UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`13/328,095
`
`ISSUE DATE
`
`01/21/2014
`
`2101
`
`7590
`
`12/31/2013
`
`Sunstein Kann Murphy & Timbers LLP
`125 SUMMER STREET
`BOSTON, MA 02110-1618
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`8633802
`
`3781/1007
`
`5730
`
`The projected patent number and issue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 0 day(s). Any patent to issue from the above—identified application will include
`an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) was filed in the above—identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
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`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEB site (http://pair.uspto. gov).
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`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
`payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
`(ODM) at (571)-272-4200.
`
`APPLICANT(S) (Please see PAIR WEB site http://pair.uspto. gov for additional applicants):
`
`Eveline Wesby-van Swaay, Tiddington, UNITED KINGDOM;
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`works to encourage and facilitate business investment. To learn more about why the USA is the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectUSA.gov.
`
`IR103 (Rev. 10/09)
`Page 1 of 515
`
`NOVATEL EXHIBIT 1011
`
`Page 1 of 515
`
`NOVATEL EXHIBIT 1011
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.goV
`
`APPLICATION NO.
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF {MATION NO.
`
`13/328,095
`
`12/16/2011
`
`Eveline Wesby—Van Swaay
`
`3781/1007
`
`5730
`
`Sunstein Kann Murphy & Timbers LLP
`”’23’””
`759°
`2””
`125 S UMMER S TREET
`NGUYEN, NAM V
`BOSTON, MA 02110-1618
`
`PAPER NUMBER
`
`ART UNIT
`
`26 82
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`12/23/2013
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`
`usptomail@sunsteinlaW.c0m
`
`PTOL—90A (Rev. 04/07)
`Page 2 of 515
`
`Page 2 of 515
`
`

`
`Supplemental
`Notice of Allowability
`
`Application No.
`13/328,095
`fig/|m\i/rj<fqrGUYEN
`
`App|icant(s)
`WESBY—VAN SWAAY, EVELINE
`Qgtggnit
`;‘,'{;,<§‘,;it,',""°"*°'*°
`No
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL—85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. IXI This communication is responsive to 12/2/2013.
`
`I: A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2. I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`requirement and election have been incorporated into this action.
`
`; the restriction
`
`3. E The allowed cIaim(s) is/are 21-51. As a result of the allowed cIaim(s), you may be eligible to benefit from the Patent Prosecution
`Highway program at a participating intellectual property office for the corresponding application. For more information, please see
`hit’ :/'.:’vwvvv.L.=s ‘to. ov/ atents/init events/'
`h/'incie;»<.‘s orsend an inquiry to PPHfeedback@us;;I:o.qov.
`
`4. I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`Certified copies:
`
`a) [I All
`
`b) I] Some
`
`*c) I:I None of the:
`
`1. D Certified copies of the priority documents have been received.
`
`2. D Certified copies of the priority documents have been received in Application No. j
`
`3. El 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)).
`
`* Certified copies not received:
`
`Applicant has THREE MONTHS FROM THE “MAILING DATE” of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`5. I:I CORRECTED DRAWINGS (as “replacement sheets”) must be submitted.
`
`I:I
`
`including changes required by the attached Examiner’s Amendment / Comment or in the Office action of
`Paper No./Mail Date
`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).
`
`6. El DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner’s comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. El Notice of References Cited (PTO—892)
`
`2. IX Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date 12/2/13
`3. El Examiner’s Comment Regarding Requirement for Deposit
`of Biological Material
`4. I:I Interview Summary (PTO—413),
`Paper No./Mail Date
`
`/NAM V NGUYEN/
`
`Primary Examiner, Art Unit 2682
`
`5. El Examiner’s Amendment/Comment
`
`6. El Examiner’s Statement of Reasons for Allowance
`
`7. El Other
`
`.
`
`U.S. Patent and Trademark Office
`
`PTOL-37 (Rev. 08-13)
`
`Page 3 of 515
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20131216
`
`Page 3 of 515
`
`

`
`PTO!SBf08a (01-10)
`Doc code: IDS
`th
`df
`A
`h 07/302012. OMB 0651-0031
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`.
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`U_s_ Patent and Tragzggfk O‘:;::eU_§"EfiEPARTMENT OF COMMERCE
`Doc description: Information Disclosure Statement (IDS) Filed
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`INFORMATION DISCLOSURE
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`STATEMENT BY APPLICANT
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`( Not for submission under 37 CFR 1.99)
`
`Application Number
`
`Filing Date
`
`13328095
`
`2011-12-16
`
`First Named Inventor
`Eveline Wesby—van Swaay
`Art Unit
`| 2682
`Examiner Name
`Nam V. Nguyen
`Attorney Docket Number
`| 3781/1007
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`E).(‘?m*iner Cite
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`U.S.PATENTS
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`Rem°Ve
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`Kind
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`Code1
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`of cited Document
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`::IJee\1:I'i:toPuar:::g|:=.i:e<:' VR:I:r:ant
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`U.S.PATENT APPLICATION PUBLICATIONS
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`Add
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`Cite No
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`Kind
`Codet Date
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`Name of Patentee or Applicant PageS’C°|umn5'Line5 Where
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`Relevant Passages or Relevant
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`FOREIGN PATENT DOCUMENTS
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`Country
`Code2 i
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`Publication
`Kind
`Code4 Date
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`Name of Patentee or
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`NON-PATENT LITERATURE DOCUMENTS
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`R9m0Ve
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`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the item
`.
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`Examiner Cite
`T5
`(book, magazine, Journal, serial, symposium, catalog, etc}, date, pages(s), volume-issue number(s),
`.
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`publisher, city and/or country where published.
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`EFSWeb2.1.17
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`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED TRRDUGR.
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`IN FORMATION DISCLOSU RE
`STATEMENT BY APPLICANT
`( Not for submission under 37 CFR 1.99)
`
`Application Number
`
`13328095
`
`2011-12-16
`Filing Date
`Eveline Wesby—van Swaay
`First Named Inventor
`lm
`A“ Unit
`Nam V Nguyen
`Examiner Name
`Attorney Docket Number
`| 3781/1007
`
`M2M Solutions LLC v. Sierra Wireless American, Inc. and Sierra Wireless, Inc. et al., U.S.D.C. for the District of
`
`Delaware — Civil Action No. 12—030—RGA, Memorandum Opinion, served on November 12, 2013 (20 pages) {REF_HL}
`
`If you wish to add additional non-patent literature document citation information please click the Add button Add
`EXAMINER SIGNATURE
`
`Examiner Signature
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`
`/Nam Nguyenl
`Date Considered
`
`I2/1 5/2013
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`*EXAM|NER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a
`citation if not in conformance and not considered.
`Include copy of this form with next communication to applicant.
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`2 Enter office that issued the document, by the two-letter code (WIPO
`1 See Kind Codes of USPTO Patent Documents at www.USPTO.GOV or MPEP 901.04.
`Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document.
`4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible.
`5 Applicant is to place a check mark here if
`English language translation is attached.
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`EFSWeb2.1.17
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`Page 5 of 515
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`INFORMATION DISCLOSURE
`
`STATEMENT BY APPLICANT
`
`( Not for submission under 37 CFR 1.99)
`
`Application Number
`
`13328095
`
`Filing Date
`
`2011-12-16
`
`First Named Inventor
`Eveline Wesby-van Swaay
`Art Unit
`| 2682
`Examiner Name
`Nam V. Nguyen
`Attorney Docket Number
`| 3781/1007
`
`CERTIFICATION STATEMENT
`
`Please see 37 CFR 1.97 and 1.98 to make the appropriate se|ection(s):
`
`|:I
`
`That each item of information contained in the information disclosure statement was first cited in any communication
`from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the
`information disclosure statement. See 37 CFR 1.97(e)(1).
`
`OR
`
`That no item of information contained in the information disclosure statement was cited in a communication from a
`
`foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification
`after making reasonable inquiry, no item of information contained in the information disclosure statement was known to
`any individual designated in 37 CFR 1.56(c) more than three months prior to the filing of the information disclosure
`statement. See 37 CFR 1.97(e)(2).
`
`|:| See attached certification statement.
`
`The fee set forth in 37 CFR 1.17 (p) has been submitted herewith.
`
`|:| A certification statement is not submitted herewith.
`
`SIGNATURE
`
`A signature of the applicant or representative is required in accordance with CFR 1.33, 10.18. Please see CFR 1.4(d) for the
`form of the signature.
`
`Signature
`
`NamelPrint
`
`/Jonathan C. Lovely, #60,821/
`
`Date (YYYY-MM-DD)
`
`2013-12-02
`
`60821
`
`Jonathan C. Lovely
`
`Registration Number
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`This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the
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`Privacy Act Statement
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`The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act
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`U.S. DEPARTMENT OF COMMERCE
`PATENT AND TRADEMARK OFFICE
`
`PATENT WITHDRAWAL NOTICE
`
`DATE WITHDRAWN
`
`WITHDRAWAL NUMBER
`
`The following application has been WITHDRAWN from the
`
`12/17/2013 issue.
`
`SERIAL NO.
`
`,
`
`PATENT NUMBER
`
`13328095
`
`8610540
`
`NAME AND ADDRESS
`
`EVELINE WESBY-VAN SWAAY
`TIDDINGTON, GERMANY
`
`REASON FOR WITHDRAWAL
`
`Auto-petition to withdraw - Granted.
`
`APPROVED
`
`FORM PTO—302 -- (REV. 05-2009)
`
`Page 8 of 515
`
`/Kimberly Terrell/, Manager
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`Office of Data Management
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`PTOISBIEBOEFS (07-09)
`Doc code: RCEX
`Approved for use through 0'-’r'31f2012. OMB 0551-0031
`Doc description: Request for Continued Examination (RCE)
`u.s. Patent and Trademark Office; u.s. DEPARTMENT OF COMMERCE
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`REQUEST FOR CONTINUED EXAMINATION(RCE)TRANSMlTTAL
`(Submitted Only via EFS-Web)
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`A'°p”°ati°”
`Number
`First Named
`Inventor
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`13/328095
`'
`
`.
`Eveline Wesby—van Swaay
`
`2011-12-16
`
`D°°ketN”mb°'
`(if applicable)
`Examiner
`Name
`
`3781/1007
`
`Nguyen, Nam V.
`
`This is a Request for Continued Examination (RCE) under 37 CFR 1.1 14 of the above-identified application.
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`PTOISBIEBOEFS (07-09)
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`Jonathan C. Lovely
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`Registration Number
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`60821
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`This collection of information is required by 37 CFR 1.114. The information is required to obtain or retain a benefit by the public which is to
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`1.
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`The information on this form will be treated confidentially to the extent allowed under the Freedom of Information
`Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C. 552a). Records from this system of records may be disclosed to the
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`A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having need
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`pursuant to the Patent Cooperation Treaty.
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`A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
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`
`EFS — Web 2.1.15
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`Doc Code; PET_AUTO
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`U.S. Patent and Trademark Office
`
`PTO/SB/ 1 40
`
`Document Description: Petition automatically granted by EFS—Web
`Department Of Commerce
`
`
`Electronic Petition Request
`
`PETITION TO WITHDRAW AN APPLICATION FROM ISSUE AFTER PAYMENT OF
`THE ISSUE FEE UNDER 37 CFR1.313(c)
`
`Application Number
`
`13323095
`
`Filing Date
`
`16—Dec—201 I
`
`First Named Inventor
`
`Eveline Wesby—van Swaay
`
`Art Unit
`
`2682
`
`Examiner Name
`
`NAM NGUYEN
`
`Attorney Docket Number
`
`3781/1007
`
`Title
`
`Programmable Communicator
`
`An application may be withdrawn from issue for further action upon petition by the applicant. To request that the Office
`withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a
`showing of good and sufficient reasons why withdrawal of the application from issue is necessary.
`
`APPLICANT HEREBY PETITIONS TO WITH DRAW THIS APPLICATION FROM ISSUE UNDER 37 CFR1.313(c).
`
`A grantable petition requires the following items:
`(1) Petition fee; and
`(2) One ofthe following reasons:
`(a) Unpatentability ofone or more claims, which must be accompanied by an unequivocal statement that one or more claims
`are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or
`claims to be patentable;
`(b) Consideration ofa request for continued examination in compliance with § 1.1 14 (for a utility or plant application only); or
`(c) Express abandonment ofthe application. Such express abandonment may be in favor ofa continuing application, but not a
`CPA under 37 CFR 1.53(d).
`
`Petition Fee
`
`@ Small Entity
`
`0 Micro Entity
`
`0 Regular Undiscounted
`
`Reason for withdrawal from issue
`
`Page 12 of 515
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`Page 12 of 515
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`0 One or more claims are unpatentable
`
`@ Consideration ofa request for continued examination (RCE)
`
`(List of Required Documents and Fees)
`
`0 Applicant hereby expressly abandons the instant application (any attorney/agent signing for this reason must
`have power of attorney pursuant to 37 CFR I.32(b)).
`
`RCE request,submission, and fee.
`
`I certify, in accordance with 37 CFR 1.4(d)(4) that:
`The RCE request ,submission, and fee have already been filed in the above—identified application on
`
`l:l
`
`Are attached.
`
`E T
`
`HIS PORTION MUST BE COMPLETED BY THE SIGNATORY OR SIGNATORIES
`
`I certify, in accordance with 37 CFR 1.4(d)(4) that I am:
`
`(9 An attorney or agent registered to practice before the Patent and Trademark Office who has been given power of attorney
`in this application.
`
`0 An attorney or agent registered to practice before the Patent and Trademark Office, acting in a representative capacity.
`
`0 A sole inventor
`
`O Ajoint inventor; I certify that I am authorized to sign this submission on behalfof all ofthe inventors
`
`O Ajoint inventor; all of whom are signing this e—petition
`
`O The assignee of record of the entire interest that has properly made itself of record pursuant to 37 CFR 3.71
`
`Slgnature
`
`Name
`
`
`
`/Jonathan C. Lovely, #60,821/
`
`Jonathan C. Lovely
`
`Registration Number
`
`60821
`
`Page 13 of 515
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`Electronic Patent Application Fee Transmittal
`
`Title of Invention:
`
`Programmable Communicator
`
`;
`
`Utility under 35 USC111(a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`Basic Filing:
`
`Petition Fee-37CFR 1.1
`
`(Group
`
`RCE - 2nd and Subsequent Request
`
`2820
`
`1
`
`850
`
`850
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-AlIowance-and-Post-Issuance:
`
`Page 14 of 515
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`Extension-of-Time:
`
`Miscellaneous:
`
` S“:-S1-;(t$a)| in
`
`Total in USD (S)
`
`Page 15 of 515
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`Page 15 of 515
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`U nited States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DECISIOTI Datei
`
`December 2, 2013
`
`In re Application of:
`
`Eveline Wesby—van Swaay
`
`Application N02
`
`Filed =
`
`16-Dec-2011
`
`Attorney Docket No:
`
`3731/1007
`
`DECISION ON PETITION
`
`UNDER CFR1.313(c)(2)
`
`This is an electronic decision on the petition under 37 CFR 1.313(c)(2), filed December 2, 2013, to withdraw the above—identified
`application from issue after payment of the issue fee.
`
`The petition is GRANTED.
`
`The above-identified application is withdrawn from issue for consideration ofa submission under 37 CFR 1.1 14 (request for
`continued examination). See 37 CFR1.313(c)(2).
`
`Petitioner is advised that the issue fee paid in this application cannot be refunded. If, however, this application is again
`allowed, petitioner may request that it be applied towards the issue fee required by the new Notice of Allowance.
`
`Telephone inquiries concerning this decision should be directed to the Patent Electronic Business Center (EBC) at 866-217-9197.
`
`This application file is being referred to Technology Center AU
`under 37 CFR 1.114.
`
`2582 for processing of the request for continuing examination
`
`Office of Petitions
`
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`
`Electronic Acknowledgement Receipt
`
`m—
`
`Title of Invention:
`
`Programmable Communicator
`
`I—
`
`Payment information:
`
`yes—
`Submitted with Payment
`
`
`
`—Auth°“zedUser
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination processing fees)
`
`Page 17 of 515
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`Page 17 of 515
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`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
`
`File Listing:
`
`Document
`
`Information:
`
`.
`
`.
`
`File Size(Bytes)/
`
`Multi
`
`Pages
`
`Quick Path Information Disclosure
`Statement
`
`3781_1007_QP|DS.pdf
`
`afda8ad7f50ac36ead2a60accb6d5504db2
`5493
`
`_
`_
`Information Disclosure Statement (IDS)
`Form (SE08)
`
`3781_1007_lDS.pdf
`
`50cebd99cffd6ec6f709ab30514adef2bab3
`4933
`
`612268
`
`A U.S. Patent Number Citation ora U.S. Publication Number Citation is required in the Information Disclosure Statement (IDS) form for
`autoloading of data into USPTO systems. You may remove the form to add the required data in order to correct the Informational Message if
`you are citing U.S. References. Ifyou chose not to include U.S. References, the image ofthe form will be processed and be made available
`within the Image File Wrapper (IFW) system. However, no data will be extracted from this form. Any additional data such as Foreign Patent
`Documents or Non Patent Literature will be manually reviewed and keyed into USPTO systems.
`
`Non Patent Literature
`
`3781_1007_Ref_1.pdf
`
`1603007
`
`a80cb35a3c08b423e201f09ae1d31b8c8cf5
`0044
`
`Information:
`
`_
`_
`_
`Request for Continued Examination
`(RCE)
`
`3781 1007 RCE. df
`-
`-
`'°
`
`797868
`
`36e6ea4bl 398e6a I 5e0l 634ab778e7c762l
`be97b
`
`8c8c40b08f8983d4094d96d7e835fe76843
`ccb15
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`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`b84l 24c2d9f7b53l I I 79e4e93cde8e754a7
`57fcc
`
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`This Acknowledgement Receipt evidences receipt on the not