`
`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
`
`
`
`
`
`90/013,988
`
`07/17/2017
`
`7552124
`
`143498.00008
`
`2807
`
`Pepper Hamilton LLP/Boston
`Attn: Boston IP Docketing Department
`125 High Street
`19th Floor
`
`Boston, MA 02110-2736
`
`RIMELLa SAMUEL G
`
`3992
`
`MAIL DATE
`
`08/10/2017
`
`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)
`
`

`

` TJNI TED S TATES PATEN T AND TRADEWK QFFI CE
`
`Commissioner for Patent;
`United States Patent and Trademark Office
`P.O. EMMSU
`Alexandria, VA 22313-1450
`vuwmusptogov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Pepper Hamilton LLP/Boston
`Attn: Boston lP Docketing Department
`125 High Street
`19th Floor
`Boston, MA 02110-2736
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL FORM
`
`REEXAMINATION CONTROL NO. 90/013 988.
`
`PATENT NO. 7552124.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`Sam Rimell
`
`Primary Examiner
`
`PTOL-465 (Rev.O7-O4)
`
`

`

`Art Unit: 3992
`
`

`

`Application/Control Number: 90/013,988
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`Page 2
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`Art Unit: 3992
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`DECISION ON RE! QUEST FOR EX PARTE REEXAMINATION
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`A request for reexamination affecting claims 6—10 of US Patent 7,552,124 has been
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`received and considered. A substantial new question of patentability has been raised with respect
`
`to claims 6—10 by the request. Detailed rationale for this finding is set forth in this action.
`
`References Asserted by Reguester as Raising
`Substantial New Questions of Patentability
`
`° US. Patent 5,937,383 to Ittycheriah et al, published August 10, 1999, filed June 4,
`1997, priority claim to February 2, 1996.
`
`
`° US. Patent 7,003,463 to Maes et al published February 21, 2006, filed June 25, 2001,
`priority claim to January 27, 1999.
`
`° US. Patent 7,027,975 to Pazandak et al, published April 11, 2006, filed August 8, 2000.
`
`
`° US Patent 7,085,708 to Manson, published August 1, 2006, filed June 18, 2001, priority
`claim to September 23, 2000.
`
`° US Pre—Grant Publication 2002/0072918 to White et al, published June 13, 2002,
`priority claim to April 12, 1999.
`
`° US Pre—Grant Publication 2003/0046061 to Preston et al, published March 6, 2003,
`Priority claim to January 30, 2001.
`
`Availability of Prior Art Cited in This Proceeding
`
`The availability of the prior art under 35 USC 102 and 35 USC 103 is reviewed as one
`
`part of the analysis of whether a given reference would be important to a reasonable examiner
`
`(MPEP 2242: “A prior art patent or printed publication raises a substantial question of
`
`patentability where there is a substantial likelihood that a reasonable examiner would consider
`
`the prior art patent or printed publication important in deciding whether or not the claim is
`
`patentable”).
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`

`

`Application/Control Number: 90/013,988
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`Page 3
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`Art Unit: 3992
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`Summary of Prosecution History for US Patent 7552,124
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`The application was filed on 6/17/2004. Claims 1—20 were the original claims.
`
`The USPTO issued a non—final office action on September 22, 2006. Claims 1—20 were
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`rejected under 35 USC 102(e) as being anticipated by Pazandak et al (US. Patent 7,027,975,
`
`published April 11, 2006, filed August 8, 2000).
`
`Applicant submitted a response with remarks and amendments on March 16, 2007.
`
`Claims 2—3 and 12—13 were cancelled.
`
`The USPTO issued a non—final office action on June 4, 2007. Claims 1, 4—11 and 14—20
`
`were rejected under 35 USC 102(e) as being anticipated by Pazandak et al.
`
`Applicant submitted an RCE response with remarks and amendments on November 29,
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`2007. Claims 4—6 and 14—16 were further cancelled.
`
`The USPTO issued a Notice of Allowance on February 20, 2009. Claims 1, 7—11 and 17—
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`20 were indicated as allowed. The allowed claims 11 and 17—20 were re—numbered as claims 6—
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`10 in the issued patent.
`
`Claim 11 (re—numbered as issued claim 6) was amended as follows prior to allowance:
`
`A system for programming a mobile communication device based on a high-level
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`code comprising operative language, the system comprising:
`
`means for receiving a high-level code comprising one or more keywords, wherein
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`the high-level code is provided by a user of a mobile communication device to control the
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`operation of the mobile communication device Without having to select from menu items
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`provided by an operating system running on the mobile communication device;
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`

`

`Application/Control Number: 90/013,988
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`Page 4
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`Art Unit: 3992
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`means for parsing the high-level code for the keywords to recognize the operative
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`language associated with controlling one or more operations of the mobile communication
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`device;
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`means for determining at
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`least one operation associated with the operative
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`language;
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`means for determining whether high-level code comprises keywords defining one or
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`more relationships and conditions corresponding to the operative language; and
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`means for producing an executable code that can be executed by a microcontroller
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`of the mobile communication device to perform the respective operation associated with
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`the operative language,
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`means for determining level of complexity and implementation of the high-level
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`code;
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`means for designation an application software to process the high-level code
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`wherein the high-level code comprises at least one sentence formatted in accordance
`
`with a first context,
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`wherein the high-level code is processed by a natural language compiler comprised
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`of one or more modules executed on one or more independent computing systems,
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`depending on the level of complexity and the implementation of the high-level code,
`
`wherein application software is executed on a distributed environment comprising
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`the mobile communication device and a network server connected to the mobile
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`communication device, and the application software performs
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`the parsing and
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`determining steps depending on implementation, and
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`

`

`Application/Control Number: 90/013,988
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`Page 5
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`Art Unit: 3992
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`wherein when the high-level code comprises a complex structure the parsing and
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`determining steps are performed by application software executed on a network server
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`connected to the mobile communication device and when the high-level code comprises a
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`less complex structure the parsing and determining steps are performed by application
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`software executed on the mobile communication device.
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` l
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`.
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`ll
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`l
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`f
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`l
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`.
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`.
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`Related Proceedings
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`The USPTO is aware of the following proceedings related to the present reexamination
`
`request:
`
`Date
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`01669
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`Instituted
`
`
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`-=—-=
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`00898
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`Cor -
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`Claims Reviewed in this Decision
`
`35 USC §302 states:
`
`A {”3}? person at any time mayfiie a request fin“ re:examination by the: Office Qfmiy (faint of
`
`a patent on lite basis of any prior a1": (filed zmder the provisions (Pix \. ’f'ize request must
`
`

`

`Application/Control Number: 90/013,988
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`Page 6
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`Art Unit: 3992
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`he in writing and must he acti-ontgizanied 1'9}; payment ofa reexamination fee es‘t'aithlisheazi by the
`
`Director pursuant to the provisions of \\
`
`
`
`. The request must setfoi‘tlz the pertinent-)7 and
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`manner of applying cited prior art to every claim for which reexamination is requested. Unless
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`the requesting person is the matter of'the patent, the Birector promptly will send a copy of the
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`request to the owner of'tecottl ofthe patent.
`
`US Patent 7,552,124 was issued with claims 1—10. The request for reexamination seeks
`
`reexamination of claims 6—12 (claims 11—12 not of record in US Patent 7,552,124). Pursuant to
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`the provisions of the statute, this order will determine whether to initiate reexamination of claims
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`6—10, which are of record in original US Patent 7,552,124.
`
`
`Anal sis of Asserted New uestions 0f Patentabilit
`
`Issue #1: Do Maes et al and Preston et al raise a substantial new question of patentability
`
`with respect to claims 6— 10?
`
`For the group of claims 6—10, claim 6 is the independent claim.
`
`The reference to Preston et al in FIG 3a teaches a code generator 103. Paragraph 00612,
`
`states: “The code generator 103 translates the conjunctions into logical operators, and inserts said
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`operators, together with the retrieved code, into a predetermined template, according to a set of
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`pre—determined rules.’
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`This generally corresponds to the amended limitation in claim 6,
`
`3
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`“wherein the high level code is processed by a natural language compiler".
`
`Preston et al in FIG 3a teaches that the code generator 103 communicates with a code
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`database 200, linguistic store 103, comparing means 305 and query analyzer 301. This generally
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`corresponds to the amended limitation in claim 6, “natural language compiler comprised of one
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`or more modules executed on one or more independent computing systems”.
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`

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`Application/Control Number: 90/013,988
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`Page 7
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`Art Unit: 3992
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`Preston et al in FIG 1B teaches a generator system 100 in communication with a client
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`101. The generator 100 communicates with the Internet 110, and distributed ISP stores 112.
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`Paragraph 0055 fiarther states that the client device can be a “mobile phone”. These features
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`generally correspond to the amended limitation in claim 6, “wherein application software is
`
`executed on a distributed environment comprising the mobile communication device and a
`
`network server connected to the mobile communication device”.
`
`Preston et al at FIG 5 refer to the fianctional steps “extract semantic pattern and logical
`
`structure of the input statement” (step S52) and “extract semantic content of the input
`
`statement”. These features generally correspond to the amended limitation in claim 6, “wherein
`
`when the high-level code comprises a complex structure the parsing and determining steps are
`
`performed by application software executed on a network server connected to the mobile
`
`communication device”.
`
`Maes et al in FIG 5 teaches a system for providing a conversation service (see abstract)
`
`which includes a client 402, browser server 404, presentation server 400 and engine server 401.
`
`These features generally correspond to the amended limitation in claim 6, “wherein application
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`software is executed on a distributed environment comprising the mobile communication device
`
`and a network server connected to the mobile communication device”.
`
`There is a substantial likelihood that a reasonable examiner would consider the teachings
`
`of Preston et al and Maes et al important in deciding the patentability of claims 6—10 in US Patent
`
`7,552,124. Preston et al and Maes et al are not of record in the file proceedings of US Patent
`
`7,552,124 and are not cumulative to the art of record in the original file. The claims were not
`
`subject to a final holding of invalidity by a federal court. Accordingly, Preston et al and Maes et
`
`

`

`Application/Control Number: 90/013,988
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`Page 8
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`Art Unit: 3992
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`a_l raise a substantial new question of patentability with respect
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`to claim 6. Claims 7—10
`
`
`incorporate by reference the subject matter of claim 6, thus, Preston et al and Maes et al raise a
`
`substantial new question of patentability with respect to claims 7—10.
`
`Issue #2: Do Maes et al, Ittycheriah et al and Preston et al raise a substantial new
`
`question of patentability with respect to claims 6—10?
`
`Issue #1 established that Preston et al and Maes et al raise a substantial new question of
`
`patentability with respect to claims 6—10. Ittycheriah et al provides further teachings that are in
`
`
`addition to those already recited by Preston et al and Maes et al and which established a
`
`substantial new question of patentability. Accordingly, the combination of Maes et al, Ittycheriah
`
`et al and Preston et al raise a substantial new question of patentability with respect to claims 6—
`
`10.
`
`
`Issue #3: Do Pazandak et al, White et al and Manson raise a substantial new question of
`
`patentability with respect to claims 6— 10?
`
`For the group of claims 6—10, claim 6 is the independent claim.
`
`The reference to Pazandak et al was cited of record and applied as prior art in prosecution
`
`history of US Patent 7,552,124. Specifically, Pazandak et al was cited as prior art under 35 USC
`
`102(e) in the office actions of September 22, 2006 and June 4, 2007. The reference was not
`
`applied in combination with other references.
`
`MPEP 2258.01 states:
`
`“For a reexamination that was ordered on or after November 2, 12002 (the date of
`
`enactment of Public Law 307-273; see Section 13105. of the Patent and "llademark Office
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`Authorization Act of 2002), reliance solely on old art (as the basis for a rejection) does not
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`

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`Application/Control Number: 90/013,988
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`Page 9
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`Art Unit: 3992
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`necessarily preclude the existence of a substantial new question of patentabliity (SNQ) that is
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`based exclusively on that old art. Determinatiens on whether a SNQ exists in such an instance
`
`shall be based upon a fact—specific inquiry done on u ease—by—euse basis. For example, a SNQ
`
`may be based soler on old art wI'tere the oId art is being presetued Viewed in a new liglu, or m a
`
`different way. as compared with its use in the earlier concluded exan’;iuation(s),
`
`in View of a
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`material new argument or interpretation presented in the request.”
`
`In the case of issue #3 the requester is not propesing Pazandak et al be considered alone,
`
`but is instead proposing this reference as part of a combination with White et al and Manson. In
`
`light of the combination of proposed teachings, the reference to Pazandak et al is being proposed
`
`for consideration in a different way than was considered by the Examiner during the prosecution
`"III
`history. In accordance with l’uine Law l07—2 3 at Seetion 13105. Pazandak et al
`
`is not
`
`prohibited from further consideration in this reexamination request.
`
`Pazandak et al at col. 12, lines 43—51 state: “The thin client 302 displays various choices
`
`to the end—user. ...The end user selects one of the menu choices.” This generally corresponds to
`
`the amended limitation in claim 6, “means for designation of an application software to process
`
`high level code”.
`
`Pazandak et al at lines 27—30 states: “In NL menu, translation fragments are associated
`
`with lexical elements and with experts. Grammar rules provide templates for combining
`
`translation fragments.” This generally corresponds to the amended limitation in claim 6,
`
`“wherein the high level code is processed by a natural language compiler”.
`
`Pazandak et al at FIG 5 illustrates a network architecture with a thin client 502, interfaces
`
`304 and 312, command intermediary 314 and parser/server system 504. Col. 37, line 66, further
`
`

`

`Application/Control Number: 90/013,988
`
`Page 10
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`Art Unit: 3992
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`refers to "mobile agents". These features generally correspond to the amended limitation in
`
`claim 6, “wherein application software is executed on a distributed environment comprising the
`
`mobile communication device and a network server connected to the mobile communication
`
`device”.
`
`Pazandak et al at FIG 5 illustrates a network architecture with a thin client 502, interfaces
`
`304 and 312, command intermediary 314 and parser/server system 504. Col. 37, line 66, further
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`refers to "mobile agents". Col. 8, lines 56—60 recites: “The parser 310 of the implementation is a
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`program or other sequence of steps or logical operations that receives input in the form of
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`sequential source program instructions, interactive online commands, markup tags, or some other
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`defined interface and breaks them into parts”. These features generally correspond to the
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`amended limitation in claim 6, “wherein when the high-level code comprises a complex structure
`
`the parsing and determining steps are performed by application software executed on a network
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`server connected to the mobile communication device”.
`
`White et al at paragraph 106 states: “Furthermore, at step 204, speech recognition engine
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`70 of VUI 62 compares the command, instruction, direction, or request specified in the input
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`against grammars which are contained in grammar component 74. These grammars may
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`specify certain words, phrases, and/or sentences which are to be recognized if spoken by a user.
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`Alternatively, speech recognition engine 70 may compare the speech input against one or more
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`acoustic models contained in acoustic model component 73.” These features generally
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`correspond to the amended limitation in claim 6, “means for determining level of complexity
`
`and implementation of the high-level code”.
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`

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`Application/Control Number: 90/013,988
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`Page 11
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`Art Unit: 3992
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`Manson at col. 3, lines 15—22 state: “Natural language text input is entered by the user
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`(2.0) into the internal system (2.1) by means of a text processing module (2.1.1) which parses
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`the text. The output of the text processing module comprises a parsed sequence of pre—
`
`expressions which is entered into the syntactic processing module (2.1.2) which provides
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`syntactic type information, establishes proper syntactic dependencies”. These features generally
`
`correspond to the amended limitation in claim 6, “wherein when the high-level code comprises
`
`a complex structure the parsing and determining steps are performed by application software”.
`
`There is a substantial likelihood that a reasonable examiner would consider the teachings
`
`
`of Pazandak et al, White et al and Manson important in deciding the patentability of claims 6—10
`
`in US Patent 7,552,124. Pazandak et al is being proposed for consideration in a different way
`
`than was considered by the Examiner during the prosecution history. In accordance with Public
`
`La w 107—273 at Section 13105, Pazandak et al is not prohibited from further consideration in this
`
`
`reexamination request. White et al and Manson are not of record in the file proceedings of US
`
`Patent 7,552,124 and are not cumulative to the art of record in the original file. The claims were
`
`
`not subject to a final holding of invalidity by a federal court. Accordingly, Pazandak et al, White
`
`
`et al and Manson raise a substantial new question of patentability with respect to claim 6. Claims
`
`7—10 incorporate by reference the subject matter of claim 6, thus, Pazandak et al, White et al and
`
`
`Manson raise a substantial new question of patentability with respect to claims 7—10.
`
`Waiver of Right to File Patent Owner Statement
`
`In a reexamination proceeding, Patent Owner may waive the right under 37 CPR. 1.530
`
`to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner
`
`waives the right under 37 CPR. 1.530 to file a Patent Owner Statement and proof of service in
`
`

`

`Application/Control Number: 90/013,988
`
`Page 12
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`Art Unit: 3992
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`the manner provided by 37 C.F.R. 1.248, if the request for reexamination was made by a third
`
`party requester, see 37 C.F.R 1.550(f).
`
`Service of Papers
`
`After filing of a request for ex parte reexamination by a third party requester, any
`
`document filed by either the patent owner or the third party requester must be served on the other
`
`party (or parties where two or more third party requester proceedings are merged) in the
`
`reexamination proceeding in the manner provided in 37 CFR 1.248. The document must reflect
`
`service or the document may be refused consideration by the Office. See 37 CFR 1.550(f).
`
`Extensions of Time
`
`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 ex parte reexamination
`
`proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)). Extensions of time in
`
`ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`Litigation Reminder
`
`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
`
`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.
`
`

`

`Application/Control Number: 90/013,988
`
`Page 13
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`Art Unit: 3992
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`m
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`Claims 6—10 of US Patent 7,552,124 are subject to reexamination.
`
`Correspondence with USPTO
`
`All correspondence relating to this ex parte reexamination proceeding should be directed as
`follows:
`
`By US. Postal Service Mail to:
`
`Mail Stop Ex Part6 Reexam
`ATTN: 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
`
`Any inquiry concerning this communication or earlier communications from the Reexamination
`Legal AdVisor or Examiner, or as to the status of this proceeding, should be directed to the
`Central Reexamination Unit at telephone number (571) 272—7705.
`
`/Sam Rimell/
`
`Primary Examiner
`AU 3992
`
`Conferees:
`
`/C. S./
`
`Primary Examiner, Art Unit 3992
`
`/Woo H. Choi/
`
`SuperVisory Patent Reexamination Specialist, Art Unit 3992
`
`

`

`
`
`.
`Order Granting Request For
`Ex Parte Reexamination
`
`Control No.
`
`90/013,988
`
`Patent Under Reexamination
`
`7552124
`
`Exam'mr
`SAM RIMELL
`
`A" ”n"
`3992
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 17July 2017 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)|:| PTO-892,
`
`b)IX| PTO/SB/O8,
`
`C)|:| Other:
`
`1. IXI The request for exparte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`
`
`/Sam Rimell/
`
`Primary Examiner
`AU 3992
`
`ifthird oart
`cc:Reouester
`US. Patent and Trademark Office
`
`reouester
`
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20170802
`
`