`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`90/014,071
`
`01/19/2018
`
`8494581
`
`02100.0216—00000
`
`1006
`
`03/05/2018
`7590
`73552
`S chwabe, Williamson & Wyatt/SEC
`1211 SW Fifth Ave.
`Suite 1900
`Portland, OR 97204
`
`W
`
`FERRIS HL FRED 0
`
`3992
`
`MAIL DATE
`
`03/05/2018
`
`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)
`
`Exhibit 2128 Page 1
`
`IV Exhibit 2128
`FedEx v. N
`Case |PR2017-02030
`
`Exhibit 2128 Page 1
`
`IV Exhibit 2128
`FedEx v. IV
`Case IPR2017-02030
`
`
`
` IJNI TED S TATES PATEN T AND TRADEIIWK QFFI CE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. EMMSU
`Alexandria, VA 22313-1450
`vuwmusptogov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS)
`
`FINNEGAN, HENDERSON, FARABOW GARRETT & DUNNER LLF§
`
`901 NEW YORK AVENUE, NW
`
`WASHINGTON, DC 20001 -4413
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMI'I'I'AL FORM
`
`REEXAMINATION CONTROL NO. 90/014 071.
`
`PATENT NO. 8 494 581.
`
`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)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07-O4)
`
`Exhibit 2128 Page 2
`
`Exhibit 2128 Page 2
`
`
`
`
`
`Control No.
`
`Patent Under Reexamination
`
`
` - 90/014,071 8494581
`
`Order Granting Request For
`E
`_
`A u _
`Ex Parte Reexamination
`“mm”
`rt
`nIt
`FRED FERRIS III
`3992
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 19 January 2018 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)I:I PTO-892,
`
`b)IXI PTO/SB/O8,
`
`c)I:I Other:
`
`1. IXI The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`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 PERMITI'ED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`[Fred Ferris/
`
`/James Menefee/
`
`fHetul Patel/
`
`Primary Examiner, Art Unit 3992
`
`Primary Examiner, Art Unit 3992
`
`Supervisory Patent Examiner, Art Unit
`
`3992
`
`if third oart
`cc:Reouester
`US. Patent and Trademark Office
`
`reouester
`
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20180214
`
`Exhibit 2128 Page 3
`
`Exhibit 2128 Page 3
`
`
`
`Application/Control Number: 90/014,071
`
`Page 2
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`Art Unit: 3992
`
`Decision on Request
`
`DETAILED ACTION
`
`A substantial new question of patentability affecting claims 18—20 and 24 of United States Patent
`
`Number 8,494,581 B2 issue to Barbosa et al is raised by the request for ex parte reexamination.
`
`The requested claims will be reexamined.
`
`The examiner has considered if a substantial new question of patentability has been
`
`raised by the following prior art references:
`
`US. Patent No. 6,971,063 to Rappaport et al. (“Rappaport”)
`
`US. Patent No. 6,633,900 to Khalessi et al. (“Khalessi”)
`
`US. Patent No. 5,080,064 to Brockman et al. (“Brockman”)
`
`US. Patent No. 4,592,322 to Bernard (“Bernard”)
`
`Issue(s) Raised by Request
`
`
`Issue 1:
`
`Requester alleges that Rappaport alone raises a substantial new question of
`
`patentability with regard to claims 18—20 and 24 of the ‘581 patent. Rappaport was filed on the
`
`on May 26, 1999 and predates the filing of the ‘581 patent. Rappaport was before the examiner
`
`during the original prosecution which lead to the issue of the '581 patent but Rappaport was
`
`never used in the context of a rejection against the claims.1
`
`1 In IPR2017-00729 petitioner cited Rappaport in three grounds of rejection.
`
`Exhibit 2128 Page 4
`
`Exhibit 2128 Page 4
`
`
`
`Application/Control Number: 90/014,071
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`Page 3
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`Art Unit: 3992
`
`
`Issue 2:
`
`Requester alleges that Rappaport in combination with Khalessi raises a substantial
`
`new question of patentability with regard to claim 20 of the ‘581 patent. Rappaport was filed on
`
`the on May 26, 1999 and predates the filing of the ‘581 patent. Khalessi was filed April 26, 2000
`
`and also predates the filing of the ‘581 patent. Rappaport was before the examiner during the
`
`original prosecution which lead to the issue of the '581 patent but Rappaport was never used in
`
`the context of a rejection against the claims. Khalessi was not before the examiner during the
`
`original prosecution of the '581 patent.2
`
`
`Issue 3:
`
`Requester alleges that Brockman in combination with Bernard raises a substantial
`
`new question of patentability with regard to claims 18, 19 and 24 of the ‘581 patent. Brockman
`
`was filed on the on September 15, 1997 and predates the filing of the ‘581 patent. Bernard was
`
`filed August 4, 1994 and also predates the filing of the ‘581 patent. Neither Brockman nor
`
`Bernard were before the examiner during the original prosecution of the '581 patent.
`
`
`Issue 4:
`
`Requester alleges that Brockman in combination with Bernard and Khalessi raises
`
`a substantial new question of patentability with regard to claim 20 of the ‘581 patent. Brockman
`
`was filed on the on September 15, 1997 and predates the filing of the ‘581 patent. Bernard was
`
`filed August 4, 1994 and also predates the filing of the ‘581 patent. Khalessi was filed April 26,
`
`2000 and also predates the filing of the ‘581 patent. Neither Brockman, Bernard nor Khalessi
`
`were before the examiner during the original prosecution of the '581 patent.
`
`2 Khalessi was likewise cited in IPR2017-00729.
`
`Exhibit 2128 Page 5
`
`Exhibit 2128 Page 5
`
`
`
`Application/Control Number: 90/014,071
`
`Page 4
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`Art Unit: 3992
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`Background
`
`Claims 18—20 and 24 are being requested in the instant Request for Reexamination and
`
`are current claims in United States Patent Number 8,494,581 issued to Barbosa et al on July 23,
`
`2013 from application 12/547,363 filed on August 25, 2009.3
`
`The ‘581 patent discloses a system and method for managing mobile field assets. (e. g. at
`
`1:23—31) The system includes an enterprise computing device (i.e., a remote server) and
`
`a handheld device employing a communication module and a position module. (e. g. at 6:21—
`
`23, 6:51—55, 7:54—67) The handheld device uses a network to enable real time
`
`communications with the computing device for real—time access to remote programs, assistance
`
`and/or information related to field operations and asset (personnel and inventory)
`
`resource management. (e.g. at Abstract)
`
`As disclosed with regard to Figure 6, field crew personnel can use handheld device
`
`10/ 10’ to access remote management system 58, which can “provide instructions (e. g., templates,
`
`task/punch lists) and/or programs to a group of users.” (e. g. at 7:35—36) The programs are
`
`“centrally stored within one or more databases 61/59” and are directly accessible to the handheld
`
`device 10/ 10’ over the network 55 or indirectly accessible through the remote management
`
`system 58. (e. g. at 7:38—41) The handheld devices are well—known “handheld or palm
`
`computer/PC, PDA, smart phone, [or] mobile telephony devices,” and enable remote access of
`
`industry/ profession—specific applications so “users [can] be more productive while operating in
`
`the field.” (e.g. at 5:45—50)
`
`3 The earliest claimed priority is September 18, 2000.
`
`Exhibit 2128 Page 6
`
`Exhibit 2128 Page 6
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`
`
`Application/Control Number: 90/014,071
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`Page 5
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`Art Unit: 3992
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`The field crew can use the handheld device to gather data particular to an industry and
`
`process it locally or transmit it to the remote computing device for further processing. (e. g. at
`
`6:38—41, 8: 13—3 1) The data includes both field data collected by the device or input by the user
`
`and location data. (e. g. at 7:55—8: 12) The location data can be determined using global
`
`positioning systems, which the ’581 patent admits was “known in the art” and “commercially
`
`available.” Id. at 6:51—67, 8:8—9. In one instance, the data is transmitted to the remote computing
`
`device to “undergo computing operations beyond the resident capabilities of the handheld
`
`device,” where a “limited software program can be used for gathering of data [and a] larger
`
`software application and computing resources [of the remote computing device] may be
`
`necessary to render a comprehensive analysis.” Id. at 8:20—31. After the data is processed, the
`
`results are sent back to the handheld device for use by the field crew. Id. at 7:64—67.
`
`Prosecution History
`
`During the original prosecution which led to the allowance of the ‘581 patent the
`
`examiner initially applied rejections under 35 USC 102 (claims 21—23, 25, 40 and 45—46) and 35
`
`USC 103 (claims 26—28) based on LeVander and LeVander in view of Shaffer respectively.
`
`(FAOM 3/23/12) Responsive to the examiner’s rejection applicants amended claim 40 (issued as
`
`claim 18) to require the following;
`
`Exhibit 2128 Page 7
`
`Exhibit 2128 Page 7
`
`
`
`Application/Control Number: 90/014,071
`
`Page 6
`
`Art Unit: 3992
`
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`Specifically, as amended the claim required that the handheld device be located
`
`geographically distant from the server, include a means for determining a geographic location of
`
`the hand held deVice, and that the data collected at the field included geographic location of the
`
`hand held deVice.
`
`Patent owner subsequently argued that Shaffer does not disclose using the handheld
`
`deVice to determine a geographical location of the handheld deVice since Shaffer’s system m
`
`not disclose determining a geographical location of the cellular phone, but rather discloses
`
`recording a message from the operator indicating the current (or most recent) location of the
`
`vehicle.” Patent owner concluded that Shaffer combined with LeVander cannot therefore
`
`disclose the recited communicating the field data collected using the handheld deVice and the
`
`geographical location of the handheld deVice to the computing deVice since the recited
`
`geographical location information is determined using the handheld deVice. (Response of 6/21/12
`
`at page 10)
`
`Exhibit 2128 Page 8
`
`Exhibit 2128 Page 8
`
`
`
`Application/Control Number: 90/014,071
`
`Page 7
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`Art Unit: 3992
`
`After a Quayle action of 7/19/12 the examiner passed the case to allowance on 3/7/13
`
`citing no specific reasons for allowance.
`
`Thus, based on the prosecution history, even though the examiner did not specifically
`
`comment on the reasons for allowance, prior art with a technological teaching relating to using
`
`the handheld device to determine a geographical location of the handheld device would have
`
`been considered important in determining the patentability of the claims.
`
`Hence, the features noted above relating to distinguishing aspects of the claimed
`
`invention now appear to be disclosed in the newly cited prior art as set forth below.
`
`Analysis
`
`
`Issue 1:
`
`Regarding issue 1, the request alleges that an SNQ with respect to claims 18—20
`
`and 24 is raised based on Rappaport alone. As mentioned above, Rappaport was before the
`
`examiner during the original but prosecution never used in the context of a rejection against the
`
`claims.
`
`Rappaport discloses systems and methods employing a portable handheld computer and
`
`one or more remote server computers for technicians in the field to complete the
`
`“design, deployment, test, optimization, and maintenance cycle required to implement successful
`
`communications networks.” (e. g. at Abstract) Using a handheld computer, a wireless network
`
`technician in the field can model and optimize a wireless network signal within a building or
`
`over a distributed area. (e.g. at 1:12—18, 4:41—5:31, 18:64—19:8) The technician can also take
`
`measurements using the handheld computer and transmit this data along with location data to a
`
`remote server computer. (e.g. at 4:54—5z3, 18:7—18, Fig. 9)
`
`Exhibit 2128 Page 9
`
`Exhibit 2128 Page 9
`
`
`
`Application/Control Number: 90/014,071
`
`Page 8
`
`Art Unit: 3992
`
`
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`The technician can view a computer model of the wireless network using the handheld
`
`computer’ s display and make adjustments in the field that can be incorporated into the model
`
`for assessment. (See, e. g. 4:41—48) The technician inputs adjustments into the handheld
`
`computer for manipulation of the model, including “adjustments as to choice of equipment,
`
`placement in the space, and orientation” of equipment. The model is then updated and the
`
`technician can “obtain performance prediction and other valuable information” about the
`
`network as a result of the changes. Therefore, the handheld computer allows the technician to
`
`collect and display the signal properties of the network, manipulate the network components, and
`
`then predict and optimize the network all while in the field. (e. g. at 1:12—18) The data is
`
`transferred between the handheld computer and the remote server computer via a wired or
`
`wireless communication link. (See, e. g. 9:36—41, 14:45—54, 18:59—63) Most importantly,
`
`Rappaport discloses that the handheld devices may be equipped with a position—tracking device
`
`“so that a user’ s movements within the environment may be tracked and displayed,” and so that
`
`the technician operating the handheld computer may know its “precise location”
`
`Exhibit 2128 Page 10
`
`Exhibit 2128 Page 10
`
`
`
`Application/Control Number: 90/014,071
`
`Page 9
`
`Art Unit: 3992
`
`while navigating through an environment. (See, e. g. 14:54—64) In other words, Rappaport
`
`appears to disclose the very features relating to a means for determining a geographic location of
`
`the hand held device that were deemed to distinguish claim 18 over the prior art at the time of
`
`allowance.
`
`Since the cited art teaches a substantial portion of the claimed features of at least claim
`
`18, and since these teachings are directly related to subject matter considered as the basis for
`
`patentability of the patent claims, a reasonable examiner would consider evaluation of Rappaport
`
`as important in determining the patentability of the claims over the prior art during the original
`
`‘581 prosecution. As such, it is AGREED that Rappaport alone raises a substantial new question
`
`of patentability, with respect to at least claim 18. Hence, an SNQ is likewise raised for dependent
`
`claims 19, 20 and 24.
`
`
`Issue 2: Regarding issue 2, the request alleges that an SNQ with respect to claim 20 is raised in
`
`view of Khalessi. Khalessi is new art that was not previously before the examiner. As mentioned
`
`above, Rappaport discloses the elements raising an SNQ with regard to independent claim 18
`
`from which claim 20 depends. Relative to claim 20, Khalessi discloses a system for “assigning
`
`work orders, communicating work orders to deployed field personnel, and communicating .
`
`.
`
`.
`
`up—to—date data related to an assigned work order.” (e. g. at 2:20—24, Fig 5 — reproduced below).
`
`In other words, Khalessi appears to disclose the elements of claim 20 relating to enabling
`
`updating of field operation assignments.
`
`Exhibit 2128 Page 11
`
`Exhibit 2128 Page 11
`
`
`
`Application/Control Number: 90/014,071
`
`Page 10
`
`Art Unit: 3992
`
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`Since Khalessi teaches a substantial portion of the claimed features of at least dependent
`
`claim 20, and since these teachings are directly related to subject matter considered as the basis
`
`for patentability of the patent claims, a reasonable examiner would consider evaluation of
`
`Khalessi as important in determining the patentability of the claims over the prior art during the
`
`original ‘581 prosecution. As such, it is AGREED that Rappaport in combination with Khalessi
`
`raises a substantial new question of patentability, with respect to at least claim 20.
`
`Issue 3: Regarding issue 3, the request alleges that an SNQ with respect to claims 18, 19 and 24
`
`is raised based on Brockman in combination with Bernard. As mentioned above, neither
`
`Brockman nor Bernard were before the examiner during the original prosecution of the '581
`
`patent.
`
`Exhibit 2128 Page 12
`
`Exhibit 2128 Page 12
`
`
`
`Application/Control Number: 90/014,071
`
`Page 11
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`Art Unit: 3992
`
`Brockman discloses a system that includes a handheld unit (110), a Wireless link (120),
`
`and remote resources (105, 115) or assisting both salespersons interacting with
`
`prospective buyers and sales managers. (e.g. at Fig. 1, 1:23—3:29, 4:23—42, 5:49—57, 5:58—63)
`
`Brockman discloses two different remote resources.
`
`
`
`:‘fifi.
`
`l?
`
`A first remote resource includes a central computer unit providing access to “scripts” and
`
`other data to the handheld unit. (e. g. at 4:23—5:32) A second remote resource includes an external
`
`data store such as a server at a vehicle manufacturer, credit bureau, or credit granting institution.
`
`(e.g. at 4:35—42, 5:33—57, 6:33—41) Using the remote resources, Brockman's system allows the
`
`handheld unit to assist salespersons and sales managers by:
`
`(i) permitting the seller to retrieve useful information such as inventory availability from
`a sales information data store; (ii) displaying option—sensitive prompts to aid the seller in
`discussing specific vehicles under consideration; (iii) accessing remote communications
`links to external data sources to obtain information on credit—worthiness of the prospect,
`
`Exhibit 2128 Page 13
`
`Exhibit 2128 Page 13
`
`
`
`Application/Control Number: 90/014,071
`
`Page 12
`
`Art Unit: 3992
`
`financing terms, and availability; (iv) displaying motivational information such as the
`percentage likelihood of consummating the sale successfully; (V) providing a
`communications link with management personnel.
`
`(e. g. at Abstract). A salesperson can send data to and receive data from the remote
`
`resources using the handheld unit and engage a prospective buyer While the handheld
`
`unit prompts the salesperson to collect data and interact with a buyer. (e. g. at 6:42—7:22)
`
`Brockman discloses providing a sequence of steps to the handheld unit using “scripts,” which
`
`guide the salesperson through a sales communication process. (e. g. at 6:42—63) Brockman
`
`discloses that the scripts are accessed from the central computer unit, either in real—time or using
`
`a periodic update process. (e.g. at 6:42—63, 13:17—14:40, 14:7-40)
`
`Importantly, prior art Bernard discloses a communication device which includes a
`
`microprocessor for coordinating the functions of the GPS engine, radio packet antenna, and
`
`cellular telephone antenna with those of the PDA. (e.g. at 4:16—5z8; 9:38—10:29, Figs. 2&3)
`
`
`
`Bernard also discloses that the communication media of the device can be used interchangeably
`
`together such that the GPS engine can determine the location of the device, and that location
`
`Exhibit 2128 Page 14
`
`Exhibit 2128 Page 14
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`
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`Application/Control Number: 90/014,071
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`Page 13
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`Art Unit: 3992
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`data, together with other data, can be transmitted over a cellular wireless data network. (e. g. at
`
`16:38—65) Therefore, Bernard provides additional wireless capabilities for PDAs, allowing them
`
`to communicate over different networks and determine their geographic location. This, according
`
`to Bernard, “greatly enhance[s] the utility of the PDAs” and “provides a powerful processing
`
`device with convenient access to vast stores of information over a variety of possible media.”
`
`(e.g. at 1:50—56)
`
`In other words, Brockman in combination with Bernard appears to disclose the very
`
`features relating to a means for determining a geographic location of the hand held device that
`
`were deemed to distinguish claim 18 over the prior art at the time of allowance.
`
`Since the cited art teaches a substantial portion of the claimed features of at least claim
`
`18, and since these teachings are directly related to subject matter considered as the basis for
`
`patentability of the patent claims, a reasonable examiner would consider evaluation of Brockman
`
`in combination with Bernard as important in determining the patentability of the claims over the
`
`prior art during the original ‘581 prosecution. As such, it is AGREED that Brockman in
`
`combination with Bernard raises a substantial new question of patentability, with respect to at
`
`least claim 18. Hence, an SNQ is likewise raised for dependent claims 19, 20 and 24.
`
`
`Issue 4: Regarding issue 4, the request alleges that an SNQ with respect to claim 20 is raised in
`
`view of Khalessi. As noted above, Brockman in combination with Bernard disclose elements
`
`raising an SNQ with regard to independent claim 18 from which claim 20 depends. As further
`
`noted above, and relative to claim 20, Khalessi was not previously before the examiner and
`
`discloses a system for “assigning work orders, communicating work orders to deployed field
`
`Exhibit 2128 Page 15
`
`Exhibit 2128 Page 15
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`
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`Application/Control Number: 90/014,071
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`Page 14
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`Art Unit: 3992
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`personnel, and communicating .
`
`.
`
`. up—to—date data related to an assigned work order.” (e.g. at
`
`2:20—24, Fig 5 — reproduced above). In other words, Khalessi appears to disclose the elements of
`
`claim 20 relating to enabling updating of field operation assignments.
`
`Since Khalessi teaches a substantial portion of the claimed features dependent claim 20,
`
`and since these teachings are directly related to subject matter considered as the basis for
`
`patentability of the patent claims, a reasonable examiner would consider evaluation of Brockman
`
`in combination with Bernard and Khalessi as important in determining the patentability of the
`
`claims over the prior art during the original ‘581 prosecution. As such, it is AGREED that
`
`Brockman in combination with Bernard and Khalessi raises a substantial new question of
`
`patentability, with respect to at least claim 20.
`
`Hence, reexamination of the requested claims is ordered.
`
`Scope of Reexamination
`
`The existence of a substantial new question of patentability is not precluded by the fact
`
`that a patent or printed publication was previously cited by or to the Office or considered by the
`
`Office. That is, the reliance on previously cited/considered art, i.e., "old art," does not necessarily
`
`preclude the existence of a substantial new question of patentability (SNQ) that is based
`
`exclusively on that old art. Rather, determinations on whether a SNQ exists in such an instance
`
`shall be based upon a fact—specific inquiry done on a case—by—case basis. (MPEP 2216)
`
`In the present instance, an SNQ appears to exist based on the existence of newly
`
`uncovered prior art that was not before the examiner at the time of examination, and/or old art
`
`that is being view in a new light based on its combination with new art.
`
`Exhibit 2128 Page 16
`
`Exhibit 2128 Page 16
`
`
`
`Application/Control Number: 90/014,071
`
`Page 15
`
`Art Unit: 3992
`
`Conclusion
`
`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 ex parte reexamination
`
`proceedings "will be conducted with special dispatch" (37 CFR1.550(a)). Extensions of time in
`
`ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`Waiver of Right to File Patent Owner Statement
`
`In a reexamination proceeding, Patent Owner may waive the right under 37 C.F.R. 1.530
`
`to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner
`
`waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proof of service in
`
`the manner provided by 37 C.F.R. 1.248, if the request for reexamination was made by a third
`
`party requester, see 37 C.F.R 1.550. The Patent Owner may consider using the following
`
`statement in a document waiving the right to file a Patent Owner Statement:
`
`Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
`
`Amendment in 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
`
`Exhibit 2128 Page 17
`
`Exhibit 2128 Page 17
`
`
`
`Application/Control Number: 90/014,071
`
`Page 16
`
`Art Unit: 3992
`
`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(IV) for examples to assist in the preparation of proper proposed
`
`amendments in reexamination proceedings.
`
`Service of Papers
`
`After the filing of a request for 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 1.248. See 37 CFR 1.550.
`
`Notification of Concurrent Proceedings
`
`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. 8,494,581 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.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`PO. Box 1450
`
`Exhibit 2128 Page 18
`
`Exhibit 2128 Page 18
`
`
`
`Application/Control Number: 90/014,071
`
`Page 17
`
`Art Unit: 3992
`
`Alexandria, VA 223 13— 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 should be directed to the Central
`
`Reexamination Unit at telephone number (571) 272—7705.
`
`/Fred Ferris/
`
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/James Menefee/
`
`Primary Examiner, Art Unit 3992
`
`/Hetul Patel/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`Exhibit 2128 Page 19
`
`Exhibit 2128 Page 19
`
`
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