UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PA TENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,912
`
`02n912012
`
`7868912
`
`14342/I0C
`
`1028
`
`04/10/2012
`7590
`74712
`Muir Patent Consulting, PLLC
`9913 Georgetown Pike, Suite 200
`P.O. Box 1213
`Great Falls, VA 22066
`
`EXAMINER
`
`CAMPBELL, JOSHUA D
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`04/10/2012
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`Clifford A. Ulrich
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-14 50
`www.uspto.gov
`
`Date: 4-lb - \'1--.
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`REEXAMINATION CONTROL NO.: 95001912
`PATENT NO.: 7868912
`TECHNOLOGY CENTER: 3999
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTOL-2070(Rev.07-04)
`
`

`

`OFFICE ACTION IN INTER PARTES
`REEXAMINATION
`
`Control No.
`
`95/001,912
`Examiner
`
`JOSHUA CAMPBELL
`
`Patent Under Reexamination
`
`7868912
`Art Unit
`
`3992
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. -(cid:173)
`
`Responsive to the communication(s) filed by:
`Patent Owner on __
`Third Party(ies) on 29 February, 2012
`
`RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
`
`For Patent Owner's Response:
`i MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
`GOVERNED BY 37 CFR 1.956.
`For Third Party Requester's Comments on the Patent Owner Response:
`30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
`OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
`37 CFR 1.953.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1.0 Notice of References Cited by Examiner, PTO-892
`2.0 Information Disclosure Citation, PTO/SB/08
`3.0 __
`PART II. SUMMARY OF ACTION:
`1 a. ~ Claims 1-4 and 6-22 are subject to reexamination.
`1 b. ~ Claims § are not subject to reexamination.
`2. 0 Claims __ have been canceled.
`3. 0 Claims __ are confirmed. [Unamended patent claims]
`4. O Claims __ are patentable. [Amended or new claims]
`5. ~ Claims 1-4 and 6-22 are rejected.
`6. 0 Claims __ are objected to.
`0 are acceptable Oare not acceptable .
`7. 0 The drawings filed on__
`0 approved. 0 disapproved.
`. 8. 0 The drawing correction request filed on __ is:
`9. 0 Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`0 been received.
`0 not been received.
`0 been filed in Application/Control No 95001912.
`10.0Other __
`
`U.S. Patent and Trademark Office
`PTOL-2064 (08/06)
`
`Paper No. 20120405
`
`

`

`Application/Control Number: 95/001,912
`Art Unit: 3992
`
`Page 2
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`DETAILED ACTION .
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`1)
`
`This Office action addresses claims 1-4 and 6-22 of United States Patent Number
`
`7,868,912 (Venetianer) for which it has been determined in the Order Granting Inter Partes
`
`Reexamination (hereafter the "Order") that a substantial new question of patentability was raised
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`in the Request for inter partes reexamination filed on 2/29/2012 (hereafter the "Request").
`
`Information Disclosure Statement
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`2)
`
`MPEP 2656 states in pertinent part:
`
`Where patents, publications, and other such items of information are submitted by a party
`
`(Patent Owner or Requester) in compliance with the requirements of the rules, the
`
`requisite degree of consideration to be given to such information will be normally limited
`
`by the degree to which the party filing the information citation has explained the content
`
`and relevance of the information. The initials of the examiner placed adjacent to the
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`citations on the form PTO/SB/08A and 08B or its equivalent, without an indication to the
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`contrary in the record, do not signify that the information has been considered by the
`
`examiner any further than to the extent noted above.
`
`In concert with MPEP 2656, the references submitted in the IDS have been considered
`
`only to the extent that the content and relevance of the references have been explained.
`
`

`

`Application/Control Number: 95/001,912
`Art Unit: 3992
`
`Page 3
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`Rejections Proposed by the Requester
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`3)
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`A total of eleven references have been asserted in the Request as providing teachings
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`relevant to the claims of the Venetianer patent. In view of the Order, four of the proposed issues
`
`have established a reasonable likelihood that the Requester will prevail. The following proposed
`
`rejections are the main issues to be discussed below:
`
`Issue 1:
`
`Claims 1-3 and 6-22 in view of Gilge
`
`Issue 3:
`
`Claim 1-4 and 6-22 in view of Lipton
`
`Issue 5:
`
`Claim 1, 3, 4, 6, 8, 9, 11-13, 15-20, and 22 in view of Courtney
`
`Issue 12:
`
`Claim 1, 3, 4, 6, 8, 9, 11-13, 15-20, and 22 in view of Olson
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`Claim Rejection Paragraphs
`
`4)
`
`The following are quotations from the MPEP regarding the types of rejections to be
`
`utilized below:
`
`Claim Rejections-35 USC§ 102
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States.
`
`

`

`Application/Control Number: 95/001,912
`Art Unit: 3992
`
`Page 4
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`Issue 1
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`5)
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`This rejection was proposed by the third party requester in the Request, and it is adopted
`
`with regard to claims 1-3 and 6-22 for the reasons set forth in the Request for reexamination,
`
`which is hereby incorporated by reference.
`
`6)
`
`Claims 1-3 and 6-22 rejected under 35 U.S.C. 102(b) as being anticipated by Gilge (see
`
`pages 2-50 of the Appendix: '912 Patent Claim Charts in the Request, incorporated by
`
`reference).
`
`Issue 3
`
`7)
`
`This rejection was proposed by the third party requester in the R~quest, and it is adopted
`
`with regard to claims 1-4 and 6-22 for the reasons set forth in the Request for reexamination,
`
`which is hereby incorporated by reference.
`
`8)
`
`Claims 1-4 and 6-22 rejected under 35 U.S.C. 102(b) as being anticipated by Lipton (see
`
`pages 57-122 of the Appendix: '912 Patent Claim Charts in the Request, incorporated by
`
`reference).
`
`Issue 5
`
`9)
`
`This rejection was proposed by the third party requester in the Request, and it is adopted
`
`with regard to claims 1, 3, 4, 6, 8, 9, 11-13, 15-20, and 22 for the reasons set forth in the Request
`
`for reexamination, which is hereby incorporated by reference.
`
`

`

`Application/Control Number: 95/001,912
`Art Unit: 3992
`
`Page 5
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`10)
`
`Claims 1, 3, 4, 6, 8, 9, 11-13, 15-20, and 22 rejected under 35 U.S.C. 102(b) as being
`
`anticipated by Courtney (see pages 127-168 of the Appendix: '912 Patent Claim Charts in the
`
`Request, incorporated by reference).
`
`Issue 12
`
`11)
`
`This rejection was proposed by the third party requester in the Request, and it is adopted
`
`with regard to claims 1, 3, 4, 6, 8, 9, 11-13, 15-20, and 22 for the reasons set forth in the Request
`
`for reexamination, which is hereby incorporated by reference.
`
`12)
`
`Claims 1, 3, 4, 6, 8, 9, 11-13, 15-20, and 22 rejected under 35 U.S.C. I°02(b) as being
`
`anticipated by Olson (see pages 267-299 of the Appendix: '912 Patent Claim Charts in the
`
`Request, incorporated by reference).
`
`

`

`Application/Control Number: 95/001,912
`Art Unit: 3992
`
`Page 6
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`Conclusion
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`Extensions oftime under 37 CFR l.136(a) will not be permitted in inter partes
`
`reexamination proceedings because the provisions of 3 7 CFR 1.136 apply only to "an applicant"
`
`and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c)
`
`requires that inter partes reexamination proceedings "will be conducted with special dispatch"
`
`(37 CFR 1.937). Patent owner extensions oftime in inter partes reexamination proceedings are
`
`provided for in 37 CFR 1.956. Extensions oftime are not available for third party requester
`
`comments, because a comment period of 30 days from service of patent owner's response is set
`
`by statute. 35 U.S.C. 314(b)(3).
`
`The Patent Owner is reminded of the continuing responsibility under 37 CFR 1.985(a) to
`
`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
`
`US Patent 7,868,912 throughout the course of this reexamination proceeding. The Third Party
`
`Requester is also reminded of the ability to similarly apprise the Office of any such activity or
`
`proceeding through the course of this reexamination proceeding. See MPEP § 2686 and
`
`/
`
`2686.04.
`
`All correspondence relating to this inter partes reexamination proceeding should be
`
`directed as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Inter Partes Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`Page 7
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`., .. ,
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`.~
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`\, -·
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`Application/Control Number: 95/001,912
`Art Unit: 3992
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`ByEFS-Web:
`
`Registered users ofEFS-Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`https://efs.uspto.gov/efile/myportal/efs-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.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`/Joshua D Campbell/
`Primary Examiner, Art Unit 3992
`
`. . ALEXANDER J. KOSOWSKI
`$ijl)8rvfsory Patent Reexamination Sr,aal!ll§t ~ l
`U '-'\I\._
`CRU - Art Unit 3992
`
`