`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`www.usp!o.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/00l,788
`
`Victor Larson
`
`4I484-80140
`
`5823
`
`McDermott Will & Emery
`600 13th Street, NW
`Washington, Dc 20005—3096
`
`‘
`
`DATE MAILED: 12/29/2011
`
`Please find below and/0r attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Petitioner Apple Inc. - EX. 1055, p. 1
`
`Petitioner Apple Inc. - Ex. 1055, p. 1
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`SIDLEY AUSTIN LLP
`
`Date: 11 ‘3‘? ‘1 I
`
`717 NORTH? HARWOOD
`SUITE 3400
`
`DALLAS, TX 75201
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001788
`
`PATENT NO. : 7418504
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30--day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1. 947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTOL-2070(Rev.07-04)
`
`Petitioner Apple Inc. - EX. 1055, p. 2
`
`Petitioner Apple Inc. - Ex. 1055, p. 2
`
`

`

`
`
`
`
`
`
` Responsive to the communication(s) filed by:
`
`OFFICE ACTION IN INTER PARTES
`
`REEXA MINA TION
`
`Control No.
`
`95/001.788
`Examiner
`
`Patent Under Reexamination
`
`LARSON ET AL.
`Art Unit
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`ROLAND FOSTER
`
`3992
`
`Patent Owner on
`
`
`
`
`
`
`Third Party(ies) on 18 October 2011
`
`
`
`
`RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
`
`For Patent Owner's Response:
`2 MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
`GOVERNED BY 37 CFR 1.956.
`
`
`
`
`
`
`
`
` All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand—carry addresses given at the end of this Office action.
`
`
`
` PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1]: Notice of References Cited by Examiner, PTO—892
`2X Information Disclosure Citation, PTO/SB/08
`
`3.l:|
`PART II. SUMMARY OF ACTION:
`
`For Third Party Requester’s Comments on the Patent Owner Response:
`30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
`OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
`
`This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
`37 CFR 1.953.
`
`1a. [Z Claims 1-60 are subject to reexamination.
`
`1b. El Claims
`
`2.
`
`[:1 Claims
`
`are not subject to reexamination.
`
`have been canceled.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`[:1 Claims _ are confirmed. [Unamended patent claims]
`[:1 Claims __ are patentable. [Amended or new claims]
`
`IX Claims E are rejected.
`
`
`[:1 Claims
`are objected to.
`
`
`
`E] are not acceptable.
`El are acceptable
`I] The drawings filed on
`
`
`
`E] The drawing correction request filed on
`is:
`Ij approved. El disapproved.
`
`
`E] Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`
`C] been received.
`[:1 not been received.
`I] been filed in Application/Control No
`10. [:1 Other
`
`
`909°.".°’.U‘.4>.°°
`
`
`U.S. Patent and Trademark Office
`PTOL-2064 (08/06)
`
`Paper No. 20111222
`
`Petitioner Apple Inc. - EX. 1055, p. 3
`
`Petitioner Apple Inc. - Ex. 1055, p. 3
`
`

`

`Application/Control Number: 95/001,788
`
`Art Unit: 3992
`
`Page 2
`
`NON—FINAL OFFICE ACTION
`
`Introduction
`
`This Office action addresses claims 1-60 of United States Patent Number 7,418,504 B2
`
`(“Larson”), for which it has been determined in the Order Granting Inter Partes Reexamination
`
`accompanying this non-final Office action (the "Order"), that a reasonable likelihood was
`
`established in the request for inter partes reexamination, filed on October 18, 2011 (hereafter the
`
`"Request") that the requester will prevail with respect to at least one of the claims 1-60 in the
`
`Larson patent.
`
`Issues Raised in the Request
`
`A total of ten references, in certain combinations, have been asserted in the Request as
`
`providing teachings relevant to the claims of the Larson patent.
`
`Solana, E. et al., “Flexible Internet Secure Transactions Based on Collaborative
`Domains,” Lecture Notes in Computer Science, Vol. 1361, at 37-51 (1997), attached to
`the Request as Exhibit Xl (“Solana”).
`
`US. Patent No. 6,557,037 to Provino, attached to the Request as Exhibit X2 (“Provino”).
`
`US. Patent No. 6,496,867 to Beser, attached to the Request as Exhibit X3 (“Beser”).
`
`Atkinson, R., IETF RFC 2230, “Key Exchange Delegation Record for the DNS,”
`November 1997, attached to the Request as Exhibit X4 ("RFC 2230").
`
`Eastlake, D. et al., IETF RFC 2538, “Storing Certificates in the Domain Name System
`(DNS),” March 1999, attached to the Request as Exhibit X5 ("RFC 2538").
`
`Kent, S. et al., IETF RFC 2401 , “Security Architecture for the Internet Protocol,”
`November 1998, attached to the Request as Exhibit X6 (”RFC 2401").
`
`Petitioner Apple Inc. - EX. 1055, p. 4
`
`Petitioner Apple Inc. - Ex. 1055, p. 4
`
`

`

`Application/Control Number: 95/001,788
`Art Unit: 3992
`
`Page 3
`
`Eastlake, D. et al., IETF RFC 2064, “Domain Name System Security Extensions,”
`January 1997, attached to the Request as Exhibit X7 (“RFC 2065”).
`
`Postel, J. et al., IETF RFC 920, “Domain Requirements,” October 1984, attached to the
`Request as Exhibit X8 (“RFC 920”).
`
`Guttman, E. et al., IETF RFC 2504, “Users’ Security Handbook,” February 1999,
`attached to the Request as Exhibit X9 (“RFC 2504”).
`
`Reed, M. et al., “Proxies for Anonymous Routing,” 12‘h Annual Computer Security
`Applications Conference, Sand Diego, CA (December 9-13, 1996), attached to the
`Request as Exhibit X10 (“Reed”).
`
`The third party requester also cited six prior art patents and printed publications to
`
`demonstrate the knowledge in the field of the invention.
`
`Goldschlag et al., “Hiding Routing Information,” Workshop on Information Hiding,
`Cambridge, UK, May 1996, attached to the Request as Exhibit Y1 (“Goldschlag”).
`
`Mockapetris, P., RFC 1035, “Domain Names — Implementation and Specification,”
`November 1987, attached to the Request as Exhibit Y2 (“RFC 1035”).
`
`Braken, R., RFC 1123, “Requirements for Internet Hosts — Application and Support,”
`October 1989, attached to the Request as Exhibit Y3 (“RFC 1123”).
`
`Atkinson, R., RFC 1825, “Security Architiecture for the Internet Protocol,” August 1995,
`attached to the Request as Exhibit Y4 ("RFC 1825").
`
`Housley, R. et al., RFC 2459, “Internet X.509 Public Key Infrastructure Certificate and
`CRL profile,” January 1999, attached to the Request as Exhibit Y5 (”RFC 2459”).
`
`Mockapetris, P., RFC 1034, “Domain Names — Concepts and Facilities,” November
`1987, attached to the Request as Exhibit Y4 (“RFC 1034”).
`
`Summary Regarding Those Proposed Rejections Adopted by the Examiner
`
`Petitioner Apple Inc. - EX. 1055, p. 5
`
`Petitioner Apple Inc. - Ex. 1055, p. 5
`
`

`

`Application/Control Number: 95/001,788
`
`Art Unit: 3992
`
`Page 4
`
`The rejections identified in Issues 1-35 are adopted because the stated combinations
`
`establish a reasonable likelihood that the requester will prevail with respect to at least one of the
`
`claimsl—60 in the Larson patent, as explained in said Order.
`
`Entitlement to the Benefit of an Earlier Filing Date
`
`Some of the references cited are intervening art. MPEP 2617. Requestor asserts that the
`
`instant claims are not entitled to the earliest filing date of October 30, 1998, the filing date of the
`
`oldest parent, provisional application. The examiner agrees. US. Patent No. 7,010,604, which
`
`issued from parent application 09/429,643, and which was filed Oct. 29, 1999, fails to explicitly
`
`recite nor imply the phrase “domain name service” present in all independent claims in the
`
`Larson patent for which reexamination is now sought. Indeed, the 7,010,604 patent does not
`
`appear to even be directed to services similar to domain name lookup. The patent thus fails to
`
`provide written description support nor enable the subject matter recited in claims 1—60 of the
`
`Larson patent. Accordingly, the Larson patent is not entitled to the benefit of the 7,010,604
`
`patent filing date. The effective filing date for claims 1-60 is no earlier than the filing date of the
`
`US. Patent No. 6,502,135, which issued from parent application 09/504,783.
`
`Rejections Based upon Solana (Issues 1-8)
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 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 —
`
`Petitioner Apple Inc. - Ex. 1055, p. 6
`
`Petitioner Apple Inc. - Ex. 1055, p. 6
`
`

`

`Application/Control Number: 95/001,788
`
`Art Unit: 3992
`
`'
`
`Page 5
`
`(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.
`
`Claims 1, 2, 5, 6, 8, 9, and 14-60 are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by Solana.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 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 102 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.
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
`
`applied to the respective, parent claims above (if applicable), and further in view of Reed.
`
`Claims 7, 32 and 56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Solana as applied to the respective, parent claims above (if applicable), and further in View of
`
`Beser.
`
`Petitioner Apple Inc. - EX. 1055, p. 7
`
`Petitioner Apple Inc. - Ex. 1055, p. 7
`
`

`

`Application/Control Number: 95/001,788
`
`Art Unit: 3992
`
`Page 6
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504.
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504, and further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
`
`applied to the respective, parent claims above (if applicable), and further in view of RFC 2504,
`
`and further in view of Reed.
`
`Claims 7, 32 and 56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Solana as applied to the respective, parent claims above (if applicable), and further in view of
`
`RFC 2504, and further in view of Beser.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 14—1 16 of the
`
`Request and Exhibits C1 and C2 (claim charts), are adopted and incorpbrated by reference.
`
`Rejections Based upon Provino (Issues 9-20)
`
`Claim Rejections - 35 USC § 102
`
`Petitioner Apple Inc. - EX. 1055, p. 8
`
`Petitioner Apple Inc. - Ex. 1055, p. 8
`
`

`

`Application/Control Number: 95/001,788
`Art Unit: 3992
`
`Page 7
`
`The following is a quotation of the appropriate paragraphs of 35 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 —
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an-application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 102(e) as being anticipated
`
`by Provino.
`
`Claim Rejections - 35 USC § 103
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further in view of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Solana as applied to the respective, parent claims above (if applicable), and further in View
`
`of Beser.
`
`Petitioner Apple Inc. - EX. 1055, p. 9
`
`
`
`Petitioner Apple Inc. - Ex. 1055, p. 9
`
`

`

`Application/Control Number: 95/001,788
`Art Unit: 3992
`
`Page 8
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2230.
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2230, and further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further View of RFC 2230, and
`
`further in View of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Provino as applied to the respective, parent claims above (if applicable), and further in view
`
`of RFC 2230, and further in view of Beser.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504.
`
`Petitioner Apple Inc. - EX. 1055, p. 10
`
`Petitioner Apple Inc. - Ex. 1055, p. 10
`
`

`

`Application/Control Number: 95/001,788
`
`Art Unit: 3992
`
`Page 9
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being -
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504, and further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further View of RFC 2504, and
`
`further in view of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Provino as applied to the respective, parent claims above (if applicable), and further in view
`
`of RFC 2504, and further in view of Beser.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 117-223 of the
`
`Request and Exhibits C3, C4 and C5 (claim charts), are adopted and incorporated by reference.
`
`Rejections Based upon Beser (Issues 21-24)
`
`Claim Rejections - 35 USC § 102
`
`Claims 1, 2, 5-7 and 14-60 are rejected under 35 U.S.C. 102(e) as being anticipated by
`
`Beser.
`
`Claim Rejections - 35 USC § 103
`
`Petitioner Apple Inc. - EX. 1055, p. 11
`
`Petitioner Apple Inc. - Ex. 1055, p. 11
`
`

`

`Application/Control Number: 95/001,788
`
`Art Unit: 3992
`
`Page 10
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Beser as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
`
`applied to the respective, parent claims above (if applicable), and further in view of RFC 2401.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
`
`applied to the respective, parent claims above (if applicable), and further view of RFC 2401, and
`
`further in view of Reed.
`
`Incomoration by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 224-275 of the
`
`Request and Exhibit C6 (claim chart), are adopted and incorporated by reference.
`
`Rejections Based upon RFC 2230 (Issues 25-29)
`
`Claim Rejections - 35 USC § 102
`
`Claims 1, 2, 6, 7 and 14-60 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`RFC 2230.
`
`Claim Rejections - 35 USC § 103
`
`Petitioner Apple Inc. - EX. 1055, p. 12
`
`Petitioner Apple Inc. - Ex. 1055, p. 12
`
`

`

`Application/Control Number: 95/001,788
`
`Page 11
`
`Art Unit: 3992
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 USC: 103(a) as being
`
`unpatentable over RFC 2230 as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 8 and 9 are rejected under 35 USC. 103(a) as being unpatentable over RFC
`
`2230 as applied to the respective, parent claims above (if applicable), and further in View of RFC
`
`2401.
`
`Claims 10-13 are rejected under 35 USC. 103(a) as being unpatentable over RFC 2230
`
`as applied to the respective, parent claims above (if applicable), and further view of RFC 2401,
`
`and further in view of Reed.
`
`Claims 29-32 and 53-56 are rejected under 35 USC. 103(a) as being unpatentable over
`
`RFC 2230 as applied to the respective, parent claims above (if applicable), and further in view of
`
`RFC 2230, and further in view of Beser.
`
`Incomoration by Reference
`
`Thus, the third party requester proposed rejection of claims 1—60 on pages 276-321 of the
`
`Request and Exhibit C7 (claim chart), are adopted and incorporated by reference.
`
`Rejections Based upon RFC 2538 (Issues 30-35)
`
`Claim Rejections - 35 USC § 102
`
`Petitioner Apple' Inc. - EX. 1055, p. 13
`
`Petitioner Apple Inc. - Ex. 1055, p. 13
`
`

`

`Application/Control Number: 95/001,788
`
`Page 12
`
`Art Unit: 3992
`
`(a) the invention was known or used by others in this country, or patented or described in a printed publication in
`this or a foreign country, before the invention thereof by the applicant for a patent.
`
`Claims 1, 2, 6, 14-22, 24-46, 48-52 and 57-60 are rejected under 35 U.S.C. 102(a) as
`
`being anticipated by RFC 2538.
`
`Claim Rejections - 35 USC § 103
`
`Claims 3, 4, 24, 25, 48 and 49 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over RFC 2538 as applied to the respective, parent claims above (if applicable), and further in
`
`View of RFC 920.
`
`Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC
`
`2538 as applied to the respective, parent claims above (if applicable), and further in view of RFC
`
`2401.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC 2538
`
`as applied to the respective, parent claims above (if applicable), and further view of RFC 2401 ,
`
`and further in view of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over RFC 2538 as applied to the respective, parent claims above (if applicable), and further in
`
`view of Beser.
`
`Petitioner Apple Inc. - EX. 1055, p. 14
`
`
`
`Petitioner Apple Inc. - Ex. 1055, p. 14
`
`

`

`Application/Control Number: 95/001,788
`
`Page 13
`
`Art Unit: 3992
`
`Claims 5, 23 and 47 are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC
`
`2538 as applied to the respective, parent claims above (if applicable), and further in view of RFC
`
`2065.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1—60 on pages 322-364 of the
`
`Request and Exhibit C8 (claim chart), are adopted and incorporated by reference.
`
`Conclusion
`
`Any paper filed with the USPTO, i.e., any submission made, by either the Patent Owner
`
`or the Third Party Requester must be served on every other party in the reexamination
`
`proceeding, including any other third party requester that is part of the proceeding due to merger
`
`of the reexamination proceedings. As proof of service, the party submitting the paper to the
`
`V Office must attach a Certificate of Service to the paper, which sets forth-the name and address of
`
`the party served and the method of service. Papers filed without the required Certificate of
`
`Service may be denied consideration. 37 CFR 1.903; MPEP 2666.06.
`
`Any proposed amendment to the specification and/or claims in this reexamination
`
`proceeding must comply with 37 CFR 1.530(d)-(j), must be formally presented pursuant to 37
`
`CFR 1.52(a) and (b), and must containany fees required by 37 CFR 1.20(c). Amendments in an
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`inter partes reexamination proceeding are made in the same manner that amendments in an ex
`
`Petitioner Apple Inc. - Ex. 1055, p. 15
`
`Petitioner Apple Inc. - Ex. 1055, p. 15
`
`

`

`Application/Control Number: 95/001,788
`
`Page 14
`
`Art Unit: 3992
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`parte reexamination are made. MPEP 2666.01. See MPEP 2250 for guidance as to the manner
`
`of making amendments in a reexamination proceeding.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes
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`reexamination proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant”
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`and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c)
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`requires that inter partes reexamination proceedings “will be conducted with special dispatch”
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`(37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are
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`provided for in 37 CFR 1.956. Extensions of time are not available for third party requester
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`comments, because a comment period of 30 days from service of patent owner’s response is set
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`by statute. 35 U.S.C. 314(b)(3).
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`The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to
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`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
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`Larson patent undergoing reexamination or any related patent throughout the course of this
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`reexamination proceeding. The third party requester is also reminded of the ability to similarly
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`inform the Office of any such activity or proceeding throughout the course of this reexamination
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`proceeding. See MPEP § 2686 and 2686.04.
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`All correspondence relating to this inter partes reexamination proceeding should be
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`directed:
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`By Mail to:
`
`Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`
`Petitioner Apple Inc. - Ex. 1055, p. 16
`
`Petitioner Apple Inc. - Ex. 1055, p. 16
`
`

`

`Application/Control Number: 95/001,788
`
`Art Unit: 3992
`
`Page 15
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`Commissioner of Patents
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`United States Patent & Trademark Office
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`PO. Box 1450
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`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`By EFS-Web:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`,
`
`Registered users of EFS-Web may alternatively submit such correspondence via the
`
`electronic filing system EFS-Web, at
`
`htt s://s ortal.us to.gov/authenticate/authenticateuserlocale f.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
`
`examiner, or as to the status of this proceeding, should be directed to the Central Reexamination
`
`Unit at telephone number (571) 272-7705.
`
`Petitioner Apple Inc. - Ex. 1055, p. 17
`
`Petitioner Apple Inc. - Ex. 1055, p. 17
`
`

`

`Application/Control Number: 95/001,788
`Art Unit: 3992
`
`Page 16
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`Signed:
`
`/Roland G. Foster/
`
`Roland G. Foster
`
`Central Reexamination Unit, Primary Examiner
`Electrical Art Unit 3992
`
`(571) 272-7538
`
`Conferee:
`
`/j.r.p./
`
`Conferee:
`
`MARK J. REM-(AH-
`CRU SPE—AU 3958;
`
`Petitioner Apple Inc. - EX. 1055, p. 18
`
`Petitioner Apple Inc. - Ex. 1055, p. 18
`
`