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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`90/013,740
`
`05/18/2016
`
`8155012
`
`31AE—2261 16
`
`1868
`
`HARNESS, DICKEY & PIERCE, P.L.C.
`1310. BOX 828
`BLOOMFIELD HILLS, MI 48303
`
`CRAVER, CHARLES R
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`02/ 16/2017
`
`PAPER NUIVIBER
`
`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)
`
`

`

` TJNI TED S TATES PATEN T AND TRADEWK QFFI CE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O.BD}{145E|
`Alexandria, VA 22313-1450
`vuwmusptogov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`379 LYTTON AVENUE
`PALO ALTO, CA 94301
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL 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 (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(9)).
`
`PTOL-465 (Rev.O7-O4)
`
`

`

`Application/Control Number: 90/013,740
`
`Page 2
`
`Art Unit: 3992
`
`|_.
`
`Summary
`
`DETAILED ACTION
`
`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 reexamination filed
`
`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 because the provisions of 37 CFR 1.136 apply only to “an
`
`applicant” and not to the patent owner in 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(3)). Extensions oftime in ex parte reexamination
`
`proceedings are provided for in 37 CFR 1.550(c).
`
`Notification of Concurrent Proceedings
`
`The Patent Owner is reminded of the continuing responsibility under 37 CFR
`
`1.985 to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 8,155,012 throughout the course of this reexamination
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`the Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP § 2686 and 2686.04.
`
`

`

`Application/Control Number: 90/013,740
`
`Page 3
`
`Art Unit: 3992
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`Service of Papers
`
`Any paper filed by either the patent owner or 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.
`
`L Background and Reguest
`
`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 equipment to
`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 impedance within the at least one path.
`
`67. A method 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, impedance within 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
`
`Page 4
`
`Art Unit: 3992
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`using signaling means along existing twisted-pair network cable in order to distinguish
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`devices and detect if it is removed, and later if reconnected. Col. 4 l. 40-col. 6 l. 47.
`
`L Priority
`
`Third Party Requestor asserts on p. 3 of his Request that the effective date of
`
`claims are not that 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
`
`rather the filing of the 12/239,001 application.
`
`35 U.S.C. 120 Priority Reguires 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 whose filing 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. lntervening patents or printed publications are available as prior art under In
`re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), and In re van Langenhoven,
`458 F.2d 132, 173 USPQ 426 (CCPA 1972). See also MPEP § 201.11
`
`MPEP § 2258.I.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 SNQs raised by such references are not "intervening".
`
`

`

`Application/Control Number: 90/013,740
`
`Page 5
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`Art Unit: 3992
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`M Rejections
`
`Rejections below that are adopted essentially as presented in the Request for
`
`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
`
`obviousness rejections set forth 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 of this 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 obvious at 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-AIA 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 Examiner incorporates by
`
`reference herein the rejection disclosed in pp. 13-16 and 28-113, in the Request of
`
`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-AIA 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 obvious to one of ordinary skill in the art at the time of the invention to combine the
`
`

`

`Application/Control Number: 90/013,740
`
`Page 6
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`Art Unit: 3992
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`references to 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 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 set forth
`
`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 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 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 Examiner incorporates 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 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.
`
`

`

`Application/Control Number: 90/O13,74O
`
`Page 7
`
`Art Unit: 3992
`
`REJ 18) Claims 74, 75 and 81 -86 are rejected under pre-AIA 35 USC 103(a) as being
`obvious over Cummings in view of Maman and Sutterlin.
`
`As to claims 74, 75 and 81-86, the Examiner incorporates by reference herein
`
`the rejection disclosed in pp. 13-16, 19—20, 86-88 and 94-99, 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 set forth on pp. 27-28 of the Request.
`
`REJ 19) Claim 90 are rejected under pre-AIA 35 USC 103(a) as being obvious over
`Cummings in view of Maman and Sutterlin.
`
`As to claim 90, the Examiner incorporates 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 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 20) Claims 115, 116 and 122-127 are rejected under pre-AIA 35 USC 103(a) as
`being obvious over Cummings in 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 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.
`
`

`

`Application/Control Number: 90/013,740
`
`Page 8
`
`Art Unit: 3992
`
`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. Itwould
`
`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 22) Claims 120 and 138 are rejected under pre-AIA 35 USC 103(a) as being
`obvious over Cummings in view of Maman, PCNet and Bloch.
`
`As to claims 120 and 138, the Examiner incorporates 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 set forth
`
`on pp. 27-28 of the Request.
`
`REJ 23) Claim 130 is rejected under pre-AIA 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 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 set forth on pp. 27-28
`
`of the Request.
`
`

`

`Application/Control Number: 90/O13,74O
`
`Page 9
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`Art Unit: 3992
`
`REJ 24) Claim 131 is rejected under pre-AIA 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
`
`references to 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-AIA 35 USC 103(a) as
`being obvious over Cummings in 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 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 set forth
`
`on pp. 27-28 of the Request.
`
`REJ 26) Claims 12, 42, 89 and 130 are rejected under pre-AIA 35 USC 103(a) as being
`obvious over Cummings in 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 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 set forth
`
`on pp. 27-28 of the Request.
`
`

`

`Application/Control Number: 90/013,740
`
`Page 10
`
`Art Unit: 3992
`
`REJ 27) Claims 20, 50, 77, 78, 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 20, 50, 77, 78, 118 and 119, the Examiner incorporates by reference
`
`herein the rejection disclosed in pp. 13-16, 19, 44-46, 69-70, 89-92 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 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-AIA 35 USC
`103(a) as being obvious over Cummings in view of Maman, PCNet and Bloch.
`
`As to 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 references to 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 under pre-AIA 35
`USC 103(a) as being obvious over Cummings in view of Maman, PCNet and 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 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.
`
`

`

`Application/Control Number: 90/O13,74O
`
`Page 11
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`Art Unit: 3992
`
`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 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 set forth on pp. 27-28 of the Request.
`
`L 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 argument relies on the
`
`construction of terms in various proceedings before the District Court. However, during
`
`reexamination, barring a tinei hoiding oi invalidity, eieirne are given the broadest
`
`reasonable interpretation consistent with the specification enci iiinitetions in the
`
`specification are not read into the oieirne {in re Yamernoto, “£40 F.2d 15653, 222 USPO
`
`9:34 (Fed. Cir. 1984)).
`
`As te “dietinguiehing”, Patent Owner eeeerts that the proper construction of this
`
`term in the eieiine requires that the oieirhed piece of iei‘iiitflai equipment he
`
`dietinguiehebie from at ieest on other piece of equipment for use within the eerne
`
`netwerk. Patent Owner at 45. Patent Owner further states that the term ie "iniorrnetien
`
`te distinguish the piece of Ethernet date terminei equipment from at ieeet ene ether
`
`

`

`Application/Control Number: 90/O13,74O
`
`Page 12
`
`Art Unit: 3992
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`piece at Ethernet riata terrninai equipment”, siting Philips. Patent {Trainer at 4113-50. Nete
`
`again that Philips rises net appiy in this ereeeeeing,
`
`Seeene, the Court teunci in this case that the eiainiet‘i “distinguishing interrnatien”
`
`is net iirriiteti te ‘ieentitying intermetien, but rather rnere hreaeiy intermetien ahent a
`
`generat attribute at the device that differentiates it irern anether devise. Likewise, it is
`
`steer, given the speeitieetien, that the distinguishing interntatien reiates mere generaiiy
`
`to an externai device, net neeessariiy an ether Ethernet cieviee er ene en the same
`
`network. in this ereeeeeing, the term 'eistinguishing intermatien about the piece at
`
`Ethernet eats terrninai equipment” and asseeiating it is read as distinguishing
`
`intermatien sheet the piece at ethernet data tenninai equipment, inciuding intermatien
`
`that differentiates it trern enether device, wherein the intermatien is caeahie et being
`
`associated te impedance within the at ieast ene path eiairnee.
`
`As te “adapted”, Patent Owner asserts that the eiairn terrn requires an existing
`
`Ethernet eenneeter, and that the esseeiatien at impedance te a return path is eerie as
`
`as net te adverseiy attest the use at existing sentaets te carry data. This is net
`
`persuasive. First, the term “adapting” er "adapted” is preen’ieie. White ”a preambie iirnite
`
`the inventien it it recitet‘i essentiai structure er steps, er it it is “necessary te give iiie,
`
`meaning and vitaiity’ te the eieirn’” (Catalina itxiirtg. int’i, inc. 1/, Cesisevingseem, inc,
`
`259 F.3d 8m, 8638 (Fed. Cir. 2362)}. neither is the case here. The ereanthie at the
`
`independent eiairns here eees net reeite essentiat struetnre er steps, her {tees it breathe
`
`iiie te the eiairns such that ene e'i erdinary skiii in the art weuid assume that the eiairn is
`
`tewercis physieaiiy rneriitying eti~the sheii er iegaey hartiware. The independent eiairns
`
`

`

`Application/Control Number: 90/O13,74O
`
`Page 13
`
`Art Unit: 3992
`
`rte net positiveiy resite a structure er step at adapting sash preexisting terminai
`
`equipment. Further, the term “adapting” is net react as requiring that no adverse attest
`
`on the existing contacts te carry signais eoeurs,
`
`Lastiy, nete that the term “adept” is eniy used in the eiaims as te a piece at
`
`equipment; in the entirety of the seesitieatien, the term “adapt" er sirniiar is used three
`
`times, anti ehiy te note that the inventten is adapted fer use in a preexisting hetwertr er
`
`eemmunieatiens iinkt txiewhere in the patent background is the term “adapt” or eirniiar
`
`used to describe “adapting” a piece of hetwerk equipment.
`
`As to “eentaets”, the Examiner netes that the independent eiairns as net require
`
`that the path sotipiect asress contacts is a ’return‘ hath, nor that the path is a
`
`communication path ner that it is a newiy—ereated enet Ratherq the path rnereiy permits
`
`use of the eehtaets fer eemn’rtihieetieh. This does net eesitiveiy reeite that the path is ter
`
`Ethernet eernmtinieatien, instead that it rnereiy aiiews eernrntinieatien using the
`
`Ethernet eehtaets.
`
`REJEQTEQNS
`
`Patent aner argues tewares the rejectiens an era. 59~t {)3 at his Response.
`
`(ftrrrrrnings/Maman
`
`Patent Owner first argues towards the rejection at Cummings and Marmara on pp.
`
`56—95 of his Remarks,
`
`its te independent eieirns, first Patent Owner asserts that a reasoned
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`expianatien as te why the instant eiairns are ehvieus was not made. The Examiner
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`Application/Control Number: 90/O13,74O
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`Page 14
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`Art Unit: 3992
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`disagrees, neting that the Examiner incerperated by reference the rejectien of the
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`Request, hetihg speeificaiiy the reasens for cemhinihg in pp. 27—28 of the Request
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`which s;:naeificai13.i set ferth 'i) the Graham inquiries, ineiuciirig the ievei of ordinary skiii in
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`the art, 2') various ratienatee for estahiiehihg obvieuenees therein, and 3') reasons why
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`Cummings and Maman (as weii as Cummings and ether references) are cemhinabie.
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`The rejection itseit estahiishes that Cummings may be oemhihed with Maman, noting
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`that Maman is a simiiar tieid of endeavor, and teaches simiiar distinguishing infermatiori.
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`See for exampte, pp. 253—39 ef the Request. Patent Owner eites Dystar, hewever it is
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`noted that in Dystar 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 such a
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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.” Id. at 21 (emphasis in
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`original). This is clearly established here.
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`Next, Patent Owner argues that there would have been no reasonable
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`expectation of success in combining the two references, render it unsatisfactory, and
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`change the principles 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 absence of current to
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`determine distinguishing information. Given that impedance is 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 impedance to distinguish devices further in an IEEE802.3 system, one of ordinary
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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 use to 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. ln Cummings alarm logic 38 detects the presence or absence of a signal
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`which itself corresponds to high or low impedance, whereas in Maman a specific
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`resistance (impedance) measuring device 26 determines the presence or absence of a
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`connection. Maman does so over two contacts. Clearly, one of ordinary skill in the art at
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`the time of the invention would have understood the 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 terrn “adeptiingi”, nete the Examiner’s {argument abet/e ee to the ereeer
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`construction et the eieim tei'rh. Cummings dieiceeee adapting exieting Ethernet date
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`terminai equipment fer use in a detectien system, and Maman diesieees adapting
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`existing eigneiing equipment fer use in e detectien system.
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`Ae te "eeupiing a path“, Cummings eieeriy dieeieeee eeieeting Ethernet eentaete
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`and eeueiing e path eereee them (eei. 3 ii. 3t ~52). The eieim deee net require that the
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`Ethernet eenneeter be a preexisting eenneeter, and the fact that Cummings teaches
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`cenventienat Ethernet cennectivity to a nerennei eerneuter, and using a path between
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`the wires thretigh the piece of terminei equipment in erder te previee meant; fer the
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`terminei equipment te he meniteree, meets; the eieim.
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`Art Unit: 3992
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`As to “distinguishing intermetien”, note the hrcadest reesenehie interpretation e‘t
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`such a term described ehcve. Patent Owner argues that the “distinguishing intermetien”
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`is aheut the centiguraticns fer exempie the hard drive centiguretien, ct the equipment,
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`heweyer this is net cieimed and thus arguments tewerds such a feature are net
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`persuasive. The “distinguishing intermetien” cisimeci mereiy distinguishes the ciste
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`terminei equipment trcm et ieest cne ether device, Cummings uses distinguishing
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`intermetien tc distinguish the Ethernet date terminai equipment trcm other such devices
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`en the netwerki by determining it the device has been remeyed item the others en the
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`netwerk. Mentan is simiier in that date terminei equipment is distinguished ircm ethers
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`ter the same purpese. Patent Owner’s mere specific reading et “distinguishing
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`interinatien" is net adapted herein,
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`Cummings, as noted by Patent Owner; detects a discentinuity in e cennectien by
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`neting current tiew. One at erdinery skiii in the art weuid have understecd that the
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`presence er absence ct e signei en the sierm iines wcuici cei‘respend tc a high er icw
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`impedance en the iine. Patent Owner argues that this is net the ‘ectepting’ that is
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`cieimed, heweyer it is neted that the cieim dues net require that the Ethernet cennecter
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`er the date terminsi equipment perterm the step ct “associating distinguishing
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`intermetien” er associate any intermetien with impedance; Cummings esspcieting
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`distinguishing intermetien at the eterm hex system at the netwerk meets the cieimu
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`Further, as nuted in the rejectien and shove, Memsn disciuses e simpie system for
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`determining the presence cr absence pi e iew~ieyei signei such as that taught by
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`Cummings by detecting and essccieting impedance with a signei path.
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`Art Unit: 3992
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`fits te dependent eieims, Patent Owner refers in his arguments eheve, and the
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`Examiner netes his rehuttei eheve. Further as it) Cieim 3, Cummings, as neted in the
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`rejectien, esseeietes identifying intermetien es te the data terminei equipment,
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`identifying specific enes of such equipment at the eierm subsystem. Cummings at mi. 6
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`ii. i~23.
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`Cummings/Memen/Ptfifiet
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`Patent Owner first argues tewerds the reieetien e’r‘ Cummings. Memen end
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`FiCNet en en. 5-30—91 et his Remarks.
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`fits te independent ene depentient eieims, Patent Owner essentieiiy refers
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`heck te his ebeve arguments as te Cummings and Memen. The Examiner notes his
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`rebuttei to such above.
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`Qummings/Memenxfiedditienei References
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`Patent aner argues tewen‘is the reieetien et Cummings, Memen and edditienei
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`references as te dependent eieims en pt). sees et his Remarks es ieiiews:
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`a Gummings in View at Memen enci Annunziete, p. £32
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`a Cummings in view 01‘ Memen and Jehnsen, pp. 633%
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`a Cummings in View ui‘ Memen and Bieeh, pp. 93—94
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`a Cummings in View at Memen end Sutteriin, pp. @4435
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`a Gumminge in View at ivieman end Libhyq n. 95
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`a Gummings in View at Memen, PCNet and Jehnsen, pp. 95~§8
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`a Cummings in View of Memen, PCNet and Biecn, pp. Q8~Q7
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`a Cummings ii'i View sf Martian, PCNet and Aiinunziaia, pp. 37438
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`a Cummings Eh View of Mamas, PCNet arid Sutteriiri, pp. 33—39
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`a Cummings ii'i View sf Martian, PCNet and Libby, p. 39
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`As is depesdest siaims. Patent Owner essentially in aii grounds above refers
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`back to his above arguments as to Cummings and Martian. The Examiner nstss his
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`rebuttal is such sbsvs.
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`VI. Conclusion
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`THIS ACTION IS MADE FINAL.
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`A shortened statutory period for response to this action is set to expire 2 months from
`the mailing date of this action.
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`Extensions of 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 not to
`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.”
`
`Extensions of 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 by the petition fee set forth in 37 CFR 1.17(g). Any request
`for an extension in a third party requested ex parte reexamination must be filed on or
`before the day on which action by the patent owner is due, and the mere filing of a
`request will 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 be filed 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 be filed on or before the day
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`Application/Control Number: 90/O13,74O
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`on which action by the patent owner is due, and the mere filing of a request for an
`extension for more than two mo