PTO/SB/57 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`(Also referred to as FORM PTO-1465)
`
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`PO. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.:
`
`Date: September 13: 2012
`
`1.
`
`This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
`issue
`d June 8’ 1999
`. The request is made by:
`D patent owner.
`third party requester.
`
`5,910,988
`
`The name and address ofthe person requesting reexamination is:
`
`KMF Patent Services, PLLC
`
`1629 K Street NW, Suite 300
`
`Washington, DC 20006
`
`
`
`A check in the amount of $
`
`is enclosed to cover the reexamination fee, 37 CFR 120(c)(1);
`
`The Director is hereby authorized to charge the fee as set forth in 37 CFR 120(c)(1)
`
`to Deposit Account No.
`; or
`
`0.
`
`Payment by credit card. Fema—PTG—Q-GSS—is—attaeheel: Payment made directly Via PTO Website
`
`|:| Any refund should be made by I: check or I: credit to Deposit Account No.
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`A copy ofthe patent to be reexamined having a double column format on one side of a separate paper is
`enclosed. 37 CFR 1.510(b)(4)
`
`|:| CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`I: Landscape Table on CD
`
`Nucleotide and/or Amino Acid Sequence Submission
`If applicable, items a. — c. are required.
`
`a. I: Computer Readable Form (CRF)
`b. Specification Sequence Listing on:
`i. D CD-ROM (2 copies) or CD-R (2 copies); or
`ii. I: paper
`
`c. I: Statements verifying identity of above copies
`
`8.
`
`9.
`
`10.
`
`A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`
`is requested.
`Reexamination of claim(s) 42’46'50’84’88'92’97'1 02,1 06'1 10:1 14'1 16’
`and 121-122
`
`A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/SB/O8, PTO-1449, or equivalent.
`
`11. I: An English language translation of all necessary and pertinent non-English language patents and/or printed
`publications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.510. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 18 minutes to complete,
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on
`the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, US Patent and
`Trademark Office, U.S. Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.0. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`Page 1 of 1596
`
`FIS Exhibit 1022
`
`Page 1 of 1596
`
`FIS Exhibit 1022
`
`

`

`PTO/SB/57 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`12.
`
`The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR1.510(b)(1)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.510(b)(2).
`
`13. I: A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.510(e)
`
`14.
`
`a.
`
`It is certified that a copy ofthis request (if filed by other than the patent owner) has been served in its entirety on
`the patent owner as provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`
`HERSHKOVITZ & ASSOCIATES, LLC
`
`2845 DUKE STREET
`
`ALEXANDRIA VA 22314
`
`Date of Service:
`
`September 13, 2012
`
`; or
`
`D b. A duplicate copy is enclosed because service on patent owner was not possible. An explanation of the efforts
`made to serve patent owner is attached. See MPEP 2220.
`
`15. Correspondence Address: Direct all communications about the reexamination to:
`
`The address associated with Customer Number:
`
`47649
`
`OR
`
`B Firm or
`Individual Name
`
`
`
`16. I: The patent is currently the subject of the following concurrent proceeding(s):
`D a. Copending reissue Application No.
`D b. Copending reexamination Control No.
`D c. Copending Interference No.
`D d. Copending litigation styled:
`
`WARNING: Information on this form may become public. Credit card information should not be
`included on this form. Provide credit card information and authorization on PTO-2038.
`
`/Kenneth M. Fagin/
`Authorized Signature
`Kenneth M_ Fagin
`Typed/Printed Name
`
`September 13, 2012
`Date
`37615
`Registration No.
`
`I: For Patent Owner Requester
`For Third Party Requester
`
`[Page 2 of 2]
`
`Page 2 of 1596
`
`Page 2 of 1596
`
`

`

`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
`with your submission of the attached form related to a patent application or patent. Accordingly,
`pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
`collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
`and (3) the principal purpose for which the information is used by the US. Patent and Trademark
`Office is to process and/or examine your submission related to a patent application or patent. If you do
`not furnish the requested information, the US. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or
`abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the
`Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
`this system of records may be disclosed to the Department of Justice to determine whether
`disclosure of these records is required by the Freedom of Information Act.
`in the course of
`A record from this system of records may be disclosed, as a routine use,
`presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
`opposing counsel in the course of settlement negotiations.
`to a Member of
`A record in this system of records may be disclosed, as a routine use,
`Congress submitting a request involving an individual, to whom the record pertains, when the
`individual has requested assistance from the Member with respect to the subject matter of the
`record.
`
`A record in this system of records may be disclosed, as a routine use, to a contractor of the
`Agency having need for the information in order to perform a contract. Recipients of
`information shall be required to comply with the requirements of the Privacy Act of 1974, as
`amended, pursuant to 5 U.S.C. 552a(m).
`A record related to an International Application filed under the Patent Cooperation Treaty in
`this system of records may be disclosed, as a routine use, to the International Bureau of the
`World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
`the Atomic Energy Act (42 U.S.C. 218(0)).
`A record from this system of records may be disclosed, as a routine use, to the Administrator,
`General Services, or his/her designee, during an inspection of records conducted by GSA as
`part of that agency's responsibility to recommend improvements in records management
`practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
`be made in accordance with the GSA regulations governing inspection of records for this
`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
`be used to make determinations about individuals.
`
`A record from this system of records may be disclosed, as a routine use, to the public after
`either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
`pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
`CFR 1.14, as a routine use, to the public if the record was filed in an application which
`became abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspection or an
`issued patent.
`A record from this system of records may be disclosed, as a routine use, to a Federal, State,
`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`Page 3 of 1596
`
`Page 3 of 1596
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re U.S. Patent No.: 5,910,988
`
`RCN: Not Yet Assigned
`
`Examiner: TBD
`
`Inventors: Ba11ard
`
`Art Unit: TBD
`
`Filed: August 27, 1997
`
`Title: Remote Image Capture with Centralized
`Processing and Storage
`
`Mail Stop Ex Parte Reexamination
`ATTN: Central Reexamination Unit
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`RE UEST FOR EX PARTE REEXAMINATION OF U.S. PATENT NO. 5 910 988
`
`Page 4 of 1596
`
`Page 4 of 1596
`
`

`

`LIST OF EXHIBITS ............................................................................................................................ 4
`
`I.
`
`II.
`
`INTRODUCTION ................................................................................................................... 5
`
`REQUIREMENTS FOR EX PARTE REEXAMINATION UNDER 37 C.F.R. § 1.510 ........ 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`37 C.F.R. § 1.510 (b)(1) and (b)(2): Statement Pointing Out Each Substantial New
`Question of Patentability.............................................................................................. 6
`
`37 C.F.R. §1.5 10 (b)(2): Detailed Explanation of the Pertinency and Manner of
`Applying the Prior Art ................................................................................................. 6
`
`37 C.F.R. § 1.510 (b)(3): Copy of Every Patent or Printed Publication Cited
`Against The Claims ...................................................................................................... 6
`
`37 C.F.R. § 1.510 (b)(4): Copy of the Entire Patent .................................................... 7
`
`37 C.F.R. § 1.510 (b)(5): Certification that a Copy of the Request has been Served
`in its Entirety on the Patent Owner .............................................................................. 7
`
`F.
`
`37 C.F.R. § 1.510 (a): Fee for Requesting Reexamination .......................................... 7
`
`III.
`
`OVERVIEW OF THE ‘988 PATENT AND PROSECUTION HISTORY ............................ 7
`
`A.
`
`B.
`
`Summary of Claimed Embodiments of the ‘988 Patent .............................................. 7
`
`‘988 Patent Prosecution History .................................................................................. 9
`
`IV.
`
`SUMMARY OF THE PRIOR ART ...................................................................................... 17
`
`A.
`
`B.
`
`C.
`
`D.
`
`CAMERON ................................................................................................................ 17
`
`ECKERSON .............................................................................................................. 18
`
`WEISS ........................................................................................................................ 18
`
`GEER ......................................................................................................................... 19
`
`37 CF R § 1 510 (B)(1) STATEMENT POINTING OUT EACH SUBSTANTIAL
`V
`NEW QUESTION OF PATENTABILITY ....................................................................................... 19
`
`A.
`
`Cameron1n Combination with Geer and Patent Owner Admissions Establishes a
`
`Substantial New Question of Patentability with Respect to Claims 42, 46-50, 84,
`88-92, 97-102, 106-110, 114-116, and 121-122 ofthe ‘988 Patent Under 35
`
`U.S.C. § 103 ............................................................................................................... 19
`
`Eckerson in Combination with Geer and Patent Owner Admissions Establishes a
`
`Substantial New Question of Patentability with Respect to Claims 42, 46-50, 84,
`88-92, 97-102, 106-110, 114-116, and 121-122 ofthe ‘988 Patent Under 35
`
`U.S.C. § 103 ............................................................................................................... 21
`
`Weiss in Combination with Geer and Patent Owner Admissions Establishes a
`
`Substantial New Question of Patentability with Respect to Claims 42, 46-50, 84,
`88-92, 97-102, 106-110, 114-116, and 121-122 ofthe ‘988 Patent Under 35
`
`U.S.C. § 103 ............................................................................................................... 23
`
`Page 5 of 1596
`
`Page 5 of 1596
`
`

`

`DETAILED EXPLANATION UNDER 37 C.F.R. 1.510(B) OF THE PERTINENCY
`VI.
`AND MANNER OF APPLYING THE CITED PRIOR ART TO EVERY CLAIM FOR WHICH
`
`REEXAMINATION IS REQUESTED ............................................................................................. 25
`
`A.
`
`B.
`
`C.
`
`Claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-1 16, and 121-122 Are
`Obvious Over Cameron in Combination with Geer and Patent Owner Admissions
`
`Under 35 U.S.C. § 103 ............................................................................................... 25
`
`Claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-1 16, and 121-122 Are
`Obvious Over Eckerson in Combination with Geer and Patent Owner Admissions
`
`Under 35 U.S.C. § 103 ............................................................................................... 95
`
`Claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-1 16, and 121-122 Are
`Obvious Over Weiss in Combination with Geer and Patent Owner Admissions
`
`Under 35 U.S.C. § 103 ............................................................................................. 161
`
`VII.
`
`CONCLUSION .................................................................................................................... 226
`
`Page 6 of 1596
`
`Page 6 of 1596
`
`

`

`LIST OF EXHIBITS
`
`The exhibits to the present Request are arranged in four groups: prior art (“PA”), claim
`
`charts (“CC”), patent materials (“PAT”), and other documents (“OTH”).
`
`Prior Art (PA)
`
`PA-A
`
`PA-B
`
`PA-C
`
`PA-D
`
`CC-A
`
`CC-B
`
`CC-C
`
`Robert A. Cameron and Kenneth G. Carrick, Reengineering DOD Through
`Enterprise- Wide Migration to Open Systems, Thesis, United States Navy, Naval
`Postgraduate School, September 1996 (“Cameron”).
`
`Wayne W. Eckerson, Three-Tier Client/Server Architecture: Achieving
`Scalability, Performance, and Efiiciency in Client/Server Applications, Open
`Information Systems, Vol. 10, No. 1, Jan. 1995 (“Eckerson”).
`
`Into Open-System
`Integrating Middleware Software
`Karen L. Weiss,
`Client/Server Systems, Thesis, United States Navy, Naval Postgraduate School, ,
`September l995(“Weiss”).
`
`US. Patent No. 5,930,778 to Geer (“Geer”).
`
`Claim Charts (CC)
`
`Claim chart comparing claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-116,
`and 121-122 to the disclosure in Cameron.
`
`Claim chart comparing claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-116,
`and 121-122 to the disclosure in Eckerson.
`
`Claim chart comparing claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-116,
`and 121-122 to the disclosure in Weiss.
`
`Relevant Patent Materials (PAT)
`
`PAT-A
`
`PAT-B
`
`PAT-C
`
`US. Patent No. 5,910,988 (“the ‘988 Patent”)
`
`Reexaminaton Certificate issued in RCN 90/007,829
`
`Reexaminaton Certificate issued in RCN 90/007,830
`
`OTH-A
`
`Claim construction order.
`
`Other Documents (0TH)
`
`Administrative Documents
`
`Information Disclosure Statement (SB08, PTO-1449 or equivalent)
`
`Transmittal Letter
`
`Page 7 of 1596
`
`Page 7 of 1596
`
`

`

`I.
`
`INTRODUCTION
`
`Reexamination of Claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-116, and 121-122
`
`of US. Patent No. 5,910,988 (“the ‘988 Patent”) is respectfully requested pursuant to 35 U.S.C.
`
`§§ 302-307 and 37 C.F.R. § 1.510. The ‘988 Patent (Exhibit PAT-A) was filed on August 27,
`
`1997 and issued June 8, 1999, to Ballard. Reexamination is requested in view of the substantial
`
`new questions of patentability (“SNQ”) presented below. Requestor reserves all rights and
`
`defenses available including, without limitation, defenses as to invalidity and unenforceability.
`
`By simply filing this Request in compliance with the Patent Rules, Requestor does not represent,
`
`agree or concur that the ‘988 patent is enforceable, and by asserting the SNQ herein, Requestor
`
`specifically asserts that Claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-116, and 121-122 of
`
`the ‘988 patent are in fact not patentable. As such, the US. Patent and Trademark Office (the
`
`“Office”) should reexamine, find unpatentable and cancel Claims 42, 46-50, 84, 88-92, 97-102,
`
`106-110, 114-116, and 121-122 of the ‘988 patent, rendering Claims 42, 46-50, 84, 88-92, 97-
`
`102, 106-110, 114-116, and 121-122 of the ‘988 patent null, void, and otherwise unenforceable.
`
`Reexamination is requested in view of the teachings of the references cited herein. The
`
`SNQs established by these references teach the elements recited by the claims of the ‘988 patent
`
`and, importantly, teach the apparent reasons for the allowance of the claims. Further, none of the
`
`references submitted as part of this reexam was applied by the Examiner during prosecution, or
`
`it/they are presented in a new light. As described more fully below, reexamination is appropriate
`
`in view of printed publications cited herein which alone or in combination provide new technical
`
`teachings not previously considered with respect
`
`to the claims herein requested for
`
`reexamination.
`
`The Requestor submits that reexamination should be granted and Claims 42, 46-50, 84,
`
`88-92, 97-102, 106-110, 114-116, and 121-122 be found unpatentable by issuance ofa Certificate
`
`of Reexamination canceling all of these claims.
`
`11.
`
`REQUIREMENTS FOR EX PAR TE REEXAMINATION UNDER 37 C.F.R. §
`1.510
`
`Requester satisfies each requirement for ex parte reexamination of the ‘988 patent as
`
`stated below.
`
`Page 8 of 1596
`
`Page 8 of 1596
`
`

`

`A.
`
`37 C.F.R. § 1.510 (B)(l) AND (B)(2): STATEMENT POINTING OUT EACH SUBSTANTIAL
`NEW QUESTION OF PATENTABILITY
`
`A statement pointing out each substantial new question of patentability (“SNQ”) based on
`
`the cited patents, and a detailed explanation of the pertinence and manner of applying the patents
`
`to Claims 42, 46-50, 84, 88-92, 97-102, 106-110, 114-116, and 121-122 (“the Requested
`
`Claims”) of the ‘988 patent is presented below in accordance with 37 C.F.R. § 1.510 (b)(l) and
`
`(b)(2)-
`
`The SNQs raised herein are based on art that was not discussed during the prosecution of
`
`the ‘988 patent, or was not cited altogether. The references, alone or in combination, are not
`
`cumulative to the prior art discussed during the original prosecution. Thus, they are appropriate
`
`for use in supporting the SNQs of patentability raised herein.
`
`B.
`
`C.
`
`37 C.F.R. §1.510 (B)(2): DETAILED EXPLANATION OF THE PERTINENCY AND MANNER
`0F APPLYING THE PRIOR ART
`
`Please see Section VI., infra.
`
`37 C.F.R. § 1.510 (B)(3): COPY OF EVERY PATENT OR PRINTED PUBLICATION CITED
`AGAINST THE CLAIMs
`
`Exhibits PA-A, PA-B, PA-C, PA-D are Cameron, Eckerson, Weiss, and Geer,
`
`respectively:
`
`PA-A
`
`PA-B
`
`PA-C
`
`Robert A. Cameron and Kenneth G. Carrick, Reengineering DOD Through
`Enterprise- Wide Migration to Open Systems, Thesis, United States Navy, Naval
`Postgraduate School, September 1996 (“Cameron”).
`
`Wayne W. Eckerson, Three-Tier Client/Server Architecture: Achieving
`Scalability, Performance, and Efiiciency in Client/Server Applications, Open
`Information Systems, Vol. 10, No. 1, Jan. 1995 (“Eckerson”).
`
`Into Open-System
`Integrating Middleware Software
`Karen L. Weiss,
`Client/Server Systems, Thesis, United States Navy, Naval Postgraduate School, ,
`September 1995 (“Weiss”).
`
`PA-D
`
`US. Patent No. 5,930,778 to Geer (“Geer”).
`
`References PA-A through PA-D are also listed on Information Disclosure Statement
`
`included in this Request. Each of these references constitutes effective prior art as to the claims
`
`ofthe ‘988 Patent under 35 U.S.C. § 102 and 35 U.S.C. § 103, as explained in detail below.
`
`During reexamination, the Patent and Trademark Office (“PTO”) may also consider
`
`“other written evidence” that may have a bearing on the date of publication of the prior art, the
`
`Page 9 of 1596
`
`Page 9 of 1596
`
`

`

`scope of the claims, and/or that would otherwise indicate how persons having ordinary skill in
`
`the art would have interpreted the prior art. MPEP § 2617. MPEP § 2617 also provides that
`
`“...substantial new questions of patentability may also be made under 35 U.S.C. 103 which are
`
`based on the above-indicated portions of 35 U.S.C. 102.”
`
`D.
`
`37 C.F.R. § 1.510 (B)(4): COPY OF THE ENTIRE PATENT AND REEXAMINATION
`CERTIFICATES
`
`A full copy of the ‘988 Patent is submitted herein as Exhibit PAT-A and associated
`
`Certificates of Correction issued in connection with 90/007,829 (Exhibit PAT-B) and 90/007,830
`
`(PAT-C),
`
`in accordance with 37 C.F.R. § 1.510(b)(4).
`
`E.
`
`37 C.F.R. § 1.510 (B)(S): CERTIFICATION THAT A COPY OF THE REQUEST HAS BEEN
`SERVED IN ITS ENTIRETY ON THE PATENT OWNER
`
`A complete copy of this request has been served on the Patent Owner in accordance with
`
`37 C.F.R. § 1.510(b)(5) at the correspondence address shown in PAIR on this date:
`
`HERSHKOVITZ & ASSOCIATES, LLC
`2845 DUKE STREET
`
`ALEXANDRIA VA 22314
`
`F.
`
`37 C.F.R. § 1.510 (A): FEE FOR REQUESTING REEXAMINATION
`
`In accordance with 37 C.F.R. § 1.510(a), a credit card authorization to cover the fee for
`
`reexamination of $2,520.00 is attached.
`
`III.
`
`OVERVIEW OF THE ‘988 PATENT AND PROSECUTION HISTORY
`
`A.
`
`SUMMARY OF CLAIMED EMBODIMENTS OF THE ‘988 PATENT
`
`The claims of the ‘988 patent recite very specific limitations, but the idea behind the ‘988
`
`patent is simple: capture data from paper documents at remote locations, accumulate the captured
`
`paper-document data at intermediate locations, and transmit the accumulated paper-document
`
`data from the intermediate locations to central locations.
`
`FIG. 1 of the ‘988 patent, reproduced below, depicts a three-tier system that includes the
`
`DataTreasuryTM System Access Terminal (DAT) 200 (bottom tier), the DataTreasuryTM System
`
`Access Collector
`
`(DAC) 400 (middle tier), and the DataTreasuryTM System Processing
`
`Concentrator (DPC) 600 (top tier). At remote customer locations, the DATs 200 capture data
`
`from “electronic and paper transactions from credit cards, smart cards, debit cards, documents
`
`Page 10 of 1596
`
`Page 10 of 1596
`
`

`

`and receipts involving sales, business, banking and general purpose consumer applications.”1
`
`The DATs 200 transmit the captured data to the middle-tier DACs 400, which accumulate the
`
`captured data. The DACs 400 transmit the accumulated data to the top-tier DPCs 600, which
`
`“store the customer's data in a central location, generate informative reports from the data and
`
`transmit the informative reports to the customers at remote locations.”2
`
`””22””
`
`.-.\\\\\\\\\\\\\\\\\\\\\\'.'.'.k'c.‘
`
`
`
` p
`
`wt}
`
`«”111”,»;u1
`
`9-":
`
`\.,
`
`\\\\\\\\\\\\\\\\\\\\\\\\'.'.'.'.'.'.'
`
`E1.)\‘
`itEV.‘.
`
`x ‘
`
`xg
`
`x
`_"__V,-.-.-.-.-.-.~.~.~.~.~.~.~.~.~.~.~.~.~......_.......-
`\
`“3”"
`K.
`.
`.
`:“"‘“‘“““§“““““““‘W‘S‘chfiy
`ww\\\\\\\\\\\‘\\xxxxxxxxxx'a'fi'.
`s
`S
`5
`
`............................[
`\Mx‘mw
`
`
`
`F I G .
`
`i;
`
`‘988 Patent at FIG. 1
`
`1Us. 5,910,988 at 3:32—35.
`
`2 Id. at 5:7-9.
`
`Page 11 of 1596
`
`Page 11 of 1596
`
`

`

`B.
`
`‘988 PATENT PROSECUTION HISTORY
`
`Initial Prosecution of the ‘988 Patent
`
`During initial prosecution Of the ‘988 patent, the Office issued a non-final Office Action
`
`on December 29, 1998 that rejected originally filed claims l-50 under 35 U.S.C. § 103(a) as
`
`being unpatentable over Owens et al. (US. Patent NO. 4,264,808), Lawlor et al. (US. Patent NO.
`
`5,220,501) or Pitroda (5,590,038) in View of Elander et al. (US. Patent NO. 4,500,750) or Zeidler
`
`(US. Patent No. 4,578,530) or Lee et al. (US. Patent NO. 4,912,762).
`
`In response,
`
`the patent owner amended the four
`
`independent claims,
`
`including
`
`independent claims 42 and 46—the claims for which the requester requests reexamination. In
`
`particular, the patent owner amended independent claim 42 tO further recite that the “data
`
`processing subsystem include[es] an imaging subsystem for capturing images of documents and
`
`receipts” and amended independent method claim 46 tO further recite “capturing an image Of
`
`documents and receipts and extracting data therefrom.”
`
`On February 23, 1999, the Office mailed a Notice Of Allowability that indicated that
`
`claims l-50 were allowed.
`
`First Reexam of the ‘988 Patent
`
`The Office previously reexamined the claims of the ’988 patent. See ctrl. no. 90/077,892
`
`(“the first reexam”). For efficiency, this summary focuses on the portions Of the first reexam
`
`discussing the limitations Of claims 42 and 46—the claims for which the requester requests
`
`reexamination.
`
`Claims 42 and 46 are as follows:
`
`42. A communication network for the transmission Of data within and between
`
`one or more remote data processing subsystems, at least one intermediate data
`collecting subsystem and at
`least one central subsystem forming a tiered
`architecture wherein each of said at least one central data processing subsystem
`communicate with a corresponding some Of said at least one data collecting
`subsystem and each of said at least one data collecting subsystem communicate
`with a corresponding some of said one or more data processing subsystems, said
`data processing subsystem including an imaging subsystem for capturing images
`of documents and receipts, comprising:
`
`at least one first local area network for transmitting data within a corresponding
`one of said one or more remote subsystems
`
`Page 12 of 1596
`
`Page 12 of 1596
`
`

`

`transmitting data within a
`least one second local area network for
`at
`corresponding one of said at least one intermediate subsystem;
`
`at least one third local area network for transmitting data within a corresponding
`one of said at least one central subsystem; and
`
`at least one wide area network for transmitting data between said one or more
`remote subsystems, said at least one intermediate subsystem and said at least one
`central subsystem.
`
`46. A method for transmitting data within and between one or more remote
`subsystems, at
`least one intermediate subsystem and at
`least one central
`subsystem in a tiered manner wherein each of the central
`subsystems
`communicate with at
`least one intermediate subsystem and each of the
`intermediate subsystems communicate with at
`least one remote subsystems
`comprising the steps of:
`
`capturing an image of documents and receipts and extracting data therefrom;
`
`transmitting data within the remote locations;
`
`transmitting data from each remote location to corresponding intermediate
`location;
`
`transmitting data within the intermediate locations;
`
`transmitting data from each intermediate location to corresponding central
`locations; and
`
`transmitting data within the central locations.
`
`The first reexam relied on,
`
`1. US. patent no. 5,373,550 to Campbell, et al. (“Campbell”)
`
`2. “imaging in Corporate Environments” Technology and Communication”
`(“Minoli”).
`
`The first request applied Campbell to claims 42 and 46 and applied Minoli only to claim 42.
`
`Campbell teaches a “public switched telephone network” for clearing checks between
`
`banks. Campbell at 2:25—33. The patent owner argued that Campbell did not teach “subsystems,”
`
`which he defined as “organization of computer components (e. g., a tape drive and controller) that
`
`comprises a functional unit that is part of a larger system.” First reexam, response dated Jan. 30,
`
`2007, at pp. 59—60 (emphasis added). The patent owner argued that because, Campbell taught a
`
`“public switched telephone network,” the various components were not “subsystems.” Id.
`
`Therefore, it would appear that, at least based on these arguments, the patent owner admits that
`
`the systems that communicate over a public network are not “subsystems” because the public
`
`Page 13 of 1596
`
`10
`
`Page 13 of 1596
`
`

`

`network is not part of “a larger system.”
`
`The patent owner further argued that Campbell taught a “hub and spoke” architecture that
`
`is different from the recited “three-tier architecture.” Id. at p. 65 (“Data Access connects directly
`
`to Intermediate and Intermediate connects diLctlv to Central”) (Emphasis added.) In support of
`
`this distinction, the patent owner cited the preamble of claim 42. Id. Note that claim 42 recites
`
`LANs and WANs; therefore, it is unclear what the patent owner means by “connects dirLctv”
`
`because the claims require LANs and WANs. It is not clear whether each subsystem, in addition
`
`to communicating via LANs and WANs, must also have point-to-point
`
`(i.e., “direct”)
`
`communication with other subsystems.
`
`Minoli teaches, “remote delivery of stored image information, whether across a local area
`
`network (LAN) in a building or campus, or a wide area network (WAN) covering a region, a
`
`state or the nation.” Minoli at p. xi. The patent owner relied on disclosure from Minoli that
`
`discussed preventing data from propagating over the WAN:
`
`LAN Interconnection [. . .] involves well-thought-out considerations. For example,
`in accessing a WAN service, the image traffic should not be cascaded through
`segments of a LAN that affects local users.
`
`Additionally, the image traffic should not be relayed over a WAN infrastructure
`that involves multiple hops and or subnetworks.
`
`As noted earlier, imaging traffic should not be sent over WANs using multiple
`hops, protocols, or subnetworks.
`
`First reexam, response dated Jan. 30, 2007, at pp. 73—74
`
`(quoting Minoli at pp. 36 and 39.)
`
`The Office agreed that “Minoli teaches away from using a wide area network to interconnect
`
`multiple local area networks that are arranged in a tiered architecture as required by claim 42.”
`
`Id., final Office action dated June 29, 2007 at pp. 4—5.
`
`Page 14 of 1596
`
`11
`
`Page 14 of 1596
`
`

`

`
`
`1 CHECK “AGE 3
`. PRDCESSW;
`1
`
`Filesenrerfopticaljumbox!
`wow write Junction}
`
`
`
`
`
`3
`
`miiltiea segment x"
`
`f
`«I’J/
`
`OCH
`Serve!
`
`5W
`
`
`
`
`
`File sewn
`Index!
`Primer Viewing workstations
`apticaliukebox. keyword
`read function
`fil‘eserver
`
`Minoli at FIG. 2.6
`
`Campbell at FIG. 1
`
`Finally, the Office confirmed claim 42 stating that the prior art failed to disclose
`
`a network [...] having a three-level tiered architecture, wherein one or more
`remote data processing subsystems communicate with at least one intermediate
`data collecting subsystem, and the intermediate data collecting subsystem
`communicates with at least one central data processing subsystem.
`
`Id. at pp. 9—10.
`
`The Office confirmed claim 46 stating that the prior art failed to disclose
`
`transmitting data over a network haVing a three-level tiered architecture, wherein
`one or more remote image capturing subsystems communicate with at least one
`intermediate subsystem, and the intermediate subsystem communicates with at
`least one central subsystem.
`
`Id. at pp. 9—10.
`
`Other claims of the “988 patent were found to be allowable because the prior art allegedly
`
`Page 15 of 1596
`
`12
`
`Page 15 of 1596
`
`

`

`did not teach, “providing encrypted subsystem identification information and encrypted paper
`
`transaction data to the data processing subsystem.” However,
`
`the claims at
`
`issue in this
`
`reexamination do not recite such limitations or include explicit or implicit recitation of
`
`encryption. Therefore, absent an amendment, encryption should not be relevant
`
`to this
`
`reexamination. Even if the patent owner so amended the claims, the references used to reject the
`
`claims include security features such as encryption, and therefore adding encryption is either
`
`expressly disclosed or wo