Ex Parte 6334938 et al

Patent Trial and Appeal Board

Dec 11, 2013

95000563 (P.T.A.B. Dec. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,563 08/03/2010 6334938 097007-0105 2786
22428 7590 12/12/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/12/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GUARDIAN INDUSTRIES CORP.
Third Party Requester

v.

ASAHI GLASS COMPANY, LTD. and
AGC FLAT GLASS NORTH AMERICA, INC.
Patent Owners
____________

Appeal 2013-007804
Reexamination Control No. 95/000,563
Patent No. 6,334,938
Technology Center 3900
____________

ORDER REMANDING APPEAL TO EXAMINER
This application was electronically received by the Patent Trial and
Appeal Board on May 14, 2013. A Docketing Notice was mailed on June
11, 2013. Upon review of the application, it has been determined that a
remand to the Examiner is necessary to consider the following issues and to
take necessary corrective action.

UNDECIDED PETITION

On September 26, 2013, Patent Owners filed an “Emergency Petition
Under 37 C.F.R. 1.182 To Terminate Inter Partes Reexamination Based On
Appeal 2013-007804
Reexamination Control No. 95/000,563
Patent No. 6,334,938

2
35 U.S.C. § 317(b) Estoppel.” In response to the request of the Office of
Patent Legal Administration for additional materials, Patent Owners filed
“Supplement to Petition to Terminate” (October 3, 2013); “Second
Supplement to Petition to Terminate” (October 4, 2013); “Third Supplement
to Petition to Terminate” (October 8, 2013); and “Fourth Supplement to
§ 1.182 to Terminate” (December 4, 2013). However, there is no indication
in the record that the Petition was decided.

Accordingly, it is ordered that the reexamination is remanded to the
Examiner:

1) to consider “Fourth Supplement to § 1.182 to Terminate” filed
December 4, 2013;
2) to consider “Third Supplement to Petition to Terminate” filed October 8,
2013;
3) to consider “Second Supplement to Petition to Terminate” filed October
4, 2013;
4) to consider “Supplement to Petition to Terminate” filed October 3, 2013;
5) to have the Petition filed September 26, 2013 decided;
6) for further action as may be appropriate.

If there are any questions pertaining to this Order, please contact the
Patent Trial and Appeal Board at 571-272-9797.

Appeal 2013-007804
Reexamination Control No. 95/000,563
Patent No. 6,334,938

3
peb

Third Party Requestor:

JOSEPH A. RHOA
NIXON & VANDERHYE PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203

Patent Owner:

FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007