APPLICATION.NUMBER
`
`FILING DATE
`
`JENKENS & GILCHR!Sl'
`3200
`PLAfE
`1445 ROSS
`..
`D(.-iL.t ...
`TX:
`
`OF COMMERCE
`UNITED STATES
`Patent and Yrad·emark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, D.C. 20231
`ATIORNEY DOCKET NO
`
`FIRST NAMED
`
`:
`
`EXAMINER
`
`[ : ___ AR_T_u_N_Ir __ ___
`
`,/'
`
`DA1rE MAILED:
`
`This Is a communication from the examiner In charge of your application.
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`OFFICE ACTION SUMMARY
`
`_______________ _
`
`3l- Responsive to communicatlon(s) filed on
`f
`0 This action is FINAL.
`D 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 t=x parte Quayle, 1935 D.C. 11; 453 O.G. 213.
`A shortened statutory period for response to this action is
`__ month(s), or thirty days,
`to expire
`whichever is longer, from the mailing date of this communication. Failure to respond within the period for response will cause
`the application to become abandoned. (35 U.S.C. § 133). E>,fensions of time may be obtained under the provisions of 37 CFR
`1.136(!1).
`Dlspo!;ltlon of Claims
`__ '8'_____________
`r8l Claim(s)
`is/are pending in the application.
`Of the above, claim(s) ------------------------ is/are withdrawn from consideration.
`0 Claim(s) -------------------------------------is/are allowed.
`0 Claim(s) -----------------------------.,.----is/are rejected.
`0 Claim(s)
`is/are objected to.
`I
`;:;;?-- (5
`·IS!I Claims
`are subject to restriction or election requirement.
`\
`Application Papers
`0 See the attached Notice of Draftsperson's Patent Drawing Review, PT0:948.
`0 The drawing(s) filed on
`is/are objected to by the Examiner.
`is [] approved 0 disapproved.
`0 The proposed drawing correction, filed on----------------
`0 The specification is objected to by the Examiner.
`D The oath or declaration is objected to by the Examiner.
`Priority under 35 U.S.C. § 119
`0 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d).
`0 All [] Some• 0 None
`of the CERTIFIED copies of the priority documents have been
`CJ received.
`D received in Application No. (Series Code/Serial Numt>er) -----,.-------
`0 receive_d In this national stage application from the International Bureau (PCT Rule 17.2(a)).
`·certified copies not received:---------------------
`0 Aqknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`Attachment(s)
`0 Notice of Reference Cited, PT0-892
`0 Information Disclosure Statement(s), PT0-1449. Paper No(s). ____ _
`0 Interview Summary, PT0-413
`0 Notice of Draftsperson's Patent Drawing Review. PT0·948
`C Notice of Informal Patent Application, PT0·152
`··SEE OFFICE ACTION ON THE FOLLOWING PAGES··
`
`j
`
`PTOL·326 (Rov. 1 0195)
`
`* \.J S. GPO. 19.::6·409·230/<'.0029
`
`244MAX001381
`
`Maxim Integrated Products Ex. 2006
`Compass Bank et al. v. Maxim, CBM2015-00101
`Page 2006-1
`
`

`
`Serial Number: 08/595,014
`Art Unit: 2202
`
`Page 2
`
`DETAILED ACTION
`Restriction
`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`Claims 1-15, drawn to a method for adding a monetary equivalent to electronic
`
`I.
`
`1.
`
`equipment, classified in class 380, subclass 24.
`Claims 16-28, drawn to a method for receiving and transmitting encrypted data,
`
`II.
`
`classified in class 380, subclass 24.
`Inventions I and II are related as subcombinations disclosed as usable together in a single
`2.
`combination. The subcombinations are distinct from each other if the yare shown to be separately
`
`usable. In the instant case, invention II has separate utility such as a method for receiving and
`transmitting encrypted data that pe1Jorms the same functions independent of adding a monetary
`equivalent to eleCtronic equipment. See MPEP § 806.05(d).
`3.
`Because these inventions are distinct for the reasons given above and h:;we acquired a
`separate status in the art because of their recognized divergent subject matter, restriction for
`examination purposes as indicated is proper.
`4.
`A telephone call was made to Stephen Greenfield on May 7, 1997, to request an oral
`election to the above restriction requirement, but did not result in an election being made.
`
`Applicant is advised that the response to this requirement to be complete must include an
`5.
`election of the invention to be examined even though the requirement be traversed (37
`CFR 1.143).
`
`244MAX001382
`
`Maxim Integrated Products Ex. 2006
`Compass Bank et al. v. Maxim, CBM2015-00101
`Page 2006-2
`
`

`
`Serial Number: 08/595,014
`Art Unit: 2202
`
`Page 3
`
`Applicant is reminded that upon the cancellation of claims to a non-elected invention, the
`6.
`inventorship must be amended in compliance with 3 7 CFR 1.48(b) if one or more of the currently
`named inventors is no longer an inventor of at least one claim remaining in the application. Any
`amendment of inventorship must be accompanied by a diligently-filed petition under 3 7
`CFR 1.48(b) and by the fee required under 37 CFR l.l7(h).
`Conclusi(Jn
`Any inquiry concerning this communication or earlier communications from the examiner
`7.
`should be directed to Carmen White whose telephone number is (703) 305-4458.
`(tJ
`
`White
`
`f?, 0>
`
`THOMAS H. TAACZA
`SUPERVISORY PATENT EXAMINER
`GROUP2200
`.
`
`244MAX001383
`
`Maxim Integrated Products Ex. 2006
`Compass Bank et al. v. Maxim, CBM2015-00101
`Page 2006-3