`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Inventor: Timothy J. SPEIGHT
`
`Confirmation No.: 5091
`
`Applicant: Intellectual Ventures I LLC
`
`Art Unit: 3992
`
`Examiner: Minh Dieu T. NGUYEN
`US. Patent. No. 10,292,138 (issuedfrom
`Appl. No. 15/618, 669, filed June 9, 2017)
`
`
`
`Issue Date: May 14, 2019 Atty. Docket: 3059.736SPX0
`
`Supplemental Examination Certificate
`
`Control No.: 96/000,323
`
`
`Issued: April 20, 2020 Title: Determining Buffer Occupancy and Selecting Data for Transmission on a
`
`Radio Bearer
`
`Comments on Reasons for SNQ of Patentability Determination
`
`Commissionerfor Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`Patent Owner thanks the Examiner for indicating that no substantial new question of
`
`patentability was raised in the request
`
`for Supplemental Examination. See Supplemental
`
`Examination Certificate dated April 20, 2020.
`
`Patent Owner notes the Examiner’s finding that reference Choi does not raise a
`
`substantial new question of patentability in the Reasons for Substantial New Question of
`
`Patentability Determination dated April 20, 2020, but takes no position regarding the reasoning
`
`undergirding the Examiner’s finding. Patent Owner reserves the right to demonstrate that the
`
`claims of U.S. Patent No. 10,292,138 are patentable over the art of record for further reasons
`
`related to any of their recited features. Patent Ownerfurther respectfully asserts that there may be
`
`additional reasons for patentability of the claims of U.S. Patent No. 10,292,138 not explicitly
`
`stated in this record and Patent Owner does not waiveits rights to such arguments by not further
`
`addressing such reasonsherein.
`
`Ex.1018 / Page 1 of 162
`TESLA,INC.
`
`Ex.1018 / Page 1 of 162
`TESLA, INC.
`
`
`
`Control No. 96/000,323
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Ross G. Hicks, #56,374/
`
`Ross G. Hicks
`Attorney for Patent Owner
`Registration No. 56,374
`
`Date:_June 3, 2020
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`15098129_1.docx
`
`Atty. Dkt. No. 3059.736SPX0
`
`Ex.1018 / Page 2 of 162
`TESLA,INC.
`
`Ex.1018 / Page 2 of 162
`TESLA, INC.
`
`
`
`Electronic AcknowledgementReceipt
`
`39614710
`
`96000323
`
`Application Number:
`
`International Application Number:
`
`Confirmation Number:
`
`Title of Invention:
`
`DETERMINING BUFFER OCCUPANCY AND SELECTING DATA FOR
`TRANSMISSION ON A RADIO BEARER
`
`Patent Number:
`
`First Named Inventor/Applicant Name:
`
`10292138
`
`Customer Number:
`
`26111
`
`Ross Gordon Hicks/Lynette Miller
`
`Filer Authorized By:
`
`Ross Gordon Hicks
`
`Attorney Docket Number:
`
`3059.736SPX0
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`03-JUN-2020
`
`31-MAR-2020
`
`14:41:11
`
`
`
`Application Type: Supplemental Examination
`
`Paymentinformation:
`
`Submitted with Payment Document
`
`Pages
`Multi
`File Size(Bytes)/
`Document Description
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`
`Number Message Digest|Part/.zip|P (if appl.)
`
`
`
`Ex.1018 / Page 3 of 162
`TESLA, INC.
`
`Ex.1018 / Page 3 of 162
`TESLA, INC.
`
`
`
`Miscellaneous Incoming Letter
`
`119797
`
`2020-06-03-Comments-
`
`Reasons-SNQ-
`Patentabi lity-3059-736SPX0.pd f dpsabo29241fc0a7672/Adsbat 1406a1e
`
`
`
`
`New Applications Under 35 U.S.C. 111
`If a new applicationis being filed and the application includes the necessary componentsfor a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shownonthis
`Acknowledgement Receiptwill establish thefiling date of the application.
`National Stage of an International Application under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903indicating acceptanceof the application as a
`national stage submission under35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`NewInternational Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary componentsfor
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receiptwill establish the international filing date of
`the application.
`
`Information:
`
`TotalFiles Size (in bytes); 119797
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable.It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`Ex.1018 / Page 4 of 162
`TESLA,INC.
`
`Ex.1018 / Page 4 of 162
`TESLA, INC.
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
` Inventor: Timothy J. SPEIGHT Confirmation No.: 5091
`
`
`
`Applicant: Intellectual Ventures IT LLC Art Unit: 3992
`
`
`
`
`Examiner: Minh Dieu T. NGUYEN
`U.S. Patent. No. 10,292,138 (issuedfrom
`Appl. No. 13/618, 669, filed June 9, 2017)
`
`
`
`Issue Date: May 14, 2019 Atty. Docket: 3059.736SPX0
`
`Supplemental Examination Certificate
`Issued: April 20, 2020
`
`Control No.: 96/000,323
`
`Title: Determining Buffer Occupancy and Selecting Data for Transmission on a
`Radio Bearer
`
`Request for Refund Under 37 C.F.R. §§ 1.26(c)(3) and 1.625(c)
`
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`Attn: Mail Stop 16
`
`Patent Owner hereby requests a refund under 37 C.F.R. §§ 1.26(c)(3) and 1.625(c) in the
`
`amount of $12,100. This refund is to be credited to the credit card account from which the fee
`
`wasoriginally provided, or credited to Deposit Account No. 19-0036.
`
`Because no reexamination was ordered in response to the Request for Supplemental
`
`Examination filed for the above captioned patent, Patent Owner requests a refund of the $12,100
`
`reexamination fee.
`
`A copy of the Supplemental Examination Certificate and Reasons for Determination of
`
`No SNQ of Patentability dated April 20, 2020, which indicate that no reexamination will be
`
`ordered, is attached.
`
`Ex.1018 / Page 5 of 162
`TESLA, INC.
`
`Ex.1018 / Page 5 of 162
`TESLA, INC.
`
`
`
`Request for Refund — Control No. 96/000,323
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Ross G. Hicks, #56,374/
`
`Ross G. Hicks
`Attorney for Patent Owner
`Registration No. 56,374
`
`Date:__April 23, 2020
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`14912392}.docx
`
`-2-
`
`Atty. Dkt. No. 3059.736SPX0
`
`Ex.1018 / Page 6 of 162
`TESLA, INC.
`
`Ex.1018 / Page 6 of 162
`TESLA, INC.
`
`
`
`
`
`Unrrep Srates PATENT AND TRADEMARK OFFICE
`
`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.
`
`96/000,323
`
`FILING DATE
`
`03/31/2020
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`10292138
`
`3059.736SPX0
`
`5091
`
`04/20/2020
`7590
`26111
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE,N.W.
`WASHINGTON,DC 20005
`
`TXAM
`
`NGUYEN,MINH DIBU T
`
`3992
`
`MAIL DATE
`
`04/20/2020
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period forreply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Ex.1018 / Page 7 of 162
`TESLA, INC.
`
`Ex.1018 / Page 7 of 162
`TESLA, INC.
`
`
`
`az SUPPLEMENTAL EXAMINATION CERTIFICATE
`United States Patent
`ao)Number: US 10,292,138 F1
`Speight
`(45) Certificate Issued:
`Apr. 20, 2020
`
`Control No.: 96/000,323
`Primary Examiner: MinhDieu Nguyen
`
`Filing Date: Mar. 31, 2020
`
`No substantial new question of patentability is raised in the request for supplemental examination. See the Reasons for
`Substantial New Question of Patentability Determinationinthefile of this proceeding.
`
`(56) Items of Information
`
`FOREIGN PATENT DOCUMENTS
`
`DE
`
`10 2004 044 965
`
`03/2006
`
`Page I of I
`
`Ex.1018 / Page 8 of 162
`TESLA, INC.
`
`Ex.1018 / Page 8 of 162
`TESLA, INC.
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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.goy
`
`
`
`
`
`
`
`
`APPLICATION NO. ATTORNEY DOCKET NO.|CONFIRMATION NO.FIRST NAMED INVENTOR
`
`96/000,323
`
`03/31/2020
`
`10292138
`
`3059.736SPX0
`
`5091
`
`STE
`SLI
`TEIN&
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. ne
`1100 NEW YORK AVENUE,N.W.
`NGUYEN, MINH DIEU T
`WASHINGTON, DC 20005
`
`3992
`
`MAIL DATE
`
`04/20/2020
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period forreply,if any, is set in the-attached communication.
`
`PTOL-90A. (Rev. 04/07)
`
`Ex.1018 / Page 9 of 162
`TESLA, INC.
`
`Ex.1018 / Page 9 of 162
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`
`
`
`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`Page 1
`
`REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY
`
`DETERMINATION
`
`This is in response to a request for a supplemental examination under 35 U.S.C.
`
`257 of claims 1-14 of U.S. Patent No. 10,292,138 (hereinafter “the ‘138 Patent”). The
`
`‘138 Patent was issued on May 14, 2019.
`
`The requestfor a finding of a substantial new question of patentability for claims
`
`1-14 in the ‘138 Patent is denied in view of the fact that Choi does not raise a
`
`substantial new question of patentability as addressed below.
`
`Notification of Concurrent Proceedings
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.985 to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving the ‘138 Patent throughout the course of this reexamination
`
`proceeding. The third party requesteris 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 § 2686 and 2686.04.
`
`PROSECUTION HISTORY
`
`The '138 patent issued on May 14, 2019, from U.S. Application No. 15/618,669
`
`("the ‘669 application"), filed June 9, 2017.
`
`Ex.1018 / Page 10 of 162
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`Ex.1018 / Page 10 of 162
`TESLA, INC.
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`
`
`Application/Control Number: $6/000,323
`Art Unit: 3992
`
`Page 2
`
`The '669 application wasoriginally filed with 8 claims.
`
`On January 12, 2018, a non-final office action was mailed rejecting:
`
`Claims 1-8 on the ground of non-statutory double patenting over claims 1-
`
`8 of US Patent 8,681,466;
`
`Claims 1-8 on the ground of non-statutory double patenting over claims 5-
`
`6, 9-13, 15 of US Patent 9,320,018; and
`
`Claims 1-2, 6-7 on the ground of non-statutory double patenting over
`
`claims 3, 9, 12, 14 of US Patent 8,428 026.
`
`On July 12, 2018, Applicant mailed a response cancelling claims 1-8, adding new
`
`claims 9-22 and arguing that the claims amendmentfiled on 7/12/2018 rendering the
`
`non-statutory double patenting rejections moot.
`
`On September 11, 2018, the Notice of Allowance was mailed with the reasons for
`
`allowanceas follows (pages 6-7):
`
`The prior art of the reference being relied upon and made ofrecord, in single or
`in combination, does not disclose explicitly the limitations of:
`
`“select data from the plurality of radio bearers for transmission using the single
`allocation of uplink resources, wherein the selection of the data occurs using a first
`iteration and a seconditeration, wherein in thefirst iteration, the selection of the data is
`selected from a subsetof the plurality of radio bearers based on the received
`parameters, wherein in the second iteration, the selection of the data is based on
`buffered data for respective radio bearers, and cause the transmitter to transmit a signal
`including the selected data’ as disclosed in Claim 9.
`
`“selecting, by the processor, data from the plurality of radio bearers for
`transmission using the single allocation of uplink resources, wherein the selection of the
`
`Ex.1018 / Page 11 of 162
`TESLA,INC.
`
`Ex.1018 / Page 11 of 162
`TESLA, INC.
`
`
`
`Application/Control Number: $6/000,323
`Art Unit: 3992
`
`Page 3
`
`data occurs usingafirst iteration and a seconditeration; whereinin thefirst iteration, the
`selection of the data is selected from a subset ofthe plurality of radio bearers based on
`the received parameters; wherein in the seconditeration, the selection of the data is
`based on buffered data for respective radio bearers; and transmitting, by the transmitter,
`a signal including the selected data” as disclosed in Claim 16.
`
`Claims 9 and 16 are the patented claims 1 and 8, respectively in the ‘138 Patent.
`
`On December 11, 2018, the RCE wasfiled along with an IDS by the Applicant.
`
`On January 8, 2019, a second Notice of Allowance was mailed with the same
`
`reasons for allowance asstated in the first one dated 9/1 1/2018 (see page 7 of the
`
`second Notice of Allowance),
`
`The ‘138 Patent was issued on May 14, 2019.
`
`PROPOSED SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`The Requester requested a supplemental examination of claims 1-14 of the '138
`
`patent based upon the following prior art patents:
`
`German Patent Publication DE 10 2004 044 965 A1 to Choi et al., filed
`
`September 16, 2004, and published March 30, 2006 (herein after “Choi’).
`
`Requester proposes rejection as follows:
`
`SNQ1: Claims 1-14 are anticipated by Choi under 35 U.S.C. 102(a).
`
`Ex.1018 / Page 12 of 162
`TESLA,INC.
`
`Ex.1018 / Page 12 of 162
`TESLA, INC.
`
`
`
`Application/Control Number: 95/000,323
`Art Unit: 3992
`
`Page 4
`
`ANALYSIS OF SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`Analysis
`
`A substantial new question of patentability is raised by a cited patent orprinted
`
`publication when there is a substantial likelinood that a reasonable examiner would
`
`consider the prior art patent or printed publication important in deciding whetheror not
`
`the claim is patentable. A substantial new question of patentability is not raised by prior
`
`art presented in a reexamination requestif the Office has previously considered (in an
`
`earlier examination of the patent) the same question of patentability as to a patent claim
`
`favorable to the patent owner based on the same prior art patents or printed
`
`publications. In re Swanson, 88 USPQ2d 1196 (Fed. Cir. 2008).
`
`Choi Reference
`
`Choi fails to independently raise a substantial new question of patentability
`
`regarding claims 1-14 as presented in SNQ1. Choi fails to provide a technological
`
`teaching pertaining to the features (i.e., reason for allowance of claims 1 and 8) that
`
`distinguished the claimed invention over the prior art.
`
`Choi discloses a mobile radio system (e.g., a global system for mobile
`
`communication) has a data securing layer-unit and data securing layer-protocol-buffer
`
`memories. Weighing values and/or weighing ranges of value stored in a load memory
`
`specify a portion of data communication bandwidth available for data communication,
`
`where the bandwidth is allocated for selecting data stored in the data securing layer-
`
`protocol-buffer memories.
`
`Ex.1018 / Page 13 of 162
`TESLA, INC.
`
`Ex.1018 / Page 13 of 162
`TESLA, INC.
`
`
`
`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`Page 5
`
`Choi provides no teaching regarding “wherein the selection of the data occurs
`
`using4afirst iteration and a seconditeration, wherein in the first iteration, the selection of
`
`the data is selected from a subsetof the plurality of radio bearers based on the received
`
`parameters, wherein in the second iteration, the selection of the data is based on
`
`buffered data for respective radio bearers, and cause the transmitter to transmit a signal
`
`including the selected data” (claims 1 and 8).
`
`The prosecution history suggests that these features were the reason for
`
`allowance of the claims. Choi fails to raise a substantial new question because Choi
`
`fails to teach the features that distinguished the claimed invention overthepriorart.
`
`Accordingly, Choi does not raise a substantial new question of patentability as to
`
`claims 1-14.
`
`CORRESPONDENCE
`
`All correspondencerelating to this ex parte reexamination proceeding should be
`
`directed:
`
`By EFS:
`
`By Mail to:
`
`Registered users may submit via the electronicfiling system EFS-Web,at
`hitps://efs. uspto. gov/efile/myportal/efs-registered
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`Ex.1018 / Page 14 of 162
`TESLA,INC.
`
`Ex.1018 / Page 14 of 162
`TESLA, INC.
`
`
`
`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Page 6
`
`For EFS-Webtransmissions, 37 CFR 1.8(a)(1)(i) (C) and(ii) states that
`
`correspondence (exceptfor a request for reexamination and a corrected or replacement
`
`request for reexamination)will be considered timelyfiled if (a) it is transmitted via the
`
`Office's electronicfiling system in accordance with 37 CFR 1.6(a)(4), and (b) includes a
`
`certificate of transmission for each piece of correspondencestating the date of
`
`transmission, whichis prior to the expiration of the set period of time in the Office action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Examiner, or as to the status of this proceeding, should be directed to the Central
`
`Reexamination Unit at telephone number(571) 272-7705.
`
`Signed:
`/Minh Dieu Nguyen/
`Primary Examiner, Art Unit 3992
`(571) 272-3873
`
`Conferees:
`
`{MATTHEW E HENEGHAN/
`Primary Examiner, Art Unit 3992
`/M.Ff
`Supervisory Patent Examiner, Art Unit 3992
`
`Ex.1018 / Page 15 of 162
`TESLA, INC.
`
`Ex.1018 / Page 15 of 162
`TESLA, INC.
`
`
`
`Electronic AcknowledgementReceipt
`
`39240259
`
`96000323
`
`Application Number:
`
`International Application Number:
`
`Confirmation Number:
`
`Title of Invention:
`
`DETERMINING BUFFER OCCUPANCY AND SELECTING DATA FOR
`TRANSMISSION ON A RADIO BEARER
`
`Patent Number:
`
`First Named Inventor/Applicant Name:
`
`10292138
`
`Customer Number:
`
`26111
`
`Ross Gordon Hicks/Lynette Miller
`
`Filer Authorized By:
`
`Ross Gordon Hicks
`
`Attorney Docket Number:
`
`3059.736SPX0
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`23-APR-2020
`
`31-MAR-2020
`
`10:10:40
`
`
`
`Application Type: Supplemental Examination
`
`Paymentinformation:
`
`Submitted with Payment Document
`
`Pages
`Multi
`File Size(Bytes)/
`Document Description
`
`
`Number Message Digest|Part/.zip|P (if appl.)
`
`
`
`Ex.1018 / Page 16 of 162
`TESLA, INC.
`
`Ex.1018 / Page 16 of 162
`TESLA, INC.
`
`
`
`Refund Request
`
`2020-04-23-refund-
`request-3059-736SPX0-960003
`23.pdf
`
`9f15c447bc4558e2484d7d8157d9a1 360d
`
`255881
`
`
`
`
`New Applications Under 35 U.S.C. 111
`If a new applicationis being filed and the application includes the necessary componentsfor a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shownonthis
`Acknowledgement Receiptwill establish thefiling date of the application.
`National Stage of an International Application under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903indicating acceptanceof the application as a
`national stage submission under35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`NewInternational Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary componentsfor
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receiptwill establish the international filing date of
`the application.
`
`Information:
`
`TotalFiles Size (in bytes); 255881
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable.It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`Ex.1018 / Page 17 of 162
`TESLA, INC.
`
`Ex.1018 / Page 17 of 162
`TESLA, INC.
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`ATTORNEYDOCKETNO.
`
`CONFIRMATION NO.
`
`96/000,323
`
`03/31/2020
`
`10292138
`
`3059.736SPX0
`
`5091
`
`STE
`
`SLI
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC a
`
`TEIN&
`
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`NGUYEN,MINH DIEU T
`
`ART UNIT
`
`3992
`
`MALL DATE
`
`04/20/2020
`
`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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`Ex.1018 / Page 18 of 162
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`Ex.1018 / Page 18 of 162
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`a2 SUPPLEMENTAL EXAMINATION CERTIFICATE
`
`United States Patent
`Speight
`
`io) Number: US 10,292,138 F1
`(45) Certificate Issued:
`Apr. 20, 2020
`
`Control No.: 96/000,323
`Primary Examiner: MinhDieu Nguyen
`
`Filing Date: Mar. 31, 2020
`
`No substantial new question of patentability is raised in the request for supplemental examination. See the Reasons for
`Substantial New Question of Patentability Determination in the file of this proceeding.
`
`(56) Items of Information
`
`FOREIGN PATENT DOCUMENTS
`
`DE
`
`10 2004 044 965
`
`03/2006
`
`Page 1 of 1
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`Ex.1018 / Page 19 of 162
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`Ex.1018 / Page 19 of 162
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`ATTORNEYDOCKETNO.
`
`CONFIRMATION NO.
`
`96/000,323
`
`03/31/2020
`
`10292138
`
`3059.736SPX0
`
`5091
`
`STE
`
`SLI
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC a
`
`TEIN&
`
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`NGUYEN,MINH DIEU T
`
`ART UNIT
`
`3992
`
`MALL DATE
`
`04/20/2020
`
`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)
`
`Ex.1018 / Page 20 of 162
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`Ex.1018 / Page 20 of 162
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`
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`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`Page 1
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`REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY
`
`DETERMINATION
`
`This is in response to a request for a supplemental examination under 35 U.S.C.
`
`257 of claims 1-14 of U.S. Patent No. 10,292,138 (hereinafter “the ‘138 Patent’). The
`
`‘138 Patent was issued on May 14, 2019.
`
`The requestfor a finding of a substantial new question of patentability for claims
`
`1-14 in the ‘138 Patent is denied in view of the fact that Choi does notraise a
`
`substantial new question of patentability as addressed below.
`
`Notification of Concurrent Proceedings
`
`The patent owneris reminded of the continuing responsibility under 37 CFR
`
`1.985 to apprise the Office of anylitigation activity, or other prior or concurrent
`
`proceeding, involving the ‘138 Patent throughout the course of this reexamination
`
`proceeding. The third party requesteris also reminded of the ability to similarly apprise
`
`the Office of any suchactivity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP§ 2686 and 2686.04.
`
`PROSECUTION HISTORY
`
`The '138 patent issued on May 14, 2019, from U.S. Application No. 15/618,669
`
`("the '669 application"), filed June 9, 2017.
`
`Ex.1018 / Page 21 of 162
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`Ex.1018 / Page 21 of 162
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`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`Page 2
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`The '669 application wasoriginally filed with 8 claims.
`
`On January 12, 2018, a non-final office action was mailed rejecting:
`
`Claims 1-8 on the ground of non-statutory double patenting over claims 1-
`
`8 of US Patent 8,681,466;
`
`Claims 1-8 on the ground of non-statutory double patenting over claims 5-
`
`6, 9-13, 15 of US Patent 9,320,018; and
`
`Claims 1-2, 6-7 on the ground of non-statutory double patenting over
`
`claims 3, 9, 12, 14 of US Patent 8,428,026.
`
`On July 12, 2018, Applicant mailed a response cancelling claims 1-8, adding new
`
`claims 9-22 and arguing that the claims amendmentfiled on 7/12/2018 rendering the
`
`non-statutory double patenting rejections moot.
`
`On September 11, 2018, the Notice of Allowance was mailed with the reasons for
`
`allowanceas follows (pages 6-7):
`
`The prior art of the reference being relied upon and madeof record, in single or
`in combination, does not disclose explicitly the limitations of:
`
`“select data from the plurality of radio bearers for transmission using the single
`allocation of uplink resources, wherein the selection of the data occurs usingafirst
`iteration and a seconditeration, wherein in thefirst iteration, the selection of the data is
`selected from a subset of the plurality of radio bearers based on the received
`parameters, wherein in the seconditeration, the selection of the data is based on
`buffered data for respective radio bearers, and cause the transmitter to transmit a signal
`including the selected data” as disclosed in Claim 9.
`
`“selecting, by the processor, data from the plurality of radio bearers for
`transmission using the single allocation of uplink resources, wherein the selection of the
`
`Ex.1018 / Page 22 of 162
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`Ex.1018 / Page 22 of 162
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`
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`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`Page 3
`
`data occurs usingafirst iteration and a second iteration; wherein in thefirst iteration, the
`selection of the data is selected from a subset of the plurality of radio bearers based on
`the received parameters; wherein in the seconditeration, the selection of the data is
`based on buffered data for respective radio bearers; and transmitting, by the transmitter,
`a signal including the selected data’ as disclosed in Claim 16.
`
`Claims 9 and 16 are the patented claims 1 and 8, respectively in the ‘138 Patent.
`
`On December 11, 2018, the RCE wasfiled along with an IDS by the Applicant.
`
`On January 8, 2019, a second Notice of Allowance was mailed with the same
`
`reasons for allowance asstated in the first one dated 9/11/2018 (see page 7 of the
`
`second Notice of Allowance).
`
`The ‘138 Patent was issued on May 14, 2019.
`
`PROPOSED SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`The Requester requested a supplemental examination of claims 1-14 of the '138
`
`patent based uponthe following prior art patents:
`
`German Patent Publication DE 10 2004 044 965 A1 to Choi et al., filed
`
`September 16, 2004, and published March 30, 2006 (herein after “Choi”).
`
`Requester proposesrejection asfollows:
`
`SNQ1: Claims 1-14 are anticipated by Choi under 35 U.S.C. 102(a).
`
`Ex.1018 / Page 23 of 162
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`Ex.1018 / Page 23 of 162
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`
`
`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`Page 4
`
`ANALYSIS OF SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`Analysis
`
`A substantial new question of patentability is raised by a cited patent or printed
`
`publication when there is a substantial likelinood that a reasonable examiner would
`
`consider the prior art patent or printed publication important in deciding whetheror not
`
`the claim is patentable. A substantial new question of patentability is not raised by prior
`
`art presented in a reexamination requestif the Office has previously considered (in an
`
`earlier examination of the patent) the same question of patentability as to a patent claim
`
`favorable to the patent owner based on the same prior art patents or printed
`
`publications. In re Swanson, 88 USPQ2d 1196 (Fed. Cir. 2008).
`
`Choi Reference
`
`Choi fails to independently raise a substantial new question of patentability
`
`regarding claims 1-14 as presented in SNQ1. Choi fails to provide a technological
`
`teaching pertaining to the features (i.e., reason for allowance of claims 1 and 8) that
`
`distinguished the claimed invention overthe prior art.
`
`Choi discloses a mobile radio system (e.g., a global system for mobile
`
`communication) has a data securing layer-unit and data securing layer-protocol-buffer
`
`memories. Weighing values and/or weighing ranges of value stored in a load memory
`
`specify a portion of data communication bandwidth available for data communication,
`
`where the bandwidth is allocated for selecting data stored in the data securing layer-
`
`protocol-buffer memories.
`
`Ex.1018 / Page 24 of 162
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`Ex.1018 / Page 24 of 162
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`
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`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`Page 5
`
`Choi provides no teaching regarding “wherein the selection of the data occurs
`
`using a first iteration and a second iteration, wherein in thefirst iteration, the selection of
`
`the data is selected from a subsetof the plurality of radio bearers based on the received
`
`parameters, wherein in the seconditeration, the selection of the data is based on
`
`buffered data for respective radio bearers, and cause the transmitter to transmit a signal
`
`including the selected data” (claims 1 and 8).
`
`The prosecution history suggests that these features were the reason for
`
`allowanceof the claims. Choi fails to raise a substantial new question because Choi
`
`fails to teach the features that distinguished the claimed invention overthe priorart.
`
`Accordingly, Choi does not raise a substantial new question of patentability as to
`
`claims 1-14.
`
`CORRESPONDENCE
`
`All correspondencerelating to this ex parte reexamination proceeding should be
`
`directed:
`
`By EFS:
`
`By Mail to:
`
`Registered users may submit via the electronicfiling system EFS-Web, at
`https: //efs. uspto.gov/efile/nyportal/efs-registered
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`Ex.1018 / Page 25 of 162
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`Ex.1018 / Page 25 of 162
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`
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`Application/Control Number: 96/000,323
`Art Unit: 3992
`
`By hana:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Page 6
`
`For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that
`
`correspondence (except for a request for reexamination and a corrected or replacement
`
`request for reexamination) will be considered timelyfiled if (a) it is transmitted via the
`
`Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a
`
`certificate of transmission for each piece of correspondencestating the date of
`
`transmission, whichis prior to the expiration of the set period of time in the Office action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Examiner, or as to the status of this proceeding, should be directed to the Central
`
`Reexamination Unit at telephone number(571) 272-7705.
`
`Signed:
`/Minh Dieu Nguyen/
`Primary Examiner, Art Unit 3992
`(571) 272-3873
`
`Conferees:
`
`/MATTHEW E HENEGHAN/
`Primary Examiner, Art Unit 3992
`/M.F/
`Supervisory Patent Examiner, Art Unit 3992
`
`Ex.1018 / Page 26 of 162
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`Ex.1018 / Page 26 of 162
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`eeaoeess
`
`SS i UNITED STATES PATENT AND TRADEMARK OFFICE
`~
`
`
`Patent Owner's Name and Address:
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and 'lrademarkOffice
`Address: COMMTSSIONER, FOR PATENTS
`P.C. Box 1450
`Alexandria, Virgnia 22313-1450
`Wwww.uspto.gov
`
`IAEAAAA
`
`0000001158708
`
`JNM
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`1100 NEW YORK AVENUE,N.W.
`
`WASHINGTON, DC 20005
`Patent Number:
`10292138
`
`Control Number: 96/000,323
`
`Date Mailed: 04/01/2020
`
`NOTICE OF SUPPLEMENTAL EXAMINATION REQUESTFILING DATE
`
`The patent owner is herebynotified that the filing date of the request for supplemental examination is 03/31/2020,
`the date that a request meeting all of the applicable requirements of 37 CFR §§ 1.605, 1.610, and 1.615 was
`received by the Office.
`
`A supplemental examination certificate will issue within three months from the filing date of the request for
`supplemental examination. See 37 CFR 1.625.
`
`This notice is being sentto the official correspondence address of record which, in a supplemental examination
`proceeding, is the official correspondence addressof record in the patentfile. See 37 CFR 1.33.
`
`/PI'LEWIS/
`
`
`Central Reexamination Unit
`(571) 272-6606, FAX NO. (571)273-9900
`
`page 1 of 1
`
`Ex.1018 / Page 27 of 162
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`Ex.1018 / Page 27 of 162
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