Reexamination Proceeding

by Stan Protigal

The purpose of this document is to provide practitioners with a working sample of a reexamination preceding.

Contents

this page:
other page at this website, contains prosecution documents:
other pages at this site:

Contents Description

This particular reexamination case is interesting because all of the claims with the amendments originally proposed on filing of the Reexamination request were allowed. Nevertheless, the applicant for undisclosed reasons declined to accept the patent.

All documents displayed herein are public documents. The reason for termination of prosecution after obtaining full allowance of the claims under reexamination and other business decisions cannot be disclosed.

Synopsis

This patent defined a CMOS circuit in which I/O lines are precharged to preferred voltage levels in order to avoid latch up. The patent issued in October, 1990. By October, 1992 it was determined that the patent should be limited specifically to inter alia a CMOS circuit implementation.

(In addition, the term "signal lines" was changed to "input/output lines" which more closely followed the description in the Specification, and the term "precharge transistors" was changed in two dependent claims.)

Description of a Reexamination

35 U.S.C. 301 - Any person ... may file a request for Reexamination of any claim on the basis of any prior art cited ... . The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. ...

It is possible to narrow the scope of claims with a reexamination preceding. One advantage of the preceding for the patent owner is that the U.S. Patent Examiner makes a determination of the validity of such an amended claim in view of the prior art. Such a determination gives the patent a legal presumption that it is valid over that cited art.

In a reissue proceeding, the Examiner's evaluation of the patent in view of newly-presented prior art is not given as a matter of statutory right.

The reissue proceeding is intended to permit the patent owner to refine his/her rights as set forth in the patent. The reexamination proceeding is intended to permit anyone to attack a patent. Patent owners often will do so in order to place a patent in better condition for enforcement and litigation.

Chronology

July 22, 1988
Patent application describing an anti-latchup circuit used on CMOS DRAMs filed on behalf of Ward Parkinson and Wen Foo Chern. The attorney was Stan Protigal, who was house counsel for Micron Technology. Stan Protigal had prosecuted both the original application and the reexamination.
October 9, 1990
U.S. Patent Number 4,962,326 issues after initial rejection and amendments to the claims.
October, 1990 to October, 1992
Micron legal makes a determination that in order to place the patent in better condition for assertion of patent rights, the patent should be limited to a CMOS circuit. Such changes are typically accomplished by Reissue patents. The U.S. patent law also provides for a reexamination preceding, which does not require a showing of unforeseen circumstances.

Unlike a reissue patent, a reexamination patent specifically provides for the citation of additional prior art under which a determination of patentability is made. In this case it was desired to limit the scope of the patent to CMOS circuitry. Stan Protigal determined that this could be achieved by requesting a reexamination.

Essentially, attorney Protigal determined that a desire for revision could best be expressed by attacking his client's patent. The desired result was fully achieved in that the revised claims and changes were allowed by the Examiner. This of course required complete coverage of the subject matter in the original patent -- the document was complete but overbroad in its claim coverage.

October 20, 1992
Request for Reexamination filed with U.S. Patent and Trademark Office. At the time of the filing of the request, attorney Stan Protigal filed an amendment to the claims and remarks, an Information Disclosure Statement regarding prior art and a drawing change. Since the additional documents were not required at the time of the Request for Examination, the amendment was considered to be a Preliminary Amendment.

June 2, 1993
U.S. Patent Examiner Roseen issues Notice of intent to issue "confirmation" that all of Claims 1-7 are allowable. At this point, a Reexamined Patent would have issued in due course.

June 28, 1993
Formal drawings filed, representing the change previously approved.

July 20, 1993
Attorney submitted a letter requesting abandonment of the application. The reasons for the request to abandon the case are not part of the public record and so we have a patent in which the U.S. Patent Examiner approved all requested changes, but was abandoned for undisclosed reasons. Micron made a determination not to attempt to enforce this patent.

August 3, 1993
Examiner Roseen issues Notice of Intent to Issue Reexamination Certificate with all claims canceled.

Claims

The Claims as Amended are presented in the Preliminary Amendment, and were accepted by the U.S. Patent Examiner as proposed in that amendment.

Definition of Terms

CMOS
Complementary Metal Oxide Semiconductor - the semiconductor chip, which is typically doped to have either "n-type" or "p-type" minority carriers, is subsequently doped to have "wells" of the opposite type of doped material. This provides certain advantages in terms of speed and circuit density of the semiconductor part.

A definition of CMOS circuitry as applies to this invention is found within the Preliminary Amendment

latchup
as used here, an event caused by the CMOS wells acting to form a short circuit under certain voltage conditions.

DRAM
Dynamic Random Access Memory - memory in which bit values are stored as charge levels in capacitive devices. It is called "dynamic" because the bits must be read and refreshed on an ongoing basis, so that in addition to being volatile, will quickly lose its value without being refreshed on an ongoing basis. The refresh operation is accomplished with a DRAM controller. In contrast, an SRAM is volatile memory, but will retain its values so long as power is applied to it.


Intellectual Property Firms who Determined Internet Spam is a Good Marketing Tool

This list is apparently compiled by someone who gets pretty much the same spam I do! If you're tired of working with legitimate businesses, you might want to try these spammers:

List of IP Firms Sending Spam (the link is to http://firmsactingunethically.podserver.info/ip_spammers.html)

That list also has a link to a directory (Piperpat) useful for finding legitimate IP firms (www.piperpat.co.nz search for"ip agents") Most of these are not on the list of spammers (but some are). Nevertheless, the directory is useful, since most are reputable firms and not spamhaus operations.

SCN Home Page
(if that doesn't work, try http://www.scn.org/)
Prepared by Stan Protigal Comments or questions: email me

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