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`
`UNitep 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. uspta. gov
`
`.
`
`APPLICATION NO. [FINGDATE|FIRST NAMED INVENTOR ATTORNEY DOCKET NO.|CONFIRMATION NO.
`
`
`90/011,398
`12/22/2010
`5519867
`0314896.867a
`5320
`03/04/2011
`
`7590
`
`KEITH STEPHENS
`10201 N, DEANZA BLVD, a
`TALIGENT, INC.
`CUPERTINO, CA 95014-2000
`,
`
`DATE MAILED: 03/04/2011
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`DO NOT USEIN PALM PRINTER
`(THIRD PARTY REQUESTER'S CORRESPONDENCEADDRESS)
`
`BRYAN CAVE LLP
`
`1290 AVENUE OF THE AMERICAS
`
`NEW YORK, NY 10104
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`wouUSPIO.gov
`
`MAiL&D
`MAR 94 2914
`CENTRAL RECXAMINATION UNIT
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROLNO. 90/011,398.
`
`
`PATENTNO. 5519867.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Wherethis 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 ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`

`

`Control No.
`
`90/011,398
`
`Examiner
`
`Patent Under Reexamination
`
`5519867
`
`Art Unit
`
`.
`
`
`
`JOSHUA D. CAMPBELL
`
`3992
`
`--The MAILING DATEofthis communication appears on the cover sheet with the correspondence address--
`
`
`
`
`
`
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`
`
`
`
`The request for ex parte reexaminationfiled 22 December 2010 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.
`
`c)L] Other:
`Attachments: a)[|_] PTO-892,
`b)X] PTO/SB/08,
`
`1.((]_ The requestfor ex parte reexamination is GRANTED.
`
`For Patent Owner's Statement (Optional): TWO MONTHSfrom the mailing dateof this communication
`(37 CFR 1.530 (b)). EXTENSIONS OFTIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`
`
`
`
`
`
`
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Requester's Reply (optional): TWO MONTHSfrom the date of service of any timelyfiled
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERWMITTED.
`If Patent Owner doesnotfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`2. 0X] The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTHfrom the mailing date of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`In due course, a refund under 37 CFR 1.26 (c ) will be made to requester:
`
`a) _] by Treasury checkor,
`
`
`
`b)(] by credit to Deposit Account No.
`, or
`
`c) ] by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`
`
`cc:Requester(if third party
`U.S. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`requester
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20110217
`
`

`

`Application/Control Number: 90/011,398
`Art Unit: 3992
`
`Page 2
`
`DECISION DENYING EX PARTE REEXAMINATION
`
`No substantial new question ofpatentability affecting claims 1-53 of United States Patent
`1)
`Number5,519,867 (Moeller) is raised by the present request for ex parte reexamination and the
`
`prior art cited therein for the reasonsset forth below.
`
`Prior art cited in the Request
`
`Thepresent request filed 12/22/2010 indicates that the Requester considers that a
`2)
`substantial new question of patentability is raised as to claims 1-53 of the Moeller patent (U.S.
`
`Patent Number 5,519,867) by the followingprior art references:
`
`a.
`
`RefMan - "The ANSA Reference Manual," Architecture Projects Management
`
`Limited, Advanced Networked Systems Architecture (March 1989)
`
`b.
`
`Letwin, Inside OS/2, Microsoft Press, pp. 3-37, 41-84, 89-116, 151-168, 251-281
`
`(1988)
`
`Prosecution History
`
`The Moeller patent application was assignedserial number 08/094,673. During the
`3)
`original prosecution the examinerrejected (August 8, 1995) original claims 1-53 for lack of
`enablement, for being indefinite and for failing to particularly point out and distinctly claim the
`
`subject matter of the invention, pursuantto 35 U.S.C. § 112, and for obviousness type double
`
`patenting, no art rejection was ever applied to the claims. In responseto the rejection the
`
`applicant filed a terminal disclaimer (October 19, 1995 — in regards to commonly owned Patent
`
`Number5,379,432 issued on January 3, 1995) to overcomethe double patenting rejection and an
`
`

`

`Application/Control Number: 90/011,398
`Art Unit: 3992
`
`Page 3
`
`amendment (October 19, 1995) of the claims to overcome both the 35 U.S.C. § 112 first and
`
`second paragraph rejection. Additionally, as a part of this amendmentthe applicant states, "The
`
`crux of the invention is an apparatus for enabling or providing an object-oriented application to
`
`access a procedural operating system for specific system services such as thread services, task
`services, synchronization services, scheduling services and fault handling services." The
`
`applicantalso states, “Specifically, the object-oriented application accesses a code library to
`obtain the executable procedural functions and substitutes them into the application to execute a
`computer compiled, executable program logic to access services provided by said procedural
`operating system during run-time execution of the application in the computer,” in relation to the
`
`amendments madeto the claims.
`
`On January 16, 1996 the examinerpassedthe case to allowanceciting no specific reasons
`for allowance or patentability of the pending claims. The requestor has argued that the claims of
`
`the Moeller patent were passed to allowanceat least in part upon the applicant’s assertion that
`
`the code library allows an object-oriented application to access procedural operating system
`
`services at runtime. Based on the prosecution history of the Moeller application, the examiner
`
`agrees that the Moeller patent claims have been passed to allowanceat least in part based on
`
`limitationsrelating to the use of said code library.
`
`Discussion Regarding Substantial New Question of Patentability
`
`The presence or absence of "a substantial new question of patentability" determines
`3)
`whetheror not reexamination is ordered. If the prior art patents and printed publications raise a
`
`substantial question of patentability of at least one claim of the patent, then a substantial new
`
`

`

`Application/Control Number: 90/011,398
`Art Unit: 3992
`
`Page 4
`
`question ofpatentability 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 maturedinto the patent; (B) the
`
`examination ofthe patent in a reissue application that has resulted in a reissue of the patent; or
`
`(C) the examination ofthe patent in an earlier pending or concluded reexamination.
`
`With regard to the currently proposedpriorart, there do not appear to be any new
`
`technological teachingsrelative to limitations of the claims proposed for reexamination,that are
`
`not already before the examinerin present co-pending reexamination proceeding.
`
`In order for a second or subsequent request for reexamination to be granted, the second or
`
`subsequent requester must independently provide a SNQ whichis different from that raised in
`
`the pending reexaminations. If a different SNQ is not provided by the second or subsequent
`
`request for the claims ineffect at the time of the determination, the second or subsequent request
`
`for reexamination must be denied. (See: MPEP 2240).
`
`In the co-pending reexamination proceeding the requester has identified the limitations
`
`regarding the object oriented wrapper for accessing procedural operating system services during
`
`runtime of the independent claimsto be the basis for the SNQ in view ofthe presented art. The
`
`requesterstated:
`
`As explained morefully below, Vernon (which wasnotcited during prosecution)
`
`provides a new technological teaching not considered by the Examinerin the prior
`
`examination by disclosing the feature that was apparently missingfrom the prior art,
`
`namely an object- oriented wrapperfor accessing procedural operating system services
`
`

`

`Application/Control Number: 90/011,398
`Art Unit: 3992
`
`Page 5
`
`(whichin this case are OS/2's proceduralfunctions related to multitasking) during
`
`runtime. (Page 27, lines 4-8 of the co-pending “Request for Ex Parte Reexamination”)
`
`Similarly, as explained more fully below, Ewing (which wasnot cited during
`
`prosecution) provides a new technological teaching not considered by the Examinerin
`the prior examination by disclosing thefeature that was apparently missingfrom the
`
`‘
`
`prior art, namely an object-oriented wrapperfor accessing procedural operating system
`
`services (which in this case are the manyfeatures ofthe operating system which are
`
`accessed in a uniform methodfrom the programming environment). (Page 27, lines 10-15
`
`of the co-pending “Request for Ex Parte Reexamination”)
`
`In the current "Request for Ex Parte Reexamination” the requester identifies the
`
`limitations regarding the object oriented wrapper for accessing procedural operating system
`services during runtime of the independent claims based on the samelimitationsof the
`
`independentclaimsto be the basis for the SNQ. The requester stated:
`
`As explained morefully below, RefMan (which wasnotcited duringprosecution)
`
`provides a new technological teaching not considered by the Examiner in the prior
`
`examinationby disclosing the feature that was apparently missingfrom theprior art,
`
`namely an object- oriented wrapperfor accessing procedural operating system services
`(whichin this case are the manyfeatures ofthe operating system which are accessed ina
`uniform methodfrom the programming environment). (Page 28,lines 3-8 of the “Request
`
`for Ex Parte Reexamination")
`
`

`

`Application/Control Number: 90/011,398
`Art Unit: 3992
`
`Page 6
`
`The examinerdisagreesthat this is a basis for the priorart to raise a second SNQ. The
`limitations regarding the object oriented wrapper for accessing procedural operating system
`
`services during runtime were previously identified in the co-pending reexamination proceeding.
`
`The claim language of independent claims1, 25, 30, 32, 36, 41, and 48 regarding the object
`
`oriented wrapper for accessing procedural operating system services during runtime was
`
`previously considered with regards to andis the basis for the SNQ of patentability identified in
`
`the co-pending proceeding.
`
`As such, it is NOT agreed that the proposedpriorart raises yet a second substantial new
`
`question of patentability, over and above those already under consideration in the instant
`
`reexamination proceeding,relative to the claims of the patent.
`
`4)
`
`Claims 1-53 wili noi be reexamined.
`
`Scope of Reexamination
`
`

`

`Application/Control Number: 90/011,398
`Art Unit: 3992
`
`Page 7
`
`Conclusion
`
`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 notto parties in a
`reexamination proceeding. Additionally, 35 USC. 305 requires that reexamination proceedings —
`
`"will be conducted with special dispatch" (37 CFR 1.550(a)). Extensionof timein ex parte
`
`reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`The patent owner is remindedof 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. 5,519,867 throughoutthe course ofthis reexamination proceeding. The third party
`
`requester is also reminded ofthe ability to similarly apprise the Office of any such activity or
`
`proceeding throughoutthe course of this reexamination proceeding. See MPEP §§ 2207, 2282
`
`and 2286.
`
`All correspondencerelating to this ex parte reexamination proceeding shouldbe 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 handto:
`
`

`

`Application/Control Number: 90/01 1,398
`Art Unit: 3992
`
`Customer Service Window
`Randolph Building
`401 DulanySt.
`Alexandria, VA 22314
`
`By EFS-Web:
`
`Page 8
`
`Registered users of EFS-Web mayalternatively submit such correspondencevia the
`electronic filing system EFS-Web,at
`
`https://sportal .uspto.gov/authenticate/authenticateuserlocalepf.html
`
`EFS-Weboffers the benefit of quick submissionto the particular area of the Office that
`needsto act on the correspondence. Also, EFS-Web submissionsare “soft scanned”(i.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”
`process is complete.
`
`Any inquiry concerning this communicationor earlier communications from the
`
`Reexamination Legal Advisor or Examiner,or asto the status of this proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`/Joshua D Campbell/
`Primary Examiner, Art Unit 3992
`
`Cf
`
`

`

`Receipt date: 12/22/2010
`
`EXHIBIT 3
`
`90011398 - GAU: 3992
`PTO/SB/08b (07-09)
`Approvedfor use through 07/31/2012. OMB 0651-0031
`.
`U.S. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995. no persons are required to respond to a collection of information unless it contains a valid OMB control number.
`
`Complete if Known
`
`
` Substitute for form 1449/PTO
`
`
`
`
`[rimabae—~Jocreureniyrow
`
`=aim
`INFORMATION DISCLOSUR
`
`
`
`
`[Frstameaivener|onisioprerMOELLER
`STATEMENT BY APPLICAN
`
`
`
`[Baniartane egevesgresampbeli,voahue
`
`
`
`
`
`(Use as many sheets as necessary)
`
`
`
`Include nameof the author (in CAPITAL LETTERS),title of the article (when appropriate),title of
`the item (book, magazine,journal, serial, symposium, catalog, etc.), date, page(s), volume-issue
`, publisher, city
`and/or country where published.
`The ANSA Reference Manual, Architecture Projects Management Limite
`Advanced Networked SystemsArchitecture (March 1989)
`
`:
`
`Letwin, Inside OS/2, Microsoft Press, pp. 3-37, 41-84, 89-116, 151-168,
`251-281 (1988)
`
`02/17/2011
`Noshua Campbell
`Initial if reference considered, whether ornotcitation is in conformance with MPEP 609. Draw line through citation if not in confarmance and not
`*EXAMINER:
`considered. Inctude copyof this form with next communication to applicant.
`1 Applicant's unique citation designation number (optional). 2 Applicantis to place a check mark here if English language Translation is attached.
`This collection of information is required by 37 CFR 1.98. The information is required to obtain or retain a benefit by the public whichistofile (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to,take 2 hours to complete,including
`gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending uponthe individual case. Any comments on the
`amountof time you require to complete this form and/or suggestions for reducing this burden, should be sentto the Chief Information Officer, U.S. Patent and
`Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMSTO THIS ADDRESS. SEND TO:
`Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`if you need assistance in completing the form,call 1-800-PTO-9199 (1-800-786-9199) and select option 2.
`
`