`
`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.
`
`90/013,740
`
`
`
`
` FILING DATE
`
`05/18/2016
`
`HARNESS, DICKEY& PIERCE, PLC.
`CEPL.
`CK
`HAI
`P.O. BOX 828
`BLOOMFIELD HILLS, MI 48303
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`8155012
`
`31AE-226116
`
`1868
`
`Lavine
`PRAMS
`CRAVER, CHARLES R
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`02/16/2017
`
`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)
`
`

`

` UNITED STATES PATENTAND TRADEMARK OFFICE
`
`Corarnissioner for Patents
`United States Patent and Trademark Office
`P.O. Box1450
`Alexandria, VA 22313-1440
`wunUSPTO.gow
`
`DO NOT USEIN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCEADDRESS)
`
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`379 LYTTON AVENUE
`PALO ALTO, CA 94301
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/013, 740.
`
`PATENT NO. 8155012.
`
`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 (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timeforfiling a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`lI.
`
`Summary
`
`In the instant 90/013,740 Reexamination of US Patent 8,155,012 (hereinafter
`
`“the ‘012 Patent”), claims 1-148 are under reexamination in light of the Order Granting
`
`Reexamination mailed 6/21/2016 responding to the request for reexaminationfiled
`
`4/27/2016 by the Third Party Requestor. Claims 1-148 are rejected.
`
`THIS ACTION IS FINAL. MPEP 2271.
`
`Extensions of Time
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in this
`
`reexamination proceedings becausethe provisions of 37 CFR 1.136 apply only to “an
`
`applicant” and not to the patent ownerin a reexamination proceeding. Additionally, 35
`
`U.S.C. 305 requires that ex parte reexamination proceedings “will be conducted with
`
`special dispatch” (37 CFR 1.550(a)). Extensions oftime in ex parte reexamination
`
`proceedings are provided for in 37 CFR 1.550(c).
`
`Notification of Concurrent Proceedings
`
`The Patent Owneris reminded of the continuing responsibility under 37 CFR
`
`1.985 to apprise the Office of anylitigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 8,155,012 throughout the course of this reexamination
`
`proceeding. The third party requesteris also remindedof the ability to similarly apprise
`
`the Office of any suchactivity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP § 2686 and 2686.04.
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 3
`
`Service of Papers
`
`Any paperfiled by either the patent owneror the third party requester must be
`
`served on the other party in the reexamination proceeding in the manner provided by
`
`37 CFR 1.248. See 37 CFR 1.903 and MPEP 2666.06.
`
`ll. Background and Request
`
`Claims 1, 31, 67 and 108 recite:
`
`1. A method for adapting a piece of Ethernet data terminal equipment, the piece of Ethernet data
`terminal equipment having an Ethernet connector, the method comprising:
`selecting contacts of the Ethernet connector comprising a plurality of contacts, the selected
`contacts comprising at least one of the plurality of contacts of the Ethernet connector and at least
`another one of the plurality of contacts of the Ethernet connector;
`coupling at least one path across the selected contacts of the Ethernet connector; and
`associating distinguishing information about the piece of Ethernet data terminal equipmentto
`impedance within the at least one path.
`
`31. An adapted piece of Ethernet data terminal equipment comprising: an
`Ethernet connector comprising a plurality of contacts; and
`at least one path coupled across selected contacts, the selected contacts comprising at least one
`of the plurality of contacts of the Ethernet connector and at least another one of the plurality of
`contacts of the Ethernet connector, wherein distinguishing information about the piece of Ethernet
`data terminal equipment is associated to impedancewithin the at least one path.
`
`67. Amethod for adapting a piece of terminal equipment, the piece of terminal equipment having
`an Ethernet connector, the method comprising:
`coupling at least one path across specific contacts of the Ethernet connector, the at least one
`path permits use of the specific contacts for Ethernet communication, the Ethernet connector
`comprising the contact 1 through the contact 8, the specific contacts of the Ethernet connector
`comprising at least one of the contacts of the Ethernet connector and at least another one of the
`contacts of the Ethernet connector; and
`arranging impedance within the at least one path to distinguish the piece of terminal equipment.
`
`108. An adapted piece of terminal equipment having an Ethernet connector, the piece of terminal
`of equipment comprising:
`at least one path coupled across specific contacts of the Ethernet connector, the at least one path
`permits use of the specific contacts for Ethernet communication, the Ethernet connector
`comprising the contact 1 through the contact 8, the specific contacts comprising at least one of
`the contacts of the Ethernet connector and at least another one of the contacts of the Ethernet
`connector, impedancewithin the at least one path arranged to distinguish the piece of terminal
`equipment.
`
`The instant Patent is towards a security system for an Ethernet network.
`
`Generally, electronic equipment connected to the network is managed and tracked
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 4
`
`using signaling means along existing twisted-pair network cable in order to distinguish
`
`devices and detectif it is removed, and later if reconnected. Col. 41. 40-col. 6 |. 47.
`
`Ill. Priority
`
`Third Party Requestor asserts on p. 3 of his Request that the effective date of
`
`claims are notthat of the filing of the parent application 09/370,430 (8/9/1999)or its
`
`parent PCT Application (4/8/1999), or provisional Application 60/081 ,279 (4/8/1998) but
`
`ratherthefiling of the 12/239,001 application.
`
`35 U.S.C. 120 Priority Requires Possession of the Claimed Invention
`
`in an Earlier U.S. Patent
`
`Rejections may be made in reexamination proceedings based on intervening patents or
`printed publications where the patent claims under reexamination are entitled only to the
`filing date of the patent and are not supported by an earlier foreign or United States
`
`patent application whosefiling date is claimed. For example, under 35 U.S.C. 120,
`the
`effective date of these claims would be the filing date of the application which resulted in
`the patent. Intervening patents or printed publications are available as prior art under /n
`re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), and /n re van Langenhoven,
`458 F.2d 132, 173 USPQ 426 (CCPA 1972). See also MPEP § 201.11
`
`MPEP § 2258.1.C (emphasis added).
`
`Thus, a rejection may be made in a reexamination proceeding based on an
`
`intervening patent when the patent claims under reexamination are entitled, under 35
`
`U.S.C. 120, only to the filing date of the patent under reexamination.
`
`The Examiner notes that none of the proffered art would be considered
`
`intervening in this proceeding, all references predating the filing date of the original
`
`parent application, and as such SNQsraised by such referencesare not"intervening”.
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`IV. Rejections
`
`Page 5
`
`Rejections below that are adopted essentially as presented in the Requestfor
`
`reexamination are referred to by number which corresponds to those presented in the
`
`Order Granting Reexamination mailed 6/21/2016.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousnessrejections setforth 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 ofthis 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 obviousat 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.
`
`CUMMINGS/MAMAN
`
`REJ 13) Claims 1-3, 5, 6, 10, 11, 13, 16, 18, 19, 22, 24-33, 35, 36, 40-41, 43, 46, 48,
`49, 52, 54-73, 76, 80-88, 91, 93-96, 98-104 and 106 are rejected under pre-AlA 35 USC
`103(a) as being obvious over Cummings in view of Maman.
`
`As to claims 1-3, 5, 6, 10, 11, 13, 16, 18, 19, 22, 24-33, 35, 36, 40-41, 43, 46, 48,
`
`49, 52, 54-73, 76, 80-88, 91, 93-96, 98-104 and 106, the Examinerincorporates by
`
`reference herein the rejection disclosed in pp. 13-16 and 28-113, in the Requestof
`
`6/21/2016. Please note the reasons for combining provided on pp. 27-28 of the
`
`Request.
`
`REJ 14) Claims 4, 7-9, 14, 15, 17, 34, 37-39, 44, 45, 47, 92, 105, 107-114, 117, 121,
`128, 129, 132-137 and 139-148 are rejected under pre-AlA 35 USC 103(a) as being
`obvious over Cummings in view of Maman and PCNet.
`
`As to claims 4, 7-9, 14, 15, 17, 34, 37-39, 44, 45, 47, 92, 105, 107-114, 117, 121,
`
`128, 129, 132-137 and 139-148, the Examiner incorporates by reference herein the
`
`rejection disclosed in pp. 13-16 and 28-147, in the Request of 6/21/2016. It would have
`
`been obviousto one of ordinary skill in the art at the time of the invention to combine the
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 6
`
`referencesto obtain the claimed invention at least for the reasons set forth on pp. 27-28
`
`of the Request.
`
`REJ 15) Claims 12, 42 and 89 are rejected under pre-AlA 35 USC 103(a) as being
`obvious over Cummings in view of Maman and Annunziata.
`
`As to claims 12, 42 and 89, the Examiner incorporates by reference herein the
`
`rejection disclosed in pp. 13-17, 39-40, 65 and 100, in the Requestof 6/21/2016. It
`
`would have been obviousto one of ordinary skill in the art at the time of the invention to
`
`combine the references to obtain the claimed invention at least for the reasons setforth
`
`on pp. 27-28 of the Request.
`
`REJ 16) Claims 20, 50, 77 and 78 are rejected under pre-AlA 35 USC 103(a) as being
`obvious over Cummings in view of Maman and Johnson.
`
`As to claims 20, 50, 77 and 78, the Examiner incorporates by reference herein
`
`the rejection disclosed in pp. 13-16, 19, 44-46, 69-70 and 89-92, in the Requestof
`
`6/21/2016. It would have been obvious to one of ordinary skill in the art at the time of
`
`the invention to combine the referencesto obtain the claimed invention at least for the
`
`reasons set forth on pp. 27-28 of the Request.
`
`REJ 17) Claims 21, 23, 51, 53, 79 and 97 are rejected under pre-AlA 35 USC 103(a)
`as being obvious over Cummings in view of Maman and Bloch.
`
`As to claims 21, 23, 51, 53, 79 and 97, the Examinerincorporates by reference
`
`herein the rejection disclosed in pp. 13-18, 46-49, 71-74, 92-94 and 105, in the Request
`
`of 6/21/2016. It would have been obvious to one ofordinaryskill in the art at the time of
`
`the invention to combine the referencesto obtain the claimed invention at least for the
`
`reasons set forth on pp. 27-28 of the Request.
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 7
`
`REJ 18) Claims 74, 75 and 81-86 are rejected under pre-AlA 35 USC 103(a) as being
`obvious over Cummings in view of Maman and Sutterlin.
`
`As to claims 74, 75 and 81-86, the Examinerincorporates by reference herein
`
`the rejection disclosed in pp. 13-16, 19-20, 86-88 and 94-99, in the Requestof
`
`6/21/2016. It would have been obvious to one of ordinaryskill in the art at the time of
`
`the invention to combine the referencesto obtain the claimed invention at least for the
`
`reasons set forth on pp. 27-28 of the Request.
`
`REJ 19) Claim 90 are rejected under pre-AlA 35 USC 103(a) as being obvious over
`Cummings in view of Maman and Sutterlin.
`
`As to claim 90, the Examinerincorporates by reference herein the rejection
`
`disclosed in pp. 13-16, 19-20 and 100-101, in the Request of 6/21/2016. It would have
`
`been obviousto one of ordinary skill in the art at the time of the invention to combine the
`
`referencesto obtain the claimed invention at least for the reasons set forth on pp. 27-28
`
`of the Request.
`
`REJ 20) Claims 115, 116 and 122-127 are rejected under pre-AlA 35 USC 103(a) as
`being obvious over Cummingsin view of Maman, PCNet and Libby.
`
`As to claims 115, 116 and 122-127, the Examiner incorporates by reference
`
`herein the rejection disclosed in pp. 13-16, 18-19, 121-123 and 129-134, in the Request
`
`of 6/21/2016. It would have been obvious to one ofordinaryskill in the art at the time of
`
`the invention to combine the referencesto obtain the claimed invention at least for the
`
`reasons set forth on pp. 27-28 of the Request.
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 8
`
`REJ 21) Claims 118 and 119 are rejected under pre-AIA 35 USC 103(a) as being
`obvious over Cummings in view of Maman, PCNet and Johnson.
`
`As to claims 118 and 119, the Examiner incorporates by reference herein the
`
`rejection disclosed in pp. 13-16, 19 and 123-126, in the Request of 6/21/2016. It would
`
`have been obvious to one of ordinary skill in the art at the time of the invention to
`
`combine the references to obtain the claimed invention at least for the reasons setforth
`
`on pp. 27-28 of the Request.
`
`REJ 22) Claims 120 and 138 are rejected under pre-AlA 35 USC 103(a) as being
`obvious over Cummings in view of Maman, PCNet and Bloch.
`
`As to claims 120 and 138, the Examinerincorporates by reference herein the
`
`rejection disclosed in pp. 13-18, 127-128 and 140, in the Request of 6/21/2016. It would
`
`have been obvious to one of ordinary skill in the art at the time of the invention to
`
`combine the references to obtain the claimed invention at least for the reasons setforth
`
`on pp. 27-28 of the Request.
`
`REJ 23) Claim 130 is rejected under pre-AlA 35 USC 103(a) as being obvious over
`Cummings in view of Maman, PCNet and Annunziata.
`
`As to claim 130, the Examiner incorporates by reference herein the rejection
`
`disclosed in pp. 13-17 and 135, in the Requestof 6/21/2016. It would have been
`
`obvious to one of ordinary skill in the art at the time of the invention to combine the
`
`referencesto obtain the claimed invention at least for the reasons set forth on pp. 27-28
`
`of the Request.
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 9
`
`REJ 24) Claim 131 is rejected under pre-AlA 35 USC 103(a) as being obvious over
`Cummings in view of Maman, PCNet and Sutterlin.
`
`As to claim 131, the Examiner incorporates by reference herein the rejection
`
`disclosed in pp. 13-17 and 135-136, in the Request of 6/21/2016. It would have been
`
`obvious to one of ordinary skill in the art at the time of the invention to combine the
`
`referencesto obtain the claimed invention at least for the reasons set forth on pp. 27-28
`
`of the Request.
`
`CUMMINGS/MAMAN/PCNET
`
`REJ 25) Claims 1-11, 13-19, 22, 24-41, 43-49, 52, 54-73, 76, 80-88, 91-96, 98-114,
`117, 121, 128-129, 132-137 and 139-148 are rejected under pre-AlA 35 USC 103(a) as
`being obvious over Cummingsin view of Maman and PCNet.
`
`As to claims 1-11, 13-19, 22, 24-41, 43-49, 52, 54-73, 76, 80-88, 91-96, 98-114,
`
`117, 121, 128-129, 132-137 and 139-148, the Examiner incorporates by reference
`
`herein the rejection disclosed in pp. 13-16 and 28-147, in the Requestof 6/21/2016. It
`
`would have been obvious to one of ordinary skill in the art at the time of the invention to
`
`combine the references to obtain the claimed invention at least for the reasons setforth
`
`on pp. 27-28 of the Request.
`
`REJ 26) Claims 12, 42, 89 and 130 are rejected under pre-AlA 35 USC 103(a) as being
`obvious over Cummingsin view of Maman, PCNet and Annunziata.
`
`As to claims 12, 42 and 89, the Examiner incorporates by reference herein the
`
`rejection disclosed in pp. 13-17, 39-40, 65 and 100, in the Requestof 6/21/2016. It
`
`would have been obvious to one ofordinary skill in the art at the time of the invention to
`
`combine the references to obtain the claimed invention at least for the reasons setforth
`
`on pp. 27-28 of the Request.
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 10
`
`REJ 27) Claims 20, 50, 77, 78, 118 and 119 are rejected under pre-AlA 35 USC 103(a)
`as being obvious over Cummings in view of Maman, PCNet and Johnson.
`
`As to claims 20, 50, 77, 78, 118 and 119, the Examinerincorporates by reference
`
`herein the rejection disclosed in pp. 13-16, 19, 44-46, 69-70, 89-92 and 123-126, in the
`
`Requestof 6/21/2016. It would have been obvious to one of ordinary skill in the art at
`
`the time of the invention to combine the references to obtain the claimed invention at
`
`least for the reasons set forth on pp. 27-28 of the Request.
`
`REJ 28) Claims 21, 23, 51, 53, 79, 97, 120 and 138 are rejected under pre-AlA 35 USC
`103(a) as being obvious over Cummings in view of Maman, PCNet and Bloch.
`
`Asto claims 21, 23, 51, 53, 79, 97, 120 and 138, the Examiner incorporates by
`
`reference herein the rejection disclosed in pp. 13-18, 46-49, 71-74, 92-94, 105, 127-128
`
`and 140, in the Request of 6/21/2016. It would have been obvious to one of ordinary
`
`skill in the art at the time of the invention to combine the referencesto obtain the
`
`claimed invention at least for the reasons set forth on pp. 27-28 of the Request.
`
`REJ 29) Claims 74, 75, 81-86, 115, 116 and 122-127 are rejected underpre-AlA 35
`USC 103(a) as being obvious over Cummings in view of Maman, PCNetand Libby.
`
`As to claims 74, 75, 81-86, 115, 116 and 122-127, the Examiner incorporates by
`
`reference herein the rejection disclosed in pp. 13-18, 86-88, 94-99, 121-123 and 129-
`
`134, in the Request of 6/21/2016. It would have been obvious to oneof ordinary skill in
`
`the art at the time of the invention to combine the references to obtain the claimed
`
`invention at least for the reasonsset forth on pp. 27-28 of the Request.
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 11
`
`REJ 30) Claims 90 and 131 are rejected under pre-AIA 35 USC 103(a) as being
`obvious over Cummings in view of Maman, PCNet and Sutterlin.
`
`As to claims 90 and 131, the Examiner incorporates by reference herein the
`
`rejection disclosed in pp. 13-16, 19-20, 100-101 and 135-136, in the Requestof
`
`6/21/2016. It would have been obvious to one of ordinaryskill in the art at the time of
`
`the invention to combine the referencesto obtain the claimed invention at least for the
`
`reasons set forth on pp. 27-28 of the Request.
`
`V. Response to Arguments
`
`Patent Owner provides numerous arguments on pp. 31-99 of his Remarks.
`
`CLAIM CONSTRUCTION
`
`On pp. 41-58 of his Remarks, Patent Owner argues towards construction of
`
`various terms in the claims. It is noted that much of his argumentrelies on the
`
`construction of terms in various proceedings before the District Court. However, during
`
`reexamination, barring a final hoicing of invalidity, claims are given the broadest
`
`reasonable interpretation consistent with tne specification and limitations in the
`
`specification are not reac into the claims dn re Yamarnoto, 740 F.2d 1569, 222 USPG
`
`934 (Fed. Cir. 1984).
`
`As to “distinguishing”, Patent Owner asserts that the proper construction of this
`
`term in the claims requires that ihe claimed piece of terminal equipment be
`
`distinguishable from al least on other piece of eauiprnent for use within the sare
`
`network. Falent Owner at 45. Patent Ownerfurther states that the term is “information
`
`to distinguish the piece of Ethernet dala lerminal equioment from atleast one other
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 12
`
`glece of Ethernet data terminal equipment", citing Philos. Patent Owner at 49-50. Note
`
`again that Paiips does not apply in this proceeding.
`
`second, the Court found in this case that the claimed “distinguishing information’
`
`iS not limited to ‘identifying’ information, but rather more broacily information about a
`
`general attribute of the device thal diferentiates it from anatner device. Likewise, itis
`
`clear, given the specification, that the distinguishing information relaies more generally
`
`to an external device, not necessarily an other Ethernet device or one on the same
`
`network. In this proceeding, the terrn ‘distinguishing information about ihe piece of
`
`Ethernet data terminal equinment” and assaciating iLis read as disiinguishing
`
`information about the piece of ethernet data terminal equipment, including information
`
`thal differentiates if frarn another device, wherein the information is capable of being
`
`associaied to impedance within the at least one path claimed.
`
`As to “adapted”, Patent Owner asserts that the claim term requires an existing
`
`Ethernet commector, and thai the association of impeciance to a return path is done so
`
`as not to adversely affect the use of existing contacts to carry date. This is not
`
`persuasive. First, ihe term “adapting” or “adanted” is preamble. While "a orearnble limits
`
`the invention if it recited essential structure or steps, or ibis ‘necessary io give life,
`
`meaning and vitality’ to the claim,” (Catalina Mkig. intl, inc. v. Cocisavings.com, inc.,
`
`2e9 F.Sd 861, 808 (Fed, Gir. 2002)), neither is the case here. The preamble of the
`
`independent claims here does not recite essential structure or steps, nor does if breathe
`
`life to the claims such that one af ardinary skill in the art would assume thal the claim is
`
`towarcs physically modifying off-the shelf or legacy harchware. The independent ciaims
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 13
`
`do not positively recite a structure or step of adapting such preexisting terminal
`
`equioment. Further, the term “adapting” is not read as requiring that no adverse effect
`
`on the existing comlacts to carry signals occurs.
`
`Lastly, note thal the terrn “adapt” is only used in the claims as to a piece of
`
`equipment in the entirely of the specification, ihe term “adapt” or similar is used three
`
`lines, anc only to note inal the invention is adapted for use in a preexisting network or
`
`communications link. Nowhere in the patent background is the term “adapt” or similar
`
`used fo describe “adapting” a piece of network eouloment,
`
`As io “contacts”, ihe Examiner notes that the independent claims da not require
`
`thai the path coupled across contacts is @ ‘return’ path, nor that the path is a
`
`communication path, nor that it is a newly-created one. Rather, the path merely permits
`
`use of the contacts for communication. This does not positively recite thal the path is for
`
`cihernet communication, instead thal ii merely allows communication using the
`
`Ethernet contacts.
`
`REJECTIONS
`
`Patent Owner argues towards the reiections on op. 59-103 af his Resporise.
`
`Cummings/Maman
`
`Patent Owner first argues towards the rejection of Gummings and Maman on pp.
`
`66-90 of his Rernarks.
`
`As to independent claims, first Patent Owner asserts thal a reasoned
`
`explanation as to why ine instant claims are obvicus was not made. The Examiner
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 14
`
`disagrees, noting thal the Examiner incorporated by refererice the rejection of the
`
`Request, noling specifically the reasons for combining in po. 27-28 of the Request
`
`which specifically set forth 1) the Graham Inquiries, inclucling the level of ordinary skil in
`
`the art, 2) various rationales for establishing obviousness therein, and 3) reasons why
`
`Cummings and Maman (as well as Cummings and other refererices} are combinable.
`
`The relection self establishes thai Cummings may be combined with Maman, noting
`
`thal Maman is a similar fielci of encleavor, and teaches similar distinguishing information.
`
`See, for example, op. 29-36 of the Request. Patent Owner cities Dystar, howeverit is
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`noted that ir: Oystar the Court explained that when “no prior art reference contains an
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`express suggestion to combine references, then the level of ordinary skill will often
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`predetermine whether an implicit suggestion exists.” Dystar at 26. The inquiry in sucha
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`situation would be “whether the ordinary artisan possesses knowledge and skills
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`rendering him capable of combining the prior art references.” /d. at 21 (emphasis in
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`original). This is clearly established here.
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`Next, Patent Ownerarguesthat there would have been no reasonable
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`expectation of success in combining the two references, renderit unsatisfactory, and
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`change theprinciples of operation. The Examiner disagrees, noting that Cummings
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`teaches the majority of the claims here, including adapting a piece of Ethernet data
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`terminal equipment. Cummings discloses sensing the presence or absenceof current to
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`determine distinguishing information. Given that impedanceis a generally used metric
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`for determining if an electrical signal path is connected, and given that Maman discloses
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`using impedanceto distinguish devices further in an IEEE802.3 system, one of ordinary
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 15
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`skill would clearly have found such a small modification based on common knowledge
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`and a method of detection in common useto have had a more than reasonable
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`expectation of success. The portion of Cummings cited, such as portions of element 24
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`in FIG 1, are similar to those of Maman’s FIG 3. Both disclose a network device for
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`monitoring. In Cummings alarm logic 38 detects the presence or absenceof a signal
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`whichitself correspondsto high or low impedance, whereas in Mamana specific
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`resistance (impedance) measuring device 26 determines the presence or absenceof a
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`connection. Maman doesso overtwo contacts. Clearly, one of ordinary skill in the art at
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`the time of the invention would have understoodthe simple principle of detecting
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`impedance over a pair of contacts to distinguish a connection, as taught by Maman,
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`could apply to doing so over an Ethernet connection as taught by Cummings.
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`As to the term “adaptling!’, note the Examiner's argument above as fo the proper
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`construction of the claim term. Cummings disicoses adapting existing Ethernel data
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`terminal equipment for use in a detection sysiem, and Maman discloses adapting
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`existing signaling equipment for use in a detection system.
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`As to “coupling a path", Curnmings clearly discloses selecting Cthernet contacts
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`and coupling @ path across them (cal. Gi. 31-52). The claim does not require that the
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`Ethernet connector be 4 pre-existing connecter, and the fact thal Cummings teaches
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`conventional Ethernet connectivity to a personal comouter, and using a path between
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`the wires through the siece of terminal equipment in order to provide means for the
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`terminal equinment to be monitored, meets the claim.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 16
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`As to “distinguishing information’, nate the broadest reasanabie interpretation of
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`such a term described above. Patent Owner arques that the “distinguishing information’
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`is about the configuration, for example the hard drive configuration, of the equipment,
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`however this is not claimed and thus arqumenis towards such a feature are not
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`persuasive. The “distinguishing information” claimeci merely distinguishes the data
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`terminal equipment from atleast one other device. Gummings uses distinguishing
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`information to distinguish the Ethernet data terminal equinment from other such devices
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`on the network, by determining H the device has been removed fram the others on the
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`newark. Maman is similar in thal data terminal equipment is distinguished from others
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`far the same purpose. Patent Owner's more specific reading of “distinguishing
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`information” is not adepted herein.
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`CUMMINGS, as noted by Patent Qwner, detecis a discontinuity in a connection by
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`noting current flow. One of ordinary skill in the art would have understood thal the
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`presence or absence of a signal on the alarm lines would correspond to a high or low
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`impedance on the line. Patent Owner arques that this is not the ‘adapting’ that is
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`claimed, however itis noted that the clan does not require that the Ethernet connector
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`or the data terminal equioment perform the step of “associating distinguishing
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`information” or associate any information with impedance; Cumming’s associating
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`distinguishing information at the alarm box systemof the network meets the claim.
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`Further, as noted in the rejection and above, Maman discloses a simple system for
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`determining the presence or absence of a low-level signal such as that taught by
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`Cummings by detecting and associating impedance with a signal path.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 17
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`As to dependent claims, Palent Owner refers to nis arguments above, and the
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`Examiner notes his rebuttal above. Further as to clan 3, Curnmings, as noted in the
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`rejection, associates identifying information as to the data terminal equinment,
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`identifying specific ones of such equipment al the alarm subsystem. Cummings af cal. 6
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`H. 1-23.
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`CummingsMamanPCNel
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`Patent Owner first arques towards the rejection of Cummings, Maman and
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`PiNet on pp. 90-91 of his Remarks.
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`As to independent and dependent claims, Patent Owner essentially refers
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`back to his above arguments as to Cummings and Marnan. The Examiner notes his
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`rebuttal to such above.
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`Cummings/MamanAdditional Heferances
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`Patent Owner argues towards the rejection of Curnmings, Marnan and aciditional
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`references as to dependent claims on pp. 90-99 of his Remarks as follows:
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`« Cummings in view of Maman and Annunziata, o. 92
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`e Cummings in view of Maman and Johnson, op. 92-93
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`® Gunimings in view of Maman and Bloch, op. 93-34
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`® Cummings in view of Maman and Sulteriin, pp. 94-96
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`« Gurmmings in view of Maman and Libby, p. 95
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`e Cummings in view of Maman, PCNet and Johnson, po. 95-96
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`e Cummings in view of Maman, PCNet and Bloch, pp. 96-97
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 18
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`® Cummings in view of Maman, PONet and Annunziata, pp. 97-28
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`® Gunimings in view of Maman, PONet and Sutterlin, pp. 98-99
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`® Cummings in view of Maman, PONet and Libby, p. 39
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`As to dependeni claims, Patent Owner essentially in all grounds above refers
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`back to his above arguments as fo Cummings and Marnan. The Examiner notes his
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`rebultal to such above.
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`Vi. Conclusion
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`THIS ACTION IS MADE FINAL.
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`A shortened statutory period for responseto this action is set to expire 2 months from
`the mailing date of this action.
`
`Extensionsof time under 37 CFR 1.136(a) do not apply in reexamination
`proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and notto
`parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR
`1.550/(a), it is required that reexamination proceedings “will be conducted with special
`dispatch within the Office.”
`
`Extensionsof time in reexamination proceedings are provided for in 37 CFR
`1.550(c). A request for extension of time must specify the requested period of extension
`and it must be accompanied bythe petition fee set forth in 37 CFR 1.17(g). Any request
`for an extension in a third party requested ex parte reexamination mustbefiled on or
`before the day on which action by the patent owneris due, and the merefiling of a
`requestwill not effect any extension of time. A request for an extension of time in a third
`party requested ex parte reexamination will be granted only for sufficient cause, and for
`a reasonable time specified. Any request for extension in a patent owner requested ex
`parte reexamination (including reexamination ordered under 35 U.S.C. 257) for up to
`two months from the time period set in the Office action must befiled no later than two
`months from the expiration of the time period set in the Office action. A request for an
`extension in a patent owner requested ex parte reexamination for more than two
`months from the time period set in the Office action must befiled on or before the day
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 19
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`on whichaction by the patent owneris due, and the merefiling of a request for an
`extension for more than two monthswill not effect the extension. The time for taking
`action in a patent owner requested ex parte reexamination will not be extended for more
`than two months from the time period set in the Office action in the absence of suffici