vs! “111%
`\.\_:
`
`
`
`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
`
`
`
`
`
`90/013,802
`
`08/29/2016
`
`8902760
`
`31AE—228691
`
`1005
`
`HARNESS, DICKEY & PIERCE, P.L.C.
`1310. BOX 828
`BLOOMFIELD HILLS, MI 48303
`
`FOSTER, ROLAND G
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`08/07/2017
`
`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)
`
`

`

`
`Control No.
`Patent Under Reexamination
`
`
`
` Notice of Intent to Issue 90/013302 8902760
`
`
`
`Ex Parte Reexamination Certificate
`
`Examiner
`
`ROLAND FOSTER
`
`Art Unit
`
`3992
`
`AIA (First Inventor to File)
`Status
`No
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`1. IZI 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. Of. 37 CFR 1 .313(a). A Certificate will be issued
`in view of
`
`)
`
`IXI Patent owner’s communication(s) filed: 23 June 2017and 10 May 2017.
`El Patent owner’s failure to file an appropriate timely response to the Office action mailed:
`El Patent owner’s failure to timely file an Appeal Brief (37 CFR 41.31).
`|:| The decision on appeal by the El Board of Patent Appeals and Interferences I:I Court dated
`
`aChange in the Specification.
`bChange in the Drawing(s ):
`c Status of the Claim(s):
`
`(1
`(2
`(3
`(4
`(5
`(6
`(7
`
`) Patent c|aim(s) confirmed: 1-_72.
`) Patent c|aim(s) amended (including dependent on amended c|aim(s)): 73-100,104-169 and 173-219
`) Patent c|aim(s) canceled: 101-103 170-172.
`) Newly presented c|aim(s ) patentable:
`) Newly presented canceled claims:
`) Patent claims )I:I previously |:l currently disclaimed:
`) Patent c|aim(s ) not subject to reexamination:
`
`3. E! A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`4. IZI 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.”
`
`5. D Note attached NOTICE OF REFERENCES CITED (PTO-892).
`
`6. CI Note attached LIST OF REFERENCES CITED (PTO/SB/O8 OI’ PTO/SB/08 substitute).
`
`7. I] The drawing correction request filed on
`
`is: I] approved
`
`I] disapproved.
`
`8. I] Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)I:| AII b)I:| Some*
`c)|:l None
`of the certified copies have
`I] been received.
`I] not been received.
`I:| been filed in Application No.
`I:| been filed in reexamination Control No.
`I:l been received by the International Bureau in PCT Application No.
`
`* Certified copies not received: _
`
`9. CI Note attached Examiner’s Amendment.
`
`10. IZI Note attached Interview Summary (PTO-474).
`
`1 1. D Other:
`
`
`
`All correspondence relating to this reexamination proceeding should be directed to the Central Reexamination Unit at
`the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`rec uester)
`cc: Rec uester (if third - art
`U.S. Patent and Trademark Office
`PTOL-469 (Rev. 08-13)
`
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20170719
`
`Roland G. Foster/
`
`Primary Examiner
`‘ rt Unit: 3992
`
`

`

`Application/Control Number: 90/013,802
`
`Page 2
`
`Art Unit: 3992
`
`NOTICE OF INTENT TO ISSUE REEXAMINATION CERTIFICATE
`
`Summary
`
`Claims 1—100, 104—169 and 173—219 of United States Patent No. 8,902,760 B2 (the
`
`“Austermann” patent) are currently under reexamination in this ex parte reexamination
`
`proceeding 90/013,746.
`
`An Order Granting Ex Part6 Reexamination (the “Order”), mailed November 18, 2016,
`
`found that a substantial new question of patentability (“SNQ”) was raised in the request for ex
`
`parte reexamination, August 29, 2016 (the "Request") as to claims 1—219. A non—final Office
`
`action was mailed February 10, 2017 rejecting claims 1—219, to which the Patent Owner
`
`responded on May 10, 2017 (the "Response") and a Supplemental Amendment filed June 23,
`
`2017 (the "Supplemental Response") cancelling claims 101—103 and 170—172 and amending
`
`other claims.1 Both the Response and Supplemental Amendment were accompanied by
`
`declaration eVidence. A personal interView was also conducted on May 10, 2017.
`
`In View of the Response, Supplemental Amendment, and accompanying declaration
`
`eVidence, the Patent Owner's arguments of record detailing how the claims distinguish over the
`
`prior art of record, the Examiner concludes all pending claims (i.e., claims 1—100, 104—169 and
`
`173—219) are in condition for patentability over the prior art of record applied in this proceeding.
`
`See the Reasons for Patentability for further explanation.
`
`1 The Supplemental Amendment filed June 23, 2017 replaced the Supplemental Amendment filed June 20, 2017.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 3
`
`Art Unit: 3992
`
`Reasons for Patentability
`
`Claims 1—100, 104—169 and 173—219 are patentable over the applied, prior art of record.
`
`Of these, claims 1, 73 and 146 are independent. Limitations important to patentability have been
`
`emphasized.
`
`1. A BaseT Ethernet system comprising: a piece of central BaseT Ethernet
`equipment; a piece of BaseT Ethernet terminal equipment; data signaling pairs
`of conductors comprising first and second pairs used to carry BaseT Ethernet
`communication signals between the piece of central BaseT Ethernet equipment and
`the piece of BaseT Ethernet terminal equipment, the first and second pairs
`physically connect between the piece of BaseT Ethernet terminal equipment and
`the piece of central BaseT Ethernet equipment, the piece of central BaseT
`Ethernet equipment having at least one DC supply, the piece of BaseT Ethernet
`terminal equipment having at least one path to draw different magnitudes of
`current flow from the at least one DC supply through a loop formed over at
`least one of the conductors of the first pair and at least one of the
`conductors of the second pair, the piece of central BaseT Ethernet equipment to
`detect at least two different magnitudes of the current flow through the loop
`and to control the application of at least one electrical condition to at least
`two of the conductors.
`
`73. A BaseT Ethernet system comprising: Ethernet cabling having at least
`first and second individual pairs of conductors used to carry BaseT Ethernet
`communication signals, the at least first and second individual pairs of
`conductors physically connect between a piece of BaseT Ethernet terminal
`equipment and a piece of central network equipment;
`the piece of central
`network equipment having at least one DC supply, the piece of BaseT Ethernet
`terminal equipment having at least one path to draw different magnitudes of
`current flow via the at least one DC supply through a loop formed over at least
`one of the conductors of the first pair of conductors and at least one of the
`conductors of the second pair of conductors, the piece of central network
`equipment to detect at least two different magnitudes of current flow through
`the loop.
`
`146. A BaseT Ethernet system comprising: Ethernet cabling having at least
`first and second pairs of conductors used to carry BaseT Ethernet communication
`signals, the at least first and second pairs of conductors physically connect
`between a piece of BaseT Ethernet terminal equipment and a piece of central
`
`

`

`Application/Control Number: 90/013,802
`
`Page 4
`
`Art Unit: 3992
`
`network equipment, the piece of central network equipment is a BaseT Ethernet hub, the
`piece of central network equipment having at least one DC supply to provide at least
`one DC condition across at least one of the conductors of the first pair of conductors
`and at least one of the conductors of the second pairs of conductors, the piece of
`BaseT Ethernet terminal equipment having at least one path to change impedance
`within a loop formed over the at least one of the conductors of the first pair of
`conductors and the at least one of the conductors of the second pair of conductors by
`changing impedance within the at least one path in response to the at least one DC
`condition across the at least one path.
`
`All independent claims thus recite using a cabling between central BaseT Ethernet
`
`equipment and BaseT Ethernet terminal equipment, where the cabling comprises a first and
`
`second pairs of conductors carrying BaseT Ethernet communication signals. The cabling
`
`comprises loop formed over at least one of the conductors of the first pair and at least one of the
`
`conductors of the second pair.
`
`Claim Interpretation
`
`"BaseT Ethernet" is a term of art in network communications and is interpreted as
`
`
`Baseband (Base) twisted pair (T) "Ethernet" signaling as is consistent with the specification.
`
`See, e.g., col. 5, ll. 20—38 and col. 12, ll. 22—30.
`
`The Cummings Prior Art
`
`The closest applied prior art of record is US. Patent 5,406,260 to Cummings
`
`(“Cummings”), as cited in the Request and applied in the last Office action as a base reference.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 5
`
`Art Unit: 3992
`
`Cummings teaches cabling comprising a first (e.g., 44a, 46a) and second pairs of
`
`conductors (e.g., 44b and 46b) carrying BaseT Ethernet communication signals. See Cummings,
`
`Fig. 2 below:
`
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`
`All pairs 44/46 are transmit pairs internally coupled to an associated personal computer
`
`12 Via one Winding 53 of an internally located isolation transformer 52. Thus, each transmit pair
`
`44/46 (e. g., pair 44a and 46a) forms a loop through each personal computer 12 (e. g., 12a). The
`
`receive pairs are not illustrated in Fig. 2, but utilizes the same approach. Col. 3, ll. 31—52.
`
`
`
`
`
`
`
`
`

`

`Application/Control Number: 90/013,802
`
`Page 6
`
`Art Unit: 3992
`
`The Patent Owner however has provided a declaration by the inventor himself of the
`
`Cumming prior art. See the Declaration of Marshall B. Cummings under 37 CFR 1.132,
`
`executed June 22, 2017, filed in this proceeding June 23, 2017 (hereinafter the "Cummings
`
`Declaration”).
`
`Cummings declares "[t]here is no teaching or suggestion in the '260 Patent [Cummings]
`
`to use a path formed over at least one of the conductors of the first pair of the data signaling pairs
`
`of conductors (or Ethernet cabling) and at least one of the conductors of the second pair of the
`
`data signaling pairs of the conductors as claimed in the '760 Patent." Cummings Declaration, (H
`
`10.
`
`The examiner finds in Declarant's (the inventor of the Cummings prior art) evidence
`
`persuasive as to the teachings of the Cummings prior art. While the Cummings prior art teaches
`
`using a path formed between loops (e.g., between 44a and 46a) in the first pair or another pair
`
`(e.g., between 44b and 46b) as discussed with regard to Fig. 2 above (i.e., an intra—pair loop),
`
`Cummings fails to teach a "loop formed over at least one of the conductors of the first pair and at
`
`least one of the conductors of the second pair" as recited (e.g., between 44a and 44b/46b) (i.e., an
`
`inter—pair loop). See, e.g., independent claims 1, 73 and 146.
`
`The Patent Owner has also presented evidence similar to the declaration evidence
`
`discussed above in a separate Declaration of Albert McGilvra, executed and filed May 10, 2017
`
`

`

`Application/Control Number: 90/013,802
`
`Page 7
`
`Art Unit: 3992
`
`(hereinafter the "McGilvra Declaration”). See ‘J[ 8, 9 and 10. The examiner also finds this
`
`evidence persuasive.
`
`See also the accompanying Patent Owner arguments on page 5 of the Supplemental
`
`Amendment citing to the Requester's Exhibit B associated with related litigation (Report and
`
`Recommendation of Expert Advisor to the Court) (filed with the Request), which characterizes
`
`the Cumming's loop as a "single pair of transmit wires, but not pair consisting of one transmit
`
`and one receive wire. Such a current loop is known as a differential loop." Exhibit B, p. 36.
`
`The Cummings Declarant (the inventor of the Cummings prior art) further states the
`
`above intra—pair loops are important. "The invention of the '260 Patent was predicated on the
`
`industry practice of using the existing field winding 53 of the internally located isolation
`
`transformer 52 in each personal computer 12." Cummings Declaration, (fl 9. Indeed, the
`
`Cummings prior art teaches (col. 3, ll. 31—52):
`
`In accordance with conventional wiring approaches, data communication link 14
`generally includes a plurality of pairs of transmit wires 44 and 46 as well as a plurality of
`pairs of receive wires (not shown) connected to each of personal computers l2a through
`l2d. Each pair of transmit wires 44 and 46 are internally coupled to an associated
`personal computer 12 via one winding 53 of an internally located isolation transformer
`52. Each pair of transmit wires 44 and 46 along with isolation transformer 52 thereby
`form a current loop 50 through the personal computer 12 which is advantageously
`employed in accordance with the approach described herein.
`
`Thus, modifying Cummings such that a loop, comprising one or more transmit (or
`
`receive) pairs that bypass the isolation transformer 52 of each PC, results in adding a second or
`
`

`

`Application/Control Number: 90/013,802
`
`Page 8
`
`Art Unit: 3992
`
`third transformer to the loop that is no longer "internally" located in each PC contrary to the
`
`"conventional wiring approaches" that are "advantageously employed" by Cummings. Such a
`
`substantial structural modification to Cummings would thus render Cummings unsuitable for its
`
`intended purpose —— using conventional wiring approaches that rely on a loop comprising a
`
`single, internal isolation transformer for each PC.
`
`The remaining, applied prior art of record fails to teach or fairly suggest modifying
`
`Cummings in a way that would render Cummings suitable for its intended purpose, as discussed
`
`above. Moreover, the applied prior art fails to even teach a "loop formed over at least one of the
`
`conductors of the first pair and at least one of the conductors of the second pair" as recited, thus
`
`failing to remedy the teachings of Cummings even if Cummings could be modified in such a
`
`manner.
`
`The PCNet Prior Art
`
`Another close, prior art of record is PCNET, as also applied as a base reference in the last
`
`Office action. However, PCNET is completely silent as whether the loops are formed over at
`
`least one of the conductors of the first pair and at least one of the conductors of the second pair
`
`as recited. Moreover, PCNET discloses an Ethernet controller using an RJ—45 interface (one
`
`transmit pair and one receive pair) that includes auto—negotiation with Fast Line Pulses, where
`
`the "two link partners send information .
`
`.
`
`. between themselves." Page 2—3, (H 2.9 and page 4—2, (H
`
`4.3. Thus, Fast Line Pulses cannot be transmitted through a loop formed over inter—pair
`
`conductors because a transmitting piece of Ethernet equipment (one link partner) is only
`
`

`

`Application/Control Number: 90/013,802
`
`Page 9
`
`Art Unit: 3992
`
`connected during transmission (e. g., auto—negotiation) via a single pair of Ethernet conductors
`
`(RJ—45 interface) to the receiving piece of Ethernet equipment (second link partner). See also the
`
`McGilvra Declaration, (fl ll.
`
`Thus, modifying PCNET such that a loop (e. g., a RJ—45 transmit pair or receive pair)
`
`comprises one or more transmit (or receive) pairs would render a major feature of PCNET (auto—
`
`negotiation) inoperable and thus PCNET unsuitable for one of its primary intended purposes.
`
`The remaining, applied prior art of record fails to teach or fairly suggest modifying
`
`PCNET in a way that would render PCNET suitable for its intended purpose, as discussed above.
`
`Moreover, the applied prior art fails to even teach a "loop formed over at least one of the
`
`conductors of the first pair and at least one of the conductors of the second pair" as recited, thus
`
`failing to remedy the teachings of PCNET even if PCNET could be modified in such a manner.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 10
`
`Art Unit: 3992
`
`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)). Extension of time in ex parte
`
`reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`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
`
`Austermann patent 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 §§ 2207, 2282
`
`and 2286.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`as follows:
`
`

`

`Application/Control Number: 90/013,802
`
`Page 11
`
`Art Unit: 3992
`
`By EFS:
`
`Registered users may submit Via the electronic filing system EFS —Web, at
`.12i112.s;{leisz.2132i?t.9.iggizzieii..1.91m319.9%lids—registered.
`
`By Mail to:
`
`Mail Stop Ex Part6 Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 223 13— 1450
`
`By FAX to:
`
`(571) 273—9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`For EFS—Web transmission, 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 if (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.
`
`Any inquiry concerning this communication should be directed to Roland Foster at
`telephone number 571—272—7538.
`
`Signed:
`/R0land G. Foster/
`
`Roland G. Foster
`
`Central Reexamination Unit, Primary Examiner
`Electrical Art Unit 3992
`
`(571) 272-7538
`
`Conferee:
`
`/Scott L.WeaVer/
`
`Primary Examiner, Art Unit 3992
`
`Conferee:
`
`/MICHAEL FUELLING/
`
`SuperVisory Patent Examiner, Art Unit 3992
`
`