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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P10. Box 1450
`Alexandria. Virginia 22313-1450
`www.usp!o.gov
`
`' UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO.
`
`10/101,644
`
`FILING DATE
`
`03/19/2002
`
`27526
`
`7590
`
`07/ 14/2005
`
`BLACKWELL SANDERS PEPER MARTIN LLP
`4801 Main Street
`Suite 1000
`KANSAS CITY, MO 64112
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NOT
`
`Marc Vianello
`
`15703.10002
`
`8626
`
`EXAMINER
`
`JEANTY, ROMAIN
`
`‘
`
`PAPER NUMBER
`
`3623
`
`DATE MAILED: 07/14/2005
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO 90C (Rev 10/03)
`
`Monster Worldwide, Inc. Exhlblt 1016 (p.1/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.1/13)
`
`
`
`Office Action Summary
`
`Examine,
`
`RomainJeanty
`
`'
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`Application No.
`
`Applicant(s)
`
`10/101,644
`
`VIANELLO, MARC
`
`Art Unit
`
`.
`
`3623 -
`
`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 OlTIce 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).
`
`In no event. however, may a reply be timely filed
`
`-
`
`Status
`
`HIE Responsive to communication(s) filed on M.
`
`2b)l:l This action is non-final.
`2a)IZ This action is FINAL.
`3)L__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 QC. 213.
`
`Disposition of Claims
`
`4)|Z Claim(s) @ is/are pending in the application.
`
`43) Of the above claim(s) 1-4 9 16 18-197is/are withdrawn from consideration.
`
`5)|:] Claim(s) _ is/are allowed.
`
`6)IZ Claim(s) 5-8 10-15 17 and 198-204 is/are rejected.
`
`7):] Claim(s) _ is/are objected to.
`8):] Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9):] The specification is objected to by the Examiner.
`
`10):] The drawing(s) filed on _ is/are: a)|:l accepted or DID objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CF R 1.121(d).
`
`11):] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)E] All
`b)EI Some * c)[:l None of:
`LD Certified copies of the priority documents have been received.
`21] Certified copies of the priority documents have been received in Application 'No. _
`
`3.1:] 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.
`
`Attachment(s)
`
`1) E] Notice of References Cited (PTO-892)
`2) E] Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) [I Information Disclosure Statement(s) (PTO—1449 or PTO/SB/OB)
`Paper No(s)/Mai| Date _.
`US. Patent and Trademark Office
`
`4) [I] interview Summary (PTO413)
`Paper NOISVMai' Date- _-
`5) E] Notice of Informal Patent Application (PTG152)
`e) D Other;
`
`“CL-326 (Rev. HM)
`
`Office Aw” summal'K/Ionster Worldwide, In.PanExTiiBef#161181???331105
`
`<%\
`
`Monster Worldwide, Inc. Exhibit 1016 (p.2/13)
`
`
`
`Application/Control Number: 10/101,644
`Art Unit: 3623
`
`.
`
`,ilv
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`Page 2
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`DETAILED ACTION
`
`Response to Amendment
`
`.
`
`1.
`
`This Final Office action is in response to the amendment filed April 4, 2005. Claims 5-8,
`
`10-15, 17, and 198-204 are pending in the application.
`
`2.
`
`Applicant’s amendment to claim 198 has overcome the 35 USC. 112 second rejection.
`
`The rejection has been withdrawn.
`
`3.
`
`Applicant's arguments with respectto claims 5-8, 10-15, 17, and 198-204 have been
`
`Response to Arguments
`
`considered but are found to be non-persuasive.
`
`35 USC. 101 reads as follows:
`
`Claim Rejections - 35 USC § 101
`
`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.
`
`4.
`
`Claims 5-8, 10 and 198-204 are rejected under 35 USC. 101 because the claimed
`
`invention is directed to non-statutory subject matter.
`
`The basis ofthis rejection is set forth in a two-prong test of:
`
`(1) whether the invention is within the technological arts of:
`
`(2) whether the invention produces a useful, concrete, and tangible result.
`
`For a claimed invention to be statutory, the claimed invention must be within the
`
`technological arts. Mere ideas in the abstract (i.e., abstract idea, law of nature, natural
`
`phenomena) that do not apply, invoice, use, or advance the technological arts fail to promote the
`
`Monster Worldwide, Inc. Exhibit 1016 (p.3/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.3/13)
`
`
`
`Application/Control Number: 10/101,644
`Art Unit: 3623
`
`Page 3
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`“progress of science and the useful arts” (i.e., the physical sciences as 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.
`
`Furthermore, mere intended or nominal use of a component, albeit within the
`
`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.
`
`While claims 5—8, 10 and 198—204 produce a useful, concrete, and tangible result, they are
`
`deemed to be statutory for failure to apply, involve, use, or advance the technological arts, In
`
`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
`
`steps of the invention, Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of 35 USC. 103(a) which forms the basis for all
`
`obviOusness rejections set forth in this Office action:
`
`(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.
`
`6.
`
`Claims 5-8, 14, 16-17, and 198-204 are rejected under 35 USC. 103(a) as being
`
`unpatentable over McGovern et al (US. Patent No.5, 978,768) in view of Williams et al (US.
`
`Patent No. 6,618,734) and further in View of Joao (US. Patent No. 6,662,194).
`
`Monster Worldwide, Inc. Exhibit 1016 (p.4/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.4/13)
`
`
`
`Application/Control Number: 10/101,644
`Art Unit: 3623
`
`.
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`i
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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:
`
`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
`
`position requirement) (col. 13, lines 27-40);
`
`McGovern et a1 disclose all of the limitations above except for receiving a request for
`
`interview from at least one of said candidate and said employer and determining whether there is
`
`mutual content to said request for interview. Williams in the same field ofendeavor, teaches the '
`
`idea of following-up and scheduling interview between a job candidate and a client (since
`Williams et a1 teaches following-up on an interview and mutually agreed time, it implies that
`
`there was a request for the interview and there was a mutual consent/agreement for the
`
`interview) col. 8, lines 42-50 and col. 9, lines 1-11). Thus, it would have been obvious to a
`
`person of ordinary skill in the art to modify the interactive employment recruiting service system
`
`of McGovern et al to incorporate the interview based on mutual consent as evidenced by
`
`Williams. A person having ordinary skill in the art would have been motivated to use such a
`
`modification in order to determine which applicants best match the criteria set by the client.
`
`The combination of McGovern et a1 and Williams does not expressly disclose
`
`authorization for the release of contact information by the candidate and providing exchange of
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`contact information.
`
`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).
`
`It would have been obvious to a person of ordinary skill in the
`
`an to modify the teachings of McGovern et a1 and Williams et alto incorporate the teachings of
`
`Monster Worldwide, Inc. Exhibit 1016 (p.5/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.5/13)
`
`
`
`Application/Control Number: 10/101,644
`
`Art Unit: 3623
`
`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.
`
`Applicant has amended the claims to recite “obligating apayment duefrom'said
`
`employer in real-time based on the mutual consent to said requestfor interview with said
`
`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/
`
`recruitment related services which effect a paymentfrom one party to another (col. 34, lines 29-
`
`46). It would have been obvious to a person ofordinary skill in the art to modify the disclosures
`
`ofMcGovern and Williams to include,providingjob searching services, recruitment services,
`
`and/or/ recruitment related services which eflect a paymentfrom one party to another as
`
`evidenced by Joao in order to render payments or fees for services rendered to a party.
`
`As per claim 6, McGovern et a1 and Williams do not expressly disclose wherein said
`
`information exchange occurs in preparation for an interview, said information occurring prior to
`
`any direct contact between the parties. Joao discloses the exchange of information between the
`
`employer and the employee (col. 27, lines 47-60) (Since Joao does not state whether the
`
`exchange of information occurs prior or after any direct contact between the employer and the
`
`employee, it infers that the information exchange occurs before any direct contact between the
`
`party). It would have been obvious to a person of ordinary skill in the an to modify the teachings
`
`of McGovern et a1 and Williams et al to incorporate the teachings of Joao in order to provide the
`
`identity of the party requesting the information to the respective individual, employer and/or
`
`hiring entity. It would have been. obvious to a person of ordinary skill in the art at the time of
`
`applicant’s invention to modify the teachings of McGovern to incorporate the exchange of
`
`Monster Worldwide, Inc. Exhibit 1016 (p.6/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.6/13)
`
`
`
`Application/Control Number: 10/101,644
`Art Unit: 3623
`
`‘
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`Page 6
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`information in preparation for an interview as evidenced by Williams et a1 with the motivation to
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`better match candidates to take suitability interview.
`
`As per claims 7 and 16, the combination of McGovern et a1 and Williams et al discloses
`
`_ the limitations of claim 7 in the rejection of claims 5 and 14. In addition, McGovern et a1
`
`discloses comparing a preferred employer specification in said candidate attributes (col. 4, lines
`
`26-31).
`
`As per claims 8 and 17, the combination of McGovern et al and Williams et a1 discloses -
`
`all of the limitations in the rejection of claims 5 and 14. In addition, McGovern et al disclose
`
`receiving a response to said request for interview from at least one of said candidate and said
`
`employer and utilizing said response to schedule the interview (col. 11, lines 54-58 and col. 11,
`
`lines 12-16).
`
`It would have been obvious to a person of ordinary skill in the art at the time the
`
`invention was made to modify the employment recruiting system of McGovern et alto include
`
`receiving a response to said request for interview from at least one of said candidate and said
`
`employer as evidenced by Williams: A person having ordinary skill in the art would have been
`
`motivated to use such a modification in order to insure that interview will be taken place.
`
`Claim 14 is a distributed network for facilitating interviews between at least one
`
`candidate and at least one employer for performing the steps of method claim 5; therefore claim
`
`5 is rejected similarly under the same rationale relied upon of claim 5.
`
`7.
`
`Claims 9-13 and 15 are rejected underd 35 U.S.C. 103(a) as being unpatentable over
`
`McGovern et al (US. Patent No.5, 978,768) in view of Williams et a1(U.S. Patent No.
`
`6,618,734) and in fiarther in view of view of Joao (US. Patent No. 6,662,194).
`
`Monster Worldwide, Inc. Exhibit 1016 (p.7/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.7/13)
`
`
`
`Application/Control Number: 10/101,644
`
`Art Unit: 3623
`
`'
`
`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
`
`endeavor teaches the idea of providing interview between the two parties and receiving payment
`
`between the parties (col. 34, line 29 through col. 35 line 41).
`
`It would have been obvious to one
`
`of ordinary skill in the art in order to modify the teachings of McGovern et a1 and Williams et al
`
`to include the teachings of Joao with the motivation to guarantee by a service provider that an
`
`employer receives best matched candidates, therefore maximizing revenue of the service
`
`provider.
`
`Applicant has amended the claims to recite “wherein, saidpayment is afee to a career
`
`site operator”. Joao in the samefield ofendeavor teaches a methodfor providingjob searching
`
`services, recruitment services, and/or/ recruitment related services which efi’ect a paymentfrom
`
`one party to another (col. 34, lines 29-46). It would have been obvious to a person ofordinary
`
`skill in the art to modzfv the disclosures ofMcGovern and Williams to include providingjob
`
`searching services, recruitment services, and/or/ recruitment related services which effect a
`
`paymentfrom one party to another as evidenced by Joao in order to render payments orfeesfor -
`
`services rendered to a party.
`
`As per claim 10, it is common that a company would pay a lot more to an employment
`
`firm to fill in an executive position and vary the pay amount based on the prospective
`
`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
`
`amount, a high school amount, a vocational educational training amount, an associate degree
`
`amount, a bachelor degree amount, a master degree amount, and a doctorate amount, wherein
`
`Monster Worldwide, Inc. Exhibit 1016 (p.8/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.8/13)
`
`
`
`Application/Control Number: 10/101,644
`Art Unit: 3623
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`-
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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
`
`amount, which is less than or equal to said vocational educational training amount, which is less
`
`than or equal to said high school amount, which is less than or equal to said general equivalency
`
`diploma amount” are similar type of features a company would pay for a candidate for the
`
`motivation of attracting more qualified candidates.
`
`Claim 11 recites is a computer system for performing the method step of claim 5;
`
`therefore is rejected similarly. McGovern et a1 and William does not expressly disclose “a
`
`payment interface operable to receive payment from said employer based on occurrence of said
`
`mutual consent. Joao in the same field of endeavor teaches the idea of providing interview for
`
`job candidates and employers pay a fee for service rendered (col. 34, line 29 through col. 35 line
`
`41). It would have been obvious to one of ordinary skill in the art in order to modify the
`
`teachings ofMcGovern et a1 and Williams et alto include the teachings ofJoao with the
`
`motivation to guarantee by a service provider that an employer receives best matched candidates,
`
`therefore maximizing revenue of the service provider and at the same time maximizing potential
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`income of the service provider.
`
`Applicant has amended the claims to recite “ real time
`
`wherein, saidpayment is afee
`
`to a career site operator ”. Joao in the samefield ofendeavor teaches a methodfor providing
`
`job searching services, recruitment services, and/or/ recruitment related services which eflect a
`
`paymentfrom one party to another (col. 34, lines 29—46). It would have been obvious to a
`
`person ofordinary skill in the art to modifiz the disclosures ofMcGovern and Williams to include
`
`providingjob searching services, recruitment services, and/or/ recruitment related services
`
`Monster Worldwide, Inc. Exhibit 1016 (p.9/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.9/13)
`
`
`
`Application/Control Number: 10/101,644
`
`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 a1 and Williams et a1 discloses the
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`limitations of claim 12 in the rejection of claim 11 above.
`
`In addition, McGovern et a1 discloses
`
`comparing a preferred employer specification in said candidate attributes (col. 4, lines 26-31).
`
`As per claim 13, McGovern et a discloses all of the limitations in the rejection of claim
`
`11 above, but McGovern et al fail to disclose receiving a response to said request for interview
`
`from at least one of said candidate and said employer and utilizing said response to schedule the
`
`interview. Williams in the same field of endeavor, teaches the idea of following-up on an
`
`interview and mutually agreed time between an employer and an employee (col. 8, lines 42-50
`
`and col. 9, lines 1-11). Thus, it would have been obvious to a person ofordinary skill in the art to
`
`modify the interactive employment recruiting servicesystem of McGovern et alto incorporate
`
`the interview based on mutual consent as evidenced by Williams. A person having ordinary skill
`
`in the art would have been motivated to use such a modification in order to insure that interview
`
`will be taken place.
`
`Remarks
`
`8.
`
`Applicant asserted that McGovern, William and Joao do not teach applicant’s claimed
`
`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
`
`suggestion to combine the references, the examiner recognizes that obviousness can only be
`
`established by combining or modifying the teachings of the prior art to produce the claimed
`
`invention where there is some teaching, suggestion, or motivation to do so found either in the
`
`Monster Worldwide, Inc. Exhibit 1016 (p.10/13)
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`Monster Worldwide, Inc. Exhibit 1016 (p.10/13)
`
`
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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. 1988)and In re Jones, 958 F.2d 347,
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`21 USPQ2d 1941 (Fed. Cir. 1992).
`
`In this case, combining the teachings Joao with McGovern
`
`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 party.
`
`Conclusion
`
`9.
`
`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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`Kay (US. 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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`THIS 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).
`
`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 after
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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
`
`date of this final action.
`
`Monster Worldwide, Inc. Exhibit 1016 (p.11/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.11/13)
`
`
`
`Application/Control Number: 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
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR 'or Public PAIR. Status information for unpublished
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`' 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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`-919'Z (t 11-free).
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`R
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`'
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`Jean
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`Primary Exami er
`Alt Unit 3623
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`7 - I/. 05
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`- Monster Worldwide, Inc. Exhibit 1016 (p.12/13)
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`Monster Worldwide, Inc. Exhibit 1016 (p.12/13)
`
`
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`Applicant(s)lPatent under
`Reexamination
`
`10/101,644
`Examiner
`
`VIANELLO, MARC
`Art Unit
`
`Romain Jeant
`
`3623
`
`
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`SEARCHED
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`SEARCH NOTES
`(INCLUDING SEARCH STRATEGY)
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`'
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` Application/Control No.
` Search Notes
`UllllMlNl
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`705
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`7, 8, 9, 11
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`7/8/2005
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`--
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`7/10/2005 I
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`RJ
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`US. Patent and Trademark Office
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`.
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`Part of Paper No. 071105
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`Monster Worldwide, Inc. Exhibit 1016 (p.13/13)
`
`Monster Worldwide, Inc. Exhibit 1016 (p.13/13)
`
`