MedioStream Inc v. Microsoft Corporation

Filing 609

Declaration of Scott Schrader in Support of Renewed Motion to Stay the Case Pending Completion of Inter Partes Reexamination Pending Before the Patent and Trademark Office re 608 filed on behalf of Acer America Corp., Apple Inc., ASUS Computer International, Cyberli nk.com Corp., Dell, Inc., Gateway, Inc., Microsoft Corporation, Nero AG, Nero, Inc., Sonic Solutions, Sony Corporation and Sony Electronics Inc. filed byMicrosoft Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16) (Schrader, Scott) (Filed on 6/22/2011) Modified on 6/23/2011 (bw, COURT STAFF). (Entered: 06/22/2011)

EXHIBIT 11

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

ATfORNEY DOCKET NO.

CONFIRMAnON NO.

95/001,283

03/23/2010

7283172

8157.019.172

1757

7590

04/2312010

KAI-CHING CHU
MEDIO STREAM, INC.
4962 EL CAMINO REAL
SUITE 201
LOS ALTOS, CA 94022

~____~_____E_XA M_IN_E_R____________~I
__
ESCALANTE,OVlDIO
ART UNIT

PAPER NUMBER

3992

MAIL DATE

04/23/2010 .

DELIVERY MODE

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)

.

CommisSioner (or Patents

United States Patent and Trademark Office
P.O. Box 1450
Alexandria. VA 22313·1450

\MAW ,IJ$pto.gov

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

NOVAK DRUCE & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
HOUSTON, TX 77002

APR 23 2010
CENTRAL REEXAMINATION UNIT

Transmittal of Communication to Third Party Requester
Inter Partes Reexamination

REEXAMINATION CONTROL NUMBER 951001,283.
PATENT NUMBER 7,283,172.
TECHNOLOGY CENTER 3900.
ART UNIT 3992.

Endosed is a copy of the latest communication from the United States Patent and
Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
communication, the third party requester of the inter partes reexamination may once file
written comments within a period of 30 days from the date of service of the patent owner's
response. This 30-daytime period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
be extended. See also 37 CFR 1.947.
If an ex parte reexamination has been merged with the inter partes reexamination, no
responsive submission by any ex parte third party requester is permitted.

All correspondence relating to this inter partes reexamination proceeding should be
directed to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses
given at the end of the communication enclosed with this transmittal.

PTOL-2070 (Rev.07-04)

Control No.

95/001,283
Examiner

7283172
Art Unit

OVIDIO ESCALANTE

OFFICE ACTION IN INTER PARTES
REEXAMINA TION

Patent Under Reexamination

3992

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

Responsive to the communication(s) filed by:
Patent Owner on _ _
Third Party(ies) on 23 March 2010
RESPONSE TIMES ARE SET TO EXPIRE AS FOLLOWS:
Eor Patent Owner's Response:
2 MONTH(S) from the mailing date of this action. 37 CFR 1.945. EXTENSIONS OF TIME ARE
GOVERNED BY 37 CFR 1.956.
For Third Party Requester's Comments on the Patent Owner Response:
30 DAYS from the date of service of any patent owner's response. 37 CFR 1.947. NO EXTENSIONS
OF TIME ARE PERMITTED. 35 U.S.C. 314(b)(2).
All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action. '
. This action is not an Action Closing Prosecution under 37 CFR 1.949, nor is it a Right of Appeal Notice under
37 CFR 1.953.

PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
).0 Notice of References Cited by Examiner, PTO-892
2.rsJ Information Disclosure Citation, PTO/SB/08
3.0 _ _
PART II. SUMMARY OF ACTION:
1a. rsJ Claims 1-19 are subject to reexamination.
1b. 0 Claims _ _ are not subject to reexamination.
2. 0 Claims _ _ have been canceled.
3. 0 Claims _ _ are confirmed. [Unamended patent claims]
4. 0 Claims _ _ are patentable. [Amended or new claims]
5. rsJ Claims 1-19 are rejected.
6. 0 Claims _ _ are objected to.
7. 0 The drawings filed on _ _

0

are acceptable

0 are not acceptable.

The drawing correction request filed on _ _ is:
0 approved. 0 disapproved.
Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
been received.
0 not been received.
0 been filed in Application/Control No _ _
10.00ther _ _

8.
9.

0

0

o

U.S. Patent and Trademark Office
PTOL·2064 (08/06)

Paper No.

20100421

Application/Control Number: 951001,283

Page 2

Art Unit: 3992

DETAILED ACTION
1.

This Office action addresses claims 1-19 of United States Patent No. 7,283,172 for which

it has been determined in the Order Granting Inter Partes Reexamination (hereafter the "Order")
that a substantial new question of patentability was raised in the request for inter partes
reexamination, filed on March 23,2010 (hereinafter the "Request").

Status of the Claims
2.

Original claims 1-19 are rejected.

Rejections Proposed by the Requester
3.

The following 4 issues for rejection were proposed in the Request for inter partes

reexamination (951001,283):
Issue 1:

Cleaner 5 User Manual is asserted as rendering claims 1-19 anticipated.

Issue 2:

Cleaner 5 User Manual in view of Cleaner MPEG Charger is asserted as
rendering claims 5, 6 and 8 obvious.

Issue 3:

Avid Xpress in view of Avid Xpress DV and further in view of MPEG standard is
asserted as rendering claims 1-3,5,7,9 and 13-19 obvious.

Issue 4:

Washino is asserted as rendering claims 1-12, 15 and 19 anticipated.

Non-Prior Art Arguments
The Requester on page 19 of their Request for.Reexamination noted that the Examiner in
the '999 application rejected claims 13 and 14 under 35 U .S.C. § 112 as being indefinite for
reciting editing information based upon an unclear forth and an unclear fifth input. The

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Art Unit: 3992

Requester notes that claims 13 and 14 of the current patent under reexamination were allowed to
issue even though they recite the same language.
The Examiner notes that as per MPEP 2617, "Questions relating to grounds of rejection
other than those based on prior art patents or printed publications should not be included in the
request and will not be considered by the examiner if included. Examples of such questions
that will not be considered are questions as to public use, on sale, *>conduct<, and compliance
of the claims with 35 U.S.C. 112.
Thus, the Requester's question with respect to 112 issues will not be considered by the
Examiner.

Claim Rejections - 35 USC § 102
4.

The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that form the

basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless
(b) the invention was patented or described in a printed pUblication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of application for patent in the United States.

Issue 1 (Adopted)
5.

Claims 1-19 rejected under 35 U.S.C. 102(b) as being anticipated by Cleaner 5 User

Manual.

Regarding claim 1:
A method for converting video information from an incoming format to an
outgoing format using a continuous pass conversion process free from one or more
intermediary files, the method comprising:

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Art Unit: 3992
Cleaner 5 discloses a system for converting incoming DV to an outgoing MPEG-l
or MPEG-2 stream, (Cleaner 5 at pp. 141,206). Additionally, Cleaner 5 uses a continuous
pass (e.g., single pass) conversion process to encode movies free from intermediary files
into a single file, (Cleaner 5 at pp. 64, 206).

inputting video information in a first format;
Cleaner 5 discloses a capture code directed to receiving source material in DV format
(i.e., video information in a first format) from a DV camera, (Cleaner 5 at pp. Capturing Video
pg. 5; Capturing 'with MotoDV pg. 8 and 141).

directly converting the video information in the first format to raw video
information in an uncompressed format;
Cleaner 5 decodes and converts the DV stream format video information to an
.uncompressed raw video format, such as YUV, (Cleaner 5 at p. 138).

inputting a desired output media' format based upon a first input;
Cleaner 5 discloses allowing a user to select a different output media format baseq
upon a first input. For example, the user "can easily produce MPEG-l files'for Video CD
projects by selecting the Video CD preset in the Advanced Settings window," (Cleaner 5
at p. 209). Cleaner 5 also supports MPEG-2 files for the DVD output media format, (Cleaner 5
at p. 62).

inputting a desired video presentation standard based upon a second input;
Cleaner 5 discloses that a user may choose between NTSC or PAL (i.e., desired video
presentation) based upon the preset (i.e., second input) the user selects, (Cleaner 5 at pp. 204 and
205). In addition, as stated on page 206, while pertaining to ,images, Cleaner clearly discloses

Application/Control Number: 95/001,283

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Art Unit: 3992
that "You can choose whether you want to make an NTSC-compatible or a PAL-compatible
stream". Thus, Cleaner 5 discloses that a user can be an input (second input) to select a destined
TV standard.

directly resizing the raw video information in the un compressed format into a size
associated with the desired output media format and the desired video presentation
standard;
Cleaner 5 discloses converting the uncompressed raw video information to the
selected image size through a resizing operation, (Cleaner 5 at p: 204). In Cleaner 5, 720 x
480 pixels is the image size associated with an MPEG 2 output media format in an NTSC
TV standard, (Cleaner 5 at p. 204). Additionally, 720 x 576 pixels is the image size
associated with an MPEG 2 output media format in a PAL TV standard, (Cleaner 5 at p.
204). The Examiner notes that by selecting the desired output format the raw video information
would be resized in accordance with the selected desired output format.

directly adjusting the uncompressed format in the size associated with the desired
output media format and the desired video presentation standard to a frame rate
associated with the desired video presentation standard;
Cleaner 5 discloses a flame rate of29.97 frames per second is associated with MPEG 1
and MPEG 2 output media formats for the NTSC TV standard and a flame rate of 25 frames per
second is associated with MPEG 1 and MPEG 2 output media formats for the PAL TV standard,
(Cleaner 5 at p. 207).

directly processing the uncompressed format in the size and the frame rate into an
elementary video stream; and

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Art Unit: 3992
Cleaner 5 discloses that a user can select to process the video into an elementary video
stream when outputting MPEG 1 and MPEG 2 files, (Cleaner 5 at p. 206 - Stream Type).

directly processing the elementary video stream with audio information in the
desired output media format and the desired video presentation standard to form
video and audio information in a presentation format based upon the desired output
media format and the desired video presentation standard.
Cleaner 5 discloses that when an MPEG 1 system stream is selected, the elementary
video stream is processed or multiplexed with the audio stream to form a single multiplexed
stream of audio and video information in the desired NTSC or PAL TV standard based on the
desired MPEG 1 or VCD output media format, (Cleaner 5 at p. 7,206).

Regarding claim 2:

The method of claim 1 wherein the first format is selected from a digital file, a
digital captured video stream, an analog captured video stream, and an internet
video stream.
Cleaner 5 discloses reading an input format (i.e., first format) in a number of formats,
including digital video (DV), A VI files, MPEG 1 and MPEG2, (Cleaner 5 at p. 141). Page 141
lists the supported formats.

Regarding claim 3:

The method of claim 2 wherein the digital file is selected from an AVI format, an
MPEG format, a DV format, a QuickTime format, Real Video format, Windows
Media Player format.

Application/Control Number: 951001,283

Page 7

Art Unit: 3992
Cleaner 5 discloses selecting from an A VI format, an MPEG format, a DV format, a
QuickTime format, and other multimedia formats, (Cleaner 5 at p. 141).

Regarding claim 4:

The method of claim 1 wherein the uncompressed format is selected from RGB,
and YUV.
Cleaner 5 decodes and converts the DV stream format video information to an
uncompressed format, such as YUV, (Cleaner 5 at p. 138).

Regarding claim 5:

The method of claim 1 wherein the desired output media format is selected from
either DVD, VCD, and Super VCD.
Cleaner 5 discloses that a user may output media in VCD format, (Cleaner 5 at p. 209).
Specifically, Cleaner 5 states that a user can select the "Video CD preset in the Advanced
Settings window" in Cleaner to "easily produce MPEG-l files for Video CD project,"(Cleaner 5
at p. 209).

Regarding claim 6:

The method of claim 5 further comprising inputting a quality setting based upon
a third input when the desired output media format is DVD.
Cleaner 5 discloses that a user may select a third input for specifying quality settings
based on a variety of parameters, (Cleaner 5 at p. 59). For example, Cleaner 5 discloses quality
settings such as data rate, and frame rate, (Cleaner 5 at pp. 59, 62, 64-65). Furthermore, Cleaner
5 discloses that when the output format is DVD, a data rate acceptable to DVD formats are
required and Cleaner 5 uses a data rate of 5.7 Mbits/sec which is used by Cleaner's default
MPEG-2 setting, (Cleaner 5 at p. 62).

Application/Control Number: 95/001,283

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Art Unit: 3992

Regarding claim 7:

The method of claim 1 further comprising writing the video and audio
information in the presentation format onto a disk media.
Cleaner 5 discloses writing the video and audio information in the presentation format
onto a disk media such as CD-ROM or DVD-ROM, (Cleaner 5 at p. 144).

Regarding claim 8:

The method of claim 1 wherein the presentation format is selected from
VOB(Video Object for DVD), VCD MPEGl, and SuperVCD MPEG2.
Cleaner 5 discloses writing the video and audio information in the presentation format
onto a disk media. For example an MPEG 1 system stream for VCD, (Cleaner 5 at p. 206).
Specifically, Cleaner 5 allows the user to "choose between creating MPEG-l or MPEG-2
streams" when MPEG 1 is used for VCD output, (Cleaner 5 at p. 206 and 209).

Regarding claim 9:

The method of claim 1 wherein the processing of the elementary video stream
with audio information comprises a multiplexing process.
Cleaner 5 discloses a code directed to processing an elementary video stream with
audio information, for example, Cleaner 5 lets the "[user] select between System or Elementary
streams for MPEG-I files and Program or Elementary streams for MPEG-2," (Cleaner 5 at p.
·206). Additionally, the user will "output to System (MPEG-l) or Program (MPEG-2) streams, in
which both the video and audio are muxeq (multiplexed) into a single file," (Cleaner 5 at p. 206).

Regarding claim 10:

The method of claim 1 wherein the audio information is tuned to a desired
frequency based upon the desired output media format.

Application/Control Number: 95/001,283

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Art Unit: 3992
I

Cleaner 5 discloses audio information is tuned to a desired frequency based upon the
"desired output media format, (Cleaner 5 at p. 212). In Cleaner 5, a user may use MP3 audio files
and "the MP3 default sample rate is 44.1 kHz, which is also the sample rate of audio CDs,"
(Cleaner 5 at p. 212).

Regarding claim 11:

The method of claim 10 wherein the desired frequency is selected from 48 kHz
for DVD, 44.1 kHz for VCD and SVCD.
Cleaner 5 discloses various desired frequencies including 44.1 kHz for use with VCD,
(Cleaner 5 at pp". 212-213,209).

Regarding claim 12:

The method of claim 1 wherein the directing converting, directly resizing, and
directly adjusting, and directly processing are performed free from one or more
intermediary files.
Cleaner 5 disc10sesdirect converting, direct adjusting and directly processing are
performed free from one or more intermediary files, (Cleaner 5 at p. 206). Specifically,
the user will "output to System (MPEG-l) or Program (MPEG-2) streams, in which both
the video and audio are muxed (multiplexed) into a single file," (Cleaner 5 at p. 206).

Regarding claim 13:

The method of claim 1 further comprising processing the raw video information
based upon video editing information based upon a fourth input.
Cleaner 5 is directed to processing raw video information based upon video editing
information from a user, which is a fourth input. For example, Cleaner 5 is a software application
for cropping or trimming video based on In/Out points selected by the user, (Cleaner 5 at p. 25).

Application/Control Number: 95/001,283

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Art Unit: 3992
Moreover, cropping allows the user to specify the part of the image they want to keep and
trimming allows the user to set in and out points, designating the points to start and end, (Cleaner
5 at p. 25).

Regarding claim 14:

The method of claim 1 further comprising processing the audio information
based upon audio editing information based upon a fifth input.
Cleaner 5 can be directed to processing audio information based upon Noise Removal
(i.e., audio editing information) after the user selects the clean-up filter, which constitutes a fifth
input, (Cleaner 5 at p. 95). Specifically, "Cleaner offers professional- quality resampling, as well
as a range of clean-up filters, such as Noise Removal, Noise Gate and HighILow Pass, to
optimize your audio," (Cleaner 5 at p. 95).

Regarding claim 15:

The method of claim 1 wherein the processing for converting into the elementary
video stream is provided in an encoding process and the converting to the raw video
information is provided in a decoding process.
Cleaner 5 is directed to converting raw video information to the elementary video stream
is performed through encoding, (Cleaner 5 at p. 206). Additionally, Cleaner 5 discloses
converting to YUV raw video information is performed through decoding, (Cleaner at p. 138).
Specifically, "Cleaner 5 decodes files significantly faster by using a combination of native YUV
processing and Digital Origin's DV codec. Cleaner also offers several decoding options through
the Preferences dialog that allow you to choose between higher quality or faster decoding,"
(Cleaner 5 at p. 138).

Application/Control Number: 95/001,283

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Art Unit: 3992

Regarding claim 16:

A system for converting video information from an incoming format to an
outgoing format using an integrated computer software application, the integrated
computer software application being provided on one or more memories, the one or
more memories including:
Cleaner 5 discloses a system for converting incoming pV (Digital Video) to an outgoing
MPEG-l or MPEG-2 stream, (Cleaner 5 at pp. 141,206). As shown on page 141, Cleaner 5 lists
the supported formats that can be read and written. Page 206 discloses how one would select the
outgoing format using a software based pop-up menu.
Cleaner 5 is an application that is run on a computer running Windows or Mac OS, which
includes one or more memories, (Cleaner 5 at p. 2): Since programs running in a Windows or
Mac OS environment are always run from one or more memories, Cleaner 5 too, is provided on
one or more ofthose memories, (Cleaner 5 at p. 141).

a code directed to receiving video information in a first format;
Cleaner 5 discloses a capture code directed to receiving source material in DV format
(i.e., video information in a first format) from a DV camera, (Cleaner 5 at pp. Capturing Video
pg. 5; Capturing with MotoDV pg. 8 and 141).

a code directed to receiving a desired output media format based upon a first input;
Cleaner 5 discloses allowing a user to select a different output media format based
upon a first input. For example, the user "can easily produce MPEG-l files for Video CD
projects by selecting the Video CD preset in the Advanced Settings window," (Cleaner 5
at p. 209).

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Art Unit: 3992

a code directed to receiving a desired video presentation standard based upon a
second input;
Cleaner 5 discloses that a user may choose between NTSC or PAL (i.e., desired video
presentation) based upon the preset (Le., second input) the user selects, (Cleaner 5 at pp. 204 and
205). In addition, as stated on page 206, while pertaining to images, Cleaner clearly discloses
that "You can choose whether you want to make an NTSC-compatible or a PAL-compatible
stream". Thus, Cleaner 5 discloses that a user can be an input (second input) to select a destined
TV standard.
)

a code directed to converting the video information in the first format to raw video
information [in] an uncompressed format using a decoding process;
Cleaner 5 decodes and converts the DV stream format video information to an
uncompressed raw video format, such as YUV, (Cleaner 5 at p. 138).

a code directed to resizing the raw video information in the uncompressed format
into a size associated with the desired output media format and the desired video
presentation standard;
Cleaner 5 discloses converting the uncompressed raw video information to the
selected image size through a resizing operation, (Cleaner 5 at p. 204). In Cleaner 5, 720 x
480 pixels is the image size associated with an MPEG 2 output media format in an NTSC
TV standard, (Cleaner 5 at p. 204). Additionally, 720 x 576 pixels is the image size
associated with an MPEG 2 output media format in a PAL TV standard, (Cleaner 5 at p.
204). The Examiner notes that by selecting the desired output format the raw video information
would be resized in accordance with the selected desired output format.

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Art Unit: 3992

a code directed to adjusting the uncompressed format in the size associated with the
desired output media format and the desired video presentation standard to a frame
rate associated with the desired video presentation standard;
Cleaner 5 discloses a flame rate of29.97 frames per second is associated with MPEG 1
and MPEG 2 output media formats for the NTSC TV standard and a flame rate of 25 frames per
second is associated with MPEG 1 and MPEG 2 output media formats for the PAL TV standard,
(Cleaner 5 at p. 207).

a code directed to processing the un compressed format in the size and the frame
rate into an elementary video stream;
Cleaner 5 discloses that a user can select to process the video into an elementary video
stream when outputting MPEG 1 and MPEG 2 files, (Cleaner 5 at p. 206 - Stream Type).

a code directed to processing the elementary video stream with audio information in
the desired output media format and the desired video presentation standard to
form video and audio information in a presentation format based upon the desired
output media format and the desired video presentation standard; and
Cleaner 5 discloses that when an MPEG 1 system stream is selected, the elementary
video stream is processed or multiplexed with the audio stream to form a single multiplexed
stream of audio and video information in the desired NTSC or PAL TV standard based on the
desired MPEG 1 output media format, (Cleaner 5 at p. 7,206).

a code directed to receiving video editing information based upon a third input.

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Art Unit: 3992
Cleaner 5 discloses that a user may select a third input for specifying quality settings
based on a variety of parameters, (Cleaner 5 at p. 59). For example, Cleaner 5 discloses quality
settings for video editing such as data rate, and frame rate, (Cleaner 5 at pp. 59, 62, 64-65).

Regarding claim 17:

The system of claim 16 further comprising a code directed to receiving audio
editing information based upon a fourth input.
Cleaner 5 discloses receiving audio information that can be edited using a number of
different filters (Le., fourth input). Cleaner 5 at p. 95. For example, these filters include noise
removal filters, noise gate filters, high/low pass filters, dynamic range compression filters and
reverb filters, (Cleaner 5 at p. 95).

Regarding claim 18:

The system of claim 16 wherein the integrated computer software application is
a single integrated application.
Cleaner 5 is a single integrated computer software application which "offers a complete
camera-to-web solution that makes it easy to put video and audio on your site," (Cleaner 5 at p.

1).

Regarding claim 19:

A method for converting video information from an incoming format to an
outgoing format using a process free from one or more intermediary files, the
method comprising:
Cleaner 5 discloses a software application for converting video information from an
incoming format, such as a DV stream or QuickTime file to an outgoing format, such as MPEG
I or MPEG 2, free from intermediary files, (Cleaner 5 at pp. 141,206).

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Art Unit: 3992

receiving video information in a first format;
Cleaner 5 discloses receiving source material (i.e., video infonnation in a first
fonnat) shot with a DV camcra, (Cleaner 5 at p. 5).

receiving a desired output media format based upo~~firsHnput and a desired
video presentation standard based upon a second input;
Cleaner 5 discloses allowing a user to select an output media fonnat, such as MPEG-l,
based upon an input, such as the Video CD preset, (Cleaner 5 at pp. 141,209). Specifically, a
user "can easily produce MPEG-l file for [their] Video CD projects .. , by selecting the Video CD
preset in the Advanced Settings window," (Cleaner 5 at p. 209). Cleaner 5 also supports MPEG2 files for the DVD output media fonnat, (Cleaner 5 at p. 62).

decoding the video information in the first format to raw video information in an
uncompressed format;
Cleaner 5 decodes and converts the DV stream format video infonnation to an
uncompressed fonnat, such as YUV, (Cleaner 5 at p. 138).

directly resizing the raw video information in the uncompressed format into a size
associated with the desired output media format and the desired video presentation
standard and adjusting the uncompressed format in the size associated with the
desired output media format and the desired video presentation standard to a frame
rate associated with the desired video presentation standard;
Cleaner 5 discloses converting the uncompressed raw video infonnation into a resolution
size of nOx480 pixels which is associated with the DVD media fonnat and the NTSC video
presentation standard, (Cleaner 5 at p. 62, 204, 209). Moreover, Cleaner 5 discloses using the

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Art Unit: 3992
pop-up menu to adjust the frame rate of the uncompressed format to 29.97 frames per second
(fps) which is associated with the NTSC video presentation standard, (Cleaner 5 at p. 207).
Moreover, a user may "choose a frame rate between 23.967 - 60 frames per second,"(Cleaner 5 at
p.207).

encoding the uncompressed format.in the size and the frame rate into an elementary
video stream; and
Cleaner 5 discloses encoding the YUV uncompressed format, (Cleaner 5 at p. 138).
Additionally, Cleaner 5 discloses "[t]he Stream Type pop-up menu lets you select between
System or Elementary streams for MPEG-l files and Program or Elementary streams for MPEG2," (Cleaner at p. 206). Thus, the YUV uncompressed format is encoded to a size and frame rate
of an MPEG-l elementary stream, (Cleaner 5 at pp. 138,206) ..

multiplexing the elementary video stream with audio information in the desired
output media format and the desired video presentation standard to form video and
audio information in a presentation format .based upon the desired output media
format and the desired video presentation standard.
Cleaner 5 discloses that when an MPEG 1 system stream is selected, the elementary
video stream is processed or multiplexed with the audio stream to form a single multiplexed
stream of audio and video information in the desired NTSC or PAL TV standard based on the
desired VCO output media format, (Cleaner 5 at p. 7 and p. 206).

Claim Rejections - 35 USC § 103
6.

The following is a quotation of 35 U.S.c. 103(a) which forms the basis for all

obviousness rejections set forth in this Office action:

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Art Unit: 3992
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

Issue 2 (Adopted)
7.

Claims 5, 6 and 8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Cleaner

5 in view of MPEG Charger.
The Examiner notes that this rejection was proposed in addition to the rejection to claims
5, 6 and 8 to Cleaner 5 alone.
The Examiner acknowledges that as per MPEP 2660, III, "it is to be noted that the
examiner is not to refuse to adopt a rejection properly proposed by the requester as being
cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to
preserve parties' appeal rights as to such proposed rejections."
, The Examiner maintains that Cleaner 5 anticipates the claims, however in addition, the
Examiner acknowledges the below teachings with respect to MPEG Charger. As noted in the
Request, MPEG Charger is a software application for converting a video file into a MPEG video
file based on certain parameters, (MPEG Charger at pp. 9, 14). MPEG Charger is explicitly
configured to work with Cleaner 5 in the process of converting video files for recording onto a
disc. Specifically, MPEG Charger can produce MPEG-l files for Video CD projects and
MPEG-2 files for "producing high-data rate, full broadcast-quality files that require OVD, fast
CD-ROM or hard drives for playback." MPEG Charger at p. 10. Importantly, MPEG Charger
performs the method entirely using software run from a disc.

Application/Control Number: 95/001,283

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Art Unit: 3992
The Examiner notes MPEG Charger is a software application for explicit use with
Cleaner 5 and provides additional functionality in MPEG-l and MPEG-2 encoding. MPEG
Charger at p. 9. Additionally, MPEG Charger explicitly discloses the ability to "tum all popular
video, audio and animation file fonnats into MPEG streams for DVD, Video CD, CD-ROM,
digital broadcasting and broadband webcasting." MPEG Charger at p. 9.

Regarding claim 5:

The method of claim 1 wherein the desired output media format is selected from
either DVD, VCD, and Super VCD.
Cleaner 5 discloses that a user may output media in VCD fonnat. Cleaner 5 at p.
209. Specifically, Cleaner 5 states that a user can select the "Video CD preset in the
Advanced Settings window" in Cleaner to "easily produce MPEG-l files for Video CD
projects." Cleaner 5 at p. 209. Additionally, MPEG Charger discloses DVD output media
fonnats. MPEG Charger at p. 9.
A person of ordinary skill in the art would have been motivated to combine Cleaner 5
with MPEG Charger in view of the explicit motivation found within the MPEG Charger
Reference: "MPEG Charger is a software-only MPEG option for Cleaner 5 that gives you
comprehensive control over both MPEG-l and MPEG-2 encoding," and reference within
Cleaner 5: "Cleaner MPEG Charger integrates seamlessly with Cleaner." MPEG Charger at p. 9;
Cleaner 5 at p. 209.

Regarding ciaim 6:

The method of claim 5 further comprising inputting a quality setting based upon
a third input when the desired output media format is DVD.

Page 19

Application/Control Number: 95/001,283
Art Unit: 3992

Cleaner 5 discloses that a user may select a third input for specifying quality settings
based on a variety of parameters. Cleaner 5 at p. 59. For example, Cleaner 5 discloses quality
settings such'as data rate, and frame rate. Cleaner 5 at pp. 59, 62, 64-65. Furthermore, Cleaner 5
discloses that when the output format is DVD a data rate acceptable to DVD formats are required
and Cleaner 5 uses a data rate of 5.7 Mbits/sec and is used by Cleaner's default MPEG-2 setting.
Cleaner 5 at p. 62. Moreover, MPEG Charger discloses that the user is allowed lito tum all
popular video, audio and animation file formats into MPEG streams for DVD, Video CD, CDROM, digital broadcasting and broadband webcasting." MPEG Charger at p. 9. Thus, the user
may input a higher data rate to create an MPEG stream suitable for a DVD.

Regarding claim 8:

The method of claim 1 wherein the presentation format is selected from VOB
(Video Object for DVD), VCD MPEGl, and SuperVCD MPEG2.
Cleaner 5 discloses writing. the video and audio information in the presentation format
such as an MPEG 1 system stream for VCD, (Cleaner 5 at p. 206). Specifically, Cleaner 5 allows
the user to "choose between creating MPEG-l or MPEG-2 streams for VCD output, (Cleaner 5
II

at p. 206, and 209). Furthermore, MPEG Charger discloses that the user is allowed lito tum all
popular video, audio and animation file formats into MPEG streams for DVD, Video CD, CDROM, digital broadcasting and broadband webcasting, (MPEG Charger at p. 9).

Application/Control Number: 95/001,283

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Art Unit: 3992

Issue 3 (Not Adopted)
8.

The rejection of claims 1-3,5, 7, 9 and 13-19 as being rejected under 35 U.S.c. 103(a) as

being unpatentable over AVID Xpress in view of AVID Xpress DV and further in view of
MPEG standard is not adopted.

As stated on page 34 of the Request, Avid Xpress is an advertising document promoting
a software application for converting and editing video and audio files based on user input
parameters, (Avid Xpress at p. 1). The Avid Xpress system can receive video in many different
input formats including popular animation file formats on Windows, Macintosh and SGI,
including QuickTime formats, (Avid Xpress at pp. 1,3). The Avid Xpress software is designed
to accept these file types (and more) for editing and output. Among Avid Xpress' output features
are the ability to output to files into NTSC and PAL TV formats and further outputting video in
compliance with the ITU R-601 standard for broadcast television, (Avid Xpress at p. 3).
In addition, as stated on page 35 ofthe Request, Avid Xpress DV discloses a software
system that is related to Avid Xpress, which includes additional capabilities such as supporting
MPEG output formats and writing outputs to DVD. Avid Xpress DV at 1.
The Examiner maintains that while Avid Xpress discloses of providing software for
converting and editing video and audio files, Avid Xpress does not disclose in detail any of the
method or code for performing at least the recited converting steps. Thus, neither Avid Xpress
nor Avid Express DV either alone or in combination meet all of the claimed limitations.

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Art Unit: 3992
The Examiner agrees that Avid Xpress is a software system for converting and editing
video and multimedia content quickly, (Avid Xpress at p. 1). Additionally, as noted above, the
Examiner agrees that Avid Xpress DV is a software product that is related to Avid Xpress that
has a variety of exporting options including MPEG output abilities, (Avid Xpress DV Features at

p. 1).
The Examiner agrees that both references disclose of code to receive video in many
different formats and for outputting video into broadcast digital formats, (Avid Xpress at p. 1).

The Examiner notes that the Request fails to specifically point out where in the references
does it show that the video information in the first format is digitally converted to "raw video
information in an uncompressed format".
The Request merely states:
The Avid Xpress software includes code for converting video information into
uncompressed video using its uncompressed video option. Avid Xpress at pp. 1-2.

There is no support for converting the video information to raw video information.

The Examiner acknowledges that the Request further points to the following in Avid.
Xpress:

"Truest Online Image Quality Avid Xpress supports lTV R-601 broadcast industry
standards for the truest online image quality. For the first time in its category, uncompressed
video is available as an option for Avid Xpress Deluxe and Elite systems for the best possible

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Art Unit: 3992

video quality. All Avid Xpress systems using Avid's state-of-the-art Meridien video subsystem
deliver broadcast quality 2: 1 image compression, as well as a range of other resolutions in either
4:3 or 16:9 wide screen. No other digital video system in its class combines unmatched speed
and productivity features with the highest image standards." Avid Xpress at p. 1.
"Single-Stream Uncompressed Video Option (Deluxe and Elite Bundle only) A
single stream of uncompressed video allows the best possible image quality for high-end
projects. " Avid Xpress at p. 2.

The Examiner acknowledges that Avid Xpress uses uncompressed video, however no.
relationship between this uncompressed video and the received video information has been
made. The claim requires directly converting the video information in the first format to raw
video information in an uncompressed format.
Another limitation pertains to directly resizing the raw video information (i.e. the raw
video information that resulted from the previous converting step) into a size associated with the
desired output media format and the desired video presentation standard;
The Request merely shows that Avid Xpress is able to o,-utput video with various sizes,
however, the Request's statements are conclusory arid are not specific as to how Avid Xpress
. resizes or converts the received data.
The claim also outlines specific step that recites code for resizing the raw information in
the uncompressed format into a size associated with the desired output media format and the
desire video presentation standard.

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Art Unit: 3992
The Examiner agrees that Avid Xpress discloses of various video presentation standards
(e.g. TV Standards) and different output media with various 'sizes', however, the Avid Xpress
reference does not disclose what video is being output or whether what is being output was a
result of a converting step which converted video information in a first format to raw video
information in an uncompressed format.

The claims further recited limitations directed to directly processing the uncompressed
format into "an elementary video stream". The Request discloses that since Avid Xpress DV
includes code directed to exporting files in the MPEG format, then Avid Xpress DV processes
the uncompressed format into an elementary stream" .
.The Request relies upon MPEG Standard to support the processing of video into an
elementary video stream; however, the Examiner first notes that the Request does not show how
Avid Xpress discloses of creating the uncompressed video stream from the received video
information and while elementary stream were known in the art, the Request did not point out
how MPEG Standard contemplates the converting of video information to raw video information
in an uncompressed format and the processing of that same video information in the raw
uncompressed format into an elementary video stream.

The Examiner does not agree that Avid Xpress in view of Avid Xpress DV and MPEG
standard renders obvious any of the claims under
will not be adopted by the Examiner.

ree~amination

and thus the proposed rejection

Application/Control Number: 95/001,283

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Art Unit: 3992

Issue 4 (Adopted)
9.

Claims 1-12, 15 and 19 are rejected under 35 U.S.C. 102(e) as being anticipated by

Washino U.S. Patent 6,370,198.

Regarding claim 1:

A method for converting video information from an incoming format to an
outgoing format using a continuous pass conversion process free from one or more
intermediary files, the method comprising:
Washino discloses a multi-format digital video production system that enables a user to
process an input video program to produce an output version of the program in a final format,
(Abstract, lines 1-3).

inputting video information in a first format;
Washino discloses inputting video information in a first format, (collI,
lines 51-54), ("graphics processor 82 ... process the input video signals 84 ... ").

directly converting the video information in the first format to raw video
information in an uncompressed format;
Washino discloses converting the inputted video information in the first format to
an uncompressed format, such as ROB or YUV, (CollI, lines 54-63).

inputting a desired output media format based upon a first input;
Washino discloses that outputs can be configured to ROB format or other output
media formats, (collI, lines 51-54).

inputting a desired video presentation standard based upon a second input;

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Art Unit: 3992
Washino discloses that the video data stream may undergo a number of
modifications based on the desired output format such as NTSC/P AL or HDTV , (col. 21, line 56
to col. 22, line 11; collI, lines 54-63).

directly resizing the raw video information in the uncompressed format into a size
associated with the desired output media format and the desired video presentation
standard;
Washino discloses that images are re-sized horizontally and vertically by pixel
interpolation and frame rates are adapted by inter-frame interpolation, abstract; col. 18, lines 5063).

directly adjusting the uncompressed format in the size associated with the desired
output media format and the desired video presentation standard to a frame rate
associated with the desired video presentation standard;
Washino discloses adjusting the frame rate of the uncompressed format to the
desired frame rate of the video presentation standard, (Abstract; Col. 18, lines
53-63).

directly processing the uncompressed format in the size and the frame rate into an
elementary video stream; and
Washino discloses processing the uncompressed format in any selected size and
frame rate into an elementary video stream, (col. 18, lines 50-63; col. 20, lines
6-10).

directly processing the elementary video stream with audio information in the
desired output media format and the desired video presentation standard to form

Application/Control Number: 95/001,283

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Art Unit: 3992

video and audio information in a presentation format based upon the desired output
media format and the desired video presentation standard.
Washino discloses processing the video format with audio information in the
desired output media format. Specifically, Washino discloses adjusting the pitch of the
audio based on the frame rate of the video which is related to the desired video standard, (col. 21,
lines 45 to col. 22, lines 15; col. 22, lines 49-53).

Regarding claim 2:

The method of claim 1 wherein the first format is selected from a digital file, a
digital captured video stream, an analog captured video stream, and an internet
video stream.
Washino discloses the first format including a digital file, captured video stream,
and analog captured video stream, (col. 15, lines 1-5). Spec.ifically, Washino
discloses that the input format can be either an analog signal, which will be processed
into a digital file or a digital file, (collI, lines 51-54; col. 15, lines 1-5).

Regarding claim 3:

The method of claim 2 wherein the digital file is selected from an AVI format, an
~

MPEG format, a DV format, a QuickTime format, Real Video format, Windows
Media Player format.
Washino discloses that the digital file can be in MPEG format, (col. 11,
lines 63-65; col. 15, lines 1-5).

Application/Control N~mber: 95/001,283

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Art Unit: 3992

Regarding claim 4:

The method of claim 1 wherein the uncompressed format is selected from RGB,
and YUV.
Washino discloses selecting an uncompressed format ofRGB or YUV, (collI, lines 54-

63).

Regarding claim 5:

The method of claim 1 wherein the desired output media format is selected from
either DVD, VCD, and Super VCD.
Washino discloses selecting a media format such as DVD. Washino, Col. 6, lines 48-60.

Regarding claim 6:

The method of claim 5 further comprising inputting a quality setting based upon
a third input when the desired output media format is DVD.
Washino discloses quality editing for multi-format video production. Washino,
Col. 1, lines 14-21. Specifically Washino disclose that ifDVD type storage is selected a
higher data compression can be used to fit an entire program of 120 minutes onto the
storage media. Washino, Col. 17, lines 52-62.

Regarding claim 7:

The method of claim 1 further comprising writing the video and audio
information in the presentation format onto a disk media.
Washino discloses writing or recording the video and audio information onto a
disk media, such as DVD. Washino, Col. 6, lines 48-60.

Application/Control Number: 95/001,283

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Art Unit: 3992

Regarding claim 8:

The method of claim 1 wherein the presentation format is selected from
VOB(Video Object for DVD), VCD MPEG1, and SuperVCD MPEG2.
Washino discloses wherein the digital file can be distributed in MPEG-2 format
and recorded onto DVD, (col 5, lines 19-34).

Regarding claim 9:

The method of claim 1 wherein the processing of the elementary video stream
with audio information comprises a multiplexing process.
Washino discloses that audio signals can be included within the digital stream and
that the audio can be integrated by available methods such as A VI, (col. 12, lines 1-7).

Regarding claim 10:

The method of claim 1 wherein the audio information is tuned to a desired
frequency based upon the desired output media format.
Washino discloses adjusting the audio data in accordance with the video output.
Washino, Col. 22, lines 43-57.

Regarding claim 11:

The method of claim 10 wherein the desired frequency is selected from 48 kHz
for DVD, 44.1 kHz for VCD and SVCD.
Washino discloses writing audio-video to DVD, which inherently requires an
audio frequency of at least 48 kHzl, (col 5, lines 19-34).

Application/Control Number: 95/001,283

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Art Unit: 3992

Regarding claim 12:

The method of claim 1 wherein the directing converting, directly resizing, and
directly adjusting, and directly processing are performed free from one or more
intermediary files.
Washino discloses that in some embodiments only one conversion step is required.
Washino, (col. 18, lines 50-63).

Regarding claim 15:

The method of claim 1 wherein the processing for converting into the elementary
video stream is provided in an encoding process and the converting to the raw video
information is provided in a decoding process.
Washino discloses encoding the uncompressed format to preserve the full bandwidth of
the high-resolution signal, (col. 7, lines 39-43).

Regarding claim 19:

A method for converting video information from an incoming format to an
outgoing format using a process free from one or more intermediary files, the
method comprising:
Washino discloses a multi-format digital video production system that enables a
user to process an input video program to produce an output version of the program in a
final format, (abstract).

receiving video information in a first format;

I See LaBarge, DVD Authoring, p. 41 (Audio written in DVD-Video format requires a frequency of at least
48kHz) filed March 23, 2010.

Application/Control Number: 95/001,283

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Art Unit: 3992
Washino discloses receiving video information in a first format, (col
11, lines 51-54).

receiving a desired output media format based upon a first input and a desired
video presentation standard based upon a second input;
Washino discloses that outputs can be configured to RGB format or other output
media formats, (collI, lines 51-54). Further, Washino discloses that the video
data stream may undergo a number of modifications based on the desired output format
such as NTSCIP AL or HDTV , (col. 21, line 56 to col. 22, line 1 1; collI, lines 54-63).

decoding the video information in the first format to raw video information in an
uncompressed format;
Washino discloses converting the inputted video information in the first format to
an uncomp,ressed format, such as YUV, (collI, lines 54-63).

directly resizing the raw video information in the uncompressed format into a size
associated with the desired output media format and the desired video presentation
standard and adjusting the uncompressed format in the size associated with the desired
output media format and the desired video presentation standard to a frame
rate associated with the desired video presentation standard;
Washino discloses that images are re-sized horizontally and vertically by pixel
interpolation and frame rates are adapted by inter-frame interpolation, (abstract; Col. 18, lines
50-63). Additionally, Washino discloses adjusting the frame rate of the uncompressed format to
the desired frame rate of the video presentation standard, (abstract; Col. 18, lines 50-63).

Page 31

Application/Control Number: 95/001,283
Art Unit: 3992

encoding the uncompressed format in the size and the frame rate into an elementary
video stream; and
Washino discloses processing and encoding the uncompressed format in any selected size
and frame rate into an elementary video stream, (col. 7, lines 39-43; col. 18, lines 50-63; col. 20,
lines 6-10).

multiplexing the elementary video stream with audio information in the desired
output media format and the desired video presentation standard to form video and
audio information in a presentation format based upon the desired output media
format and the desired video presentation standard.
Washino discloses processing the video format with audio information in the
desired output media format. Specifically, Washino discloses adjusting the pitch of the
audio based on the frame rate of the video which is related to the desired video standard, (col. 21,
lines 45-55; col. 22, lines 49-53).

Conclusion
10.

In order to ensure full consideration of any amendments, affidavits or declarations, or

other documents as evidence of patentability, such documents must be submitted in response to
this Office action. Submissions after the next Office action, which is intended to be an Action
Closing Prosecution (ACP), will be governed by 37 CFR 1.116, which will be strictly enforced.
11.

Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes

reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant"
and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c)

Application/Control Number: 95/001,283

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Art Unit: 3992
requires that inter partes reexamination proceedings "will be conducted with special dispatch"
(37 CFR 1.937). Patent owner extensions of time in inter partes reexamination proceedings are
provided for in 37 CFR 1.956. Extensions of time are not available for third party requester
comments, because a comment period of 30 days from service of patent owner's response is set
by statute. 35 U.S.C. 314(b)(3).
12.

The Patent Owner is reminded of the continuing responsibility under 37 CFR 1.985(a) to

apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
US Patent 7,283,172 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 through the course of this reexamination proceeding. See MPEP § 2686 and
2686.04.
13.

All correspondence relating to this inter partes reexamination proceeding should be

directed:
By EFS:

Registered users may submit via the electronic filing system EFS-Web, at
https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html.

By Mail to:

Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450

By FAX to:

[phone]
Central Reexamination Unit

By hand:

Customer Service Window
Attn: Central Reexamination Unit
Randolph Building, Lobby Level
401 Dulany Street
Alexandria, VA 22314

Application/Control Number: 95/001,283

Page 33

Art Unit: 3992

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence
(except for a request for reexamination and a corrected or replacement request for
reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic
filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission
for each piece of correspondence stating the data of transmission, which is prior to the expiration
of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the
examiner, or as to the status of this proceeding, should be directed to the Central Reexamination
. Unit at telephone number [phone].

Ovu4;[!~
Ovidio Escalante
Primary Examiner
Central Reexamination Unit - Art Unit 3992
[phone]
Conferee: Ir.g.f./

Conferee: g-s:K.