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IN RE REEXAM PATENT NO. 6,826,744
AMDT. DATED MAY 31, 2012
REPLY TO OFFICE ACTION OF APRIL 18, 2012
CONTROL NO. 90/009,982
ATTY DOCKET NO. 2556.205
REMARKS/ARGUMENTS
Patent Owner appreciates the Examiner's indication that Claims 6,8, 19,30,32,41,50, and 51 are patentable and/or confirmed.
Patent Owner will address each new basis for the rejection ofthe pending claims, below. Patent Owner may not address each dependent claim, on the understanding that when an independent claim is deemed patentable, then all its dependent claims, which may contain additional patentable subject matter, are also deemed patentable.
Patent Owner has carefully considered the application in view ofthe Examiner's action and, in light of the following remarks, respectfully requests the issuance of a Certification of Patentability of all pending claims. In the event that the Examiner finds any issues that might preclude the issuance of a Certification of Patentability, Patent Owner respectfully requests an interview on these issues.
Status of Litigation
In an effort to enforce its patent rights, on April 18, 2007, Vertical Computer Systems, Inc. ("Patent Owner") filed a lawsuit against Microsoft Corporation for patent infringement of the instant patent, Patent No. 6,826,744 (the '744 Patent) in the Eastern District of Texas. The case settled on July 24,2008, prior to a Markman hearing.
In a continuing effort to enforce its patent rights, and pursuant to 37 CFR 1.565(a), on November 15,2010, Patent Owner sued LG Electronics Mobilecomm USA, Inc., LG Electronics Inc., Samsung Electronics CO. LTD, and Samsung Electronics America, Inc., for infringement ofthe '744 Patent as well as Patent No. 7,716,629 (the '629 Patent, filed November 29,2004, and issued May 11,2010, as a continuation ofthe '744 Patent). That litigation is still pending and discovery has not yet commenced. A Markman hearing has been scheduled for 2013.
Patent Owner entered into negotiations with Interwoven, Inc., who Patent Owner believed was infringing the instant patent, the '744 Patent, as well as the continuation patent, the '629 Patent. After months of failed negotiations between the companies, Interwoven filed suit for declaratory judgment in the U.S. District Court for the Northern District of California, San Francisco division, with respect to the instant patent, the '744 Patent, as well as the continuation patent, the '629 Patent.
Since the inception ofthe lawsuit, Interwoven has amended its Complaint and Vertical has answered with a counter-claim for patent infringement. The parties have begun discovery, fully briefed the issue of claim construction, and participated in a Markman hearing. Following the Markman hearing, the Court issued a claim construction order on December 30,2011, largely rejecting Interwoven's limiting arguments and construing most ofthe contested terms according to their plain and ordinary meanings. Four business days later, on January 6,2012, Interwoven filed a request for the instant ex parte reexamination proceeding for both patents-in-suit, and reexamination ofboth patents has subsequently been granted. Subsequently, Interwoven moved to stay all judicial proceedings pending the outcome ofthis ex parte reexamination. On March 8, 2012, the District Court for the Northern District of California denied the motion for stay.
Rejections under 35 U.S.CO l02(b) and 35 U.S.CO l03(a)
Claims 1,2,4,5,7,11,18,21,22,25,26,28,29,31,33,40,44, and 47 stand rejected under 35 US.C. 102(b) as being anticipated by Borland® Delphi for 3 for Windows 95 & Windows NT, User's Guide", 1997; 478 pages (hereinafter "Borland"). Claims 9, 10,22-25,44Â49, and 52 stand rejected under 35 US.C. 103(a) as being obvious over the combination of Borland in view of Morgan, Bryan et al.; "Microsoft Visual J++ Unleased"; 1997; Sams.net Publishing; 840 pages (hereinafter "Morgan"). Claims 3, 27, and 53 stand rejected under 35 US.C. 103(a)asbeingobviousoverthecombination ofBorlandinview ofUS.PatentNo. 5,895,476 to Orr ("hereinafter "Orr"). In response, Patent Owner respectfully traverses.
Arbitrary Object Called by Name Only
Independent Claims 1 and 26 recite "arbitrary objects." Among other attributes, arbitrary objects may be called by name only, that is, with or without parameters, because there is no need to explicitly pass parameters (see, e.g., col. 5, lines 43-56), or even a three letter extension appended to a name, such as .GIF or .lPG, even if one or more parameters are required to execute the arbitrary object. Furthermore, in a Markman Order (copy appended herewith) concerning the interpretation of an arbitrary object, US. District Judge Richard Seeborg held that an arbitrary object is "an object ... that may be, but need not be, accessed solely by name ...." (page 17, line 25 -page 18, line 2).
In clear contrast to arbitrary objects, prior art object-oriented systems, such as Borland, utilize "classic" objects (e.g., functions or procedures). By way of background, Borland references Delphi which was a developmental platform for programmers to develop applications in the Pascal computer language. Pascal is a computer language invented in France, and brought to the US by a French Citizen, Philippe Khan, who moved to California, and founded Borland. Pascal has always been the flagship development language of Borland. Pascal was not originally an object-oriented computer language, but when Delphi was created, Borland modified Pascal to be object-oriented and called it "Object Pascal." All objects developed within Delphi are written in Object Pascal. If parameters are required to execute such objects, then the correct parameters must be passed when the object is called and hence cannot be called by name only. By way of example, but not limitation, Borland at pages 12-12 to 12-14, in the section entitled "Calling Procedures with Parameters" depicts a LoadFromFile method which is declared in a TStrings object as:
procedure LoadFromFile (const FileName: string);
Borland continues: " ... When you call the LoadFromFile method, you specify which file you want loaded by specifying a string as the FileName parameter. This code would read the MYFILE.TXT file into the lines of a memo control:"
Memol.Lines.LoadFromFile ('MYFILE.TXT');
From the foregoing, it is clear that Borland requires a parameter when an object (e.g., the procedure in the above example) is called. Ifthe Borland object were called without the FileName parameter, it would fail. In clear contrast to Borland, ifthe above procedure were an arbitrary object, it could be successfully called without specifying a FileName parameter, such as MYFILE.TXT.
In addition to the foregoing, the caller of a Borland object must also know what to expect in return (which would be nothing in the case ofprocedures; only functions return anything). Accordingly, it can be appreciated that such objects recited in Borland are not arbitrary objects, but may be referred to as "classic" objects (see also the '744 Patent, col. 5, line 62 -col. 6, line 5).
Interchangeability, or Swappability, ofArbitrary Objects
Because, according to principles ofthe '744 Patent, arbitrary objects may be called by name only, arbitrary objects of any type can also be readily replaced with another arbitrary object of another type, i.e., arbitrary objects are interchangeable, or swappable, with each other, regardless oftype. This understanding of arbitrary objects in independent Claims 1 and 26 is supported in the specification at, e.g., col. 3, line 58 -col. 4, line 6, col. 4, lines 39-42, and col. 6, lines 13-20. Furthermore, in a Markman Order (copy appended herewith) concerning the interpretation of an arbitrary object, u.s. District Judge Richard Seeborg held that "Arbitrary objects, therefore, must be interchangeable ... " (page 15, line 15; see also, page 17, line 25 Âpage18,line2). Theswappability ofarbitraryobjectsregardless oftypeisstillmoreexplicitly recited in dependent Claims 22 and 44.
In clear contrast to the interchangeability or swappability of arbitrary obj ects, because prior art object-oriented systems, such as Borland and Morgan utilize "classic" objects which cannot be called by name only, and require the passing ofparameters and knowing what to expect in return, objects are not interchangeable or swappable with other objects of different types. Rather, Borland replaces one object type in a project with another object ofthe same type. Form objects, function objects, and content objects are all "swapped" (i.e., added or removed) to and from a project, but that is not the same as, e.g., swapping a form object for a content object or a function object. Morgan does not cure this deficiency ofBorland, but is rather similar to Borland in that it also integrates different types of objects into a given application to provide functionality. That is, a form object or content object can be used in functionality, but again, that is not the same as swapping content object of form object for a functional object.
Conclusion
In view ofthe foregoing, it is apparent that none of the cited references, either singularly or in any combination, teach, suggest, or render obvious the unique combination now recited in independent Claims 1 and 26 that arbitrary objects may be called by name only and that one arbitrary object is interchangeable, or swappable" with arbitrary objects of different types. It is therefore respectfully submitted that Claims 1and 26 clearly and precisely distinguish over the cited references in a patentable sense, and are therefore allowable over those references and the
remaining references of record. Accordingly, it is respectfully requested that the rejection of Claims 1 and 26 under 35 U.S.C. 102(b) as being anticipated by Borland, and under 35 U.S.C. § 103(a) as being unpatentable over Borland in view ofMorgan, be withdrawn and that the patentability of Claims 1 and 26 be confirmed.
Claims 2-25 and 27-53 depend from and further limit independent Claims 1 and 26, in a patentable sense, and, for this reason and the reasons set forth above, are also deemed to be patentable. Accordingly, it is respectfully requested that dependent Claims 2-25 and 27-53 be confirmed as patentable, as well.
New Claims
New independent Claims 54 and 55 have been added, representing granted Claims 1 and 26, respectively, amended to include the limitations of Claims 22 and 44, respectively, and thereby add no new matter to the application. For the reason that Claims 54 and 55 further limit independent Claims 1 and 26, in a patentable sense, and for the further reasons set forth above, Claims 54 and 55 are also deemed to be patentable. Accordingly, it is respectfully requested that independent Claims 54 and 55 also be confirmed as patentable.
Closing Remarks
Patent Owner has now made an earnest attempt to show that all claims ofthe '744 Patent are valid and patentable. Therefore, with appreciative acknowledgement of Examiner Nalven's confirmation of Claims 6, 8, 19, 30, 32, 41, 50, and 51, Patent Owner respectfully requests, for the reasons set forth herein and for other reasons clearly apparent, confirmation ofthe patentability of Claims 1-5,7,9-11,18,21-29,31,33,40,44-49, and 52-55 so that a timely Certificate of Confirmation may be issued in this case.
Required fees for new independent Claims 54 and 55 are submitted herewith. The Commissioner is hereby authorized to charge any required fees due (other than issue fees), and to credit any overpayment made, in connection with the filing ofthis paper, to Deposit Account No. 50-2032 ofScheef & Stone, L.L.P..
Should the Examiner have any questions or desire clarification of any sort, or deem that any further amendment is desirable to place this application in condition for allowance, the Examiner is invited to telephone the undersigned at the number listed below.
Respectfully submitted, SCHEEF & STONE, L.L.P. /Jack D. Stone, Jr./
(214) 706-4207 Fax: (214) 706-4242 jack.stone@solidcounsel.com ">
