UNITED Sums PATENT AND TRADEMARK Omen
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`
`
`
`m>|.aca11oN No.
`95/000,396
`
`09/23/2(X)fi
`
`FIRSI’ NAMan mvamox
`65 16236
`
`
`
`14983431
`
`
`
`CONFIRMAUON no.
`I593
`
`
`
`max LOWE &-.GRAi4AM, me
`70} FIFTH AVENUE
`SUITE 4800
`sEA1'rLE,wA9s1o4
`
`K155. ENC '3
`
`3992
`
`0902/2010
`
`i’AP-ER
`
`Please find ‘below and/or attached an Office communication concerning this appiicatlon or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`?TOL-90A (Rcv.04/O7)
`
`Page 1 of 147
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`
`
`UNITED STATES PA'1‘I£N'I" AND “l'R2\DEi\/LARK OFFICE
`’ -— -we
`Commissioner for ¥‘:icnls
`United Stains Patents and Tmlcmark Office
`l’.0.Bnx I450
`Alexandria‘ VA 223114450
`www.usplo.guv
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTERS CORRESPONDENCE ADDRESS
`William J. Zychlewicz
`ARMSTRONG TEASDALE LLP
`
`One Metropolitan Square
`St Louis, MO 631024740
`
`Dale:
`
`((0-29:- IO
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95000396
`PATENT NO. : 6516236
`
`TECHNOLOGY CENTER 2 3999
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the fliing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30~day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding shouid be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTO!.«2(l70(Rcv.U7-04i
`
`Page 2 Of
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`Patent Under Reexamination
`
`W
`
`_ ___
`
`
`
`_ 6516236
`—"_”Wni*
`3992
`
`ACTION CLOSING PROSECUTION esioooase
`(37 CFR 1.949)
`firaminer
`ERIC e__i_<iss
`
`Control No.
`
`u The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. »~
`
`Responsive to the communicatioms) filed by:
`Patent Owner on 19 February 2010
`Third Party(ies) on
`
`Patent owner may once file a submission under 37 CPR 1,951(a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed. third party requester may file responsive comments under 37 CFR
`1,951(b) within 30-day/s (not extendable~ 35 USC § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CPR 1.953.
`
`Ail correspondence relating to this inter partes 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
`
`PART 1. THE FOLLOWING ATTACHMENHS) ARE PART OF Tl-ilS ACTION:
`
`'
`
`[H Notice of References Cited by Examiner, PTO-892
`1
`2 [Z Information Disclosure Citation. PTO/SBIOB
`3.[]
`
`PART II. SUMMARY OF ACTION;
`
`1a. ® Claims j_;]_Q are subject to reexamination.
`1b. [3 Claims __ are not subject to reexamination.
`2 Ci Claims ________ have been canceled.
`IE Claims Q are confirmed. [Unamended patent claims]
`E] Claims __ are pateniable. [Amended or new ciaims]
`Claims _1_iaflgl___B_-_1_Q are rejected
`D Claims _m_ are objected to.
`(3 are not acceptable.
`C] are acceptable
`1:} The drawings filed on __
`If] The drawing correction request filed on __________ is:
`[:1 approved. E} disapproved,
`E] Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has
`D been received.
`C] not been received.
`D been filed in Applicatlonlcontrol No
`10.[j Other
`
`‘J’-’°°.".°"$".-"~.°’
`
`US. Patent and Trademark Olfice
`PTOL-2065 (DBIOS)
`
`Page 3 of 147
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`Paper No. 20100331
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`AMS
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`Application/Comroi Number: 95/000,3 96
`Art Unit: 3992
`
`Page 2
`
`])E'I‘AILEI) ACTION
`
`The patent owner response filed February 19, 20 I O, has been received and entered.
`
`Claims I-:10 are currently subject to reexamination.
`
`Page 4 of 147
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`Appiication/Control Number: 95lO(§0,396
`Art Unit: 3992
`
`Page 3
`
`TABLE OF CONTENTS
`
`Note Regarding Continuation of’ This Proceeding Despite Final Court Order...................... ..4
`I.
`Ii. Brief Procedural i-listory...............
`....................
`..................................................................S
`III.
`Information Disciosure Stateniem ..............
`............................
`.....................
`............. ..6
`IV.
`Scope of Reconsideration ....
`.........
`.........................
`................................................. ..7
`A. Arguments and Evidence Consi‘dered...y, ........................................................................... ..7
`B4 Arguments and Evidence Not
`..................... ..9
`.............................
`V. Response to Arguments .............................................
`A. Claim Construction .....................
`...............................
`............................................. .9
`B. Claims 1-10 in view ofAibility Systems (Response at 4-16)
`................................ ..l 3
`C. Claims M0 in view of Sorensen (Response at 16-23).....
`................ .. I 7
`[)4 Claims 1-10 in view of SOSAS (Response at
`12. Claims 1~ I 0 in view of (301 (King, Petzo‘1d,, and WINDOWS NT) (Response at 24-45) 19
`Vi.
`Claim Rejections under 33 USC, § i02’(b) .....................
`............................................. .23
`Vii.
`Confirtncd Claims»......................
`........... ., ...........
`....................................................... .24
`Viil. Other Patents and Printed Publications Cited in the‘ Request .......................................... .24
`IX.
`Conclusion ....................................................................................................................... ..25
`
`......
`
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`Application/Controi Number: 95/000,396
`Art Unit: 3992
`
`Page 4
`
`1.
`
`Note Regarrlirzg Corrrimrnriorr of This Proceeding Despite Firm! Court Order
`
`35 U.S.C. 3 i 7(b) provides in part that, "Once a final decision has been entered against a
`
`party in a civii action arising in whole or in part under section i338 oftitle 28, that the party has
`
`not sustained its burden ofproving the invalidity ofany patent claim in suit[.] .
`
`.
`
`. an inter partes
`
`reexamination requested by that party or its privics on the basis of [issues which that party or its
`
`privies raised or could have raised in such civil action] may not thereafter be maintained by the
`
`Office, notwithstanding any other provision of this chapter.“
`
`011 December 3, 2009, the Third Party Requester filed a Notification of Concurrent
`
`Proceedings Under 37 CFR § l,985(b), indicating that, “Patent Owner and Requester have
`
`settled their underlying litigation .
`
`. involving the patent at issue in this inter partes
`
`reexamination proceeding, and the US. District Court .
`
`.
`
`. has entered a final, nomappealable
`
`Order and Judgmertl dismissing all claims, defenses, and counterclaims asserted in that action
`
`with prejudice, including, without limitation, any and all claims challenging the presumption of
`
`validity of the patent at issue." A copy of the final order was attached to the notification.
`
`However. neither party has made a proper showing under § 31703) necessitating termination of
`
`all or part ofthis reexamination proceeding at this time.
`
`Page 6 of 147
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`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 5
`
`II.
`
`BriefProceriurrrl History
`
`On January 23, 2009, a Nnn—F:inaI Rejection was mailed.
`
`On April 23, 2009. the patent ‘owner filed a response that did not comply with the page
`
`limit set by 37 CPR 1.943.
`
`On May 22, 2009, the third party requester filed comments directed to the patent owner’s
`
`defective response.
`
`On June I 1, .2009, the patent owner petitioned to have the third party reqttcstefis
`
`comments returned without consideration.
`
`On June 25, 2009, the third party requester filed an opposition to the patent owner“s
`
`petition.
`
`On February 4, 20 I 0, a Notice Re; Defective Paper in inter Partes Reexamination was
`
`mailed, informing the patent owner of the defects in the April 23, 2009. response and noting that
`
`the previously submitted third party requester comments were moot as being directed to a
`
`defective response The patent owner was given a 15-day period to correct the noted defects, and
`
`the third party requester was given a 30~day period beginning from the date of service of‘ patent
`
`owner's response to the Notice within which to submit comments directed to the Office action or
`
`the patent owner’: response to the Notice.
`
`On February 19, 2010, the patent owner submitted a response to the Notice, along with 21
`
`conditional petition under 37 CFi{§ L183 to waive the page limit under 37 CFR § 1.943(b).
`
`No subsequent third party requester comments have been received.
`
`On May 6. 20! 0. the patent owner’s conditional petition was dismissed as moot,
`
`Page 7 of 147
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`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 6
`
`III.
`
`Information Disclosure Statement
`
`Consideration by the examiner ofthe information submitted in an IDS means that the
`
`examiner will consider the documents in the same manner as other documents in Office search
`
`files are considered by the examiner while conducting a search of the prior art in a proper field of
`
`search. The initials of the examiner placed adjacent to the citations on the PTO-1449 or
`
`PTO/SB/08A and 088 or its equivalent mean that the information has been considered by the
`
`examiner to the extent noted above. MPEP § 609.
`
`Regarding IDS submissions MPEP 2656 recites the following: "Where patents,
`
`publications. and other such items of information are submitted by a party (patent owner or
`
`requester) in compliance with the requirements of the rules, the requisite degree of consideration
`
`to be given to such information will be normally limited by the degree to which the party filing
`
`the information citation has explained the content and reievance of the information!‘
`
`The initials of the examiner placed adjacent to the citations on the PTO~l449 or
`
`PTO/SB/OSA and 088 or its equivalent mean that the information has been considered by the
`
`examiner to the extent noted above.
`
`The IDSS tiled April 23, May 20, 26, and September 9, 2009, and September 9, 2010,
`
`have been given due consideration. However, that which are not either prior art patents or prior
`
`art printed publications have been crossed out so as not to appear reprinted ‘on the front page of
`
`the patent. Additionally, incomplete or illegible citations have 'al,so:been crossed out‘
`
`Page 8 of 147
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`RAV AMS
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`IPR2017—00048
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`Application/Control Number: 95/000,396
`Art Unit‘: 3992
`
`Page 7
`
`IV.
`
`Scope of Reconsideration
`
`A.
`
`Argu meats and Evidence Considered
`
`In ihe interest of special dispatch, the patent owneris response filed February 19, 2010
`
`has been considered to the fullest appropriate extent. Specific portions oftbe response excluded
`
`from consideration are described in the next subsection oflliis action. Further, the patent
`
`owncr’s arguments presented under the heading “WI'l‘HDRAWN ISSUES," (Response at 23-
`
`45), have been considered (except as noted below) as the total page count oftlie response does
`
`not exceed 50 pages in length, inciuding these arguments. (See Decision Dismissing Petition,
`
`S/6/2010, pl 3.)
`
`The redacted declarations of Richard A. Mathias, Richard J. Malina, Maureen Stone,
`
`Andrew B. Levy. Nosa Ornoigui, and Don Chouinard filed February l9, 20l0, have been
`
`c0a'sidere_d'.
`
`The declarations of Charles Petzold, Steve McConnell, Jeffrey Richter, and Joel ‘E’. Ard
`
`filed April 23, 2009, have been considered.
`
`B.
`
`Arguments and Evidence E Considered
`
`The patent owner’s response filed April 23, 2009, has not been considered for reasons set
`
`forth in the Notice Re Defective Paper in inter Panes Reexamination mailed February 4, 201.0.
`
`The third party requestefs comments filed May 22, 2009, have 9521 been considered for
`
`reasons set forth in the Notice mailed February 4, 20i0.
`
`The declrations of Richard A. Mathias, Nosa Omoigui, Richard J. Malina, Andrew B.
`
`Levy, Don Ci’10l.iif1at’d,and Maureen Stone, as filed on April 23, 2009, have nmo; been considered
`
`Page 9 of 147
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`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 8
`
`because the patent owner has replaced these declarations with redacted versions to address the
`
`defects noted in the Notice mailed February 4, 2010.
`
`The patent owrter’s response: including any attached or cited evidence, filed in the er
`
`par/c reexamination assigned to Controi No. 90/009,282 has not been considered in this inter
`
`pm'Ie.t‘ reexamination, untess the same arguments or evidence have also been submittecl by the
`
`patent owner in this reexamination proceeding. Further. the conclusions reached in an Office
`
`action in the ‘282 ex pane reexamination cited by the patent owner have r_1_o_t been considered in
`
`this inter partex proceeding.
`
`it is not appropriate to incorporate by reference any portion of the
`
`ex pnrte proceeding into this inter parties proceeding because the ex parie proceeding is
`
`ctnidttetetl under statutes and rules that deny the third-party requester an opportunity to comment
`
`on the patent owner’s response, and thus, ex parte Office actions are generated without
`
`considering any rebuttal by the ‘third party requester. (Iampare 35 13.8.0. § 305 and 357 CFR §
`
`tlSSO(g) with 35 U.S.C. § 3l4(b)(2) and 37 CFR § 1.947‘.
`
`Accordingly, the arguments contained in the patent ‘owner's two~pa‘ge letter attached to
`
`the patent owner’s response! characterizing the conclusions of an Office action in the ’282 ex
`
`pa»-re reexamination, have @ been considered. (Response to PTO’s Notice Dated February 4,
`
`2010, 2/t9/2010, p. 2.) Additionally, under the “WITHDRAWN ISSUES" heading in the patent
`
`owncr’s response. footnote I2 and the citation to the ’282 ex pane reexamination on pp. 23-24 of
`
`the atent owner’s res onse have @ been considered.
`P
`P
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`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 9
`
`V.
`
`Response to Arguments
`
`To the extent that the response below‘ includes statements that the patent owner’s
`
`arguments are not persuasive. these statements should be understood to include the cited
`
`e‘vid.ertcc in the experts’ declarations.
`
`A.
`
`Claim Construction
`
`During reexamination, claims are given the broadest reasonable interpretation consistent
`
`with the specification and limitations in the specification are not read into the claims.
`
`In‘ re
`
`lisimrmmrn, 740 F.2d I569 (Fed. Cir, l084)).
`
`it would be error to apply the same mode of claim
`
`interpretation that is used by courts in litigation.
`
`In re Am. Ac-ad’. ofSc.r'. Tech. Cm, 367 F.3d
`
`1359, [369 (Fed. Cir‘ 2004).
`
`In reexamination, the PTO is not bound by a Markman Order
`
`issued ‘man earlier litigation to which the PTO was not a party. In re Texas Holdings Corp., 498
`
`F.3d 1290, 1297 (Fed. Cir. 2007) (holding that issue preclusion did not apply,‘ even when the
`
`District Court issued an order of dismissal with prejudice following a prei-trial settlement
`
`between the parties).
`
`"Even when the specification describes only a single embodiment, the clairns o‘f_‘the'
`
`parent will not be read restrictivcly unless the patentee has demonstrated a clear intention to limit
`
`the claim scope using words or expressions of manifest exclusion or restriction."' LiebeI-
`
`Fla.vhe2'm Ca. V. Men’;-ad, Inc, 358 F.3d 898, 906 (Fed. Cir. 2004); In re Am. Acad. ofSci. Tech.
`
`Cm, 367 F.3d at 1369.
`
`'”[R]eading a claim in the light ofthc specification,‘ to tliereby interpret
`
`limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of
`
`the specification into a claim.‘ to tliereby narrow the scope of the claim by implicitly adding
`
`Page 11 of 147
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`Appiication/‘Control Number: 95/000,396
`Art Unit: 3992
`
`Page 10
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`disclosed limitations which have no express basis in the claim." In re Prater, 415 F.2d 1393,
`
`I404 (CCPA 1969).
`
`The '236 patent disclosure contains no words or expressions of manifest exclusion or
`
`restriction.
`
`In fact: the ‘£236 patent at least twice explicitly invites a broader reading ofthe claim
`
`terms. See ‘236 patent at col. l, lines 37-40 ("The scope ofthc present invention should thus be
`
`determined based on the claims appended hereto and not the following detailed description"),
`col. 48. lines 3-7 ("Tito present embodiments are therefore to be considered in all respects as
`
`illustrative and not restrictive, the scope of the invention being indicated by the appended claims
`
`rather than by the foregoing description.“).
`
`Further, the ‘236 patent disclosure contains no clear, deliberate, and precise definitions oi’
`
`the claim terms “component fun.ctio‘n”, “component code”, “driver function", and “driver code"
`
`such that -the incorporation of such definitions into the claims would be appropriate. See In re
`
`Paulsen. 30 F.3d i475, i480 (Fed. Cir. 1994).
`
`Under the broadest reasonable interpretation consistent with the specification, the
`
`examiner interprets “component function”, “component code“, “driver l'unction", and “driver
`
`code" as follows;
`
`“i:ompont;-nt I'unci;inn" is a function associated with component code; at least some
`
`of such component functions being capable of association with at ieast some of the driver
`
`functions;
`
`“component co 3” is code that associates at least some of the component
`
`functions with at least some of the driver functions;
`
`“driver l‘unction" is a function that is associated with a motion control operation;
`
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`Application/Control Nttmbcr: 95/000,396
`Art Unit: 3992
`
`Pagc l
`
`I
`
`“_d_r_i_w_.-r male" is code that implements the motion control operations associated
`
`with at least some of the driver functions; and
`
`the component functions are separate from the drivér functions.
`
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 12
`
`13.
`
`Claims 1-10 in View of Ability Systems (Response at 4-16)
`
`In footnote 4 on pp. 839 ofthe response. the patent owner asserts that the Ability 3
`
`reference is not prior art. suggesting that its publication date is 2003. Upon closer inspection of
`
`the Ability 3 reference, the examiner agrees. The Ability 3 document bears a copyright date
`
`range of“1989~2003." While this range of dates suggests that there was a version ofthe Ability
`
`3 document published prior to the filing date of the ’236 patent, the particular version of the
`
`Ability 3 document of record was apparently published only as early as 2003. Accordingly, the
`
`Ability 3 document of record is not a prior art printed publication applicable against the ’236
`
`patent.
`
`The rejection of claim It) under 35 U.S.C. § 103(2)) as being unpatentable over
`
`Ability 1, Ability Z, and Ability 3 is withd ruwn.
`
`The patent: owner argues that the Ability l and Abiiity 2 references Fail to teach or
`
`suggest all of the features in the claims. The examiner ngggg in part.
`
`The arguments regarding hardware independence and the claimed application program
`
`calling a function are not persuasive because these features are not required by the claims.
`
`However, the arguments on p. i0, paragraph 2., through p. 13, paragraph E, are
`
`persuasive. Upon careful review of the Ability references and cited evidence, the examiner
`
`agrees with the patent owne-r’s reasoning why the Ability references do not teach or suggest the
`
`driver code or driver functions in the context of the claims, ire, core driver functions associated
`
`with primitive motion control operations, extended driver functions associated with non-
`
`primitive motion control operations, and a set olsoftware drivers, each associated with one
`
`motion control device in the group of supported motion control devices, each software driver
`
`Page 14 of 147
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page [3
`
`comprising driver code for implementing the motion control operations associated with at least
`
`some of the driver fttnctions.
`
`The rejection ofttlaims 14 and 7-9 under 35 U.S.C. § l03{n) as being unpatentable.
`
`over Abiiity E and Ability 2 is witIztir:twn.
`
`C.
`
`Claims 1-10 in View ofS01'cnsen(.Rcsponse at I6~23)
`
`The patent owner essentially argues that Sorensen teaches only generating a sequence of
`
`supervisor commands for a robotic system, which cannot be reasonably interpreted as a sequence
`
`of control commands for controlling a selected motion control device, or in other words, that
`
`Sorensen does not teach motion control. The examiner
`
`The cited evidence fails to establish that Robotics excludes Motion Control. Rather, the
`
`cited experts appear to agree that Motion Control is a subfield of Robotics. (See, eg., Mathias
`
`Decl. at para. 153; Malina Decl. at para. 67 (describing a robot as containing movable parts
`
`associated with motion cont‘rollers).) While Sorensen is concerned with task-level control, the
`
`task execution described by Sorensen requiresmotion control. See, e.g., Sorensen at p.
`
`1 (“The
`
`robot in turn would locate the part, choose a proper tool, choose a proper approach to avoid
`
`collision, and grasp the part"), p. 6 (moving the camera near chips with a Z offset of 10).
`
`Further, the very broad definition of “programmable motion controller” provided by Malina, “the
`
`application of programmable hardware and software (in conjunction with input sensory devices,
`
`actuators, and other feedback devices) for the control of one or more linear or rotary motions,"
`
`appears to be consistent with the operation of the system described by Sorensen in that the
`
`definition would appear to include both high-level and low-level motion control. (Malina Decl.
`
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`Application.v’Control Number: 95/000,396
`Art Unit: 3992
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`Page 14
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`at para. 65.) The further descriptions of what motion controliers “generally” or “ty_picaliy”
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`include or require are not limiting. definitions, and thus are not persuasive in distinguishing. over
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`Sorensen (See Malina Deci. at para. 66.)
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`The patent owner further argues that Sorensetfs macros are not “motion control
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`components" as used in the claim and specification because they must be re-compiled every time
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`new hardware is added, and they do not expose functions at run-time. The examiner diszig,-recs.
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`The claims only require that a motion control component be for generating the sequence
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`of‘ control commands for controlling the selected motion control device, based on the component
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`functions of the application program, the component code associated with the component
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`functions, and the driver code associated with the selected software driver. Sorenscn teaches this
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`( in a manner consistent with the specification), for example at 1 86-187 (describing macros
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`callable by a client process and executable to carry out motion control by calling specific
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`drivers). Lack of re~corripilation and exposing of functions at run~timc are simply not required
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`by the claims. As noted above under subsection A, no definitions of any of the claim terms are
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`given in the specification, and instead the specification invites broad reading of the claims.
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`During reexamination, claims are given the broadest reasonable interpretation consistent with the
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`specification and limitations in the specification are not read into the claims. In re Yamamolo,
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`740 Ffld I 569.
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`The patent owner further argues that the macros described in Sorensen are not hardware
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`independent instructions corresponding to the component functions, nor do they correspond to
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`component code. The examiner disap:-ecs.
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`Page 16 of 147
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`AMS
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`Exhibit 2013
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`RA V AMS
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`IPR2017-00048
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`

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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 1 5
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`As noted above under subsection A, hfll'CiWZ‘.l'%3~.lf1dCP€l'ld¢YlC¢
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`is not required by the
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`claims. The component functions are the macro library described throughout the text and iisted
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`in Appendix A. Sorensen at I63-E83. The component code is the code that makes up the macros
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`in the macro iibrary. The argument that Sorensen’s design is not a component design because it
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`is not buiit using a component framework is without merit. The macros of Sorensen are clearly
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`components in that they are discrete elements making up the larger library.
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`The patent owner further argues that the macros of Sorensen do not teach component
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`code and component functions because such an interpretation would disregard the associative
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`function of the motion control component of the claimed architecture. The examiner t_li_:g;1g_r_t.3§.
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`As noted above, “component code" is code that associates at least some of the component
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`functions with at least some ofthe driver functions. This feature is met by Sorensen’s calls
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`within the application to macros within the macro library (component functions), where the
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`macros are implemented with macro code (component code) which calls the driver functions
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`(cross»references some of the component functions with driver functions). “Driver code." is
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`code that implements the motion control operations associated with at ieast some of the driver
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`Functions. This is met by Sorcnsetfs calis to the hardware-specific drivers from the macro code
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`(eg., calls to the KAREL and DARL driver code for the move_to_ele and movemtomtmtil
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`macros)‘
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`The patent owner iitrther argues that the macro as described by Sorensen can be neither
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`the component functions not the component code because the generation ofmotion. control
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`commands in the claimed inverttiott occurs in real time without requiring recontpilirtg the
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`Page 17 of 147
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`AMS
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`Exhibit 2013
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`RA V AMS
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`IPR2017-00048
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`Appiication/Control Number: 95/000,396
`Art Unit: 3992
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`Page 16
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`application program. Because this alleged distinction is not in the claims, the examiner
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`disagrees.
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`The patent owner further argues that the device drivers of Sorensen are not the device
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`drivers in the claim because the claimed driver code “is an essentiai part of the process of
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`generating motion control commands because the appiication program and/or component code
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`are able to operate in a way that is truly independent of the hardware used." Because this
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`hardware independence is not required by the claims, the examiner t'llsug'Jl‘{:c‘S.
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`The patent owner furtlter argues that Sorensen does not teach a run-time selected
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`destination because the destination must be chose pre—oompi;ie time, when the user hard~codes
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`robot names and pose details into macros. However, the claims do not require the run«tirrtc
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`selection of streams. Because the claims do not require run~time selection, nor do they appear to
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`imply run-time selection, this argument is not persuasive in distinguishing the teachings of
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`Sorensen from the claimed invention.
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`Claims 4 and 7 recite the additional features of emulating motion control operations
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`associated with non-supported (having no driver code associated therewith) extended driver
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`Functions by generating control commands associated with a combination of core driver
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`functions (claim 4) and means for determining a deriver unit system employed by the sofiware
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`drivers and means for converting an appiication unit system employed by the application
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`program into the driver unit system (claim 7). Ability 1 and Ability 2 were relied upon as
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`teaching these features‘ but as noted above, The Ability references present significant
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`deficiencies regarding their applicability to independent I that are not overcome in the rejection
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`Page 18 of 147
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`RAV AMS
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`IPR2017-00048
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`Application/Control Number: 95/000,3 96
`Art Unit: 3992
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`Page 17
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`of dependent claims 4 and 7 such that a reasonable rationale for combining the cited teachings
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`can be articulated as part ola proper obviousness analysis.
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`The rejection of claims 4 and 7 under 35 U.S.C. § l(}3(a) as being unpatent-able over
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`Sm-iensen, Ability 1, and Ability Z is wilhdrawn.
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`D.
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`Cinims I-10 in View ofSOSAS (Response at 13-24)
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`$311: examiner étgrrecs with the patent owner that SOSAS is not a prior art: printed
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`publication‘
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`“l3e.c.ause there are many ways in which a reference may be disseminated to the interested
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`public, ‘public accessibility‘ has been called the touchstone in determining» whether a reference
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`constitutes a ‘printed publication’ bar under 35 .U.S.C. § l02(b)." In re Hall, 781 F.2d 897, 89.8»
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`899 (Fed. Cir. l986). A reference is publicly accessible “upon a satisfactory showing that such
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`document has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it...." SR] Im‘l, Inc: v. lnlernel Sec, Sys. Inc‘, 511 F.3d 1186, 1194 (Fed.Cir.2008) (quoting
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`Bruckelmyer 12. Ground Healers, 1'm:., 445 F.3d I374, I378 (FedtCir.2006)).
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`Documents and items only distributed internally within an organization which are
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`intended to remain confidential are not “printed publications“ no matter how many copies are
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`distributed. MPEP § 2128.01. There must be an existing policy ofconfldentiality or agreement
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`to remain confidential within the organization.
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`Id. Mere intent to remain confidential is
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`insufficient.
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`In re George, 2 USPQ2d 1880 (Ed. Pat. App. & Inter. 1987) (Research reports
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`Page 19 of 147
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`Exhibit 20 1 3
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`RAV AMS
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`IPR2017-00048
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`ApplicationJControl Number: 95/000,396
`Art Unit: 3992
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`Page 18
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`dissemirtatecl imhousc to only those persons who understood the policy of confidentiality
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`regarding such reports are not printed publications even though the policy was not specifically
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`stated in writing); Garret Corp. it UniIedStales, 422 F.2d 874, 878, 164 USPQ 521, 524 (Ct.
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`Cl. 1970) (“While distribution to government agencies and personnel alone may not constitute
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`publication
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`distribution to commercial companies without restriction on use clearly docs");
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`Na;-rlvem Telccom Inc. v. Darapoint Corp, 908 F.2d 93 l, 15 USPQ2d [321 (Fed. Cir. 1990)
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`(Four reports on the AESOPJ3 military computer system which were not under security
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`classification were distributed to about fifty organizations involved in the AESOP-B project One
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`document contained the legend “Reproduction or further dissemination is not authorized.” The
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`other documents were of the class that woutd contain this legend. The documents were housed in
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`Mitre Corporatiorfs libraryr Access to this library was restricted to those involved in the
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`AESOP-B project. The court held that public access was in,Sttffieien.t to make the documents.
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`“printed publications”); cffl Kyocera Wireless Corp. .11. Int’! Trade Comm ‘n, 545 F.3d 1340 (Fed.
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`Cir. 2008) (GSM specifications held suffic-iently accessible where they were “publicly available
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`and released as consistent sets," were visible to any member of the interested public without
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`requesting them from an ETSI member; and were described in a sevemhundred page technical
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`book published with the express purpose of giving wider access to the GSM standard).
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`The evidence of record shows that the SOSAS documents contained a restrictive legend
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`that read, “Distribution of this material is only authorized to US. government agencies and their
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`contractors in order to protect information and critical technology data. Distribution to non~U.S.
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`citizens or companies is prohibited. Other request for this document shall be referred to
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`WL./MTIB.” See SOSAS Vol. ll, p. iv; Ard Dec. paras. 20-24.
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`Page 20 of 147
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`AMS
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`Exhibit 2013
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`IPR2017-00048
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`Application/Control Number: 95/000,396
`A11 Unit: 3992
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`Page l9
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`The evidence of‘ record does not show that the SOSAVS documents were disseminated or
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`otherwise made available to the extent that persons int