`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`‘
`_
`Alexandria. Virgmm 22313-1450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,926
`
`03/02/2012
`
`7161506 .
`
`20132.0005.RX506
`
`5983
`
`26ll1
`7590
`04/25/2012
`STEMKESSLER,GOLDSTEMFOXRLLC.
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`_
`
`LEUNG, CHRISTINA Y
`ART UNIT
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`04/25/2012
`
`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,o4/o7)
`
`NetApp; Rackspace
`
`Exhibit 1009 Page 1
`
`NetApp; Rackspace Exhibit 1009 Page 1
`
`

`

`“ '
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box I450
`Alexandria, VA 223l3-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`NOVAK DRUCE + QUIGG LLP
`2ND REEXAM GROUP
`
`'
`
`1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
`H
`T N TX 002
`OUS O a
`77
`
`Date:
`
`‘
`
`‘
`
`V'
`
`AP” ra\
`,
`.
`- " ‘ L
`.
`CENTRJlLREiMMlNATlONLNEI'
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001926
`
`PATENT NO. : 7161506
`
`TECHNOLOGY CENTER : 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 filing 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 should 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.
`
`PTOLc2070(Rev.O7-O4)
`
`NetApp;Rackspace
`
`Exhibit1009 Page2
`
`NetApp; Rackspace Exhibit 1009 Page 2
`
`

`

`OFFICE ACTION IN INTER PARTES
`
`REEXA MINA TION Christina Y. Leun
`
`Control No.
`95,001.926
`
`Examiner
`
`Patent Under Reexamination
`
`I
`
`Art Unit
`
`3992
`
`-- The MAILING DA TE of 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 02 March 2012
`
`RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
`
`For Patent Owner's Response:
`2 MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
`GOVERNED BY 37 CFR 1.956.
`
`For Third Party Requester's Comments on the Patent Owner Response:
`30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
`OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
`
`All 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.
`
`This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
`37 CFR 1.953.
`’
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1D Notice of References Cited by Examiner, PTO-892
`2. Information Disclosure Citation, PTO/SB/08
`
`31:]
`PART II. SUMMARY OF ACTION:
`
`
`1a. {XI Claims 91 97 and 99 are subject to reexamination.
`
`Claims 1-90 92-96 and 98 are not subject to reexamination.
`
`1b.
`
`2.
`
`[:I Claims
`
`have been canceled.
`
`3. E] Claims __ are confirmed. [Unamended patent claims]
`
`4. El Claims __ are patentable. [Amended or new claims]
`
`5. X Claims 91 97 and 99 are rejected.
`
`[:1 Claims __ are objected to.
`6.
`E] are not acceptable.
`El are acceptable
`7. E] The drawings filed on
`8.
`[:1 The drawing correction request filed on
`is:
`E] approved.
`[:1 disapproved.
`9. El Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (aHd). The certified copy has:
`'
`E] been received.
`I] not been received.
`E] been filed in Application/Control No 95001926.
`
`10. C] Other __
`
`
`
`US. Patent and Trademark Office
`PTOL-2064 (08/06)
`
`I
`
`Paper No. 20120404
`
`NetApp;Rackspace
`
`Exhibit1009 Page3
`
`NetApp; Rackspace Exhibit 1009 Page 3
`
`

`

`Application/Control Number: 95/001,926
`
`'
`
`Page 2 -
`
`Art Unit: 3992
`
`DETAILED ACTION
`
`Reexamination
`
`1.
`
`Claims 91, 97, and 99 of Fallon (US 7,161,506 B2) are being reexamined. Claims 1-90,
`
`92-96, and 98 are not being reexamined.
`
`References and Documents Cited in this Action
`
`Fallon (US 7,161,506 B2)
`
`Sebastian (US 6,253,264 B1)
`
`Kawashima (US 5,805,932 A)
`
`3PR Request (request for reexamination filed 02 March 2012)
`
`‘
`
`Claim Rejections - 35 USC § 103
`
`i
`
`2.
`
`The following is a quotation of 35 USC. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A' patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section l02 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`3.
`
`Claims 91, 97, and 99 are rejected under 35 USC. 103(a) as being unpatentable over
`
`Sebastian in View of Kawashima.
`
`These rejections are adopted substantially as proposed by 3PR in 3PR Request.
`
`Regarding claims 91, 97, and 99, Sebastian discloses a method comprising:
`
`receiving a data block, wherein the data block is included in a data stream (column 1,
`lines 19—23);
`v
`
`outputting the data block in a compressed form (column 3, lines 31-36; column 5, lines,
`
`14-18);
`
`NetApp;Rackspace
`
`Exhibit1009 Page4
`
`NetApp; Rackspace Exhibit 1009 Page 4
`
`

`

`Application/Control Number: 95/001,926
`
`'
`
`Page 3
`
`, Art Unit: 3992
`
`wherein outputting the data block in the compressed form comprises determining whether
`
`to compress the data block with content dependent data compression based on the type of the
`
`data block (column 2, lines 1-42; column 5, lines 14-18; column 6, lines 22-40) or to compress
`
`the data block with a single data compression encoder (i.e., Sebastian discloses a generic
`
`compression system; column 1, lines 55-60; column 4, lines 9-20).
`
`Further regarding claims 91, 97, and 99, Sebastian does not disclose determining whether
`
`to output the data block in received form or in a compressed form; and outputting the data block
`
`in received form or the compressed form based on the determination.
`
`However, Kawashima teaches a system that is related to the one described by Sebastian,
`
`including data compression, and further teaches determining whether to output the data block in
`
`received form (i.e., as “pre-compression data”) or in a compressed form»; and outputting the data
`
`block in received form or the compressed form based on the determination (column 29, lines 43-
`
`67; column 30, lines 1-23).
`
`Regarding claims 91, 97, and 99, it would have been obvious to a person of ordinary skill
`
`in the art to output the data block in received form or in compressed form based on a
`
`determination as taught by Kawashima in the method disclosed by Sebastian in order to ensure
`
`that resources are used for compression only when compression would be effective.
`
`Further regarding claim 91 in particular, Sebastian discloses compressing the data block
`
`to provide the data block in the compressed form in accordance with the determination whether
`
`to compress the data block with content dependent data compression or the single data
`
`compression encoder, wherein the data block in the compressed form is provided by a lossy
`
`compression technique (e.g., when “some data loss may be acceptable” or when some precision
`
`NetApp;Rackspace
`
`Exhibit1009 Page5
`
`NetApp; Rackspace Exhibit 1009 Page 5
`
`

`

`Application/Control Number: 95/001 ,926
`
`Art Unit: 3992
`
`Page 4
`
`in floating point values is lost; column 3, lines 39-42; column 18, lines 62-67; column 19, lines
`
`1-10).
`
`Further regarding claim 97 in particular, Sebastian discloses that the single data
`
`compression encoder is lossless (e.g., the default filter may use LZ compression, which is
`
`lossless; column 4, lines 9-20) and at least one encoder associated with the content dependent
`
`data compression is lossy (e.g., when “some data loss may be acceptable” or when some
`
`precision in floating point values is lost; column 3, lines 39-42; column 18, lines 62-67; column
`
`19, lines 1-10).
`
`Further regarding claim 99 in particular, Sebastian discloses that the single data
`
`compression encoder is lossless (e.g., the default filter may use LZ compression, which is
`
`lossless; column 4, lines 9-20), at least one encoder associated with the content dependent data
`
`compression is lossless, and at least another oneencoder associated with the content dependent
`
`data compression is lossy (i.e., Sebastian discloses that some of the content dependent
`
`compression can be lossless while some of the content dependent compression can be lossy when
`
`“some data loss may be acceptable” or when some precision in floating point values is lost;
`
`column 3, lines 39-42; column 18, lines 62-67; column 19, lines 1-10).
`
`Conclusion
`
`4.
`
`In order to ensure fiill consideration of any amendments, affidavits or declarations, or
`
`other documents as evidence of patentability, such documents must be submitted in response to
`
`this Office action. Submissions after the next Office action, which is intended to be an Action _
`
`Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d), which will be strictly
`
`enforced.
`
`NetApp;Rackspace
`
`Exhibit1009 Page6
`
`NetApp; Rackspace Exhibit 1009 Page 6
`
`

`

`Application/Control Number: 95/001,926
`Art Unit: 3992
`
`,
`
`'
`
`Page 5
`
`5.
`
`All correspondence relating to this inter partes reexamination proceeding should be
`
`directed:
`
`By mail to:
`
`By fax to:
`
`By hand to:
`
`Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`
`Commissioner of Patents
`
`United States Patent & Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`(571) 273-9900
`Central Reexamination Unit
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner, or as to the status of this proceeding, should be directed to the Central Reexamination
`
`Unit at telephone number (571) 272-7705.
`
`/Christina Y. Leung/
`
`Primary Examiner, Art Unit 3992
`
`/D.M.H./
`
`Primary Examiner, Art Unit 3992
`
`/Daniel J Ryman/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`NetApp;Rackspace
`
`Exhibit1009 Page7
`
`NetApp; Rackspace Exhibit 1009 Page 7
`
`