Happy New Year!

There are 22 claims in our '774 patent. After a little DD, I found out the re-exam of the patent involves only claims 1-5 and 18-19. I haven't seen any documents on the USPTO website from DM in response to the re-exam. The last available document is dated 11/18/10. Since it is an ex parte re-exam, DM appears to have purposefully not submitted a response to preclude the third-party requester (Patterson & Sheridan, LLP) from any further participation in the re-exam process.

From the USPTO website:

• Ex parte reexaminations, once initiated, involve only the patentee and the USPTO. If a third party files the request for reexamination, the patent owner may submit a brief or proposed amendment, or refrain from taking any action at all. If no response is submitted from the patentee, the third party is precluded from any further participation in the reexamination. If a response is submitted by the patentee, the third party initiator may file a response to the patentee’s statement, at which point the third parties’ substantive participation ends. There are no additional opportunities for the third party to submit information to the USPTO, and the third party has no right to appeal the decision in an ex parte reexamination.

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I uploaded the 83-page document from Patterson & Sheridan, LLP requesting the re-exam to my box.net site. The crux of the document are eleven Substantial New Questions of Patentability (SNQP's). They are as follows:

SNQP #1: Whether "Development of an IC-Card Sound Recorder" (Kimura et al.) (Exhibit 2) anticipates claims 1, 2, 18 and 19 of the '774 patent;

SNQP #2: Whether EP Patent Application Publ. No. 0536792 A2 (Sharp) (Exhibit 3) anticipates claims 1, 2 and 19 of the '774 patent;

SNQP #3: Whether U.S. Patent No. 5,442,768 (Sudoh et al.) (Exhibit 4) anticipates claims 1, 2 and 19 of the '774 patent;

SNQP #4: Whether claims 1, 2, 18 and 19 of the '774 patent are obvious in view of "Development of an IC-Card Sound Recorder" (Kimura et al.) (Exhibit 2);

SNQP #5: Whether claims 1, 2 and 19 of the '774 patent are obvious in view of EP Patent Application Publ. No. 0536792 A2 (Sharp) (Exhibit 3);

SNQP #6: Whether claims 1, 2, and 19 of the '774 patent are obvious in view of U.S. Patent No. 5,442,768 (Sudoh et al.) (Exhibit 4);

SNQP #7: Whether claim 18 of the '774 patent is obvious in view of EP Patent Application Publ. No. 0536792 A2 (Sharp) (Exhibit 3) and UK Publ. No. GB 2253078A (Radamec) (Exhibit 5);

SNQP #8: Whether claim 18 of the '774 patent is obvious in view of U.S. Patent No. 5,442,768 (Sudoh et al.) (Exhibit 4) and UK Publ. No. GB 2253078A (Radamec) (Exhibit 5);

SNQP #9: Whether claims 3-5 of the '774 patent are obvious in view of "Development of an IC-Card Sound Recorder" (Kimura et al.) (Exhibit 2) and U.S. Patent No. 5,267,218 (Elbert) (Exhibit 6);

SNQP #10: Whether claims 3-5 of the '774 patent are obvious in view of EP Patent Application Publ. No. 0536792 A2 (Sharp) (Exhibit 3) and U.S. Patent No. 5,267,218 (Elbert) (Exhibit 6);

SNQP #11: Whether claims 3-5 of the '774 patent are obvious in view of U.S. Patent No. 5,442,768 (Sudoh et al.) (Exhibit 4) and U.S. Patent No. 5,267,218 (Elbert) (Exhibit 6).