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.
`
`90/011.010
`
`FILING DATE
`
`05/24/2010
`
`ARST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONARMATION NO.
`
`5544352
`
`3905-102
`
`2567
`
`1211012010
`6449
`7590
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`1425 K STREET, N.W.
`SUITE 800
`WASHINGTON, DC 20005
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 12/10/2010
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`EXHIBIT 2007
`Facebook, Inc. et al.
`v.
`Software Rights Archive, LLC
`CASE IPR2013-00479
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`FISH & RICHARDSON P.C.
`12390 EL CAMINO REAL
`SAN DIEGO, CA 92130
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Date:
`
`~L-1':....r:o
`DEC 1 0 2010
`CENTHAL Rc=fX
`i,_ ~MINATION UNIT
`.
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO.: 90011010
`PATENT NO. : 5544352
`ART UNIT : 3992
`
`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(g)).
`
`

`

`Office Action in Ex Parte Reexamination
`
`Control No.
`90/011,010
`
`Patent Under Reexamination
`5544352
`
`Examiner
`JOSHUA D. CAMPBELL
`
`Art Unit
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`
`bO This action is made FINAL.
`aD Responsive to the communication(s) filed on __ .
`c[gj A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part I
`
`1.
`
`2.
`
`THE FOLLOWING ATIACHMENT(S) ARE PART OF THIS ACTION:
`3. D Interview Summary, PT0-474.
`4. D
`
`D Notice of References Cited by Examiner, PT0-892.
`[gJ Information Disclosure Statement, PTO/SB/08.
`
`Claims 26-42.44 and 45 are subject to reexamination.
`
`Claims 1-25 43 and 46-52 are not subject to reexamination.
`
`Claims __ have been canceled in the present reexamination proceeding.
`
`Part II SUMMARY OF ACTION
`[gJ
`1 a.
`[gJ
`1 b.
`2. D
`3. D
`[gJ
`4.
`s. D
`6. D
`The drawings, filed on __ are acceptable.
`7. D The proposed drawing correction, filed on
`has been (7a)0 approved (7b)0 disapproved.
`8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None
`of the certified copies have
`
`Claims __ are patentable and/or confirmed.
`
`Claims 26-42.44 and 45 are rejected.
`
`Claims __ are objected to.
`
`1 D been received.
`
`20 not been received.
`
`30 been filed in Application No. __ .
`
`40 been filed in reexamination Control No. __
`
`50 been received by the International Bureau in PCT application No. __ .
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9. D
`
`Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D.
`11, 453 O.G. 213.
`
`10. D Other: __
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-466 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20101203
`
`

`

`"' .•
`
`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`1)
`
`This Office action addresses claims 26-42, 44, and 45 of United States Patent Number
`
`5,544,352 (hereinafter "Egger"), for which it has been determined in the Order Granting Ex Parte
`
`Reexamination (hereafter the "Order") mailed 8/2/2010 that a substantial new question of
`
`patentability was raised in the Request for Ex Parte reexamination filed on 5/24/2010 (hereafter
`
`the "Request").
`
`Information Disclosure Statement
`
`2)
`
`Where the IDS citations are submitted but not described, the examiner is only responsible
`
`for cursorily reviewing the references. The initials of the examiner on the PTO.:.I449 indicate
`
`only that degree of review unless the reference is either applied against the claims, or discussed
`
`by the examiner as pertinent art of interest, in a subsequent office action. See Guidelines for
`
`Reexamination of Cases in View ofln re Portola Packaging, Inc., 110 F.3d 786,42 USPQ2d
`
`1295 (Fed. Cir. 1997), 64 FRat 15347, 1223 Off. Gaz. Pat. Office at 125 (response to comment
`
`6).
`
`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 08B or its equivalent mean that the information has been considered by the
`
`examiner to the extent noted above.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 3
`
`Regarding IDS submissions MPEP 2256 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."
`
`Accordingly, the IDS submissions have been considered by the Examiner only with the
`
`scope required by MPEP 2256, unless otherwise noted.
`
`Rejections
`
`3)
`
`The following rejections are utilized by the examiner below, referencing the proposed
`
`prior art listed on pages 5 and 6 of the Request:
`
`Issue 1:
`
`Issue 2:
`
`Issue 3:
`
`Issue 4:
`
`Issue 5:
`
`Issue 6:
`
`Issue 7:
`
`Issue 8:
`
`Issue 9:
`
`Claims 26-32, 36, 37, 39, 41, 42; 44,45 in view of Fox
`
`Claims 33 in view of Fox and Cleveland
`
`Claims 34 and 3 5 ln view ~f Fox and Salton 1990
`
`Claims 38 and 40 in view ofF ox and Can
`
`Claims 26-32, 36, and 45 in view of Garner
`
`Claims 33, 41, 42, and 44 in view of Garner and Cleveland
`
`Claims 34 and 35 in view of Garner and Salton 1990
`
`Claim 3 7 in view of Gamer and A versa
`
`Claims 38-40 in view of Garner and Can
`
`

`

`Application/Control Number: 90/011 ,010
`Art Unit: 3992
`
`Page4
`
`4)
`
`The rejections below are confined to what has been deemed to be the best available art
`
`from the Request. However, prior to conclusion of this reexamination proceeding, claims must
`
`be patentable over all prior art cited in the order granting reexamination in order to be considered
`
`patentable or confirmed on the reexamination certificate. The references cited in the Request but
`
`not utilized in the current office action appear to be largely cumulative to the teachings in the
`
`references applied below.
`
`Claim Rejection Paragraphs
`
`5)
`
`Claim Rejections- 35 USC§ 102
`
`The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on
`sale in this country, more than one year prior to the date of application for patent in the United States.
`
`Claim Rejections- 35 USC§ 103
`
`The following is a quotation of35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section I 02 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 5
`
`Issue 1
`
`6)
`
`Claims 26-32, 36, 37, 39, 41, 42, 44,45 are rejected under 35 U.S.C. 102(b) a:s being
`
`unpatentable by Fox (See claim mapping in Request pages 18-28 and Exhibit 1- Claim Chart,
`
`incorporated by reference).
`
`Issue 2
`
`7)
`
`Claim 33 is rejected under 35 U.S.C. 1 03(a) as being unpatentable by Fox in view of
`
`Cleveland (See claim mapping in Request pages 29-30 and Exhibit 1- Claim Chart pages 23-38,
`
`incorporated by reference). In addition the examiner notes the reason to combine the references
`
`is found in Request page 30.
`
`Issue 3
`
`8)
`
`Claims 34 and 35 are rejected under 35 U.S.C. 1 03(a) as being unpatentable by Fox in
`
`view of Salton 1990 (See claim mapping in Request pages 31-32 and Exhibit 1 - Claim Chart
`
`pages 38-58, incorporated by reference). In addition the examiner notes the reason to combine
`
`the references is found in Request page 32.
`
`Issue4
`
`9)
`
`Claims 38 and 40 are rejected under 35 U.S.C. 103(a) as being unpatentable by Fox in
`
`view of Can (See claim mapping in Request pages 34-35 and Exhibit 1- Claim Chart pages 60-
`
`62 and 66-68, incorporated by reference). In addition the examiner notes the reason to combine
`
`the references is found in Request pages 34-35
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page6
`
`Issue 5
`
`10)
`
`Claims 26-32, 36, and 45 are rejected under 35 U.S.C. 102(b) as being unpatentable by
`
`Garner (See claim mapping in Request pages 53-64 and Exhibit 3- Claim Chart, incorporated by
`
`reference).
`
`Issue 6
`
`11)
`
`Claims 33, 41, 42, and 44 are rejected under 35 U.S.C. 103(a) as being unpatentable by
`
`Garner in view of Cleveland (See claim mapping in Request pages 65-67 and Exhibit 3 - Claim
`
`Chart pages 22-28 and 51-67, incorporated by reference). In addition the examiner notes the
`
`reason to combine the references is found in Request pages 66-67.
`
`Issue 7
`
`12)
`
`Claims 34 and 35 are rejected under 35 U.S.C. 103(a) as being unpatentable by Garner in
`
`view of Salton 1990 (See claim mapping in Request pages 67-68 and Exhibit 3 - Claim Chart
`
`pages 28-40, incorporated by reference). In addition the examiner notes the reason to combine
`
`the references is found in Request page 68.
`
`Issue 8
`
`13)
`
`Claim 37 is rejected under 35 U.S.C. 103(a) as being unpatentable by Gamer in view of
`
`A versa (See claim mapping in Request pages 68-70 and Exhibit 3 - Claim Chart pages 40-42,
`
`incorporated by reference). In addition the examiner notes the reason to combine the references
`
`is found in Request pages 69-70.
`
`

`

`Application/Control Number: 90/011,010
`Art Unit: 3992
`
`Page 7
`
`Issue 9
`
`14)
`
`Claims 38-40 are rejected under 35 U.S.C. 103(a) as being unpatentable by Garner in
`
`view of Can (See claim mapping in Request page 70 and Exhibit 3 - Claim Chart pages 42-51,
`
`incorporated by reference). In addition the examiner notes the reason to combine the references
`
`is found in Request page 70.
`
`· All correspondence relating to this ex parte reexamination proceeding should be directed
`
`Conclusion
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`By EFS-Web:
`
`Registered users ofEFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`

`

`Application/Control Number: 90/011 ,010
`Art Unit: 3992
`
`Page 8
`
`https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e.,
`electronically uploaded) directly into the official file for the reexamination proceeding, which
`offers parties the opportunity to review the content of their submissions after the "soft scanning"
`process is complete.
`
`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.
`
`/Joshua D Campbell/
`Primary Examiner, Art Unit 3992
`
`JESSICA HARRISON
`SUPERVISORY PATENT EXAMINER
`
`