COMMISSIONER FDR PATENTS
`UNITED STATES PATENT AND TRADEMARK Dr-‘rm:
`P.U. Box 145:)
`ALEXANDRIA, VA 22313-1450
`www.usplo.gov
`
`/W
`
`Edward C. Kwok
`MACPHERSON KWOK CHEN & HEID LLP
`1762 Technology Drive, Suite 226
`San Jose CA 95110
`
`(For Patent Owner)
`
`vi :
`‘ ;r
`WHAJLED
`i;,«:,1,. 5 3
`
`'
`REEXAEVE l.Lll\llT
`
`Donald E. Daybell
`ORRICK HERRINGTON & SUTCLIFFE LLP
`
`(For Third Party Requester)
`
`4 Park Plaza, Suite 1600
`Irvine, CA 92614
`
`In re Reissue Application of
`Karol Doktor
`Application No.: 11/152,835
`Filed: June 14, 2005
`For: U.S. Patent No. 5,826,259
`
`In re Karol Doktor
`
`Reexamination Proceeding
`Control No.: 90/007,707
`Filed: September 1, 2005
`For: U.S. Patent No.: 5,826,259
`
`:
`: DECISION, SUA SPONTE,
`2 TO MERGE
`: REISSUE AND
`: REEXAMINATION
`
`: PROCEEDINGS
`
`The above-captioned reissue application and reexamination proceedings are before the
`Office of Patent Legal Administration for sua sponte consideration of whether the
`proceedings should be merged under 37 CFR 1.565(d) at this time.
`
`REVIEW OF FACTS
`
`1. U.S. Patent No. 5,826,259 issued on October 20, 1998.
`
`2. An application for reissue, assigned application No. 11/152,835, was filed by the
`patent owner on June 14, 2005.
`
`3. Notice of the filing of the reissue application was published in the Official Gazette
`on July 26, 2005.
`
`4. A request for reexamination, assigned control No. 90/007,707 (the‘7707
`
`001
`
`IBM Ex. 1018
`
`001
`
`

`
`Reexamination Control No. 90/007, 707
`
`And Reissue Application No. 11/152,835
`
`2
`
`reexamination proceeding), was filed by a third party requester on September 1,
`2005.
`
`5. Reexamination was ordered for the ‘7707 reexamination proceeding on
`
`September 30, 2005.
`
`A patent owner's statement under 37 CFR 1.530 has not been received in the ‘7707
`reexamination proceeding.
`
`DISCUSSION REGARDING MERGER
`
`Under 37 CFR 1.565(d):
`
`''If a reissue application and an ex parte reexamination proceeding on which an
`order pursuant to § 1.525 has been mailed are pending concurrently on a patent,
`a decision will normally be made to merge the two proceedings or to suspend
`one of the two proceedings."
`
`As evidenced by the above review of facts, reissue application No. 11/152,835 and
`reexamination control No. 90/007,707 are currently pending. Since the order to
`reexamine has been mailed in the reexamination proceeding, a decision under 37 CFR
`1.565(d) is timely.
`
`The general policy of the Office is that a reissue application examination and a
`reexamination proceeding will not be conducted separately at the same time as to a
`particular patent. The reason for this policy is to prevent inconsistent, and possibly
`conflicting, amendments from being introduced into the two proceedings on behalf of
`the patent owner. Normally, the proceedings will be merged when it is desirable to do so
`in the interest of expediting the prosecution of both proceedings. In making a decision
`on whether or not to merge the two proceedings, consideration will be given to the
`status of each proceeding. See MPEP 2285.
`
`In order to provide efficient and prompt handling of all proceedings and to prevent
`inconsistent, and possibly conflicting, amendments from being introduced on behalf of
`the patent owner, it is appropriate that the reissue and the reexamination proceedings
`be merged and a joint examination be conducted. Accordingly, the examination of the
`reissue application and the reexamination proceeding will be merged in accordance with
`the decision set forth below.
`
`It is to be noted, however, that the grant of merger of a reissue application and an ex
`parte reexamination proceeding under 37 CFR 1.565(d) is discretionary. The present
`merger is not an assurance that, in a future similar situation, merger would be ordered.
`
`002
`
`002
`
`

`
`Reexamination Control No. 90/007,707
`
`And Reissue Application No. 1 1/1 52, 835
`
`3
`
`DECISION MERGING THE REISSUE AND
`
`REEXAMINATION PROCEEDINGS
`
`l. Merger of Proceedings
`
`The above-captioned reissue and reexamination proceedings are hereby
`merged. A joint examination will be conducted in accordance with the following
`guidelines and requirements.
`
`ll. Reguirement for Same Amendments in Both Proceedings
`
`1.
`
`The patent owner is required to maintain identical amendments in the reissue
`and reexamination files for purposes of the merged proceeding. The
`maintenance of identical amendments in both files is required as long as the
`proceedings remain merged. See 37 CFR 1.565(d).
`
`003
`
`003
`
`

`
`Reexamination Control No. 90/007,707
`
`And Reissue Application No. 11/152, 835
`
`4
`
`2.
`
`A review of the reexamination file for the proceeding of reexamination control No.
`90/007,707 shows that original patent claims 1-18 are present and no claims are
`added by amendment. A review of reissue application No. 11/152,835 shows that
`original patent claims 1-18 are present and no claims are added by amendment.
`Accordingly, the claims are identical in both proceedings.
`
`it is noted, however, that the first paragraph of the specification is amended in
`the reissue application, while not so for the reexamination proceeding. An
`appropriate housekeeping amendment is required within ONE (1) MONTH of this
`decision placing the same amendments in both cases, specifically, the above-
`captioned reissue and reexamination proceedings. The response to the
`requirement must be limited to placing the same amendments in all cases, and
`patent owner must not address any issue of patentability in the housekeeping
`amendment.
`
`Ill.
`
`Conduct of the Merged Reissue Application Examination and Reexamination
`Proceedings
`
`After the appropriate housekeeping amendment (see Part II above) is received,
`or after the time for same expires, the examiner should promptly prepare an
`Office action for the merged proceeding.
`
`In the event that a housekeeping amendment is not timely submitted, the
`disclosures in both proceedings should be objected to as being inconsistent for
`the same underlying patent.
`
`Because the statutory provisions for reissue application examination include,
`inter alia, provisions equivalent to 35 U.S.C. 305 relating to the conduct of ex
`parte reexamination proceedings, the merged examination will be conducted on
`the basis of the rules relating to the broader, reissue-application examination.
`The examiner will apply the reissue statute, rules, and case law to the merged
`proceeding. However, periods of response should be set at TWO (2) months to
`comply with the statutory requirement for special dispatch in ex parte
`reexamination (35 U.S.C. 305).
`
`Each Office action issued by the examiner will take the form of a single action
`that jointly applies to the reissue application and the reexamination proceeding.
`Each action will contain identifying data for all of the cases, i.e, the reissue
`application and the reexamination proceeding, and each action will be entered
`into the file history for both files (which will be maintained as separate files).
`
`Any response by the applicant/patent owner must consist of a single response,
`with two copies being filed for entry in the two files, with each of the two bearing
`
`004
`
`004
`
`

`
`Reexamination Control No. 90/007, 707
`
`And Reissue Application No. 11/152, 835
`
`5
`
`a signature. Any such responses must be served on the requester, who will also
`be sent copies of Office actions.
`
`Pursuant to MPEP 2285:
`
`“Amendments should be submitted in accordance with the reissue practice under
`37 CFR 1.173; see MPEP §1453.”
`
`Thus, the filing of any amendments to the drawings, specification, or claims must
`comply with the provisions of 37 CFR 1.173 and the guidelines of MPEP 1453. It
`is to be noted that 37 CFR 1.121 does not apply to amendments in a reissue
`application. Accordingly, clean copies of the amended claims are not required,
`and such clean copies are not to be submitted. Instead, pursuant to 37 CFR
`1.173(b)(2), amendments are to be presented via markings pursuant to 37 CFR
`1.173(d), except that a claim should be canceled by a statement canceling the
`claim, without presentation of the text of the claim.
`
`Pursuant to 37 CFR 1.173(g), all amendments must be made relative to the
`patent specification, including the claims, and drawings, which are in effect as of
`the date of filing the reissue application. Amendments are not to be made relative
`to previous amendments. Thus, for all amendments, all words not appearing in
`the patent are always underlined, and only words being deleted from the patent
`appear in brackets.
`
`Where a paper is filed which requires payment of a fee (e.g., petition fee, appeal
`fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only
`one fee need be paid for patent owner's appellant brief, even though the brief
`relates to merged multiple proceedings and copies must be filed (as pointed out
`above) for each file in the merged proceeding.
`
`Upon return of the present merged proceeding to the examiner, the examiner will
`review the files to insure that each file contains identical citations of prior patents
`and printed publications, and will cite such documents as are necessary as part
`of the next action in order to place the files in that condition.
`
`If the reissue application ultimately matures into a reissue patent, the
`reexamination proceeding shall be concluded by the grant of the reissue patent,
`and the reissue patent will serve as the certificate under 37 CFR 1.570. See
`MPEP 2285.
`
`10.
`
`If the applicant/patent owner fails to file a timely and appropriate response to any
`Office action, the merged proceeding will be concluded as follows. The reissue
`application will be held abandoned, and the merger will be dissolved as to the
`reissue application. With respect to the reexamination proceeding, the Director
`will proceed to issue a reexamination certificate under 37 CFR 1.570 in
`accordance with the last action of the Office, unless further action is clearly
`
`005
`
`005
`
`

`
`Reexamination Control No. 90/007,707
`
`And Reissue Application No. 11/152,835
`
`6
`
`needed as a result of the difference in rules relating to reexamination and reissue
`proceedings. Thus, any grounds of rejection that are not applicable under
`reexamination would be withdrawn (e.g., based on public use or sale), and any
`new grounds of rejection that are applicable under reexamination (e.g.,
`improperly broadened claims) would be made by the examiner upon dissolution
`of the merged proceeding as to the reissue application. The existence of any
`questions/issues remaining which cannot be considered under reexamination
`following the dissolution would be noted by the examiner as not being proper
`under reexamination pursuant to 37 CFR 1.552(c).
`
`If the applicant/patent owner files an express abandonment of the reissue
`application pursuant to 37 CFR 1.138, the next Office action of the examiner will
`accept the express abandonment, dissolve the merged proceeding as to the
`reissue application, and continue examination as to the reexamination
`proceeding. Such examination would be conducted as set forth in the
`immediately preceding paragraph.
`
`CONCLUSION
`
`Reissue application No. 11/152,835 and reexamination control No. 90/007,707
`are hereby merged into a single proceeding.
`
`Pursuant to Part II of this decision, a housekeeping amendment is reguired within
`ONE MONTH of this decision, placing the same amendments in all (both) cases
`of the present merged proceeding.
`
`Jurisdiction over the reissue and reexamination proceedings is hereby
`transferred to the examiner via the Director of Technology Center 2100. The
`examiner should not issue an Office action for the present merged proceeding of
`the reissue and reexamination proceedings until after the earlier of (a) the
`submission of the housekeeping amendment to place the same amendments in
`both cases, or (b) the expiration of the ONE MONTH period (from the mailing of
`this decision) set in part 2 of the “Conclusion.”
`
`11.
`
`1.
`
`2.
`
`3.
`
`4.
`
`All further examination in the merged proceeding should be conducted in
`accordance with Part ill of this decision.
`
`5.
`
`Telephone inquiries related to this decision should be directed to Anton W.
`Fetting, Senior Legal Advisor, at (571) 272-7717.
`/éw«%Z.
`Ax
`
`Kenneth M. Schor
`
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`December 2, 2005
`C:\kenpetmerger\7707_c|s-the-same_spec-not_3PR.doc
`
`006
`
`006
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`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.qov
`
`
`
`
`
`First Named Applicant
`
`Karol Doktor
`
`Date ofThis Notice
`12/05/2005
`
`Serial Number
`
`11/152,835
`
`Filing Date
`
`06/14/2005
`
`Attorney Docket Number
`‘ 5,826,259
`
`
`
`
`
`NOTICE OF MERGED REEXAM - REISSUE PROCEEDING
`
`COPY FOR REEXAM
`
`This reissue application has been merged with the reexamination proceedings listed below:
`
`Control Nos. 90/007707
`
`Filing Date: 09/01/2005
`
`Requester: Donald E. Daybell
`ORRICK HERRINGTON & SUTCLIFFE LLP
`
`4 Park Plaza
`
`Suite 1600
`
`Irvine CA 92614
`
`The front face of the reissue patent will include the following paragraph:
`
`REEXAIVHNATION RESULTS
`
`
`filed 09/01/2005 have been
`The questions raised in reexamination request 90/0077O7
`considered and the results thereof are reflected in this reissue patent which constitutes the
`reexamination certificate required by 35 U. S. C. 307 as provided in 37 CFR l.570(e), for
`ex parte reexarninations, or the reexamination certificate required by 35 U. S. C. 316 as
`provided in 37 CFR 1.997(e) for inter partes reexaminations.
`
`FORM PTO-1527 (REVISED 03/2005)
`
`007
`
`007
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`

`
`Page 1 of 1
`
`APPL NUM
`
`FILING DATE
`
`CLASS SUBCLASS GAU
`
`EXAMINER
`
`90007707
`
`09/01/2005
`
`707
`
`010.000
`
`3992
`
`COURTENAY Iii, S
`
`
`
`
`“APPLICANTS:
`
`Financial Systems Techno|ogy(Owner); Donald
`
`Daybe||(3rd. Pty. Req.); Donald Daybell;
`
`
`
`**CONT|NU|NG DATA VERIFIED:
`
`
`
`This application is a REX of 08/862,176 05/22/1997 PAT 5,826,259
`
`
`
`
`which is a CON of 08/439,207 05/11/1995 PAT 5,675,779
`
`which is a DIV of 08/083,361 06/28/1993 ABN
`
`which is a CON of 07/526,424 05/21/1990 ABN
`
`
`
`
`NOTICE OF MERGED REEXAM — REISSUE
`
`Reissue Serial No. 11/152835
` Date of Merger: 12/05/05
`
`
`
`RESCIND D
`
`‘ TTORNEY DOCKET NO
`
`¥+‘r'dr2:re’n i{P'PII:TTT6Ns vERIFIED:‘
`
`PG-PUB DO NOT PUBLISH D
`
`Foreign priority claimed
`35 USC 119 conditions met
`Verified and Acknowledged Examiners's intials
`
`D yes Cl no
`El yes El no
`
`ITLE : EASILY EXPANDABLE DATA PROCESSING SYSTEM AND METHOD
`U.S.DEPT. OF COMM./PAT.& TM-PTO—43EL Rev. 12-94
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`008
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`008