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 ~2313-1450 www.uspro.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

90/009.329

11/10/2008

6233389

2513.oo2REXO

2859

29000

7590

1011512010

EXAMINER

IRELL '& MANELLA LLP 1800 AVENUE OF THE STARS SUITE 900

LOS ANGELES, CA 90067

ART UNIT

PAPER NUMBER

DATE MAILED: 10/15/2010

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

UNI1ED STA1ES PA1ENf AND TRADEMARK OFFICE

Commissioner for Patents United States Patents and Trademark Office P.O.Box 1450 Alexandria, VA 22313-1450 www.uspto.gov

THIRD P ARTY REQUESTER'S CORRESPONDENCE ADDRESS MORRISON & FOERSTER LLP

DAVID L. FEHRMAN

555 WEST FIFTH STREET LOS ANGELES, CA 90013

Date:

i\}1}\lLED OCT 1 52010

CENTRAL REEXAMINATION UNIT

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. : 90009329 PATENT NO. : 6233389

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(g».

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

(For Patent Owner)

MA!LED OCT 1 5 l010

. IRELL & MANELLA LLP

1800 AVENUE OF THE STARS SUITE 900

LOS ANGELES CA 90067

CENTRAL REE),.AMINATION UNIT

(For Requester)

MORRISON & FOERSTER, LLP 555 WEST FIFTH STREET SUITE 3500

LOS ANGELES, CA 90013-1024

. In re Barton et alia Reexamination Proceeding Control No. 901009,329

For: U.S. Patent No. 6,233,389

DECISION SUA SPONTE RETURNING UNTIMELY FILED PAPERS

The ex parte reexamination is before the Central Reexamination Unit for consideration of papers filed October 8, 2010.

REVIEW OF RELEVANT FACTS

1. U.S. Patent No. 6,233,389 (hereinafter, the '389 patent), issued to Barton et alia, on May 15,2001.

2. On November 10, 2008, a third party deposited a request for ex parte reexamination of the '389 patent. The reexamination proceeding was assigned Control No. 901009,329 (hereinafter, the '9329 proceeding).

3. On January 7, ~009, an order granting the request for reexamination was mailed.

Control Number: 901009,329 Art Unit: 3992

Page 2

4. On October 6,2010, a "Noticeof Intent to Issue Ex Parte Reexamination Certificate" (NIRC) was mailed for the '9329 proceeding.

5. On October 8, 2010, an Information Disclosure Statement (IDS) was filed in the '9329 proceeding.

DECISION

MPEP 2287 states, in part:

A NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated. The rules do not provide for an amendment to be filed in a reexamination proceeding after prosecution has been terminated. The provisions of

37 CFR 1.312 do not apply in reexamination. Any amendment, information disclosure statement, or other paper related to the merits of the reexamination proceeding filed after prosecution has been terminated must be accompanied by a petition under 37 CFR 1.182 to have the amendment considered.

MPEP 2267 states, in part:

The applicable regulations (37 CFR 1.501(a), l.S50(e)) provide that certain types of correspondence will not be considered or acknowledged unless timely received. Whenever reexamination correspondence is received, a decision is required of the Office as to the action to be taken on the correspondence based on what type of paper it is and whether it is timely. The return of inappropriate submissions complies with the regulations that certain papers will not be considered.

The IDS filed on October 8, 2010 is an untimely submission and was not accompanied by a petition under 37 CFR 1.182. Since this proceeding is not a paper file, the paper submitted on October 8, 2010 is being "closed" from public view (while MPEP 2267 permits for the return of inappropriate or untimely submissions, this may not be possible in an Image File Wrapper (IFW) proceeding where a paper is inadvertently entered into the record. Instead, such a paper would be marked "closed" and "not public").

Control Number: 90/009,329 Art Unit: 3992

Page 3

CONCLUSION

l. The untimely paper filed October 8,2010 is hereby expunged from the record of

reexamination proceeding 90/009,329 by retaining it as "closed" from public view. .

2. The reexamination proceeding remains in the Office of Publications for issuance of the

Reexamination Certificate in due course.

3. Telephone inquiries related to this decision should be directed to Eric Keasel, at (571)

272-4929 or Mark Reinhart, at (571) 272-1611.

Eric Keasel

SPE, AU 3992, Central Reexamination Unit

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