1 6
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`4660US.
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`PTO lllllillllllllllllllllllllllllillllllllllllli
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`PTO/SB/57 (04-05)
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`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`PO. Box 1450
`Alexandria, VA 22313-1450
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`Attorney Docket No.:M—16056-RE US
`
`Date: July 6, 2005
`
`1. a This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number 5 ’029 r 183
`issued July 2 , 1991
`. The request is made by:
`
`D patent owner.
`
`-
`El third party requester.
`
`2.. The
`
`name and address of the person requesting reexamination is:
`Edward C. Kwok
`
`asters... Km Chen 8 Reid m,
`
`'
`64660
`U.S. PTO
`9000761 7
`
`iii/iiIII/lilillIll/Illllllilillillllllllllllll
`
`San Jose
`
`CA 95110
`
`3.
`
`a. Acheck in the amountof$
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`is enclosed to cover the reexamination fee, 37 CFR 120(c)(1);
`
`b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 120(c)(1)
`(submit duplicative copy for fee processing): or
`to Deposit Account No. 50—2257
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`Cl
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`Payment by credit card. Form PTO-2038 is attached.
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`A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`enclosed. 37 CFR 1.510(b)(4)
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`6.|:|
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`7.|:|
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`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`E] Landscape Table on CD
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`c. [:1 Statements verifying identity of above copies
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`8. D A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
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`9.
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`Reexamination of claim(s)
`
`1 9 16a 21 , 35 3 40-41
`
`is requested.
`
`10.
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`A copy of every patent or printed publication relied upon is submitte
`EMWQESWMMEM HfiHanerrlffiafl
`Form PTO/SB/OS, PTO-1449, or equivalent.
`'lFD'l 12
`‘5 .B D
`11. E] An English language translation of all necessary and pertinent non-E
`8 ea
`8 (”or printed
`nglish anguage patents an
`publications is included.
`
`998 7617
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.510. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 2 hours to complete.
`including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
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`Qualcomm Incorporated
`Exhibit 1040
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`Page 1 of 341
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`Qualcomm Incorporated
`Exhibit 1040
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`PTO/SBI57 (04-05)
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`12. E The attached detailed request includes at least the following items:
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`
`
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications 37 CFR 1 510(b )(1)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination Is requested. 37 CFR 1 .510(b)(2)
`
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` 13. El A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.510(e)
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` 14. E] a. ItIs certified that a copy of this request (if filed by other than the patent owner) has been served'In its entirety on
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`the patent owner as provided in 37 CFR 1 ..33(c)
`The name and address of the party served and the date of service are:
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`Alan Israel
`
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`.
`Israel & Schiffmiller P.C.
`schstein Ottin er
`l189 Fifthf‘Avenue
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`New York,.NY 10017-6105
`
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`July 6 ’ 2005
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`Date of Service:
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`b. A duplicate copy is enclOsed since service on patent owner was not possible.
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`32605
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`OR
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`Address
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`—mail
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`16 I: The patent is currently the subject of the following concurrent proceeding(s):
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`|:l a. Copending reissue Application No
`b. Copending reexamination Control No.
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`
`c. Copending interference No.
`d
`Copending litigation styled:
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`included on t
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`:1 For Patent Owner Requester
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`Edward C. KVOk
`
`[X] For Third Party Requester
`Registration No.
`Typed/Printed Name
`
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` [Page 2 012]
`
`July 6, 2005
`Date
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`Page 2 of 341
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`Page 2 of 341
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`
`
`: Inventors:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`L. Tymes
`
`Assignee:
`
`Symbol Technologies, Inc.
`
`‘ Title:
`
`2 Patent No.:
`‘
`1 ReExamination
`
`‘ Control No.
`
`
`
`1 Examiner:
`
`DocketNo.:
`
`Packet Data Communication Network
`
`5,029,183
`
`Unassigned
`
`_
`
`‘
`
`~
`
`ReExamination
`Filing Date:
`ReExamination
`
`Requester:
`
`July 6, 2005
`
`Edward C. Kwok
`
`Unassigned
`
`- Group Art Unit: Unassigned
`
`' M-l6056-REUS
`
`San Jose, Califomia
`
`July 6, 2005
`
`1 Mail Stop Ex Parte Reexarn
`1 COMMISSIONER FOR PATENTS
`
`‘ Alexandria, VA 22313-1450
`
`REQUEST FOR REEXAMINATION
`
`Reexamination under 35 U.S.C. §§302~307 and 37 C.F.R. §1.510 is requested of
`
`United States Patent No. 5,029,183, which issued July 2, 1991, to LaRoy Tymes. This patent
`
`remains in force.
`
`I.y\ W OFFICES OF
`Macl'lwrsmi. Kwok. Chen ii
`lkid I.I.I'
`”02 Technology Du,
`Suit: 226
`San Just. CA 95I I0
`(4083-1959510
`FAX “(NJ-3913262
`
`Reexamination is requested as to at least claims 1, 16, 21; 35 and 40-41 in view of
`
`prior art that was not of record during the prosecution ofthe ‘183 patent. As discussed in
`
`detail below, a substantial new question of patentability as to each of claims 1, 16, 21, 35 and
`
`40-41 is raised by the prior patents and printed publications, as required by 37 C.F.R.
`
`§1.510(b)(1), and a detailed explanation ofthe peninency and manner of applying the cited
`
`’
`
`-1-
`
`US. Patent 5,029,183
`
`Page 3 of341
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`

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`art to each such claim for which reexamination is requested is also included in this request, as
`
`required by 37 C.F.R. §1.510(b)(2).
`
`Claims 1, 16, 21, 35 and 40-41 were the subject of prior litigation in the United States
`
`District Court for the District of Delaware, styled Symbol Technologies, Inc. v. Proxim
`
`Incorporated, Civil Action No. 1:01-cv-00801-SLR (the “Proxim litigation”). The Proxim
`
`litigation was settled following a trial. The ‘183 patent is currently asserted in litigation
`
`pending in the same court, styled, Symbol Technologies, Inc. v. Intermec Technologies
`
`Corporation, Civil Action No. 1:05-cv—00147-SLR (the “Intermec litigation”).
`
`It is not
`
`known whether the above claims are in issue in the Interrnec litigation.
`
`U.S. PATENT NO. 5,029,183
`
`U.S. Patent No. 5,029,183 (“the ‘183 patent”) issued on July 2, 1991, and was based
`
`on application Serial No. 07/374,452, which was filed June 29, 1989. The ‘183 patent
`
`identifies LaRoy Tymes as the named inventor. The ‘ 183 patent expires on June 29, 2009.
`
`1.
`
`The ‘183 Patent Claims
`
`The ‘183 patent has 84 claims. Claims 1, 21, 40, 50, 60, 70 and 76 are independent.
`
`Claim 1 is directed to a “method of transmitting data packets from one of a plurality of
`
`remote terminal units to a base station.” It includes two basic steps:
`
`LAW OFFICES OF
`Macfllerson. Knol. Chen &
`Held I.I.l'
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`
`(a) transmitting a data packet from said one unit to said
`base station during a first time period selected by the unit, and
`
`(b) receiving at said one unit from said base station an
`acknowledge signal during a second time period occurring only
`a fixed time delay after said first time period, said second time
`period being the same for at least some of said units.
`
`Claim 16 is dependent on claim 1 and recites an additional step, namely, “receiving at
`
`said unit prior to said step of transmitting said data packet to detect transmission by other like
`
`-2-
`
`U.S. Patent 5,029,183
`Page 4 of 341
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`

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`units.”
`
`Independent claim 21 claims a “system for transmitting data packets from one of a
`
`plurality of first stations to a second station.” It includes two basic elements:
`
`(a) a transmitter in said one first station for transmitting
`a data packet from said one first station to the second station
`during a first time period selected by said one first station, and
`
`(b) a receiver in said one first station for receiving an
`acknowledge signal from the second station during a second
`time period occurring only in a time window referenced to said
`first time period by a fixed delay, said fixed delay being the
`same for all said plurality of first stations.
`
`Claim 35 is dependent on claim 21. As claim 16 was related to claim 1, Claim 35 is
`
`likewise related to claim 21, and describes that “the transmitter at said first station receives
`
`prior to transmitting said data packet to detect transmission by other stations.”
`
`Claims 40-41 have a similar type of relationship. In particular, independent claim 40
`
`describes a “method of data transmission between a plurality of terminals and a base station.”
`
`That method includes several steps:
`
`(a) transmitting a data packet from one of said terminals
`to said base station at a time selected by said one of said
`terminals, the data packet including identification of said one of
`the terminals;
`
`(b) receiving said transmitted data packet at said base
`station and transmitting an acknowledgement from the base
`station to said one of said terminals in a predetermined time
`window, at least part of said predetermined time window being
`the same for all of said terminals, said acknowledgement
`including identification of said terminal, and
`
`(c) receiving said acknowledgement at said one terminal
`during said predetermined time window.
`
`Dependent claim 41 further requires the step of first “receiving at said one terminal to
`
`detect transmission by another of said plurality of terminals, before transmitting said data
`
`-3-
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`US. Patent 5,029,183
`Page 5 of 341
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`Mummrzfisgim
`.7. T"':“'l"' D
`)2 ccmmgy L.
`Suite 126
`Smlnx. CA ””0
`FA ,\‘ (405)-502-9102
`“WW-”=0
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`packet.”
`
`2.
`
`The ‘183 Patent Specification
`
`1n the “Summary ofthe Invention” section ofthe ‘183 patent (the “Summary”), the
`
`invention is summarized as providing a “packet data communication system [that] includes a
`
`number of remote terminals for gathering data, and a communications link for sending
`
`packetized data to a central station and for receiving an acknowledge signal and data from the
`
`central station[; wherein] a packet-exchange protocol [] used for this communication link []
`
`provides reduced power dissipation at the remote unit by activating the receive function for
`
`only a short time, rather than requiring the remote unit to receive or “listen” at all times.” 1
`
`(Column 2, lines 56-66). The Summary then goes on to describe, from col. 2, line 66 to col.
`
`3, line 2, additional features that are more or less recited in the claim language, namely:
`
`To this end, the exchange protocol establishes a rigid
`time window keyed to a transmission by the remote unit, and
`the remote unit is responsive to a message from the central
`station only during this time window. The time window is
`defined to being at a fixed time delay after a transmission from
`the remote unit to the central station. 2
`
`Thus, each of independent claims 1, 21 and 40 concerns a data communication
`
`protocol such as best illustrated in Figure 2 of the ‘ 183 patent (and reproduced below):
`
`LAW OFFICES OF
`Mntherson. KuoL. Chen &
`“l'ili I,I.l'
`1762 chlulilngy DIV.
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`FAX (“Isl-3919263
`
`I
`
`.
`.
`.
`.
`.
`.
`The subject matter directed to “reduced power d1ss1pation at the remote unit
`ofthe ‘183 patent.
`
`,,
`
`.
`.
`.
`was not recrted in any claim
`
`2 Independent claims 1, 21 and 40 do not speak of a central station, but rather describe this function in the
`context ofthe base station or a “second” station, as the case may be.
`
`-4-
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`US. Patent 5,029,183
`Page 6 of 341
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`
`
`In representative claim 1, the data packet transmitted from the remote unit is seen
`
`above as reference numeral 17, and the base station-to-remote unit data packet is illustrated as
`
`reference numeral 18. The “first time period selected by the unit” would be the time at which
`
`time period t. starts, and the second time period (time t3) occum'ng only a fixed time delay
`
`(either time t; as measured from the start time, or time t; — t] as measured from the end time of
`
`data packet 17) after the first time period is illustrated as time t3. The “fixed time delay” as
`
`recited in claim 1 is either time t; as measured from the start time, or time (t; — t1) as measured
`
`from the end time of data packet 17. In representative claim 16, the unit receives “prior to
`
`said step of transmitting said data packet to detect transmission by other like units.” This
`
`operation occurs during time to above.
`
`3.
`
`The Prosecution History
`
`The ‘183 patent was filed as US. patent application, serial No. 07/374,452 in the US.
`
`Patent & Trademark Office on June 29, 1989. Application claims 1, 16,21, 35 and 40-41
`
`correspond to the corresponding issued claims. As originally filed, application claim 1
`
`described a method of transmitting data packets from a communications unit, comprising two
`
`steps:
`
`LAW OFFICES OF
`MncPherson. Kuok. Chen A
`Ileid I.l.|’
`I762 chhmlugy Dr..
`Suite 226
`Sim Jog, CA ”I H]
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`FAX 1408)~J92-9262
`
`(a) transmitting a data packet from the unit during a first
`
`-5-
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`time period selected by the unit; and
`
`(b) receiving at the unit an acknowledge signal during a
`second time period occurring only a fixed time delay after the
`first time period.
`
`Dependent claim 16 described the further step of listening at the unit prior to the step
`
`of transmitting the data packet to see if other like units were transmitting. The claims were
`
`rejected on various grounds including indefiniteness, anticipation and obviousness.3 In a
`
`responsive amendment, the claims were amended into the form as they later issued, and the
`
`Applicant argued that “in the applicant’s system the remote units transmit at any time, at their
`
`own choosing, then the base station must respond in a fixed time.” (See, the Amendment, at
`
`page 6, received October 19, 1990). According to the Applicant’s counsel, the claims
`
`distinguished over the cited art “by reciting that the remote unit selects its time of
`
`transmission (rather than the time being dictated by the base station), and reciting that the
`
`remote units receive at a fixed time after transmission (rather than the base station receiving
`
`from the remote units at a time slot).” Further, it was noted that “the claims recite that the
`
`fixed time or the time window is the same for all remote units, which would not be possible
`
`with the system of the [cited prior art] where time slots are dictated to separate in time the
`
`transmissions from remote units.”
`
`As the cited art apparently did not show “transmitting from the remote at a time
`
`selected by the remote, then receiving only at a fixed time window” (Amendment, at page 7,
`
`emphasis supplied), the claims, as amended, were allowed.
`
`4.
`
`The Proxim litigation Markman Ruling
`
`3 The claims were rejected over cited art US. Patent No. 4,829,540 to Waggener, Sr. et al. and US. Patent No.
`4,247,908 to Lockhart, Jr. et al.
`
`-6-
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`US. Patent 5,029,183
`Page 8 of 341
`
`LA W OFFICES OF
`Marl’hcrsun. Kwok. Chen a»
`Neill IJJ'
`I762 chlimlngy Dr..
`Suite 121.
`Sun 103:. CA 951“)
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`
`Page 8 of 341
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`

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`A Markman claim construction ruling was issued in the Proxim litigation. A copy of
`
`that ruling is attached (Exhibit A). The Court there construed the following terms in the
`
`claims at issue here:
`
`(a)
`
`“data packet” shall mean “a block of information that can be transmitted as a
`
`distinct entity.”
`
`(b)
`
`“remote terminal unit” shall mean a “wireless mobile unit.”
`
`(c)
`
`“base station” shall mean “a unit that transfers data between a remote terminal
`
`unit and a central computer, but which cannot initiate data communications with a remote
`
`terminal unit.”
`
`(d)
`
`“first time period selected by the unit” shall mean “a time period selected by
`
`the remote terminal unit during which the remote terminal unit transmits a data packet.”
`
`(e)
`
`“second time period occurring only a fixed time delay after said first time
`
`period” shall mean “a time period which occurs a fixed time after the first period.”
`
`(t)
`
`“receiving at said unit prior to said step of transmitting said data packet to
`
`detect transmission by other like units” shall mean the remote terminal unit “senses the
`
`medium before transmitting to determine whether the medium is in use.”
`
`THE PRIOR ART PRESENTED IN THIS RE UEST
`
`The very features that were argued to distinguish the claimed invention over the cited
`
`references (“transmitting from the remote at a time selected by the remote, then receiving only
`
`at a fixed time window”) were well-known in the prior art, but the relevant prior art references
`
`were not before the Examiner during the prosecution of the application.
`
`k
`
`LA \\' OFFICES ("7
`Marlin-mu. Knox. Chen
`Held LLI'
`no: chlimlogy Dr..
`Suiic 126
`Sun 10):. CA 95| IU
`(408)-192-9520
`FAX (108)-392-9162
`
`-7-
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`Such prior art references include:
`
`(a)
`
`Binder et al. “ALOHA Packet Broadcasting: A Retrospect” AFIPS
`
`National Computer Conference Proceedings Volume 44 (May 19-22,
`
`1975), pages 203-215 (Exhibit B).
`
`(b)
`
`Fralick et al. “Digital Terminals for Packet Broadcasting” AFIPS
`
`National Computer Conference (NCC) Proceedings Volume 44 (May
`
`19—22, 1975), pages 253-262 (Exhibit C).
`
`(C)
`
`Kleinrock et a1. “Packet Switching in Radio Channels: Part 1— Carrier
`
`Sense Multiple-Access Modes and Their Throughput-Delay
`
`Characteristics,” IEEE Transactions on Communications, Volume 23,
`
`No. 12, December 1975, pages 1400-1416 (Exhibit D).
`
`(d)
`
`US. Patent No. 4,479,261, to Oda et al., issued October 23, 1984, filed
`
`in the United States on April 18, 1983 (Exhibit E).
`
`(e)
`
`US. Patent No. 4,720,710, to Akahori et al., issued January 19, 1988,
`
`filed in the United States on June 20, 1983 (Exhibit F).
`
`(f)
`
`US. Patent No. 4,777,488, to Carlman, Jr. et al., issued October 11,
`
`1988, filed May 16, 1986 (Exhibit G).
`
`A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
`
`MnrHIerson. Kunk. Chen &
`Lawomcasor
`Ileid I.|.I'
`1762 Twllmlugy 01..
`4 n
`SIHJUS‘. CA ”I ll)
`S------b
`(A08)—392-9520
`FAX (408)-392-9262
`
`Kleinrock et al. (Exhibit D) describe the ALOHA System, an actual broadcast radio
`
`communications system that was in use to provide radio communications among computer
`
`-8-
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`installations in Hawaii as early as 1970. On page 1401, the authors describe the “pure
`
`ALOHA” scheme that:
`
`permits users to transmit any time they desire.
`within some appropriate time-out period, they receive Q
`acknowledgement from the destination, then they know that no
`conflicts occurred.
`
`If,
`
`(emphasis supplied)
`
`To further elaborate the acknowledgement scheme, Kleinrock et al. state at page 1403
`
`that:
`
`Some acknowledgement scheme is necessary to inform
`the transmitter of its success or failure. We assume a positive
`acknowledgement scheme; if within some specified delay (an
`appropriate time-out period) afier the transmission of a packet, a
`user does not receive an acknowledgement, he knows he has
`conflicted.
`
`(emphasis supplied)
`
`Thus, in the first instance, Kleinrock et al. described the two features -- “transmitting
`
`from the remote at a time selected by the remote, then receiving only at a fixed time window”
`
`(Amendment, page 7, October 19, 1990) ~ that, allegedly, were absent from the prior art cited
`
`during the ‘183 patent’s prosecution history. For this reason, the Kleinrock et al. paper itself
`
`raises a substantial new question of patentability with respect to at least claims 1, 21 and 40.
`
`Kleinrock et al. also describe the by then (in 1975) well-known technique of
`
`attempting “to avoid collisions by listening to (i.e., ‘sensing’) the carrier due to another’s
`,
`
`user’s transmission.’
`
`Such carrier sense multiple access (CSMA) techniques are the subject
`
`of dependent claims 16, 35 and 41. Thus, Kleinrock et al. also raise a substantial new
`
`question of patentability with respect to these claims.
`
`While Kleinrock et al. provide a theoretical analysis ofthe data packet communication
`
`-9-
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`US. Patent 5,029,183
`Page 11 of341
`
`LAW OFFICES OF
`MntPhrrsan. Kwulx. Chan 1!.-
`Ileid 1.1.1-
`I761 Trclumlngy DL,
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`protocols, Binder et al. and Fralick et al (Exhibits B and C) describe the ALOHA System,
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`i sometimes referred to as ALOHANET, in great detail. These articles were both published in
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`the AFIPS Conference Proceedings for the National Computer Conference of May 19-22,
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`1975 at Anaheim, California. Each article describes the basic transmit-when-desired,
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`s acknowledge-within-timeout protocol identified in the Kleinrock et al. paper.4 In Binder et
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`‘ al., the original remote units were referred to as Terminal Control Units (TCUs); once
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`microprocessors became available (by the mid-19705), users ofthe ALOHANET took
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`advantage of what the authors described as PCUs, “fully-programmable” control units.
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`
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`1 Binder et al. go on to say, at page 214 of their article: “[o]f particular interest is the possibility
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`of designing low power battery operated portable PCUs for mobile units in the
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`ALOHANET.” In describing the PCU design, Binder et al. explicitly reference Fralick et a1.
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`(“a companion paper in these proceedings”); Fralick et a1. actually describe how to build one
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`such battery-powered mobile unit. Fralick et al. also describe powering down of the
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`transmitter, in effect, to preserve the battery (“[a]lthough the transmitter peak power is
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`nominally 10 watts, the duty cycle will be very slow so that the transmitter will require only a
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`few milliwatts average power”), and they also suggest the desirability of“[t]ransmit-only
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`terminals”).
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`US. Patent 4,777,488 (the “Carlman, Jr. et al.”) describes a data packet
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`communication system for use in an environment where users located at fixed units (e.g., at
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`restaurant tables) communicate with one or more other display or controller units using a
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`‘ protocol exchange. While the preferred embodiment of this system involves “time slotted r.f.
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`4 Thus, e.g., Binder et al. describe (at page 204) that under “pure ALOHA mode of operation, packets are sent by
`the user nodes to the [base station, called MENEHUNE] in a completely unsynchronized manner
`[and] a
`positive acknowledgement protocol is used for packets sent on the random-access channel.” Fralick et al.
`illustrate the protocol in Figure 3 and describe the basic functionality in the accompanying text at pages 255-
`257)(“lf an ACK is not received in a predetermined time, the typical protocol dictates retransmission in a
`pseudo-random time interval”). Fralick et al., at page 257, emphasis supplied.
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`-10-
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`US. Patent 5,029,183
`Page 12 of 341
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`data communications”, the patentees stated the invention could be implemented in a non-time
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`slotted environment (where “collision detection might also be used”).
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`In this patent, the units
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`are described as battery-powered, and the packet exchange protocol explicitly describes
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`turning on the receiver only when it is needed, e.g., to receive an acknowledgement, to
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`preserve the battery. See, e.g., the discussion at Column 6, lines 4-6 that “[a]fter the message
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`has been transmitted, the program loops back and the receiver is turned on to listen to
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`determine if an acknowledgement message is received (emphasis supplied)” In the described
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`protocol, once a given “cancel message” is received, the “microcomputer resets the power
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`latch 33 causing the [] unit to, in effect, shut down and stop consuming power from the
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`battery.”
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`Thus, Carlman Jr. et al. describe (in the words of the ‘183 patent Summary) a “packet—
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`exchange protocol [] used for a communications link that provides reduced power dissipation
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`at the remote unit by activating the receive function for only a short time, rather than requiring
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`the remote unit to receive or “listen” at all times.” (‘183 patent, Column 2, lines 61-66).
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`
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`Selective activation ofa mobile unit’s receiver to preserve the unit’s battery, was not
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`unique to Carlman, Jr. et al. Indeed, paging devices operated in this manner long before the
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`filing date of the subject patent. Oda et a1. and Akahori et al. are representative of such
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`paging devices.
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`Thus, by June 1989, the filing date of the ‘183 patent, the basic packet-exchange
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`protocol (“transmitting from the remote at a time selected by the remote, then receiving only
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`at a fixed time window”) was how the ALOHANET worked, and there were num'erous
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`descriptions and teachings about use of low power-drain, transmit-only terminals in this very
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`packet-based communications system. Selective operation of a mobile device receiver to
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`—1 1-
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`US. Patent 5,029,183
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`‘ conserve a battery was suggested by Binder et al. (“[o]f particular interest is the possibility of
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`j designing low power battery operated portable PCUs for mobile units in the ALOHANET”)
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`patentability exists with respect to each ofclaims 1, 16, 21, 35, 40 and 41, as there was
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`nothing novel or unobvious about the subject matter in any such claim.
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`For purposes of this reexamination request, the various terms used throughout the
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`claims should be afforded their broadest reasonable interpretation consistent with the
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`specification. Manual ofPatent Examining Procedure at §2111. The Markman ruling in the
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`Proxim litigation is consistent with this approach.5
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`1.
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`The cited art raises a substantial new question of patentability of each subject
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`claim either under §102(e), §§102(e)/103, or §103(a), as indicated by the following
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`representative claim charts6:
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`of remote
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`The ALOHANET, as described by Kleinrock et al., involved
`a method of transmitting data packets from remote temiinals
`to a central computer through an intermediary device.
`Binder et al. describe the specific implementation of the
`ALOHANET in 1975, which includes a olurali
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`l. A method of transmitting data packets
`from one of a plurality of remote temiinal
`units to a base station, comprising the steps
`of:
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`5 The Requester does not admit that the Markman ruling is correct in all respects.
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`6 One of ordinary skill in the art would be motivated to combine Binder et a1. or Fralick et al. and Kleinrock et
`‘ al., as all three references describe the ALOHANET, either theoretically or as actually implemented. Any of
`Carlman, Jr., Oda et al. or Akahori et al. likewise can be combined given Binder et al.’s express suggestion of
`the desirability of “designing low power battery operated portable PCU’s for mobile units in the ALOHANET
`(emphasis supplied)” As noted above, these secondary references specifically describe turning a mobile unit
`receiver on only when it is needed, i.e., only when the receiver is expected (by the nature of the protocol itself) to
`receive or to be in a position to receive a given signal. All three references do so to prevent power drain and to
`conserve the battery.
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`-12-
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`US. Patent 5,029,183
`Page 14 of34l
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`(a) transmitting a data packet from said one
`unit to said base station during a first time
`period selected by the unit;
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`
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`(b) receiving at said one unit from said
`base station an acknowledge signal during
`a second time period occurring only a fixed
`time delay after said first time period, said
`second time period being the same for at
`least some of said units.
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`temiinal unit." Whether or not this construction is adopted
`by the Office, the machine called MENEHUNE in the Binder
`et al. reference meets this limitation because, with respect to
`the random access channel, that machine could not initiate
`communications to any remote temlinal unit. Binder et al.
`further explicitly stated that it would be of “particular interest
`[to design] low power battery operated portable PCU’s for
`mobile units in the AHOLANET.” In the Markman ruling,
`the “remote temlinal units” were interpreted as wireless
`mobile units, precisely as Binder et al. had described.
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`a re-uirement that the units did not oerate in a time-
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`terminals communicated with a central computer through an
`intermediary, which was called MENEHUNE. In this
`system, as described in Binder et al., remote units
`communicated with the central computer over a random
`access channel, using the intermediary in effect as the base
`station. The Markman ruling in the Proxim litigation
`interpreted “base station” to mean “a unit that transfers data
`between a remote terminal unit and a central computer, but
`which cannot initiate data communications with a remote
`
`In the ALOHANET, as described by Kleinrock et al., remote
`users transmit “any time they desire.” Binder et al. describes
`that the remote ALOHANET units operate “in a completely
`unsynchronized manner” —— i.e., without time slots, and
`Fralick et al. describes the use of “transmit-only terminals”
`that work in the manner recited in this clause.
`In this
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`respect, the Markman interpretation requires “a time period
`selected by the remote terminal unit during which the remote
`terminal unit transmits a data packet.” Any ALOHANET
`terminal operates in this manner.
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`In the alternative embodiment of Carlman, Jr. et al., a non-
`time slot based approach is suggested and, obviously, users
`(restaurant customers) would only operate the remote units if
`and when needed.
`
`According to the Markman ruling, a “second time period
`occurring only a fixed time delay after said first time period"
`means “a time period which occurs a fixed time after the first
`period.” In the ALOHANET, as described by Kleinrock et al,
`a packet exchange protocol assumes “a positive
`acknowledgement scheme; if within some specified delay (an
`appropriate time-out period) after the transmission of a
`packet, a user does not receive an acknowledgement,” the
`packet transmission is considered unsuccessful. Kleinrock’s
`“time-out period” meets the claimed invention precisely.
`
`Any of Carlman, Jr., Oda et al. or Akahori et al. describe
`turning on a mobile unit receiver only when it is needed, i.e.,
`only when the receiver is expected (by the nature of the
`protocol itself) to be receiving (or to be in a position to
`receive) a given signal. Of course, the claim itselfis silent
`about powering a receiver up or down.
`
`The requirement that the “second time period being the same
`for at least some of [the] units” was described by the
`Applicant (in the Amendment, file