HME Electronics, Inc.
`HJVIE Electronics, Inc.
`Exhibit 1003
`Exhibit 1003
`
`APPO403
`
`

`
`Doc code: IDS
`Doc description: Information Disclosure Statement {IDS} Field
`
`PTOiSBro8a (E31-19)
`Approved for use through EI?I31I2012. OMB E3651-0031
`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 contains a valid OMB control number.
`
`Application Number
`
`95r’002_,238
`
`30p 13” 2012
`
`,
`AWISZLIS
`
`102.01 OSUSRX
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`{Not for Submission under 37 cFR1_99}
`
`Fmng Date
`_
`Flrst Named ITIVBTIIOT
`
`Art Unit
`
`SICVCII
`
`3992
`
`Examiner Name
`
`John S. Hcyman
`
`Attorney Docket Number
`
`Examiner
`Initial,
`
`Cite
`NO
`
`Patent
`Number
`
`I-(ind
`Code.
`
`U.S.PATENTS
`Name of Patentee or Applicant
`of cited Document
`
`Issue Date
`
`|
`
`Pages’ Columns’ Lines’ Where
`Relevant Passages or Relevant
`Figures Appear
`
`U.S.PATENT APPLICATION PUBLICATIONS
`
`Examiner
`lnitial*
`
`Cite
`No
`
`Publication
`Number
`
`Kind
`Code‘
`
`Publication
`Date
`
`game 0‘ P""‘°“‘°e 0’ Ap""°"""‘
`.
`cited Document
`
`::?;:n?‘g:;';5'e';"::5é:T:\j::I
`.
`g
`Figures Appear
`
`
`
`FOREIGN PATENT DOCUMENTS
`
`Examiner
`|F1iiia|'
`
`Cite
`N0
`
`Foreign
`Document
`Numbers
`
`Country
`C0619?
`
`Kind
`C0594
`
`Publication
`Dale
`
`Name of Patentee
`or Applicant of
`cited Document
`
`Pages, Columns, Lines
`where Relevant Passages or
`Relevant Figures Appear
`
`T
`"’
`
`NON-PATENT LITERATURE DOCUMENTS
`
`Examiner
`lnitials*
`
`Cite
`No
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the
`item (book, magazine, journal, serial, symposium, catalog, etc), date, page(s), volume-issue
`numberts}, publisher, city andlor country where published.
`
`T5
`
`"Non-Final Office Action", mailed June 10, 2014 in co-pending Application Serial
`No. 14!186,986 (our file 61312US017), "REMOTELY CONFIGURABLE
`WIRELESS INTERCOM SYSTEM FOR AN ESTABLISHMENT,“ (7 pages).
`
`
`
`EXAMINER SIGNATURE
`
`Examiner Signature
`
`Date Considered
`
`*EXAlvlINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw
`line through a citation if not in conformance and not considered. Include copy of this form with next
`communication to applicant.
`
`' See Kind Codes of USPTO Patent Documentsat or MPEP 901.04. 2 Enter office that issued the document, by the
`two—letter code (WIPO Standard ST.3). ° For Japanese patent documents, the indication of the year of the reign of the Emperor must
`precede the serial number of the patent document.
`4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 5 Applicant is to
`place a check mark here if English language translation is attached.
`
`APPO404
`
`APP0404
`
`

`
`Doc code: IDS
`Doc description: Information Disclosure Statement {IDS} Field
`
`PTOl'SBI08a (01-10)
`Approved for use through 0?l31l2012. OMB 0651-0031
`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 contains a valid OMB control number.
`
`Application Number
`
`95f002_,238
`
`30p 13” 2012
`
`,
`AWISZLIS
`
`102.0105USRX
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`{Not for Submission under 37 cFR1_99}
`
`Wing Date
`_
`Flrst Named ITIVBTIIOT
`
`Art Unit
`
`STCVCII
`
`3992
`
`Examiner Name
`
`John S. Hcyman
`
`Attorney Docket Number
`
`Please see 37 CFR 1.97 and 1.98 to make the appropriate selection(s):
`
`CERTIFICATION STATEMENT
`
`El That each item of information contained in the information disclosure statement was first cited in any communication
`from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the
`information disclosure statement. See 37 CFR 1.97(
`) (1 }.
`
`OR
`
`E That no item of information contained in the information disclosure statement was cited in a communication from a
`foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification
`after making reasonable inquiry, no item of information contained in the information disclosure statement was known
`to any individual designated in 37 CFR 1.56{c) more than three months prior to the filing of the information disclosure
`statement. See 37 CFR 1.97(e) (2).
`
`El See attached certification statement.
`
`El Fee set forth in 37 CFR 1.17 (p) has been submitted herewith.
`
`El None
`
`SIGNATURE
`
`A signature of the applicant or representative is required in accordance with CFR 133, 10.18. Please see CFR 1.4(d} for
`the form of the signature.
`
`Sig nature
`
`.-’RaI-(hi Nikhanj.-’
`Rakhi Nikhanj
`
`Date (YYYY-M M-DD)
`Registration Number
`
`2014-08-22
`66654
`
`This collection of information is required by 37 CFR 1.97 and 1.98. 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 1.14. This collection is estimated to take 1 hour 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 andfor suggestions for reducing this burden, should be sent to the Chief
`Information Officer, U.S. Patentand 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: Commissioner for
`Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`APPO405
`
`APP0405
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Case No.: 61312USRX1 (102.0105USRX)
`
`Patent
`
`In re US. Patent No.
`
`7,599,679
`
`Issue Date:
`
`October 6, 2009
`
`Assignee:
`First Named Inventor:
`
`3M Innovative Properties Company
`S“-‘Von T‘ Awiszus
`
`Reexamination Control No.:
`
`957002_,238
`
`Confirmation No.
`
`2754
`
`Filed:
`
`Title:
`
`September 13, 2012
`
`Art Unit
`
`3992
`
`REMOTELY CONFIGURABLE WIRELESS INTERCOME
`SYSTEM FOR AN ESTABLISHMENT
`
`CERTIFICATE OF SERVICE
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`
`CF.R"I‘II-‘IC;\"I‘I-Z ()1-‘ vmII.r.\'(; OR 1‘Imxs'MIss1ox [37 CI-‘R§ I.8{a)]
`Ihercb}*cui1il‘yIhatlhis correspondence is being:
`
`P O Box 1
`‘
`
`E tmnsinitled to I'nited States Patent and 'l‘t'ademat'k Ollice on the date shown below
`via the I'SP'I'O electronic l'|lin<__> sf,-stein.
`
`Alexandria, VA 22313-1450 Au rust 22 2014
`
`Date
`
`Ililizabeth A. 1)eV1-test"
`I-Ili'/abelh A I)e\«"i'ies
`
`I hereby Certify under 37 CFR §1.248 that we sent by first class mail on August 22, 2014,
`
`a copy of the following document to Charles Segelbaum, Fredrilcson & Byron, P.A., 200 South
`
`Sixth Street, Suite 4000, Minneapolis, MN 55402-1425:
`
`1. Supplemental Information Disclosure Statement.
`
`2. Cited Prior Art Reference
`
`August 22, 2014
`Date
`
`Respectfully submitted,
`
`By:
`
`fRal<hi Nilchanjf
`Rakhi Nikhanj
`Reg. No. 66,654
`Pauly, DeVries Smith & Deffner, L.L.C.
`Customer Number: 32692
`
`Phone No: 612-746-4790
`
`APPO406
`
`APP0406
`
`

`
`Electronic Acknowledgement Receipt
`
`EFS ID:
`
`19933488
`
`Application Number:
`
`95002238
`
`Confirmation N um ber:
`
`Title of Invention:
`
`REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR AN
`ESTABUSHMENT
`
`First Named |nventori'Applicant Name:
`
`7599679
`
`Customer Number:
`
`32692
`
`I F
`
`iler Authorized By:
`
`Rakhi Devi Nikhanj
`
`Attorney Docket Number:
`
`64895.19
`
`Receipt Date:
`
`22-AUG-2014
`
`Time Stamp:
`
`13:44:16
`
`Application Type:
`
`inter partes re-exam
`
`Payment information:
`
`Submitted with Payment
`
`File Listing:
`
`Document
`Number
`
`Document Descri flan
`P
`
`File Size{Bytes}.«-'
`Message Digest
`239469
`
`«I93 3):-Imweiniiraa Iilmimlca Isnwl)
`UJSCI
`
`Part .-'.zip
`
`(ifappI.)
`
`AppO4O7
`
`Other Reference—Patent/AppfSearch
`documents
`
`201 4_06_1 0_1 02_01 0SUSC3_N
`FOA.pdf
`
`Warnings:
`
`Information:
`
`APP0407
`
`

`
`Information Disclosure Statement (IDS)
`Form (SB08)
`
`2014_08_22_102_0105USRX_1
`449_S|DS.pdf
`
`1 1 2266
`
`«bUl(515'}fJI l(1J15\lrl\1rlrlI}_I(If}3.F?3lll I0‘)-|«|)l
`I {(1
`
`”°
`
`2
`
`Warnings:
`
`Info rmation:
`
`This is not an USPTO supplied IDS fillable form
`
`Reexam Certificate of Service
`
`2014_08_22_'l02_O'|05USRX_C
`emficateOfSemce_S|DSlpdf
`
`'1 [3 {'1 Fl .-'f I ( R.-‘ii’-I ill‘-'10.-'l'N\l>( Raf) I 3"-;(|)'1 Int}
`qlfsly)
`
`Warnings:
`
`Info rmation:
`
`Total Files Size (in bytes}
`
`431793
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 1 1'1
`Ifa new application is being filed and the application includes the necessary components for a filing date {see 37 CFR
`1.53{b}-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date ofthe application.
`
`National Stage of an International Application under 35 U.S.C. 371
`Ifa timely submission to enter the national stage ofan international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCTi"D0r'E0i"903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO asa Receiving Office
`Ifa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 1'1 and MPEP1810), a Notification of the International Application Number
`and ofthe International Filing Date {Form PCTIROI1 05} will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`APPO408
`
`APP0408
`
`

`
`
`
`UNl'l‘l§l) ST/\'l‘l‘IS PA'l'l’.N'l‘ AND [TR/\l)l’.M/\l{K O13} ’l(.‘l§
`
`ITNITICD ST.-\TI':$ D151’.-\RT}UC.VT 0}." (‘.().\I}U':R(‘.I':
`l‘I'Iiled Stales P:.11eI'Il aml Tratielimrk ()fI'i('e
`Adtlress: (‘.O.\*i.\'i I33 IUNISR. FOR. I’.-\'I‘|‘lN'|‘S
`I’ 0. Box I450
`.-‘\li_'.v::|mII'i:I. \-'iI';:,ini:I IIRI _'§— I-ISU
`\K'\K'\K'.l|.'§|'3llJ.i.“l\\v'
`
`
`<'o.\:I-‘tk.\»1,-\'I‘Io.\: N0.
`,\'1"1‘o1<.\1-:‘r I)()(‘.I(J-1'1‘ xo.
`I-‘IRST rxuwil-:1) If\'\-'l-1?\"l‘{)R
`1-‘n.1:~'ca 1),-ms
`022 1:20 I 4
`Steven '1‘. .-'\\\-'is/_us
`(:1 3 121 ISO! ?
`mos
`14: I 86.986
`
`3M mmmmw-; PR()P1iR'l‘lliS (_'()Mw\NY
`°"m’”
`W
`"W2
`I)()
`
`l’AUl_, MN 55l33-3427
`
`.\'(il'YIi.\'._ D.I\\«"Il) Q
`
` 36-'13
`
`\'{ )'l'I1"I( '.n\'l'I{ )\' |).+\'|']-I
`1)]-I|.I\«"]-IRY MOD]-I
`
`{)(1fl(lI2{)l-—l
`l-II .li("[‘R()_\'l{‘
`
`Please find below andfor attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e—mail add1'ess(es):
`
`l.cgz1lIJSDockcIi11g@1m11n1.co111
`
`_
`_
`P10! .—9{J.«\ (Rev. om)? ;
`
`APPO409
`
`APP0409
`
`

`
`Application No.
`14-l'186.986
`
`Applicant(s)
`AWISZUS. STEVEN T.
`
`Office Action Summary
`
`AIA (First lnventorto File)
`A.-1 Linn
`Examiner
`§*;*“’'
`2643
`DAVID Q. NGUYEN
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions ol time may be available under the provisions of 3? CFR 1.13€:{a).
`alter SIX {6} MONTHS from the mailing date ol this communication.
`If NO period Ior reply is specified above. the maximum statutory period will apply and will expire SIX {6} MONTHS Irom the mailing date ol this communication.
`-
`- Failure to reply within the set or extended period for reply will. by statute. cause the application to become ABANDONED (35 U.S.C § 133).
`Any reply received by the Office later than three months alter the mailing date of this communication. even il timely Iiled. may reduoe any
`earned patent term adjustment. See 3?‘ CFR 1.?04(b}.
`
`In no event. however. may a reply be timely Iiled
`
`Status
`
`HE Responsive to communication(s) filed on 02/21/2014.
`I:I A declaration(s)faffidavit(s) under 37 CFR 1.130(b) wasfwere filed on
`
`2a)|:l This action is FINAL.
`
`2b)]Z This action is non-final.
`
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`_; the restriction requirement and election have been incorporated into this action.
`4)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1985 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)|Z C|aim(s)1i2isfare pending in the application.
`5a) Of the above c|airn(s)
`isfare withdrawn from consideration.
`6 I:| Claim s)
`israre allowed.
`s) iisfare rejected.
`
`)
`
`israre objected to.
`
`are subject to restriction andfor election requirement.
`)
`* If any claims have been determined allowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`:fr’wwv.r.usotc.oov.v' atentsféziit events,’
`i-7 E-"i--lfeedback «bus
`
`
`
`
`.to.ciov.
`
`§‘.:'inclei<.‘s or send an inquiry to
`
`
`
`Application Papers
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on j isfare: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 1 19
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)1:I All
`b)|:l Some“ c)|:l None of the:
`1.|:[ Certified copies of the priority documents have been received.
`2.I:[ Certified copies of the priority documents have been received in Application No.
`3.I:l Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachmenfls}
`
`1} E Notice of References Cited (PTO—892}i
`_
`_
`2) D Information Disclosure Statementtsj (PTOfSBf08a andfor PTOfSBf08b)
`Paper No(s}vMai| Date
`US Patent and Trademark Ollice
`PTOL—326 (Rev 1 1-13)
`
`Office Action Summary
`
`3} D jme;-new summary {PTQ-413)
`Paper Notsjrlvlail Date. j
`4} D other
`
`Pan of Paper No i'Mallll3RQEb1@J6Cl3
`
`APP0410
`
`

`
`Application.=’Control Number: 14:’ 186,986
`
`Page 2
`
`Art Unit: 2643
`
`l.
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`DETAILED ACTION
`
`Double Patem‘ing
`
`2.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
`
`harassment by multiple assignees. A nonstatutory obviousness—type double patenting rejection
`
`is appropriate where the conflicting claims are not identical, but at least one examined
`
`application claim is not patentably distinct from the reference claim(s) because the examined
`
`application claim is either anticipated by, or would have been obvious over, the reference
`
`clai1"n(s). See, e.g., In re Berg, I40 F.3d I428, 46 USPQ2d 1226 (Fed. Cir. I998)‘, In re
`
`Goodman, ll F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. I993); In re Longi, 759 F.2d 887, 225
`
`USPQ 645 (Fed. Cir. 1985); In re Van Ornurn, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
`
`Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR l.32l(c) or l.32l(d) may
`
`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
`
`ground provided the conflicting application or patent either is shown to be commonly owned
`
`with this application, or claims an invention made as a result of activities undertaken within the
`
`scope of a joint research agreement.
`
`APPO411
`
`APP0411
`
`

`
`Application.=’Control Number: 14:’ 186,986
`
`Page 3
`
`Art Unit: 2643
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR
`
`3.73(b).
`
`3.
`
`Claims 1-32 are rejected on the ground of nonstatutory obviousness—type double
`
`patenting as being unpatentable over claims 1-32 of U.S. Patent No. 8,694,040 B2. Although the
`
`conflicting claims are not identical, they are not patentably distinct from each other because the
`
`subject matter claimed in the instant application is fully disclosed in the reference US 8,694,040
`
`B2. The reference and instant application are claiming common subject matter, as follows:
`
`An intercom system being configurable for an establishment having a drive-
`
`through ordering point and a staff comprising:
`
`a base station configured to connect to a wide area communication network; at least one headset
`
`configured for two—way wireless communication with the base station;
`
`the wireless communication between the at least one headset and the base station being
`
`configurable with at least one parameter comprising volume level of communications wirelessly
`
`received or wirelessly transmitted by the headset;
`
`wherein the base station is further configured such that the at least one parameter is locally
`
`adjustable at the establishment and remotely reviewable and adjustable from a facility remote
`
`from the location of the establishment when the base station is connected to the wide area
`
`communication network; and wherein the at least one parameter can be saved into a template of
`
`parameters for later use.
`
`An intercom system, the intercom system being configurable for a drive-through,
`
`establishment having a staff, comprising:
`
`APPO412
`
`APP0412
`
`

`
`Application.=’Control Number: 14:’ 186,986
`
`Page 4
`
`Art Unit: 2643
`
`a base station configured to connect to a wide area communication network;
`
`a plurality of headsets configured for two—way wireless communication with the base
`
`station;
`
`wherein the wireless cornrnunication between each of the plurality of headsets and the
`
`base station being configurable with at least one parameter comprising at least one volume level
`
`of cornrnunication between each of the headsets and at least one ordering point in a drive-
`
`through lane;
`
`wherein the base station is configured such that the at least one parameter is locally
`
`adjustable at the establishment and remotely reviewable and remotely adjustable from a facility
`
`remote from the location of the establishment when the base station is connected to the wide area
`
`communication network; and
`
`wherein the at least one parameter for each of the plurality of headsets is grouped into a
`
`template of parameters that can be saved for later use.
`
`4.
`
`Claims l—32 would be allowable ifa terrninal disclaimer is filed to overcome the double
`
`Allowable Subject Matter
`
`patenting rejection, set forth in this Office action.
`
`Conclust'0n
`
`5.
`
`Any inquiry concerning this cornrnunication or earlier cornrnunications from the
`
`examiner should be directed to DAVID Q. NGUYEN whose telephone number is (571)272-
`
`7844. The examiner can normally be reached on 8:30AM—5:30PM.
`
`APPO413
`
`APP0413
`
`

`
`App1ication.=’Control Number: 147186986
`
`Page 5
`
`Art Unit: 2643
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Jinsong Hu can be reached on (571)272-3965. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Infonnation Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http:;’;’pai1'-di1'ect.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (BBC) at 866-217-9197 (toll-free). If you would
`
`like assistance from a USPTO Customer Senrice Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`(DAVID Q NGUYENI
`Primaly Examiner, Art Unit 2643
`
`APPO414
`
`APP0414
`
`

`
`Notice of References Cited
`
`App|ication!Contro| No.
`
`W185-985
`.
`Examiner
`
`App|icant(s)fPatent Under
`Reexamination
`
`AWISZUS STEVEN T.
`.
`Art Unit
`
`2543DAVID Q. NGUYEN Page 1 °f 1
`
`U.S. PATENT DOCUMENTS
`
`
`
`Document Number
`Country Oode—Number—Kind Code
`
`Date
`MMJMYY
`
`_
`.
`_
`C'a53'“°a"°“
`
`U8—8.694,040
`
`US-
`
`04-2014
`
`Awiszus. Steven T.
`
`455517
`
`3:-
`
`U3
`
`C")
`
`U |
`
`'T'|
`
`‘Fl
`
`I
`
`(_
`
`N
`
`REl‘0
`
`
`
`*
`
`Document Number
`Country Oode—Number—Kind Code
`
`Date
`MM.YYYY
`
`FOREIGN PATENT DOCUMENTS
`
`9°’-‘W5’
`
`Classification
`
`NON-PATENT DOCUM ENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages}
`
`"A copy ol this relerence IS not being furnished with this Otluce action (See MPEP § ?U?.U5t:a} }
`Dates in MM-YYYY format are publication dates. Classilications may be US or Ioreigrl.
`U.S Patenl and Trademark Olfice
`
`PTO—892 (Rev. 01-2001)
`
`Notice of Reterences Cited
`
`Part of Paper No. 20140603
`
`APPO415
`
`APP0415
`
`

`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE.
`United States Patent and Trademark Officc
`Addlcsai: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 223 |3- I450
`www.uspIc.go~'
`
`APPLICATION NO,
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`9s:oo2_23s
`
`o9rI3r2oI2
`
`1599579
`
`64895.19
`
`295-:
`
`32692
`H90
`D-IFDSIIOI4
`3M INNOVATIVE PROPERTIES COMPANY
`po Box 33427
`
`ST. PAUL, MN 55133-342?
`
`HEYMANJDHN 5
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`0-1.I'0S!20 I 4
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below andior 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)
`
`APPO416
`
`APP0416
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Commissioner for Patents
`United Slates Patents and ‘Trademark Office
`‘
`P.O.Bdx 1450
`Alexandria, VA 223]]--I450
`www. uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`FREDRJKSON & BYRON, P.A.
`INTELLECTUAL PROPERTY GROUP
`200 SOUTH SIXTH STREET, SUITE 4000
`_ MINNEAPOLIS’ MN 55402
`
`.
`
`MNLED
`.
`APR 0 8 2014
`CENTHALHEEXAMINATION uurr
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`I REHEXAMINATION CONTROL NO. : 95002238
`PATENT NO. : 7599679
`
`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.
`-
`
`APPO417
`
`APP0417
`
`

`
` Decision on Petition For Control Na: 951002.238
`
`
`Waiver of Page Limit
`
`‘I.
`
`2.
`
`3.
`
`THIS IS A DEClS|0N ON THE PETiT|ON FILED: Januagg 3, 2013.
`
`THIS DECISION IS ISSUED PURSUANT TO:
`
`37 CFR 1.183 — In an extraordinary situation, when justice requires, any requirement of the regulations in this
`part which is not a requirement of the statutes may be suspended or waived by the Director or the Director's
`designee, sua sponte, or on petition of the interested party, subject to such other requirements as may be
`imposed.
`
`37 CFR 1.943{b) — Responses by the patent owner and written comments by the third party requester shall not
`exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior
`art references.
`‘
`
`The petition is before the Oflice of Patent Legal Administration-.
`
`_
`RELIEF REQUESTED
`\
`Petitioner requests waiver of the 50-page limit of 3? CFR 1.943(b) for:
`
`E patent owner's response to the Office action mailed on November 15 2012. '
`E]
`third party requester comments filed after patent owner's response and the Office action mailed
`on
`\
`
`4.
`
`FORMAL MATTERS
`
`a. E Petitioner timely filed a proposed patent owner's response or third party requester comments submission:
`
`i.
`
`ii.
`
`I:'
`
`IE
`
`concurrently with the instant petition.
`
`on Januar_y 15, 2013.
`
`.b.
`
`c.
`
`IX! Petition fee per 37 CFR 1.20(c)(6) was provided.
`
`‘X’ Proper certificate of service was provided.
`
`d. 8 Petition was properly signed.
`
`5.
`
`DECISION (see 37 CFR 1.183 and 1.943(b)}
`
`a.
`
`IX! Granted. Based on the specific facts set forth in the petition under 37 CFR 1.183. petitioner's showing in
`support of the request for waiver of the 50-page limit of 37 CFR ‘|.943(b) by attempting to draft a submission in
`compliance with the 50-page limit and submitting the resulting submission which is in excess of 50 pages, and
`the individual facts and circumstances of this case, the page limit of 37 CFR 1.943(1)) is waived to the extent
`necessary to permit entry of the submission filed on Januaq 15, 2013. This waiver makes the submission filed
`on January 15, 2013 page~length compliant.‘
`’
`
`b. D Granted-in—part:
`
`c. D Dismissed because:
`
`1'. E]
`ii.
`I:]
`
`Formal matters above. (See unchecked boxtes) 4a._b, c. andior d.}
`The petition is unnecessary because the maximumnumber of pages of the submission filed on
`that count toward the reguiatory page limit does not exceed 50 pages.
`
`iii.
`
`[:1
`_
`
`The petition is moot in light of the communication from the Central Reexamination Unit (CRU). _
`mailed on
`
`iv. E] '
`CONCLUSION
`
`6.
`
`Othericommentz
`
`
`
`Telephone inquiries with regard to this decision should be directed to Maria Nuzzolillo at 571-272-8150. In
`hisiher absence, calls may be directed to Nicole D. Haines at 571-2?2~771? in the Office of Patent Legal
`Administration.
`
`iNicole D. Haines!
`Nicole D. Haines
`{Signature}
`
`Senior Legal Advisor
`[Tirie]
`
`" This decision is limited to the issue ol page-length compliance. The Central Reexamination Unit i[CRU) will evaluate the submission for compliance with other
`applicable regulations. Also. this decision does not address the merits of any patent owner requests for entry of amendments andior evidence pursuant to 3?
`CFR 1.116. which will be considered by the CRU examiner.
`.
`US. Patent and Trademark Orfice
`PTO-2309 (Rev 06-2013)
`
`APPO418
`
`APP0418
`
`

`
`Doc code: IDS
`Doc description: Information Disclosure Statement {IDS} Field
`
`PTOiSBro8a (E31-19)
`Approved for use through El?l31l2012. OMB E3651-0031
`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 contains a valid OMB control number.
`
`Application Number
`
`95r’002_,238
`
`30p 13” 2012
`
`,
`AWISZLIS
`
`102.01 OSUSRX
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`{Not for Submission under 37 cFR1_99}
`
`Fmng Date
`_
`FIFSIZ Named IITVBITIOT
`
`Art Unit
`
`SIZCVCII
`
`3992
`
`Examiner Name
`
`John S. Hcyman
`
`Attorney Docket Number
`
`Examiner
`Initial,
`
`Cite
`
`NO
`
`Patent
`
`Number
`
`l-(ind
`
`Code.
`
`U.S.PATENTS
`Nameof PatenteeorApplicant
`
`of cited Document
`
`Issue Date
`
`Pages’ Columns’ Lines’ Where
`
`Relevant Passages or Relevant
`Figures Appear
`
`I
`‘
`
`I
`
`U.S.PATENT APPLICATION PUBLICATIONS
`
`Examiner
`lnitial*
`
`Cite
`No
`
`Publication
`Number
`
`Kind
`Code‘
`
`Publication
`Date
`
`game 0‘ P""‘°“‘°e 0’ Ap"'i°"""‘
`.
`cited Document
`
`::‘f;:n?‘g:;';5'e':‘::5é:T:\j::I
`.
`g
`Figures Appear
`
`
`
`FOREIGN PATENT DOCUMENTS
`
`Examiner
`|F1iiia|'
`
`Cite
`N0
`
`Foreign
`Document
`Numbers
`
`Country
`C0619?
`
`Kind
`C0594
`
`Publication
`Date
`
`Name of Patentee
`or Applicant of
`cited Document
`
`Pages, Columns, Lines
`where Relevant Passages or
`Relevant Figures Appear
`
`T
`"’
`
`NON-PATENT LITERATURE DOCUMENTS
`
`Examiner
`lnitials*
`
`Cite
`No
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the
`item (book, magazine, journal, serial, symposium, catalog, etc), date, page(s), volume-issue
`numberls}, publisher, city andlor country where published.
`
`T5
`
`"Third Party Comments afier Patent Owner's Response to the Action Closing
`Prosecution Pursuant to 37 CFR 1.947", Filed on Oct 21, 2013 in co-owned, co-
`pending lnter Partes Reexamination Application No. 95r'002,239 (our docket no.
`6l3l2USRXl I l02.0l05USR2) 23 pages
`
`
`
`EXAMINER SIGNATURE
`
`Examiner Signature
`
`Date Considered
`
`*EXAlvllNER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw
`line through a citation if not in conformance and not considered. Include copy of this form with next
`communication to applicant.
`
`
`
`' See Kind Codes of USPTO Patent Documents at
`two—letter code (WIPO Standard ST.3). ° For Japanese
`precede the serial number of the patent document.
`4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 5 Applicant is to
`place a check mark here if English language translation is attached.
`
`__\_«‘_ or MPEP 901.04. 2 Enter office that issued the document, by the
`nt do merits, the indication of the year of the reign of the Emperor must
`
`APPO419
`
`APP0419
`
`

`
`Doc code: IDS
`Doc description: Information Disclosure Statement {IDS} Field
`
`PT0lSBrd8a (01-10)
`Approved for use through 0?l31l2012. OMB 0651-0031
`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 contains a valid OMB control number.
`
`Application Number
`
`95f002_,238
`
`30p 13” 2012
`
`,
`AWISZLIS
`
`102.0105USRX
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`{Not for Submission under 37 cFR1_99}
`
`Wing Date
`_
`Flrst Named ITIVBTIIOT
`
`Art Unit
`
`STCVCII
`
`3992
`
`Examiner Name
`
`John S. Hcyman
`
`Attorney Docket Number
`
`Please see 37 CFR 1.97 and 1.98 to make the appropriate selection(s):
`
`CERTIFICATION STATEMENT
`
`El That each item of information contained in the information disclosure statement was first cited in any communication
`from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the
`information disclosure statement. See 37 CFR 197( ) (1 }.
`
`OR
`
`E That no item of information contained in the information disclosure statement was cited in a communication from a
`foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification
`after making reasonable inquiry, no item of information contained in the information disclosure statement was known
`to any individual designated in 37 CFR 1.56{c) more than three months prior to the filing of the information disclosure
`statement. See 37 CFR 1.97(e) (2).
`
`El See attached certification statement.
`
`El Fee set forth in 37 CFR 1.17 (p) has been submitted herewith.
`
`El None
`
`SIGNATURE
`
`A signature of the applicant or representative is required in accordance with CFR 133, 10.18. Please see CFR 1.4(d} for
`the form of the signature.
`
`Signature
`
`Name.r'Print
`
`.-‘Katherine M. De\/ries
`Smith.-’
`
`Katherine M. Devries
`Smith
`
`Date (YYYY-MM-DD)
`
`2013-12-02
`
`Registration Number
`
`42,157
`
`This collection of information is required by 37 CFR 1.97 and 1.98. 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 1.14. This collection is estimated to take 1 hour 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 andfor suggestions for reducing this burden, should be sent to the Chief
`Information Officer, U.S. Patentand Trade