95000463 (P.T.A.B. Jun. 27, 2014)

Ex Parte 6542673 et al

Patent Trial and Appeal BoardJun 27, 2014

95000463 (P.T.A.B. Jun. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,463 04/27/2009 6542673 5145-CIRREX-RI463 3503 27571 7590 06/27/2014 Ascenda Law Group, PC 84 W. Santa Clara St. Suite 550 San Jose, CA 95113 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/27/2014 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 ____________ CIENA CORP. Requester v. CIRRIX SYSTEMS LLC Patent Owner ____________ Appeal 2014-004292 Reexamination Control 95/000,463 Patent 6,542,673 B1 Technology Center 3900 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and IRVIN E. BRANCH, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION Examiner’s Determination under 37 C.F.R. § 41.77(d) 37 C.F.R. § 41.77(f) Appeal 2014-004292 Reexamination Control 95/000,463 Patent 6,542,673 B1 2 In an earlier Decision, Appeal No. 2011-013123, mailed March 16, 2012 (“Decision”), we reversed the Examiner’s decision favorable to the patentability of claims 12, 14, 24, 52-60, 68-71, 73-103, and 105 of U.S. Patent No. 6,542,673 B1 (the “’673 patent”). Decision 20-21. Our reversal of the Examiner’s decision in connection with the prior art rejections of claims 12, 14, 24, 52-60, 68-71, 73-103, and 105 was designated as new grounds of rejection pursuant to 37 C.F.R. § 41.77(b). The new grounds of rejection were as follows: 1. Claims 12, 14, 53, 55, 57, and 59 as anticipated by Fischer; 2. Claims 12 and 52-60 as anticipated by UTP; 3. Claims 68-71, 73-76, 85, and 86 as unpatentable over Chalsen; 4. Claims 73-89, 94-100, and 103 as anticipated by Cina; 5. Claims 24, 68-71, 90-93, 101, 102, and 105 as unpatentable over the combination of Cina, Bartschat, and Chalsen. Decision 20. Patent Owner elected to reopen prosecution under 37 C.F.R. § 41.77(b)(1) (“Response Requesting Reopening of Prosecution,” filed April 16, 2012, “PO Request”). Requester filed comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner’s request to reopen prosecution (“Comments by Third Party Requester,” filed May 15, 2012, “3PR Comments”). In the Order Remanding Inter Partes Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner, dated March 18, 2013 (“Remand” at 4- 7), the matter was remanded to the Examiner for consideration of Patent Owner’s and Requester’s comments and evidence only as they pertain to the following new grounds of rejection: 1. Claims 12 and 52-60 as anticipated by UTP; 2. Claims 12, 14, 53, 55, 57, and 59 as anticipated by Fischer; and Appeal 2014-004292 Reexamination Control 95/000,463 Patent 6,542,673 B1 3 3. Claims 68-71, 73-76, 85, and 86 as unpatentable over Chalsen. Remand 8-9. Thus, prosecution was not reopened with respect to claims 24, 77-84, 87-103, and 105, or the following new grounds of rejection: 1. Claims 73-89, 94-100, and 103 as anticipated by Cina; 2. Claims 24, 68-71, 90-93, 101, 102, and 106 as unpatentable over Cina, Bartschat, and Chalsen. In accordance with 37 C.F.R. § 41.77(e), the Examiner determined that “3PR’s remarks are found persuasive and the PTAB’s new grounds of rejections are maintained” (“Determination Under 37 CFR § 41.77(d),” dated April 29, 2013, “Examiner’s Determination” at 4). Hence, the Examiner maintains the rejection of claims 12 and 52-60 as anticipated by UTP; claims 12, 14, 53, 55, 57, and 59 as anticipated by Fischer; and claims 68-71, 73-76, 85, and 86 as unpatentable over Chalsen. As set forth above, the rejections of claims 73-89, 94-100, and 103 as anticipated by Cina and claims 24, 68-71, 90-93, 101, 102, and 105 as unpatentable over Cina, Bartschat, and Chalsen were not subject to reopening of prosecution under 37 C.F.R. § 41.77(b) and are therefore maintained. Pursuant to 37 C.F.R. § 41.77(e), Patent Owner submitted a response to the Examiner’s Determination (“PO Response,” filed May 28, 2013). Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to the Board so that we may reconsider the matter and issue a new decision. Patent Owner submits proposed claim amendments pursuant to 37 C.F.R. § 41.77(e) but does not provide substantive arguments in support of any of the disputed claims. Patent Owner “may once submit comments in response to the examiner’s determination.” 37 C.F.R. § 41.77(e). However, Appeal 2014-004292 Reexamination Control 95/000,463 Patent 6,542,673 B1 4 there is no provision for Patent Owner to submit new claim amendments under 37 C.F.R. § 41.77(e). Therefore, Patent Owner’s proposed claim amendments are not entered and will not be considered. Because Patent Owner does not provide additional arguments in support of the disputed claims, we affirm the Examiner’s decision to maintain the rejections of these claims consistent with our Decision. CONCLUSION We affirm the Examiner’s decision to maintain the rejection of claims 12 and 52-60 as anticipated by UTP; claims 12, 14, 53, 55, 57, and 59 as anticipated by Fischer; and claims 68-71, 73-76, 85, and 86 as unpatentable over Chalsen. The rejections of claims 73-89, 94-100, and 103 as anticipated by Cina and claims 24, 68-71, 90-93, 101, 102, and 105 as unpatentable over Cina, Bartschat, and Chalsen were not subject to reopening of prosecution under 37 C.F.R. § 41.77(b) and are therefore maintained. AFFIRMED Appeal 2014-004292 Reexamination Control 95/000,463 Patent 6,542,673 B1 5 ack Patent Owner ASCENDA LAW GROUP, PC 84 W. SANTA CLARA ST. SUITE 550 SAN JOSE, CA 95113 Third Party Requester KENYON & KENYON LLP 1500 K STREET N.W. SUITE 700 WASHINGTON, DC 20005