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`APPIJCATIO'N NUMBER: 03/446,431
`FILING DATE: may. 2-2, 1995
`PATENT NUIWBER: £77691 m
`
`ISSUE DATE: August '03, 301-0
`
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`UNITED STATES DEPARTMENT OF COMMERCE
`Patent and Trademark Office
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`Address : COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington D. C. 20231
`
`NM 1 / 1:19 1 1::
`
`‘1
`
`EIILAI‘KEFit,._T
`
`PAPER NUMBER
`
`This is a communication from the examiner in charge of your application.
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`DATE MAILED:
`
`“9/, 1 1:1 /. a 1
`
`.
`LgThe communication filed
`
`APPLICANT IS GIVEN ONE MONTH FROM THE DATE OF THIS LETTER OR UNTIL THE EXPIRATION OF THE PERIOD FOR
`
`-
`I 0(6/0D
`
`Md tI/(3‘ “D
`is informal,non-responsive for the reason(s)checked below and should be corrected.
`
`RESPONSE SET IN THE LAST OFFICE ACTION (WHICHEVER IS LONGER) WITHIN WHICH TO CORRECT THE INFORMALITY.
`
`fails to comply with the
`filed
`a. D The amendment to claim(s)
`provisions of 37 C..F R. 1.121 and is accordingly held to be non--responsive. A supplemental paper correcting the informal
`portions and complying with the ruleIS required
`
`b. D The paper is unsigned. A duplicate paper or ratification, properly signed. is required.
`
`, who is not of record. A ratification or a new power of
`c. D The paper is signed by
`attorney with a ratification, or a duplicate papcr signed by a person of record, is required.
`
`d. D The communication is presented on paper which will not provide a permanent copy. A permanent copy, or a request that a
`permanent copy be made by the Office at applicant’s expense, is required, see M.P.E.P. 7] 4.07.
`
`eFOther Sic
`
`((
`
`""
`
`g
`
`2. D In accordance with applicants request, THE PERIOD FOR RESPONSE FROM THE OFFICE ACTION DATED -
`IS EXTENDED TO RUN
`MONTH(S).
`No further extension will he granted unless approved by the Commissioner. 37 C.F.R. 1.136 (b)
`
`3. D Receipt is acknowledged, of papers submitted under 35 U.S.C.
`4-. D Other
`
`1 19 which papcrs have been made of record in the file.
`
`jsNDREW FAILE
`sumamv PATENT EXAMINER
`TECHNOLOGY CENTER 2600
`
`PTOL-327 (rev. 1079)
`
`NOTICE TO APPLICANT
`
`Page 2
`
`Page 2
`
`

`

`O
`
`0
`
`TABLE F
`
`NTE TS
`
`TABLE OF AUTHORITIES .................................................. vi
`
`1.
`
`BACKGROUND: THE PORTFOLIO ..................................... l
`
`a.
`
`The Primary Examiner Regervgg the Right to Prgyide Funher Information
`
`Regarding Applicgtg’ Course of andagt ......... ................... 3
`
`2.
`
`STATEMENT OF PUBLIC INTEREST ................................... 4
`
`a.
`
`lic
`
`t ’ T r e ‘
`
`ourts In us
`
`and Lic nsees ..................... 4
`
`3.
`
`THE LEGAL MYTH .................................................. 7
`
`4.
`
`FINAL NOTICE OF NON-RESPONSIVE AMENDMENT ..................... 9
`
`3.
`
`b.
`
`Initial Ngtigg from the Primary Examiner ............................. 10
`
`Betw en
`
`emberl 96 nd
`
`ct
`
`er 1997 A lic n R lie Prim ril
`
`n he
`
`1981
`
`ecific in
`
`nr
`
`heR ir mens nd r35 . C
`
`120 ..... 10
`
`c.
`
`A lic nt
`
`er N ifie In 0 rtAs to he Pr
`\
`
`erS ecificati nUnd r
`
`35 [J.S,C, § 120 Fuflhermgre, Applicants Failed to Bring Sach
`
`Notification to the Attention of the U.S.P,T,O., Contrary to M P.E,P,
`
`2001.06tc1 .................................................... 11
`
`ii
`
`Page 3
`
`Page 3
`
`

`

`lin’
`
`fImr
`
`rl
`
`niin he
`
`rn
`
`rinDcriinIn
`
`h
`
`1
`
`rrnPr
`
`in
`
`nOnr
`
`rAlichiedRr hfr
`
`mr
`
`rI nifiinf
`
`'n riinIn
`
`.................. 13
`
`Th
`
`rini
`
`n
`
`1’ Prnh i
`
`lRem rk inA li
`
`tinN 08113329
`
`Misintetpret In Re Bauman ........................................ 13
`
`Applieants Have Misled the U,S,P,T,O, In cher Instances ................ 14
`
`Applieants Receiyed Prier Netice in Costa that Any Lapse By The Examiner Does
`
`NotExclat nsel .................. 15
`
`1995; The Weather Channel Litigation, The Dectrine of Laches,
`
`Ineguitable Conduet and The Principal Counsel ........................ 17
`
`Applicants’ Overall Conduct Has Caused [lnipstifiable and Prejudicial Delay in
`
`Prosecution ................................................... 18
`
`i.
`
`ii.
`
`The Number of Claims Filed By Applicants Is Unwarranted ......... 19
`
`I D,S. References Are Inappropriate and Irrelevant ................ 19
`
`iii.
`
`Applicants’ Preliminary Amendment Submissions Were Untimely,
`
`Fpghermere, Applicants’ Ceunsel’s Request To Delay Presecptien Was
`
`Unreasonable ............................................ 20
`
`iv.
`
`Applicants Have Filed Substantially Duplicate Claims in Different
`
`Applications, Funhennore, Applicants Failed to Make a Good Faith
`\
`
`Effort Contra
`
`o M.P.E.P. 2001 06 b .................... _.
`
`.
`
`.
`
`. 20
`
`v.
`
`
`Interview of June 16 1999 .................................. 22
`
`(1)
`
`Applicants’ Principal Counsel Threatened to Seek a Writ of
`
`Page 4
`
`Page 4
`
`

`

`Mandamus ......................................... 22
`
`(2)
`
`-
`
`li
`
`n
`
`ni nl
`
`il MPEP 200106
`
`....... 24
`
`(3)
`
`DIRE T “
`
`rl
`
`”
`
`r
`
`v
`
`n T r
`
`........ 25
`
`vi.
`
`A li
`
`n
`
`h
`
`Ace
`
`nr
`
`37 FR 1085
`
`4 5,
`
`nd 6
`
`................................................. 26
`
`(l)
`
`A li
`
`n
`
`h
`
`Mi
`
`i
`
`he Ex minin
`
`............ 27
`
`vii.
`
`Applicants Did Not Possess The Claimed Invention ................ 28
`
`(1)
`
`Applicants Did Not Ppssess Downloading Software ......... 29
`
`viii.
`
`Applicants Failed t9 Timely Cgmplete the Alleged Consolidation
`
`Agreement .............................................. 31
`
`APPLICANTS MAY EITHER OWE FEES, OR BE DUE A REFUND ........... 31
`
`a.
`
`b.
`
`Applicants Have Pegpetuated SmallZLarge Entity gonfiision ............... 31
`
`, There Are 139 Apparent Difl‘erences in Subject Matter for
`
`LargeZSmall Inventions ........................................... 32
`
`c. Alin’
`
`' Mttr
`
`in
`
`o AeroJusi
`
`Fe
`
`d.
`
`e.
`
`f.
`
`Discrepancy ................................................... 32
`
`The Pa ment Rec r Dem n trate Discre
`
`n ies
`
`i hin he Same
`
`in
`
`. 33
`
`Erroneous Fee Payments Would Violate the Alleged Agreement to Consplidate 34
`
`Applicants’ Counsel Has Been Aware ofFee Discrepancies
`
`Since 1995 .................................................... 34
`
`1.
`
`Applicants Were Required to Update Small Entity Status ........... 34
`
`iv
`
`Page 5
`
`Page 5
`
`

`

`ii.
`
`lin hn
`
`Eni
`
`iz
`
`ihin
`
`Applicagigng ............................................. 34
`
`iii.
`
`InM 2000Alin’
`
`n1 mi
`
`PinDfiinF
`
`n
`
`and Afler Septgmbgr 26, 1995 ................................ 35
`
`iv.
`
`. Appligntg Havg Paid Small Entity Fges for Large Emmy
`
`6.
`
`COURTS ASSUME THAT THE PRIMARY EXAMINER DOES HIS JOB. ....... 36
`
`7.
`
`CONCLUSION: THE PRIMARY EXAMINER IS DOING HIS ASSIGNED JOB .
`
`. 38
`
`APPENDIX
`
`Page 6
`
`Page 6
`
`

`

`TABLE 9 A!) 1ng QRITIES
`
`ase
`
`i
`
`Inire Bauman, 683 F.2d 405 (C.C.P.A. 1982) ............................... 11, 13, 14
`
`DH leghnglggy Inc, v, Smergygtex [ntematignaL 47 U.S.P.Q.2d 1865 (Fed Cir. 1998) ..... 33
`
`Ex page Hull, 191 U.S.P.Q. 157 (P.T.O.B.A. 1975) .............................. 8, 16
`
`Mgling PLQ y, f! extrgn Ing, 48 F.3d 1172 (Fed. Cir. 1995) ........................... 37
`
`1319;1th lelgggm Ing. v. Datapgint $2932., 908 F.2d 931 (Fed. Cir. 1990) ................ 15
`
`Persgnalized Mass Media $2019. 2, The weather Channel, Ing,
`
`91; a1,
`
`899 F. Supp. 239 (ED. Va. 1995) ..................................... 3, '4, 8, 17, 18
`
`In re gggain Digital Satellite Sys, (QSS) Regeiyers £4 QQQmponents Lhereof, No. 337—TA-392
`
`(Int’l Trade Comm. Oct. 20, 1997) (Initial Determination),
`
`[Parts 1 and 2] 1997 ITC LEXIS 307 .................... 1, 2, 5, 6, 12, 15, 19, 25, 36, 37
`
`mm
`
`19 U.S.C. § 1.337(a) (1994) .................................................. 12
`
`35 U.S.C. § 102 ........ i ................................................ 22, 24
`
`35 U.S.C. § 112 ............................................ 8, 9, 15, 27, 28, 29, 3o
`
`35 U.S.C. § 120 ......................................... 1, 8, 10, 11, 12, 13, 15, 27
`
`35 U.S.C. § 151 ............................................................ 37
`
`Uruguay Round Agreements Act, Pub. L. No. 103-465, § 532, 108 Stat. 4983 (1994) ........ 1
`
`vi
`
`Page 7
`
`Page 7
`
`

`

`_11_111¢§
`
`13 CF11. § 121.12 ......................................................... 35
`
`37 C.F.R. § 1.5 ............................................................ 35
`
`37'CF11. § 1.27 ........................................................... 35
`
`37 C.F.R. § 1.28 ........................................................ 35, 36
`
`37 CF11. § 1.56 ........................................................... 28
`
`37 CF11. § 1.98 ......................................................... ..
`
`. 20
`
`3'7 C.F.R. § 1.129(a) ......................................’ .................. 33'
`
`37 C.F.R. § 1.181 .................................... ' ................... 31,32
`
`37 CPR § 1.313(b)(3) ...................................................... 23
`
`37 CF11. § 10.85 ................. h ...................................... 26, 28
`
`Procedures
`
`M.P.E.P. 711.03(d) .......................................................... 3
`
`M.P.E.P. 714.03 ........................................................ 10, 38
`
`M.P.E.P. 1002.01 ........................................................... 4
`
`M.P.E.P. 2001.06(b) ......................................... 20, 21, 22, 24, 25, 26
`
`M.P.E.P. 2001.06(c) ..................................................... 12, 26
`
`vii
`
`Page 8
`
`Page 8
`
`

`

`'1.
`
`BACKGROUND: THE PORTFOLIO.
`
`In the period between March 2, 1995, and June 7, 1995, applicants‘ filed 328 applications, each of
`
`which contained a 557-page specification. These 328 applications were filed immediately prior to
`
`June 8, 1995, the effective date ofthe Uruguay Round Agreements Act, Pub. L. No. 103-465, §
`
`532, 108 Stat. 4983 (1994). (The Uruguay Round Agreements Act limited patent coverage to
`
`twenty years from the date of filing, whereas previously, patent coverage had existed seventeen
`
`years from the date of issuance, barring unenforceability due to inequitable conduct or laches.)
`
`These 328 specifications were continuations, under 35 U.S.C. 120 (“Section 120“), of applicants’
`
`557-page parent application no. 08/113,329 (‘329), filed August 30, 1993 (the “ ‘329
`
`application”). 'The ‘329'application is a Section 120 continuation of the 557-page application no.
`
`056,501 (the “ ‘50] application”) which was filed on May 3, 1993 and which subsequently
`
`matured into US. patent no. 5,335,277 (‘277) on Aug. 2, 1994. See Appendix at 000504-506 for
`
`a list of applicants’ 328 applications, plus the parent ‘329 application. The first six applications in
`
`the chain, including ‘277, are shown below.
`
`‘ Applicant Harvey is President and CEO of assignee Personalized Media
`Communications, L.L.C. (PMC), a limited liability company formed under the laws of the State of
`Delaware with its principal place of business at 110 East 42nd Street, Suite 1704, New York, NY
`10017. PMC was formed in September, 1995 and, in December, 1995, acquired most of the
`assets andcertainliabilities of Personalized Mass Media Corporation (PMMC). PMC‘s
`predecessor company, National Cable Clearinghouse, was founded in 1981 by Mr. Harvey. Its
`name was changed to PMC in 1989. PMMC's assets were sold to PMC in 1995. Sfi InJ
`geflain Digital Satellite Sys, (DSS) Receivers & Components Thereof, No. 33 7-TA-392 (Int’l
`Trade Comm. Oct. 20, 1997) (Initial Determination), [Part 2 of 2] 1997 ITC LEXIS 307, *70,
`*71(FINDINGS OF FACT, Section A, 1-3). Applicant Harvey and his counsel Thomas J. Scott,
`Jr., both earned degrees from Yale University around 1966. Appendix at 569 and I_cL, [Part 2 of
`2] 1997 ITC LEXIS 307, *83-84 (FINDINGS OF FACT, Section D, 46-50).
`
`Page 9
`
`Page 9
`
`

`

`The primary examiner adopts certain findings of fact by Administrative Law Judge Paul J.
`
`Luckem in the ITC Litigation. See In re genain Digital Satellite Sys, (DSS) fieeeivers 52
`
`Cempenents I! heregf, No. 337-TA-392 (Int’l Trade Comm. Oct. 20, 1997) (Initial
`
`Determination), [Part 2 of 2] 1997 ITC LEXIS 307, *75, *76 (FINDINGS OF FACT, Section C,
`
`21 and 23):
`
`C. Patents And Patent Applications Of Harvey And Cuddihy As Co-Inventors
`
`21. PMMC is the named assignee on six issued United States patents naming
`
`John C. Harvey and James W. Cuddihy as co-inventorsz'
`
`Patent No.
`
`Application
`Serial No.
`
`4,694,490
`
`('490 patent)
`
`317,510
`('510 application)
`
`4,704,725
`
`('725 patent)
`
`829,531
`('531 application)
`
`4,965,825
`
`('825 patent)
`
`096,0962
`(continuation-in—part
`'096 application)
`
`588,126
`5,109,414
`('414 patent) ('126 application)
`
`5,233,654
`
`('654 patent)
`
`849,226
`('226 application)
`
`5,335,277
`
`('277 patent)
`
`056,501
`('501 application)
`
`'h
`
`Filing Date
`
`Issue Date
`
`Nov. 3, 1981
`
`Sept. 15, 1987
`
`Feb. 14, 1986
`
`Nov. 3, 1987
`
`Sept. 11, 1987
`
`Oct. 23, 1990
`
`Sept. 25, 1990
`
`Apr. 28, 1992
`
`Mar. 10, 1992
`
`Aug. 3, 1993
`
`May 3, 1993
`
`Aug. 2, 1994
`
`2On Sept. 11, 1987 applicants failed to specifically include or incorporate by reference the
`44-page parent ‘531 specification into the 557-page ‘096 specification (applicants’ principal
`counsel failed to “incorporate by reference” the parent ‘531 application’s 44 pages into the ‘096
`application’s 577 pages). As a consequence, applicants failed to maintain “continuity” of the 44-
`page subject matter.
`
`Page 10
`
`Page 10
`
`

`

`23. The specifications for the '490 and '725 patents were identical and 22 patent
`columns in length [44 pages plus drawings]. The specification for the '096
`application, in contrast, was approximately 322 patent columns in length [557
`pages plus drawings] .
`.
`.
`
`a.
`
`Th P‘m
`
`xminrR
`
`he
`
`'h Pr
`
`'
`
`F hrInformin
`
`R rinA lican’
`
`re f ndc.
`
`‘
`
`Applicants and their counsel (Thomas Scott, Jr.) have been attempting to secure patents by
`
`pursuing their unique, but improper, prosecution strategy for many years. One court noted that
`
`Scott has been involved in [the] patent [portfolio] prosecution and strategy for
`many years, perhaps as far back as the 1970s. According to [the applicant],
`[Scott] is the most knowledgeable person about the discloSures on file in the PTO,
`[and] with the .
`.
`. 300 [then actually 329] pending applications for related patents.
`Scott also is described by [applicants] as “the expert on all aspects of the
`Company’s patent position: including .
`.
`. the company’s development of its future
`patent prosecution strategy.”
`
`See Personalized Mass Media £29512, 2, The Weather ghannel, Inc., 91 al,, 899 F. Supp. 239, 244
`
`(1995), Appendix at 000419.
`
`Applicants’ prosecution “strategy” has involved the submission of tens of thousands of claims, as
`
`well as thousands prior art references, a substantial number of which are irrelevant. This
`
`“strategy” has burdened the U.S.P.T.O. with vast amounts of information and prosecution
`
`content. The primary examiner cannot possibly discuss all of the prosection content in this
`
`Notice, due to its sheer quantity. However, the primary examiner assumes that applicants are
`\
`
`aware of their own prosecution content.
`
`M.P.E.P. 711.03(d) states as follows:
`
`Page 11
`
`Page 11
`
`

`

`[T]he examiner “may be directed by the Commissioner to furnish a written
`statement...setting forth the reasons for his or her decision upon the matters
`averred in the petition, supplying a copy thereof to the petitioner.” Unless
`requestfd, however, such a statement should not be prepared. See M.P.E.P.
`
`1002.0 .
`
`However, should applicants choose to refiJte this Final Notice, the primary examiner reserves the
`
`right to provide additional prosecution content providing filrther basis for this Notice.
`
`2.
`
`STATEMENT OF PUBLIC INTEREST.
`
`This Final Notice is proper. Applicants and their counsels have created'an enormous prosecution
`
`burden on the U.S.P.T.O. with their prosection “strategy,” as will be explained. This burden on
`
`the office has caused unjustifiable and prejudicial delay.
`
`a.
`
`Applicants’ Targets: Courts= Industry, and Licensees.
`
`Applicants are aware that there are members of the public who have developed or invested in
`
`products and systems that have emerged in the market place related to applicants’ crafied claims.
`
`Appendixat 000419 lists applicants’ targets of litigation, including The Weather Channel and
`
`others which carry programming broadcast over the SATCOM satellite communications system,
`
`including the following (899 F. Supp. at 239):
`
`-Landmark Communications Inc.,
`-TCI of Virginia, Inc.,
`-Newport News Cablevision LTD,
`-Continental Cablevision of Richmond,
`
`-Continental Cablevision of Virginia, Inc.,
`-Media General Cable of Fairfax County, Inc.,
`-Media General Cable of Fredericksburg, Inc.,
`-Comcast Cablevision of Chesterfield County, Inc.,
`-SBC Media Ventures, Inc.,
`
`-Jones Intercable of Alexandria, Inc.,
`
`-Falcon Holding Group, LP, and
`
`Page 12
`
`Page 12
`
`

`

`-Adelphi Communications Corp.
`
`Other targets appear to be all cable television companies throughout the US. who carry the
`
`Weather Chaniiel programming, as well as Weather Channel competitors. Moreover, the ITC
`Litigation identifies additional targets as follows (S_e_e [Part 2 of2] 1997 [TC LEXIS 307, *70-72
`
`(FINDINGS OF FACT, Section A, 4-15)):
`
`4. Respondent Hughes Network Systems (HNS) is a corporation organized
`and existing under the laws of the State of Delaware with its principal place
`of business at 11717 Exploration Lane, Germantown, MD 20876 .
`.
`.
`.
`
`5. HNS is in the business of designing, manufacturing, importing and selling
`in the United States consumer electronics products .
`.
`.
`.
`
`. Hitachi Home Electronics (America), Inc. (Hitachi) is a
`.
`6. Respondent .
`corporation organized and existing under the laws of the State of California
`with its principal place of business at 3890 Steve Reynolds Blvd, Norcross,
`GA 30093 .
`.
`.
`.
`
`7. Hitachi is in the business of designing, manufacturing, importing and
`selling in the United States consumer electronics products .
`.
`.
`.
`
`8. Respondent DIRECTV is a corporation organized and existing under the
`laws of the State of California with its principal place of business at 2230 E.
`Imperial Highway, El Segundo, CA 90245 .
`.
`.
`.
`
`9. DIRECTV is in the business of selling and providing television
`programming through the transmission of satellite broadcast signals .
`
`.
`
`.
`
`.
`
`10. Respondent USSB is a corporation organized and existing under the
`laws of the State of Minnesota with its principal place of business at 3415
`University Avenue, St. Paul, MN 55114 .
`.
`.
`.
`
`11. USSB is in the business of selling and providing television programming
`through the transmission of satellite broadcast signals .
`.
`.
`.
`
`12. Respondent Thomson Consumer Electronics, Inc. (Thomson or TCE) is
`a corporation organized .
`.
`. and existing under the laws of the State of
`Delaware with its principal place of business at 10330 N. Meridian Street,
`Indianapolis, IN 46290—1024.
`.
`.
`.
`
`Page 13
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`Page 13
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`

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`13. Thomson is engaged in the business of designing, manufacturing,
`importing, and selling in the United States consumer electronics products. .
`
`.
`
`i
`
`14. Respondent Toshiba Amen'ca Consumer Products Inc. (Toshiba) is a
`corporation organized and existing under the laws of the State of New
`Jersey with its principal place of business at 82 Totowa Road, Wayne, NJ
`07470 .
`.
`.
`.
`
`15. Respondent Matsushita Electronic Corporation of America (Matsushita)
`is a corporation organized and existing under the laws of the State of
`Delaware with its principal place of business at One Panasonic Way,
`Secaucus, NJ 07094. .
`.
`.
`
`Additional targets identified in the ITC Litigation are as follows, Appendix at 000462-478. S_ee_
`
`[Part 2 of 2] 1997 ITC LEXIS 307, *148-180 (FINDINGS OF FACT, Sections G-H):
`
`-Hewlett Packard (fact 180),
`-ARC (fact 186),
`-Viacom International (fact 175),
`-Starsight (facts 164, 198,3 12,320,323-325,334,337,339—341,350~
`352,360—362,368),
`_
`-Sony (facts 171,198) , and
`-the National Football League (facts 187-1 88, 191-192).
`
`Numerous additional targets may exist who represent the public interest, such as courts, and
`
`industry in general which have developed, in good faith, products and systems that have emerged
`
`in the market place and which are thus potentially subject to applicants’ tens of thousands of
`
`claims in their “portfolio.”
`
`Applicants have been to court numerous times with their portfolio. The courts have given carefiil
`
`consideration to previous prosection, including the 329 applications. Appendix at 000422,
`
`000462-478. Among the findings of fact by courts are the following:
`
`Page 14
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`Page 14
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`

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`The business of PMC consists primarily of licensing its intellectual property and
`prosecution of patent applications. .
`.
`. As of June 11, 1997, with respect to any of
`PMC’s current licensees, PMC does not design any tangible products for those
`license'es, nor does it work with manufacturers of those licensees’ products in any
`way, nor does PMC monitor the quality of those licensees’ products or services in
`any way, nor does PMC do any kind of safety checking on the products produced
`by those licensees, nor does PMC participate in any marketing efforts made on
`behalf of the products or systems licensed under its patents.
`
`Appendix at 462. Rather than contributing to progress, it appears that applicants’ primary
`
`business consists of attempting to license their portfolio to businesses engaged already in active
`
`production and development of products and systems applicants now claim as proprietary
`
`inventions.
`
`3.
`
`THE LEGAL MYTH.
`
`As an initial point, the primary examiner clarifies, for the record, that he has performed a survey
`
`of the pattern of prosecution in applicants’ patent portfolio because the primary examiner has not
`
`received requested cooperation from applicants and their counsels in understanding what subject
`
`matter applicants believe they are claiming, and because applicants have failed to supplement their
`
`current deficient responses. The primary examiner realized, during the summer of 1999, that the
`
`approximately 191 applications to which applicants allege priority benefit to 1981 (of a total
`
`number of 329 applications) are replete with a pattern of material misrepresentations of law and
`
`related factual omission. As a consequence, the portfolio prosecution record adds up to a
`
`-
`‘
`u
`n
`t
`Virtually meamnglessness record as to the merits and thus, among other things, has caused
`
`unjustifiable and prejudicial delay.
`
`Page 15
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`Page 15
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`

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`More specifically, the primary examiner realized that the patent portfolio record is replete with a
`
`pattern of misrepresentations regarding Section 120 “consequence” (e.g., see Appendix at 507);
`l
`
`misleading references to the 44-page parent application as “the specification” (e.g., see Appendix
`
`at 508); material written description factual omissions in response to 35 U.S.C. § 112 (Section
`
`112) rejections (both first and second paragraph), which failed to cite the 557—page specification;
`
`finally, among other things, applicants caused conflicting file wrapper histories from one
`
`‘ application to another application. The primary examiner believes that applicants should be
`
`estopped from simultaneously assuming conflicting positions among the various applications.
`
`As related to applicants’ responses in the 191 applications, the portfolio is replete with a pattern
`
`of what appears to be intentional misrepresentation of the legal application of Sections 120 and '
`
`112. The sheer number of these inaccurate responses has resulted in the loss of many years of
`
`the portfolio’s prosecution, and has harmed the public interest. This pattern has caused
`
`unjustifiable and prejudicial delay of the portfolio prosecution, and is grounds for rejection on the
`
`basis of laches (SE amicus brief in support of Symbol Technologies v, Lemelson Medical,
`
`_.Educational & Research Egundation, Limited Partnership, Appendix at 000509-551;w
`
`Timothy R. DeWitt, Does Supreme Court Precedent Sink Submarine Patents?, Appendix at
`
`000552-568; Lem Personalized Mass Media Corp‘, v, The Weather Channel, Inc, et al,, 899 F.
`
`Supp. 239 (ED. Va. 1995), Appendix at 000419—424; see also Ex parte Hull, 191 U.S.P.Q. 157
`
`(P.T.O.B.A. 1975)).
`
`Page 16
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`It appears that, for applications in which applicants claim priority benefit to 1981, applicants have
`
`been improperly characterizing the “the specification” as the 1981 44-page parent specification; in
`
`fact, both the 1‘981 specification and the 1987 557-page specification were the appropriate
`
`references. According to the applicants, all that was required to gain priority benefit would have
`
`been to demonstrate written description in the 44-page parent specification. However, applicants
`
`would have been required to demonstrate written description in both the 1987 and the 1981
`
`specification, in order to claim priority benefit to 1981. However, the written description of the
`
`1981 specification was not incorporated by reference or otherwise included in the 1987
`
`specification. This pattern of references to the wrong specification, and the related material
`
`omissions of written description to the correct (1987) specification, has resulted in unjustifiable
`
`and prejudicial delay. Due to the lack of continuity of written description back to 1981, the
`
`current file history displays no justification for issuance of a patent in these applications.
`
`Additional improprieties are addressed later in this notice.
`
`4.
`
`FINAL NOTICE OF NON-RESPONSIVE AMENDMENT.
`
`Applicants’ Request for Reconsideration (Request) is not responsive to the Initial Notice of Non-
`
`Responsive. (The Initial Notice of Non-Responsive applied to applicants’ amendments.)
`
`Applicants’ nonresponsive amendments are not firlly responsive to the previous office actions.
`\
`
`Applicants’ continued failure to identify the proper written description, even after a request for
`
`proper written description by the primary examiner, as required under Section 112, has firrther
`
`caused unjustifiable and prejudicial delay. This is a Final Notice of Non-Responsive Amendment
`
`Page 17
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`Page 17
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`

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`from the primary examiner (“Final Notice”).
`
`a.
`
`Initial Netiee frem the Pp‘mary Examiner.
`
`The primary examiner previously brought the pattern of material omissions ofwritten description
`
`toapplicants’ attention via the Initial Notice. According to the M.P.E.P., “[O]nce an inadvertent
`
`omission is brought to the attention of the applicants, the question of inadvertence no longer
`
`exists.” M.P.E.P. 714.03. Accordingly, it is irrelevant whether the Non-Responsive
`
`Amendments “appear to be b0na-fide_.” However, the Non-Responsive Amendments do not
`
`“appear to be bona-fide " in view of the evidence before the primary examiner.3 The material
`
`omissions related to written description remain unacceptable and improper under the law.
`
`b.
`
`Between September 1926 and Qetober 1997, Applicants Relied Primarily en the
`1981
`cification Contra
`to he Re uirement under 35 U.S.C.
`120.
`
`Between September 13, 1996 and October 20, 1997, applicants consistently referred primarily to
`
`the 1981 specification in amendments submitted to the U.S.P.T.O.
`
`In doing so, applicants implied
`
`to the U.S.P.T.O. that citations to the 1981 specification, alone, were suflicient to establish
`
`priority benefit to 1981.
`
`3 These issues are related to materially analogous PATTERNS of communications
`between the applicants and the PTO in at least the co-pending application no.’s which are now
`subject to this notice: 08/437,044; 08/437,937; 08/438,206; 08/43 8,659; 08/440,837; 08/441,880;
`08/442,165; 08/442,335; 08/442,507; 08/444,756; 08/445,290; 08/446,429; 08/446,494;
`08/447,711; 08/449,110; 08/449,4l3; 08/449,702; (28/449,800; 08/45 1,3 77; 08/459,216;
`08/469,078; 08/470,448; 08/470,476; 08/471,024; 08/474,139; 08/477,564; 08/478,794;
`08/482,573; 08/483,054; 08/483,174; 08/483,980; 08/487,408; 08/487,649; 08/488,378;
`08/498,002; 08/511,491. However, such pattern extends to the entire patent portfolio
`prosecution corresponding to cases which allege priority benefit to the 44 page parent
`specification. An enumerated list of the portfolio minus the first six patents are illustrated in the
`APPENDIX at pages 000504-506.
`
`10
`
`Page 18
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`

`

`Although applicants made “parallel citations,” citing references to the 1987 specification in
`
`footnotes, applicants primarily cited the 1981 specification in the text of the amendments.
`
`However, applicants knew, or should have known that “continuity of disclosure” required
`
`substantive references to both the 1981 and the 1987 disclosures, as well as the current
`
`disclosure.
`
`On September 13, 1996, Thomas J. Scott, Jr., applicants’ principal counsel, stated as follows, in
`
`discussing In re Bauman, 683 F.2d 405, 407 (C.C.P.A. 1982):
`
`Thus the basic requirements of Section 120 have been summarized as
`(1) copendency (i.e. the later filed application must be filed before “the prior
`application” is patented, abandoned or the proceedings are terminated);
`(2) continuity of disclosure (i.e. it relies upon and is supported by the parent
`application’s specification);
`(3) coinventorship (i.e. the subsequent application lists the same inventor(s) as
`the parent); and
`(4) specific reference to the earlier application (i.e. the continuation application
`references the parent).
`
`Appendix at 000481. It appears, then, that applicants were aware at least as early as September
`
`13, 1996, that “continuity of disclosure” was required. Between September 1996 and October
`
`1997, applicants’ amendments failed to adequately reference all written disclosures necessary to
`
`establish “continuity of disclosure,” which Thomas J. Scott, Jr. recognized to be a “basic
`
`requirement.” The amendments cannot be considered fully responsive. The non-responsive
`
`material omissions, related to written description, are unacceptable and improper under the law.
`
`Accordingly, the non-responsive Amendments do not appear to be bona-fide, since the legal
`
`requirements were known to applicants.
`c.
`Applicants Were Notified In Court As to the Proper Specification Under
`
`ll
`
`Page 19
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`Page 19
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`

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`35
`
`120
`
`h
`
`r A li
`
`n
`
`F il
`
`Brin
`
`h
`
`ific in
`
`h
`
`nin fh
`
`PTO
`
`nr
`
`MPEP.
`
`2001,0610).
`
`.
`,'
`On October 20, 1997, in the ITC Investigation’s Initial Determination, Administrative Law Judge
`
`Paul J. Luckem reproached applicants for improperly identifying written description from the
`
`1981 44-page. parent specification.‘ Specifically, applicants received judicial notice that the
`
`written description for applicants’ claims is necessarily found in the 1987 557-page specification
`
`and not the 1981 44-page parent specification. The non-responsive material omissions of written
`
`description are thus unacceptable and improper under the law. Accordingly,
`
`the Non-Responsive
`
`Amendments do not “appear to be bona-fide. ”
`
`There was inquiry as to whether “continuity of disclosure” existed. According to the
`
`Administrative Law Judge, applicants’ counsel stated that to the extent the “[1981 44-page
`
`disclosure] has relevance, it is because it is part of the file history of the [1987 557-page
`
`disclosure].” See [Part 1 of 2] 1997 ITC LEXIS 307, *252 citing ITC transcript at 3658.
`
`However, “file history” in this case is not the same as “continuity of disclosure,” which would
`
`have required that the written description of the 1981 disclosure be incorporated by reference or
`
`otherwise included in the 1987 disclosure. At no time did applicants’ counsel establish
`
`‘The ITC Investigation began in 1996. Applicants filed a complaint with the United States
`International Trade Commission (the “Commission’\’) asserting that various intervenors were
`importing Digital Satellite Systems (DSSs) that infiinged applicants’ patent claims in violation of
`19 U.S.C. § 1.337(a) (1994) (“Section 337").
`In response, the Commission instituted the
`investigation on December 18, 1996. See 61 Fed. Reg. 66695-96 (1996). The Intervenors