`
`Exhibit
`
`2007
`
`Exhibit
`
`2007
`
`
`
`
`
`~-~ ~~ UNITED STATES PATENT AND TRADEMARK OFFICE
`~ .. ~
`
`UNITED STATES DEPARTMENT OF' COMMERCE
`United Stales Palrnl and Tradrmark Office
`Addr=: COMMISSIONER FOR PATENTS
`P.O.&. 14SO
`Ale.,.ndria, Virginta 22313-14SO
`v.ww.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`A 'ITORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/000,396
`
`09/23/2008
`
`65 16236
`
`14983-131
`
`1593
`
`09/2212010
`7590
`25315
`BLACK LOWE & GRAHAM, PLLC
`701 FIFTH A VENUE
`SUITE 4800
`SEATTLE, W A 98 I 04
`
`EXAMINER
`
`KISS, ERIC B
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`0912212010
`
`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)
`
`
`
`@UNITED STATES PATENT AND TRADEI'<IARK OFFICE
`
`Commissioner for Paments
`United States Pat<onts and Trademark Office
`P.O.Box 1450
`Alexandria, VA 223 13-1450
`www.uspto.go\'
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`William J. Zychlewicz
`ARMSTRONG TEASDALE LLP
`One Metropolitan Square
`St Louis, MO 63102-2740
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`REEXAMINATION CONTROL NO. : 95000396
`PATENT NO.: 6516236
`TECHNOLOGY CENTER : 3999
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTO L-2070(Re". 07-04)
`
`
`
`ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`Control No.
`
`95/000,396
`Examiner
`
`ERIC B KISS
`
`Patent Under Reexamination
`
`6516236
`Art Unit
`
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 19 February 2010
`Third Party(ies) on __
`
`Patent owner may once file a submission under 37 CFR 1.951 (a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951(b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT($) ARE PART OF THIS ACTION:
`1. 0 Notice of References Cited by Examiner, PT0-892
`2. (8] Information Disclosure Citation, PTO/SB/08
`3. 0 __
`
`PART II. SUMMARY OF ACTION:
`1 a. (8] Claims 1-10 are subject to reexamination.
`1 b. 0 Claims __ are not subject to reexamination.
`2. 0 Claims _ _ have been canceled
`3. (8] Claims 4-7 are confirmed. [Unamended patent claims]
`4. 0 Claims __ are patentable. [Amended or new claims]
`5. (8] Claims 1-3 and 8-10 are rejected.
`6. 0 Claims __ are objected to.
`0 are not acceptable.
`D are acceptable
`7. D The drawings filed on__
`8 0 The drawing correction request filed on __ is:
`0 approved. 0 disapproved.
`9 0 Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`0 been received. D not been received.
`0 been filed in Application/Control No __
`10.0 Other __
`
`U.S. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`Paper No. 20100331
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`The patent owner response filed February 19, 20 I 0, has been received and entered.
`
`Claims 1-10 are currently subject to reexamination.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 3
`
`TABLE OF CONTENTS
`
`I. Note Regarding Continuation ofThis Proceeding Despite Final Court Order ....................... .4
`II. Brief Procedural History .......... ...................................................... .......................................... S
`Ill.
`Information Disclosure Statement ................... ................................................. ......... .......... 6
`JV.
`Scope of Reconsideration ................. ........................ ................ .. .. ....................................... 7
`A. Arguments and Evidence Considered .................................................................................. 7
`B. Arguments and Evidence Not Considered .................... ....................................................... 7
`V. Response to Arguments ........................................................................................................... 9
`A. C\ain1 Construction ..... .... ..................................................................................................... 9
`B. Claims 1-10 in view of Ability Systems (Response at 4-16) ............................................ 12
`C. Claims 1-10 in view of Sorensen (Response at 16-23) ..................................................... 13
`D. Claims 1-10 in view of SOSAS (Response at 23-24) ........................................................ ]?
`E. Claims 1-10 ilil vi~w of GDI (King, Petzold, and WINDOWS NT) (Response at 24-45) 19
`Claim Rejections under 35 U.S.C. § I 02(b) ................ ..................... ............... .................. 23
`VI.
`VII. Confirmed Claims .............................................................................................................. 24
`VIII. Other Patents and Printed Publications Cited in the Request.. ................................. ......... 24
`IX.
`Conclusion ......................................................................................................................... 25
`
`
`
`Application/Control Number: 95/000,396
`Art Un~t: 3992
`
`Page 4
`
`I.
`
`Note Regarding Continuation of This Proceeding Despite Final Court Order
`
`35 U.S.C. 317(b) provides in part that, "Once a final decision has been entered against a
`
`party in a civil action arising in whole or in part under section 1338 of title 28, that the party has
`
`not sustained its burden of proving the invalidity of any patent claim in suit[,] ... an inter partes
`
`reexamination requested by that party or its privies on the basis of (issues which that party or its
`
`privies raised or could have raised in such civil action] may not thereafter be maintained by the
`
`Office, notwithstanding any other provision of this chapter."
`
`On December 3, 2009, the Third Party Requester filed a Notification of Concurrent
`
`Proceedings Under 3 7 CFR § 1.985(b), indicating that, "Patent Owner and Requester have
`
`settled their underlyin g liti gation . . _ involving the patent at issue in this inter partes
`
`reexamination proceeding, and the U.S. District c·oun ... has entered a final, non-appealable
`
`Order and Judgment dismissing all claims, defenses, and counterclaims asserted in that action
`
`with prejudice, including, without limitation, any and all claims challenging the presumption of
`
`validity of the patent at issue." A copy ofthe final order was attached to the notification.
`
`However. neither party has made a proper showing under§ 317(b) necessitating termination of
`
`a ll or part of this reexamination proceeding at this time.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 5
`
`II.
`
`Brief Procedural History
`
`On January 23, 2009, a Non-Final Rejection was mailed.
`
`On April 23, 2009, the patent owner filed a response that did not comply with the page
`
`limit set by 37 CFR 1.943.
`
`On May 22, 2009, the third party requester filed comments directed to the patent owner's
`
`defective response.
`
`On June 11, 2009, the patent owner petitioned to have the third party requester's
`
`comments returned without consideration.
`
`On June 25, 2009, the third party requester filed an opposition to the patent owner's
`
`petition.
`
`On February 4, 2010, a Notice Re Defective Paper in Inter Partes Reexamination was
`
`mailed, informing the patent owner of the defects in the April 23, 2009, response and noting that
`
`the previously submitted third party requester comments were moot as being directed to a
`
`defective response. The patent owner was given a 15-day period to correct the noted defects, and
`
`the third party requester was given a 30-day period beginning from the date of service of patent
`
`owner's response to the Notice within which to submit comments directed to the Office action or
`
`the patent owner's response to the Notice.
`
`On February 19, 20 l 0, the patent owner submitted a response to the Notice, along with a
`
`conditional petition under 37 CFR § 1.1 83 to waive the page limit under 3 7 CFR § 1.943(b).
`
`No subsequent third party requester comments have been received.
`
`On May 6. 20 I 0. the palenl owner's conditional petition was dismissed as moot.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 6
`
`Ill.
`
`Information Disclosure Statement
`
`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 088 or its equivalent mean that the information has been considered by the
`
`e~aminer to the extent noted above. MPEP § 609.
`
`Regarding IDS submissions MPEP 2656 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."
`
`The initials of the examiner placed adjacent to the citations on the PT0-1449 or
`
`PTO/SB/08A and 088 or its equivalent mean that the information has been considered by the
`
`examiner to the extent noted above.
`
`The lOSs tiled April23, May 20, 26, and September 9, 2009, and September 9, 2010,
`
`have been given due consideration. However, that which are not either prior art patents or prior
`
`art printed publications have been crossed out so as not to appear reprinted on the front page of
`
`the patent. Additionally, incomplete or illegible citations have also been crossed out.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 7
`
`IV.
`
`Scope of Reconsideration
`
`A.
`
`Arguments and Evidence Considered
`
`In the interest of special dispatch, the patent owner's response filed February 19,2010
`
`has been considered to the fullest appropriate extent. Specific portions of the response excluded
`
`from consideration are described in the next subsection of this action. Further, the patent
`
`owner's arguments presented under the heading "WITH ORA WN ISSUES," (Response at 23-
`
`45), have been considered (except as noted below) as the total page count of the response does
`
`not exceed 50 pages in length, including these arguments. (See Decision Dismissing Petition,
`
`5/6/2010, p. 3.)
`
`The redacted declarations of Richard A . Mathias, Richard J. Malina, Maureen Stone,
`
`Andrew B. Lev~'· Nasa Omoigui, and Don Chouinard filed February 19, 20 I 0, have been
`
`considered.
`
`The declarations of Charles Petzold, Steve McConnell, Jeffrey Richter, and Joel B. Ard
`
`liled April 23, 2009, have been considered.
`
`B.
`
`Arguments and Evidence Not Considered
`
`The patent owner's response filed April 23, 2009, has not been considered for reasons set
`
`forth in the Notice Re Defective Paper in Inter Partes Reexamination mailed February 4, 2010.
`
`The third party requester's comments tiled May 22, 2009, have not been considered for
`
`reasons set forth in the Notice mailed February 4, 20 I 0.
`
`The declarations of Richard A. Mathias, Nosa Omoigui, Richard J. Malina, Andrew B.
`
`Levy, Don Chouinard, and Maureen Stone, as filed on April 23, 2009, have not been considered
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 8
`
`because the patent owner has replaced these declarations with redacted versions to adldress the
`
`defects noted in the Notice mailed February 4, 2010.
`
`The patent owner's response, including any anached or cited evidence, filed in the ex
`
`parte reexamination assigned to Control No. 90/009,282 has not been considered in this inter
`
`partes reexamination, unless the same arguments or evidence have also been submitted by the
`
`patent owner in this reexamination proceeding. Further, the conclusions reached in an Office
`
`action in the '282 ex parte reexamination cited by the patent owner have not been considered in
`
`this inter partes proceeding. lt is not appropriate to incorporate by reference any portion of the
`
`ex parte proceeding into this inter partes proceeding because the ex parte proceeding is
`
`~:onduct~d under statutes and rules that deny the third-party requester a n opportunity to comment
`
`on the patent owner's response, and thus, ex parte Office actions are generated without
`
`considering any rebuttal by the third party requester. Compare 35 U.S. C.§ 305 and 37 CFR §
`
`1.550(g) with 35 U.S.C. § 314(b)(2) and 37 CFR § 1.947.
`
`Accordingly, the arguments contained in the patent owner's two-page letter attached to
`
`the patent owner's response, characterizing the conclusions of an Office action in the '282 ex
`
`parte reexamination, have not been considered. (Response to PTO's Notice Dated February 4,
`
`2010, 2/19/2010, p. 2.) Additionally, under the " WITHDRAWN ISSUES" heading in the patent
`
`owner's response, footnote 12 and the citation to the '282 ex parte reexamination on pp. 23·24 of
`
`the patent owner's response have not been considered.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 9
`
`V.
`
`Response to Argumems
`
`To the extent that the response below includes statements that tine patent owner's
`
`arguments are not persuasive. these statements should be understood to include the cited
`
`evidence in the experts' declarations.
`
`A.
`
`Claim Construction
`
`During reexamination, claims are given the broadest reasonable interpretation consistent
`
`with the specification and limitations in the specification are not read into the claims. In re
`
`Yamqmo/o. 740 F.2d 1569 (Fed. Cir. 1984)). [t would be error to apply the same mode of claim
`
`interpretation that is used by courts in litigation. In reAm. Acad. ofSci. Tech. Ctr. , 367 F.3d
`
`1359, 1369 (Fed. Cir. 2004). In reexamination, the PTO is not bound by a Markman Order
`
`issued in an earlier litigation to which the PTO was not a party. In re Texas Holdings C01p., 498
`
`F.Jd 1290, 1297 (Fed. Cir. 2007) (holding that issue preclusion did not apply, even when the
`
`District Court issued an order of dismissal with prejudice following a pre-trial settlement
`
`between the parties).
`
`"Even when the specification describes only a single embodiment, the claims of the
`
`patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit
`
`the claim scope using words or expressions of manifest exclusion or restriction."' Liebel-
`
`Flasheim Co. v. Medrad, Inc., 358 F.Jcl 898, 906 (Fed. Cir. 2004); In reAm. Acad. o[Sci. Tech.
`
`Ctr. , 367 F.Jd at 1369. "'[R]eading a claim in the light ofthe specification,' to thereby interpret
`
`limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of
`
`the specification into a claim.' to thereby narrow the scope of the claim by implicitly adding
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page I 0
`
`disclosed limitations which have no express basis in the claim." In re Prater, 415 F.2d 1393,
`
`1404 (CCPA 1969).
`
`The '236 patent disclosure c.ontains no words or expressions of manifest exclusion or
`
`restriction. In fact, the '236 patent at least twice explicitly invites a broader reading of the claim
`
`terms. See '236 patent at col. 1, lines 37.40 ('The scope of the present invention should thus be
`
`determined based on the claims appended hereto and not the following detailed description."),
`
`col. 48. lines 3-7 ("The present embodiments are therefore to be considered in all respects as
`
`illustrative and not restrictive, the scope of the invention being indicated by the appended claims
`
`rather than by the foregoing description.").
`
`further, the '236 patent disclosure contains no clear, deliberate, and precise definitions of
`
`the claim terms "component function", "component code", "driver function", and "driver code"
`
`such that the incorporation of such definitions into the claims would be appropriate. See In re
`
`Paulsen. 30 F.3d 14 75, 1480 (Fed. Cir. 1994).
`
`Under the broadest reasonable interpretation consistent with the specification, the
`
`examiner interprets "component function", "component code", "driver function", and "driver
`
`code" as follows:
`
`"component function" is a function associated with component code, at least some
`
`of such component functions being capable of association with at least some of the driver
`
`functions;
`
`"component code" is code that associates at least some of the component
`
`functions with at least some of the driver functions;
`
`"driver function" is a function that is associated with a motion control operation;
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page II
`
`"driver code" is code that implements the motion control operations associated
`
`with at least some of the driver functions; and
`
`the component functions are separate from the driver functions.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 12
`
`B.
`
`Claims 1-10 in view of Ability Systems (Response at 4-16)
`
`In footnote 4 on pp. 8-9 of the response, the patent owner asserts that the Ability 3
`
`reference is not prior art. suggesting that its publication date is 2003. Upon closer inspection of
`
`the Ability 3 reference, the examiner agrees. The Ability 3 document bears a copyright date
`
`range of" \989-2003." While this range of dates suggests that there was a version of the Ability
`
`3 document published prior to the filing date of the '236 patent, the particular version of the
`
`·
`
`Ability 3 document of record was apparently published only as early as 2003. Accordingly, the
`
`Ability 3 document of record is not a prior art printed publication applicable against the '236
`
`patent.
`
`The rejection of claim 10 under 35 U.S.C. § 103(~1) as being unpatentable over
`
`Abilit)' l, Ability 2, and Ability 3 is withdrawn.
`
`The patent owner argues that the Ability 1 and Ability 2 references fail to teach or
`
`suggest all of the features in the claims. The examiner agrees in part.
`
`The arguments regarding hardware independence and the claimed application program
`
`calling a function are not persuasive because these features are not required by the claims.
`
`However, the arguments on p. I 0, paragraph 2, through p. 13, paragraph I, are
`
`persuasive. Upon careful review of the Ability references and cited evidence, the examiner
`
`agrees with the patent owner's reasoning why the Ability references do not teach or suggest the
`
`driver code or driver functions in the context of the claims, i.e., core driver functions associated
`
`with primitive motion control operations, extended driver functions associated with non-
`
`primitive motion control operations, and a set of software drivers, each associated with one
`
`motion control device in the group of supported motion control devices, each software driver
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 13
`
`comprising driver code for implementing the motion control operations associated with at least
`
`some of the driver functions.
`
`The rejection of claims 1~4 and 7~9 under 35 U.S.C. § 103(a) as being unpatentable
`
`over Abilit)' I and Ability 2 is withdrawn.
`
`C.
`
`Claims 1-10 in view of Sorensen (Response at 16-23)
`
`The patent O\vner essent ially argues that Sorensen teaches only generating a sequence of
`
`supervisor commands for a robotic system, which cannot be reasonably interpreted as a sequence
`
`of control commands for controlling a selected motion control device, or in other words, that
`
`Sorensen does not teach motion control. The examiner disagrees.
`
`The cited evidence fails to establish that Robotics excludes Motion Control. Rather, the
`
`cited experts appear to agree that Motion Control is a subfield of Robotics. (See, e.g., Mathias
`
`Dec!. at para. 153; Malina Dec!. at para. 67 (describing a robot as containing movable parts
`
`associated \vith motion controllers).) While Sorensen is concerned with task-level control, the
`
`task execution described by Sorensen requires motion control. See, e.g., Sorensen at p. 1 ("The
`
`robot in turn would locate the part, choose a proper tool, choose a proper approach to avoid
`
`collision, and grasp the part."), p. 6 (moving the camera near chipS with a Z offset of I 0).
`
`Further, the very broad definition of "programmable motion controller" provided by Malina, "the
`
`application of programmable hardware and software (in conjunction with input sensory devices,
`
`actuators, and other feedback devices) for the control of one or more linear or rotary motions,"
`
`appears to be consistent with the operation of the system described by Sorensen in that the
`
`definition would appear to include both high-level and low-level motion control. (Malina Oecl.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 14
`
`at para. 65.) The further descriptions of what motion controllers "generally" or "typically"
`
`include or require are not limiting definitions, and thus are not persuasive in distinguishing over
`
`Sorensen. (See Malina Decl. at para. 66.)
`
`The patent ovvner fUI1her argues that Sorensen's macros are not "motion control
`
`components" as used in the claim and specification because they must be re-compiled every time
`
`new hardware is added, and they do not expose functions at run-time. The examiner disagrees.
`
`The claims only require that a motion control component be for generating the sequence
`
`of control commands for controlling the selected motion control device, based on the component
`
`functions of the application program, the component code associated with the component
`
`functions, and the driver code associated with the selected software driver. Sorensen teaches this
`
`(in a manner consistent with the specification), for example at 186-187 (describing macros
`
`callable by a client process and executable to carry out motion control by calling specific
`
`drivers). Lack of re-compilation and exposing of functions at run-time are simply not required
`
`by the claims. As noted above under subsection A, no definitions of any of the claim terms are
`
`given in the specification, and instead the specification invites broad reading of the claims.
`
`During reexamination, claims are given the broadest reasonable interpretation consistent with the
`
`specification and limitations in the specification are not read into the claims. In re Yamamoto,
`
`740 F.2d 1569.
`
`The patent owiller further argues that the macros described in Sorensen are not hardware
`
`independent instructions corresponding to the component functions, nor do they correspond to
`
`component code. The examiner disagrees.
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 15
`
`As noted above under subsection A, hardware~independence is not required by the
`
`claims. The component functions are the macro library described throughout the text and listed
`
`in Appendix A. Sorensen at 163~ 183. The component code is the code that makes up the macros
`
`in the macro library. The argument that Sorensen's design is not a component design because it
`
`is not built using a component framework is without merit. The macros of Sorensen are clearly
`
`components in that they are discrete elements making up the larger library.
`
`The patent owner further argues that the macros of Sorensen do not teach component
`
`code and component functions because such an interpretation would disregard the associative
`
`function of the motion control component of the claimed architecture. The examiner disagrees.
`
`As noted above, "component code" is code that associates at least some of the component
`
`functions with at least some of the driver functions. This feature is met by Sorensen's calls
`
`within the application to macros within the macro library (component functions), where the
`
`macros are implemented with macro code (component code) which calls the driver functions
`
`(cross~references some of the component functions with driver functions). "Driver code" is
`
`code that implements the motion control operations associated with at least some of the driver
`
`functions. This is met by Sorensen's calls to the hardware-specific drivers from the macro code
`
`(e.g., calls to the KAREL and DARL driver code for the move_to_ele and move_to_until
`
`macros).
`
`The patent owner further argues that the macro as described by Sorensen can be neither
`
`the component functions nor the component code because the generation of motion control
`
`commands in the claimed invention occurs in real time without requiring recompiling the
`
`
`
`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 16
`
`application program. Because this alleged distinction is not in the claims, the examiner
`
`disagrees.
`
`The patent owner further argues that the device drivers of Sorensen are not the device
`
`drivers :in the claim because the claimed driver code "is an essential part of the process of
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`generating motion control commands because the application program and/or component code
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`are able to operate in a '.vay that is truly independent of the hardware used." Because this
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`hardware independence is not required by the claims, the examiner disagrees.
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`The patent owner further argues that Sorensen does not teach a run-time selected
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`destination because the destination must be chose pre-compile time, when the user hard-codes
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`robot names and pose details into macros. However, the claims do not require the run-time
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`selection of streams. Because the claims do not require run-time selection, nor do they appear to
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`imply run-time selection, this argument is not persuasive in distinguishing the teachings of
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`Sorensen from the claimed invention.
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`Claims 4 and 7 recite the additional features of emulating motion control operations
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`associated with non-supported (having no driver code associated therewith) extended driver
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`functions by generating control commands associated with a combination of core driver
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`functions (claim 4) and means for determining a deriver unit system employed by the software
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`drivers and means for converting an application unit system employed by the application
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`program into the driver unit system (claim 7). Ability I and Ability 2 were relied upon as
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`teaching these features, but as noted above, The Ability references present significant
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`deficiencies regarding their applicability to independent 1 that are not overcome in the rejection
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`
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`Application/Control Number: 95/000,396
`Art Uni t: 3992
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`Page 17
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`of dependent claims 4 and 7 such that a reasonable rationale for combining the cited teachings
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`can be articulated as part of a proper obviousness analysis.
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`The rejection of claims 4 and 7 under 35 U.S.C. § 103(a) as being unpatentable over
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`Sorensen, Abilit)' I, and Ability 2 is withdrawn.
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`D.
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`Claims 1-10 in view of SOSAS (Response at 23-24)
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`The examiner agrees with the patent owner that SOSAS is not a prior art printed
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`pub! ication.
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`"Because there are many ways in which a reference may be disseminated to the interested
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`public, ' public accessibility' has been called the touchstone in determining whether a reference
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`constitutes a 'printed publication' bar under 35 U.S.C. § I 02(b)." In re Hall, 781 F.2d 897, 898-
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`899 (Fed. Cir. 1986). A reference is publicly accessible "upon a satisfactory showing that such
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`document has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising r,easonable diligence, can
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`locate it...." SRI /nt'l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 11 94 (Fed.Cir.2008) (quoting
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`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.Cir.2006)).
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`Documents and items only distributed internally within an organization which are
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`intended to remain confidential are not "printed publications" no matter how many copies are
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`distributed. MPEP § 2128.0 I. There must be an existing policy of confidentiality or agreement
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`to remain confidential within the organization. ld Mere intent to remain confidential is
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`insufficient. In re George, 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports
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`
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 18
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`disseminated in-house to only those persons who understood the policy of confidentiality
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`regarding such reports are not printed publications even though the policy was not specifically
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`stated in writing.); Garret C01p. v. United States, 422 F.2d 874, 878, 164 USPQ 521, 524 (Ct.
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`Cl. 1970) ("While distribution to government agencies and personnel alone may not constitute
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`publication ... distribution to commercial companies without restriction on use clearly does.");
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`Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931 , 15 USPQ2d R321 (Fed. Cir. 1990)
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`(Four reports on the AESOP-8 military computer system which were not under security
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`classitication were distributed to about fifty organizations involved in the AESOP-B project. One
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`document contained the legend "Reproduction or further dissemination is not authorized." The
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`other documents were of the class that would contain this legend. The documents were housed in
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`Mitre Corporation's library. Access to this library was restricted to those involved in the
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`AESOP-8 project. The court held that public access was insufficient to make the documents
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`"printed publications."); c.f Kyocera Wireless Corp. v. In! 'I Trade Comm 'n, 545 F.3d 1340 (Fed.
`
`Cir. 2008) (GSM specifications held sufficiently accessible where they were "publicly available
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`and released as consistent sets," were visible to any member of the interested public without
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`requesting them from an ETSl member, and were described in a seven-hundred page technical
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`book published with the express purpose of giving wider access to the GSM standard).
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`The evidence of record shows that the SOSAS documents contained a restrictive legend
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`that read, "Distribution of this material is only authorized to U.S. government agencies and their
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`contractors in order to protect information and critical technology data. Distribution to non-U.S.
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`citizens or companies is prohibited. Other request for this document shall be referred to
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`WLIMTIB." See SOSAS Vol. 11, p. iv; Ard Dec. paras. 20-24.
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`
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`Application/Control Number: 95/000,396
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`Art Unit: 3992
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`Page 19
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`The evidence of record does not show that the SOSAS documents were disseminated or
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`otherwise made available to the extent that persons interested and ordinarily skilled in the subject
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`matter or art (other than the SOSAS/NGC participants receiving copies under a confidentiality
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`agreement) exercising reasonable diligence, could locate the SOSAS documents. See Ard Dec.
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`paras. 12-14.
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`The April 9, 2008, release of the SOSAS Draft Report was apparently due to a procedural
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`error in FOIA processing. See Ard Dec. paras. 22-23, 30-3 1.
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`The evidence of record supports the conclusion that the SOSAS Draf