`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Adams: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 223 Iii-1450
`www.mpto.gov
`
`90/007,707
`
`09/01/2005
`
`5826259
`
`9 I 55
`
`MACPHERSON KWOK CHEN & HEID LLP
`1762 TECHNOLOGY DRIVE, SUITE 226
`SAN JOSE, CA 95110
`
`61‘- 06y. n C ourIeleIlL
`
`3991
`DATE MAILED: 09/30/2005
`
`\
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`iBM EX. 1 O1 7
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`P.o. Box14so
`Alexandria. VA 2231 3-1 450
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`
`THIRD PARTY REQUEerR's CORRESPONDENCE ADDRESS
`
`9/30/2005
`
`Donald E. Daybell
`
`ORRICK HERRINGTON & SUTCLIFFE LLP
`
`4 Park Plaza, Suite 1600
`
`Irvine, CA. 92614
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO 90/007707
`
`PATENT NO.
`
`5,826,259
`
`ART UNI
`
`3900
`
`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 replly has passed, no submission on behalf of the ex parte
`reexamination requester will be acknowledged or considered (37 CFR 1.550(9)).
`
`002
`
`002
`
`
`
` Patent Under Reexamination
`
`.
`.
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`90/007,707
`E
`_
`“mm"
`
`St, John Caurtenay Ill
`
`5826259
`M u 1
`"'
`
`3992
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 01 September 2005 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)I:I PTO-892,
`
`b)[X| PTO-1449,
`
`c)I:I Other:
`
`1. X The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`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. I:] The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(0)). 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 CFR1.181 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) E] by Treasury check or,
`
`b) E] by credit to Deposit Account No.
`
`, or
`
`c) E] by credit to a credit card account, unless otherwise notified '(35 U.S.C. 303(0)).
`
`14””
`
`St. ohn Courtenaylll
`Pr
`ary Examiner
`Art Unit: 3992
`
`if third 3 reuester
`cchecuester
`US. Patent and Trademark Office
`PTOL-471 (Rev. 04-01)
`
`V
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20050923
`
`003
`
`003
`
`
`
`Application/Control Number: 90/007,707
`
`Page 2
`
`Art Unit: 3992
`
`Response to Request for ex parte Reexamination
`
`1. A substantial new question of patentability affecting claims of United
`
`States Patent number 5,826,259 is raised by the request for ex parte
`
`reexamination.
`
`2. Reexamination has been requested for claims 1-18 of US. Patent number
`
`5, 826,259 (‘259 patent).
`
`3. The ‘259 patent is currently assigned to Financial Systems Technology of
`
`Malvern, Victoria, Australia. The.‘259 patent application filing date was May
`
`22, 1997 and the patent issued on Oct. 20, 1998. The ‘259 patent is a
`
`continuation application and claims priority to Ser. No. 08/439,207, filed May
`
`11, 1995, now US. Pat. No. 5,675,779, which is a division of Ser. No.
`
`08/083,861, filed June 28, 1993, now abandoned, which is a continuation of
`
`Ser. No. 07/526,424, filed May 21, 1990, now abandoned.
`
`4. In the request for reexamination, the requester alleges (page 7) that all
`
`‘259 patent claims 1-18 are either anticipated under 35 U.S.C. §102 and/or
`
`obvious under 35 U.S.C. §103, in light of the following references,
`
`. Tsichritzis, D., “LSL: A Link and Selector Language”,
`
`Proceedings of the 1976 ACM SIGMOD International
`
`Conference on Management of Data Washington, DC. June
`
`2-4, 1976.
`
`(“Tsichritzis”)
`
`. Munz, Rudolf, “The Well System: A Multi-user Database
`
`System Based on Binary Relationships and Graph-Pattern-
`
`004
`
`004
`
`
`
`Application/Control Number: 90/007,707
`
`Page 3
`
`Art Unit: 3992
`
`Matching”, 3 Information Systems 99-115 (Pergamon
`
`Press 1978) (“Munz I”.
`
`o Munz, Rudolf, Design of the Well System, in Entity-Relationship
`
`Approach to Systems Analysis and Design, Proc. lst
`
`International Conference on the Entity-Relationship Approach,
`
`505-522 (Peter Chen, ed. 1979) (“Munz II”).
`
`. Ashok Malhotra, Yakov Tsalalikhin, Donald P. Pazel, Luanne M.
`
`Burns and Harry M. Markowitz, “Implementing an Entity-
`
`Relationship Language on a Relational Data Base," IBM Research
`
`Report RC 12134 (#54499) (Aug. 27, 1986) (“Malhotra”).
`
`5. It is agreed that at least the “Tsichribis” reference raises a substantial
`
`new question of patentability (SNQ) based on the analysis, infra, with
`
`respect to at least independent claim 10. A discussion of the specifics
`
`follows:
`
`6. With respect to at least independent claim 10, Tsichritzis teaches a
`
`relational database processing system [Tsichritzis describes a relational
`
`system, e.g., see page 123, paragraph 2], comprising:
`
`.
`
`an entity definition table containing a first entity type record defining a
`
`first entity type [Tsichritzis describes the RECORD DEFINITION TABLE
`
`(RDT) containing records for each record type (i.e., entity type). See
`
`RECORD DEFINITION TABLE, page 124, paragraph 2. Thus, the
`
`005
`
`005
`
`
`
`Application/Control Number: 90/007,707
`Art Unit: 3992
`
`I
`
`Page 4
`
`RECORD DEFINITION TABLE corresponds to the instant “entity
`
`definition table” as claimed];
`
`.
`
`a first entity instance table associated with the first entity type
`
`[Tsichritzis discloses that a record in the RECORD DEFINITION TABLE
`
`specifies the corresponding entity instance table. Thus, each entity
`
`type defined in RECORD DEFINITION TABLE is associated with a
`
`corresponding entity instance table; see, e.g., page 125, paragraph 3.
`
`Specific example:
`
`m m Houses
`
`attribute address c_h__a_r 20
`
`See e.g., page 123, paragraph 5. The table name “Houses” in the
`
`above record definition identifies the entity instance table];
`
`o
`
`a plurality of entity instance records stored in the first entity instance
`
`table [Tsichritzis discloses the "’LOAD" command that adds the data
`
`from a file (which may be created external to the database system) to
`the record type; see e.g., page 125, paragraph 3.
`
`Specific example:
`
`C_leg M Lo_ad Employees f_rom m Personnel
`
`The above command loads the contents of the
`
`“Personnel” data' file to the record type
`“Employees” in the database. After this command, all entities of type
`
`employees are now loaded in “Employees" table. Thus, the employee
`
`table (i.e., “entity instance table”) contains a plurality of entity
`
`instance records; see, e.g., page 125, paragraph 3];
`
`006
`
`006
`
`
`
`Application/Control Number: 90/007,707
`
`Page 5
`
`Art Unit: 3992
`
`a relation definition table containing a first relation type record
`
`defining a provided relation type [Tsichritzis discloses the use of links
`
`(see e.g., p. 124, paragraph 6). Links define connections (access
`
`paths) between record types. The records for the link definitions stored
`
`in the LINK DEFINITION TABLE therefore correspond to a relation type
`
`record as claimed in the ‘259 patent:
`
`Specific Example:
`
`m l_inl_< own between Houses M
`
`Employees where Employees.Last_name=Houses.owner
`
`See e.g., page 124 paragraph 6. The definitions for links are stored in
`
`the LINK DEFINITION TABLE. See e.g., page 124, paragraph 9. The
`
`LINK DEFINITION TABLE corresponds to the relation definition table
`
`and it contains the records for the link definitions (i.e., relation type
`
`record)];
`
`a first relation instance table associated with the provided relation type
`
`[The Tsichritzis implementation of a “relation instance table”
`
`corresponds to the intermediate pointer structures which implement
`
`the access paths for the records mapped. Links define connections
`
`(access paths) between record types. Individual records are connected
`
`according to item values and specified linking properties; see e.g.,
`
`page 124, paragraph 6. When a link is created using the “CREATE"
`
`command, an intermediate pointer structure which implements the
`
`access paths for the records mapped is created; see e.g., page 125,
`
`paragraph 6. The intermediate pointer structure (i.e., “relation
`
`instance table”) implements these access paths according to the link
`
`(i.e., relation type), which is stored in the LINK DEFINITION TABLE, as
`
`007
`
`007
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`
`
`Application/Control Number: 90/007,707
`
`Page 6
`
`Art Unit: 3992
`
`discussed above; see e.g., page. 125, paragraphs 6-8. Thus the
`
`intermediate pointer structure is associated with the link]; and,
`
`.
`
`a first relation instance record of the provided relation type, the first
`
`relation instance record relating a desired entity in one of the entity
`
`instance records to a provided entity [The intermediate pointer
`
`structure contains the access paths (relation instance records) that link
`
`the provided entities to the desired entities. See p. 125, paragraph 6;
`
`see also p. 128, paragraph 3.
`
`e.g., “M |__ml_< own m Houses to Employees”
`
`This command creates an intermediate pointer structure that relates
`
`House entity instances to Employee entity instances; see page 125,
`
`paragraphs 6-7].
`
`7. None of the aforementioned references were cited and none are
`
`cumulative to the art of record in the original file. A reasonable Examiner
`
`would have found the teachings of these references important in
`
`determining the patentability of the claimed invention. See MPEP §2242(I).
`
`8. Accordingly, a substantial new issue of patentability, which has not been
`
`previously addressed, has been raised by the submission of the
`
`aforementioned references.
`
`9. All claims are subject to reexamination.
`
`008
`
`008
`
`
`
`Application/Control Number: 90/007,707
`
`Page 7
`
`Art Unit: 3992
`
`Conclusion
`
`10. Extensions of time under 37 C.F.R §1.136(a) will not be permitted in this
`
`proceeding because the provisions of 37 C.F.R. §1.136 apply only to “an
`
`Applicant” and not to parties in a reexamination proceeding. Additionally, 35
`
`U.S.C. §305 requires that ex parte reexamination proceedings “will be
`
`conducted with special dispatch” (37 C.F.R. §1.550(a)). Extensions of time in
`
`ex parte reexamination proceedings are provided for in 37 C.F.R. §1.550(c).
`
`11. The Patent Owner is reminded of the continuing responsibility under 37
`
`C.F.R. § 1.565(a) to apprise the Office of any litigation activity, or other
`
`prior or concurrent proceeding, involving Patent number 5,826,259
`
`throughout the course of this reexamination proceeding. The third party
`
`requester is also reminded of the ability to similarly apprise the Office of any
`
`such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`009
`
`009
`
`
`
`Application/Control Number: 90/007,707
`
`Page 8
`
`Art Unit: 3992
`
`How to Communicate with the USPTO
`
`ALL correspondence relating to this ex partes reexamination proceeding
`should 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
`
`Randolph Building, Lobby Level
`401 Dulany Street
`Alexandria, VA 22314
`
`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:
`
`St. John Courtenay III
`Primary Examiner
`Central Reexamination Unit 3992
`
`(Monday - Friday 9:00 AM — 5:30 PM)
`
`(571) 272-3761
`
`va1 Areas
`“Mr 902,
`9 f
`a;
`
`JOHN COURTENAYlll
`PHlMARY 9m:N59.
`
`010
`
`010
`
`
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