Unitep StaTEs PATENT AND TRADEMARK OFFICE APFLICATIONNO, FILING DATE FIRST NAMED INVENTOR ATTORNEY BOCKET NO, | CONFIRMATION NO, 90701413 onnsaoi8 657093, 45233-00028? 9957 2903 190 osavao1e cases} Schwabe Williamson & Wyatt PACWEST CENTER, SUITE 1900 1211 SW FIFTH AVENUE PORTLAND, OR 97204 REICKEL, OHNE ART ONT PAPER NUMBER "wie MAIL DATE DELIVERY HODE osninoi8 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-S0A (Rev. 08107)UNITED STATES PATENT AND TRADEMARK OFFICE Commisioner for Panis ‘United Sas Patent and Traerark fice P.0.B0x 1450 Alesandi, VA 22315-1450 ‘wap ge ‘THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS Date: FISH & RICHARDSON P.C. P.O. BOX 1022 MAY 2 1 2018 MINNEAPOLIS, MN 55440-1022 EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM REEXAMINATION CONTROL NO. : 90014113 PATENT NO. : D657093 ART UNIT : 2900 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)).‘Control No, Patent Under Reexamination Order Granting Request For Eu) peas) Ex Parte Reexamination Examiner ‘AnUnit [AIA Status JACK REIGKEL 2014 No ~The MAILING DATE of this communication appears on the cover sheet with the correspondence address The request for ex parte reexamination filed 13 March 2018 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)@ PTO-892, b)_-—- PTO/SB/0B, —c)_ Other: IDS (13 March 2018) 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. [SACK REICKELT EVIN KEITH RUDZINSKI/ Examiner, Art Unit 2914 [Primary Examiner, Art Unit 2911 ‘ce Requester (i hird party requester, ProtdriGmrew- 01-19) Office Action in Ex Pate Reexamination Part of Paper No, 20180836Application/Control Number: 90/014,113 Page 2 ‘Art Unit: 2914 DECISION GRANTING EX PARTE REEXAMINATION A substantial new question of patentability affecting the claim of U.S. Patent No. D657,093 is raised by the request for ex parte reexamination, References Cited in Request for Reexamination ‘The requester presented the following prior art publications in the request for reexamination of the single claim of U.S. Patent No. D657,093: ZOo™7™ moO w > USS. Patent No. 5,626,949 to Blauer et al. published 6 May 1997 (Ex. H) Sheico Catalog published 1996 (Ex. 1) USS. Patent Pub. No. 2011/0083246 to Vitarana published 14 April 2011 (Ex. J) USS. Patent No. 5,750,242 to Culler published 12 May 1998 (Ex. K) USS. Patent Pub. No. 2006/0135019 to Russell et al. published 2 June 2006 (Ex. L) USS. Patent Pub. No. 2007/0238383 to Sheehan et al. published 11 October 2007 (Ex. R) U.S. Patent No. 3,093,502 to Drelich published 11 June 1963 (Ex. S) USS. Patent No. D601,813 to Rosato et al. published 13 October 2009 (Ex. T) USS. Patent No. D220,863 to Fontanille published 1 June 1971 (Ex. U) USS, Patent No. D329, 131 to Ostberg published 8 September 1992 (Ex. V) U.S. Patent Pub. No. 2011/0030121 to Smalls published 10 February 2011 (Ex. W) Substantial New Question of Patentability The claim in D657,093 is directed to the design for heat reflective material. The following cited references raise substantial new questions of patentability as to the claim of ‘093 for the reasons stated:Application/Control Number: 90/014,113 Page 3 Art Unit: 2914 A. US, Patent No. 5,626,949 to Blauer et al. published 6 May 1997 (Ex. H) ‘The patterned material shown in FIG. 5 of Blauer et al. shows a design for material that is substantially the same as that of the claimed design in ‘093 according to the test of anticipation, Specifically, the claim in ‘093 and FIG. 5 of Blauer et al. show a patterned material made of repeating, ‘wave-shaped lines with an alternating contrast of appearance between the lines. The patterned of material of Blaver et al. was not considered nor addressed in the prior examination of the patent or in a final holding of invalidity by the Federal Courts. There is a substantial likelihood that a reasonable examiner would consider Blauer et al. important in deciding whether or not the claim is patentable. B. Sheico Catalog published 1996 (Ex. 1) The patterned material shown in CPO7 of the Sheico Catalog shows a design for material that is substantially the same as that of the claimed design in ‘093 according to the test of anticipation. Specifically, the claim in ‘093 and the Sheico Catalog show a patterned material made of repeating wave- shaped lines with an alternating contrast of appearance between the lines. ‘The patterned of material of the Sheico Catalog was not considered nor addressed in the prior examination of the patent or in a final holding of invalidity by the Federal Courts. ‘There is a substantial likelihood that a reasonable examiner would consider the Sheico Catalog, important in deciding whether or not the claim is patentable. It is noted that in the three pages of the Sheico Catalog scanned and presented as Exhibit I, there is not adate present. The date listed in the accompanying IDS is 1996; the date would need to be vi in the reference for it to be considered as prior art.Applicativn/Control Number: 90/014,113, Page 4 ‘Art Unit: 2914 C. U.S. Patent Pub. No. 2011/0083246 to Vitarana published 14 April 2011 (Ex. J) FIG. 9 of Vitarana shows a design for a material with a row of thin wave-shaped lines within a border. The overall appearance of Vitarana is not substantially the same as that of the “093 patent as required for anticipation because an ordinary observer would not mistake a bordered background including a row of thin wave-shaped lines with repeating and similarly-proportioned wave-shaped lines with an alternating contrast of appearance of the ‘093 design. Because Vitarana was published after the filing date of the application that resulted in the ‘093 patent, Vitarana is not an applicable reference for an obviousness rejection, as either a primary or secondary reference. For the above reasons, the request for supplemental examination fails to establish that there is a substantial likelihood that a reasonable examiner would consider the teachings of Vitarana taken alone or in combination with other teachings important in deciding whether or not the sole claim is patentable D. U.S. Patent No. 5,750,242 to Culler published 12 May 1998 (Ex. K) Culler shows a patterned material with contrasting stripes. Culler does not raise a SNQ as to the sole claim. The overall appearance of Culler is not substantially the same as that of the ‘093 patent as required for anticipation because an ordinary observer ‘would not mistake the straight parallel stripes with the wave-shaped stripes included in the “093 design. The overall appearance of Culler is not basically the same as that of the ‘093 patent as required for obviousness because the wavy nature of the lines are integral to the ‘093 design that are not present in the reference. Therefore, those missing aspects prevent Culler from being a starting point in an obviousness analysis because the reference is not basically the same as the claimed designApplication/Contral Number: 90/014,113 Page 5 Art Unit: 2914 The ividual features illustrated in the Culler design, that are not merely curmulative to similar prior art features already fully considered by the Office in a previous examination of the claim, make the reference unimportant as a secondary reference in an obviousness analysis because they are not similar to those of the ‘093 patent. Though there is heat-reflective material, it does not have the same appearance as the patterned material in the ‘093 patent. For the above reasons, the request for supplemental examination fails to establish that there is a substantial likelihood that a reasonable examiner would consider the teachings of Culler taken alone or in ‘combination with other teachings important in deciding whether or not the sole claim is patentable. E. US. Patent Pub. No, 2006/0135019 to Russell et al. published 2 June 2006 (Ex. L) Russell discloses a heat-reflective liner material. Russell does not raise a SNQ as to the sole claim. The overall appearance of Russell is not substantially the same as that of the ‘093 patent as required for anticipation because an ordinary observer ‘would not mistake the layered material with the wave-shaped stripe pattern included in the ‘093 design. ‘The overall appearance of Russell is not basically the same as that of the “093 patent as required for obviousness because the wave-shaped stripe pattern is integral to the ‘093 design that are not present in the reference. Therefore, those missing aspects prevent Russell from being a starting point in an obviousness analysis because the reference is not basically the same as the claimed design. ‘The individual features illustrated in the Rsssell design, that are not merely cumulative to similar prior art features already fully considered by the Office in a previous examination of the claim, make the reference unimportant as a secondary reference in an obviousness analysis because they are not similar to those of the “093 patent. Though there is heat-reflective material, it does not have the same appearance as the pattemed material in the ‘093 patent.Application/Control Number: 90/014,113 Page 6 Art Unit: 2914 For the above reasons, the request for supplemental examination fails to establish that there is a substantial likelihood that a reasonable examiner would consider the teachings of Russell taken alone or in combination with other teachings important in deciding whether or not the sole claim is patentable. F, USS, Patent Pub. No. 2007/0238383 to Sheehan et al. published 11 October 2007 (Ex. R) ‘The patterned material shown in FIG. 7 of Sheehan et al. shows a design for material that is, substantially the same as that of the claimed design in ‘093 according to the test of anticipation. Specifically, the claim in ‘093 and FIG. 7 of Sheehan et al. show a patterned material made of repeating wave-shaped lines with an alternating contrast of appearance between the lines. ‘The patterned of material of Sheehan et al. was not considered nor addressed in the prior examination of the patent or in a final holding of invalidity by the Federal Courts There is @ substantial likelihood that a reasonable examiner would consider Sheehan et a important in deciding whether or not the claim is patentable, G. USS. Patent No. 3,093,502 to Drelich published 11 June 1963 (Ex. S) The patterned material shown in FIG. | of Drelich shows a design for material that is substantially the same as that of the claimed design in ‘093 according to the test of anticipation Specifically, the claim in ‘093 and FIG. | of Drelich show a patterned material made of repeating wave- shaped lines with an alternating contrast of appearance between the lines. ‘The patterned of material of Drelich was not considered nor addressed in the prior examination of the patent or in a final holding of invalidity by the Federal Courts. ‘There is a substantial likelihood that a reasonable exariiner would consider Drelich important in deciding whether or not the claim is patentable.Application/Control Number: 90/014,113 Page 7 H, USS. Patent No. D601,813 to Rosato et al. published 13 October 2009 (Ex. T) ‘The patterned material shown in Rosato etal. shows a design for material that is substantially the same as that of the claimed design in “093 according to the test of anticipation. Specifically, the claim in “093 and Rosato etal. show a patterned material made of repeating wave-shaped lines with an alternating contrast of appearance between the lines The patterned of material of Rosato etal. was not considered nor addressed in the prior examination of the patent or in a final holding of invalidity by the Federal Courts, ‘There is a substantial likelihood that a reasonable examiner would consider Rosato et al. important in deciding whether or not the claim is patentable, 1. US. Patent No. D220,863 to Fontanille published 1 June 1971 (Ex. U) Fontanille shows a patterned material with contrasting stripes ‘The overall appearance of Fontanille is not substantially the same as that of the ‘093 patent as required for anticipation because an ordinary observer would not mistake a material with gaps with the two-toned material included in the “093 design. The overall appearance of Fontanille is not basically the same as that of the ‘093 patent as required for obviousness because the contrasting tones in the material are integral to the 093 design that are not present in the reference. Therefore, those missing aspects prevent Fontanille from being a starting point in an obviousness analysis because the reference is not basically the same as the claimed design. Fontanille contains a design for patterned material that could serve as a secondary reference in an obviousness analysis because said reference shows individual design features that are similar to those of the claimed design in ‘093. Specifically, the wave-shaped stripes in Fontanille show similar proportional thickness and amplitude to the wave-shaped stripes in ‘093. The reference is so related to the claimedApplication/Control Number: 90/014,113 Page 8 Art Unit: 2914 design in ‘093 that the appearance of the material with wave-shaped stripes would suggest its application to a primary reference in an obviousness analysis, Fontanille was not considered nor addressed in the prior examination of the patent. There is a substantial likelihood that a reasonable examiner would consider Fontanille important in deciding whether or not the claim is patentable. I. USS, Patent No. D329,131 to Ostberg published 8 September 1992 (Ex. V) Ostberg discloses a shoe sole. Ostberg does not raise a SNQ as to the sole claim. The overall appearance of Ostberg is not substantially the same as that of the ‘093 patent as required for anticipation because an ordinary observer ‘would not mistake the shoe sole with the patterned material included in the “093 design. The overall appearance of Ostberg is not basically the same as that of the ‘093 patent as required for obviousness because the patterned material integral to the ‘093 design that is not present in the reference. Therefore, those missing aspects prevent Ostberg from being a starting point in an obviousness analysis because the reference is not basically the same as the claimed design. The individual features illustrated in the Ostberg design, that are not merely cumulative to similar prior art features already fully considered by the Office in a previous examination of the claim, make the ilar to reference unimportant as a secondary reference in an obviousness analysis because they are not si those of the ‘093 patent. Though there are wave-shaped cuts, it does not have the same appearance as the patterned material in the 093 patent. For the above reasons, the request for supplemental examination fails to establish that there is a substantial likelihood that a reasonable examiner would consider the teachings of Ostberg taken alone or in combination with other teachings important in deciding whether or not the sole claim is patentable. K. U.S. Patent Pub. No. 2011/0030121 to Smalls published 10 February 2011 (Ex. W)Application/Control Number: 90/014,113 Page 9 Art Unit: 2914 ‘Smalls shows a glove with areas of patterned material with wave shapes. The overall appearance of Smalls is not substantially the same as that of the ‘093 patent as required for anticipation because an ordinary observer would not mistake a bordered background including a row of wave shapes with the repeating two-toned material in the ‘093 design. The overall appearance of Smalls is not basically the same as that of the ‘093 patent as required for obviousness because the contrasting tones in the material are integral to the ‘093 design that are not present in the reference. Therefore, those missing aspects prevent Smalls from being @ starting point in an obviousness analysis because the reference is not basically the same as the claimed design. ‘Smalls contains a design for patterned material that could serve as a secondary reference in an obviousness analysis because said reference shows individual design features that are similar to those of the claimed design in ‘093. Specifically, the wave shapes in Smalls show similar proportional thickness to the wave-shaped stripes in ‘093. The reference is so related to the claimed design in ‘093 that the appearance of the material with wave shapes would suggest its application to a primary reference in an obviousness analysis ‘Smalls was not considered nor addressed in the prior examination of the patent. There is a substantial likelihood that a reasonable examiner would consider Smalls important in deciding whether or not the claim is patentable. Conclusion Due to the aforementioned reasons, the examiner has concluded that a substantial new question of patentability is found and reexamination is warranted, Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant” and not to parties in a reexamination proceeding Additionally, 35 U. . 305 requires that ex parte reexamination proceedings "will be conducted withApplication/Control Number: 90/014,113 Page 10 Art Unit: 2914 special dispatch" (37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c). All correspondence relating to this ex parte reexamination proceeding should be directed: By Mailto: Mail Stop Ex Parte Rexam Central Reexamination Unit ‘Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 ByFAXto: — (571)273-9900 Central Reexamination Unit Byhand: Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314Application/Control Number: 90/014,113 Page 11 Art Unit: 2914 Any inquiry concerning this communication should be directed to the Central Reexamination Unit at telephone number (571) 272-7705. HACK REICKEL/ Examiner, Art Unit 2914 Conferees: /KEVIN KEITH RUDZINSKU Primary Examiner, Art Unit 2911 Joel Sincavage /JS/