`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`.
`UNITED STATES DEPARTMENT OF COMMERCE
`Unlted States Patent and Trademark Office
`Addxus: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`www.mpm.gov
`
`10/101 ,644
`
`03/19/2002
`
`Marc Vianello
`
`BLACKWELL SANDERS PEPER MARTIN LLP
`TWO PERSHING SQUARE
`2300 MAIN STREET, sums 1000
`KANSAS CITY, MO 64108
`
`,
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`-4
`
`15703.10002
`
`8626
`
`‘
`
`'
`
`JEANTY,ROMAIN
`_
`
`3623
`
`DATE MAILED: 05/ 19/2004
`
`
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C R .10/03
`( ev
`
`)
`
`Monster Worldwide, Inc. Exhibit 1012 (p.1/8)
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`Monster Worldwide, Inc. Exhibit 1012 (p.1/8)
`
`

`

`Application No.
`
`Applicant(s)
`
`Office Action Summary
`
`10/101.644
`Examine,
`
`VIANELLO, MARC
`An Unit
`
`3623
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`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.
`if the 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).
`
`In no event, however, may a reply be timely filed
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`Status
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`HIE Responsive to communication(s) filed on 24 February 2004.
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`2am This action is FINAL.
`2b)!:] This action is non-final.
`3)I:I 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 CD. 11,453 O.G. 213.
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`Disposition of Claims
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`MIX Claim(s) LN 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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`5)I] Claim(s)_ is/are allowed.
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`6MB Claim(s) 5-_1'/' is/are rejected.
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`7)I:] Claim(s) _ is/are objected to.
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`8)E] Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`
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`9)l:l The specification is objected to by the Examiner.
`10)|:I The drawing(s) filed on __ is/are: a)|] accepted or b)E] 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 correctionis required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`10!] 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)I:l Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)E] All
`b)I:] Some * c)E] None of:
`’
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`1E] Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No. _
`3E] 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)
`
`1 ) E Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) [I information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)lMail Date
`.
`U.S. Patent and Trademark Office
`
`4) E] Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. _ -
`5) I:I Notice of Informal Patent APP'icatIOn (PTO-152)
`6) D Other:
`.
`
`PTOL-326 (Rev. 1-04)
`
`Office Action Summary
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`Part of Pa er No./Mai| Date 8
`_
`Monster Worldwrde, Inc. Exhibit 012 (p.2/8)
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`Monster Worldwide, Inc. Exhibit 1012 (p.2/8)
`
`

`

`Application/Control Number: 10/101,644
`Art Unit: 3623
`
`Page 2
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`DIETAJIlLlED 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 February 24, 2004. By
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`the Amendment, claim 16 has been amended. No claims have been added. Claims 5-17 are
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`pending in the application.
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`Response to Arguments
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`2.
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`The applicant’s Request for Reconsideration filed February 24, 2004 has been fully
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`considered. However, Applicant’s arguments are not deemed to be persuasive.
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`Claim RejectiOns - 35 USC § 103
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`3.
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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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`4.
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`Claims 5-8, 14 and 16-17 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`McGovern et al (US. Patent No.5, 978,768) in view of Williams et a1 (U.8. Patent No.
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`6,618,734) as set forth in the prior office action of paper number 6.
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`5.
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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 (US. Patent No.5, 978,768) in view of Williams et al (US. Patent No.
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`6,618,734) as applied to claims 5 and 14 above and further in View of Dialog (Linking students
`
`Monster Worldwide, Inc. Exhibit 1012 (p.3/8)
`
`Monster Worldwide, Inc. Exhibit 1012 (p.3/8)
`
`

`

`Application/Control Number: 10/101,644
`Art Unit: 3623
`
`Page 3
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`to jobs Gooey on the grow (Gooey Industries, which provides Web-based hiring service) as set
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`forth in the prior office action of paper number 6
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`Remarks
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`1.
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`Applicant asserted that there is nothing in the individual patens relied upon by the
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`Examiner that would suggest combining the job search/posting of McGovern with the interview
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`processing system of Williams. Applicant further supported his assertion by arguing that
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`Williams does not teach or suggest authorization for the release of contact information. In
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`response, it is noted that the features upon which applicant relies (i.e., authorization for the
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`release of contact information) are not recited in the rejected claim(s). Although the claims are
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`interpreted in light of the specification, limitations from the specification are not read into the
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`claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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`Applicant further argued that Williams does not teach or suggest the performance of any
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`act in response to a candidate request for interview. Since these features can not be found in the
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`claims, the examiner will not consider applicant’s argument which is directed to these features.
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`Therefore, applicant’s arguments are not persuasive.
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`Applicant further argued on page 51 that Williams does not provide the processing of
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`handling of such request, initial contact and authorization for exchange of information at that
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`stage, and applicant particular argued that there is nothing in Williams that clearly or particularly
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`teaches or suggests the need or desire to modify the interview screening process, in order to
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`address pre-contact information exchange or authorization. In response, it is noted that the
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`features upon which applicant relies (i.e., initial contact and authorization for exchange of
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`Monster Worldwide, Inc. Exhibit 1012 (p.4/8)
`
`Monster Worldwide, Inc. Exhibit 1012 (p.4/8)
`
`

`

`Application/Control Number: 10/101 ,644
`Art Unit: 3623
`
`Page 4
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`information, and the need or desire to modify the interview screening process, in order to address
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`pre-contact information exchange or authorization) are not recited in the rejected claim(s).
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`Although the claims are interpreted in light of the specification, limitations from the specification
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`are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir.
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`1993).
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`In addition, in response to applicant's argument that the examiner's combining of
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`Williams and McGovern in hindsight of Applicant’s invention, it must be recognized that any
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`judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight
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`reasoning. But so long as it takes into account only knowledge which was within the level of
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`ordinary skill at the time the claimed invention was made, and does not include knowledge
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`gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re
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`McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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`Applicant further argued that the consent that is contended by Williams is between
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`candidate and employer and the consent of Applicant’s invention is not between candidate and
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`employer. In response, the Examiner respectfully disagrees with Applicant’s argument because
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`Applicant’s claimed the invention clearly recites receiving a request for interview of a candidate
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`and an employer and determining if there is a mutual consent for the interview. Thus, it implies
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`that the consent is between the candidate and the employer.
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`2.
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`Applicant further argued on page 6 that McGovern andl Willams do not
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`teach or suggest matching, request and consent, for the release 011' information prior to any
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`contact at all between the parties. In response, it is noted that the features upon which
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`applicant relies (i.e.,
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`for the release of information prior to any contact at all between the
`
`Monster Worldwide, Inc. Exhibit 1012 (p.5/8)
`
`Monster Worldwide, Inc. Exhibit 1012 (p.5/8)
`
`

`

`Application/Control Number: 10/101,644
`Art Unit: 3623
`
`Page 5
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`parties) are not recited in the rejected c1aim(s). Although the claims are interpreted in light of the
`
`specification, limitations from the specification are not read into the claims. See In re Van
`
`Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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`Applicant argued on page 52 that McGovern does not teach or suggest the receipt of
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`responses from an employer during the initial contact by a candidate. In response, the Examiner
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`respectfully disagrees with Applicant’s arguments because Williams does teach the idea of
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`receiving responses from a candidate and a client. Note col. 3, line 2—9 of Williams.
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`Applicant further argues that the receipt of payment is based on a complexly different
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`criterion than anything suggested or taught by Dialog. In response, the Examiner respectfully
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`disagrees with Applicant’s arguments because Dialog does teach providing interview scheduling
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`for job seekers and employers pay a fee for service rendered (See entire page 2), which is
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`equivalent to applicant’s claimed invention. It would have been obvious to one of ordinary skill
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`in the art in order to modify the teachings of McGovern et al and Williams et al to include the
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`teachings of Dialog with the motivation to guarantee by a service provider that an employer
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`receives best matched candidates, therefore maximizing revenue of the service provider.
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`Conclusion
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`5.
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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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`Smith (US. Patent No. 6,70,1313) discloses a system for matching a job seeker with
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`an employer which receives an interview request.
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`Monster Worldwide, Inc. Exhibit 1012 (p.6/8)
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`Monster Worldwide, Inc. Exhibit 1012 (p.6/8)
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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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`b.
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`Nadkami (US. Patent No. 6,266,659) discloses an providing and interview with a
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`candidate, request an employer to specify a preferred time, mode of interview, the interviewer,
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`his contact information, location, etc.
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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) 308-9585. 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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`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: (703) 305-7687
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`Hand delivered responses should be brought to Crystal Park 5, 2451 Crystal Drive,
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`% R
`
`omain Jeanty
`
`Primary Examiner
`
`Art Unit 3623
`
`Monster Worldwide, Inc. Exhibit 1012 (p.7/8)
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`Arlington VA, Seventh floor receptionist.
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`May 17,2004
`
`Monster Worldwide, Inc. Exhibit 1012 (p.7/8)
`
`

`

`Notice of References Cited E'xaminer
`
`Application/Control No.
`
`10’101-644
`
`Applicant(s)/Patent Under
`Reexamination
`VIANELLO, MARC
`
`Romain Jeanty
`U.S. PATENT DOCUMENTS
`
`Art Unit
`3623
`
`Page 1 Of 1
`
`.
`Document Number
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`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Classification
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`707/3
`
`707/6
`
`-
`
`,
`
`,
`
`07-2001
`
`Nadkarni Uday P
`
`03-2004
`
`Smith, Glenn Courtney
`
`Document Number
`Country Code-Number—Kind Code
`
`-
`
`FOREIGN PATENT DOCUMENTS
`
`
`
`Classification
`
`
`'A copy of this referenceIs not being furnished with this Office action (See MPEP § 707. 05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademrk Office
`
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 8
`
`Monster Worldwide, Inc. Exhibit 1012 (p.8/8)
`
`Monster Worldwide, Inc. Exhibit 1012 (p.8/8)
`
`