UNITED STA TES p A TENT 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.
`
`CONFIRMATION NO.
`
`90/013,740
`
`05/18/2016
`
`8155012
`
`3 lAE-226116
`
`1868
`
`06/14/2017
`7590
`27572
`HARNESS, DICKEY & PIERCE, P.L.C.
`P.O. BOX 828
`BLOOMFIELD HILLS, MI 48303
`
`EXAMINER
`
`CRAVER, CHARLES R
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`06/14/2017
`
`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)
`
`CISCO 1036
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`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`379 LYTTON AVENUE
`PALO AL TO, CA 94301
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/013.740.
`
`PATENT NO. 8155012.
`
`ART UN IT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 2
`
`h Summary
`
`ADVISORY ACTION
`
`In the instant 90/013,740 Reexamination of US Pat 8,155,012 ( "the '012
`
`Patent"), claims 1-148 are under reexamination in light of the Order Granting
`
`Reexamination mailed 6/21/2016 in response to the Request for reexamination filed
`
`4/27/2016 by the Third Party Requestor. Claims 1-148 stand finally rejected.
`
`II. Notice Regarding Certain Reexamination Issues
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in this
`
`reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an
`
`applicant" and not to the patent owner 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).
`
`The Patent Owner is reminded of the continuing responsibility under 37 CFR
`
`1.985 to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 8,155,012 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 § 2686 and 2686.04.
`
`Any paper filed by either the patent owner or the third party requester must be
`
`served on the other party in the reexamination proceeding in the manner provided by
`
`37 CFR 1.248. See 37 CFR 1.903 and MPEP 2666.06.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 3
`
`Pending Proceedings
`
`The instant '012 Patent is currently the subject of two pending Inter Partes
`
`Reviews before the Patent Trial and Appeal Board. See IPR2016-01389 and IPR2017-
`
`00790. These two are currently joined. Two other Inter Partes Reviews are no longer
`
`pending, however such are noted as part of the prosecution history of the instant patent.
`
`See IPR2016-00983 and IPR2016-01425.
`
`Ill. Affidavit/Declaration
`
`Patent Owner files, concurrent with his Remarks, Declarations by John
`
`Austermann Ill and Albert McGilvra, under 37 CFR 1.132.
`
`(e) An affidavit or other evidence submitted after a final rejection or other final
`action (§ 1 .113) in an application or in an ex parte reexamination filed under
`§1.510, or an action closing prosecution (§ 1.949) in an inter partes
`reexamination filed under§ 1.913 but before or on the same date of filing an
`appeal (§ 41.31 or§ 41.61 of this title), may be admitted upon a showing of good
`and sufficient reasons why the affidavit or other evidence is necessary and was
`not earlier presented.
`
`37 CFR 1 .116, Amendments and affidavits or other evidence after final action
`
`and prior to appeal (emphasis added).
`
`Patent Owner here asserts that these Declarations are in response to the Final
`
`Action mailed 2/16/2017, arguing first that the Office presented construction of certain
`
`claim terms in the Final Action, and second that an after Final interview of 5/3/2017
`
`provided 'technical interpretations' as to the invention. Response at 6-7.
`
`First, the Final Action of 2/16/2017 did not change the construction of claim terms
`
`in the instant claims as they apply in the rejection. In his 12/8/2016 Response to the
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 4
`
`Non-Final Action mailed 9/8/2016, Patent Owner argued various claim terms, and in the
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`Final Rejection in response thereto the Examiner presented arguments in opposition in
`
`part noting the pre-existing record of claim interpretation present in the prosecution
`
`history of the instant patent. The Office did not change the construction of claim terms
`
`as applied in the rejection, nor did the ground of rejection change, and it is noted that
`
`the aforementioned arguments by the Examiner did not differ from those presented in
`
`the Request.
`
`Second, the while Patent Owner may have intended the Interview of 5/3/2017 to
`
`clarify certain issues regarding the claims and the prior art, the Examiner did not in the
`
`Interview present any new or different interpretation of the references or claim terms as
`
`they apply in the rejection. It is noted here that while Patent Owner asserts that he did
`
`not have the benefit of an interview, in his original 3/24/2017 Request for Extension of
`
`Time he made no mention of needing an interview to clarify any issues with the Office;
`
`rather Patent Owner merely requested additional time to continue to prepare his written
`
`response. Later, Patent Owner petitioned for and was granted another extension of time
`
`for the purposes of an interview; Patent Owner failed to provide, for the Interview, any
`
`written statement of the issues to be discussed as required by Office policy.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 5
`
`If t!1e examiner agrees to grant the interview, tile patent owner must file, at least t!1ree
`(3) working days prior to the intervimN, an informal written statement of the issues to be
`discussed al the interview, and an informal copy of any proposed claims to be
`discussed, unless examiner waives this requirement Tr1e copy of these materials is to
`be submitted by facsimile transmission (FAX) directly to the examiner or hand-carried to
`the examiner so as to avoid the possibility of delay in matching the materials 'vVitil the file.
`The informal copies that are considered by the examiner will be made of record in the
`reexamination proceeding as an attachment to the Interview Summary form PTOL-474
`completed by the examiner after the interviewc These preliminary steps are for the
`purpose of providing structure to Um interview so as to f acilitale H1e statutory man dale
`for special dispatch.
`
`MPEP 2281, Interviews in Ex Parte Reexamination Proceedings
`
`Because of this, the Interview was limited to a general discussion of the claims
`
`and the prior art references as the Office was not provided with any statement as to any
`
`specific questions or requests for clarification by the Patent Owner. If Patent Owner
`
`intended to clarify certain issues and determine the scope of certain claim terms above
`
`and beyond the existing record in this proceeding, he would certainly have disclosed
`
`those specifics to the panel prior to the Interview itself.
`
`As Patent Owner fails to provide a showing of good and sufficient reasons why
`
`the declarations or other evidence is necessary and was not earlier presented, the
`
`Declarations of 2/8/2016 are not entered and will not be addressed in this response.
`
`See also MPEP 714.12 and MPEP 2260.
`
`Patent Owner's own non-Declaration arguments are addressed below inasmuch
`
`as they do not depend thereon.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`IV. Response to Arguments
`
`Page 6
`
`Patent Owner provides arguments towards the previous rejections on pp. 7-60 of
`
`his Response. The Examiner responds below.
`
`A. Claim Interpretation
`
`On pp. 14-25 of his Response, Patent Owner first asserts the proper
`
`interpretation of certain claim terms.
`
`First, Patent Owner notes that certain terms have been provided a broadest
`
`reasonable interpretation (BRI) by the Patent Trial and Appeal Board (the Board) in
`
`various Inter Partes Reviews either pending or otherwise in connection with the instant
`
`Patent (see above for a list of both). Patent Owner notes the terms "distinguishing
`
`information", "BaseT" and "Protocol" were all defined by the Board. Remarks at 14.
`
`"Associating Distinguishing Information About The Piece Of Ethernet Data
`
`Terminal Equipment"
`
`As noted above, Patent Owner notes the term "distinguishing information" was
`
`defined by the Board. However, the Examiner points out that other related terms in the
`
`instant claims were also addressed in the Board's determination; regarding the claim
`
`limitation "distinguishing information about the piece of Ethernet data terminal
`
`equipment", the Board found the following:
`
`In addition, "Ethernet data terminal equipment" appears only in the claims. The
`'012 patent describes, for example, that "information such as confirmation of the status
`information or additional data about an external device 18, such as the computer 3A" is
`provided to the remote module 16. Ex. 1001, 6:19-24 (emphasis added). While the claim
`uses the term "Ethernet data terminal equipment," it is clear that the distinguishing
`information limitation relates more generally to an external device that is implemented
`with a computer network employing twisted pair wiring such as Ethernet. Id. at 5:14-18.
`In support of its proposed construction of the distinguishing information claim
`limitation, Patent Owner cites to the construction given by the District Court in the '881
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 7
`
`and '618 Lawsuits. Prelim. Resp. 13 (citing Ex. 2017, 15; Ex. 2030, 22). In the '881
`Lawsuit, the District Court construed the distinguishing information claim limitation as
`"information to distinguish the piece of Ethernet data terminal equipment from at least
`one other piece of Ethernet data terminal equipment." Ex. 2017, 15. The District Court
`found that
`Defendants' proposal of requiring differentiating "each piece" of terminal
`equipment from "each other piece" of terminal equipment is unclear, is
`inconsistent with the intrinsic evidence as set forth above, and would likely
`confuse rather than clarify the scope of the claims. It is particularly unclear
`whether a piece of terminal equipment would need to be differentiated from every
`other piece of terminal equipment on a particular network, in a particular location,
`in the entire world, or in some other context.
`Ex. 2017, 14 (emphasis added). Accordingly, the District Court determined that
`"the 'distinguishing information' in the claims is not limited to 'identifying' information, but
`instead includes information about an attribute of the device that differentiates it from
`another device." Id. at 12 (emphasis added). We agree with the determination by the
`District Court that the distinguishing information claim limitation includes distinguishing
`information about an attribute of the device that differentiates it from another device. See
`Ex. 2017, 14. For the reasons discussed above, we do not agree with the portion of the
`District Court construction that limits the distinguishing information to requiring
`differentiation from only another piece of Ethernet data terminal equipment instead of
`another device generally. Id. Accordingly, we determine that Patent Owner fails to
`establish that an exception to the ordinary and customary meaning should be applied to
`restrict the distinguishing information to distinguishing only over another piece of
`Ethernet data terminal equipment.
`Therefore, we construe the claim phrase "distinguishing information about the
`piece of Ethernet data terminal equipment is associated to impedance within the at least
`one path" to mean "distinguishing information about the piece of Ethernet data terminal
`equipment, including information that differentiates it from another device, wherein the
`information is capable of being associated to impedance within the at least one path."
`
`IPR2016-01389 Decision Instituting Inter Partes Review at 9-10.
`
`Patent Owner argues in pp. 16-20 of Remarks that the claims are only towards a
`
`piece of data terminal equipment (DTE), and are not to be construed as including
`
`ancillary components, and that the claimed steps of associating and selecting must
`
`occur within the DTE. The Examiner disagrees.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Taking claim 1 as an example:
`
`Page 8
`
`1. A method for adapting a piece of Ethernet data terminal equipment, the
`piece of Ethernet data terminal equipment having an Ethernet connector, the
`method comprising:
`selecting contacts of the Ethernet connector comprising a plurality of contacts, the
`selected contacts comprising at least one of the plurality of contacts of the Ethernet
`connector and at least another one of the plurality of contacts of the Ethernet connector;
`coupling at least one path across the selected contacts of the Ethernet connector; and
`associating distinguishing information about the piece of Ethernet data terminal
`equipment to impedance within the at least one path.
`
`Instant claim 1 does not whatsoever require that the steps of selecting or
`
`associating occur within the DTE. A further network device or other piece of DTE
`
`performing the step of associating, for example, meets the claim limitation as long as it
`
`associates distinguishing information as claimed.
`
`Taking claim 31 as an example:
`
`31. An adapted piece of Ethernet data terminal equipment comprising:
`an Ethernet connector comprising a plurality of contacts; and
`at least one path coupled across selected contacts, the selected contacts comprising at
`least one of the plurality of contacts of the Ethernet connector and at least another one
`of the plurality of contacts of the Ethernet connector, wherein distinguishing information
`about the piece of Ethernet data terminal equipment is associated to impedance within
`the at least one path.
`
`What is noted above is also true as to claims 31, 67 and 108; none of the
`
`independent claims require that the associating, for example, occur within the DTE.
`
`Claims 31 and 108 are product claims, and thus do not require a measurement or an
`
`actual association at all. Thus the "associating" limitation in claims 31 and 108 are not
`
`limited to occurring within the DTE itself in a similar manner as with claim 1 above.
`
`Rather a reference which describes such distinguishing information that is capable of
`
`being associated to impedance within the at least one path will be read as meeting the
`
`claim. It is further noted here that, with respect to claim 1, the patent background
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`Application/Control Number: 90/013,740
`Art Unit: 3992
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`Page 9
`
`teaches not only a DTE device 16, but also a network element 15 which communicates
`
`therewith and in part distinguishes the DTE element. Element 15 may be read as
`
`performing at least a portion of the step of associating distinguishing information of the
`
`DTE, and thus there is no specific teaching in the patent that any step of associating
`
`distinguishing information is restricted solely to the DTE element as argued by Patent
`
`Owner.
`
`Thus, reading the claims properly in light of the specification, the claimed steps of
`
`associating information do not necessarily occur within the claimed DTE.
`
`More specifically towards "distinguishing", the Examiner further notes as to the
`
`term "distinguishing information about the piece of Ethernet data terminal equipment"
`
`(Remarks at 22-25), that the proper construction is discussed above. As cited above,
`
`quoting the Board regarding instant claim 31:
`
`[w]e construe the claim phrase "distinguishing information about the piece of
`Ethernet data terminal equipment is associated to impedance within the at least
`one path" to mean "distinguishing information about the piece of Ethernet data
`terminal equipment, including information that differentiates it from another
`device, wherein the information is capable of being associated to impedance
`within the at least one path."
`
`This interpretation is broader than asserted here by Patent Owner; Patent Owner
`
`argues that the distinguishing information is specific to the DTE, namely that it is
`
`identifying information (including hard drive capacity etc). Remarks at 24. This is not
`
`claimed, and the Examiner notes the broad interpretation above that the distinguishing
`
`information is merely a general attribute sufficient to distinguish it from any other piece
`
`of equipment, such as connectivity.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 1 O
`
`As noted by the District Court in the '881 Lawsuit in construing the distinguishing
`
`information claim limitation, the specification of the '012 patent recites "identifying" while
`
`the claims recite "distinguishing." Furthermore, numerous other claims in the '012 patent
`
`recite identifying information instead of distinguishing information, including claim 71
`
`("arranging impedance within the at least one path to uniquely identify the piece of
`
`terminal equipment"). See also claims 15, 33, 45, 70, 111, and 112 (reciting "identify" or
`
`"identifying"). In addition, claim 31 recites "wherein distinguishing information about the
`
`piece of Ethernet data terminal equipment is associated to impedance within the at least
`
`one path." Thus, in accordance with the doctrine of claim differentiation, it is determined
`
`that Patent Owner intended for the term "distinguishing information" to refer to more
`
`general information than the more specific "identifying information." Free Motion Fitness,
`
`Inc. v. Cybex Int'/, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005) ("The difference in
`
`meaning and scope between claims is presumed to be significant [t]o the extent that the
`
`absence of such difference in meaning and scope would make a claim superfluous.").
`
`"Ethernet Data Terminal Equipment"
`
`Patent Owner here asserts that the term "Ethernet data terminal equipment",
`
`interpreted in light of the specification, does not include any other Ethernet
`
`componentry; however the Examiner notes first that the patent background does not
`
`mention the term "Ethernet data terminal equipment"; as noted above by the Board, the
`
`term exists only in the claims. Second, the Examiner notes again that the claims do not
`
`require the associating or selecting occur within or by the claimed DTE. Thus, a step
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 11
`
`taught in a prior art reference of associating distinguishing information performed by a
`
`device within the system will read on the claimed "associating distinguishing
`
`information" limitation in the claims.
`
`It is noted further here that claim 2 requires the DTE to be a PC, and claim 1 also
`
`encompasses a PC. Yet in his patent background, Patent Owner does not teach any
`
`step of associating distinguishing information as to PC 3a within the PC itself These
`
`steps occur in central module 15 and remote module 16. If it is Patent Owner's intention
`
`that the PC of claim 2 is in fact PC 3a including remote module element 16 within it (as
`
`shown in FIG 14), then, since claim 1 must encompass more than the PC of claim 2, the
`
`DTE of claim 1 would encompass a more general piece of equipment than such a
`
`combined PC device, such as central module 15. The '012 patent further states that the
`
`secondary device (element 15) may perform steps of determining distinguishing
`
`information as to the DTE. '012 Patent at FIG 10 and col. 9 I. 54-col. 10 I. 30.
`
`Patent Owner further argues that remote module 16 is the data terminal
`
`equipment claimed, yet defines the term "data terminal equipment" as being the source
`
`or destination of data on the network. Remarks at 17. However, in his invention, it is PC
`
`3a which is the source or destination of Ethernet data on the network. Again, claim 2
`
`states that the DTE is a PC, and thus the DTE of claim 1 encompasses more than a PC,
`
`yet in the patent the PC 3a is the only source or destination of Ethernet data taught in
`
`the patent.
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 12
`
`"Adapted"
`
`As to the term "adapted", the Examiner notes that the patent background does
`
`not use the term "adapted" as to any piece of equipment, much less specifically
`
`Ethernet data terminal equipment. As established in the rejection, the use of a piece of
`
`Ethernet data terminal equipment in a network such as in the claim is read as
`
`"adapted". Further, as stated above, the patent background teaches not only a DTE
`
`device 16, but also a network element 15 which communicates therewith and
`
`determines if the DTE element is removed from the system. Element 15 may be read as
`
`associating distinguishing information of the DTE. This means that "adapting" a piece of
`
`DTE for use in this system includes more than merely effecting the DTE itself, as other
`
`network elements are a critical part of the invention according to the instant patent. That
`
`is to say, Patent Owner himself teaches that elements other than DTE element 16 that
`
`communicate therewith are part and parcel of "adapting" the DTE 16 to operate in the
`
`network to perform the step of associating distinguishing information about the DTE.
`
`Lastly, note that the term "adapt" is only used in the claims as to a piece of equipment;
`
`in the entirety of the specification, the term "adapt" or similar is used three times, and
`
`only to note that the invention is adapted for use in a preexisting network or
`
`communications link. Nowhere in the patent background is the term "adapt" or similar
`
`used to describe "adapting" or modifying a piece of network equipment
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 13
`
`"Selecting Contacts"
`
`Further it is noted that the patent background does not teach any step of
`
`"selecting" contacts, much less that such a step must occur in any specific piece of
`
`equipment. Thus at least this claimed step can be broadly construed as being met by
`
`the use of contacts in a connector, and occurring elsewhere than the DTE, given the
`
`plain meaning of the claim language.
`
`"Path Coupled Across"
`
`As to the term "path coupled across" (Remarks at 20-22), the Examiner notes
`
`that the patent background does not specify any particular signal path corresponding to
`
`the claim language. In fact, the patent background does not specify any particular
`
`communication path at all, only speaking of a "return path for current from PC 3a [which]
`
`is the pair of receive data lines" in col. 7 II. 34-35, describing the connection between
`
`element 16 and element 15, not element 16 which Patent Owner asserts is his claimed
`
`DTE. Nor does the patent background specifically disclose an Ethernet connector or
`
`contacts, much less a path connected across such. Because of this, the claimed "path
`
`connected across" is read broadly. It is further noted, as argued above, that the steps of
`
`method claims 1 and 67 are not read as limited to within the DTE device, and thus any
`
`path that is connected to contacts of the connector of an Ethernet DTE is sufficient to
`
`read on the claim. That being said, an internal isolation transformer such as that well(cid:173)
`
`known in the art of Ethernet connectors as disclosed by the prior art references in this
`
`proceeding also reads on such a path and is specifically within the DTE device itself.
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`CISCO 1036
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`B. Rejection under 35 USC 103
`
`Page 14
`
`On pp. 25-60 of his Response, Patent Owner argues as to the combination of
`
`Cummings and Maman. The Examiner finds these arguments not persuasive for the
`
`reasons set forth below.
`
`Cummings
`
`As noted in the Request, Cummings discloses a security system for Ethernet(cid:173)
`
`connected data terminal equipment devices 12. FIG 1 is instructive:
`
`.~--- ~{.~
`..... ••••·• .<::..· .. n·v·.,.~
`
`~
`
`..
`
`~
`
`~ ... ·-··-·.-......... . 0 • 0
`..,.,,, ..................... ,-. ..... -._
`
`0 •
`
`, • • ,•
`
`,• •,• ,<:~~ V
`
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`
`1iltli'i
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`
`Fi.g--1
`
`.,:, ........... s, .......................... ·-.-.. ,.-. .... ',' ....... -. ............ ..
`
`Cummings discloses a power-over-Ethernet system, specifically an injection(cid:173)
`
`type, wherein a DC offset (Vin 25, approx .. 5V) is introduced by a piece of network
`
`equipment 24 along one of the twisted-pair lines (transmit wires e.g. T + and T-) between
`
`the DTE (e.g. the PC 12) and the nominal network equipment with which it is connected,
`
`e.g. the local Ethernet hub 20. The current that is introduced along line 44d flows into
`
`the PC 12d, through the isolation transformer 53 in the PC and out along line 46d, the
`
`other line in the pair that is twisted with line 44d. Line 46d is then tapped by the injecting
`
`CISCO 1036
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`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 15
`
`equipment and the current is sensed in order to determine if the particular machine 12d,
`
`12c etc stands plugged in or not. Id. at col. 4 II. 47-60. This is shown in FIG 2:
`
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`Cummings discloses that the current flows through the computer. Id. at col. 4 II.
`
`25-32. Cummings further discloses that the wiring is conventional 1 0BaseT wiring, thus
`
`the computer utilizes a standard Ethernet plug and the pairs of wires are connected to
`
`the isolation transformer 53 in the standard way, i.e. using contacts in a female plug
`
`receptacle. Id. at col. 3 II. 31-52. Thus a path is created across two contacts in an
`
`Ethernet connector in computer 12. Likewise, a path can be considered created via
`
`lines 44d and 46d to network element 24 which exists in part within computer 12, as the
`
`Ethernet line containing twisted pair 44d/46d ends in a male plug inserted into computer
`
`12.
`
`CISCO 1036
`Cisco v. ChriMar
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 16
`
`Cummings/Maman
`
`On pp. 25-29 of his Remarks, Patent Owner asserts there is no basis for
`
`combining the references. The Examiner disagrees, noting that the Examiner
`
`incorporated by reference the rejection of the Request, noting specifically the reasons
`
`for combining in pp. 27-28 of the Request which specifically set forth i) the GraharT1
`
`Inquiries, including the level of ordinary skill in the art, 2) various rationales for
`
`establishing obviousness therein, and 3) reasons why Cummings and Maman (as well
`
`as Cummings and other references) are combinable. The rejection itself establishes that
`
`Cummings may be combined with Maman, noting that Maman is a similar field of
`
`endeavor, and teacf1es similar distinguishing information. When "no prior art reference
`
`contains an express suggestion to combine references, then the level of ordinary skill
`
`will often predetermine whether an implicit suggestion exists." Dystar Textilfarben
`
`GmbH & Co. Deutsch/and KG v. C.H. Patric Co., 464 F.3d 1356, 1360, 80 USPQ2d
`
`1641, 1645. The inquiry in such a situation would be "whether the ordinary artisan
`
`possesses knowledge and skills rendering him capable of combining the prior art
`
`references." Id. This is clearly established here.
`
`Next, Patent Owner argues that there would have been no reasonable
`
`expectation of success in combining the two references, render it unsatisfactory, and
`
`change the principles of operation. The Examiner disagrees, noting that Cummings
`
`teaches the majority of the claims here, including adapting a piece of Ethernet data
`
`terminal equipment for use in a security system. Cummings discloses sensing the
`
`presence or absence of current to determine distinguishing information. Given that
`
`CISCO 1036
`Cisco v. ChriMar
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 17
`
`impedance is a generally used metric for determining if an electrical signal path is
`
`connected, and given that Maman discloses using impedance to distinguish computing
`
`devices further in security system, one of ordinary skill would clearly have found such a
`
`small modification based on common knowledge and a method of detection in common
`
`use to have had a more than reasonable expectation of success. The portion of
`
`Cummings cited, such as portions of element 24 in FIG 1, are similar to those of
`
`Maman's FIG 3. Both disclose a network device for monitoring. In Cummings alarm
`
`logic 38 detects the presence or absence of a signal which itself corresponds to high or
`
`low impedance, whereas in Maman a specific resistance (impedance) measuring device
`
`26 determines the presence or absence of a connection. Maman does so over two
`
`contacts. Clearly, one of ordinary skill in the art at the time of the invention would have
`
`understood the simple principle of detecting impedance over a pair of contacts to
`
`distinguish a connection, as taught by Maman, could apply to doing so over an Ethernet
`
`connection as taught by Cummings.
`
`On pp. 30 of his Remarks, Patent Owner asserts that Cummings does not teach
`
`"adapting" any Ethernet data terminal equipment. The Examiner disagrees, noting
`
`above the broad nature of the term "adapted", and here noting that providing an
`
`additional current loop through the data terminal equipment in Cummings in order to
`
`allow the machine to operate in the security system disclosed is "adapting" the device
`
`for that purpose. As noted above, the patent background does not use the term "adapt"
`
`with respect to any data terminal equipment, but only uses the term in the same manner
`
`as Cummings does, noting that the system may be "adapted" for use in a standard
`
`CISCO 1036
`Cisco v. ChriMar
`
`

`

`Application/Control Number: 90/013,740
`Art Unit: 3992
`
`Page 18
`
`network. In point of fact, both the instant Patent and Cummings use the term "adapted"
`
`in almost the exact same way; compare the instant Patent at col. 4 II. 56-60 ("[T]he
`
`communication system 15 and 16 described herein is particularly adapted to be easily
`
`implemented in conjunction with an existing computer network 17 while realizing
`
`minimal interference to the computer network.") with Cummings at col. 3 II. 5-10 ("[T]he
`
`network security system 24 described herein is particularly adapted to be easily
`
`implemented in conjunction with an existing computer network 10 without the need for
`
`substantial modifications and while realizing minimal interference to the computer
`
`network 1 O"). (Emphasis added in both citat