unit: 2623
`
`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.
`
`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:
`
`7
`
`

`
`Application/Control Number: 10/704,318
`
`Page 6
`
`Art Unit: 2623
`
`col. 15, lines 46—49—currently 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).
`
`6.
`
`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).
`
`8
`
`

`
`Application/Control Number: 10/704,318
`
`Page 7
`
`Art Unit: 2623
`
`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).
`
`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
`
`9
`
`

`
`Application/Control Number: 10/704,318
`
`Page 8
`
`Art Unit: 2623
`
`displayed in the third area in response to a user input (See the rejection of claims 1 and
`
`3 above).
`
`7.
`
`Claims 16-20 are allowed.
`
`Allowable Subject Matter
`
`Regarding claim 16, the prior art of record fails to teach or reasonably suggest
`
`the combination of an entertainment system comprising: a display having a screen; a
`
`tuner; means for simultaneously displaying a plurality of television program listings in a
`
`first area of the screen, a currently broadcast television program received by the tuner in
`
`a second area of the screen and a detailed program description of the currently
`
`broadcast television program at a first level of detail in a third area of the screen, and
`
`means responsive to an input device for substituting a program description of the
`
`currently broadcast television program at a second level of detail for the detailed
`
`program description of the currently broadcast television program at a first level of detail
`
`in a third area of the screen as recited in the claims.
`
`Regarding claims 17-20, the prior art of record fails to teach or reasonably
`
`suggest the combination of 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
`
`10
`
`10
`
`

`
`Application/Control Number: 10/704,318
`
`Page 9
`
`Art Unit: 2623
`
`program description of the current television program displayed in the second area of
`
`the screen; and switching the detailed program description displayed in the third area of
`
`the screen in response to a user input without changing the current television program
`
`displayed in the second area of the screen as recited in the claims.
`
`8.
`
`Claims 2, 7, 8, 10, 15, 22, 24, 29 and 30 are objected to as being dependent
`
`upon a rejected base claim, but would be allowable if rewritten in independent form
`
`including all of the limitations of the base claim and any intervening claims.
`
`Regarding claims 2, 10 and 24, the prior art of record fails to teach or reasonably
`
`suggest the combination of a method for displaying an electronic program guide in an
`
`interactive television system, and an interactive entertainment system, with switching
`
`the detailed program description displayed in the third area of the screen in response to
`
`a user input without changing the currently broadcast television program displayed in
`
`the second area of the screen as recited in the claims.
`
`Regarding claims 8 and 30, the prior art of record fails to teach or reasonably
`
`suggest the combination of a method with successively marking on the screen current
`
`program listings displayed in the first area; successively retrieving from a memory
`
`channel identifications of the marked program listings; 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
`
`11
`
`11
`
`

`
`Application/Control Number: 10/704,318
`
`Page 10
`
`Art Unit: 2623
`
`the second area of the screen as program listings are marked in the first area as recited
`
`in the claims.
`
`Regarding claims 7, 15 and 29, the prior art of record fails to teach or reasonably
`
`suggest the combination of an interactive entertainment system, and a method for
`
`displaying an electronic program guide in an interactive television system, with means
`
`for switching the display in the third area to a description of the program corresponding
`
`to the selected program listing as recited in the claims.
`
`Regarding claim 22, the prior art of record fails to teach or reasonably suggest
`
`the combination of a method for displaying an electronic program guide in an interactive
`
`television system with the 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 comprises successively marking
`
`on the screen current program listings displayed in the first area; and successively
`
`displaying the current telecast program represented by the marked program listings in
`
`the second area of the screen and the corresponding detailed program description in
`
`the third area as program listings are marked in the first area as recited in the claims.
`
`Conclusion
`
`9.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`12
`
`12
`
`

`
`Application/Control Number: 10/704,318
`
`Page 11
`
`Art Unit: 2623
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE—MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`10.
`
`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.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`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.
`
`13
`
`13
`
`

`
`Application/Control Number: 10/704,318
`
`Page 12
`
`Art Unit: 2623
`
`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 (to||—free).
`
`SWA
`
`05/08/2008
`
`/Shelton Austin/
`
`Examiner, Art Unit 2623
`
`/Christopher Grantl
`
`Supervisory Patent Examiner, Art Unit 2623
`
`14
`
`14