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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
`
`
`
`
`
`90/013,802
`
`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
`
`02/ 10/2017
`
`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. 90/013 802.
`
`PATENT NO. 8902760.
`
`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)).
`
`/Roland G. Foster/
`
`Primary Examiner
`
`Art Unit: 3992
`
`PTOL-465 (Rev.O7-O4)
`
`

`

`Office Action in Ex Parte Reexamination
`
`Control No.
`90/013,802
`
`Examiner
`ROLAND FOSTER
`
`Patent Under Reexamination
`8902760
`
`Art Unit
`
`3992
`
`NA (First Inventor to
`File) Status
`No
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`a.IZ Responsive to the communication(s) filed on August 29I 2016.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`b. I] This action is made FINAL.
`
`c. I] A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part |
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. El Notice of References Cited by Examiner, PTO-892.
`
`3. El
`
`Interview Summary, PTO-474.
`
`2.
`
`IX Information Disclosure Statement, PTO/SB/08.
`
`4. El
`
`.
`
`Part II
`
`SUMMARY OF ACTION
`
`Claims L19 are subject to reexamination.
`
`Claims _ are not subject to reexamination.
`
`Claims _ have been canceled in the present reexamination proceeding.
`
`Claims
`
`are patentable and/or confirmed.
`
`Claims 1-219 are rejected.
`
`Claims
`
`are objected to.
`
`The drawings, filed on
`
`are acceptable.
`
`[I The proposed drawing correction, filed on
`
`has been (7a) El approved (7b)|:| disapproved.
`
`El Acknowledgment is made of the priority claim under 35 U.S.C. § 119( )-(d) or (f).
`
`a) [I All
`
`b) I] Some* c) I] None
`
`of the certified copies have
`
`1a.
`
`1b.
`
`2.
`
`3 4 5
`
`6 7 8
`
`.
`
`1 [I been received.
`
`2 [I not been received.
`
`3 [I been filed in Application No.
`
`4 [I been filed in reexamination Control No.
`
`
`
`5 [I been received by the International Bureau in PCT application No.
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9. I] Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under EX parte Quayle, 1935 CD.
`11, 453 O.G. 213.
`
`10. El Other:
`
`cc: Recuester (if third nart
`US. Patent and Trademark Office
`
`recuester)
`
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20170205
`
`

`

`Application/Control Number: 90/013,802
`
`Page 2
`
`Art Unit: 3992
`
`Introduction
`
`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, filed August 29, 2016 (the "Request"), as to claims 1—219 of United States
`
`Patent No. 8,902,760 B2 (the “Austermann” patent). An Office action on the merits is set forth
`
`below.
`
`Issues Raised in the Request
`
`In said Order, the following printed publication formed the basis for prior claim
`
`rejections, which are repeated in this Office action. Pages 19 and 20.
`
`US. Patent 5,406,260 to Cummings et a1. (”Cummings").
`
`IEEE 802.3i—1990.
`
`Federal Standard 1037C (August 7, 1996) (”Federal Standard 1037C").
`
`US. Patent 5,148,144 to Sutter1in et a1. (”Sutter1in").
`
`US. patent 4,551,671 to Annunziata et a1. (”Annunziata").
`
`RFC 2284.
`
`RFC 1661.
`
`US. Patent 4,173,714 to Bloch et a1. ("Bloch").
`
`US. Patent 3,803,432 to Libby.
`
`US. Patent 5,034,723 to Maman.
`
`AM79C97 PCnetTM—FAST Hardware User's Manual (July 1996) (”PCnet").
`
`

`

`Application/Control Number: 90/013,802
`
`Page 3
`
`Art Unit: 3992
`
`As explained in said Order, the following independent claims are representative and are
`
`reproduced below, where those limitation found important to patentability are emphasized.
`
`Clam l. 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.
`
`Claim 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.
`
`Claim 146. A BaseT Ethernet system comprising:
`
`

`

`Application/Control Number: 90/013,802
`
`Page 4
`
`Art Unit: 3992
`
`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 network equipment, 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.
`
`Rejections Based on Cummings
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35 USC.
`
`102 and 103 (or as subject to pre—AIA 35 USC. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
`
`The following is a quotation of pre—AIA 35 USC. 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, 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.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre—AIA 35 USC. 103(a), the examiner presumes that the subject matter of the
`
`various claims was commonly owned at the time any inventions covered therein were made
`
`absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and invention dates of each claim that was not commonly owned at the
`
`

`

`Application/Control Number: 90/013,802
`
`Page 5
`
`Art Unit: 3992
`
`time a later invention was made in order for the examiner to consider the applicability of pre—
`
`AIA 35 U.S.C. 103(c) and potential pre—AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre—AIA
`
`35 U.S.C. 103(a).
`
`Claims 1-25, 27-42, 44, 46-48, 50, 52-56, 58-59, 62-117, 119,121-123, 125, 127-131,
`
`133-134, 137-186, 188, 190-192, 194, 196-198, 200, 202-203, and 206-219 are rejected under
`
`pre—AIA 35 U.S.C. 103(a) as being unpatentable over Cummings in view of IEEE 802.3i—1990.
`
`Claims 14-15, 85-86, and 159-160 are rejected under pre—AIA 35 U.S.C. 103(a) as being
`
`unpatentable over the prior art applied to the parent claims above, and further in view of Federal
`
`Standard 1037C.
`
`Claims 25-26, 62, 89-90, 98-99, 146-186, 188, 190-192, 194, 196-198, 200, 202-203,
`
`and 206-219 are rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentable over the prior
`
`art applied to the parent claims above, and further in view of Sutterlin.
`
`Claims 36, 61, 111, 136, 180, and 205 are rejected under pre—AIA 35 U.S.C. 103(a) as
`
`being unpatentable over the prior art applied to the parent claims above, and further in view of
`
`Annunziata.
`
`Claims 43, 45, 49, 51, 55, 57, 118, 120, 124, 126, 130, 132, 187, 189, 193, 195, 199, and
`
`201 are rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentable over the parent claims
`
`above, and further in view of RFC 2284.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 6
`
`Art Unit: 3992
`
`Claims 43, 45, 49, 51, 55, 57, 118, 120, 124, 126, 130, 132, 187, 189, 193, 195, 199, and
`
`201 are rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentable over the prior art applied
`
`to the parent claims above, and further in view of RFC 1661.
`
`Claims 30, 60, 105, 135, 174, and 204 are rejected under pre—AIA 35 U.S.C. 103(a) as
`
`being unpatentable over the prior art applied to the parent claims above, and further in view of
`
`Bloch.
`
`Claims 32, 58, 62, 107, 133, 136-137, 146-186, 188, 190-192, 194, 196-198, 200, 202-
`
`203, and 206-219 are rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentable over the
`
`prior art applied to the parent claims above, and further in view of Libby.
`
`Overview
`
`Cummings teaches technological feature important to the patentability of the subject
`
`independent claims (as discussed in said Order). The specification of Austermann, for which
`
`reexamination is requested, characterizes the Cummings teachings as follows (col. 2, 11. 16—36):
`
`One method that attempted to control the hardware theft aspect of TCO is disclosed in US. Pat.
`No. 5,406,260 issued to Cummings et. al, (hereby incorporated by reference) which discusses a
`means of detecting the unauthorized removal of a networked device by injecting a low current
`power signal into each existing communications link. A sensor monitors the returning current
`flow and can thereby detect a removal of the equipment. This method provides a means to
`monitor the connection status of any networked electronic device thus providing an effective theft
`detection/deterrent system.
`
`It would, however, be desirable to provide a further means in which a networked device may also
`be identified by a unique identification number using the existing network wiring or cabling as a
`means of communicating this information back to a central location. More particularly, it is
`desirable to provide a means for identification that feasibly employs the same cable (and, if
`desired, the same wires in the cable) that normally carries high frequency data communications in
`
`

`

`Application/Control Number: 90/013,802
`
`Page 7
`
`Art Unit: 3992
`
`In addition, it is desirable to provide an identification system that is easily
`an existing network.
`and inexpensively implemented in an existing network system.
`
`Thus, as admitted by the patent owner, Cummings teaches the broadly claimed
`
`technological features important to patentability, namely detecting at least two different
`
`magnitudes of current flow through the loop as a normal circuit (normal current) and an open
`
`circuit (zero current) (network equipment removed). See also the Request, pp. 8 and 9 and the
`
`Chrimar v. Foundry Report and Recommendation re Summary Judgment ("Expert Declaration")
`
`(attached to the Request as Exhibit B).
`
`Cumming also teaches the 10BaseT wiring includes a first and second pairs of conductors
`
`(col. 3, 11. 35-50).
`
`Finally, Cummings teaches a piece of BaseT Ethernet terminal equipment (Fig. 3,
`
`computer 12) having at least one path to draw different magnitudes of current flow (as discussed
`
`above) via the at least one DC supply through a loop (Fig. 2, DC power supply 26 and col. 3, 11.
`
`53—62).
`
`Claim 146 additionally recites changing impedance within the at least one path in
`
`response to the at least one DC condition across the at least one path, which is another feature
`
`determined to be important to patentability, as discussed above. However, via operation of
`
`Ohm's law a normal circuit (discussed above) would exhibit normal impedance while an open
`
`circuit (discussed above) would exhibit high impedance.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 8
`
`Art Unit: 3992
`
`Although the recited term "a piece of central BaseT Ethernet equipment" can be broadly
`
`and reasonably interpreted to mean any BaseT Ethernet equipment located centrally with respect
`
`to at least a plurality of other devices, IEEE 802.3i—l990 is relied upon to explicitly teach the
`
`standard components of an IEEE 802.3 lOBaseT (twisted pair) Ethernet system, including a
`
`central hub with a lOBase—T function, such as a Media Access Unit ("MAU), conductor pairs
`
`carrying BaseT Ethernet signals, and BaseT terminal equipment. See the "Overview" section.
`
`See also the Request, pp. 25 and 26. Moreover, IEEE 802.3i—l990 teaches that it is the central
`
`BaseT Ethernet equipment that has the recited "at least one DC supply." See Section 1431.1.
`
`See also the Request, pp. 25 and 26.
`
`Incorporation by Reference
`
`Thus, the third party requester's proposed rejections as set forth in pages 46—253 of the
`
`Request, which apply the above stated prior—art rejections in a detailed manner to each and every
`
`limitation of the subject claims. The proposed rejections are thus adopted and incorporated by
`
`reference.
`
`The examiner agrees with the third party requester's rationales for combining the
`
`references, which are categorized first in terms of the Graham inquiries (pp. 43 and 44) and KSR
`
`(pp. 44—46).
`
`Regarding the Graham inquiries, the examiner notes the requester's discussion thereof
`
`raises specific teachings—suggestions—motivations to combine the references. Specifically, it
`
`

`

`Application/Control Number: 90/013,802
`
`Page 9
`
`Art Unit: 3992
`
`would have been obvious to one of ordinary skill in the art to combine Cummings with IEEE
`
`802.i—l99 in order to conform the Ethernet teachings of Cummings to the Ethernet standard for
`
`twisted—pair wiring (i.e., IEEE 892.3i—l990). See p. 43 of the Request. Regarding Federal
`
`Standard 1037C, it would have been obvious to add the teachings of this reference in order to
`
`increase the efficiency of data transmission by using shared medium to transmit signals of
`
`different frequencies. Id. Regarding Sutterlin, it would have been obvious to add the teachings
`
`of this reference because Sutterlin explains that the open and closed circuits disclosed by
`
`Cummings would have exhibited high and low impedances respectively. Id. Regarding
`
`Annuniziata, it would have been obvious to add the teachings of this reference because the use of
`
`Zener diodes adds the flexibility to test multi—conductor cable by providing different sets of
`
`breakdown voltages and thus different meter indications. Annuniziata, col. 1, ll. 34—57.
`
`Regarding RFC 2284 and RFC 1161, it would have been obvious to add the teachings of these
`
`references because the addition of an authentication protocol would have increased the versatility
`
`and flexibility of the theft—detection system by allowing unblocking (authorized) and blocking
`
`(unauthorized) signals when a cable fault is detected. Id. Regarding Bloch and Libby, it would
`
`have been obvious to add the teachings of these reference because they are directed to specific
`
`electrical components that would have advantageously implemented the theft—monitoring system
`
`(e. g., the isolation transformer of Bloch would have better separated the electrical characteristics
`
`of the monitoring circuits and the monitored circuits) (e. g., a high—impedance voltage controlled
`
`switch used to detect current would have been more efficient by minimizing current loss through
`
`a detection circuit). Id.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 10
`
`Art Unit: 3992
`
`Rejections Based on PCNet and Maman
`
`Claims 1-13, 16-25, 27-35, 37-42, 44, 46-48, 50, 52-56, 58-59, 62-84, 87-98, 100-110,
`
`112-117, 119, 121-123, 125, 127-131, 133-134, 137-158, 161-179, 181-186, 188, 190-192, 194,
`
`196-198, 200, 202-203, and 206-219 are rejected under pre—AIA 35 U.S.C. 103(a) as being
`
`unpatentab1e over PCnet in view of IEEE 802.3i—1990 and Maman.
`
`Claims 14-15, 85-86, and 159-160 are rejected under pre—AIA 35 U.S.C. 103(a) as being
`
`unpatentab1e over the prior art applied to the parent claims above, and further in view of Federal
`
`Standard 1037C.
`
`Claims 25-26, 30, 89-90, 98-99, 105, 146-158, 161-179, 181-186, 188, 190-192, 194,
`
`196-198, 200, 202-203, and 206-219 are rejected under pre—AIA 35 U.S.C. 103(a) as being
`
`unpatentab1e over the prior art applied to the parent claims above, and further in view of
`
`Sutterlin.
`
`Claims 32, 58, 58, 62, 107, 133, 136-137, 146-186, 188, 190-192, 194, 196-198, 200,
`
`202-203, and 206-219 are rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentab1e over
`
`the prior art applied to the parent claims above, and further in view of Libby.
`
`Claims 36, 61, 111, 136, 180, and 205 are rejected under pre—AIA 35 U.S.C. 103(a) as
`
`being unpatentab1e over the prior art applied to the parent claims above, and further in view of
`
`Annunziata.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 11
`
`Art Unit: 3992
`
`Claims 43, 45, 49, 51, 55, 57, 118, 120, 124, 126, 130, and 132 are rejected under pre—
`
`AIA 35 U.S.C. 103(a) as being unpatentable over the prior art applied to the parent claims above,
`
`and further in view of RFC 2284.
`
`Claims 43, 45, 49, 51, 55, 57, 118, 120, 124, 126, 130, and 132 are rejected under pre—
`
`AIA 35 U.S.C. 103(a) as being unpatentable over the prior art applied to the parent claims above,
`
`and further in view of RFC 1661.
`
`Claims 60, 135, and 204 are rejected under pre—AIA 35 U.S.C. 103(a) as being
`
`unpatentable over the prior art applied to the parent claims above, and further in view of Bloch.
`
`Overview
`
`The combination of PCnet and Maman teaches technological feature important to the
`
`patentability of the subject claims (as discussed in said Order).
`
`For example, PCnet teaches detecting at least two different magnitudes of current flow
`
`through the loop. Although PCnet does not explain if and how the link pass and link fail signals
`
`are related to a current or to a change in impedance, the Examiner agrees with the Requester that
`
`there is a substantial question as to whether removing the link entirely ("disconnecting one of the
`
`RJ—45 connections") would result in a link fail indication. Request at 53, 54. In such as case, the
`
`two different magnitude of current flows through the loop would been detected, specifically a
`
`normal circuit (normal current) and an open circuit (zero current) (RJ—45 cable removed resulting
`
`in link fail). Nonetheless, Mamet teaches of networking equipment that uses an explicit link test
`
`to distinguish a first and second impedance values (and thus corresponding current magnitudes
`
`

`

`Application/Control Number: 90/013,802
`
`Page 12
`
`Art Unit: 3992
`
`via Ohm's law as previously discussed in regard to PCnet) in order to protect electrical
`
`equipment from theft. Mamet, col. 2, ll. 3—5 and 31—45. See also the Request, p. 54. Thus, the
`
`combination of PCnet and Mamet teaches this technological feature, which is important to the
`
`patentability of the claims.
`
`PCnet clearly teaches the lOBaseT wiring includes a first and second pairs of conductors.
`
`Table 4—2.
`
`Finally, PCnet teaches a piece of BaseT Ethernet terminal equipment (Fig. 3—1, DTE)
`
`having at least one path to draw different magnitudes of current flow (as discussed above).
`
`Incorporation by Reference
`
`Thus, the third party requester's proposed rejections as set forth in pages 46—253 of the
`
`Request, which apply the above stated prior—art rejections in a detailed manner to each and every
`
`limitation of the subject claims. The proposed rejections are thus adopted and incorporated by
`
`reference.
`
`The examiner agrees with the third party requester's rationales for combining the
`
`references, which are categorized first in terms of the Graham inquiries (pp. 43 and 44) and KSR
`
`(pp. 44—46).
`
`Regarding the Graham inquiries, the examiner notes the requester's discussion thereof
`
`raises specific teachings—suggestions—motivations to combine the references. Specifically, it
`
`

`

`Application/Control Number: 90/013,802
`
`Page 13
`
`Art Unit: 3992
`
`would have been obvious to one of ordinary skill in the art to combine PCnet with Maman
`
`because Maman teaches of networking equipment that uses an explicit link test to distinguish a
`
`first and second impedance values (and thus providing the corresponding current magnitudes via
`
`Ohm's law as previously discussed in regard to PCnet) in order to protect electrical equipment
`
`from theft. The teaching—suggestion—motivation for adding the remaining secondary references is
`
`the same as those discussed above in regard to the Cummings based rejections.
`
`

`

`Application/Control Number: 90/013,802
`
`Page 14
`
`Art Unit: 3992
`
`Conclusion
`
`In order to ensure full consideration of any amendments, affidavits or declarations, or
`
`other documents as evidence of patentability, such documents must be submitted in response to
`
`this Office action. Submissions after the next Office action, which is intended to be a final
`
`action, will be governed by the requirements of 37 CFR 1.116, after final rejection and 37 CFR
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`41.33 after appeal, which will be strictly enforced.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
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`because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a
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`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
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`“will be conducted with special dispatch” (37 CFR l.550(a)). Extension of time in ex parte
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`reexamination proceedings are provided for in 37 CFR 1.550(c).
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`The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to
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`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
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`Austermann patent throughout the course of this reexamination proceeding. The third party
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`requester is also reminded of the ability to similarly apprise the Office of any such activity or
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`proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
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`and 2286.
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`

`

`Application/Control Number: 90/013,802
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`Page 15
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`Art Unit: 3992
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`All correspondence relating to this ex parte reexamination proceeding should be directed
`as follows:
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`By EFS:
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`Registered users may submit Via the electronic filing system EFS -Web, at
`bat s://efs.us toxvow'efile/m ’ orLal/efs-re istered
`
`
`By Mail to:
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`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`PO. Box 1450
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`Alexandria, VA 22313-1450
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`By FAX to:
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`(571) 273-9900
`Central Reexamination Unit
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`By hand to:
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`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`For EFS—Web transmission, 37 CFR l.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.
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`Any inquiry concerning this communication should be directed to Roland Poster at
`telephone number 571—272—7538.
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`Signed:
`/R0land G. Foster/
`
`Roland G. Foster
`
`Primary Examiner, Art Unit 3992
`Central Reexamination Unit, Primary Examiner
`Electrical Art Unit 3992
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`(571) 272-7538
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`Conferee:
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`/S. L. W. /
`
`Primary Examiner, Art Unit 3992
`/M. F./
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`Supervisory Patent Examiner, Art Unit 3992
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`