Application Number Information
`
`Application Number: 90/012149 Assi‘vnmcnts
`Filing or 37l(c) Date: 02/17/2012 M
`Effective Date: 02/17/2012
`
`Examiner Number: 76055/ ll()’l‘:\l.lNC, .IOIIN
`Group Art Unit: fl);
`115W Madras
`Class/Subclass: 726/007.000
`
`Application Received: 02/17/2012
`Patent Number:
`Issue Date: 00/00/0000
`Date of Abandonment: 00/00/0000
`
`Lost Case: NO
`Interference Number:
`Unmatched Petition: N0
`|.&R (lode: Secrecy Code:1
`
`Third Level Review: NO
`Attomey Docket Number: R1341006C
`Status:_418 IPETITION RECEIVED RE: DENIAL OF REEXAMINATION REQUEST
`Continuation Number: 4719
`Oral Hearing: NO
`Title o'flnventionz'USER SPECIFIC AUTOMATIC DATA REDIRECTION SYSTEM
`
`.
`
`Secrecy Order: NO
`Status Date: 05/23/2012
`
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`Content Information for 90/012149
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`E :
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`EXAMINER INTERVIEW SUMMARY RECORD
`03/06/2012 :] EXIN
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`COMPLETION OF PREPROCESSING - RELEASED TO ASSIGNED GAU
`03/05/2012 - RXPCOM
`5
`NOTICE OF REEXAMINATION REQUEST FILING DATE
`03/05/2012
`RXNREQFD
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`RXNREQAU
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`REEXAMINATION REQUESTED BY THIRD PARTY REQUESTER
`02/17/20I2
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`02/17/2012SEW
`02/17/2012
`RXC/SR
`CERTIFICATE OF SERVICE
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`03/06/2012
`REEXAMINATION FORMALITIES NOTICE MAILED
`:1
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`03/01/2012
`RXRLF
`REEXAM LITIGATION FOUND
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`02/17/2012 - RXOSUB
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`Ema——
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`07/I8/20I2 [:- MAILING OF PETITION DECISION - DENIED
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`04/25/2012
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`02/20/2012
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`.United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria. Virginia 223 I 3-l450
`www.usplo.gov
`
`APPLICATION NO.
`90/012,149
`
`FILING DATE
`02/17/2012
`
`FIRST NAMED INVENTOR
`6779l18
`
`ATTORNEY DOCKET NO.
`Rl341006C
`
`CONFIRMATION N0.
`4719
`
`40401
`
`7590
`
`07/18/201'2
`
`Hershkovitz & Associates, LLC
`2845 Duke Street
`
`Alexandria, VA 22314
`
`EXAMINER
`
`PAPERNUMBER
`
`DATE MAILED: 07/I 8/2012
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
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`'
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`
`'a-,,. UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box I450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`JERRY T. SEWELL
`
`1803 BROADWAY, APT. 301.
`NASHVILLE, TN 37203-2761
`
`MAILED
`
`JUL 13 2°12
`
`ceumALaeotAMiNAnoum
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. : 90012149
`
`PATENT NO. : 6779118
`
`ART UNIT : 3993
`
`,
`
`'
`
`‘
`
`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)).
`
`\
`
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.usplo.gov
`
`Hershkovitz & Associates, LLC
`2845 Duke Street
`Alexandria VA 22314
`’
`
`JERRY T. SEWELL
`1803 BROADWAY, APT. 301
`NASHVILLE, TN 37203—2761
`
`In re: Ikudome et a1.
`
`Ex Parte Reexamination Proceeding
`
`Control No.: 90/012,149
`
`Deposited: February 17, 2012
`
`For: US. Patent No.: 6,779,] 18
`
`:
`'
`
`:
`;
`
`:
`
`:
`
`'
`
`I
`
`(For Patent Owner)
`
`(For Third Party
`Requester)
`
`M
`AlLED
`
`JUL 1 8 2012
`CBVTHAL
`
`"EWINATION umv
`
`DECISION ON PETITION
`
`UNDER 37 CFR §§ 1.181 & 1.515(c)
`
`This is a decision on the petition filed by the third party requester on April 19, 2012, entitled
`“PETITION UNDER 37 CFR §§ 1.515(c) AND 1.181 FOR RECONSIDERATION OF
`
`DENIAL OF REQUEST FOR EX PARTE REEXAMINATION,” [hereinafter “the petition”].
`Petitioner seeks review of the Order Denying Request for Ex Parte Reexamination mailed March
`20, 2012.
`
`The petition is before the Director of the Central Reexamination Unit.
`
`
`The petition is denied.
`
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`Reexamination Control No. 90/012, 149
`
`Page 2
`
`REVIEW OF RELEVANT FACTS
`
`0 US. Patent No. 6,779,118 [“the ‘118 patent”] issued on August 17, 2004.
`
`o A request for ex parte reexamination of claims 2-7, 9-14, 16-24 and 26-27 of the ‘118
`
`patent was filed February 17, 2012 and assigned control no. 90/012,149.
`
`0 An order denying the request for reexamination was issued on March 20, 2012.
`
`o On April 19, 2012, the third party requester timely filed the instant petition for
`
`reconsideration of the denial of the request.
`
`'
`
`o The ‘1 18 patent was also the subject of now concluded reexamination proceeding
`
`90/009,301 [“the ‘9301 proceeding”]. Relevant prosecution will be discussed below.
`
`Standard of Review
`
`DECISION
`
`37 CFR § 1.515(0) provides for the filing ofa petition under 37 CFR § 1.181 to review an
`examiner’s determination refusing to order ex parte reexamination. The CRU Director’s review
`on petition is de novo. Therefore, the review will determine whether the examiner’s refusal to
`order reexamination was correct, and will not necessarily indicate agreement or disagreement
`with every aspect of the examiner’s rationale for denying the request.
`
`The Legal Standard for Ordering Reexamination
`
`A review of 35 U.S.C. §§ 302 and 303 reveals that, by statute, ex parte reexamination of a
`United States Patent is only authorized when a consideration of prior art consisting of patents or
`printed publications establishes that a substantial new question of patentability exists with
`respect to one or more claims of that patent. 35 U.S.C. § 302 requires that a request for ex parte
`reexamination be based upon prior art as set forth in 35 U.S.C. § 301, that is, prior art consisting
`of patents or printed publications, while 37 CFR § 1.510(b)(1) requires that a request for ex parte
`reexamination include “a statement pointing out each substantial new question of patentability
`based on the cited patents and printed publications.” A substantial question of patentability
`(SNQ) is raised by a cited patent or printed publication when there is a substantial likelihood that
`a reasonable examiner would consider the prior art patent or printed publication important in
`
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`Reexamination Control No. 90/012,149
`
`Page 3
`
`deciding whether or not the claim is patentable. If the prior art patents and printed publications
`relied upon in the request raise a substantial question of patentability, then a “substantial new
`question of patentability” is present,unless the same question of patentability has already been
`decided by a final court holding of invalidity after all appeals, or by the Office in an earlier
`examination or in a reexamination of a patent. If a substantial new question of patentability is
`found to be raised, an order granting ex parte reexamination of the patent is issued.
`
`Summary of the Prior Prosecution with Respect to the ‘ l 18 Patent
`
`The present request for reexamination is drawn to claims 2-7, 9-14, 16-24 and 26-27. The ‘ l 18
`patent was previously the subject of reexamination proceeding 90/009,301. In that proceeding a
`final rejection was issued August 2, 2010 rejecting claims 1-31, 33-36, 38—41 and 43-46 as
`obvious over US. Patent No. 6,088,451 to He et al. [“He”] in View of US. Patent No. 6,233,686
`to Zenchelsky et al. [“Zenchelsky”]. Claims 32, 37, 42 and 47 were rejected as obvious over He
`in View of Zenchelsky, and further in view of admitted prior art [‘~‘APA”]. On appeal, the Board
`reversed the rejections of claims 1-31, 33-36, 38-41 and 43-46, affirmed the rejections of claims
`32, 37, 42 and 47, and issued new grounds of rejection of claims 1, 8, 15 and 25 as obvious over
`He, Zenchelsky and APA. Claims 32, 37, 42 and 47 depended from claims 1, 8, 15 and 25,
`therefore the Board simply said that the independent claims would be rejected over He,
`Zenchelsky and APA for the same reasons as the dependent claims. The Board did not issue new
`grounds of rejection for the other dependent claims.
`
`Upon return ofjurisdiction to the examiner, the patent owner made several amendments. It
`cancelled claims 1, 8, 15, 25, 32, 37, 42 and 47, all claims still under rejection after the Board
`decision. It kept as original the no-longer-rejected claims 2-7, 9—14 and 24. It amended claims
`16-23 and 26-27; these amendments were minor changes to correct typographical errors and to
`place some claims in independent form. Other amendments were made that are not relevant to
`the instant proceeding.
`‘
`
`The examiner issued a Notice of Intent to Issue the Reexamination Certificate [“NIRC”] on
`January 6, 2012, determining that all pending claims were confirmed or patentable. As to claims
`2-7, 9-14, 16-24 and 26-27, the examiner stated, in several sections:
`
`The Board of Patent Appeals and Interferences Decision of August 23, 2011 indicates the
`proposed rejection of these claims has been reversed (decision at page 10). No proposed
`' new grounds of rejection are indicated. The remaining prior art of record has been
`considered and not found to raise further issues beyond those issues already addressed by
`the Board of Patent Appeals and Interferences. Accordingly, claims [2-7, 9-14, 16-24 and
`26-27] are [confirmed/patentable].
`
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`Reexamination Control No. 90/012,149
`
`Page 4
`
`NIRC mailed January 6, 2012 at pp. 2-3. The reexamination certificate issued March 27, 2012.
`
`In summary, the rejections based on He in View of Zenchelsky were reversed by the Board.
`Rejections based on He, Zenchelsky and APA were affirmed, and new grounds of rejection of
`some claims were also instituted by the Board based on this combination. The Board did not
`apply this combination to other claims
`
`Analysis of the Request for Reexamination and the Denial of the Request
`
`The present request for reexamination proposes that claims 2-7, 9-14, 16-24 and 26-27 are
`obvious over He in view of Zenchelsky, and further in view of APA. As noted, these claims
`were rejected in the previous proceeding as obvious over He in view of Zenchelsky. The Board
`reversed that rejection, finding that the references lacked the “redirection server” of the
`independent claims. The Board affirmed rejections of other dependent claims where APA was
`added to the combination, finding that APA teaches a redirection server. The Board entered new
`grounds of rejection for the independent claims only, rejecting them over He, Zenchelsky and
`APA. The Board did not address the merits of claims 2-7, 9-14, 16-24 and 26-27 individually;
`the rejections were reversed due to the reversal as to the independent claims, and the new
`grounds were not applied to these claims. The requester argues that He, Zenchelsky and APA
`should now be applied to these claims as well.
`
`The reexamination examiner denied the present request seemingly for two reasons. He stated
`that the request was premature because the claims, as amended in the previous reexamination,
`had not yet published, therefore the request was drawn to these not-yet-existing claims rather
`than the claims in effect at the time of the determination, as required by MPEP § 2240(11). Order
`mailed March 20, 2012 at 2. He also stated that the request appears to allege an SNQ based on
`issues currently pending before the Office, and stated there was no SNQ over and above such
`issues. Id. at 2-3. This would apparently mean that the requester presented the same question of
`patentability as addressed in the previous examination.
`
`Petitioner argues that that the request sufficiently addresses the claims of the patent, the claims
`that were in effect at the time of the determination as required by 35 U.S.C. § 303 and 37 CFR §
`1.515(a). The Director agrees with petitioner. In this case the relevant claims are those that
`originally issued in the ‘118 patent, as the 90/009,301 certificate did not issue until after the
`determination. Claims 2-7 and 9-14 have not been changed and remain as originally present in
`the ‘118 patent. The request addresses those claims, as originally patented, therefore the request
`is properly grounded in the statute in that its proposed SNQs “affect[] any claim of the patent” as
`required by 35 U.S.C. § 303(a).
`It likewise addresses “the claims in effect at the time of the
`determination” as required by 37 CFR § 1.‘515(a). The Director therefore does not deny the
`request for this reason.
`
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`Reexamination Control No. 90/012,149
`
`Page 5
`
`The request also addresses other claims as they were amended in the ‘9301 proceeding. As
`stated, the certificate had not yet issued at the time of the determination, so those claims were not
`yet in effect at that time. The MPEP, however, recognizes this precise issue, and permits a
`requester to address proposed amended claims from other co-pending proceedings “to permit
`examination of the entire patent package” so long as the request is otherwise properly based in
`the claims in effect at that time. MPEP § 2240(11). The present request satisfies these
`requirements, as it is grounded at least on original claims 2-7 and 9-14, and as MPEP § 2240(11)
`tells us it would be a waste of resources to prevent the addressing of the proposed (at the time)
`amended claims and require the parties to wait for the actual issuance of the certificate.
`
`Accordingly, the request was not improper for being drawn to claims not in effect at the time of
`the determination.1
`
`The main issue now is whether the request has presented a substantial new question of
`patentability. There is little question the request has set forth a question of patentability, the only
`question is whether it is new.
`
`A clear question of patentability has been raised in light of the prosecution of the ‘9301
`proceeding.
`In that proceeding all of the claims at issue here were rejected as obvious over He in
`view of Zenchelsky. The Board addressed only the independent claims, and reversed the
`rejections based on the references lacking a feature. The Board however replaced those reversed
`rejections with a new rejection, adding APA to the combination. The Board, however never
`addressed the dependent claims, including 2-7, 9-14, 16—23 and 26-27. Given that the reversal
`was only based on the independent claims, the reversed rejections were basically corrected by
`adding APA, and there was no finding of error in the original application of He and Zenchelsky
`to the dependent claims, a reasonable examiner would conclude that adding APA would also be
`important to the dependent claims. Thus, the requester’s application of He, Zenchelsky and APA'
`to substantially the same claims raises a question of patentability.
`
`The question then is whether the question of patentability is “new.” A first issue is whether this
`combination was considered by the Board as to the dependent claims. The Director finds that
`there is no evidence that the Board considered the combination as to the dependent claims. 37
`CFR § 41 .50(b) permits the Board to set forth a new ground of rejection, but the rule says the
`Board “may” include a new ground of rejection, and indeed MPEP § 1213.02 tells usthat “the
`exercise of authority under 37 CFR 41 .50(b) is discretionary.” MPEP § 1213.02 further tells us
`that because it is discretionary, “no inference should be drawn from a failure to exercise that
`
`This analysis was technically unnecessary in light of the de novo review and the denial for other reasons The
`issue was important to address, however, as it appeared to be a primary reason for the examiner denying the request
`and because it was the primary issue addressedIn the petition.
`
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`Reexamination Control No. 90/012, I 49
`
`I
`
`Page 6
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`discretion.” That the Board declined to reject claims 2 et a]. under the'combination with APA
`therefore does not tell us whether the Board actually considered such a rejection.
`
`The final issue is whether the examiner considered the combination. Again, the examiner
`explicitly recited in the NIRC, as to the claims at issue here:
`
`The Board of Patent Appeals and Interferences Decision of August 23, 2011 indicate the
`proposed rejection of these claims has been reversed (decision at page 10). No proposed
`new grounds of rejection are indicated. The remaining prior art of record has been
`considered and not found to raise further issues beyond those issues already addressed by
`the Board of Patent Appeals and Interferences. Accordingly, claims [2-7, 9-14, 16—24 and
`26-27] are [confirmed/patentable].
`
`NIRC mailed January 6, 2012 at pp. 2—3. The examiner had the combination of He, Zenchelsky
`and APA before him; he himself rejected some claims over this combination, and the Board
`rejected additional claims over this combination. The examiner said that “[t]he remaining prior
`art has been considered and not found to raise further issues beyond those issues already
`addressed by the” Board. The examiner was specifically aware of the combination, considered it
`with respect to these claims, yet declined to make the rejection. The issue was therefore squarely
`before the examiner during the previous examination, so it is not a new question of patentability.
`
`It is noted that the requester disagrees, arguing that the examiner did not consider this question of
`patentability as to these claims in the NIRC. It suggests that the examiner was confused by the
`Board, and believed that the Board confirmed the patentability of the dependent claims or
`mandated allowance of the claims over the art mentioned in the decision. Request pp. 10-11.
`This is pure speculation and there is nothing in the record to indicate that the examiner was not
`aware that he could enter a new rejection after the Board decision. See 37 CFR §§ 41 .50(b)(1)
`(discussing reopening of prosecution after new ground of rejection); 1.198 (reopening of
`prosecution with Director approval); MPEP §§ 1214.06(IV); 1214.07.
`
`The requester also brushes aside the statement by the examiner from the block quote above,
`stating “the examiner did not consider the patentability of the claims in view of He et al.,
`Zenchelsky and Admitted Prior Art. Rather, the Examiner only considered the remaining prior
`art of record prior to issuing the” NIRC. Request p. 11. The Director cannot agree. There is no
`evidence that “remaining” means “all of the art that was not mentioned by the Board.” If
`anything, the “remaining art” would mean the art other than that ofthe reversed rejection, and
`therefore would include APA. The evidence does not show that the examiner failed to consider
`
`this combination as to the claims at issue.
`
`The purpose of reexamination is to address questions of patentability that were not before the
`Office previously, not to question the previous examiner’s judgment. See In re Swanson, 88
`
`Panasonic-101 1
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`Reexamination Control No. 90/012,149
`
`Page 7
`
`USPQ2d 1196, 1201-02, 1204-05 (Fed. Cir. 2008) (discussing the legislative history and the use
`of old art in raising an SNQ). The request amounts to “we are applying the references in the
`same way, we just think the examiner missed that he could reject.” As the Federal Circuit has
`explained, the substantial new question requirement “guard[s] against simply repeating the prior
`examination on the same issues” and prevents “[a] second examination, on the identical ground
`that had previously been raised and overcome.” In re Recreative Technologies, 38 USPQ2d
`1776, 1777—78 (Fed. Cir. 1996). The Office has already had this combination of references
`before it and deemed all of the claims patentable. The Office will not reconsider that decision
`absent some new and different evidence, argument, interpretation, or the like. There is no
`indication that this old art is being viewed in a new light or a different way than it was
`previously, or with some new interpretation of the references. There is no evidence that the
`examiner failed to appreciate that he was permitted to reject the claims. There is nothing to show
`that the questions of patentability are new and different than those from the previous
`examination.
`
`Accordingly, because the combination was before the examiner during the previous examination,
`the requester has not raised a substantial new question of patentability. The petition filed April
`
`
`19, 2012 is denied and the request for reexamination is denied.
`
`
`1. Based on a de novo review of the record as a whole, the petition is denied.
`
`CONCLUSION
`
`2. Accordingly, the request for ex parte reexamination of claims 2-7, 9-14, 16-24 and 26-27 is
`denied.
`
`3. This decision is final and nonappealable. 35 U.S.C. § 303(c) & 37 CFR § 1.515(c). No
`further communication on this matter will be acknowledged or considered.
`
`4. Telephone inquiries related to this decision should be directed to Alexander Kosowski,
`Supervisory Patent Examiner, at (571) 272-3744 or Mark Reinhart, Supervisory Patent
`Examiner, at (571) 272-1611..
`
`lrem ggcel
`
`Director, Central Reexamination Unit
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent No.
`
`Reexamination Control No.
`
`Filed
`
`Examiner
`
`Art Unit
`
`Confirmation No.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`6,779,118
`
`90/012,149
`
`February 2, 2012
`
`John Hotaling
`
`3992
`
`4719
`
`AUTHORIZATION TO CHARGE DEPOSIT ACCOUNT
`
`ACCOMPANYING
`
`PETITION UNDER 37 CFR §§ 1.515(c) AND 1.181 FOR RECONSIDERATION
`OF DENIAL OF REQUEST FOR EX PARTE REEXAMINATION
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This authorization to charge Deposit Account No. 503550 accompanies a Petition
`
`under 37 CFR §§1.515(c) AND 1.18 for Reconsideration of Denial of Request for
`
`Ex Parte Reexamination.
`
`Neither MPEP 2228 nor 37 CFR 1.515 nor 37 CFR 1.181 specifies a fee that
`
`must accompany the Petition. Accordingly, no fee is being submitted herewith.
`
`However,
`
`if any fee is required for the Petition, the Commissioner is authorized to
`
`charge the fee to the undersigned attorney’s Deposit Account No. 503550 associated
`
`with Customer No. 51476.
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`Date: April 19, 2012
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`Respectfully submitted,
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`By:
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`/Jerry Turner Sewell/
`Jerry Turner Sewell
`Customer No. 51476
`
`Registration No. 31,567
`Requestor of Record
`949-433-2849
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`Panasonic-101 1
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`Electronic Acknowledgement Receipt
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`12586899
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`Application Number:
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`90012149
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`International Application Number:
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`Confirmation Number:
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`Title of Invention:
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`User Specific Automatic Data Redirection System
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`
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`First Named Inventor/Applicant Name:
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`6779118
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`Customer Number:
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`40401
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`Jerry T. Sewell
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`Filer Authorized By:
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`Attorney Docket Number:
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`R1341006C
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`Receipt Date:
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`19-APR-2012
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`Filing Date:
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`17-FEB-2012
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`Time Stamp:
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`20:12:34
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`Application Type:
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`Reexam (Third Party)
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`Payment information:
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`Submitted with Payment
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`File Listing:
`
`Document
`Number
`
`Document Descri
`
`tion
`
`p
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`File Size(Bytes)/
`Message Digest
`
`Pages
`Multi
`Part /.zip (if appl.)
`
`Petition for Review of Reexam Denial
`
`101 O1 -002 RX_Petition_for_Rev
`iew_of_Denial_of_Reexam_Re
`q U est. pdf
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`11179430
`
`60862f49fe6a58527e9318972cb71882223
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`2200 Information:
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`I .
`
`I I
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`.
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`.
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`
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`Miscellaneous Incoming Letter
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`101 O1 -002 RX_Authorization_to
`_Charge_Deposit_Account.pdf d9253a3706a878e9ce49ae1cheaI 3874fc0
`560b
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`the application.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)—(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`Panasonic-101 1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Patent No.
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`Reexamination Control No.
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`Filed
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`Examiner
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`Art Unit
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`Confirmation No.
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`:
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`:
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`:
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`:
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`:
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`:
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`6,779,118
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`90/012,149
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`February 2, 2012
`
`John Hotaling
`
`3992
`
`4719
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`PETITION UNDER 37 CFR §§ 1.515(c) AND 1.181 FOR RECONSIDERATION
`OF DENIAL OF REQUEST FOR EX PARTE REEXAMINATION
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`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`Dear Sir:
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`The Requestor of the above-identified ex parte reexamination hereby petitions for
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`reconsideration of
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`the March 20, 2012 Order Denying Ex Parte Reexamination
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`("Order").
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`Requestor filed a Request for Reexamination (the "Request") on February 2,
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`2012, which identified Claims 2-7, 9-14, 16-24, and 26-27 of US Patent No. 6,779,118
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`for reexamination. The Order found that the request was improper in view of the prior
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`pending reexamination with Control No. 90/009,301 (the "prior reexamination"). As
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`stated in the Order:
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`The proposed [substantial new question] stems from a Board decision in a
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`concurrent pending Reexamination proceeding 90/009301. The request
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`appears to allege an SNQ based on issues currently pending before the
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`office. While the claims in the pending reexamination appear to have
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`been amended and a NIRC is pending,
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`these claims have not yet
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`published. Therefore the request appears to be premature and not clearly
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`based on claims in effect at the time of the request as required by MPEP
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`2240(ll).
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`Order at 2 (emphasis in original).
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`Application No.:
`Filing Date:
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`90/012,149
`February 2, 2012
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`Requestor respectfully disagrees. Although a second reexamination request
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`must be based on the claims in effect at the time of the determination1 and not claims
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`amended during a concurrent reexamination,
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`the Order failed to observe that the
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`present Request for Reexamination is in fact based on the claims in effect at the
`
`time of the determination.
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`Indeed, this must be so because Claims 2—7 and 9-14 were not amended at all
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`during the prior reexamination. Thus, at a minimum, the Request is based on Claims 2-
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`7 and 9-14 as they were in effect at the time of the determination, so reexamination is
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`proper on those claims.
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`Requestor’s arguments on Claims 16-24 and 26-27 are permitted as “information
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`directed to a proposed new or amended claim in the pending reexamination” presented
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`to “permit examination of the entire patent package.” MPEP § 2240(ll). Furthermore,
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`Claims 16-24 and 26-27 were only amended in insubstantial ways, so the claims in the
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`prior reexamination are essentially identical
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`to those in effect at
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`the time of the
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`determination. Thus, reexamination is also proper on Claims 16-24 and 26-27.
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`Since Requestor applied the correct claims in the Request for Reexamination,
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`the Request should be granted and a new reexamination should proceed. Since a
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`Reexamination Certificate has already issued in
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`the prior
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`reexamination,
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`any
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`reexamination proceedings based on the present Request should apply the claims as
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`issued in the Reexamination Certificate. However, Claims 2—7, 9-14, 16-24, and 26-27
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`in the Reexamination Certificate are essentially identical to the corresponding claims of
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`the original patent, so the arguments presented in the present Request apply equally to
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`render the claims of the Reexamination Certificate unpatentable.
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`Statement of Facts
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`On August 17, 2004, US Patent No. 6,779,118 to lkudome et al.
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`(“the ’118
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`patent”) issued.
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`The prior reexamination, with Control No. 90/009,301, was filed December 17,
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`2008. A Notice of Intent to Issue a Reexamination Certificate was issued in that prior
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`1 Although the Order refers to the “claims in effect at the time of the request,” the
`relevant rule refers to the “claims in effect at the time of the determination.” 37 CFR
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`§ 1.515; MPEP § 2240(ll).
`
`-2-
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`Application No.:
`Filing Date:
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`90/012,149
`February 2, 2012
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`reexamination on January 6, 2012. Ex Parte Reexamination Certificate No. 8926 in that
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`reexamination issued on March 27, 2012.
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`Throughout the prior reexamination, Claims 2-7 and 9-14 were not amended at
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`all.
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`Claims 16-24 were dependent claims in the original patent.
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`Independent base
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`Claim 15 was cancelled in the reexamination. Claims 16-23 were each amended during
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`reexamination to present each claim as an independent claim that included limitations
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`from Claim 15. During the course of the reexamination, Claim 15 was amended to
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`correct the misspelled word “programmed” to “programmed;” to revise the phrase “to
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`control passing” to “control dai passing;” to revise the phrase “to allow modification” to
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`“allow automated modification;” and to revise the phrase “the user access” to “the user
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`accesses.”
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`Claims 18, 21 and 22 were further amended to correct the ungrammatical phrase
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`“the user access” to “the user accesses” at a second location in each of the claims.
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`Claim 24 depends from amended Claim 23 and was deemed to patentable
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`because of the dependence from a patentable claim.
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`Claim 26 was amended to correct the ungrammatical phrase “the user access” to
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`“the user accesses.”
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`Claim 27 was amended to modify the phrase “the location or locations the user
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`access” to “a location or locations the user accesses.”
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`The Patent Owner stated that all of the amendments, other than the bodily
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`incorporation of the text from Claim 15 into dependent Claims 16-24, were made “to
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`correct minor typographical and grammatical errors,” as set forth on page 10 of the
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`attached Exhibit A (November 14, 2009 Patent Owner’s “Response under 37 CFR
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`1.111 and Proposed Amendment under 37 CFR 1.530” in Reexamination Proceeding
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`90/009,301). The Patent Owner also stated that “the original patented claims 15, 18,
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`21, 26, and 27 are merely ungrammatical,” as set forth on page 8 of attached Exhibit B
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`(October 4, 2010 Patent Owner’s “After Final Response under 37 CFR 1.116 and
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`Proposed Amendment”
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`in Reexamination Proceeding 90/009,301.
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`The bodily
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`incorporation of Claim 15 into Claims 16-24 did not change the scope of Claims 16-24.
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`Application No.:
`Filing Date:
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`90/012,149
`February 2, 2012
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`Thus, except for correction of