`
`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.
`
`90/013,239
`
`
`
`
` FILING DATE
`
`05/14/2014
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`7593812
`
`GRCP.022015
`
`1705
`
`KLEIN,O'NEILL. & SINGH, LLP aee
`PAIR
`rTP
`IL.
`KLE
`16755 VON KARMAN AVENUE
`TARAE, CATHERINE MICHELLE
`SUITE 275
`IRVINE, CA 92606
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`04/21/2015
`
`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)
`
`

`

` UNITED STATES PATENT AND 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 CORRESPONDENCE ADDRESS)
`
`Erise IP, P.A.
`
`5600 GreenwoodPlaza Blvd.
`
`Suite 200
`
`GreenwoodVillage, CO 80111
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/013,239.
`
`PATENT NO. 7593812.
`
`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)
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 2
`
`The present application is being examined underthe pre-AlA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`This is a Final Office Action in the ex parte reexamination of claims 10-17 and 20
`
`of U.S. Pat. No. 7,593,812 to Obradovichetal. (“812”).
`
`No claims have been amended. Claims 10-17 and 20 are pending andrejected
`
`below.
`
`References Presented in Request and Relied Upon by Examiner
`
`e User Guide for Sony SkyMap Pro & SkyMapTraveler, printed June 1998
`
`(“SkyMap User Guide”);
`
`e
`
`“Etak SkyMap Navigation Products to Carry Sony Brand Name,” Business
`
`Wire, July 27, 1998 (“SkyMap Press Release”); and
`
`e
`
`“Human Factors Design Guidelines for Advanced Traveler Information
`
`Systems (ATIS) and Commercial Vehicle Operations (CVO),” U.S.
`
`Departmentof Transportation, Federal Highway Administration Publication
`
`No. FHWA-RD-98-057, Campbell et al., September 1998 (“Human Factors”).
`
`Responseto Arguments
`
`Patent Owner's (“PO”) argumentsfiled March 30, 2015 have beenfully
`
`considered, but are found unpersuasive. For ease of reference, within this Responseto
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 3
`
`Arguments, Examinerwill follow the same nomenclature of the references as PO
`
`(Remarksat6):
`
`
`
`In the Remarks, PO arguesthe following:
`
`1) that the Office Action improperly relies on the SkyMap Software’s “sale” date
`
`within the SkyMap Press Release instead of a publication date and that the SkyMap
`
`User Guide does nothave a printed publication date (Remarks at 6-14);
`
`2) that the SkyMap User Guide does not anticipate claims 10 or 12-17 (/d. at 14-
`
`17); and
`
`3) that the combination of the SkyMap User Guide and Human Factors does not
`
`render claims 11 or 20 obvious (/d. at 17-18).
`
`1) that the Office Action improperly relies on the SkyMap Software’s “sale” date
`
`within the SkyMap Press Release instead of a publication date andthat the
`
`SkyMap User Guide does not have a printed publication date
`
`In responseto this argument, Examiner respectfully disagrees. Page ii of the
`
`SkyMap User Guide is reproduced below. As indicated by the bottom circle, the
`
`SkyMap User Guide wasprinted in June 1998. The top circle identifies a notice to
`
`

`

`Application/Control Number
`Art Un : 3992
`
`90/013,239
`
`Page 4
`
`users on how they can order add
`
`iona
`
`| documentation or replacementparts for the
`
`SkyMap Software.
`
`Th
`
`is not
`
`ice inc
`
`ludes a company address and telephone number.
`
`Further, at the bottom of the page,
`
`the SkyMap User Guide
`
`Is Mar
`
`ked w
`
`th “P/N 3-050-
`
`006-01.” The label
`
`3
`
`“P/N,
`
`refers to
`
`part number
`
`and is a well-established business
`
`practice for un
`
`ique
`
`ly identifying a part
`
`icu
`
`lar part w
`
`thin a company.
`
`=
`
`
` RS]
`t
`Se
`Ne NALSBNE. EAS
`
`PLERS
`
`EOSSEaYS Th
`
`SPE
`
`te.
`
`3
`
`SEE
`
`SIRES ANE SURG
`
`&
`RHATIONS
`
`eeae=
`
`eo
`SAAS
`ss
`ee
`
`gee
`=
`
`
`
`
`
`
`
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 5
`
`Per MPEP 2128 l, “A referenceis proven to be a “printed publication”
`
`“upon a
`
`satisfactory showing that such document has been disseminated or otherwise made
`
`available to the extent that persons interested and ordinarily skilled in the subject matter
`
`or art, exercising reasonable diligence, can locateit.” In re Wyer, 655 F.2d 221, 210
`
`USPQ 790 (CCPA 1981) (quoting /.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738,
`
`743, 148 USPQ 537, 540 (SDNY 1966)).” The fact that the SkyMap User Guide was
`
`printed in June 1998, labeled with a company P/N andincluded contact information with
`
`a company address and phone numberfor usersinterested in ordering additional
`
`SkyMap User Guides, is sufficient evidence that the SkyMap User Guide was made
`
`available to the extent that persons interested and ordinarily skilled in the subject matter
`
`or art, exercising reasonable diligence, can locate it in June 1998.
`
`With regard to the SkyMap Press Release, Examiner notes that only the SkyMap
`
`User Guide wasrelied upon in the 35 USC § 102 and 103 claim rejections. Contrary to
`
`PO's allegations, Examiner has not asserted that the SkyMap User Guide was sold and
`
`therefore is a printed publication. (Remarks at 13) While there is sufficient evidence
`
`within the SkyMap User Guideitself to show that it is a printed publication, the SkyMap
`
`Press Release, which hasa printed publication date of July 27, 1998, was relied upon
`
`as additional supporting evidence to show when the SkyMap User Guide was
`
`accessible to persons interested in locating it. Since it is standard businesspractice for
`
`a software user guide to be made available with its corresponding software product, it
`
`follows that the SkyMap User Guide would have been made available around the same
`
`time that the SkyMap Software was made available. This is reinforced by pp. 9-18 of
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 6
`
`the SkyMap User Guide, which is an entire chapter dedicatedto installation instructions
`
`of the SkyMap Software. A user would need to have both the SkyMap Softwareas well
`
`as the SkyMap User Guideto install the product. The SkyMap Press Release reads,
`
`“Designed for Windows 95-compatible notebook PCs, both products were made
`
`available in the first quarter of 1998.” [emphasis added] Accordingly, the date of
`
`availability of the SkyMap Software being the first quarter of 1998 supports the assertion
`
`that the SkyMap User Guide, which included installation instructions for the SkyMap
`
`Software, was made available to the extent that persons interested and ordinarily skilled
`
`in the subject matter or art, exercising reasonable diligence, can locate it in June 1998.
`
`In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Databaseprintouts of
`
`abstracts which were not themselvesprior art publications were properly relied as
`
`providing evidence that the software products referenced therein were “first installed” or
`
`“released” more than one yearprior to applicant’s filing date.). [emphasis added]
`
`Therefore, Examiner has not improperly relied on a sale date to reject the claims
`
`under reexamination. Further, the evidence shows the SkyMap User Guideis a valid
`
`printed publication with a printed publication date more than one year prior to PO’s
`
`priority date.
`
`2) that the SkyMap User Guide does notanticipate claims 10 or 12-17
`
`In responseto this argument, Examiner respectfully disagrees. Specifically, PO
`
`arguesthat nothing in the SkyMap User Guide describes a feature where a user can
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 7
`
`establish a communications connection with a selected point of interest ("POI") that was
`
`suggested based on the user preference data (Remarksat 16).
`
`The claims nor the specification define what user preference data is. At best, the
`
`disclosure of ‘812 says, “...user preferences such aspreferred types of restaurants,
`
`shops, entertainments, etc.” (2:5-6 and 4:66-67) Fig. 3 of ‘812 showscategories of
`
`preferences such as restaurants, shopping, services and entertainment. Accordingly,
`
`the broadest reasonableinterpretation of user preferencedatain light of the
`
`specification of ‘812 is some type of user interest data. The SkyMap User Guide allows
`
`users to enter their preference data to search for points of interest (POI) (SkyMap User
`
`Guide at 32). Like the user preference data of '812, the preference data for POls in the
`
`SkyMap User Guideis also divided into categories such as restaurants and shopping
`
`(/d. at 29). The user can entertheir preference information such as category,
`
`subcategory, distance and name (/d. at 29).
`
`The specification of ‘812 is also silent as to what is meant by “suggesting” POls.
`
`In fact the word, suggest, is only found in the claims. At best, “suggested” POls
`
`appears to be a generatedlist of POls (812, 11:6-15 and 38-40; item 1103 in Fig. 9).
`
`Accordingly, the broadest reasonable interpretation of suggested POls in light of the
`
`specification of ‘812 is a generated list of POls. After the user enters their preference
`
`data, a list of POls that match the user’s preference data is displayed to the user
`
`(SkyMap User Guide at 33). Right-clicking on a POI displays the POI’s address and
`
`phone number(i.¢., connection data) and allows a userto set the POI as a waypointor
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 8
`
`add the POI to the user’s address book (/d. at 30 and 40). Once a POI is added to a
`
`user’s address book, the POI may be autodialed (/d. at 47).
`
`As such, Examiner submits the SkyMap User Guide does describe a feature
`
`where a user can establish a communications connection with a selected point of
`
`interest ("POI") that was suggested based on the userpreferencedata.
`
`Further, in support of his argument PO asserts that the telephone icon is only
`
`shown whenin Edit View mode of the Address Book function (Remarks at 16; SkyMap
`
`User Guide at 47). This argument is immaterial as the claims don't preclude use of "edit
`
`view mode"to establish communications with a POI; rather, the limitation concerned
`
`with establishing a communications connection recites, “an interface for allowing a user
`
`entry to cause a lookup of the connection data in the record to establish a
`
`communications connection with the selected point of interest.” The limitation only
`
`requires a "user entry" to cause a lookup... to establish a communications connection.
`
`This limitation is met by the citations in the SkyMap User Guide as discussed above.
`
`Additionally, PO is arguing limitations not claimed including a user selecting a
`
`point of interest and establishing a communications connection with the selected point
`
`of interest. Neither of these limitations is positively recited in the claims; rather the
`
`limitations argued are mere intended use. The specific claim language of system claim
`
`10 reads:
`
`-
`
`adisplay element for presenting thereon the plurality of points of interest, a user
`
`being allowed to select one ofthe plurality of points of interest, and
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 9
`
`-
`
`aninterface for allowing a user entry to cause a lookup of the connection data in the
`
`record to establish a communications connection with the selected pointof interest.
`
`In the above claim language, a user selection or entry at the display element is
`
`not positively recited (i.e., it does not actually occur); nor is a communications
`
`connection with a point of interest ever actually established. A recitation of the intended
`
`use of the claimed invention mustresult in a structural difference between the claimed
`
`invention and the prior art in order to patentably distinguish the claimed invention from
`
`the prior art.
`
`If the prior art structure is capable of performing the intendeduse, thenit
`
`meets the claim. As shown above, the SkyMap User Guide is capable of performing the
`
`intended use.
`
`3) the combination of the SkyMap User Guide and Human Factors
`
`does not render claims 11 or 20 obvious
`
`In responseto this argument, Examiner respectfully disagrees.
`
`In support of his
`
`argument PO asserts that Human Factors doesn’t indicate that POls are displayed in
`
`suggestion based on previously received inputs of user data (Remarksat 17).
`
`However, Examinerdid not rely on Human Factors for that teaching. As outlined in the
`
`rejection of claim 11 as well as discussed above, the SkyMap User Guide teaches
`
`displaying POls based on user preference data. The SkyMap User Guide also displays
`
`POls based on userpreference data indicative of a certain radius in miles (/d. at 32).
`
`SkyMap User Guidefails to explicitly disclose that the radius is in relation to a planned
`
`route. Human Factors wasrelied on to teach this. Human Factors discloses displaying
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 10
`
`points of interests to a driver within a predetermined radius surrounding a route (Human
`
`Factors at 5-14).
`
`SkyMap User Guide and Human Factors are analogous referencesasthey are in
`
`the same field of vehicle navigation systems. Both discuss receiving user
`
`preference/interest data as well as displaying POls to the user (SkyMap User Guideat
`
`29-33; Human Factors at 5-14 and 5-15). Accordingly, it would have been obvious to a
`
`person of ordinary skill in the art to modify the teachings of the SkyMap User Guide,
`
`which already teach displaying POls based on user preference data indicative of a
`
`certain radius in miles, so that the radius is in relation to a user's planned route, as
`
`taught by Human Factors.
`
`It would have been obvious because suggesting POls based
`
`on their locations in relation to a planned route providesdrivers with the flexibility to
`
`choose whetheror not to adjust their route and travel plans to include a specific POI
`
`(Human Factors, 5-14).
`
`Therefore, the combination of SkyMap User Guide and Human Factors as
`
`discussed in the rejection does render claims 11 and 20 obvious.
`
`In conclusion, POs arguments have beenfully considered, but are not found
`
`persuasive. The rejections of claims 10-17 and 20 are maintained and provided below.
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 11
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one yearprior to the date of application
`for patent in the United States.
`
`Claims 10 and 12-17 are rejected under pre-AlA 35 U.S.C. 102(b) as being
`
`anticipated by “Sony SkyMap™ User Guide: SkyMap™ Pro and SkyMap™Traveler,”
`
`printed June 1998 (“SkyMap”).
`
`The article, “Etak SkyMap Navigation Products to Carry Sony Brand Name,”
`
`Business Wire, July 27, 1998 serves as further evidence to show when the SkyMap
`
`User Guide was madeavailable to the public.
`
`As per claim 10, SkyMap discloses a navigation system (pp. 4 and 9, the
`
`navigation system includes a notebook computerwith the SkyMap application installed
`
`and CD-ROMS), comprising:
`
`storage for storing records associated with different points of interest (pp. 4-5,
`
`and 29-32, a Points of Interest (POI) directory may be queried and a POI toolbar may
`
`be used to access POls. POls are stored with street maps and street maps are stored
`
`on CD-ROMsand/or the computer harddisk.);
`
`a device for receiving user preference data (pp. 32 and 63, the notebook
`
`computer with the installed Skymap application is the device that receives user
`
`preference data:
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 12
`
`OTE
`
`Finding Paiste af Inserest
`
`IMPOSTANT: Step. &.
`
`
`
`Shay & iGprionst youre lsokiig tina. specitis Pod sper tieAret tiewfewetes anf tes
`as br Bas Steg WS Flak.
`
`Step 7.
`
`
`);
`
`a processor configured to suggest a plurality of points of interest based on the
`
`user preference data (pp. 29-33, the notebook computerprocessor is configured to
`
`suggest POls based on the category selected by the user:
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 13
`
`4
`
`Step %.
`
`(Optional) Select your choice from the Net
`SBS
`as
`and click ©
`1
`
`:
`
`
`Step.0, (Optional) Select your choice
`list and clickayPn
`
`
`
`
`
`a display element for presenting thereon the plurality of points of interest, a user
`
`being allowed to select oneof the plurality of points of interest (pp. 29-33, POI icons are
`
`displayed on the userinterface. The user can right-click on the POI icon for more
`
`detailed information about the POI:
`
`ACCESSING POY Isromeanon
`
`
`ScSocal
`
`
`
`
`
`a mechanism for retrieving a record associated with a user selected point of
`
`interest, the record containing at least connection data (p. 30, As shownin the previous
`
`limitation, POI information includes a telephone number(i.¢., connection data).); and
`
`an interface for allowing a user entry to cause a lookup of the connection data in
`
`the record to establish a communications connection with the selected point of interest
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 14
`
`using the connection data (pp. 30 and 47, A user can look up the telephone numberof a
`
`POI in order to call the POI. When a modem is connected to a SkyMap-enabled laptop,
`
`a user can select to establish a phone call with an entry in the Address Book, e.g., with
`
`a suggested POI added to the Address Book:
`
`PHONE DIALER We Mispend Suvag sow
`
`Examiner notes that the part of the limitation that reads, “to establish a
`
`communications connection with the selected point of interest using the connection
`
`data,” is mere intended use as establishing a communications connection with the POI
`
`is neverpositively recited. A recitation of the intended use of the claimed invention
`
`mustresult in a structural difference between the claimed invention andthe prior art in
`
`order to patentably distinguish the claimed invention from the prior art.
`
`If the prior art
`
`structure is capable of performing the intended use, then it meets the claim.).
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 15
`
`As per claim 12, SkyMap discloses the system of claim 10, wherein the plurality
`
`of points of interest include goodsor service providers (p. 29, POls include goods or
`
`service providers:
`
`POINTS GF INTEREST
`
`
`
` Dardghag Hots
`Bemrice Basks
` Barks &#
`
`
`
`Shappiag |
`
`Tourist dntiacaiogns fstysnscar
`MS; HraeMatiotas, Maen anal Pismreiy dis
`WHS
`
`¢ heome
`forvetie
`tee are’
`mh
`&i
`Ave Sepetees Csas carton
`TOCA SERS, Sd fesady ARES
`
`Aie Se. Badd Crscunarect
`
`As perclaim 13, SkyMap discloses the system of claim 12, wherein the goodsor
`
`service providers include a restaurant (/d. at 29).
`
`As per claim 14, SkyMapdiscloses the system of claim 10, wherein the user
`
`entry includes a user selection of an option provided by the system (/d. at 30, 33 and
`
`47, The user can select a POI provided by the system and then select further options
`
`related to the POI such as selecting the POI as a waypoint, adding the POI to the user’s
`
`address book andcalling the POI from the address book.).
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 16
`
`As per claim 15, SkyMap discloses the system of claim 14, wherein the option is
`
`presented on the display element (/d. at 30 and 47, see screenshots of display elements
`
`in claim 10).
`
`As per claim 16, SkyMap discloses the system of claim 10, wherein the
`
`connection data includes a telephone number (/d. at 30).
`
`As per claim 17, SkyMap discloses the system of claim 16, wherein the
`
`communications connection includes a telephonic connection (/d. at 47).
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 17
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections setforth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of thistitle, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`Claims 11 and 20 are rejected underpre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over SkyMap and “Human Factors Design Guidelines for Advanced
`
`Traveler Information Systems (ATIS) and Commercial Vehicle Operations (CVO),” U.S.
`
`Departmentof Transportation, Federal Highway Administration Publication No. FHWA-
`
`RD-98-057, Campbell et al., September 1998 (“Human Factors”).
`
`As per claim 11, SkyMap discloses the system of claim 10, wherein the
`
`processor is further configured to plan a route to a desired destination (p. 34, A route
`
`can be planned betweenuser-identified travel points.).
`
`While SkyMapdiscloses searching for POls within a certain distance (p. 32),
`
`SkyMap doesnot expressly disclose the plurality of points of interest are suggested
`
`based on locations thereofin relation to the planned route. Human Factors discloses
`
`this at 5-14, “Point of interest information refers to information presented to the driver
`
`that identifies scenic routes, historical sites, national parks, and recreational areas
`
`within a predetermined radius surrounding the route. Having this information will allow
`
`drivers to choose whether or not they wish to adjust their route and travel plans to
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`include a specific point of interest.”
`
`Page 18
`
`Sitiemuth: Banaipisof Penseaiing Baked ot Lannie Ladieecian
`
`ine
`SieseSatinetsRte
`Daeantous or Spree!feDENRA:ake
`
`AAR?graHae LaTOPRISEER:
`RSIS AFAen SMEARS sect
`
`Rivkin oThe RARE
`
`) .
`
`At the time of the invention, it would have been obvious to a person of ordinary
`
`skill in the art to have the navigation system suggest POls basedon their locations in
`
`relation to the planned route as doing so providesdrivers with the flexibility to choose
`
`whetheror not they wish to adjust their route and travel plans to include a specific point
`
`of interest (Human Factors, 5-14).
`
`As per claim 20, SkyMap does not expressly disclose the system of claim 10,
`
`wherein the interface includes an audio input. Human Factorsdisclosesthis at 9-8,
`
`“Drivers should have some methodfor entering this type of information (e€.g., phone, key
`
`pad, touch screen, voice input, etc.”).
`
`At the time of the invention, it would have been obvious to a personof ordinary
`
`skill in the art to have the navigation system include audio input as doing so provides
`
`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 19
`
`users with an additional meansof interacting with the navigation system, thereby
`
`enhancing the user-friendliness of the system’s interface.
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
`
`Extensionsof time under 37 CFR 1.136(a) do not apply in reexamination
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`proceedings. The provisions of 37 CFR 1.136 apply only to "an applicant” and notto
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`parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR
`
`1.550(a), it is required that reexamination proceedings "will be conducted with special
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`dispatch within the Office.”
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`Extensions of time in reexamination proceedings are provided for in 37
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`CFR 1.550(c). A request for extension of time must befiled on or before the day on
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`which a responseto this action is due, and it must be accompanied bythe petition fee
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`set forth in 37 CFR 1.17(g). The merefiling of a request will not effect any extension of
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`time. An extension of time will be granted only for sufficient cause, and for a reasonable
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`time specified.
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`The filing of a timely first responseto this final rejection will be construed as
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`including a request to extend the shortenedstatutory period for an additional month,
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`which will be granted evenif previous extensions have been granted.
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`In no event,
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`however, will the statutory period for response expire later than SIX MONTHS from the
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`mailing date of the final action. See MPEP § 2265.
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`

`

`Application/Control Number: 90/013,239
`Art Unit: 3992
`
`Page 20
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`Future Correspondence
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`If attempts to reach Examiner Michelle Tarae by telephone at 571-272-6727 are
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`unsuccessful, the examiner’s supervisor, Woo Choi can be reached on 571-272-4179.
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`All correspondencerelating to this ex parte reexamination proceeding should be
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`directed:
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`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner of Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`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
`
`nitos://efs usoto.aqov/efile/mvyportal/efs-reqistered
`
`EFS-Weboffers the benefit of quick submission to the particular area of the
`Office that needs to act on the correspondence. Also, EFS-Web submissions are "soft
`scanned”(i.e., electronically uploaded) directly into the officialfile for the reexamination
`proceeding, which offers parties the opportunity to review the contentof their
`submissions after the "soft scanning" process is complete.
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`Anyinquiry concerning this communication should be directed to the Central
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`Reexamination Unit at (5671) 272-7705.
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`

`

`Page 21
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`Application/Control Number: 90/013,239
`Art Unit: 3992
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`Signed:
`
`/C. Michelle Tarae/
`Primary Examiner, Art Unit 3992
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`Conferees:
`
`/D.M.H./, PE AU3992
`
`IWHC/
`SPRSArt Unit 3992
`
`

`

`10. CT Other: cc: Requester (if third party
`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/013,239
`
`Examiner
`MICHELLE TARAE
`
`Patent Under Reexamination
`7593812
`
`Art Unit
`
`3992
`
`AIA (First Inventor to
`File) Status
`No
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
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`aX Responsive to the communication(s)filed on 3/30/2015 .
`LIA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`b. BX] This action is made FINAL.
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`c._] A statement under 37 CFR 1.530 has not been received from the patent owner.
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`A shortened statutory period for response to this action is set to expire 2 month(s) from the mailing date ofthis letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordancewith this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified aboveis less than thirty (80) days, a response within the statutory minimum ofthirty (30) days
`will be considered timely.
`
`Part]
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1.
`2.
`
`CL] Notice of References Cited by Examiner, PTO-892.
`[_]
`Information Disclosure Statement, PTO/SB/08.
`
`CL]
`3.
`4.0
`
`Interview Summary, PTO-474.
`.
`
`OOOUOWODORR
`
`Part Il
`
`ta.
`
`1b.
`
`2.
`
`3 4 5
`
`6 7 8
`
`.
`
`SUMMARY OF ACTION
`
`Claims 70-17 and 20 are subject to reexamination.
`
`Claims 7-9, 78 and 19 are not subject to reexamination.
`
`Claims ____—s have been canceled in the present reexamination proceeding.
`
`Claims sare patentable and/or confirmed.
`
`Claims 10-17 and 20 are rejected.
`
`Claims ___s are objectedto.
`
`The drawings, filedon__—_—s are acceptable.
`The proposed drawing correction, filed on
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`has been (7a) C approved (7b)C] disapproved.
`
`Acknowledgment is made ofthe priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`
`[1 Some* c)[ None
`a) CAI b)
`1 £] beenreceived.
`
`2 (1 not been received.
`
`of the certified copies have
`
`3 LJ beenfiled in Application No.
`4 CL] beenfiled in reexamination Control No.
`5 CL] beenreceived by the International Bureau in PCT application No.
`
`* See the attached detailed Office action foralist of the certified copies not received.
`9. L] Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D.
`11, 453 O.G. 213.
`
`U.S. Patent and Trademark Office
`
`requester)
`
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20150408
`
`