`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`95/001,927
`
`03/02/2012
`
`7415530.
`
`20132.0005.RX530
`
`3298
`
`26111
`
`7590
`
`05/31/2013
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE,N.W.
`WASHINGTON,DC 20005
`
`EXAMINER
`
`SAGER, MARK ALAN
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`05/3 1/2013
`
`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)
`
`NetApp
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`Exhibit1003
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`Page 1
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`NetApp Exhibit 1003 Page 1
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`

`

`.
`.
`.
`Transmittal of Communication to
`Third Party Requester
`.
`.
`
`
`
`Control No.
`
`95/001,927
`Examiner
`
`MARK SAGER
`
`Patent Under Reexamination
`
`7415530
`Art Unit
`
`3992
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address.--
`
`[ (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) ———q
`
`Tracy W. Druce
`2nd Reexam Group - Novak Druce & Quigg LLP
`1000 Louisiana Street,
`Fifty-Third Floor
`Houston, TX 77002
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent ownerrespondsto this communication,
`the third party requester of the inter partes reexamination may oncefile 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 (85 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 mergedwith the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondencerelating to this inter partes reexamination proceeding should bedirected to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 05212013
`
`NetApp
`
`Exhibit1003
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`Page2
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`
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`NetApp Exhibit 1003 Page 2
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`

`

`Right of Appeal Notice
`(37 CFR 1.953)
`
`Control No.
`
`Patent Under Reexamination
`
`95/001 ,927
`Examiner
`
`
`
`7415530
`Art Unit
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address.--
`
`Responsive to the communication(s)filed by:
`Patent Owner on
`Third Party(ies) on
`
`Patent owner and/or third party requester(s) mayfile a notice of appeal with respect to any adverse decision
`with paymentof the fee set forth in 37 CFR 41.20(b)(1) within one-month or thirty-days (whicheveris
`longer). See MPEP 2671. In addition, a party mayfile a notice of cross appeal and pay the 37 CFR
`41.20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondencerelating 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.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTOwill proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordancewith this Office action.
`
`The proposed amendmentfiled
`
`[] willbe entered
`
`[_] will not be entered*
`
`*Reasons for non-entry are given in the body of this notice.
`
`
`1a. X] Claims 1,2,16-21 and 23 are subject to reexamination.
`1b. X] Claims 3-15 and 22 are not subject to reexamination.
`2. [Claims _____ have been cancelled.
`
`3.
`[x] Claims 1-2, 16-21 and 23 are confirmed. [Unamended patentclaims].
`4. []Claims__ are patentable. [Amendedor new claims].
`5. L)Claims__ are rejected.
`6. L] Claims ____ are objectedto.
`[_] are not acceptable.
`[_]J are acceptable.
`7. [J The drawingsfiledon_____—S@-
`8.
`[_] The drawing correction requestfiled on
`is [] approved. [] disapproved.
`9.
`[_] Acknowledgmentis made ofthe claim for priority under 35 U.S.C. 119 (a)-(d)or (f). The certified copy
`has:
`[_] been received.
`10. _] Other
`
`__[_] not been received.
`
`_] beenfiled in Application/Control No.
`
`,
`
`Attachments
`1.
`[_] Notice of References Cited by Examiner, PTO-892
`2. [] Information Disclosure Citation, PTO/SB/08
`3. C
`
`
`
`U.S. Patent and TrademarkOffice
`PTOL-2066 (08-06)
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 05212013
`
`NetApp
`
`Exhibit1003
`
`Page3
`
`NetApp Exhibit 1003 Page 3
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`

`

`Application/Control Number: 95/001,927
`
`Art Unit: 3992
`
`Page 2
`
`Reexamination
`
`This reexamination of U.S. Patent 7415530 regarding claims 1-2, 16-21 and 23 continues
`
`where no Patent Owner reply was received prior to the expiring of period to respond. Per
`
`Order, the claims 1-10 are not subject of this reexamination. Thus, lacking evidence to
`
`the contrary, this action reiterates the revised ACP mailed April 3, 2013.
`
`References Cited in Request
`
`Aakre et al., (U.S. Patent No. 4,956,808 (hereinafter Aakre)
`
`Ohkubo et al., U.S. Patent No. 4,593,324 (hereinafter Ohkubo)
`
`Chu et al., U.S. Patent 5,130,430 (hereinafter Chu)
`
`Bakeret al., “Lossless Data Compression for Short Duration 3D Framesin Positron
`Emission Tomography”, IEEE, 1994 (hereinafter Baker)
`
`Frenchet al., U.S. Patent 5,794,229 (hereinafter French)
`
`Dyeet al., U.S. Patent No. 7,190,284 (hereinafter Dye)
`
`Rejections Proposedin the Request
`
`1.
`
`The following 15 rejections were proposedin the Request:
`
`Issue 1:
`
`Claims 1, 2, 16, 18-21 and 23 are rendered obvious over Aakre in view of
`
`Dye.
`
`Issue 2:
`
`Claim 17 is rendered obvious over Aakre in view of Dye and further in
`
`view of Baker.
`
`Issue 3:
`
`Claims 1, 2, 20, and 21 are rendered obvious over Aakre in view of
`
`French.
`
`NetApp
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`Exhibit1003
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`Page4
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`NetApp Exhibit 1003 Page 4
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`

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`Application/Control Number: 95/001,927
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`Art Unit: 3992
`
`Page 3
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`Issue 4:
`
`Claims 16 and 17 are rendered obvious over Aakre in view of French and
`
`further in view of Baker.
`
`Issue 5:
`
`Claims 18, 19 and 23 are rendered obvious over Aakre in view of French
`
`and further in view of Dye.
`
`Issue 6:
`
`Claims 1, 2, 16, 18-21 and 23 are rendered obvious over Ohkubo in view
`
`of Dye.
`
`Issue 7:
`
`Claim 17 is rendered obvious over Ohkubo in view of Dye and further in
`
`view of Baker.
`
`Issue 8:
`
`Claims 1, 2, 20 and 21 are rendered obvious over Ohkubo in view of
`
`French.
`
`Issue 9:
`
`Claims 16-18 are rendered obvious over Ohkubo in view of French and
`
`further in view of Baker.
`
`Issue 10:
`
`Claims 19 and 23 are rendered obvious over Ohkubo in view of French
`
`and further in view of Dye.
`
`Issue 11:
`
`Claims 1, 2, 16, 18-21 and 23 are rendered obvious over Chu in view of
`
`Dye.
`
`Issue 12:
`
`Claim 17 is rendered obvious over Chu in view of Dye andfurther in view
`
`of Baker.
`
`Issue 13:
`
`Claims 1, 2, 17, 18, 20 and 21 are rendered obvious over Chu in view of
`
`French.
`
`Issue 14:
`
`Claim 16 is rendered obvious over Chu in view of French andfurther in
`
`view of Baker.
`
`NetApp
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`Exhibit1003
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`Page5
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`NetApp Exhibit 1003 Page 5
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`

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`Application/Control Number: 95/001,927
`
`Art Unit: 3992
`
`Page 4
`
`Issue 15:
`
`Claims 19 and 23 are rendered obvious over Chu in view of French and
`
`further in view of Dye.
`
`3.
`
`The proposedrejections in issues 1-15 are not adopted for reasons stated below.
`
`Response to Amendment
`
`4,
`
`The Declaration by Dr. James W. Modestino in support of the Patent Owner
`
`under 37 CFR 1.132 filed December 21, 2012 is reviewed herein but no weightis
`
`attributed in its consideration over the holdings of applied art to overcomethe rejection of
`
`claims 1-2, 16-21 and 23 based upon Aakre, Ohkubo and Chuasset forth in the last
`
`Office action due in part to disparities noted because: although Dr. Modestinostates his
`
`credentials as an expert in paragraphs 8-13 including its Attachment1, that his
`
`compensation is not dependent on the outcome of that reexamination and in no way
`
`effects the substance of his statements in his declaration with no prioraffiliation with
`
`Realtime (assignee), the Declaration regards the amended claimed invention in reexam
`
`95001922 (hereafter “922) for Patent 7321937 (hereafter ‘937) per header on cover page
`
`and discussion on pages I-11 that discuss Aakre, Ohkubo and Chu wherethere is no
`
`statements to correlate between the claimed invention discussed for ‘937 Patent under
`
`reexam ‘922 in the Declaration or in aforementioned Patent Ownerfiled reply to
`
`associate to claims of ‘530 Patent under reexam ‘927 herein,so it is speculative as to how
`
`the statements in the Declaration for the ‘937 Patent relate to instant claims of ‘530
`
`Patent. However, it appears Patent Ownerdesires statements in the Declaration filed in
`
`reexam '922 to be considered herein due to statements in their reply on pages 19, 32 and
`
`43 discussing the Aakre, Ohkubo and Chu. The statements by Dr. Modestino appear to
`
`address anticipation of the aforementioned references in the reexam ‘922 of the ‘937
`
`NetApp
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`Exhibit1003
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`Page6é
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`NetApp Exhibit 1003 Page 6
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`

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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 5
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`Patent; however, there is no anticipation by those references in reexam “927 and the
`
`Declaration does not address obviousness towards any combination of references applied
`
`in this reexam.
`
`It is noteworthy that the Patentee reply footnote on page 19 states
`
`“Declaration of Dr. James W. Modestino Under 37 C.F.R. §1.132 filed June 20, 2012 in
`
`the reexamination of U.S. Patent 7,321,937, Control No. 95/001,922. The '937 Modestino
`
`Declaration is also attached to this response” to thereby suggest that the Declaration filed
`
`on December 21, 2012 in this ‘927 proceeding is the same Declaration filed June 20,
`
`2012 in the ‘922 proceeding. However, in comparing the two Declarations there are
`
`numerousdisparities that the Declaration in ‘927 is the same Declaration asfiled in ‘922
`
`where the disparities include page length of the Declaration in ‘927 being 12 pages with
`
`46 paragraphs plus 8 redundant paragraphs on pages 10-12 that provide a discussion of
`
`Chu, Aakre, Ohkubo, Baker as mentioned in paragraph 4 of the Declaration in '927; while
`
`the Declaration in '922 has only 6 pages with 23 paragraphs that only discuss Chu as
`
`mentioned in paragraph 4 therein. Another disparity is that paragraph 3 of the
`
`Declaration in the ‘922 proceeding states in part that the expert ‘reviewed and am
`
`familiar with the Office action mailed April 20, 2012’; however, paragraphs 3 and 4 of
`
`the Declaration in the ‘927 proceeding states in part that the expert ‘reviewed and am
`
`familiar with the Office action mailed October 18, 2012’. It is further noted that the
`
`expert signature page in the Declaration showsa date of June 19, 2012, where the Office
`
`action discussed is from October 18, 2012 so it is unclear how temporally a review that
`
`was signed on 19 June 2012 may have considereda yet to be filed Office action in
`
`October andin light that the Declaration in ‘922 only reviewed Chu for an Office action
`
`that regarded anticipation (see paragraph 15 of the '922 Declaration) but the Declaration
`
`NetApp
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`Exhibit1003
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 6
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`in '927 reviewednot only Chu butalso other references (Aakre, Ohkubo and Baker)
`
`where these other references were not applied in the '922 proceedingatleast at the time
`
`of the review of June 19, 2012. Due to these disparities, the Declaration in “927 has been
`
`reviewedand considered but is provided no weight; however, the Examiner provides the
`
`following analysis of the art against scope of amended claims of ‘530 Patent herein.
`
`Regarding Aakre, the Request cites facts showing Aakre discloses (abstract, 1:54-
`
`59, 1:62-2:4, 2:10-13, 17-21 and 43-47, 3:30-50) a system using tape memorythatis
`
`coupled to a data compressor as a data accelerator that receives a data stream where the
`
`data stored to the tape is compressed to increase data density and reduces the time
`
`required to store data on tape that would have been interpreted by an artisan byits plain
`
`meaning that Aakre performs storage occurs faster than said data stream is able to be
`
`stored on said memory in received form since it reduces the time required to store data on
`
`tape resultant from the compression; but, lacking evidenceto the contrary, there is
`
`insufficient factual evidence that Aakre performs "said compression and storage occurs
`
`faster than said data stream is able to be stored on said memorydevice in said received
`
`form” (emphasis added) as present in claim 1, “wherein a bandwidth ofthe received data
`
`stream is determined” and “wherein a data rate of the compressed data stream is adjusted,
`
`by modifying a system parameter to adjust the data rate of the compressed data stream to
`
`make a bandwidth of the compressed data stream compatible with a bandwidth of the
`
`memory device” as present in new claim 24, “wherein the data accelerator is configured
`
`to append a type descriptorto the first and second compressed data blocksin the
`
`compressed data stream, and wherein the type descriptor includes values corresponding
`
`to a plurality of encoding techniques that were applied to the compressed data stream” as
`
`NetApp
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`Exhibit1003
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`Page8
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`NetApp Exhibit 1003 Page 8
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`

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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 7
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`present in new claim 25 and “wherein the data accelerator is configured to adjust the data
`
`rate of the compressed data stream by adjusting a compressionratio of a lossless
`
`encoder” as present in new clam 26.
`
`Regarding Ohkubo, the Request cites facts showing Ohkubo discloses (abstract,
`
`1:54-67, 2:62-63, 2:67-3:8, 3:29-31, 4:10-14 and 22-29) a system having a memory
`
`device and data accelerator as its data compression/expansion device coupled to the
`
`memory device that receives a data stream to compress the received data stream so the
`
`data is inputted and outputted at high speed and the amountof data stored maybefive
`
`times that in the case where no compressionis effected; but lacking evidenceto the
`
`contrary, there is insufficient factual evidence that Ohkubo performs "said compression
`
`and storage occurs faster than said data stream is able to be stored on said memory
`
`device in said received form” (emphasis added) as present in claim 1, “wherein a
`
`bandwidth of the received data stream is determined” and “wherein a data rate of the
`
`compressed data stream is adjusted, by modifying a system parameterto adjust the data
`
`rate of the compressed data stream to make a bandwidth of the compressed data stream
`
`compatible with a bandwidth of the memory device” as present in new claim 24,
`
`“wherein the data accelerator is configured to append a type descriptor to the first and
`
`second compressed data blocks in the compressed data stream, and wherein the type
`
`descriptor includes values corresponding to a plurality of encoding techniques that were
`
`applied to the compressed data stream” as present in new claim 25 and “wherein the data
`
`accelerator is configured to adjust the data rate of the compressed data stream by
`
`adjusting a compressionratio of a lossless encoder” as present in new clam 26.
`
`NetApp
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`Exhibit1003
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`Page9
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`NetApp Exhibit 1003 Page 9
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`

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`Application/Control Number: 95/001,927
`
`Art Unit: 3992
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`Page 8
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`Regarding Chu, the Request cites facts showing Chudiscloses (3:65-68, 4:10-12,
`
`16-20 and 24-38, 6:4-28, 17:3-6, fig 2) a system with a memory deviceasits hard disk
`
`that is coupled to a data accelerator as its integrated chip receives a data stream and
`
`compresses the data stream where the encodercircuit is sufficiently fast at performing the
`
`necessary encoding operations, the use of the data compression and decodingcircuits will
`
`be “seamless” in that their performance would notaffect the performance of the computer
`
`system except that the amountof data that could be stored on the hard disk would be
`
`approximately doubled; but, lacking evidence to the contrary, there is insufficient factual
`
`evidence that Chu performs "said compression and storage occurs faster than said data
`
`stream is able to be stored on said memory devicein said received form” (emphasis
`
`added) as present in claim 1, “wherein a bandwidth of the received data stream is
`
`determined” and “wherein a data rate of the compressed data stream is adjusted, by
`
`modifying a system parameter to adjust the data rate of the compressed data stream to
`
`make a bandwidth of the compressed data stream compatible with a bandwidth of the
`
`memory device” as present in new claim 24, “wherein the data accelerator is configured
`
`to append a type descriptorto the first and second compresseddata blocks in the
`
`compressed data stream, and wherein the type descriptor includes values corresponding
`
`to a plurality of encoding techniques that were applied to the compressed data stream” as
`
`present in new claim 25 and “wherein the data accelerator is configured to adjust the data
`
`rate of the compressed data stream by adjusting a compressionratio of a lossless
`
`encoder” as present in new clam 26.
`
`NetApp
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`Exhibit1003
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`Page 10
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`NetApp Exhibit 1003 Page 10
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 9
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`Response to Arguments
`
`5.
`
`Responsive to aforementioned Patent Owner's reply/arguments, the examiner
`
`generally agrees with facts cited in their Reply with review of their expert testimony
`
`above regarding appliedart for the original claims and newly addedclaims for reasons
`
`stated next. Facts stated in Request are relied on herein. For consistency, the discussion
`
`herein follows discussion of applied art in turn as presentedin their reply rather than each
`
`rejection/issue in turn. For the record, Patentee refers to claim 13 (page 23) is not
`
`considered herein since that claim is not reexamined per Decision mailed Aug 31, 2012.
`
`a.
`
`Obviousness of Aakre in view of Dye, Baker and/or French for claims 1-2,
`
`16-21 and 23:
`
`Patent Owner: In summary,the Patent Ownerargues on pages 9-12 that Aakre
`
`and Dye, Baker and/or French fails to disclose each and every elementof claim | since
`
`Aakre fails to teach claimed “said compression and storage occurs faster than said data
`
`stream is able to be stored on said memory device in said received form’ and Dye, Baker
`
`and French fail to remedy this deficiency. Therefore, Patent Owner requests claim 1-2,
`
`16-21 and 23 to be confirmedand issues 1-5 to be withdrawn.
`
`Examiner: As stated in paragraph 4 above, lacking evidenceto the contrary, there
`
`is insufficient factual evidence to support Aakre performs ‘said compression and storage
`
`occurs faster than said data stream is able to be stored on said memory devicein said
`
`received form’ andthereis insufficient factual support that Dye, Baker and/or French
`
`remedy this deficiency to fail to establish a prima facie case of obviousness. Thus,
`
`obviousness of claim 1-2, 16-21 and 23 over Aakre with Dye, Baker and/or French for
`
`issues 1-5 are not adopted.
`
`NetApp
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`Exhibit1003
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 10
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`b.
`
`Obviousness of Aakre in view of Dye, Baker and/or French for claim 24:
`
`Patent Owner: The Patent Ownerasserts on pages 18-21 with reference to their
`
`Declaration that Aakre and Dye, Baker and/or French fails to disclose each and every
`
`element of new claim 24 since Aakre and Dye, Baker and/or French aloneor in
`
`combination fails to disclose “wherein a bandwidth of the received data stream is
`
`determined” and “wherein a data rate of the compressed data stream is adjusted, by
`
`modifying a system parameter, to make a bandwidth of the compressed data stream
`
`compatible with a bandwidth of the memory device” as present in claim 24 since each of
`
`the applied referencesis silent with regardsto this feature. Therefore, Patent Owner
`
`requests claim 24 to be allowed.
`
`Examiner: Although not stated by Patentee, claim 24 includes the element(s)
`
`lacking in claim 1 by the same applied art noted above and therefore, is patentable at least
`
`for reason stated above with regards to claim 1. Further, as stated in paragraph 4 above,
`
`lacking evidence to the contrary, there is insufficient factual evidence to support Aakre
`
`performs “wherein a bandwidth of the received data stream is determined” and “wherein
`
`a data rate of the compressed data stream is adjusted, by modifying a system parameter,
`
`to make a bandwidth of the compressed data stream compatible with a bandwidth of the
`
`memory device” andthere is insufficient factual support that Dye, Baker and/or French
`
`remedy this deficiency to fail to establish a prima facie case of obviousness.
`
`Cc.
`
`Obviousness of Ohkubo in view of Dye, Baker and/or French for claims 1-
`
`2, 16-21 and 23:
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`NetApp
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 11
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`Patent Owner: The Patent Owneralleges on pages 22-25 that Ohkubofails to
`
`disclose the broadest reasonable interpretation of “receiving a data stream" since they
`
`allege Ohkuboretrieves data from a memory device that is not by receiving a continuous
`
`stream of data elements from a source or sources. The Patent Ownerallege the assignee
`
`of Ohkubopatent is Fuji Xerox and its input device regards a scanner, fax machineor the
`
`like and the Ohkubopatent does not teach or suggest "receiving a stream of data" as this
`
`term is defined and used by "530 patent. The Patent Owneralleges no prima facie case
`
`of obviousness has been established for Ohkubo and Dye, Baker and/or French alone or
`
`in combination regarding “receiving a data stream". Therefore, Patent Owner requests
`
`claim 1-2, 16-21 and 23 to be confirmed and issues 6-10 to be withdrawn.
`
`Examiner: The Examiner doesnot agree with Patent Owner’s alleged scope since
`
`continuousis not claimed, the Patent Ownerfailed to act as their own lexicographer in
`
`this case and did not present facts to show a ‘continuous’ data stream was necessarily
`
`present so as to be inherent where although a data stream is claimedit is not required for
`
`the data stream to be continuous where Patentee failed to sufficiently define the term data
`
`stream to provide disclosure to the public of the boundary of the invention in exchange
`
`for the rights that a patent grants. However, as noted in paragraph 4, lacking evidence to
`
`the contrary, there is insufficient factual evidence to support Ohkubo performs ‘said
`
`compression and storage occurs faster than said data stream is able to be stored on said
`
`memory device in said received form’ andthere is insufficient factual support that Dye,
`
`Baker and/or French remedy this deficiency to fail to establish a prima facie case of
`
`obviousness. Thus, obviousness of claim 1-2, 16-21 and 23 over Ohkubo and Dye, Baker
`
`and/or Frenchfor issues 6-10 are not adopted.
`
`NetApp
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 12
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`Obviousness of Ohkubo in view of Dye, Baker and/or French for claim
`
`d.
`
`24:
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`Patent Owner: The Patent Owner remarks on pages 31-34 with referenceto their
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`Declaration that Ohkubo and Dye, Baker and/or Frenchfails to disclose each and every
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`element of new claim 24 since Ohkubo and Dye, Baker and/or French aloneor in
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`combination fails to disclose “wherein a bandwidth of the received data stream is
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`determined” and “wherein a data rate of the compressed data stream is adjusted, by
`
`modifying a system parameter, to make a bandwidth of the compressed data stream
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`compatible with a bandwidth of the memory device” as present in claim 24 since each of
`
`the applied referencesis silent with regardsto this feature. Therefore, Patent Owner
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`requests claim 24 to be allowed.
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`Examiner: Although not stated by Patentee, claim 24 includes the element
`
`lacking in claim | by the same applied art noted above and therefore, is patentable at least
`
`for reason stated above with regards to claim 1. Further, as stated in paragraph 4 above,
`
`lacking evidence to the contrary, there is insufficient factual evidence to support Ohkubo
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`performs “wherein a bandwidth of the received data stream is determined” and “wherein
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`a data rate of the compressed data stream is adjusted, by modifying a system parameter,
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`to make a bandwidth of the compressed data stream compatible with a bandwidth of the
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`memory device” and thereis insufficient factual support that Dye, Baker and/or French
`
`remedy this deficiency to fail to establish a prima facie case of obviousness.
`
`e.
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`Obviousness of Chu in view of Dye, Baker and/or French for claims 1-2,
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`16-21 and 23:
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`NetApp
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`Exhibit1003
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`NetApp Exhibit 1003 Page 14
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 13
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`Patent Owner: In summary,the Patent Owner argues on pages 34-36 that Chu
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`and Dye, Baker and/or French fails to disclose each and every elementof claim | since
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`Chu is fundamentally incompatible and thus cannot be combined with the teachings of
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`Dye or French. Therefore, Patent Owner requests claim 1-2, 16-21 and 23 to be
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`confirmedandissues 11-15 to be withdrawn.
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`Examiner: As stated in paragraph 4 above, lacking evidenceto the contrary, there
`
`is insufficient factual evidence to support Chu performs ‘said compression and storage
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`occurs faster than said data stream is able to be stored on said memory devicein said
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`received form’ andthereis insufficient factual support that Dye, Baker and/or French
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`remedy this deficiency to fail to establish a prima facie case of obviousness. Thus,
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`obviousness of claim 1-2, 16-21 and 23 over Chu with Dye, Baker and/or French for
`
`issues 11-15 are not adopted.
`
`f.
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`Obviousness of Chu in view of Dye, Baker and/or French for claim 24:
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`Patent Owner: The Patent Ownerasserts on pages 42-45 with reference to their
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`Declaration that Chu and Dye, Baker and/or French fails to disclose each and every
`
`element of new claim 24 since Chu and Dye, Baker and/or French aloneor in
`
`combination fails to disclose “wherein a bandwidth of the received data stream is
`
`determined” and “wherein a data rate of the compressed data stream is adjusted, by
`
`modifying a system parameter, to make a bandwidth of the compressed data stream
`
`compatible with a bandwidth of the memory device” as present in claim 24 since each of
`
`the applied referencesis silent with regardsto this feature. Therefore, Patent Owner
`
`requests claim 24 to be allowed.
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`NetApp
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`Exhibit1003
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`Page 15
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`NetApp Exhibit 1003 Page 15
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 14
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`Examiner: Although not stated by Patentee, claim 24 includes the element
`
`lacking in claim 1 by the same applied art noted above and therefore, claim 24 is
`
`patentable at least for reason stated above with regards to claim 1. Further, as stated in
`
`paragraph 4 above, lacking evidence to the contrary, there is insufficient factual evidence
`
`to support Chu performs “wherein a bandwidth of the received data stream is
`
`determined” and “wherein a data rate of the compressed data stream is adjusted, by
`
`modifying a system parameter, to make a bandwidth of the compressed data stream
`
`compatible with a bandwidth of the memory device” andthere is insufficient factual
`
`support that Dye, Baker and/or French remedy this deficiencyto fail to establish a prima
`
`facie case of obviousness.
`
`g.
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`Aakre, Baker, Chu, Dye, French and Ohkubo do not disclose new features
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`present in claims 25 and 26:
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`Patent Owner: The Patent Owneralleges with reference to their Declaration on
`
`pages 45-49 that Aakre, Baker, Chu, Dye, French and Ohkubofails to disclose each and
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`every element of new claims 25 and 26 since Aakre, Baker, Chu, Dye, French and
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`Ohkubo donotdisclose, teach or suggest a “type descriptor includes values
`
`correspondingto a plurality of encoding techniques that were applied to the compressed
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`data stream” as present in new claim 25 andability “to adjust the data rate of the
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`compressed data stream by adjusting a compressionratio of a lossless encoder” as present
`
`in new clam 26. Essentially, Patent Ownerasserts the references fail to disclose applying
`
`a plurality of encoding techniques to the compressed data stream as present in claim 25
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`NetApp
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`Exhibit1003
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`NetApp Exhibit 1003 Page 16
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 15
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`and that the references do not mention the ability to adjust a compressionratio.
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`Therefore, Patent Owner requests claims 25-26 to be allowed.
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`Examiner: Although not stated by Patentee, claims 25-26 by their dependency
`
`upon claim | include the element(s) lacking by the same applied art noted above and
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`therefore, claims 25-26 are patentable at least for reason stated above with regards to
`
`claim 1. Regarding claim 25, the claim language doesnotinclude or require applying a
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`plurality of encoding techniques to the compressed data stream as stated by Patent Owner
`
`on pages 45-49 and ’530 Patent includes no/null compression encoding, a singular
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`encoding or a plurality of encoding techniques (7:28-32, 9:47-51), so the Examiner does
`
`not agree with Patent Owner’s alleged scope since the claim language does not include or
`
`require applying a plurality of encoding techniques to the compressed data stream, the
`
`Patent Ownerfailed to act as their own lexicographerin this case and did not present
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`facts to show a' plurality of encoding techniques to the compressed data stream’ was
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`necessarily present so as to be inherent where although “wherein the type descriptor
`
`includes values corresponding to a plurality of encoding techniques to the compressed
`
`data stream is claimedit is not required for the data stream to be compressed by a
`
`plurality of encoding techniques’’, contrarily to Patentee opine the language merely
`
`requires a descriptor having a value of a plurality of encoding techniques where Patentee
`
`failed to sufficiently/adequately define the term/phrase to provide disclosure to the public
`
`of the boundary of the invention in exchangefor the rights that a patent grants. Contrary
`
`to Patent Owner, the null/no encoding and singular encoding technique regardsa plurality
`
`of encoding techniques that are applied to the data stream. However, as stated in
`
`paragraph 4 above, lacking evidence to the contrary, there is insufficient factual evidence
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`NetApp
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`Exhibit1003
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`NetApp Exhibit 1003 Page 17
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`Page 16
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`to support Aakre, Ohkubo and/or Chu performs “wherein the data acceleratoris
`
`configured to append a type descriptor to the first and second compressed data blocks in
`
`the compressed data stream, and wherein the type descriptor includes values
`
`correspondingto a plurality of encoding techniques that were applied to the compressed
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`data stream” as present in new claim 25 and “wherein the data accelerator is configured
`
`to adjust the data rate of the compressed data stream by adjusting a compressionratio of a
`
`lossless encoder” as present in new clam 26. With consideration of the stated scope of
`
`claim 25 above, Dye teaches(abstract, 13:52-56, 26:50-27:3, 32:13-15, 35:56-36:4,
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`38:14-40:3) to store compression mode information in the headerandto strip the header
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`for the compression modeto thereby suggest “wherein the data accelerator is configured
`
`to append a type descriptorto the first and second compressed data blocks in the
`
`compressed data stream, and wherein the type descriptor includes values corresponding
`
`to a plurality of encoding techniques that were applied to the compressed data stream’’; so
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`the combination of Aakre, Ohkubo and/or Chu with Dye includes the function of claim
`
`25, but claim 25 is patentable as noted abovefor its dependency to claim 1. Finally,
`
`regarding claim 26, there is insufficient factual support that Dye, Baker and/or French
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`remedy the deficiency to fail to establish a prima facie case of obviousness.
`
`Claim Rejections - 35 USC § 102/103
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`6.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be
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`found in a prior Office action.
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`Issue 1
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`Requester Proposed Rejection (Not Adopted)
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`NetApp
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`Exhibit1003
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`Application/Control Number: 95/001,927
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`Art Unit: 3992
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`7.
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`Claims 1-2, 16, 18-21 and 23 are proposed as being unpatentable over Aakre
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`(U.S. Patent No. 4,956,808) in view of Dye (U.S. Patent No. 7,190,284). This rejection
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`was propo