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/061 CON 2
`
`CONF NATION N0
`3367
`
`09/17/2009
`
`75563
`7590
`ROPES &GRAY LLP
`PATENT DOCKETING 39/361
`1211 AVENUE OF THE AMERICAS
`NEW YORK, NY 10036-8704
`
`:
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`SAINT cm IEAN D
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`2425
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`MAIL DATE
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`09/ 1 7/2009
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`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—1019
`
`1
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`Comcast, Exhibit-1019
`
`

`
`Office Action Summary
`
`Application No.
`
`10/704,318
`
`Examine,
`
`JEAN D. SAINT CYR
`
`App|icant(s)
`
`YUEN ET AL.
`
`A,, Unit
`
`2425 -
`
`-- 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 04 June 2009.
`
`2a)I:I This action is FINAL.
`
`2b)IXI 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
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`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)IZ C|aim(s) 1 3-9 11-20 22 23 and 25-30 is/are pending in the application.
`
`4a) Of the above c|aim(s)
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`is/are withdrawn from consideration.
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`5)I:I C|aim(s) j is/are allowed.
`
`6)IXI C|aim(s) 1 3-9 11 -20 22 23 and 25-30 is/are rejected.
`
`7)I:I C|aim(s) j is/are objected to.
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`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
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`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
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`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
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attach ment(s)
`
`1) E 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
`.
`U.S. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper N0(S)/IVI3” Data E
`5) I:I Noiice Oi informal Paieiii Appiicaiion
`6) D Other:
`.
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
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`Part of Paper No./Mail Date 20090909
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`2
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`2
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`

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`Application/Control Number: 10/704,318
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`Page 2
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`Art Unit: 2425
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`DETAILED ACTION
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`Response to Amendment
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`This action is in response to applicant amendment filed on 06/04/2009. Claims 1, 3-9,
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`11-20, 22-23, 25-30 are still pending in the current application. This action is made
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`NON-FINAL.
`
`Response to Arguments
`
`Applicant's arguments with respect to claims 1, 3-9, 11-20, 22-23, 25-30 have been
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`considered but are moot in view of the new ground(s) of rejection.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`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
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`negatived by the manner in which the invention was made.
`
`Claims 1,3, 5-6, 9,11, 13-14, 16-17, 20, 23, 25, 27-28 are rejected under 35 U.S.C.
`
`103(a) as being unpatentable over Rauch et al in view of Marshall et al, US
`
`No.5710601.
`
`Re claim 1, Rauch et al disclose a method for displaying an electronic program guide
`
`in an interactive television system having a tuner and a screen(see fig.1, element 115,
`
`tuner; see fig.1, element 130, television )the method comprising:
`
`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,
`
`nonoverlapping area of the screen and a detailed program description of the currently
`
`broadcast television program displayed in the second area of the screen in a third
`
`3
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`

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`Application/Control Number: 10/704,318
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`Page 3
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`Art Unit: 2425
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`nonoverlapping area of the screen(see fig.2; The text display window 230 displays,
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`concurrently with the schedule layout 200, a text string which describes the
`
`currently selected program from the grid 210,col.7, lines 30-33); and
`
`But did not explicitly disclose 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.
`
`However, Marshall et al disclose 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(see fig.8; The
`
`viewer then presses a predetermined key on the remote 35, such as the highlight
`
`button, to cause the written description and video clip related to the selected
`
`program to be displayed on the video screen 33,col.3, lines 41-43).
`
`It would have been obvious for any person of ordinary skill in the art at that time the
`
`invention was made to modify the system of Rauch in introducing displaying program
`
`description of the highlighted program without changing the main video, as taught by
`
`Marshall, for the purpose of allowing users to keep enjoying their current show
`
`whenever they move from one program to another one in the list of the programs.
`
`Re claim 3, Rauch et al did not explicitly disclose further comprising 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.
`
`However, Marshall et al disclose 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
`
`4
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`

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`Application/Control Number: 10/704,318
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`Page 4
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`Art Unit: 2425
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`the grid and a video clip and related information about the program are
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`displayed).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention
`
`was made to modify Rauch in introducing 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.
`
`Re claim 5, Rauch et al disclose further comprising receiving a selection of 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(see
`
`fig.2; The schedule layout 200 includes a time scroll bar 224 which the user
`
`scrolls to select time entries 215 that are different than the time entries currently
`
`displayed on the time axis 214 of the grid 210,col.7, lines 1-4).
`
`Re claim 6, Rauch et al did not explicitly disclose further comprising receiving a
`
`selection of 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.
`
`However, Marshall et al disclose further comprising receiving a
`
`selection of 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(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).
`
`5
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`Application/Control Number: 10/704,318
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`Page 5
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`Art Unit: 2425
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`It would have been obvious to one of ordinary skill in the art at the time the invention
`
`was made to modify Rauch in introducing 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.
`
`Re claims 9, is met as previously discussed with respect to claim 1.
`
`Re claim 11, is met as previously discussed with respect to claim 3.
`
`Re claim 13, is met as previously discussed with respect to claim 5.
`
`Re claim 14, is met as previously discussed with respect to claim 6.
`
`Re claim 16, Rauch et al disclose a entertainment system comprising: a tuner coupled
`
`to a display, wherein the display includes a screen(see fig.1, element 115, tuner; see
`
`fig.1, element 130, television);
`
`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(see
`
`fig.2; The text display window 230 displays, concurrently with the schedule layout
`
`200, a text string which describes the currently selected program from the grid
`
`210,col.7, lines 30-33); and
`
`But did not explicitly disclose 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.
`
`6
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`Application/Control Number: 10/704,318
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`Page 6
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`Art Unit: 2425
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`However, Marshall et al disclose responsive to an input device for substituting a
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`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(see fig.8; The viewer then presses
`
`a predetermined key on the remote 35, such as the highlight button, to cause the
`
`written description and video clip related to the selected program to be displayed
`
`on the video screen 33,co|.3, lines 41-43).
`
`It would have been obvious for any person of ordinary skill in the art at that time the
`
`invention was made to modify the system of Rauch in introducing displaying program
`
`description of the highlighted program without changing the main video, as taught by
`
`Marshall, for the purpose of allowing users to keep enjoying their current show
`
`whenever they move from one program to another one in the list of the programs.
`
`Re claim 17, is met as previously discussed with respect to claim 1.
`
`Re claim 20, is met as previously discussed with respect to claim 6.
`
`Re claim 23, is met as previously discussed with respect to claim 1.
`
`Re claim 25, is met as previously discussed with respect to claim 3.
`
`Re claim 27, is met as previously discussed with respect to claim 5.
`
`Re claim 28, is met as previously discussed with respect to claim 6.
`
`Claims 4, 7,12,15, 18,19, 22, 26,29 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Rauch et al in view of Marshall further in view of Florin et al, US
`
`No.5583560.
`
`Re claim 4, Rauch et al did not explicitly disclose further comprising receiving a
`
`selection of 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.
`
`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: 2425
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`However, Florin et al disclose further comprising receiving a selection of one of the
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`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(currently selected program being displayed in the picture-in-picture
`
`window is highlighted in the listings, col. 15, lines 46-49).
`
`It would have been obvious for any person of ordinary in the art at that time the
`
`invention was made to modify the invention of Rauch in view of Marshall in introducing
`
`picture in picture window, as taught by Florin, for the purpose of allowing the system to
`
`display the selected program from the program listing concurrently with the program
`
`listing.
`
`Re claim 7, Rauch et al disclose a method for displaying an electronic program guide
`
`in an interactive television system having a tuner and a screen(see fig.1, element 115,
`
`tuner; see fig.1, element 130, television), the method comprising
`
`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,
`
`nonoverlapping area of the screen 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(see fig.2; The text display window 230 displays,
`
`concurrently with the schedule layout 200, a text string which describes the
`
`currently selected program from the grid 210,col.7, lines 30-33).
`
`But did not explicitly disclose receiving a selection of 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; and
`
`8
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`

`
`Application/Control Number: 10/704,318
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`Page 8
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`Art Unit: 2425
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`switching the display in the third area to a description of the program corresponding to
`
`the selected program listing.
`
`However, Marshall et al disclose switching the display in the third area to a description
`
`of the program corresponding to the selected program listing(see fig.8; The viewer
`
`then presses a predetermined key on the remote 35, such as the highlight button,
`
`to cause the written description and video clip related to the selected program to
`
`be displayed on the video screen 33,col.3, lines 41-43).
`
`It would have been obvious for any person of ordinary skill in the art at that time the
`
`invention was made to modify the system of Rauch in introducing displaying program
`
`description of the highlighted program without changing the main video, as taught by
`
`Marshall, for the purpose of allowing users to keep enjoying their current show
`
`whenever they move from one program to another one in the list of the programs.
`
`And Florin et al disclose receiving a selection of 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(currently selected program
`
`being displayed in the picture-in-picture window is highlighted in the listings, col.
`
`15, lines 46-49).
`
`It would have been obvious for any person of ordinary in the art at that time the
`
`invention was made to modify the invention of Rauch in view of Marshall in introducing
`
`picture in picture window, as taught by Florin, for the purpose of allowing the system to
`
`display the selected program from the program listing concurrently with the program
`
`listing.
`
`Re claim 12, is met as previously discussed with respect to claim 4.
`
`9
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`

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`Application/Control Number: 10/704,318
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`Page 9
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`Art Unit: 2425
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`Re claim 15, is met as previously discussed with respect to claim 7.
`
`Re claim 18, Rauch et al disclose further comprising: successively marking on the
`
`screen current program listings displayed in the first area(see fig.2; The schedule
`
`layout 200 includes a time scroll bar 224 which the user scrolls to select time
`
`entries 215 that are different than the time entries currently displayed on the time
`
`axis 214 of the grid 210,col.7, lines 1-4); and
`
`But did not explicitly disclose successively displaying the current telecast program
`
`represented by the marked program listings in the second area of the screen as
`
`program listings are marked in the first area.
`
`However, Florin et al disclose successively displaying the current telecast program
`
`represented by the marked program listings in the second area of the screen as
`
`program listings are marked in the first area(current|y selected program being
`
`displayed in the picture-in-picture window is highlighted in the listings, col. 15,
`
`lines 46-49).
`
`It would have been obvious for any person of ordinary in the art at that time the
`
`invention was made to modify the invention of Rauch in view of Marshall in introducing
`
`picture in picture window, as taught by Florin, for the purpose of allowing the system to
`
`display the selected program from the program listing concurrently with the program
`
`listing.
`
`Re claim 19, Rauch et al disclose further comprising responsive to a user command,
`
`maintaining the current telecast program displayed in the second area as program
`
`listings are successively marked in the first area(see fig.2; The schedule layout 200
`
`includes a time scroll bar 224 which the user scrolls to select time entries 215
`
`that are different than the time entries currently displayed on the time axis 214 of
`
`the grid 210,col.7, lines 1-4)
`
`10
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`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: 2425
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`Re claim 22, is met as previously discussed with respect to claim 7.
`
`Re claim 26, is met as previously discussed with respect to claim 4.
`
`Re claim 29, Rauch et al disclose a method for displaying an electronic program guide
`
`in an interactive television system having a tuner and a screen(see fig.1, element 115,
`
`tuner; see fig.1, element 130, television), the method comprising:
`
`simultaneously displaying a plurality of television program listings in a first area of the
`
`screen, substantially all of 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 displayed in the second area of the screen in a third area
`
`of the screen(see fig.2; The text display window 230 displays, concurrently with
`
`the schedule layout 200, a text string which describes the currently selected
`
`program from the grid 210,col.7, lines 30-33).
`
`But did not explicitly disclose receiving a selection of 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; and
`
`switching the display in the third area to a description of the program corresponding to
`
`the selected program listing.
`
`However, Marshall et al disclose switching the display in the third area to a description
`
`of the program corresponding to the selected program listing(see fig.8; The viewer
`
`then presses a predetermined key on the remote 35, such as the highlight button,
`
`to cause the written description and video clip related to the selected program to
`
`be displayed on the video screen 33,col.3, lines 41-43).
`
`11
`
`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: 2425
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`It would have been obvious for any person of ordinary skill in the art at that time the
`
`invention was made to modify the system of Rauch in introducing displaying program
`
`description of the highlighted program without changing the main video, as taught by
`
`Marshall, for the purpose of allowing users to keep enjoying their current show
`
`whenever they move from one program to another one in the list of the programs.
`
`And Florin et al disclose receiving a selection of 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(currently selected program
`
`being displayed in the picture-in-picture window is highlighted in the listings, col.
`
`15, lines 46-49).
`
`It would have been obvious for any person of ordinary in the art at that time the
`
`invention was made to modify the invention of Rauch in view of Marshall in introducing
`
`picture in picture window, as taught by Florin, for the purpose of allowing the system to
`
`display the selected program from the program listing concurrently with the program
`
`listing.
`
`Claims 8, 30 are rejected under 35 U.S.C. 103(a) as being unpatentable over Rauch et
`
`al
`
`in view of Florin et al, US No.5583560.
`
`Re claim 8, Rauch et al disclose a method for displaying an electronic program guide
`
`in an interactive television system having a tuner and a screen(see fig.1, element 115,
`
`tuner; see fig.1, element 130, television), the method comprising:
`
`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,
`
`nonoverlapping area of the screen and a detailed program description of the currently
`
`broadcast television program displayed in the second area of the screen in a third
`
`12
`
`12
`
`

`
`Application/Control Number: 10/704,318
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`Page 12
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`Art Unit: 2425
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`nonoverlapping area of the screen(see fig.2; The text display window 230 displays,
`
`concurrently with the schedule layout 200, a text string which describes the
`
`currently selected program from the grid 210,col.7, lines 30-33);
`
`successively marking on the screen current program listings displayed in the first
`
`area(see fig.2; The schedule layout 200 includes a time scroll bar 224 which the
`
`user scrolls to select time entries 215 that are different than the time entries
`
`currently displayed on the time axis 214 of the grid 210,col.7, lines 1-4);
`
`successively retrieving from a memory channel identifications of the marked program
`
`listings(The selection program 152 also stores a channel indicator in the program
`
`table 300 in the memory 150,col.8, lines 57-58) and
`
`But did not explicitly disclose 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.
`
`However, Florin et al disclose 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(currently selected program being
`
`displayed in the picture-in-picture window is highlighted in the listings, col. 15,
`
`lines 46-49).
`
`It would have been obvious for any person of ordinary in the art at that time the
`
`invention was made to modify the invention of Rauch in introducing picture in picture
`
`window, as taught by Florin, for the purpose of allowing the system to display the
`
`selected program from the program listing concurrently with the program listing.
`
`13
`
`13
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`

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`Application/Control Number: 10/704,318
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`Page 13
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`Art Unit: 2425
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`Re claim 30, is met as previously discussed with respect to claim 8.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Jean Duclos Saintcyr whose phone number is 571-270-
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`3224. The examiner can normally reach on M—F 7:30-5:00 PM EST.|f attempts to reach
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`the examiner by telephone are not successful, his supervisor, Brian Pendleton, can be
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`reach on 571-272-7527. The fax number for the organization where the application or
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`proceeding is assigned is 571-273-8300. Information regarding the status of an
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`application may be obtained from the Patent Application Retrieval (PAIR) system.
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`Status information for published applications may be obtained from either private PAIR
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`or Public PAIR. Status information for unpublished applications is available through
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`Private PAIR only. For more information about the PAIR system, see htpp://pair-
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`direct.uspto.gov. Should you have questions on access to the private PAIR system,
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`contact the Electronic Business Center (EBC) at 866-217-9197(toll free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the
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`automated information system, dial 800-786-9199(lN USA OR CANADA) or 571-272-
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`1000.
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`/Jean Duclos Saintcyr/
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`/Brian T. Pendleton/
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`Supervisory Patent Examiner, Art Unit 2425
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