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`US Patent
`ti to respond to
`*
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`Apprc-ved for
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`-
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`.
`
`I
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`'
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`PTO:’SB:’33;'._0‘—09>
`ti-rough C-2/28/2009. OMB Oi:-:1-4031
`' ti 9 DEPAR‘-’i\/lEi\iT OF COi\ili\ilFRCE
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`ei un ’ er.
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`Dec-ket NLilTibei‘ (fdptienei)
`
`GS./O5’i CON 2
`
`
`ted with the
`being depci
`i hereby
`.
`res_r;-endence
`United States Postal Service with suiiieient postage as first ciass mail
`in an enveiope addressed to “i\«iail Step AF. Commissioner for
`Patents, i-".0. 80>; 1450, Aiexeridria, VA 22313-1450” rs? CFR 18(3)}
`
`Appiicatican i\i-urnber
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`Filed
`
`/7'3
`2 73' ' M5318
`
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`-
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`Noieime’ 7» 2333
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`on_ Firssttxiaanied invenier
`
`Signame
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`Typed or printed
`nanie
`
`i-ienry L. ‘r Lien
`
`Examiner
`
`Jeeh D. Seint—Cyr
`
`Appiieeht requests review {it the firei rejection in the ab0ve—identitied eppiicetion. Ne amendments are being flied
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`i am the
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`._
`I
`{:3 ap_r,=iicant/inveritei‘.
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`/i3risiine Johennessenf
`
`Signature
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`assignee of record of the entire interest.
`See 37 CFR 3.71. Statement under 37 CPR 3.73(b) is enclosed.
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`pristine Jeharmesgen
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`Typed or printed name
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`Registration nurnber
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`312-595-9093
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`Teiepiicme nurnber
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`untier 37 CFR 1.34
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`[}eC9mb3,- 22, gm 9
`
`Date
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`NOTE: Signatures of all the inventors er essignees or’ record of the entire interest or their representative(s) are required.
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`inatioii is req '
`d by 35 US.-C2. 132. The interrnetieri is required to obtain or retain a benefit by the public which is to file (and by the USPTO
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`Comcast, Exhibit-1022
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`Privacy Act Statement
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`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
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`2
`
`

`
`(PATENT)
`GS-61 CONT 2
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of: Yuen et al.
`
`Application No.: 10/704,318
`
`Confirmation No.2 3367
`
`Filed: November 7, 2003
`
`Art Unit: 2425
`
`For: METHOD AND APPARATUS FOR
`DISPLAYING TELEVISION PROGRAMS
`
`Examiner: J. D. Saint-Cyr
`
`AND RELATED TEXT
`
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`PRE-APPEAL-BRIEF REQUEST FOR REVIEW
`
`In response to the Final Office Action pending in the above referenced application,
`
`Applicant requests a panel review of the pending rejections prior to proceeding with the full
`
`appeals process. This Request is being filed with (i) a petition and fee for a three (3) month
`
`extension of time under 37 C.F.R. § 1.136(a) and 37 C.F.R. § 1.17(a)(3), and (ii) a timely-filed
`
`Notice of Appeal.
`
`The application includes 26 claims (claims 1, 3-9, 11-20, 22-23, and 25-30), eleven of
`
`which (claims 1, 7, 8, 9, 15, 16, 17, 22, 23, 29, 30) are independent. Claims 1, 3, 5-6, 9, 11, 13-
`
`14, 16-17, 20, 23, 25, and 27-28 were rejected under 35 U.S.C. § 103(a) as unpatentable over
`
`U.S. Patent No. 5,731,844 ("Rauch") in view of U.S. Patent No. 5,710,601 ("Marshall"). Claims
`
`4, 7, 12, 15, 18, 19, 22, 26 and 29 were rejected under 35 U.S.C. § 103(a) as being unpatentable
`
`over Rauch in view of Marshall and U.S. Patent No. 5,583,560 ("Florin"). Applicants
`
`258l6820_2
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`3
`
`

`
`respectfiilly disagree with the Rejections of independent claims 1, 7, 8, 9, 15, 16, 17, 22, 23, 29,
`
`30 under § 103(a) in the Final Office Action, as being based on a clear error of fact.
`
`Applicants’ invention relates to three part guide that includes program listings, a
`
`currently broadcast television program, and a detailed program description. Independent claims
`
`1 and 9 recite, respectively, a method and system for displaying simultaneously: (1) a plurality of
`
`television program listings in a first area of the screen, (2) a currently broadcast television
`
`program in a second nonoverlapping area of the screen, and (3) a detailed program description of
`
`the currently broadcast television program displayed in the second area of the screen in a third
`
`nonoverlapping area. The detailed program description displayed in the third area of the screen
`
`may be switched in response to a user input without changing the currently broadcast television
`
`program in the second area of the screen. An example of applicants’ display is shown in Fig. 2
`
`of the Application (see below) which illustrates a display including a program listings display
`
`area 46, a video display area 42, and an information display area 44
`
`DERECHO DE NACER
`
`PBS
`CBS
`NBC
`ABS
`
`KCAL
`KCOP
`KSCI
`KWHY
`
`28
`2
`4
`7
`
`9
`13
`13
`22
`
`'9£@.19'
`
`NIGHTLY BUSINESS NEWS
`CBS EVENING NEWS
`NEWS AT 6
`EYEWITNESS NEWS AT 6
`
`FOX NEWS AT 10
`COSBY SHOW
`NEWS
`
`Fig. 2 of the 10/704,318 Application
`
`40
`
`253l6320_2
`
`4
`
`

`
`Fig. 2 readily illustrates the advantageous effect of simultaneously displaying
`
`program listings, program video, and program information which enables a user to efficiently
`
`review available programs and their associated information, while continuing to watch a desired
`
`program video.
`
`Rauch and Marshall do not disclose or suggest Simultaneously Displaying a Plurality of
`
`Program Listings, a Currently Broadcast Program, and a Detailed Program Description,
`
`and Switching the Detailed Program Description Without Changing the Currently
`
`Broadcast Program
`
`The Final Office Action asserts that Rausch discloses a three part guide. (Final
`
`Office Action, page 3-4, citing Rausch, FIG. 2, col. 7, lines 30-33.) However, the Examiner
`
`acknowledges that Rausch does not disclose switching the detailed program description
`
`displayed in the third area of the screen without changing the currently broadcast television
`
`program displayed in the second area of the screen. (Final Office Action, page 4.) The
`
`Examiner attempts to fill the deficiency with Marshall which discloses displaying additional
`
`program information with a video output. (Final Office Action, page 4, citing Marshall Fig. 8,
`
`col. 3, lines 31-33 and 41-44.) Marshall, however, shows a program description of a selected
`
`program listing and also Egg the video display to a program of the selected program listing.
`
`In Marshall, when a user selects the program MASH from its FIG. 7 screen, the MASH program
`
`description and a MASH image are displayed in Marshall’s FIG. 8 (below).
`
`25316320_2
`
`5
`
`

`
`
`
`Fig. 3
`
`There is no disclosure in the either Rausch or Marshall of simultaneously
`
`displaying all three elements recited in applicants’ independent claims and switching a program
`
`description changing the currently broadcast television program display. The Examiner
`
`states in the Final Office Action at page 4 that it would have been obvious to modify Rausch to
`
`include the program description without changing the main video as taught by Marshall. Even if
`
`Rausch and Marshall were combined however, the combination would not yield Applicants
`
`claimed invention.
`
`Independent claims 7 and 15 recite, respectively a method and system that
`
`includes the simultaneous display of above mentioned three areas (program listings, currently
`
`broadcast television program, and detailed program description), and: receiving a selection of a
`
`program listing, displaying a program corresponding to the selected program listing and
`
`switching the program description in the third area corresponding to a selected program listing.
`
`The Examiner asserts that claims 7 and 15 are unpatentable over Rausch in view of Marshall and
`
`Florin. (Final Office Action, page 8-10.) The Examiner relies on Florin for its alleged
`
`253l6320_2
`
`6
`
`

`
`disclosure of the element receiving a selection of one of the plurality of program listings
`
`displayed in the first area of the screen and displaying the currently telecast video program
`
`corresponding to the selected program listing, and asserts that it would have been obvious to
`
`modify Rausch in view of Marshall and Florin to obtain a system to display selected programs
`
`concurrently with a program listing. (Final Office Action, page 10.) Applicants disagree. Claim
`
`7 and 15 require a selection of a program listing, controlling the tuner to display a program
`
`corresponding to the selected program listing, and switching a description of the program
`
`corresponding to the selected program listing. In Florin, the displayed program 250 (Florin FIG.
`
`12) corresponds to a currently viewed program “which the user was last viewing”. (Florin, col.
`
`15, lines 29-30.) VVhen a program list is obtained in Florin, the currently viewed program 250 is
`
`highlighted in the program list, and remains in the display as a user highlights other listings.
`
`(Florin, FIG. 12, col. 15, lines 46-50.) When a listing is selected in Florin, the program is
`
`displayed in a full screen. (Florin, col. 15, lines 34-37.) Thus, the combination of Rausch,
`
`Marshall and Florin does not disclose all of the elements of claims 7 and 15.
`
`For at least the foregoing reasons, applicants submit that the § 103(a) rejections of
`
`independent claims 1, 7, 9, 15 are based on clear error of fact and, therefore, should be reversed.
`
`Independent claims 8, 16, 17, 22, 23, 29, 30 include similar elements as claims 1, 7, 9 and 15 and
`
`their rejections should also be reversed for the same reasons. The rejections of the dependent
`
`claims 3-6, 11-14, 18-20, and 25-28 should also be reversed for the same reasons.
`
`Respectfully submitted,
`
`/Pristine Johannessen/
`
`Pristine Johannessen, Reg. No. 55,302
`Attorney for Applicants, Ropes & Gray LLP, Customer No. 75563
`
`25316820_2
`
`7
`
`

`
`PTO/SB/31 (06-09)
`Approved for use through 06/30/2009. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`Docket Number (Optional)
`
`NOTICE OF APPEAL FROM THE EXAMINER TO
`THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`GS/1361 CON 2
`
`I hereby certify that this correspondence is being facsimile transmitted
`
`In re Application of
`
`to the USPTO or deposited with the United States Postal Service with
`sufficient postage as first class mail in an envelope addressed to
`“Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-
`1450” [37 CFR1-8(8)]
`on
`
`Hem-y Q Yuan’ at a;_
`Application Number
`10/704,318
`
`Filed
`November 7, 2003
`
`For M»:-thod an-:l Apgvaraius for Displaying Teievision Programs and Related Text
`
`Signature
`
`Typed or printed
`name
`
`Examiner
`
`Jean D. Saint-Cyr
`
`Applicant hereby appeals to the Board of Patent Appeals and lnterferences from the last decision of the examiner.
`
`The fee for this Notice of Appeal is (37 CFR 41 .20(b)(1 ))
`
`$ 54000
`
`D Applicant claims small entity status. See 37 CFR 1.27. Therefore, the fee shown above is reduced
`by half, and the resulting fee is:
`
`A check in the amount of the fee is enclosed.
`
`Payment by credit card. Form PTO-2038 is attached.
`
`The Director has already been authorized to charge fees in this application to a Deposit Account.
`
`The Director is hereby authorized to charge any fees which may be required, or credit any overpayment
`to Deposit Account No. 06-1075
`
`A petition for an extension of time under 37 CFR 1.136(a) (PTO/SB/22) is enclosed.
`
`WARNING: Information on this form may become public. Credit card information should not
`be included on this form. Provide credit card information and authorization on PTO-2038.
`
`I am the
`
`.
`.
`applicant/inventor.
`
`assignee of record of the entire interest.
`See 37 CFR 3.71. Statement under 37 CFR 3.73(b) is enclosed.
`(Form PTO/SB/96)
`
`./Pristine Johannessenl
`
`Signature
`
`.
`-
`P”5‘t‘“‘9 Jghannesge”
`Typed or printed name
`
`attorney or agent of record. 551332
`Registration number
`
`212_59§_900O
`
`attorney or agent acting under 37 CFR 1.34.
`Registration number if acting under 37 CFR1.34.
`
`Telephone number
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`Becambflr 22’ 2810 Date
`
`NOTE: Signatures of all the inventors or assignees of record of the entire interest or their representative(s) are required.
`Submit multiple forms if more than one signature is required, see below*.
`
`*Total of
`
`‘=
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`forms are submitted.
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`This collection of information is required by 37 CFR 41.31. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11, 1.14 and 41.6. This collection is estimated to take 12 minutes to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer,
`U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
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`
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`8
`
`

`
`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
`with your submission of the attached form related to a patent application or patent. Accordingly,
`pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
`collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
`and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
`Office is to process and/or examine your submission related to a patent application or patent. If you do
`not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or
`abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the
`Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
`this system of records may be disclosed to the Department of Justice to determine whether
`disclosure of these records is required by the Freedom of Information Act.
`A record from this system of records may be disclosed, as a routine use, in the course of
`presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
`opposing counsel in the course of settlement negotiations.
`A record in this system of records may be disclosed, as a routine use, to a Member of
`Congress submitting a request involving an individual, to whom the record pertains, when the
`individual has requested assistance from the Member with respect to the subject matter of the
`record.
`
`A record in this system of records may be disclosed, as a routine use, to a contractor of the
`Agency having need for the information in order to perform a contract. Recipients of
`information shall be required to comply with the requirements of the Privacy Act of 1974, as
`amended, pursuant to 5 U.S.C. 552a(m).
`A record related to an International Application filed under the Patent Cooperation Treaty in
`this system of records may be disclosed, as a routine use, to the International Bureau of the
`World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
`the Atomic Energy Act (42 U.S.C. 218(c)).
`A record from this system of records may be disclosed, as a routine use, to the Administrator,
`General Services, or his/her designee, during an inspection of records conducted by GSA as
`part of that agency’s responsibility to recommend improvements in records management
`practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
`be made in accordance with the GSA regulations governing inspection of records for this
`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
`be used to make determinations about individuals.
`
`A record from this system of records may be disclosed, as a routine use, to the public after
`either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
`pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
`CFR 1.14, as a routine use, to the public if the record was filed in an application which
`became abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspection or an
`issued patent.
`A record from this system of records may be disclosed, as a routine use, to a Federal, State,
`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`9