UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,485
`
`11/12/2010
`
`7043543
`
`57058.0148
`
`8636
`
`7590
`26582
`HOLLAND & HART, LLP
`P.O BOX 8749
`DENVER, CO 80201
`
`03/29/20I2
`
`EXAMINER
`
`LEE, CHRISTOPHER E
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`03129/2012
`
`PAPER NUMBER
`
`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)
`
`IPR Page 1
`
`Raritan v. Server Technology
`
`RARITAN EXHIBIT 1005
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`DO NOT USE IN PALM PRINTER
`
`\
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`Edmund J. Walsh
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic A venue
`Boston, MA 02210-2206
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`,
`I
`
`Date:
`MAILED
`MAR 2 9 2012
`
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`REEXAMINATION CONTROL NO.: 95001485
`PATENT NO.: 7043543
`TECHNOLOGY CENTER·: 3999
`ART UNIT: 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTO L-20 70( Rev. 07-04)
`
`IPR Page 2
`
`

`
`Transmittal of Communication to
`Third Party Requester
`Inter Partes Reexamination
`
`Control No.
`
`95/001,485
`Examiner
`
`Christopher E. Lee
`
`Patent Under Reexamination
`
`7043543
`Art Unit
`
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --
`
`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.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (5/04)
`
`Paper No. 20111215
`
`IPR Page 3
`
`

`
`OFFICE ACTION IN INTER PARTES
`REEXAM/NA TION
`
`Control No.
`
`95/001,485
`Examiner
`
`Christopher E. Lee
`
`Patent Under Reexamination.
`
`7043543
`Art Unit
`
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 20 June, 2011
`Third Party(ies) on 29 September, 2011
`
`RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
`
`For Patent Owner's Response:
`~ MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
`GOVERNED BY 37 CFR 1.956.
`For Third Party Requester's Comments on the Patent Owner Response:
`30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
`OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
`37 CFR 1.953.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1.[] Notice of References Cited by Examiner, PT0-892
`2.1:8] Information Disclosure Citation, PTO/SB/08
`3.[] __
`PART II. SUMMARY OF ACTION:
`
`1 a.i:8] Claims 1-50 are subject to reexamination.
`1 b.
`Claims __ are not subject to reexamination.
`2. [] Claims
`have been canceled.
`3. [] Claims __ are confirmed. [Unamended patent claims]
`4. [] Claims __ are patentable. [Amended or new claims]
`5. 1:8] Claims 1-50 are rejected.
`6.
`Claims __ are objected to.
`[]are not acceptable.
`[]are acceptable
`7. []The drawings filed on__
`8. []The drawing correction request filed on __ is:
`[]approved. []disapproved.
`9.
`Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-( d). The certified copy has:
`[]been filed in Application/Control No __
`been received.
`not been received.
`10.[] Other ____ _
`
`U.S. Patent and Trademark Office
`PTOL-2064 (08/06)
`
`PaperNo. 20111215
`
`IPR Page 4
`
`

`
`Application/Control Number: 95/001 ,485
`Art Unit: 3992
`
`Inter Partes REX Non-ACP[2] Office Action
`
`Page 2
`
`DETAILED ACTION
`
`Inter Partes Reexamination
`
`1.
`
`This is an Inter Partes Reexamination of United States Patent Number US 7,043,543 82,
`
`which issued to Ewing et al. [hereinafter '543 Patent].
`
`5
`
`Receipt Acknowledgement
`
`2.
`
`The Patent Owner filed 1st Response on 15th of April 2011 after Inter Partes REX Non-
`
`ACP Office Action mailed on 15th of January 2011 (hereinafter "the previous Office action"), and
`
`the Third Party requester filed 1st Comments on 16th of May 2011 after the previous Office
`
`10
`
`action; however, the 1st Response was defective and it was not entered.
`
`The Patent Owner newly filed 2nd Response on 20th of June 2011, and the Third Party
`
`requester newly filed 2nd Comments on 20th of July 2011; however, the 2nd Comments was an
`
`improper paper and expunged from the record by the petition's decision mailed on 14th of
`
`September 2011. The Third Party requester newly filed 3rd Comments on 29th of September
`
`15
`
`2011.
`
`Therefore, receipts are acknowledged of Patent Owner's 2nd Response on 20th of June
`
`2011 (hereinafter "the Response") to the previous Office action, and Third Party requester's 3rd
`
`Comments filed on 29th of September 2011 (hereinafter "the Comments") to the previous Office
`
`action and the Response.
`
`20
`
`No claim has been amended; no claim has been canceled; and claims 24-50 have been
`
`newly added to the original claims of the '543 Patent. Currently, the claims 1-50 are subject to
`
`reexamination in this inter partes reexamination.
`
`Reexamination Procedures
`
`25
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`3.
`
`In order to ensure full consideration of any amendments, affidavits or declarations, or
`
`other documents as evidence of patentability, such documents must be submitted in response
`
`to this Office Action. Submissions after the next Office Action, which is intended to be an Action
`
`Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly
`
`enforced.
`
`30
`
`4.
`
`Information Disclosure Statement
`The information disclosure statements filed on 5th of August 2011 fail to comply with the
`
`provisions of 37 CFR §1.97, §1.98 and MPEP § 609 because the inclusion of the court
`
`IPR Page 5
`
`

`
`Application/Control Number: 95/001 ,485
`Art Unit: 3992
`
`Page 3
`Inter Partes REX Non-ACP[2] Office Action
`
`proceedings and the office actions/responses listed in the information disclosure statements
`
`have been given due consideration, however, as these are not printed publications per se. The
`
`listings on the information disclosure statements have been lined through, but are considered.
`
`5
`
`In order to expedite issuance of reexamination certificates, the Office eliminates printing
`of the listing of documents on reexamination certificates 1
`Pater:1t Owner is advised that the date of any re-submission of any item of information
`
`.
`
`contained in these information disclosure statements or the submission of any missing
`
`element(s) will be the date of submission for purposes of determining compliance with the
`
`requirements based on the time of filing the statement, including all certification requirements for
`
`10
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`statements under 37 CFR §1.97(e). See MPEP § 609.05(a).
`
`Once the minimum requirements of 37 CFR §1.97 and 37 CFR §1.98 are met, the
`
`Examiner has an obligation to consider the information. However, there is no requirement that
`
`the information must be prior art references in order to be considered by the Examiner.
`
`Consideration by the Examiner of the information submitted in an information disclosure
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`15
`
`statement means nothing more than considering the documents in the same manner as other
`
`documents in Office search files are considered by the Examiner while conducting a search of
`
`the prior art in a proper field of search. See MPEP § 609.
`
`Affidavits/Declarations
`
`20
`
`5.
`
`The declarations under 37 CFR § 1.132 from the Patent Owner's declarants filed with the
`
`Response have been considered:
`
`a)
`
`The declaration of Carrel W. Ewing is insufficient to overcome the rejection of claims
`
`subject to reexamination in this inter partes reexamination.
`
`The declarant, who is a patentee of the '543 Patent, states the personal knowledge of
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`25
`
`the commercial success of the '543 Patent since 1984, however, the declaration is insufficient to
`
`overcome the claims rejection because of the following reasons:
`
`(1) The declarant alleges that the declarant's business, Server Technology, Inc., has
`
`been significantly grown, and the success of the business is due to the products "vertical
`
`switched Power Tower XL (hereinafter PTXL)" and "Sentry: Switched CDU (hereinafter "C"
`
`30
`
`Series)" incorporating the set of features recited in claims 1 and 15 of the '543 Patent (See the
`
`paragraphs 7-19).
`
`1 See Official Gazette of the USPTO issued on 11th of October 2011, vol. 1371, Number 2, page 95 - "Elimination of
`the Listing of Prior Art Documents on Reexamination Certificate".
`
`IPR Page 6
`
`

`
`Application/Control Number: 95/001 ,485
`Art Unit: 3992
`
`Inter Partes REX Non-ACP[2] Office Action
`
`Page 4
`
`The Examiner reminds that the evidence of commercial success, or other secondary
`considerations, is only significant if there is a nexus2 between the claimed invention and the
`commercial success. In re J. T. Eaton, 106 F.3d 1563 [41 USPQ2d 1641] (Fed. Cir. 1997),
`"[w]hen a patentee can demonstrate commercial success, usually shown by significant sales in
`
`5
`
`a relevant market, and that the successful product is the invention disclosed and claimed in the
`
`patent, it is presumed that the commercial success is due to the patented invention." /d. at 1571,
`
`"[t]he asserted commercial success of the product must be due to the merits of the claimed
`
`invention beyond what was readily available in the prior art."
`
`Essentially, the declarant demonstrates the commercial su.ccess shown by significant
`
`10
`
`sales of the products in the PDU market, and the declarant believes that there is a nexus
`
`between the claimed invention and the commercial success.
`
`However, the Examiner finds that there is insufficient evidence to establish a nexus
`
`between the claimed invention and the commercial success because (i) the product "C" Series
`
`was introduced in 2004, and was the successor of the product PTXL introduced in 2003, (ii) the
`
`15
`
`annual sales rapidly increased from the year 2004 at the time of introducing the product "C"
`
`Series, which has an additional feature "expansion module," and (iii) the feature "expansion
`
`module" is an unclaimed feature of the device, and the declarant does not explain an influence
`
`of the unclaimed feature "expansion module" upon the alleged "hockey stick" climb of the annual
`
`sales in vertical PDU sales. In fact, if the commercial success is due to an unclaimed feature of
`
`20
`
`the device, the commercial success is irrelevant. In this case, the Examiner concludes that the
`
`alleged commercial success is irrelevant because the alleged commercial success seems to be
`
`due to an unclaimed feature "expansion module" of the device, at least.
`
`Furthermore, the previous Office action shows that one of the prior art "McNally"
`
`anticipates the claimed invention (See the previous Office action at page 30, line 19 through
`
`25
`
`page 31, line 30), and the strong obviousness of the claimed invention was rendered by the
`
`prior arts in the record. Thus, the alleged commercial success is not pertinent because the
`
`feature that creates the commercial success was already known in the prior art. In re Richdel,
`
`Inc., 714 F.2d 1573, 1580 [219 USPQ 8] (Fed. Cir. 1983) (holding claims obvious despite
`
`purported showing of commercial success when patentee failed to show that "such commercial
`
`2 The term "nexus" designates a factually and legally sufficient connection between the evidence of commercial
`success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness.
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988).
`
`IPR Page 7
`
`

`
`Application/Control Number: 95/001,485
`Art Unit: 3992
`
`Inter Partes REX Non-ACP[2] Office Action
`
`Page 5
`
`success as its marketed system enjoyed was due to anything disclosed in the patent in suit
`
`which was not readily available in the prior art").
`
`(2) The ?eclarant alleges that the declarant's business was awarded the Frost & Sullivan
`
`Awards for Product Line Strategy through Competitive Growth Strategy in 2006 because
`
`5
`
`industry experts recognized the significance of the patented PTXL and "C" Series and their
`
`commercial success (See the paragraphs 20-22).
`
`However, the Examiner does not find out a nexus between the claimed invention and
`
`said Frost & Sullivan Awards. This award was merely given to the declarant's business in light
`
`of demonstrating customer needs and product demands, which are not directly related with the
`
`1 0
`
`claimed invention.
`
`(3) The declarant merely alleges that the claimed subject matter of the '543 Patent has
`
`been copied by the entire industry (See the paragraphs 23-26).
`
`However, the declarant fails to show any hard evidence that the claimed subject matter
`
`of the '543 Patent was copied by the entire industry. The declarant shows two examples of
`
`15
`
`PDU models, but they cannot be regarded as an evidence showing the claimed subject matter
`
`of the '543 Patent was copied by the manufacturers of the PDU models because the declarant
`
`does not show whether the exemplified PDU models were not available before the '543 Patent.
`
`In short, the Examiner cannot determine if the manufacturers of the exemplified PDU models
`
`copied the claimed subject matter of the '543 Patent, otherwise the claimed subject matter of
`
`20
`
`the '543 Patent was borrowed from the available PDU models in the market at the time the
`
`invention was made.
`
`(4) The declarant alleges that the Masterswitch VM references only discloses a multi(cid:173)
`
`components power distribution system, and the combination of the Masterswitch VM references
`
`shows (i) requiring horizontal space for the controller, (ii) providing remote reporting and local
`
`25
`
`reporting of current information via connection to the controller. Moreover, it does not teach the
`
`claimed subject matter "intelligent power section" of the '543 Patent (See the paragraphs 27-
`
`30).
`
`The Examiner believes that the declarant misunderstood the claim rejection in the
`
`previous Office action. In fact, the claim 1 rejection, for example, clearly stated that MSVM User
`
`30 Guide d.iscloses an electric power distribution plugstrip (i.e., Master Switch VM Power
`
`Distribution Unit in Fig. 1) in the previous Office action at page 17, lines 19-20. In other words,
`
`the claim rejection in the previous Office action never mentioned the multi-components power
`
`IPR Page 8
`
`

`
`Application/Control Number: 95/001,485
`
`Art Unit: 3992
`
`Page 6
`Inter Partes REX Non-ACP[2] Office Action
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`distribution system, but the electric power distribution plugstrip (i.e., said Master Switch VM
`
`Power Distribution Unit). Furthermore, MSVM PowerNet Guide teaches that the electrical
`
`power plugstrip comprises at least one intelligent power section (i.e., SNMP agent with eight
`
`relay-controlled outlets) disposed in the vertical strip enclosure (i.e., MasterSwitch ™ VM Power
`
`5
`
`Distribution Unit; See MSVM PowerNet Guide pages 28 and 33, and the previous Office action
`
`at page 20, lines 4-9).
`
`Therefore, the declarant's opinion shows the APC's multi-components power distribution
`
`system (i.e., horizontal and ve.rtical box structures, interconnection communication cable, etc.),
`
`which was not applied to the claim rejection in the previous Office action like what the declarant
`
`10
`
`declares.
`
`In view of the foregoing, when all of the evidence is considered, the totality of the
`
`rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
`
`b)
`
`The declarations of KC Mares and Chris Harding are insufficient to overcome the
`
`15
`
`rejection of claims subject to reexamination in this inter partes reexamination.
`
`The declarants, who are experts of data center design and construction industry, state
`
`their personal experience of the data center design and construction with PDU products in the
`
`market, however, the declarations are insufficient to overcome the claims rejection because
`
`they refer only to the system described in the '543 Patent and not to the individual claims of the
`
`20
`
`'543 Patent. Thus, there is no showing that the objective evidence of nonobviousness is
`commensurate in scope with the claims. See MPEP § 716.
`In view of the foregoing, when all of the evidence is consid~red, the totality of the
`
`rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
`
`25
`
`c)
`
`The declaration of B. Michael Aucoin is insufficient to overcome the rejection of claims
`subject to reexamination in this inter partes reexamination.
`
`The declarant, who is an expert of electrical engineering, refers to the claims 1 and 15 of
`
`the '543 Patent, and alleges that the prior art APC Masterswitch VM system needs separate
`
`components, which were required for remotely controlling power distribution and having remote
`
`30
`
`current reporting capability, and (ii) consumes valuable horizontal equipment mounting space,
`
`however, said remotely controlling power distribution, said remote current reporting capability,
`
`and said horizontal equipment mounting space are not recited in the rejected claims. Although
`
`IPR Page 9
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`

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`Application/Control Number: 95/001 ,485
`Art Unit: 3992
`
`Inter Partes REX Non-ACP[2] Office Action
`
`Page 7
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`the claims are interpreted in light of the specification, limitations from the specification are not
`
`read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 19.93).
`
`Furthermore, the declarant alleges that the prior art APC Masterswitch VM system does not
`
`offer ready viewing of the level of current consumption by the system at the rack while (i)
`
`5
`
`powering-up or powering down electronic equipment in the rack or (ii) when a user is otherwise
`
`in the vicinity of the back of the rack. However, this has never been recited in the rejected
`
`claims.
`
`In addition, the declarant alleges that the claimed subject matter "display" is a device
`
`that in and of itself conveys information includes either alphabetical or numeric characters or
`
`10
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`images of at least similar complexity, however, this has never been claimed in the rejected
`
`claims. Instead, the claimed subject matter "display" could be interpreted such as it conveys a
`
`state of information because the claims are given the broadest reasonable interpretation
`
`consistent with the specification (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir.
`
`1984)).
`
`15
`
`In view of the foregoing, when all of the evidence is considered, the totality of the
`
`rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
`
`6.
`
`The declarations from the Third Party requester's declarants filed with the Comments
`
`have been considered:
`
`20
`
`a)
`
`The declaration of Alex North essentially attempts to establish the relevance of the
`
`reference BayTech Website to a pertinent prior art in the instant inter partes reexamination
`
`proceeding.
`
`As admitted by the declarant, the reference BayTech Website is a collection of related
`
`materials (See paragraph 5 of the declaration), which means that those are actually three
`
`25
`
`separate documents regarding different models of RPC products.
`
`art in the instant inter partes reexamination proceeding, (See Order granted on 151h of January
`
`Even though the reference BayTech Website could not be admitted as a pertinent prior
`
`2011, page 4, lines 6-16), the Examiner believes that the three documents included in the
`
`reference BayTech Website could be pertinent prior arts in this inter partes reexamination
`
`30
`
`proceeding if the Third Party requester re-files the reference BayTech Website as three
`
`separate references in light of the Rule 37 CFR §1 ,948(a)(1 ).
`
`IPR Page 10
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`

`
`Application/Control Number: 95/001,485
`Art Unit: 3992
`
`Page 8
`Inter Partes REX Non-ACP[2] Office Action
`
`b)
`
`The declaration of Patrick Johnson essentially attempts to establish the relevance of the
`
`references MSVM User Guide, MSVM Quick Start Manual, and MSVM PowerNet Guide to a
`
`pertinent prior art in the instant inter partes reexamination proceeding. The declarant, who is an
`
`employee of the Third Party requester "APC", testifies to the fact that the references MSVM
`
`5
`
`User Guide, MSVM Quick Start Manual, and MSVM PowerNet Guide were published, at least,
`
`before the effective filing date of the '543 Patent. The Examiner believes that the declarant's
`
`testimony under Section 1001 of Title 18 of the United States Code is sufficient to establish the
`
`publishing date of those references before the effective filing date of the '543 Patent.
`
`10
`
`c)
`
`The declarations of Douglas A. Bors and Dr. Mark Horenstein essentially attempt to
`respond to the arguments from the party of the Patent Owner. Basically, where the length of the
`
`Third Party requester's submission including legal arguments exceeds that permitted by 37 CFR
`
`§1.943, the submission is improper. In this particular case, the page length of the Comments is
`
`15
`
`45 pages and the total page length of the argument portion in the instant declarations is 10
`pages from the declaration of Douglas A. Bors and 3 pages from the declaration of Dr. Mark
`Horenstein, the submitted claim charts have 40 pages in total, and thus the total page length of
`
`the Third Party requester's submission is 98 pages, which is improper. However, the petition
`decision mailed on 141
`h of September 2011 waved the page limit requirement of 37 CFR
`§ 1. 943(b) not to exceed 1 04 pages in total.
`
`20
`
`Nevertheless, the Examiner does not respond to the arguments in these declarations since the
`
`most of the arguments in these declarations are repeated in the Comments, and the proper
`
`responses to the arguments in these declarations would be revealed in the Examiner's
`
`response to the Third Party requester's arguments.
`
`25
`
`30
`
`Statutory Basis for Grounds of Rejections- 35 USC §112, §102, and §103
`
`7.
`
`The following is a quotation of the first and second paragraphs of 35 U.S. C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
`art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
`set forth the best mode contemplated by the inventor of carrying out his invention.
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`IPR Page 11
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`

`
`Application/Control Number: 95/001 ,485
`Art Unit: 3992
`
`Page 9
`Inter Partes REX Non-ACP[2] Office Action
`
`8.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S. C. § 102 that form
`
`the basis for the rejections under this section made in this Office Action:
`
`A person shall be entitled to a patent unless -
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another
`filed in the United States before the invention by the applicant for patent or (2) a patent granted on an
`application for patent by another filed in the United States before the invention by the applicant for patent,
`except that an international application filed under the treaty defined in section 351 (a) shall have the effects
`for purposes of this subsection of an application filed in the United States only if the international application
`designated the United States and was published under Article 21(2) of such treaty in the English language.
`
`9.
`
`The following is a quotation of 35 U.S. C. §103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office Action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be
`negatived by the manner in which the invention was made.
`
`5
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`10
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`15
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`This patent under reexamination currently names joint inventors. In considering
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`20
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`patentability of the claims under 35 U.S.C. §1 03(a), the Examiner presumes that the subject
`
`matter of the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Patent" Owner is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not
`
`commonly owned at the time a later invention was made in order for the Examiner to consider
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`25
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`the ~pplicability of 35 U.S. C. §103(c) and potential 35 U.S. C. §102(e), (f) or (g) prior art under
`35 U.S.C. §103(a).
`
`Summary of Inter Partes Reexamination Prosecution
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`Request"), the following references, either by itself or in combination with one or more additional
`
`In the original Third Party request filed on 121h of November 2010 (hereinafter "the
`
`10.
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`30
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`references, were alleged to render at least some of the claims unpatentable.
`
`The references cited by the Third Party reql:lester are:
`
`• MasterSwitch TM VM User Guide (hereinafter "MSVM User Guide")
`
`• MasterSwitch TM VM Power Distribution Unit Installation and Quick Start Manual
`
`35
`
`(hereinafter "MSVM Quick Start Manual")
`
`• PowerNet® SNMP Management Information Base (MIB) v3.1.0 Reference Guide
`
`(hereinafter "MSVM PowerNet Guide")
`
`• Download of www.BayTech.net from web.archive.org (hereinafter "BayTech Website")
`
`IPR Page 12
`
`

`
`Application/Control Number: 95/001 ,485
`Art Unit: 3992
`
`Page 10
`Inter Partes REX Non-AOP[2] Office Action
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`• Owner's Manual for BayTech Remote Power Control Unit (hereinafter "BayTech
`
`Manual")
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`• M2 Communications Ltd., "BayTech," M2 Presswire, Bay St. Louis, Mississippi, U.S.A.,
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`November 19, 1999 (hereinafter "BayTech Articie")
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`5
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`• Power Administrator™ 800 User Guide (hereinafter "PA-800")
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`• McNally et al., U.S. Patent No. 6.741,442 (hereinafter "McNally")
`
`• Lee, U.S. Patent No. 5,650,771 (hereinafter "Lee")
`
`• Liu, U.S. Patent No. 6,476,729 (hereinafter "Liu")
`
`• Ewing et al. •. U.S. Patent No. 5,949,974 (hereinafter "Ewing '974 Patent")
`
`10
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`• Wiebe, U.S. Patent No. 5,595,494 (hereinafter "Wiebe")
`
`In the previous Office action, the Examiner considered the following grounds of
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`rejections proposed by the Third Party requester: (i) the original claims 1-14 to be unpatentable
`
`over MSVM User Guide in view of MSVM Quick Start Manual and MSVM PowerNet Guide, (ii)
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`15
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`the original claims 15-23 to be unpatentable under 35 U.S.C. §103(a) over MSVM User Guide in
`
`view of MSVM Quick Start Manual, MSVM PowerNet Guide, and Lee, (iii) claims 1-23 to be
`
`unpatentable under 35 U.S. C. §103(a) over PA-800 in view of Wiebe and Lee, (iv) the original
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`claims 1-14 to be unpatentable under 35 U.S.C. §102(e) over McNally, and (v) the original
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`claims 15-23 to be unpatentable under 35 U.S.C. §103(a) over McNally in view of Liu. The
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`20
`
`Examiner decided and conducted the action as follows: (i) the claims 1-3, 6, 9, and 10 rejection
`
`over MSVM User Guide in view of MSVM Quick Start Manual and MSVM PowerNet Guide were
`
`adopted and they were rejected under 35 U.S.C. §1 03(a), (ii) the claims 15-17, 20, and 21
`
`rejection over MSVM User Guide in view of MSVM Quick Start Manual, MSVM PowerNet
`
`Guide, and Lee were adopted and they were rejected under 35 U.S. C. §103(a), (iii) no claim
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`25
`
`rejection over PA-800 in view of Wiebe and Lee was adopted, (iv) the claims 1-3, 6, 9, and 10
`
`rejection over McNally were adopted and they were rejected under 35 U.S.C. §102(e), and (v)
`
`the claims 15-17, 20, and 21 rejection over McNally in view of Liu were adopted and they were
`
`rejected under 35 U.S.C. §103(a).
`
`The Patent Owner filed the Response to the previous Office action, and the Third Party
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`30
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`requester filed the Comments to both of the Response and the previous Office action, wherein
`
`the reference "BayTech Website" was reformatted as three separate documents in order to
`
`IPR Page 13
`
`

`
`Application/Control Number: 95/001.485
`Art Unit: 3992
`
`Page 11
`Inter Paries REX Non-ACP[2] Office Action
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`overcome the impertinency of qualifying the reference "BayTech Website" as a prior art in the
`
`instant inter paries reexamination, such as:
`
`• a press release announcing the BayTech RPC 7 and 21 products dated October 13,
`
`1999 (hereinafter "BayTech Front Webpage")
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`5
`
`• a section of the BayTech website describing generally the RPC line of products dated
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`October 6, 2000 (hereinafter "BayTech RPC Series Webpage")
`
`• a section of the Bay Tech website describing specifically the RPC 22 product dated
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`November 1, 2000 (hereinafter "BayTech RPC-22 Webpage"), and
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`the following new reference, in combination with one or more other references in the record, is
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`10
`
`alleged to render at least some of the new claims unpatentable. The new reference cited by the
`
`Third Party requester in the Comments is:
`
`• Betty Yuan, "Remote Control Equals Power," February 2000, Teleconnect (hereinafter
`
`"Betty").
`
`The Third Party requester proposed the five grounds of claim rejection for the newly added
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`15
`
`claims 24-50, such as the claims 24-50 to be unpatentable over (i) MSVM User Guide taken
`
`with MSVM Quick Start Manual, MSVM PowerNet Guide, and Lee, (ii) BayTech Front Webpage
`
`taken with BayTech RPC Series Webpage and BayTech RPC-22 Webpage, and further taken
`
`with BayTech Manual, BayTech Article, and Lee, (iii) PA-800 taken with Wiebe and Lee, (iv)
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`McNally taken with Liu and Betty, and (v) Ewing '974 Patent taken with Wiebe and Lee.
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`20
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`Examiner's comments regarding the substantial new question of patentability
`In the granted Order, with regard to Grounds #3 and #4, they were not agreed that the
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`11.
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`consideration of BayTech Website in combination with BayTech Manual and BayTech Article, or
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`further in view of Lee proposed by Third Party requester raises a substantial new question of
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`25
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`patentability as to claims 1-23 of the '543 Pate