VWGoA - Ex. 1017
`Volkswagen Group of America, Inc., Petitioner
`
`1
`
`

`
` TJNI TED S '.['ATE'F_-1 PATEN T AND TRADEE-‘IARK QFFI CE
`
`Cornrnis-sinner for Patents
`United States Patent and Tradernark Office
`F'.O. Elo;~t145I:i
`Alexaridria, VA 2231 3-1 450
`vuvu-wuspto.gmr
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`KENYON & KENYON LLP
`
`ONE BROADWAY
`
`NEWYORK, NY 10004
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSM|'|'|'AL FORM
`
`REEXAMINATION CONTROL NO. 90/013 302.
`
`PATENT NO. 6542 076 B1 E.
`
`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 parfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL—465 (Rev.O7—O4)
`
`2
`
`

`
`E P t R
`_
`t.
`X
`eexgmlna Ion
`_
`V_I_sOry ctlon
`Before the Filing of an Appeal Brief
`
`Patent Under Reexamination
`Control No.
`6,542,076 B1 E
`90/013,302
`Art Unit
`AIA (First Inventor to
`Examiner
`Fine) status
`,
`,
`NO
`3992
`Karin Relchle
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`THE PROPOSED RESPONSE FILED 20 Julz 2015 FAILS TO OVERCOME ALL OF THE REJECTIONS IN THE
`FINAL REJECTION MAILED 22 Ma); 2015.
`
`1.
`
`IX! Unless a timely appeal is filed, or other appropriate action by the patent owner is taken to overcome all of the
`outstanding rejection(s), this prosecution of the present ex parte reexamination proceeding WILL BE
`TERMINATED and a Notice of Intent to Issue Ex Parte Reexamination Certificate will be mailed in due course.
`
`Any finally rejected claims, or claims objected to, will be CANCELLED.
`THE PERIOD FOR RESPONSE IS EXTENDED TO RUN TWO MONTHS FROM THE MAILING DATE OF THE FINAL REJECTION.
`Extensions of time are governed by 37 CFR 1.550(c).
`NOTICE OF APPEAL
`
`to avoid dismissal of the
`2. I] An Appeal Brief is due two months from the date of the Notice of Appeal filed on
`appeal. See 37 CFR 41 .37(a). Extensions of time are governed by 37 CFR 1.550(c). See 37 CFR 41 .37( ).
`AMENDMENTS
`
`3. III The proposed amendment(s) filed after a final action, but prior to the date of filing a brief, will n_o’t be entered
`because:
`
`(a) El They raise new issues that would require further consideration and/or search (see NOTE below);
`(b) I:I They raise the issue of new matter (see NOTE below);
`(c) I:I They are not deemed to place the proceeding in better form for appeal by materially reducing or simplifying the
`issues for appeal; and/or
`(d) I:I They present additional claims without canceling a corresponding number of finally rejected claims.
`NOTE:
`(See 37 CFR 1.116 and 41 .33(a)).
`
`4. III Patent owner's proposed response filed
`
`has overcome the following rejection(s):
`
`would be allowable if submitted in a separate, timely filed
`5. I:I The proposed new or amended cIaim(s)
`amendment canceling the non-allowable cIaim( ).
`
`6. I] For purposes of appeal, the proposed amendment(s) a)I:I will not be entered, or b)I:I will be entered and an
`explanation of how the new or amended cIaim(s) would be rejected is provided below or appended.
`The status of the cIaim(s) is (or will be) as follows:
`CIaim(s) patentable and/or confirmed:
`CIaim(s) objected to: _
`CIaim(s) rejected: :
`CIaim(s) not subject to reexamination:
`AFFIDAVIT OR OTHER EVIDENCE
`
`7. I:I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`8. I:l The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will n_o’t
`be entered because patent owner failed to provide a showing of good and sufficient reasons why the affidavit or
`other evidence is necessary and was not earlier presented. See 37 CFR 1.116( ).
`
`9. El The affidavit or other evidence filed after the date of filing a Notice of Appeal, but prior to the date of filing a brief,
`will n_o’t be entered because the affidavit or other evidence fails to overcome all rejections under appeal and/or
`appellant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is
`necessary and was not earlier presented. See 37 CFR 41 .33(d)( ).
`
`10. El The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or
`afiached.
`
`REQUEST FOR RECONSIDERATION/OTHER
`
`11. IXI The request for reconsideration has been considered but does NOT place the application in condition for
`allowance because: See attached gage.
`
`12. IXI Note the attached Information Disclosure Statement(s), PTO/SB/08, Paper No(s) 7/16/15 7/20/15.
`
`13. D Other:
`
`.
`
`/Karin Reich1e/
`
`/WILLIAM H WOOD/
`
`/WHC/
`
`Primary Examiner, Art Unit 3992
`cc: Reuester if third art
`reuester
`U.S. Patent and Trademark Office
`
`Primary Examiner, Art Unit 3992
`
`PTOL-467 (Rev. 08-13)
`
`Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Briet
`
`Part of Paper No. 20150721 3
`
`3
`
`

`
`Continuation Sheet (PTO-467)
`
`Reexam Control No.
`
`The request for reconsideration has been considered but does NOT place the application in condition for allowance
`because: Patent Owner's arguments are not persuasive. First, the claim construction set forth in the Office Actions is
`proper and applies the “ordinary and customary meaning“ standard while taking into consideration the Specification of
`the patent. It is noted that the portion of the MPEP 2111.01 cited by the Patent Owner explicitly states, “The ordinary
`and customary meaning of a term may be evidenced by a variety of sources, including ‘the words of the claims
`themselves, the remainder of the specification ...". The Specification never defines the terms "first control device" or
`“second control device“, nor does the Patent Owner now cite a definition. Patent Owner's arguments and citations are
`completely exemplary, illustrative and non-limiting. (Attention is also reinvited to MPEP 2111.01, i.e. Section II.) Not only
`are the actual claim terms not defined, the phrases, such as “separate and distinct“, which Patent Owner now wishes to
`read into the claim are not described in the same manner as Patent Owner now uses them, for example in relation to a
`“first control device“ and a “vehicle component“. The claim terms “first control device“ and “second control device“ are
`broad and citing to specific, but non-limiting, examples in the specification does not redefine the terms. Nothing in the
`Specification contradicts the claim construction used in the Office Actions. The Final Office Action uses terms such as
`“may be", “might be", and “may actually be" to indicate the breadth of the claims and specification cited by Patent Owner
`and to point out that both the “ordinary and customary meaning“ of the claims and specification read upon the cited prior
`art. Finally, in response to Patent Owner's arguments, all of the Final Office Action mailed 05/22/2015 is incorporated
`herein by reference. Patent Owner has not presented a substantially new argument in the response after final and
`therefore a interview is deemed unnecessary for advancement of the proceedings.
`
`IDS Submissions
`
`Regarding IDS submissions attention is also reinvited to MPEP 2256 which recites the following: "Where patents,
`publications, and other such items of information are submitted by a party (patent owner or requester) in compliance
`with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally
`limited by the degree to which the party filing the information citation has explained the content and relevance of the
`information."
`
`Accordingly, the IDS submissions have been considered by the Examiner only with the scope required by MPEP 2256.
`
`4
`
`

`
`Receipt date: 07/16/2015
`
`90013302 " GA”: 3992
`
`PTO/SB/08b (07-09)
`Approved for use through 07/31/2016. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paerwork Reduction Act of 1995 no ersons are re uired to resond to a collection of information unless it contains a valid OMB control number.
`
`Substitute for form 1449/PTO
`
`Complete if Known
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`90/013302
`JULY 21,2014
`RAYMOND A_ mo
`3992
`K- REICHLE
`@ REEXAM-6542076
`
`(Use as many sheets as necessary)
`
`NON PATENT LITERATURE DOCUMENTS
`
`Examiner
`|nitials*
`
`'
`
`.
`
`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
`number s , publisher, cit and/or count where published.
`
`FUHR, et al., “Remote Monitoring of instrumented Structures Using the INTERNET
`information Superhighway“, Paper presented at the Second European Conf. on (Continued)
`
`Provisional Application No. 60/014,427 filed DiRienzo on March 28, 1995EIECEECWIH
`
`FUH R, continued) Smart Structures and Materials, Glasgow 1994, Session 3.
`
`SHENG, et al., "A Portable Multimedia Terminal", IEEE Communications
`Magazine, December 1992.
`
`ZUECH, "The EDC-1000 Electronic imaging System," published by NASA
`Astrophysics Data System in i.A.P.P.P. Communications, 39 (March 1990) at 1-2
`
`US Application Serial No. 08/681,172 filed by Nathan Polish on July 22, 1996,
`now abandoned.
`
`Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
`*EXAM|NER:
`Include copy of this form with next communication to applicant.
`considered.
`1 Applicant's unique citation designation number (optional). 2 Applicant is to place a check mark here if English language Translation is attached.
`This collection of information is required by 37 CFR 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 2 hours to complete, including
`gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the
`amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
`Trademark Office, P.O. 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.
`
`If you need assistance in completing the form, ca/I 1-800-PTO-9199 (1 -800-786-9199) and select option 2.
`
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`/KR/'
`
`5
`
`

`
`Receipt date: 07/16/2015
`
`90013302 - G/-‘1U:3992
`
`PTO/SB/08a (07-09)
`Approved for use through 07/31/2016. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paerwork Reduction Act of 1995 no ersons are reuired to res ond to a collection of information unless it contains a valid OMB control number.
`m I
`if Kn wn
`C0 p ete
`0
`90/013302
`JULY 2112015
`RAYMOND A. JOAO
`3992
`K_ RE |CH LE
`
`REEXAM-6542076
`
`Substitute for form 1449/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`(Use as many sheets as necessary)
`
`Application Number
`§§','§,9NE’j;:d ,n,en,0,
`Art Unit
`Examiner Name
`Attorney Docket Number
`
`Examiner
`
`'
`
`U. S. PATENT DOCUMENTS
`Publication Date
`Name of Patentee or
`MM-DD-YYYY
`Applicant of Cited Document
`
`Pages, Columns, Lines, Where
`Relevant Passages or Relevant
`Figures Appear
`
`US'6,236,365
`US-5,555,019
`
`US" 3,866,164
`
`O2-O8-‘I 983
`
`SHIMIZU, ET AL.
`
`05-22-2001
`09-10-1996
`
`LEBLANC,ETAL.
`DoLE
`
`02-11-1975
`
`PETERSON
`
`Examiner
`|nitia|s*
`
`'
`
`.
`
`FOREIGN PATENT DOCUMENTS
`Publication
`Name of Patentee or
`Date
`Applicant of Cited Document
`MM-DD-YYYY
`
`Pages, Columns, Lines,
`Where Relevant Passages
`Or Relevant Figures Appear
`
`Date
`I
`K
`K
`I
`Examiner
`5
`Considered
`/Kaflfl RC-EECWE-E/’
`Signature
`*EXAM|NER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
`considered. Include copy of this form with next communication to applicant. 1App|icant‘s unique citation designation number (optional). 2See Kinds Codes of
`USPTO Patent Documents at
`or MPEP 901.04.
`3 Enter Office that issued the document, by the two-letter code (WIPO Standard ST.3). 4 For
`Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document. 5Kind of document by
`the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 6App|icant is to place a check mark here if English language
`Translation is attached.
`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 2 hours to complete,
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
`on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent
`and Trademark Office, P.O. 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.
`If you need assistance in completing the form, ca/I 1-800-PTO-9199 (1 -800-786-9199) and select option 2.
`
`ALL REFERENCES CONSEDEFEED EX! EFT WHERE LENED THROUGH.
`
`/KR/”
`
`6
`
`

`
`Receipt date: 07/20/2015
`
`Substitute for form 1449/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`(Use as many sheets as necessary)
`
`gOm33Q2 ' GAE: 3992
`PTO/SB/08a (07-09)
`Approved for use through 07/31/2016. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paerwork Reduction Act of 1995 no ersons are reuired to res ond to a collection of information unless it contains a valid OMB control number.
`m I
`if Kn wn
`C0 p ete
`0
`90/013302
`JULY 21,2014
`RAYMOND A. JOAO
`3992
`K_ RE |CH LE
`
`REEXAM-6542076
`
`Application Number
`§§','§,9NE’j;:d ,,,e,,0,
`Art Unit
`Examiner Name
`Attorney Docket Number
`
`Examiner
`
`'
`
`U. S. PATENT DOCUMENTS
`Publication Date
`Name of Patentee or
`MM-DD-YYYY
`Applicant of Cited Document
`
`Pages, Columns, Lines, Where
`Relevant Passages or Relevant
`Figures Appear
`
`Examiner
`|nitia|s*
`
`'
`
`.
`
`FOREIGN PATENT DOCUMENTS
`Publication
`Name of Patentee or
`Date
`Applicant of Cited Document
`MM-DD-YYYY
`
`Pages, Columns, Lines,
`Where Relevant Passages
`Or Relevant Figures Appear
`
`EP0505266 (Translation)
`WO88/O4082—PCT/AU87/0038
`
`FROSSARD
`AKNAR
`
`Date
`
`Examiner
`
`I
`-
`fig
`-
`I
`17/2?/2015
`/Ka““Re*C“le/
`*EXAM|NER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
`considered. Include copy of this form with next communication to applicant. 1App|icant‘s unique citation designation number (optional). 2See Kinds Codes of
`USPTO Patent Documents at
`or MPEP 901.04.
`3 Enter Office that issued the document, by the two-letter code (WIPO Standard ST.3). 4 For
`Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document. 5Kind of document by
`the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 6App|icant is to place a check mark here if English language
`Translation is attached.
`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 2 hours to complete,
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
`on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent
`and Trademark Office, P.O. 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.
`If you need assistance in completing the form, ca/I 1-800-PTO-9199 (1-800-786-9199) and select option 2.
`
`ALL REFE ENCES CONSEDERED EXCEPT WHERE LENED THROUGH,
`
`,/KFT,/'
`
`7
`
`

`
`Faeceiptdatez O7’/20/2015
`
`90013302 " GAUI 3992
`
`PTO/SB/08b (07-09)
`Approved for use through 07/31/2016. OMB 0651-0031
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paerwork Reduction Act of 1995 no ersons are re uired to resond to a collection of information unless it contains a valid OMB control number.
`
`Substitute for form 1449/PTO
`
`Complete if Known
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`90/013302
`JULY 21,2014
`RAYMOND A_ mo
`3992
`K- REICHLE
`@ REEXAM-6542076
`
`(Use as many sheets as necessary)
`
`I E U E H U E I E U
`
`Examiner
`|nitials*
`
`'
`
`.
`
`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
`number s , publisher, cit and/or count where published.
`
`NON PATENT LITERATURE DOCUMENTS
`
`JONES, ET AL., "Fully Integrated Truck Information and Contol Systems
`(TlACS)," Society of Automotive Engineers, 1983.
`
`SELLERS, ET AL., “An update on the OmniTRACS Two—Way Satellite Mobile Communications
`System and its Application to the Schneider National Truckload Fleet,“ (Cont.)
`
`SELLERS (Cont.) 1992 Proceedings of the International Congress on
`Transportation Electronics, October 1992.
`
`KAY, "Computer Software", Scientific American, 53-59, vol. 251, no. 3, Sept.
`1984.
`
`HAGENBUCH, "Truck/Mobile Equipment Performance Monitoring Management
`Information Systems (M|S)", SAE Technical Paper Series 861249 (1986).
`
`GILLAN, "PROMETHEUS and DRIVE: Their Implications for Traffic
`Managers," Transportation Road Research Lab UK 1989.
`
`Examiner
`
`Signature
`
`,,
`
`.
`
`.,
`
`,
`
`/r<arm Reicnlel
`
`Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
`*EXAM|NER:
`Include copy of this form with next communication to applicant.
`considered.
`1 Applicant's unique citation designation number (optional). 2 Applicant is to place a check mark here if English language Translation is attached.
`This collection of information is required by 37 CFR 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 2 hours to complete, including
`gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the
`amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
`Trademark Office, P.O. 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.
`
`Date
`
`,
`
`P
`
`Q7,/27/201:;
`
`If you need assistance in completing the form, ca/I 1-800-PTO-9199 (1 -800-786-9199) and select option 2.
`
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`/'KE,/
`
`8