Request for Ex Partes Reexamination

8/11/2019 Request for Ex Partes Reexamination

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re patent of Hekhuis REQUEST FOREx Parte

REEXAMINATIONU.S. Patent No. 5,414,650

Attorney Docket No.: 50348.2

Filed: March 24, 1993

Customer No.: 27683Issued: May 9, 1995

Real Party in Interest: Unified Patents, Inc.

Title: Parsing Information Onto Packets Using Context-Insensitive Parsing Rules

Based On Packet Characteristics

REQUEST FOR EX PARTE REEXAMINATION

Mail StopEx parteReexam

Hon. Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

Dear Sir:

Pursuant to the provisions of 35 U.S.C. 301-307 (2010), David L. McCombs

(Requester) hereby requests an ex partereexamination of claims 1-3 and 9-12 of United States

Patent No. 5,414,650 (the 650 patent, Ex. A) that issued on May 9, 1995, to Peter J. Hekhuis

resulting from a patent application filed on March 24, 1993.

The Requester submits that this Request presents prior art references and analysis that are

better than, and non-cumulative of, the prior art that was before the Examiner during the original

prosecution of the 650 patent. Claims 1-3 and 9-12 of the 650 patent are invalid over these

references. The Requester therefore requests that an order for reexamination and an Office

Action rejecting claims 1-3 and 9-12 be issued.


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Request forEx Parte ReexaminationU.S. Patent No. 5,414,650

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TABLE OF CONTENTS

I. INTRODUCTION ..................................................................................................................3

A.

Overview of the 650 patent and its History ........................................................................4

B. Claim Construction ................................................................................................................6

C. Listing Of Prior Art Patents And Printed Publications......................................................6

II. STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF

PATENTABILITY .................................................................................................................7

A. Rubin Presents Substantial New Questions of Patentability ..............................................7

B. Snyderman Presents Substantial New Questions of Patentability .....................................9

C.

Summary of the Remaining Prior Art ................................................................................10

III. DETAILED EXPLANATION OF THE PERTINENCE AND MANNER OF

APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR

WHICH REEXAMINATION IS REQUESTED ...............................................................11

A. Proposed Rejection of the Claims .......................................................................................11

IV. LIST OF EXHIBITS ............................................................................................................12

V. CONCLUSION .....................................................................................................................13

VI. CERTIFICATE OF SERVICE ...........................................................................................14


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I. INTRODUCTION

The 650 patent entitled Parsing Information Onto Packets Using Context-Insensitive

Parsing Rules Based On Packet Characteristics, generally relates to storage and communication

systems and more particularly the claims of the 650 patent describe parsing of information

streams for data compression. In the original prosecution, the following features were added and

successfully argued by the Applicant to distinguish over the Examiner's rejections and to gain

allowance: classifying said input packets according to intrinsic characteristics1or classifying

said input packets according totransitions in quantitative characteristics.2

Unknown to the earlier Examiner, however, as early as 1970 others had developed,

published, or filed for a patent on the same technology of parsing information streams for data

compression, where input data is classified according to intrinsic characteristics or transitions in

quantitative characteristics. This Request shows how the claims of the 650 patent are invalid

under 35 U.S.C. 103 over two primary references, (1) Rubin and (2) Snyderman, to form

independent and distinctive invalidity positions against claims 1-3 and 9-12.

These references are selected because of their distinctive teachings that cover different

technical aspects and provide the Office and the public with a fuller view of the prior art

landscape prior to the filing of the 650 patent. These references do not constitute cumulative

teachings. The Requester made due diligence in minimizing both the number of references and

the number of invalidity positions against the overly broad claims of the 650 patent. This

Request is a remedial measure for correcting the mistake in the original examination and is

necessitated by Patent Owners improper enforcement of the invalid claims.3 The Requester

respectfully requests that all proposed invalidity positions be fully adopted due to the need for

just resolution of the unpatentability issues.

1The 650 patent notes the following: Intrinsic classification rules classify a packet according

to the specific character they contain. The 650 patent at 6:36-40.

2The 650 patent notes the following: Transition classification rules classify a packet bycomparing some quantitative characteristics based on lengths of text strings. The 650

patent at 6:56-61.

3Patent Owner has appealed summary judgment invalidating claims 2-3 and 9-12. SeeCompression Technology Solutions LLC, v. EMC Corporation, NetApp, Inc., and Quantum

Corp., Case No. 5:12-cv-01746, U.S. District Court for the Northern District of California.


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Prior to describing in detail the substantial new questions of patentability being presented

in the present Request, provided below is an overview and history of the 650 patent, a

discussion of claim construction, and a listing of the prior art being discussed in the present

Request.

A. Overview of the 650 patent and its History

The 650 patent relates to parsing of information streams for data compression. The

650 patent was filed on March 24, 1993, and ultimately issued with 20 claims on May 9, 1995.

Claim 9, which is representative, recites the following:

9. An information processing method for processing an information stream

comprising input packets, said method comprising

receiving said information stream and receiving an indication of theboundaries in said information strum for each of said input packets,

classifying said input packets according to intrinsic characteristics of said

input packets or transitions in quantitative characteristics of two or more of said

input packets, and

parsing said input packets into output packets in response to said classifying,

and generating an indication of the boundaries of said output packets, wherein

each of said output packets comprises or represents one or more of said inputpackets.

Fig. 1 of the 650 patent, reproduced below, shows a parsing processor 106. The parsing

processor 106 includes a packet classifier 108 and a parser 112. The packet classifier 108

receives via path 104 an information stream comprising packets and via path 102 an indication of

boundaries of the packets. The classifier then classifies the packets according to intrinsic or

quantitative characteristics. In response to the classifying, the parser 112 parses the packets of

the information stream and produces output packets that represent the input packets.

Ex. A, 650 patent, Fig. 1


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During the prosecution, the 650 patent received one Office Action before receiving a

Notice of Allowance. The Examiner issued the Office Action rejecting claim 14 (which

ultimately issued as claim 9) under 35 U.S.C. 112 second paragraph and under 35 U.S.C.

102.4

In response, the Applicant conducted an Examiner Interview where amendments to

pending claims were discussed and agreement was reached in a number of areas.5 Thereafter,

the Applicant submitted a Response where independent claim 14 (issued as claim 9), among

others, was amended to recite classifying according to intrinsic characteristics of said input

packets and/or transitions in quantitative characteristics of two or more of said input packets.6

In the Response, the Applicant traversed the 102 rejections and argued that the cited reference

failed to teach classifying according to intrinsic characteristics and transitions in quantitative

characteristics as recited in the claims.7 A copy of amended independent claims 14 (issued as

claim 9) is reproduced below:

On November 8, 1994, another interview was conducted where proposed amendments

were reviewed and agreement was reached in all areas.8 The Applicant then submitted another

Response where claim 14 (issued as claim 9), among other claims, was amended to remove

4Exhibit B, Office Action, February 25, 1994, at 1-5.

5Exhibit B, Amendment, August 24, 1994, at 6.

6Exhibit B, Amendment, August 24, 1994, at 4.7Exhibit B, Amendment, August 24, 1994, at 10-11.

8Exhibit B, Amendment, November 11, 1994, at 5.


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and/or and recite only or, thus making it clear that either intrinsic characteristics or

quantitative characteristics need be present. The '650 Patent then issued on May 9, 1995.

In contrast to the art relied on during the prosecution of the 650 patent, the present

Request presents and applies prior art that teaches the exact featuresof the claims that the

Examiner has indicated as allowable. Thus, the prior art presented in this Request presents

substantial new questions of patentability.

Requester therefore asks that an Order for Reexamination be issued and that the

reexamination proceeding continue on to reject and cancel claims 1-3 and 9-12 of the 650

patent.

B. Claim Construction

During patent examination, the pending claims must be given their broadest reasonable

interpretation consistent with the specification. (MPEP 2111). The present Request presents

the following claim analysis in a manner that is consistent with the broadest reasonable

interpretation consistent with the specification. The Requester reserves the right to advocate a

different claim interpretation in district court or any other forum if necessary.

C. Listing Of Prior Art Patents And Printed Publications

Reexamination of claims 1-3 and 9-12 of the 650 patent is requested in view of the

following references:

Exhibit C (Rubin) Frank Rubin, Experiments in Text File Compression,communications of the acm, published November 11, 1976.

Exhibit D (Snyderman) Snyderman et al., The Myriad Virtues of Text

Compression DATAMATION, published December 1, 1970.

Exhibit E (Cooper) Cooper et al., Text Compression Using-Variable to Fixed-

Length Encodings, Journal of the American Society for Information

Science, published January 1982.

Exhibit F (Hagan) Hagan et al., Network technology: PennNet parity,

PENNPRINTOUT, the University of Pennsylvanias Online ComputingMagazine, published April 1992.

Exhibit G (RFC913) Mark K. Lottor, Simple File Transfer Protocol, published

September 1984.


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Exhibit H (Clark) Alan Clark, Analysis and Design of Source/Channel Codes for

Noisy Communications Channels, School of Electronic and ElectricalEngineering LEICESTER POLYTECHNIC, published June 1987.

Exhibit I (Data Access Protocol) DECnet DIGITAL Network Architecture, Data

Access Protocol Functional Specification (DAP), published October

1980.

Rubin, Snyderman, Cooper, RFC913, Clark, and Data Access Protocol qualify as prior

art under 35 U.S.C. 102(b). Hagan is prior art under 35 U.S.C. 102(a). The references were

not before the Patent Office either during the original prosecution of the 650 patent.

II. STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF

PATENTABILITY

As discussed above, the claims of the 650 patent were allowed because the prior art of

record failed to teach or suggest classifying said input packets according to intrinsic

characteristics orclassifying said input packets according totransitions in quantitative

characteristics. The references presented in this Request teach these exact limitations. These

teachings present substantial new questions of patentability not previously considered by the

Patent Office.

A. Rubin Presents Substantial New Questions of Patentability

Rubins article entitled Experiments in Text File Compression, was published

November 11, 1976. Rubin is prior art under 35 U.S.C. 102(b). A copy of Rubin is attached as

Exhibit C. Rubin was never discussed or analyzed by during the original prosecution of the 650

patent.

Unlike the prior art that was before the Examiner during the original examination, Rubin

discloses parsing of input streams for data compression, using the same basic principles

described in the 650 patent. Specifically, Rubin describes algorithms that receive an input data

stream comprising characters.9 Like the characters of the 650 patent, Rubins characters may be

in some representations such as ASCII code.10 The received characters are the input groups of

9Exhibit C, at 617.

10Id.


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the algorithm.11

The input groups are classified according to the specific character by counting

its frequency.12

Further, the input groups (which may comprise one or more characters) are also

classified according to quantitative characteristics by comparing the length of two different

groups.13

Responsive to the classification, the classified input groups are parsed to produce a

new set of input groups.14

The input string is thereafter encoded with the new set of input

groups.15

The algorithm is iterative and therefore repeats.16

An output code that represents the

input groups is thereafter generated.17

In short, Rubin teaches both classifying said input packets according to intrinsic

characteristics and classifying said input packets according totransitions in quantitative

characteristics the exact limitationthat was missing in the prior art previously considered by

the Patent Office. Thus, Rubin is better than, and non-cumulative of, the references previously

applied by the Examiner. This teaching presents a substantial new question of patentability

relative to the claims of the 650 patent.

The present Request proposes the following rejections based on Rubin:

#1: Claims 1-3 and 9-12 are obvious over Rubin in view of Cooper under 35 U.S.C.

103(a).

#2: Claims 1-3 and 9-12 are obvious over Rubin in view of Hagan under 35 U.S.C.

103(a).

#3: Claims 1-3 and 9-12 are obvious over Rubin in view of RFC913 under 35 U.S.C.

103(a).

Exhibit AA presents reasons to combine the cited prior art references to render obvious the

claims of the 650 patent. A detailed explanation of the pertinence and manner of applying

Rubin, Cooper, Hagan, and RFC913 to every claim for which reexamination is requested is set

forth in Section III below.

11Id. at 619.12Id.13

Id.14

Id.15Id.16

Id. at 619 and 623.17

Id. at 617.


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B. Snyderman Presents Substantial New Questions of Patentability

Snydermans article entitled The Myriad Virtues of Text Compression, was published

December 1, 1970. Snyderman is prior art under 35 U.S.C. 102(b). A copy of Snyderman is

attached as Exhibit D. Snyderman was never discussed or analyzed during the original

prosecution of the 650 patent.

Snyderman, like the 650 patent, is concerned with parsing an input stream of characters

for compression by classifying the characters of the input stream according to intrinsic

characteristics (i.e.,the specific character). As described by Snyderman and in connection with

Fig. 3 (partial) reproduced below, [t]he actual compression is then accomplished by testing each

translated character in turn to determine if it is one of the master characters the combining

charactersnoncombining characters.18 Responsive to the classifying according to intrinsic

characteristics, the resulting hex configuration is stored in the next available location in the

output stream.19

Thus, Snyderman teaches classifying said input packets according to intrinsic

characteristics the exact limitationthat was missing in the prior art previously considered by

the Patent Office. Thus, Snyderman is better than, and non-cumulative of, the references

previously applied by the Examiner. This teaching also presents a substantial new question of

patentability relative to the claims of the 650 patent.

18Exhibit D, at 36.

19Id. at 37.


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The present Request proposes the following rejections based on Snyderman:

#4: Claims 9-12 are obvious over Snyderman in view of Cooper under 35 U.S.C.

103(a).

#5: Claims 9-12 are obvious over Snyderman in view of Hagan under 35 U.S.C.

103(a).

#6: Claims 9-12 are obvious over Snyderman in view of Clark under 35 U.S.C. 103(a).

Exhibit BB presents reasons to combine the cited prior art references to render obvious the

claims of the 650 patent. A detailed explanation of the pertinence and manner of applying

Snyderman, Cooper, Hagan, and Clark to every claim for which reexamination is requested is set

forth in Section III below.

C.

Summary of the Remaining Prior Art

A description of the primary references Rubin and Snyderman is provided immediately

above. The remaining references of the present Request are provided to address elements of

certain dependent claims, and are summarized below.

Cooper (Ex. E) is provided to show that it was well known in the art a fixed-bit pattern

(such as a fixed bit pattern of an ASCII character) can indicate a boundary and to further show

that a symbol pair, such as dual parenthesis ( ), may be used to indicate a boundary for data.

Cooper was not cited during the original prosecution of the 650 patent.

Hagan (Ex. F) is provided to show that using start/stop bits to indicate a boundary for

data was well known in the art. Hagan was not cited during the original prosecution of the 650

patent.

RFC913 (Ex. G) is provided to show that it was well known in the art that ASCII

characters include a high-order zero bit that indicates a boundary. RFC913 was not cited during

the original prosecution of the 650 patent.

Clark (Ex. H) is provided to show that using a specific bit sequence to indicate aboundary was well known in the art. Clark was not cited during the original prosecution of the

650 patent.

Data Access Protocol (Ex. I) is provided as evidence that 7-bit ASCII code has a fixed 8-

bit frame. Data Access Protocol was not cited during the original prosecution of the 650 patent.


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III. DETAILED EXPLANATION OF THE PERTINENCE AND MANNER OF

APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR WHICH

REEXAMINATION IS REQUESTED

As described above, a substantial new question of patentability is presented by the

primary references Rubin and Snyderman, both of which independently teach the limitation that

was previously found to be missing from the prior art. Below is the detailed explanation of the

manner in which the prior art reference applies to each of the claims.

A. Proposed Rejection of the Claims

The present Request presents multiple proposed rejections, based on the primary

references Rubin and Snyderman. The proposed rejections are listed below, and are described in

detail in the attached claim charts.

Proposed Rejections based on Rubin

Proposed Rejection #1. Claims 1-3 and 9-12 are obvious over Rubin in view of Cooper

under 35 U.S.C. 103 (a).

The claim chart provided at Exhibit AA, provides a detailed analysis mapping each and

every element of the above-listed claims to the prior art.

Proposed Rejection #2. Claims 1-3 and 9-12 are obvious over Rubin in view of Hagan

under 35 U.S.C. 103(a)


every element of the above-listed claim to the prior art.

Proposed Rejection #3. Claims 1-3 and 9-12 are obvious over Rubin in view of RFC913

under 35 U.S.C. 103(a)



Proposed Rejections based on Snyderman

Proposed Rejection #4. Claims 9-12 are obvious over Snyderman in view of Cooper under

35 U.S.C. 103 (a).

The claim chart provided at Exhibit BB, provides a detailed analysis mapping each and

every element of the above-listed claims to the prior art.

Proposed Rejection #5. Claims 9-12 are obvious over Snyderman in view of Hagan under

35 U.S.C. 103(a)


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Proposed Rejection #6. Claims 9-12 are obvious over Snyderman in view of Clark under

35 U.S.C. 103(a)



IV. LIST OF EXHIBITS

Reexamination of claims 1-3 and 9-12 of the 650 patent is requested in view of the

following references:

Exhibit A USP 5,414,650

Exhibit B File History of USP 5,414,650Exhibit C Frank Rubin, Experiments in Text File Compression, communications of the acm,

published November 11, 1976.

Exhibit D Snyderman et al., The Myriad Virtues of Text Compression DATAMATION,

published December 1, 1970.

Exhibit E Cooper et al., Text Compression Using-Variable to Fixed-Length Encodings, Journal

of the American Society for Information Science, published January 1982.

Exhibit F Hagan et al., Network technology: PennNet parity, PENNPRINTOUT, the University

of Pennsylvanias Online Computing Magazine, published April 1992.

Exhibit G Mark K. Lottor, Simple File Transfer Protocol, published September 1984.

Exhibit H Alan Douglas Clark, Analysis and Design of Source/Channel Codes for Noisy

Communications Channels, School of Electronic and Electrical Engineering

LEICESTER POLYTECHNIC, published June 1987.

Exhibit I DECnet DIGITAL Network Architecture, Data Access Protocol Functional

Specification (DAP), published October 1980.

Exhibit AA Claim charts comparing claims 1-3 and 9-12 to Rubin either alone, or in combination

with other references.

Exhibit BB Claim charts comparing claims 9-12 to Snyderman either alone, or in combination with

other references.


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VI. CERTIFICATE OF SERVICE

The undersigned certifies that copies of the following,

(1) Request for Ex Parte ReexaminationTransmittal Form;

(2) PTO 1449 Modified Form;

(3) Request for Ex Parte Reexamination; and

(4) Exhibits A I and Exhibits AA-BB

in their entirety were served on:

Thomas A. Gallagher100 Green Street, 3rd

Floor

San Francisco, CA 94111-1302

the attorney of record for the assignee of U.S. Patent No. 5,414,650, in accordance with 37

C.F.R. 1.510(b)(5), on the 23rd

day of July 2013.

/David L. McCombs/

____________________________________

David L. McCombs, Registration No. 32,271

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Request for Ex Partes Reexamination