UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`llOO NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Date:
`MAILED
`
`SEP 2 6 2011
`
`CENTRAL REEXAMINATION UNIT
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITIAL FORM
`
`REEXAMINATION CONTROL NO. : 90010992
`PATENT NO.: 5960074
`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 parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`Petitioners' Ex. 1019 - Page 1
`
`

`
`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
`
`Control No.
`
`90/010,992
`
`Examiner
`
`Patent Under Reexamination
`
`5,960,074
`
`Art Unit
`
`3992
`MINH DIEU NGUYEN
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`1. 181 Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
`issued in view of
`(a) 181 Patent owner's communication(s) filed: 15 August 2011.
`(b) 0 Patent owner's late response filed: __ .
`(c) 0 Patent owner's failure to file an appropriate response to the Office action mailed: __ .
`(d) 0 Patent owner's failure to timely file an Appeal Brief (37 CFR 41 .31).
`(e) 0 Other: __
`Status of Ex Parte Reexamination:
`(f) Change in the Specification: 0 Yes 1:8] No
`0 Yes 1:8] No
`(g) Change in the Drawing(s):
`(h) Status of the Claim(s):
`(1} Patent claim(s) confirmed: 1-40.
`(2) Patent claim(s) amended (including dependent on amended claim(s}}: 2-9.15-20.29-36.39 and 40
`(3} Patent claim(s) canceled: None.
`(4) Newly presented claim(s} patentable: 41-127.
`(5) Newly presented canceled claims: None.
`(6) Patent claim(s) 0 previously 0 currently disclaimed: None
`(7} Patent claim(s) not subject to reexamination: None.
`
`2. 181 Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for
`Patentability and/or Confirmation."
`3. 0 Note attached NOTICE OF REFERENCES CITED (PT0-892}.
`4. 1:8] Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/08 substitute).
`5. 0 The drawing correction request filed on __ is: D approved 0 disapproved.
`6. 0 Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a}-(d) or (f).
`a}O All b)O Some•
`c)O None
`of the certified copies have
`0 been received.
`0 not been received.
`0 been filed in Application No. __ .
`0 been filed in reexamination Control No.
`.
`0 been received by the International Bureau in PCT Application No. __ .
`* Certified copies not received: __ .
`7. 0 Note attached Examiner's Amendment.
`8. 0 Note attached Interview Summary (PT0-474).
`9. 0 Other: __ .
`
`cc: Requester (if third partv requester)
`U.S. Patent and Trademark Office
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`PTOL-469 (Rev. 05-10)
`
`Part of Paper No 20110913
`
`/Minh Dieu Nguyen/
`Primary Examiner, Art Unit 3992
`
`Petitioners' Ex. 1019 - Page 2
`
`

`
`Application/Control Number: 90/010,992
`Art Unit: 3992
`
`Page 2
`
`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
`
`Summary
`
`This is an ex parte reexamination of 5,960,074 issued to Clark.
`
`The status of the claims is as follows:
`
`Claims 1-127 are confirmed/patentable.
`
`Claims not subject to reexamination: None
`
`Cancelled claims: None
`
`Newly presented claims: 41-127
`
`Reasons for Patentability/Confirmation
`
`·claims 1-127 are confirmed based on the reasoning set forth below.
`
`The following is an examiner's statement of reasons for confirmation of claims 1-127 in
`
`this reexamination proceeding:
`
`The '074 patent generally relates to mobile communications designed for
`
`advantageous use with motion picture, television and TV advertising production. Claims
`
`1, 24, 28 and 38 provides the limitation requiring "a mobile hub station configured to
`
`transfer information as a single nomadic transmission/reception point between the
`
`microwave communication system and the wireless LAN using an Ethernet packet
`
`switching protocol" and using "the TCPIIP protocol" in claim 14. The '074 Patent
`
`specifies and claims the use of the same communication protocols (TCPIIP Ethernet)
`
`for the WAN and LAN (McNally Declaration, dated August 15, 2011, item 6) The prior
`
`Petitioners' Ex. 1019 - Page 3
`
`

`
`Application/Control Number: 90/010,992
`Art Unit: 3992
`
`Page 3
`
`art cited by the Requesters fails to teach or suggest this feature, the architecture
`
`discussed in Normoyle teaches that the communication between the network router and
`
`the DMC-23 Radio System is accomplished not by using Ethernet routing protocols, but
`
`rather, through the conversion of Ethernet to Serial T1 (Remarks, dated August 15,
`
`2011, page 26, last paragraph). Accordingly, the prior art submitted by the Requesters
`
`fails to anticipate or render obvious claims 1, 14, 24, 28 and 38.
`
`Dependent claims 2-18, 15-23, 25-27, 29-37 and 39-127 are confirmed based on
`
`their direct dependence from independent claims 1, 14, 24, 28 and 38.
`
`Any comments considered necessary by PATENT OWNER regarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submissions
`
`by the PATENT OWNER should be clearly labeled "Comments on Statement of
`
`Reasons for Patentability and/or Confirmation" and will be placed in the reexamination
`
`file.
`
`IDS Submissions
`
`Regarding IDS submissions MPEP 2256 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.
`
`Petitioners' Ex. 1019 - Page 4
`
`

`
`Application/Control Number: 90/0 1 0,992
`Art Unit: 3992
`
`Page 4
`
`·
`
`The Information Disclosure Statement filed on 8/15/2011 has been considered.
`
`Conclusion
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
`
`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)).
`
`Extensions of time in ex parte reexamin~tion proceedings are provided for in 37 CFR
`
`1.550(c). See MPEP § 2265.
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`_ 1.565(a) to apprise the Office of any litigation activity or other prior or concurrent
`
`proceeding, involving the '906 patent throughout the course of this reexamination
`
`proceeding. The requester is also reminded of the ability to similarly appraise the Office
`
`of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`Any paper filed with the USPTO, i.e., any submission made, by either the Patent
`
`Owner or the Third Party Requester must be served on every other party in the
`
`reexamination proceeding, including any other third party requester that is part of the
`
`proceeding due to merger of the reexamination proceedings. As proof of service, the
`
`party submitting the paper to the Office must attach a Certificate of Service to the paper,
`
`Petitioners' Ex. 1019 - Page 5
`
`

`
`Application/Control Number: 90/010,992
`Art Unit: 3992
`
`Page 5
`
`which sets forth the name and address of the party served and the method of service.
`
`Papers filed without the required Certificate of Service may be denied consideration. 37
`
`CFR 1.903; MPEP 2666.06.
`
`All correspondence relating to this ex parte reexamination proceeding should be
`
`directed:
`
`By EFS:
`
`Registered users may submit via the electronic filing system EFS-Web, at
`https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html.
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900 .
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`For EFS-Web tra~smissions, 37 CFR 1.8(a)(1 )(i) (C) and (ii) states that correspondence
`
`(except for a request for reexamination and a corrected or replacement request for
`
`reexamination) will be considered timely filed lf (a) it is transmitted via the Office's
`
`electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a
`
`certificate of transmission for each piece of correspondence stating the date of
`
`transmission, which is prior to the expiration of the set period of time in the Office action.
`
`Petitioners' Ex. 1019 - Page 6
`
`

`
`Application/Control Number: 90/010,992
`Art Unit: 3992
`
`Page 6
`
`Any inquiry concerning this communication or earlier communications from the
`
`Examiner, or as to the status of this proceeding, should be directed to the Central
`
`Reexamination Unit at telephone number (571) 272-7705.
`
`Signed:
`
`/Minh Dieu Nguyen/
`
`Minh Dieu Nguyen
`Primary Examiner
`USPTO, Art Unit 3992
`(571) 272-3873
`
`Conferee:
`
`.....
`
`Petitioners' Ex. 1019 - Page 7