UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Parent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 223134450
`www.usplu.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`951000.396
`
`09/23/2003
`
`6516236
`
`14933.13:
`
`1593
`
`§§i',:cmwg5§fGRAHAM°fJ:2f&‘°
`701 FIFTH AVENUE
`’
`SUITE 4800
`SEATTLE, WA 98 l 04
`
`f
`
`K1ss.E:uc B
`
`ART UNIT
`3992
`
`MAIL DATE
`
`09/2 2120 I 0
`
`PAPER NUMBER
`
`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)
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Commissioner for Patents
`United States Patents 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
`William J. Zychlewicz
`ARMSTRONG TEASDALE LLP
`
`One Metropolitan Square
`St Louis, MO 63102-2740
`
`Date: q-_;2’D:- I0
`1
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95000396
`PATENT NO. : 6516236
`
`TECHNOLOGY CENTER : 3999
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cann
`be extended. See also 37 CFR 1.947.
`'
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTOL-2070( Rc\'.()7-04)
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`Control No.
`Patent Under Reexamination
`
`6515236
`95/000,396
`ACTION CLOSING PROSECUTION
`Examiner
`Art Unit
`
`
`
`
`
`
`(37 CFR 1.949)
`
`
` ERIC B. KISS 3992
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 19 Februag 2010
`Third Party(ies) on
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951 (b) within 30—days (not extendab|e— 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand—carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHIVIENT(S) ARE PART OF THIS ACTION:
`
`1. [:l Notice of References Cited by Examiner, PTO-892
`2. E Information Disclosure Citation, PTO/SB/O8
`3.|:|
`
`PART II. SUMMARY OF ACTION:
`
`5 1a. X Claims 1-10 are subject to reexamination.
`
`1b. D Claims __ are not subject to reexamination.
`2. E] Claims __ have been canceled.
`
`3. E Claims Q are confirmed. [Unamended patent claims]
`4. E] Claims __ are patentable.
`[Amended or new claims]
`5.
`[Z] Claims 1-3 and 8-10 are rejected.
`
`[3 Claims __ are objected to.
`6.
`C] are not acceptable.
`D are acceptable
`l:] The drawings filed on __
`7.
`[:1 The drawing correction request filed on __ is;
`E] approved.
`l:I disapproved.
`8
`9 E] Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`[I been received.
`D not been received.
`|:] been filed in Application/Control No __
`10. C] Other j
`
`US. Patent and Trademark Office
`PTOL2065 (08/06)
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`Paper No. 20100331
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`Application/Control Number: 95/000,396
`Art Unit: 3992
`
`Page 2
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`DETAILED ACTION
`
`The patent owner response filed February 19, 2010, has been received and entered.
`
`Claims 1-10 are currently subject to reexamination.
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 3
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`TABLE OF CONTENTS
`
`Note Regarding Continuation of This Proceeding Despite Final Court Order ...................... ..4
`1.
`ll. Brief Procedural History ........................................................................................................ ..5
`lll.
`lnformation Disclosure Statement ..................................................................................... ..6
`IV.
`Scope ofReconsideration .................................................................................................. ..7
`A. Arguments and Evidence Considered ................................................................................ ..7
`B. Arguments and Evidence Not Considered ......................................................................... ..7
`V. Response to Arguments ......................................................................................................... ..9
`A. Claim Construction ............................................................................................................ ..9
`B. Claims 1-10 in View ofAbility Systems (Response at 4-16) .......................................... .. 12
`C. Claims 1-10 in View ofSorensen (Response at 16-23) ................................................... .. 13
`D. Claims 1-10 in view of SOSAS (Response at 23-24) ...................................................... ..l7
`E. Claims 1-10 in View of GD1 (King, Petzold, and WINDOWS NT) (Response at 24-45) 19
`V1.
`Claim Rejections under 35 U.S.C. § 102(b) .................................................................... ..23
`V11.
`Confirmed Claims ............................................................................................................ ..24
`VIII. Other Patents and Printed Publications Cited in the Request .......................................... ..24
`IX.
`Conclusion ....................................................................................................................... ..25
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 4
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`1.
`
`Note Regarding Continuation of This Proceeding Despite Final Court Order
`
`35 USC. 317(b) provides in part that, "Once a final decision has been entered against a
`
`party in a civil action arising in whole or in part under section 1338 oftitle 28, that the party has
`
`not sustained its burden of proving the invalidity ofany patent claim in suit[,] .
`
`.
`
`. an inter partes
`
`reexamination requested by that party or its privies on the basis of [issues which that party or its
`
`privies raised or could have raised in such civil action] may not thereafter be maintained by the
`
`Office, notwithstanding any other provision of this chapter,”
`
`On December 3, 2009, the Third Party Requester filed a Notification of Concurrent
`
`Proceedings Under 37 CFR § 1.985(b), indicating that, “Patent Owner and Requester have
`
`settled their underlying litigation .
`
`.
`
`. involving the patent at issue in this inter panes
`
`reexamination proceeding, and the U.S. District Court .
`
`.
`
`. has entered a final, non-appealable
`
`Order and Judgment dismissing all claims, defenses, and counterclaims asserted in that action
`
`with prejudice, including, without limitation, any and all claims challenging the presumption of
`
`validity ofthe patent at issue.” A copy ofthe final order was attached to the notification.
`
`However. neither party has made a proper showing under § 317(b) necessitating termination of
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`all or part ofthis reexamination proceeding at this time.
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 5
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`1].
`
`Brief Procedural History
`
`On January 23, 2009, a Non-Final Rejection was mailed.
`
`On April 23, 2009, the patent owncr filed a response that did not comply with the page
`
`limit set by 37 CFR 1.943.
`
`On May 22, 2009, the third party requester filed comments directed to the patent owner’s
`
`defective response.
`
`On June 1 1, 2009, the patent owner petitioned to have the third party requester’s
`
`comments returned without consideration.
`
`On June 25, 2009, the third party requester filed an opposition to the patent owner’s
`
`petition.
`
`On February 4, 2010, a Notice Re Defective Paper in Inter Partes Reexamination was
`
`mailed, informing the patent owner of the defects in the April 23, 2009, response and noting that
`
`the previously submitted third party requester comments were moot as being directed to a
`
`defective response. The patent owner was given a 15-day period to correct the noted defects, and
`
`the third party requester was given a 30-day period beginning from the date of service of patent
`
`owner's response to the Notice within which to submit comments directed to the Office action or
`
`the patent owner’s response to the Notice.
`
`On February 19, 2010, the patent owner submitted a response to the Notice, along with a
`
`conditional petition under 37 CFR § 1.183 to waive the page limit under 37 CFR§ 1.943(b).
`
`No subsequent third party requester comments have been received.
`
`On May 6. 2010. the patent owner’s conditional petition was dismissed as moot.
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 6
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`111.
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`Information Disclosure Statement
`
`Consideration by the examiner ofthe information submitted in an IDS means that the
`
`examiner will consider the documents in the same manner as other documents in Office search
`
`files are considered by the examiner while conducting a Search ofthe prior art in a proper field of
`
`search. The initials of the examiner placed adjacent to the citations on the PTO-1449 or
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`P'l"O/SB/08A and 08B or its equivalent mean that the information has been considered by the
`
`examiner to the extent noted above. MPEP § 609.
`
`Regarding IDS submissions MPEP 2656 recites the following: "Where patents,
`
`publications. and other such items ofinformation 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 ofthe information."
`
`The initials of the examiner placed adjacent to the citations on the PTO—l449 or
`
`PTO/SB/08A and 08B or its equivalent mean that the information has been considered by the
`
`examiner to the extent noted above.
`
`The lDSs filed April 23, May 20, 26, and September 9, 2009, and September 9, 2010,
`
`have been given due consideration. However, that which are not either prior art patents or prior
`
`art printed publications have been crossed out so as not to appear reprinted on the front page of
`
`the patent. Additionally, incomplete or illegible citations have also been crossed out.
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 7
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`IV.
`
`Scope 0fRcc0nsirIer(1ri0n
`
`A.
`
`Arguments and Evidence Considered
`
`In the interest of special dispatch, the patent owner’s response filed February 19, 2010
`
`has been considered to the fullest appropriate extent. Specific portions ofthe response excluded
`
`from consideration are described in the next subsection ofthis action. Further, the patent
`
`owner’s arguments presented under the heading “WITHDRAWN ISSUES,” (Response at 23-
`
`45), have been considered (except as noted below) as the total page count of the response does
`
`not exceed 50 pages in length, including these arguments.
`
`(See Decision Dismissing Petition,
`
`5/6/2010, p. 3.)
`
`The redacted declarations of Richard A. Mathias, Richard J. Malina, Maureen Stone,
`
`Andrew B. Levy. Nosa Omoigui, and Don Chouinard filed February 19. 2010, have been
`
`considered.
`
`The declarations ofCharles Petzold, Steve McConnell, Jeffrey Richter, and Joel B. Ard
`
`filed April 23, 2009, have been considered.
`
`B.
`
`Arguments and Evidence 1% Considered
`
`The patent owner’s response filed April 23, 2009, has gg been considered for reasons set
`
`forth in the Notice Re Defective Paper in lnter Partes Reexamination mailed February 4, 2010.
`
`The third party requester’s comments filed May 22, 2009, have n_ot been considered for
`
`reasons set forth in the Notice mailed February 4, 2010.
`
`The declarations of Richard A. Mathias, Nosa Omoigui, Richard J. Malina, Andrew B.
`
`Levy, Don Chouinard, and Maureen Stone, as filed on April 23, 2009, have n_ot been considered
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 8
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`because the patent owner has replaced these declarations with redacted versions to address the
`
`defects noted in the Notice mailed February 4, 2010.
`
`The patent owner’s response, including any attached or cited evidence, filed in the ex
`
`parre reexamination assigned to Control No. 90/009,282 has n_ot been considered in this inter
`
`parres reexamination, unless the same arguments or evidence have also been submitted by the
`
`patent owner in this reexamination proceeding. Further, the conclusions reached in an Office
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`action in the ’282 ex pane reexamination cited by the patent owner have E been considered in
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`this infer parles proceeding.
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`It is not appropriate to incorporate by reference any portion ofthe
`
`ex parre proceeding into this inter parres proceeding because the ex parle proceeding is
`
`conducted under statutes and rules that deny the third—party requester an opportunity to comment
`
`on the patent owner’s response, and thus, ex parre Office actions are generated without
`
`considering any rebuttal by the third party requester. Compare 35 U.S.C. § 305 and 37 CFR §
`
`l.550(g) with 35 U.S.C. § 3l4(b)(2) and 37 CFR§ 1.947.
`
`Accordingly, the arguments contained in the patent owner’s two-page letter attached to
`
`the patent owner’s response, characterizing the conclusions of an Office action in the ’282 ex
`
`parte reexamination, have n_ot been considered. (Response to PTO’s Notice Dated February 4,
`
`2010, 2/19/2010, p. 2.) Additionally, under the “WITHDRAWN ISSUES” heading in the patent
`
`owner’s response, footnote 12 and the citation to the ’282 ex parte reexamination on pp. 23-24 of
`
`the patent owner’s response have not been considered.
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 9
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`V.
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`Response to Arguments
`
`To the extent that the response below includes statements that the patent owner’s
`
`arguments are not persuasive. these statements should be understood to include the cited
`
`evidence in the experts’ declarations.
`
`A.
`
`Claim Construction
`
`During reexamination, claims are given the broadest reasonable interpretation consistent
`
`with the specification and limitations in the specification are not read into the claims. In re
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`Y(lI71(_lm()/(). 740 F.2d l569 (Fed. Cir. l984))_ It would be error to apply the same mode of claim
`
`interpretation that is used by courts in litigation.
`
`In re Am. Acad. ofSci. Tech. Ctr, 367 F.3d
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`1359, 1369 (Fed. Cir. 2004).
`
`In reexamination, the PTO is n_o_t bound by a Markman Order
`
`issued in an earlier litigation to which the PTO was not a party. In re Texas Holdings Corp, 498
`
`F.3d 1290, 1297 (Fed. Cir. 2007) (holding that issue preclusion did not apply, even when the
`
`District Court issued an order of dismissal with prejudice following a pre—trial settlement
`
`between the parties).
`
`"Even when the specification describes only a single embodiment, the claims ofthe
`
`patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit
`
`the claim scope using words or expressions of manifest exclusion or restriction."‘ Liebel-
`
`Flasheim Co. v. Medrad, Inc, 358 F.3d 898. 906 (Fed. Cir. 2004); In re Am. Acad. 0fSci. Tech.
`
`Cir, 367 F.3d at 1369. "'[R]eading a claim in the light ofthe specification,‘ to thereby interpret
`
`limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of
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`the specification into a claim.’ to thereby narrow the scope ofthe claim by implicitly adding
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 10
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`disclosed limitations which have no express basis in the claim." In re Prater, 415 F.2d 1393,
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`1404 (CCPA 1969).
`
`The '236 patent disclosure contains no words or expressions of manifest exclusion or
`
`restriction.
`
`In fact, the '236 patent at least twice explicitly invites a broader reading ofthe claim
`
`terms. See '236 patent at col. 1, lines 37-40 ("The scope ofthe present invention should thus be
`
`determined based on the claims appended hereto and not the following detailed description"),
`
`col. 48. lines 3-7 ("The present embodiments are therefore to be considered in all respects as
`
`illustrative and not restrictive, the scope of the invention being indicated by the appended claims
`
`rather than by the foregoing description.").
`
`Further, the '236 patent disclosure contains no clear, deliberate, and precise definitions of
`
`the claim terms “component function”, “component code”, “driver function”, and “driver code”
`
`such that the incorporation ofsuch definitions into the claims would be appropriate. See In re
`
`Paulsen. 30 F.3d 1475, 1480 (Fed. Cir. I994).
`
`Under the broadest reasonable interpretation consistent with the specification, the
`
`examiner interprets “component function”, “component code”, “driver function”, and “driver
`
`code” as follows;
`
`“component function” is a function associated with component code, at least some
`
`of such component functions being capable of association with at least some ofthe driver
`
`functions;
`
`“component code” is code that associates at least some of the component
`
`functions with at least some ofthe driver functions;
`
`“driver function” is a function that is associated with a motion control operation;
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 11
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`“driver code” is code that implements the motion control operations associated
`
`with at least some of the driver functions; and
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`the component functions are separate from the driver functions.
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 12
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`B.
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`Claims 1-10 in view of Ability Systems (Response at 4-16)
`
`in footnote 4 on pp. 8-9 ofthe response, the patent owner asserts that the Ability 3
`
`reference is not prior art. suggesting that its publication date is 2003. Upon closer inspection of
`
`the Ability 3 reference, the examiner agrees. The Ability 3 document bears a copyright date
`
`range of“l989-2003.” While this range of dates suggests that there was a version of the Ability
`
`3 document published prior to the filing date ofthe ’236 patent, the particular version ofthe
`
`Ability 3 document of record was apparently published only as early as 2003. Accordingly, the
`
`Ability 3 document of record is mt a prior art printed publication applicable against the ’236
`
`patent.
`
`The rejection of claim 10 under 35 U.S.C. § 103(3) as being unpatent-able over
`
`Ability 1, Ability 2, and Ability 3 is withdrawn.
`
`The patent owner argues that the Ability l and Ability 2 references fail to teach or
`
`suggest all of the features in the claims. The examiner gg;_<3e:_s in part.
`
`The arguments regarding hardware independence and the claimed application program
`
`calling a function are not persuasive because these features are not required by the claims.
`
`However, the arguments on p. 10, paragraph 2, through p. 13, paragraph 1, are
`
`persuasive. Upon careful review of the Ability references and cited evidence, the examiner
`
`agrees with the patent owner’s reasoning why the Ability references do not teach or suggest the
`
`driver code or driver functions in the context ofthe claims, i. e., core driver functions associated
`
`with primitive motion control operations, extended driver functions associated with non-
`
`primitive motion control operations, and a set of software drivers, each associated with one
`
`motion control device in the group of supported motion control devices, each software driver
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`Application/Control Number: 95/000,396
`Art Unit: 3992
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`Page 13
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`comprising driver code for implementing the motion control operations associated with at least
`
`some ofthe driver functions.
`
`The rejection of claims 1-4 and 7-9 under 35 U.S.C. § l03(a) as being unpatentable
`
`over Ability 1 and Ability 2 is withdrawn.
`
`C.
`
`Claims 1-10 in view of Sorensen (Response at 16-23)
`
`The patent owner essentially argues that Sorensen teaches only generating a sequence of
`
`supervisor commands for a robotic system, which cannot be reasonably interpreted as a sequence
`
`of control commands for controlling a selected motion control device, or in other words, that
`
`Sorensen does not teach motion control. The examiner disagrees.
`
`The cited evidence fails to establish that Robotics excludes Motion Control. Rather, the
`
`cited experts appear to agree that Motion Control is a subfield ofRobotics. (See, eg, Mathias
`
`Decl. at para. 153; Malina Decl. at para. 67 (describing a robot as containing movable parts
`
`associated with motion controllers).) While Sorensen is concerned with task—level control, the
`
`task execution described by Sorensen requires motion control. See, eg, Sorensen at p.
`
`1 (“The
`
`robot in turn would locate the part, choose a proper tool, choose a proper approach to avoid
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`collision, and grasp the part”), p. 6 (moving the camera near chip5 with a Z offset of10).
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`Further, the very broad definition of “programmable motion controller” provided by Malina, “the
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`application ofprogrammable hardware and software (in conjunction with input sensory devices,
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`actuators, and other feedback devices) for the control of one or more linear or rotary motions,"
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`appears to be consistent with the operation ofthe system described by Sorensen in that the
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`definition would appear to include both high-level and low—level motion control. (Malina Decl.
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`at para. 65.) The further descriptions of what motion controllers “generally” or “typically”
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`include or require are not limiting definitions, and thus are not persuasive in distinguishing over
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`Sorensen.
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`(See Malina Decl. at para. 66.)
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`The patent owner further argues that Sorensen’s macros are not “motion control
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`components” as used in the claim and specification because they must be re-compiled every time
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`new hardware is added, and they do not expose functions at run—time. The examiner disagrees.
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`The claims only require that a motion control component be for generating the sequence
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`of control commands for controlling the selected motion control device, based on the component
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`functions of the application program, the component code associated with the component
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`functions, and the driver code associated with the selected software driver. Sorensen teaches this
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`(in a manner consistent with the specification), for example at 186-187 (describing macros
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`callable by a client process and executable to carry out motion control by calling specific
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`drivers). Lack of re-compilation and exposing of functions at run-time are simply not required
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`by the claims. As noted above under subsection A, no definitions of any of the claim terms are
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`given in the specification, and instead the specification invites broad reading of the claims.
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`During reexamination, claims are given the broadest reasonable interpretation consistent with the
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`specification and limitations in the specification are not read into the claims. In re Yamamoto,
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`740 F.2d 1569.
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`The patent owner further argues that the macros described in Sorensen are not hardware
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`independent instructions corresponding to the component functions, nor do they correspond to
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`component code. The examiner disagrees.
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`As noted above under subsection A, hardware—independence is not required by the
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`claims. The component functions are the macro library described throughout the text and listed
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`in Appendix A. Sorensen at 163-183. The component code is the code that makes up the macros
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`in the macro library. The argument that Sorensen’s design is not a component design because it
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`is not built using a component framework is without merit. The macros of Sorensen are clearly
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`components in that they are discrete elements making up the larger library.
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`The patent owner further argues that the macros of Sorensen do not teach component
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`code and component functions because such an interpretation would disregard the associative
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`function ofthe motion control component ofthe claimed architecture. The examiner disagrees.
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`As noted above, “component code” is code that associates at least some of the component
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`functions with at least some ofthe driver functions. This feature is met by Sorensen’s calls
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`within the application to macros within the macro library (component functions), where the
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`macros are implemented with macro code (component code) which calls the driver functions
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`(cross-references some of the component functions with driver functions). “Driver code” is
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`code that implements the motion control operations associated with at least some of the driver
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`functions. This is met by Sorensen‘s calls to the hardware-specific drivers from the macro code
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`(e.g., calls to the KAREL and DARL driver code for the movegtogele and move__to_until
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`macros).
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`The patent owner further argues that the macro as described by Sorensen can be neither
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`the component functions nor the component code because the generation of motion control
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`commands in the claimed invention occurs in real time without requiring recompiling the
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`application program. Because this alleged distinction is not in the claims, the examiner
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`disagrees.
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`The patent owner further argues that the device drivers of Sorensen are not the device
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`drivers in the claim because the claimed driver code “is an essential part ofthe process of
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`generating motion control commands because the application program and/or component code
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`are able to operate in a way that is truly independent of the hardware used.” Because this
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`hardware independence is not required by the claims, the examiner disagrees.
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`The patent owner further argues that Sorensen does not teach a run-time selected
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`destination because the destination must be chose pre-compile time, when the user hard—codes
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`robot names and pose details into macros. However, the claims do not require the run-time
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`selection of streams. Because the claims do not require run-time selection, nor do they appear to
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`imply run-time selection, this argument is not persuasive in distinguishing the teachings of
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`Sorensen from the claimed invention.
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`Claims 4 and 7 recite the additional features of emulating motion control operations
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`associated with non-supported (having no driver code associated therewith) extended driver
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`functions by generating control commands associated with a combination of core driver
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`functions (claim 4) and means for determining a deriver unit system employed by the software
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`drivers and means for converting an application unit system employed by the application
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`program into the driver unit system (claim 7). Ability l and Ability 2 were relied upon as
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`teaching these features, but as noted above, The Ability references present significant
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`deficiencies regarding their applicability to independent 1 that are not overcome in the rejection
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`Application/Control Number: 95/000,396
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`of dependent claims 4 and 7 such that a reasonable rationale for combining the cited teachings
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`can be articulated as part ofa proper obviousness analysis.
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`The rejection of claims 4 and 7 under 35 U.S.C. § 103(a) as being unpatentable over
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`Sorensen, Ability 1, and Ability 2 is withdrawn.
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`D.
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`Claims 1-10 in view of SOSAS (Response at 23-24)
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`The examiner agrees with the patent owner that SOSAS is not a prior art printed
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`publication.
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`“Because there are many ways in which a reference may be disseminated to the interested
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`public, ‘public accessibility’ has been called the touchstone in determining whether a reference
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`constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898-
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`899 (Fed. Cir. 1986). A reference is publicly accessible “upon a satisfactory showing that such
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`document has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it...." SR1 Int'l, Inc. 1:. Internet Sec. Sys. Inch, 51 1 F.3d 1186, 1194 (Fed.Cir.2008) (quoting
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`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.Cir.2006)).
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`Documents and items only distributed internally within an organization which are
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`intended to remain confidential are not “printed publications” no matter how many copies are
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`distributed. MPEP § 2128.01. There must be an existing policy of confidentiality or agreement
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`to remain confidential within the organization.
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`Id. Mere intent to remain Confidential is
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`insufficient.
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`In re George, 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports
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`disseminated in-house to only those persons who understood the policy of confidentiality
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`regarding such reports are not printed publications even though the policy was not specifically
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`stated in writing.); Garret Corp. v. United States, 422 F.2d 874, 878, 164 USPQ 521, 524 (Ct.
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`C1. 1970) (“While distribution to government agencies and personnel alone may not constitute
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`publication
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`distribution to commercial companies without restriction on use clearly does”);
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`Northern Telecom Inc. v. Datapoim Corp, 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990)
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`(Four reports on the AESOP—B military computer system which were not under security
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`classification were distributed to about fifty organizations involved in the AESOP—B project. One
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`document contained the legend “Reproduction or further dissemination is not authorized.” The
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`other documents were ofthe class that would contain this legend. The documents were housed in
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`Mitre Corporation’s library. Access to this library was restricted to those involved in the
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`AESOP—B project. The court held tha