Ex Parte 6910205 et al

Patent Trial and Appeal Board

May 5, 2016

95001548 (P.T.A.B. May. 5, 2016)

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.
95/001,548 02/17/2011 6910205 13557.112021 1709
25226 7590 04/10/2017
MORRISON & FOERSTER LLP
755 PAGE MILL RD
PALO ALTO, CA 94304-1018
EXAMINER
KISS, ERIC B
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/10/2017 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
____________

GOOGLE, INC.,
Requester

v.

ORACLE AMERICA, INC.,
Patent Owner
____

Appeal 2013-010321
Reexamination Control No. 95/001,548
United States Patent 6,910,205 B2
Technology Center 3900
____________

STEPHEN C. SIU, Administrative Patent Judge.

ORDER REMANDING INTER PARTES REEXAMINATION UNDER
37 C.F.R. § 41.63(a) TO THE EXAMINER

Patent Owner submits “Patent Owner’s Response Requesting to
Reopen Prosecution Pursuant to 37 C.F.R. § 41.77(b)(1),” dated July 1,
2016) (“Request”) in response to the Decision dated May 5, 2016 in which it
was noted that the Federal Circuit affirmed the rejection of claims 1 and 8
and a new ground of rejection of claims 2–4, 15, 16, and 18–21 was
Appeal 2013-010321
Reexamination Control 95/001,548
Patent 6,910,205 B2

2
designated (Decision 3, 6–7). Requester provides no comments under
37 C.F.R. § 41.77(c).
Because Patent Owner merely cancels all pending claims 1–4, 8, 15,
16, and 18–21, Patent Owner’s Request is taken as an amendment to cancel
claims pursuant to 37 C.F.R. § 41.63(a). Thus, to the extent the paper filed
by Patent Owner is considered a Request to Reopen Prosecution Pursuant to
37 C.F.R. § 41.77(b)(1), it is denied. The remaining claims are not subject
to reexamination or appeal. Hence, as a result of Patent Owner’s
amendment, there are currently no pending claims in this matter.

SUMMARY
Accordingly, this matter is remanded to the Central Reexamination
Unit for further action, as appropriate.

REMANDED

PATENT OWNER:

MORRISON & FOERSTER LLP
755 Page Mill Rd.
Palo Alto, CA 94304-1018

THIRD PARTY REQUESTER:

KING & SPALDING
1180 PEACHTREE STREET, NE
Atlanta, GA 30309