r
`
`1._
`
`UNITED STATES ~:" RTMENT OF COMMERCI; ,
`~
`
`Patent and Trade$' Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`
`•
`
`,-
`r~
`
`APPLICATION NO.
`
`FILING DATE
`
`ARST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`o::::/460, 711
`
`06/02/95
`
`HARVEY
`
`~~ S I MCIN
`HOWREY
`1299 PENNSYLVANIA AVENUE NW
`WASHINGTON DC 20004
`
`Ll'111/ 0529
`
`.]
`
`5E.:34. 212
`
`EXAMINER
`
`FAILE, A
`I PAPER NUMBER
`ART UNIT
`
`2711
`DATE MAILED:
`
`05/29/98
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissioner of Patents and Trademarks
`
`PT0-90C (Rev. 2/95)
`
`"U.S. GPO: 1~37-638180022
`
`1· File Copy
`
`1
`
`SAMSUNG 1027
`
`

`
`,;
`
`.,.. ..
`
`I
`
`r
`
`Office Action Summary
`.~
`'
`
`Application No.
`08/460,711
`
`Examiner
`
`Applicant(s)
`
`Andrew Faile
`
`HARVEY et al.
`
`Group Art Unit
`2737
`
`,.
`
`!XI Responsive to communication(s) filed on =D:..:::e:..:::c-=2=-=0~,~19:::.:9:::..6:::....._ ____________________ _
`
`!XI 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 C. D. 11; 453 O.G. 213.
`
`3
`month(s). or thirty days, whichever
`A shortened statutory period for response to this action is set to expire
`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
`!XI Claim(s) =2....:-5:....:5;;.._ ________________________ is/are pending in the application.
`
`Of the above, claim(s)
`
`is/are withdrawn from consideration.
`
`--------------------
`0 Claim(s) - - - - - - - - - - - - - - - - - - - - - - - - - - - - is /a re allowed.
`!XI Claim (s) 2=--=-5:...:5;;.._ __________________________ is/are rejected.
`0 Claim(s)
`0 Claims
`
`is/are objected to.
`
`are subject to restriction or election requirement.
`
`Application Papers
`0 See the attached Notice of Draftsperson's Patent Drawing Review, PT0-948.
`0 The diawing(s) filed on
`is/are objected to by the Examiner.
`- - - - - - - - -
`0 The proposed drawing correction, filed on ________ is
`0 The specification is objected to by the Examiner.
`0 The oath or declaration is objected to by the Examiner.
`
`[}lpproved O:lisapproved.
`
`Priority under 35 U.S.C. § 119
`0 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) .
`.0 All 0 Some* 0 None
`of the CERTIFIED copies of the priority documents have been
`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)).
`*Certified copies not received: ------------------------------~
`0 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`A ttachment(s)
`!XI Notice of References Cited, PT0-892
`0 Information Disclosure Statement(s). PT0-1449, Paper No(s).
`0 Interview Summary, PT0-413
`0 Notice of Draftsperson's Patent Drawing Review, PT0-948
`0 Notice of Informal Patent Application, PT0-152
`
`- - - -
`
`U. S. Patent and Trademark Office
`PT0-326 (Rev. 9-95)
`
`Office Action Summary
`
`Part of Paper No.
`
`10
`
`--- SEE OFFICE ACTION ON THE FOLLOWING PAGES---
`
`2
`
`

`
`,\
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`•
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`•
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`Serial Number: 08/460,711
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`Art Unit: 2737
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`...
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`Page 2
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`l.
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`This Office Action is responsive to the amendment(s) filed 12/20/96.
`
`DETAILED ACTION
`
`DOUBLE PATENTING V.S. PATENTS
`
`2.
`
`After reviewing the restriction requirement under 35 USC 121 in US Patent 5,233,654 it is
`
`believed that the claims of the instant application are subject to a double patenting analysis against
`
`US Patent 5,233,654 and US Patent 5,335,277.
`
`3.
`
`In view offurther analysis and applicant's arguments, the rejection ofthe claims in the
`
`instant application under double patenting based on the broad analysis of In re Schneller as set
`
`forth in paragraphs 7-10 of the previous Office Action has been withdrawn.
`
`DOUBLE PATENTING BETWEEN APPLICATIONS
`
`4.
`
`Conflicts exist between claims ofthe following related co-pending applications which
`
`includes the present application:
`
`#
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`Ser. No.
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`397371
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`4
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`435757
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`#
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`5
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`Ser. No.
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`397582
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`435758
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`#
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`3
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`Ser. No.
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`5.
`
`3 7 CFR 1. 78(b) provides that when two or more applications filed by the same applicant
`
`contain conflicting claims, elimination of such claims from all but one application may be required
`
`in the absence of good and sufficient reason for their retention during pendency in more than one
`
`application. The attached Appendix provides clear evidence that such conflicting claims exist
`
`between the 329 related co-pending applications identified above. However, an analysis of all
`
`claims in the 329 related co-pending applications would be an extreme burden on the Office
`
`requiring millions of claim comparisons.
`
`In order to resolve the conflict between applications, applicant is required to either:
`
`(1)
`
`file terminal disclaimers in each ofthe related 329 applications terminally disclaimingeach
`
`of the other 329 applications, or;
`
`(2)
`
`provide an affidavit attesting to the fact that all claims in the 329 applications have been
`
`reviewed by applicant and that no conflicting claims exists between the applications. Applicant
`
`should provide all relevant factual information including the specific steps taken to insure that no
`
`conflicting claims exist between the applications, or;
`
`(3)
`
`resolve all conflicts between claims in the above identified 329 applications by identifying
`
`how all the claims in the instant application are distinct and separate inventions from all the claims
`
`in the above identified 329 applications (note: the five examples in the attached Appendix are
`
`9
`
`

`
`Serial Number: 08/460,71 l
`
`Art Unit: 2737
`
`Page 9
`
`merely illustrative of the overall problem. Only correcting the five identified conflicts would not
`
`satisfy the requirement).
`
`Failure to comply with the above requirement will result in abandonment of the
`
`application.
`
`INFORMATION DISCLOSURE STATEMENTS
`
`6.
`
`Receipt is acknowledged of applicant's Information Disclosure Statements filed 12/22/95,
`
`2/6/96, 12/11/96, and 2/6/96. In view of the unusually large number of references cited in the
`
`instant application (approximately 2,200 originally and 645 in the subsequent IDS) and the failure
`
`of applicant to point out why such a large number of references is warranted, these references
`
`have been considered in accordance with 37 C.F.R. 1.97 and 1.98 to the best ability by the
`
`examiner with the time and resources available.
`
`The foreign language references cited therein where there is no statement of relevance or
`
`no translation are not in compliance with 37 C.F.R. 1.98 and have not been considered.
`\
`Numerous references listed in the IDS are subsequent to applicant's latest effective filing date of
`
`9/11/87, therefore, the relevancy ofthese references is unclear. Also cited are numerous
`
`references that are apparently unrelated to the subject matter of the instant invention such as: US
`
`Patent# 33,189 directed toward a beehive, GB 1565319 directed toward a chemical compound, a
`
`cover sheet with only the word "ZING", a computer printout from a library search with the words
`
`"LST" on it and a page of business cards including that of co-inventor James Cuddihy, among
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`others. The relevancy of these references cannot be ascertained. Furthermore, there are several
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`database search results listed in foreign languages (such as German) which list only the title and
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`Serial Number: 08/460,711
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`Art Unit: 2737
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`Page 10
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`document information; no copy has been provided, therefore, these references. have not been
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`considered. .
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`CLAIM REJECTIONS- 35 USC§ 112
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`7.
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`The examiner notes that the original disclosure of the present application defines the
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`terminology "programming" differently than the original disclosure ofParent Application S.N.
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`06/317,510. Specifically:
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`a) The original disclosure of the present application explicitly defined the te~
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`"programming' to mean: "everything that is transmitted electronically to entertain,
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`instruct, or inform including television, radio, broadcast print, and computer programming
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`as well as combined medium programming" [see lines 5-8 on page 11 ofthe present
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`written description]; while in contrast
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`b) The original disclosure of Parent Application 06/317,510 explicitly defined the same
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`''programming' terminology to mean: "everything transmitted over television or radio
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`intended for communication of entertainment or to instruct or inform" [see lines 4-7 in the
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`abstract ofUS patent #4,694,490].
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`Serial Number: 08/460,711
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`Art Unit: 2737
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`Page II
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`8.
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`Claims 2-55 are rejected under 35 U.S.C. II2, second paragraph, as being indefinite for
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`failing to particularly point out and distinctly claim the subject matter which applicant regards as
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`the invention.
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`I. With respect to the terms "program" and "programming" as recited in the
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`pending claims:
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`A) As it relates to the broadcast and transmission art, the term "program" is defined by
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`the Second College Edition of the "American Heritage Dictionary" to mean: "a scheduled
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`radio or television show". This conventional definition of the term "program" appears to
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`be consistent with the definition and use of the terminology in the original disclosure of
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`Parent Application S.N. 06/317,510. However, this conventional definition is clearly
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`inconsistent with the definition given to the term "programming" via the original
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`disclosure of the present application [SEE the preceding paragraph of this Office action].
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`B) While applicant may be his or her own lexicographer, a term in a claim may not be
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`given a meaning repugnant to the usual meaning ofthat term, In re Hill, 161 F.2d 367, 73
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`USPQ 482 (CCPA 1947). The examiner maintains that the use ofthe terminology
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`"programming" and "program" in pending claims 3-5, 24-36, and 38-55 is repugnant to
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`the normaVusual use of the terminology because it appears to have been used in a manner
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`which is not limited to "radio or television shows". Appropriate correction is required.
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`II. The examiner notes the following:
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`It is noted that, under section 112-2, a method claim must be drafted so as to
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`positively recite the steps which comprise the method. However, throughout the pending
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`Page 12
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`claims, functional language has been used without providing a positive recitation of the
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`steps required to perform these functional recitations. For example:"to communicate" in
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`line 15 of claim 2; "to communicate" in line 17 of claim 2; "capable of communicating" in
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`lines 3 and 4 of claim 3; "capable of controlling" in line 5 of claim 3; "to receive, store, or
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`communicate" in line 6 of claim 3; "capable of c_ontrolling" in lines 6 and 7 of claim 3; "to
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`communicate" in line? of claim 3; "which causes" in line 12 of claim 3; "to communicate"
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`in line 13 of claim 3; "to be stored" in 16 of claim 3; "capable of storing" in line 3 of claim
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`4; "capable of communicating" in lines 3 and 4 of claim 4; "capable of controiling" in line
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`5 of claim 4; "to receive, store, or communicate" in line 6 of claim 4; "capable of
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`controlling" in lines 6 and 7 of claim 4; "to communicate" in line 7 of claim 4; "to be
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`communicated" in line 12 of claim 4; "thereby to transmit" in line 13 of claim 4; "to be
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`stored" in line 14 of claim 4; "capable of storing" in line 3 of claim 5; "capable of
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`communicating in line 4 of claim 5; "capable of controlling~' in line 5 of claim 5; "to
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`receive, store, or communicate" in line 6 of claim 5, etc, . . . Clarification is needed.
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`In line 1 of claim 3, the term "at" is confusing and appears to be misdescriptive in
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`view that the recited steps appear to cause received video or audio programming and
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`instructions sets to be transmitted from a transmitter of a transmitter station for
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`subsequent storage at storage station [note lines 12-17 of claim 3]. ·Being such, should the
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`term "at" in line 1 of claim 3 actually read --to--? . Similar clarification is needed in claims
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`4 and 5.
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`In claim 2, line 11, the recitation "selecting said digital television signals" is
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`confusing and appears to be misdescriptive because, as presently claimed, it appears that
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`"said television signals" in line II refers back to all of the television signals whi~h are
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`contained in said information transmission and thus it appears that all of said television
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`signals that are contained in said information transmission are being selected by the
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`selecting step oflines 11-14. The confusion is only magnified in lines IS and 16 of claim 2
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`in that the phrase "eachselected digital television signal" does not have clear ant~cedent
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`basis and is indefinite; i.e. in line 1I of claim 2 all of the recited "digital television signals"
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`appear to have been selected. Clarification is needed.
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`In claim 2, it is not clear how and/or if the selected digital television signals of line
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`1I differ from the received digital television signals of line 6.
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`In claim 2, line 17, "said digital television signals" is confusing and appears to have
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`multiple antecedent basis because it is not clear if the term refers back to the television
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`signals that were received in lines 6 and 7, to the television signals that were selected in
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`line I1, to the television signals which were communicated by the switch in lines 15 and
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`16, or to some one ofthe recited television signals. Clarification is needed.
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`The meaning of the terminology "intermediate generation set" and "program
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`instruction set" as coined and used by applicant in claims 3-5 and 24-55 is not understood.
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`This is particularly significant in view that applicant has clearly relied on this terminology
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`in order to define the alleged invention over the prior art of record [see the second full
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`paragraph on page 24 ofthe response received I2/20/96]. Clarification is needed (e.g.
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`applicant should set forth the meaning/definition ofthese recited terms and should show
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`where such a meaning/definition was provided by his disclosure as originally filed.
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`Page 14
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`Claim 3 is confusing and indefinite because it is not clear how the steps recited in
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`lines 9-17 of claim 3 relate back to the structure recited in the preamble of said claim (i.e.
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`lines 1-8). For example, it is not clear: what structure ofthe preamble receives the signal
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`comprising video or audio programming as recited in line 9; what structure ofthe
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`preamble receives the first control signal as recited in line 12; etc, .... ·Similar clarification
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`is needed for claims 4 and 5.
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`In lines 9-11 of claim 3, the recitation that the programming contains "one of (I) a
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`first intermediate generation set and (ii) at least some of a program instruction set" is
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`confusing and indefinite when interpreted in light of the recitations of 15-17. Specifically,
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`the recitations of lines 9-11 indicate that the existence of the intermediate generation set in
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`said programming is optional (i.e. the programming contains "one of .. ") while, in sharp
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`contrast, the limitations of lines 15-17 appear require the programming to contain said
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`recited intermediate set. Clarification is needed. Similar clarification is needed in claim 4.
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`In claim 3, line 15, the recitation "transmitting said first intermediate generation
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`set" is confusing and indefinite because it is unclear whether the term "said first
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`intermediate generation set" actually refers back to the previously recited intermediate
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`generation set in lines 10 and 11 which was implicitly received with the signal ofline 9; i.e.
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`does the claimed method actually transmit the intermediate instruction set which was
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`contained in the received signal of lines 9-11 as appears to be claimed. Clarification is
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`required.
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`In lines 15 and 16 of claim 3, the second occurrence of"said first intermediate
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`generation set" is confusing and indefinite because it is not clear if it refers to the
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`Page I 5
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`intermediate generation set that was received as part of the received signal (see lines 9-Il)
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`or refers to the intermediate generation after it was transmitted (see line I 5). Similar
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`clarification is needed in claims 4 and 5.
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`Claim 3 7 is clearly indefinite because it depends from itself
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`Applicant is asked to review all ofthe pending claims and to correct any section 112-2 problems
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`which are similar to those exemplified above.
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`9.
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`Claims 2, 6-23, and 55 are rejected under 35 U.S.C. 112, first paragraph, as containing
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`subject matter which was not described in the specification in such a way as to enable one skilled
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`in the art to which it pertains, or with which it is most nearly connected, to make and/or use the
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`invention.
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`As per an earlier agreement, copies of the "prior art" cited in this paragraph have not
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`been provided with this Office action since such copies were previously provided in co(cid:173)
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`pending application S.N. 081449,09 7
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`I. Applicant has now presented claims which are directed to the distribution of
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`"digital television signals" as was allegedly described by applicants original
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`disclosure. The following is noted:
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`Page 16
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`As originally disclosed, it is apparent that applicant used the terminology "digital
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`television signals" to refer to television signals which represented conventional television
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`programming and which comprised digitized audio and video signal components [SEE
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`"Example #7" which begins of page 288 of applicant's current disclosure]. However, as
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`originally filed, applicant's disclosure clearly lacked any specific description: a) as to how
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`the "digital television signals" of applicant's alleged invention( s) were to have been
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`formatted for transmission over a television distribution system using the method(s) that
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`are now recited in the pending claims; and b) as to how the transmission circuitry of
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`applicant's alleged invention(s) was modified and/or configured for the purpose of
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`handling "digital television signals" in the manner that is now recited in the pending
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`claims. Apparent justification for the lack of such descriptions seems to be based: 1) on
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`the allegation set forth in applicant's original disclosure that "digital television signals", of
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`the type described in the original disclosure, were well known in the art at the time of
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`applicant's alleged invention [note lines 30-33 on page 288 of applicant's disclosure]; and
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`2) on the apparent assumption that the "digital television signals" of applicant's disclosure
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`could be handled/transmitted in a manner that was interchangeable with the handling and
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`transmission of conventional analog television signals. 1 The examiner maintains that, at
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`1
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`For example, applicant's described portions of applicant's alleged invention(s) as having operated to transmit digital
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`television signals over a TV channel during a first period of'time and as having transmitted analog television signals over said same
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`channel during a subsequent period oftime (see lines 1-5 on page 302 of applicant's disclosure). No discussion as to any difference in
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`the handling of the two different television signals by the alleged invention(s) was ever provided, suggested, or recognized via
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`applicant's original disclosure].
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`Page 17
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`the time of applicant's alleged invention, such allegations and assumptions appear to have
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`been in error.
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`The examiner emphasizes that he does not dispute the fact that it was well known in
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`the art, at the time of applicant's alleged invention(s), to have broadcasted digitally
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`formattec!_ television signals. Specifically, the examiner acknowled_ges that the
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`transmission of digital television signals was known in the art when, under "rare"
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`circumstances, a transmission channel of sufficient bandwidth was available. However, it
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`is noted that the transmission of these conventional digital television signals was not
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`interchangeable with the transrpission of analog television. signal as assumed by applicant's
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`original disclosure because of the extremely large bandwidth that was required to transmit
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`convention digital television signals; i.e. this was true even when the digital television
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`signals had been compressed using state ofthe art bandwidth compression techniques
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`[ 1 ][2][3].
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`Given the above, the examiner maintains that the description found in applicant's
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`original disclosure pertaining to the transmission of"digital television signals" using
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`applicant's alleged invention(s) was insufficient to have enabled the pending claims.
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`Specifically, it is maintained that applicant's original disclosure at least failed to disclose
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`and describe the manner in which the recited "digital television signals" had to have been
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`compressed, formatted, and/or processed so as to have enabled them to have been handled
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`in the manner that was originally described and is now claimed.
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`In view of the above, applicant is hereby requested to submit evidence (e.g. a US
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`Patent or a printed publication) in order to show support the allegations and assumptions
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`Page 18
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`on which applicant's original disclosure was clearly based; i.e. references which show the
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`means needed to format and transmit "digital television signals" in a manner required
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`by applicant's disclosed/claimed invention(s) were in fact w~ll known to those
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`skilled in the art at the time of applicant's alleged invention.
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`II. The examiner notes that even those sections of applicant's original disclosure which
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`were directed to the transmission of"digital television signals", e.g. "Example #7" which
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`begins on page 288 of applicant's disclosure, provide few clues as to how the recited
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`"digital tdevi::;ion signals" were to have been compressed., formatted, handled, and
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`transmitted by applicant's alleged invention(s) in order to have enable them to have been
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`processed in the manner that is now set forth in the pending claims. For example, the
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`· description of applicant's alleged invention( s) failed to explain: 1) how the "digital
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`television signals" of applicant's alleged invention(s) were formatted anq/or compressed
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`so as to have enabled them to have been handled, transmitted, and/or processed in the
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`manner that is now recited in the pending claims; 2) how the "digital television signals" of
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`applicant's alleged invention(s) were formatted and/or compressed so that they could be
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`transmitted over the same TV channel that was used to carry conventional analog TV
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`broadcasts as originally disclosed [see lines 1-5 on page 302 of applicant's disclosure]; 3)
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`how the subscriber stations of applicant's alleged invention were modified in order to have
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`handled/processed "digital television signals" in the manner that is now claimed; 4) how
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`the "SP AM'' messages of subscriber stations were to have been embedded in the "digital
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`Page 19
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`television signals", how said "SP AM" messages were to have been carried by said digitally
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`formatted television signals, and how said "SP AM'' messages were to have been extracted
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`from digitally formatted televisions signals?; 5) how the bit-rate ofthe "SPAM'' messages
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`that were carried by said digital television signals was related to the bit-rate of the digital
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`television signals into which they were embedded and how this bit rate related to the bit(cid:173)
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`rate of the "SP AM'' signals that were carried in the analog television signals and how the
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`disclosed/claimed system was configured to handle any such differences [e.g. while not
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`addressed by applicant's original disclosure, it appears that the conventional differences
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`between the bandwidth of digital television signals and analog television signals would
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`translated into respective difference in the bit-rate ofthe "SPAM'' messages that were
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`embedded in respective ones of the two types of television signals].
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`ill. For the reasons set forth in parts "I" and "II" of this paragraph, the examiner
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`maintains that the pending claims which are directed to the handling/transmission of
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`"digital television signals" were not enabled by applicant's original disclosure because the
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`allegations and assumptions on which the disclosed handling/transmission of such digital
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`television signals was based were erroneous. The examiner maintains that these pending
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`claims represent an invitation to experimentation when read in the context of the state of
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`the "digital television signal" transmission art which actually existed at the time of
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`applicant's alleged invention; i.e. the technology required to have handled/transmitted
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`"digital television signals" in the manner that was disclosed, and thus in the manner that is
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`apparently claimed, does not appear to have existed at the time of applicant's alleged
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`invention.
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`[II The publication "Digital Television T.-ansmission With 34 Mbit/s" by Bu.-lrnardt et al. evidences a
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`. .
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`conventional tt·ansmission system in which a Television signal was broadcasted in a digital fonnat [see figure 2).
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`Even though the bandwidth of the digital television signal was compressed prior to t.-ansmission, said digital signal
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`still required a 22MHz transmission channel [see the second paragraph under the heading" Bit-Rate Reduction"
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`on page 244); i.e. Wherein a bandwidth of22MHz is almost 4X that of a standard 6 MHZ TV channel used for
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`analog television signal transmission.
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`[2] The US P::tcnt No. 3,755,624 to Se!dmoto evidences:! conventiona! system in which a television signal was
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`digitaUy fonnatted and bandwidth t:ompressed prior to broadcast. The resulting bit-rate of this compressed
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`digital television signal was 32 Mbit/s which required a bandwidth more than 3X that of said standard 6MHz Tv.
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`channel
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`(31 The US Patent No. 4,742,543 to Fredericksen illustrates a system in which a television signal was processed on
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`the transmitter side of a broadcast system in a digital data fonnat [see figure 1). However, prior to broadcast,
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`Fredericksen convet·ted the digital television signal back into an analog signal fonnat (@33). Such D/A conversion
`
`was described as having been necessary because the standard analog TV channel that was used to transmit the
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`television signal was not of sufficient bandwidth to carry the signal in its digital fmmat (note lines 18-23 of column
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`5). This provides further evidence that conventional "digital television signals" could not be handled in the
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`manner described by applicant of his alleged invention(s).
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`10.
`
`Claims 2-55 are rejected under 35 U.S.C. 112, first paragraph, as containing subject
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`matter which was not described in the specification in such a way as to reasonably convey to one
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`skilled in the relevant art th