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`PATENT APPLICATI N
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`Attorney Docket No.: 482782585
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`, a?/
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`APPLICANTS:
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`THOMPSON et al.
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`/4
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`SERIAL NO.:
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`09/419,266
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`GROUP ART UNIT: 2761
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`FILED:
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`15 October 1999
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`EXAMINER: COLON, C. M.
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`TITLE:
`W 0
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`W
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`SYSTEM AND METHOD ”FOR PERFORMING
`SUBSTITUTE FULFILLMENT
`V
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`Commissioner of Patents
`Washington, DC. 20231
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`/’
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`REQUEST FOR RECONSIDERATION
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`Dear Sir:
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`In reply to the outstanding Final Office Action dated 19 February 2003 Applicants submit
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`6 following amendments and remarksf
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`WSHLIBOI 15237091
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`Attorney Docket No.2 48278.25 8599
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`ELIE—911M:
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`Please cancel claims 6, 10-14, 16, 22, 23, and 25-27 Without prejudice or disclaimer.
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`e rewrite claims 15, 17, 18, 20, 2-1, 24, and 28 and add claims 29—32 as follows:
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`further configured to receive a m sage via the at least one commun cation link and to forward
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`workers will be filling in for a give organization and to transmit the generated list of substitute
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`workers and names of the absent w rkers who the substitute workers will be filling in for to the
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`given organization via the at least 0 e communication link.
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`17.(AnarmUDED) Thes
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`stitute fulfilhnent system of 0 im 32 wherein the server is
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`the received message to the subst' ute worker who agrees to fill in for the absent worker via the
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`at least one communication link.
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`18.
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`(AMENDED) The ubstitute fulfillment system of claim 31 wherein each worker
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`record comprises worker identi cation, contact, position, qualification, and substitute selection
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`information.
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`20. (AMENDED) The ubstitute fulfillment system of claim 31 wherein each substitute
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`worker
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`record comprises
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`su titute identification, contact, qualification, and availability
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`information.
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`2L
`(AMENDmm
`he substitute fulfillment system of claim 31 wherein the
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`organizations are unaffiliated.
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`24. (AMENDED) The substitute fulfillment system of claim 31 wherein the workers are
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`teachers and the substitute wor ers are substitute teachers.
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`(AMENDED) A method for performing substitute fulfillment for a plurality of
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`g %.
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`different organizations comprising:
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`receiving absentee information representing an absent worker via at
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`least one
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`communication link;
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`generating and posting a list of one or more positions of one or more absent workers that
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`‘ need to be filled by one or more substitute workers on a website;
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`receiving a response by a substitute worker selecting a posted position on the website via
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`an Internet communication link; and
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`posted position to fill in for the absent worker.
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`securing via the Internet communication link the substitute worker who selected the
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`26. (NEW) The method ofclaim’26wherein the one or more absent workers are from a
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`plurality of different organizations.
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`650.
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`(NEW) The method ofclaim; wherein the posted list ofone or more positions
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`includes positions from a plurality of different organizations.
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`§ g ,W/"w 31.
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`(NEW) A substitute fu fillment system that secures one or more substitute workers
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`for a plurality of organizations com rising:
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`a database comprising wor
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`r records, said worker records having information associated
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`zations, and substitute records, said substitute records having
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`one substitute worker; and
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`with workers for each of the org
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`information representing an bs
`t w rker via at least one communication link coupled to the
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`information associated with at le
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`the database,
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`a server coupled t
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`the server is configured for receiving absentee
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`server, wherein each of the at
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`o e communication link is selected from the group consisting
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`of a telephone communication li
`and an Internet communication link; and
`a website interface cou ed to the server, the website interface posting a list of at least
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`one position of an absent work r that needs to be filled by one or more substitute workers on a
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`website, wherein the list of p sitions is generated by the server using the received absentee
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`information and database ther by providing an opportunity for substitute workers to search for
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`substitute fulfillment system of claim 31 wherein the server is further
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`configured to 5 on
`a substitute worker in response to the substitute worker selecting a posted
`fl)“positionviath
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`Attorney Docket No.: 48278258599
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`emet ommunication link.
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`In the Claims:
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`Following, please find marked up versions of rewritten claims 15, 17, 18, 20, 21, 24, and
`28 showing all the changes relative to the previous version of those claims:
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`15.
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`(Amended) The substitute fulfillment system of claim [12] 11 wherein the server is
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`further configured to generate a list of substitute workers and names of the absent workers who
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`the substitute workers will be filling in for a given organization and to transmit the generated list
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`of substitute workers and names of the absent workers who the substitute workers will be filling
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`in for to the given organization via the at least one communication link.
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`17.
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`(Amended) The substitute fiilfillment system of claim [12] ;2_ wherein the server is
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`further configured to receive a message via the at least one communication link and to forward
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`the received message to the substitute worker who agrees to fill in for the absent worker via the
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`at least one communication link.
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`18.
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`(Amended) The substitute fulfillment system of claim [1 l] _3_1 wherein each worker
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`record comprises worker identification, contact, position, qualification, and substitute selection
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`information.
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`20.
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`(Amended) The substitute fulfillment system of claim [11] 3_1 wherein each
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`substitute worker
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`record comprises
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`substitute identification, contact, qualification,
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`and
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`availability information.
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`21.
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`(Amended)
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`The substitute fulfillment system of claim [11] fl wherein the
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`organizations are unaffiliated.
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`24.
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`(Amended) The substitute fulfillment system of claim [11] 31 wherein the workers
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`are teachers and the substitute workers are substitute teachers.
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`(Amended) A method for performing substitute fulfillment for a plurality of
`28.
`different organizations comprising:
`receiving absentee information representing an absent worker via at
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`least one
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`communication link;
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`generating and posting a list of one or more positions of one or more absent workers that
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`need to be filled by one or more substitute workers on a website;
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`receiving a response by a substitute worker selecting a posted position on the website via
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`an Internet communication link; and
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`securing via the Internet communication link the substitute worker who selected the
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`posted position to fill in for the absent worker.
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`Attorney Docket N0.: 48278.258599
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`REMARKS
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`Applicants thank Examiners Colon and Hafiz for their courtesies extended during the
`March 25, 2003 Examiner Interview. Reconsideration and allowance of the above-referenced
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`application are respectfully requested. Claims 1-28 are pending. Claims 2-4 and 7—9 have
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`previously been withdrawn from consideration. Claims 1 and 5 are allowed. Claims 22 and 23
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`are objected to. Claims 6, 10-14, 16, 22, 23, and 25-27 are canceled without prejudice or
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`disclaimer by this amendment. Claims 15, 17, 18, 20, 21, 24, and 28 are amended by this
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`amendment. New claims 29 and 30 add further limitations to claim 28. Claims 31 and 32 are
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`added to replace and further clarify claims 22 and 23 which are objected to.
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`The Examiner asserts that the terminal disclaimer that was filed on June 6, 2002 is not
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`accepted because it was not signed. A signed disclaimer, submitted concurrently with this
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`response, disclaims the terminal portion of the patent granted based on this application that
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`would extend beyond the expiration date of US. Patent No. 6,334,133. Thus applicants request
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`that the double patenting rejection be withdrawn.
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`Claim 14 stands rejected under 35 U.S.C. §112, second paragraph, as being indefinite for
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`failing to particular point out and distinctly claim the subject matter which the applicants regard
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`as the invention. Claim 14 has been canceled thus mooting the Examiner’s rejection.
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`Claims 6 and 10 stand rejected under 35 U.S.C. §102(a) as being anticipated by the
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`SubfinderTM System. Claims 6 and 10 have been canceled thus mooting the Examiner’s
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`rejection.
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`Claims 11—21 and 24-27 stand rejected under 35 U.S.C. §103(a) as being unpatentable
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`over the SubfinderTM System. Claims 11-14, 16 and 25-27 have been canceled thus mooting the
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`Examiner’s rejection. Claims 15, 17-21 and 24 have been amended to depend on claims 31 and
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`32, respectively, which replace objected claims 22 and 23, respectively,
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`thus mooting the
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`Examiner’s rejection.
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`Claim 28 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Subfinder
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`in View of Taylor (US. Patent 5,832,497). The Examiner asserts that:
`
`As per claim 28, Subfinder discloses the substitute fulfillment system of
`claim 12 that enables substitute workers to search for work (reference A, page 1,
`paragraphs 1 and 2; reference B, abstract, page 2, paragraph 24).
`Subfinder does not expressly disclose a website interface coupled to the
`server, the website interface posting a list of positions of absent workers that
`needs to be filled by substitute workers on a website, wherein the list of positions
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`-7-
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`is generated by the server using received information regarding absent workers
`thereby providing an opportunity for substitute workers to search for work.
`Taylor discloses a website interface coupled to the server, the website
`interface posting a list of positions of absent workers that needs to be filled by
`substitute workers on a website, wherein the list of positions is generated by the
`server using received information regarding absent workers thereby providing an
`opportunity for substitute workers to search for work (col. 1, lines 33 ~ 42; col. 2,
`lines 48 - 51; col. 2, line 65 — col. 3, line 19; col. 6, lines 58 — 64; The reference
`discloses posting a list of positions generated from a server on a website and
`allowing work searchers to search through-the list of positions).
`At the time the invention was made, it would have been obvious to a
`person of ordinary skill in the art to utilize a website interface to interact with
`substitute workers searching for work because the Internet provides a convenient
`and globally accessible medium through which users can easily and quickly
`interact (Taylor, col. 2, lines 34 — 39).
`As per claim 23, Taylor discloses the substitute fulfillment system of
`claim 22 wherein the server is further configured to secure a substitute worker in
`response to the substitute worker selecting a posted position via the Internet
`communication link (col. 4, line 63 - col. 5, line 5; col. 5, lines 49 - 62; The
`reference discloses allowing workers to select a posted position by submitting an
`application for that position. The reference further discloses employers reviewing
`submitted applications for particular job postings).
`At the time the invention was made, it would have been obvious to a
`person of ordinary skill in the art to utilize a website interface to interact with
`substitute workers searching for work because the Internet provides a convenient
`and globally accessible medium through which users can easily and quickly
`interact (Taylor, col. 2, lines 34 - 39).
`As per claim 28, Subfinder discloses a method for performing substitute
`fulfillment for a plurality of different organizations comprising:
`receiving absentee information representing an absent worker via at least
`one communication link (reference A, page 1, paragraph 2; Subfinder receives
`absentee information of an absent Worker via a telephone communication);
`generating a list of positions of absent workers that need to be filled by
`substitute workers (reference A, page 1, paragraphs 2 and 3; reference C, page 1,
`paragraph 6; Subfinder automatically identifies potential substitute workers).
`Subfinder does not expressly disclose placing the list of positions on a
`website, receiving a response by a substitute worker selecting a posted position on
`the website via an Internet communication link; and securing via the Internet
`communication link the substitute worker who selected the posted position to fill
`in for the absent worker.
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`Taylor discloses placing the list of positions on a website, receiving a
`response by a substitute worker selecting a posted position on the website via an
`Internet communication link (col. 4, line 63 - col. 5, line 5; col. 5, lines 49 - 62;
`The reference discloses allowing workers to select a posted position by submitting
`an application for that position); and
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`securing via the Internet communication link the substitute Worker who
`selected the posted position to fill in for the absent worker (col. 4, line 63 - col. 5,
`line 5; col. 5, lines 49 - 62; The reference discloses allowing employers to review
`submitted applications for hiring of workers for particular job postings).
`At the time the invention was made, it would have been obvious to a
`person of ordinary skill in the art to utilize a website interface to interact with
`substitute workers searching for work because the Intemet provides a convenient
`and globally accessible medium through which users can easily and quickly
`interact (Taylor, col. 2, lines 34 — 39).
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`Claim 28 is directed to “A method for performing substitute fulfillment for a plurality of
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`different organizations comprising:
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`receiving absentee information representing an absent
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`worker via at least one communication link; generating and posting a list of one or more
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`positions of one or more absent workers that need to be filled by one or more substitute workers
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`on a website; receiving a response by a substitute worker selecting a posted position on the
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`website via an Internet communication link; and securing via the Internet communication link
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`the substitute worker who selected the posted position to fill in for the absent worker” as recited
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`in amended claim 28 (emphasis added).
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`The Examiner asserts that “Subfmder discloses
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`generating a list of positions of absent
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`workers that need to be filled by substitute workers (reference A, page 1, paragraphs 2 and 3;
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`reference C, page 1, paragraph 6; Subfinder automatically identifies potential substitute
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`workers.).” These cited sections do not teach or suggest generating a list of one or more
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`positions of one or more absent workers that need to be filled by one or more substitute workers.
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`Rather,
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`these cited sections disclose a system that “begins calling from a list of Qualified
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`substitutes until the projected absence is filled” (emphasis added, see Reference A, page 1,
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`paragraph 2). Generating a list of positions of absent workers that need to be filled and
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`identiffl'ng substitute workers are not the same. By generating a list of positions of absent
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`workers and posting the list, the method as recited in claim 28 allows potential substitute workers
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`to secure an available position. In contrast, Subfinder is directed towards a system that fills these
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`positions by contacting the substitute workers. Thus, Subfinder does not teach or suggest
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`“generating and posting a list of one or more positions of one or more absent workers that need
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`to be filled by one or more substitute workers on a website” as recited in claim 28 of the present
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`application.
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`Moreover, as admitted by the Examiner, “Subfmder does not expressly disclose
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`securing via the Internet communication link the substitute worker who selected the posted
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`position to fill in for the absent worker” but asserts that this step is disclosed by Taylor (col. 4,
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`line 63 - col. 5, line 5; col. 5, lines 49-62) and asserts that “The reference discloses allowing
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`employers to review submitted applications for hiring of workers for particular job postings.”
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`However, Taylor does not teach or suggest this step. The cited sections of Taylor disclose an
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`authorized user, e.g., a potential employer, retrieving applications for the jobs it has posted on
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`the system (see col. 4, lines 63-65).
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`In order to contact a potential employee, the user then
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`requests the contact information of the potential employee (see col. 6, lines 35-57). Thus, the
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`employer does not secure a worker but rather retrieves the application and contact information
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`for the potential employee.
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`In contrast, the method of claim 28 allows a potential substitute
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`worker to access a list of one or more positions of one or more absent workers that need to be
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`filled and secure the position that the substitute worker selects, e.g., the substitute worker is hired
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`to be a substitute worker for the absent worker. Thus, neither Subfinder nor Taylor, singularly or
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`in combination, teach or suggest the step of “securing via the Internet communication link the
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`substitute worker who selected the posted position to fill in for the absent worker” as recited in
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`claim 28 of the present application.
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`In addition, the Examiner fails to cite the requisite motivation to support the ultimate
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`legal conclusion of obviousness under 35 U.S.C. §103. Obviousness is not an abstract concept,
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`but must stem from the applied prior art as whole and have realistically impelled one having
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`ordinary skill in the art to modify a specific reference in a specific manner to arrive at a
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`specifically claimed invention with a reasonable expectation of successfully achieving a
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`particular benefit. In re Newell, 891 F.2d 899, 13 USPQ2d 1210 (Fed. Cir. 1985). Accordingly,
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`the Examiner is obliged to identify a source in the applied prior art for (1) claim limitations; and
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`(2)
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`the requisite motivation, teaching or suggestion to modify a reference or to combined
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`references with the reasonable expectation of successfully achieving a particular benefit. Smiths
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`Industries Medical Systems v. Vital Signs, Inc., 183 F.3d 1347, 51 USPQ2d 1415 (Fed. Cir.
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`1999). The Examiner does not provide the proper motivation, teach or suggest to combine the
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`cited art. Therefore, that burden has not been discharged.
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`Since each reference, Subfinder and Taylor, disclose a complete system, the Examiner
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`needs to identify the proper motivation for combining the references. Specifically, the Examiner
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`fails to provide proper motivation for combining the teachings of Subflnder with the website
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`interface of Taylor. Recognizing after the fact that such a modification Would provide an
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`improvement or advantage, without suggestion thereof by the prior art in an indication of
`improper application of hindsight considerations which is not proper criteria for resolving
`obviousness.
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`The Examiner asserts that “At the time the invention was made, it would have been
`
`obvious to a person of ordinary skill in the art to utilize a website interface to interact with
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`substitute workers searching for work because the Internet provides a convenient and globally
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`accessible medium through which users can easily and quickly interact (Taylor, col. 2, lines 34—
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`39).” This is not proper motivation but is improper use of hindsight.
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`Thus, for at least these reasons, claim 28, as well as dependent claims 29 and 30 are
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`patentable over Subfinder in view of Taylor. As a result, the applicants request that the rejection
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`of claim 28 under 35 U.S.C. §lO3(a) be withdrawn.
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`The foregoing is submitted as a full and complete Response to the Office Action mailed
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`19 February 2003, and early and favorable consideration of the claims is requested.
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`If the
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`Examiner believes any inforrnalities remain in the application which may be corrected by
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`Examiner’s Amendment, or if there are any other issues which may be resolved by telephone
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`interview, a telephone call to the undersigned attorney at (202)508-5843 is respectfully solicited.
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`Please charge any shortage in fees due in connection with the filing of this paper,
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`including extension of time fees, to Deposit Account 50—145 8, and please credit any excess fees
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`to such deposit account.
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`Dated: flfl 02/; 8/03
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`KILPATRICK STOCKTON LLP
`607 14th Street, Suite 900
`Washington, DC 20005 -201 8
`Phone 202-508-5800
`Fax 202-585-0045
`
`Thomas A. Corrado
`Attorney for Applicant
`Registration No. 42,439
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`TRANSMHTAL
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`Total Number of Pages in This Submission - Attorney Docket Number
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`ENCLOSURES check all lhata I
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`D After Allowance Communication to
`I] Assignment Papers
`E] Fee Transmittal Form
`(for an Application)
`Group
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`Appeals and lnterferences
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`Amendment/ Response
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`E] Status Letter
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`Other Enclosure 5
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`V
`{please identify below):
`Terminal Disclaimer
`Statement under 37 CFR 3.73(b)
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`El Certified Copy of Priority
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`D Licensing-related Papers
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`REJEGTION OVER A PRIOR PATENT
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`in re Application of: THOMPSON If IL
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`Appllqiiiun No. 09’419336
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`Filed: 15 October 1939
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`Fort SYSTEM AND METHOD FOR PERFORMING SUBSTITUTE FULFILLMENT
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`/
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`The mor’fiBW oi 199 percent Inter-eat In the haunt anpiieetion hereby disclaims,
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`except as provided below, the terminal part er the etalutory term ntany potent aranted on the Instant e pilcation. which
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`would extend beyondthe expiration date oftha hill statutory term defined In 35 U.S.G. 154 to 156 and 73. ea presently
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`shortened by any terminal diaoleimer, of prior Patent Ne. w. The owner hereby agrees that any patent‘eo
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`grantee on ma Instant application errar be enforceable only for and til-trim such W that it and the prior patent are
`commonly owned. This agreement runs with any patent wanted on the intent application and is binding upon the
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`grantee. its measure or assigns.
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`In making the arroyo dilqiarlmir. the owner does not disclaim the terminal part of any patent granted on the
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`ineiant application that would extend to the aviation data of the full aieiulory term as defined in 36 mac. 154 to 155
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`and 178 eitha prior patent. aa praaenfly shortened by any tanninal disclaimer, in the event that It later: expires forfeiture
`to m a maintenance res. is held mnfnrneehie. is found irIVaIid by a com of competent Jurisdiction. ls statutorily
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`diaelalmed in where or lennlnaliy dieelatrned under 37 CFR 1.321. here all elaitne cancelled by a reexamination
`certificate. is reissued. or is in any manner terminated prior to the expiration of it full statutory farm as presently
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`Matted by any terminal diaeialmar.
` Check either boat or 2 below, Nipplbpiifiie.
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` 2. U The underalgned is an attorney of record.
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`1.
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`For submissions on behalf of an organization (an, corporation, partnership. unlvarefly. government agency,
`ere), the undersigned is empowered to act on behalf efihe organization.
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`I hereby declare that all Itxtimlnffi maueineraln or my own «homage are true and that all statements made an
`information and belef are beloved in be true: and further that time statements were made with the lmewiadga that
`willful raise atatemonta and the like an made are ptmieheble byline or Imprisonment. or both, under Sutton 1001 or 'fifla
`1Star.ttrlrrr Datum“ cede ind that such wilful idea statement: may leepardiza the validity ofthe application or any
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` Michael Blackstone, PreeidentiCEo
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`Typed or printed name
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`Cl Terminal diseleimertee under 37 CFR 1.20m) It Included.
`WARNING: Information on this rem may become public. Credit card Inrormerlen should not
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`be included on this farm Provide mallard Imametlon and authorization on PTO-2038.
`'Ceriiiieation undera'f CFR 3.7303) le required Ifterm'nal disclaim-r testy-red by the magma (owner).
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`Farrp PTO/EBIW may be used for melting discertlfleallon. See MFEP§ 324.
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`Burden murmur: mum in estimated in taiw 02 nouns in compare Time wll very-reporting upon the haedeorliia mews, iduai
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`Any name-ram. on the amazed anim- you an requrradra mplerethie farm errauid he were retire Chief Infon'nlilon ornaer. Patent and
`03 HHEHTOH mumsWWW 20231. DO NOT SEND PEI OR COMHEI'ED FORM! TO Wis ADDRESSt SEND TO: Mutant
`nefathenb. Wlehhaion. DC 20251.
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`110.00 CH
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`RECEIVED
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`MFR. 24. 2923
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`9: 579M
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`me aeelunee «the entire right. title. and lnlereet: or
`on aeelgnee oren Imam/load pertintereet
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`In the patent appiiceliunlpelenr Identified above by virtue of eliher:
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`AppileonllPetent Owner: Michael s. Blecireione
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`Application NnJPeteni No; 09/419268
`Flicdlleeue Date: October 15‘ 1999
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`Entitled:WWAND NOTIFICATION
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`WM...— 3 Minn——
`(Name arm-ram)
`(We: of Airlines, me. Wm Fame. univemity. emmnt new. m)
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`state: the: it in:
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`A. E An assignment from the lnvenlor(e) of the pelenr applioelionlpetem Iderilrled above. The esslunmentwae
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`gauge: In the Petem and Trademark Office at Reel mm Frame m or for which e copy meteor re
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`a. D Aheheinbofiille from the inventions). oilire pelem IPPMlIon/peient ldenilllecl above. to the current eeelgnee as
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`1. From:
`To:
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`The document was recorded In the United Shires Feleni and Trademark Ofilce at
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`Reel
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`2. From:
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`The document wee recorded In In: United States Patent and Trademark Office It
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`3. From:
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`The document wee recorded in the United states Patent end Trademark cities It
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`Reel _. Frame _, or for which I carry thereof ls manned.
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`El Additlonel document-e In the chain affilie are lined on e supplemental theel.
`Copies of eesrunmerre orormr documents inthe chain oililie are clinched.
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`m: A eepmm copy 0.e.. the original augment document or a true copy of the original document)
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`mum be eubmiiied tn Aeslgnment Division in eemrdancs with 37 CFR Part 3, lflhe assignment in to be
`recorded In the recorde oi’the USPTO. 5.9.! MPEP 3028]
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`Minimal 5. Blackstone
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`Typed or printed name
`FreeirieniIGEO
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`Burden Hour Shier-hem: Thle form Ie animated to lab D2 home to eenlrlela. Tlmewfll my departing upon lire needs of lire lnrivlduel coed.
`Any comm-uh on the smoml affirm you are Inquirer! in cor-micro lhle form mule be con! to the Gflef Inl’ormeflun Ofiloer. US. Patent and
`Tram Office. Vile-him. DC 30:31- Do NOT GRND FEES OR GOMPi-ETED romeo TO THIS ADDRESS- 8END 79: Miflflm
`Connie-loner («Peter-its, WWI DC 2on1.
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`The undersigned (whose tide Ie supplied below) is empowered to ~
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`FPTOOO1527
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