UNITED STA 1ES p A 1ENT 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.
`
`90/012,401
`
`07/20/2012
`
`6218930
`
`0081688-000001
`
`7779
`
`12/21/2012
`7590
`21839
`BUCHANAN, INGERSOLL & ROONEY PC
`POST OFFICE BOX 1404
`ALEXANDRIA, VA 22313-1404
`
`EXAMINER
`
`KE,PENG
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`12/2112012
`
`PAPER
`
`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.
`
`PTOL-90A (Rev. 04/07)
`
`SONY EXHIBIT 1006
`
`Page 1 of 13
`
`

`

`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`MH2 Technology Law Group, LLP
`1951 Kidwell Drive
`Tysons Corner, VA 22182
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012.401.
`
`PATENT NO. 6218930.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1 .550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.0?-04)
`
`Page 2 of 13
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`

`

`Office Action in Ex Parte Reexamination
`
`Control No.
`90/012,401
`
`Examiner
`SIMON KE
`
`Patent Under Reexamination
`6218930
`
`Art Unit
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`
`bO This action is made FINAL.
`aD Responsive to the communication(s) filed on __ .
`c[8J A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part I
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. D Notice of References Cited by Examiner, PT0-892.
`3. D Interview Summary, PT0-474.
`D_
`2.
`[8J Information Disclosure Statement, PTO/SB/08.
`4.
`
`Part II
`
`SUMMARY OF ACTION
`
`1 a.
`[8J Claims 6,8 and 9 are subject to reexamination.
`1 b. D Claims __ are not subject to reexamination.
`2. D Claims __ have been canceled in the present reexamination proceeding.
`3. D Claims __ are patentable and/or confirmed.
`4.
`[8J Claims 6. 8 and 9 are rejected.
`5. D Claims __ are objected to.
`6. D The drawings, filed on __ are acceptable.
`7. D The proposed drawing correction, filed on __ has been (7a)0 approved (7b)0 disapproved.
`8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)D All b)D Some* c)D None
`of the certified copies have
`1 D been received.
`20 not been received.
`
`30 been filed in Application No. __ .
`
`40 been filed in reexamination Control No. __
`
`sO been received by the International Bureau in PCT application No. __ .
`
`* See the attached detailed Office action for a list of the certified copies not received.
`9. D Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C. D.
`11, 453 O.G. 213.
`1 0. D Other: __
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Off1ce
`PTOL-466 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20121213
`
`Page 3 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 2
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`Detailed Action
`
`This office action address claims 6, 8, and 9 of United States Patent Number 6,218,930
`
`(Katzenberg et al.) for which it has been determined in the Order Granting Ex Partes
`
`Reexamination (hereafter the "Order") mailed 9/5112 that a substantial new question of
`
`patentability was raised in the Request for ex parte reexamination filed 7/20112 (hereafter the
`
`"Request").
`
`Examiner notes the order mailed on 9/5112 has raised an SNQ for at least one claim and
`
`therefore all claims 6, 8, and 9 are being reexamined.
`
`IDS Note
`
`The IDS filed 11116112 has been given due consideration.
`
`In addition, where the IDS citations are submitted but not described, the examiner is only
`responsible for cursorily reviewing the references. The initials of the examiner on the PT0-1449
`indicate only that degree of review unless the reference is either applied against the claims, or
`discussed by the examiner as pertinent art of interest, in a subsequent office action. See
`Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc., 110 F.3d 786,
`42 USPQ2d 1295 (Fed. Cir. 1997), 64 FRat 15347, 1223 Off. Gaz. Pat. Office at 125 (response
`to comment 6).
`Consideration by the examiner of the information submitted in an IDS means that the
`examiner will consider the documents in the same manner as other documents in Office search
`files are considered by the examiner while conducting a search of the prior art in a proper field of
`search. The initials of the examiner placed adjacent to the citations on the PT0-1449 or
`PTO/SB/08A and 08B or its equivalent mean that the information has been considered by the
`examiner to the extent noted above.
`Regarding IDS submissions MPEP 2256 recites the following: "Where patents,
`publications, and other such items of information are submitted by a party (patent owner or
`requester) in compliance with the requirements of the rules, the requisite degree of consideration
`to be given to such information will be normally limited by the degree to which the party filing
`the information citation has explained the content and relevance of the information."
`Accordingly, the IDS submissions have been considered by the Examiner only with the
`scope required by MPEP 2256, unless otherwise noted.
`
`Page 4 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 3
`
`Rejections
`
`The rejections below are confined to what has been deemed to be the best available art
`
`from the Request. However, prior to conclusion of this reexamination proceeding, claims must
`
`be patentable over all prior art cited in the order granting reexamination in order to be
`
`considered patentable or confirmed on the reexamination certificate. The references cited in the
`
`request but not utilized in the current office action appear to be largely cumulative to the
`
`teachings in the reference applied below.
`
`Claim Rejection Paragraphs
`
`The following are quotations from the MPEP regarding the types of rejections to be
`
`utilized below:
`
`Claim Rejections- 35 USC§ 102
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States.
`
`(e) the invention was described in (1) an application for patent, published under section 122(b ), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`Claim Rejections- 35 USC§ 103
`
`Page 5 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 4
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`Page 6 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 5
`
`Issue Set ( 1)
`
`Claim Rejections- 35 USC§ 102
`
`Claims 6, 8, and 9 are rejected under 35 U.S.C. 102(b) as being anticipated by Holmdahl
`
`US Patent 5,675,813.
`
`The following claim mappings in the Request are incorporated by reference:
`
`Claims 6-9. (see Request pages 12-29; Exhibit A, pages 1-25)
`
`Issue Set (2)
`
`Claim Rejections- 35 USC§ 102
`
`Claims 6, 8, and 9 are rejected under 35 U.S.C. 102(e) as being anticipated by Wood US
`
`Patent 6,178,514.
`
`The following claim mappings in the Request are incorporated by reference:
`
`Claims 6-9. (see Request pages 30-49; Exhibit B, pages 1-22)
`
`Issue Set (3)
`
`Claim Rejections- 35 USC§ 103
`
`Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over Amoni US Patent
`
`5,884,086 in view of Holmdahl US Patent 5,675,813.
`
`Claim# U.S. Patent 6,218,930
`
`Amoni US Patent 5,884,086 & Holmdahl US
`
`Patent 5,675,813.
`
`Page 7 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 6
`
`6
`
`Method for remotely powering
`
`Amoni Abstract; col. 1, lines 15-16; col. 2, lines
`
`access equipment in a data network,
`
`36-39; col. 2, lines 40-44; col. 1, lines 39-45;
`
`comprising, providing
`
`and col. 3, lines 36-43.
`
`a data node adapted for data
`
`Amoni col. 2, lines 44-47; col. 4, lines 41-44;
`
`switching an access device adapted
`
`col. 4, lines 66-col. 5, lines 2; col. 3, lines 36-
`
`for data transmission,
`
`42
`
`At least one data signaling pair
`
`Amoni fig. 2, item 230, 203 205, 207, and 209;
`
`connected between the data node
`
`fig. 3; col. 3, lines 3, lines 66- col. 4, lines 4)
`
`and the access device and arranged
`
`to transmit data therebetween,
`
`A Main power source connected to
`
`Amoni col. 4, lines 51-65; Fig. 3, col. 5, lines
`
`supply power to the data node
`
`45-48;
`
`A secondary power source arranged
`
`Amoni col. 4, lines 51-65; col. 5, lines 28-33
`
`to supply power from the data node
`
`via said data signal pair to the access
`
`device
`
`Delivering a low level current said
`
`Amoni col. 6, lines 33-35; col. 8, lines 19-26;
`
`main power source to the access
`
`device over said data signaling pair
`
`Sensing a voltage level on the data
`
`Amoni teaches determine whether the
`
`signaling pair in response to the low
`
`peripheral device requires any auxiliary power.
`
`level current
`
`Amoni does not each sensing a voltage level.
`
`Page 8 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 7
`
`Holmdahl teaches sensing a voltage level on the
`
`data signaling pair in response to the low level
`
`current. (see Holmdahl; col. 7, lines 3-16; col.
`
`6, lines 49-59; col. 7, lines 19-28)
`
`It would have been obvious to an artisan at the
`
`time of the invention to include Holmdahl's
`
`teaching with method of Amoni in order to
`
`allow the host device to determine whether the
`
`peripheral device is present.
`
`Controlling power supplied by said
`
`Amoni col. 8, lines 27-29, 37-39;
`
`secondary power source to said
`
`access device in response to a
`
`preselected condition of said voltage
`
`level.
`
`Issue Set (3)
`
`Claim Rejections- 35 USC§ 103
`
`Claim 6 is rejected under 35 U.S.C. 103(a) as being unpatentable over William US Patent
`
`5,215,704 in view ofHolmdahl US Patent 5,675,813.
`
`Claim# U.S. Patent 6,218,930
`
`William US Patent & Holmdahl US Patent
`
`6
`
`Method for remotely powering
`
`William col. 5, lines 19-50;
`
`5,675,813.
`
`Page 9 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`access equipment in a data network,
`
`comprising, providing
`
`Page 8
`
`a data node adapted for data
`
`William col. 4, lines 27-41;
`
`switching an access device adapted
`
`for data transmission,
`
`At least one data signaling pair
`
`William col. 4, lines 27-41;
`
`connected between the data node
`
`and the access device and arranged
`
`to transmit data therebetween,
`
`A Main power source connected to
`
`William col. 5, lines 19-50
`
`supply power to the data node
`
`A secondary power source arranged
`
`William col. 5, lines 19-50
`
`to supply power from the data node
`
`via said data signal pair to the access
`
`device
`
`Delivering a low level current said
`
`William col. 5, lines 19-50; because only a
`
`main power source to the access
`
`25% of power provided at the central office is
`
`device over said data signaling pair
`
`actually delivered to the local ISDN modem.
`
`Sensing a voltage level on the data
`
`William does not teach this limitation.
`
`signaling pair in response to the low
`
`Holmdahl teaches sensing a voltage level on the
`
`level current
`
`data signaling pair in response to the low level
`
`current. (see Holmdahl; col. 7, lines 3-16; col.
`
`Page 10 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 9
`
`6, lines 49-59; col. 7, lines 19-28)
`
`It would have been obvious to an artisan at the
`
`time of the invention to include Holmdahl's
`
`teaching with method of William in order to
`
`allow the host device to determine whether the
`
`peripheral device is present.
`
`Controlling power supplied by said
`
`William does not teach this limitation.
`
`secondary power source to said
`
`Holmdahl teaches supplying power only when
`
`access device in response to a
`
`peripheral device is present. (see col. 6, lines
`
`preselected condition of said voltage
`
`43-56; col. 6, lines 67- col. 7, lines 2)
`
`level.
`
`It would have been obvious to an artisan at the
`
`time of the invention to include Holmdahl's
`
`teaching with method of William in order to
`
`provide power when it is needed.
`
`Page 11 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 10
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`
`Conclusion
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`ByEFS-Web:
`
`Registered users ofEFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`httgs://efs.uspto.gov/efile/m,ygortal/efs-re_gistered
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e.,
`electronically uploaded) directly into the official file for the reexamination proceeding, which
`offers parties the opportunity to review the content of their submissions after the "soft scanning"
`process is complete.
`
`Page 12 of 13
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`

`

`Application/Control Number: 90/012,401
`Art Unit: 3992
`
`Page 11
`
`Any inquiry concerning this communication or earlier communications from the
`
`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`/PKE/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/EBK/
`
`I Alexander J Kosowski/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`Page 13 of 13
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`