`
`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 .uspto.gov
`
`APPLICATION NO.
`
`90/014,056
`
`
`
`
` FILING DATE
`
`12/15/2017
`
`Image Processing Technologies LLC
`75 Montebello Road
`Suffern, NY 10901
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`6959293
`
`1361
`
`BANANKHAH, MAJID A
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`01/26/2018
`
`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)
`
`IPT Ex-2004, p. 0001
`LG v IPT
`IPR2023-00104
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`IPT Ex-2004, p. 0001
`LG v IPT
`IPR2023-00104
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`

`

` UNITED STATES PATENTAND TRADEMARK OFFICE
`
`Corarnissioner for Patents
`United States Patent and Trademark Office
`P.O. Box1450
`Alexandria, VA 22313-1440
`wunUSPTO.gow
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCEADDRESS)
`
`MARC PENSABENE
`O'MELVENY & MYERS LLP
`7 TIMES SQUARE
`NEW YORK, NY 10036
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,056.
`
`PATENT NO. 6959293.
`
`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)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, orthe timeforfiling a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledgedor considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`IPT Ex-2004, p. 0002
`LG v IPT
`IPR2023-00104
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`IPT Ex-2004, p. 0002
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`IPR2023-00104
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`

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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 2
`
`DECISION GRANTING EX PARTE REEXAMINATION
`
`Table of Contents
`
`1.0
`
`2.0
`
`2.1
`
`2.2
`
`3.0
`
`3.1
`
`3.2
`
`3.3
`
`DECISION ON REQUEST.......0..0.. ccc ccc ene ence eect nese ete eeeeneeeaeees 3
`
`REFERENCES (00... ccc cece e eee ne eee cent e eee ene ee eaeteentenennenaenaees 3
`
`References Cited by the Requester......... 00.0... ccc cece eee e ene ee eee ne eee enaeeneens 3
`
`IDSLecce cece een ener nee nee nen en eee nee nt eben nena ene nntea ene ene ene ne 3
`
`PROSECUTION HISTORY............... cece cece cece cece eee nee eens tee e eee nee 3
`
`Background........ 0... cece ccc cece een enn e EEE EEE EEE Ene EEE EEE EEE EEE EE 4
`
`Reasons for Allowanceat the time of Issuance of Patent.....................:0:0008 5
`
`Related Proceedings ........ 0... ccc cece cece nen nnn n nnn enn nen EEE ea eS 7
`
`4.0
`
`CLAIMS UNDER REEXAMINATION...........0...0.. ccc cee ece ence neces eeeeeneens 7
`
`5.0
`
`6.0
`
`6.1
`
`SNQs ALLEGED IN THE REQUEST............0 0c cece eee eee ene e nee ne ene eeaens 8
`
`DISCUSSION OF SNQS 00.0... cece cence tenet be eben eee ene nena eee ened 9
`
`Issue | (Pirim PCT and Siegel) (SNQs for proposed rejections based on Pirim
`
`PCT,p. 1 of Request)... ccc ccc cence cee nee ene eect eee e nent nate tees 10
`
`6.2
`
`Issue 2 (Pirtm PCT and Hirota) (SNQsfor proposed rejections based on Pirim
`
`PCT and Hirota, p. 1 of Request).......... 0. ccc cece cence eee en cece eee ee ennes 12
`
`6.3
`
`Issue 3 (Hirota alone) (SNQsfor proposed rejections based on Hirota alone, p. 1
`
`Of Request)... ccc cee e nnn EE EEE EEE EEE EEE EEE EE EE eed 14
`
`7.0
`
` CONCLUSION........ cece ence ne eee n tenn cent erento nee ne eben bene eee en es 15
`
`IPT Ex-2004, p. 0003
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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`1.0
`
`DECISION ON REQUEST
`
`Page 3
`
`Atleast one substantial new question of patentability (SNQs) affecting claim 1 of United
`
`States Patent Number 6,959,293 (hereinafter ‘293 patent) issued October 25, 2005 to Pirim of
`
`Holding B.E.V.S.A. is raised by the request filed December 15, 2017 for ex parte reexamination.
`
`2.0
`
`REFERENCES
`
`2.1
`
`References Cited by the Requester
`
`The requester alleges that substantial new questions of patentability (SNQs) have been
`
`raised by at least the following prior art references:
`
`1.
`
`2.
`
`3.
`
`International Patent Publication WO 99/36893 (“Prim PCX”’), published July 22,
`1999
`Siegel, Howard I, elal., “PASM: A Partitionable SIMD/MIUMD System for
`Irnage Processing and Pattern Recognition,” TREE Transactions on Computers,
`Yol C-3G, No. 12 December 19813 (Siegel)
`USS. Patent No. 6,118,895 (“Hirota”), filed March 5, 1996, issued September 12,
`2000
`
`2.2
`
`IDS
`
`With respect to the Information Disclosure Statements (PTO/SB/08A and 08B orits
`
`equivalent) filed on December 15, 2017 and considered with this action, the information cited
`
`has been considered as described in the MPEP. Note that MPEP 2256 indicate that 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.
`
`3.0
`
`PROSECUTION HISTORY
`
`3.1.
`
`Background
`
`IPT Ex-2004, p. 0004
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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 4
`
`* Application filed 02/23/2001: Claims 1-28 are the current claims 1-16 and 18-29 in
`
`the ‘293 patent which issued on October 25, 2005 from U.S. application serial no.
`
`09/792,436 (“the ‘436 application’) originally having claims 1-28 filed February 23,
`
`2001. Amongthose, claims 1, 3, 17, 21, 22, and 27 were independentclaims.
`
`* Non-final mailed 03/26/2004: In this non-final, claims 3-16 were rejected under 35
`
`U.S.C. 112 second paragraph for failing to particularly point out the subject matter
`
`and claims 1-2 were rejected under 35 U.S.C. 102(b) as being anticipated by U.S.
`
`Patent Publication No. 5,359,533 of Ric Kaet al. (“Ric Ka’’); and claims 3-16 were
`
`allowed if rewritten or amended to overcomethe rejection under 35 U.S.C. 112
`
`second paragraph proposedin that Office action.
`
`* Amendmentfiled 08/30/2004: Applicants submitted claim amendments along with
`
`remarks on August 30, 2004. Applicant amendedclaims 1-4, 8 and 9; and newly
`
`added independent claims 29. Amongthose, claims 1, 3, 17, 21, 22, and 27 were
`
`independent claims.
`
`*
`
`Telephone interview on 12/27/2004, and 04/27/2005: On 12/27/2004 Applicant
`
`initiated an interview and on 04/22/2005 the Examinerinitiated an interview. It
`
`appears that during the interview on 12/27/2004, the Examineragrees to allow the
`
`claims, and during the second interview the Examiner agrees to an Examiner’s
`
`amendmentto correct a typographicalerror.
`
`* Notice of allowance mailed 10/06/2004: In this notice of allowance, claims 1-29
`
`(corresponds to claims 1-16, 18-29 and 17 of the ‘293 patent) were allowed. Claim 29
`
`IPT Ex-2004, p. 0005
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`Application/Control Number: 90/014,056
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`Art Unit: 3992
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`Page 5
`
`and claims 17-28 were renumbered as 17 and 18-29 respectively. Examiner did not
`
`specifically state why the claims were allowed.
`
`*
`
`Supplemental Notice of allowance mailed on 12/30/2004, and 04/27/2005: Two
`
`supplemental notice of allowance wasissued,in the first one issued on 12/20/2004,it
`
`appears that the Examinerindicated the requirement of corrections to the drawings
`
`and in the second oneissued on 04/27/2005, the Examiner indicated an Examiner’s
`
`amendmentto correct a typographical error that was agreed during the interview of
`
`04/22/2005.
`
`3.2
`
`Reasons for Allowanceat the time of Issuance of Patent
`
`Examinerdid not specifically state why the claims were allowed. However, as noted from
`
`the file history and the rejection of independent claims 1 based on anticipation by Ric Ka, the
`
`Examinerexplained that Ric Ka discloses a “data bus,” a “time coincidence bus,” and a
`
`“histogram unit.” It appeared that Applicant agreed that those elements were disclosed by Ric
`
`Ka, and thus made the following amendmentsto the claim:
`
`1. (Currently Amenced) A visual perception processor for automatically
`
`
`
`detecting an event occurring
`in a mulidimensional space (1) evolving over time with respect to
`
`al least one digitized parameter in ine form of a digital signal on a dats bus, said digital signal
`being
`in the form of a succession alT of binary numbers associated with s
`nehronization signals
`
`
`enabling to deine a given insiant (7) of the multidimensional space and the postion Gh in inis
`space, the visual perception srocessor comprising:
`
`
`
`[fal] ine dala bus:
`
`g control uri
`
`atime coincidences bus carrying at least a time coincidence signal: and at
`
`least two eerrere histogram calculation units
`
`IPT Ex-2004, p. 0006
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`IPT Ex-2004, p. 0006
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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 6
`
`6 dais-bus-and-supply parameter, ihairecene the
`glasstieationimniermnationisine single-Hae agincidences-Bus
`
`the histogram calculation units being contigured to form ahistoaram
`
`representative of the nararmeter as a function of a validation sional and io determines
`by classification 3 binary classification signal resulting from a comparison of the parameter and
`
`a selection criterion ©. wherein the classification signal is sent te the time coincidences bus
`and wherein the validation sianal is produced from time coincidences sianais fram ihe
`trie coincidence bus so thal the calculation of the histogram depends on the classification
`signals carried by the time coincidence bus.
`
`(Emphasesin original; p. 7 of the Amendmentto the Claims mailed 08/03/2004 in the
`‘436 application)
`
`Therefore, based on the rejection of claims in the Office action dated 03/26/2004 and the
`
`amendment and remarksfiled 08/30/2004, examiner foundthe alleged point of novelty for issued
`
`claim | relates generally to the two histogram calculation units form a histogram of a parameter,
`
`that was added by amendmentto distinguish the knownpriorart. In specific, it appears that the
`
`application ‘436 was allowed because the Examiner foundthe point of novelty for claim 1 relates
`
`to the limitation that;
`
`(a) “at least two histogram calculation units for the treatmentof the at least one
`parameter, the histogram calculation units being configured to form a histogram
`representative of the parameter as a function of a validation signal”
`and
`(b) “to determine byclassification a binary classification signal resulting from a
`comparison of the parameter and a selection criterion C, wherein the classification signal
`is sent to the time coincidences bus, and wherein the validation signal is produced from
`time coincidencessignals from the time coincidence busso that the calculation of the
`histogram depends on the classification signals carried by the time coincidence bus.”
`
`Applicant presented similar argumentin his Remarksfiled on 08/30/2004, that Ric Ka
`
`failed to teach the abovelimitation.
`
`In view ofthe prosecutionhistory, it is considered that a reasonable examiner would
`
`considera prior art reference that teaches or suggests any of the above mentioned
`
`IPT Ex-2004, p. 0007
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`Application/Control Number: 90/014,056
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`Art Unit: 3992
`
`Page 7
`
`limitation(s)/feature(s) important in determining the patentability of the claim | of the ‘293
`
`patent.
`
`3.3
`
`Related Proceedings
`
`Requester of the current Ex Parte proceeding hasfiled two petitions for Inter Partes
`
`Reviews(“IPR”), IPR2017-00336 filed on November29, 2016, and IPR2017-01189, filed on
`
`March 30, 2017. However, neither the IPR2017-00336 nor the IPR2017-01189 reviews have
`
`been instituted with respect to claim 1.
`
`4.00
`
`CLAIMS UNDER REEXAMINATION
`
`The present request alleges that claim 1 of the ‘293 patent is unpatentable.
`
`Since requester did not request reexamination of claims 2-29 and did notassert the
`
`existence of a substantial new question of patentability (SNQ) for such claims (see 35 U.S.C. §
`
`302); see also 37 CFR 1.510b and 1.515), such claimswill not be reexamined. This matter was
`
`squarely addressed in Sony Computer Entertainment AmericaInc., et al. v. Jon W. Dudas, Civil
`
`Action No. 1:05CV 1447 (E.D.Va. May 22, 2006), SlipCopy, 2006 WL 1472462. The District
`
`Court upheld the Office's discretion to not reexamine claims in a reexamination proceeding other
`
`than those claims for which reexamination had specifically been requested. The Courtstated:
`
`"To be sure, a party may seek, and the PTO maygrant.... review of each and every claim
`
`of a patent. Moreover, while the PTO in its discretion may review claims for which ... review
`
`wasnot requested, nothing in the statute compelsit to do so. To ensure that the PTO considers a
`
`claim for ... review, requires that the party seeking reexamination demonstrate why the PTO
`
`should reexamine each and every claim for whichit seeks review. Here, it is undisputed that
`
`IPT Ex-2004, p. 0008
`LG v IPT
`IPR2023-00104
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`IPT Ex-2004, p. 0008
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`Application/Control Number: 90/014,056
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`Art Unit: 3992
`
`Page 8
`
`Sony did not seek review of every claim underthe '213 and '333 patents. Accordingly, Sony
`
`cannot nowclaim that the PTO wrongly failed to reexamine claims for which Sony never
`
`requested review, and its argument that AIPA compels a contrary result is unpersuasive."
`
`The Sony decision's reasoning andstatutory interpretation apply analogously to ex parte
`
`reexamination, as the same relevant statutory language applies to both inter partes and ex parte
`
`reexamination. 35 U.S.C. § 302 provides that the ex parte reexamination "request must set forth
`
`the pertinency and mannerof applying cited prior art to every claim for which reexaminationis
`
`requested" (emphasis added), and 35 U.S.C. § 303 provides that "the Director will determine
`
`whether a substantial new question of patentability affecting any claim of the patent concernedis
`
`raised by the request..." (Emphasis added). These provisions are analogousto the language of 35
`
`U.S.C. § 311(b)(2) and 35 U.S.C. § 312 applied and construed in Sony, and would be construed
`
`in the same manner. As the Director can decline to reexamine non-requested claimsin an inter
`
`partes reexamination proceeding, the Director can likewise do so in ex parte reexamination
`
`proceeding. See Notice of Clarification of Office Policy To Exercise Discretion in Reexamining
`
`Fewer Than All the Patent Claims (signed Oct. 5, 2006) 1311 OG 197 (Oct. 31, 2006). See also
`
`MPEP§ 2240, Rev. 5, Aug. 2006.
`
`Therefore, claims 2-29 will not be reexaminedin this ex parte reexamination proceeding.
`
`5.0
`
`SNQs ALLEGED IN THE REQUEST
`
`The requester raises the following issue in the request:
`
`IPT Ex-2004, p. 0009
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`IPT Ex-2004, p. 0009
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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
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`Page 9
`
`Issue 1: Requester states that the teaching of Pirtm PCT in combination with Siegel raises a
`
`substantial new question of patentability with respect to claim | of the ‘293 patent
`
`(Requestp. 1).
`
`Issue 2: Requester states that the teaching of Pirim PCT in combination with Hirota raises a
`
`substantial new question of patentability with respect to claim | of the ‘293 patent
`
`(Requestp. 1).
`
`Issue 3: Requester states that the teaching of Hirota alone raises a substantial new question of
`
`patentability with respect to claim 1| of the ‘293 patent (Request p. 1).
`
`6.0
`
`DISCUSSION OF SNQs
`
`A prior art patent or printed publication raises a substantial new question of patentability
`
`where thereis:
`
`(A) a substantial likelihood that a reasonable Examiner would considerthe prior art
`
`patent or printed publication important in deciding whetheror not the claim is patentable, MPEP
`
`§2242 (1) and,
`
`(B) the same question of patentability as to the claim has not been decided in a previous
`
`or pending proceedingor in a final holding of invalidity by a federal court. See MPEP §2242
`
`(I).
`
`For any reexamination ordered on or after November 2, 2002, reliance on previously
`
`cited/consideredart, i.e., "old art," does not necessarily preclude the existence of a substantial
`
`new question of patentability that is based exclusively on that old art. Rather, determinations on
`
`IPT Ex-2004, p. 0010
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`IPT Ex-2004, p. 0010
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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 10
`
`whether a substantial new question of patentability exists in such an instance shall be based upon
`
`a fact-specific inquiry done on a case-by-case basis. See MPEP 2242.
`
`Issue 1 (Pirim PCT with Siegel) (SNQs for proposed rejection based on Pirim
`6.1
`PCTin combination with Siegel, p. 1 of Request)
`
`The request indicates that Requester considers that claim | of the ‘293 patent is
`
`unpatentable over Pirim PCT in combination with Siegel.
`
`Pirim PCTis of record in the original prosecution history of the ’293 Patent (See ‘293 at
`
`cover) but was neverdiscussed or used in rejecting any claim by the examiner. See section 6
`
`above and the discussion of “oldart”.
`
`However, Siegel was not considered and/or used in rejecting any claim during original
`
`prosecution of the ‘293 patent.
`
`Pirbm PCT discloses “a generic image processing system” that is used to “detect
`
`drowsiness” tna driver by acquiring images ofthe driver and formime histograms to analyze
`
`opening and closing of the driver’s eves. Pirrm PCTat 1. As reflected in the Figure 14 from the
`
`Pirin PCT in coraparison with Fiz. 3 of the ‘293 patent, the Pirim PCT discloses and uses the
`
`same histogrars calculahon unit disclosed and claimedin the “293 Patent.
`
`Siegel teaches achieving “real-time” processing of an image by using multiple identical
`
`processors(called “PEs”’) in parallel to each process and form a histogram of “the one
`
`parameter.” (gray level). See, Siegel at 944, and 934.
`
`Assuch Siegel teaches the limitation that;
`
`IPT Ex-2004, p. 0011
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`Application/Control Number: 90/014,056
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`Art Unit: 3992
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`Page 11
`
`(a) “at least two histogram calculation units for the treatment of the at least one
`
`parameter, the histogram calculation units being configured to form a histogram representative
`
`of the parameter as a function of a validation signal.”’
`
`Comparison of Figure 14 of Pirim PCT with Fig. 3 of the ‘293 patent showsthat the two
`
`disclosures are identical with respect to classifier 25b for comparing parameter data(V) to a
`
`selection criterion C, (See Pirim PCT at 27-28), and that the binary outputof classifier 25b
`
`proceeds to a time coincidence bus 23 (Id. at 28), and that generating a validation [time
`
`coincidences] signal by validation unit which is communicatedto its associated histogram
`
`formation block 24-29. Id.
`
`Therefore, Pirim PCT discloses the limitation that;
`
`(b) “to determine by classification a binary classification signal resultingfrom a
`
`comparison of the parameter and a selection criterion C, wherein the classification signalis sent
`
`to the time coincidences bus, and wherein the validation signal is producedfrom time
`
`coincidencessignals from the time coincidencebus so that the calculation of the histogram
`
`depends on the classification signals carried by the time coincidence bus.”
`
`The above two limitations are the same limitations that examiner foundto be the point of
`
`novelty for issued claim 1, and Applicant argued aboutthat.
`
`Since Pirim PCT in combination with Siegel, presents new technological teachings as
`
`indicated above and pointed out in the request (see Request pp. 15-24) that were not considered
`
`during prosecution of the ‘293 patent and is directly related to the subject matter considered as
`
`the basis for allowability/confirmation of the patent claims, a reasonable examiner would
`
`consider evaluation of Pirim PCT in combination with Siegel, as important in determining the
`
`IPT Ex-2004, p. 0012
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`IPT Ex-2004, p. 0012
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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
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`Page 12
`
`patentability of the claims. Accordingly,it is agreed that the consideration of Pirim PCT in
`
`combination with Siegel, raises a substantial new question of patentability with respect to claim
`
`1 of the ‘293 patent which question has not been decided in the previous examination of the ‘293
`
`patent. The claim 1 was not subject to a final holding of invalidity by a federal court over the
`
`same issue.
`
`Issue 2 (Pirim PCT with Hirota) (SNQsfor proposed rejections based on
`6.2
`Pirim PCT in combination with Hirota, p. 1 of Request)
`
`The request indicates that Requester considers that claim 1 of the ‘293 patentis
`
`unpatentable over Pirim PCT in combination with Hirota. Hirota was not considered and/or used
`
`in rejecting any claim during prosecution of the ‘293 patent.
`
`Asdescribed above and reflected in the Pigare i4 from the PirimPCP in comparison
`
`with Fig. 3 of the “293 patent, the Firim PCTdiscloses and uses the same histogram calculation
`
`wait disclosed and claimed in the °293 Patent, therefore teaches all the limitation of claim lL,
`
`except two histograrn calculation units.
`
`Hirota is generally related to a color copying machine that scans a document and stores
`
`the image as digital prxel color values addressed by line and colurnn (.c., the claimed 1, }
`
`roultidimensional space). /d. at 4:56- 59. Hirota teaches the use of multiple histogram calculation
`
`units to form histograms of the same image parameter (a composite color signal “VH”) in order
`
`to perform a particular image processing task - i.e., determine whether the scanned documentis
`
`color or black and white. See Abs. and element 10 in Fig. 1. Hirota also discloses data bus,
`
`control units, and the coincident bus as depicted in Fig. 13 as the bus carries the time coincident
`
`IPT Ex-2004, p. 0013
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`IPT Ex-2004, p. 0013
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`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 13
`
`signal input to element 222. Therefore, Hirota discloses two histogram calculation units in Fig.
`
`13 both treat the same parameter-color. Id. at 7:23-28.
`
`Therefore, Hirota discloses:
`
`(a) “at least two histogram calculation units for the treatment of the at least one
`
`parameter, the histogram calculation units being configured to form a histogram representative
`
`of the parameter as a function ofa validation signal.”
`
`Hirota also discloses a classification signal (input to AND Gate 222) output from the
`
`classifier, which may includecircuits 212, 214, 216 and 218 in Figure 13. Hirota at Certificate of
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`Correction, Fig. 13. The classification signal is a binary signal that indicates whether or not pixel
`
`is achromatic. See Hirota at 17:24-31. The output of the comparator 218 (along with the output
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`of edge detection 220) are sent to the time coincidence bus, as explained above for Limitation [I
`
`c]. The calculation of the histogram depends on the time coincidencessignal carried by the time
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`coincidence bus becausethe pixel is only accumulated into the histogram if these signals satisfy
`
`the condition in the coincidence unit, Element 222 (an ANDgate). Id. at 17:31-33 (“The output
`
`of the AND gate 222 is sent to the WE input of the second histogram memory 204.”’).
`
`As such Hirota discloses:
`
`(b) “to determine by classification a binary classification signal resultingfrom a
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`comparison of the parameter and a selection criterion C, wherein the classification signalis sent
`
`to the time coincidences bus, and wherein the validation signal is producedfrom time
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`coincidencessignals from the time coincidencebus so that the calculation of the histogram
`
`depends on the classification signals carried by the time coincidence bus.”
`
`IPT Ex-2004, p. 0014
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2004, p. 0014
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 14
`
`The above twolimitations are the samelimitation that examiner foundto be the point of
`
`novelty for issued claim 1, and Applicant argued aboutthat.
`
`Since Pirim PCT in combination with Hirota, presents new technological teachings as
`
`indicated above and pointed out in the request (see Request pp. 24-28) that were not considered
`
`during prosecution of the ‘293 patent andis directly related to the subject matter considered as
`
`the basis for allowability/confirmation of the patent claims, a reasonable examiner would
`
`consider evaluation of Pirim PCT in combination with Hirota, as important in determining the
`
`patentability of the claims. Accordingly,it is agreed that the consideration of Pirim PCTin
`
`combination with Hirota, raises a substantial new question of patentability with respect to claim
`
`1 of the ‘293 patent which question has not been decided in the previous examination of the ‘293
`
`patent. The claim 1 was not subject to a final holding of invalidity by a federal court over the
`
`same issue.
`
`Issue 3 (Hirota alone) (SNQs for proposed rejections based on Hirota alone,
`6.3
`p. 1 of Request)
`
`The request indicates that Requester considers that claim 1 of the ‘293 patentis
`
`unpatentable over Hirota alone. Hirota was not considered and/or usedin rejecting any claim
`
`during prosecution of the ‘293 patent.
`
`Hirota is generally related to a colar copying machine that scans a docarment and stores
`
`the image as digital pixel calor values addressed by line and column (.e., the claimed 4, j
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`multidimensional space}, Ad, at 4:56- 59,
`
`Hirota teaches the use of multiple histogram calculation units to form histogramsof the
`
`same image parameter (a composite color signal “VH”) in order to perform a particular image
`
`IPT Ex-2004, p. 0015
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2004, p. 0015
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 15
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`processing task - i.e., determine whether the scanned documentis color or black and white. See
`
`Abs. and element 10 in Fig. 1. Hirota discloses a data bus (R, G, and B input to value generator
`
`200), and numerous control unit (for example Element 106, 152, 130, and printer controller I/F).
`
`The time coincident bus is depicted in Fig. 13 as the busthat carries the time coincidencesignal
`
`input to element 222.
`
`Additionally, as stated above in analysis of Issue 2, Hirota discloses the two key
`
`limitations that examiner foundto be the point of novelty for issued claim 1, and Applicant
`
`argued aboutthat.
`
`Since Hirota alone, presents new technological teachings as indicated above and pointed
`
`out in the request (see Request pp. 29-36) that were not considered during prosecution of the
`
`‘293 patent andis directly related to the subject matter considered as the basis for
`
`allowability/confirmation of the patent claims, a reasonable examiner would consider evaluation
`
`of Hirota alone as important in determining the patentability of the claims. Accordingly,it is
`
`agreed that the consideration of Hirota alone raises a substantial new question of patentability
`
`with respect to claim 1 of the ‘293 patent which question has not been decidedin the previous
`
`examination of the ‘293 patent. The claim 1 was not subject to a final holding of invalidity by a
`
`federal court over the sameissue.
`
`7.0
`
`CONCLUSION
`
`> Claim 1 will be reexamined.
`
`Extensions of Time
`
`IPT Ex-2004, p. 0016
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2004, p. 0016
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 16
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination
`
`proceedings "will be conducted with special dispatch” (37 CFR 1.550(a)). Extensions of time in
`
`ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`Waiver of Right to File Patent Owner Statement
`
`In a reexamination proceeding, Patent Owner may waivethe right under 37 C.F.R. 1.530
`
`to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner
`
`waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proof of service in
`
`the mannerprovided by 37 C.F.R. 1.248, if the request for reexamination was made bya third
`
`party requester, see 37 C.F.R 1.550(f). The Patent Owner may considerusing the following
`
`statement in a documentwaivingtheright to file a Patent Owner Statement:
`
`Patent Ownerwaivesthe right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
`
`Amendment in Reexamination Proceedings
`
`Patent owneris notified that any proposed amendmentto the specification and/or claims
`
`in this reexamination proceeding must comply with 37 CFR 1.530(d)-G), must be formally
`
`presented pursuant to 37 CFR § 1.52(a) and (b), and must contain any fees required by 37 CFR §
`
`1.20(c). See MPEP § 2250(IV) for examplesto assist in the preparation of proper proposed
`
`amendments in reexamination proceedings.
`
`Submissions
`
`If the patent ownerfails to file a timely and appropriate response to any Office action or
`
`any written statement of an interview required under 37 CFR § 1.560(b), the ex parte
`
`IPT Ex-2004, p. 0017
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2004, p. 0017
`LG v IPT
`IPR2023-00104
`
`

`

`Application/Control Number: 90/014,056
`
`Art Unit: 3992
`
`Page 17
`
`reexamination proceeding will be terminated, and the Director will proceed to issue a certificate
`
`under 37 CFR §1.570 in accordance with the last Office action.
`
`Service of Papers
`
`After the filing of a request for reexamination by a third party requester, any document
`
`filed by either the patent owneror the third party requester must be served on the other party (or
`
`parties where two or more third party requester proceedings are merged) in the reexamination
`
`proceeding in the mannerprovided in 37 CFR 1.248. See 37 CFR 1.550(f).
`
`Notification of Concurrent Proceedings
`
`The patent owneris reminded of the continuing responsibility under 37 CFR 1.565(a) to
`
`apprise the Office of anylitigation activity, or other prior or concurrent proceeding, involving
`
`U.S. Patent No. 6,959,293 throughout the course of this reexamination proceeding. The third
`
`party requester is also remindedof the ability to similarly apprise the Office of any such activity
`
`or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
`
`and 2286.
`
`Correspondencerelating to this ex parte reexamination
`All correspondencerelating to this ex parte reexamination proceeding should be directed:
`By Mail to: Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissionerfor Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`IPT Ex-2004, p. 0018
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2004, p. 0018
`LG v IPT
`IPR2023-00104
`
`

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`Application/Control Number: 90/014,056
`
`Page 18
`
`Art Unit: 3992
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web mayalternatively submit such correspondencevia the
`
`electronic filing system EFS-Web, at https://efs.uspto.gov/efile/myportal/efs-registered. EFS-
`
`Weboffers the benefit of quick submission to the particular area of the Office that needs to act
`
`on the correspondence. Also, EFS-Web submissionsare “soft scanned” (1.e., electronically
`
`uploaded) directly into the official file for the reexamination proceeding, which offers parties the
`
`opportunity to review the content of their submissionsafter the “soft scanning” processis
`
`complete.
`
`Any inquiry concerning this communication should be directed to Majid Banankhahat
`
`telephone number571-272-3770.
`
`/Majid Banankhah/
`Reexamination Specialist
`CRU,Art Unit 3992
`
`Conferees:
`
`/Ovidio Escalante/
`
`/Hetul Patel/
`Supervisory Patent Examiner, Art Unit 3992
`
`IPT Ex-2004, p. 0019
`LG v IPT
`IPR2023-00104
`
`IPT Ex-2004, p. 0019
`LG v IPT
`IPR2023-00104
`
`

`

` Control No. Patent Under Reexamination
`
`
`
`.
`
`Order Granting Request For
`Ex Parte Reexamination
`
`90/014,056
`6959293
`———
`on
`
`xaminer
`rtUnit
`MAJID A. BANANKHAH
`3992
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 15 December 2017 has been considered and a determination
`has been made. Anidentification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)L_] PTO-892,
`
`b)X] PTO/SB/08,
`
`c)L_] Other:
`
`1. KX] The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TW