IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Appln. No.:
`Customer No.:
`
`Wesby-van Swaay
`14/455,190
`02101
`
`Att’y Docket:
`Filing Date:
`Conf. No .:
`
`3781/1020
`August 8, 2014
`3505
`
`Art Unit:
`Zhou, Yong
`Examiner:
`PROGRAMMABLE COMMUNICATOR
`Invention:
`
`
`2477
`
`FILED BY USPTO ELECTRONIC FILING SYSTEM
`
`
`SUPPLEMENTAL NOTICE OF LITIGATION
`
`Dear Examiner Zhou:
`
`As you are aware from Applicant’s disclosure of numerous litigation documents and the
`
`Notice of Litigation filed on April 30, 2015, US. Patent No. 8,648,717, to which the
`
`present application claims priority, is involved in litigation in the United States District
`
`Court for the District of Delaware. In addition to the litigation listed in the Notice of
`
`Litigation filed on April 30, 2015, US. Patent No. 8,648,717 is also involved in the
`
`following litigations
`
`o M2M Solutions LLC v. Enfora Inc., Novatel Wireless Solutions, Inc., and
`
`
`Novatel Wireless Inc.
`
`0 Civil Action No. 1:14cv1101
`
`0 Status: Active/Pending
`
`
`o M2M Solutions LLC v. Sierra Wireless America, Inc., and Sierra
`
`
`Wireless Inc.,
`
`0 Civil Action No. 1:14cv1102
`
`0 Status: Active/Pending
`
`Page 1 of 247
`
`NOVATEL EXHIBIT 1021
`
`Page 1 of 247
`
`NOVATEL EXHIBIT 1021
`
`

`

`Appl. No. 14/455,190
`Supplemental Notice of Litigation Dated May 7, 2015
`
`0 M2M Solutions LLC V. Telit Communications PLC, and Telit Wireless
`
`Solutions Inc.
`
`0 Civil Action No. l:l4cvl 103
`
`0 Status: Active/Pending
`
`DATE: May 7, 2015
`
`Boston, MA 02110-1618
`(617) 443-9292
`03781/01020 2302949.l
`
`Respectfully submitted,
`/Jonathan C. Lovely, #60,82l/
`Jonathan C. Lovely
`Registration No. 60,821
`Attorney for Applicant
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`
`Page 2 of 247
`
`Page 2 of 247
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`

`

`Electronic Acknowledgement Receipt
`
`International Application Number:
`
`Title of Invention:
`
`PROGRAMMABLE COMMUNICATOR
`
`First Named Inventor/Applicant Name:
`
`Payment information:
`
`.
`
`.
`
`File Size(Bytes)/
`
`Multi
`
`Pages
`
`Miscellaneous Incoming Letter
`
`k|w3781_1020_NoticeLitigatio
`n2.pdf
`
`c2dee6818fa5cd8b6b66e8cc0f8a64f7632f
`
`
`
`File Listing:
`
`Document
`
`Information:
`
`Page 3 of 247
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`Page 3 of 247
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`

`

`Total Files Size (in bytes)
`
`79636
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Page 4 of 247
`
`Page 4 of 247
`
`

`

`
`
`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
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`2101
`
`7590
`
`05/05/2015
`
`Sunstein Kann Murphy & Timbers LLP
`125 SUMMER STREET
`BosToN. MA 02110-1618
`
`ZHOU, YONG
`
`2477
`
`DATE MAILED: 05/05/2015
`
`08/08/2014
`14/455,190
`TITLE OF INVENTION: PROGRAMMABLE COMMUNICATOR
`
`Eveline Wesby—van Swaay
`
`3781/1020
`
`3505
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`SMALL
`
`$480
`
`$0
`
`$0
`
`$480
`
`08/05/2015
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE 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.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STATUTORY PERIOD CANNOT BE EXTENDED.
`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
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`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify Whether entitlement to that
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`If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
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`II. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
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`
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
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`
`%Lgf3“§“8i“247
`
`Page 1 of 3
`
`Page 5 of 247
`
`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`or @ (571)-273-2885
`
`through 5 should be completed where
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks 1
`appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`in icated unless corrected below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for
`maintenance fee notifications.
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1 for any Change Ofaddress)
`
`7590
`
`210"
`S111’lSt€11’l Kann
`125 SUMMER STREET
`BOSTON, MA 02110-1618
`
`_ 05/05/2015
`& T11’I1b6I‘S LLP
`
`Note: A certificate of mailin can only be used for domestic mailings of the
`Fee(s) Transmittal. This certi icate cannot be used for any other accompanying
`fiapers. Each additional paper, such as an assignment or formal drawing, must
`ave its own certificate of mailing or transmission.
`
`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`S(ti2(1ites Poistal Stfirvilc/E:
`suffiScé%1]tEpg]sEt]2%ge§gr first glass mailbin an Envelope
`a
`resse
`to
`e
`a1
`top
`a
`ress a ove, or
`e1ng
`acs1m1 e
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`(Depositofs name)
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`F {ST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`08/08/2014
`14/455,190
`TITLE OF INVENTION: PROGRAMMABLE COMMUNICATOR
`
`Eveline Wesby—van Swaay
`
`3781/1020
`
`3505
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`SMALL
`
`$480
`
`$0
`
`$0
`
`$480
`
`08/05/2015
`
`EXAMINER
`
`ZHOU, YONG
`
`ART UNIT
`
`CLASS-SUB CLASS
`
`2477
`
`370-328000
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`
`3 Chan e of correspondence address (or Change of Correspondence
`Address orm PTO/SB/ 122) attached.
`
`2. For printing on the patent front page, list
`(1) The names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) The name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name will be printed.
`
`
`
`3 "Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Vumber is required.
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`If an assignee is identified below, the document has been filed for
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CFR 3.11. Completion of this form is NOT a substitute for filing an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`2
`
`3
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) :
`
`'3 Individual
`
`'3 Corporation or other private group entity '3 Government
`
`4a. The following fee(s) are submitted:
`3 Issue Fee
`
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`3 A check is enclosed.
`
`3 Publication Fee (No small entity discount permitted)
`3 Advance Order — # of Copies
`
`3 Payment by credit card. Form PTO-2038 is attached.
`3 The director is hereby authorized to charge the required fee(s), any deficiency, or credits any
`overpayment, to Deposit Account Number
`(enclose an extra copy of this form).
`
`5. Change in Entity Status (from status indicated above)
`3 Applicant certifying micro entity status. See 37 CFR 1.29
`
`3 Applicant asserting small entity status. See 37 CFR 1.27
`
`3 Applicant changing to regular undiscounted fee status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/ 15A and 15B), issue
`fee payment in the micro entity amount will not be accepted at the risk of application abandonment.
`NOTE: If the application was previously under micro entity status, checking this box will be taken
`to be a notification of loss of entitlement to micro entity status.
`NOTE: Checking this box will be taken to be a notification of loss of entitlement to small or micro
`entity status, as applicable.
`
`NOTE: This form must be signed in accordance with 37 CFR 1.31 and 1.33. See 37 CFR 1.4 for signature requirements and certifications.
`
`Authorized Signature
`
`Typed or printed name
`
`Date
`
`Registration No.
`
`Page 2 of 3
`
`Hfigsélnfi 1Qf0234-Zpproved for use through 10/31/2013.
`
`OMB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 6 of 247
`
`

`

`
`
`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.
`
`FILING DATE
`
`F {ST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/455,190
`
`08/08/2014
`
`Eveline Wesby—van Swaay
`
`3781/1020
`
`3505
`
`2101
`
`7590
`
`05/05/2015
`
`Sunstein Kann Murphy & Timbers LLP
`125 SUMMER STREET
`BOSTON, MA 02110-1618
`
`ZHOU, YONG
`
`2477
`
`DATE MAILED: 05/05/2015
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`
`(Applications filed on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
`
`to eliminate the
`Section 1(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i)
`requirement that the Office provide a patent term adjustment determination with the notice of allowance. See
`Revisions to Patent Term Adjustment, 78 Fed. Reg. 19416, 19417 (Apr. 1, 2013). Therefore, the Office is no longer
`providing an initial patent term adjustment determination with the notice of allowance. The Office will continue to
`provide a patent term adjustment determination with the Issue Notification Letter that is mailed to applicant
`approximately three weeks prior to the issue date of the patent, and will include the patent term adjustment on the
`patent. Any request for reconsideration of the patent term adjustment determination (or reinstatement of patent term
`adjustment) should follow the process outlined in 37 CFR 1.705.
`
`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 Customer Service Center of the Office of Patent Publication at 1—(888)—786—0101 or (571)-272-4200.
`
`OL—85 (Rev. 0
`1
`age 7 021 247
`
`Page 3 of 3
`
`Page 7 of 247
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`

`

`OMB Clearance and PRA Burden Statement for PTOL-85 Part B
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`Page 8 of 247
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`Page 8 of 247
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`

`

`Notice of Allowability
`
`Application No.
`14/455,190
`§>gN"gnZe;OU
`
`App|icant(s)
`WESBY—VAN SWAAY, EVELINE
`Qigynit
`’F‘:{;,<;‘,;S,‘,,',""°"‘°"°
`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. IX This communication is responsive to an amendment filed 4/17/2015.
`
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2. I:l 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. IX The allowed cIaim(s) is/are 1-30. As a result of the allowed cIaim(s), you may be eligible to benefit from the Patent Prosecution
`in.
`Highway program at a participating intellectual property office for the corresponding application. For more information, please see
`hit’ :/'/wwwusrto. ov/ atems/'init events/'
`I1/ir1ciex.'s' or send an inquiry to r'PHfeedback us today.
`
`4. IX Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`Certified copies:
`
`a) IZ All
`
`b) D Some
`
`*c) I:I None of the:
`
`1. IX Certified copies of the priority documents have been received.
`
`2. I:I Certified copies of the priority documents have been received in Application No.
`
`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] 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. I] 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. I] Notice of References Cited (PTO—892)
`
`2. I] Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date
`3. I] Examiner’s Comment Regarding Requirement for Deposit
`of Biological Material
`4. I] Interview Summary (PTO—413),
`Paper No./Mail Date
`
`/YONG ZHOU/
`
`Primary Examiner, Art Unit 2477
`
`5. El Examiner’s Amendment/Comment
`
`6. El Examiner’s Statement of Reasons for Allowance
`
`7. I:I Other
`
`.
`
`U.S. Patent and Trademark Office
`
`PTOL-37 (Rev. 08-13)
`
`Page 9 of 247
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20150428
`
`Page 9 of 247
`
`

`

`Application/Control No.
`
`Search NOTES
`
`14455190
`
`Applicant(s)/Patent Under
`Reexamination
`
`WESBY-VAN SWAAY, EVELINE
`
`
`
`Examiner
`
`YONG ZHOU
`
`
`
`Art Unit
`
`2477
`
` ZE1i-i
`A61B5/0024 G06F3/0481 G08C17/02 H04W12/06 H04W76/02
`10/14/2014
`
`CPC- SEARCHED
`
`CPC COMBINATION SETS - SEARCHED
`
`SEARCH NOTES
`
`Search Notes 2
`
`Inventor search in PALM
`Inventor search in EAST, see search history printout
`Admitted reference search
`EAST classification search (CPC A61 B, G06F, H04W) combined with
`ke word search; text search onl
`Update EAST search
`
`10/19/2014
`
`YZ
`
`4/28/2015
`
`INTERFERENCE SEARCH
`
`US Classl
`CPC S mbol
`
`US Subclass / CPC Group
`
`rintout— EAST text search for interference, see search history
`
`4/28/2015
`
`US. Patent and Trademark Office
`
`Page 10 of 247
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`Part of Paper No.
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`: 20150428
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`Page 10 of 247
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`

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`Issue Classification 14455190
`
`WESBY—VAN SWAAY, EVELINE
`
`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`Hiiiiiiiiiiiiiiiiiiiiiiiiiiiiii
`
`iiiiiii
`
`iii
`
`C PC
`
`YONG ZHOU
`
`2477
`
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`H°4M
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`H°4W _
`H°4W _
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`H°4W _
`
`CPC Combination Sets
`
`svmbol
`
`3%
`
`(Assistant Examiner)
`/YONG ZHOU/
`Primary Examiner.Art Unit 2477
`
`(Primary Examiner)
`US. Patent and Trademark Office
`
`Page 11 of 247
`
`Total Claims Allowed:
`
`30
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`4/28/2015
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`O.G. Print C|aim(s)
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`O.G. Print Figure
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`(Dam)
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`1
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`3
`Part of Paper No. 20150428
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`Page 11 of 247
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`

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`Issue Classification 14455190
`
`WESBY—VAN SWAAY, EVELINE
`
`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`iiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiii
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`YONG ZHOU
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`2477
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`Total Claims Allowed:
`
`30
`
`O.G. Print Figure (Primary Examiner)
`
`(Assistant Examiner)
`/YONG ZHOU/
`Primary Examiner.Art Unit 2477
`
`US. Patent and Trademark Office
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`Page 12 of 247
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`4/28/2015
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`O.G. Print C|aim(s)
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`(Dam)
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`1
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`3
`Part of Paper No. 20150428
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`Page 12 of 247
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`Issue Classification 14455190
`
`WESBY—VAN SWAAY, EVELINE
`
`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`Hiiiiiiiiiiiiiiiiiiiiiiiiiiiiii
`
`iiiiiii
`
`iii
`
`YONG ZHOU
`
`2477
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`
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`Total Claims Allowed:
`
`30
`
`
`
`(Assistant Examiner)
`/YONG ZHOU/
`Primary Examiner.Art Unit 2477
`
`(Primary Examiner)
`US. Patent and Trademark Office
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`Page 13 of 247
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`4/28/2015
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`(Dam)
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`O.G. Print C|aim(s)
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`O.G. Print Figure
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`1
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`3
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`Page 13 of 247
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`EAST Search History
`
`EAST Search History
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`Page 14 of 247
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