UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
`
`UNITED STA TES 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.
`
`90/012,878
`
`05/24/2013
`
`7868912
`
`4079-117
`
`3806
`
`04/29/2014
`7590
`6449
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W.
`SUIIB 800
`WASHINGTON, DC 20005
`
`EXAMINER
`
`BASEHOAR, ADAM L
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`04/29/2014
`
`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)
`
`

`

`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`DINESH AGARWAL, P.C.
`
`5350 SHAWNEE ROAD
`
`SUITE 330
`
`ALEXANDRIA, VA 22312
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012.878.
`
`PATENT NO. 7868912.
`
`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(g)).
`
`PTOL-465 (Rev.07-04)
`
`

`

`Control No.
`
`90/012,878
`
`Patent Under Reexamination
`
`7868912
`
`Examiner
`
`Art Unit
`
`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
`
`2.
`
`AIA (First Inventor to File)
`Status
`3992
`ADAM L. BASEHOAR
`No
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`1. [8J Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be issued
`in view of
`(a) [8J Patent owner's communication(s) filed: 16 April 2014.
`(b) D Patent owner's failure to file an appropriate timely response to the Office action mailed: __ .
`(c) D Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31 ).
`(d) D The decision on appeal by the D Board of Patent Appeals and Interferences D Court dated
`(e) D Other: __
`The Reexamination Certificate will indicate the following:
`(a) Change in the Specification: D Yes [8J No
`D Yes [8J No
`(b) Change in the Drawing(s):
`(c) Status of the Claim(s):
`(1) Patent claim(s) confirmed: 1-4 and 6-22.
`(2) Patent claim(s) amended (including dependent on amended claim(s)): __
`(3) Patent claim(s) canceled:.§..
`(4) Newly presented claim(s) patentable: 23-33 and 42-44.
`(5) Newly presented canceled claims: 34-41.
`(6) Patent claim(s) D previously D currently disclaimed: __
`(7) Patent claim(s) not subject to reexamination: __ .
`
`3. D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on-~
`4. [8J Note the attached statement of reasons for patentability and/or confirmation. Any comments considered necessary
`by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly to avoid
`processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for Patentability
`and/or Confirmation."
`
`5. □ Note attached NOTICE OF REFERENCES CITED (PTO-892).
`6. □ Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/08 substitute).
`7. D The drawing correction request filed on __ is: D approved
`D disapproved.
`
`8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)D All b)D Some*
`c)D None
`of the certified copies have
`D been received.
`D not been received.
`D been filed in Application No. __ .
`D been filed in reexamination Control No.
`.
`D been received by the International Bureau in PCT Application No. __ .
`
`* Certified copies not received: __ .
`
`9. D Note attached Examiner's Amendment.
`
`10. D Note attached Interview Summary (PTO-474).
`
`11. D Other: __
`
`All correspondence relating to this 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.
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-469 (Rev. 08-13)
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20140418
`
`/ADAM L BASEHOAR/
`Primary Examiner, Art Unit 3992
`
`

`

`Application/Control Number: 90/012,878
`Art Unit: 3992
`
`Page 2
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`DETAILED ACTION
`
`1.
`
`This Office action addresses original claims 1-22 and newly presented claims 23-44 of
`
`United States Patent Number 7,868,912 B2 (Venetianer et al), for which it has been determined
`
`in the Order Granting Ex Parte Reexamination (hereafter the "Order") mailed 06/20/2013 that a
`
`substantial new question of patentability was raised in the Request for Ex Parte reexamination
`
`filed on 05/24/2013 (hereafter the "Request"). Original dependent claim 5 was previously
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`cancelled in this reexamination (see: "Amendment and Reply", p. 2, filed 10/30/2013).
`
`2.
`
`This Office action is a response to the Patent Owner's (PO) After Final Amendment and
`
`Reply (hereafter the "Reply") filed 04/16/2014. PO's Reply, along with its accompanying
`
`amendments, has been entered and made of record. By virtue of PO's Reply: (1) newly
`
`presented independent claim 32 has been amended (see: Reply, p. 2); and (2) newly presented
`
`claims 34-41 have been cancelled (see: Reply, p. 2).
`
`Regarding PO's amendment to newly presented independent claim 32, said amendment
`
`overcomes the objection to claim 32 indicated in the Final Action (see: Final Action, p. 12).
`
`Therefore, said objection has been withdrawn.
`
`In view of PO's Reply, as previously indicated in the Final Action (see: Final Action, p.
`
`14) and discussed below in the Statement of Reasons for Patentability and/or Confirmation
`
`section, original claims 1-4 and 6-22 are confirmed and newly presented claims 23-33 and 42-44
`
`are found patentable.
`
`

`

`Application/Control Number: 90/012,878
`Art Unit: 3992
`
`Page 3
`
`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
`
`3.
`
`Claims 1-4, 6-33, and 42-44 are patentable and/or confirmed. The following is an
`
`Examiner's statement of reasons for patentability and/or confirmation of claims 1-4, 6-33, and
`
`42-44 found in this reexamination proceeding. Claims 1-4, 6-33, and 42-44 are confirmed and/or
`
`patentable over the prior art that was explained in the Request and determined to raise a
`
`substantial new question of patentability in the Order granting reexamination and over the prior
`
`art that was applied and discussed by the Examiner in the present reexamination proceeding
`
`because of the following:
`
`Regarding independent claim 1, as previously and more specifically discussed in the
`
`Final Action (see: Final Action, pp. 7-11), the proper proposed prior art combinations (i.e.,
`
`Courtney, Olson, Brill, Day, and JP '783) do not teach the independence based claim elements of
`
`determining "a first event that is not one of the determined attributes" and "determines attributes
`
`independent of a selection of the first event."
`
`Regarding additional independent claims 6, 9, 12, 18, and 23-33, the additional
`
`independent claims each recite at least one substantially similar limitation as discussed above
`
`with regard to independent claim 1 and are thus patentable and/or confirmable based on the same
`
`rationale.
`
`Regarding dependent claims 2-4, 7, 8, 10, 11, 13-17, 19-22, and 42-44, the claims are
`
`dependent on patentable and/or confirmable claims, and are therefore also patentable and/or
`
`confirmed.
`
`

`

`Application/Control Number: 90/012,878
`Art Unit: 3992
`
`Page 4
`
`Any comments considered necessary by PATENT OWNER regarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submission by the
`
`patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or
`
`Confirmation" and will be placed in the reexamination file.
`
`

`

`Application/Control Number: 90/012,878
`Art Unit: 3992
`
`Page 5
`
`4.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`
`Conclusion
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`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 of EFS-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.
`
`

`

`Application/Control Number: 90/012,878
`Art Unit: 3992
`
`Page 6
`
`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.
`
`/ Adam L Basehoar/
`
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/DENNIS BONSHOCK/
`
`Primary Examiner, Art Unit 3992
`
`/ ALEXANDER KOSOWSKI/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`