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`1. Title of Invention: USER SPECIFIC AUTOMATIC DAT A REDIRECTION SYSTEM
`Oral Hearing: NO
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`Status: 420 /REEXAM TERMINATED --REQUEST DENIED IN GROUP
`Attorney Docket Number: MIPIKU.002RE
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`Application Received: 06/28/2012
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`Page 2 of 326
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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 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/012,378
`
`06/28/2012
`
`6779118
`
`MIPJKU.002RE
`
`2926
`
`7590
`08/15/2012
`40401
`Hershkovitz & Associates, LLC
`2845 Duke Street
`Alexandria, VA 223 14
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 08/15/2012
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`Panasonic-1013
`Page 3 of 326
`
`
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Monument IP Law Group
`1717 Pennsylvania Avenue
`Suite 900
`Washingotn, DC 20006
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. 80X1450
`Alexandria, VA 22313-1450
`'tltANN.UJpto,gov
`
`MAILED
`
`AUG 1 5 2012
`
`CENTRAL REEXAMINATION UI\\!"
`
`EXPARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012,378.
`
`PATENT NO. 6779118.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07-04)
`
`Panasonic-1013
`Page 4 of 326
`
`
`
`Order Granting I Denying Request For
`Ex Parle Reexamination
`
`Control No.
`
`90/012,378
`Examiner
`
`Jalatee Worjloh
`
`Patent Under Reexamination
`
`6779118
`Art Unit
`
`3992
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 28 June 2012 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)D PTO-892,
`
`b )[8] PTO/SB/08,
`
`c)D Other: __
`
`1. D The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`2. [8J The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`In due course, a refund under 37 CFR 1.26 ( c) will be made to requester:
`a) D by Treasury check or,
`b) D by credit to Deposit Account No. __ , or
`c) D by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`/Jalatee Worjloh/
`Primary Examiner, Art Unit 3992
`
`cc:Reauester t if third nartv reauester)
`U.S. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20120801
`
`Panasonic-1013
`Page 5 of 326
`
`
`
`Application/Control Number: 90/012,3 78
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`Decision on Request
`
`No substantial new question of patentability is raised by the request for
`
`reexamination and prior art cited therein for the reasons set forth below.
`
`Extensions of time under 3 7 CFR 1.136( a) will not be permitted in these
`
`proceedings because the provisions of 3 7 CFR 1.136 apply only to "an applicant" and not
`
`to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex
`
`parte reexamination proceedings "will be conducted with special dispatch" (3 7
`
`CFR l .550(a)). Extensions of time in ex parte reexamination proceedings are provided
`
`for in 37 CFR l.550(c).
`
`References cited in Request
`
`• U.S. Patent No. 5889958 to Willens ("Willens");
`
`• U.S. Patent No. 6088451 to He et al. ("He");
`
`• U.S. Patent No. 6233686 to Zenchelsky et al. ("Zenchelsky"); and
`
`•
`
`"The ChoiceNet Administrator's Guide," Livingston Enterprises, Jan. 1997
`
`("ChoiceN et").
`
`Jssues(s) Raised by Request
`
`Issue 1: Willens in view of Zenchelsky and the Patent owner's admissions
`
`The Requester alleges that Willens in combination with Zenchelsky and the
`
`Patent owner's admissions raise(s) a substantial new question of patentability with regard
`
`to claims 2-7, 9-14, 16-24, 26-27, 29-32, 34-36, 38-40, 42-51, 53-63, 65-78, 80-87, and
`
`Panasonic-1013
`Page 6 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Page 3
`
`89-90. The Ikudome patent has an effective filing date of April 21, 1999. Willens and
`
`Zenchelsky filing dates are December 20, 1996 and January 17, 1997, respectively.
`
`Thus, the prior art references predate the effective filing date of Ikudome.
`
`Issue 2: Willens in view of He, Zenchelsky. and the Patent owner's admissions
`
`The Requester alleges that Willens in combination with Zenchelsky and the
`
`Patent owner's admissions raise(s) a substantial new question of patentability with regard
`
`to claims 29, 33, 37, 41, 52, 64, 79, and 87. He has an effective filing date of June 28,
`
`1996. Thus, the prior art references predate the effective filling date of Ikudome.
`
`Issue 3: ChoiceNet in view of Zenchelsky and the Patent owner's admission
`
`The Requester alleges that ChoiceNet in combination with Zenchelsky and the
`
`Patent owner's admission raise(s) a substantial new question of patentability with regard
`
`to claims 2-7, 9-14, 16-24, 26-27, 29-32, 34-36, 38-40, 42-51, 53-63, 65-78, and 80-87.
`
`The prior art references predate the effective filing date of Ikudome.
`
`Issue 4: ChoiceNet in view of He, Zenchelsky. and the Patent owner's admissions
`
`The Requester alleges that ChoiceNet in combination with He, Zenchelsky, and
`
`the patent owner's admissions raise(s) a substantial new question of patentability with
`
`regard to claims 29, 33, 37, 41, 52, 64, 79, and 87. The prior art references predate the
`
`effective filing date of Ikudome.
`
`Panasonic-1013
`Page 7 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Background
`
`Page 4
`
`Claims 2-7, 9-14, 16-24, and 26-90 in the instant request for reexamination are
`
`claims in the Ikudome patent issued from 09/295,966.
`
`Ikudome is directed to a user specific automatic data redirection system. The
`
`system utilizes a redirection server to redirect user's data based on a stored rule set (see
`
`abstract). Ikudome teaches receiving a user's credentials when a user connects to a local
`
`network, sending the credentials to an authentication accounting server for verification,
`
`communicating the user's rule set to the redirection server from the authentication
`
`accounting server, and processing data directed toward the public network from the user's
`
`computer according to the rule set. (See claim 8 of Ikudome and col. 2, line 65 - col. 3,
`
`line 20). Fig. 2 illustrates one embodiment of the system.
`
`100
`
`FIG.2
`
`DIAL-UP
`NE1WORKING
`SERVER
`
`AUTHENTICATION
`AND ACCOUNTING
`SERVER
`
`Panasonic-1013
`Page 8 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Original prosecution
`
`Page 5
`
`During the original prosecution of Ikudome patent, a second non-final action was
`
`mailed November 6, 2003 rejecting all pending claims. An interview summary was
`
`mailed on November 20, 2003 indicating that an agreement was made between the
`
`Examiner and the Applicant. Particularly, the summary stated that they are patentable
`
`differences between the claimed invention and the prior art of record. On March 16,
`
`2004, a Notice of Allowance was issued allowing claims 1-18 and 20-26. The Notice of
`
`Allowance also included an Examiner's Amendment cancelling claims 19 and 29 and
`
`amending claims 15 and 26.
`
`The Examiner noted that the closest prior art of record, Grube, fails to teach
`
`"wherein the authentication accounting server accesses the database and communicates
`
`the individualized rule set that correlates with the first user ID and the temporarily
`
`assigned network address to the redirection server, and wherein data directed toward the
`
`public network from the one of the users' computers are processed by the redirection
`
`server according to the individualized rule set" with respect to claims 1 and 8.
`
`As per claim 15, it was noted by the original Examiner that Grube does not
`
`expressly disclose "wherein the redirection server is configured to allow automated
`
`modification of at least a portion of the rule set correlated to the temporarily assigned
`
`network address."
`
`Regarding claim 26, the Examiner stated that the prior art fails to teach
`
`"modifying at least a portion of the user's rule set while the user's rule set remains
`
`correlated to the temporarily assigned network address in the redirection server, and
`
`wherein the redirection server has a user side that is connected to a computer using the
`
`Panasonic-1013
`Page 9 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Page 6
`
`temporarily assigned network address and a network side connected to a computer
`
`network and wherein the computer using the temporarily assigned network address is
`
`connected to the computer network through the redirection server to modify at least a
`
`portion of the user's rule set through one or more of the user side of the redirection server
`
`and the network side of the redirection server."
`
`First Reexamination Proceedings (90/009301)
`
`• An Order was mailed February 27, 2009 indicating that a substantial new question
`
`of patentability affecting claims 1-27 of the Ikudome patent was raised.
`
`• A Non-Final action was issued on September 15, 2009 rejecting claims 1-27
`
`under 35 U.S.C. 103(a) as being unpatentable over He in view of Zenchelsky.
`
`• Patent owner filed a response amending claims 15, 18, 21, 26, and 27 and adding
`
`claims 28-47.
`
`• A final rejection was mailed August 8, 2010 rejecting claims 1-31, 33-36, 38-41,
`
`and 43-46 over He in view of Zenchelsky. Claims 32, 37, 42, and 47 were
`
`rejected over He in view of Zenchelsky and further in view of admitted prior art.
`
`An After Final amendment was filed October 2, 2010.
`
`• An After Final amendment requesting entry of amendments to claims 15, 18, 21,
`
`26, and 27 and amending claims 28-31, 33-36, and 38-47.
`
`• An Advisory Action mailed November 15, 2010 indicating that Patent owner's
`
`proposed response filed October 2, 20120 has overcome the 35 U.S.C. 112, 2nd
`
`paragraph rejection and entering the proposed amendments.
`
`Panasonic-1013
`Page 10 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Page 7
`
`• A Notice of Appeal was filed December 1, 2010 and Appeal Brief filed by Patent
`
`9wner on February 1, 2011.
`
`• An Examiner's Answer was issued on March 31, 2011 maintaining the rejections
`
`of claims 1-4 7.
`
`• Reply Brief filed May 27, 2011.
`
`• A BPAI decision was issued August 23, 2011. Claims 1 and 32 were the
`
`representative claims of the claims on appeal. The Board affirmed the rejection in
`
`part and reversed in part with a new ground of rejection. Specifically, claims 32,
`
`37, 42, and 47 were affirmed. As for claims 1, 8, 15, and 25 reversed, but a new
`
`ground of rejection was provided. The rejections of the other claims on appeal
`
`were reversed.
`
`• An interview was held discussing the Board decision.
`
`• An amendment, dated October 21, 2011, following the BP AI decision was filed
`
`cancelling rejected claims 1, 8, 15, 25, 32, 37, 42, and 47 and placing claims 16-
`
`23 and 38-41 in independent form. As expressed by Patent owner, new "claims
`
`48-94 corresponding to independent claims 1, 8, 15, and 25 respectively, with
`
`additional terms to clarify the 'between' location of the redirection server." "new
`
`dependent claims 49-59, 61-71, 73-86, and 88-94 depend from allowable
`
`independent claims 48, 60, 72, and 87, respectively, and generally correspond
`
`respectively, to dependent claims 2-7, 28-32, 9-14, 33-37, 16-24, 38-42, 26-27
`
`and 43-47, depending form independent claims 1, 8, 15, and 25."
`
`• An interview summary, dated November 8, 2011, stated that Patent owner's
`
`proposal would overcome He et al.
`
`Panasonic-1013
`Page 11 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Page 8
`
`• A supplemental response was filed by Patent owner requesting the Examiner to
`
`reopen prosecution in order to enter the claim amendments in the October 21
`
`response and proposed amendment and to confirm patentability of claims 2-7, 9-
`
`14, 16-24, 26-31, 33-36, 38-41, 43-46, and 48-94.
`
`• A NIRC was issued January 6, 2012. The status of the claims is as follows:
`
`o Patent claim(s) confirmed: 2-7, 9-14, 26, and 27.
`
`o Patent claim(s) amended (including dependent on amended claim(s)):
`
`16-24.
`
`o Newly presented claim(s) patentable: 28-31, 33-36, 38-41, 43-46, and
`
`48-94.
`
`o Newly presented canceled claims: 32, 37, 42, and 47.
`
`In the reasons for confirmation and patentability section, it was noted that in light
`
`of the BP AI decision and remaining prior art of record not raising further issues beyond
`
`those already addressed by the BP AI, claims 2-7, 9-14, and 24 are confirmed. Claims 16-
`
`23 and 26-31, 33-36, 38-41 and 43-46, 48, 60, 72, 87, 49-59, 61-71, 73-86, and 88-94 are
`
`patentable.
`
`Additionally, as per claims 48, 60, 72, and 87, the Examiner noted that "these
`
`claims include the original language of claims 1, 8, 15, and 25 respectively, except that
`
`the redirection server is defined as being between the dial up network server and the
`
`public network ( claims 48 and 60), or between the user computer and the public network
`
`( claims 72 and 87). This distinguishes from the network topology of He et al., applied as
`
`the primary prior art reference at the time of appeal."
`
`Panasonic-1013
`Page 12 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Scope of Reexamination
`
`Page 9
`
`On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A,
`
`Section 13105, part ( a) of the Act revised the reexamination statue by adding the
`
`following new last sentence to 35 U.S.C. 3030(a) and 312(a):
`
`The existence of a substantial new question of patentability is not precluded by
`
`the fact that a patent or printed publication was previously cited by or to the Office or
`
`considered by the Office.
`
`For any reexamination ordered on or after November 2, 2002, the effective date of
`
`the statutory revision, reliance on previously cited/considered art, i.e. "old art," does not
`
`necessarily preclude the existence of a substantial new question of patentability (SN Q)
`
`that is based exclusively on the old art. Rather, determinations on whether a SNQ exists
`
`in such an instance shall be based upon a fact-specific inquiry done on a case-by-case
`
`basis.
`
`Analysis
`
`Willens
`
`Willens is directed to a network access control system and process. One object of
`
`the system is to use an extension of firewall filtering to implement content monitoring
`
`(see col. 2, lines 59-61). Willens teaches utilizing a user's profile to authenticate the user
`
`upon logging into a communications server. The user's profile also identifies the filter
`
`that controls access to Internet sites (see col. 5, lines 9-25).
`
`Panasonic-1013
`Page 13 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Zenchelsky
`
`Page lO
`
`Zenchelsky is directed to a system and method for providing peer level access
`
`control on a network. Zenchelsky discloses "a filter that efficiently stores, implements
`
`and maintains access rules specific to an individual computer on a network with rapidly
`
`changing configurations and security needs." See col. 4, lines 55-58. In the system,
`
`upon a network access request, each individual peer is authenticated. "The peer's local
`
`rule base is then loaded into the filter of the present invention, either from the peer itself,
`
`or from another user, host or peer. When the peer is no longer authenticated to the POP
`
`( e.g., the peer loses connectivity or logs off from the POP), the peer's local rule base is
`
`ejected (deleted) from the filter." See col. 5, lines 17-24.
`
`He is directed to a security system and method for network element access. "The
`
`network security mechanisms include: an authentication server responsible for
`
`authentication of the network users to network elements, a credential server responsible
`
`for controlling the network user credentials or privileges, and a network element access
`
`server responsible for controlling of access to the network elements by the user
`
`elements." See abstract.
`
`ChoiceNet
`
`"ChoiceNet provides a mechanism to filter network traffic on dial-up remote
`
`access, filter information is stored in a central location server as the ChoiceNet
`
`synchronous leased line, or asynchronous connection." See page 1-1.
`
`Panasonic-1013
`Page 14 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Page 11
`
`He and Zenchelsky are old art previously cited by the Examiner in previous
`
`reexamination proceedings. Willens and ChoiceNet are old art that were previously
`
`before the Examiner, but not used in the context of a rejection.
`
`The Requester asserts that "the Board's decision casts all prior art references in a
`
`new light because the Board stated that redirection is obvious in the prior art as admitted
`
`by Patent Owner." See page 9. The alleged substantial new question of patentability
`
`views the prior art in view of the Board decision. The request notes, as.expressed the the
`
`Board, redirection is an obvious extension of blocking.
`
`However, He and Zenchelsky are not being viewed in a new light. These
`
`references were considered during the first reexamination proceedings and a co-pending
`
`ex parte reexamination proceeding (90/012378). Additionally, claim 29 recites "wherein
`
`. the individualizei:i rule set includes an initial temporary rule set and a standard rule set,
`
`and wherein the redirection server is configured to utilize the temporary rule set for an
`
`initial period of time and to thereafter utilize the standard rule set." During the first
`
`reexamination proceedings, the Examiner relied on He for teaching this feature (see
`
`Examiner's Answer) and the Board reversed the rejection.
`
`In the instant request, the Requester asserts that "He teaches a first rule set which
`
`allows access to network elements which can expire after a denied amount of time
`
`wherein a second rule set is applied which denies access to network elements. Hence, it
`
`would have been obvious to modify the rule sets in Willens to include a temporary rule
`
`set for an initial period of time and a standard rule set thereafter, as taught in He." (See
`
`page 102 of the Request). The Requester is therefore alleging that He teaches utilizing
`
`Panasonic-1013
`Page 15 of 326
`
`
`
`Application/Control Number: 90/012,3 78
`Art Unit: 3992
`
`Page 12
`
`"the temporary rule set for an initial period of time and to thereafter utilize the standard
`
`rule set," as recited in the claim. As mentioned above, He was previously considered by
`
`the Examiner in the previous proceedings for teaching "the temporary rule set for an
`
`initial period of time and to thereafter utilize the standard rule set" such rejection was
`
`reserved by the Board (see BPAI decision issued August 23, 2011). An old art must "be
`
`presented/viewed in a new light, or in a different way, as compared with its use in the
`
`earlier concluded examination(s)."
`
`As for Willens and ChoiceNet, these references are cumulative to Radia (U.S.
`
`Patent 5848233), which were cited in the co-pending proceeding. That is, Radia
`
`discloses "a method and apparatus for filtering IP packets based on events within a
`
`computer network." See abstract. In the system, when a user logs in, his/hers filter
`
`profile is retrieved and downloaded to the access network control. Next, the network
`
`components are reconfigured (see Fig. 9 & related text). Similarly to Radia, upon
`
`logging into the system, Willens uses the user's profile for authentication and to identify
`
`the filter that controls access. "ChoiceNet can use filter names specified by the Remote
`
`Authentication Dial-In User Service (Radius) user record." See page 1-1.
`
`"A prior art patent or printed publication raises a substantial question of
`
`patentability where there is a substantial likelihood that a reasonable examiner would
`
`consider the prior art patent or printed publication important in deciding whether or not
`
`the claim is patentable. If the prior art patents and/or publications would be considered
`
`important, then the examiner should find "a substantial new question of patentability"
`
`Panasonic-1013
`Page 16 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Page 13
`
`unless the same question of patentability has already been decided as to the claim in a
`
`final holding of invalidity by the Federal court system or by the Office in a
`
`previous examination. For example, the same question of patentability may have
`
`already been decided by the Office where the examiner finds the additional (newly
`
`provided) prior art patents or printed publications are merely cumulative to similar prior
`
`art already fully considered by the Office in a previous examination of the claim." MPEP
`
`2241.
`
`Further, He and Zenchelsky were already considered by the Office in previous
`
`examination of the claims and are not being presented in a new light. As for Willens and
`
`ChoiceNet, these references are "cumulative to similar prior art already fully considered
`
`by the Office in a previous examination" of the claims.
`
`Thus, it is not agreed that the prior art references raises a substantial likelihood
`
`that a reasonable examiner would consider these teachings as important in determining
`
`the patentability of the clai.ms of Ikudome patent. That is, a new substantial question of
`
`patentability is not being raised because the references were either fully considered in a
`
`prior examination and not being presented in a new light or are cumulative to those fully
`
`considered.
`
`Waiver of Right to File Patent Owner Statement
`
`In a reexamination proceeding, Patent Owner may waive the right under 3 7
`
`C.F.R. 1.530 to file a Patent Owner Statement. The document needs to contain a
`
`statement that Patent Owner waives the right under 37.C.R. 1.530 to file a Patent Owner
`
`Panasonic-1013
`Page 17 of 326
`
`
`
`Application/Control Number: 90/012,3 78
`Art Unit: 3992
`
`Page 14
`
`Statement and proof of service in the manner provided by 37 C.F.R. 1.248, if the request
`
`for reexamination was made by a third party requester, see 37 C.F.R 1.550. The Patent
`
`Owner may consider using the following statement in a document waiving the right to
`
`file a Patent Owner Statement: Patent Owner waives the right under 37 C.F.R. l .530 to
`
`file a Patent Owner Statement.
`
`Amendment in Reexamination Proceedings
`
`Patent owner is notified that any proposed amendment to the specification and/or
`
`claims in this reexamination proceeding must comply with 37 CFR l.530(d)-(j), must be
`
`formally presented pursuant to 3 7 CFR § l.52(a) and (b ), and must contain any fees
`
`required by 3 7 CFR § ,1.20( c ). See MPEP §2250(IV) for examples to assist in the
`
`preparation of proper proposed amendments in reexamination proceedings.
`
`Service of Papers
`
`After the filing of a request for reexamination by a third party requester, any
`
`document filed by either the patent owner or the third party requester must be-served on
`
`the other party ( or parities where two or more third party requester proceedings are
`
`merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See
`
`37 CFR 1.550.
`
`Notification of Concurrent Proceedings
`
`The patent owner is reminded of the continuing responsibility under 3 7 CFR
`
`l .565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`Panasonic-1013
`Page 18 of 326
`
`
`
`Application/Control Number: 90/012,378
`Art Unit: 3992
`
`Page 15
`
`proceeding, involving Patent No. 6,779,118 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 proceedings throughout the course of this
`
`reexamination proceeding. See MPEP §§ 2207, 2282, and 2286.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner of Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By Hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`https :// efs. uspto. gov/ efi le/myportal/ ef s-registered
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e.,
`electronically uploaded) directly into the official file for the reexamination proceeding,
`which offers parties the opportunity to review the content of their submissions after the
`"soft scanning" process is complete.
`
`Panasonic-1013
`Page 19 of 326
`
`
`
`Application/Control Number: 90/012,3 78
`Art Unit: 3992
`
`Page 16
`
`Any inquiry concerning this communication should be directed to the Central
`
`Reexamination Unit at (571) 272-7705.
`
`/Jalatee Worjloh/
`
`Patent Reexamination Specialist, Art Unit 3992
`
`Conferees:
`
`ANDREW J. FISCHER ~
`Supervisory Patent Reexamination s;¥1a1~
`CRU -- Art Unit 3992
`
`Panasonic-1013
`Page 20 of 326
`
`
`
`Doc coda: IDS
`PTO/SB/08a (01-10)
`Approved for use through 07/31/2012. 0MB 0651-0031
`•
`u.s. Patent end Trademsrlt Offioe; u.s. DEPARTMENT OF coMMERCE
`Doc description: Information Disclosure Statement (IDS) Filed
`Under ths PapolWOfk Rodudlon Act or 1995, no poraDflS are n:qu!rcd lo mpond to a colledloo of Information unle$s k contains a valid 0MB control number.
`
`INFORMATION DISCLOSURE
`STATEMENT'BY APPLICANT
`( Not for submission under 37 CFR 1.99)
`
`AppllcaUon Number
`Flllng Date
`First Named Inventor I Kolchlro lkudome
`Art Unit
`I
`Examiner Name
`Attorney Docket Number
`
`MIPIKU.002RE
`
`U,S.PATENTS
`
`Examiner Cite
`No
`Initial*
`
`Patent Number
`
`Kind
`Code1 Issue Date
`
`Name of Patentee or Appllcant
`of cited Document
`
`Pages,Columns,Unes where
`Relevant Passages or Relevant
`Figures Appear
`
`1
`
`5889958
`
`1990-03-30
`
`Willens
`
`;
`
`2
`
`6088451
`
`2000-07-11
`
`He etal.
`
`3
`
`6233686
`
`2011-05-15
`
`Zenchelsky et al.
`
`If you wish to add additional U.S. Patent citation Information please dick the Add button.
`U,S.PATENT APPLICATION PUBLICATIONS
`
`Examiner
`Initial•
`
`Cite No
`
`Publlcatlon
`Number
`
`Kind PubDcatlon
`Code1 Date
`
`Name of Patentee or Applicant
`of cited Document
`
`Pages,Columns,Lines where
`Relevant Passages or Relevant
`Figures Appear
`
`1
`
`If you wish to add additional U.S. Published Application citation information please click the Add button.
`FOREIGN PATENT DOCUMENTS
`
`Examiner Cite Foreign Document
`lnltla1•
`No Numbef.l
`
`Country
`Code21
`
`Name of Patentee or
`Kind Publication Applicant of cited
`Code4 Date
`Document
`
`Pages,Columns,Llnes
`where Relevant
`Passages or Relevant
`Figures Appear
`
`T6
`
`1
`
`EFS Wcb:Z.1.17
`
`(cid:143)
`
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. /J.W.{
`
`I
`
`;
`
`Panasonic-1013
`Page 21 of 326
`
`
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`( Not for submission under 37 CFR 1.99)
`
`Appllcatlon Number
`FlDng Date
`First Named Inventor I Kolchlro lkudome
`Art Unit
`I
`ExamJner Name
`Attorney Docket Number
`
`MIPIKU.002RE
`
`If you wish to add additional Foreign Patent Document citation Information please click the Add button
`NON-PATENT LITERATURE DOCUMENTS
`Include name of the author (In CAPITAL LETTERS), title of the article (when appropriate), title of the Item
`(book, magazine, journal, serial, symposium, catalog, et~). data, pages(s), volume-Issue number(s),
`publisher, city and/or country where published.
`
`Examiner Cite
`Initials• No
`
`1
`
`"The ChoiceNat(TM) Administrator's Gulde: Livingston Enterprises, 88 pages, January 1997
`
`2
`
`Ex parte Unksmart Wireles