Bicameral LLC v. NXP USA, Inc. et al

Western District of Texas, txwd-6:2018-cv-00294

Exhibit Ex. 331EX2

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Exhibit 331EX2 Control No. 90/011,532 Patent Under Reexamination 6,321,331 Office Action in Ex Parte Reexamination Examiner WOO H. CHOI Art Unit 3992 a CU -- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -- Responsive to the communication(s) filed on 27 September 2011. This action is made FINAL, A statement under 37 CFR 1.530 has not been received from the patent owner. A shortened statutory period for response to this action is set to expire 2 month(s) from the mailing date of this letter. Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c). If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days will be considered timely. Part 1 THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION: 1. Notice of References Cited by Examiner, PTO-892. 3. D Interview Summary, PTO-474. 2. Information Disclosure Statement, PTO/SB/08. 4. Part II SUMMARY OF ACTION 1a. Claims 1-56 are subject to reexamination. 1b. O Claims ____ are not subject to reexamination. Claims _ _ have been canceled in the present reexamination proceeding. 3. Claims 1-25,33-36,43,44 and 50-55 are patentable and/or confirmed. 4. Claims 26-32,37-42,45-49 and 56 are rejected. 5. O Claims __ are objected to. 6. The drawings, filed on_ are acceptable. 7. The proposed drawing correction, filed on _ has been (7a) approved (76) disapproved. 8. O Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (0). a) All b)O Some* c)None of the certified copies have 10 been received. not been received. 30 been filed in Application No. 40 been filed in reexamination Control No. 50 been received by the International Bureau in PCT application No. * See the attached detailed Office action for a list of the certified copies not received. Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11,453 O.G. 213. 9. O 10. O Other: cc: Requester (if third party requester) U.S. Patent and Trademark Office PTOL-466 (Rev. 08-06) Office Action in Ex Parte Reexamination Part of Paper No. 20111028-A BC_GEN_0002261 Page 2 Application/Control Number: 90/011,534 Art Unit: 3992 DETAILED ACTION. Reexamination 1. This is an ex parte reexamination of U.S. Patent Number 6,321,331 ('331 patent) requested by a third party requester. Claims 1-22 were subject to reexamination. In response to the Non-Final Office Action mailed on July 29, 2011, Patent Owner amended claims 21, 22 and added new claims 23-56. Claims 1-56 are pending. The references discussed herein are as follows: 1. U.S. Patent No. 5,996,092 ("Augsburg"); 2. U.S. Patent No. 5,361,348 ("Nakamoto"); 3. IBM, "PowerPC 403GA User's Manual" Second Edition, March 1995 ("IBM"). Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention. 3. Claims 26-32, 37-42, 45-49, and 56 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. BC_GEN_0002262 Page 3 Application/Control Number: 90/011,534 Art Unit: 3992 4. With respect to claims 26-30, 40, and 45-48, the claims require "a processor" to comprise "event history buffer means." However, Figure 1 clearly shows that the history buffer 14 is external to the processors 12a-c. Patent Owner cites c6:16-26. The cited passage does not describe any processor that comprises an event history buffer. 5. With respect to claims 31, 41, 49, and 56, the claims recite the limitation "wherein said cause register means comprises a plurality of registers." Patent Owner cites c6:16-38 as support for this limitation without any explanation. The cited passage merely lists cause registers 26a-c shown in Figure 1. Figure 1 shows only one cause register per processor. Neither the cited passage, nor Figure 1 shows any cause register that comprises a plurality of registers. 6. With respect to claims 32 and 42, the claims recite the limitation "wherein said debugging interface is configured to facilitate the correlation of said output of said first decoder means and the information indicated by said cause register means with actual program code being executed by said processor." Patent Owner cites c7:21-28 as support for this limitation. At c7:21-28, the specification discloses that "Those skilled in the art will appreciate that the outputs of the first decoder 28 and the contents of the history buffer 14 provides a relatively complete indication of each processor's execution sequence in real time, ... ." However, there is no discussion as to how the processor's debugging interface is configured to facilitate the correlation as claimed. As discussed above, the history buffer is external to the processors. BC_GEN_0002263 Page 4 Application/Control Number: 90/011,534 Art Unit: 3992 7. With respect to claims 37-39, requires the event history means to comprise a plurality of buffers. Patent Owner cites c6:16-26. However, the cited passage does not disclose that the event history buffer 14 comprises a plurality of buffers. Examiner's Statement of Reasons for Patentability/Confirmation 8. Claims 1-25, 33-36, 43-44, and 50-55 are deemed to be patentable and/or confirmed over the prior art of record for the following reasons: prior art references submitted by Requester do no teach, disclose or suggest the claimed feature of "cause register means for indicating information regarding interrupts and exceptions" as argued by Patent Owner. According to Patent Owner, "the cause register performs at least two important functions, namely, it stores cause information about (a) exception conditions; and (b) the pending interrupts." (Response at p. 26). Patent Owner explains that the specification of the '331 patent discloses that "bit locations 39 through 35 are used to store processor related exceptions conditions" and "[b]it locations 34 through 18 are used to store an indication of all pending interrupts (external, software, co-processor)." ("331 patent, c6:39-c7:10). The Examiner agrees with Patent Owner that, neither the machine state register (MSR) nor the external interrupt status register (EXISR) of the PowerPC 403GA is a cause register, because neither stores both interrupts and exception conditions as required by the claims. Conclusion 9. THIS ACTION IS MADE FINAL. BC_GEN_0002264 Page 5 Application/Control Number: 90/011,534 Art Unit: 3992 A shortened statutory period for response to this action is set to expire one (1) months from the mailing date of this action. Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a), it is required that reexamination proceedings "will be conducted with special dispatch within the Office." Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c). A request for extension of time must be filed on or before the day on which a response to this action is due, and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). The mere filing of a request will not effect any extension of time. An extension of time will be granted only for sufficient cause, and for a reasonable time specified. The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional month, which will be granted even if previous extensions have been granted. In no event however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP S 2265. BC_GEN_0002265 Page 6 Application/Control Number: 90/011,534 Art Unit: 3992 All correspondence relating to this ex parte reexamination proceeding should be directed as follows: By U.S. Postal Service Mail to: Mail Stop Ex Parte Reexam ATTN: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 By FAX to: (571) 273-9900 Central Reexamination Unit By hand to: Customer Service Window Randolph Building 401 Dulany St. Alexandria, VA 22314 Any inquiry concerning this communication or earlier communications from the Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705. 2o7 Woo H. Choi/ Reexamination Specialist Central Reexamination Unit 3992 Kl BC_GEN_0002266