`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`90/015,052
`
`06/08/2022
`
`8352730
`
`02198-00080
`
`9657
`
`Hard IP LLC (General)
`10 Notch Hill Drive
`Livingston, NJ 07039
`
`TARAE, CATHERINE MICHELLE
`
`3992
`
`08/02/2022
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Patent Owner Exhibit 2022, Page 1 of 18
`
`Patent Owner Exhibit 2022, Page 1 of 18
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent 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)
`
`
`
`Quinn Emanuel Urquhart & Sullivan, LLP
`Marissa Ducca
`
`1300 | Street NW, Suite 900
`Washington, DC 20005
`
`EXPARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/015,052 .
`
`PATENT UNDER REEXAMINATION 8352730 .
`
`ART UNIT 3992.
`
`Enclosedis a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparfe reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copyis supplied after the reply by requester, 37 CFR 1.535, or the time forfiling a
`reply has passed, no submission on behalf of the exparte reexamination requesterwill be
`acknowledgedor considered (37 CFR 1.550(g)).
`
`PTOL-465(Rev.07-04)
`
`Patent OwnerExhibit 2022, Page 2 of 18
`
`Patent Owner Exhibit 2022, Page 2 of 18
`
`
`
`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`C.M TARAE
`3992
`No
`
`90/015,052
`
`8352730
`
`Control No.
`
`Patent Under Reexamination
`
`
`
`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 doesnotfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`--The MAILING DATE ofthis communication appears on the coversheet with the correspondence adaress--
`
`The request for exparte reexamination filed 06/08/2022 has been considered and a determination has
`been made. Anidentification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)(]
`
`PTO-892,
`
`b)4
`
`PTO/SB/08,
`
`c)Q) Other:
`
`1.
`
`The request for expavfe 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 BY37CFR 1.550(c).
`
`CATHERINE M TARAE/
`Reexamination Specialist, Art Unit 399
`
`U.S. Patent and Trademark Office
`PTOL-471G(Rev.01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20220714
`
`Patent Owner Exhibit 2022, Page 3 of 18
`
`Patent Owner Exhibit 2022, Page 3 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 2
`
`DECISION ON REQUEST FOR EX PARTE REEXAMINATION
`
`The present application is being examined under the pre-AlAfirst to invent
`
`provisions.
`
`A substantial new question (SNQ) of patentability affecting claims 1-17 of U.S.
`
`Pat. No. 8,352,730 to Giobbi (“the ‘730 Patent”) is raised by the Request for Ex Parte
`
`reexamination filed June 8, 2022 (“Request”) by Samsung Electronics America, Inc.
`
`(“Requestor”).
`
`Reexamination is granted for claims 1-17.
`
`Prior and Concurrent Proceedings andLitigation
`
`Examiner notes related ex parte reexamination filings: 90/015,053 (decision on
`
`Order not yet made) and 90/015,054 (Order granted on July 13, 2022).
`
`Examinerfurther notes IPR2021-01444, which concluded with a Denial of
`
`Institution in which the PTAB indicated Petitioner did not show a reasonable likelinood
`
`of prevailing because Petitioner did not show persuasively that the references taught a
`
`“third-party trusted authority.”
`
`The ‘730 Patent is also the subject of 6:21cv210, Proxense, LLC V. Samsung
`
`Electronics Co, Ltd Et Al., currently open.
`
`The patent owneris reminded of the continuing responsibility under 37 CFR
`
`1.565(a) to apprise the Office of anylitigation activity, or other prior or concurrent
`
`proceeding, involving the ‘730 Patent throughout the course of this reexamination
`
`proceeding. The third party requesteris also remindedof the ability to similarly apprise
`
`Patent Owner Exhibit 2022, Page 4 of 18
`
`Patent Owner Exhibit 2022, Page 4 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 3
`
`the Office of any suchactivity or proceedings throughout the courseofthis
`
`reexamination proceeding. See MPEP §§ 2207, 2282, and 2286.
`
`References Asserted by PO Requester as Raising SNQsof Patentability
`
`e US. Pat. No. 7,188,110 to Ludtke (“Ludtke” or “Ex. 1005”) available as
`
`prior art under 35 USC 102(e);
`
`e U.S. Pub. No. 20030196084 to Okerekeet al. (“Okereke’” or “Ex. 1006”)
`
`available as prior art under 35 USC 102(a,e);
`
`e US. Pub. No. 20030177102 to Robinson (“Robinson’or “Ex. 1007”)
`
`available as prior art under 35 USC 102(a,e); and
`
`e WO 9956429 A2 to Scott (“Scott” or “Ex. 1008”) available as prior art
`
`under 35 USC 102(b).
`
`Other
`
`e Declaration of Benjamin F. Goldberg (“Goldberg Dec’ or “Ex. 1003”).
`
`All of the references and declarations identified in the request have been
`
`reviewed and considered.
`
`Patent Owner Exhibit 2022, Page 5 of 18
`
`Patent Owner Exhibit 2022, Page 5 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 4
`
`Prosecution History of the ‘730 Patent
`
`Application 11/314,199 (the ‘199 Application) that matured into the ‘730 Patent
`
`wasoriginally filed December 20, 2005 with claims 1-21.
`
`A first Non-Final Office Action was mailed April 27, 2009 rejecting claims 15-20
`
`under 35 USC 101 for being directed to non-statutory subject matter. Claims 1, 4-11,
`
`15, and 18 were also rejected under 35 USC 102 as being anticipated by U.S. Pat. No.
`
`6,041,410 to Hsu et al. (“Hsu”). Claims 2, 3, 12-14, 16-17, and 19-21 were also rejected
`
`under 35 USC 103 as being unpatentable over Hsu and U.S. Pub. No. 20040129787to
`
`Saito et al. (“Saito”).
`
`On July 27, 2009, Applicant responded with amendments to the claims and
`
`cancelling claims 4, 6, 11, and 16.
`
`Examiner issued a Final Office Action on November 25, 2009 rejecting claims 1,
`
`2, 5, 7-10, 12, and 19-21 under 35 USC 102 as being anticipated by Hsu. Claims 15
`
`and 18 were also rejected under 35 USC 103 as being unpatentable over Hsu. Claims
`
`3, 13-14, and 17 were rejected under 35 USC 103 as being unpatentable over Hsu and
`
`Saito.
`
`Applicantfiled a Request for Continued Examination (“RCE”) on February 25,
`
`2010 amending the claims and adding new claims 22-25.
`
`Examiner issued a Non-Final Office Action on June 7, 2010 rejecting claims 1, 2,
`
`5, 7-10, 12, 15, and 18-25 under 35 USC 103 as being unpatentable over Hsu and
`
`rejecting claims 3, and 13-14 under 35 USC 103 as being unpatentable over Hsu and
`
`Saito.
`
`Patent Owner Exhibit 2022, Page 6 of 18
`
`Patent Owner Exhibit 2022, Page 6 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 5
`
`After several more rounds of prosecution and claim amendments, a Notice of
`
`Allowance was issued August 31, 2012 allowing claims 1-3, 5, 7-10, 12-15, and 17-21
`
`with the following reasons for allowance:
`
`“The closest prior arts cited are generally directed to various aspects of verifying
`
`users during authentication of a device. However, none of the cited arts found
`
`alone or in combination suggests or teaches the elements of the independentclaims.
`
`For instance, no parts of the cited arts teach or suggestlimitations in a first embodiment
`
`of the invention which verifying a user during authentication of an integrated device,
`
`comprising the steps of: persistently storing biometric data of the user and a plurality of
`
`codes and other data values comprising a device ID code uniquely identifying the
`
`integrated device and a secret decryption value in a tamper proof formatwritten to a
`
`storage element on the integrated device that is unable to be subsequently altered:
`
`wherein the biometric data is selected from a group consisting of a palm print, a retinal
`
`scan, an iris scan, a hand geometry, a facial recognition, a signature recognition and a
`
`voice recognition; responsive to receiving a request for a biometric verification of the
`
`user, receiving scan data from a biometric scan; comparing the scan data to the
`
`biometric data to determine whether the scan data matches the biometric data;
`
`responsive to a determination that the scan data matches the biometric data, wirelessly
`
`sending one or more codesfrom the plurality of codes and the other data values for
`
`authentication by an agent that is a third-party trusted authority possessing a list of
`
`device ID codes uniquely identifying legitimate integrated devices, wherein the one or
`
`more codes and other data values includes the device ID code; and responsive to
`
`authentication of the one or more codes and the other data values by the agent,
`
`Patent Owner Exhibit 2022, Page 7 of 18
`
`Patent Owner Exhibit 2022, Page 7 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 6
`
`receiving an access message from the agent allowing the user accessto an application,
`
`wherein the application is selected from a group consisting of a casino machine, a
`
`keyless lock, a garage door opener, an ATM machine, a hard drive, computer software,
`
`a web site and a file. The cited prior arts also do not teach or suggestlimitations in the
`
`second embodimentof the invention which authenticating a verified user using a
`
`computer processor configured to execute method steps, comprising: receiving one or
`
`more codesfrom a plurality of codes and other data valuesincluding a device ID code,
`
`wherein the plurality of codes and the other data values comprises the device ID code
`
`uniquely identifying the integrated device and a secret decryption value associated with
`
`a biometrically verified user, the device ID code being registered with an agentthat is a
`
`third-party trusted authority possessinga list of device ID codes uniquely identifying
`
`legitimate integrated devices; requesting authentication of the one or more codes and
`
`the other data values by the agent, wherein the authentication determines whether the
`
`one or more codes and the other data values are legitimate; receiving an access
`
`message from the agent; and in responseto a positive access message, allowing the
`
`biometrically verified user access to an application, wherein the application is selected
`
`from a group consisting of a casino machine, a keyless lock, a garage door opener, an
`
`ATM machine, a hard drive, computer software, a web site andafile.”
`
`IPR2021-01444
`
`A petition requesting inter partes review wasfiled August 26, 2021.
`
`IPR2021-
`
`01444 concluded with a Denial of Institution in which the PTAB indicated Petitioner did
`
`not show a reasonable likelinood of prevailing because Petitioner did not show
`
`Patent Owner Exhibit 2022, Page 8 of 18
`
`Patent Owner Exhibit 2022, Page 8 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 7
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`persuasively that the references taught a “third-party trusted authority.” The petition
`
`presentedthe following references in the grounds of unpatentability: Scott
`
`(WO1999056429), Russell (US20040044627), Lapsley (US2001/0000535), Robinson
`
`(US2003/0177102), Rhoads (US2004/0153649), Berardi (US7239226), Rosen
`
`(US6175921), Shreve (US2002/0109580), and Kinoshita (US2003/0055792).
`
`Substantial New Question of Patentability Requirement
`
`For a substantial new question of patentability (SNQ) to be present, it is only
`
`necessarythat: (A) the prior art patents and/or printed publications raise a substantial
`
`question of patentability regarding at least one claim, i.e., the teaching of the (prior art)
`
`patents and printed publications is such that a reasonable examiner would consider the
`
`teaching to be important in deciding whether or not the claim is patentable; and (B) the
`
`same question of patentability as to the claim has not been decided by the Office in an
`
`earlier concluded examination or review of the patent, raised to or by the Office ina
`
`pending reexamination or supplemental examination of the patent, or decidedin a final
`
`holding of invalidity (after all appeals) by a federal court in a decision on the merits
`
`involving the claim. MPEP 2242 |. Additionally, it must first be demonstrated that a
`
`patent or printed publication that is relied upon in a proposed rejection presents a new,
`
`non-cumulative technological teaching that was not previously considered and
`
`discussed on the record during the prosecution of the application that resulted in the
`
`patent for which reexamination is requested, and during the prosecution of any other
`
`prior proceeding involving the patent for which reexamination is requested. MPEP 2216.
`
`Patent Owner Exhibit 2022, Page 9 of 18
`
`Patent Owner Exhibit 2022, Page 9 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 8
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`Proposed SNQs Raisedin the Request
`
`Issue 1: Ludtke in combination with Okereke renders obvious claims 1-2, 4-9,
`
`11-12, and 14-17.
`
`Issue 2: Ludtke in combination with Okereke and Robinson renders obvious
`
`claims 3, 10, and 13.
`
`Issue 3: Ludtke in combination with Scott renders obvious claims 1-2, 4-9, 11-
`
`12, and 14-17.
`
`Issue 4: Ludtke in combination with Scott and Robinson renders obvious claims
`
`3, 10, and 13.
`
`Issue 1: Proposed SNQ based on Ludtke in combination with Okereke (Request at pp.
`
`Analysis of SNQs
`
`45-84)
`
`Ludtke discloses a transaction device, ¢.g., a privacy card 130, is used to
`
`maintain the privacy of the user while enabling the user to perform transactions. The
`
`transaction device information is provided to the TPCH 110 that then indicates to the
`
`vendor 125 and the user 120 approval of the transaction to be performed. (6:39-44)
`
`Patent Owner Exhibit 2022, Page 10 of 18
`
`Patent Owner Exhibit 2022, Page 10 of 18
`
`
`
`PROCESENE
` 1
`
`4
`CLEARING ROUSE |
`
`e
`
`FRANEALTON
`PRASCY
`
`
`
`FUSES'S}
`
`ERE“WAR:
`fe1as
`
`PLS
`THOTS
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 9
`
`COMMEACE GENERAL ARCHITECTURE
`
`FRONTESE > BACK ENT
` Fr@AAICLAL
`
` FIG. 4
`serene e PHYSIOL DISTRI IGN CHARS,
`
`CS,
`1B
`
`Biometric data such as fingerprint are used to authorize users. (14:33-46) The
`
`transaction device contains a unique identifying value along with other information that
`
`allows the transaction privacy clearinghouseto track its use and assist in user
`
`transactions. The transaction devices themselves have an identity so that a user's true
`
`identity and direct contact information are not known to vendors. (6:21-35) The
`
`transaction privacy clearing house maintains a secure database of transaction device
`
`information and user information. (6:49-51)
`
`Okereke discloses a secure wireless communications system that uses a session
`
`key to encrypt credential information. (]J25-26)
`
`Accordingly, it appears Ludtke in combination with Okereke disclose the
`
`technological teachings that are deemed important to a reasonable examiner in
`
`determining the patentability of claim 1.
`
`Ludtke and Okereke were notpreviously cited in the prosecution history of the
`
`‘730 Patent; and the issues are not the subject of a final holding by a Federal Court.
`
`Patent Owner Exhibit 2022, Page 11 of 18
`
`Patent Owner Exhibit 2022, Page 11 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 10
`
`The teachings are also not cumulative to the teachings previously residing in the prior
`
`art cited by the ‘730 Patent. Therefore, the Examiner agrees that Ludtke in combination
`
`with Okereke raise a SNQ of patentability with respect to claim 1.
`
`Issue 2: Proposed SNQ based on Ludtke in combination with Okereke and Robinson
`
`(Request at pp. 85-88)
`
`Ludtke and Okereke were discussed above with regard to Issue 1.
`
`Robinson discusses a system for biometric authorization for age verification. A
`
`central database holds information related to users to authenticate a user’s age to
`
`access an age restricted area, for example. ({]/27-29)
`
`Accordingly, it appears Ludtke in combination with Okereke and Robinson
`
`disclose the technological teachings that are deemed important to a reasonable
`
`examiner in determining the patentability of claim 3.
`
`Robinson wasnot previously cited in the prosecution history of the ‘730 Patent;
`
`and the issues are not the subject of a final holding by a Federal Court. While Robinson
`
`wascited in the previous IPR, the IPR was denied institution, so a final written decision
`
`was not made using Robinson. The teachings are also not cumulative to the teachings
`
`
`
`previously residing in the prior art cited by the ‘730 Patent. Therefore, the Examiner
`
`agrees that Ludtke in combination with Okereke and Robinson raise a SNQ of
`
`patentability with respect to claim 3.
`
`Patent Owner Exhibit 2022, Page 12 of 18
`
`Patent Owner Exhibit 2022, Page 12 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 11
`
`Issue 3: Proposed SNQ based on Ludtke in combination with Scott (Request at pp. 88-
`
`108)
`
`Ludtke was discussed abovewith regard to Issue 1.
`
`Scott discloses a personal identification system for allowing access to secure
`
`facilities. A personal identification device (PID) includes a biometric sensorfor
`
`capturing a biometric trait of a user that is unique to the user. The captured biometric
`
`trait is compared with stored biometric data.
`
`If there is a match, the user is identified as
`
`enrolled (i.e., authorized to access the secure facility). (1:4-14) An ID code Is used to
`
`uniquely identify a person or a device. The ID code can bestored in the memory of the
`
`PID. (4:3-5; 11:6-16). The PID uses an encryption algorithm and public/private key
`
`pairs that are stored in memory for encryption.
`
`(11:24-30; 12:8-13)
`
`Accordingly, it appears Ludtke in combination with Scott discloses the
`
`technological teachings that are deemed important to a reasonable examiner in
`
`determining the patentability of claim 1.
`
`Scott was not previously cited in the prosecution history of the ‘730 Patent; and
`
`the issues are not the subject of a final holding by a Federal Court. While Scott was
`
`cited in the previous IPR, the IPR was denied institution, so a final written decision was
`
`not made using Scott. The teachings are also not cumulative to the teachings
`
`
`
`previously residing in the prior art cited by the ‘730 Patent. Therefore, the Examiner
`
`agrees that Ludtke in combination with Scott raises a SNQ of patentability with respect
`
`to claim 1.
`
`Patent Owner Exhibit 2022, Page 13 of 18
`
`Patent Owner Exhibit 2022, Page 13 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 12
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`Issue 4: Proposed SNQ based on Ludtke in combination with Scott and Robinson
`
`(Request at pp. 109-111)
`
`Ludtke, Scott and Robinson were discussed above with regard to Issues 1-3.
`
`Since Ludtke in combination with Scott are considered to raise an SNQ, Ludtke
`
`in combination with Scott and Robinson would also be considered asraising an SNQ.
`
`Accordingly, it appears Ludtke, Scott and Robinson disclose the technological
`
`teachings that are deemed important to a reasonable examinerin determining the
`
`patentability of claim 3.
`
`Ludtke, Scott and Robinson werenot previously cited in the prosecution history
`
`of the ‘730 Patent; and the issues are not the subjectof a final holding by a Federal
`
`Court. The teachings are also not cumulative to the teachings previously residing in the
`
`prior art cited by the ‘730 Patent. Therefore, the Examiner agrees that Ludtke, Scott
`
`and Robinson raise a SNQ of patentability with respect to claim 3.
`
`35 USC 325(d)
`
`A review ofthe post grant history of the ‘730 patent indicates that that the patent
`
`wasthe subject of the single AIA petition (IPR2021-01444). On August 26, 2021,
`
`Petitioner, Samsung Electronics America, Inc., filed a petition for inter partes review,
`
`asserting the following grounds raised a reasonable likelihood in prevailing (RLP) in
`
`showing that the claims 1-11 were unpatentable. The petition asserted the following
`
`grounds:
`
`Patent Owner Exhibit 2022, Page 14 of 18
`
`Patent Owner Exhibit 2022, Page 14 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 13
`
`Seoit, Russell, Lapsiey,
`Robinson
`
`Kinoshita
`
`Scott, Russell, Lapsicy,
`Rhoads
`
`Berardi, Rosen, Shreve.
`
`On February 28, 2022, the Board issued a decision declining to institute inter
`
`partes review of the ‘730 patent holding that the petition failed to raise an RLP, because
`
`the petition did not show persuasively that the references taught the claimed limitation
`
`of a “third-party trusted authority.”
`
`A comparison between the instant request for ex parte reexamination of the ‘730
`
`patent indicates that the request is not based on substantially the same prior art or
`
`arguments as the prior IPR petition. While the reexamination request also cites Scott
`
`and Robinson which werecited in the prior AIA petition, each of the asserted grounds in
`
`the requestcites these references as secondary references with the newly cited Ludtke
`
`reference as a primary reference specifically to address the omission identified as the
`
`basis for the Board’s refusal to institute IPR2021-01444. As pointed out by third party
`
`requester Ludtke discloses a transaction processing [or privacy] clearing house (TCPH)
`
`whichis a third party trusted authority, and further discloses that the TPCH “may access
`
`relevant accountinformation to authorize transactions.” Col. 3:40-45. Additionally,
`
`Figure 1 of Ludtke shows how the TPCH is a third party. The teachings in Lutke and
`
`arguments related to Lutke were not presentin the prior AIA petition. Accordingly, the
`
`prior art and arguments provided in the request are not the same or substantially the
`
`same as those presented IPR2021-01444.
`
`Patent Owner Exhibit 2022, Page 15 of 18
`
`Patent Owner Exhibit 2022, Page 15 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 14
`
`In view of the facts above, particularly the fact that the instant reexamination
`
`request is not based on substantially the same prior art or arguments as those
`
`presented to the Office in the petition in IPR2021-01444 and the fact the third party
`
`requester has not engaged serial challenges ‘730 patent, other than a single prior IPR
`
`petition, a discretionary denial pursuant to 35 USC 325(d) is not implicated.
`
`Accordingly, ex parte reexamination is Orderedin view of the holdings above that
`
`the prior art raises a substantial new question of patentability to the ‘730 patent.
`
`Conclusion
`
`Since an SNQ has been raised for at least one claim, the Request for Ex Parte
`
`reexamination of claims 1-17 is granted.
`
`Extension of Time
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings becausethe 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 CFR
`
`1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in
`
`37 CFR 1.550(c).
`
`Amendment in Reexamination Proceedings
`
`Patent owner is notified that any proposed amendmentto the specification and/or
`
`claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be
`
`Patent Owner Exhibit 2022, Page 16 of 18
`
`Patent Owner Exhibit 2022, Page 16 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 15
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`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(IV) for examplesto assist in the
`
`preparation of proper proposed amendmentsin reexamination proceedings.
`
`Service of Papers
`
`After the filing of a request for reexamination by a third party requester, any
`
`documentfiled by either the patent owner or the third party requester must be served on
`
`the other party (or parities where two or more third party requester proceedings are
`
`merged) in the reexamination proceeding in the mannerprovided in 37 CFR 1.248. See
`
`37 CFR 1.550.
`
`Future Correspondence
`
`If attempts to reach Examiner Michelle Tarae by telephone at 571-272-6727 are
`
`unsuccessful, the examiner’s supervisor, Andrew Fischer, can be reached on 5/71-272-
`
`6779.
`
`All correspondencerelating to this ex parte reexamination proceeding should be
`
`directed:
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner of Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`Patent Owner Exhibit 2022, Page 17 of 18
`
`Patent Owner Exhibit 2022, Page 17 of 18
`
`
`
`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 16
`
`(571) 273-9900
`Central Reexamination Unit
`
`By Hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web mayalternatively submit such correspondence via
`the electronic filing system EFS-Web, at
`
`httos://efs.uspto. gov/efile/myportal/efs-registered
`
`EFS-Web offers the benefit of quick submission to the particular area of the
`Office that needs to act on the correspondence. Also, EFS-Web submissions are "soft
`scanned" (i.e., electronically uploaded) directly into the official file for the reexamination
`proceeding, which offers parties the opportunity to review the content of their
`submissions after the "soft scanning" processis complete.
`
`Any inquiry concerning this communication should be directed to the Central
`
`Reexamination Unit at (571) 272-7705.
`
`Signed:
`
`/CATHERINE M TARAE/
`Reexamination Specialist, Art Unit 3992
`
`Conferees:
`
`/RSD/
`
`/ALEXANDER J KOSOWSKI/
`Supervisory Patent Examiner, Art Unit 3992
`
`Patent Owner Exhibit 2022, Page 18 of 18
`
`Patent Owner Exhibit 2022, Page 18 of 18
`
`
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