UNITED STATES PATENT AND TRADEMARK OFFICE

APPLICATION NO. FILING DATE

90/011,541 03/07/2011

45979 7590 04/251201 I

PERKINS COIE LLP/MSFT P. 0. BOX 1247 SEATTLE, WA 98111-1247

FIRST NAMED INVENTOR

6, 725,281

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

ATTORNEY DOCKET NO. CONFIRMATION NO.

155727-281 EXTP 5471

EXAMINER

ART UNIT PAPER NUMBER

DATE MAILED: 04/25/2011

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

PT0-90C (Rev. 10/03)

. I

. .. '.

Comcast, Exhibit-11191

("'~.;~~~ ~NI:":'_fl~~~':_~~~~c:: ---- ------- ---;;-.;;;;;,;;.;~,~o; ;,;;,~ \~, :,,.:~ii United States Patent and Trademark Office ~~~;._~ P.O. Box1450

DO NOT USE IN PALl\/I PRINTER

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

IRELL & MANELLA LLP

1800 AVENUE OF THE STARS

SUITE 900

LOS ANGELES, CA 90067

Alexandria, VA 22313-1450 W"WN .uspro.gov

MAILED

APR 2 5 2011

CENTRAL REEXAMINATION UNIT

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM

R~EXAMINATION CONTROL NO. 901011.541.

PATENT NO. 6. 725.281.

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)).

PTOL-465 (Rev.07-04)

2

I

Order Granting I Denying Request For Ex Parle Reexamination

Control No.

90/011,541

Examiner

RACHNA S. DESAI

Patent Under Reexamination

6,725,281

Art Unit

3992

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

The request for ex parte reexamination filed 07 March 2011 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 PT0-892, b )~ 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 PERMITTED. 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 reexamil")ation 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) D by Treasury check or,

b) D by credit to Deposit Account No. , or

c) D by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).

I I cc:Reauester <if third n::irtv reauester \

U.S. Patent and Trademark Office

PTOL-471 (Rev. 08-06) Office Action in Ex Parte Reexamination Part of Paper No. 20110413

I

3

"·./!

Application/Control Number: 90/011,541

Art Unit: 3992

DETAILED ACTION

Decision on Request

Page 2

I. A substantial new question of patentability affecting claims 1-4 and 20 of United States

Patent.Number 6, 725,281 BI is raised by the request for ex parte reexamination.

References Cited in the Request

(

2. The request cites the following prior art references:

US Patent No. 6, 167,433 issued to Maples et al. (hereafter "Maples").

US Patent No. 6,404,743 issued to Meandzija (hereafter "Meandzija")

*US Patent No. 5,655,081 issued to Bonnell et al. (hereafter "Bonnell").

*US Patent No. 6,389,464 issued to Krishnamurthy et al. (hereafter "Krishnamurthy")

*These references were cited as secondary references.

Issues Raised by Request

Issue I: The requester alleges (pages I 1-13 of the Request) the Meandzija reference provides a

new, noncumulative technical teaching. Meandzija is new prior art that was not previously

before the examiner at the time of allowance. Meandzija was filed on May 11, 1998 and claims

4

Application/Control Number: 90/011,541

Art Unit: 3992

Page 3

priority to a provisional filing date of November 4, 1997 which predates the filing date of the

'281 patent.

Issue 2: The requester alleges (pages 11 and 14-15 of the Request) that the Maples reference

provides a new, noncumulative technical teaching. Maples is new prior art that was not

previously before the examiner at the time of allowance. Maples was filed on July 31, 1998 and

claims priority to a provisional filing date of August 1, 1997 which predates the filing date of the

'281 patent.

Background

3. Claims 1-4 and 20 are being requested in the instant request for reexamination and are

current claims in the '281 Patent that issued April 20, 2004 from application 09/432,853 filed on

November 2, 1999. The '281 Patent claims priority to two provisional applications: 60/139,137

filed on June 11 1999 and 60/160,235 filed on October 18, 1999.

The '281 patent relates to controlled devices according to a device control model

maintain a state table representative of their operational state. Devices providing a user control

point interface for the controlled device obtain the state table of the controlled device, and may

also obtain presentation data defining a remoted user interface of the controlled device and

device control protocol data defining commands apd data messaging protocol to effect control of

the controlled device. These user control devices also subscribe to notifications of state table

changes, which are distributed from the controlled device according to an eventing model.

5

Application/Control Number: 90/011,541

Art Unit: 3992

Page 4

Accordingly, upon any change to the controlled device's operational state, the eventing model

synchronizes the device's state as represented in the state table across all user control devices.

Prosecution History

4. Claims 1-4 and 20 of the '572 Patent issued April 20, 2004 from application 09/432,853

filed on November 2, 1999.

Application 09/432,853 was initially filed with six claims. A preliminary amendment

was filed on 11/09/01 adding claims 7-22 and amending claim 4. In a restriction requirement on

9117102, Examiner determined that claims 1-6 were drawn to a different invention than claims 7-

22. In response to the restriction requirement on I 0/22/02, claims 1-6 were elected and new

claims 23-28 were added. In a non-final office action of 11/09/02, Examiner rejected claims 4-5

over 35 U.S.C. l02(e) over Krishnamurthy, US. 6,389,464 and claims 1-3 and 6 under 35 U.S.C.

103(a) over Cannon, US 6,334,178 in view of Krishnamurthy, US. 6,389,464. Examiner further

indicated claims 23-28 were allowed .. In the response to the non-final rejection, the claims were

amended on 04/22/03 to recite that the device control interface was presented to effect a change

in the op_erational state of the controlled device and that the event source module was in the

controlled computing device. In the final rejection of 05/14/03, the Examiner rejected claims 1-6

over Lawson, US 6,185,613 in view of Krishnamurthy, US 6,389,464. In response, the claims

were amended on 10/17 /03 to indicate the user perceptible device control interface is presented

to effect a change in the operation state of the controlled computing device represented in the

state table and that the user control point module obtains a copy of the state table. The

6

Application/Control Number: 90/011,541

Art Unit: 3992

Page 5

amendments further stated the event source module distributed change notifications to any

subscribing user controller device upon a change to the state table representing the operational

state of the controlled computing device, wherein the change notifications represent the

respective change in the state table. In the remarks filed with the amendments of I 0117103, the

Applicant argued Lawson failed to show "a device having a state table and lacks any suggestion

to send notifications of changes to the device's state table to other devices". Applicant further

argued Krishnamurthy fails to teach that "a copy of the system configuration table is kept by any

remote computer or suggest updating such copies via change notifications of changes to the

table". In summary, Applicant argued both Lawson and Krishnamurthy either individually or in

combination failed to teach that "many user controller devices obtain a copy of a state table of a

controlled device, and then updating such copies via change notifications so that the user

controller device's device control interfaces reflect the current operational state of the controlled

device". The Examiner subsequently issued a Notice of Allowance on 11/21103 allowing all

claims.

Substantial New Question

5. In view of the prosecution history, it is considered that the evaluation of a prior art

reference (or combination of references) that teaches or suggests, obtaining a copy of the state

table of the user controller device at the user controller device and distributing the change

notifications to any subscribing user controller device upon a change to the state table

representing the operational state of the controlled computihg device, wherein the change

7

Application/Control Number: 90/011,541

Art Unit: 3992

Page 6

notifications represent the respective change in the state table, would raise a substantial new

question of patentability.

Analysis

Issue 1: The Meandzija reference is new prior art. Meandzija teaches, among other things, an

enhanced SNMP management system that defines a management state of each SNMP agent,

defines events which are to be reported from the agent to the management station and provides a

log for recording particular events and associated agent data values when the events occurs. The

enhanced SNMP provides the capability for a state change notification to be communicated from

the SNMP agents to an SNMP management station when specific events occur at the agent. See

abstract and column 4, lines 45-column 7, line 19. Meandzija further discloses a Management

information base (MIB) which is a virtual store for managed objects. The MIB may be provided

as part of the memory of an agent and may communicate with the MIB of the management

station. The management station performs a monitoring function by retrieving the value of MIB

objects from the agents. The management station can cause an action to take place at an agent or

change the configuration settings of an agent by modifying the value of specific variables. The

SNMP agent can issue a state change to the management station in response to an event that

affects the MIB. See column 9, lines 8-column 10, line 50.

Since these teachings are directly related to subject matter considered as the basis for

allowability of the patent claims, a reasonable examiner would consider evaluation of the

. Meandzija reference as important in determining the patentability of the claims. As such it is

8

Application/Control Number: 90/011,541 Art Unit: 3992

Page 7

agreed that Meandzija reference raises a substantial new question of patentability with respect to

at least claim 1 of the '281 patent.

Issue 2: The Maples reference is new prior art. Maples teaches, among other things, a

multi-user, shared environment storing state and parameter information for each local and remote

station at each station, so that each station knows the current state of each other station. See

column 14, lines 28-32. Maples discloses a shared multi-user communication system that allmvs

data to be partially or wholly synchronized between local and remote stations. See abstract.

Maples discloses providing a shared control table which indicates control assignment of each

functional aspect of the MUSE system. See column 3, lines 42-47. The MUSE communicator

transmits state values and parameter information only when the state values and parameter

information are changed in value. Jn order to verify synchronization, the contents of the shared

user state table are retransmitted. See column 15, lines 15-24.

Since these teachings are directly related to subject matter considered as the basis for

allowability of the patent claims, a reasonable examiner would consider evaluation of the Maples

reference as important in determining the patentability of the claims. As such it is agreed that

Maples reference raises a substantial new question of patentability with respect to at least claim 1

of the '281 patent.

9

Application/Control Number: 90/011,541

Art Unit: 3992

Conclusion

Extensions of Time

Page 8

6. Extensions of time under 3 7 CFR 1 .136( a) will not be pennitted in these proceedings

because the provisions of 3 7 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 l.550(a)). Extension of time in ex parte

reexamination proceedings are provided for in 37 CFR 1.550(c). ·

Waiver of Right to File Patent Owner Statement

· 7. In a reexamination proceeding, Patent Owner may waive the right under 37 C.F.R. 1.530

to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner

waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proof of service in

the manner provided by 37 C.F.R. 1.248, if the request for reexamination was made by a third

party requester, see 37 C.F.R. l.550(f). The Patent Owner may consider using the following

statement in a document waiving the right to file a Patent Owner Statement:

Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement.

Amendment in Reexamination Proceedings

10

Application/Control Number: 90/011,541

Art Unit: 3992

Page 9

8. Patent Owner is notified that any proposed amendment to the specification and/or claims

in this reexamination proceeding must comply with 3 7 CFR 1.530( d)-(j ), must be formally

presented pursuant to 37 CFR §1.52(a) and (b), and must contain any fees required by 37 CFR

§ 1.20( c ); See MPEP §2250(IV) for examples to assist in the preparation of proper proposed

amendments in reexamination proceedings.

Submissions

9. If the patent owner fails to file a timely and appropriate response to any Office action or

any written statement of an interview required under 3 7 CFR § l .560(b ), the ex parte

reexamination proceeding will be terminated, and the Director will proceed to issue a certificate

under 3 7 CFR § 1.570 in accordance with the last office action.

Service of Papers

I 0. After the filing of a request for reexamination by a third party requester, any document

filed by either the patent owner or the third party requester must be served on the other party (or

parties where two or more third party requester proceedings are merged) in the reexamination

proceeding in the manner provided in 37 CFR 1.248. See 37 CFR l.550(f).

Notification of Concurrent Proceedings

11

Application/Control Number: 90/011,541

Art Unit: 3992

Page 10

11. 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. 6,725,281 Bl 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. See MPEP §§ 2207, 2282

and 2286.

12. All correspondence relating to this ex parte reexamination proceeding should be directed:

By Mail to:

By FAX to:

By hand:

Mail Stop Ex Parle Reexam Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

(571) 273-9900 Central Reexamination Unit

Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 223 14

Registered users of EFS-Web may alternatively submit such correspondence via the electronic

filing system EFS-Web, at https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html.

EFS-Web offers the benefit of quick submission to the particular area of the Office that needs to

act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e., electronically

uploaded) directly into the official file for the reexamination proceeding, which offers parties the

opportunity to review the content of their submissions after the "soft scanning". process is

complete.

12

Application/Control Number: 90/011,541

Art Unit: 3992

Page 11

. Any inquiry concerning this communication should be directed to Rachna Desai at

telephone number 571-272-4099.

/Rachna S Desai/ Primary Examiner, Art Unit 3992

Conferees:

13

Reexamination Application/Control No.

rn 1111111111111111

90011541 I Certificate Date !

l Requester Correspondence Address: D Patent Owner

I

IRELL & Mf\NELLA LLP 1800 AVENUE OF THE STARS SUITE 900 LOS ANGELES, CA 90067

I LITIGATION REVIEW [8J i·~~·

Case Name

; 5: 1 Ocv240 Microsoft Corporation v. Tivo, Inc

L ! i I ' I

I

L_

/RSD/ (examiner initials\

Applicant(s)/Patent Under Reexamination 6,725,281 Certificate Number

[8J Third Party

04/13/2011 Cd ate)

Director Initials

·'1fil:a, -~ f q,

r

COPENDING OFFICE PROCEEDINGS

r· TYPE OF PROCEEDING NUMBER

---i

'

i I

'

I

U.S. Patent and Trademark Office DOC. CODE RXFILJKT

I

14

Application/Control No. Applicant(s)/Patent Under Reexamination

Search Notes 90011541 6,725,281

111 111 111 II Ill Ill 111

Examiner Art Unit

RACHNA S DESAI 3992

SEARCHED

Class I Subclass I Date I Examiner I I I

SEARCH NOTES

Search Notes I Date I Examiner Reviewed Patented File's Prosecution History I 04/13/11 I RSD ~--·~~~~~~~~~~~~~-'-~~~~~~~~~'--~~~~~---'-~~~~--'

INTERFERENCE SEARCH

Class Subclass I Date I Examiner I

[ __ ___._ _ _____,

U.S. Patent and Trademark Office Part of Paper No.: 20110413

15

PTOISBI08a (07-09) Approved for use through 07/3112012. OMB 0651.0031

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paoerwork Reduction Act of 1995 no persons aie mauired to rewond to a coUacllon of information unless it contains a valid OMB control number.

Substitute for form 1449/PTO Complete ff Known

Application Number 90/011,541-Conf. #54 71

INFORMATION DISCLOSURE Filing Date March 7, 2011

STATEMENT BY APPLICANT First Named Inventor William Zintel ArtUntt 3992

{Use as many sheets as necessaty} Examiner Name R. S. Desai

Sheet I 1 I of I 3 Altomey Docket Number 418278883US1

U.S. PATENT DOCUMENTS

Examiner Cite Document Number Publicalion Date Name of Patentee or

Pages, Columns, Lines, VVhere

Initials*

Examiner Initials*

'Examiner j Signature

No.'

I

Cite No.'

Number-Kind Codez (if l<nown) MM-00-YYYY Applicant of Cited Document

US-5,655,081 08-05-1997 Bonnell etal. US-6 298 378 10-02-2001 Anaal et al. US-6404 743 06-11-2002 Meandziia

FOREIGN PATENT DOCUMENTS Fnminn Patent Document Publication

Name of Patentee or Date Caa'Oy Code' -Numllct'-l<ind c.orJe' ,, /alov.nJ MM-00-YYYY

W0-9847076-A 1 10-22-1998

Appficant of Cited Document

Hewlett Packard Co et al.

'Date Considered

Relevant Passages or Relevant F"igures Appear

Pages, Colurms. Lines, W1ere Relevar.t Passages ,.. Or Relevant FOJn!s Pflpear

"EXAMINER: Initial ii reference considered, whether or not cilation is In conformance with MPEP 609. Draw line through citation It nnt In confcrmance ancl not considered. Include CCIPY of !his form with next communication to applicant. - CITE NO.: Those application(s) wh!ch are marked with an single aslel!Slc (*) next to Ille Cite No. ate not supplied (under 37 CFR 1.98(a)(2)(iii)) because that applicaticn was fi!ecl after June 30, 2003 or Is avaiable In the IFW. ' ApJl!icants unique citation designation number (optlonaQ. • See Kinds Codes of USPTO Patent Documents at www.usoto.gov « MPEP 901.04. 3 Enter Oftice !hat issued Ille document. by the two-letter code (WIPO Stanclanl ST.3). • For Japanese patent documents, the lndiallion of the year of the reign of the Emperor must precede Ille serial number of the patent document. s Kind of document by Ille appropriate ~bots as indicated on the document under WlPO Slandanl ST.16 It possible. 0 Applicant is to place a check mark here 1f English language Tmnsiaticn Is attached.

41827-8883.US01/LEGAL21167272.1

16

PTO/SB/08b (07-09) Approved for use through 07/31/2012. OMB 0651-0031

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under lhe Paperworll Reduction Act of 1995, no persons are required to respond to a collection of Information unless it contains a valid OMB control number.

Substitute for form 1449/PTO Complete ff Known

Application Number 90/011, 541-Conf. #54 71

INFORMATION DISCLOSURE Filing Date March 7, 2011

STATEMENT BY APPLICANT First Named Inventor William Zintel

Sheet I

Exami~er

Initials

!Examiner I ~ianalure

ArtUntt 3992 (Use as many sheets as necessal)I) Examiner Name R. S. Desai

Cite No.1

2 I of I 3 Attorney Docket Number 418278883US 1

NON PATENT LITERATURE DOCUMENTS Include name of the author (in CAPITAL LETTERS), tiUe of the article (when appropriate), tiUe of the item (book, magazine, journal, serial, symposium, catalog, etc.). date, page(s), volume-Issue

numberlsl, oublisher. citv and/or countrv where oublished. Paul J. Leach, Dilip C. Naik, "A Common Internet File System (CFIS/1.0) Protocol," Internet Enaineering Task Force December 19 1997 243 oaaes. Jeff Prosise, 'Wicked Code," Microsoft Systems Journal, Vol. 11, No. 10, October 1996, 11 oaaes. "SunNet Manaaer 2.2.3 User's Guide" Sun Microsystems Inc. 1995 270 paQes. "SunNet ManaQer 2.2.3 Reference Manual" Sun Microsystems, Inc. 1995, 382 pages. Sindie M. Feit, SNMP: A Guide to Network Manaqement, McGraw-Hill Inc. 1995, 202 paQes. Woody Leonhard & Barry Simon, The Mother of All IMndows 95 Books, Addison-Wesley Publishim:i Company, 1996, 26 pages. Ed Bott, Usina Windows NTTM Workstation 4.0, Que Corporation 1996, 43 pages. "[MS-CIFS] Common Internet File Systems (CIFS) Protocol Specification," Microsoft Corooration, 2010, 764 oaaes. Carl Malamud, Stacks: Interoperability in Today's Computer Networks, Prentice-Hall, Inc., 1992, oo. 177, 3 paaes. 'Windows CE Service Pack: Network Client Component/Redirector (Sh3.exe)," http://www.microsoft.com, October 28, 1999, £Accessed November3, 20101. 2 pages.

I Date Considered

T2

'EXAMINER: Initial ff reference considered, whelher or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered Include copy ot this form with next communication to applicant

'Applicant's unique citation designation number (optional). 'Applicant is to place a check mark here if English language Translation Is anached.

41827-8883.US01/LEGAL21167272.1

17

PTO/SBIOSb (07-09) Approved for use through 07/3112012. OMB 0651-0031

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under lhe Paperwork Reduction Act or 1995. no persons are required to respond to a calleclion of infonnation unless ii cantains a vaftd OMB cantrol number.

Substitute for fonn 1449/PTO Complete If Known

Application Number 90/011, 541-Conf. #54 71

INFORMATION DISCLOSURE Filing Date March 7, 2011

STATEMENT BY APPLICANT First Named Inventor William Zintel

Sheet I

Exami~er Initials

!Examiner I ~ignature

Art Unit 3992 (Use as many sheets as necessary)

Examiner Name R. S. Desai

Cite No.1

3 I 01 I 3 Attorney Docket Number 418278883US1

NON PATE:U LITERATURE DOCUMENTS Include name of the author (in CAPITAL LETTERS). title of the article (when appropriate), title of the item (book, magazine, journal, serial, symposium, catalog, etc.). date, page(s), volume-issue

number(sl cublisher citv andlor countrv where cublished. Case et al., "A Simple Network Management Protocol," Internet Engineering Task Force, 1990 72 oaaes. "NetView for OS/2 as an SNMP Manager," IBM Corporation, December 1994, pp. 1-8, 75-93, 330 oaaes.

'Date · ~onsidered

r2

•EXAMINER: lnttial H reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation ~not in conformance and not considered Include copy of this fonn with next cammunlcalion to applicant.

'App!icanfs unique citation designation number (cptlona!). 'Applicant is to place a check mark here ff English language Translatlon Is attached.

41827-8883.US01/LEGAL21167272.1

18