`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 223134450
`www.usplolgnv
`
`90/009,524
`
`08/1 7/2009
`
`6193520
`
`ADCSZO
`
`6819
`
`56°“
`
`759°
`
`““4””
`
`John Whitaker
`Whitaker Law Group
`755WINSLOW WAY EAST
`Suite 100
`BAINBRIDGE ISLAND, WA 98110
`
`’
`
`DATE MAILED: 11/14/2009
`
`Please find below and/or attached an Office communication concerning this, application or proceeding.
`
`TO—90C R .l0/03
`( ev
`
`)
`
`P
`
`Petitioners Ex. 1017 Page 1
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`Petitioners Ex. 1017 Page 1
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`

`

`Control No.
`
`90/009, 524
`Examiner
`
`
`
`William H. Wood
`
`Patent Under Reexamination
`
`
`
`6193520
`Art Unit
`
`3992
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 17 August 2009 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.
`
`
`
`
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`
`
`
`
`
` Attachmentsz' a)|:l PTO-892,
`c)[:] Other:
`hm PTO/SB/O8,
`
`1. E The request for ex parte reexamination is GRANTED.
`RESPONSE. TIMES ARE SET AS FOLLOWS:
`
`
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`
`
`
`
`
`
`
`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 does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`
`
`
`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 MONTH from the mailing date of this communication (37
`CFR 1. 515(0)) 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.
`
` a) [I by Treasury check or,
`
`
`b) [:I by 'credit to Deposit Account No.
`, or
`
`2. CI The request for ex parte reexamination is DENIED.
`
`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`
`
`
`c) E] by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`
`
`/Sam Rimell/
`Primary Examiner, Art Unit 3992
`
`‘
`
`_
`/William H. Wood
`Primary Examiner, An Unit 3992
`
`cczReouester
`ifthird art
`reuester
`US. Patent and Trademark Office
`
`‘
`
`PTOL-471 (Rev. 08-06)
`
`Office Action in Ex Pane Reexamination
`
`Part of Paper No. 20091113
`
`Petitioners Ex. 1017 Page 2
`
`Petitioners Ex. 1017 Page 2
`
`

`

`Application/Control Number: 90/009,524
`Art Unit: 3992
`
`'
`
`'
`
`Page 2
`
`DECISION ON REQUEST FOR REEXAMINATION
`
`Reexamination (Ex Pan‘e) has been requested by a patent owner for claims 1, 2,
`
`4, 5, 7, 8, 9, 11, 12, 14, 15, 19 and 21 of US. Patent 6,193,520 to Okamoto (herein
`
`Okamoto) which issued on 02/27/2001.
`
`A substantial new question of patentability affecting claims 1, 2, 4, 5, 7, 8, 9, 11,
`
`12, 14, 15, 19 and 21 of US. Patent 6,193,520 to Okamoto is raised by the request for
`
`- Ex~Parte reexamination filed 08/17/2009.
`
`Request Established References
`
`The request argues the following patents and/or printed publications provide
`
`teachings relevant to the patent claims requested for reexamination:
`a) Kato (JP 2-113463), laid-open 01/14/1992. (herein Kato)
`
`b) Tsumura (USPN 5,547,202), issued 08/20/1996, filed 12/30/1994. (herein
`
`Tsumura)
`
`c) Kaniwa (USPN 5,699,370), issued 12/16/1997, filed 02/17/1995. (herein
`
`_
`'
`Kaniwa)
`d) Chernow et'al. (USPN 4,999,806), issued 03/12/1991, filed 09/04/1987
`(herein Chernow)
`-
`.
`
`e) Nakagawa et al. (USPN 4,922,420), issued 05/01/1990, filed 07/23/1987.
`
`(herein Nakagawa)
`
`Petitioners Ex. 1017 Page 3
`
`Petitioners Ex. 1017 Page 3
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`

`

`
`
`Application/Control Number: 90/009,524
`
`Art Unit: 3992
`
`'
`
`Page 3
`
`‘
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`f) Hornbuckle (USPN 5,497,479), issued 03/05/1996, filed 02/28/1995.
`
`(herein Hornbuck/e)
`
`g) Bakoglu (USPN 5,632,681), issued 05/27/1997, filed 03/07/1995. (herein
`
`Bakoglu)
`
`Prosecution History Summary
`
`The Okamoto patent (US. Patent 6,193,520) issued from US. Application
`
`09/109,784 which was filed on filed 07/02/1998 as a continuation in part (of US.
`Application 08/642,560 (now US. Patent 5,775,995) filed 05/03/1996 as a division of
`
`US. Application 08/555,400 (now. US. Patent 5,735,744) filed 11/09/1995 as a
`
`continuation in part of US. Application 08/232,862 (now US. Patent 5,489,103) filed
`
`04/25/1994 and which claims foreign priority to‘5-108303 filed 05/10/1993. The
`
`following is a summary of relevant portions of the prosecution history of application
`
`09/109,784.
`
`The following summary is primarily focused on the claims relevant to the
`
`reexamination request.
`
`Issued claim 1 is representative:
`
`A communication system for transmitting at least one of the program, the
`data, and a combination of the program and data from a host facility to a
`communication terminal device, said communication terminal device comprising:
`an input device for inputting instructions to execute the program or to
`process the data,
`receiving means for receiving one of the program, the data and a -
`combination of the program and data as sent out from said host facility,
`storage means for storing the program, the data, or a combination of the
`program and data received by said receiving means,
`
`Petitioners Ex. 1017 Page 4
`
`Petitioners Ex. 1017 Page 4
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`

`

`Application/Control Number: 90/009,524
`Art Unit: 3992
`‘
`
`. Page 4
`
`executing means for executing the program stored in said storage means
`or executing data processing by using the data stored in said storage means, in
`accordance with instructions from said input device,
`~
`clock means for keeping a predetermined time period after said receiving
`means receives the transmission, and interference means for interfering with
`execution of said executing means when said clock means counts said
`predetermined time period; and
`said host facility comprising:
`storage means for storing at least one of the program, the data, and a
`combination of the program and data tbgether with the duration data indicative of
`the predetermined time period to be counted by said clock means, and
`sending out means for sending out at least one of the program, the data,
`and a combination of the program and data together with the duration data stored
`in said storage means to said communication terminal device.
`
`' The subject matter of the patent under reexamination (Okamoto 6,193,520)
`claims 1, 2, 4, 5, 7, 8, 9, 11, 12, 14, 15, 19 and 21 is given priority back to the Japanese
`
`patent application 05-108303 with a critical data of May 10, 1993 (05/10/1993).
`
`Prosecution of 6,193,520 (OS/109,784). Non-Final Office Action (05/09/2000):
`
`rejected some application claims under doctrine of double patenting over claims 1-3 of
`
`patent 5,775,995; and objected to some application claims as being allowable if
`
`rewritten in independent form. A Terminal Disclaimer was filed 08/04/2000. Notice of
`
`Allowance (08/25/2000) allowed all the application claims.
`
`‘ Prosecution of 5,775,995 (OS/642,560). Non-Final Office Action (02/26/1997)
`rejected the claims under 35 U.S'.C. 112 and the doctrine of double patenting over
`
`claims 1—20 of copending Application 08/555,400. A Terminal Disclaimer was filed.
`
`Notice of Allowance (01/26/1998) allowed the three pending claims.
`
`Petitioners Ex. 1017 Page 5
`
`Petitioners Ex. 1017 Page 5
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`

`

`Application/Control Number: 90/009,524
`Art Unit: 3992
`
`'
`
`_
`
`i
`
`‘
`
`Page 5
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`Prosecution, of 5,735,744 (08/555,400). Non-Final Office Action (04/04/1997)
`
`rejected the claims under 35 U.S.C. 112. Notice of Allowance (10/30/1997) allowed the
`
`three pending claims.
`
`Prosecution of 5,489,103 (08/232,862). Non-Final Office Action (03/31/1995):
`
`rejected some of the claims under 35 U.S.C. 102(a) as being anticipated by Teshima
`
`(USPN 5,273,288); rejected some of the claims'under 35 U.S.C. 102(b) as being
`
`anticipated by Pearson (USPN 5,018,726); and rejected some of the claims under 35
`
`U.S.C. 103(a) as being unpatentable over Teshima or Pearson, either one taken in
`combination with Tsumura (USPN 5,250,747). Applicant’s Response (06/22/1995):
`
`cancelled the pending claims and added new pending claims, including a limitation to a
`
`“charging means"; argued the claims recite a terminal device connected via
`
`communication lines to a host facility so that game data is transmitted from the host
`
`facility; argued the claims recite game data being deleted in a predetermined time after
`
`the game data was transmitted from the host facilityto the terminal device; argued
`
`Teshima disclosed game terminals communicating; argued in Pearson game data
`
`collected at a central controller; and argued Tsumura does not disclose deletion of data
`
`in a predetermined time period after the data was received from the host computer.
`
`Notice of Allowance (08/16/1995) allowed newly added pending claims.
`
`Substantial New Question of the Request
`
`Petitioners Ex. 1017 Page 6
`
`Petitioners Ex. 1017 Page 6
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`

`

`Application/Control Number: 90/009,524
`Art Unit: 3992
`
`Page 6
`'
`
`.
`
`The requester asserts a substantial new question of patentability with respect to -
`
`issued claims 1, 2, 4, 5, 7, 8, 9, 11, 12,14, 15, 19 and 21 of US. Patent 6,193,520
`
`(Okamoto).
`
`Since Requester did not request reexamination of claims 3, 6, 10, 13, 16-18 and
`
`20 and did not assert the existence of a substantial new question of patentability (SNQ)
`
`for such claims (see 35 'U.S.C. §311 (b)(2); see also 37 CFR 1.915b and 1.923), such
`
`claims will'not be reexamined. This matter was squarely addressed in Sony Computer
`
`Entertainment America Inc., et al. v. Jon W Dudas, Civil Action No. 1:05CV1447 (E.D.
`
`Va. May 22, 2006), Slip Copy, 2006 WL 1472462. The District Court upheld the Office's
`
`discretion to not reexamine claims in an inter partes reexamination proceeding other
`
`than those claims for which reexamination had specifically been requested. The Court ‘
`
`stated:
`
`review of each and
`“To be sure, a party may seek, and the PTO may grant,
`every claim of a patent. Moreover, while the PTO in its discretion may review
`claims for which ...... review was not requested, nothing in the statute compels it
`to do so. To ensure that the PTO considers a claim for ..... review,
`311 b 2
`requires that the party seeking reexamination demonstrate why the PTO should
`reexamine each and every claim for which it seeks review. Here, it is undisputed
`that SOny did not seek review of every claim under the '213 and '333 patents.
`Accordingly, Sony cannot now claim that the PTO wrongly failed to reexamine
`claims for which Sony never requested review, and its'argument that AIPA‘
`compels a contrary result is unpersuasive."
`
`Only claims 1, 2, 4, 5, 7, 8, 9, 11, 12, 14, 15, 19 and 21 have been evaluated for this
`
`issue and only as the SNQ’s specify (addressed in the below analysis of the prior art).
`
`Note MPEP 2243, which states:
`
`Petitioners Ex. 1017 Page 7
`
`Petitioners Ex. 1017 Page 7
`
`

`

`Application/Control Number: 90/009,524
`
`-
`
`.
`
`Page 7
`
`Art Unit: 3992
`
`"The Office’s determination in both the order for reexamination and the
`examination stage of the reexamination will generally be limited solely to a review
`of the claim(s) for which reexamination was requested. If the requester was
`interested in having all of the claims reexamined, requester had the opportunity
`to include them in its request for reexamination. However, if the requester chose
`not to do so, those claim(s) for which reexamination was not requested will
`'
`generally not be reexamined by the Office. It is further noted that 35 U.S.C. 302
`requires that “[t]he request must set forth the pertinency and manner of applying
`cited prior art to every claim for which reexamination is requested." If the
`requester fails to apply the art to certain claims, then the requester is not
`statutorily entitled to reexamination of such claims."
`
`Ka—to
`
`Following is a discussion of the proposed prior art:
`.
`Kato (JP 2-113463) is new prior art. The requester asserts (Request: page 2)
`V Kato discloses: an online software “vending machine” for rent-by—the—hour basis of
`
`software from developer to user (Kato: page 2, lines 5-10 and page 6, lines 9—24).
`
`These disclosures Constitute teachings pertinent to claim limitations: “transmitting
`at least one of the program, the data, and a combination of the program and data stored
`in a databaSe provided in a distribution center to a requested communication terminal
`
`device via communication lines”; “storing the transmitted program, the data, and the
`
`combination of the program data in a memory provided in the communication terminal
`device"; “enabling execution of the program or data processing according to the
`program, the data, and the combination of the program and data in the memory”; and
`
`' “interfering with execution”. As revealed in the above “Prosecution History Summary”,
`
`these limitations were important to the allowance of Okamoto (USPN 6,193,520).
`
`Petitioners Ex. 1017 Page 8
`
`Petitioners Ex. 1017 Page 8
`
`

`

`Application/Control Number: 90/009,524
`
`Page 8
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`Art Unit: 3992
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`In light of these teachings, Kato is found to provide new prior art teachings that
`
`would be considered important to a reasonable examiner in evaluating the patentability
`
`of claims 1, 2, 4, 5, 7, 8, 9,11, 12 and 14. These teachings were not previously
`
`considered in the record of US. Patent 6,193,520 and are not merely cumulative to
`
`. prior art already considered by the Office. Accordingly, Kato (JP 2-1-13463) raises a
`
`substantial new question of paten‘tability with respect to claims 1, 2, 4, 5, 7, 8, 9, 11, 12
`
`and 14.
`
`Tsumura
`
`Tsumura (USPN 5,547,202) is new prior art: The requester asserts (Request:
`
`pages 2-3) Tsumura discloses: game data is transferred by a transmitting device to a
`
`receiving device (Tsumura: column 5, lines 3—17); and “interrupt processing” to interrupt
`
`game play (Tsumura: column 6, line 54).
`
`These disclosures constitute teachings pertinent to claim limitations: a
`
`communication terminal receiving and storing a program transmitted from a host facility;
`communication terminal executing the program; communication terminal interface
`7
`
`means that blocks’ based on a predetermined time period, and host facility sending the
`
`transmitted program and predetermined usage duration data. As revealed in the above .’
`“Prosecution History Summary”, these limitations were important to the allowance of
`
`Okamoto (USPN 6,193,520).
`
`In light of these teachings, Tsumura is found to provide new prior art teachings
`
`that would be considered important to a reasonable examiner in evaluating the ‘
`
`Petitioners Ex. 1017 Page 9
`
`Petitioners Ex. 1017 Page 9
`
`

`

`Application/Control Number: 90/009,524
`
`,
`
`Page 9
`
`Art Unit: 3992
`
`patentability of claims 1, 5, 7, 8, 12, 14, 15, 19 and 21. These teachings were not
`
`previously considered in the record of US. Patent 6,193,520 and are not merely
`
`cumulative to prior art already considered by the Office for the claims of US. Patent
`
`6,193,520. Accordingly, Tsumura (USPN 5,547,202) raises a substantial new question
`
`of patentability with respect to claims 1, 5, 7, 8, 12, 14, 15, 19 and 21.
`
`m
`
`Kaniwa (USPN 5,699,370) is new prior art. The requester asserts (Request:
`
`pages 3-4) Kaniwa discloses: a system for renting software (Kaniwa: column 2, line 23);
`
`including a “deadline signal” into information that is recorded to indicate a deadline at
`which the output of a main information signal is “cut off’ (Kaniwa: column 5, lines 35—
`
`46).
`
`These discleures constitute teachings pertinent to claim limitations: a
`
`communication terminal receiving and storing a. program transmitted from a host facility;
`
`communication terminal executing the program; host facility sending the transmitted
`
`program and predetermined usage duration data; and “interfering with execution”. As
`
`revealed in the above “Prosecution History Summary”, these limitations were important
`
`to the allowance Of Okamoto (USPN 6,193,520).
`
`In light of these teachings, Kaniwa is found to provide new prior art teachings that
`
`would be considered important to a reasonable examiner in evaluating the patentability.
`
`of claims 1, 5, 7, 8, .12 and 14. These teachings were not previously considered in the
`
`record of US. Patent 6,193,520 and are not merely cumulative to prior art already
`
`Petitioners Ex. 1017 Page 10
`
`Petitioners Ex. 1017 Page 10
`
`

`

`Application/Control Number: 90/009,524
`
`Page 10
`
`Art Unit: 3992
`
`considered by the Office for the claims of US. Patent 6,193,520. , Accordingly, Kaniwa
`
`(USPN 5,699,370) raises a substantial new question of patentability with respect to
`
`claims 1, 5, 7, 8, 12 and 14.
`
`m C
`
`'
`hernow (USPN 4,999,806) is new prior art. The requester asserts (Request:
`page 4) Chernow discloses: leasing or selling programs/software (Chernow: column 2’,
`lines 21-36); and electronic payment information coming from the purchaser (Chernow:
`
`column 2, lines 50-53). Further, Chernow discloses: transmitting and storing of the
`
`purchased program (Chernow: column 3, lines 9-28).
`
`These disclosures constitute teachings pertinent to claim limitations: “transmitting '
`
`at least one of the program, the data, and a combination of the program and data stored
`
`in a database provided in a distribution center to a requested communication terminal
`
`device via communication lines”; “Storing the transmitted program, the data, and the
`
`combination of the program data in a memory provided in the communication terminal
`
`device”, “enabling execution of the program or data processing according to the
`
`program, the data, and the combination of the program and data in the memory”; and
`
`“charging device”. As revealed in the above “Prosecution History Summary”, these
`
`limitations were important to the allowance‘ of Okamoto (USPN 6,193,520).
`
`In light of these teachings, .Chernow is found to provide new prior art teachings '
`
`-
`
`that would be considered important to a reasonable examiner in evaluating the
`
`patentability of claims 8, 11, 12 and 14. These teachings were not previously
`
`"Petitioners Ex. 1017 Page 11
`
`Petitioners Ex. 1017 Page 11
`
`

`

`Application/Control Number: 90/009,524
`
`Page 11
`
`Art Unit: 3992
`
`considered in the record of US. Patent 6,193,520 and are not merely cumulative to
`
`prior art already considered by the Office. Accordingly, Chernow (USPN 4,999,806)
`
`raises a substantial new question of patentability with respect to claims 8, 11, 12 and
`
`14.
`
`Nakagawa
`
`Nakagawa (USPN 4,922,420) is new prior art. The requester asserts (Request:
`
`pages 4-5) Nakagawa discloses: loading differing software/games without interchange
`
`of stOrage media (Nakagawa: column 2, lines 3-55); and controlling game usage based
`upon money and time (Nakagawa: column 2, lines 31-40). Further, Nakagawa
`
`discloses: the game system including a modem and an eXpansion I/O connector
`
`(Nakagawa: column 4, lines 18-21); money charging techniques (Nakagawa: column
`
`10, lines 59-61); and transferring dataiNakagawa: column 7, lines 15-21; column 8,
`
`lines 64-68; figures 3B and 4B, step S19).
`
`These disclosures constitute teachings pertinent to claim limitations: “transmitting
`at least one of the program, the data, and a combination of the program and data stored
`
`in a database provided in a distribution center to a requested communication terminal
`
`device via communication lines"; “storing the transmitted program, the data, and the
`
`combination of the program data in a memory provided in the communication terminal
`
`device"; “enabling execution of the program or data processing according to the
`
`program, the data, and the combination of the program and data in the memory”; and
`
`' Petitioners Ex. 1017 Page 12
`
`Petitioners Ex. 1017 Page 12
`
`

`

`Application/Control Number: 90/009,524
`
`Page 12
`
`Art Unit: 3992
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`“interfering with execution”. As revealed in the above “Prosecution History Summary”,
`
`these limitations were important to the allowance of Okamoto (USPN 6,193,520).
`
`In light of these teachings, Nakagawa is found to provide new prior art teachings .
`
`that would be considered important to a reasonable examiner in evaluating the
`
`patentability of claims 8, 9, 12 and 14. These teachings were not previously considered
`
`in the record of US. Patent 6,193,520 and are not merely. cumulative to prior art already
`
`considered by the Office. Accordingly, Nakagawa (USPN 4,922,420) raises a
`
`substantial new question of patentability with respect to claims 8, 9, 12 and 14.
`
`Hornbuckle
`
`Hornbuckle (USPN 5,497,479) is new prior art. The requester asserts (Request:
`
`page 5) Hornbuckle discloses: a network of computers for settling electronic payments
`
`for product purchase (Hornbuckle: column 2, line 55 to column 3, line 12). Further,
`
`Hornbuckle discloses: the network of computers includes merchant computers and
`
`buyer computers for product purchase (Hornbuckle: column 3, lines 15-25); and a
`
`system for billing for software downloads and usage (Hornbuckle: abstract).
`
`These disclosures constitute teachings pertinent to claim limitations: “transmitting
`at least one of the program, the data, and a combination of the program and data stored
`
`in a database provided in a distribution center to a requested communication terminal
`
`device via communication lines”; "storing the transmitted program, the data, and the
`
`combination of the program data in a memory provided in the communication terminal
`H. H
`device , enabling execution of the program or data processing'according to the
`
`
`
`Petitioners Ex. 1017 Page 13
`
`Petitioners Ex. 1017 Page 13
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`

`

`Application/Control Number: 90/009,524
`Art Unit: 3992
`
`*
`
`'
`
`Page 13
`'
`
`program, the data, and the combination of the program and data in the memory”; and
`
`”interfering with eXecution" for software product (software and/or data) usage. As
`
`revealed in the above “Prosecution History Summary", these limitations were important
`
`to the allowance of Okamoto (USPN 6,193,520).
`
`In light of these teachings, Hornbuck/e is found to provide new prior art teachings
`that would be considered important to a reasonable examiner in evaluating the
`
`patentability of claims 1, 5, 8 and 11. These teachings were not previously considered
`inthe record of US. Patent 6,193,520 and are not merely cumulative to prior art already
`considered by the Office. Accordingly, Hornbuck/e (USPN 5,497,479) raises a
`
`substantial new question of patentability with respect to claims 1, 5, .8 and 11.
`
`‘Bakog/u
`
`Bakog/u (USPN 5,632,681) is new prior art. The requester asserts (Request:
`
`pages 5—6) Roskowski discloses: a system for renting video game software for a pre-
`
`determined number of video frames and protecting programs from piracy '(Bakog/u:
`
`column 1, lines 59-67).
`
`However, Bakog/u fails to overcome Okamoto’s (USPN 6,193,520) priority date '
`
`of 05/1011993.
`
`In light of these determinations, Bakog/u is not found to provide new prior art
`
`teachings that would be considered important to a reasonable examiner in evaluating
`
`the patentability of claims 8, 9, 12 and 14. Accordingly, Bakog/u (USPN 6,193,520)
`
`Petitioners Ex. 1017 Page 14
`
`Petitioners Ex. 1017 Page 14
`
`

`

`Application/Control Number: 90/009,524
`
`I
`
`, Page 14
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`Art Unit: 3992
`
`does not raise a substantial new question of patentability with respect to claims 8, 9, 12
`
`and 14.
`
`. Information Disclosure Statement
`
`MPEP 2256 states in pertinent part,
`
`Where patents, publications, 'and other such items of information are submitted by a party
`(Patent Owner or 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 relevance of the information. The initials of the examiner placed adjacent to the
`citatiOns on the form PTO/SB/08A and 088 or its equivalent, without an indication to the
`contrary in the record, do not signify that the information has been considered by the
`examiner any further than to the extent noted above. (emphasis added) .
`
`In concert with MPEP 2256, the references submitted in the Information
`
`Disclosure Statement. (IDS) filed 08/17/2009 have been considered only to the extent
`
`that Requester has "explained the content and relevance".
`
`Important Reexamination Notices
`
`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 CFR1.550(a)).
`
`Extension of time in ex parte reexamination proceedings are provided for in 37 CFR
`
`1.550(c).
`
`Petitioners Ex. 1017 Page 15
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`Petitioners Ex. 1017 Page 15
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`

`

`Application/Control Number: 90/009,524
`Art Unit: 3992
`
`‘
`
`'
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`_
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`Page 15
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`Service of Papers
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`After filing of a request for ex parte 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 more third party requester proceedings are
`
`merged) in the reexamination proceeding in the manner provided in 37 CFR 1248. The
`
`document must reflect service or the document may be refused consideration by the
`
`Office. See 37 CFR 1.550(f).
`\
`
`Amendment To Reexamination Proceedings
`
`Patent Owner is notified that any proposed amendment to the specification
`
`and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j),
`
`must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any.
`
`fees required by 37 CFR 1.20(c). See MPEP 2250.
`
`.
`
`In order to ensure 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 not result in a
`
`‘ close of prosecution). Submissions after 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 37 CFR 41.33 after appeal, which will be strictly enforced, See
`
`MPEP 2250 (IV) for examples to assist in the preparation of proper proposed
`
`amendments in reexamination proceedings.
`
`Petitioners Ex. 1017 Page 16
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`Petitioners Ex. 1017 Page 16
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`

`

`
`
`Application/Control Number: 90/009,524
`
`Page 16
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`Art Unit: 3992
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`Litigation Reminder
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 6,193,520 throughout the course of this reexaminatiOn
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 6,193,520 throughout the course of this reexamination
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`the Office of any such activity 'or proceeding throughout the Course of this reexamination
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`Petitioners Ex. 1017 Page 17
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`Petitioners Ex. 1017 Page 17
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`

`

`Application/Control Number: 90/009,524
`
`_
`
`Page 17
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`Art» Unit: 3992
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`’
`
`Correspondence Information -
`
`All correspondence relating to this ex parte reexamination proceeding should be
`
`directed:
`
`By Mail to:
`
`Mail Stop Ex Pan‘e Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`“United States Patent & Trademark Office
`PO. 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
`
`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.
`Information regarding the status of an application may be obtained from the Patent Application '
`Information Retrieval (PAIR) system. Status information for published applications may be Obtained form"
`either Private PAIR or Public PAIR. Status information for unpublished applications is available through
`Private PAIR only. For more information about the PAIR systems, see http://Qair-direct.usgto.gov. For
`questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-
`217-9197 (toll-free).
`
`NViIIiam H. Wood/
`
`Primary Examiner, Art Unit 3992
`November 13, 2009
`
`Conferees:
`
`/Sam Rimell/
`
`Primary Examiner, Art Unit 3992
`
`4f, 7%
`
`Petitioners Ex. 1017 Page 18
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`Petitioners Ex. 1017 Page 18
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`