Application NumberInformation
`
`Examiner Number: 76055 / JIOVALING, JOHN
`Application Number: 90/012149 Assignments
`
`Group Art Unit: 3992
`LEWMadras
`Filing or 371(c) Date: 02/17/2012 cDan
`Class/Subclass: 726/007.000
`Effective Date: 02/17/2012
`Lost Case: NO
`Application Received: 02/17/2012
`Interference Number:
`Patent Number:
`Unmatched Petition: NO
`Issue Date: 00/00/0000
`L&R Code; Secrecy Code:1
`Date of Abandonment: 00/00/0000
`Third Level Review: NO
`Attorney Docket Number: R1341006C
`Status: 418 /PETITION RECEIVED RE: DENIAL OF REEXAMINATION REQUEST
`Confirmation Number: 4719
`Oral Hearing: NO
`Title of Invention: 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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`02172012 | [__RXIDS.___JINFORMATIONDISCLOSURESTATEMENTFILED
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`Page 2 of 307
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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.USPLO.gZOV
`
`APPLICATION NO.
`90/012,149
`
`FILING DATE
`02/17/2012
`
`FIRST NAMED INVENTOR
`6779118
`
`ATTORNEY DOCKET NO.
`R1341006C
`
`CONFIRMATIONNO.
`4719
`
`40401
`7590
`07/18/2012
`Hershkovitz & Associates, LLC
`2845 DukeStreet
`Alexandtia, VA. 22314
`
`EXAMINER
`
`DATE MAILED: 07/18/2012
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev.10/03)
`
`Panasonic-1011
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`
`& UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`WWw.uSpto.Z0Vv
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`JERRY T. SEWELL
`1803 BROADWAY,APT.301
`NASHVILLE, TN 37203-2761
`
`Date:
`
`MAILED
`
`JUL 18 2012
`CENTRAL REEXAMINATION UMP
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROLNO. : 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 timefor 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)).
`
`\
`
`
`
`Panasonic-1011
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`Panasonic-1011
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Hershkovitz & Associates, LLC
`2845 Duke Street
`
`Alexandria, VA 22314
`
`JERRY T. SEWELL
`1803 BROADWAY,APT.301
`NASHVILLE, TN 37203-2761
`
`In re: Ikudomeetal.
`Ex Parte Reexamination Proceeding
`Control No.: 90/012,149
`Deposited: February 17, 2012
`For: U.S. Patent No.: 6,779,118
`
`:
`:
`
`:
`:
`
`:
`:
`:
`:
`
`(For Patent Owner)
`
`(For Third Party
`Requester)
`
`MAILED
`JUL 18 2012
`CENTRAL
`REEXAMINATIONUNrp
`
`DECISION ON PETITION
`UNDER37 CFR §§ 1.181 & 1.515(c)
`
`This is a decision onthe 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.
`
`Thepetition 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
`
`e
`
`USS.Patent No. 6,779,118 [“the ‘118 patent”] issued on August 17, 2004.
`
`e A request for ex parte reexamination of claims 2-7, 9-14, 16-24 and 26-27 of the ‘118
`patent wasfiled February 17, 2012 and assigned control no. 90/012,149.
`
`e An order denying the request for reexamination was issued on March20, 2012.
`
`e On April 19, 2012,the third party requester timely filed the instant petition for
`reconsideration of the denial of the request.
`
`e The ‘118 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(c) provides for the filing of a petition under 37 CFR § 1.181 to review an
`examiner’s determination refusing to order ex parte reexamination. The CRUDirector’s review
`on petition is de novo. Therefore, the review will determine whether the examiner’s refusal to
`order reexamination wascorrect, 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 ofprior art consisting of patents or
`printed publications establishes that a substantial new question of patentability exists with
`respect to one or moreclaims of that patent. 35 U.S.C. § 302 requires that a request for ex parte
`reexamination be based uponpriorart as set forth in 35 U.S.C. § 301, thatis, 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 ofpatentability
`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 importantin
`
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`Reexamination Control No. 90/012, 149
`
`Page 3
`
`deciding whetheror 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 ofpatentability has already been
`decided bya 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
`foundto be raised, an order granting ex parte reexamination ofthe patentis issued.
`
`Summary of the Prior Prosecution with Respect to the ‘118 Patent
`
`The present request for reexamination is drawn to claims 2-7; 9-14, 16-24 and 26-27. The ‘118
`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 U.S. Patent No. 6,088,451 to Heetal. [“He’’] in view of U.S. Patent No. 6,233,686
`to Zenchelskyet 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 groundsofrejection of claims 1, 8, 15 and 25 as obvious over
`He, Zenchelsky and APA. Claims 32, 37, 42 and 47 depended from claims1, 8, 15 and 25,
`therefore the Board simply said that the independent claims would be rejected over He,
`Zenchelsky and APA for the same reasonsas the dependent claims. The Board did not issue new
`groundsofrejection for the other dependent claims.
`
`Uponreturn ofjurisdiction to the examiner, the patent owner made several amendments. It
`cancelled claims 1, 8, 15, 25, 32, 37, 42 and 47,all claimsstill 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 changesto correct typographicalerrors and to
`place someclaims in independent form. Other amendments were madethat are not relevant to
`the instant proceeding.
`
`The examinerissued a Notice of Intent to Issue the Reexamination Certificate [“NIRC”] on
`January 6, 2012, determiningthat 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 groundsofrejection are indicated. The remainingprior art of record has been
`considered and not foundto 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 reexaminationcertificate 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 APAwere affirmed, and new groundsofrejection of
`someclaims werealso 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 proposesthat claims 2-7, 9-14, 16-24 and 26-27 are
`obvious over He in view of Zenchelsky, and further in view of APA. Asnoted, these claims
`were rejected in the previous proceeding as obvious over Hein view of Zenchelsky. The Board
`reversed that rejection, finding that the references lacked the “redirection server” of the
`independent claims. The Boardaffirmed rejections of other dependent claims where APA was
`added to the combination, finding that APA teachesa redirection server. The Board entered new
`groundsofrejection for the independent claimsonly, rejecting them over He, Zenchelsky and
`APA. The Board did not address the merits of claims 2-7, 9-14, 16-24 and 26-27individually;
`the rejections were reversed due to the reversal as to the independent claims, and the new
`grounds were notapplied to these claims. The requester argues that He, Zenchelsky and APA
`should now beapplied to these claimsas well.
`
`The reexamination examiner denied the present request seemingly for two reasons. Hestated
`that the request was premature because the claims, as amendedin 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(II). 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 overand 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 ofthe 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 claimsare 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 remainasoriginally present in
`the ‘118 patent. The request addresses those claims, as originally patented, therefore the request
`is properly groundedin thestatute in that its proposed SNQs“affect[] any claim ofthe patent’ as
`required by 35 U.S.C. § 303(a).
`It likewise addresses “the claimsin 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 amendedin the ‘9301 proceeding. As
`stated, the certificate had notyet issued at the time of the determination, so those claims were not
`yet in effect at that time. The MPEP, however, recognizesthis precise issue, and permits a
`requester to address proposed amendedclaims 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(II). The present request satisfies these
`requirements, as it is groundedat least on original claims 2-7 and 9-14, and as MPEP § 2240(II)
`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 ofthe certificate.
`
`Accordingly, the request was not improper for being drawn to claimsnotin effect at the time of
`the determination.'
`
`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 whetherit is new.
`
`A clear question of patentability has been raised in light of the prosecution of the ‘9301
`proceeding.
`In that proceedingall of the claims at issue here were rejected as obvious over He in
`view of Zenchelsky. The Board addressed only the independentclaims, and reversed the
`rejections based on the references lacking a feature. The Board howeverreplaced 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 thatthe reversal
`wasonly based on the independentclaims, the reversed rejections were basically corrected by
`adding APA,and there wasnofinding oferror in the original application of He and Zenchelsky
`to the dependentclaims, 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 claimsraises a question of patentability.
`
`The question then is whetherthe question of patentability is “new.” A first issue is whether this
`combination wasconsidered 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 groundofrejection, but the rule says the
`Board “may” include a new groundofrejection, and indeed MPEP § 1213.02 tells usthat “the
`exercise of authority under 37 CFR 41.50(b)is discretionary.” MPEP § 1213.02 furthertells us
`that becauseit is discretionary, “‘no inference should be drawn fromafailure to exercise that
`
`' This analysis was technically unnecessary in light of the de novo review andthe 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. 90/012,149
`
`Page 6
`
`discretion.” That the Board declined to reject claims 2 et al. under the combination with APA
`therefore does nottell us whether the Board actually considered such a rejection.
`
`Thefinal issue is whether the examiner considered the combination. Again, the examiner
`explicitly recited in the NIRC,as to the claimsat issue here:
`
`The Board of Patent Appeals and Interferences Decision of August 23, 2011 indicate the
`proposedrejection of these claims has been reversed (decision at page 10). No proposed
`new groundsofrejection are indicated. The remainingprior art of record has been
`considered and not foundto 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 someclaims over this combination, and the Board
`rejected additional claims over this combination. The examinersaid that “[t]he remaining prior
`art has been considered and not foundto raise further issues beyond those issues already
`addressed by the” Board. The examiner wasspecifically aware of the combination, consideredit
`with respect to these claims, yet declined to makethe 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 examinerdid 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 confirmedthe patentability of the dependent claims or
`mandated allowance of the claims overthe art mentioned in the decision. Request pp. 10-11.
`This is pure speculation andthereis nothing in the recordto indicate that the examiner wasnot
`aware that he could enter a newrejection after the Board decision. See 37 CFR §§ 41.50(b)(1)
`(discussing reopening of prosecution after new ground ofrejection); 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 examinerdid not consider the patentability of the claims in view ofHeetal.,
`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 meanthe art other than that ofthe reversed rejection, and
`therefore would include APA. The evidence does not show that the examinerfailed to consider
`this combination asto the claimsatissue.
`
`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 Jn re Swanson, 88
`
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`Reexamination Control No. 90/012,149
`
`Page 7
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`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 referencesin 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.” Jn re Recreative Technologies, 38 USPQ2d
`1776, 1777-78 (Fed. Cir. 1996). The Office has already had this combination of references
`before it and deemedall of the claims patentable. The Office will not reconsider that decision
`absent some newand different evidence, argument, interpretation, or the like. There is no
`indication that this old art is being viewedin a new light or a different way than it was
`previously, or with some newinterpretation of the references. There is no evidencethat the
`examinerfailed 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.
`
`CONCLUSION
`
`1. Based on a de novo review ofthe record as a whole, the petition is denied.
`
`2. Accordingly, the request for ex parte reexamination of claims 2-7, 9-14, 16-24 and 26-27is
`denied.
`
`3. This decisionis final and nonappealable. 35 U.S.C. § 303(c) & 37 CFR § 1.515(c). No
`further communication on this matter will be acknowledgedor 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...
`
`Trem pe
`
`Director, Central Reexamination Unit
`
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`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`Patent No.
`
`Reexamination Control No.
`
`Filed
`
`Examiner
`
`Art Unit
`
`Confirmation No.
`
`:
`
`:
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`:
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`:
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`:
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`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
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This authorization to charge Deposit Account No. 503550 accompaniesa 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.
`
`Date: April 19, 2012
`
`Respectfully submitted,
`
`By:
`
`/Jerry Turner Sewell/
`Jerry Turner Sewell
`Customer No. 51476
`Registration No. 31,567
`Requestor of Record
`949-433-2849
`
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`Electronic AcknowledgementReceipt
`
`12586899
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`90012149
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`Application Number:
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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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`Reexam (Third Party)
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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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`Filing Date:
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`19-APR-2012
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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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`Paymentinformation:
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`Submitted with Payment
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`File Listing:
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`Pages
`Multi
`File Size(Bytes)/
`DocumentDescription
`Document
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`
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`Number Message Digest|Part/.zip|P (if appl.)
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`Petition for Review of Reexam Denial
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`11179430
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`60862f49fe6a5852793 18972ch718f32223
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`2200 Information:
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`10101-002RX_Petition_for_Rev
`iew_of_Denial_of_Reexam_Re
`quest. pdf
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`.
`nasonic-10
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`Panasonic-1011
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`Miscellaneous Incoming Letter
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`10101-002RX_Authorization_to
`_Charge_Deposit_Account.pdf 9253a3706a878e9ce49ae1cflea1 3874fc0}
`560b
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`This AcknowledgementReceipt evidences receipt on the noted date by the USPTOofthe 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.
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`the application.
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`New International Application Filed with the USPTO as a Receiving Office
`If a 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 of the International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shownon this AcknowledgementReceiptwill establish the international filing date of
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`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfora 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 shownonthis
`AcknowledgementReceiptwill establish thefiling date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`If a 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/903indicating acceptanceof 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.
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`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
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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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`6,779,118
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`90/012,149
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`February 2, 2012
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`John Hotaling
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`3992
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`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
`P.O. Box 1450
`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(II).
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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 onthe claims in effect at the time of the determination’ 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
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`time of the determination.
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`Indeed, this must be so because Claims 2-7 and 9-14 were not amendedatall
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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 thoseclaims.
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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 amendedclaim in the pending reexamination” presented
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`to “permit examination of the entire patent package.” MPEP § 2240(Il). Furthermore,
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`Claims 16-24 and 26-27 were only amendedin 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 Ikudome 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
`§ 1.515; MPEP § 2240(Il).
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`-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 data 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 amendedto 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 deemedto patentable
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`becauseof the dependence from a patentable claim.
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`Claim 26 was amendedto 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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`
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`Proposed Amendment” The_bodilyin Reexamination Proceeding 90/009,301.
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`
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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 minor typographical and grammatical errors, amended
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`Claims 16-24 do notdiffer from the claims in the original patent.
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`The present Request for Reexamination was filed February 12, 2012. On March
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`20, 2012, the present