' UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box‘l4SQ _
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`Alexandria. Virginia 22313-1450
`www.usp!o.gov
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`APPLICATION NO.
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`10/ I01 ,644
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`FILING DATE
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`03/ 19/2002
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`27526
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`7590
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`07/ 14/2005
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`BLACKWELL SANDERS PEPER MARTIN LLP
`4801 Main Street
`Suite 1000
`KANSAS CITY, MO 64112
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION N0.
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`Marc Vianello
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`I5703.l0002
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`8626
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`EXAMINER
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`JEANTY, ROMAIN
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`‘ W-RNUMBER
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`3623
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`DATE MAILED: 07/14/2005
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`mgoc (Rev 10,03,
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`Petitioner Exhibit 1016 p.1
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`Petitioner Exhibit 1016 p.1
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`

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`Office Action Summary
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`Application No.
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`App|icant(s)
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`10/101,644
`I Examine,
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`RomainJeanty
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`I
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`VIANELLO, MARC
`A,‘ Unit
`_
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`3623 -
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`‘
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE Q MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`lfthe period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Olfice later than three months afier the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`In no event, however, may a reply be timely filed
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`-
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`Status
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`1)|Z Responsive to communication(s) filed on Z.
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`2b)l:l This action is non-final.
`2a)|Z This action is FINAL.
`3)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)|Z Claim(s) E is/are pending in the application.
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`4a) Of the above c|aim(s) 1-4 9 16 18-197 is/are withdrawn from consideration.
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`5)|:I Claim(s) Z is/are allowed.
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`6)IZ Claim(s) 5-8 10-15 17 and 198-204 is/are rejected.
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`7)I:] Claim(s) Z is/are objected to.
`8)I:I Claim(s) Z are subject to restriction and/or election requirement.
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`Application Papers
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`9)lj The specification is objected to by the Examiner.
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`10)l:I The drawing(s) filed on Z is/are: a)D accepted or b)|j objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CF R 1.121(d).
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`11)C] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)EI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)E] All
`b)CI Some * c)CI None of:
`1.|:] Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application "No. Z
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`3.E] Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) [:1 Information Disclosure Statement(s) (PTO—1449 or PTOISB/08)
`Paper No(s)/Mail Date Z.
`U.S. Patent and Trademark Office
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`4) E] Interview Summary (PTO413)
`PEP” NOIS)/M3" Data :_~
`5) CI Notice of Informal Patent Application (PTO-152)
`6) El Other:
`.
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`PTOL-326 (Rev. 1-04)
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`Office Action Summary
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`PetitioneF%3Efi?beftN§i.8I?I€a6-a1 105
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`%\
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`Petitioner Exhibit 1016 p.2
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`

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`Application/Control Number: 10/101,644
`Art Unit: 3623
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`,\Iv
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`Page 2
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`DETAILED ACTION
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`Response to Amendment
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`1.
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`This Final Office action is in response to the amendment filed April 4, 2005. Claims 5-8,
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`10-15, 17, and 198-204 are pending in the application.
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`2.
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`Applicant’s amendment to claim 198 has overcome the 35 U.SC. 112 second rejection.
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`The rejection has been withdrawn.
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`3.
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`Applicant's arguments with respectto claims 5-8, 10-15, 17, and 198-204 have been
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`Response to Arguments
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`considered but are found to be non-persuasive.
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`35 U.S.C. 101 reads as follows:
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`Claim Rejections - 35 USC § 101
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`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
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`4.
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`Claims 5-8, 10 and 198-204 are rejected under 35 U.S.C. 101 because the claimed
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`invention is directed to non-statutory subject matter.
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`The basis of.this rejection is set forth in a two-prong test of:
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`(1) whether the invention is within the technological arts of:
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`(2) whether the invention produces a useful, concrete, and tangible result.
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`For a claimed invention to be statutory, the claimed invention must be within the
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`technological arts. Mere ideas in the abstract (i.e., abstract idea, law of nature, natural
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`phenomena) that do not apply, invoice, use, or advance the technological arts fail to promote the
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`Petitioner Exhibit 1016 p.3
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`Petitioner Exhibit 1016 p.3
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`

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`Application!Control Number: 10/101,644
`Art Unit: 3623
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`Page 3
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`“progress of science and the useful arts” (i.e., the physical sciences
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`opposed to social sciences,
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`for example) and therefore are found to be non-statutory subject matter. For a process claim to
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`pass muster, the recited process must somehow apply, involve, use, or advance the technological
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`arts.
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`Furthermore, mere intended or nominal use of a component, albeit within the
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`technological arts, does not confer statutory subject matter to an otherwise abstract idea if the
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`component does not apply, involve, use, or advance the underlying process.
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`While claims 5-8, 10 and 198-204 produce a useful, concrete, and tangible result, they are
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`deemed to be statutory for failure to apply, involve, use, or advance the technological arts.‘ In
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`order to overcome this rejection, it is respectfully suggested that the claims be amended to
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`expressly incorporate technology (i.e., a computer processor) as performing at least one ofthe
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`steps of the invention. Appropriate correction is required.
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`Claim I/{ejections - 35 USC § 103
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`5.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or
`described as set forth in section 102 of this title, if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the manner in which the invention was made.
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`6.
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`Claims 5-8, 14, 16-17, and 198-204 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over McGovern et al (U.S. Patent No.5, 978,768) in view of Williams et al (U.S.
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`Patent No. 6,618,734) and further in view of Joao (U.S. Patent No. 6,662,194).
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`«Petitioner Exhibit 1016 p.4
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`Petitioner Exhibit 1016 p.4
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`

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`Application/Control Number: 10/101,644
`Art Unit: 3623
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`.
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`4
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`Page 4
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`As per claims 5, and 198-204, McGovern et al disclose an interactive employment
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`'
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`recruiting service comprising:
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`matching said candidate with said employer based on said candidate requirements and
`said employer requirements (matching a job seeker’s salary requirements with an employer
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`position requirement) (col. 13, lines 27-40);
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`McGovern et al disclose all of the limitations above except for receiving a request for
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`interview from at least one of said candidate and said employer and determining whether there is
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`mutual content to said request for interview. Williams in the same field of‘endeavor, teaches the 2
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`idea of following-up and scheduling interview between a job candidate and a client (since
`Williams et al teaches following-up on an interview and mutually agreed time, it implies that
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`there was a request for the interview and there was a mutual consent/agreement for the
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`interview) col. 8, lines 42-50 and col. 9, lines 1-11). Thus, it would have been obvious to a
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`person of ordinary skill in the art to modify the interactive employment recruiting service system
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`of McGovern et al to incorporate the interview based on mutual consent as evidenced by
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`Williams. A person having ordinary skill in the art would have been motivated to use such a
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`modification in order to determine which applicants best match the criteria set by the client.
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`The combination of McGovern et al and Williams does not expressly disclose
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`authorization for the release of contact information by the candidate and providing exchange of
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`contact information.
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`Joao in the same field of endeavor discloses the concept of authorizing
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`contact information the provision of contact information (email address) between employers and
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`employees (col. 27, lines 47-60).
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`It would have been obvious to a person of ordinary skill in the
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`art to modify the teachings of McGovern et al and Williams et alto incorporate the teachings of
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`Petitioner Exhibit 1016 p.5
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`Petitioner Exhibit 1016 p.5
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`

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`Application/Control Number: 10/101,644
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`Art Unit: 3623
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`Page 5
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`Joao in order to provide the identity of the party requesting the information to the respective
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`individual, employer and/or hiring entity.
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`Applicant has amended the claims to recite “obligating apayment duefromisaid
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`employer in real-time based on the mutual consent to said requestfor interview with said
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`candidate wherein saidpayment due is afee to a career site operator”. Joao in the same field of
`endeavor teaches a methodforprovidingjob searching services, recruitment services, and/or/
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`recruitment "related services which effect a paymentfrom one party to another (col. 34, lines 29-
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`46). It would have been obvious to a person ofordinary skill in the art to modify the disclosures
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`ofMcGovern and Williams to include,providingjob searching services, recruitment services,
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`and/or/ recruitment related services which eflect a paymentfrom one party to another as
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`evidenced by Joao in order to render payments or fees for services rendered to a party.
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`As per claim 6, McGovern et al and Williams do not expressly disclose wherein said
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`information exchange occurs in preparation for an interview, said information occurring prior to
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`any direct contact between the parties. Joao discloses the exchange of information between the
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`employer and the employee (col. 27, lines 47-60) (Since Joao does not state whether the
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`exchange of information occurs prior or after any direct contact between the employer and the
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`employee, it infers that the information exchange occurs before any direct contact between the
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`party). It would have been obvious to a person of ordinary skill in the art to modify the teachings
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`of McGovern et al and Williams et al to incorporate the teachings of Joao in order to provide the
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`identity of the party requesting the information to the respective individual, employer and/or
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`hiring entity. It would have been obvious to a person of ordinary skill in the art at the time of
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`applicant’s invention to modify the teachings of McGovern to incorporate the exchange of
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`Petitioner Exhibit 1016 p.6
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`Petitioner Exhibit 1016 p.6
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`

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`Application/Control Number: 10/101,644
`Art Unit: 3623
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`A
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`Page 6
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`information in preparation for an interview as evidenced by Williams et al with the motivation to
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`better match candidates to take suitability interview.
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`As per claims 7 and 16, the combination of McGovern et al and Williams et al discloses
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`_ the limitations of claim 7 in the rejection of claims 5 and 14. In addition, McGovern et al
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`discloses comparing a preferred employer specification in said candidate attributes (col. 4, lines
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`26-31).
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`As per claims 8 and 17, the combination of McGovern et al and Williams et al discloses -
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`all of the limitations in the rejection of claims 5 and 14. In addition, McGovern et al disclose
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`receiving a response to said request for interview from at least one of said candidate and said
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`employer and utilizing said response to schedule the interview (col. 11, lines 54-58 and col. 11,
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`lines 12-16).
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`It would have been obvious to a person of ordinary skill in the art at the time the
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`invention was made to modify the employment recruiting system of McGovern et alto include
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`receiving a response to said request for interview from at least one of said candidate and said
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`employer as evidenced by Williams.’ A person having ordinary skill in the art would have been
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`motivated to use such a modification in order to insure that interview will be taken place.
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`Claim 14 is a distributed network for facilitating interviews between at least one
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`candidate and at least one employer for performing the steps of method claim 5; therefore claim
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`5 is rejected similarly under the same rationale relied upon of claim 5.
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`7.
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`Claims 9-13 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`McGovern et al (U.S. Patent No.5, 978,768) in view of Williams et al (U.S. Patent No.
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`6,618,734) and in fiirther in view of view of Joao (U.S. Patent No. 6,662,194).
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`Petitioner Exhibit 1016 p.7
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`Petitioner Exhibit 1016 p.7
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`

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`Application/Control Number: 10/101,644
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`Art Unit: 3623
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`i
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`Page 7
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`As per claims 9 and 15, the combination of McGovern et al and Williams does not
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`explicitly disclose computing a payment due from said employer. Joao in the same field of
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`endeavor teaches the idea of providing interview between the two parties and receiving payment
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`between the parties (col. 34, line 29 through col. 35 line 41).
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`It would have been obvious to one
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`of ordinary skill in the art in order to modify the teachings of McGovern et al and Williams et al
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`to include the ‘teachings of Joao with the motivation to guarantee by a service provider that an
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`employer receives best matched candidates, therefore maximizing revenue of the service
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`provider.
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`Applicant has amended the claims to recite “wherein, saidpayment is afee to a career
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`site operator”. Joao in the samefield ofendeavor teaches a methodfor providingjob searching
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`services, recruitment services, and/or/ recruitment related services which eflect a paymentfrom
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`one party to another (col. 34, lines 29-46). It would have been obvious to a person ofordinary
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`skill in the art to modifv the disclosures ofMcGovern and Williams to include providingjob
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`searching services, recruitment services, and/or/ recruitment related services which effect a
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`paymentfrom one party to another as evidenced by Joao in order to render payments orfeesfor -
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`services rendered to a party.
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`As per claim 10, it is common that a company would pay a lot more to an employment
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`firm to fill in an executive position and vary the pay amount based on the prospective
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`employee’s experience level, types of position, open position and fee schedules, etc. Applicant’s
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`claimed features “an amount of said payment is chosen from a general equivalency diploma
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`amount, a high school amount, a vocational educational training amount, an associate degree
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`amount, a bachelor degree amount, a master degree amount, and a doctorate amount, wherein
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`Petitioner Exhibit 1016 p.8
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`Petitioner Exhibit 1016 p.8
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`

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`Application/Control Number: 10/101,644
`Art Unit: 3623
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`I
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`Page 8
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`said doctorate amount is less than or equal to said master degree amount, which is less than or
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`equal to said bachelor degree amount, which is less than or equal to said associate degree
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`amount, which is less than or equal to said vocational educational training amount, which is less
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`than or equal to said high school amount, which is less than or equal to said general equivalency
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`diploma amount” are similar type of features a company would pay for a candidate for the
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`motivation of attracting more qualified candidates.
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`Claim 11 recites is a computer system for performing the method step of claim 5;
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`therefore is rejected similarly. McGovern et al and William does not expressly disclose “a
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`payment interface operable to receive payment from said employer based on occurrence of said
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`mutual consent. Joao in the same field of endeavor teaches the idea of providing interview for
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`job candidates and employers pay a fee for service rendered (col. 34, line 29 through col. 35 line
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`41). It would have been obvious to one of ordinary skill in the an in order to modify the
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`teachings ofMcGovern et al and Williams et alto include the teachings ofJoao with the
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`motivation to guarantee by a service provider that an employer receives best matched candidates,
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`therefore maximizing revenue of the service provider and at the same time maximizing potential
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`income of the service provider.
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`Applicant has amended the claims to recite “ real time
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`wherein, saidpayment is afee
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`to a career site operator”. Joao in the samefield ofendeavor teaches a methodfor providing
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`job searching services, recruitment services, and/or/ recruitment related services which eflect a
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`paymentfrom one party to another (col. 34, lines 29-46). It would have been obvious to a
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`person ofordinary skill in the art to modfl the disclosures ofMcGovern and Williams to include
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`providingjob searching services, recruitment services, and/or/ recruitment related services
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`Petitioner Exhibit 1016 p.9
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`Petitioner Exhibit 1016 p.9
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`

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`Application/Control Number: 10/101,644
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`Page 9
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`Art Unit: 3623 ,
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`which effect a paymentfrom one party to another as evidenced by Joao in order to render
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`payments or fees for services rendered to a party.
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`As per claim 12, the combination of McGovern et al and Williams et al discloses the
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`limitations of claim 12 in the rejection of claim 1 above.
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`In addition, McGovern et al discloses
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`comparing a preferred employer specification in said candidate attributes (col. 4, lines 26-31).
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`As per claim 13, McGovern et a discloses all of the limitations in the rejection of claim
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`11 above, but McGovern et al fail to disclose receiving a response to said request for interview
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`from at least one of said candidate and said employer and utilizing said response to schedule the
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`interview. Williams in the same field of endeavor, teaches the idea of following-up on an
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`interview and mutually agreed time between an employer and an employee (col. 8, lines 42-50
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`and col. 9, lines 1-11). Thus, it would have been obvious to a person of-ordinary skill in the art to
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`modify the interactive employment recruiting servicesystem of McGovern et alto incorporate
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`the interview based on mutual consent as evidenced by Williams. A person having ordinary skill
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`in the art would have been motivated to use such a modification in order to insure that interview
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`will be taken place.
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`Remarks
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`8.
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`Applicant asserted that McGovern, William and Joao do not teach applicant’s claimed
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`invention. Applicant further supported his assertion by arguing that there is no motivation to
`combine McGovern, William and Joao. In response to applicant's argument that there is no
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`suggestion to combine the references, the examiner recognizes that obviousness can only be
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`established by combining or modifying the teachings of the prior art to produce the claimed
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`invention where there is some teaching, suggestion, or motivation to do so found either in the
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`Petitioner Exhibit 1016 p.10
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`Petitioner Exhibit 1016 p.10
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`

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`Application/Control Number: 10/101,644
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`Page 10
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`Art Unit: 3623
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`references themselves or in the knowledge generally available to one of ordinary skill in the art.
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`See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. l988)and In re Jones, 958 F.2d 347,
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`21 USPQ2d 1941 (Fed. Cir. 1992).
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`In this case, combining the teachings Joao with McGovern
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`and William would with the teachings of Ioao with McGovern and Williams would allow the
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`rendering of payments or fees for services rendered to a paity.
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`Conclusion
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`9.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`a.
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`Kay (U.S. Patent No.7 6272492) discloses determining the price that the user will
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`be charged for accessing the content item, including identification of the party to be charged to
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`include a web site operator.
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`TI-IIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until afier
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Petitioner Exhibit 1016 p.11
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`Petitioner Exhibit 1016 p.11
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`

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`Application/ControlNumber: 10/101,644
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`' Art Unit: 3623
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`Page 11
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Romain Jeanty whose telephone number is (571) 272-6732. The
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`examiner can normally be reached on Mon—Thurs 7:30 am - 6:00 pm
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Tariq R. Hafiz can be reached on (571) 272-6729. The fax phone number for the
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`organization where this application or proceeding is assigned is 703-872-9306.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`7 applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto. gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-
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`-9197_ (t ll-free).
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`R
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`'
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`Jean
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`Primary Exami er
`A11 Unit 3623
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`7 - 1/. 05
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`Petitioner Exhibit 1016 p.12
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`Petitioner Exhibit 1016 p.12