`
`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
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`90/012,179
`
`03/06/2012
`
`5490216
`
`RE—02—SA—216
`
`5223
`
`03/08/2013
`
`7590
`96051
`.
`Un110c US A Inc.
`
`Legacy Town Center
`7160 Dallas Parkway
`Suite 380
`Plano, TX 75024
`
`3
`EXAMIN:R
`
`
`AHMED, SAAMAN
`PAPER NUMBER
`
`ART UNIT
`3992
`
`MAIL DATE
`
`03/08/2013
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`Petitioners Ex. 1024 Page 1
`
`Petitioners Ex. 1024 Page 1
`
`

`

` TJNI TED S TATES PATEN T AND TRADEWK QFFI CE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box145fl
`Alexandria, VA 22313-1450
`vuwmusptogov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS)
`
`ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
`
`INTELLECTUAL PROPERTY DEPARTMENT
`
`PO. BOX 10064
`
`MCLEAN, VA 22102-8064
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL FORM
`
`REEXAMINATION CONTROL NO. 90/012 179.
`
`PATENT NO. 5490216.
`
`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)).
`
`PTOL-465 (Rev.O7-O4)
`
`Petitioners Ex. 1024 Page 2
`
`Petitioners Ex. 1024 Page 2
`
`

`

`
`Control No.
`Patent Under Reexamination
`
` Notice of Intent to Issue 90/012,179 5490216
`
`
`Ex Parte Reexamination Certificate
`Examiner
`Art Unit
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`SALMAN AHMED
`
`3992
`
`1. IZI Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be issued
`in view of
`
`[XI Patent owner’s communication(s) filed: 20 November 2012.
`)
`b [I Patent owner’s failure to file an appropriate timely response to the Office action mailed:
`El Patent owner’s failure to timely file an Appeal Brief (37 CFR 41.31).
`[I The decision on appeal by the El Board of Patent Appeals and Interferences El Court dated
`El Other:
`ae Reexamination Certificate will indicate the following:
`aChange in the Specification:
`[I Yes IXI No
`Change in the Drawing(s):
`I:I Yes IXI No
`c Status of the Claim(s ):
`
`(1) Patent c|aim(s) confirmed: 1-11 and 17-20.
`(2) Patent c|aim(s) amended (including dependent on amended c|aim(s)):
`(3) Patent c|aim(s) canceled:
`.
`(4) Newly presented c|aim(s ) patentable:
`(5)
`Newly presented canceled claims:
`Patent claims)I:l previously |:l currently disclaimed:
`(6)
`(7
`) Patent c|aim(s ) not subject to reexamination. 12- 16.
`
`Note the attached statement of reasons for patentability and/or confirmation. Any comments considered necessary
`by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly to avoid
`processing delays. Such submission(s) should be labeled: “Comments On Statement of Reasons for Patentability
`and/or Confirmation.”
`
`4. I] Note attached NOTICE OF REFERENCES CITED (PTO-892).
`
`5. IX] Note attached LIST OF REFERENCES CITED (PTO/SB/O8 or PTO/SB/O8 substitute).
`
`6. I] The drawing correction request filed on
`
`is: El approved
`
`El disapproved.
`
`7. I:l Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)|:l All b)|:l Some*
`c)I:| None
`of the certified copies have
`|:l been received.
`|:l not been received.
`[I been filed in Application No.
`I:I been filed in reexamination Control N.o
`|:l been received by the International Bureau in PCT Application No.
`
`* Certified copies not received:
`
`8. I] Note attached Examiner’s Amendment.
`
`9. I] Note attached Interview Summary (PTO-474).
`
`10. I:| Other:
`
`
`
`All correspondence relating to this 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.
`
`/Sa|man Ahmed/
`
`Primary Examiner, Art Unit 3992
`
`cc: Requester (if third party requester)
`US. Patent and Trademark Office
`PTOL-469 (Rev. 07-10)
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20130221
`
`Petitioners Ex. 1024 Page 3
`
`Petitioners Ex. 1024 Page 3
`
`

`

`Application/Control Number: 90/012,179
`
`Page 2
`
`Art Unit: 3992
`
`NOTICE OF INTENT TO ISSUE REEXAMINATION CERTIFICATE
`
`1.
`
`This office action is in response to the Patent Owner response filed 11/20/2012
`
`which is directed to the exparte reexamination of original claims 1-11 and 17-20 of U.S.
`
`Patent 5,490,216 hereinafter ‘216 patent.
`
`Information Disclosure Statement
`
`2.
`
`The information disclosure statements (IDS) submitted throughout the
`
`prosecution of the proceedings has been considered by the Examiner to the extent that
`
`they have been explained in the submissions.
`
`Statement of Reasons for Patentability and/or Confirmation
`
`The following is an examiner's statement of reasons for patentability and/or
`
`confirmation of the claims found patentable in this reexamination proceeding:
`
`Examiner submits that independent claims 1, 17, 19 and 20 were interpreted
`
`under 35 U.S.C. 112, sixth paragraph.
`
`Mode Switching Means
`
`Examiner submits that Examiner is interpreting "mode switching means" under §
`
`112, Paragraph 6:
`
`Regarding Claim 1:
`
`Claim 1 states: ...mode switching means
`
`permits use of said digital data in
`
`said use mode on said platform only if a licensee unique ID ...has matched
`
`Petitioners Ex. 1024 Page 4
`
`Petitioners Ex. 1024 Page 4
`
`

`

`Application/Control Number: 90/012,179
`
`Page 3
`
`Art Unit: 3992
`
`Therefore, Examiner submits that claim 1 limitation “...mode switching means
`
`permits use of said digital data in said use mode on said platform only if a licensee
`
`unique ID ...has matched
`
`has been interpreted under 35 U.S.C. 112I sixth
`
`paragraph, because it uses a non-structural term “mode switching means” coupled with
`
`functional language “permits use of said digital data in said use mode on said platform
`
`only if a licensee unique ID ...has matched
`
`without reciting sufficient structure to
`
`achieve the function. Furthermore, the non-structural term is not preceded by a
`
`structural modifier. The structure of “mode switching means” appears to be sufficiently
`
`supported in the ‘216 patent figure 8, element 68, figure 10 and specification columns 4
`
`lines 30-35 and column 13 lines 22-40:
`
`
`
`Fifié‘
`
`Petitioners Ex. 1024 Page 5
`
`Petitioners Ex. 1024 Page 5
`
`

`

`Application/Control Number: 90/012,179
`
`Page 4
`
`Art Unit: 3992
`
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`
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`
`
`
`Petitioners Ex. 1024 Page 6
`
`Petitioners Ex. 1024 Page 6
`
`

`

`Application/Control Number: 90/012,179
`
`Page 5
`
`Art Unit: 3992
`
`Similarly, regarding Claim 17:
`
`Claim 17 states:. .. mode-switching means ...adapted to switch said software
`
`between a fully enabled mode and a partly enabled or demonstration mode
`
`said
`
`mode-switching means switching said software into fully enabled mode only if an
`
`enabling key provided to said mode-switching means by said intending user at the time
`
`of registration of said software has matched identically with said registration key...
`
`Examiner submits that claim 17 limitation “mode-switching means ...adapted to
`
`switch said software between a fully enabled mode and a partly enabled or
`
`demonstration mode
`
`said mode-switching means switching said software into fully
`
`enabled mode only if an enabling key provided to said mode-switching means by said
`
`intending user at the time of registration of said software has matched identically with
`
`said registration key’ has been interpreted under 35 U.S.C. 11.2I sixth paragraph,
`
`because it uses a non-structural term “mode-switching means” coupled with functional
`
`language “adapted to switch said software between a fully enabled mode and a partly
`
`enabled or demonstration mode
`
`said mode-switching means switching said software
`
`into fully enabled mode only if an enabling key provided to said mode-switching means
`
`by said intending user at the time of registration of said software has matched identically
`
`with said registration key’ without reciting sufficient structure to achieve the function.
`
`Furthermore, the non-structural term is not preceded by a structural modifier. As shown
`
`earlier, the structure of “mode switching means” appears to be sufficiently supported in
`
`the ‘216 patent figure 8, element 68, figure 10 and specification columns 4 lines 30-35
`
`and column 13 lines 22-40.
`
`Petitioners Ex. 1024 Page 7
`
`Petitioners Ex. 1024 Page 7
`
`

`

`Application/Control Number: 90/012,179
`
`Page 6
`
`Art Unit: 3992
`
`Similarly, regarding Claim 19:
`
`Claim 19 states:. .. mode switching means operable on said platform
`
`which permits use of said digital data in said use mode on said platform only
`
`if a licensee unique ID. . .has matched
`
`Examiner submits that claim 19 limitation
`
`mode switching means operable on
`
`said platform which permits use of said digital data in said use mode on said platform
`
`only if a licensee unique ID...has matched
`
`has been interpreted under 35 U.S.C.
`
`112, sixth paragraph, because it uses a non-structural term “mode switching means”
`
`coupled with functional language “operable on said platform which permits use of said
`
`digital data in said use mode on said platform only if a licensee unique ID. . .has
`
`matched
`
`without reciting sufficient structure to achieve the function. Furthermore,
`
`the non-structural term is not preceded by a structural modifier. As shown earlier, the
`
`structure of “mode switching means” appears to be sufficiently supported in the ‘21 6
`
`patent figure 8, element 68, figure 10 and specification columns 4 lines 30-35 and
`
`column 13 lines 22-40.
`
`Finally, regarding Claim 20:
`
`Claim 20 states:. . .mode switching means operable on said platform which
`
`permits use of said digital data in said use mode on said platform only if a licensee
`
`unique ID
`
`has matched
`
`Petitioners Ex. 1024 Page 8
`
`Petitioners Ex. 1024 Page 8
`
`

`

`Application/Control Number: 90/012,179
`
`Page 7
`
`Art Unit: 3992
`
`Examiner submits that claim 20 limitation “...mode switching means operable on
`
`said platform which permits use of said digital data in said use mode on said platform
`
`only if a licensee unique ID
`
`has matched
`
`has been interpreted under 35 U.S.C.
`
`112, sixth paragraph, because it uses a non-structural term “mode switching means”
`
`coupled with functional language “operable on said platform which permits use of said
`
`digital data in said use mode on said platform only if a licensee unique ID
`
`has
`
`matched
`
`without reciting sufficient structure to achieve the function. Furthermore,
`
`the non-structural term is not preceded by a structural modifier. As shown earlier, the
`
`structure of “mode switching means”appears to be sufficiently supported in the ‘21 6
`
`patent figure 8, element 68, figure 10 and specification columns 4 lines 30-35 and
`
`column 13 lines 22-40.
`
`Cargile does not appear to teach a mode switching means as defined in the '216
`
`Patent specification. Cargile does not contemplate a demo mode and a full function
`
`mode much less provide a switch for changing between these modes. Cargile discloses
`
`a com arator e.
`
`. com arator 48 Fi
`
`. 2 . The com arator com ares two asscodes to
`
`grant or deny access to the user. The comparator does not switch (e.g., switch 68, Fig.
`
`8) between usable modes (i.e., demo and full program modes). Cargile's comparator
`
`either grants access or terminates the session (please see Col. 5, lines 33-36).
`
`Petitioners Ex. 1024 Page 9
`
`Petitioners Ex. 1024 Page 9
`
`

`

`Application/Control Number: 90/012,179
`
`Page 8
`
`Art Unit: 3992
`
`Local Licensee Unigue ID Generating Means
`
`Examiner submits that Examiner is interpreting "local licensee unique ID
`
`generating means" under § 112I Paragraph 6:
`
`Regarding Claim 1:
`
`Claim 1 states:
`
`local licensee unique ID generating means ...a licensee
`
`unique ID first generated by said local licensee unique ID generating means... algorithm
`
`utilized by said local licensee unique ID generating means to produce said licensee
`
`unique ID.
`
`Therefore, Examiner submits that claim 1 limitation “...Iocal licensee unique ID
`
`generating means ...a licensee unique ID first generated by said local licensee unique
`
`ID generating means... algorithm utilized by said local licensee unique ID generating
`
`means to produce said licensee unique ID” has been interpreted under 35 U.S.C. 112,
`
`sixth paragraph, because it uses a non-structural term “local licensee unique ID
`
`generating means” coupled with functional language “...a licensee unique ID first
`
`generated by said local licensee unique ID generating means... algorithm utilized by
`
`said local licensee unique ID generating means to produce said licensee unique ID. .
`
`without reciting sufficient structure to achieve the function. Furthermore, the non-
`
`structural term is not preceded by a structural modifier. The structure of “local licensee
`
`unique ID generating means”appears to be sufficiently supported in the ‘216 patent
`
`figure 10 element 85 and specification column 12 lines 62-65:
`
`Petitioners Ex. 1024 Page 10
`
`Petitioners Ex. 1024 Page 10
`
`

`

`Application/Control Number: 90/012,179
`
`Page 9
`
`Art Unit: 3992
`
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`
`Similarly, regarding Claim 19:
`
`Claim 19 states: ...Iocal licensee unique ID generating means... a licensee
`
`unique ID generated by said local licensee unique ID generating means
`
`the algorithm
`
`utilized by said local licensee unique ID generating means to produce said licensee
`
`unique ID.
`
`Therefore, Examiner submits that claim 19 limitation “...local licensee unique ID
`
`generating means... a licensee unique ID generated by said local licensee unique ID
`
`generating means
`
`the algorithm utilized by said local licensee unique ID generating
`
`means to produce said licensee unique ID” has been interpreted under 35 U.S.C. 112,
`
`Petitioners Ex. 1024 Page 11
`
`r
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`Petitioners Ex. 1024 Page 11
`
`

`

`Application/Control Number: 90/012,179
`
`Page 10
`
`Art Unit: 3992
`
`sixth paragraph, because it uses a non-structural term “local licensee unique ID
`
`generating means” coupled with functional language
`
`..a licensee unique ID generated
`
`by said local licensee unique ID generating means
`
`the algorithm utilized by said local
`
`licensee unique ID generating means to produce said licensee unique ID” without
`
`reciting sufficient structure to achieve the function. Furthermore, the non-structural term
`
`is not preceded by a structural modifier. As shown above, the structure of “local
`
`licensee unique ID generating means” appears to be sufficiently supported in the ‘21 6
`
`patent figure 10 element 85 and specification column 12 lines 62-65.
`
`Finally, regarding Claim 20:
`
`Claim 20 states:... local licensee unique ID generating means
`
`a licensee
`
`unique ID generated by said local licensee unique ID generating means
`
`the algorithm
`
`utilized by said local licensee unique ID generating means to produce said licensee
`
`unique ID.
`
`Therefore, Examiner submits that claim 20 limitation “...local licensee unique ID
`
`generating means
`
`a licensee unique ID generated by said local licensee unique ID
`
`generating means
`
`the algorithm utilized by said local licensee unique ID generating
`
`means to produce said licensee unique ID” has been interpreted under 35 U.S.C. 112,
`
`sixth paragraph, because it uses a non-structural term “local licensee unique ID
`
`generating means” coupled with functional language
`
`..a licensee unique ID generated
`
`by said local licensee unique ID generating means
`
`the algorithm utilized by said local
`
`licensee unique ID generating means to produce said licensee unique ID” without
`
`Petitioners Ex. 1024 Page 12
`
`Petitioners Ex. 1024 Page 12
`
`

`

`Application/Control Number: 90/012,179
`
`Page 11
`
`Art Unit: 3992
`
`reciting sufficient structure to achieve the function. Furthermore, the non-structural term
`
`is not preceded by a structural modifier. As shown above, the structure of “local
`
`licensee unique ID generating means” appears to be sufficiently supported in the ‘21 6
`
`patent figure 10 element 85 and specification column 12 lines 62-65.
`
`Cargile discloses a key device for generating a daily password. The key's daily
`
`password is inputted into the computer and is compared with a daily password
`
`generated by the computer. If the two passwords match, access is granted. See
`
`Abstract. In Cargile, however, the key device doesn't generate a licensee unique ID.
`
`Cargile discloses that the password generator of the key device is "pre-Ioaded at
`
`manufacturing time with a unique number so that the likelihood of two keys being the
`
`same unique numbers is insignificant." Col. 2, lines 17-19. The password generator
`
`generates a daily password as a function of the pre-Ioaded number and a timing pulse.
`
`See Col. 4, Lines 27-39. Thus, rather than generating a unique ID from user personal
`
`input data, the key device inputs a pre-Ioaded number and a date to generate a
`
`password. Hence, Cargile does not appear to teach "local licensee unique ID generating
`
`means" in view of the § 112, Paragraph 6.
`
`Waite Prior Art
`
`Waite also doesn't teach local and remote LUID generating means that utilize
`
`identical algorithms. Specifically, Waite's software activation system different and is
`
`represented in the block diagram of FIG. 3. Waite's system uses the "missing chunk"
`
`Petitioners Ex. 1024 Page 13
`
`Petitioners Ex. 1024 Page 13
`
`

`

`Application/Control Number: 90/012,179
`
`Page 12
`
`Art Unit: 3992
`
`technique for controlling usage of software, that is, software sought to be activated on
`
`the user's computer 10 is missing critical files 36 that are required for the software to
`
`operate. Waite, Page 6, Lines 13-22. A user seeking software activation registers with a
`
`remote registration server 12 by sending user identification data such as billing address
`
`and account number over the data link 30. Waite, Page 7, Lines 13-31. Server 12 then
`
`checks a database of registered users to validate the user. Waite, Page 7, Lines 31 -33.
`
`The server 12 then executes an algorithm that is Waite's closest equivalent to a
`
`"licensee unique ID generating means". The algorithm begins with server 12 building a
`
`"tamperproof overlay file" 37 by merging the user identification data with "executive
`
`control loop program instructions" 36, which are the critical program files that comprise
`
`the "missing chunk" of code that is needed to activate the software on the user's
`
`computer. A CRC value is computed for the tamperproof overlay and included with the
`
`tamperproof overlay. See Waite, Page 8, Lines 7-13. Server 12 then encrypts the
`
`tamperproof overlay file 37 and sends it to the user's computer along with a decryption
`
`key. See Waite, Page 8, Lines 15-17. The user's computer decrypts the tamperproof
`
`overlay file using the decryption key, then runs another CRC on the tamperproof overlay
`
`file and compares it to the CRC value sent from the server. If the CRC values match,
`
`the critical files are installed on the user's computer to complete the software activation.
`
`See Waite, Page 9, Lines 1-6 and 17-22. lmportantly, the second CRC that is run locally
`
`at the user's computer is a verification check on files that were merged at the remote
`
`server. That is, the user's computer doesn't execute an algorithm identical to the
`
`Petitioners Ex. 1024 Page 14
`
`Petitioners Ex. 1024 Page 14
`
`

`

`Application/Control Number: 90/012,179
`
`Page 13
`
`Art Unit: 3992
`
`server's algorithm because the missing files which are input to the server's algorithm
`
`exist only on the remote server.
`
`Mosley and Held Prior Art
`
`In addition to Cargile and Waite, Mosley prior art discloses a method for verifying
`
`the identity of an authorized remote user terminal for access to a base computer
`
`(Moseley, Abstract). When a user terminal wishes to connect to computer, the user
`
`terminal sends a password to a base verifying unit (Moseley, column 5 lines 50-60).
`
`Base verifying unit checks the password and if it is valid, generates a random value X
`
`and sends the random value X to remote verifying unit. Remote verifying unit and base
`
`verifying unit are both programmed with a system identification value K (Moseley,
`
`column 5 lines 33-36). Both the remote verifying unit and base verifying unit perform the
`
`function f(K,X) to generate a value Y (Moseley, column 6 lines 23-45). The remote
`
`verifying unit then returns the generated value of Y to the base verifying unit (Moseley,
`
`column 6 lines 23-45). If the Y value generated by the remote verifying unit matches the
`
`Y value generated by the base verifying unit then the user terminal is granted access
`
`(Moseley, column 6 lines 23-45). Hence, Moseley discloses the generation of a local
`
`and a remote unique value for use in authorizing a connection. However, Moseley does
`
`not disclose a local license unique ID and a remote license unique ID as claimed. '216
`
`patent discloses licensee unique ID generated by the recited means where the licensee
`
`unique ID is derived from at least a piece of information that is specific to the user, such
`
`Petitioners Ex. 1024 Page 15
`
`Petitioners Ex. 1024 Page 15
`
`

`

`Application/Control Number: 90/012,179
`
`Page 14
`
`Art Unit: 3992
`
`as name, billing information, or product information unique to the instantiation entered
`
`by the user and is not merely specific to the computer or independently generated by
`
`the computer. However, Moseley's unique ID,
`
`'Y', is not derived from at least a piece of
`
`information that is specific to the user, such as name, billing information, or product
`
`information unique to the instantiation entered by the user. Instead, the value 'Y' is
`
`specific to the remote verifying unit such that the value Y is based solely on platform-
`
`related user information. In fact, Moseley even suggests that any remote verifying unit
`
`that is used in conjunction with the base verifying unit would be programmed with the
`
`same K value (Moseley, column 5 lines 35-40). Accordingly, Moseley fails to teach the
`
`claimed licensee unique ID generated by the recited means where the licensee unique
`
`ID is derived from at least a piece of information that is specific to the user, such as
`
`name, billing information, or product information unique to the instantiation entered by
`
`the user. Therefore, Moseley fail to anticipate or render obvious the “Mode Switching
`
`Means” and “Remote Licensee Unigue ID Generating Means” in light of 35 U.S.C. 112,
`
`sixth paragraph as discussed above.
`
`Finally, Held prior art was brought in as a secondary prior art and discloses that
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`CRCs use XORs, and that XORs are summations. Therefore, Held fail to anticipate or
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`render obvious the “Mode Switching Means” and “Remote Licensee Unigue ID
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`Generating Means” in light of 35 U.S.C. 112, sixth paragraph as discussed above.
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`Petitioners Ex. 1024 Page 16
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`Petitioners Ex. 1024 Page 16
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`

`

`Application/Control Number: 90/012,179
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`Page 15
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`Art Unit: 3992
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`Therefore, in summary, each of the independent claims 1, 17, 19 and 20 of ‘216
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`patent claims, in light of 35 U.S.C. 112, sixth paragraph “Mode Switching Means”, and
`
`each of the independent claims 1, 19 and 20 of ‘216 patent claims, in light of 35 U.S.C.
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`112, sixth paragraph “Remote Licensee Unique ID Generating Means”. As discussed
`
`above, Cargile, Waite, Moseley and Held alone or in combination fail to anticipate or
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`render obvious the “Mode Switching Means” and “Remote Licensee Unique ID
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`Generating Means” in light of 35 U.S.C. 112, sixth paragraph as discussed above.
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`Therefore, Original claims 1-11 and 17-20 are deemed confirmed.
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`Conclusion
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`Any comments considered necessary by PATENT OWNER regarding the above
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`statement must be submitted promptly to avoid processing delays. Such submission by
`
`the patent owner should be labeled: "Comments on Statement of Reasons for
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`Patentability and/or Confirmation" and will be placed in the reexamination file.
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`3.
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`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 Patent No. 5,490,216 throughout the course of this
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`reexamination proceeding. The Third Party is also reminded of the ability to similarly
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`apprise the Office of any such activity or proceeding throughout the course of this
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`reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
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`Petitioners Ex. 1024 Page 17
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`Petitioners Ex. 1024 Page 17
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`

`

`Application/Control Number: 90/012,179
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`Page 16
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`Art Unit: 3992
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`4.
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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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`reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)).
`
`Extension of time in exparte reexamination proceedings are provided for in 37 CFR
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`1.550(c).
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`5.
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`All correspondence relating to this exparte reexamination proceeding should be
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`directed:
`
`By EFS:
`
`registered users may submit via the electronic filing system EFS-Web, at
`
`htt s://efs.us to. ov/efile/m ortai/efs—re istered
`
`By Mail to: Mail Stop Ex Parte Reexam
`
`Central Reexamination Unit
`
`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, Virginia 22313-1450
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`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Attn: Central Reexamination Unit
`
`Randolph Building, Lobby Level
`401 Dulany Street
`Alexandria, VA 22314
`
`For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that
`correspondence (except for a request for reexamination and a corrected or replacement
`request for reexamination) will be considered timely filed if (a) it is transmitted via the
`Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a
`certificate of transmission for each piece of correspondence stating the data of
`transmission, which is prior to the expiration of the set period of time in the Office action.
`
`Petitioners Ex. 1024 Page 18
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`Petitioners Ex. 1024 Page 18
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`

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`Application/Control Number: 90/012,179
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`Page 17
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`Art Unit: 3992
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`Any inquiry by the patent owner concerning this communication or earlier
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`communications from the Legal Advisor or Examiner, or as to the status of this
`
`proceeding, should be directed to the Central Reexamination Unit at telephone number
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`(571) 272-7705.
`
`/Salman Ahmed/
`
`Salman Ahmed
`
`Primary Examiner
`Central Reexamination Unit - Art Unit 3992
`
`(571) 272-8307
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`Conferee:
`
`/Ovidio Escalante/
`
`/Daniel J Ryman/
`Supervisory Patent Examiner, Art Unit 3992
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`Petitioners Ex. 1024 Page 19
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`Petitioners Ex. 1024 Page 19
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`