`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria; Virginia 22313-1450
`www.usplo.gov.
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`90/008,648‘
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`06/11/2007
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`'
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`5826259
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`6883/23 ,
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`4772
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`MACPHERSON KWOK CHEN & HEID LLP
`2033 GATEWAY PLACE
`smmoo
`4
`SAN JOSE, CA 95110
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`DATE MAILED: 07/ l 9/2007
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev; 10/03)
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`001
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`IBM EX. 1022
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`001
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. BDX1450
`Alexandria, VA 2231 3-1450
`wwwusptogov
`
`DO NOT USE IN PALM PRINTER
`
`, (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`William L. Anthony, Jr. Om'ck, Herrington & Sutcliffe
`1000 Marsh Road
`Menlo Park, Ca 94025
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'ITAL FORM
`
`REEXAMINATION CONTROL NO. 90/008 648.
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`PATENT NO. 5826259.
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`ART UNIT 3992.
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`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(9)).
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`PTOL—465 (Rev.07-04)
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`002
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`002
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`Control No.
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`90/008,648
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`Examiner
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`Albert W. Paladini
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`Patent Under Reexamination
`
`5826259
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`Art Unit
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`3992
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`
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`
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`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
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`
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`The request for ex parte reexamination filed 11 June 2007 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
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`determination are attached.
`
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` Attachments: a)I:I PTO-892,
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`b)IXI PTO/SB/O8,
`C)I:] Other:
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`1. E] 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).
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`
`
`
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`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
`
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`is'permitted.
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`2. CI The request for ex parte reexamination is DENIED.
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`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
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`37 CFR 1.183.
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`a) El by Treasury check or,-
`
`
`b) E] by credit to Deposit Account No.
`, or
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`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`
`
`
`c) [I by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`
`
`Albert W Paladini
`
`
`Primary Examiner
`
`
`Art Unit: 3992
`re- uester
`if third
` cczRe- uester
`
`
`US. Patent and Trademark Office
`PTOL—471 (Rev. 08-06)
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`,
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`Office Action in Ex Parte Reexamination
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`Part of Paper No. 20070709
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`003
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`003
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`Application/Control NUmber: 90/008,648
`Art Unit: 3992
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`Page 2
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`DECISION ON REQUEST FOR REEXAMINATION
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`1.
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`A substantial new question of patentability affecting claims 1-18-of United States
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`Patent'Number 5,826,259 issued to Doktor is raised by the request for ex parte
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`reexamination.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
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`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
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`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
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`ex parte reexamination proceedings "will be conducted with special dispatch" (37
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`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
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`for in 37‘CFR 1.550(0).
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`References
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`(1) US 4,506,326 issued to Shaw et al.
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`(2) US 4,774,661 issued to Kumpati.
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`(3) US 4,918,593 issued to Huber.
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`(4) Computer Surveys 1986 by Teorey.
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`(5) Communications of the ACM 1987 by Dolk.
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`,
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`(6) IBM Systems Journal 1977 by Zloof.
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`(7) International Conference of Management of Data 1976 by Tsichritzis.
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`(8) Information Systems 1978 by Munz.
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`(9) The entity relationship model 1977 by Chen.
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`(10 Database Step-by-Step 1990 by Gillenson.
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`Application/Control Number:90/008,648
`Art Unit: 3992
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`Page 3
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`Prosecution History
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`2.
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`The application for serial number 08/439,207 was filed on 5/11/95.
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`An application for a continuation including a preliminary amendment was filed
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`on 5/22/97. The continuation is serial number 08/862,176.
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`The case was allowed on 3/5/98. The reasons for allowance for the Doktor
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`patent was the uniqueness of “retrieving a specific relation instance record defining a
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`relation of said provided entity and said desired entity from a relation instance table” and
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`“retrieving a desired entity type record containing said desired entity type from an entity
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`definition table".
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`Substantia/ New Question of Patentability
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`3.
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`On pages 53 through 63, the Requestor enumerates all recited elements of
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`independent claim 1 of the Doktor patent, which is representative, and suggests
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`allegedly corresponding elements from references Teorey and Huber. Some details are
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`provided below.
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`On page 54, the Requestor discusses the recited preamble to claim 1 of the
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`Doktor patent, which includes “A method for retrieving a desired entity of a desired
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`Application/Control Number: 90/008,648
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`Art Unit: 3992
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`Page 4
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`entity type from a relational data base’.’ and allegedly equates it with “the Entity-
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`Relationship model" discussed by Teorey.
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`On pages 54 through 56, the Requestor discusses the limitation of claim 1 of
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`Doktor “retrieving a specific relation type record defining said provided relation type from
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`a relation definition table” and allegedly equates it with contents of a relational database-
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`discussed by Teorey. The Requestor states on page 56 “A critical component of
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`databases is that they allow retrieval of items, including relation instance records".
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`On pages 57 through 58, the Requestor discusses the limitation of Doktor’s
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`claim 1 of “retrieving a specific relation instance record defining a relation of said
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`provided relation type between said provided entity and said desired entity” and
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`allegedly equates it to table (a) in figure 10 of Teorey, which depicts types of skills
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`utilized on different projects by a given employee.
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`On pages 58 through 62, the Requestor discusses the limitation of claim 1 of
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`Doktor “retrieving a desired entity type record containing said desired entity type from
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`an entity definition table” and allegedly equates it with the relational database in figure
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`13 of Teorey. The Requestor alleges that the data dictionary used in the relational
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`database provided in figure 13 allows one to accomplish this limitation step.
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`On pages 62 through 63, the Requestor discusses the limitation of claim 1 of
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`Doktor of “retrieving said desired entity from said desired entity instance table" and
`allegedly equates it with the description of paragraphs (1) and (2) of “3.1 Transformation
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`Rules" discussed by Teorey on page 208. The Requestor also describes a record table
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`in figure 1 of the Huber patent tosupport the allegations.
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`Application/Control Number: 90/008,648
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`.
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`Page 5
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`Art Unit: 3992
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`4.
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`On pages 70 through 73, the Requestor enumerates all recited elements of
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`independent claim 10 of the Doktor patent, which is representative, and suggests
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`allegedly corresponding elements from references Teorey and Huber.
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`The Requestor utilizes most of the same elements from Teorey and Huber as
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`explained in paragraph 3 which allegedly equate to the limitations of claim 10 of Doktor.
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`5.
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`The use of single references Teorey and Huber, which appear to discuss some
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`of the key elements or limitations of representative independent claims 1 and 10, make
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`'it likely that a reasonable examiner would consider these teachings important in
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`deciding whether or not the claims are patentable.
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`6.
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`The references cited by the Requestor were not previously discussed by the
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`examiner nor applied to claims in the prior examination of the patent as described
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`above.
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`7.
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`There was also no final holding of invalidity by the Federal Courts regarding US
`
`Patent 5,826,259.
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`8.
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`Thus, a reasonable examiner would view the teachings of Teorey and Huber, in
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`combination with any of the various references cited in the Request, important in
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`Application/Control Number: 90/008,648
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`,
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`Page 6
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`Art Unit: 3992
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`deciding to allow the claims being considered, thus raising a substantial new question of
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`patentability regarding claims 1-18 of US Patent 5,826,259.
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`Conclusion
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`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
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37
`
`CFR 1.550(a)). Extensions 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
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`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
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`proceeding, involving the Alcorn patent throughout the course of this reexamination
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`proceeding. The requester is also reminded of the ability to similarly appraise the Office
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`I
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`, of any such activity or proceeding throughout the course of this reexamination
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`proceeding. See MPEP §§ 2207, 2282 and 2286.
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`All correspondence relating to this ex parte reexamination proceeding should be
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`directed as follows:
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`By U.S. Postal Service Mail to:
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`Application/Control Number: 90/008,648
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`Art Unit: 3992
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`Page 7
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`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
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`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`By FAX to:
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`(571) 273-9900
`Central Reexamination Unit
`
`By hand to: Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
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`Any inquiry concerning this communication or earlier communications from the
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`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should
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`be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
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`Signed:
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`0mm im-
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`Albert W. Paladini
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`Primary Examiner
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`Conferees:
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`009
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`009
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