Free Motion to Stay - District Court of California - California

Case 3:08-cv-00070-BTM-CAB

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Exhibit 1

Case 3:08-cv-00070-BTM-CAB

..#: U.S. Patent and Trademark Offce; U.S. DEPARTMENT OF COMMERCE I u)
Under the Pa eiwork Reduction

o Approved for use through 07/3112007. OMB 0651-0033 -t
ersons are re uired to res ond to a collection of information unless it dis la s a valid OMB control number.

EJ PTO/SB/57 (07-07)

~ ~\
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(Also referred to as FORM PTO-1465)

REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
Address to:

Mail Stop Ex Parle Reexam Commissioner for Patents P. O. Box 1450 Alexand ria, VA 22313-1450

"';',.11.1 U.S PTO
Attorney Docket No.: X32441
11//11/111111/111111/1/111/1111111111111111111

':ì!;iin U.S. Pl )

90008775
11/1111111~I1111111111111111111111~I111111111

07/30/07

Date: July 30, 2007

07/30/07

i. I8 This is a request for ex parte reexamination pursuant to 37 CFR 1. I 0 of patent number 4.935 ,184 issued June 19. 1990 The request is made by:

o patent owner. I8 third par requester.
the person requesting reexamination is:
Arnold Turk, ESQ.

2. I8 The name and address of

Greenblum & Bernstein, P.L.C. 1950 Roland Clarke Place. Reston. VA 20191
3. I8 a. A check in the amount of$ 2.520.00 is enclosed to coverthe reexamination fee, 37 CFR 1.20(c)(I);

IR b. The; Dire~tor is hereby authorized to charge the fee as set forth in 37 CFR 1 .20(c)(I) to

Deposit Account No. 19-0089 (submit duplicative copy for fee processing); or
o c. Payment by credit card. Form PTO-2038 is attched.

4. IR Any refund should be made by 0 check or lE credit to Deposit Account No. 19-0089 37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
5. 18 A copy of

the patent to be reexamined having a double column format on one side of a separate paper is enclosed. 37 CFR 1. lO(b)(4)

6. 0 CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
o Landscape Table on CD
7. 0 Nucleotide and/or Amino Acid Sequence Submission

If applicable, items a. - c. are required.
a. 0 Computer Readable Form (CRF)

b. Specification Sequence Listing on: i. 0 CD-ROM (2 copies) or CD-R (2 copies); or

i i. 0 paper
c. 0 Statements verifying identity of

above copies

8. 0 A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
9. 18 Reexamination ofclaim(s) 1. 2.4,6-10

is requested.

10. 18 A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on Form PTO/SB/08, PTO- i 449, or equivalent.
1 i. 18 An English language translation of all necessary and pertinent non-English language patents and/or printed publications is included.
06/9112807 KrWirTY 08Ø0ØØ01 98806775

o F ': 2
(Page I of21 11s collection of information is required by 37 CFR 1.10. The information is required to obtain or retain a benefit by the public wbich is to file (and by ihe USPTO to process) an application. Confidentiality is governed by 3S U.S.c. § 122 and 37 CFR 1.1 and 1.4. This collection is estimated to tae 2 hour to complete, including gathering. preparng, and submiiiing the completed application form to the USPTO. Time wil vary depending upon the individual case. Any comments on the amount of iime you require 10 complete this form and/or suggestions for reducing ihis burden, should be sent In tbe Chief Information Offcer, U.S. Patent and Trademark Offce, U.S. Deparent of Commerce, P.O. Box 1450. Alexandria, V A 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS

ADDRESS: SEND TO: Mail Stop Ex Parte Reeum, Commissioner for Patents, P. O. Box 1450, Alexandria, VA 22313-1450.
if you need QSsislance in comp/eling rhe form. call 1-800-PTO-9/99 and seleci oplion i.

(X3244100232592.DO)

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PTOISB/57 (07-07)

Under the Paperwork Reduction Acl of 1995. no persons are required to respond

Approved for use through 07/3112007.. OMB 065 (.0033 U.S. Paienland Trademm Offce; U.S. DEPARTMENT OF COMMERCE to a colleeiion of informaiunless it displays a valid OMS control number. ion

12. I8 The attched detailed request includes at least the following items:
a. A statement identifying each substantial new question of patent

ability based on prior patents and

printed publications. 37 CFR 1.51 O(b)(l)

b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited art to every claim for which reexamination is requested. 37
CFR 1.51 O(b )(2)

13. 0 A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.510(e)
14. 18 a. It is certified that a copy of this request (if fied by other than the patent owner) has been served in its
entirety on the patent owner as provided in 37 CFR 1.33(c). The name and address of the part served and the date of service are:

James Michael Kaler' Edward W. Callan
The Law Offces of James M. Kaler 3830 Valley Center Drive, No.705. PMB452

9930 Mesa Rim Road Suite 200. San Diego. CA 92121 San Diego. CA 92130
Date of Service: July 30. 2007
.
o b. A duplicate copy is enclosed since service on patent owner was not possible.

; or

15. Correspondence Address: Direct all communication about the reexamination to:

18 OR .
Reston

!8 The address associated with Customer Number: I 07055

!8 Firm or

Individual Name Greenblum & Bernstein, P.Lc. Address 1950 Roland Clarke Place

City

State V A

Zip 20191

Country
United States

Telepho~e
16.

(703) 716-1 191

Email aturk~gbpatent.com

July 30. 2007 Date
Arnold Turk

33094
Registration No.
(page 2 of21

o For Patent Owner Requester
!8 For Third Part Requester

Typed/rinted Name

(X32441 00232592.DO)

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Exhibit 2

Case 3:08-cv-00070-BTM-CAB

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UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
Addrss: COMMISSIONER FOR PA TENTS

UnIted Slates Palent and Trademark Offce
ww.usto.gov
P.O. Box 1450 Alexandra, Virginia 22313-1450

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

AlTORNEY DOCKET

NO.

CONFIRMATION NO.

90/008,775
22653

07/30/2007
7590
101111007

4935184

X3244l
EXAMINER

9943

EDWARD W CALLAN
NO. 705 PMB 452 3830 VALLEY CENTRE DRIVE
ART UNIT
PAPER NUMBER

SAN DIEGO, CA 92130
DATE MAILED: 10/11/2007

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

PTO-90C (Rev. 10/03)

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UNITED STATES PATENT AND TRAEMA OFFCE
Comissioner for Patents
United States Patent and Trademark amee

P.O. Box1450 Alexandria, VA 22313.1450

Wt.usptO.gc

THIRD PARTY REQUESTR'S CORRESPONDENCE ADDRESS

10/11/07

Arnold Turk, Esq.

Greenblum & Bernstein P. L. C.

1950 Roland Clarke Place

Reston VA 20191
EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXMINATION CONTOL NO 90/008775
PATENT NO. 4,935,184
ART UNIT 3992

Enclosed is a copy of the latest communication from the United States Patent
and Trademark Offce in the above identified ex parte reexamination proceeding (37 CFR 1.SS0(f)).
Where this copy is supplied after the reply by requester, 37 CfR 1.53S, or the

time for filing a replly has passed, no submission on behalf of the ex parte
reexamination requester wil be acknowledged or considered (37 CFR 1.SS0(g)).

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Patent Under Reexamination

Order Granting / Denying Request For Ex Parte Reexamination

90/008,775

4935184
Art Unit
3991

Examiner
Alan Diamond

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--

The request for ex parte reexamination filed 30 Julv 2007 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)D PTO-892,

b)lZ PTO/SB/08,

c)D Other:

1. (g 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 PERMITTED. If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester is permitted.
2. 0 The request for ex parte reexamination is DENIED.

This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date. of this communication (37 CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER

37 CFR 1.183.
In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
a) 0 by Treasury check or,

b) 0 by credit to Deposit Account No. , or
c) 0 by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).

Alan Diamond

Primary Examiner Art Unit: 3991

cc:Reauester ( if third oartv reauester)
u.s. Patent and Trademark Offce

PTOL-471 (Rev. 08-06)

Offce Action In Ex Parte Reexamination

Part of Paper No. 20071003

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Application/Control Number: 90/008,775
Art Unit: 3991

Page 2

Decision on Reexamination Request
1. A substantial new question of patentabilty affecting claims 1,2,4, and 6-10 of

United States Patent Number 4,935,184 to Sorensen, is raised by the request for ex

parte reexamination. The request for reexamination is Third Part requested.
2. Since requestor did not request reexamination of claims 3 and 5 and did not

assert the existence of a substantial new question of patentabilty (SNQ) for such claims
(see 35 U.S.C. § 302); see also 37 CFR 1.51 Ob and 1.515), such claims wil not be

reexamined. This matter was squarely addressed in Sony Computer Entertainment
America Inc., et al v. Jon W. Dudas, Civil Action No.1 :05CV1447 (E.D.Va. May 22,

2006), Slip Copy, 2006 WL 1472462. The District Court upheld the Offce's discretion to
not reexamine claims in a reexamination proceeding other than those claims for which

reexamination had specifically been requested. The Court stated:
"To be sure, a party may seek, and the PTO may grant, ...review of each and every claim of a patent. Moreover, while the PTO in its discretion may review claims for which ... review was not requested, nothing in the statute compels it to do so. To ensure that the PTO considers a claim for ... review, .. .requires that the party seeking reexamination demonstrate why the PTO should reexamine each and every claim for which it seeks review. Here, it is undisputed that Sony. did not seek review of every claim under the '213 and '333 patents. Accordingly, Sony cannot now claim that the PTO wrongly failed to reexamine claims for which Sony never requested review, and its argument that AIPA compels a contrary result is . unpersuasive. "

Extension of Time
3. Extensions of time under 37 CFR 1.136(a) wil 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

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Page 3

Application/Control Number: 90/008,775 Art Unit: 3991

ex parle reexamination proceedings "wil be conducted with special dispatch" (37

CFR 1.550(a)). Extensions of time in ex parle reexamination proceedings are provided
for in 37 CFR 1.550(c).

Substantial New Question of Patentabilty (SNQ)
4. The presence or absence of a "substantial new question of patentability"
determines whether or not reexamination is ordered.

For a "substantial new question of patentabilty" to be present, it is only
necessary that :

A) the prior art patents and/or printed publications raise a substantial new

question of patentabilty regarding at least one claim, Le., 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

Offce in a previous examination of the patent or in a final holding of invalidity by the
Federal Courts in a decision on the merits involving the claim.

A SNQ may be based solely on old art where the old art is being

presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation in

the request. (MPEP 2242).

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Application/Control Number: 90/008,775
Art Unit: 3991

Page 4

Request
5. The request indicates the Requestor considers that Moscicki (U.S. Patent
3,178,497) raises a substantial new question of patentabilty with respect to

claims 1, 4, 6-8 and 10 of Sorensen.
It is agreed that consideration of Moscicki raises a substantial new question of

patentability as to claims 1,4,6-8 and 10 of Sorensen. Page 28, line 14 though page
32, seventh line from the bottom; page 56 at the start of section 8 through page 58, line
5; page 83, line 13 through page 86, line 9; page 86, line 22 through page 87, line 22; page 94, lines 1-19; page 98, line 6 through page 99, line 2; and page 107, line 18

through page 108, line 11, of the request for reexamination are hereby incorporated by
reference for their explanation of the teaching provided in Moscicki that was not present

in the prosecution of the application which became the Sorensen patent. There is a
substantial

likelihood that a reasonable examiner would consider this teaching important

in deciding whether or not claims 1, 4, 6-8 and 10 of Sorensen were patentable.

Accordingly, Moscicki raises a substantial new question of patentabilty as to claims 1,
4, 6-8 and 10, which question has not been decided in a previous examination of the
Sorensen patent.

6. The request indicates the Requestor considers that Seima (GB 2004494 A)

raises a substantial new question Qf patentabilty with respect to claims 1, 2 and
6-10 of Sorensen.

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Page 5

Application/Control Number: 90/008,775
Art Unit: 3991

It is agreed that consideration of Seima raises a substantial new question of

patentabilty as to claims 1,2 and 6-10 of Sorensen. Page 32, sixth line from the
bottom, through the end of page 36; page 60, fifth line from the bottom, through page

62, line 3; page 80, line 10 through page 83, line 12; page 88, line 13 through page 89,
line 15; page 95, line 13 through page 96, line 9; page 99, line 15 through page 100,
line 11; page 104, line 1 through page 107, line 4; and page 109, lines 1-20, of

the

request for reexamination are hereby incorporated by reference for their explanation of
the teaching provided in Seima that was not present in the prosecution of the
application which became the Sorensen patent. There is a substantial

likelihood that a

reasonable examiner would consider this teaching important in deciding whether or not

claims 1,2 and 6-10 of Sorensen were patentable. Accordingly, Seima raises a

substantial new question of patentabilty as to claims 1,2 and 6-10, which question has
not been decided in a previous examination of the Sorensen patent.

7. The request indicates the Requestor considers that Gits (U.S. Patent
2,863,241) raises a substantial new question of patentabilty with respect to claim

1 of Sorensen.
It is agreed that consideration of Gits raises a substantial new question of

patentabilty as to claim 1 of Sorensen. Page 37, line 1 through the end of section 3 on
page 40, of the request for reexamination are hereby incorporated by reference for their
explanation of the teaching provided in Gits that was not present in the prosecution of
the application which became the Sorensen patent. There is a substantial

likelihood

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Page 6

that a reasonable examiner would consider this teaching important in deciding whether

or not claim 1 of Sorensen was patentable. Accordingly, Gits raises a substantial new
question of patentability as to claim 1, which question has not been decided in a
previous examination of the Sorensen patent.

8. The request indicates the Requestor considers that Shiho et al (U.S. Patent

4,440,820, hereinafter "Shiho") raises a substantial new question of patentabilty

with respect to claims 1, 6-8 and 10 of Sorensen.
It is agreed that consideration of Shiho raises a substantial new question of

patentability as to claims 1, 6-8 and 10 of Sorensen. The beginning of section 4 on
page 40 through the end of section 4 on page 44; page 90, lines 4-20; page 96, line 23

through page 97, line 6; page 101, lines 1-11; and page 110, lines 14-23, of the request
for reexamination are hereby incorporated by reference for their explanation of the
teaching provided in Shiho that was not present in the prosecution of the application
which became the Sorensen patent. There is a substantial

likelihood that a reasonable

examiner would consider this teaching important in deciding whether or not claims 1, 6-

8 and 10 of Sorensen were patentable. Accordingly, Shiho raises a substantial new
question of patentability as to claims 1, 6-8 and 10, which question has not been
decided in a previous examination of the Sorensen patent.

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Page 7

Art Unit: 3991
9. The request indicates the Requestor considers that JP 60-119520 U to

Toyota Motor (hereinafter "Toyota") raises a substantial new question of

patentabilty with respect to claim 1 of Sorensen.
It is agreed that consideration of Toyota raises a substantial new question of

patentability as to claim 1 of Sorensen. The beginning of section 5 on page 44 through
the end of section 5 on page 48; and page 70, line 1 through page 71, line 8, of the
request for reexamination are hereby incorporated by reference for their explanation of the teaching provided in Toyota that was not present in the prosecution of the
application which became the Sorensen patent. There is a substantial

likelihood that a

reasonable examiner would consider this teaching important in deciding whether or not

claim 1 of Sorensen was patentable. Accordingly, Toyota raises a substantial new

question of patentabilty as to claim 1, which question has not been decided in a
previous examination of the Sorensen patent.

10. The request indicates the Requestor considers that German Published

Patent Application No. .1850999 to Echterholter raises a substantial new question

of patentabilty with respect to claim 1 of Sorensen.
It is agreed that consideration of Echterholter raises a substantial new question

of patentability as to claim 1 of Sorensen. The beginning of section 6 on page 48
through page 53, line 6; and page 73, line 10 through page 74, line 17, of

the request

for reexamination are hereby incorporated by reference for their explanation of the

teaching provided in Echterholter that was not present in'the prosecution of the

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Page 8

Art Unit: 3991
application which became the Sorensen patent. There is a substantial

likelihood that a

reasonable examiner would consider this teaching important in deciding whether or not

claim 1 of Sorensen was patentable. Accordingly, Echterholter raises a substantial new
question of patentability as to claim 1, which question has not been decided in a
previous examination of the Sorensen patent.

11. The request indicates the Requestor considers that Wright, "New vigor for
two-shot molding automation... versatilty.. ingenuity," Modern Plastics, May

1986, pp. 79-83, (hereinafter "Modern Plastics") raises a substantial new question

of patentabilty with respect to claims 1, 6 and 8 of Sorensen.
It is agreed that consideration of Modern Plastics raises a substantial new

question of patentabilty as to claims 1, 6 and 8 of Sorensen. Page 53, line 7 through
the end of section 7 on page 56; page 77, line 1 through page 78, line 8; page 92, line 9
through page 93, line 12; and page 102, line 16 through page 103, line 11, of the request for reexamination are hereby incorporated by reference for their explanation of
the teaching provided in Modern Plastics that was not present in the prosecution of the

application which became the Sorensen patent. There is a substantiallikelihoQd that a
reasonable examiner would consider this teaching important in deciding whether or not

claims 1, 6 and 8 of Sorensen were patentable. Accordingly, Modern Plastics raises a

substantial new question of patentabilty as to claims 1, 6 and 8, which question has not
been decided in a previous examination of the Sorensen patent.

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Page 9

Art Unit: 3991
12. The request indicates the Requestor considers that Moscicki in view of

Echterholter and further in view of Modern Plastics raises a substantial new

question of patentabilty with respect to claims 1, 4, 6-8 and 10 of Sorensen.
It is agreed that consideration of Moscicki in view of Echterholter and further in

view of Modern Plastics raises a substantial new question of patentability as to claims 1,

4,6-8 and 10 of Sorensen. Page 58, line 6 through the end of section 9 on page 60;
page 86, lines 10-21; page 88, lines 1-12; page 95, lines 1-12; page 99,

lines 3-14; and

page 108, lines 12-23, of the request for reexamination are hereby incorporated by
reference for their explanation of the teaching provided in Moscicki, Echterholter and Modern Plastics that was not present in the prosecution of the application which
became the Sorensen patent. There is a substantial

likelihood that a reasonable

examiner would consider this teaching important in deciding whether or not claims 1, 4,

6-8 and 10 of Sorensen were patentable. Accordingly, Moscicki in view of Echterholter
and further in view of Modern Plastics raises a substantial new question of patentability
as to claims .1, 4, 6-8 and 10, which question has not been decided in a previous

examination of the Sorensen patent.

13. The request indicates the Requestor considers that Seima in view of

Echterholter and further in view of Modern Plastics raises a substantial new

question of patentabilty with respect to claims 1 and 6-10 of Sorensen.
It is agreed that consideration of Seima in view of Echterholter and further in view

of Modern Plastics raises a substantial new question of patentabilty as to claims 1 and

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Page 10

Art Unit: 3991
6-10 of Sorensen. Page 62, line 4 through page 64, line 3; page 89, line 16 through
page 90, line 3; page 96, lines 10-22; page 100, lines 12-24; page 107, lines 5-17; and

page 110, lines 1-13, of the request for reexamination are hereby incorporated by

reference for their explanation of the teaching provided in Seima, Echterholter and
Modern Plastics that was not present in the prosecution of the application which
became the Sorensen patent. There is a substantial

likelihood that a reasonable

examiner would consider this teaching important in deciding whether or not claims 1

and 6-10 of Sorensen were patentable. Accordingly, Seima in view of Echterholter and
further in view of Modern Plastics raises a substantial new question of patentability as to

claims 1 and 6-10, which question has not been decided in a previous examination of
the Sorensen patent.

14. At page 64, line 4 through page 67, line 18; page 90, line 21 through page
91, line 13; page 97, lines 7-16; and page 101, lines 12-22, the request indicates

the Requestor considers that Schad (U.S. Patent 4,422,995) raises a substantial

new question of patentabilty with respect to claims 1 and 6-8 of Sorensen.
Schad does not raise a substantial new question of patentabilty with respect to
claims 1 and 6-8 of Sorensen. In the prosecution of application Serial No. 07/386,012,
which matured into the Sorensen patent, Schad was used to reject all the claims (1-10)

under 35 USC 103(a). The rejection over Schad was overcome and the Sorensen
patent was allowed after applicant amended steps (h) and (i) of claim 1 so as to recite

the injection of first/second plastic material until it reaches the portion of the first/second

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Page 11

mold cavity that defines the rim of the product. Third part requestor even admits at
page 66, lines 16-18, of the request that "Schad does not specifically disclose a first

injection material which 'reaches the portion of the mold cavity that defines the rim of

the product.'" Third part requestor cites KSR int'I Co. v. Te/eflex Inc. and design
choice for the obviousness of modifying Schad so that a first injection material reaches

the portion of the mold cavity that defines the rim of the product (Request, pages 6667). Third part requestor notes that "design choice" with respect to product shape was.

considered by the Examiner in the rejection over Schad that was mailed 10/11/1988
during prosecution of the 07/386,012 application (see page 67 of the Request).

Consideration of Shad in view of KSR int' Co. v. Teleflex Inc. or "design choice" does
not provide any new teaching with respect to Schad as compared with its use in the

prosecution of the Sorensen patent. Accordingly, Schad is not being viewed in a new
light compared with its use in the prosecution of the Sorensen patent, and thus, does

not raise a substantial new question of patentabilty with respect to claims 1 and 6-8 of

Sorensen.

15. The request indicates the Requestor considers that Schad in view of

Moscicki and further in view of Seima and Shiho raises a substantial new

question of patentability with respect to claims 1 and 6-8 of Sorensen.
It is agreed that consideration of Schad in view of Moscicki and further in view of Seima and Shiho raises a substantial new question of patentability as to claims 1 and 6-

8 of Sorensen. Page 67, lines 19 through the last line on page 69; page 91, line 14

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Application/Control Number: 90/008,775

Page 12

Art Unit: 3991
through page 92, line 8; page 97, line 17 through page 98, line 5; and page 102, lines 115, of the request for reexamination are hereby incorporated by reference for their explanation of the teaching provided in Schad, Moscicki, Seima and Shiho that was not

present in the prosecution of the application which became the Sorensen patent. There
is a substantial

likelihood that a reasonable examiner would consider this teaching

important in deciding whether or not claims 1 and 6-8 of Sorensen were patentable.

Accordingly, Schad in view of Moscicki and further in view of Seima and Shiho raises a

substantial new question of patentability as to claims 1 and 6-8, which question has not
been decided in a previous examination of the Sorensen patent.

16. The request indicates the Requestor considers that Toyota in view of
Moscicki and further in view of Seima and Shiho raises a substantial new

question of patentabilty with respect to claim 1 of Sorensen.
It is agreed that consideration of Toyota in view of Moscickiand further in view of
Seima and Shiho raises a substantial new question of patentability as to claim 1 of

Sorensen. Page 71, line 9 through page 73, line 9, of the request for reexamination are
hereby incorporated by reference for their explanation of the teaching provided in

Toyota, Moscicki, Seima and Shiho that was not present in the prosecution of the
application which became the Sorensen patent. There is a substantial

likelihood that a

reasonable examiner would consider this teaching important in deciding whether or not

claim 1 Sorensen was patentable. Accordingly, Toyota in view of Moscicki and further
in view of Seima and Shiho raises a substantial new question of patentabilty as to claim

Case 3:08-cv-00070-BTM-CAB

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Application/Control Number: 90/008,775 Art Unit: 3991

Page 13

1, which question has not been decided in a previous examination of the Sorensen

patent.

17. The request indicates the Requestor considers that Echterholter in view of
Moscicki and further in view of Seima and Shiho raises a substantial new

question of patentabilty with respect to claim 1 of Sorensen.
It is agreed that consideration ofEchterholter in view of Moscicki and further in
view of Seima and Shiho raises a substantial new question of patentabilty as to claim 1
of Sorensen. Page 74, line 18 through the last line on page 76, of

the request for

reexamination are hereby incorporated by reference for their explanation of the teaching

provided in Echterholter, Moscicki, Seima and Shiho that was not present in the

prosecution of the application which became the Sorensen patent. There is a
substantial

likelihood that a reasonable examiner would consider this teaching important

in deciding whether or not claim 1 Sorensen was patentable. Accordingly, Echterholter
in view of Moscicki and further in view of Seima and Shiho raises a substantial new
question of patentability as to claim 1, which question has not been decided in a
previous examination of the Sorensen patent.

18. The request indicates the Requestor considers that Modern Plastics in view

of Moscicki and further in view of Seima and Shiho raises a substantial new

question of patentability with respect to claims 1, 6 and 8 of Sorensen.

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Application/Control Number: 90/008,775

Page 14

Art Unit: 3991
It is agreed that consideration of Modern Plastics in view of Moscicki and further

in view of Seima'and Shiho raises a substantial new question of patentabilty as to
claims 1, 6 and 8 of Sorensen. Page 78, line 9 through page 80, line 9; page 93, lines
13-25; and page 103, lines 12-24, of the request for reexamination are hereby .

incorporated by reference for their explanation of the teaching provided in Modern Plastics, Moscicki, Seima and Shiho that was not present in the prosecution of the
application which became the Sorensen patent. There is a substantial

likelihood that a

reasonable examiner would consider this teaching important in deciding whether or not

claims 1, 6 and 8 of Sorensen were patentable. Accordingly, Modern Plastics in view of
Moscicki and further in view of Seima and Shiho raises a substantial new question of
patentability as to claims 1, 6 and 8, which question has not been decided in a previous

examination of the Sorensen patent.

Duty to Disclose
19. The patent owner is reminded of the continuing responsibilty under 37 CFR
1.565(a) to apprise the Offce of any litigation activity, or other prior or concurrent
proceeding, involving Patent No. 4,935,184 throughout the course of this reexamination

proceeding. The third party requestor is also reminded of the abilty to similarly apprise
the Offce of any such activity or proceeding throughout the course of this reexamination

proceeding. See MPEP §§ 2207, 2282 and 2286.

Case 3:08-cv-00070-BTM-CAB

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Application/Control Number: 90/008,775 Art Unit: 3991

Page 15

Correspondence
14. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Alan Diamond whose telephone number is (571) 272-

1338. The examiner can normally be reached on Monday through Friday from 5:30
a.m. to 2:00 p.m.

If attempts to reach the examiner by telephone are unsuccessful, the examinets
supervisor, Deborah Jones can be reached on (571) 272-1535.
Information regarding the status of an application may be obtained from the

Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should

you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).

Notice Re Patent Owner's Correspondence Address
Effective May 16, 2007, 37 CFR 1.33(c) has been revised to provide that:

The patent ownets correspondence address for all communications in an ex parte reexamination or an inter partes reexamination is designated as the correspondence address of the patent.
Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination, 72 FR 18892 (April 16, 2007)(Final Rule)

The correspondence address for any pending reexamination proceeding not having the same correspondence address as that of the patent is, by way of this

Case 3:08-cv-00070-BTM-CAB

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Application/Control Number: 90/008,775 Art Unit: 3991

Page 16

revision to 37 CFR 1.33(c), automatically chanaed to that of the patent file as of

the effective date.
This change is effective for any reexamination proceeding which is pending before the

Offce as of May 16,2007, includino the present reexamination proceedinq, and to any
reexamination proceeding which is filed after that date.

Parties are to take this change into account when filing papers, and direct communications accordingly.

In the event the patent owner's correspondence address listed in the papers (record) for the present proceeding is different from the correspondence address of the patent, it is strongly encouraged that the patent owner affrmatively file a Notification of Change of Correspondence Address in the reexamination proceeding and/or the patent (depending on which address patent owner desires), to conform the address of the proceeding with that of the patent and to clarify the record as to which address should be used for

correspondence.
Telephone Numbers for reexamination inquiries:

Reexamination and Amendment Practice
Central Reexam Unit (CRU)' Reexamination Facsimile Transmission No.
Please mail any communications to: Attn: Mail Stop "Ex Parte Reexam" Central Reexamination Unit Commissioner for Patents

(571) 272-7703 (571) 272-7705 (571) 273-9900

P. O. Box 1450 Alexandria VA 22313-1450
Please FAX any communications to: (571) 273-9900 Central Reexamination Unit

Case 3:08-cv-00070-BTM-CAB

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Application/Control Number: 90/008,775
Art Unit: 3991
Please hand-deliver any communications to: Customer Service Window

Page 17

Attn: Central Reexamination Unit
Randolph Building, Lobby Level 401 Dulany Street

Alexandria, VA 22314
Signed:

OL J) - J
Alan Diamond Primary Examiner
Central Reexamination Unit Art Unit 3991
/Jerry D. Johnson/

Primary Examiner
Art Unit 3991

(571) 272-1338

STEPHEN J. STEIN CRU EXAMINER - AU 3991

N-~

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PTO/SBIOBa (05-7) ApPll for use through 091301007. OMB 0651.0031 Uncer the Pøport Reducton Ad of 1995, no perss are reuJre 10 respod to 8 colen of Infrmon unless" U.S. DEPARTMEN OF COMMERCE U.S. Pølenland Traemart Ofce; contains a vard OMB contro numbe.

Application Number

INFORMA rlOH DISCLOSURE STATEMENT BY APPLICANT
( Not for submission under 37 CFR 1.99)

Filng Date
First Named Inventor
Art Unit

Examiner Name
i

REQUEST FOR REEXMINATION

U.S.PA TENTS

Examine. Cite
Initial.
No

Patent Number

Kind
Code 1

Issue Date

Name of Patentee or Applicant Pages,Columns,lines Where Relevant Passages or Relevant of cited Document

Figures Appear
IADI
1

2863241

1958-12-0

Git

all

IADI

2

3178497

1965-4-13

Moscicki

all

IADI

3

4422995

1983-12-27

Schad

all

IADI

4

440820

19843

Shiho

all

If

you wish to add additonal U.S. Patent citation information please click the Add button.

U.S.PA TENT APPLICATION PUBLICA TIONS

Examine. Cite
Initial.
No

Publication Number

Kind Publication Code1 Date

Name of Patentee or Applicant Pages,COlumns,Lines Where Relevant Passages or Relevant of cited Document

Figures Appear
1

If you wish to add additional U.S. Published Application citation information please click the Add button.
FOREIGN PATENT DOCUMENTS

Examiner Cite Foreign Document Initial. No Number3

Country Code2 i

Kind Publicatfon Code" Date

Name of Patentee or Applicant of cited

Pages,

Columns.

Lines

Document

where Relevant Passages or Relevant T5

Figures Appear

EFS Web 2.0.1

IAlan Diamondl

10105/2007

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Application Number

INFORMATION DISCLOSURE STATEMENT BY APPLICANT
( Not for submission under 37 CFR 1.99)

Filng Date
First Named Inventor
Art Unit

Examiner Name

i Cn.v"n J REQUEST FOR REEXMINATION

IADI

1

1 850 999

DE

1962-05-03

Echterholter

all

II
1l

IADI
2

2 004 494

GB

1979-04-0

SElMA

all

IADI

3

60-119520 V

JP

1985-6-13

Toyota Motor

all

II

If

you wish to add additional Foreign Patent Document citation information please click the Add button

NON-PA TENT LITERATURE DOCUMENTS

Examiner Cite Include name ofthe author (in CAPITAL LETTERS), title of the article (when appropriate), title of the item
Initials.
IADI
1

No

(book, magazine, joumal, serial, symposium, catalog, etc), date, pages(s), volume-issue number(s),

publisher, city and/or countr where published.
VAL WRIGHT, New Vigor For Two-hot Molding With Automation. . . Versatilty. . . Ingenuity, Modem Plastics, May
1968, pages 79-3. published In US

TS

0

If you wish to add additional non-patent literature document citation information please click the Add button

EXAMINER SIGNATURE
1 Ui Vvl ,"vv i I Date Considered .EXAMINER: Initial if reference considered, whether or not citation is In conformance with MPEP 609. Draw line through a citation if not in conformance and not considered. Include copy of this form with next communIcation to applicant.

Examiner Signature I

Wan uiamonai

1 See Kind Codes of USPTO Patent Documents at ww USPTO GOV or MPEP 901.04. 2 Enter offce that Isue the document, by the two-Ietler code (WPO
Standard ST.3). 3 For Japanese patent docments, the Indication of th year of the reign of the Emperor must precede the serial number of the palenl document. 4 Kind of docment by the appropriate symbols as Indicated on the docment under WlPO Standard 5T.16 if possible. & Applicant Is to place a check mar! here I
English language translation Is attach.

EFS Web 2.0.1

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Exhibit 3

Case 3:08-cv-00070-BTM-CAB

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UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark OfOce Addres: COMMISSIONER FOR PATENTS
P.O. Bo. 1450 Ale.and"., Vi'gini. 223 I 3-1450
www.uspto.gOY

APPLICA TION NO.

FILING DATE

FIRST NAMED INVENTOR
4935 i 84

A TTORNEY DOCKET NO.

CONFIRM

A TION NO.

90/008,976
22653
7590

12/21/2007
021211008

065640-0260
EXAMINER

6753

EDW ARD W CALLAN
NO, 70S PMB 452 3830 V ALLEY CENTRE DRIVE
ART UNIT
PAPER NUMBER

SAN DIEGO, CA 92130
DATE MAILED: 02/21/2008

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

PTO-90C (Rev. 10/03)

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lf'~~'\ UNITED STATES PATENT AND TRAEMA OFFCE
(~.~.:'_. .~~------_.__._._---_._--_._-_._-----------------_._...._------_.._-_._---------

,.~~~..

CommissIoner (or Patents United States Patent and Trademark Offce
P.O. BOX1450

Alexandria, VA 22313-1450 'W IJspfo.gov

DO NOT USE IN PALM PRINTER
(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

Pavan Agarwal

Foley & Lardner LLP

3000 K Street, NW, Suite 500

Washington, DC 20007

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXMINATION CONTROL NO. 90/008.976.
PATENT NO. 4935184.

ART UNIT 3991.

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 wil be . acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.07-o4)

Case 3:08-cv-00070-BTM-CAB

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Patent Under Reexamination

Order Granting / Denying Request For Ex Parte Reexamination

90/008,976 Examiner
Krisanne Jastrzab

4935184
Art Unit
3991

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--

The request for ex parte reexamination filed 21 December 2007 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)D PTO-892,

b)(g PTO/SB/08,

c)D Other:

1. ~ 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 PERMIITED. If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester is permitted.

2. D The request for ex parte reexamination is DENIED.
This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the Commissioner under 37 CFR 1.181 within ONE MONTH from the mailng date of this communication (37 CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER

37 CFR 1.183.

In due course, a refund under 37 CFR 1.26 ( c) wil be made to requester:
a) 0 by Treasury check or,

b) 0 by credit to Deposit Account No. _, or
c) 0 by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).

/Krisanne Jastrzab/
Primary Examiner
Art Unit: 3991

cc:Reauester ( if third oart reauester \
u.s. Patent and Trademark Ofce

PTOL-471 (Rev. 08-06)

Office Action in Ex Parte Reexamination

Part of Paper No. 20080220

71338 Case PTO U.S. 3:08-cv-00070-BTM-CAB

Document 15-4

Filed 03/24/2008

Page 30 of 43

immm~'m'mm~mllænm~mm Approved for use through 03J31120i~g~:~:S~°J::~
Under the Paperwr1 Reducton Act of 1995, no persons are reuired to respond to a collecton of information unless it contains 'msá'MEt.IiTO"
number.
Substitue for form 1449/PTO

12/21/07 u.s. Patent and Trademar1 Ofce: U.S. DEPARTMENT OF COMMERCE
Complete if Known Unassigned

INFORMATION DISCLOSURE STATEMENT BY APPLICANT

Reexamination Control Number
Patent Number

Date Submitted: December 21, 2007

4,935,184
Jens O. Sorensen

First Named Inventor
Attorney Docket Number
U.S. PATENT DOCUMENTS

of 2

065640-0260

Examiner
Initials'

Cite
No.1

Document Number
Number-Kind Code2 (I' known)

Pages, Columns, Lines,

Publication Date

Name of Patentee or Applicant of

MM-DO-YV

Where Relevant
Passages or Relevant

Cited Document

A1

4935 184

A2 A3 A4

4 422,995 4 508 676 3 375 554

06/19/1990 12/27/1983 04/02/1985 04/02/1968

Fi ures A ear

SORENSEN SCHAD SORENSEN
BLUMER

UNPUBLISHED U,S. PATENT APPLICATION DOCUMENTS
U.S. Patent Application

Examiner Initials.

Cite
No.1

Document
Serial Number-Kind Code' (I'
known)

Filng Date of

Pages, Columns, Lines,
Name of Patentee or Applicant of

Cited Document

Where Relevant
Passages or Relevant

MM-DO-YV

Cited Document

FigureS Anoear

FOREIGN PATENT DOCUMENTS
Examiner Initials.
Cite No.'
ForeiQn Patent Document

Countr Coe"'Number Kind
CodeS Ii' known)

Publication Date

Name of Patentee or
Applicant of Cited Documents

Pages. Columns. Lines.

MM-DO- YV

Where Relevant
Passages or Relevanl Fiiiures ADoear

-r
Tr.

/KJ./ ~I.

A5
A6 A7 A8

JP 59-199227

11/12/1984

IDEMITSU SEKIYU KAGAKU
KK

-W

JP 60-154022
JP 58.82401

/K.J .I

JP 552-51449

08/13/1985 05/18/1983 04/25/1977

FUJITSU LTD.
NISSAN MOTOR CO., L TO. KABUSHIKI KAISHA

Tr. Tr. Tr.

YOSHINO KOGYOSHO

NON PATENT LITERATURE DOCUMENTS

Examiner Initials.

Cite
No.'

Include name of the author (In CAPITAL LETTERS), title of the article (when appropriate), title of the item (book, magazine, joumal. senal, symposium, catalog. etc.) date, page(s), volume-issue number(s), publisher, city and/or country where published.
-""VIYII \J'YI\J

l-9

ff 4M .
ir"L.V, LI .,

-r
Tr.

",
02/20/2008

..

I

Examiner Signature

/Krisanne Jastrzab/

Date Considered

'EXAMINER: Initial if reference considere. whther or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered. Include copy of this form with next communication 10 appticani. 1 Applicant's unique citatin designation number (opllonat). 2 See Kinds Coes of USPTO Patenl Docments

at ww.usplo.gov or MPEP 901.04. 3 Enter Offce thaI issued the docment. by the lwel1r code (WIPO Standard ST.3). 4 For Japanese palent docments. the Indication of the year of the reign of the Emperor must pree the seril number 01 tha patent docment. 5 Kind of docment by the appropriate symbols as indicated on the documenl
under WIPO Standard ST.16 if possible. 6 Applicant is to place a chec marl here if English language Trenslation Is al1ched.

This colledion of information is require by 37 CFR 1.97 and 1.98. The Information is required to obtain or retain a beneli by the public which is to file (and by the USPTO 10
pross) an application. Confidentiality Is govemed by 35 U.S.C. 122 and 37 CFR 1. t4. This collection is estimated to take 2 hours to complete, including gathring. preparing.

and submilting Iha compleled applicatin form 10 the USPTO. Time will vary depending upo the individual case. Any commenls on the amount of lime you require to complele
this form and/or suggastions for reucing this burden. shold be sent to th Chief Information Ofcer. U.S. Patent and Trademarl Ollce. P.O. Box 1450. Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents. P.O. Box 1450, Alexandria. VA 22313.1450.

If you need assistance in completing /he 'orm, caO 1~ooTo-9199 (1-800786-9199) end setecf option 2.

WASH_2164550.1

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Page 31 of 43
prO/SB/OS (09-6)

,
\.

Approved for use through 03l31t2007. OMB 0651.(031 U.S. Patent and Trademar1 Offce: U.S. DEPARTMENT OF COMMERCE Under the PapelWr1 Reduction Act of 1995, no persons are reuired to respond to a colleclon of Information unless it contains a valid OMB contrl

number
Substitute for form 14491PTO

Complete If Known
Reexamination Control

""

INFORMATION DISCLOSURE STATEMENT BY APPLICANT

Unassigned
4,935,184
Jens O. Sorensen

Number
Patent Number

Date Submitted: December 21,2007

First Named Inventor
Attorney Docket Number
NON PATENT LITERATURE DOCUMENTS

Sheet

12

I of 12

065640-0260

Examiner
Initials.

Cite No.'

Include name of the author (in CAPITAL LETIERS), title of the artcle (when appropriate). title of the item (book, magazine, journal, serial, symposium, catalog, etc.) date, page(s), volume-issue number(s), publisher, city and/or countr where published.
WRIGHT, "New Vigor for Two-Shot Molding with Automation," Modem Plastics, Vol. 45, No.9, May 1968.
pp. 78 - 83.

~

Al0

/K.J./

All
A12

Plaintiffs Amended Preliminary Claim Constructions and Extrinsic Evidence, SORENSEN v. THE BLACK & DECKER CORPORATION ET AL., U.S. District Court for the Southern District of California, Case No. 06cv-1572 BTM (CAB). SORENSEN v.INTERNATIONAL TRADE COM'N., 427 F.3d 1375 (Fed. Cir. 2005)
Deposition of Paul P. Brown, December 19, 2006, SORENSEN v. THE BLACK & DECKER CORPORATION ET AL., U.S. District Court for the Southem District of California, Case No. 06-cv-1572 BTM (CABl.

\/
/K.J ./

A13
A14

Plaintiffs' local Civil Rule 56.1 Statement of Material Facts In Opposition to Defendants' Motion for
Summary Judgment of Invalidity Based on Prior Ar, U.S. District Court for the District of New Jersey Newark Vicinaae, CIV. No. 03-1763(HAA).

I

Examiner Signature

/Krisanne Jastrzab/

Date

Considered

02/20/2008

I

'EXINER: Initil il relerence considered. whether or nol citation is in confonnance with MPEP 609. Dra line throgh citation II nol in conformance and not considerec.
Include copy of thslonn wilh nexl communication 10 applicant. 1 Applicant's unique cllation deslgnallon number (optional). 2 See Kinds Coes 01 USPTO Patent Docments PO Standard ST.3). 4 For Japanese patent docments. the Indication of the yer ollh reign 01 the Emperor must precede the seril number 01 the patent docment. 5 Kind 01 docment by th appropriate symbols as indicated on the docment under WIPO Standard ST.16 il possible. 6 Applicant is 10 place a chec marl here" English language Translation Is attched.
at WW.usplo.gov or MPEP 901.04. 3 Enler Ofce IIt issued the docment. by the lweller coe (WI

This collection of infrmtion Is require by 37 CFR 1.97 and 1.98. The inlonnation is require 10 obtain or retain a benefit by the public which Is 10 fie (and by the USPTO 10 pross) an application. Cofientiality Is govemed by 35 U.S.C. 122 and 37 CFR 1.14. This collecon is estmated 10 take 2 hours to complete. Including gathering. preparing.
and submittng the completed application lonn 10 the USPTO. Time will vary depending upon the individual case. An comments on the amounl of time you reuire 10 complele this lonn and/or suggestions lor reducing this buren, should be sent to th Chef Informtion Ofcer, U.S. Patent and Trademarl Offce. P.O. Box 1450. Alexandria. VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: CommissIoner for Patents, P.O. Box 145. Alexandria, VA 22313-1450.

WASH_2164550.1

"you need assistance In coleting /he 'orm. c8l11~To-9199 (1-8786-9199) end select option 2.

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Application/Control Number: 90/008,976 Art Unit: 3991

Page 2

Reexamination

Decision on Reexamination Request
A substantial new question of patentability affecting claims 1, 2, 4 and 6-10 of
United States Patent Number 4,935,184 (hereinafter referred to as "the '184 patent) is

raised by the request for ex parte reexamination. The request was filed by a Third Part
on 12/21/2007.

Since requestor did not request reexamination of claims 3 and 5 and did not
assert the existence of a substantial new question of patentability (SNQ) for such claims
(see 35 U.S.C. § 302); see .also 37 CFR 1.51 Db and 1.515), such claims will not be

reexamined. This matter was squarely addressed in Sony Computer Entertainment
America Inc., et al v. Jon W. Dudas, Civil Action NO.1 :05CV1447 (E.D.Va. May 22,

. .

2006), Slip Copy, 2006 WL 1472462. The District Court upheld the Offce's discretion to
not reexamine claims in a reexamination proceeding other than those claims for which
reexamination had specifically been requested. The Court stated:

"To be sure, a part may seek, and the PTO may grant .... review of each and every claim of a patent. Moreover, while the PTO in its discretion may review claims for which ... review was not requested, nothing in the statute compels it to do so. To ensure that the PTO considers a claim for ... review, ...requires that the party seeking reexamination demonstrate why the PTO should reexamine each and every claim for which it seeks review. Here, it is undisputed that Sony did not seek review of every claim under the '213 and '333 patents. Accordingly, Sony cannot now claim that the PTO wrongly failed to reexamine claims for w~ich Sony never requested review, and its argument that AIPA compels a contrary result is

unpersuasive."
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

Case 3:08-cv-00070-BTM-CAB

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Application/Control Number: 90/008,976 Art Unit: 3991

Page 3

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).
Substantial New Question of Patentabilty (SNQ)

The substantial new question of patentability (SNQ) is based on:
JP S59-199227 (hereinafter referred to as "JP '227")

JP 60-154022 (hereinafter referred to as "JP '022")
JP 58-82401 (hereinafter referred to as "JP '401")
JP S52-51449 (hereinafter referred to as "JP '449")

Schad, U.S. patent No. 4,422,995 (hereinafter referred to as "Schad")
Blumer U.S. patent No. 3,375,554 (hereinafter referred to as "Blumer")

Sorensen U.S. patent No. 4,508,676 (hereinafter referred to as "Sorensen")
Promot 100-100/100 (hereinafter referred to as "Promot 1 00")

Modern Plastics, "New Vigor for Two-Shot Molding with

Automation...Versatility...lngenuity" (hereinafter referred to as "Modern Plastics")

A discussion of the specifics follows:

Request

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The request indicates that the Requestor considers JP '227 as raising a

substantial new question of patentabilty for claims 1, 6-8 and 10 of the '184

patent.
It is agreed that the consideration of JP '227 raises an SNO as to claims 1, 6-8

and 10 of the '184 patent. The last paragraph of page 31 through page 42 of the
request is hereby incorporated by reference for the explanation of the teachings

provided in JP '227 regarding a method of two-shot injection molding of a part utilizing a

common mold core. These teachings were not present in the pro?ecution of the
application which became the '184 patent. Further, there is a substantial

likelihood that

a reasonable examiner would consider these teachings important in deciding whether or

not these claims are patentable. Accordingly, JP '227 raises a substantial new question..
of patentability as to claims 1, 6-8 and 10, which question has not been decided in a

previous examination of the '184 patent.

The request indicates that the Requestor considers JP '022 as raising a
substantial new question of patentabilty for claims 1

and 10 of the '184 patent.

It is agreed that the consideration of JP '022 raises an SNO as to claims 1 and

10 of the '184 patent. Page 43 through the top of page 47 of the request is hereby
incorporated by reference for the explanation of the teachings provided in JP '022
regarding a method of two-shot injection molding of a part utilizing a common mold

core. These teachings were not present in the prosecution of the application which
became the '184 patent. Further, there is a substantial

likelihood that a reasonable

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examiner would consider these teachings important in deciding whether or not these

claims are patentable. Accordingly, JP '022 raises a substantial new question of
patentability as to claims 1 and 10, which question has not been decided in a previous
examination of

the '184 patent.

The request indicates that the Requestor considers JP '401 as raising a
substantial new question of patentability for claims 1 and 10 of

the '184 patent.

It is agreed that the consideration of JP '401 raises an SNQ as to claims 1 and

10 of the '184 patent. The bottom of page 47 through the top of page 52 of the request
is hereby incorporated by reference for the explanation of the teachings provided in JP
'401 regarding a method of two-shot injection molding of a part utilizing a common mold

core. These teachings were not present in the prosecution of the application which
became the '184 patent. Further, there is a substantial

likelihood that a reasonable

examiner would consider these teachings important in deciding whether or not these
claims are patentable. Accordingly, JP '401 ra~ses a substantial new question of patentability as to claims 1 and 10, which question has not been decided in previous

examination of the '184 patent.

The request indicates that the Requestor considers the combination of JP
'449 and the Admitted State of the Prior Art as raising a substantial new question

of patentabilty for claims'1 and 6-9 of the '184 patent.

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It is agreed that the combination of JP '449 and the Admitted State of the Prior

Art raises an SNQ as to claims 1 and 6-9 of the '184 patent. The bottom of page 6
through the top of page 9, page 22 beginning at "E," through the top of page 27 and page 54 through the top of page 60 of the request is hereby incorporated by reference

for the explanation of the Admitted State of the Prior Art and the teachings in JP '449

regarding a method of molding a two-component part. These combined teachings were
not present in the prosecution of the application which became the '184 patent. Further,
there is a substantial

likelihood that a reasonable examiner would consider these

teachings important in deciding whether or not these claims are patentable.

Accordingly, the combination of JP '449 and the Admitted State of the Prior Art, raise a substantial new question of patentability as to claims 1 and 6-9, which question has not
been decided in previous examination of the '184 'patent.

The request indicates that the Requestor considers the combination of JP
'44~, the Admitted State of the Prior Art and Schad as raising a substantial new
question of patentabilty for claim 10 of the '184 patent.

It is agreed that the combination of JP '449, the Admitted State of the Prior-Art

and Schad raises an SNQ as to claim 10 of the '184 patent. Page 60 of the request is
hereby incorporated by reference for the explanation of the teachings of Schad regarding the separation of mold components in a two-shot molding process as
applicable to the combination of the JP '449 and the Admitted State of the Prior Art.

These combined teachings were not present in the prosecution of the application which

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became the '184 patent. Further, there is a substantial

Page 7

likelihood that a reasonable

examiner would consider these teachings important in deciding whether or not this claim

is patentable. Accordingly, the combination of JP '449, the Admitted State of the Prior
Art and Schad, raises a substantial new question of patentability as to claim 10, which
question has not been decided in previous examination of the '184 patent.

. .

The request indicates that the Requestor considers the combination of JP
'449 and Modern Plastics as raising a substantial new question of patentability for

claim 1 of the '184 patent.
It is agreed that the combination of JP '449 and Modern Plastics raises an SNQ

as to claim 1 of the '184 patent. Pages 60-64 of the request are hereby incorporated by
reference for the explanation of the combination of the teachings of JP '449 and Modern

Plastic regarding a two-shot molding process, These combined teachings were not
present in the prosecution of the application which became the '184 patent. Further,
there is a substantial

likelihood that a reasonable examiner would consider these

teachings important in deciding whether or not this claim is patentable. Accordingly, the
combination of JP '449 and Modern Plastics raises a substantial new question of
patentability as to claim 1, which question has not been decided in previous

examination of the '184 patent.

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The request indicates that the Requestor considers the combination of JP

'227 and Modern Plastics as raising a substantial new question of patentabilty for
claims 1, 2,4, and 6-10 of the '184 patent.
It is agreed that the combination of JP '227 and Modern Plastics raises an SNQ
as to claims 1,2,4 and 6-10 of the '184 patent. Page 65 through the top of page 68 of

the request is hereby incorporated by reference for the explanation of the combination
of teachings of JP '227 and Modern Plastics regarding a two-shot molding process.

These combined teachings were not present in the prosecution of the application which
became the '184 patent. Further, there is a substantial

likelihood that a reasonable

examiner would consider these teachings important in deciding whether or not these,

claims are patentable. Accordingly, the combination of JP '227 and Modern Plastics
raises a substantial new question of patentability as to claims 1, 2, 4 and 6-10, which
question has not been decided in previous examination of the '184 patent.

The request indicates that the Requestor considers the combination of
either JP '022 or JP '401 and Promot 100 as raising a substantial new question of
patentabilty for claims 6-8 of the '184 patent.

It is agreed that the combination of JP '022 or JP '401 in view of Promot 100

raises an SNQ as to claims 6-8 of the '184 patent. The bottom of page 67 through the

top of page 72 is hereby incorporated by reference for the explanation of the .
combination of teachings of JP '022 or JP '401 with Promot 100 regarding a two-shot

molding process. While no date has been supplied for Promot 100, it is noted that

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Page 9

during prosecution of the application which became the '184 patent, an IDS was
submitted (6/16/1988) citing Promot 100 and noting

that Figures 1 through 4 of Promot

11 illustrate the prior art described in the Background portion of the specification of the

application which became the '184 patent. These combined teachings were ndpresent
in the prosecution of the

application which became the '184 patent. Further, there is a

substantial

likelihood that a reasonable examiner would consider these teaching
not these Claims are patentable. Accordingly, the

important in deciding whether or

combination of JP '022 or JP '401 and Promot 100, raises a substantial new question of.

patentability as to claims 6-8, which question has not been decided in previous

examination of the '184 patent.

The request indicates that the Requestor considers the combination of
either JP '227, JP '022 or JP '401 with either Blummer or Soreneson as raising a

substantial new question of patentability for claim 9 of the '184 patent.
It is agreed that the combination of either JP '227, JP '022 or JP '401 in view of

either Bummer or Sorensen raises an SNQ as to claim 9 of the '184 patent. The bottom'
of page 72 through page 74 of the request is hereby incorporated by reference for the
explanation of the combination of the teachings of any of JP '227, JP '022 or JP '401

and either Blummer or Sorensen regarding the securing of two mold components in a

two-shot molding process. These combined teachings were not present in the
prosecution of the application which became the '184 patent. Further, there is a
substantial

likelihood that a reasonable examiner would consider these teachings

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Page.10

important in deciding whether or not this claim is patentable. Accordingly, the
combination of any of JP '227, JP '022 or JP '401 with either Blummer or Sorensen

raises a substantial new question of patentability as to claim 9, which question has not
been decided in previous examination of the '184 patent.

Duty of Disclosure
The patent owner is reminded of the continuing responsibility under 37 CFR
1.565(a) to apprise the Offce of any.

litigation activity, or other prior or concurrent

proceeding, involving Patent No. 4,935,184 throughout the course of this reexamination

proceeding. The third party requester is also reminded of the ability to similarly apprise
the Offce of