95001517 (P.T.A.B. Jan. 5, 2015)

Ex Parte 7714747 et al

Patent Trial and Appeal BoardJan 5, 2015

95001517 (P.T.A.B. Jan. 5, 2015)

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. 95/001,517 12/30/2010 7714747 2855.002REX7 8756 26111 7590 01/06/2015 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/06/2015 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 ____________ CME GROUP, INC. Requester v. REALTIME DATA LLC, Patent Owner ____________ Appeal 2014-001007 Reexamination Control 95/001,517 Patent 7,714,747 B2 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU and THOMAS L. GIANNETTI, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In an earlier Decision, 2012-009046, mailed July 24, 2012 (“Decision I”), the Board reversed the Examiner’s decision not to reject claims 1-22 over prior art, which was designated new grounds of rejection pursuant to 37 C.F.R. § 41.77(b). Decision I 18–19. Patent Owner, Realtime Data LLC, Appeal 2014-001007 Application 95/001,517 2 elected to reopen prosecution and submitted new evidence 1 affecting claims 1-22. 2 Requester, CME Group, Inc., filed comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner’s request to reopen prosecution. 3 In the “Determination under 37 CFR § 41.77(d)” mailed April 10, 2013 (“Examiner’s Determination” or “Ex’r Determ.”), the Examiner maintained the new grounds of rejection. Examiner’s Determination 3–4. Pursuant to 37 C.F.R. § 41.77(e), both Patent Owner and Requester submitted responses to the Examiner’s Determination. 4 Pursuant to 37 C.F.R. § 41.77(f), we affirmed the Examiner’s determination to maintain the new grounds of rejection. Decision, dated January 14, 2014, “Decision II,” 10. In particular, we affirmed the Examiner’s determination to maintain the rejection of claims 1–22 as anticipated by XMill; claims 1, 4, 8, 11, 14, 15, 19, and 20 as unpatentable over XMill and Sebastian; claims 5, 6, 12, 16, 17, and 21 as unpatentable over XMill, Sebastian, and Seroussi; claims 7, 13, 18, and 22 1 E.g., “Declaration of Dr. James W. Modestino Under 37 C.F.R. § 1.132,” dated September 24, 2012 (“Modestino Declaration”). 2 See Patent Owner’s “Request to Reopen Prosecution Under 35 C.F.R. § 41.77(b)” filed September 24, 2012 (“PO Request to Reopen Prosecution” or “PO Request”). 3 See Requester’s “Third Party Requester’s Response to Patent Owner’s Request to Reopen Prosecution Before the Examiner,” filed October 24, 2012 (“3PR Resp.”) and “Declaration Under 37 C.F.R. § 1.132” of Paul C. Clark, dated October 23, 2012 (“Clark Declaration”). 4 Patent Owner’s “Comments in Response to Examiner’s Determination Under 27 C.F.R. § 41.77(e),” filed May 10, 2013 (“PO Resp. to Exr’s Determination”) and “Third Party Requester’s Response to Patent Owner’s Comments on Examiner’s Determination Under 37 C.F.R. § 41.77(e),” filed June 7, 2013 (“3PR Comments on PO’s response” or “3PR Comments”). Appeal 2014-001007 Application 95/001,517 3 as unpatentable over XMill and Fascenda; claims 1, 4, 5, 7, 8, and 11–22 as unpatentable over XMill and XML-Xpress; and claims 2 3, 9, and 10 as unpatentable over XMill and Franaszek. Decision II, 10. Patent Owner now requests a rehearing of Decision II under 37 C.F.R. § 41.79. Patent Owner argues that “the Board’s definition [of the term “data packet” as specified in Decision I and/or Decision II] is fundamentally flawed because a person of ordinary skill in the art knows that a packet contains both data and control information.” Req. Reh’g. 2 (citing Declaration of Dr. James W. Modestino, “Modestino Decl.,” ¶ 19). Dr. James W. Modestino testifies that, based on “The Authoritative Dictionary of IEEE Standards Terms, 787 (7 th ed. 2000), one of ordinary skill in the art would supposedly have understood that a “data packet” must include “control information.” (Modestino Decl., ¶ 19). This argument was previously presented by Patent Owner and was previously addressed. See, e.g., Decision II, 5–6. Patent Owner does not provide a sufficient showing that we overlooked or misconstrued any points regarding this matter. Patent Owner argues that a “data packet,” as defined by any of The Microsoft Computer Dictionary (1999), The Authoritative Dictionary of IEEE Standards Terms (7 th ed. 2000), or Webster’s New World Dictionary of Computer Terms, (8 th ed. 2000), requires “control information.” Req. Reh’g. 5–9. Each of these definitions was previously considered and addressed. See, e.g., Decision II, 4–6. Patent Owner does not provide a sufficient showing that we overlooked or misconstrued any points regarding this issue. Appeal 2014-001007 Application 95/001,517 4 Patent Owner argues that each of the Tanenbaum and Kurose references discloses that a “data packet” must include “control information.” Req. Reh’g. 9–10 (citing Modestino Declaration, ¶ 24). This issue was previously presented by Patent Owner and previously addressed. See, e.g., Decision II 6–7. Patent Owner does not provide a sufficient showing that we overlooked or misconstrued any points regarding this issue. Patent Owner argues that a “data container,” as disclosed by XMill differs from a “data packet,” as claimed. Req. Reh’g. 10–11. This issue was previously presented by Patent Owner and previously addressed. See, e.g., Decision II 8–9. Patent Owner does not provide a sufficient showing that we overlooked or misconstrued any points regarding this issue. Patent Owner argues that a “data packet” must contain “control information” because “without such control information the claimed invention becomes inoperable” and data “cannot be reliably transmitted over a network.” Req. Reh’g. 3–4 (citing Modestino Decl. ¶¶ 19, 23, 24, 26, and 27). Dr. Modestino testifies that “it is well known that a ‘data packet’ has certain control information” and that, based on his “reading of the ’747 patent,” Dr. Modestino is of the opinion that “the term ‘data packet’ requires some form of control information” and “must include certain control information in order to provide reliable transport from one network entity to another.” Modestino Decl. ¶¶ 19, 23, 27. While Dr. Modestino testifies that he is of the opinion that a “data packet” requires “control information,” Dr. Modestino does not explain the basis of this opinion and does not provide sufficient evidence to support the opinion that one of ordinary skill in the art Appeal 2014-001007 Application 95/001,517 5 would have understood that a “data packet” must include “control information.” We are not persuaded by Patent Owner’s argument. Dr. Modestino also testifies that “data encapsulation,” according to “Fig. 1-17 fromTanenbaum,” involves a process in which “each successive layer [in an Open Systems Interconnect (OSI) protocol stack], . . . accepts a data block and encapsulates it with appropriate control information” and that, according to “J.F. Kurose and K.W. Ross, Computer Networking , 52 (Pearson-Addison Wesley, 2008) (2000),” data encapsulation may be performed “in the context of the 5-layer Internet protocol stack, in which “the message or data block is encapsulated.” Modestino Decl. ¶¶ 24, 26. While Dr. Modestino provides evidence that “data encapsulation” may be performed, Dr. Modestino provides insufficient evidence that a “data packet” must include “control information.” At best, Dr. Modestino merely testifies that Tanenbaum or Kurose and Ross disclose that “data encapsulation” may be performed on data in which data is “encapsulated.” Based at least on the foregoing, we conclude that Patent Owner’s arguments fail to demonstrate that we overlooked or misconstrued any points. Accordingly, Patent Owner’s Request is denied. REHEARING DENIED Appeal 2014-001007 Application 95/001,517 6 PATENT OWNER: Sterne, Kessler, Goldstein & Fox, PLLC 1100 New York Avenue, NW Washington, DC 20005 THIRD PARTY REQUESTER: Baker Botts, LLP 910 Louisiana Street One Shell Plaza Houston, TX 77002