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

ATTORNEY

DOCKET NO.

CONFIRMATION

NO.

90/010,574 22852
7590

08/10/2009
05/0 InO I2

5953263

8963.002.RXUSOO
EXAMINER

8760

LLP

FINNEGAN, HENDERSON, FARAB OW, GARRETT & DUNNER
ART UNIT PAPER NUMBER

901 NEW YORK. AVENUE, NW WASHINGTON, DC 20001-4413

DATE MAILED: 05/0112012

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

PTO-90C

(Rev. 10/03)

United

Commissioner ior Patents States Patent and Trademark Office P.O. 80_1450 Alexandria, VA 22313-1450
\AtllWUNOSpfO,gov

DO NOT USE IN PALM PRINTER
(THtRD PARlY REQUESTER'S CORRESPONDENCE ADDRESS)

MAILED
MAY 012012 CENTRAl. REEXAMINATION UNIT

NOVAK DRUCE & QUIGG •.LLP (NDQ REEXAMINATION GROUP) 1000 LOUISIANA STREET FIFTY-THIRD FLOOR HOUSTON, TX 77002

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. 901010,574. PATENT NO. 5953263. 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 wjll be acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.07-04)

Control No.

Patent Under Reexamination 5953263
Art Unit

Notice of Intent to Issue Ex Parte Reexamination Certificate
-- The MAILING DA TE of this communication 1. subject in view (a) 0 (b) 0 (c) 0 (d) [8J 2012 (e) 2. The (a) (b) (c)

901010,574 Examiner OVIDIO ESCALANTE

3992

appears on the cover sheet with the correspondence address --

[8J Prosecution on the merits is (or remains) closed in this ex parle reexamination proceeding. This proceeding is
to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be issued of Patent owner's communication(s) filed: __ . Patent owner's failure to file an appropriate timely response to the Office action mailed: __ . Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31). The decision on appeal by the [8J Board of Patent Appeals and Interferences 0 Court dated 27 January Other: __

0

Reexamination Certificate will indicate the following: Change in the Specification: 0 Yes [8J No Change in the Drawing(s): DYes [8J No Status of the Claim(s): (1) (2) (3) (4) (5) (6) (7) Patent Patent Patent Newly Newly Patent Patent claim( s) confirmed: 1-4. claim(s) amended (including dependent on amended claim(s)): __ claim(s) canceled: __ . presented claim(s) patentable: __ . presented canceled claims: __ . claim(s) 0 previously D currently disclaimed: __ claim(s) not subject to reexamination: 5-33.

3.

[8J Note the attached statement of reasons for patentability and/or confirmation. Any comments considered necessary
by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for Patentability and/or Confirmation."

4. 5. 6. 7.

0 0
0

Note attached NOTICE OF REFERENCES

CITED (PTO-892).

[8J Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/OB substitute).
The drawing correction request filed on __ is: D approved

0 disapproved.

Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f). a)D All b)D Some* c)D None of the certified copies have D been received. D not been received. D been filed in Application No. __ . been filed in reexamination Control No. __ . D been received by the International Bureau in PCT Application No. __

o

.

* Certified copies not received: __ 8. 9.

.

0

Note attached Examiner's Amendment. Interview Summary (PT0-474).

0 Note attached 10. 0 Other: __

Ali correspondence relating to this reexamination proceeding should be directed to the Central Reexamination the mail, FAX, or hand-carry addresses given at the end of this Office action.

Unit at

cc: Requester (if third party requester)
U.S. Patent and Trademark PTOL-469 (Rev. 07-10) Office Notice of Intent to Issue Ex Parte Reexamination Certificate Part of Paper No 20120412

Application/Control Art Unit: 3992

Number: 90/010,574

Page 2

DETAILED ACTION
1. This Office action addresses claims 1-4 of US Patent Number 5,953,263 (Farmwald et al.

patent) and is in response to the Board of Patent Appeals and Interferences decision filed on January 27, 2012.

Status of Claims
2. Claims 1-4 are confirmed.

Information Disclosure Statement
3.

With respect to the Information Disclosure Statement filed on March 16,2012, the

information cited has been considered as described in the MPEP. Note that MPEP 2256 and 2656 indicate that degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information.

STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
The following is an examiner's statement of reasons for patentability andlor confirmation of the claims found patentable in this reexamination proceeding: As set forth in the BPAI decision, "[a]part from the claims, the term "synchronous semiconductor memory device" does not appear to be in the '263 patent. However, the '263 patent refers to a "semiconductor device[]" as "a single memory device" in terms of "this invention" and refers to "a new bus interface built into semiconductor devices." (PI (emphasis

Application/Control Art Unit: 3992

Number: 90/010,574

Page 3

added).) It also states that "each semiconductor device contains a set of internal registers" and that "semiconductor devices" have "memory addresses contained within that device." (P2 (emphasis added).) It similarly refers to the interface circuits internal to a DRAM. (P3.)

The examiner notes that since iAPX's memory module is not a single integrated chip, then it was decided that iAPX Manual fails to anticipate the claims at issue.

In addition, the examiner incorporates herein, the reasons for not maintaining the rejection of iAPX Manual in view of iRAM as set forth on pages 35-40 of the Final Rejection (mailed May 21, 2010) as well as the reasons for not rejecting the claims over Moussouris, SCIA and Bennett as set forth on pages 15-16 of the Non-Final Rejection (mailed on January 15, 2010).

Any comments considered necessary by PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays .. Such submission by the . patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or Confirmation" and will be placed in the reexamination file.

Application/Control Art Unit: 3992

Number: 901010,574

Page 4

Conclusion 4. 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. 5,953,263 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. and 2286. 5. Extensions oftime under 37 CFR 1. 136(a) will not be permitted in these proceedings See MPEP §§ 2207,2282

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 reexamination proceedings

"will be conducted with special dispatch" (37 CFR 1.550(a)). Extension of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c). 6. All correspondence relating to this ex parte reexamination proceeding should be directed: registered users may submit via the electronic filing system EFS-Web: at https:llefs.uspto.gov/efile/myportal/efs-registered.

By EFS:

By Mail to:

Mail Stop Ex Parte Reexam Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450

By FAX to:

(571) 273-9900 Central Reexamination Unit Customer Service Window Attn: Central Reexamination Unit Randolph Building, Lobby Level 401 Dulany Street

By hand:'

Application/Control Number: 901010,574 Art Unit: 3992 Alexandria, VA 22314

Page 5

For EFS-Web transmissions, 37 CFR 1.8(a)(I)(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed 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 correspondence stating the data of transmission, which is prior to the expiration of the set period of time in the Office action. Any inquiry by the patent owner concerning this communication or earlier communications from the Legal Advisor or Examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705. IOvidio Escalantel Ovidio Escalante Primary Examiner Central Reexamination Unit - Art Unit 3992 (571) 272-7537 Conferee: Ir.g.f.l Conferee: ~

rr""""'
'3'i"1l

WE At

Sign up to vote on this title
UsefulNot useful