www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/014,652 & 90/014,816
`
`01/12/2021
`
`10637968
`
`HOLA-005-US15-EPR
`
`2947
`
`CHERIAN LLP
`1901 L STREET Nw,
`SUITE 700
`WASHINGTON, DC 20036
`
`SAADAT, CAMERON
`
`3992
`
`MAIL DATE
`
`01/26/2023
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Copied from 90014652 on 01/26/2023
`
`Data Co v. Bright Data
`
`Data Co Exhibit 1119
`Data Co Exhibit 1119
`Data Co v. Bright Data
`IPR2022-00135
`IPR2022-00135
`
`

`

`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
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`LISTON ABRAMSON LLP
`THE CHRYSLER BUILDING
`
`405 LEXINGTON AVE., 46TH FLOOR
`New York, NY 10174
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/074,652 & 90/014,816
`
`PATENT UNDER REEXAMINATION 10637968 .
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis 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 evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04}
`
`Copied from 90014652 on 01/26/2023
`
`

`

`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
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`3333 LEE PARKWAY
`SUITE 460
`Dallas TX 75219
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/074,816 & 90/014,652
`
`PATENT UNDER REEXAMINATION 10637968 .
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis 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 evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04}
`
`Copied from 90014652 on 01/26/2023
`
`

`

`Patent Under Reexamination
`Control No.
`.
`.
`10637968
`90/014,652 & 90/014,816
`Ex Parte Reexamination
`
`Advisory Action Art Unit|AIA (FITF) StatusExaminer
`
`
`Before the Filing ofan AppealBrief|Cameron Saadat 3992 No
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`THE PROPOSED RESPONSE FILED 29 November 2022 FAILS TO OVERCOME ALL OF THE
`REJECTIONS IN THE FINAL REJECTION MAILED 29 September 2022.
`1.(4
`Unlessa timely appealis filed, or other appropriate action by the patent owner is taken to overcome all
`of the outstanding rejection(s), this prosecution of the present exoarfe reexamination proceeding WILL
`BE TERMINATED and a Notice of Intent to Issue Ex Parte Reexamination Certificate will be mailed in
`due course. Anyfinally rejected claims, or claims objected to, will be CANCELLED.
`THE PERIOD FOR RESPONSE IS EXTENDED TO RUN
`MONTHS FROM THE MAILING DATE OF THE FINAL REJECTION.
`
`
`
`Extensionsof time are governed by 37 CFR 1.550(c).
`NOTICE OF APPEAL
`
`2.{¥)An AppealBrief is due two months from the date of the Notice of Appeal filed on 29 November 2022 to avoid
`dismissal of the appeal. See 37 CFR 41.37(a). Extensions of time are governed by 37 CFR 1.550(c). See 37
`CFR 41.37(e).
`AMENDMENTS
`3. (J The proposed amendmeni(s)filed after a final action, but prior to the dateoffiling a brief, will not be
`entered because:
`(a) (2 Theyraise new issues that would require further consideration and/or search (see NOTE below);
`(b) (2 They raise the issue of new matter (see NOTE below);
`(c) ( They are not deemedto place the proceeding in better form for appeal by materially reducing or
`simplifying the issues for appeal; and/or
`(d) () They present additional claims without canceling a corresponding numberoffinally rejected claims.
`NOTE:
`(See 37 CFR 1.116 and 41.33(a)).
`4.¥)Patent owner's proposed responsefiled 29 November 2022 has overcome the following rejection(s):
`See Continuation Sheet
`would be allowable if submitted in a separate, timelyfiled
`5. () The proposed new or amendedclaim(s)
`amendmentcanceling the non-allowable claim(s).
`6.¥]For purposes of appeal, the proposed amendment(s) a) (J__will not be entered, or b)4will be entered
`and an explanation of how the new or amendedclaim(s) would be rejected is provided below or appended.
`The status of the claim(s) is (or will be) as follows:
`Claim(s) patentable and/or confirmed: 19,29,32-36,39,45,48-52,54 and 58
`Claim(s) objected to:
`Claim(s) rejected: 1-2,8-9,11-18,24, 26-28 30-31,37-38,40-44,46-47,53 and 55-57
`Claim(s) not subject to reexamination: 3-7,10,20-23 and 25
`AFFIDAVIT OR OTHER EVIDENGE
`.
`7. D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`8. L) The affidavit or other evidencefiled after a final action, but before or on the date offiling a Notice of Appeal
`will not be entered because patent ownerfailed to provide a showing of good and sufficient reasons why the
`affidavit or other evidence is necessary and was notearlier presented. See 37 CFR 1.116(e).
`9. () The affidavit or other evidencefiled after the date offiling a Notice of Appeal, but prior to the date offiling a
`brief, will not be entered becausethe affidavit or other evidencefails to overcome all rejections under
`appeal and/or appellant failed to provide a showing of good and sufficient reasons why the affidavit or other
`evidence is necessary and wasnotearlier presented. See 37 CFR 41.33(d)(1).
`10. 2 The affidavit or other evidence is entered. An explanation of the status of the claims after entry is
`below or attached.
`REQUEST FOR RECONSIDERATION/OTHER
`11.4The request for reconsideration has been considered but does NOTplace the application in condition for
`allowance because: See attachment .
`12.YMNote the attached Information Disclosure Statement(s), PTO/SB/08, Paper No(s) 1/14/2023 .
`13. £) Other:
`.
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief
`PTOL-467 (Rev. 08-13)
`
`Part of Paper No. 20230125
`
`Copied from 90014652 on 01/26/2023
`
`

`

`Continuation Sheet (PTO-467)
`
`Reexam Control No. 90/014,652
`& 90/014,816
`Continuation of AMENDMENTS4. Patent owner's propose responsefiled has overcome the following
`rejection(s): The rejection of claim 59 under 112 and 103
`
`Copied from 90014652 on 01/26/2023
`
`

`

`Application/Control Number: 90/014,652 & 90/014,816
`Art Unit: 3992
`
`Page 2
`
`Ex Parte Reexamination — Advisory Action
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`After-final amendment and remarksfiled 11/29/2022 (hereinafter “AF remarks”) have
`
`been entered and considered.
`
`Althoughitem 2 of the Form PTO-467 indicates the Appeal Briefis due in (2)
`
`months from the date of the Notice ofAppeal filed on 11/29/2022, as aresult of 1-month
`
`Extension of Time (see petition decision mailed 1/24/2023), the Appeal Brief due dateis
`
`extended(1) additional month from 1/29/2023 to 2/28/2023.
`
`Claims 1, 2, 8, 9, 11-19, 24, 26-29 and newly addedclaims 30-59 of United States Patent
`
`Number 10,637,968 (hereinafter “the ‘968 Patent) were pending review in this merged ex parte
`
`reexamination. Claims 3-7, 10, 20-23, and 25 are not subject to reexamination.
`
`Upon entry of the after final amendment, claims 6, 7, 23, 25 which werepreviously
`
`amended are now shown with proper markings, and new claim 59 has been cancelled.
`
`Accordingly, claims 1, 2, 8, 9, 11-19, 24, 26-29 and newly added claims 30-58 are currently
`
`pending.
`
`Entry of the after-final response simplifies the issues since claim 59 has been cancelled,
`
`making the rejection of claim 59 under §112 1% paragraph moot and hereby withdrawn.
`
`Additionally, as noted by PO (AF remarks, p. 16) and on page 9 of Final Office action
`
`mailed 9/29/2022, PO’s previous response inadvertently did not address the 103 rejections based
`
`on the MorphMix reference which are now submitted for consideration. The Examiner has
`
`entered the after-final remarks and considered the newly presented arguments directed to the
`
`MorphMix reference (AF remarks 19-49) to complete the record. However, the arguments are
`
`not found persuasive. PO contentions rely on an overly narrow interpretation of the claimed
`
`client device, server, and second server that would require improper importing of limitations
`
`Copied from 90014652 on 01/26/2023
`
`

`

`Application/Control Number: 90/014,652 & 90/014,816
`Art Unit: 3992
`
`Page 3
`
`(including negative limitations)
`
`into the claims. For these reasons, the arguments are not found
`
`persuasive and the rejection of claims 1, 2, 8, 9, 11-18, 26-28, 30, 31, 37, 38, 40-44, 46, 47, and
`
`55-57 under § 103 as being unpatentable over MorphMix in view of RFC 2616 is maintained
`
`(the §103 rejection of claim 59 is withdrawn since claim 59 is now cancelled). Also, the
`
`rejection of claims 24 and 53 under 103 as being unpatentable over MorphMix in view of RFC
`
`2616 and Cottrell is maintained.
`
`It is additionally noted that PO states:
`
`In the previous response dated June 16, 2022, Patent Owner attempted to make certain
`clerical amendments and to add claims 30-59. The amendments were not entered.
`
`(AF remarks, p. 14)
`
`However,this statement is inaccurate.
`
`In the Final Office action mailed 9/29/2022, all of the
`
`June 16, 2022 amendments were entered and considered as noted in the first paragraph of the
`
`Final Office action on page 2. While the Final Office action did note that the amendment
`
`markings were not in compliance on pages 4-5, the amendment was entered and considered.
`
`Conclusion
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`
`By EFS:
`
`By mail to:
`
`Registered users may submit via the electronic filing system EFS-web, at
`https //efs uspto. cov/efile/myporia l/ets-reaistered
`
`
`Attn: Mail Stop “Ex Parte Reexam”
`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:
`
`Customer Service Window
`Randolph Building
`
`Copied from 90014652 on 01/26/2023
`
`

`

`Application/Control Number: 90/014,652 & 90/014,816
`Art Unit: 3992
`
`Page 4
`
`401 Dulany Street
`Alexandria, VA 22314.
`
`For EFS-Webtransmissions, 37 CFR 1.8(a)(1)(i) (C) and(ii) states that correspondence
`
`(except for a request for reexamination and a corrected or replacement request for
`
`reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic
`
`filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission
`
`for each piece of correspondence stating the date of transmission, which is prior to the expiration
`
`of the set period of time in the Office action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner, or as to the status of this proceeding, should be directed to the Central Reexamination
`
`Unit at telephone number (571) 272-7705.
`
`/Cameron Saadat/
`Patent Reexamination Specialist
`Art Unit 3992
`
`Conferees:
`
`/Woo H Choi/
`Patent Reexamination Specialist
`Art Unit 3992
`
`/HETUL B PATEL/
`Supervisory Patent Reexamination Specialist, Art Unit 3992
`
`Copied from 90014652 on 01/26/2023
`
`