UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`.,
`'
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addreu: COMMISSIONER FOR PATENTS
`120. Box 1450
`Alexandxia, Vuginx'a 22313-1450
`www.mptolgov
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`10/101,644
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`03/19/2002
`
`Marc Vianello
`
`15703.10002
`
`8626
`
`27526
`
`7590
`
`06/20/2003
`
`BLACKWELL SANDERS PEPER MARTIN LLP
`TWO PERSHING SQUARE
`2300 MAIN STREET, SUITE 1000
`KANSAS CITY, MO 64108
`
`.
`
`’EANTY’ ROMA‘N
`ART UNIT
`PAPER NUMBER
`
`3623 ..
`DATE MAILED: 06/20/2003
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO~90C (Rev. 07-01)
`
`Petitioner Exhibit 1017 9.1
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`Petitioner Exhibit 1017 p.1
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`

`

`Application No.
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`Applicant(s)
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`‘
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`Office Action Summary
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`10/101,644
`
`Exam...”
`Romain Jeanty
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
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`VIANELLO MARC
`
`Art Unit
`3623
`
`A,“
`l,“
`
`
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g 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 Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`
`In no event, however, may a reply be timely filed
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`1)IZ Responsive to communication(s) filed on 79 March 2002 .
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`2a)EI This action is FINAL.
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`2b)IZ| This action is non-final.
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`3)I:]
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`Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
`Disposition of Claims
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`4)IZ| Claim(s) 1-_19_7_ is/are pending in the application.
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`4a) Of the above claim(s) 1-4 and 18-197 is/are withdrawn from consideration.
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`all Claim(s) _ is/are allowed.
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`6)EI Claim(s) 5-_17 is/are rejected.
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`7)[:I Claim(s) _ is/are objected to.
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`8)EI Claim(s)
`Application Papers
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`are subject to restriction and/or election requirement.
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`9)|:I The specification is objected to by the Examiner.
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`10)I:| The drawing(s) filed on __ is/are: a)I:I accepted or b)I:] 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 CFR1.85(a).
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`11)L__| The proposed drawing correction filed on _ is: a)|:] approved b)EI disapproved bythe Examiner.
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`If approved, corrected drawings are required in reply to this Office action.
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`12)|:] The oath or declaration is objected to by the Examiner.
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`Priority under 35 U.S.C. §§ 119 and 120
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`13):] Acknowledgment is made of a claim forforeign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:I A|| b)I:I Some * c)l:I None of:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No. __
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`3E] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`14):] Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application).
`a) E] The translation of the foreign language provisional application has been received.
`15)I:] Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
`Attachment(s)
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`1) X Notice of References Cited (PTO--892)
`2) E] Notice of Draftsperson’5 Patent Drawing Review (PTO--948)
`3) D Information Disclosure Statement(s) (PTO-1449) Paper No(s)____
`US. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413) Paper No(s).__
`5) D Notice of Informal Patent Application (PTO-152)
`6) D Other.
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`PTO-326 (Rev. 044”)
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`Office Actlon Summary
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`Petitioner firxhj Pejtr $04 7 p_ 2
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`Petitioner Exhibit 1017 p.2
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`

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`Application/Control Number: 10/ 101 ,644
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`Page 2
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`Art Unit: 3623
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`I.
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`Claim1—4, drawn to a system for collecting and classifying information using a
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`structured information format, classified in 705/7.
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`11.
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`Claims 18—5 1, drawn to a method of receiving information regarding at least one
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`candidate from a plurality of talent-contributors, said candidate having candidate
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`attributes, classified in class 705, subclass 9.
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`Claims 62-69, drawn to a distributed network for providing employees with
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`candidate-information regarding at least one candidate in a plurality of talent—
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`contributors, said candidate having candidate attributes, classified in class 705,
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`subclass 9.
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`Claims 70-86, drawn to a method of receiving information regarding an employer
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`including employer profile information and at least one job description, said job
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`description having job parameters corresponding to candidate attributes of a
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`desired candidate, classified in class 705, subclass 7.
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`III.
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`Claims 52—61, drawn to a system including computer-readable instruction for
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`receiving talent information regarding talent, said talent having talent faculties,
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`classified in class 705, subclass 7.
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`Claims 87-90, drawn to a system for receiving employer information regarding an
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`employer having at least one division, classified in class 705, subclass 1.
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`Petitioner Exhibit 1017 9.3
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`Petitioner Exhibit 1017 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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`Claims 91-95, drawn to a distributed network for receiving employer-profile
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`information regarding an employer having at least one business unit, classified in
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`class 705, subclass 1.
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`V.
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`Claims 96-109, drawn to a method of searching a plurality ofjob descriptions,
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`said method performed by a talent-user, classified in class 705 subclass 7.
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`Claims 110—122, drawn to a data processing apparatus for searching a plurality of
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`job descriptions, said apparatus operable to communicate with a talent—user,
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`classified in class 707, subclass 103.
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`Claims 122-131, drawn to a network for searching a plurality ofjob descriptions,
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`said network operable to receive talent-information from a talent-user, classified
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`in class 707, subclass 103.
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`Claims 132-148, drawn to a network of searching for talent information in a
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`plurality of talent profiles, said method initiated by an employer-user associated
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`with an employer, classified in class 707, subclass 103.
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`Claims 148-156, drawn to a computer system for facilitating searching talent
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`having associated talent descriptions in a plurality of talent profiles, said computer
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`system configured to receive input from an employer-user associated with an
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`employer, said employer searching in a primary location county, classified in
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`class 707, subclass 103.
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`Claims 157-164, drawn to a distributed network of searching for talent by
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`searching a plurality of talent profiles, said distributed network initiated by an
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`Petitioner Exhibit 1017 9.4
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`Petitioner Exhibit 1017 p.4
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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 4
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`VI.
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`VII.
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`VIII.
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`employer-user associated with an employer, said employee searching in a primary
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`location country, classified in class 707, subclass 103.
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`Claims 165-169, 173—175, drawn to a method of promoting a career site,
`classified in class 705 subclass 1.
`V
`
`Claims 170-172, drawn to a computer system used in connection with promoting
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`a career site of promoting a career site, classified in class 705 subclass 1.
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`Claims 176-180, drawn to a method for compensating at least one wholesaler for
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`marketing a career site according to a career site wholesaler policy, classified in
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`class 705 subclass 1.
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`Claim 181, drawn to a computer system for automating a process of compensating
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`at least one wholesaler for promoting a career site, classified in class 705,
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`subclass l.
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`Claim182, drawn to a distributed network for compensating at least one
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`wholesaler for promoting a career site, classified in class 705 subclass 1.
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`Claim 183-187, drawn to a method for compensating at least one retailer a career
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`site according to a career site marketing policy, classified in class 705 subclassl.
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`IX.
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`Claims 188—189, drawn to a distributed network for providing payments to at least
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`one retailer for marketing a career site according to a career site marketing policy,
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`classified in class 705 subclassl.
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`Claim 190, drawn to a computer-readable medium containing instructions capable
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`of causing a processor to perform a process for operating a career site, said career
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`site including a talent database of talent resume corresponding to a plurality of
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`Petitioner Exhibit 1017 9.5
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`Petitioner Exhibit 1017 p.5
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`

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`Application/Control Number: 10/101,644
`Art Unit: 3623
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`Page 5
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`talent candidates and a database ofjob descriptions, classified in class 705
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`subclass 7.
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`Claim 191, drawn to a computer-readable medium containing instructions capable
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`of causing a processor to perform a process for operating computer system, said
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`computer system including a talent database of talent resumes corresponding to a
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`plurality of talent candidates and a database ofjob descriptions, classified in class
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`705 subclass 7.
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`X1.
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`Claim 192-197, drawn to a method, system and a distributed network for
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`providing employment services to at least one candidate in a plurality of talent-
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`contributors, classified in class 705, subclass 7.
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`The inventions are distinct, each from the other because of the following reasons:
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`Inventions I and II, III, IV, V, VII, VIII, IX, X are related as sub-combinations disclosed
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`as usable together in a single combination. The sub-combinations are distinct from each other if
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`they are shown to be separately usable. In the instant case, invention I has separate utility such as
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`talent providing talent information corresponding to blind resumés. See MPEP § 806.05(d).
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`Because these inventions are distinct for the reasons given above and the search required
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`for Group I is not required for Group II, III, IV, V, VII, VIII, IX and X, restriction for
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`examination purposes as indicated is proper.
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`During a telephone conversation with Kyle Elliott on June 5, 2003, a provisional election
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`was made without traverse to prosecute the invention of claims 5-17. Affirmation of this election
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`must be made by applicant in replying to this Office action. Claims 1-4 and 18-197 are
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`Petitioner Exhibit 1017 9.6
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`Petitioner Exhibit 1017 p.6
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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 6
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`withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a
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`non-elected invention.
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`Examiner’s Note
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`2.
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`The examiner has pointed out particular references contained in the prior art of record
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`and in the body of this action for the convenience of the Applicant. Although the specified
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`citations are representative of the teachings in the art and are applied to the specific limitations
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`within the individual claims, other passages and figures apply as well. It is requested from the
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`Applicant, in preparing the response, to consider fiilly the entire references as well as the context
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`of all passages in the cited references as potentially teaching all or part of the claimed invention.
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`Claim Rejections - 35 USC § 11112
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`3.
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`The following is a quotation of the second paragraph of 35 U.S.C. 112:
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`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
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`subject matter which the applicant regards as his invention.
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`4.
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`Claims 7 and 12 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite
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`for failing to particularly point out and distinctly claim the subject matter which applicant
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`regards as the invention.
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`Claims 7 and 12 recite the limitation "said candidate attributes" in. It is unclear as what
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`candidate attribute applicant is referring. There is insufficient antecedent basis for this limitation
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`in the claim.
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`5.
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`35 U.S.C. 101 reads as follows:
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`Claim Rejections - 35 USC § 1101
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`Petitioner Exhibit 1017 9.7
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`Petitioner Exhibit 1017 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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`Page 7
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`Whoever invents or discovers any new and useful process, machine, manufacture, or
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`composition of matter, or any new and useful improvement thereof, may obtain a patent
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`therefor, subject to the conditions and requirements of this title.
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`6.
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`Claims 5-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed
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`to non—statutory subject matter.
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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, or advance the
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`technological arts fail to promote the “progress of science and the usefiil arts” (i.e., the physical
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`sciences as opposed to social sciences, for example) and therefore are found to be non—statutory,
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`the recited process must somehow apply, involve, use or advance the technological arts.
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`In the present case, claims 5—13 merely establish a method of matching. .. receiving...
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`and determining. None of these steps apply, involve, use, or advance the technological arts.
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`Rather, these steps are merely a process of exchanging information between at least one
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`candidate having candidate information attributes including candidate requirements and
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`employer requirements performed by humans. Therefore, it is respectfully submitted that none of
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`these steps apply, involve, use, or advance the technological arts.
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`Claim Rejections - 35 USC § 102
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`7.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign
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`country or in public use or on sale in this country, more than one year prior to the date of
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`application for patent in the United States.
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`Petitioner Exhibit 1017 9.8
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`Petitioner Exhibit 1017 p.8
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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 8
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`8.
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`Claims 5, 9, and 11-17 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Salmon et al (US. Patent No. 5,592,375).
`
`As per claims 5, 6, and 14 Salmon et a1 discloses:
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`matching said candidate with said employer based on said candidate requirements and
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`said employer requirements (col. 1, lines 55-66 and col. 5, lines 38-46);
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`Receiving a request for interview from at least one of said candidate and said employer
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`(col. 6, lines 51-60);
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`Salmon et a1 does not disclose determining whether there is a mutual consent to said
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`request for interview. It is inherent in Salmon et a1 before having an interview, parties (employer
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`and employee) must reached a mutual consent (i.e., agreed upon) of the timer and place in order
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`for the interview to take place. If time and place of the interview had not been agreed upon, they
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`could not be an interview.
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`As per claims 7, 12 and 16, Salmon et a1 discloses the limitations of claim 7 in the
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`rejection of claim 5 above. In addition, Salmon et a1 discloses comparing a preferred employer
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`specification in said candidate attributes with said employer (i.e. matching selection criteria of
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`the seller) (col. 1, lines 55-66).
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`As per claims 8, 13 and 17, Salmon et a1 discloses all of the limitations in the rejection of
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`claim 5 above. But Salmon et al does not eitplicitly disclose wherein receiving a response to said
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`request for interview from at least one of said candidate and said employer. However, it is
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`inherent in Salmon et al that a response be received from either parties (employer and employee)
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`so that the interview could be taken place.
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`Petitioner Exhibit 1017 9.9
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`Petitioner Exhibit 1017 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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`As per claim 9, the combination of Salmon et a1 discloses the limitations of claim 8 in the
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`rejection of claim 5 above.
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`In addition, discloses receiving payment from said employer for
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`providing contact information for said candidate (i.e. billing the sellers and buyers for the
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`services provided “contact information”) (col. 4, lines 44-49 and col. 13, lines 61-67).
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`As per claims 11 and 15, Salmon et a1 discloses:
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`matching said candidate with said employer based on said candidate requirements and
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`said employer requirements (col. 1, lines 55-66 and col. 5, lines 38-46);
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`Receiving a request for interview from at least one of said candidate and said employer
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`(col. 6, lines 51-60);
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`Salmon et a1 does not disclose determining whether there is a mutual consent to said
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`request for interview. It is inherent in Salmon et a1 before having an interview, parties (employer
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`and employee) must reached a mutual consent (i.e., agreed upon) of the timer and place in order
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`for the interview to take place. If time and place of the interview had not been agreed upon, they
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`could not be an interview.
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`Receiving payment from said employer based on an occurrence of said mutual consent
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`((i.e. billing the sellers and buyers for the services provided “contact information”) (col. 4, lines
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`44-49 and col. 13, lines 61-67).
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`Claim Rejections - 35 USC § 103
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`9.
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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
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`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
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`Petitioner Exhibit 1017 p.10
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`Petitioner Exhibit 1017 p.10
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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 10
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`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
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`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
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`manner in which the invention was made.
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`10.
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`Claim 10 is rejected under 35 U.S.C. 103(a) as being unpatentable over Salmon et al
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`(US. Patent No. 5,592,375) as applied to claim 9 above.
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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’s
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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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`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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`Conclusion
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`11.
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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.
`
`a.
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`Taylor (US. Patent No. 5,832,497) discloses a system for identifying candidates
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`for job positions.
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`Petitioner Exhibit 1017 p.11
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`Petitioner Exhibit 1017 p.11
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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 11
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`b.
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`McGovern et al (US. Patent No. 5,878,768) discloses a method for providing
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`employment recruiting.
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`c.
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`McGovern et al (US. Patent No. 6,370,510) discloses a method for providing
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`employment recruiting.
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`d.
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`Nadkarni (US. Patent No.6, 266,659) discloses an online skilled/resume
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`management system.
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`c.
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`Kurzius (US. Patent No. 6,385,620) discloses an automatic candidate
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`recruiting system for arranging interview with candidate and employer based on mutual
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`consent.
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`f.
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`McGovern et al (US. Patent No. 6,370,510) discloses a method for providing
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`employment recruiting.
`
`g.
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`Dietz et a1 (U. S. Patent No. 6,408,337) discloses a system for managing
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`engagements of non-employee workers who are supplied by vendors.
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`g.
`
`h.
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`Belanger et a1 discloses (Employment interview information available online)
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`Scott (Dialog) discloses (How to Interview for Scarce Professionals).
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed Romain Jeanty whose telephone number is (703) 308-95 85. The
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`examiner can normally be reached Monday-Thursday from 7:30 am to 6:00 pm. If attempts to
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`reach the examiner are not successful, the examiner’s supervisor, Tariq R Hafiz can be reached
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`at (703) 305-9643.
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`Any inquiry of a general nature or relating to the status of this application or proceeding
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`should be directed to the group receptionist whose telephone number is (703) 308-1113.
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`Petitioner Exhibit 1017 p.12
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`Petitioner Exhibit 1017 p.12
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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 12
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`Any response to this action should be mailed to:
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`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`or faxed to:
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`(703) 305—7687
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`Hand delivered responses should be brought to Crystal Park 5, 2451 Crystal Drive,
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`Arlington VA, Seventh floor receptionist.
`
`Romain Jeanty
`
`Patent Examiner
`
`Jun
`
`03
`\
`
`Petitioner Exhibit 1017 p.13
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`Petitioner Exhibit 1017 p.13
`
`