John C. Harvey et al.

Patent Trials and Appeals Board

Jan 3, 2020

08470476 - (D) (P.T.A.B. Jan. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
08/470,476 06/06/1995 JOHN C. HARVEY 5634.301 7485
70813 7590 01/03/2020
GOODWIN PROCTER LLP
901 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20001
EXAMINER
HEARD, ERIN FILE
ART UNIT PAPER NUMBER
2615
NOTIFICATION DATE DELIVERY MODE
01/03/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
AAlpha-Kpetewama@goodwinlaw.com
lrogers@goodwinlaw.com
patentdc@goodwinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN C. HARVEY and JAMES W. CUDDIHY
____________________

Appeal 2019-002506
Application 08/470,4761
Technology Center 2600
____________________

Before THU A. DANG, ELENI MANTIS MERCADER, and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Office Action rejecting claims 30–102 and 104–171,
which are all the claims pending on appeal. Claims 1–29 and 103 have been
canceled. App. Br. 210–268. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was conducted on September 25, 2019. A transcript of the
oral hearing was made of record on October 23, 2019.
We REVERSE.2

1 We use the word “Appellant” to refer to “applicants” as defined in 37
C.F.R. § 1.42. The real party in interest is Personalized Media
Communications, LLC (“PCM”). App. Br. 12.
2 Our Decision refers to Appellant’s Appeal Brief filed April 25, 2018
(“App. Br.”); Reply Brief filed February 4, 2019 (“Reply Br.”); Examiner’s
Answer mailed December 7, 2018 (“Ans.”); Final Office Action mailed
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STATEMENT OF THE CASE
Related Proceedings
The present application3 is a continuation of U.S. Pat. App. No.
08/113,329, filed August 30, 1993, now U.S. Pat. No. 7,856,650, which is a
continuation of U.S. Pat. App. No 08/056,501, filed May 3, 1993, now U.S.
Pat. No. 5,335,277, which is a continuation of U.S. Pat. App. No.
07/849,226, filed March 10, 1992, now U.S. Pat. No. 5,233,654, which is a
continuation of U.S. Pat. App. No. 07/588,126, filed September 25, 1990,
now U.S. Pat. No. 5,109,414, which is a continuation of U.S. Pat. App. No.
07/096,096, filed September 11, 1987, now U.S. Pat. No. 4,965,825,4 which
is a continuation-in-part of U.S. Pat. App. No. 06/829,531, filed February

April 19, 2017 (“Final Act.”); and original Specification filed June 6, 1995
(“Spec.”).
3 This application is a pre-GATT application that was filed in the USPTO
prior to June 8, 1995 deadline when the Uruguay Round of the General
Agreement on Tariffs and Trade/Trade Related Aspects of Intellectual
Property (GATT-TRIPS) agreement provisions took effect. Under the
Uruguay Round Agreements Act of the GATT/TRIPS, the term of a patent,
based on an application filed on or after June 8, 1995, will end 20 years from
the earliest effective filing date claimed in the application. For those
applications filed prior to June 8, 1995, the term of a patent still retains 17
years from its issuance date.
4 The Specification of this application was originally filed on September 11,
1987, which resulted in U.S. Patent No. 4,965,825 (“the ’825 patent”). For
purpose of “written description” support, the disclosure of the ’825 patent is
considered the same as the current Specification. As such, we will review
both accordingly. However, the claims of this application are entitled to
priority under 35 U.S.C. § 120 as to the filing date of the original application
No. No. 06/317,510, filed November 3, 1981, now U.S. Pat. No. 4,694,490
(“the ’490 patent”). Nevertheless, patent protection of both the ’825 patent
and the ’the 490 patents expired on Oct. 23, 2007 and Sept. 15, 2004
respectively.
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14, 1986, now U.S. Pat. No. 4,704,725, which is a continuation of U.S. Pat.
App. No. 06/317,510, filed November 3, 1981, now U.S. Pat. No. 4,694,490.
These applications and patents have also been involved in the
following co-pending inter parte reviews (IPRs) and trials.
(1) Personalized Media Communications, LLC v. Apple, Inc., Civil
Action No. 2:15-cv-01366-JRG-RSP, filed July 30, 2015;
(2) Personalized Media Communications, LLC v. The Weather
Channel, Inc., Civil Action No. 2:95-cv-242;
(3) Personalized Media Communications, LLC v. Thompson
Consumer Electronics et al., Civil Action No. C-96 20957;
(4) Personalized Media Communications, LLC v. DirectTV Inc.,
Civil Action No. CA 11-1020;
(5) Personalized Media Communications, LLC v. Scientific-
Altanta, Inc., Civil Action No. 1:02-cv-824;
(6) Personalized Media Communications, LLC v. Motorola Inc.,
Civil Action No. 2:08-cv-00070;
(7) Personalized Media Communications, LLC v. Zynga, Inc., Civil
Action No. 2:12-cv-68-JRG-RSP;
(8) Personalized Media Communications, LLC v. Amazon.com Inc.,
Civil Action No. 1:13-cv-01608-RGA;
(9) Personalized Media Communications, LLC v. Funai Electric
Co., Ltd., Civil Action No. 2:16-cv-00105-JRG-RSP;
(10) Personalized Media Communications, LLC v. Apple, Inc., Civil
Action No. 2:15-cv-01366-JRG-RSP;
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(11) Personalized Media Communications, LLC v. Samsung
Electronics America, Inc., Civil Action No. 2:15-cv-01754-
JRG-RSP, filed November 10, 2015;
(12) Certain Digital Satellite System (DDS) Receivers and
Components Thereof before the United States International
Trade Commission (“Commission”), Investigation No. 337-TA-
392;
(1) IPR 2014-01527 (March 23, 2016);
(2) IPR 2014-01528 (October 25, 2016);
(3) IPR 2014-01530 (March 24, 2016);
(4) IPR 2014-01531 (April 1, 2016);
(5) IPR 2014-01532 (March 29, 2016);
(6) IPR 2014-01533 (March 8, 2016);
(7) IPR 2014-01534 (July 22, 2016);
(8) IPR 2014-01527 (August 31, 2016);
(9) IPR 2014-01528 (October 25, 2016);
(10) IPR 2016-00751 (September 20, 2016);
(11) IPR 2016-00752 (September 20, 2016);
(12) IPR 2016-00753 (September 20, 2016);
(13) IPR 2016-00754 (September 22, 2016); and
(14) IPR 2016-00755 (September 20, 2016).

Appellant’s invention
Appellant’s invention relates to “an integrated system of methods and
apparatus for communicating programming [i.e., everything that is
transmitted electronically to entertain, instruct, or inform, including
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television, radio, broadcast print, and computer programming as well as
combined medium program]” via “point-to-multipoint” transmission (e.g.,
TV or radio broadcast) of [i] data and [ii] control instructions in the same
information stream to a plurality of subscriber stations. Spec. 11:5–21; the
’825 patent, 6:43–62.
According to Appellant, “[t]he present invention employs signals
embedded in programming” and these “[e]mbedded signals provide several
advantages” including, for example:
(1) “[t]hey cannot become separated inadvertently from the
programming and, thereby, inhibit automatic processing,”

(2) “[t]hey occur at precise times in programming and can
synchronize the operation of receiver station apparatus to the
timing of programming transmission,”

(3) “[t]hey can be conveniently monitored,” and

(4) these “embedded signals contain [i] digital information that
may include addresses of specific receiver apparatus controlled
by the signals and [ii] instructions that identify particular
functions the signals cause addressed apparatus to perform.”

Spec. 13:24–14:2; the ’825 patent, 8:5–18.

In particular, these embedded signals include [i] data, [ii] computer
program instructions, and [iii] commands used to address, control, and
coordinate all subscriber stations and related apparatus. Spec. 41:20–21,
42:32–34; the ’825 patent, 22:60–64.

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Claims on Appeal
Claims 30–102 and 104–171 are pending on appeal. Claims 30, 31,
44, 46, 53, 54, 64, 83, 92, 98, 105, 107, 121, 122, 132, 154, 155, and 156 are
independent. Claims 30 is illustrative of the claimed subject matter, as
reproduced below:
30. An apparatus for promoting and selectively
delivering programming at a receiver station comprising:
a first receiver section that receives a promotional video
program at said receiver station, said promotional video program
promoting said programming and including a request for a
viewer response to receive said promoted programming;
output apparatus including a plurality of output
components for outputting programming, one output component
operatively functional at said receiver station to display said
promotional video program;
programmable processor apparatus operatively functional
at said receiver station to receive a signal that designates said
programming;
a second receiver section operatively connected to said
programmable processor apparatus to receive a viewer response
to said request for a viewer response to receive said promoted
programming;
a storage device operatively connected to said
programmable processor apparatus to store said viewer response,
said programmable processor apparatus accessing said storage
device in response to said viewer response to at least one of
control reception of said promoted programming and control
presentation of said promoted programming;
a third receiver section that receives said promoted
programming at said receiver station; and
a selective transfer device at said receiver station, that
under control of said programmable processor apparatus based
on said signal that designates programming, selectively transfers
said promoted programming from said third receiver section to a
selected output component of said plurality of output
components of said output apparatus.
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App. Br. 210–211 (Claims App.).

EXAMINER’S REJECTIONS5 AND REFERENCES
A. Nonstatutory Obviousness-Type Double Patenting
(1) Claims 30–102 and 104–171 stand rejected on the ground of
non-statutory obviousness-type double patenting over claims 53–55 of U.S.
Patent No. 5,335,277 (“the ’277 patent”) [now expired]. Final Act. 133.
(2) Claims 30, 31, 105, 107, 121, and 155 stand rejected on the
ground of non-statutory obviousness-type double patenting over claims 1, 2,
26, and 28 of U.S. Patent No. 7,805,749 (“the ’749 patent”). Final Act. 146–
163.

5 In the Final Office Action (“Final Act.”) dated on April 19, 2017, the
Examiner issued 58 different rejections under (1) 35 U.S.C. § 112, first
paragraph; (2) 35 U.S.C. § 112, second paragraph; (3) 35 U.S.C. § 102 and §
103; and (4) obviousness-type double patenting based on earlier issued
patents. Final Act. 2–213. In the Examiner’s Answer (“Ans.”) dated on
December 7, 2018, the Examiner has withdrawn the rejections of (1) claims
32–35, 53–82, 92–98, 106, 108–119, 123–154, and 156–171 on the ground
of non-statutory obviousness-type double patenting over claims 1–33, 35–
50, 52–55 of U.S. Patent No. 7,805,749; (2) claims 30–102 and 104–171 on
the ground of non-statutory obviousness-type double patenting over claims
1–33 and 41–46 of U.S. Patent No. 7,810,115; (3) claims 30–102 and 104–
171 on the ground of non-statutory obviousness-type double patenting over
claims 33–45, 47–62 and 64–131 of U.S. Patent Application No. 08/480,383
(now Appeal No. 2019-000274 presented concurrently herewith); (4) claims
30–34, 36–47, 49–53, 64–68, 70–82, 100, 105, 106, 121–131, 168, and 170
under 35 U.S.C. § 112, first paragraph; and (5) claims 30–43, 53, 64–82, 98–
100, 102, 105, 106, 121–131, and 168–170 under 35 U.S.C. § 112, second
paragraph. Ans. 3–4. As such, these rejections are no longer on appeal. For
brevity, all the remaining Examiner’s rejections have now been reorganized
and renumbered in the order presented herein below.
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B. Patent Eligibility
(3) Claims 30–102 and 104–171 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter. Final Act. 11–13.
C. Written Description
(4) Claims 30–53, 57–58, 64–102, and 104–171 [sic, claims 35, 48,
57, 58, 69, 83–99, 101, 102, 104, 107–120, 132–167, 169, and 171]6 stand
rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description. Final Act. 4–6, 15, 28–30, 42–44, 51–54, 59–
60, 64–70, 75–76, 80–81, 84–86, 92–95, 102–104, 107–109, 113–115, 122–
124.
D. Indefiniteness
(5) Claims 30–43, 53, 64–102, and 104–171 [sic, claims 83–97,
101, 102, 104, 107–120, 132–167, and 171]7 stand rejected under pre-AIA

6 The Examiner has withdrawn the rejection of claims 30–34, 36–47, 49–53,
64–68, 70–82, 100, 105, 106, 121–131, 168, and 170 under 35 U.S.C. § 112,
first paragraph. Ans. 3–4. As best understood from the Examiner’s Final
Office Action, claims 30–53, 57–58, 64–102, and 104–171 were rejected
under 35 U.S.C. § 112, first paragraph (Final Act. 15, 21–22, 36–37, 44–45,
55, 61–62, 73–74, 96–97, 107–108, 117–118, 123–124, 131–132, 146–147,
154, 165–166, 186–187, 192–193, 199). In light of the Examiner’s
withdrawal of the § 112, first paragraph, rejection of claims 30–34, 36–47,
49–53, 64–68, 70–82, 100, 105, 106, 121–131, 168, and 170, only claims 35,
48, 57, 58, 69, 83–99, 101, 102, 104, 107–120, 132–167, 169, and 171
remain rejected under 35 U.S.C. § 112, first paragraph.
7 The Examiner’s rejection of claims 30–43, 53, 64–82, 98–100, 102 [sic],
105, 106, 121–131, and 168–170 under 35 U.S.C. § 112, second paragraph
has been withdrawn. See Ans. 4. As best understood, claims 30–43, 53, 64–
102, and 104–171 were rejected under 35 U.S.C. § 112, second paragraph in
the Final Office Action (Final Act. 15, 22–23, 55–56, 75, 97, 108, 118, 124,
132, 147, 154–155, 166, 187, 193, 199). In light of the Examiner’s
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35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 15, 22–
23, 55–56, 75, 97, 108, 118, 124, 132, 147, 154–155, 166, 187, 193, 199.
E. Callais as a Primary Reference
(6) Claim 988 stands rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Callais et al. (US 3,790,700; issued Feb. 5, 1974;
“Callais”). Ans. 54–55.
(7) Claims 31, 32, and 34–43, 46–62, 64–82, 92–97, 100, 101,
105–108, 110–114, 121–123, 125, 128–149, 151, 152, 155–157, 159, and
163–167 [sic, claims 30–102 and 104–171]9 stand rejected under pre-AIA 35

withdrawal of claims 30–43, 53, 64–82, 98–100, 102 [sic], 105, 106, 121–
131, and 168–170 in the Examiner’s Answer (Ans.), only claims 83–97, 101,
102, 104, 107–120, 132–167, and 171 remain rejected under 35 U.S.C. §
112, second paragraph.
8 Both the Final Office Action dated on April 19, 2017 and the Examiner’s
Answer dated on December 7, 2018 are unclear because they contain a
different set of rejections of claims under pre-AIA 35 U.S.C. § 102(b) and
§ 103(a). For example, claims 30, 98, and 154 were originally rejected
under 35 U.S.C. § 102(b) based on Callais. Final Act. 16–19, 174, 188–191.
However, the Examiner has never addressed claims 30 and 154, but only
addressed claim 98 under 35 U.S.C. § 102(b) in the Examiner’s Answer. As
best understood from the Examiner’s Answer, only claim 98 remains
rejected under 35 U.S.C. § 102(b) based on Callais. Claims 30 and 168
appear to be rejected under 35 U.S.C. § 103(a) based on Callais and
Campbell, and will be treated as such. Ans. 31–34.
9 As best understood from the Examiner’s Answer and Appellant’s Reply
Brief, claims 30–102 and 104–171 stand rejected under 35 U.S.C. § 103(a)
based on Callais and Campbell. Ans. 31–34. However, the identification of
these claims is not accurate and inconsistent with the Final Office Action
because many of the same claims stand also rejected based on different
permutations of prior art references. Nevertheless, for purposes of this
decision, we will treat claims 30–102 and 104–171 as being rejected under
obviousness based on Callais and Campbell.

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U.S.C. § 103(a) as being obvious over Callais and Campbell (WO 81/02961;
published Oct. 15, 1981). Final Act. 23–34, 45–54, 56–60, 62–72, 75–93,
109–117, 124–129, 132–144, 147–153, 155–163, 166–184, 193–198, 200–
211.
(8) Claims 33, 109, and 158 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over Callais, Campbell, and McVoy et al.
(US 3,848,082; issued Nov. 12, 1974; “McVoy”). Final Act. 35–36, 144–
145, 210–211.
(9) Claims 44–45 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over Callais, Campbell, and Baer (US 4,034,990; issued
Jul. 12, 1977). Final Act. 37–44.
(10) Claims 63, 104, and 153 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over Callais, Campbell, and Summers (US
3,848,082; issued Nov. 12, 1974). Final Act. 72–73, 185–186.
(11) Claims 99, 102, and 150 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over Callais, Campbell, and McCalley et
al. (US 4,792,849; issued Dec. 20, 1988; “McCalley”). Final Act. 94–96,
184–185.
(12) Claims 160 and 161 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Callais, Campbell, and Bond et al. (US
4,390,898; issued Jun. 28, 1983; “Bond”). Final Act. 211–212.
(13) Claim 162 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Callais, Campbell, and Rifken. Final Act. 212–213.
(14) Claims 168, 169, and 170 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over Callais, Campbell and Block. Final
Act. 19–20, 122–123, 191–192.
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(15) Claim 171 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Callais and Block et al. (US 4,163,254; issued Jul. 31,
1979; “Block”). Final Act. 191–192.

ANALYSIS10
A. Nonstatutory Obviousness-Type Double Patenting –
(U.S. Patent No. 5,335,277, and U.S. Patent No. 7,805,749)
The ’277 Patent
In support of these obviousness-type double patent rejections of
claims 30–102 and 104–171 over claims 53–56 of U.S. Patent No. 5,335,277
(“the ’277 patent”), the Examiner acknowledges that “[a]lthough the
conflicting claims are not identical,” but determines “they are not patentably
distinct from each other because the claims are directed to the same
invention.” Final Act. 8–11; Ans. 7–9.
In particular, the Examiner determines that “both the rejected claims
and the reference claims were drawn to the same embodiment.” Final Act.
10–11. The Examiner further relies on a prior decision from our predecessor
Board, Ex parte Personalized Media Communications, Appeal 2008-4228,
4–5 (BPAI, May 22, 2009) to support a double patenting rejection on two
bases: (1) based on In re Schneller, 397 F.2d 350 (CCPA 1968); and (2)
based on the Board’s determination that “the claims [as presented in that
appeal] did not clearly recite differences.” Final Act. 11.
In the Answer, the Examiner determines that “Board [prior] decision
in Appeal 2008-4228 is applicable to the instant double patent rejections”

10 For purposes of this decision, we will analyze all outstanding rejections
of claims under §§ 112, first and second paragraphs first, and then the §§
101, 102 and 103 rejections of independent claims separately.
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because the instant application and the ’277 patent [] (1) “share the same
specification,” (2) “claim priority to both the 1987 and 1981 specifications,”
and (3) “the claims . . . are drawn not only to the same invention, but also to
the same features of the invention.” Ans. 7–8. For example, the Examiner
determines:
the claims are drawn to the signal processing apparatus and
methods as used in an intermediate transmission facility such as
a cable system head end, as described in the 1981 specification.
See the ’490 patent (1981 Specification), Figures 3a-3b; column
10, line 61 through column 13, line 12; column 18, line 44
through column 20, line 68. The claims are similarly drawn to
the embodiment described in pages 324-340 and 469-515 of the
instant specification (1987 Specification).”

Ans. 8 (emphasis added).
Appellant argues (1) “[t]he facts of Schneller are very different from
the facts of this appeal” (App. Br. 74); (2) “the Examiner provides no
analysis as to how the facts of Appeal 2008-4228 are similar to the facts in
the instant application” because “the claims at issue in Appeal 2008-4228
were totally different from the claims at issue in this application” (App. Br.
75–76); (3) the Examiner provides “no analysis showing that the facts in this
appeal involve the same set of special circumstances as Schneller” (App. Br.
77); and (4) the Examiner has not determined that “claims are either
anticipated by or would have been [obvious] over the claims of the ’277
Patent.” (App. Br. 77–78). Appellant also argues “it is not entirely clear
whether the Examiner is relying on ‘same invention’ statutory or
obviousness-type non-statutory double patenting [rejection].” Reply Br. 17.
We agree with Appellant. At the outset, we note claims 30–102 and
104–171 presented in this instant application are different from the claims
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presented in “Board [prior] decision in Appeal 2008-4228,” Reexamination
Control No. 90/006,536 issued on December 19, 2008 and, as such, need to
be analyzed differently from that of Appeal 2008-4228. Likewise, the
claims of the instant application contain different scopes of coverage from
that of claims 53–56 of the ’277 patent. See App. Br. 78–109. As such,
there cannot be any basis for any non-statutory double patenting rejection,
but only an obviousness-type double patenting rejection. However, an
obviousness-type double patenting analysis entails two steps.
First, as a matter of law, a court construes the claim in the earlier
patent and the claim in the later patent and determines the
differences. Second, the court determines whether the
differences in subject matter between the two claims render the
claims patentably distinct. A later claim that is not patentably
distinct from an earlier claim in a commonly owned patent is
invalid for obvious-type double patenting. A later patent claim is
not patentably distinct from an earlier patent claim if the later
claim is obvious over, or anticipated by, the earlier claim.

Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001)
(footnote and citations omitted). Obviousness is determined according to the
test of Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
In evaluating whether claims under examination should be rejected for
obviousness-type double patenting, the Examiner must determine, in an
analysis comparable to that under 35 U.S.C. § 103, whether one of ordinary
skill would have considered the examined claims obvious over the
conflicting claims. See In re Braat, 937 F.2d 589, 592–93 (Fed. Cir. 1991).
As recognized by Appellant, the Examiner provides (1) no
identification of the differences and (2) no discussion of why the claims at
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issue in this application are obvious over the claims of the ’277 patent.
Reply Br. 17–18.
For example, claim 30 recites, inter alia:
“[1] a first receiver section that receives [1a] a promotional video
program at said receiver station, said promotional video program
promoting said programming and including [1b] a request for a
viewer response to receive said promoted programming;
. . .
[2] a second receiver section operatively connected to said
programmable processor apparatus to receive a viewer response
to [1b] said request for a viewer response to receive said
promoted programming;

a storage device operatively connected to said programmable
processor apparatus to store said viewer response, said
programmable processor apparatus accessing said storage device
in response to said viewer response to at least one of control
reception of said promoted programming and control
presentation of said promoted programming;

a third receiver section that receives said promoted programming
at said receiver station; and

[3] a selective transfer device at said receiver station, that under
control of said programmable processor apparatus based on said
signal that designates programming, selectively transfers said
promoted programming from said third receiver section to a
selected output component of said plurality of output
components of said output apparatus.”

App. Br. 210 (bracketing added); see also App. Br. 79.
Nowhere in claims 53–56 of the ’277 patent is there any teaching or
suggestion of the identified features, including the claimed “selective
transfer device [] [that] selectively transfers said promoted programming
from said third receiver section to a selected output component of said
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plurality of output components of said output apparatus” as set forth in
Appellant’s claim 30. App. Br. 79. As recognized by Appellant, the
Examiner “ignores these identified differences [] without any support that
the claims are patentably distinct.” Reply Br. 19. Nor has the Examiner
articulated sufficient reasoning regarding whether one of ordinary skill in the
art would have considered features recited in Appellant’s claim 30 obvious
over the conflicting claims. Likewise, the Examiner’s finding that “the
claims [] drawn to the embodiment described in [] the instant application [of
the 1981 Specification and the 1987 Specification]” is an analysis for a
written description support, but is not a proper basis to support the
obviousness-type double patenting rejection, as the Examiner reasons. Ans.
8.
Claims 31, 44, 46, 53, 54, 64, 83, 92, 98, 105, 107, 121, 122, 132,
154, 155, and 156 recite limitations describing different embodiments and
having different scopes of coverage. App. Br. 211–265. Likewise, the
Examiner has not explained (1) the differences between these claims relative
to the claims of the ’277 patent, or (2) whether the differences would have
rendered these claims obvious relative to the claims of the ’277 patent.
Because the Examiner has not established that the claimed method
would have been obvious to one of ordinary skill in the art based on the
identified claims of the ’277 patent, and has not established double patenting
as in In re Schneller, we are constrained11 not to sustain the Examiner’s

11 The Patent Trial and Appeal Board (PTAB) is a review body rather than a
place of initial examination. As such, we decline not to sustain the
Examiner’s obviousness-type double patenting rejections and not to enter a
new ground of rejection. However, we leave the patentability determination
with respect to these claims to the Examiner. See MPEP §1213.02.
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obviousness-type double patenting rejections of claims 30–102 and 104–171
over claims 53–56 of the ’277 patent.
The ’749 Patent
In support of the obviousness-type double patent rejection of claims
30–102 and 104–171 over claims 1, 2, 26, and 28 of U.S. Patent No.
7,805,749 (“the ’749 patent), the Examiner also acknowledges that
“[a]lthough the conflicting claims are not identical,” but asserts “they are not
patentably distinct from each other because the claims are directed to the
same invention.” Ans. 9. In particular, the Examiner provides multiple
charts to show how “certain instant claims correspond to more than one
claim of the ’749 patent.” Ans. 9–28.
However, the Examiner provides no reasons in support of the
obviousness-type double patenting analysis. The charts merely compare
claim limitations with (1) no identification of the differences and (2) no
discussion of why the claims at issue in this application are obvious over the
claims of the ’749 patent. As recognized by Appellant,
The chart provides none of the analysis required for a double
patenting rejection. Rather the claim limitations are simply
recited from each patent. In many cases, the recitations do not
have a one-to-one correspondence and no explanation as to the
significance of the differences is provided. However, more
importantly, each chart establishes that there are differences
between the identified claim of the instant application and the
identified claims of the '749 patent.

Reply Br. 20 (emphasis added).
As discussed in connection with the Examiner’s obviousness-type
double patenting rejections of claims 30–102 and 104–171 over claims 53–
56 of the ’277 patent, “[n]either claim 1 of the ’749 Patent nor any of claims
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2–33, 35–50, and 52–55 of the ’749 set forth [for example] a selective
transfer device as set forth by claim 30.” App. Br. 79; Reply Br. 20–21.
Nor has the Examiner articulated sufficient reasoning regarding whether one
of ordinary skill in the art would have considered features recited in
Appellant’s claims 30–102 and 104–171 obvious over the conflicting claims,
i.e., “claims 1–33, 35–50, and 52–55 of the ’749 Patent anticipate or render
obvious claim 30.” App. Br. 79. The mere charts listing claim language, as
recognized by Appellant, can only establish “that there are differences
between the identified claim of the instant application and the identified
claims of the ’749 patent,” but is not an analysis sufficient to support a
double patenting rejection. Reply Br. 20.
Claims 44, 45, 66, 75, 76, 80, 81, 88, 89, 92, 101, 107, 108, 109, and
110 recite limitations describing different embodiments and having different
scopes of coverage. App. Br. 211–265. However, the Examiner has not
explained (1) the differences between these claims relative to the claims of
the ’749 patent, or (2) whether those differences would have rendered the
claims obvious relative to the claims of the ’749 patent.
Because the Examiner has not established that the claimed method
would have been obvious to one of ordinary skill in the art based on the
identified claims of the ’749 patent, we are also constrained not to sustain
the Examiner’s obviousness-type double patenting rejections of claims 1, 2,
26, and 28 of the ’749 patent.

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B. Patent Eligibility:
(Claims 30–102 and 104–171)
In support of the § 101 rejection of claims 30–102 and 104–171, the
Examiner determines that “these claims are directed to the abstract idea of
providing requested programming to a user” that “is similar to concepts that
have been identified as abstract by the courts.” Final Act. 11 (citing [1] TLI
Communications LLC v. A. V. Automotive, LLC (Fed. Cir. May 12, 2016)
(holding that the claimed invention of classifying and storing digital images
in an organized manner by attaching classification data, such as dates and
times, to images was an abstract idea); [2] Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) (holding that
customizing web page content as a function of navigation history and
information known about the user was an abstract idea); and [3] Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015)
(holding that the claimed invention of retaining information in the
navigation of online forms was an abstract idea)).
The Examiner also finds claims 30–102 and 104–171 patent-ineligible
because these claims are similar to those in Appellant’s earlier issued US
Patent 7,805,749 (“the ’749 patent), which “were recently found to be
patent-ineligible by the District Court for the District of Delaware on August
10, 2015, in Personalized Media Communications, LLC v. Amazon.com,
Inc., Amazon Web Services, LLC,” No. 1:2013cv01608 - Document 148 (D.
Del. 2015) because “[t]he ’749 patent claims the abstract idea of promoting
programming and lacks an inventive concept.” App. Br. 12–13.
The Examiner then determines “the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
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exception because the limitations, which are recited at a high level of
generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea.” Final Act. 11.
Legal Framework
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court has emphasized that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede the
same. Accordingly, laws of nature, natural phenomena, and abstract ideas,
are not patent-eligible subject matter. Thales Visionix Inc. v. United States,
850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court has set forth a two-part Alice/Mayo test for
subject matter eligibility in Alice (573 U.S. at 217–18). The first step is to
determine whether the claim is directed to a patent-ineligible concept. Id.
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(citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis
proceeds to the second step of the Alice/Mayo test in which we “examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted) (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to
the second step, however, if the first step of the Alice/Mayo test yields a
determination that the claim is directed to patent-eligible subject matter.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a framework for all patent-eligibility analysis
under Alice and § 101 effective as of January 7, 2019. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Revised Guidance”) and October 2019 Patent Eligibility
Guidance Update (October 2019 Update), as currently reflected in the
Manual of Patent Examination Procedure (MPEP) §§ 2103, 2104, 2105,
2106 and 2106.03 through 2106.07(c).
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2019 Revised Guidance
Under the 2019 Revised Guidance, we first look under Alice step 1 or
“Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion), or [iii] certain methods of organizing human activity
such as a fundamental economic practice or managing
personal behavior or relationships or interactions between
people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).12
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.

12 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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See 2019 Revised Guidance, 84 Fed. Reg. at 56.
At the outset, we note the District Court’s decision regarding the
claims in the ’749 patent in Personalized Media Communications, LLC v.
Amazon.com, Inc., Amazon Web Services, LLC” No. 1:2013cv01608 -
Document 148 (D. Del. 2015) is not binding legal authority on the Board.
Reply Br. 24–26. Instead, we review patent eligibility under § 101 de novo
in comport with the 2019 Revised Guidance discussed below.
USPTO Step 1–Categories of Invention
Under the 2019 Revised Guidance, we determine independent claims
30, 98, 105, and 154 recite an “apparatus” and independent claims 31, 44,
46, 53, 54, 83, 92, 105, 107, 121, 122, 132, 155, and 156 recite a “method,”
which are a form of “process” and “machine,” respectively, thereby falling
within one of the categories enumerated under § 101 and satisfying Step 1 of
the Revised Guidance.
Alice/Mayo—Step 1 (Abstract Idea)
USPTO Step 2A–Prongs 1 and 2

USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
We proceed to apply Step 2A, Prong 1 of the Revised Guidance to
determine if the claims recite a judicial exception including (a) mathematical
concepts; (b) certain methods of organizing human activity such as a
fundamental economic practice; and (c) mental processes. 2019 Revised
Guidance, 84 Fed. Reg. at 51–52.
Here, the Examiner determines that “these claims are directed to the
abstract idea of providing requested programming to a user” that “is similar
to concepts that have been identified as abstract by the courts.” Final Act.
11 (citing [1] TLI Communications LLC v. A. V. Automotive, LLC (Fed. Cir.
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May 12, 2016) (holding that the claimed invention of classifying and storing
digital images in an organized manner by attaching classification data, such
as dates and times, to images was an abstract idea); [2] Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) (holding
that customizing web page content as a function of navigation history and
information known about the user was an abstract idea); and [3] Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015)
(holding that the claimed invention of retaining information in the
navigation of online forms was an abstract idea)).
We are not persuaded by the Examiner’s findings, as we are unable to
agree that the Examiner has adequately found the concept of claims 30, 31,
44, 46, 53, 54, 64, 83, 92, 98, 105, 107, 121, 122, 132, 154, 155, and 156 to
be similar to other concepts (e.g., data classification and storage as discussed
in TLI Communications LLC, data customization as discussed in Intellectual
Ventures I LLC, and data retention for online navigation as discussed in
Internet Patents Corp) found to be abstract ideas by our reviewing courts.
See Appeal Br. 109–115; Reply Br. 26–30.
Appellant’s claim 30 recites an apparatus for promoting and
selectively delivering programming at a receiver station comprising: (1) “a
first receiver section that receives a promotional video program at said
receiver station,” (2) “output apparatus including a plurality of output
components for outputting programming,” (3) “programmable processor
apparatus operatively functional at said receiver station to receive a signal
that designates said programming;” (4) “a second receiver section . . . to
receive a viewer response”, (5) “a storage device . . . to store said viewer
response,” (6) “a third receiver section that receives said promoted
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programming at said receiver station;” and (7) “a selective transfer device at
said receiver station, that . . . selectively transfers said promoted
programming from said third receiver section to a selected output
component of said plurality of output components of said output apparatus.”
Similarly, claim 105 recites a similar apparatus for promoting and
selectively delivering programming at a receiver station provided with a
different scope of coverage. Claims 98 and 154 recite an “interactive
receiver station apparatus” at a receiver station to accept and store user input
in response to a promotional video programing and selectively authorizing
delivery of a service at the receiver station. Independent claims 31, 44, 46,
53, 54, 83, 92, 105, 107, 121, 122, 132, 155, and 156 recite corresponding
methods for programming promotion and selective delivery for use with an
interactive viewing apparatus.
As the Specification explains, the claimed invention provide:
an integrated system of methods and apparatus for
communicating programming [i.e., everything that is transmitted
electronically to entertain, instruct or inform, including
television, radio, broadcast print, and computer programming as
well as combined medium programming] . . . [and] includes
capacity for automatically organizing multi-channel
communications . . . transmitting to standardized programming
that is very simple for subscribers to play and understand . . .
[and] transmitting data and control instructions in the same
information stream to many different apparatus at a given
subscriber station, for causing computers to generate and
transmit programming, and for causing receiver apparatus to
operate on the basis of programming and information received at
widely separated times.

Spec. 11:5–22. According to Appellant’s Specification:
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a simplex broadcast transmission can cause periodic combining
of relevant user specific information and conventional broadcast
programming simultaneously at a plurality of subscriber stations,
thereby integrating the broadcast information with each user’s
own information. One advantage of the present invention is its
use of powerful communication media such as television to
reveal the meaning of the results of complex processing in ways
that appear clear and simple. Another advantage is that receiver
stations that lack said capacity for combining user specific
information into television or radio programming can continue,
without modification, to receive and display the conventional
television or radio and without the appearance of any signals or
change in the conventional programming.

Spec. 12:4–14; see Figs. 1–8.
Based on our review of Appellant’s claim 30 (and similarly claims 31,
44, 46, 53, 54, 64, 83, 92, 98, 105, 107, 121, 122, 132, 154, 155, and 156)
and Appellant’s Specification, the claim 30 limitations recite an integrated
system of methods and apparatus for communicating programming describes
subject matter that is not (1) a mathematical concept, (2) a certain method of
organizing human activity, or (3) a mental process (i.e., one of the three
types of abstract ideas identified by the Revised Guidance). Instead,
Appellant’s inventions as defined in claims 30, 31, 44, 46, 53, 54, 64, 83, 92,
98, 105, 107, 121, 122, 132, 154, 155, and 156 disclose concrete
technological applications and fall within patent law’s traditional bailiwick
of the scientific, technological, and industrial arts.” Alice, 134 S. Ct. 2347
(quoting Bilski v. Kappos, 561 U.S. 593, 605 (2010)).
Thus, claim 30 (and similarly claims 31, 44, 46, 53, 54, 64, 83, 92, 98,
105, 107, 121, 122, 132, 154, 155, and 156) is eligible because it does not
recite a judicial exception.
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USPTO Step 2A—Prong 2 (Integration into Practical Application)
Even if Appellant’s claims were considered to recite an abstract idea,
we determine that these claims integrate an abstract idea into a practical
application under the second Prong of Step 2A. See 2019 Revised
Guidance, 84 Fed. Reg. at 54–55. “[I]ntegration into a practical application”
requires an additional element or a combination of additional elements in the
claim to apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the exception. See PTO
§ 101 Memorandum, 84 Fed. Reg. at 53–55.
For example, limitations that are indicative of “integration into a
practical application” include:
1) Improvements to the functioning of a computer, or to any other
technology or technical field – see MPEP 2106.05(a);
2) Applying the judicial exception with, or by use of, a particular
machine – see MPEP 2106.05(b);
3) Effecting a transformation or reduction of a particular article to a
different state or thing – see MPEP 2106.05(c); and
4) Applying or using the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a
particular technological environment, such that the claim as a whole
is more than a drafting effort designed to monopolize the exception
– see MPEP 2106.05(e).

See Revised Guidance, 84 Fed. Reg. at 54–55.
The Federal Circuit (1) has interpreted Alice step 1 as asking “whether
the claims are directed to an improvement to computer functionality versus
being directed to an abstract idea” (Enfish, 822 F.3d at 1335), and (2) has
also “emphasized that the key question is ‘whether the focus of the claims is
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on the specific asserted improvement in computer capabilities.” Visual
Memory, 867 F.3d at 1258.
For example, in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257–58 (Fed. Cir. 2014), the Federal Circuit held that DDR’s claims
are patent-eligible because their claims improve technology and provide a
technical solution to a technical problem unique to the Internet, i.e., a
“solution [] necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer networks.” DDR,
773 F.3d at 1257. In Enfish, the Federal Circuit held that Enfish’s claims are
patent-eligible because these claims provide “a specific improvement to the
way the computers operate, embodied in the self-reference table,” i.e., “an
improvement of an existing technology [that] is bolstered by the
specification’s teachings that the claimed invention achieves other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirement.” Enfish, 822 F.3d at 1335. In
Thales, the Federal Circuit held that Thales’s claims are patent-eligible
because these claims “use inertial sensors in a non-conventional manner to
reduce errors in measuring the relative position and orientation of a moving
object on a moving reference frame.” Thales, 850 F.3d at 1349. Similarly,
in Visual Memory, the Federal Circuit held that Visual Memory’s claims are
also patent-eligible because these claims are directed to “a technological
improvement: an enhanced computer memory system.” Visual Memory, 867
F.3d at 1259.
Here, Appellant’s claims’ additional elements integrate an abstract
idea of “providing requested programming to a user” into a practical
application because these claims provide an improvement in
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communication, transmission, and integrated circuit technologies and are
rooted in computer and integrated circuit technologies at both transmission
and reception stations of a communication system, similarly to DDR
Holdings, Enfish, Thales, and Visual Memory.
Because claims 30, 31, 44, 46, 53, 54, 64, 83, 92, 98, 105, 107, 121,
122, 132, 154, 155, and 156 integrate the judicial exception into a practical
application, we find Appellant’s claims 30–102 and 104–171 are not
directed to a judicial exception (abstract idea), but are rather directed to
patent-eligible subject matter under § 101. Accordingly, we need not
address Step 2B of the Revised Guidance (corresponding to step two of the
Alice/Mayo test).
For these reasons, we do not sustain the Examiner’s rejection of
claims 30–102 and 104–171 as directed to non-statutory subject matter
under 35 U.S.C. § 101.

C. Written Description:
(Claims 35, 48, 57–58, 69, 83–99, 101, 102, 104, 107–120, 132–167, 169,
and 171)
Claims 35, 48, 57–58, 69, 99, 101, and 102
Claim 37 depends from independent claim 31, and further recites:
“wherein evidence information evidences at least one of [2] the
availability and [2] use of said second portion of said mass
medium programming, said evidence information being at least
one of stored and communicated to a remote data collection
station, said method further comprising the step of selecting said
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evidence information that at least one of identifies and designates
at least one of:
(1) a mass medium program;
(2) a use of data;
(3) a transmission station;
(4) a network;
(5) a broadcast station;
(6) a channel on a cable system;
(7) a time of transmission;
(8) a unique identifier datum;
(9) a source of data;
(10) a supplier of data;
(11) a distributor; and
(12) an advertisement.”

App. Br. 214 (bracketing added). Claim 48 depends from independent claim
46 and recites the same limitations. Claims 57–58 depend from independent
claim 54 and recite similar limitations. Claim 69 depends from independent
claim 64 and recites the same limitations. Claims 99 and 101–102 depend
from independent claim 64 and recite similar limitations.
In support of the lack of “written description” rejection of claim 35
(and similarly, claims 48, 57–58, 69, 99, and 101–101), the Examiner relies
on the 1981 Specification (the ’490 patent) for alleged lack of “written
description” support (Final Act. 2) and finds “[t]here is no indication [from
the 1981 Specification (the ’490 patent)] that this evidence information is
gathered as part of the Julie [sic, Julia] Child example” and “the references
[sic, referenced] portions of the ‘’490 patent do not state that evidence
information identifies and designates one, some, or all of the 12 items listed
in claim 35. Final Act. 22; Ans. 40.
We do not agree. At the outset, we note the instant application is a
continuation of U.S. Pat. App. No. 08/113,329, filed August 30, 1993 (now
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U.S. Pat. No. 7,856,650), which is a continuation of U.S. Pat. App. No
08/056,501, filed May 3, 1993 (now U.S. Pat. No. 5,335,277), which is a
continuation of U.S. Pat. App. No. 07/849,226, filed March 10, 1992 (now
U.S. Pat. No. 5,233,654), which is a continuation of U.S. Pat. App. No.
07/588,126, filed September 25, 1990 (now U.S. Pat. No. 5,109,414), which
is a continuation of U.S. Pat. App. No. 07/096,096, filed September 11, 1987
(now U.S. Pat. No. 4,965,825), which is a continuation-in-part of U.S. Pat.
App. No. 06/829,531, filed February 14, 1986 (now U.S. Pat. No.
4,704,725), which is a continuation of U.S. Pat. App. No. 06/317,510, filed
November 3, 1981 (now U.S. Pat. No. 4,694,490).
For purposes of “written description” under pre-AIA 35 U.S.C. § 112,
first paragraph, the dispositive Specification for this application is either the
current Specification or the disclosure of U.S. Pat. No. 4,965,82513 (“the
’825 patent”) filed on September 11, 1987, and not “the 1981 Specification
(the ’490 patent)” as relied upon by the Examiner. However, the claims in
this application are entitled to priority under 35 U.S.C. § 120 to the filing
date of November 3, 1981.
Turning now to the “written description” requirement under pre-AIA
35 U.S.C. § 112, first paragraph, satisfaction of that requirement is a
question of fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
[T]he hallmark of written description is disclosure . . . the test
requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in

13 For purposes of “written description” support, the current Specification
for this application and the disclosure of the ’825 patent are considered the
same and interchangeable.
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the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.

Id. at 1351 (emphasis added). The disclosure must “reasonably convey[ ] to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. “[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.” Id. Regardless, the disclosure must convey with
reasonable clarity to those skilled in the art that the inventor was in
possession of the invention. Id. at 1563–1564.
Here, the current Specification and the disclosure of the ’825 patent
support Appellant’s contention that:
(1) “receiver stations may be informed of the programming content so that
the appropriate local equipment may be activated and the programming
content used as desired by the subscriber. For example, the
programming content may be recorded for later viewing, printed, used
to preprogram local equipment;”

(2) “monitoring user’s patterns of content consumption, use, and even
piracy is of interest. As such, when the French Chef example records
use and billing information, any and all of the ‘evidence information’
may be reasonably recorded so that content, service, and product
providers may gather statistics on consumer patterns;”

(3) “monitoring techniques to develop data on patterns of viewership and
to permit the determination of specific usage at individual receiving
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sites for various purposes including, for example, the billing of
individual customers;” and

(4) “[a]dditional support is available . . . in the instant specification at
472:13–27, 473:28–474:8, 476:14–478:5.”

Reply Br. 101–102.
In particular, Appellant’s current Specification teaches (1) meter-
monitor segments, shown in Figure 2F, contain meter information and/or
monitor information including origins of transmissions (e.g., network source
stations, broadcast stations, cable head end stations, dates and times) (Spec.
49:26–28, 50:1–4), and (2) program-unit-of-interest information
preprogrammed at microcomputer 205 at receiver station, shown in Figures
7 and 7C, including particular specific information that reflects the wish of a
subscriber (user) of said station to review the “Wall Street Week” program
when such a program is transmitted (Spec. 428:21–26).
The cited portions of Appellant’s Specification teaches a receiver
station, shown in Figures 6F–6G and 7, provided with a subset of hardware
and capabilities; including (1) instructing and executing instructions (i.e.,
evidence information) embedded in the transmission to enable a user to
record meter information (for billing and statistics) and (2) generate
information relating to specific programming, for example, the “Exotic
Meals of India.” Spec. 472:13–27, 473:28–474:8, 476:14–478:5.
We recognize that Appellant’s Specification does not provide
verbatim support of the entire list of items specified by the “evidence
information.” However, “the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.”
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
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In some cases, “drawings alone may provide a ‘written description’ of an
invention as required by § 112.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1565 (Fed. Cir. 1991). Based on Appellant’s Specification and
drawings (including Figures 6F–6G and 7), we agree with Appellant that
“one of ordinary skill in the art would readily understand that, for example,
evidence information evidences at least one of (1) the availability and (2)
use of said programming, and includes at least one of the items recited in
claim 35 (and similarly, claims 48, 57–58, 69, 99, and 101–101). Reply Br.
101–102.
Because Appellant has “reasonably convey[ed] to those skilled in the
art that the inventor had possession of the claimed subject matter as of the
filing date,” we do not sustain the Examiner’s § 112, first paragraph
rejection of claims 35, 48, 57–58, 69, 99, and 101–101 for failure to comply
with the “written description” requirement.
Claims 83–91
Claim 83 recites
a method of selectively delivering programming at a receiver
station, said receiver station having programmable processor
apparatus, output apparatus including an image display device,
said output apparatus having a plurality of output locations, an
input device for inputting user information, storage apparatus for
storing data and programming, said storage apparatus having a
plurality of storage locations, a transmitter for communicating
user information to a remote station, selective transfer apparatus
operatively connected to said output apparatus, said input device,
said storage apparatus, said transmitter and said programmable
processor apparatus, comprising, inter alia:
“routing, with said selective transfer apparatus under control of
said programmable processor apparatus, said further
programming from said specific storage location of said plurality
of storage locations at said storage apparatus to said selected
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specific output location of said plurality of output locations at
said output apparatus at said receiver station; and

outputting, at said selected specific output location of said
plurality of output locations at said output apparatus based on
said subscriber order, said further programming to a subscriber
based on said step of routing said further programming.”

App. Br. 236–237 (emphasis added).
The Examiner also relies on the 1981 Specification (the ’490 patent)
for the alleged lack of “written description” support of claims 83–91. Final
Act. 96–97. In particular, the Examiner finds the 1981 Specification (the
’490 patent) does not provide written description support for the “selective
transfer apparatus,” recited in claim 83. Ans. 48.
We do not agree. As previously discussed, the dispositive
Specification for this application is either the current Specification or the
disclosure of the ’825 patent filed on September 11, 1987, and not the ’490
patent as relied upon by the Examiner. More importantly, Appellant’s
Specification (current Specification and the ’825 patent) teaches (1) the use
of matrix switch 258, shown in Figure 7, to serve as Appellant’s claimed
“selective transfer apparatus” to switch or route information received at the
cable box 222 is routed to printer 221 by the signal processor 200, and not
routed, for example, to the TV set; (2) the pathway from cable box 222 to
printer 251, controlled by signal processor 200, via matrix switch 258, as
recognized by Appellant. Reply Br. 112 (citing Figures 6D–6J, 7 and 7F).
Figure 7 is reproduced below:
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Figure 1 is a block diagram of signal processing apparatus and methods at an
ultimate receiver station, including matrix switch 258 acting as Appellant’s
claimed “selective transfer apparatus.”

For these reasons, we do not sustain the Examiner’s § 112, first
paragraph rejection of claims 83–91 for failure to comply with the “written
description” requirement.
Claims 92–97
Claim 92 recites, inter alia:
“locating information with said programmable processor based
on said step of controlling said programmable processor
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apparatus, said located information to serve as a basis for
outputting said additional material.”

App. Br. 240.
The Examiner finds the 1981 Specification (the ’490 patent) does not
provide written description support for the recitation “located information”
recited in claim 92. Ans. 51.
Appellant argues (1) “[t]he information in the French Chef example
[as disclosed in the ’490 patent] is the digital information that controls the
printer to print the recipe” and (2) “[a]n alternate method for transmitting the
recipe to printer, 221, would be for the recipe, itself, to be located in
encoded digital form in the programming transmission received by TV set,
202.” Reply Br. 117 (citing ’490 patent, 20:11–68).
We do not find Appellant’s argument helpful because the dispositive
Specification for this application is either the current Specification or the
disclosure of the ’825 patent filed on September 11, 1987, and not the ’490
patent as relied upon by the Examiner. Nevertheless, we recognize that
Appellant’s current Specification also teaches the “Exotic Meals of India”
example that mirrors and expanded the “French Chef” example in the ’490
patent, including information located in encoded signal form in the
programming transmission. Spec. 471:26–474:35, 476L34–478:5.
For these reasons, we do not sustain the Examiner’s § 112, first
paragraph rejection of claims 92–97 for failure to comply with the “written
description” requirement.
Claims 98 and 169
Claim 98 recites “an interactive receiver station apparatus for
accepting and storing user input in response to promotional video
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programming and selectively authorizing delivery of a product at a receiver
station, said receiver station apparatus comprising, inter alia:
“first receiver that receives a video signal, said video signal
including [1] said promotional video programming and [2] a first
instruction, said promotional video programming promoting said
product.”

App. Br. 242 (bracketing added).
The Examiner finds “nothing in the instant specification which
defines the entire video signal as a single signal.” Ans. 43.
We do not agree. As recognized by Appellant, (1) the video signal is
nothing more than the incoming programming received at receiver station
shown in Figures 6F–6G, 7 and 7C; and (2) that video signal includes the
promotional video programming (i.e., part of the French Chef program
where the host promotes the recipe) and a first instruction (i.e., the signal
that is identified in programming five minutes after the host provides the
message). Reply Br. 118.
For this reason, we do not sustain the Examiner’s § 112, first
paragraph rejection of claim 98 for failure to comply with the “written
description” requirement. We also do not sustain the Examiner’s rejection
of dependent claim 169 for the same reasons.
Claims 107–120
Claim 107 recites, inter alia:
“receiving [1] first mass medium programming in a first
programming signal, said first mass medium programming
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including information that promotes second mass medium
programming;

displaying said information, said interactive video viewing
apparatus having an input device to receive input from a user;

prompting said user for a reply, during said step of displaying
said information, as to whether said user wants [2] said second
mass medium programming promoted in said step of displaying
said information . . .
. . .
receiving said second mass medium programming in a second
programming signal . . . and

selectively delivering said second mass medium programming to
an output device, said programmable processor apparatus
controlling delivery of said second mass medium programming
in response to said step of processing said reply.”

App. Br. 245–246 (bracketing added).
The Examiner finds the 1981 Specification (the ’490 patent) does not
provide written description support for the “selecting delivering” step of
claim 107. Ans. 56. The Examiner also questions how “selectively
delivering said second mass medium programing to an output device, said
programmable processor apparatus controlling delivery of said second mass
medium programming in response to said step of processing said reply” is
interpreted when “the claim has already selected the second mass medium
that will be delivered in a previous claim element.” Ans. 56–57.
We do not agree. As recognized by Appellant, “there is no ‘already
selected [] second mass medium.” Reply Br. 122. Appellant’s Specification
(current Specification and the ’825 patent) teaches the use of cable converter
boxes 201, 222, shown in Figures 6C–6D, and 6F–6G, assembled as shown
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in Figure 6J to receive CATV signals so that “said second mass medium
programming” is selected from one of these converter boxes 201, 222.
For this reason, we do not sustain the Examiner’s § 112, first
paragraph rejection of claims 107–120 for failure to comply with the
“written description” requirement.
Claims 104, 132–154, and 171
Claim 132 recites, inter alia:
“receiving, at said receiver apparatus at said interactive video
viewing apparatus, video programming in a first programming
signal, said video programming promoting said service;

displaying, at said output apparatus of said interactive video
viewing apparatus, said video programming that promotes said
service . . .”

App. Br. 255–256. In other words, claim 32 includes the promoting and
delivery of a service. Claim 104 depends from claim 132 and further recites
“wherein said service is printing.” Claim 132–154, and 171 recite similar
limitations.
The Examiner acknowledges Appellant’s Specification describes the
“printed recipe” in the context of the “French Chef” example, but
nevertheless finds “the specification fails to describe the full scope of the
‘service’ as recited in claim 132. Ans. 60–61.
We do not agree. As recognized by Appellant, the “service” recited in
claim 132 refers to “the printing of a recipe” in the context of the “French
Chef” example as disclosed in Appellant’s Specification. Reply Br. 124–
125 (citing Spec. 471:6–10, 474:33–475:2).
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For this reason, we do not sustain the Examiner’s § 112, first
paragraph rejection of claims 104, 132–154, and 171 for failure to comply
with the “written description” requirement.
Claims 155–167
Claim 155 recites “a method for mass medium programming
promotion and selective delivery for use with an interactive video viewing
apparatus comprising:
“receiving first mass medium programming in a first
programming signal, said first mass medium programming
including information that promotes second mass medium
programing;
. . .
selectively delivering said second mass medium programing to
an output device, said programmable processor apparatus
controlling delivery of said second mass medium programming
based on said step of processing said reply.”

App. Br. 263–264 (emphasis added).
The Examiner finds “the specification does not provide description for
the claimed ‘selectively delivering’ step.” Ans. 68, 70.
We do not agree. Appellant’s Specification describes (1) how
programming is selected from many source devices, (2) Figure 6D shows
options for selecting programming for output such as multiple cable
converter boxes 201 and 222 and tuner 223 controlled by signal processor
200 and microcomputer 205 to select programming for output; and (3)
Figures 6F-G show signal processor 200 and microcomputer 205 controlling
matrix switches 258 to select programming for output from multiple source
devices for delivery at an output device. See Figures 6D, 6F–6G. As such,
we agree with Appellant that one of ordinary skill in the art would readily
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understand that these disputed limitations are set forth in the disclosure.
Reply Br. 131–132.
For these reasons, we do not sustain the Examiner’s § 112, first
paragraph rejection of claims 155–167 for failure to comply with the
“written description” requirement.
In summary, we do not sustain the Examiner’s rejection of claims 35,
48, 57–58, 69, 83–99, 101, 102, 104, 107–120, and 132–167 under pre-AIA
35 U.S.C. § 112, first paragraph, as lacking “written description.”

D. Indefiniteness:
(Claims 83–97, 101, 102, 107–120, 104, 132–167, and 171)
Claims 83–91
Claim 83 recites, inter alia:
“storing subscriber data at said storage apparatus at said receiver
station;

displaying image programming at said image display device at
said receiver station;

outputting an offer for further programming in the course of said
image programming, said offer promoting said further
programming . . .”

App. Br. 236–237.
The Examiner acknowledges the term “programing including
images,” but asserts “that does not constitute a definition of ‘image
programing.’” Ans. 49. As such, the Examiner finds the term “image
programming” unclear. Id.
We do not agree. Whether a claim is indefinite is an issue of claim
construction and a question of law. Cordis Corp. v. Boston Scientific Corp.,
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561, F.3d 1319, 1331 (Fed. Cir. 2009). “The legal standard for definiteness
is whether a claim reasonably apprises those of skill in the art of its scope.”
In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). The “inquiry
therefore is merely to determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). During
prosecution, we apply the approach for assessing indefiniteness approved by
the Federal Circuit in Packard, i.e., “[a] claim is indefinite when it contains
words or phrases whose meaning is unclear” or “if a claim is amenable to
two or more plausible claim constructions.” Ex parte McAward, Appeal
2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential
as to Section I.B) (citing In re Packard, 751 F.3d 1307, 1310 (Fed. Cir.
2014); Ex parte Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
Here, we are not persuaded that the term “image programming” is
unclear and is amenable to multiple claim constructions. As explained by
Appellant, “an image may be defined as a visual representation of
something: such as a picture produced on an electronic display.” Reply Br.
137. According to Appellant’s Specification, examples of programming
may include audio, video, printed material, computer programs. As such,
we agree with Appellant that one or ordinary skill in the art would readily
understand that image programming includes television programming and
programming including a single still image. App. Br. 164–165.
Based on this record, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s § 112, second paragraph
rejection of claims 83–91.
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Claims 101 and 102
Claim 101 depends from claim 64 and further recites “wherein said
product is delivered locally to said user.” Claim 102 depends from claim
101 and recites the same limitation.
The Examiner acknowledges the “French Chef” delivery example set
forth in Appellant’s Specification discusses “the ordering of grocery
ingredients,” but nevertheless finds the scope of the phrase “product []
delivered locally to said user” unclear. Ans. 47.
We do not agree. During prosecution, claim terms are given their
broadest reasonable interpretation consistent with the specification. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). Under
the rule of broadest reasonable interpretation, claim terms are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, “the broadest-
construction rubric . . . does not give the PTO an unfettered license to
interpret claims to embrace anything remotely related to the claimed
invention,” but “[r]ather, claims should always be read in light of the
specification and teachings in the underlying patent application.” In re
Suitco Surface Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (citing Schriber-
Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims
of a patent are always to be read or interpreted in light of its
specifications.”)).
The plain language of Appellant’s claims 101 and 102 requires that:
(1) “product is delivered locally to said user,” and (2) such a delivery would
encompass (a) the ordering and delivery of, for example, grocery ingredients
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or recipe to the user’s home if the user receiver station is at the user’s home,
set forth in Appellant’s Specification, or alternatively, (b) music and video
content and ownership interest, such as stocks.
In light of the plain meaning of Appellant’s claims 101 and 102 and
Appellant’s Specification, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s § 112, second paragraph
rejection of claims 101 and 102.
Claims 92–97
Claim 92 recites, inter alia:
“locating information with said programmable processor based
on said step of controlling said programmable processor
apparatus, said located information to serve as a basis for
outputting said additional material . . .”

App. Br. 240 (emphasis added).
Claim 96 depends from claim 92, and further recites “controlling a
tuner to tune to receive said located information on the basis of said user
reply.” App. Br. 242 (emphasis added).
The Examiner finds the term “located information” is unclear and
questions “what is meant by the located information?” Ans. 51–52.
We do not agree. As explained by Appellant, “information is located
in incoming programming by analyzing identifier signals,” for example, “the
recipe in the French Chef example is located on a particular channel and
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processed for printing.” Reply Br. 138 (citing ’490 patent, 19:12–28, 2011–
68).14
For this reason, we are persuaded of Examiner error. Accordingly, we
do not sustain the Examiner’s § 112, second paragraph rejection of claims
92–97.
Claims 107–120 and 155–167
Claim 107 recites, inter alia: “selectively delivering said second mass
medium programming to an output device, said programmable processor
apparatus controlling delivery of said second mass medium programming in
response to said step of processing said reply.” App. Br. 245–246 (emphasis
added). Claims 155–167 recites similar limitations.
The Examiner finds the term “selectively delivering” step “is unclear
and is not described in the specification.” Ans. 57, 71.
We do not agree. First, the alleged lack of “written description”
support is not the basis for “indefiniteness” under 35 U.S.C. § 112, second
paragraph. Second, one skilled in the art would understand the plain
meaning of the “selectively delivery” step recited in claim 107 in light of
Appellant’s Specification, including: (1) Figure 6D which shows options for
selecting programming for output such as multiple cable converter boxes
201 and 222 and tuner 223 controlled by signal processor 200 and
microcomputer 205 to select programming for output; and (2) Figures 6F-G
which show signal processor 200 and microcomputer 205 controlling matrix

14 For purposes of 35 U.S.C. § 112, second paragraph, the current
Specification and all earlier issued patents, including the ’490 patent can be
used to determine the meaning and the metes and bounds of the term
“located information.”.
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switches 258 to select programming for output from multiple source devices
for delivery at an output device. See Figures 6D, 6F–6G.
For these reasons, we are persuaded of Examiner error. Accordingly,
we do not sustain the Examiner’s § 112, second paragraph rejection of
claims 107–120 and 155–167.
Claims 104, 132–154, and 171
Claim 132 recites, inter alia: the promoting and delivery of a service.
Claim 104 depends from claim 132 and further recites “wherein said service
is printing.” Claim 132–154 recite similar limitations.
The Examiner finds the term “service” is unclear because “the
specification provides no definition of ‘service’ as recited in the claim.”
Ans. 61.
We do not agree. “Breadth of a claim is not to be equated with
indefiniteness.” In re Miller, 441 F.2d 689 (CCPA 1971); In re Gardner,
427 F.2d 786 (CCPA 1970). Contrary to the Examiner’s finding, the term
“service” can be understood by those skilled in the art to mean different
types of services available in the context of Appellant’s disclosure, including
“printing the recipe [in the French Chef example],” as disclosed in
Appellant’s Specification. Reply Br. 141–142; see also Spec. 471:6–10,
474:33–475:2.
For these reasons, we do not sustain the Examiner’s § 112, second
paragraph rejection of claims 104, 132–154, and 171.
In summary, we do not sustain the Examiner’s rejection of claims 83–
97, 101, 102, 104, 107–120, 132–167, and 171 under pre-AIA 35 U.S.C. §
112, second paragraph, as being indefinite.

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E. 35 U.S.C. §§ 102(b) and 103(a) Rejections Based on Callais:
(Claims 30–102 and 104–171)
Claims 30, 46, 53, 54, 64, 83, 92, 98, 105, 107, 121, 122, 132, 154,
155, and 156 are independent. Each independent claim and its dependent
claims have been rejected as a separate group (for example, (i) claim 98; (ii)
claims 30–102 and 104–171; (iii) claims 33, 109, and 158; (iv) claims 44–
45; (v) claims 63, 104, and 153; (vi) claims 99, 102, and 150; (vii) claims
160 and 161; (viii) claim 162; (ix) claims 169 and 170; and (x) claim 171)
and will be addressed separately below:
Claim 98 under 35 U.S.C. § 102(b)
Claim 98 recites “an interactive receiver station apparatus for
accepting and storing user input in response to promotional video
programming and selectively authorizing delivery of a product at a receiver
station, said receiver station apparatus comprising:
a first receiver that receives a video signal, said video signal
including [1] said promotional video programming and [2] a first
instruction, said promotional video programming promoting said
product;

a display operatively connected to said first receiver, said display
outputting said promotional video programming promoting said
product;

a second receiver that receives said user input, said user input
entered at said interactive receiver station in response to content
of said promotional video programming promoting said product;

a memory operatively connected to said second receiver that
stores said user input;

a product delivery device;

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transmitter apparatus; and

[3] programmable processor apparatus operatively connected to
said first receiver, said second receiver, said memory, said
product delivery device and said transmitter apparatus, said
programmable processor apparatus programmed to respond to
said first instruction and said user input, said programmable
processor apparatus processing information contained in said
first instruction and said stored user input to authorize delivery
of said product, said programmable processor apparatus
selecting information that evidences 1) an order placed by a local
user and 2) an identification of said product based on processing
information contained in said first instruction and said stored
user input, said programmable processor apparatus causing said
transmitter apparatus to transmit to a remote data collection
station said information that evidences 1) an order placed by a
local user and 2) an identification of said product based on
processing information contained in said first instruction and
said stored user input; said programmable processor apparatus
controlling said product delivery device to provide to said local
user said product in response to processing information
contained in said first instruction and said stored user input to
authorize delivery of said product.”

App. Br. 242–243 (bracketing and emphasis added).
In essence, claim 98 is an interactive video receiver station apparatus
for accepting and storing user input in response to a promotional video
programming, said receiver station apparatus acting upon said stored user
input to authorize delivery of a product at a receiver station.
The Examiner finds Callais discloses the disputed limitations in the
context of a pay TV request signal generated by control circuit 31, shown in
Figure 1, and applied to an upstream command formatter and transmitter
unit 45 to which is also applied the channel code from the channel selector
switch 35 where:
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“[t]he formatter and transmitter unit 45 combines the pay TV
request signal and channel code with an internally generated
station address code. This combination of signals is then
modulated onto the preselected upstream carrier frequency. This
upstream carrier is applied through the filter and combiner unit
23 and transmitted upstream through the cable drop line 21, the
distribution network 20 and the main trunk line 18 to the LPC 16
where it is processed by the computer 17.”

Final Act. 121–122 (citing Callais 5:21–35).
Callais describes a cable television control system, shown in Figure 1,
“for controlling CATV program viewing in a plurality of modes of
operations.” Callais’s Abstract. According to Callais, these modes of
operations include (1) a first mode of operation “to allow a subscriber to . . .
view at least one subscription TV program . . . without charge”; (2) a second
mode of operation to allow the subscriber to receive a selected restricted
program; (3) a third mode of operation to allow the subscriber to receive a
non-restricted program; and (4) a fourth mode of operation to allow the
subscriber to receive a free program. Callais 3:10–29. In other words,
Callais’s system permits programming to be previewed without charge while
restricting programming from subscribers that have not purchased the
programming.

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Callais’s Figure 1 is reproduced below:

Callais’s Figure 1 shows a cable television control system including control
circuit 31 to control CATV program viewing in a plurality of modes of
operations.

Appellant argues Callais “merely discloses a preview period during
which a subscriber is allowed to see a TV program for a predetermined
length of time without charge,” but does not “teach promotional video
programming promoting a product,” as recited in Appellant’s claim 98.
App. Br. 174 (citing Callais 5:11–14). In addition, Appellant argues Callais
does not disclose any “programmable processor apparatus that controls a
product delivery device to provide to a local user a product in response to
processing information contained in a first instruction and stored user input
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to authorize delivery of said product” and, as such, does not disclose any
“processor apparatus that select an order or the identification of a product”
in the manner recited in claim 98. App. Br. 175. “Nor does Callais teach a
processor apparatus that causes a transmitter apparatus to transmit such
information.” Id.
In response, the Examiner takes the position that: (1) “control circuit
31 [shown in Callais’s Figure 1 is] providing the claimed programmable
processor apparatus” and “Appellant has not provided any argument as to
why the control circuit in Callais cannot teach the claimed programmable
processor apparatus”; and (2) “Appellant’s arguments fail to [] point[] out
how the language of the claims patentably distinguishes [sic] them from the
references [sic].” Ans. 54–55.
We do not agree with the Examiner. Anticipation under 35 U.S.C. §
102 is a question of fact. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
2001). A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). “The identical invention must be shown in as
complete detail as is contained in the . . . claim.” Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
Because the hallmark of anticipation is prior invention, the prior art
reference—in order to anticipate under 35 U.S.C. § 102—must not only
disclose all elements of the claim within the four comers of the document,
but must also disclose those elements “arranged as in the claim.” Net
Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The
Examiner bears the initial burden of presenting a prima facie case of
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unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A
prima facie case is established when the party with the burden of proof
points to evidence that is sufficient, if uncontroverted, to entitle it to prevail
as a matter of law. See Saab Cars USA, Inc. v. United States, 434 F.3d
1359, 1369 (Fed. Cir. 2006).
Here, that burden rests with the Examiner (not Appellant) to show
how Callais’s control circuit 31, shown in Figure 1, is able to perform the
functions recited in Appellant’s claimed “programmable processor
apparatus,” including:
(1) “processing information contained in said first instruction”
included in a “video signal” received along with promotional video
programming”;

(2) “selecting information that evidences [i][] an order placed by a
local user and [ii][] an identification of said product based on
processing information contained in said first instruction;

(3) “causing said transmitter apparatus to transmit to a remote data
collection station said information that evidences [i][] an order
placed by a local user and [ii][] an identification of said product
based on processing information contained in said first
instruction”; and

(4) “controlling said product delivery device to provide to said local
user said product in response to processing information contained
in said first instruction . . . to authorize delivery of said product.”

That burden has not been established in a manner enabling proper
review. We also agree with Appellant that Callais does not teach the
claimed “video signal including [1] said promotional video programming
and [2] a first instruction, said promotional video programming promoting
said product.” Reply Br. 40–43.
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Because Callais does not disclose the disputed limitations of claim 98,
we do not sustain the Examiner’s anticipation rejection of claim 98 under
35 U.S.C. § 102(b).
Claims 30–102 and 104–171 based on Callais and Campbell

Claim 30 recites an apparatus for promoting and selectively delivering
programming at a receiver station comprising:
“a first receiver section that receives a promotional video
program at said receiver station, said promotional video program
promoting said programming and including a request for a
viewer response to receive said promoted programming;

output apparatus including a plurality of output components for
outputting programming, one output component operatively
functional at said receiver station to display said promotional
video program;

programmable processor apparatus operatively functional at said
receiver station to receive a signal that designates said
programming;

a second receiver section operatively connected to said
programmable processor apparatus to receive a viewer response
to said request for a viewer response to receive said promoted
programming;

a storage device operatively connected to said programmable
processor apparatus to store said viewer response, said
programmable processor apparatus accessing said storage device
in response to said viewer response to at least one of control
reception of said promoted programming and control
presentation of said promoted programming;

a third receiver section that receives said promoted programming
at said receiver station; and

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a selective transfer device at said receiver station, that under
control of said programmable processor apparatus based on said
signal that designates programming, selectively transfers said
promoted programming from said third receiver section to a
selected output component of said plurality of output
components of said output apparatus.”

App. Br. 210–211 (Claims App.).

The Examiner finds Callais teaches most aspects of Appellant’s
claimed “apparatus for promoting and selectively delivering programming,”
including: (1) “first receiver section that receives a promotional video
program . . . promoting said programming and including a request for a
viewer response to receive said promoted programming” (Callais 4:9–11,
5:4–47, Fig. 1); (2) “output apparatus including a plurality of output
components for outputting programming” (Callais 5:4–47); (3)
“programmable processor apparatus . . . to receive a signal that designates
said programming” (Callais 4:9–11, 5:21–26, Fig. 1); (4) “second receiver
section . . . to receive a viewer response to said request for a viewer response
to receive said promoted programming” (Callais 5:21–26, Fig. 1); (5)
“storage device . . . to store said viewer response” (Callais 7:1–5, 10:27–32,
Fig. 2); (6) “programmable processor apparatus accessing said storage
device in response to said viewer response” (Callais 5:40–47, Fig. 1); (7)
“third receiver section that receives said promoted programming” (Callais
5:40–47, Fig. 1); and (8) “selective transfer device . . . selectively transfers
said promoted programming from said third receiver section to a selected
output component of said plurality of output components of said output
apparatus” (Callais 5:49–47, Fig. 1). Final Act. 16–18.
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The Examiner acknowledges Callais does not teach “promotional
video program including a request for a viewer response to receive said
promoted programming,” but relies on Campbell for teaching this feature in
the context of a user request to receive a pay-per-view program to support
the conclusion of obviousness. Final Act. 18–19 (citing Campbell 5:14–21).
We do not agree. Obviousness is a question of law based on
underlying factual findings, In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir.
2012), including what a reference teaches, In re Beattie, 974 F.2d 1309,
1311 (Fed. Cir. 1992), the existence of a reason to combine references, In re
Hyon, 679 F.3d 1363, 1365–66 (Fed. Cir. 2012), and whether the prior art
teaches away from the claimed invention, In re Mouttet, 686 F.3d 1322,
1330 (Fed. Cir. 2012).
As recognized by Appellant, “Claim 30 is directed to an apparatus for
promoting and selectively delivering programming at a receiver station”
including “receiving and displaying promotional video program promoting
programming,” but “[n]either Callais nor Campbell teach or suggest such a
promotional video program.” App. Br. 134. Instead, as previously
discussed, Callais only teaches a cable television control system, shown in
Figure 1, “for controlling CATV program viewing in a plurality of modes of
operations.” Callais’s Abstract. “There is no teaching in Campbell (or
Callais) of any promotional video program promoting programming and
including a request for a video viewer response.” App. Br. 134. Likewise,
“[t]here is no teaching of a viewer response to a request for the viewer
response to receive programming presented in a promotional video program
as set forth by Claim 30.” App. Br. 134–135.
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As a secondary reference, Campbell does not make up for the
deficiencies (promotional programming) of Callais in order to arrive at
Appellant’s claim 30. Instead, Campbell teaches an addressable cable
television system 10 shown in Figure 1 that transmits a television program
and data transmission from a central station 11 to a plurality of remote user
stations. Campbell’s Figure 1 is reproduced below:

As shown in Campbell’s Figure 1, the addressable cable television
system 10 controls television program and data signal transmission including
both (1) control and (2) text signals in video line format that are inserted
during a vertical interval of television signals. Abstract. According to
Campbell, addressable converter 40, shown in Figure 12, is configured to
allow a user to (1) first select a television program channel at step 310, (2)
switch a tuner to a selected channel at step 316, and then (3) extract data (in
the form of a complementary text or graphics) from the vertical interval of
the television signal transmitted in the selected channel at step 318 in order
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to enable the program. See Campbell 24:37–25:8. In other words, Campbell
embeds digital data and teletext with the video signal, and has the ability to
display teletext during user viewing.
But Campbell does not teach any “promotional video program
promoting programming” and including a request for a video viewer
response, as argued by Appellant. App. Br. 134. Nor does Campbell teach
any “viewer response to a request for the viewer response to receive
programming presented in a promotional video program,” as recited in claim
30. Id.
In fact, nowhere in Callais or Campbell is there any teaching of
Appellant’s claimed (1) “first receiver section that receives a promotional
video program . . . promoting said programming and including a request for
a viewer response to receive said promoted programming;” (2) “second
receiver section . . . receive a viewer response to said request for a viewer
response to receive said promoted programming;” (3) “storage device . . . to
store said viewer response;” (4) “programmable processor apparatus
accessing [] storage device in response to said viewer response to [] control
reception of said promoted programming and control presentation of said
promoted programming;” (5) “third receiver section that receives said
promoted programming at said receiver station;” and (6) “selective transfer
device . . . selectively transfers said promoted programming from said third
receiver section to a selected output component of said plurality of output
components of said output apparatus,” as recited in claim 30 (emphasis
added).
Because Callais and Campbell fail to disclose the disputed limitations
of claim 30, we do not sustain the Examiner’s obviousness rejection of claim
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30 and, similarly, claims 31–102 and 140–171 [including similar limitations
regarding “programming promotion” and “viewer response”] under
35 U.S.C. § 103(a). For example, claim 105 recites a similar apparatus for
promoting and selectively delivering programming at a receiver station
provided with a different scope of coverage. Claims 98 and 154 recite an
“interactive receiver station apparatus” at a receiver station to accept and
store user input in response to a promotional video programing and
selectively authorizing delivery of a service at the receiver station.
Independent claims 31, 44, 46, 53, 54, 83, 92, 105, 107, 121, 122, 132, 155,
and 156 recite corresponding methods for programming promotion and
selective delivery for use with an interactive viewing apparatus.
For the same reasons, we also do not sustain the Examiner’s
obviousness rejections of the following claims because the Examiner has not
shown that the additional teachings of other references make up for the
above-noted deficiencies of Callais, including:
(1) Claims 33, 109, and 158 as being obvious over Callais,
Campbell, and McVoy. Final Act. 35–36, 144–145, 210–
211;
(2) Claims 44–45 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Callais, Campbell, and
Baer. Final Act. 37–44;
(3) Claims 63, 104, and 153 as being obvious over Callais,
Campbell, and Summers. Final Act. 72–73, 185–186;
(4) Claims 99, 102, and 150 as being obvious over Callais,
Campbell, and McCalley. Final Act. 94–96, 184–185;
(5) Claims 160 and 161 as being obvious over Callais,
Campbell, and Bond. Final Act. 211–212;
(6) Claim 162 as being obvious over Callais, Campbell, and
Rifken. Final Act. 212–213;
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(7) Claims 168, 169, and 170 as being obvious over Callais,
Campbell and Block. Final Act. 19–20, 122–123, 191–
192; and
(8) Claim 171 as being obvious over Callais and Block. Final
Act. 191–192.

For example, McVoy discloses a communication system such as a
rudimentary single cable television system in early 1970’s, shown in Figure
2, for data transmission and retrieval, where the subscriber station simply
transmits user entries at a subscriber station to a headend for actual
processing. Abstract. McVoy’s Figure 2 is reproduced below:

Figure 2 shows cable transmission to multiple homes for viewing, including
any advertisement or commercial during the broadcast.

In support of the § 103(a) rejection of claims 33, 109, and 158, the
Examiner further relies on McVoy for “offering and describing [] second
portion of said mass medium programming” in order to support the
conclusion of obviousness, i.e., “for the purpose of allowing viewers to hear
descriptions of and/or offers for the full program so that the viewer can make
an educated decision whether to purchase the full program.” Final Act. 36
(citing McVoy 5:28–45). As discussed, McVoy does not make up the
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deficiencies of the combination of Callais and Campbell in order to arrive at
Appellant’s claims 33, 109, and 158.
Baer discloses a basic interactive gaming system, as shown in Figure
1, for playing games on a cathode ray tube (CRT) screen of a television
available in the early 1970’s. Abstract. Figure is reproduced below.

Figure 1 shows an interactive gaming system for allowing a user to play
electronic games, via a TV set.

In support of the § 103(a) rejection of claims 44–45, the Examiner
further relies on Baer for “allowing subscribers to interact with their
televisions by, for example, playing games” in order to support the
conclusion of obviousness. Final Act. 43 (citing Baer 4:29–45). However,
as discussed, Baer does not make up the deficiencies of the combination of
Callais and Campbell in order to arrive at Appellant’s claims 44–45.
Summers discloses a method and apparatus, shown in Figure 1, for
transmitting and utilizing supplemental data via television signals. Abstract.
Summers’ Figure 1 is reproduced below:
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Summers’ Figure 1 shows video insertion unit 4 arranged to insert
supplemental data into video signal to be sent to transmitter 12 for
transmission to receiver 14

In support of the § 103(a) rejection of claims 63, 104, and 153, the
Examiner further relies on Summers for teaching the use of additional “data
portion of said multichannel signal [] outside of at least one of the viewable
and audible portion of said mass medium programming” in order to support
the conclusion of obviousness. Final Act. 72–73 (citing Summers 7:8–16).
As discussed, Summers does not make up the deficiencies of the
combination of Callais and Campbell in order to arrive at Appellant’s claims
63, 104, and 153.
McCalley discloses a digital interactive communication system,
shown in Figure 1, for allowing a plurality of subscribers to access, via
telephones, and select any of a plurality of pre-recorded video
representations of products or services for sale available in late 1980’s.
Abstract. Figure 1 is reproduced below:

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McCalley’s Figure 1 shows an interactive communication system for
providing subscribers with television quality, still-video presentations and
audio.

In support of the § 103(a) rejection of claims 99, 102, and 150, the
Examiner further relies on McCalley for teaching the step of “delivering
further goods to said user . . . associated with said product, . . . including
physical shipping [via] couriers or other shipping methods” in order to
support the conclusion of obviousness. Final Act. 94 (citing McCalley
6:59–7:2), emphasis omitted. However, McCalley does not make up the
deficiencies of the combination of Callais and Campbell in order to arrive at
Appellant’s claims 99, 102, and 150.
Bond discloses the use of a scrambler, shown in Figure 1, to scramble
a video signal in a pay TV system for security by replacing its vertical
intervals with providing information relating to the timing of the replaced
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vertical intervals for purposes of unscrambling at a receiver end. Abstract.
Figure 1 is reproduced below:

Bond’s Figure 1 shows a pay TV system including scrambler 11 and
unscramble 19 for security purposes.

In support of the § 103(a) rejection of claims 160 and 161, the
Examiner further relies on Bond for teaching the use of encryption and
decryption in mass medium programming in order to support the conclusion
of obviousness. Final Act. 212 (citing Bond 2:56–62). However, McCalley
does not make up the deficiencies of the combination of Callais and
Campbell in order to arrive at Appellant’s claims 169 and 161.
Rifken discloses the use of a video cassette recorder to interface with
a cable system’s multichannel converter, as shown in Figure 1, for allowing
users to record programming on different channels at different times
available in early 1980’s. Rifken’s Figure 1 is reproduced below:
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Rifken’s Figure 1 shows video cassette recorder 36 for allowing users
to record programming, via TV set 38 on different channels at different
times.

In support of the § 103(a) rejection of claim 162, the Examiner further
relies on Rifken for teaching the use of “a storage device [] for storing said
second mass medium programming” in order to support the conclusion of
obviousness. Final Act. 213 (citing Rifken 2”4–27). However, Rifken’s
storage device is external to the TV set 38, whereas Appellant’s claimed
“storage device” is part of the claimed “programmable processor apparatus”
that controls “reception of said second mass medium programming” and
“delivery of said second mass medium program based on said step of
processing said [user] reply” recited in claim 156. Likewise, Rifken is silent
as to, at least, the claimed (1) “programmable processor apparatus”; (2) “said
first mass medium programming including information that promotes second
mass medium programming,” (3) “routing said control signal to said
programmable processor apparatus,” and (4) “selectively delivering said
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second mass medium programing to an output device. Reply Br. 99.
Likewise, Rifken does not make up the deficiencies of the combination of
Callais and Campbell to arrive at Appellant’s claim 162. Moreover, Rifken
does not make up the deficiencies of the combination of Callais and
Campbell in order to arrive at Appellant’s claim 162.
Lastly, Block discloses a subscription television system [shown in
Figure 1] and method in which billing information regarding programs
actually viewed by a subscriber of the system is accumulated over non-
dedicated telephone lines.” Abstract. Figure 1 is reproduced below:

Block’s Figure 1 shows subscription television system where a
program ID code is scrambled together with a video signal for billing
purposes.

According to Block, the program ID code is synchronized with the
scramble video signal for transmission for transmission with the program
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signals [shown in Figure 2].” Block 3:31–37. However, the program ID
code is then used at the subscriber TV, as shown in Figure 4, to provide
billing information to a remote location as to programs actually viewed by
the subscriber. Block 8:9–25.
In support of the § 103(a) rejection of claims 168–171, the Examiner
further relies on Block for teaching the use of “telephone equipment to
communicate billing information for programming” in order to support the
conclusion of obviousness. Final Act. 22 (citing Block 4:22–38). However,
Block does not make up the deficiencies of the combination of Callais and
Campbell in order to arrive at Appellant’s claim 168–171.
In summary, we do not sustain the Examiner’s obviousness rejection
of claims 30–87, 99–102, and 104–171 under pre-AIA 35 U.S.C. § 103(a)
based on Callais and cited secondary references, including Campbell,
McVoy, Baer, Summers, McCalley, Bond, Rifken, and Block.

DECISION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 30–102, 104–171 on the ground of non-
statutory obviousness-type double patenting over claims 53–55 of the ’277
patent and the ’490 patent as well as under 35 U.S.C. §§ 101, 102(e), 103(a),
112, first and second paragraphs.
As such, we REVERSE the Examiner’s final rejections of: (1) claims
30–102 and 104–171 on the ground of non-statutory obviousness-type
double patenting over claims 53–55 of the ’277 patent; (2) claims 30, 31,
105, 107, 121, and 155 on the ground of non-statutory obviousness-type
double patenting over claims 1, 2, 26, and 28 of the ’749 patent; (3) claims
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30–102, and 104–171 under 35 U.S.C. § 101 because the claimed invention
is directed to non-statutory subject matter; (4) Claims 35, 48, 57–58, 69, 83–
99, 101, 102, 104, 107–120, and 132–167 under pre-AIA 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description; (5) claims
83–97, 101–102, 104, and 132–167 under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite; (6) claim 98 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Callais; and (7) claims 30–102 and 104–171
under pre-AIA 35 U.S.C. § 103(a) as being obvious over Callais and
Campbell; (8) claims 33, 109, and 158 under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Callais, Campbell, and McVoy; (9) claims 44–45 under
pre-AIA 35 U.S.C. § 103(a) as being obvious over Callais, Campbell, and
Baer; (10) claims 63, 104, and 153 under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Callais, Campbell, and Summers; (11) claims 99, 102,
and 150 under pre-AIA 35 U.S.C. § 103(a) as being obvious over Callais,
Campbell, and McCalley; (12) claims 160 and 161 under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Callais, Campbell, and Bond; (13) claim 162
under pre-AIA 35 U.S.C. § 103(a) as being obvious over Callais, Campbell,
and Rifken; (14) claims 168, 169, and 170 under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Callais, Campbell and Block; and (15) claim
171 under pre-AIA 35 U.S.C. § 103(a) as being obvious over Callais and
Block.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.§  Basis Affirmed Reversed
30–102, 104–171 Non-statutory
Double
Patenting ’277
30–102,
104–171
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Claims
Rejected
35 U.S.C.§  Basis Affirmed Reversed
30, 31, 105, 107,
121, 155
Non-statutory
Double
Patenting ’749
30, 31, 105,
107, 121,
155
30–102, 104–171 101 Patent
Eligibility
30–102,
104–171
35, 48, 57, 58, 69,
83–99, 101, 102,
104, 107–120,
132–167, 169, 171
112, first
paragraph
Written
Description
35, 48, 57,
58, 69, 83–
99, 101,
102, 104,
107–120,
132–167,
169, 171
83–97, 101, 102,
104, 107–120,
132–167, 171
112, second
paragraph
Indefiniteness 83–97, 101,
102, 104,
107–120,
132–167,
171
98 102(b) Callais 98
30–102, 104–171 103(a) Callais,
Campbell
30–102,
104–171
33, 109, 158 103(a) Callais,
Campbell,
McVoy
33, 109, 158
44–45 103(a) Callais,
Campbell, Baer
44–45
63, 104, 153

103(a) Callais,
Campbell,
Summers
63, 104, 153

99, 102, 150

103(a) Callais,
Campbell,
McCalley
99, 102, 150

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Claims
Rejected
35 U.S.C.§  Basis Affirmed Reversed
160, 161 103(a) Callais,
Campbell,
Bond
160, 161

162 103(a) Callais,
Campbell,
Rifken
162
168, 169, 170 103(a) Callais,
Campbell,
Block
168, 169,
170
171

103(a) Callais, Block 171
Overall Outcome 30–102,
104–171

REVERSED