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` Paper 20
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` Date: January 23, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01612
`Patent 7,397,363 B2
`____________
`
`
`Before STACEY G. WHITE, JASON CHUNG, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`SHAW, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Volkswagen Group of America, Inc., filed a Petition
`requesting inter partes review of claims 21, 24, 27, 29, 30, 31, 33, 68, 69,
`72, 74, 77, and 80 (“the challenged claims”) of U.S. Patent No. 7,397,363
`B2 (“the ’363 patent”). Paper 2 (“Pet.”). Patent Owner, Joao Control &
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`Monitoring Systems, LLC, filed a Preliminary Response pursuant to
`35 U.S.C. § 313. Paper 6 (“Prelim. Resp.”). Based on our review of these
`submissions, we declined to institute review of claims 21, 24, 27, 29, 30, 31,
`and 33, and we instituted inter partes review of claims 68, 69, 72, 74, 77,
`and 80. Paper 7 (“Dec.”). Specifically, we authorized this inter partes
`review to proceed as to the following grounds: (1) claims 68, 69, 74, 77, and
`80 under 35 U.S.C. § 102(e) as anticipated by Spaur1; and (2) claim 72 under
`35 U.S.C. § 103(a) as obvious over Spaur.
`Patent Owner filed a Patent Owner’s Response (Paper 13, “PO
`Resp.”), and Petitioner filed a Reply (Paper 18, “Reply”). An oral hearing
`was not held for this case because neither party requested a hearing and we
`determined an oral hearing was not necessary. Paper 19.
`We have jurisdiction under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that claims 68, 69, 72, 74, 77, and 80 of
`the ’363 patent are unpatentable.
`
`A. Related Matters
`
`Petitioner and Patent Owner indicate that the ’363 patent or related
`patents have been asserted in a significant number of related cases. See Pet.
`1–2; Paper 5.
`
`
`
`1 U.S. Patent No. 5,732,074, filed Jan. 16, 1996.
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`B. The ’363 Patent
`
`The ’363 patent is directed to controlling a vehicle or premises.
`Ex. 1001, Abs. The ’363 patent describes a first control device which
`generates a first signal and is associated with a web site and located remote
`from a premises or vehicle. Id. The first control device generates the first
`signal in response to a second signal that is transmitted via the Internet from
`a second control device located remote from the first device and remote
`from the premises or vehicle. Id. The first device determines whether an
`action associated with the second signal is allowed, and if so, transmits the
`first signal to a third device located at the premises. Id. The third device
`generates a third signal for activating, de-activating, disabling, re-enabling,
`or controlling an operation of a system, device, or component of the
`premises or vehicle. See id.
`
`C. Illustrative Claims
`
`Claims 68 and 72 are illustrative of the challenged claims and are
`reproduced below:
`68. An apparatus, comprising:
`the first
`a first processing device, wherein
`processing device at least one of monitors and detects an
`event regarding at least one of a vehicle system, a vehicle
`equipment system, a vehicle component, a vehicle device,
`a vehicle equipment, and a vehicle appliance, of a vehicle,
`wherein the first processing device is located at the
`vehicle, and further wherein the event is a detection of a
`state of disrepair of the at least one of a vehicle system, a
`vehicle equipment system, a vehicle component, a vehicle
`device, a vehicle equipment, and a vehicle appliance,
`wherein the first processing device at least one of
`generates a first signal and transmits a first signal to a
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`second processing device, wherein the first signal contains
`information regarding the event, and further wherein the
`second processing device is located at a location which is
`remote from the vehicle, wherein the second processing
`device automatically receives the first signal, and further
`wherein the second processing device at least one of
`generates a second signal and transmits a second signal to
`a communication device, wherein the second signal is
`transmitted to the communication device via, on, or over,
`at least on of the Internet and the World Wide Web,
`wherein the communication device is located remote from
`the second processing device, and wherein
`the
`communication device automatically receives the second
`signal, and further wherein the communication device
`provides information regarding the event.
`
`the
`68, wherein
`of claim
`apparatus
`72. The
`communication device is at least one of a wireless device,
`a cellular telephone, and a personal digital assistant.
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In the Decision to Institute, we noted that the ’363 patent was due to
`expire no later than May 6, 2016. Dec. 7. The parties have not disputed the
`calculation of the ’363 patent’s expiration date. Based on our review of the
`record, we discern no reason to modify that calculation and thus, we find the
`’363 patent to be expired. For claims of an expired patent, the Board’s claim
`interpretation is similar to that of a district court. See In re Rambus, Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
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`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing
`Phillips v. AWH Corp., 415 F. 3d 1303, 1312–17 (Fed. Cir. 2005)).
`We are mindful that “limitations are not to be read into the claims
`from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). Nevertheless, claims are not interpreted in a vacuum but are part of
`and read in light of the specification. United States v. Adams, 383 U.S. 39,
`49 (1966) (“[I]t is fundamental that claims are to be construed in the light of
`the specifications and both are to be read with a view to ascertaining the
`invention.”). In that regard, the terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the Specification. In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). The construction that stays true to the claim
`language and most naturally aligns with the inventor’s description is likely
`the correct interpretation. Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243, 1250 (Fed. Cir. 1998).
`In the Institution Decision, we determined the terms “processing
`device,” “remote,” and “located at” did not require express construction, and
`we did not expressly construe any other claim terms. Dec. 8.
`In its Response, Patent Owner proposes constructions for “processing
`device,” “first signal,” and “second signal.” PO Resp. 8–9. We determine
`that it is not necessary to construe “first signal” and “second signal” to
`resolve the controversy here. We construe “processing device,” as discussed
`in more detail below. To the extent it is necessary for us to construe any
`additional claim terms in this decision, we do so below in the context of
`analyzing whether the prior art renders the claims unpatentable.
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`“processing device”
`Patent Owner argues that “processing device” means “a device or a
`computer, or that part of a device or a computer, which performs an
`operation, an action, or a function, or which performs a number of
`operations, actions, or functions.” PO Resp. 8. Patent Owner argues that
`this definition comes from the prosecution history of the ’363 patent
`(Ex. 1007) and is consistent with the Specification. Id. Petitioner does not
`dispute this construction. See Reply 2–4. We agree that this explicit
`definition for “processing device” was provided in the prosecution of the
`application that issued as the ’363 patent. See Ex. 1007. We have reviewed
`the definition and we find it to be instructive to understanding the proper
`scope of “processing device.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994). Thus, we adopt the Patent Owner’s construction of “processing
`device” to mean “a device or a computer, or that part of a device or a
`computer, which performs an operation, an action, or a function, or which
`performs a number of operations, actions, or functions” for the purposes of
`this decision.
`
`B. Anticipation of Claims 68, 69, 74, 77, and 80 by Spaur
`
`Petitioner asserts that claims 68, 69, 74, 77, and 80 are anticipated by
`Spaur. Pet. 47–58. As support, Petitioner provides detailed explanations as
`to how the combination of prior art meets each claim limitation. Id.
`Petitioner also relies upon the Declaration of Mr. Scott Andrews (Ex. 1006).
`
`1.
`
`Spaur (Ex. 1004)
`
`Spaur describes an apparatus for communication of information
`“between a vehicle and one or more remote stations using an established
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`network, such as the Internet.” Ex. 1004, 1:7–8, 5:40–6:22, Fig. 1. Figure 1
`is reproduced below.
`
`
`
`Figure 1 illustrates an apparatus for bi-directional communication
`between one or more remote stations 10a–n and a vehicle. Ex. 1004, 5:40–
`43. At the remote site, there is “[a]n internet or world wide web browser . . .
`available to the computer terminal” and “[t]he computer terminal supplies
`the browser with an IP (Internet protocol) address” which is “associated with
`a particular vehicle.” Id. at 2:25–34.
`
`2.
`
`Independent Claim 68
`
`Petitioner asserts that claim 68 is anticipated by Spaur. Pet. 47–58.
`As support, Petitioner provides detailed explanations as to how the
`combination of prior art meets each claim limitation. Id. For the following
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`reasons, we agree with and adopt Petitioner’s contentions regarding Spaur’s
`disclosure of each of these limitations.
`Petitioner directs our attention to Spaur, which describes a program
`memory that stores executable programs used to obtain data “associated with
`the vehicle devices.” Pet. 48 (citing Ex. 1004, 3:30–39, 8:49–53). Spaur
`describes “monitoring of vehicle locations and status,” and “vehicle
`parameter monitoring for maintaining the vehicle such as checking engine
`conditions including possibility of overheating and operating mileage
`(odometer reading).” Id. at 48–49 (citing Ex. 1004, 9:3–12). Spaur
`describes vehicle devices with sensors, such as “vehicle condition sensors,
`vehicle cargo sensors, airbag sensor and general alarm sensors related to
`unlocking the vehicle or unwanted intrusion into the vehicle.” Id. at 49
`(citing 9:62–10:9). The data may then be transmitted to a remote station for
`analysis. Id. (citing Ex. 1004, 4:24-29; Ex. 1006 ¶¶ 33, 35). Spaur describes
`that data is transmitted from controller 30 via cellular phone 80 to the CDPD
`network modem, and then transmitted over Internet 68 to computer terminal
`60. Id. at 49 (citing Ex. 1004, 7:13–47, 4:14–16, 4:26–29, Figs. 1, 2; Ex.
`1006 ¶¶ 34–35).
`Patent Owner argues that the “second processing device” of claim 68
`is not taught by the CDPD network modem of Spaur. PO Resp. 10. In
`particular, Patent Owner argues that CDPD network modem 76 of Spaur “is
`merely a component of a communication system or communication
`network” and not a “processing device.” Id.
`We agree with Petitioner’s characterization of Spaur’s teachings and
`we are not persuaded by Patent Owner’s argument. Patent Owner does not
`direct us to any persuasive evidence that the “second processing device” of
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`claim 68 is not encompassed by Spaur’s teaching of a CDPD network
`modem. Pursuant to our construction discussed above, the term “processing
`device” means “a device or a computer, or that part of a device or a
`computer, which performs an operation, an action, or a function, or which
`performs a number of operations, actions, or functions.” See § II.A. This is
`the definition Patent Owner proposed and that Patent Owner provided during
`prosecution. We are unpersuaded as to why Spaur’s CDPD network modem
`76 is necessarily different from “a device or a computer, or that part of a
`device or a computer, which performs an operation, an action, or a function,
`or which performs a number of operations, actions, or functions.”
`Patent Owner also argues that Spaur fails to disclose a “second
`processing device” that receives a “first signal” from a “first processing
`device” and that “at least one of generates a second signal and transmits a
`second signal to a communication device.” PO Resp. 10–11. In particular,
`Patent Owner argues that the first signal must be sent directly by the first
`device to the second device, and therefore, the “phone interface 84 of Spaur
`must be the component that corresponds to the claimed second processing
`device because it receives a signal from the claimed first processing device.”
`Id. at 12.
`Petitioner points out that Patent Owner’s argument requires an
`interpretation of claim 68 in which the second processing device can only
`receive a signal transmitted directly from the first processing device, and the
`communication device can only receive a signal transmitted directly from
`the second processing device, with no devices in between. Reply 7
`(emphasis added). We agree with Petitioner and decline to import into the
`claims the limitations as proposed by Patent Owner. Rather, claim 68 recites
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`“wherein the first processing device at least one of generates a first signal
`and transmits a first signal to a second processing device.” Ex. 1001,
`119:48–50 (emphasis added). Thus, we agree with Petitioner that there is no
`requirement in claim 68 that the first signal is sent directly to the second
`processing device by the first processing device. The claim is drafted
`broadly to include a first processing device that generates a first signal
`without necessarily transmitting the first signal directly to the second
`processing device. Stated differently, claim 68 is broad enough that the first
`signal can be transmitted to the second processing device via intervening
`devices in between the first processing device and the second processing
`device.
`Relatedly, Patent Owner argues that claim 68 “requires that the
`‘communication device’ receives a ‘second signal’ from the second
`processing device.” PO Response 12. Yet, claim 68 recites “wherein the
`second processing device at least one of generates a second signal and
`transmits a second signal to a communication device.” Ex. 1001, 119:55–57
`(emphasis added). We agree with Petitioner that there is no requirement in
`claim 68 that the second signal is sent directly to the communication device
`by the second processing device. The claim is drafted broadly to include a
`second processing device that generates a second signal without necessarily
`transmitting the second signal directly to the communication device.
`Moreover, as Petitioner notes, during prosecution of the ’363 patent, Patent
`Owner submitted a definition of “at least one of” to mean “only one item
`from the list, or any combination of items in the list.” Ex. 1007, 2–3. Thus,
`we do not find Patent Owner’s argument to be persuasive, and we are
`persuaded by Petitioner’s arguments regarding the disclosures of Spaur.
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`Accordingly, Petitioner has shown sufficiently that Spaur discloses all
`the limitations of claim 68. We agree with and adopt Petitioner’s
`contentions with respect to these claims. Pet. 47–58. For the foregoing
`reasons, we conclude that Petitioner has shown by a preponderance of the
`evidence that claim 68 is anticipated by Spaur.
`
`3.
`
`Dependent Claims 69, 74, 77, and 80
`
`Claims 69, 74, 77, and 80 depend from claim 68. We have reviewed
`Petitioner’s arguments and supporting evidence with respect to these claims
`(Pet. 47–58), and we determine that Petitioner has demonstrated by a
`preponderance of the evidence that Spaur anticipates these claims, as set
`forth in the Petition. As to dependent claims 77 and 80, Patent Owner stands
`by its arguments with respect to claim 68. PO Resp. 1–19. We disagree
`with those arguments for the reasons described above. Patent Owner puts
`forth additional arguments with respect to dependent claims 69 and 74. Id.
`at 18–19.
`Claim 69 recites: “[t]he apparatus of claim 68, wherein the apparatus
`utilizes at least one of an intelligent agent, a software agent, and a mobile
`agent, or the apparatus is programmed for at least one of automatic
`activation and automatic operation.” Ex. 1001, 119:66–120:2 (emphasis
`added).
`With respect to claim 69, Patent Owner argues that Spaur does not
`disclose an intelligent agent, a software agent, or a mobile agent. PO Resp.
`17–18. In particular, Patent Owner argues that Mr. Andrews “could not
`provide a definitive explanation as to when software rises to the level of
`being an ‘agent.’” Id. at 18.
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`Petitioner argues that Spaur describes the use of software executable
`programs to obtain data or other information associated with vehicle devices.
`Reply 10 (citing Ex. 1001, 3:30–39, 3:66–4:5.). Additionally, Petitioner
`argues that Spaur describes web server 102 being programmed to provide a
`notification when a particular event occurs, such as when a vehicle reaches a
`location, or when a sensor measures a particular value. Id. (citing Ex. 1001,
`12:18–30; Ex. 1006 ¶ 36). Petitioner argues that Spaur therefore discloses
`the additional limitations of claim 69.
`We agree with Petitioner that claim 69 does not require an intelligent
`agent, software agent, or mobile agent, because claim 69 recites that the
`apparatus may, in the alternative (“or”), be programmed for automatic
`activation or automatic operation. Patent Owner does not address this aspect
`of claim 69 or Spaur’s disclosure of software programming for obtaining
`data or providing notifications. Ex. 1001, 3:30–39, 3:66–4:5, 12:18–30;
`Ex. 1006 ¶ 36.
`With respect to claim 74, Patent Owner argues that Spaur does not
`contain the word “diagnostic.” PO Resp. 19. However, as Petitioner argues,
`Spaur discloses program memory stores executable programs used to obtain
`data “associated with the vehicle devices.” Pet. 11 (citing Ex. 1001, 3:30–
`36, 8:49–53). Exemplary applications include “monitoring of vehicle
`locations and status,” and “vehicle parameter monitoring for maintaining the
`vehicle such as checking engine conditions including possibility of
`overheating and operating mileage (odometer reading).” Ex. 1001, 9:3–12.
`The data may then be transmitted to a remote station for analysis. Id. at
`4:24–29. We agree with Petitioner that Spaur does not need to use the word
`“diagnostic” to describe a diagnostic signal.
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`Based on our review of the full record, Petitioner has shown
`sufficiently that Spaur discloses all the limitations of dependent claims 69,
`74, 77, and 80. See Pet. 47–58. We agree with and adopt Petitioner’s
`contentions with respect to these claims. Id. Based on these contentions, we
`conclude that Petitioner has shown by a preponderance of the evidence that
`claims 69, 74, 77, and 80 are anticipated by Spaur.
`
`C. Obviousness of Dependent Claim 72 over Spaur
`
`Claim 72 requires that “the communication device is at least one of a
`wireless device, a cellular telephone, and a personal digital assistant.”
`Ex. 1001, 120:17–20. Petitioner argues that while Spaur does not explicitly
`describe the computer terminal 60 as a wireless device, Spaur describes a
`“wireless device” contained in the vehicle for transmitting and receiving
`information over an air link (Ex. 1004, 6:3–5), and further describes that
`such devices may be among vehicle devices 50 (id. at 10:1–9). Spaur also
`describes a personal digital assistant as included in vehicle devices 50. Ex.
`1001, 10:1–9. Therefore, according to Petitioner, using a wireless device, a
`cellular telephone, or a personal digital assistant as the communication
`device in the system described by Spaur would have been well within the
`understanding of a person of ordinary skill in the art at the time the alleged
`invention of claim 72 was made, and it would have been obvious to do so
`because it would allow the user to operate the system from a mobile device.
`Pet. 59–60 (citing Ex. 1006 ¶ 40).
`Patent Owner argues that in addition to the reasons discussed above
`with respect to claim 68, it would not have been obvious to use a wireless
`device, a cellular telephone, or a personal digital assistant in connection with
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`the Internet or the World Wide Web at the time of the invention of claim 72
`of the ’363 Patent. PO Resp. 20. In particular, Patent Owner argues that
`Petitioner’s expert, Mr. Andrews, could not support his position during cross
`examination because he stated “that cellular telephones were not typically
`used with the Internet in 1996.” Id. (citing Ex. 2004, 44:14–46:4). Patent
`Owner also argues that “at the time of the effective filing date of the
`Challenged Claims of the ’363 Patent, a cellular phone and associated digital
`cellular service for wirelessly connecting to the Internet was ‘too expensive
`to be a mass market product.’” Id. (citing Ex. 2005). Patent Owner further
`argues that Mr. Andrews acknowledged that the cell phone at the vehicle of
`Spaur merely was used to receive and transmit information and provided no
`interface with a person. Id. at 21 (citing Ex. 2004, 45:7).
`Petitioner responds that as a preliminary matter, Patent Owner does
`not address the arguments in the Petition about the obviousness of claim 72.
`Reply 13. In particular, the Petition stated that: (1) Spaur describes a
`“wireless device” contained in the vehicle for transmitting and receiving
`information over an air link (Ex. 1004, 6:3–5), (2) Spaur describes that such
`devices may be among vehicle devices 50 (id. at 10:1–9), and (3) using a
`wireless device, a cellular telephone, or a personal digital assistant as the
`communication device in the system described by Spaur would have been
`within the understanding of a person of ordinary skill in the art at the time
`the alleged invention of claim 72 was made, and it would have been obvious
`to do so because it would allow the user to operate the system from a mobile
`device. Pet. 59–60 (citing Ex. 1006 ¶ 40). We agree with Petitioner that
`Patent Owner does not dispute the first two statements. Rather, we interpret
`Patent Owner’s arguments as directed to the third statement.
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`Petitioner argues that Mr. Andrews testified in his declaration that
`wireless devices, cellular telephones, and personal digital assistants were
`well-known as of the filing of the ’363 patent, and that the use of a mobile
`device in Spaur’s system would have been obvious. Id. (citing Ex. 1006
`¶ 40). During his cross examination, Mr. Andrews testified that people
`“could certainly contact using a cellular telephone contact, an Internet
`gateway, and obtain information from devices on the Internet via an Internet
`gateway.” Ex. 2004, 45:16–19. Thus, Petitioner argues, Patent Owner has
`no basis for its statement that Mr. Andrews could not support this position
`during cross-examination. We agree with Petitioner and are not persuaded
`that Mr. Andrews’s testimony is unsupported based on his statements during
`cross examination.
`Petitioner also points out that while Patent Owner refers to a quotation
`from a New York Times article about the expense of a pocket cellular phone
`(Ex. 2005), Patent Owner does not include the next sentence of the article,
`which states: “[b]ut there are 35 million people who are willing to carry a
`cellular phone, so this is no longer a technology question.” Ex. 2005. Thus,
`we are not persuaded by Patent Owner’s argument based on this article that
`it would not have been obvious to one skilled in the art to use a cellular
`phone with Spaur’s system.
`Petitioner has shown sufficiently that Spaur teaches all the limitations
`of dependent claim 72. See Pet. 59–60. We agree with and adopt
`Petitioner’s contentions with respect to claim 72, and Petitioner’s reasoning
`for why it would have been obvious to use a wireless device, a cellular
`telephone, or a personal digital assistant as the communication device in the
`system described by Spaur. Id. Based on these contentions, we conclude
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`that Petitioner has shown by a preponderance of the evidence that the subject
`matter of claim 72 would have been obvious in view of Spaur.
`
`III. CONCLUSION
`
` Based on the evidence and arguments, Petitioner has demonstrated by
`a preponderance of the evidence that: (1) claims 68, 69, 74, 77, and 80 are
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Spaur; and (2) claim
`72 is unpatentable under 35 U.S.C. § 103(a) as obvious over Spaur.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that claims 68, 69, 72, 74, 77, and 80 have been shown to
`be unpatentable; and
`
`FURTHER ORDERED that, because this is a final written decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`PETITIONER:
`Michael J. Lennon
`mlennon@kenyon.com
`
`Clifford A. Ulrich
`culrich@kenyon.com
`
`PATENT OWNER:
`Raymond A. Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`rvazque@sinergialaw.com
`
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