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.
`
`90/008,965
`
`12/18/2007
`
`5617567
`
`6883.23 (3)
`
`5913
`
`03/14/2008
`32605
`·7590
`MACPHERSON KWOK CHEN & HElD LLP
`2033 GATEWAY PLACE
`SUITE400
`SAN JOSE, CA 95110
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 03/14/2008
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`001
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE·
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`Donald Daybell
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`4 Park Plaza, IP PROSECUTION DEPT., SUITE 1600
`Irvine, CA 92614-2558
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www .uspto.gov
`
`Date:
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. : 90008965
`PATENT NO. : 5617567
`ART UNIT : 3992
`
`Enclosed is a copy of the latest commlJnication 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)).
`
`002
`
`

`

`Order Granting I Denying Request For
`Ex Parte Reexamination
`
`Control No.
`
`90/008,965
`Examiner
`
`CHARLES R. CRAVER
`
`Patent Under Reexamination
`
`5617567
`Art Unit
`
`3992
`
`--The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 18 December 2007 has been considered and a determination
`has been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)D PT0-892,
`b)~ PTO/SB/08,
`1. 0 The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`c)~ Other: DETAILED ACTION
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`2. ~ The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S. C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`a) 0 by Treasury check or,
`b) [g) by credit to Deposit Account No. 15-0665, or
`c) 0 by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`cc:ReQuester (if third oartv reQuester l
`U.S. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20080313
`
`003
`
`

`

`Application/Control Number: 90/008,965
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`5.
`
`1. A Substantial New Question of Patentability (SNQ) affecting claims of US Patent
`5,617,567 is not raised by the request for reexamination filed 12/18/07 by the
`Third Party requestor.
`2. Reexamin~tion has been requested of claims 1-16 of the instant '567 Patent.
`3. The instant Patent is currently assigned to FST and issued 4/1/97 based on US
`Pat Application Ser. No. 08/439,013, filed 5/11/95 as a Division of Serial Number
`08/083,361, itself a continuation of Serial Number 07/526,424, filed 5/21/90. The
`instant Patent is still within its enforceability period.
`· 4. The instant Patent under Reexamination is currently under litigation, see
`Financial Systems Technology, eta/. v. Oracle Corporation, Case No. 2:04-CV-
`358-TJW (E.D. Tex.), October 12, 2004.
`In the request, the Third Party asserts that claims are anticipated under 35 USC
`102, rendered unpatentable under 35 USC 1 03 or rendered unpatentable under
`Double Patenting by the following references:
`a. Ramez Elmasri and Shamkant B. Navathe, Fundamentals of Database
`Systems
`(1989);
`b. Toby J. Teorey, et al., A Logical Design Methodology for Relational
`Databases Using the Extended Entity-Relationship Model, Computing
`Surveys, Vol. 18, No. 2 (June 1986);
`c. M.M. Zloof, Query-by-Example: a data base language, IBM Systems
`Journal, No.4, 1977, pp. 324-343;
`d. US Patent No. 4,506,326 to PhilipS. Shaw, et al.
`6. The Third Party asserts that above listed prior art anticipates instant claims as
`follows:
`a.
`It is asserted that Elmasri et al anticipates claims 1-16;
`7. The Third Party asserts that above listed prior art renders unpatentable instant
`claims as follows:
`a.
`It is asserted that Elmasri et al in view of Shaw renders obvious claims 1-
`16;
`It is asserted that Shaw in view of Zloof and Teorey renders obvious
`claims 1-16;
`It is asserted that Zloof in view of Teorey renders obvious claims 1-16.
`c.
`8. The above references fail to raise an SNQ over claims 1-16 of the instant Patent.
`First, the Zloof, Shaw and Teorey references are of record in a copending
`reexamination proceeding before the Office, namely 90/007,705, and have been
`considered thusly by a reasonable Examiner with regards to the instant claims.
`Secondly, the Elmasri reference fails to raise an SNQ in that it is considered
`cumulative to the record of art previously cited with regards to the instant Patent.
`Note that the Elmasri reference teaches a basic overview of relational databases
`including features that are taught by other of the numerous references of record
`before the Office, as even noted by the Third Party in the description of Elmasri
`
`b.
`
`004
`
`

`

`Application/Control Number: 90/008,965
`Art Unit: 3992
`
`Page 3
`
`(see the instant Request at 17 -27). The proffered references thus fail to raise a
`substantial new question of patentability regarding claims 1-16 in the instant
`Patent.
`9. Regarding Third Party's statements on pp. 116-131 of the instant Request, such
`are drawn to arguments in response to a different reexamination proceeding than
`the instant one and thus said statements fall out of the scope of the instant
`reexamination proceeding and are not considered. It is noted that even if said
`response was filed in the copending 90/007,705 proceeding, no reply or
`submission from the Requestor will be considered after that filed in response to a
`duly-filed Patent Owner's statement in an Ex Parte reexamination. Please see
`MPEP 2251 and 37 CFR 1.535.
`10. Claims 1-16 will not be reexamined in the instant proceeding.
`
`Conclusion
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties
`in a reexamination proceeding. Additionally, 35 U.S. C. 305 requires that reexamination
`proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)). Extension of
`time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`The Patent Owner is reminded of the continuing responsibility under 37 CFR 1.565(a),
`to apprise the Office of any litigation activity, or other prior or concurrent proceeding,
`involving the instant Patent throughout the course of this reexamination proceeding.
`
`ALL correspondence relating to this ex parte reexamination proceeding should be be
`directed as follows:
`Please mail any communications to:
`
`Attn: Mail Stop "Ex Parte Reexam"
`Central Reexamination Unit
`Commissioner for Patents
`P. 0. Box 1450
`Alexandria VA 22313-1450
`
`Please FAX any communications to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`Please hand-deliver any communications to:
`
`Customer Service Window
`Attn: Central Reexamination Unit
`
`005
`
`

`

`Application/Control Number: 90/008,965
`Art Unit: 3992
`
`Randolph Building, Lobby Level
`401 Dulany Street
`Alexandria, VA 22314
`
`Page 4
`
`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.
`Signed:
`
`/Charles R Craver/
`Examiner, Art Unit 3992
`
`Charles Craver
`Primary Examiner
`Central Reexamination Unit 3992
`(571) 272-7849
`
`Conferees:
`
`/Roland G. Foster/
`Examiner, Art Unit 3992
`
`ERIC S. KEASEL
`CRU SPE-AU 3992
`
`006
`
`