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
`
`90/015,261
`
`07/20/2023
`
`10652111
`
`11869-0051
`
`4881
`
`MayPatents Ltd. c/o Dorit Shem-Tov
`P.O.B 7230
`Ramat-Gan, 5217102
`ISRAEL
`
`HOTALING, JOHN M
`
`3992
`
`10/18/2023
`
`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)
`
`Exhibit 1014
`XNIDI
`Bazooka v. Nuhn - IPR2023-00554
`Page 1 of 20
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`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 1 of 20
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`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/015,261
`
`07/20/2023
`
`10652111
`
`11869-0051
`
`4881
`
`MayPatents Ltd. c/o Dorit Shem-Tov
`P.O.B 7230
`Ramat-Gan, 5217102
`ISRAEL
`
`HOTALING, JOHN M
`
`3992
`
`10/18/2023
`
`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)
`
`Exhibit 1014
`XNIDI
`Bazooka v. Nuhn - IPR2023-00554
`Page 1 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 1 of 20
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`
`
`
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Desmarais LLP
`230 Park Avenue
`New York NY 10169
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`EXPARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/015,261 .
`
`PATENT UNDER REEXAMINATION 106527717 .
`
`ART UNIT 3992.
`
`Enclosedis a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparfe reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copyis supplied after the reply by requester, 37 CFR 1.535, or the time forfiling a
`reply has passed, no submission on behalf of the exparte reexamination requesterwill be
`acknowledgedor considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 2 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 2 of 20
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`
`
`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`JOHN M HOTALINGII
`3992
`Yes
`
`90/015,261
`
`10652111
`
`Control No.
`
`Patent Under Reexamination
`
`
`
`--The MAILING DATE ofthis communication appears on the coversheet with the correspondence adadress--
`
`The request for exparte reexamination filed 07/20/2023 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)(]
`
`PTO-892,
`
`b)4
`
`PTO/SB/08,
`
`c)Q) Other:
`
`1.
`
`The request for expavfe 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 BY37CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner doesnotfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`JOHN M HOTALING II/
`Reexamination Specialist, Art Unit 399
`
`cc:Requester( if third party requester)
`U.S. Patent and Trademark Office
`PTOL-471G(Rev.01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20230828
`
`Exhibit 1014
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`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 2
`
`ORDER GRANTING REQUEST FOR EX PARTE REEXAMINATION
`
`I. ACKNOWLEDGMENTS
`
`On July 20, 2023, a request(“Request”) wasfiled for ex parte reexamination of
`
`claims 1-54 of US Patent 10,652,111 (‘111 patent’) which issued to Barsheshetetal.
`
`tiled “METHOD AND SYSTEM FOR DEEP PACKET INSPECTION IN SOFTWARE
`
`DEFINED NETWORKS”. The ‘111 patent wasfiled on April 21, 2015 with application
`
`number 15/126,288 (‘288 application”) and issued on May 12, 2020. The filing is
`
`based on PCT/US2015/026869 and the ‘111 patent has a provisional application No.
`
`61/982,358 filed on April 22, 2014.
`
`A substantial new question of patentability affecting claims 1-54 of the ‘111
`
`patent is raised by the request for ex parte reexamination filed July 20, 2023.
`
`ll. INFORMATION DISCLOSURE STATEMENT
`
`An information disclosure statement was submitted by the Patent Owner on
`
`JULY 20, 2023 (“ JULY 2023 IDS’).
`
`MPEP §§ 2256, under the heading “Prior Art Patents and Printed Publications
`
`Reviewed by Examiner in Reexamination,” states:
`
`Where patents, publications, and other such items of information
`are submitted by a party (patent owneror requester) in compliance with
`the requirements of the rules, the requisite degree of consideration to
`be given to such information will be normally limited by the degree to
`which the party filing the information citation has explained the
`content and relevanceof the information. The initials of the examiner
`placed adjacentto the citations on the form PTO/SB/08A and 08B or its
`equivalent, without an indication to the contrary in the record, do not
`
`Exhibit 1014
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`
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`Application/Control Number: 90/015,261
`Art Unit: 3992
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`Page 3
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`signify that the information has been considered by the examiner any
`further than to the extent noted above. [Emphasis added. ]
`
`MPEP § 6 09.05(b) states:
`
`The information contained in information disclosure statements
`which comply with both the content requirements of 37 CFR 1.98 and the
`requirements, based on the time offiling the statement, of 37 CFR 1.97
`will be considered by the examiner. Consideration by the examiner of the
`information submitted in an IDS meansthat the examiner will consider
`the documents in the same manner as other documentsin Office
`search files are considered by the examiner while conducting a
`search ofthe prior art in a proper field of search. The initials of the
`examiner placed adjacent to the citations on the PTO/SB/08A and 08B or
`its equivalent mean that the information has been considered by the
`examiner to the extent noted above. [Emphasis added. ]
`
`With this, the examiner notes that prior art references and other documentslisted
`
`in an Information Disclosure Statement are considered by the Examiner to at least the
`
`“degree to which the partyfiling the information citation has explained the content and
`
`relevanceof the information,” and in “the same manner as other documents in Office
`
`searchfiles are considered by the Examiner while conducting a search ofthe prior art in
`
`a proper field of search.”
`
`lll. Background
`
`According to the ‘111 specification the invention is a system and a methodfor
`
`deep packet inspection (DPI) in a software defined network (SDN), wherein the method
`
`is performed by a central controller of the SDN.
`
`FIG. 1
`
`is an exemplary and non-limiting diagram of a network system 100 utilized
`
`to describe the various disclosed embodiments. The network system 100 includes a
`
`software defined network (SDN) 110 (not shown) containing a central controller 111 and
`
`Exhibit 1014
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`
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`Application/Control Number: 90/015,261
`Art Unit: 3992
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`Page 4
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`a plurality of network nodes 112. The network nodes 112 communicate with the central
`
`controller 111 using, for example, an Open Flow protocol. The central controller 111 can
`
`configure the network nodes 112 to perform certain data path operations. The SDN 110
`
`can be implemented in wide area networks (WANs), local area networks (LANs), the
`
`Internet, metropolitan area networks (MANs), ISP backbones, datacenters, inter-
`
`datacenter networks, and the like. Each network node 112 in the SDN maybea router,
`
`a switch, a bridge, and so on.
`
`The central controller 111 provides inspected data (such as application
`
`metadata) to a plurality of application servers (collectively referred to as application
`
`servers 120, merely for simplicity purposes). An application server 120 executes, for
`
`example, security applications (e.g., Firewall, intrusion detection, etc.), data analytic
`
`applications, and so on.
`
`In the exemplary network system 100, a plurality of client devices (collectively
`
`referred to as client devices 130, merely for simplicity purposes) communicate with a
`
`plurality of destination servers (collectively referred to as destination servers 140,
`
`merely for simplicity purposes) connected over the network 110. A client device 130
`
`may be, for example, a smart phone, a tablet computer, a personal computer, a laptop
`
`computer, a wearable computing device, and the like. The destination servers 140 are
`
`accessed by the devices 130 and maybe, for example, web servers.
`
`According to some embodiments, the central controller 111 is configured to
`
`perform deep packetinspection on designated packets from designated flows or TCP
`
`sessions. To this end, the central controller 111 is further configured to instruct each of
`
`Exhibit 1014
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`Exhibit 1014
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`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
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`Page 5
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`the network nodes 112 whichof the packets and/or sessions should be directed to the
`
`controller 111 for packet inspections.
`
`According to some embodiments, each network node 112 is configured to
`
`determine if an incoming packet requires inspection or not. The determination is
`
`performed based onaset of instructions provided by the controller 111. A packet that
`
`requires inspection is either redirected to the controller 111 or mirrored and a copy
`
`thereof is sent to the controller 111.
`
`It should be noted thattraffic flows that are
`
`inspected are not affected by the operation of the network node 112. In an embodiment,
`
`each network node 112 is configured to extract and send only a portion of a packet data
`
`that contains meaningful information.
`
`ANDtion
`P<ations
`Appohicutior?
`
`
`
`SESCvars
`SEVENS
`Servers
`wx eh
`320
`3a
`
`
`
`
`
`
`Caantral Coartiratior
`244
`
`:
`
`Az
`
`yrenctes
`
`Se
`
`et,
`3 209
`
`(i
`
`422 Sener |
`a |
`
`Exhibit 1014
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`Page 7 of 20
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`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 7 of 20
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`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 6
`
`IV. PROSECUTION HISTORY
`
`A. Prosecution history of the ‘111 patent
`
`During the original prosecution whichled to the allowance of the ‘111 patent the
`
`examiner issued 1st non-final action rejecting all pending claims 20-73 over Dolganow
`
`(US 2010/0208590) in view of Nguyen et al. (US 2014/0052836), and onefinal office
`
`action rejecting claims 20-73 over Dolganow (US 2010/0208590) in view of Nguyen et
`
`al. (US 2014/0052836). After the final rejection the applicant filed an RCE and a 2"
`
`non-final action rejected all of the pending claims 20-73 over Dolganow (US
`
`2010/0208590) in view of Huang etal. (US 2016/0219080). The applicant filed remarks
`
`on 10/2/19 and the notice of allowance of 1/7/2020 referend back to the 10/2/2019
`
`remarks as the reasons for allowance.
`
`The 10/2/19 remarks discuss that the references are not combinable and on
`
`page 9 of the remarksstates that the rejection is missing limitations in the independent
`
`claim 20. Explicitly claim 20 recites the limitation of “... sending, by the controller to
`
`the network node over the packet network, an instruction and a packet applicable
`
`criterion. This limitation is not addressed by the Action.”
`
`One ofordinary skill in the art would consider “...sending, by the controller to the
`
`network node over the packet network, an instruction and a packet applicable criterion.”
`
`as the issue that distinguishes the ‘111 patent over the prior art of record.
`
`Exhibit 1014
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`Page 8 of 20
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`Exhibit 1014
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`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`B. ProceedingsInvolving the '111 Patent
`
`Page 7
`
`The 111 Patent is being asserted by the Patent Owner against the Requesterin
`
`the pending action Orckit Corporation v. Cisco Systems, Inc., 2:22-cv-276 (EDTX). The
`
`‘111 patent is also subject to IPR2023-000554.
`
`V. PRIOR ART
`
`A. Referencescited in the request
`
`RwWN>
`
`US 2013/0088967 ("Kusumoto")
`US 2005/0251859 ("Quittek")
`US 2010/0208590 ("Dolganow")
`US 2016/0219080 ("Huang")
`
`VI. PROPOSED SUBSTANTIAL NEW QUESTION OF PATENTABILITY
`
`The Request alleges the following substantial new questions of patentability
`
`(SNQs) based on the above-identified prior art. For the purposeof this order the
`
`effective filling date for the ‘111 patent will be the provisional patent 61/982,358 dated
`
`April 22, 2014. The examiner notes that Kusumoto and Quittek of the prior art identified
`
`above was not previously before the examiner and wasfiled or available in publication
`
`before the April 22, 2014. Dolganow and Huang werecited during the prosecution of the
`
`‘111 patent but are viewed in a new light when combined with Kusumoto. In view of the
`
`prosecution history, it is considered that the evaluation of a prior art reference that teaches or
`
`Exhibit 1014
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`Page 9 of 20
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`Exhibit 1014
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`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 8
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`suggests the above noted limitations would have been considered important in determining the
`
`patentability of the claims. !
`
`Proposed SNQ1-3
`
`SNQ 1 Kusumoto In View Of Quittek Raises A Substantial New Question Of
`
`Patentability As To Claims 1, 5-7, 9-11, 30, 32, 36, 37, And 53.
`
`The requestindicates at page 25 that the requestor considersthat claims 1, 5-7,
`
`9-11, 30, 32, 36, 37, and 53 unpatentable over Kusumotoin view of Quittek.
`
`Kusumotoin view of Quittek are new art that was not considered during
`
`prosecution leading to the allowanceof the ‘111 patent. The reference all predate the
`
`filing of the ‘111 patent.
`
`Kusamoto discloses an OpenFlow controller para. [0041] that controls the nodes
`
`in order to set a processing rule that stipulates, in each node, a matching rule and
`
`processing for a packet matching to the matching rule. Each node processes a packet
`
`received in accordance with the processing rule. At least one node is capable of
`
`executing mirroring of the packet received. The controller sets, for a flow satisfying a
`
`pre-set condition, a processing rule that causes an arbitrary node to perform packet
`
`mirroring. The controller also sets, in a node(s) on a packet capture route reaching a
`
`pre-set mirror server from the arbitrary node, a processing rule that stipulates the
`
`processing to forward a mirrored packet.
`
`! The examinernotes that instant request and SNQ determination does not rely on any of the prior art reference cited
`in the IPR2023-000554 proceeding.
`
`Exhibit 1014
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`
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`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 9
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`Accordingly, Kusumoto appears to disclose “... sending, by the controller to
`
`the network node over the packet network, an instruction and a packet applicable
`
`criterion.” steps that were argued by the patent owner as distinguishing the ‘111 patent
`
`over the prior art at the time of allowance.
`
`SERVER
`
`MIRROR
`
`Figure 1 Kusumoto
`
`Quittek discloses inspecting ( e.g., checking) each data packet against
`
`established policies ( e.g., criteria):
`
`Firewalls protect the regular operation of private networksbyfiltering
`
`incoming data packets. The firewall inspects each data packettrying
`
`to pass the firewall and checks the data packets againsta lot of
`
`policies that can be established beforehand. The policies can, for
`
`example, be defined by a network administrator and can be adapted to
`
`special situations. Based on the actual policies established on the
`
`Exhibit 1014
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`
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`Application/Control Number: 90/015,261
`Art Unit: 3992
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`Page 10
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`firewall, the firewall allows a data packetto passit. If the content or
`
`the structure of a data packet contradicts the established policies, the
`
`firewall drops the data packet before it can enter the network to be
`
`protected.
`
`Hence, Kusumoto in combination with various other references provides new
`
`non-cumulative technological teachings. Further, there is substantial likelihood that a
`
`reasonable examiner would consider this teaching important in deciding whether or not
`
`the claims are patentable. Accordingly, Kusumoto in combination with various other
`
`references, raises a substantial new question of patentability with respect to at least
`
`claim 1 of the ‘111 patent, which question has not been decided in a previous
`
`examination of the ‘111 patent.
`
`SNQ2: Kusumoto In View Of Quittek And Further In View Of Dolganowraises a
`
`Substantial New Question Of Patentability as to Claims 2, 3, 8, 12-25, 27-29, 33,
`
`34, 38, 39, and 41-52
`
`The requestindicates at page 69 that the requestor considers that claims , 3, 8,
`
`12-25, 27-29, 33, 34, 38, 39, and 41-52 unpatentable over Kusumotoin view of Quittek
`
`and further in view of Dolganow. Kusumotoin view of Quittek are new art that was not
`
`considered during prosecution leading to the allowance of the ‘111 patent. The
`
`referenceall predate the filing of the ‘111 patent. Dolganow was usedin the
`
`prosecution that led to the allowance of the ‘111 patent but is presented in a new light
`
`when combined with Kusumoto and Quittek.
`
`Exhibit 1014
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`
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`Application/Control Number: 90/015,261
`Art Unit: 3992
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`Page 11
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`Dolganow discloses methods for "managementoftraffic in a telecommunications
`
`network and, more particularly, to managing transmission of peer-to-peer content over
`
`such a network." See ‘590 para [0001] . In Dolganow' s system "[ 0 Jne or more deep
`
`packet inspection (DPI) devices may perform DPI to extract a key from one or more of
`
`the first plurality of packets, the key identifying a P2P content item." See ‘590 para.
`
`[0012]
`
`Hence, Kusumoto in combination with various other references provides new
`
`non-cumulative technological teachings. Further, there is substantial likelihood that a
`
`reasonable examiner would consider this teaching important in deciding whether or not
`
`the claims are patentable. Accordingly, Kusumoto in combination with various other
`
`references, raises a substantial new question of patentability with respect to at least
`
`claim 1 of the ‘111 patent, which question has not been decided in a previous
`
`examination of the ‘111 patent.
`
`SNQ3: Kusumoto In View Of Quittek And Further In View Of Huang Raises
`
`Substantial New Question Of Patentability As To Claims 4, 31, 35, and 54
`
`The requestindicates at page 131 that the requestor considers that claims 4, 31,
`
`35, and 54, unpatentable over Kusumoto in view of Quittek and further in view of
`
`Huang. Kusumotoin view of Quittek are new art that was not considered during
`
`prosecution leading to the allowanceof the ‘111 patent. The reference all predate the
`
`filing of the ‘111 patent. Huang was used in the prosecution that led to the allowance of
`
`Exhibit 1014
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`Page 13 of 20
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`
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`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 12
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`the ‘111 patent but is presented in a new light when combined with Kusumoto and
`
`Quittek.
`
`Huang discloses "a Deep Packet Inspection (DPI) control method and device... "
`
`Huang ‘080, Abstract. In Huang, "a traffic collection request is sent to a network
`
`controller according to a pre-set collection policy, wherein the traffic collection requestis
`
`used for allowing the network controller to send a requestfor traffic collection to one or
`
`more corresponding network devices." Huang's controller can be an SDN controller.
`
`See Huang ‘080, para. [0032] ("[A] Software Defined Network (SDN) controller is taken
`
`as an example to describe the network controller.) And the "SDN controller adopts a
`
`uniform control mode, and all of the network devices can be globally managed and
`
`controlled."
`
`Hence, Kusumoto in combination with various other references provides new
`
`non-cumulative technological teachings. Further, there is substantial likelihood that a
`
`reasonable examiner would consider this teaching important in deciding whether or not
`
`the claims are patentable. Accordingly, Kusumoto in combination with various other
`
`references, raises a substantial new question of patentability with respect to at least
`
`claim 1 of the ‘111 patent, which question has not been decided in a previous
`
`examination of the ‘111 patent.
`
`VII. 35 USC 325(d)
`
`35 USC 325(d) states in part that “[i]n determining whether to institute or order a
`
`proceeding underthis chapter, chapter 30, or chapter 31, the Director may take into
`
`account whether, and reject the petition or request because, the same or substantially
`
`the same prior art or arguments previously were presented to the Office.”. Thus, in order
`
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`
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`Application/Control Number: 90/015,261
`Art Unit: 3992
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`Page 13
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`for the Director to exercise discretion as to whether to Order a reexamination
`
`proceeding under chapter, 30, the request mustfirst be determined to be based on the
`
`same or substantially the same prior art or arguments that previously were presentedto
`
`the Office.
`
`A review of the post grant history for the ‘111 patent indicates that the patent was
`
`the subject of a single prior post grant challenge.
`
`On February 21, 2023, Petitioner Cisco Systems, Inc. filed a petition requesting
`
`inter partes review of claims 1-9, 12-24 and 27-31 of the ‘111 patent (IPR2023-00554)
`
`which asserted the following grounds asraising a reasonable likelinood in prevailing
`
`(RLP).:
`
`Shich Swenson
`
`Lin, Swersci
`
`On September 20, 2023, the Patent Trial and Appeal Board (PTAB) issued a
`
`decision under 35 UC 314 granting institution of inter partes review holding that there is
`
`a reasonable likelihood that the Petitioner would prevail (RLP) with respect to at least
`
`one claim challenged in the petition.
`
`A comparison between the prior art and arguments presentedin the prior AIA
`
`post grant challenge to the ‘111 patent indicates that the prior art and arguments
`
`presented in the instant reexam request (90/015,261 filed by Cisco, hereinafter the ‘261
`
`reexamination request) are not the same or substantially as the prior art and arguments
`
`previously presented to the Office.
`
`Asan initial matter, none of the grounds presented in prior IPR petition are based
`
`on any of the same prior art presented in the 90/015,261 reexamination request.
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 15 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 15 of 20
`
`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 14
`
`Further, a review of the ‘261 reexamination request indicates that the prior art is not
`
`substantially the same asthe prior art in the IPR2023-0055. For example in the
`
`IPR2023-00554, the primary references Shieh and Lin both disclose the use of an
`
`OpenFlow controller, but these references are directed to a security inspection of
`
`packets, while Kusumoto (the primary refence asserted in the instant reexamination
`
`request) disclosesthat for a flow satisfying a pre-set condition. In Kusumoto, the
`
`controller sets a processing rule to perform packet mirroring in an arbitrary node, while
`
`setting, in a node on a packet capture route reaching a pre-set mirror server, a
`
`processing rule that stipulates the processing to forward a mirrored packet using an
`
`OpenFlow controller. However, the Kusumoto reference does not disclosed security
`
`inspection of packets. Thus, while referencescited in the prior IPR petition and the
`
`current reexamination requestdisclose similar technologies, they are not substantially
`
`the same. Further, the arguments presentedin this reexam request are directed to
`
`completely different combination of references and thus the arguments presented in the
`
`instant request are not the same or substantially the same as those previously
`
`presented.
`
`Accordingly, for the reasons stated above the ‘261 reexamination requestis not
`
`based on the same or substantially the same prior art or arguments as those previously
`
`presentedto the Office, and thus statutory threshold for the Director to exercise
`
`discretion pursuant to 35 USC 325(d) to reject the request has not been met.
`
`Reexamination is thus Ordered based on the determination above the ‘261
`
`reexamination request raises an SNQ to claims 1-54 of the ‘111 patent, and the ‘111
`
`patent will be reexamined.
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 16 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 16 of 20
`
`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 15
`
`Vill. EX PARTE REEXAMINATION REMINDER
`
`A. Specific Explanation of Support Must be Provided
`
`37 CFR 1.530 (e) states:
`
`(e) Status of claims and support for claim changes. Whenever there
`is an amendmentto the claims pursuant to paragraph (d) of this section,
`there must also be supplied, on pages separate from the pages containing
`the changes, the status (i.e., pending or canceled), as of the date of the
`amendment, of all patent claims and of all added claims, and an
`explanation of the support in the disclosure of the patent for the changes
`to the claims made by the amendmentpaper.
`
`In other words, explanation of support of changes made to claims including
`
`amendedclaims and new claims must be provided and specific.
`
`B. Amended Claims or New Claims Cannot be Broadened.
`
`37 CFR 1.552 (b) states:
`
`(b) Claims in an ex parte reexamination proceeding will not be permitted to
`enlarge the scope of the claims of the patent.
`
`MPEP 2258 states:
`
`A reexamination proceeding ordered under 35 U.S.C. 304 provides a
`complete reexamination of the patent claims on the basis of prior art
`patents and printed publications. Double patenting issues may also be
`considered during reexamination. See subsection |.D. below. Issues
`relating to 35 U.S.C. Il2 are addressed only with respect to new claims or
`amendatory subject matter in the specification, claims or drawings. Any
`new or amendedclaims are examined to ensure that the scope of the
`original patent claims is not enlarged, i.e., broadened. See 35 U.S.C. 305.
`
`Therefore, the Patent Owner is reminded that any new or amended claims
`
`cannot be broadened.
`
`IX. CONCLUSION
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 17 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 17 of 20
`
`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 16
`
`Claims 1-54 of the ‘111 patent will be reexamined.
`
`Extensions of Time
`
`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 areexamination 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 waivesthe right under 37 C.F.R. 1.530 to file a Patent Owner
`
`Statement and proof of service in the manner provided 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 mayconsider using the following statement in a document waiving
`
`the right to file a Patent Owner Statement:
`
`Patent Owner waivesthe right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
`
`Amendment in Reexamination Proceedings
`
`Patent owner is notified that any proposed amendmentto the specification and/or
`
`claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 18 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 18 of 20
`
`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 17
`
`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 amendmentsin reexamination proceedings.
`
`Submissions
`
`If the patent owner fails 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 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 owner or the third party requester must be served on the other
`
`party (or parties where two or morethird party requester proceedings are merged) in the
`
`reexamination proceeding in the manner provided 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 Patent No. 10,778,012 throughout the courseofthis
`
`reexamination proceeding. The third-party requester is also reminded ofthe ability to
`
`similarly apprise the Office of any such activity or proceeding throughout the courseof
`
`this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 19 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 19 of 20
`
`
`
`Application/Control Number: 90/015,261
`Art Unit: 3992
`
`Page 18
`
`All correspondencerelating to this ex parte reexamination proceeding should be
`
`directed 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 DulanySt.
`Alexandria, VA 22314
`
`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.
`
`/JOHN M HOTALING II/
`Reexamination Specialist, Art Unit 3992
`
`Conferees:
`
`/FRED O FERRIS III/
`Reexamination Specialist, Art Unit 3992
`
`/MICHAEL FUELLING/
`Supervisory Patent Reexamination Specialist, Art Unit 3992
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 20 of 20
`
`Exhibit 1014
`Bazooka v. Nuhn - IPR2023-00554
`Page 20 of 20
`
`
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