0
`UNITED STATES hiii:PAATMENT OF COMMERCE
`Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington. D.C. 20231
`
`APPUCATION NUMBER
`
`FlUNG DATI;
`
`FIRST NAMED APPUCANT
`
`ATTORNEY OOCKET NO.
`
`08/449,097
`
`05/24/'35
`
`HARVEY
`
`26itl1/0:327
`
`THOMAS J SCOTT JR
`HOWREY AND SIMON
`1299 PENNSYLVANIA AVENUE NW
`WASHINGTON DC 20004
`
`. .:r
`
`56:34,208
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`2619
`DATE MAILED:
`
`Of3/27/96
`
`This Is a communication from the examiner In charge of your application.
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`OFFICE ACTION SUMMARY
`~sponsive to communication(s) filed on -~£.c_.---'9_-__;9::......::k.::._ ___________________ _
`0 This action is FINAL.
`0 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 D.C. 11; 453 O.G. 213.
`3
`A shortened statutory period for response to this action is set to expire
`month(s), or thirty days,
`-
`whichever is longer, from the mailing date of this communication. Failure to respond within the period for response will cause
`the application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of 37 CFR
`1.136(a).
`
`Disposition of Claims
`~im(s) _____ -=:;. __ ..~_ __ _________________ is/are pending in the application.
`Of the above, claim(s)
`is/are withdrawn from consideration.
`0 Claim(s) _________________________________ is/are allowed.
`
`I:Y"Ciaim(s) ----'=---l..--------------------------- is/are rejected.
`0 Claim(s)
`is/are objected to.
`0 Claims
`
`are subject to restriction or election requirement.
`
`Application Papers
`
`~e the attached Notice of Draftsperson's Patent Drawing Review, PT0-948.
`0 The drawing(s) filed on - - - - - - - - - - - - - - - - is/are objected to by the Examiner.
`0 The proposed drawing correction, filed on
`is 0 approved 0 disapproved.
`0 The specification is objected to by the Examiner.
`0 The oath or declaration is objected to by the Examiner.
`
`Priority under 35 U.S.C. § 119
`
`[] Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
`0 All 0 Some• 0 None
`0 received.
`0 received in Application No. (Series Code/Serial Number)------------
`0 received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
`
`of the CERTIFIED copies of the priority documents have been
`
`*Certified copies not re ce ived : - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`0 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`Attachment(s)
`~otice of Reference Cited, PT0-892
`0 Information Disclosure Statcment(s). PT0-1449. Paper No(s). - - - - -
`0 Interview Summary, PT0-413
`~otice of Draftsperson's Patent Drawing Review. PT0-948
`G Notice of Informal Patent Application, PT0-152
`
`PTOL-326 (Rev. 10195)
`
`*US GPO: 1996·409·290!:Y
`
`-SEE OFFICE ACTION ON THE FOLLOWING PAGES-
`
`1
`
`SAMSUNG 1004
`
`

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`•
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`d r .
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`Serial Number: 08/449,097
`Art Unit: 2619
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`•
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`-2
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`1.
`
`This action is in response to the amendment filed May 9,
`
`1996.
`
`2.
`
`This action will not attempt to determine the effective
`
`filing date of this application. The action will apply art
`
`against the claims using two possible effective filing dates,
`
`i.e. serial number 06/317,510, filed November 3, 1981, and serial
`
`number 07/096,096, filed September 11, 1987. Applicants can
`
`overcome the art rejections by establishing that the art applied
`
`does not meet the claimed limitations or that the art does not
`
`have an early enough filing date.
`
`The action will make initial double patenting rejections
`
`presuming that all of the present claims were fully disclosed in
`
`both the '81 and '87 cases.
`
`In any rejections made under 35 USC 112, first paragraph,
`
`applicants will be asked to clarify, where required by the
`
`examiner, how the present claims are fully disclosed in both the
`
`'81 and '87 cases.
`
`3. Applicants are reminded of their duty to maintain a line of
`
`patentable demarcation between related applications.
`
`It has been
`
`noted by the PTO that many of the pending applications have
`
`similar claimed subject matter.
`
`In the related 327 applications
`
`(the serial numbers are included in a list below), it is
`
`estimated that there may be between 10,000 and 20,000 claims.
`
`Applicants should insure that substantially duplicate claims do
`
`not appear in different cases, and should bring to the PTO's
`
`2
`
`

`
`•
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`•
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`Serial Number: 08/449,097
`Art Unit: 2619
`
`3
`
`attention instances where similar claims have been treated
`
`inconsistently, i.e. rejected in one case but not in another.
`
`4. Applicants are cautioned that their continual use of
`
`alternatives in the claims raises questions concerning the exact
`
`claim meaning. More importantly, it raises questions whether the
`
`disclosure supports every possible embodiment or permutation that
`
`can be created by the alternative language.
`
`5.
`
`The specification is objected to under 35 U.S.C. § 112,
`
`first paragraph, as failing to provide an enabling disclosure.
`
`What do applicants mean by "digital television''? Please
`
`reference both the '81 and '87 cases to define this term.
`
`It
`
`appears that this was not disclosed in the '81 case. The '87
`
`case refers to "digital video" numerous times, and "digital
`
`television'' once.
`
`It is not clear whether applicants are using
`
`these terms interchangeably. Applicants should provide support
`
`and/or arguments, with references to the two disclosures, why
`
`their brief mention of digital television provided an enabling
`
`disclosure.
`
`6.
`
`Claim 2 is rejected under 35 U.S.C. § 112, first paragraph,
`
`for the reasons set forth in the objection to the specification.
`
`7.
`
`The double patenting rejections in this action are based on
`
`the premise that all of the present claims were fully disclosed
`
`in U.S. Patents 4,694,490; 4,704,725; 4,965,825; and 5,109,414.
`
`Since there was a restriction made in 5,233,654, there will be no
`
`double patenting made on that patent or 5,335,277.
`
`3
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`

`
`I ,
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`•
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`Serial Number: 08/449,097
`Art Unit: 2619
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`•
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`-4-
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`8.
`
`The PTO's copies of the parent files are in poor form since
`
`they have been copied many time by members of the public. The
`
`files also are missing some of the papers. The double patenting
`
`rejections below presumes that there were no requirements for
`
`restriction made in any of the parent files.
`
`9. There are three types of double patenting rejections:
`
`a)
`
`Statutory double patenting rejection under 35 USC 101,
`
`b) Nonstatutory obvious type double patenting,
`
`c) Nonstatutory non-obviousness type double patenting.
`
`In this action, the rejections of the third type that are
`
`directed to the claims of the parent patented files will have two
`
`different versions. The first rejects the claims because they
`
`have not been established to be independent and distinct from the
`
`patented claims. The second version includes that premise, and
`
`further supports the rejection by establishing that
`
`representative claims from this application have common subject
`
`matter with representative ones of the patented claims.
`
`10. Claims 2 4 (all of the claims in this application) are
`
`rejected under the judicially created doctrine of non-obviousness
`
`non-statutory double patenting over the patented claims in U.S.
`
`Patents 4,694,490; 4,704,725; 4,965,825; and 5,109,414 since the
`
`claims, if allowed, would improperly extend the "right to
`
`exclude" already granted in those patents.
`
`The subject matter claimed in the instant application is
`
`fully disclosed in the patents and is covered by the patents
`
`4
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`

`
`"'
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`•
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`Serial Number: 08/449,097
`Art Unit: 2619
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`•
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`-5-
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`since the patents and the application are claiming common subject
`
`matter, as follows: a signal processing apparatus and method
`
`including an interactive communications system apparatus and
`
`method. Furthermore, there is no apparent reason why applicants
`
`were prevented from presenting claims corresponding to those of
`
`the instant application during prosecution of the parent
`
`applications which matured into patents.
`
`In re Schneller, 397
`
`F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
`
`A review of the claims in each of the four parent patents
`
`(5,109,414; 4,964,825; 4,704,725; 4,694,490) was made. These
`
`patented claims do not appear ••independent and distinct" from the
`
`claims in this application. The present claims are directed to a
`
`method and apparatus for controlling communications including
`
`television communications or programming. The claims in patent
`
`5,109,414 were directed to a processing system and method for
`
`signal distribution including television. The claims in patent
`
`4,965,825 were directed to a system and process for signal
`
`processing including carrier communications. The claims in
`
`patent 4,704,725 were directed to a method of communicating data
`
`to receiver stations. The claims in patent 4,694,490 were
`
`directed to a method for communicating and processing television
`
`programs.
`
`Applicants' invention can be envisioned at in three parts.
`
`As with most cable TV systems, there is a head end station which
`
`generates the video programming. Applicants have included an
`
`5
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`

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`U'
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`•
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`Serial Number: 08/449,097
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`-6-
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`intermediate station which receives transmissions, from the head
`
`end or subscriber stations, and distributes the programming to
`
`each subscriber. The subscriber station receives the
`
`programming, and can communicate to the intermediate station with
`
`requests or instructions. Even if the claims directed to each
`
`station were ••independent and distinct" from the claims directed
`
`to the other stations, there would be no reason to "restrict"
`
`between the three stations since their overall function is so
`
`interrelated that the stations have the same search area, i.e the
`
`PTO could not establish a burden if required to search for all
`
`three stations.
`
`It is believed that CCPA in Schneller used the "independent
`
`and distinct" standard as the main factor in its determination
`
`that the double patenting rejection should be affirmed. The CCPA
`
`stated that the fundamental reason supporting the principle of
`
`non-statutory double patenting rejections is to prevent
`
`unjustified timewise extension of the right to exclude granted by
`
`a patent no matter how the extension is brought about. Further
`
`the CCPA stated at 158 USPQ 210 (214) :
`
`11 • • • To conform to this reason and to prevail here,
`appellant has the burden of establishing that the invention
`in his patent is "independent and distinct" from the
`invention of the appealed claims. The public policy
`considerations underlying 35 U.S.C. 121 permit separate
`patents on "independent and distinct" inventions which are
`initially "claimed in one application." The statute places
`initial responsibility for this determination on the
`Commissioner of Patents. Where, as here, no such
`determination has been made, it is necessary to scrutinize
`carefully an applicant's voluntary alleged determination of
`this issue for it can lead to the improper proliferation of
`
`6
`
`

`
`II
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`•
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`Serial Number: 08/449,097
`Art Unit: 2619
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`•
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`-7-
`
`patents on the same invention with the inherent result of
`extending timewise a patentee's right to exclude others from
`the invention disclosed in the original application and on
`which his patent has issued."
`
`The CCPA further stated at page·215 the length of time between an
`
`earlier patent and a later filed application should be
`
`considered. The filing date of this application was over seven
`
`years after the first patent issued (serial number 06/317,510,
`
`filed November 3, 1981, patented as 4,694,490 on September 15,
`
`1987) and over four years after the first CIP issued as a patent
`
`(serial number 07/096,096, filed September 11, 1987, patented as
`
`4,965,825 on October 23, 1990).
`
`To the extent that one would view Schneller and In re
`
`Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986) to be in
`
`conflict, it is clear that Schneller is the controlling precedent
`
`to the factual situation here.
`
`In Schneller, the Court
`
`specifically distinguished a situation of the same applicant from
`
`one where the application and patent had different inventive
`
`entities.
`
`In Kaplan, the inventive entities between the patent
`
`and application were different,· as was required at the time of
`
`the Kaplan invention, since Kaplan's filing date was before the
`
`Patent Law Amendments Act of 1984.
`
`In this present case, as with
`
`Schneller, the inventive entities of the application and patent
`
`are the same. Clearly, Kaplan was required, or entitled, to file
`
`separate applications, whereas applicants and Schneller did not
`
`have reason to do so. Finally, decisions of a three-judge panel
`
`of the Federal Circuit cannot overturn prior precedential
`
`7
`
`

`
`II
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`•
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`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
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`8-
`
`decisions of the CCPA.
`
`See UMC Elec. Co. v. United States 2
`
`USPQ2d 1465.
`
`11. Claims 2 4 (all of the claims in this application) are
`
`rejected under the judicially created doctrine of non-obviousness
`
`non-statutory double patenting over the patented claims in U.S.
`
`Patents 4,694,490; 4,704,725; 4,965,825; and 5,109,414 since the
`
`claims, if allowed, would improperly extend the 11 right to
`
`exclude 11 already granted in those patents.
`
`This rejection incorporates the rejection above. That
`
`double patenting rejection is further supported by Schneller
`
`because the great majority of the patented claims are
`
`"comprising" type claims. 1 While it is recognized that the
`
`specific claim limitations in the application may not have been
`
`claimed in the patents, that alone does not establish grounds for
`
`overcoming this rejection. The patent claims were directed to
`
`parts of applicants' total disclosed system or process.
`
`Therefore the recitation of 11 comprising" enables those patented
`
`claims to "cover" claim features now recited by applicants'
`
`present application claims.
`
`Since the head end, intermediate, and subscriber stations
`
`are part of the overall system, claims to one part "cover" the
`
`other part(s) under the Schneller decision (page 215), since the
`
`1The claims that recite neither "comprising" nor
`"consisting" are considered to recite open claim language, i.e.
`equivalent to "comprising 11
`See, for example, claim 1 of Patent
`5,109,414.
`
`•
`
`8
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`

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`•
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`Serial Number: 08/449,097
`Art Unit: 2619
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`•
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`-9-
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`preferred embodiment would include all three parts of the main
`
`system, i.e. head, intermediate, and subscriber stations. For
`
`example, claims to the subscriber station still cover the
`
`intermediate station because the subscriber station would be
`
`processing information that had to come from the intermediate
`
`station. A second example would be that claims to one aspect or
`
`function of the intermediate station would cover the invention of
`
`another aspect or function of the intermediate station since both
`
`functions could be performed with the other. Applicants'
`
`disclosed system includes similar features in the head,
`
`intermediate, and subscriber stations. For example, the stations
`
`can transmit and receive, and have computer, processor and
`
`controller capabilities. For that reason, the disclosure will
`
`permit broadly drafted claims to read on either the head,
`
`intermediate, or subscriber station. Patent claims that recite
`
`receiving and transmitting can cover both intermediate and
`
`subscriber stations. The fact that patent claims and application
`
`claims are directed to different elements does not prohibit this
`
`rejection if there is common or interrelated subject matter
`
`recited. The Court in Schneller stated at page 215:
`
`They "cover" the preferred form ABCXY, common to the
`patent and this application, in the same sense. The fact
`that X and Y are distinct elements, performing, independent
`functions, so that either can be employed without the other,
`does not change this fact. Neither does appellant's
`omission of reference to the lip Y from his patent claims."
`
`Application claim 4 is a representative claim.
`
`It is
`
`directed to a method of processing signals by receiving an
`
`9
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`•
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`Serial Number: 08/449,097
`Art Unit: 2619
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`•
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`-10-
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`information transmission, receiving an instruct signal which is-
`
`effective to
`
`1) effect a transmission station to generate a message to
`
`enable a receiver station to control the reception or
`
`presentation of programming in accordance with the message
`
`and meter or monitor the programming or message, or
`
`2) effect a receiver station to generate a message to enable
`
`a receiver station to control the reception or presentation
`
`of programming in accordance with the message and meter or
`
`monitor the programming or message,
`
`receiving a transmitter control signal which operates to
`
`communicate the message to a transmitter, and transmitting the
`
`information, instruct signal, and control signal.
`
`A review of representative ones of the patented claims will
`
`demonstrate that the patented claims cover the invention claimed
`
`in this application:
`
`a)
`
`In patent 4,694,490, claim 7 is representative of the
`
`claimed method for communicating TV program information to a
`
`receiver station. The receiver station receives the video
`
`data, displays it, detects the presence of overlay
`
`information using an instruct signal, and has computers
`
`generate and transmit this overlay info to the display.
`
`b)
`
`In patent 4,704,725, claim 3 is representative, and, as
`
`summarized below, recites a method of communicating data
`
`comprising:
`
`10
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`•
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`-11-
`
`c)
`
`a) multiple receivers, each with a computer,
`b)
`transmitting instruct to transmit signals to the
`computers,
`detecting the signals and coupling them to the
`selected computers,
`having the computers control their own selected
`output device.
`
`d)
`
`c)
`
`In patent 4,965,825, claim 24 is representative, and,
`
`as summarized below, recites generating a computer output
`
`having the steps of:
`
`a)
`b)
`
`c)
`
`having multiple receivers, each with a computer,
`transmitting an instruct to generate signal to the
`computers,
`causing the computers to generate individual user
`output information.
`
`d)
`
`In patent 5,109,414, claim 15 is representative, and,
`
`as summarized below, recites a signal processing system
`
`(including) :
`
`a)
`b)
`c)
`
`d)
`
`e)
`
`receiver/distribution means,
`switch means,
`control signal detector means for transferring
`data to storage means,
`storage means for storing and transferring data to
`processor means,
`processor means for controlling.
`
`While claim 15 is an apparatus claim, a method claim and
`
`apparatus claim do not in themselves establish groups that
`
`are
`
`"independent and distinct".
`
`The patented claims are also primarily directed to methods or
`
`structure to control element(s) either directly at that station
`
`or at another remote station. This control is generally
`
`completed with the reception or recognition of an instruct
`
`signal. The same common concept exists in application claim 4.
`
`11
`
`

`
`•
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`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`-12-
`
`All of the claims, both patented and pending in this application,
`
`when considered together, effectively recite parts of the
`
`preferred embodiment, i.e. a head, intermediate, and subscriber
`
`station. The patented claims 11 cover 11
`
`the claims of the
`
`application because the patented limitations do not exclude the
`
`limitations of this application.
`
`In the arguments above, the examiner, when discussing
`
`several of the patents, stated that the patented claims were
`
`broad enough to read on multiple stations. While it is believed
`
`this analysis is correct, it is not critical to this rejection.
`
`Since the patented claims recite limitations that are
`
`interrelated with other similar features claimed in this
`
`application, it is the examiner's position that those patented
`
`claims 11 cover 11
`
`the application claims because all of these
`
`claimed features (both in the patent and application) describe
`
`what is effectively the preferred embodiment.
`
`The claims in this application, if allowed without a
`
`terminal disclaimer, would continue patent protection of the
`
`preferred embodiment, i.e. the complete system of the head,
`
`intermediate, and subscriber stations, beyond the expiration of
`
`applicants' parent patents.
`
`12. A determination of a possible non-statutory double patenting
`
`rejection obvious-type in each of the related 327 applications
`
`over each other will be deferred until a later time. This action
`
`12
`
`

`
`•
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`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`-13
`
`is taken if view of the possibility that many of these
`
`applications may be abandoned or merged.
`
`13. Claims 2-4 are rejected under the judicially created
`
`doctrine of double patenting over the claims of copending U.S
`application 08/113,329 and the following related u.s applications
`
`(all of the application are series 08):
`
`13
`
`

`
`•
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`Serial Number: 08/449,097
`Art Unit: 2619
`
`Ser. No.
`#
`397371
`1
`435757
`4
`7
`437045
`437791
`10
`437887
`13
`438206
`16
`439668
`19
`440837
`22
`441575
`25
`441749
`28
`441942
`31
`442327
`34
`37
`442383
`444643
`40
`444758
`43
`444787
`46
`445045
`49
`445294
`52
`446123
`55
`446430
`58
`446494
`61
`447380
`64
`67
`447416
`70
`447448
`447502
`73
`76
`447621
`447712
`79
`447826
`82
`447974
`85
`448116
`88
`448175
`91
`448326
`94
`97
`448662
`100 448810
`103 448916
`106 448977
`******
`109
`112 449263
`
`#
`2
`5
`8
`11
`14
`17
`20
`23
`26
`29
`32
`35
`38
`41
`44
`47
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`53
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`62
`65
`68
`71
`74
`77
`80
`83
`86
`89
`92
`95
`98
`101
`104
`107
`110
`113
`
`Ser. No.
`397582
`435758
`437629
`437819
`437937
`438216
`439670
`441027
`441577
`441821
`441996
`442335
`442505
`444756
`444781
`444788
`445054
`445296
`446124
`446431
`446553
`447414
`447446
`447449
`447529
`447679
`447724
`447908
`447977
`448141
`448251
`448643
`448667
`448833
`448917
`448978
`449110
`449281
`
`•
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`-14-
`
`#
`Ser. No.
`397636
`3
`437044
`6
`437635
`9
`12
`437864
`438011
`15
`438659
`18
`440657
`21
`24
`441033
`27
`441701
`441880
`30
`442165
`33
`36
`442369
`442507
`39
`42
`444757
`45
`444786
`48
`444887
`445290
`51
`54
`445328
`57
`446429
`446432
`60
`446579
`63
`447415
`66
`447447
`69
`72
`447496
`447611
`75
`78
`447711
`447726
`81
`447938
`84
`87
`448099
`448143
`90
`448309
`93
`96
`448644
`99
`448794
`102 448915
`105 448976
`108 448979
`111 449248
`114 449291
`
`14
`
`

`
`•
`
`Serial Number: 08/449,097
`Art Unit: 2619
`
`Ser. No.
`#
`115 449302
`118 449411
`121 449530
`124 449652
`127 449717
`130 449800
`133 449901
`136 451377
`139 452395
`142 458760
`145 458218
`148 459521
`151 460043
`154 460120
`157 460256
`160 460394
`163 460557
`166 460634
`169 460677
`172 460743
`175 460770
`178 466887
`181 466894
`184 468044
`187 468641
`190 469056
`193 469103
`196 469108
`199 469496
`202 469623
`205 470051
`208 470054
`211 470448
`214 470571
`217 471238
`220 472066
`223 472980
`226 473484
`
`#
`116
`119
`122
`125
`128
`131
`134
`137
`140
`143
`146
`149
`152
`155
`158
`161
`164
`167
`170
`173
`176
`179
`182
`185
`188
`191
`194
`197
`200
`203
`206
`209
`212
`215
`218
`221
`224
`227
`
`Ser. No.
`449351
`449413
`449531
`449697
`449718
`449829
`450608
`451496
`458566
`459216
`459506
`459522
`460081
`460187
`460274
`460401
`460591
`460642
`460711
`460765
`460793
`466888
`467045
`468323
`468736
`469059
`469106
`469109
`469517
`469624
`470052
`470236
`470476
`471024
`471239
`472399
`473213
`473927
`
`•
`
`-15-
`
`Ser. No.
`#
`117 449369
`120 449523
`123 449532
`126 449702
`129 449798
`132 449867
`135 451203
`138 451746
`141 458699
`144 459217
`147 459507
`150 459788
`153 460085
`156 460240
`159 460387
`162 460556
`165 460592
`168 460668
`171 460713
`174 460766
`177 460817
`180 466890
`183 467904
`186 468324
`189 468994
`192 469078
`195 469107
`198 469355
`201 469612
`204 469626
`207 470053
`210 470447
`213
`470570
`216 471191
`219 471240
`222 472462
`225 473224
`228 473996
`
`15
`
`

`
`•
`
`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`16-
`
`Ser. No.
`#
`229 473997
`232 474119
`235 474146
`238 474674
`241 475341
`244 477564
`247 477711
`250 477955
`253 478544
`256 478794
`259 478908
`262 479216
`265 479375
`268 479524
`271 480060
`274 480740
`277 482574
`280 483169
`283 483980
`286 484858
`289 485283
`292 486258
`295 486266
`298 487397
`301 487411
`304 487516
`307 487546
`310 487649
`313 487980
`316 487984
`319 488378
`322 488438
`325 488620
`
`#
`230
`233
`236
`239
`242
`245
`248
`251
`254
`257
`260
`263
`266
`269
`272
`275
`278
`281
`284
`287
`290
`293
`296
`299
`302
`305
`308
`311
`314
`317
`320
`323
`326
`
`Ser. No.
`473998
`474139
`474147
`474963
`475342
`477570
`477712
`478044
`478633
`478858
`479042
`479217
`479414
`479667
`480383
`481074
`482857
`483174
`484275
`484865
`485507
`486259
`486297
`487408
`487428
`487526
`487556
`487851
`487981
`488032
`488383
`488439
`498002
`
`Ser. No.
`#
`231 473999
`234 474145
`237 474496
`240 474964
`243 477547
`246 477660
`249 477805
`252 478107
`255 478767
`258 478864
`261 479215
`264 479374
`267 479523
`270 480059
`273
`480392
`276 482573
`279 483054
`282 483269
`285 484276
`288 485282
`485775
`2.91
`294 486265
`297 487155
`300 487410
`303 487506
`306 487536
`309 487565
`312 487895
`315 487982
`318 488058
`321 488436
`324 488619
`327 511491
`
`16
`
`

`
`._ ..
`
`•
`
`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`17-
`
`The subject matter claimed in the instant application is
`
`fully disclosed in the referenced copending applications and
`
`would be covered by any patent granted on that copending
`
`applications since the referenced copending applications and the
`
`instant application are claiming common subject matter, as
`
`follows: a signal processing apparatus and method including an
`
`interactive communications system apparatus and method.
`
`Furthermore, there is no apparent reason why applicant would
`
`be prevented from presenting claims corresponding to those of the
`
`instant application in the other copending applications.
`
`In re
`
`Schneller, 397 F.2d 350, 158 USPQ 210
`
`(CCPA 1968). See also MPEP
`
`§ 804.
`
`A review of the claims in the related copending applications
`
`was made. These claims do not appear independent and distinct
`
`from the claims in this application.
`
`It is believed that CCPA in
`
`Schneller used the "independent and distinct 11 standard as the
`
`main factor in its determination that the double patenting
`
`rejection should be affirmed. The relevant arguments in the
`
`preceding paragraphs in support of this position are incorporated
`
`herein.
`
`14.
`
`It is acknowledged that a multiplicity rejection was mailed
`
`on July 27, 1989 in parent file 07/096,096.
`
`In this rejection,
`
`the examiner had limited the applicants to 25 claims.
`
`Schneller did not equate a multiplicity rejection with a
`
`restriction requirement as a permissible exception to being
`
`17
`
`

`
`•
`
`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`-18-
`
`subject to the non-obvious non- statutory double patenting
`
`rejection. For that reason, this action will not overturn the
`
`which supports the non-statutory
`
`non-obviousness double patenting rejection above.
`
`It is believed, however, that applicants arguments on this
`
`multiplicity issue can be better supported if a nexis is
`
`established between the claims of this application and those that
`
`were cancelled in 07/096,096 in response to the multiplicity
`
`requirement.
`
`Notwithstanding the comment above, at the time the examiner
`
`made the multiplicity rejection/ there was a body of case law
`
`that had overturned similar rejections. Note In re Flint 162
`
`USPQ 228
`
`(CCPA 1969) and In re Wakefield, 164 USPQ 636
`
`(CCPA
`
`1970) .
`
`15. The ·non-statutory double patenting rejection/ whether of the
`obvious-type or non-obvious-type, is based on a judicially
`created 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.
`In re Thorington, 418 F.2d 528, 163 USPQ 644
`(CCPA 1969); In re
`(CCPA 1970); In re Van Ornam,
`Vogel, 422 F.2d 438 1 164 USPQ 619
`686 F.2d 937, 214 USPQ 761
`(CCPA 1982); In re Longi, 759 F.2d
`887, 225 USPQ 645 (Fed. Cir. 1985); and In re Goodman, 29 USPQ2d
`2010 (Fed. Cir. 1993).
`
`A timely filed terminal disclaimer in compliance with 37 CFR
`1.321 (b) and (c) may be used to overcome an actual or
`provisional rejection based on a non-statutory double patenting
`ground provided the conflicting application or patent is shown to
`be commonly owned with this application. See 37 CFR 1.78 (d).
`
`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).
`
`18
`
`

`
`•
`
`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`-19-
`
`16. Claim 2 is rejected under 35 U.S.C. § 103 as being
`
`unpatentable over Lovett (4,450,477) in view of Walker
`
`(3,531,583).
`
`With respect to claim 2, Lovett teaches programming control
`
`processor 148 and receiving an information transmission from 114.
`
`The message stream is detected at 148. The inputting, selecting,
`
`and comparing functions are performed by computer (control
`
`processor) 148. Computer 148 controls digital switch 156, in
`
`response to the information from 114. Lovett fails to
`
`specifically recite a digital TV embodiment, but does teach in
`
`col. 7, lines 34-40, that analog or digital TV were known and
`
`could have been used. Based upon that teaching, receiving a
`
`digital television signal would have been obvious. The outputs
`
`of switch 156 goes to plural processors 150, and the information
`
`is subsequently displayed. The presence of multiple frame stores
`
`150 implies that all of the information passed by switch 156 is
`
`not processed sequentially.
`
`It appears inherent that
`
`simultaneously processing of different inputs, as claimed, must
`
`be occurring.
`
`The charge mechanism of Walker meets the claimed limitation
`
`of monitoring the use of the TV programming. While Lovett
`
`doesn't specifically teach this feature, Walker is not unique in
`
`the video art in teaching that the receiver station can monitor
`
`or meter what TV programs are viewed. There are two obvious
`
`reasons to monitor or meter -- for billing purposes and for TV
`
`19
`
`

`
`•
`
`"···
`
`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`-20-
`
`rating purposes. Walker did it for the first reason, and thus
`
`would have been an obvious modification over Lovett.
`
`17. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
`
`unpatentable over the combined teachings of Walker (3,531,583)
`
`and Morris (3,244,806).
`
`The TV receiver of Walker is matched with the transmitter of
`
`Morris, see col. 2, lines 39-45, of Walker, and, for that reason,
`
`the references are combinable.
`
`The processors in claim 3 as broadly recited can read on any
`
`element which operates or transforms an input. The term
`
`"processor" is not limited to a meaning which requires it to be
`
`located in the computer environment. Most of the elements in
`
`Walker are "processing" information.
`
`Considering claim 3, video amp 12 of Morris receives an
`
`information transmission from camera 10. Figure 1 of Morris
`
`transmits and generates a message (the coded signal) which enable
`
`the receiver of Walker to receive programming. As noted above in
`
`the rejection of claim 2, Walker monitors or meters usage of TV
`
`programming.
`
`Claim 4 differs from claim 3 with the additional limitations
`
`of the instruct and control signals. Both of these signals are
`
`broadly recited. The instruct signal reads on the sync generator
`
`19 of Morris. The output of this element is necessary for the
`
`receiver to be able to identify and process the TV programming,
`
`i.e. it is effective to enable the receiver to present the
`
`20
`
`

`
`•
`
`Serial Number: 08/449,097
`Art Unit: 2619
`
`•
`
`-21-
`
`programming. The control signal is met by video coder 11 of
`
`Morris, note col 4, line 14, with the outputs of code generator
`
`32 and code switches 60. This coding information is sent from
`
`the transmitter of Morris to the receiver of Walker to enable the
`
`receiver to have access to selected programming.
`
`18. A series of interviews were held before prosecution began on
`
`this application. Unless identified specifically below in this
`
`part of the action, these interviews did not address the merits
`
`of any single application, but rather issues that are appropriate
`
`to all of the related 11 Harvey 11 applications.
`
`The first interview was held o