UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO. (cid:9)
`FILING DATE
`95/001,621 Ar 401011011 05/16/2011
`
`02/23/2012
`
`7590
`92045
`The Caldwell Firm, LLC
`PO Box 59655
`Dept. SVIPGP
`Dallas, TX 75229
`
`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
`
`FIRST NAMED INVENTOR (cid:9)
`
`I ATTORNEY DOCKET NO. (cid:9)
`
`CONFIRMATION NO.
`
`7,241,034
`
`1240
`
`EXAMINER
`
`' ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 02/23/2012
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`SL Corp. Exhibit 1021
`
`(cid:9)
`(cid:9)
`(cid:9)
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`DO NOT•USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`KENYON & KENYON LLP
`ONE BROADWAY
`NEW YORK, NY 10004
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Date: a -.).3" I a.
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`REEXAMINATION CONTROL NO. : 95001621 901011011
`PATENT NO. : 7241034
`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-2070(Rev.07-04)
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`The Caldwell Firm, LLC
`PO Box 59655
`Dept. SVIPGP
`Dallas TX 75229
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`In re Smith et al.
`Ex Parte Reexamination Proceeding
`Control No.: 90/011,011
`Filed: July 10, 2010
`For: U.S. Patent No. 7,241,034
`
`In re Smith et al.
`Inter Partes Reexamination Proceeding
`Control No.: 95/001,621
`Filed: May 16, 2011
`For: U.S. Patent No.: 7,241,034
`
`(For Patent Owner)
`
`(For the '1621 Requester)
`
`: DECISION
`: SUA SPONTE
`: TO MERGE
`: REEXAMINATION
`: PROCEEDINGS
`
`The above-captioned reexamination proceedings are before the Office of Patent Legal
`Administration for sua sponte consideration on merging the above proceedings.
`
`Ex parte reexamination proceeding No. 90/011,011 and inter partes reexamination proceeding
`No. 95/001,621 are merged into a single proceeding.
`
`BACKGROUND "
`
`1. On July 10, 2007, United States Patent Number 7,241,034 ("the '034 patent") issued to
`Smith et al. with 5 claims.
`
`2. On July 10, 2010, patent owner filed a request for ex parte reexamination of claims 1 and
`3 of the '034 patent, which was assigned control number 90/011,011 ("the '11011
`proceeding").1
`
`3. On August 12, 2010, ex parte reexamination of claims 1 and 3 of the '034 patent was
`granted in the '11011 reexamination proceeding.
`
`4. On October 12, 2010, the time period for submission of a patent owner's statement under
`37 CFR 1.530(b) expired.
`
`Patent owner originally deposited a request on May 25, 2010 that was found incomplete by the Office and was
`subsequently supplemented until found sufficient to grant a filing date of July 10, 2010.
`
`

`
`Reexamination Control No. 90/011,011 (cid:9)
`And Reexamination Control No. 95/001,621
`
`Page 2
`
`5. On January 12, 2011, the Office issued a non-final rejection in the '11011 proceeding.
`
`6. On January 18, 2011, patent owner timely filed an informal/non-responsive amendment
`after an Office action.
`
`7. On February 16, 2011, patent owner timely filed a substitute amendment, which amended
`claims 1-5 and added new claims 6-45.
`
`8. On May 16, 2011, a request for inter partes reexamination of claims 1-5 of the '034
`patent was filed by a third party requester, which was assigned Reexamination Control
`No. 95/001,621 ("the '1621 proceeding"). The request identified Volkswagen Group of
`America, Inc. ("the 1621 requester") as the real party in interest.
`
`9. On June 23, 2011, inter partes reexamination of claims 1-5 of the '034 patent was
`granted in the '1621 proceeding.
`
`10. On January 18, 2012, the Office issued a Notice of Defective Paper in the '11011
`proceeding requesting correction of the February 16, 2011 substitute amendment.
`
`11. On February 2, 2012, patent owner timely filed a second substitute amendment, which
`amended claims 1-5 and added new claims 6-41.
`
`12. To date, no Office action has issued in the '1621 proceeding.
`
`I. MERGER OF PROCEEDINGS
`
`DECISION
`
`Reexamination has been ordered in the above-captioned two proceedings for overlapping claims
`of the same patent. One of the proceedings (the '11011 proceeding) is an ex parte proceeding.
`The other proceeding (the '1621 proceeding) is an inter partes proceeding. Both proceedings are
`still pending, and have not been terminated. The time period for filing a patent owner statement
`under 37 CFR 1.530 in the ex parte proceeding has expired. Therefore, consideration of merger
`is ripe at this point in time.
`
`MPEP 2686.01 points out:
`
`Where a second request for reexamination is filed and reexamination is ordered, and
`a first reexamination proceeding is pending, the proceedings will be merged where
`the Office (in its discretion) deems it appropriate to do so, to facilitate the orderly
`handling of the proceedings. However, a decision not to merge is within the sole
`discretion of the Office to facilitate/carry out the statutory mandate of
`35 U.S.C. 314(c) to conduct reexamination proceedings with "special dispatch."
`
`

`
`Reexamination Control No. 90/011,011 (cid:9)
`And Reexamination Control No. 95/001,621
`
`Page 3
`
`In this instance, based upon the record as a whole, it is found, based on the facts as they exist at
`present, that merger of the proceedings should facilitate the orderly handling of the proceedings
`with special dispatch. Accordingly, the 90/011,011 and 95/001,621 proceedings are hereby
`merged. The merged proceeding will be conducted in accordance with the guidelines and
`requirements that follow.
`
`II. THE SAME CLAIMS MUST BE MAINTAINED IN BOTH PROCEEDINGS
`
`Patent owner is required to maintain the same claims (and specification) in both files throughout
`the merged proceeding. An amendment accompanied the patent owner's statement in the '11011
`ex parte reexamination proceeding. Originally issued claims 1-5 have all been amended and new
`claims 6-41 have been added in the '11011 ex parte proceeding, while the claims in the '1621
`inter partes proceeding have not been so amended. Thus, the claims are not currently the same
`in both proceeding files. An Office action requiring an amendment placing the claims of both
`proceedings in identical form is being issued concurrently with this decision. Patent owner must
`respond to the Office action in accordance with the procedure provided in 37 CFR 1.111. The
`inter partes third party requester will then have an opportunity to comment on patent owner's
`response in accordance with the procedures in 37 CFR 1.947.
`
`The patent owner is required to maintain the same claims (and specification) in both files
`throughout the merged proceeding.
`
`III. CONDUCT OF MERGED PROCEEDING
`
`A. Governing regulations for the merged proceeding:
`
`The present decision merges an ex parte reexamination proceeding with an inter partes
`reexamination proceeding. Pursuant to 37 CFR 1.989(b), the merged proceeding is governed by
`37 CFR 1.902 through 1.997.
`
`B. Inter partes Third Party Requester Participation:
`
`1. Comment rights:
`
`The inter partes requester can comment pursuant to 35 U.S.C. 314(b)(2).2 First, an inter partes
`requester's right to comment is contingent upon the patent owner responding to, or commenting
`on, an Office action. Second, the inter partes requester's right to comment is limited to issues
`raised in either the Office action or the patent owner's response to the action. Finally, the inter
`partes requester's comments must be submitted within 30 days from the date of service of the
`patent owner's response. An inter partes requester does not have a right to comment on any
`issue raised outside the confines of the statute, e.g. issues raised in a previous Office action (but
`
`2 Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office,
`the inter panes third-party requester shall have one opportunity to file written comments addressing issues raised by
`the action of the Office or the patent owner's response thereto, if those written comments are received by the Office
`within 30 days after the date of service of the patent owner's response.
`
`

`
`Reexamination Control No. 90/011,011 (cid:9)
`And Reexamination Control No. 95/001,621
`
`Page 4
`
`not raised in the most recent Office action or response) or the request and comments from the ex
`parte requester: The inter partes requester's comments must be submitted within the statutory
`time period of 30 days from date of service of the patent owner's response.
`
`2. Appeal Rights:
`
`A discussion of third party requester's appeal rights can be found in section G below.
`
`C. Papers mailed/filed:
`
`All papers mailed by the Office throughout the merged proceeding will take the form of a single
`action which applies to both proceedings. All papers issued by the Office, or filed by the patent
`owner and the third party requester, will contain the identifying data for both files and will be
`physically entered in each reexamination file. All papers filed by the patent owner and the third
`party requester must consist of a single paper, filed in duplicate, each bearing a signature and
`identifying data for both files, for entry into each file.
`
`All papers filed by the patent owner and the third party requesters should be directed:
`
`by Mail to:
`
`by FAX to: (cid:9)
`
`by Hand to: (cid:9)
`
`Attn: Mail Stop "Inter Partes Reexam"
`Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`(571) 273-9900
`Central Reexamination Unit
`
`Customer Service Window
`Attn: Central Reexamination Unit
`Randolph Building, Lobby Level
`401 Dulany Street
`Alexandria, VA 22314
`
`by EFS: (cid:9)
`
`Registered users may submit papers via the
`electronic filing system EFS-Web, at:
`
`https:// efs.uspto.gov/efile/myportal/efs-registered.
`
`The patent owner and the inter partes requester are reminded that every paper filed (including
`papers filed via facsimile transmission) in the merged proceeding subsequent to this decision
`must be served on the other party, and every paper filed must reflect that such paper was served
`on the other party in the merged proceeding, pursuant to 37 CFR 1.903. All papers are to be
`addressed to the Central Reexamination Unit as provided above.
`
`

`
`Reexamination Control No. 90/011,011 (cid:9)
`And Reexamination Control No. 95/001,621
`
`Page 5
`
`D. Amendments:
`
`The filing of any amendments to the drawings, specification or claims must comply with
`37 CFR 1.943, which incorporates the provisions of 37 CFR 1.530, and the guidelines of
`MPEP § 2666.01, which in turn references the guidelines of MPEP § 2250.
`
`37 CFR 1.121 does not apply to amendments in reexamination. Accordingly, clean copies of the
`amended claims are not required and are not to be submitted; rather amendments are to be
`presented via markings pursuant to paragraph 37 CFR 1.530(f), except that a claim should be
`canceled by a statement canceling the claim, without presentation of the text of the claim.
`
`Pursuant to 37 CFR 1.530(i), all amendments must be made relative to the patent specification,
`including the claims, and drawings, which are in effect as of the date of filing the request for
`reexamination. Amendments are not to be made relative to previous amendments. Thus, for all
`amendments, all words not appearing in the patent are always underlined, and only words being
`deleted from the patent appear in brackets.
`
`E. Fees:
`
`Where a paper is filed that requires payment of a fee (e.g., petition fee, excess claims fee,
`extension of time fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For
`example, only one fee need be paid for any patent owner's appellant brief (or that of the inter
`partes reexamination requester) which may be filed, even though the brief relates to merged
`multiple proceedings, and copies must be filed (as pointed out above) for each file in the merged
`proceeding.
`
`F. Citation of Patents and Printed Publications:
`
`Upon return of the present merged proceeding to the examiner, the examiner will review the files
`to ensure that each file contains identical citations of prior patents and printed publications, and
`will cite such documents as are necessary as part of the next action in order to place the files in
`that condition.
`
`G. Appeal Procedure Reminders for Inter Partes Reexamination
`
`The inter partes reexamination procedures for taking appeal, and for participating in the patent
`owner's appeal, are explained in MPEP §§ 2674 through 2675 and 2678 through 2683.
`
`With respect to a patent owner's notice of appeal, the appeal must only be taken from the
`rejection(s) of the claims in the Right of Appeal Notice (RAN) that the patent owner proposes to
`contest, and must identify each claim rejected by examiner that the patent owner intends to
`contest.
`
`With respect to a third party requester's notice of appeal, the appeal must only be taken from the
`finding(s) of patentability of claims in the RAN that the third party requester proposes to
`
`

`
`Reexamination Control No. 90/011,011 (cid:9)
`And Reexamination Control No. 95/001,621
`
`Page 6
`
`contest. As set forth in MPEP § 2674, the third party requester must identify in the notice of
`appeal each rejection that was previously proposed by third party requester that the third party
`requester intends to contest and each rejection made and later withdrawn by the examiner that
`the third party requester intends to contest. It is not sufficient to merely appeal from the
`allowance of a claim (i.e., the examiner's finding of a claim patentable); the third party requester
`must identify each previously proposed rejection to be contested.
`
`No new ground of rejection can be proposed by a third party requester appellant, unless such
`ground was withdrawn by the examiner during the prosecution of the proceeding, and the third
`party requester has not yet had an opportunity to propose it as a third party requester proposed
`ground of rejection. See 37 CFR 41.67(c)(1)(vi) as to the proposed rejections that a requester can
`challenge in the appellant brief.
`
`CONCLUSION
`
`1 (cid:9)
`
`2.
`
`3.
`
`Ex parte Reexamination Control No. 90/011,011 and inter panes Reexamination Control
`No. 95/001,621 are merged into a single proceeding, to be conducted in accordance
`with the procedure set forth above in Part III of this decision.
`
`The examiner should not issue any further Office action for the present merged
`proceeding until after the earlier of: (a) the submission of the required response to the
`concurrently mailed Office action (see II above) to place the same amendment in all
`proceedings and requesters' comments on that response, or (b) the expiration of the time
`for filing the required response and any comments requesters elect to file.
`
`Any questions concerning this communication should be directed to Joseph F. Weiss, Jr.,
`Legal Advisor, at 571-272-7759.
`
`Pinchus M. Laufer
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`February 17, 2012