`
`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
`
`
`
`
`
`90/014,056
`
`12/15/2017
`
`6959293
`
`1361
`
`Image Processing Technologies LLC
`75 Montebello Road
`Suffern, NY 10901
`
`BANANKHAH’ MAHD A
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`01/26/2018
`
`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. EMMSU
`Riexandria, VA 22313-1450
`vuwmusptogov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS)
`
`MARC PENSABENE
`O‘MELVENY & MYERS LLP
`7 TIMES SQUARE
`NEW YORK, NY 10036
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL FORM
`
`REEXAMINATION CONTROL NO. 90/014 056.
`
`PATENT NO. 6959293.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07-O4)
`
`

`

`Application/Control Number: 90/014,056
`
`Page 2
`
`Art Unit: 3992
`
`DECISION GRANTING EX PARTE REEXAMINATION
`
`Table of Contents
`
`1.0
`
`2.0
`
`2.1
`
`2.2
`
`3.0
`
`3.1
`
`3.2
`
`3.3
`
`DECISION ON REQUEST .............................................................. 3
`
`REFERENCES ............................................................................. 3
`
`References Cited by the Requester ...................................................... 3
`
`IDS ........................................................................................... 3
`
`PROSECUTION HISTORY .............................................................. 3
`
`Background ................................................................................. 4
`
`Reasons for Allowance at the time of Issuance of Patent ............................. 5
`
`Related Proceedings ....................................................................... 7
`
`4.0
`
`CLAIMS UNDER REEXAMINATION .............................................. 7
`
`5.0
`
`6.0
`
`6.1
`
`6.2
`
`6.3
`
`SNQs ALLEGED IN THE REQUEST .................................................. 8
`
`DISCUSSION OF SNQs .................................................................. 9
`
`Issue 1 (Pirim PCT and Siegel) (SNQs for proposed rejections based on Pirim
`
`PCT, p. l of Request) ..................................................................... 10
`
`Issue 2 (Pirim PCT and Hirota) (SNQs for proposed rejections based on Pirim
`
`PCT and Hirota, p. l of Request) ........................................................ 12
`
`Issue 3 (Hirota alone) (SNQs for proposed rejections based on Hirota alone, p. l
`
`of Request) .................................................................................. 14
`
`7.0
`
`CONCLUSION ............................................................................. 15
`
`

`

`Application/Control Number: 90/014,056
`
`Page 3
`
`Art Unit: 3992
`
`1.0
`
`DECISION ON REQUEST
`
`At least one substantial new question of patentability (SNQs) affecting claim 1 of United
`
`States Patent Number 6,959,293 (hereinafter “293 patent) issued October 25, 2005 to Pirim of
`
`Holding B.E.V.S.A. is raised by the request filed December 15, 2017 for eX parte reexamination.
`
`2.0
`
`REFERENCES
`
`2.1
`
`References Cited by the Requester
`
`The requester alleges that substantial new questions of patentability (SNQs) have been
`
`raised by at least the following prior art references:
`
`1.
`
`2.
`
`3.
`
`lntemational Patent Publication W0 99/36893 (“Prim PCX”), published July 22,
`1999
`
`Siegei,1—1<_>ward.1., e1 :11 “PASM: A Partitionab}.e SiMD/MIR’ED System for
`Ema ge Processing and, Pattern Recognition,” IEEE Transactions on Computers,
`Vol. (£30,110. 12 (December 1981} {"‘Siegei”;
`US. Patent No. 6,118,895 (“Hirota”), filed March 5, 1996, issued September 12,
`2000
`
`2.2
`
`IDS
`
`With respect to the Information Disclosure Statements (PTO/SB/08A and 08B or its
`
`equivalent) filed on December 15, 2017 and considered with this action, the information cited
`
`has been considered as described in the MPEP. Note that MPEP 2256 indicate that 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 relevance of the information.
`
`3.0
`
`PROSECUTION HISTORY
`
`3.1
`
`Background
`
`

`

`Application/Control Number: 90/014,056
`
`Page 4
`
`Art Unit: 3992
`
`Application filed 02/23/2001: Claims 1—28 are the current claims 1—16 and 18—29 in
`
`the “293 patent which issued on October 25, 2005 from US. application serial no.
`
`09/792,436 (“the ‘436 application”) originally having claims 1—28 filed February 23,
`
`2001. Among those, claims 1, 3, 17, 21, 22, and 27 were independent claims.
`
`Non—final mailed 03/26/2004: In this non—final, claims 3—16 were rejected under 35
`
`U.S.C. 112 second paragraph for failing to particularly point out the subject matter
`
`and claims 1—2 were rejected under 35 U.S.C. 102(b) as being anticipated by US.
`
`Patent Publication No. 5,359,533 of Ric Ka et a1. (“Ric Ka”); and claims 3—16 were
`
`allowed if rewritten or amended to overcome the rejection under 35 U.S.C. 112
`
`second paragraph proposed in that Office action.
`
`Amendment filed 08/30/2004: Applicants submitted claim amendments along with
`
`remarks on August 30, 2004. Applicant amended claims 1—4, 8 and 9; and newly
`
`added independent claims 29. Among those, claims 1, 3, 17, 21, 22, and 27 were
`
`independent claims.
`
`Telephone interView on 12/27/2004, and 04/27/2005: On 12/27/2004 Applicant
`
`initiated an interView and on 04/22/2005 the Examiner initiated an interView. It
`
`appears that during the interView on 12/27/2004, the Examiner agrees to allow the
`
`claims, and during the second interview the Examiner agrees to an Examiner’s
`
`amendment to correct a typographical error.
`
`Notice of allowance mailed 10/06/2004: In this notice of allowance, claims 1—29
`
`(corresponds to claims 1—16, 18—29 and 17 of the “293 patent) were allowed. Claim 29
`
`

`

`Application/Control Number: 90/014,056
`
`Page 5
`
`Art Unit: 3992
`
`and claims 17—28 were renumbered as 17 and 18—29 respectively. Examiner did not
`
`specifically state why the claims were allowed.
`
`°
`
`Supplemental Notice of allowance mailed on 12/30/2004, and 04/27/2005: Two
`
`supplemental notice of allowance was issued, in the first one issued on 12/20/2004, it
`
`appears that the Examiner indicated the requirement of corrections to the drawings
`
`and in the second one issued on 04/27/2005, the Examiner indicated an Examiner’s
`
`amendment to correct a typographical error that was agreed during the interView of
`
`04/22/2005.
`
`3.2
`
`Reasons for Allowance at the time of Issuance of Patent
`
`Examiner did not specifically state why the claims were allowed. However, as noted from
`
`the file history and the rejection of independent claims 1 based on anticipation by Ric Ka, the
`
`Examiner explained that Ric Ka discloses a “data bus,” a “time coincidence bus,” and a
`
`“histogram unit.” It appeared that Applicant agreed that those elements were disclosed by Ric
`
`Ka, and thus made the following amendments to the claim:
`
`1. {Cnrreniiy Amended) A visnai perception processor for autoniatieetiy
`deteeiin an ovonioeourrin in emnitidimensienei s eee iii evoivin evertimewiin res eotio
`
`
`
`
`at least one dieiiized eremeiei‘ in “rite form of a dieiiei si net on a data bus said eii
`itei si riai
`bein in the form of a succession ei'T of binar‘ numbers associated with e nehrenizetion si nets
`enabiing to define a given instant (Ti of tne meitidirneneienai egaoe and the gesition (iii in inis
`space, the visuei oeroegiien processor comprising:
`
`
`
`[Lei] ine deie bus;
`
`61 eenirei unit
`
`a time eeineidenoos one «carrying at ioasi a time ooinoioienee signat: end at
`
`ieast two we histogram eeieuieiion units
`
`

`

`Application/Control Number: 90/014,056
`
`Page 6
`
`Art Unit: 3992
`
`
`
`
`
`Qaiametei1 teeteeeewe the
`. eeietaJeeeeheeeeeiy' ‘ '
`eiaeeitieatieninteneatiente—the eiheietime eeneeieeneeeeee
`
`the nietoerem eaicuietien units being eehtigured te term e. hietogrem
`
`re reeentetive of the eremeter as 3. function of e vaiidation einei end to determine
`
`by eieseitieetieh 8. binary eiee sitieetieh signai resniting tram e eomperieen et the parameter and
`
`e eeieetien criterion (3 wherein the ciaseiiieation 3i netis sent to the time coincidences hue
`
`and wherein the veiidatien eignei'is produced hem time eeineideneee eigneis train the
`time coincidence bue so that the caieniation of the histogram degende en the eiassitieation
`sicgnaie carried by the time eeihcidenee bne.
`
`(Emphases in original; p. 7 of the Amendment to the Claims mailed 08/03/2004 in the
`‘436 application)
`
`Therefore, based on the rejection of claims in the Office action dated 03/26/2004 and the
`
`amendment and remarks filed 08/30/2004, examiner found the alleged point of novelty for issued
`
`claim 1 relates generally to the two histogram calculation units form a histogram of a parameter,
`
`that was added by amendment to distinguish the known prior art. In specific, it appears that the
`
`application ‘436 was allowed because the Examiner found the point of novelty for claim 1 relates
`
`to the limitation that;
`
`(a) “at least two histogram calculation units for the treatment of the at least one
`parameter, the histogram calculation units being configured to form a histogram
`representative of the parameter as a function of a validation signal”
`and
`
`(b) “to determine by classification a binary Classification signal resulting from a
`comparison of the parameter and a selection criterion C, wherein the classification signal
`is sent to the time coincidences bus, and wherein the validation signal is produced from
`time coincidences signals from the time coincidence bus so that the calculation of the
`histogram depends on the classification signals carried by the time coincidence bus.”
`
`Applicant presented similar argument in his Remarks filed on 08/30/2004, that Ric Ka
`
`failed to teach the above limitation.
`
`In view of the prosecution history, it is considered that a reasonable examiner would
`
`consider a prior art reference that teaches or suggests any of the above mentioned
`
`

`

`Application/Control Number: 90/014,056
`
`Page 7
`
`Art Unit: 3992
`
`limitation(s)/feature(s) important in determining the patentability of the claim 1 of the “293
`
`patent.
`
`3.3
`
`Related Proceedings
`
`Requester of the current Ex Parte proceeding has filed two petitions for Inter Partes
`
`Reviews (“IPR”), lPR2017—00336 filed on November 29, 2016, and IPR2017—01189, filed on
`
`March 30, 2017. However, neither the IPR2017—00336 nor the IPR2017—01189 reviews have
`
`been instituted with respect to claim 1.
`
`4.0
`
`CLAIMS UNDER REEXAMINATION
`
`The present request alleges that claim 1 of the “293 patent is unpatentable.
`
`Since requester did not request reexamination of claims 2—29 and did not assert the
`
`existence of a substantial new question of patentability (SNQ) for such claims (see 35 U.S.C. §
`
`302); see also 37 CFR 1.510b and 1.515), such claims will not be reexamined. This matter was
`
`squarely addressed in Sony Computer Entertainment America Inc., et al. v. Jon W. Dudas, Civil
`
`Action No. 1:05CV1447 (E.D.Va. May 22, 2006), SlipCopy, 2006 WL 1472462. The District
`
`Court upheld the Office's discretion to not reexamine claims in a reexamination proceeding other
`
`than those claims for which reexamination had specifically been requested. The Court stated:
`
`"To be sure, a party may seek, and the PTO may grant
`
`review of each and every claim
`
`of a patent. Moreover, while the PTO in its discretion may review claims for which
`
`review
`
`was not requested, nothing in the statute compels it to do so. To ensure that the PTO considers a
`
`claim for
`
`review, requires that the party seeking reexamination demonstrate why the PTO
`
`should reexamine each and every claim for which it seeks review. Here, it is undisputed that
`
`

`

`Application/Control Number: 90/014,056
`
`Page 8
`
`Art Unit: 3992
`
`Sony did not seek review of every claim under the 213 and '333 patents. Accordingly, Sony
`
`cannot now claim that the PTO wrongly failed to reexamine claims for which Sony never
`
`requested review, and its argument that AIPA compels a contrary result is unpersuasive."
`
`The Sony decision's reasoning and statutory interpretation apply analogously to ex parte
`
`reexamination, as the same relevant statutory language applies to both inter partes and ex parte
`
`reexamination. 35 U.S.C. § 302 provides that the ex parte reexamination "request must set forth
`
`the pertinency and manner of applying cited prior art to every claim for which reexamination is
`
`requested" (emphasis added), and 35 U.S.C. § 303 provides that "the Director will determine
`
`whether a substantial new question of patentability affecting any claim of the patent concerned is
`
`raised by the request..." (Emphasis added). These provisions are analogous to the language of 35
`
`U.S.C. § 31 l(b)(2) and 35 U.S.C. § 312 applied and construed in Sony, and would be construed
`
`in the same manner. As the Director can decline to reexamine non—requested claims in an inter
`
`partes reexamination proceeding, the Director can likewise do so in ex parte reexamination
`
`proceeding. See Notice of Clarification of Office Policy To Exercise Discretion in Reexamining
`
`Fewer Than All the Patent Claims (signed Oct. 5, 2006) 1311 OG 197 (Oct. 31, 2006). See also
`
`MPEP § 2240, Rev. 5, Aug. 2006.
`
`Therefore, claims 2—29 will not be reexamined in this ex parte reexamination proceeding.
`
`5.0
`
`SNQs ALLEGED IN THE REQUEST
`
`The requester raises the following issue in the request:
`
`

`

`Application/Control Number: 90/014,056
`
`Page 9
`
`Art Unit: 3992
`
`Issue 1: Requester states that the teaching of Pirim PCT in combination with Siegel raises a
`
`substantial new question of patentability with respect to claim 1 of the “293 patent
`
`(Request p. 1).
`
`Issue 2: Requester states that the teaching of Pirim PCT in combination with Hirota raises a
`
`substantial new question of patentability with respect to claim 1 of the “293 patent
`
`(Request p. 1).
`
`Issue 3: Requester states that the teaching of Hirota alone raises a substantial new question of
`
`patentability with respect to claim 1 of the “293 patent (Request p. l).
`
`6.0
`
`DISCUSSION OF SNQS
`
`A prior art patent or printed publication raises a substantial new question of patentability
`
`where there is:
`
`(A) 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, MPEP
`
`§2242 (I) and,
`
`(B) the same question of patentability as to the claim has not been decided in a previous
`
`or pending proceeding or in a final holding of invalidity by a federal court. See MPEP §2242
`
`(III).
`
`For any reexamination ordered on or after November 2, 2002, reliance on previously
`
`cited/considered art, i.e., "old art," does not necessarily preclude the existence of a substantial
`
`new question of patentability that is based exclusively on that old art. Rather, determinations on
`
`

`

`Application/Control Number: 90/014,056
`
`Page 10
`
`Art Unit: 3992
`
`whether a substantial new question of patentability exists in such an instance shall be based upon
`
`a fact—specific inquiry done on a case—by—case basis. See MPEP 2242.
`
`Issue 1 (Pirim PCT with Siegel) (SNQs for proposed rejection based on Pirim
`6.1
`PCT in combination with Siegel, p. 1 of Request)
`
`The request indicates that Requester considers that claim 1 of the “293 patent is
`
`unpatentable over Pirim PCT in combination with Siegel.
`
`Pirim PCT is of record in the original prosecution history of the ’293 Patent (See “293 at
`
`cover) but was never discussed or used in rejecting any claim by the examiner. See section 6
`
`above and the discussion of “old art”.
`
`However, Siegel was not considered and/or used in rejecting any claim during original
`
`prosecution of the “293 patent.
`
`Pirim PCT discloses “a generic image processing systeti‘i” that is used to “detect
`
`drowsiness” in a driver by acquiring images ofthe driver and forming histograms to analyze
`
`opening and closing of the driver’s eyes Pirim PCT at i. As reflected in the Figure 14 from the
`
`Pirim PCT in comparison with Fig, 3 oftl‘re “293 patent, the Pirim PCT discloses and uses the.
`
`same histogram, calculation, unit disclosed 21ml claimed in the ’293 Patent.
`
`Siegel teaches achieving ““real—time” processing of an image by using multiple identical
`
`processors (called ““PEs”) in parallel to each process and form a histogram of ““the one
`
`parameter.” (gray level). See, Siegel at 944, and 934.
`
`As such Siegel teaches the limitation that;
`
`

`

`Application/Control Number: 90/014,056
`
`Page ll
`
`Art Unit: 3992
`
`(a) “at least two histogram calculation units for the treatment of the at least one
`
`parameter, the histogram calculation units being configured to form a histogram representative
`
`of the parameter as a function of a validation signal. ”
`
`Comparison of Figure 14 of Pirim PCT with Fig. 3 of the “293 patent shows that the two
`
`disclosures are identical with respect to classifier 25b for comparing parameter data(V) to a
`
`selection criterion C, (See Pirim PCT at 27—28), and that the binary output of classifier 25b
`
`proceeds to a time coincidence bus 23 (Id. at 28), and that generating a validation [time
`
`coincidences] signal by validation unit which is communicated to its associated histogram
`
`formation block 24—29. ld.
`
`Therefore, Pirim PCT discloses the limitation that;
`
`(b) “to determine by classification a binary classification signal resultingfrom a
`
`comparison of the parameter and a selection criterion C, wherein the classification signal is sent
`
`to the time coincidences bus, and wherein the validation signal is produced from time
`
`coincidences signals from the time coincidence bus so that the calculation of the histogram
`
`depends on the classification signals carried by the time coincidence bus. ”
`
`The above two limitations are the same limitations that examiner found to be the point of
`
`novelty for issued claim 1, and Applicant argued about that.
`
`Since Pirim PCT in combination with Siegel, presents new technological teachings as
`
`indicated above and pointed out in the request (see Request pp. 15—24) that were not considered
`
`during prosecution of the “293 patent and is directly related to the subject matter considered as
`
`the basis for allowability/confirmation of the patent claims, a reasonable examiner would
`
`consider evaluation of Pirim PCT in combination with Siegel, as important in determining the
`
`

`

`Application/Control Number: 90/014,056
`
`Page 12
`
`Art Unit: 3992
`
`patentability of the claims. Accordingly, it is agreed that the consideration of Pirim PCT in
`
`combination with Siegel, raises a substantial new question of patentability with respect to claim
`
`1 of the “293 patent which question has not been decided in the preVious examination of the “293
`
`patent. The claim 1 was not subject to a final holding of invalidity by a federal court over the
`
`same issue.
`
`Issue 2 (Pirim PCT with Hirota) (SNQs for proposed rejections based on
`6.2
`Pirim PCT in combination with Hirota, p. 1 of Request)
`
`The request indicates that Requester considers that claim 1 of the “293 patent is
`
`unpatentable over Pirim PCT in combination with Hirota. Hirota was not considered and/or used
`
`in rejecting any claim during prosecution of the “293 patent.
`
`As described above and reflected in the EZ-‘igure l4 from the Pirim PCT in comparison
`
`with Fig. 3 of the “293 patent, the Pirim PCT discloses and uses the same histogram calculation
`
`unit disciosed and claimed in the ’293 Patent, therefore teaches all the limitation of claim 1,
`
`except two histogram calculation units.
`
`Hirota is generally related to a color copying. machine that scans a document and stores
`
`the image as digital pixel color values addressed by line and column {item the claimed l, j
`
`multidimensional space). Id. at 4:56» 59. Hirota teaches the use of multiple histogram calculation
`
`units to form histograms of the same image parameter (a composite color signal ““VH”) in order
`
`to perform a particular image processing task — i.e. , determine whether the scanned document is
`
`color or black and white. See Abs. and element 10 in Fig. l. Hirota also discloses data bus,
`
`control units, and the coincident bus as depicted in Fig. 13 as the bus carries the time coincident
`
`

`

`Application/Control Number: 90/014,056
`
`Page 13
`
`Art Unit: 3992
`
`signal input to element 222. Therefore, Hirota discloses two histogram calculation units in Fig.
`
`13 both treat the same parameter—color. Id. at 7:23—28.
`
`Therefore, Hirota discloses:
`
`(a) “at least two histogram calculation units for the treatment of the at least one
`
`parameter, the histogram calculation units being configured to form a histogram representative
`
`of the parameter as a function ofa validation signal. ”
`
`Hirota also discloses a classification signal (input to AND Gate 222) output from the
`
`classifier, which may include circuits 212, 214, 216 and 218 in Figure 13. Hirota at Certificate of
`
`Correction, Fig. 13. The classification signal is a binary signal that indicates Whether or not pixel
`
`is achromatic. See Hirota at 17:24—31. The output of the comparator 218 (along with the output
`
`of edge detection 220) are sent to the time coincidence bus, as explained above for Limitation [I
`
`c]. The calculation of the histogram depends on the time coincidences signal carried by the time
`
`coincidence bus because the pixel is only accumulated into the histogram if these signals satisfy
`
`the condition in the coincidence unit, Element 222 (an AND gate). Id. at 17:31—33 (“The output
`
`of the AND gate 222 is sent to the WE input of the second histogram memory 204.”).
`
`As such Hirota discloses:
`
`(b) “to determine by classification a binary classification signal resultingfrom a
`
`comparison of the parameter and a selection criterion C, wherein the classification signal is sent
`
`to the time coincidences bus, and wherein the validation signal is produced from time
`
`coincidences signals from the time coincidence bus so that the calculation of the histogram
`
`depends on the classification signals carried by the time coincidence bus. ”
`
`

`

`Application/Control Number: 90/014,056
`
`Page 14
`
`Art Unit: 3992
`
`The above two limitations are the same limitation that examiner found to be the point of
`
`novelty for issued claim 1, and Applicant argued about that.
`
`Since Pirim PCT in combination with Hirota, presents new technological teachings as
`
`indicated above and pointed out in the request (see Request pp. 24—28) that were not considered
`
`during prosecution of the “293 patent and is directly related to the subject matter considered as
`
`the basis for allowability/confirmation of the patent claims, a reasonable examiner would
`
`consider evaluation of Pirim PCT in combination with Hirota, as important in determining the
`
`patentability of the claims. Accordingly, it is agreed that the consideration of Pirim PCT in
`
`combination with Hirota, raises a substantial new question of patentability with respect to claim
`
`1 of the “293 patent which question has not been decided in the previous examination of the “293
`
`patent. The claim 1 was not subject to a final holding of invalidity by a federal court over the
`
`same issue.
`
`Issue 3 (Hirota alone) (SNQs for proposed rejections based on Hirota alone,
`6.3
`p. 1 of Request)
`
`The request indicates that Requester considers that claim 1 of the “293 patent is
`
`unpatentable over Hirota alone. Hirota was not considered and/or used in rejecting any claim
`
`during prosecution of the “293 patent.
`
`Hirota is generally related to a color copying machine that scans a document and stores;
`
`the image as digital pixel color values addressed. by line and column (i.e., the claimed l, j
`
`multidimensional space), Id. at 4:56- 59.
`
`Hirota teaches the use of multiple histogram calculation units to form histograms of the
`
`same image parameter (a composite color signal ““VH”) in order to perform a particular image
`
`

`

`Application/Control Number: 90/014,056
`
`Page 15
`
`Art Unit: 3992
`
`processing task — i.e., determine whether the scanned document is color or black and white. See
`
`Abs. and element 10 in Fig. 1. Hirota discloses a data bus (R, G, and B input to value generator
`
`200), and numerous control unit (for example Element 106, 152, 130, and printer controller I/F).
`
`The time coincident bus is depicted in Fig. 13 as the bus that carries the time coincidence signal
`
`input to element 222.
`
`Additionally, as stated above in analysis of Issue 2, Hirota discloses the two key
`
`limitations that examiner found to be the point of novelty for issued claim 1, and Applicant
`
`argued about that.
`
`Since Hirota alone, presents new technological teachings as indicated above and pointed
`
`out in the request (see Request pp. 29—36) that were not considered during prosecution of the
`
`“293 patent and is directly related to the subject matter considered as the basis for
`
`allowability/confirmation of the patent claims, a reasonable examiner would consider evaluation
`
`of Hirota alone as important in determining the patentability of the claims. Accordingly, it is
`
`agreed that the consideration of Hirota alone raises a substantial new question of patentability
`
`with respect to claim 1 of the “293 patent which question has not been decided in the previous
`
`examination of the ‘293 patent. The claim 1 was not subject to a final holding of invalidity by a
`
`federal court over the same issue.
`
`7.0
`
`CONCLUSION
`
`> Claim 1 will be reexamined.
`
`Extensions of Time
`
`

`

`Application/Control Number: 90/014,056
`
`Page 16
`
`Art Unit: 3992
`
`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).
`
`Waiver of Right to File Patent Owner Statement
`
`In a reexamination proceeding, Patent Owner may waive the right under 37 C.F.R. 1.530
`
`to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner
`
`waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proof of service in
`
`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). The Patent Owner may consider using the following
`
`statement in a document waiving the right to file a Patent Owner Statement:
`
`Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
`
`Amendment in Reexamination Proceedings
`
`Patent owner is notified that any proposed amendment to the specification and/or claims
`
`in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be formally
`
`presented pursuant to 37 CFR § 1.52(a) and (b), and must contain any fees required by 37 CFR §
`
`1.20(c). See MPEP § 2250(IV) for examples to assist in the preparation of proper proposed
`
`amendments in reexamination proceedings.
`
`Submissions
`
`If the patent owner fails to file a timely and appropriate response to any Office action or
`
`any written statement of an interview required under 37 CFR § 1.560(b), the ex parte
`
`

`

`Application/Control Number: 90/014,056
`
`Page 17
`
`Art Unit: 3992
`
`reexamination proceeding will be terminated, and the Director will proceed to issue a certificate
`
`under 37 CFR §l.570 in accordance with the last Office action.
`
`Service of Papers
`
`After the filing of a request for 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. See 37 CFR 1.550(f).
`
`Notification of Concurrent Proceedings
`
`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
`
`US. Patent No. 6,959,293 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.
`
`Correspondence relating to this ex parte reexamination
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`By Mail to: Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 223 13— 1450
`
`By FAX to:
`
`(571) 273—9900
`Central Reexamination Unit
`
`

`

`Application/Control Number: 90/014,056
`
`Page 18
`
`Art Unit: 3992
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 223 14
`
`Registered users of EFS—Web may alternatively submit such correspondence via the
`
`electronic filing system EFS—Web, at https://efs.uspto.gov/efile/myportal/efs—registered. EFS—
`
`Web offers the benefit of quick submission to the particular area of the Office that needs to act
`
`on the correspondence. Also, EFS—Web submissions are “soft scanned” (i.e., electronically
`
`uploaded) directly into the official file for the reexamination proceeding, which offers parties the
`
`opportunity to review the content of their submissions after the “soft scanning” process is
`
`complete.
`
`Any inquiry concerning this communication should be directed to Majid Banankhah at
`
`telephone number 571—272—3770.
`
`/Majid Banankhah/
`Reexamination Specialist
`CRU, Art Unit 3992
`
`Conferees:
`
`/Ovidio Escalante/
`
`/Hetul Patel/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`

`

`
`Control No.
`Patent Under Reexamination
`
`
`
` . 90/014,056 6959293
`Order Granting Request For
`E
`_
`A u _
`Ex Parte Reexamination
`“mm”
`H "'t
`MAJID A. BANANKHAH
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 15 December 201 7 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)IXI PTO/SB/O8,
`
`C)I:I Other:
`
`1. IZI 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 PERMITI'ED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`/Majid Banankhah/
`
`Reexamination Specialist
`
`CRU, Art Unit 3992
`
`if third oart
`cc:Reouester
`US. Patent and Trademark Office
`
`reouester
`
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20180112
`
`
`
`