UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/011,541 03/07/2011
45979 7590 04/251201 I
PERKINS COIE LLP/MSFT P. 0. BOX 1247 SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
6, 725,281
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
155727-281 EXTP 5471
EXAMINER
ART UNIT PAPER NUMBER
DATE MAILED: 04/25/2011
Please find below and/or attached an Office communication concerning this application or proceeding.
PT0-90C (Rev. 10/03)
. I
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Comcast, Exhibit-11191
("'~.;~~~ ~NI:":'_fl~~~':_~~~~c:: ---- ------- ---;;-.;;;;;,;;.;~,~o; ;,;;,~ \~, :,,.:~ii United States Patent and Trademark Office ~~~;._~ P.O. Box1450
DO NOT USE IN PALl\/I PRINTER
(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
IRELL & MANELLA LLP
1800 AVENUE OF THE STARS
SUITE 900
LOS ANGELES, CA 90067
Alexandria, VA 22313-1450 W"WN .uspro.gov
MAILED
APR 2 5 2011
CENTRAL REEXAMINATION UNIT
EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
R~EXAMINATION CONTROL NO. 901011.541.
PATENT NO. 6. 725.281.
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)
2
I
Order Granting I Denying Request For Ex Parle Reexamination
Control No.
90/011,541
Examiner
RACHNA S. DESAI
Patent Under Reexamination
6,725,281
Art Unit
3992
--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
The request for ex parte reexamination filed 07 March 2011 has been considered and a determination has been made. An identification of the claims, the references relied upon, and the rationale supporting the determination are attached.
Attachments: a)D PT0-892, b )~ PTO/SB/08, c)D Other: _. __
1. ~ The request for ex parte reexamination is GRANTED.
RESPONSE TIMES ARE SET AS FOLLOWS:
For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication (37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED. If Patent Owner does not file a timely statement under 37 CFR 1.530(b}, then no reply by requester is permitted.
2. D The request for ex parte reexamil")ation is DENIED.
This decision is not appealable.(35 U.S.C. 303(c)). Requester may seek review by petition to the Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37 CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER 37 CFR 1.183.
In due course, a refund under 37 CFR 1.26 ( c) will be made to requester:
a) D by Treasury check or,
b) D by credit to Deposit Account No. , or
c) D by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
I I cc:Reauester <if third n::irtv reauester \
U.S. Patent and Trademark Office
PTOL-471 (Rev. 08-06) Office Action in Ex Parte Reexamination Part of Paper No. 20110413
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Application/Control Number: 90/011,541
Art Unit: 3992
DETAILED ACTION
Decision on Request
Page 2
I. A substantial new question of patentability affecting claims 1-4 and 20 of United States
Patent.Number 6, 725,281 BI is raised by the request for ex parte reexamination.
References Cited in the Request
(
2. The request cites the following prior art references:
US Patent No. 6, 167,433 issued to Maples et al. (hereafter "Maples").
US Patent No. 6,404,743 issued to Meandzija (hereafter "Meandzija")
*US Patent No. 5,655,081 issued to Bonnell et al. (hereafter "Bonnell").
*US Patent No. 6,389,464 issued to Krishnamurthy et al. (hereafter "Krishnamurthy")
*These references were cited as secondary references.
Issues Raised by Request
Issue I: The requester alleges (pages I 1-13 of the Request) the Meandzija reference provides a
new, noncumulative technical teaching. Meandzija is new prior art that was not previously
before the examiner at the time of allowance. Meandzija was filed on May 11, 1998 and claims
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Application/Control Number: 90/011,541
Art Unit: 3992
Page 3
priority to a provisional filing date of November 4, 1997 which predates the filing date of the
'281 patent.
Issue 2: The requester alleges (pages 11 and 14-15 of the Request) that the Maples reference
provides a new, noncumulative technical teaching. Maples is new prior art that was not
previously before the examiner at the time of allowance. Maples was filed on July 31, 1998 and
claims priority to a provisional filing date of August 1, 1997 which predates the filing date of the
'281 patent.
Background
3. Claims 1-4 and 20 are being requested in the instant request for reexamination and are
current claims in the '281 Patent that issued April 20, 2004 from application 09/432,853 filed on
November 2, 1999. The '281 Patent claims priority to two provisional applications: 60/139,137
filed on June 11 1999 and 60/160,235 filed on October 18, 1999.
The '281 patent relates to controlled devices according to a device control model
maintain a state table representative of their operational state. Devices providing a user control
point interface for the controlled device obtain the state table of the controlled device, and may
also obtain presentation data defining a remoted user interface of the controlled device and
device control protocol data defining commands apd data messaging protocol to effect control of
the controlled device. These user control devices also subscribe to notifications of state table
changes, which are distributed from the controlled device according to an eventing model.
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Application/Control Number: 90/011,541
Art Unit: 3992
Page 4
Accordingly, upon any change to the controlled device's operational state, the eventing model
synchronizes the device's state as represented in the state table across all user control devices.
Prosecution History
4. Claims 1-4 and 20 of the '572 Patent issued April 20, 2004 from application 09/432,853
filed on November 2, 1999.
Application 09/432,853 was initially filed with six claims. A preliminary amendment
was filed on 11/09/01 adding claims 7-22 and amending claim 4. In a restriction requirement on
9117102, Examiner determined that claims 1-6 were drawn to a different invention than claims 7-
22. In response to the restriction requirement on I 0/22/02, claims 1-6 were elected and new
claims 23-28 were added. In a non-final office action of 11/09/02, Examiner rejected claims 4-5
over 35 U.S.C. l02(e) over Krishnamurthy, US. 6,389,464 and claims 1-3 and 6 under 35 U.S.C.
103(a) over Cannon, US 6,334,178 in view of Krishnamurthy, US. 6,389,464. Examiner further
indicated claims 23-28 were allowed .. In the response to the non-final rejection, the claims were
amended on 04/22/03 to recite that the device control interface was presented to effect a change
in the op_erational state of the controlled device and that the event source module was in the
controlled computing device. In the final rejection of 05/14/03, the Examiner rejected claims 1-6
over Lawson, US 6,185,613 in view of Krishnamurthy, US 6,389,464. In response, the claims
were amended on 10/17 /03 to indicate the user perceptible device control interface is presented
to effect a change in the operation state of the controlled computing device represented in the
state table and that the user control point module obtains a copy of the state table. The
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Application/Control Number: 90/011,541
Art Unit: 3992
Page 5
amendments further stated the event source module distributed change notifications to any
subscribing user controller device upon a change to the state table representing the operational
state of the controlled computing device, wherein the change notifications represent the
respective change in the state table. In the remarks filed with the amendments of I 0117103, the
Applicant argued Lawson failed to show "a device having a state table and lacks any suggestion
to send notifications of changes to the device's state table to other devices". Applicant further
argued Krishnamurthy fails to teach that "a copy of the system configuration table is kept by any
remote computer or suggest updating such copies via change notifications of changes to the
table". In summary, Applicant argued both Lawson and Krishnamurthy either individually or in
combination failed to teach that "many user controller devices obtain a copy of a state table of a
controlled device, and then updating such copies via change notifications so that the user
controller device's device control interfaces reflect the current operational state of the controlled
device". The Examiner subsequently issued a Notice of Allowance on 11/21103 allowing all
claims.
Substantial New Question
5. In view of the prosecution history, it is considered that the evaluation of a prior art
reference (or combination of references) that teaches or suggests, obtaining a copy of the state
table of the user controller device at the user controller device and distributing the change
notifications to any subscribing user controller device upon a change to the state table
representing the operational state of the controlled computihg device, wherein the change
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Application/Control Number: 90/011,541
Art Unit: 3992
Page 6
notifications represent the respective change in the state table, would raise a substantial new
question of patentability.
Analysis
Issue 1: The Meandzija reference is new prior art. Meandzija teaches, among other things, an
enhanced SNMP management system that defines a management state of each SNMP agent,
defines events which are to be reported from the agent to the management station and provides a
log for recording particular events and associated agent data values when the events occurs. The
enhanced SNMP provides the capability for a state change notification to be communicated from
the SNMP agents to an SNMP management station when specific events occur at the agent. See
abstract and column 4, lines 45-column 7, line 19. Meandzija further discloses a Management
information base (MIB) which is a virtual store for managed objects. The MIB may be provided
as part of the memory of an agent and may communicate with the MIB of the management
station. The management station performs a monitoring function by retrieving the value of MIB
objects from the agents. The management station can cause an action to take place at an agent or
change the configuration settings of an agent by modifying the value of specific variables. The
SNMP agent can issue a state change to the management station in response to an event that
affects the MIB. See column 9, lines 8-column 10, line 50.
Since these teachings are directly related to subject matter considered as the basis for
allowability of the patent claims, a reasonable examiner would consider evaluation of the
. Meandzija reference as important in determining the patentability of the claims. As such it is
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Application/Control Number: 90/011,541 Art Unit: 3992
Page 7
agreed that Meandzija reference raises a substantial new question of patentability with respect to
at least claim 1 of the '281 patent.
Issue 2: The Maples reference is new prior art. Maples teaches, among other things, a
multi-user, shared environment storing state and parameter information for each local and remote
station at each station, so that each station knows the current state of each other station. See
column 14, lines 28-32. Maples discloses a shared multi-user communication system that allmvs
data to be partially or wholly synchronized between local and remote stations. See abstract.
Maples discloses providing a shared control table which indicates control assignment of each
functional aspect of the MUSE system. See column 3, lines 42-47. The MUSE communicator
transmits state values and parameter information only when the state values and parameter
information are changed in value. Jn order to verify synchronization, the contents of the shared
user state table are retransmitted. See column 15, lines 15-24.
Since these teachings are directly related to subject matter considered as the basis for
allowability of the patent claims, a reasonable examiner would consider evaluation of the Maples
reference as important in determining the patentability of the claims. As such it is agreed that
Maples reference raises a substantial new question of patentability with respect to at least claim 1
of the '281 patent.
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Application/Control Number: 90/011,541
Art Unit: 3992
Conclusion
Extensions of Time
Page 8
6. Extensions of time under 3 7 CFR 1 .136( a) will not be pennitted in these proceedings
because the provisions of 3 7 CFR 1.136 apply only to "an applicant" and not to parties in a
reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
"will be conducted with special dispatch" (37 CFR l.550(a)). Extension of time in ex parte
reexamination proceedings are provided for in 37 CFR 1.550(c). ·
Waiver of Right to File Patent Owner Statement
· 7. In a reexamination proceeding, Patent Owner may waive the right under 37 C.F.R. 1.530
to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner
waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proof of service in
the manner provided by 37 C.F.R. 1.248, if the request for reexamination was made by a third
party requester, see 37 C.F.R. l.550(f). The Patent Owner may consider using the following
statement in a document waiving the right to file a Patent Owner Statement:
Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
Amendment in Reexamination Proceedings
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Application/Control Number: 90/011,541
Art Unit: 3992
Page 9
8. Patent Owner is notified that any proposed amendment to the specification and/or claims
in this reexamination proceeding must comply with 3 7 CFR 1.530( d)-(j ), must be formally
presented pursuant to 37 CFR §1.52(a) and (b), and must contain any fees required by 37 CFR
§ 1.20( c ); See MPEP §2250(IV) for examples to assist in the preparation of proper proposed
amendments in reexamination proceedings.
Submissions
9. If the patent owner fails to file a timely and appropriate response to any Office action or
any written statement of an interview required under 3 7 CFR § l .560(b ), the ex parte
reexamination proceeding will be terminated, and the Director will proceed to issue a certificate
under 3 7 CFR § 1.570 in accordance with the last office action.
Service of Papers
I 0. After the filing of a request for reexamination by a third party requester, any document
filed by either the patent owner or the third party requester must be served on the other party (or
parties where two or more third party requester proceedings are merged) in the reexamination
proceeding in the manner provided in 37 CFR 1.248. See 37 CFR l.550(f).
Notification of Concurrent Proceedings
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Application/Control Number: 90/011,541
Art Unit: 3992
Page 10
11. 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. 6,725,281 Bl 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.
12. All correspondence relating to this ex parte reexamination proceeding should be directed:
By Mail to:
By FAX to:
By hand:
Mail Stop Ex Parle Reexam Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
(571) 273-9900 Central Reexamination Unit
Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 223 14
Registered users of EFS-Web may alternatively submit such correspondence via the electronic
filing system EFS-Web, at https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html.
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" (i.e., 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.
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Application/Control Number: 90/011,541
Art Unit: 3992
Page 11
. Any inquiry concerning this communication should be directed to Rachna Desai at
telephone number 571-272-4099.
/Rachna S Desai/ Primary Examiner, Art Unit 3992
Conferees:
13
Reexamination Application/Control No.
rn 1111111111111111
90011541 I Certificate Date !
l Requester Correspondence Address: D Patent Owner
I
IRELL & Mf\NELLA LLP 1800 AVENUE OF THE STARS SUITE 900 LOS ANGELES, CA 90067
I LITIGATION REVIEW [8J i·~~·
Case Name
; 5: 1 Ocv240 Microsoft Corporation v. Tivo, Inc
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/RSD/ (examiner initials\
Applicant(s)/Patent Under Reexamination 6,725,281 Certificate Number
[8J Third Party
04/13/2011 Cd ate)
Director Initials
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COPENDING OFFICE PROCEEDINGS
r· TYPE OF PROCEEDING NUMBER
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U.S. Patent and Trademark Office DOC. CODE RXFILJKT
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Application/Control No. Applicant(s)/Patent Under Reexamination
Search Notes 90011541 6,725,281
111 111 111 II Ill Ill 111
Examiner Art Unit
RACHNA S DESAI 3992
SEARCHED
Class I Subclass I Date I Examiner I I I
SEARCH NOTES
Search Notes I Date I Examiner Reviewed Patented File's Prosecution History I 04/13/11 I RSD ~--·~~~~~~~~~~~~~-'-~~~~~~~~~'--~~~~~---'-~~~~--'
INTERFERENCE SEARCH
Class Subclass I Date I Examiner I
[ __ ___._ _ _____,
U.S. Patent and Trademark Office Part of Paper No.: 20110413
15
PTOISBI08a (07-09) Approved for use through 07/3112012. OMB 0651.0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paoerwork Reduction Act of 1995 no persons aie mauired to rewond to a coUacllon of information unless it contains a valid OMB control number.
Substitute for form 1449/PTO Complete ff Known
Application Number 90/011,541-Conf. #54 71
INFORMATION DISCLOSURE Filing Date March 7, 2011
STATEMENT BY APPLICANT First Named Inventor William Zintel ArtUntt 3992
{Use as many sheets as necessaty} Examiner Name R. S. Desai
Sheet I 1 I of I 3 Altomey Docket Number 418278883US1
U.S. PATENT DOCUMENTS
Examiner Cite Document Number Publicalion Date Name of Patentee or
Pages, Columns, Lines, VVhere
Initials*
Examiner Initials*
'Examiner j Signature
No.'
I
Cite No.'
Number-Kind Codez (if l<nown) MM-00-YYYY Applicant of Cited Document
US-5,655,081 08-05-1997 Bonnell etal. US-6 298 378 10-02-2001 Anaal et al. US-6404 743 06-11-2002 Meandziia
FOREIGN PATENT DOCUMENTS Fnminn Patent Document Publication
Name of Patentee or Date Caa'Oy Code' -Numllct'-l<ind c.orJe' ,, /alov.nJ MM-00-YYYY
W0-9847076-A 1 10-22-1998
Appficant of Cited Document
Hewlett Packard Co et al.
'Date Considered
Relevant Passages or Relevant F"igures Appear
Pages, Colurms. Lines, W1ere Relevar.t Passages ,.. Or Relevant FOJn!s Pflpear
"EXAMINER: Initial ii reference considered, whether or not cilation is In conformance with MPEP 609. Draw line through citation It nnt In confcrmance ancl not considered. Include CCIPY of !his form with next communication to applicant. - CITE NO.: Those application(s) wh!ch are marked with an single aslel!Slc (*) next to Ille Cite No. ate not supplied (under 37 CFR 1.98(a)(2)(iii)) because that applicaticn was fi!ecl after June 30, 2003 or Is avaiable In the IFW. ' ApJl!icants unique citation designation number (optlonaQ. • See Kinds Codes of USPTO Patent Documents at www.usoto.gov « MPEP 901.04. 3 Enter Oftice !hat issued Ille document. by the two-letter code (WIPO Stanclanl ST.3). • For Japanese patent documents, the lndiallion of the year of the reign of the Emperor must precede Ille serial number of the patent document. s Kind of document by Ille appropriate ~bots as indicated on the document under WlPO Slandanl ST.16 It possible. 0 Applicant is to place a check mark here 1f English language Tmnsiaticn Is attached.
41827-8883.US01/LEGAL21167272.1
16
PTO/SB/08b (07-09) Approved for use through 07/31/2012. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under lhe Paperworll Reduction Act of 1995, no persons are required to respond to a collection of Information unless it contains a valid OMB control number.
Substitute for form 1449/PTO Complete ff Known
Application Number 90/011, 541-Conf. #54 71
INFORMATION DISCLOSURE Filing Date March 7, 2011
STATEMENT BY APPLICANT First Named Inventor William Zintel
Sheet I
Exami~er
Initials
!Examiner I ~ianalure
ArtUntt 3992 (Use as many sheets as necessal)I) Examiner Name R. S. Desai
Cite No.1
2 I of I 3 Attorney Docket Number 418278883US 1
NON PATENT LITERATURE DOCUMENTS Include name of the author (in CAPITAL LETTERS), tiUe of the article (when appropriate), tiUe of the item (book, magazine, journal, serial, symposium, catalog, etc.). date, page(s), volume-Issue
numberlsl, oublisher. citv and/or countrv where oublished. Paul J. Leach, Dilip C. Naik, "A Common Internet File System (CFIS/1.0) Protocol," Internet Enaineering Task Force December 19 1997 243 oaaes. Jeff Prosise, 'Wicked Code," Microsoft Systems Journal, Vol. 11, No. 10, October 1996, 11 oaaes. "SunNet Manaaer 2.2.3 User's Guide" Sun Microsystems Inc. 1995 270 paQes. "SunNet ManaQer 2.2.3 Reference Manual" Sun Microsystems, Inc. 1995, 382 pages. Sindie M. Feit, SNMP: A Guide to Network Manaqement, McGraw-Hill Inc. 1995, 202 paQes. Woody Leonhard & Barry Simon, The Mother of All IMndows 95 Books, Addison-Wesley Publishim:i Company, 1996, 26 pages. Ed Bott, Usina Windows NTTM Workstation 4.0, Que Corporation 1996, 43 pages. "[MS-CIFS] Common Internet File Systems (CIFS) Protocol Specification," Microsoft Corooration, 2010, 764 oaaes. Carl Malamud, Stacks: Interoperability in Today's Computer Networks, Prentice-Hall, Inc., 1992, oo. 177, 3 paaes. 'Windows CE Service Pack: Network Client Component/Redirector (Sh3.exe)," http://www.microsoft.com, October 28, 1999, £Accessed November3, 20101. 2 pages.
I Date Considered
T2
'EXAMINER: Initial ff reference considered, whelher or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered Include copy ot this form with next communication to applicant
'Applicant's unique citation designation number (optional). 'Applicant is to place a check mark here if English language Translation Is anached.
41827-8883.US01/LEGAL21167272.1
17
PTO/SBIOSb (07-09) Approved for use through 07/3112012. OMB 0651-0031
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under lhe Paperwork Reduction Act or 1995. no persons are required to respond to a calleclion of infonnation unless ii cantains a vaftd OMB cantrol number.
Substitute for fonn 1449/PTO Complete If Known
Application Number 90/011, 541-Conf. #54 71
INFORMATION DISCLOSURE Filing Date March 7, 2011
STATEMENT BY APPLICANT First Named Inventor William Zintel
Sheet I
Exami~er Initials
!Examiner I ~ignature
Art Unit 3992 (Use as many sheets as necessary)
Examiner Name R. S. Desai
Cite No.1
3 I 01 I 3 Attorney Docket Number 418278883US1
NON PATE:U LITERATURE DOCUMENTS Include name of the author (in CAPITAL LETTERS). title of the article (when appropriate), title of the item (book, magazine, journal, serial, symposium, catalog, etc.). date, page(s), volume-issue
number(sl cublisher citv andlor countrv where cublished. Case et al., "A Simple Network Management Protocol," Internet Engineering Task Force, 1990 72 oaaes. "NetView for OS/2 as an SNMP Manager," IBM Corporation, December 1994, pp. 1-8, 75-93, 330 oaaes.
'Date · ~onsidered
r2
•EXAMINER: lnttial H reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation ~not in conformance and not considered Include copy of this fonn with next cammunlcalion to applicant.
'App!icanfs unique citation designation number (cptlona!). 'Applicant is to place a check mark here ff English language Translatlon Is attached.
41827-8883.US01/LEGAL21167272.1
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