Tse v. Google Inc., et al.

Filing 1

COMPLAINT against All Defendants ( Filing fee $ 350 receipt number 0540-3611342.), filed by Ho Keung TSE. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit A-US Patent 6665797, # 3 Exhibit B-Notice of Intent to Issue Ex Parte Reexamination Certificate, # 4 Exhibit C-Final State of Claims)(Keung TSE, Ho)

EXHIBIT B
(“Notice of Intent to Issue Ex Parte Reexamination Certificate” issued by the Patent
Office on March 14, 2012)

This PDF file is Searchable.
Please note that it is originally a non-searchable PDF file consists of pages of images
only. Plaintiff transforms the PDF image file into searchable PDF file by the “OCR
Text Recognition” function of Adobe Acrobat 9 Pro Extended.
When opening the file with PDF reader, the original images will be displayed, not the
OCR generated texts.
As the “search” function of the PDF reader is actually basing on the OCR generated
texts which are hidden and not visually displayed, and also for the sake that, the OCR
generated texts may not be all correct, therefore Plaintiff cannot guarantee a search
can generate a correct result.
Hopefully, this searchable PDF file would be more useful than the original.

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE

United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. 8o, 1450
Alexandria, Virginia 22313·1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

90/008,772

07124/2007

6665797

7590

ATTORNEY DOCKET NO.

CONFIRMATION NO.

9520

0311412012

EXAMINER

HO KEUNG TSE
P.O. BOX 80306
CHEUNG SHA WAN ,POST OFFICE
HONG KONG,
HONG KONG

ART UNIT

PAPER NUMBER

DATE MAILED: 03/14/2012

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Commissioner (or Patents
United States Patent and Trademark Office
P.O.80X145O
Alexandria, VA 22313-1450
~.u$pto.gov

DO NOT USE IN PALM PRINTER
(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

!.r········~·ORRISON & FOERSTER LLP
555 West Fifth Street
Los Angeles, CA 90013

EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION CONTROL NO. 90/00B,772.
PATENT NO. 6665797.
ART UNIT 3992.

Enclosed is a copy of the latest communication from the United States Patent and Trademark
Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).

Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
reply has passed, no submission on behalf of the ex parte reexamination requester will be
acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.07-04)

Control No.

901008,772

6665797

Examiner

Art Unit

MATTHEW HENEGHAN

Notice of Intent to Issue
Ex Parte Reexamination Certificate

Patent Under Reexamination

3992

•• The MAILING DA TE of this communication appears on the cover sheet with the correspondence address ••

1. [2] Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certifica.te will be
issued in view of
(a) [2] Patent owner's communication(s) filed: 03 February 2012.
(b) 0 Patent owner's late response filed: _ _ .
(c) 0 Patent owner's failure to file an appropriate response to the Office action mailed: _ _ .
(d) 0 Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31).
(e) 0 Other: _ _
Status of Ex Parte Reexamination:
(f) Change in the Specification: [2] Yes 0 No
(g) Change in the Drawing(s):
[2] Yes 0 No
(h) Status of the Claim(s):
(1) Patent claim(s) confirmed: _ _ .
(2) Patent claim(s) amended (including dependent on amended claim(s)): 1-5,16 and 21
(3) Patent claim( s) canceled: 11.12.14. 15. 18. 19 and 22.
(4) Newly presented claim(s) patentable: 23 and 27-29.
(5) Newly presented canceled claims: 24-26.
(6) Patent claim(s)

0

previously

0

currently disclaimed: _ _

(7) Patent claim(s) not subject to reexamination: 6-10,13,17 and 20.

2. [2] Note the attached statement of reasons for patentability andlor confirmation. Any comments considered
necessary by patent owner regarding reasons for patentability andlor confirmation must be submitted promptly
to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for
Patentability andlor Confirmation."
3.

0

Note attached NOTICE OF REFERENCES CITED (PTO-892).

4.

0

Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/S8/DB substitute).

0
6. 0

5.

The drawing correction request filed on _ _ is:

0

approved

0

disapproved.

Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
a)D All b)O Some*
c)O None
of the certified copies have
been received.
not been received.
been filed in Application No. _ _ .
been filed in reexamination Control No. _ _ .
been received by the International Bureau in PCT Application No. _ _ .

o
o

o
o
o

* Certified copies not received: _ _ .
7. [2] Note attached Examiner's Amendment.
8.
9.

0
0

Note attached Int~rview Summary (PT0-474).
Other: _ _
.

cc: Requester (if third party requester)
U.S. Patent and Trademark Office
PTOl-469 (Rev. 05-10)
Notice of Intent to Issue Ex Parte Reexamination Certificate

Part of Paper No 20120206

Continuation Sheet (PTOL-469)

Reexam Control No.

Application/Control Number: 90/008,772

Page 2

Art Unit: 3992

DETAILED ACTION

The proposed amendment filed on 31 January 2012 has not been entered qt the
request of the Patent Owner (see Remarks, filed 3 February 2012) because it does not
fully address the issues raised in the Ex Parte Quayle Action mailed 26 January 2012.
The proposed amendment filed on 3 February 2012 is not entered. Specifically,
the proposed amendments to claims 13 and 17 cannot be entered because the claims
are not subject to this reexamination proceeding. It is important to note that, upon the
conclusion of this reexamination proceeding, claims 13 and 17 shall continue to have
exactly the same scope as they had previously had before the proceeding. They shall
continue to be in force and incorporate as their respective base claims those claims
were originally issued in the patent. even though those base claims have now been
cancelled. See MPEP 2260.01. The proposed amendment to claim 27 appears to have
been cut off in transmission and is being corrected via Examiner's Amendment.

Claims 14, 15, 18, 19,22, and 24-26 have been previously cancelled via
Examiner's Amendment, which is restated below. Claims 11 and 12 are additionally
cancelled; claim 27 is amended; and claims 28 and 29 are additionally added via
Examiner's Amendment. Certain previous amendments to the specification are also now
cancelled via Examiner's Amendment.
Claims 1-5, 16,21,23, and 27-29 are subject to reexamination. Claims 6-10, 13,
17, and 20 are not being treated further on the merits.

Appiicati.onlControl Number: 90/008,772

Page 3

Art Unit: 3992

A review of the File Wrapper has shown that the signed Form 1449 from the IDS
filed on 13 February 2008 was never sent by the Office, also the IDS had been
considered. A signed Form 1449 is attached to this action.

STATEMENT OF REASONS FOR PATENTABILITY ANDIOR CONFIRMATION

Claim 1-5, 16, 21, 23, and 27-29 are patentable.

The following is an examiner's statement of reasons for patentability and/or
confirmation of the claims found patentable in this reexamination proceeding:
Claim 16, as amended by the Patent Holder, is fully supported by the Application
No. 08/587,448, to which the Patent claims priority as a continuation-in-part, because in
no longer recites a multi-processing apparatus arrangement. Since the art previously
cited to reject that claim, Munyan, does not have a filing date that predates the '448
application, Munyan can no longer be used as a prior art reference under 35 U.S.C.
102(e). The other art cited by the Requester regarding that claim, Shear, does not teach
to step (b) of the claim, in that the determination being made regarding the read/write
heads in Shear is not being done in response to the password input.
Claims 1-5, 16,21,23, and 27 are patentable for the reasons stated in the SPAI
decisions.

Application/Control Number: 90/008,772

Page 4

Art Unit: 3992

Claims 28 and 29 are patentable for the reasons stated in the SPAI decisions
with respect to claims 11 and 12, respectively.

Any comments considered necessary by PATENT OWNER regarding the above
statement must be submitted promptly to avoid processing delays. Such submission by
the patent owner should be labeled: "Comments on Statement of Reasons for
Patentability and/or Confirmation" and will be placed in the reexamination file.

The patent owner is reminded of the continuing responsibility under 37 CFR
1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
proceeding, involving Patent No. 6,665,797 throughout the course of this reexamination
proceeding. The third party requester is also reminded of the ability to similarly apprise
the Office of any such activity or proceeding throughout the course of this reexamination
proceeding. See MPEP §§ 2207,2282 and 2286.

Application/Control Number: 90/008,772

Page 5

Art Unit: 3992

Conclusion

All correspondence relating to this ex parte reexamination proceeding should be directed:
By Mail to:

Mail Stop Ex Parte Reexam
Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

By FAX to: [phone]
Central Reexamination Unit
By hand:

Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314

Registered users of EFS-Web may alternatively submit such correspondence via the electronic
filing system EFS-Web, at https:llefs.uspto.gov/efile/myportal/efs-registered. EFS-Web offers
the benefit of quick submission to the particular area of the Office that needs to act on the
correspondence. Also, EFS-Web submissions are "soft scanned" (Le., electronically uploaded)
directly into the official file for the reexamination proceeding, which offers parties the opportunity
to review the content of their submissions after the "soft scanning" process is complete. .
Any inquiry concerning this communication should be directed to Examiner Matthew Heneghan
at telephone number (571 )272-3834.

/Matthew Heneghan/
Primary Examiner, Art Unit 3992

Conferees:
/Minh Dieu Nguyen/
Primary Examiner, Art Unit 3992
/Daniel J Ryman/
Supervisory Patent Examiner, Art Unit 3992

Application/Control Number: 901008,772
Art Unit: 3992

Page 6

EXAMINER'S AMENDMENT

An examiner's amendment to the record appears below. The changes made by this
examiner's amendment will be reflected in the reexamination certificate to issue after
the resolution of the outstanding issues.

The proposed amendments to the specification after col. 5, lines 37-39 and after col. 3,
line 27 are cancelled.
Claims 11, 12, 14, 15, 18, 19, 22, and 24-26 are cancelled.

27 (New). A method for protecting software which being made available to a person in
the form of protected file(s) from unauthorised use, by restricting the use thereof to be
under control of said person, comprising a sub-method: said sub-method comprising the
steps of:
(a) establishing a communication between a processing apparatus, say, first processing
apparatus and a remote electronic transaction system;
(b) verifying said person having a valid account. by said remote electronic transaction
system, basing on authenticated information related to said person, said authenticated
information being information communicated to said remote electronic transaction
system from said processing apparatus and then authenticated by said remote
electronic transaction system:

Application/Control Number: 90/008,772

Page 7

Art Unit: 3992

(c) using a positive result of said verification as a pre-condition for permitting use of said
\.

software on said first processing apparatus;
wherein said sub-method a cost is being charged from said account: and thereafter,
said sub-method being capable of being used on a processing apparatus, say, second
processing apparatus, without said cost.
wherein said use of said software being permitted independently of, at a site said
person using, said software, any hardware specific for protecting said software from
unauthorized use.

28.(New). A method for protecting publicly distributed software, from unauthorised use,
comprising the steps of:
obtaining first information from a user of a processing apparatus having an identity,
software;
using said first information received being correct as a pre-condition for causing said
processing apparatus to provide user access to said software desired to be protected;
wherein:
said identity software being for providing a second information specific to rightful user(s)
of said software desired to be protected. if said correct first information is being obtained
from a user thereof; and said second information being capable of being used in

Application/Control Number: 90/008,772

Page 8

Art Unit: 3992

enabling electronic commerce operation(s) for which said rightful user(s) has to be
responsible;
said access to said software desired to be protected is being provided without causing a
said operation being performed;
and said software desired to be protected is being made available to said rightful user(s)
in the form of protected file(s) and is being received by said rightful user(s). through a
communication network.
29. (New). A method for protecting software from unauthorised use. as claimed in claim
28. wherein said operation being for making payment from an account of said rightful
user(s);
and said responsibility of said rightful user(s) as recited in claim 28 is referring to said
payment said rightful user(s) has to be responsible for;
and said first information being a password;
and said access being an access to the use of said software desired to be protected;
and said software desired to be protected being supplied to said rightful user(s), before
said receiving step;
and said access being provided indepe'ndently of. at a site said access being obtained
by human user(s). any hardware specific for protecting said software desired to be
protected from unauthorized use;

Application/Control Number: 901008,772

,Page 9

Art Unit: 3992

and in additional to said processing apparatus. said method also being capable of being
used on at least one more processing apparatus.

1M. H.I
Primary Examiner, Art Unit 3992

Receipt' date: 02/13/2008

90008772 - GAU: 3992

•

ALTERNATIVE TO PTO/SBI08a1b (07'()S)

Complete if Known
Substitute for form 1449/PTO
Patent Number

INFORMATION DISCLOSURE
STATEMENT BY THIRD PARTY
REQUESTERS

i

I I

1

1

of

December 16, 2003

First Named Inventor

Ho Keung TSE

Art Unit

3992

Examiner Name

(Use as many sheets as necessary)
Sheet

6,665,797 61

Issue Date

Albert Paladini

Attorney Docket Number

106842800800

U.S. PATENT DOCUMENTS
Examiner
Initials'

Cite
No,'

1.
2,

Document Number
Number·Kind Code' (i/known)

5,509.070
5,636,276

Publication Date
MM-D[)'VYYY

04/16/1996
06/03/1997

Name of Patentee or
Applicant ot Cited Document

Pages. Columns. Unes. Where
Relevant Passages Ot Relevant
Figures Appear

Schull

Brugger

'EXAMINER: Inttial ~ inloll1lation conSidered, wtlether or not citation is in confonTIance with MPEP 609, Draw line through c~atlon nnot in conlOll1lBnce and not
considered, Include copy of this 10nTI with next communication to applicant 'Applicant's unique chation designation number (Optional), 'See Kinds Codes 01
USPTO Patent Documents at www usplo,gov or MPEP 901,04. • Enter Office that Issued the document. by the two-letter code (WIPO Standard ST.3). • For
Japanese patent documents. the indication of the year of the reign at the Emperor must precede the serial number of the patent document • Kind of document by
the appropriate symbols as indicated on the document under WlPO Standard ST. 16 npossible. • Applicant is to place a Check mark here nEnglish language
Translation is attaChed.

NON PATENT LITERATURE DOCUMENTS
Examiner
Initials'

Cite
No.'

Include name of the author (in CAPITAL lETTERS). title of the article (when appropriate), title of the item (book,
magazine, joumal. serial. symposium. catalog, etc.). date. page(s). volume-issue number(s). publisher, city
and/or country where published,

'EXAMINER; Initial Wreference considered, wtlether or not citation is in confonTIance with MPEP 609. Draw line through Chation
considered. Include copy of Ihis form with next communication 10 applicent.

If not

In conformance and not

'Applicant's unique,citation designation number (optional), 'Applicant is to place a Check mark here WEnglish language Translation is attached,

IMatthew Heneghanl

Date
Considered

'P

02/29/2012

Page 1.ofl

UNlTED STATES DEPARTMENT OF COMMERCE
UBIt.... 8&0 .... Patent Dnd TtoclOlD4.k Omce
Mdmo:COMMISSIONER f'OR PATENTS
P.O. Boca •• )!)
Aloao4ria, \\IsiNA
-"'I!IOP

Imm~mlmmlml~mM~ml~~mIM~lmI~OO

m 13-1'50

CONFIRMATION NO. 9520

aib Data Sheet

FILING OR 371 (c)
DATE
07/24/2007

SERIAL NUMBER
90/008,772 .

CLASS
713

GROUP ART UNIT
3992

ATTORNEY
DOCKET NO.

RULE
~PPLICANTS

6665797, NORTH POINT POST OFFICE, HONG KONG;
TSE HO KEUNG(OWNER), NORTH POINT POST OFFICE, HONG KONG;
MORRISON & FOERTSTER LLP(3RD PTY REO), LOS ANGELES, CA;
MORRISON & FOESTER LLP, LOS ANGELES, CA
I**.CONTINUING DATA . _......... u~.u.u.
This application is a REX of 09/112,27607/09/1998 PAT 6,665,797
which is a CIP of 08/587,44812101/1995 ABN
~

FOREIGN APPLICATIONS ....................

Foreign Priority dalmed

. IJ yes 12 no
IJ yes il no IJ Metafter

3SUSC 119 (a-d) conditions

A..rh..' c-,-'
A1':i..ance 'J.d,'

mel

~erified and

;
Eemlnefs SlgnallJrd

~cknowledged

Art

u

I

.

.

lI'1itiflls

STATE OR
COUNTRY
HONG
KONG

SHEETS
DRAWING

TOTAL
CLAIMS

}ZJi

~NDEPENDENT
CLAIMS
9

!ADDRESS

fl.'
AIR MAIL
.;J U"~/'
HO KEUNGTSE
p,o, BOX 70492
. f . .:I. C~ ~
l~'
KLN CENTRAL POST OFFICE HK. CHlt'u1l1. !#fA "'hi'-' Po:'1" o!'t1c..e
HONG KONG
.
Hod,I 1-("'111, Ld{

,rt
'0

t:.:.'"

rrlTLE
PROTECTION OF SOFlWARE AGAIN AGAINST UNAUTHORIZED USE

IIJ All Fees

I

[J 1.16 Fees (Filing)
FILING FEE
RECEIVED
2520

FEES: Authority has been given In Paper
to charge/credit DEPOSIT ACCOUNT
No.
for following:
No.

[J 1.17 Fees ( Processing Ext. ~f
time)

I[J 1.18 Fees (Issue)

ICJ Other
ICJ Credit

,',

I
I
I

Application/Control No.
90008772

11111111111

Art Unit

MATTHEW HENEGHAN

III II I

6665797

Examiner

Search Notes

Applicant(s)/Patent Under
Reexamination

3992

SEARCHED
Class

I
I

Subclass

I
I

Date

I
I

Examiner

SEARCH NOTES
Search Notes

Date

Reviewed prosecution history of US Patent 6665797
New Litigation Search
EAST, class+keywod search, see notesr
Updated Litigation Search
Review of Litigation Search for 90/010,943
Review for Quayle Action
Review for NIRC

Examiner

10/9/07
10/28/08
2/24/09
6/22/09
6/10/10
1/23/12
2/7/12

.

AWP
MH
MH
MH
MH
MH
MH

INTERFERENCE SEARCH
Class

I

I

u.s. Patent and Trademar1c: Office

Subclass

I

I

Date

I

Examiner

I

Part of Paper No.: 20120206

Reexamination

IIII III I III I III
Requester

Application/Control No.

Applicant(s)/Patent Under
Reexamination

901008,772

6665797
Certificate Number

Certificate Date

C1

Correspondence Address:

o Patent Owner

[8] Third Party

MORRISON & FOERSTER LLP
555 West Fifth Street
Los Angeles, CA 90013

LITIGATION REVIEW [8]

IMHI

2/9/12

(examiner initials)
Case Name

(date)
Director Initials

3:12cv21, Keung Tse, HO v. Apple, Inc et ai, U.S. District - Wisconsin
Western (OPEN)

:)r12 -b:.- 'PI

2:09cv380, Keung Tse v. Ebay, Inc et ai, U.S. District - Texas Eastern
(OPEN)

om. .(.;~ '£y

4:06cv6573, Ho Keung Tse v. Apple inc, et ai, U.S. District - California
Northern (STAYED)

f)j'Q (~'J:y

1:11cv1127,3:11cv1812,5:06cv6573, 1:05cv2149 (CLOSED)

Om

.fer'!.'(

COPEN DING OFFICE PROCEEDINGS
TYPE OF PROCEEDING
1.

NUMBER

None.

2.
3.
4.

U.S. Patent and Trademark Office

DOC. CODE RXFILJKT

Application/Control No.

6665797
Art Unit

MATTHEW HENEGHAN

II 1111

1111111111111

90008772
Examiner

Issue Classification

Applicant(s)/Patent Under Reexamination

3992

ORIGINAL
CLASS

INTERNATIONAL CLASSIFICATION
SUBCLASS

CLAIMED

193

713

G

6

F

21 100 (2006.0)

0

6

F

1 100 (2006.0)

SUBCLASS (ONE SUBCLASS PER BLOCK)

CLASS

59

51

0

0

G

CROSS REFERENCE(S)

705

NON-CLAIMED

Claims renumbered in the same order as presented by applicant

Final

Original

Final

Original

1

1

17

2

3

4

20

5

21

6

7

7

23

8

24

9

9

25
26

Original

Final

28

10

Original

27

10

Final

23

8

Original

21

6

Final

Original

R.1.47

20

5

Original

Final

0

19

4

Final

T.D.

18

3

Original

0

CPA

17

2

Final

0

29

._-

22

11
12
13

13
14

15
16

16

NONE
Total Claims Allowed:
19

(Assistant Examiner)
IMATTHEW HENEGHANI
Primary Examiner.Art Unit 3992

(Date)

(Primary Examiner)

(Date)

U.S. Patent and Trademar1< Office

O.G. Print Claim(s}

O.G. Print Figure

1

1
Part of Paper No. 20120206