Application
`No. 09/802,481
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`REMARKS
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`Reconsideration of the application as amended is respectfully requested.
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`under Section 112
`Rejection
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`The rejection of claims 1-14 as being indefinite is respectfully traversed. It is in error for
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`at least the following reasons.
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`The examiner contends that claims 14 are indefinite because "it is not clear as to what
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`happens 'if the set of offers does not include at least one offer that meets any of the preferred
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`requested terms."'
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`Applicants maintain that the claim is definite for the reasons set forth in the pnor
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`response. Furthermore, with respect to claims 13 and 14, the limitation quoted by the examiner
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`is found only in claims 1 and 11, but not independent claims 10, 13 and 14. No substantially
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`similar "contingencies," as the examiner contends they are, are found in claims 10, 13 and 14.
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`The examiner has thus provided no explanation of why claims 10, 13 and 14 have been rejected,
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`it is submitted that the examiner has not made a prima facie case of indefiniteness for claims 10,
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`13 and 14 for at least this additional reason.
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`Nevertheless, claims 1 and 11 have been amended to address the issues raised by the
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`examiner without narrowing or limiting the scope of the subject matter. It is therefore
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`respectfully requested that the rejection of claims 1-14 under Section 112 be withdrawn.
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`Rejection under Section 101
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`The rejection of claims 1-14 under section 101 is respectfully traversed.
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`Applicants maintains that all claims none of the claims 1 to 14 are directed to a judicial
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`exception under section 1 0 1, and therefore the inquiry as whether the claimed subject matter
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`constitutes a practical application is unnecessary. Claims 1 to 10 are directed to computer
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`implemented processes. Claims 11 and 13 are directed to a system with an interface and a
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`processor. Claims 12 and 14 is directed to a computer readable medium.
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`The examiner also continues to confuse indefiniteness with subject matter eligibility. He
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`states that "contingencies" in the claimed subject matter noted in the section 112 rejection mean
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`the subject matter does not produce a "useful, concrete and tangible result." However, such
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`Page 6 of7
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`Petitioner Askeladden - Exhibit 1002 - Page 389
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`

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`Application
`No. 09/802,481
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`reasoning is a fallacy; indefiniteness ands subject matter eligibility are not linked. Any alleged
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`indefiniteness in the expression of the claim language does not deprive the subject matter of
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`being capable of producing a "useful, concrete and tangible result."
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`Nevertheless, rather than expending further effort to explain the fundamental legal errors
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`being committed by the examiner, suffice it to say that, as previously explained, claims 1 and 11
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`have been amended in a manner that addresses the alleged "contingencies." Therefore, the
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`amendments presumably also address the perceived issues the examiner has with claims 1-11
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`under section 101. Furthermore, as already alluded to, claims 10, 13 and 14 do not, in fact,
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`suffer from the alleged "contingencies" noted by the examiner and, on top of that, contain the
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`limitations that could not be more tangible. Claim 13 expressly requires an interface and a
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`processor. Claims 12 and 14 are each directed to a computer readable medium. Therefore, the
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`continued rejection of claims 10, 13 and 14 under section 101 is manifestly in error. The
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`rejection of claims 1-14 under section 101 should therefore be withdrawn for at least these
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`reasons.
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`Applicant believes this application is now in allowable form. Applicant hereby
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`authorizes the Commissioner to charge any fees due but not submitted with this paper to Deposit
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`Account No. 07-0153. The examiner is respectfully requested to call the attorney of record for
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`any reasons that would advance the current application to issue. Please reference attorney docket
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`Respectfully submitted,
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`GARDERE WYNNE SEWELL LLP
`
`/Marc A. Hubbard/
`Marc A. Hubbard
`
`Registration No. 32,506
`ATTORNEY FOR APPLICANT
`
`no. 132438-1014.
`
`Dated: March 31, 2008
`
`3000 Thanksgiving Tower
`
`1601 Elm Street
`Dallas, Texas 75201-4761
`(214) 999-4880-Telephone
`(214) 999-3880- Facsimile
`
`DALLAS 1863473vl
`
`Page 7 of 7
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`Petitioner Askeladden - Exhibit 1002 - Page 390
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`

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`Electronic
`
`
`Patent Application Fee Transmittal
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`
`
`Application Number:
`
`09802481
`
`Filing Date:
`
`09-Mar-2001
`
`Title of Invention:
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`Customized credit offer strategy based on terms specified by an
`
`
`applicant
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`
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`First Named Inventor/Applicant Name:
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`Paul Willard
`
`Filer:
`
`Marc A. Hubbard
`
`Attorney Docket Number:
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`132538-1014
`
`Filed as Small Entity
`
`Utility Filing Fees
`
`Description
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`Fee Code Quantity Amount
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`Sub-Total in
`USD($)
`
`Basic Filing:
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`Pages:
`
`Claims:
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`Independent claims in excess of 3
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`2201
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`2
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`105
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`210
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`
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`M iscellaneous-Fi ling:
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`Petition:
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`Patent-Appeals-and-1 nterference:
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`Post -Allowance-and -Post -lssu ance:
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`
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`Extension-of-Time:
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`Petitioner Askeladden - Exhibit 1002 - Page 391
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`

`
`Description
`
`Fee Code Quantity Amount Sub-Total in
`USD($)
`
`
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`Extension - 2 months with $0 paid
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`2252
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`1
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`230
`
`230
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`Miscellaneous:
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`Request for continued examination
`
`2801
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`1
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`405
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`405
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`($)
`Total in USD
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`845
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`Petitioner Askeladden - Exhibit 1002 - Page 392
`
`

`
`
`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`3082634
`
`
`
`Application Number:
`
`09802481
`
`
`
`International Application Number:
`
`
`
`
`
`Confirmation Number:
`
`5875
`
`Title of Invention:
`
`Customized credit offer strategy based on terms specified by an
`
`
`applicant
`
`
`
`First Named Inventor/Applicant Name:
`
`Paul Willard
`
`Customer Number:
`
`32914
`
`Filer:
`
`Marc A. Hubbard
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`132538-1014
`
`Receipt Date:
`
`31-MAR-2008
`
`Filing Date:
`
`09-MAR-2001
`
`Time Stamp:
`
`20:17:58
`
`
`
`Application Type:
`
`
`
`Utility under 35 USC 111 (a)
`
`Payment information:
`
`Submitted with Payment
`
`yes
`
`Payment Type
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`
`
`Payment was successfully received in RAM
`
`
`
`RAM confirmation Number
`
`Deposit Account
`
`Authorized User
`
`Credit Card
`
`$845
`
`4643
`
`070153
`
`HUBBARD,MARC A.
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`
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`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
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`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
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`Charqe any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination processinq fees)
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`Petitioner Askeladden - Exhibit 1002 - Page 393
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`37 C.F.R. Section 1.19 (Document supply fees) Charge any Additional Fees required under
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`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size(Bytes) Multi Pages
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`1
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`Request for Continued Examination
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`Warnings:
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`This is not a USPTO supplied RCE SB30 form.
`
`Information:
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`2
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`
`Amendment Submitted/Entered with
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`Warnings:
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
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`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 Agglications Under 35 U.S.C. 111
`
`If a new application is being filed and the application includes the necessary components for a filing date (see
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`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
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`shown on this Acknowledgement Receipt will establish the filing date of the application.
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`National Stage of an International Agglication under 35 U.S.C. 371
`
`If a timely submission to enter the national stage of an international application is compliant with the conditions
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`
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`
`
`of 35 U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the
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`application as a national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt,
`in due course.
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`New International Agglication Filed with the USPTO as a Receiving Office
`
`If a new international application is being filed and the international application includes the necessary
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`components for an international filing date (see PCT Article 11 and MPEP 181 0}, a Notification of the
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`International Application Number and of the International Filing Date (Form PCT/R0/1 05) will be issued in due
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`course, subject to prescriptions concerning national security, and the date shown on this Acknowledgement
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`Receipt will establish the international filing date of the application.
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`Petitioner Askeladden - Exhibit 1002 - Page 394
`
`

`
`PTO/SB/06 (07-06)
`Approved for use through 1/31/2007. OMB 0651-0032
`
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`
`
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`
`Filing Date
`or Docket Number PATENT APPLICATION FEE DETERMINATION RECORD Application
`
`09/802,481 03/09/2001 D To be Mailed
`
`Substitute for Form PT0-875
`
`APPLICATION AS FILED- PART I
`
`(Column 1)
`
`(Column 2)
`
`SMALL ENTITY D OR
`
`OTHER THAN
`SMALL ENTITY
`
`FOR
`
`NUMBER FILED NUMBER EXTRA RATE($)
`
`FEE($)
`
`RATE($)
`
`FEE($)
`
`D BASICFEE
`(37 CFR 1.16(a),
`(b), or (c))
`D SEARCH FEE
`(37 CFR 1.16(k),
`(i), or (m))
`D EXAMINATION FEE
`(37 CFR 1.16(o), (p), or (q))
`TOTAL CLAIMS
`(37 CFR 1.16(1))
`INDEPENDENT CLAIMS
`(37 CFR 1.16(h))
`
`N/A
`
`N/A
`
`N/A
`
`minus 20 =
`
`minus 3 =
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`.
`
`.
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`N/A
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`N/A
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`N/A
`
`N/A
`
`N/A
`
`N/A
`
`X$ =
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`X$ =
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`0 APPLICATION SIZE FEE
`(37 CFR 1.16(s))
`
`If the specification and drawings exceed 100
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`sheets of paper, the application size fee due
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`is $250 ($125 for small entity) for each
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`additional 50 sheets or fraction thereof. See
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`35 U.S.C. 41 (a)(1)(G) and 37 CFR 1.16(s).
`D MULTIPLE DEPENDENT CLAIM PRESENT (37 CFR 1.16U))
`
`N/A
`
`N/A
`
`N/A
`
`OR X$ =
`
`X$ =
`
`
`
`• If the difference in column 1 is less than zero, enter "0" in column 2.
`
`
`
`TOTAL
`
`TOTAL
`
`APPLICATION AS AMENDED- PART II
`
`(Column 1)
`
`(Column 2)
`
`(Column 3)
`
`SMALL ENTITY OR
`
`OTHER THAN
`SMALL ENTITY
`
`CLAIMS
`REMAINING
`03/31/2008
`I-
`AFTER
`z
`AMENDMENT
`w
`Total (37 CFR
`• 14
`� 1.16(1))
`0
`Independent
`. 6
`z
`w 37 CFR 1.16 hi I
`
`� D Application Size Fee (37 CFR 1.16(s))
`<(
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`Minus •• 20
`Minus ***6
`
`PRESENT
`EXTRA
`
`ADDITIONAL
`RATE($)
`FEE($)
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`= 0
`= 0
`
`X$ =
`
`X$ =
`
`OR X $50=
`
`OR X $210=
`
`D FIRST PRESENTATION
`(37 CFR 1.16(j))
`OF MULTIPLE DEPENDENT CLAIM
`
`TOTAL
`ADD'L
`FEE
`
`OR
`
`OR
`
`TOTAL
`ADD'L
`FEE
`
`(Column 1)
`
`(Column 2)
`
`(Column 3)
`
`0
`0
`
`0
`
`PRESENT
`EXTRA
`
`ADDITIONAL
`RATE($)
`FEE($)
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`I-
`z Total (37 CFR .
`w 1.161111
`� Independent .
`0 (37 CFR 1.16(h))
`z D Application Size Fee (37 CFR 1.16(s))
`
`w
`�
`<(
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`Minus ..
`Minus ...
`
`=
`
`=
`
`D FIRST PRESENTATION
`(37 CFR 1.16(j))
`OF MULTIPLE DEPENDENT CLAIM
`
`X$ =
`
`X$ =
`
`OR X$ =
`
`OR X$ =
`
`OR
`
`TOTAL
`TOTAL
`ADD'L
`ADD'L
`FEE
`FEE
`in column 2, write "0" in column 3. Legal Instrument * If the entry in column 1 is less than the entry Examiner:
`
`
`
`
`
`
`
`less than 20, enter "20". /TONY A Q. MCBRIDE/ •• If the "Highest Number Previously Paid For" IN THIS SPACE is
`••• If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter "3".
`
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`
`
`
`
`The "Highest Number Previously Paid For" (Total or Independent) is the highest number found in the appropriate box in column 1.
`
`OR
`
`Th1s collect1on of mformat1on IS requ1red by 37 CFR 1.16 . The mformat1on IS requ1red to obtam or retam a benefit by the public wh1ch IS to f1le (and by the USPTO to
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`
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`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering,
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`preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you
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`require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S.
`
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`
`Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
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`VA 22313-1450. ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria,
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`
`
`If you need assistance in completing the form, call 1-800-PT0-9199 and select option 2.
`
`Petitioner Askeladden - Exhibit 1002 - Page 395
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Application No:
`
`09/802,481
`
`Confirmation No.
`5875
`
`Applicant:
`
`Willard, Paul
`
`Filed:
`
`March 9, 2001
`
`Title:
`
`Customized Credit Offer Strategy Based on Terms Specified by an
`
`
`Applicant
`
`Assignee:
`
`
`
`N extCard, LLC
`
`Docket:
`
`132538-1014
`
`Customer No.: 32914
`
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, Virginia 22313-1450
`
`ASSERTION OF SMALL ENTITY STATUS
`37 C.F.R. § 1.27(c)(l)
`
`Dear Sir:
`
`
`
`The owner of record of this application, NextCard, LLC, qualifies as a small entity.
`
`
`
`Small entity status is therefore asserted for this application.
`
`Date: March 13, 2008
`
`Respectfully submitted,
`
`/Marc A. Hubbard/
`Marc A. Hubbard
`
`Registration No. 32,506
`
`GARDERE WYNNE SEWELL LLP
`1601 Elm Street, Suite 3000
`Dallas, Texas 75201
`Phone: (214) 999-4880
`
`Fax: (214) 999-3623
`
`DALLAS 1896575vl
`
`Petitioner Askeladden - Exhibit 1002 - Page 396
`
`

`
`
`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`2993862
`
`
`
`Application Number:
`
`09802481
`
`
`
`International Application Number:
`
`
`
`
`
`Confirmation Number:
`
`5875
`
`Title of Invention:
`
`Customized credit offer strategy based on terms specified by an
`
`
`applicant
`
`
`
`First Named Inventor/Applicant Name:
`
`Paul Willard
`
`Customer Number:
`
`32914
`
`Filer:
`
`
`
`Marc A. Hubbard/Pam Kerr
`
`Filer Authorized By:
`
`Marc A. Hubbard
`
`Attorney Docket Number:
`
`132538-1014
`
`Receipt Date:
`
`13-MAR-2008
`
`Filing Date:
`
`09-MAR-2001
`
`Time Stamp:
`
`14:37:40
`
`
`
`Application Type:
`
`
`
`Utility under 35 USC 111 (a)
`
`Payment information:
`
`Submitted with Payment
`
`File Listing:
`
`I no
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size(Bytes) Multi Pages
`(if appl.}
`Part /.zip
`/Message Digest
`
`1
`
`
`
`Miscellaneous Incoming Letter
`
`Warnings:
`
`Information:
`
`68915
`132538-1 014smallentitystatu
`sassertion.pdf
`
`
`
`95fd693a03eff4d913211 c8e9277b094a
`
`7e04058
`
`no
`
`1
`
`Petitioner Askeladden - Exhibit 1002 - Page 397
`
`

`
`Total Files Size (in bytes):
`
`68915
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the 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
`If a 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
`If a 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
`If a 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 181 0}, a Notification of the
`International Application Number and of the International Filing Date (Form PCT/R0/1 05) 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.
`
`Petitioner Askeladden - Exhibit 1002 - Page 398
`
`

`
`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
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO. CONFIRMATION NO.
`
`09/802,481
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`03/09/2001
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`Paul Willard
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`NEXTP007
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`5875
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`32914
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`7590
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`GARDERE WYNNE SEWELL LLP
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`INTELLECTUAL PROPERTY SECTION
`3000 THANKSGIVING TOWER
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`1601 ELM ST
`DALLAS, TX 75201-4761
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`10/31/2007
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`EXAMINER
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`SUBRAMANIAN, NARA Y ANSWAMY
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`ART UNIT
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`PAPER NUMBER
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`3691
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`MAIL DATE
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`DELIVERY MODE
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`10/31/2007
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`Petitioner Askeladden - Exhibit 1002 - Page 399
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`09/802,481
`Office Action Summary Examiner
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`WILLARD ET AL.
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`Art Unit
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`Application No.
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`Applicant(s)
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`Narayanswamy Subramanian 3691
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`--The MAILING DATE of this communication appears on the cover sheet with the correspondence address
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`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;1 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
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`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event. however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
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`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.
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`Failure to reply within the set or extended period lor reply will, by statute. cause the application to become ABANDONED (35 U.S.C. § 133).
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`Any reply received by the Office later than three months after the mailing date of this communication. even if timely filed, may reduce any
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`earned patent term adjustment. See 37 CFR 1. 704(b).
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`Status
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`1 )[g) Responsive
`to communication(s) filed on 23 August 2007.
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`2a)[gl This action is FINAL.
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`2b)0 This action is non-final.
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`closed in accordance with the practice under Ex parte Quayle, 1935 C.O. 11, 453 O.G. 213.
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`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`Disposition of Claims
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`4)[gl �Ciaim(s) 1-14 is/are pending in the application.
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`4a) Of the above claim(s) is/are withdrawn from consideration.
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`5)0 Claim(s) is/are allowed.
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`())[g) Claim(s) 1-14 is/are rejected.
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`7)0 Claim(s) is/are objected to.
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`8)0 Claim(s) are subject to restriction and/or election requirement.
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`Application Papers
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`9)0 The specification is objected to by the Examiner.
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`1 0)0 The drawing(s) filed on __
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`is/are: a)O accepted or b)O 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 correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
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`Priority under 35 U.S.C. § 119
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`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
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`2.0 Certified copies of the priority documents have been received in Application No. __ .
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`3.0 Copies of the
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`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} 0 Notice of References Cited (PT0-892)
`2} 0 Notice of Draftsperson's
`Patent Drawing Review (PT0-948)
`3) 0 Information
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`Disclosure Statement(s) (PTO/SB/08)
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`Paper No(s)/Mail Date __
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`4) 0 Interview
`Summary (PT0-413)
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`Paper No(s)/Mail Date. __
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`5) 0 Notice of Informal Patent Application
`6) 0 Other: __
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`U.S. Patent and Trademark Off1ce
`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No./Mail Date 20071028
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`Petitioner Askeladden - Exhibit 1002 - Page 400
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`Application/Control Number: 09/802,481
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`Page 2
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`Art Unit: 3691
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`DETAILED ACTION
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`This oftice action is in response to applicants' equest for continued examination filed on
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`November 20, 2006. Amendments to claims 1, 5 and 9-14 have been entered. Rejections made
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`under 35 USC l 12, second paragraph in the last office action have been withdrawn in view of the
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`amendments. Claims 1-14 are currently pending and have been examined. The rejections and
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`response to arguments are stated below.
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`Claim Rejections - 35 USC§ 112
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`The following is a quotation of the second paragraph of 35 U .S.C. 112:
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`The specification shall conClude with one or more claims particularly pointing out and distinctly claiming the
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`suhjcct matter, which the applicant regards as his invention.
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`3. Claims 1-14 recite the limitations "if the set of offers includes at least one offer that
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`meets all of the requested terms, selecting from among the set of offers a selected offer that
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`meets all of the requested terms; if the set of offers does not include at least one offer that meets
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`all of the requested terms but includes at least one offer that meets at least one of the preferred
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`requested terms, selecting from among the set of offers a selected offer that meets the at least one
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`of the preferred requested terms". lt is not clear as to what happens "if the set of offers does not
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`include at least one offer that meets any of the requested terms or at least one of the preferred
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`requested terms" rendering the scope of the claims indeterminate. It is not clear how the
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`objective
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`of transmitting a customized offer to an applicant, recited in the preamble of the
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`claims, is achieved if this condition is met. Hence the scope of the claim remains indeterminate.
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`Appropriate correction/clarification is required.
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`Petitioner Askeladden - Exhibit 1002 - Page 401
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`Application/Control Number: 09/802,481
`Art Unit: 3691
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`Page 3
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`Claim Rejections-35 USC§ 101
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`4. 35 U.S.C. 101 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
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`matter, or any new and useful improvement thereof, may obtain a patent therefor, suhjcct to the conditions
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`and requirements of this title.
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`5. Claims 1-14 are rejected under 35 U.S.C. § 101 because the claimed invention is directed
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`tQ. non-statutory Subject matter.
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`35 USC 101 requires that in order to be patent?ble the invention must be a "new and
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`useful process, machine, manufacture, or composition of matter, or any new and useful
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`improvement thereof' (emphasis added).
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`Claims 1-14 are drawn to "A method oftransmitting a customized ofter to an applicant".
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`As such the claimed invention is directed to a judicial exception to 35 U.S.C. 101 (i.e., an
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`abstract idea, natural phenomenon, or law of nature) and is not directed to a practical application
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`of such judicial exception because the claims do not require any physical transformation and the
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`invention as claimed does not produce a useful, concrete, and tangible result. For· instance if the
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`set of offers does not include at least one offer that m�ets alJ of the requested terms or at least
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`one of the preferred requested terms, then it is not clear as to what happens. The method then
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`stops with determining a set of offers for the customer, which does not produce a useful,
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`concrete, and tangible result.
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`The Court of Appeals for the Federal Circuit issued opinions in State Street Bank & Trust
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`Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998) and
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`AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352,50 USPQ2cl1447 (Fed. Cir. 1999).
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`a
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`These decisions explained that, to be eligible for patent protection, the claimed invention as
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`whole must accomplish a practical application. That is, it must produce a "useful, concrete and
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`Petitioner Askeladden - Exhibit 1002 - Page 402
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`Application/Control Number: 09/802,481
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`Page 4
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`Art Unit: 3691
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`tangible result." State Street, 149 F.3d at 1373-74,47 USPQ2d at 160102. To satisfy section 101
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`requirements, the claim must be for a practical application of the§ 101 judicial exception, which
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`can be identified in various ways: (a) The claimed invention "transforms" an article or physical
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`object to a different state or thing. (b) The claimed invention otherwise produces a usefu I,
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`concrete and tangible result, based on the factors discussed below.
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`of provides that the utility requirement The USPTO's official interpretatio� of the utility
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`an invention has to be (i) specific, (ii) substantial and (iii) credible. See MPEP § 2107.
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`does require that the claim must recite more than a § 1 OJ
`The tangible requirement
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`judicial exception, in that the process claim must set forth a practical application of that§ 101
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`judicial exception to produce a real-world result. Benson, 409 U.S. at 71-72, 175 USPQ at 676-
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`77 (invention ineligible because had "no substantial practical application").
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`For an invention to produce a "concrete" result, the process must have a result that can be
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`substantiaHy
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`repeatable or the process must substantia11y produce the same result again. In re
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`Swartz, 232 F.3d 862, 864,56 USPQ2d 1703, 1704 (Fed. Cir. 2000) (where asserted result
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`produced by the claimed invention is "irreproducible" claim should be rejected under section
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`I 01 ). The opposite of"concrete" is unrepealable or unpredictable.
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`There is no useful, concrete and tangible result produced from implementing the steps of
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`t!J.e claimed invention if one of the contingencies in the claimed invention discussed above is not
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`on a satisfied. The dependent claims are rejected for the sa!lle reason and by way of dependency
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`rejected independent claim.
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`Petitioner Askeladden - Exhibit 1002 - Page 403
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`Application/Control Number: 09/802,481
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`Art Unit: 3691
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`Response to Arguments
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`Page 5
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`6. In response to applicant's assertion "It is respectfully submitted that a person of ordinary
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`skill in the art could interpret the rejected claims so as to understand how to avoid infringement.
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`There is nothing ambiguous about the interpretation of the meaning of the claim: a selected offer
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`is transmitted to the applicant when at least one of the set of offers meets all of the requested
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`terms or if no offers include all of the requested terms, then an offer that meets at least one of the
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`that what happens when it is determined Not specifying p�eferred requested terms is transmitted.
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`none of the set of offers meets all of the requested terms and further none of the set of offers
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`meets at least one preferred requirement is not necessary to enable interpretation to avoid
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`infringement. Therefore, it is submitted that omissions of an "if not" statement does not render
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`the claims indefinite, and that the claims meet the statutory requirements", the examiner
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`respectfully disagrees. As discussed in the rejection above, the scope of the claimed invention,
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`taken as a whole, is indeterminate because it is not clear as to what happens if the third condition
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`of"ifthe set of offers does not include at least one offer that meets any of the requested terms or
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`at. least one of the preferred requested terms" is met. Hence the rejection is maintained.
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`In response to applicant's assertion "It is respe.ctfully submitted that a tangible, concrete
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`and useful result is produced by the claimed method. The examiner contends that the result is not
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`repeatable or reproducible, and thus it cannot be "concrete." However, this is simply not correct.
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`If either of two criteria is met, an offer transmission is made. Each time the process is followed,
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`the transmission is made. The result is reproduced each time. The result is plainly concrete", the
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`examiner respectfully disagrees. The examiner agrees with the applicant's assertion that if either
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`of two criteria is met, an offer transmission is made. However when the third condition of"ifthe
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`Petitioner Askeladden - Exhibit 1002 - Page 404
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`Application/Control Number: 09/802,481
`Art Unit: 3691
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`Page 6
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`set of offers does not include at least one offer that meets any of the requested terms or at least
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`one of the preferred requested terms" is met, it is not clear as to what is the result of following
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`the process. Hence the result is not useful, tangible and concrete when the third condition is met.
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`Hence the claimed invention taken as a whole fails to produce useful, tangible and concrete
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`result.
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`Conclusion
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`7. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR I .l36(a).
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`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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`die 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. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Dr. Narayanswamy Subramanian whose telephone number is
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`(571) 272-6751. The examiner can norma11y be reached Monday-Thursday from 8:30 AM to
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`7:00PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor,
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`Alexander Kalinowski can be reached at (571) 272-6771. The fax number for Formal
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`or Official faxes and Draft to the Patent Office is (571) 273-8300.
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`Petitioner Askeladden - Exhibit 1002 - Page 405
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`Application/Control Number: 09/802,481
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`Page 7
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`Art Unit: 3691
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`Information regarding the status of an application may be obtained from the Patent
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`Application
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`Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PMR or Public PAIR. Status information for unpublished
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`applications is available through Private PMR only. For more information about the PMR
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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 866-217-9197 (toll-free).
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`Dr. N. Subramanian
`Primary Examiner
`Art Unit 3691
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`October 29, 2007
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`Petitioner Askeladden - Exhibit 1002 - Page 406
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`Index of Claims
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`Applicant(s)/Patent under
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`Application/Control No.
`Reexamination
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`Examiner
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`WILLARD ET AL.
`Art Unit
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`1111111111