While this is not a final action, the challenging party has no further right of response unless the patent holder decides to try to recover the four rejected dependent claims. If Interval does not respond to this action by December 1, the examiner will issue a Final Action.
This now brings two of the four reexamination proceedings against the Interval patents largely to a conclusion. With respect to these two patents, '314 and '682, there were nine independent claims and 22 dependent claims that were challenged. Of those, only one independent claim and one dependent claim have ultimately been rejected, a success rate of only 11% on the independent claims and 5% on the dependent claims. Not terribly good for the challenger.
The reexaminations of the '507 and '652 patents are still in process.
Page 2
Control Number: 95/001,576
Art Unit: 3992
INTER PARTES REEXAMINATION ACTION CLOSING PROSECUTION
1. This is an action closing prosecution in the inter partes reexamination of USP 6,757,682 ("'682 patent").
2. Original claims 1-13, 16-17, 20 are under reexamination and the amendment filed Aug. 10, 2011 adding new dependent claims 21-44 has been entered. As such, claims 1-13, 16-17, and 21-44 are under reexamination.
3. Patent Owner's ("PO") remarks filed Aug. 10, 2011 have been entered. ("Remarks")
4. Third Party Requester's ("3PR") comments filed Sept. 9, 2011 have been entered. ("Comments")
References Cited in this Action
5. USP 7,082,407 to Bezos filed Aug. 19, 1999. ("Bezos")
6. USP 6,195,657 to Rucker filed Sep. 25, 1997. ("Rucker")
7. USP 6,049,777 to Sheena filed Mar. 14, 1997. ("Sheena")
8. USP 5,724,567 to Rose filed Apr. 25, 1995. ("Rose")
9. USP 6,466,918 to Spiegel et al. filed Nov. 18, 1999. ("Spiegel")
10. USP 6,681,369 to Meunier filed May. 5, 1999. ("Meunier")
11. Declaration of J. Ben Schafer, Ph.D executed Sept. 9, 2011. ("Shafer Declaration")
Page 3
Control Number: 95/001,576
Art Unit: 3992
Proposed Rejections
12. The Request/Comments indicate that 3PR considers:
(A) Claims 1-13, 16-17, and 21-44 are anticipated by Bezos.
(B) Claims 1-13, 16-17, and 21-44 are obvious over Bezos in view of Spiegel.
(C) Claims 1-13, 16-17, and 21-44 are obvious over Bezos in view of Meunier.
............................................
(D) Claims 1-13, 16-17, and 21-44 are anticipated by Spiegel/Bezos as a
single anticipatory reference or alternatively these claims are obvious of Spiegel in view of Bezos.
(E) Claims 1-13, 16-17, and 21-44 are obvious over Spiegel in view of Meunier.
............................................
(F) Claims 1-13, 16-17, and 21-44 are anticipated by Rucker.
............................................
(G) Claims 1-5, 8-10, 16-17, and 21-44 are anticipated by Sheena.
(H) Claims 6-7 and 11-13 are obvious over Sheena in view of Bezos.
............................................
(I) Claims 1-5, 8, 17, and 21-44 are anticipated by Rose.
(J) Claims 6-7, 9-13, and 16 are obvious over Rose in view of Bezos.
(K) Claims 9-10 and 16 are obvious over Rose in view of Sheena.
............................................
(L) Claims 21-44 are rejected under 35 USC §314(a).
(M) Claims 21-26, 29-34, 40, 42, and 44 are rejected under 35 USC §112-2nd.
(N) Claim 30 are rejected under 35 USC §112-4th.
(O) Claims 40, 42, and 44 are rejected under 35 USC §112-2nd.
(P) Claims 40, 42, and 44 are rejected under 35 USC §112-1st.
Page 4
Control Number: 95/001,576
Art Unit: 3992
Summary of this Action
13. Claims 1-13, 16-17, and 20 are confirmed as patentable.
14. Claims 21-29, 31-39, 41, and 43 are allowed as patentable.
15. Claims 30, 40, 42, and 44 are rejected.
16. Proposed rejections (A)-(M) and (P) are NOT adopted.
17. Proposed rejections (N)-(O) are adopted.
