Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 1 of 21 PageID #: 9477
`
`Exhibit 16
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 2 of 21 PageID #: 9478
`Case 2-4}.Cv00040-JRG Document,.199-1 Filed 01/11/22 Page 2 of 21 PagelD #: 9478
`NITED STATES
`PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`
`
`90/014,900
`
`11/11/2021
`
`8553079
`
`75281.00085
`
`6522
`
`Williams Simons & Landis PLLC/ GTP
`TheLittlefield Building
`601 Congress Ave., Suite 600
`
`SAGER, MARK ALAN
`
`3992
`
`MAIL DATE
`
`12/20/2021
`
`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)
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 3 of 21 PageID #: 9479
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 3 of 21 PagelD #: 9479
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissionerfor 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)
`
`PAUL HASTINGS LLP
`2050 M. STREET NW
`
`WASHINGTON, DC 20036
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/074,900 .
`
`PATENT UNDER REEXAMINATION 8553079.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified 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)
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 4 of 21 PageID #: 9480
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 4 of 21 PagelD #: 9480
`
`Control No.
`
`Patent Under Reexamination
`
`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`MARK A SAGER
`3992
`No
`
`90/014,900
`
`8553079
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for exgarfe reexamination filed 11/11/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)
`
`PTO-892,
`
`b)v¥)
`
`PTO/SB/08,
`
`c)Q Other:
`
`1.
`
`The requestfor exgarfe 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 BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`lf Patent Owner does notfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`Mark Sager/
`Primary Examiner, Art Unit 3992
`
`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. 20211206
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 5 of 21 PageID #: 9481
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 5 of 21 PagelD #: 9481
`
`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 2
`
`Order Determination
`
`Third Party Requester submitted a request for reexamination withafiling date of
`
`November 11, 2021, requesting ex parte reexamination of claims 1-30 of expired U.S. Patent No.
`
`8,553,079 (hereinafter also referred to as ‘079). A substantial new question of patentability
`
`affecting claims 1-30 of U.S. Patent No. 8,553,079 in effect at this time is raised by the request
`
`for ex parte reexamination. Accordingly, claims 1-30 will be reexamined. For reference,
`
`numbered pages5-6 discuss prosecution history; while, numbered pages 9-17 discuss the SNQs
`
`herein.
`
`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 reexamination proceedings
`
`“will be conducted with special dispatch” (37 CFR 1.550(a)). Extension of time in ex parte
`
`reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`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. 8,553,079 throughout the course of this reexamination proceeding. See MPEP §§
`
`2207, 2282 and 2286.
`
`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)-(j), must be formally
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 6 of 21 PageID #: 9482
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 6 of 21 PagelD #: 9482
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`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 3
`
`presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFR
`
`1.20(c).
`
`Submissions
`
`In orderto insure full consideration of any amendments, affidavits or declarations or
`
`other documents as evidence of patentability, such documents must be submitted in response to
`
`the first Office action on the merits (which does notresult in a close of prosecution).
`
`Submissionsafter the second Office action on the merits, which is intended to be a final action,
`
`will be governed by the requirements of 37 CFR 1.116, after final rejection and by 37 CFR 41.33
`
`after appeal, which will be strictly enforced.
`
`Waiver of Right to File Patent Owner Statement
`
`In a reexamination proceeding, Patent Owner may waive the right under 37 C.F.R. 1.530
`
`to file a Patent Owner Statement. The documentneeds to contain a statement that Patent Owner
`
`waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proofof 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 consider using the following
`
`statement in a documentwaivingtheright to file a Patent Owner Statement:
`
`WAIVEROF RIGHT TO FILE PATENT OWNER STATEMENT
`
`Patent Ownerwaivesthe right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
`
`References Asserted as Raising a Substantial New Question
`
`The asserted substantial new question of patentability (SNQP) in Request regarding
`
`claims 1-30 of the ‘079 Patent is based upon the following references:
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 7 of 21 PageID #: 9483
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 7 of 21 PagelD #: 9483
`
`Page 4
`Control Number: 90/014,900
`Art Unit: 3992
`
`U.S. Patent No. 5,982,853 to Liebermann
`(“Liebermann”)
`U.S. Patent No. 6,385,331 to Harakawaetal.
`(“Harakawa’ )
`U.S. Patent No. 6,198,485 to Macket al. (“Mack
`
`Ex. PA-1
`
`Ex. PA-2
`
`Ex. PA-3
`
`
`
`Canadian Patent No. 2,175,288 to Bushnag
`“Bushnag’
`U.S. Patent No. 6,587,700 to Meinset al. (“Meins””’)
`
`Ex. PA-4
`
`Ex. PA-5
`
`U.S. Patent No. 6,912,410 to Autenet al. (“Auten”)
`
`Ex. PA-6
`
`Availability of Asserted References as Prior Art
`
`For purposes of this determination that does not preclude review in an action on the
`
`merits, claims 1-30 are entitled to the filing date of Provisional application No. 60/107,652,
`
`identified on the cover of the ’079 patent, which is November 9, 1998, listed on the coverof the
`
`°079 patent. (Ex. PAT-A, Cover.)
`
`Liebermann wasfiled on May 23, 1996 and issued on Nov. 09, 1999. Ex. PA-1,
`
`Liebermannat (22), (63). Liebermann wasnot cited during the prosecution of the ’079 Patent.
`
`For completeness the following is also provided. Harakawa issued on May7, 2002, from
`
`Application No. 09/040,436 filed March 18, 1998; Mack issued on March 6, 2001, from
`
`Application No. 09/123,965 filed July 29, 1998; Meins issued on July 1, 2003, from Application
`
`No. 08/979,110 filed November 26, 1997; and Auten issued on June 28, 2005, from Application
`
`No. 09/138,920 filed August 24, 1998. Thus, Liebermann, Harakawa, Mack, Meins, and Auten
`
`qualify as prior art at least under pre-AIA 35 U.S.C. § 102(e).
`
`Bushnag is a publication of a patent application laid “Open to Public Insp[ection]”(i.e.,
`
`publicly accessible as a printed publication) by the Canadian Intellectual Property Office on
`
`October 30, 1997. See eBay v. MoneyCat, CBM2014-00092, Paper 12 at 12 (P.T.A.B. Sep. 24,
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 8 of 21 PageID #: 9484
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 8 of 21 PagelD #: 9484
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`Control Number: 90/014,900
`Art Unit: 3992
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`Page 5
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`2014) (crediting “Open to Public Insp.” date as establishing Canadian laid-open patent
`
`application as publicly accessible printed publication) (citing In re Wyer, 055 F.2d 221 (C.C.P.A.
`
`1981)); In re Wyer, 655 F.2d 221 (C.C.P.A. 1981); Bruckelmyer v. Ground Heaters, Inc., 445
`
`F.3d 1374 (Fed. Cir. 2006) (determining a Canadian patent application was publicly accessible
`
`and thus a printed publication); see also Ex. PA-4, 1 (listing an October 30, 1997 date); Ex. PA-7
`
`(listing the open to public inspection date of the Bushnag reference as October 30, 1997). Thus,
`
`Bushnag qualifies as prior art at least under pre-AIA 35 U.S.C. § 102(b).
`
`Each of the references listed in Request, as copied in Table above,is a publication,article
`
`or patent publishedpriorto the earliest effective filing date of Nov. 9, 1998 of the ‘079 patent,
`
`see Request pages 7-8, and thus each cited reference is available as prior art underat least 35
`
`USC 102(a), 102 (b) 102( e ) and/or 35 USC 103.
`
`Declaration
`
`The Declaration (PA-DEC) by Dr. Gregory Abowd,filed Nov. 11, 2021 (signed Nov. 11,
`
`2021) has not been considered herein dueto failing to address whethercited references therein
`
`present a significant new question of patentability relevant to an Order Decision under 35 USC
`
`304. See MPEP 2209. Review of its statements will be addressed in first action.
`
`Summary of Prosecution History
`
`U.S. Application 13/714,748 (‘748 application) was filed on December 14, 2012
`
`(hereinafter also referred to as ‘748 or the “748 application), now U.S. Pat. 8553079, whichis a
`
`continuation of application 12/700055, filed on Feb. 4, 2010, which is a continuation of
`
`application 10/866191, filed on June 14, 2004, that is a continuation of application 09/433297,
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 9 of 21 PageID #: 9485
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 9 of 21 PagelD #: 9485
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`Control Number: 90/014,900
`Art Unit: 3992
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`Page 6
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`filed on Nov. 3, 2009, now U.S. Pat. 6750848, that claims priority to provisional application
`
`60/107652, filed Nov. 9, 1998. The *748 application included a specification, twenty claims,
`
`abstract and seven drawing sheets. Claims 1-7 were directed to a computer implemented
`
`method, claims 8-14 were directed to a computer apparatus; while, claims 15-20 were directed to
`
`keyboard apparatus. Below are the pertinent Examiner’s findings of fact relevant to this
`
`decision:
`
`‘748 Application
`
`On June 19, 2013, a preliminary amendmentwasfiled that cancelled claims 1-20 and
`
`added new claims 21-50 where claims 21-29 were directed to a computer implemented method,
`
`30-39 were directed to a computer apparatus; while, claims 40-50 were directed to a computer
`
`implemented method.Afirst action notice of allowance was mailed by USPTO on July 24, 2013
`
`with the reasonsfor allowancestating the following:
`
`The closest prior arts of record issued to Naoiet al. (US 5459793 A), Platzker et al. (US
`5528263 A), Sellers (US 5864334 A) and Fukushimaet al. (US 6346929 B1) fail to teach
`or suggest the limitation combination of “a computer implemented method comprising:
`providing a light source adapted to direct illumination through a work volumeabovethe
`light source; providing a camera oriented to observe a gesture performed in the work
`volume, the camera being fixed relative to the light source; and determining, using the
`camera, the gesture performed in the work volumeandilluminated by the light source” in
`combination with all the elements of each independent claim. Examiner has reviewed the
`cited references per IDS received on 04/05/2013. Examiner has searched in EAST, eDAN
`and Google prior arts on the limitation combination as recited in the currently claimed
`invention. Naoi, Platzker, Sellers and Fukushima are a combination ofclosest prior arts to
`the claimed invention as presented by Applicant. Each of Naoi, Platzker, Sellers and
`Fukushima touches upon specific elements as presented in the independent claims.
`However, it is not obvious to combine Naoi, Platzker, Sellers and Fukushimain
`formulating a reasonable rejection against the independent claim language as presented
`with the consideration of Applicant’s written description. Independent claims 21, 31 and
`41 are thus to be allowed.
`The dependent claims further limit the independent claims and are considered allowable
`on the same basis as the independentclaims as well as for the further limitationsset forth.
`
`The application issued as U.S. Patent No. 8,553,079 on Oct. 8, 2013.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 10 of 21 PageID #: 9486
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 10 of 21 PagelD #: 9486
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`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 7
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`Related Proceedings
`
`The Requestlists the following court proceedings involving U.S. Patent No. 8,553,079 that have
`
`yet to reach a final decision or settlement.
`
`- Gesture Technology Partners, LLC v. Huawei Device Co., Ltd., Case No. 2:21-cv-
`00040 (EDTX)
`- Gesture Technology Partners, LLC v. Samsung Electronics Co., Ltd., Case No. 2:21-
`cv-00041 (EDTX)(consolidated with Case No. 2:21-cv-0040 forall pretrial issues).
`- Gesture Technology Partners, LLC v. Apple Inc., Case No. 6:21-cv-00121 (WDTX).
`- Gesture Technology Partners, LLC vy. Lenovo Group Ltd., Case No. 6:21-cv-00122
`(WDTX).
`- Gesture Technology Partners, LLC v. LG Electronics, Inc., Case No. 6:21-cv-00123
`(WDTX). The LG case wastransferred to Gesture Technology Partners, LLC v. LG
`Electronics Inc., Case No. 2-21-cvy-19234 (DNJ).
`
`Also, the following two proceedings regarding U.S. Patent No. 8,553,079 have yet to reach a
`
`decision on their respective petitions; however, Request states, regarding cited art, “these
`
`references are not cited and will not be considered in the pending IPRs.”
`
`Apple Inc. v. Gesture Technology Partners LLC, IPR2021-00922 (filed May 18, 2021).
`LG Electronics, Inc. et al. v. Gesture Technology Partners LLC, IPR2022-00090 (filed
`November5, 2021).
`
`Claim Construction
`
`For the purposes of reexamination, the claim terms of an expired patent are accordedtheir plain
`
`and ordinary meaning underthe Phillips standard. Manual of Patent Examining Procedure
`
`§ 2258(1)(G). In a reexamination proceeding involving claims of an expired patent, claim
`
`construction pursuantto the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d
`
`1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words of a claim “are generally given their
`
`ordinary and customary meaning”as understood by a person of ordinary skill in the art in
`
`question at the time of the invention) should be applied since the expired claim[s] are not subject
`
`to amendment. MPEP§ 2258 L(G)(citing Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 11 of 21 PageID #: 9487
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 11 of 21 PagelD #: 9487
`
`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 8
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`App. & Inter. 1986)). The °079 patent, which lists November, 3, 1999, as the date of the earliest
`
`related continuation but which also claimspriority to a provisional application, filed November
`
`9, 1998, and doesnotlist any term extensions or adjustments, has expired. (See Ex. PAT-A,
`
`Cover.) Therefore, the claim interpretations submitted or implied herein for the purposeof this
`
`reexamination adhere to the Phillips standard. See In re CSB-System Int’l, Inc., 832 F.3d 1335,
`
`1340-42 (Fed. Cir. 2016).” Furthermore, wherethere is related litigation and a federal court has
`
`madea judicial interpretation of a disputed claim term, the examiner in a reexamination should
`
`assess whetherthe judicial interpretation is consistent with the applied claim construction
`
`standard. See id. (discussing the application of the “broadest reasonable interpretation” standard).
`
`Asnoted above, the ’079 Patent is the subject of such related litigation, the relevant
`
`constructions from those Litigation as set forth in the Request as discussed in the Claim
`
`Construction, section IV therein, are accorded their plain and ordinary meaning underthe
`
`Phillips standard herein.
`
`The SNQ Requirement
`
`A printed publication raises a SNQ wherethereis a substantial likelihood that a
`
`reasonable examiner would considerthe printed publication important in deciding whether or not
`
`the claim is patentable, unless the same SNQ hasalready been decided as to the claim in a final
`
`holding of invalidity by the Federal court system or by the Office in a previous examination.
`
`MPEP§ 2242.
`
`It is not sufficient that a request for reexamination merely proposes one or more
`
`rejections of a patent claim or claimsas a basis for reexamination. It mustfirst be demonstrated
`
`that a patent or printed publication that is relied upon in a proposed rejection presents a new,
`
`non-cumulative technological teaching that was not previously considered and discussed on the
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 12 of 21 PageID #: 9488
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 12 of 21 PagelD #: 9488
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`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 9
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`record during the prosecution of the application that resulted in the patent for which
`
`reexamination is requested, and during the prosecution of any other prior proceeding involving
`
`the patent for which reexamination is requested. MPEP § 2216.
`
`The substantial new question of patentability may be based on art previously considered
`
`by the Office if the reference is presented in a new light or a different way that escaped review
`
`during earlier examination. MPEP § 2216.
`
`Claim Limitations Important to Patentability
`
`In view ofthe prosecution history discussed above,the following steps/limitations from
`
`representative claim | (claims 11 and 21 contain similar limitations, although claim 11 regards
`
`an apparatus reciting similar structures performing similar functions) are deemed important to
`
`patentability:
`
`Claim 1. A computer implemented method comprising:
`providing a light source adapted to direct illumination through a work volume abovethe
`light source;
`providing a camera oriented to observe a gesture performed in the work volume,the
`camerabeing fixed relative to the light source; and
`determining, using the camera, the gesture performed in the work volumeand illuminated
`by the light source.
`
`SNOP/Reference Analysis
`
`Attention is directed to MPEP 2216, ie.:
`
`Under 35 U.S.C. 304, the Office must determine whether “a substantial new
`question of patentability” affecting any claim of the patent has beenraised.
`37 CFR 1.510(b)(1) requires that a request for ex parte reexamination include “a
`statement pointing out each substantial new question of patentability based on
`prior patents and printed publications.” If such a new question is found, an order
`for ex parte reexamination of the patentis issued. It is therefore important that
`the request clearly set forth in detail what the requester considers the
`“substantial new question of patentability” to be in view of prior patents and
`printed publications. The request must point out how any questions of
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 13 of 21 PageID #: 9489
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 13 of 21 PagelD #: 9489
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`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 10
`
`patentability raised are substantially different from those raised in the
`previous examination of the patent before the Office.
`
`It is not sufficient that a request for reexamination merely proposes one or more
`rejections of a patent claim or claimsas a basis for reexamination. It mustfirst be
`demonstrated that a patent or printed publication that is relied upon in a proposed
`rejection presents a new, non-cumulative technological teaching that was not
`previously considered and discussed on the record during the prosecution of
`the application that resulted in the patent for which reexamination is requested,
`and during the prosecution of any other prior proceeding involving the
`patent for which reexamination is requested. See also MPEP § 2242.
`
`The legal standard for ordering ex parte reexamination, as set forth in 35
`U.S.C.303(a), requires a substantial new question of patentability. The substantial
`new question of patentability may be based on art previously considered by the
`Office if the reference is presented in a new light or a different way that
`escaped review during earlier examination.
`
`After the enactment of the Patent and Trademark Office Authorization Act of
`2002 (“the 2002 Act’), a substantial new question of patentability can be raised
`by patents and printed publications “previously cited by or to the Office or
`considered by the Office” (“old art”). The 2002 Act did not negate the statutory
`requirementfor a substantial new question of patentability that requires raising
`new questions about pre-existing technology. In the implementation of the 2002
`Act, MPEP § 2242, subsection II.A. was revised. The revision permits raising a
`substantial new question of patentability based solely on old art, but onlyif the
`old art is “presented/viewed in a new light, or in a different way, as compared
`
`with its use in the earlier concluded examination(s),
`in view of a material new
`argumentor interpretation presented in the request.” Thus, a request may
`properly raise a substantial new question of patentability by raising a material new
`analysis of previously considered reference(s) under the rationales authorized by
`KSR.
`
`Questionsrelating to groundsof rejection other than those based on prior art
`patents or printed publications should not be included in the request and will
`not be considered by the examinerif included. Examples of such questions that
`will not be considered are public use, on sale, and conduct by parties.
`(Emphasis added.)
`
`Attention is also invited to MPEP 2242, L, 1e.:
`
`The presence or absence of “a substantial new question of patentability”
`determines whether or not reexamination is ordered. The meaning and scope of
`the term “a substantial new question of patentability” is not defined in the statute
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 14 of 21 PageID #: 9490
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 14 of 21 PagelD #: 9490
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`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 11
`
`and must be developed to some extent on a case-by-case basis, using the case law
`to provide guidance as will be discussed in this section.
`
`If the prior art patents and printed publicationsraise a substantial question of
`patentability of at least one claim of the patent, then a substantial new question of
`patentability is present, unless the same question of patentability has already
`been decided by (A)a final holding of invalidity, after all appeals, or (B) by the
`Office in a previous examination or pending reexamination of the patent. A
`“previous examination” of the patent is: (A) the original examination of the
`application which matured into the patent; (B) the examination
`of the patent in a reissue application that has resulted in a reissue of the patent; or
`(C) the examination of the patent in an earlier pending or concluded
`reexamination. ....
`
`A prior art patent or printed publication raises a substantial question of
`patentability where there is a substantial likelihood that a reasonable examiner
`would consider the prior art patent or printed publication important in deciding
`whetheror not the claim is patentable. If the prior art patents and/or publications
`would be considered important, then the examiner should find “a substantial new
`question of patentability” unless the same question of patentability has already
`been decidedasto the claim in a final holding of invalidity by the Federal court
`system or by the Office in a previous examination. For example, the same
`question of patentability may have already been decided by the Office where the
`examiner finds the additional (newly provided) prior art patents or printed
`publications are merely cumulative to similar prior art already fully considered
`by the Office in a previous examination of the claim.
`
`For “a substantial new question of patentability” to be present, it is only necessary
`that: (A) the prior art patents and/or printed publicationsraise a substantial
`question of patentability regarding at least one claim,i.e., the teaching of the
`(prior art) patents and printed publications is such that a reasonable examiner
`would consider the teaching to be important in deciding whetheror not the claim
`is patentable; and (B) the same question of patentability as to the claim has not
`been decided by the Office in a previous examination or pending reexamination of
`the patent or in a final holding of invalidity by the Federal Courts in a decision on
`the merits involving the claim.It is not necessary that a “prima facie” case of
`unpatentability exist as to the claim in orderfor “a substantial new question of
`patentability” to be present as to the claim....
`(Emphasis added.)
`
`Attention is also invited to 2258.01:
`
`...For purposes of reexamination, a cumulative reference that is repetitive is one
`that substantially reiterates verbatim the teachings of a reference that was either
`previously relied upon or discussed in a prior Office proceeding even though the
`title or the citation of the reference may be different...
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 15 of 21 PageID #: 9491
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 15 of 21 PagelD #: 9491
`
`Control Number: 90/014,900
`Art Unit: 3992
`
`Finally, see also MPEP 2247.
`
`Page 12
`
`SNOPRaised in this Request
`
`Requester, on page 2 of “REQUEST FOR EX PARTE REEXAMINATION
`
`TRANSMITTAL FORM,”asserts the following:
`
`“it is certified that the statutory estoppel provisions of 35 U.S.C. 3715(e)(1) or 35 U.S.C.
`328(e)(1) de not prohibit requester from filing this ex parte reexamination request. 37
`CFR 1.570(b)(6).”
`
`Based on facts in the Request, Patent Owner amendment/remarks in ‘748 application, the
`
`Examinerstatement for reasons for allowance in ‘748 application, the distinguishing/patentable
`
`limitations over applied art regard “a computer implemented method comprising:
`
`providing a light source adapted to direct illumination through a work volumeabovethe light
`
`source; providing a cameraoriented to observe a gesture performed in the work volume, the
`
`camera being fixedrelative to the light source; and determining, using the camera, the gesture
`
`performed in the work volume and illuminated bythe light source.” In this instance, a SNQP
`99
`Ge
`
`regards priorart that describes any of the steps “providing a light source”,
`
`“providing a camera”
`
`2
`
`or “determining, using the camera, the gesture” as particularly recited in claims 1 and 21. Also,
`
`a SNQPregardsa prior art than describes any of “a light source adapted to illuminate a human
`
`body part within a work volumegenerally abovethe light source”, “a camerain fixed relation
`
`relative to the light source and oriented to observe a gesture performed by the human bodypart
`
`in the work volume”and “a processor adapted to determine the gesture performed in the work
`
`volume and illuminated by the light source based on the camera output”as recited in claim 11.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 16 of 21 PageID #: 9492
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 16 of 21 PagelD #: 9492
`
`Control Number: 90/014,900
`Art Unit: 3992
`
`SNQP 1: Proposed SNQP Based on Liebermann
`
`Page 13
`
`Basedon facts noted herein, a reasonable patent examiner would consider the teachings
`
`of U.S. Patent No. 5982553 to Liebermann to be important regarding any of the recited steps of
`
`“a computer implemented method,” such as: “providing a light source adapted to direct
`99
`oe
`
`illumination through a work volume abovethe light source,”
`
`“providing a camera oriented to
`
`observe a gesture performed in the work volume, the camera being fixed relative to the light
`
`source” and “determining, using the camera, the gesture performed in the work volumeand
`
`illuminated by the light source.” Ex. PA-1, Liebermann at 5:52-58 (“In FIG. 5a, the deaf person's
`
`station comprises a personal computer 30 including the monitor 32 and a video camera 34. In
`
`FIG. 5b, a computer unit 36 and a video camera 38 is utilized on top of a standard television set
`
`AO so as to be at hand level. In FIG. 5c, a public kiosk 42 has built into it, a video camera 44, a
`
`video monitor 46, and lamps 48 to ensure adequatelighting of the user's hands, face and body”),
`
`at 5:61-6:14 (“the deaf person is positioned so that the camera lens 10 will record the signing
`
`movementof the hands and fingers and bodyand facial motions and expressions. The signing
`
`motions captured by the camera are converted into digital data for processing by the translation
`
`software, (1.e., artificial intelligence) to produce data representing numbers, words and phrases
`
`which are then combined into coherent sentences.”) and at 6:36-38 (“FIGS. 9-12 are schematics
`
`of the system software modules for converting signing to speech and speech to animation,
`
`including system training methods.”). see /d., Figs. 5A-5C, 6 and 9-12.
`
`Likewise, based on facts noted herein, a reasonable patent examiner would considerthe
`
`teachings of U.S. Patent No. 5982553 to Liebermann to be important regarding anyofthe recited
`
`devices of “a computer apparatus,” such as: “a light source adaptedto illuminate a human
`99 6¢
`
`body part within a work volume generally abovethe light source,”
`
`“a camerain fixed relation
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 17 of 21 PageID #: 9493
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 17 of 21 PagelD #: 9493
`
`Control Number: 90/014,900
`Art Unit: 3992
`
`Page 14
`
`relative to the light source and oriented to observe a gesture performed by the human body
`
`part in the work volume”and “a processor adapted to determine the gesture performed in the
`
`work volume and illuminated bythe light source based on the camera output.” Ex. PA-1,
`
`Liebermannat 5:52-58 (“In FIG. 5a, the deaf person's station comprises a personal computer 30
`
`including the monitor 32 and a video camera 34. In FIG. 5b, a computer unit 36 and a video
`
`camera 38 is utilized on top of a standard television set 40 so as to be at handlevel. In FIG. 5c, a
`
`public kiosk 42 has built into it, a video camera 44, a video monitor 46, and lamps 48 to ensure
`
`adequate lighting of the user's hands, face and body’), at 5:61-6:14 (“the deaf person is
`
`positioned so that the camera lens 10 will record the signing movementof the handsandfingers
`
`and bodyand facial motions and expressions. The signing motions captured by the camera are
`
`converted into digital data for processing by the translation software,(i.e., artificial intelligence)
`
`to produce data representing numbers, words and phrases which are then combined into coherent
`
`sentences.”) and at 6:36-38 (“FIGS. 9-12 are schematics of the system software modules for
`
`converting signing to speech and speech to animation, including system training methods.”).
`
`/d.,
`
`see Figs. 6, SA-5C, and 9.
`
`
`
`SELLANL CR
`
`EPMSNE
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 18 of 21 PageID #: 9494
`Case 2:21-cv-00040-JRG Document 199-1 Filed 01/11/22 Page 18 of 21 PagelD #: 9494
`
`Page 15
`
`Control Number: 90/014,900
`Art Unit: 3992
`
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