throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CERTIFICATE OF CORRECTION
`
`PATENT NO.
`APPLICATION NO.
`
`3 8,773,356 B2
`2 13/3 621 13
`
`DATED
`INVENTOR(S)
`
`2 July 8, 2014
`: Kenneth M. Martin et al.
`
`Pagg 1 Of]
`
`It is certified that error appears in the above—identified patent and that said Letters Patent is hereby corrected as shown below:
`
`In the Claims
`
`Column 20, line 67, claim 12, delete “basted”, insert -- based --.
`
`Signed and Sealed this
`
`Seventh Day of April, 2015
`
`‘%u;uo&.X/..<:’..e__
`
`Michelle K. Lee
`
`Director ofthe United States Patent and Trademark Oflice
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 1
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 1
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`Patentees
`
`Patent No.
`
`Issued
`
`Title of Invention
`
`:
`
`:
`
`:
`
`:
`
`Kenneth M. Martin et al.
`
`8,773,356 B2
`
`July 8, 2014
`
`METHOD AND APPARATUS FOR PROVIDING
`
`TACTILE SENSATIONS
`
`ATTN: Certificate of Corrections Branch
`
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 223 l3-1450
`
`RE UEST FOR CERTIFICATE OF CORRECTION OF PATENT FOR PATENT
`
`OFFICE MISTAKES 137 C.F.R. § 1.322[
`
`Commissioner:
`
`U.S. Patent Application Number l3/362,ll3, fiom which the above-referenced patent
`
`issued, was filed on January 31, 2012. This communication is being submitted to request that a
`
`Certificate of Correction under 37 C.F.R. § 1.322 be issued for the above-referenced U.S. Patent
`
`to correct errors made by the Patent Office.
`
`Attached is Form PTO/SB/44 stating the text of the correction. The exact column and
`
`line numbers where the errors are in the patent and in the application as filed for the USPTO
`
`errors and Applicant errors are enumerated below.
`
`Patent Office Errors:
`
`l.
`
`Under “That which is claimed is:”
`
`PATENT
`
`APPLICATION
`
`a.
`
`Column 20, Line 67
`
`Amendment filed February l0, 2014,
`Claim l0, line 6, Claims allowed by
`Examiner on March 6, 2014.
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 2
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 2
`
`

`

`Patent No. 8, 773,356 B2
`Requestfor Certificate of Correction
`Page 2 of2
`
`Please direct any questions regarding this request, and send the Certificate of Correction,
`
`to the undersigned.
`
`Respectfully submitted,
`
`/Zachag S. Kelton/
`Zachary Kelton
`Reg. No. 71,345
`
`Dated:
`
`1/15/2014
`
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`
`Winston-Salem, NC 27101
`
`(336) 607-7300 phone
`(336) 607-7500 facsimile
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 3
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 3
`
`

`

`PTO/SB/44 (09-07)
`Approved for use through 08/31/2013. OMB 0651-0033
`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.
`Also Form PTO-1050
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CERTIFICATE OF CORRECTION
`
`PATENT NO.
`
`: 8,773,356 B2
`
`APPLICATION NO.: 13/362,113
`
`ISSUE DATE
`
`:
`
`,_]U|y 8, 2014
`
`INVENTORISI
`
`Kenneth M. Martin et al.
`
`It is certified that an error appears or errors appear in the above-identified patent and that said Letters Patent
`is hereby corrected as shown below:
`
`Column 20, line 67, Please delete "basted", please insert — — based — -.
`
`MAILING ADDRESS OF SENDER (Please do not use customer number below):
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`
`Winston—Salem, NC 27101-2400
`This collection of information is required by 37 CFR 1.322, 1.323, and 1.324. The information is required to obtain or retain a benefit by the public which is to file
`(and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 1.0 hour to
`complete, including gathering, 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 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. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
`FORMS TO THIS ADDRESS. SEND To: Attention Certificate of Corrections Branch, Commissioner for Patents, P.O. Box 1450, Alexandria,
`VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 4
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 4
`
`

`

`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
`with your submission of the attached form related to a patent application or patent. Accordingly,
`pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
`collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
`and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark
`Office is to process and/or examine your submission related to a patent application or patent. If you do
`not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or
`abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1 . 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 Department of Justice to determine whether
`disclosure of these records is required by the Freedom of Information Act.
`A record from this system of records may be disclosed, as a routine use, in the course of
`presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to
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`A record in this system of records may be disclosed, as a routine use, to a Member of
`Congress submitting a request involving an individual, to whom the record pertains, when the
`individual has requested assistance from the Member with respect to the subject matter of the
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`A record in this system of records may be disclosed, as a routine use, to a contractor of the
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`amended, pursuant to 5 U.S.C. 552a(m).
`A record related to an International Application filed under the Patent Cooperation Treaty in
`this system of records may be disclosed, as a routine use, to the International Bureau of the
`World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
`the Atomic Energy Act (42 U.S.C. 218(c)).
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`General Services, or his/her designee, during an inspection of records conducted by GSA as
`part of that agency’s responsibility to recommend improvements in records management
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`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
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`
`A record from this system of records may be disclosed, as a routine use, to the public after
`either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
`pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
`CFR 1.14, as a routine use, to the public if the record was filed in an application which
`became abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspection or an
`issued patent.
`A record from this system of records may be disclosed, as a routine use, to a Federal, State,
`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 5
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 5
`
`

`

`Electronic Acknowledgement Receipt
`
`International Application Number:
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR PROVIDING TACTILE SENSATIONS
`
`First Named Inventor/Applicant Name:
`
`Kenneth M. Martin
`
`Payment information:
`
`
`
`File Listing:
`
`Document
`Number
`
`Information.
`
`Document Description
`
`File Size(Bytes)/
`Message Digest
`
`Pages
`Multi
`Part /.zip (if appl.)
`
`Miscellaneous Incoming Letter
`
`|MM147C3-Transmitta|.pdf
`
`c83f359fcef1 3da50b7b9e2002964c73628d
`c6aa
`
`APPLE |NC_
`EXHIBIT 1104 - PAGE 6
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 6
`
`

`

`Request for Certificate of Correction
`
`|MM147C3-RequestCOC.pdf
`
`1bfe7ae7477c7ae66beef93655c902bfda65
`bdb8
`
`Information:
`
`Request for Certificate of Correction
`
`|MM147C3-COC.pdf
`
`164329
`
`f58c079728e063fa05adbb7e4002f77b2309
`7399
`
`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.
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 7
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 7
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Application of:
`Patent No.
`
`Issued
`Application No.
`Filing Date
`Title
`
`Confirmation No.
`
`:
`:
`
`:
`:
`:
`:
`
`:
`
`Kenneth M. Martin et al.
`8,773,356 B2
`
`July 8, 2014
`13/362,113
`January 31, 2012
`METHOD AND APPARATUS FOR PROVIDING
`TACTILE SENSATIONS
`3915
`
`ATTN: Certificate of Corrections Branch
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`TRANSMITTAL
`
`Transmitted herewith are copies of the following documents for filing in the above-identified
`application:
`
`(1)
`
`(2)
`
`Request for Certificate of Correction of Patent for Patent Office
`Mistakes Under 37 C.F.R. § 1.322; and
`Form PTO/SB/44.
`
`The Commissioner is hereby authorized to charge any deficiency to Deposit Account Number
`2 0- 143 0.
`
`Respectfully submitted,
`
`/Zachag S. Ke1ton/
`
`Date:
`
`1/15/2015
`
`By: Zachary Kelton (Reg. 71,345)
`
`KILPATRICK TOWNSEND &
`STOCKTON LLP
`
`1001 West Fourth Street
`Winston—Salem, NC 27101-2400
`Tel. (336) 607-7300
`Fax. (336) 607-7500
`
`Certificate of Electronic Filing
`I hereby certify that this correspondence is being
`electronically filed with The United States Patent
`Office Via EFS-Web on January 15, 2015.
`
`/Renee S. PreVette/
`Renee S. Prevette
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 8
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 8
`
`

`

`
`
`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.
`
`13/362,113
`
`ISSUE DATE
`
`07/08/2014
`
`34300
`
`7590
`
`06/18/2014
`
`PATENT DEPARTMENT (5 185 1)
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 WEST FOURTH STREET
`WINSTON-SALEM, NC 27101
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`8773356
`
`51851/821825 (IMM147.C3)
`
`3915
`
`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.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEB site (http://pair.uspto. gov).
`
`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):
`
`Kenneth M. Martin, Los Gatos, CA;
`Steven P. Vassallo, Redwood City, CA;
`Alex S. Goldenberg, San Francisco, CA;
`Alexander J asso, San Jose, CA;
`Kollin Tierling, Milpitas, CA;
`
`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.
`APPLE INC.
`
`1R1°3(R"V'1°’°9)
`
`EXHIBIT 1104 - PAGE 9
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 9
`
`

`

`Receipt date: 07/08/2013
`
`Substitute for form 1449AlPTO
`
`information Disclosure
`
`13362113 ~ GAL}: 2692
`
`Application Number
`Filing Date
`
`Complete if Known
`
`13/362113
`January 31, 2012
`
`Statement
`
`(use as many sheets as necessary)
`
`First Named Inventor
`Group Art Unit
`
`Examgner Name
`
`Martin et al.
`
`51851-821825 <iMM147.C3)
`
`Examiner
`
`Cite,
`N°-
`
`Document Number
`Number Kind Code? (ifknown)
`2,972,140
`3,157,853
`3,220,121
`3,497,668
`3,517,446
`
`3,623,064
`3,902,687
`3,903,614
`3,911,416
`
`U.S. PATENT DOCUMENTS
`
`Publication Date
`MM-DD-YYYY
`
`Name of Patenéee or Aptpficam of Cned
`ocumen
`
`2/14/1961
`11/17/1964
`11/30/1965
`02/24/1970
`06/30/1970
`
`1-1+es/+9710
`09/02/1975
`09/09/1975
`10/07/1995
`
`Hirsch
`Corlyon et al.
`
`Kagen
`Hightower
`Diamond et ai.
`Feder
`
`Pages Columns Lines
`Where Relevant Passages or
`Relevant
`Figures Appear
`
`1
`
`0 1
`
`CD\lO'>U't-Bb)l\.)
`
`19
`
`to documen I
`
`/5i1./
`
`5/6/2014
`
` Ci'tangc(s) a P 16 I
`
`_ita....x._x..;..\_;_n_\
`l\)l\.)l\)l\)Y\Jt\)C0\l03<J1-&(;-J
`
`4,127,752
`4,160,508
`4,236,325
`4,262,549
`
`4311»980
`4,333,070
`4,362,408
`4,464,117
`4.484.101
`4,513,235
`4,581,491
`4,581,972
`4,599,070
`4,692,756
`4,708,656
`4,713,007
`4,725,817
`4,795,296
`4,791,416
`4,794,392
`4,798,919
`4,821,030
`4,823,106
`4,840,634
`4,885,565
`
`11/28/1978
`07/10/1979
`12/02/1980
`04/21/1981
`
`Lowthorp
`Salsbury
`Hall et al.
`Schwellenbach
`
`01/19/1982 —
`06/01/1982 _
`12/07/1982
`Cordes et al. —
`08/07/1984
`11/20/1084 —
`O4/23/1985
`Acklam et al.
`04/08/1986
`Boothroyd
`04/15/1986
`Hoshino
`07/08/1986
`Hiadky et al.
`O9/08/1987
`Clark
`11/24/1987
`De Vries et al.
`12/15/1987
`Alban
`02/16/1988
`Jay
`01/03/1989
`Wijlborg
`12/13/1988
`Adler
`12/27/1988
`Selinko
`01/17/1989
`Suita
`04/11/1989
`Batson
`O4/16/1989
`Pope
`06/20/1989
`Muller
`1208/1989
`Embach
`
`EXa”“"e'
`
`sinature
`
`/‘Ricardo 050150/'
`
`Considered
`
`09,/12/2013
`
`‘EXAMlNER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance
`and not considered. include copy of this form with next communication to applicant.
`
`2 Kinds of U.S. Patent Documents at www.uspto.gov or MPEP 901.04, 3 Enter Office
`1Applicant’s unique citation designation number (optional).
`that issued the document, by the two~|etter code (WIPO Standard ST.3). 4 For Japanese patent documents, the indication of the year of the reign of
`the Emperor must precede the serial number of the patent document. 5 Kind of document by the appropriate symbols as indicated on the document
`under WIPO Standard ST. 16 if possible. 6 Applicant is to place a check mark here if English language Translation is attached.
`Burden Hour Statement: This form is estimated to take 20 hours to complete. Time will vary depending upon the needs of the individual case. Any
`comments on the amount of time you are required to complete this form should be sent to the Chief information Officer, U.S. Patent and Trademark
`Office, Washington, DC 20231. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Assistant Commissioner for
`Patents, Washington, DC 20231
`
` 9GH. /i:i.Q./’
`ALL REFERENCES COi\iSiiI}EREi3 EXCEPT WHERE Lihi
`EXHIBIT 1104 - PAGE 10
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 10
`
`

`

`Receipt date: 67/08/2013
`
`$362113 ~ GAL}: 2692
`
`Substitute for form 1449A/PTO
`
`-
`
`Complete if Known
`
`Information Disclosure
`
`Statement by Applicant
`
`101
`
`6.0973964
`61059-506
`6.160.489
`
`03/01/2000 —
`05/09/2000 —
`12/12/2000 —
`
`II I
`
`—I
`
`O(.0
`1
`A O-J>-
`_x G01
`_; GO‘)
`_\ O\l
`—
`_; 0Ch
`_—
`_; O(O
`_\ A O
`-
`_; _|. _|.
`-—
`_; _|. l\)
`
`—I
`
`(use as many sheets as necessary)
`
`_u. C»)
`
`-
`_L_n_\
`_;_xAO‘I-50>
`I—
`I—
`I—
`\lm!
`_\_x
`6,373,463
`_x_x_\
`
`|\);\)_u.AA_xA-OCDW
`
`——
`
`I 1
`
`22
`
`3»423»346 —123—
`
`—
`07/22/2003
`6591347
`124
`Paolini et al. —
`‘I2/02/2003
`6,657,617
`125
`123—
`ooxi
`
`— 1
`
`31—
`
`Ci1ange(s) a . .
`to &ocumen u
`
`..
`
`/5~H~/
`5/7\ l\3O -F
`
`——1
`
`34
`(J1
`
`2002/0123043 —13—
`
`(A20)
`
`136
`137
`
`2005/0099393
`2008/0068350
`
`,
`
`05/12/2005 —
`03/20/2008
`Rosenberg et al. _
`
`Examiner
`
`/Ricardo Os0rio"
`
`Dale
`
`~.
`
`z
`
`
`
`
`EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance
`and not considered. Include copy of this form with next communication to applicant.
`
`2 Kinds of U.S. Patent Documents at www.uspto.gov or MPEP 901.04. 3 Enter Office
`1 App|icant’s unique citation designation number (optional).
`that issued the document, by the two-letter code (WIPO Standard ST.3). 4 For Japanese patent documents, the indication of the year of the reign of
`the Emperor must precede the serial number of the patent document. 5 Kind of document by the appropriate symbols as indicated on the document
`under WIPO Standard ST. 16 if possible. 6 Applicant is to place a check mark here if English language Translation is attached.
`Burden Hour Statement: This form is estimated to take 2.0 hours to complete. Time will vary depending upon the needs of the individual case. Any
`comments on the amount of time you are required to complete this form should be sent to the Chief Information Officer, U.S. Patent and Trademark
`Office, Washington, DC 20231. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Assistant Commissioner for
`Patents, Washington, DC 20231
`
` 8GH. /R.Q./
`ALL REFERENCES COi\lSttI}EREI3 EXCEPT WHERE UN
`EXHIBIT 1104 - PAGE 11
`
`
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 11
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`Unlted States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria. Virginia 223I3-I450
`www.uspto.gav
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED IN‘/ENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/362,113
`
`OI/3 I/20l2
`
`Kenneth M. Martin
`
`34300
`7590
`05/30/2014
`PATENT DEPARTMENT (51851)
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 wEsT FOURTH sTREET
`WINSTON-SALEM, Nc 27101
`
`51851/821825
`(IMMI47,C3)
`
`3915
`
`osoR1o, memo A
`
`2692
`
`MAIL DATE
`
`05/30/2014
`
`"""E*‘””M“E“
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`PTOL—90A (Rev. 04/07)
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 12
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 12
`
`

`

`_
`_
`‘Response to Rule 312 Communication
`
`Application No.
`
`13/362,113
`
`Applicant(s)
`
`Martin et al.
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address —
`
`1. IX] The amendment filed on 12 May 2014 under 37 CFR 1.312 has been considered, and has been:
`entered.
`
`entered as directed to matters of form not affecting the scope of the invention.
`
`disapproved because the amendment was filed after the payment of the issue fee.
`
`Any amendment filed after the date the issue fee is paid must be accompanied by a petition under 37 CFR 1.313(c)(1)
`
`and the required fee to withdraw the application from issue.
`
`disapproved. See explanation below.
`
`entered in part. See explanation below.
`
`U.S. Patent and Trademark Office
`PTOL—271 (Rev. 04-01)
`
`Reponse to Rule 312 Communication
`
`'
`Part of Paper No.
`APPLE INC.
`EXHIBIT 1104 - PAGE 13
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 13
`
`

`

`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
`(571)-273-2885
`
`or _I_T_a;
`
`through 5 should be completed where
`INSTRUCTIONS: This form should be‘ usedlfor transmitting the ISSUE FEE and _PUBLICATlON FEE (if required. Blocks I
`apérropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will
`e mailed to the current con-es ondence address as
`in icated unless corrected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate " EE ADDRESS" for
`maintenance fee notifications.
`Note: A certificate of mailin can only be used for domestic mailings of the
`Fcc(s) Transmitta_I._ This certi icate cannot be used for any other acconipaiiying
`gapei-5, Each addiiional paper.’ such as an assigiimei-ii or formal drawing, must
`ave its own certificate of mailing or transmission.
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block I for any change ofaddress)
`
`03/05/20”
`759°
`343°”
`PATENT DEPARTMENT (51851)
`K11-PATRICK TOWNSEND & STOCKTON T-U’
`1001 WEST FOURTH STREET
`WINSTON-SALEM, NC 27101
`
`I hereb cenigv iziiijgmtizzigiited with the United
`Sgiajtes
`distal
`grvihcde
`su IlS()§e&ltEpg%iEgCdf3r firstfilass mailbiri an tenvelope
`a
`resse
`to t e
`air
`to
`a
`ress a ov ,
`acsimi c
`transmitted to the usrro (E71) 273-2885, on the date ihciicaiired Elexigw.
`(Depositofs name)
`
`
`
`
`
`
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Kenneth M. Martin
`OI/3 I/2012
`I3/362.113
`TITLE or INVENTION: METHOD AND APPARATUS FOR PROVIDING TACTILE SENSATIONS
`
`51851/82l825
`(‘MM '47“)
`
`3915
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`nonprovisional
`
`UNDISCOUNTED
`
`ISSUE FEE DUE
`$960
`
`PUBLICATION FEE DUE
`$0
`
`PREV. PAID ISSUE FEE
`$0
`
`TOTAL I-"EE(S) DUE
`$960
`
`DATE DUE
`
`06/06/20 I 4
`
`OSORIO, RICARDO
`
`2692
`
`CLASS-SUBCWS
`345- I 63000
`
`1. Chan :2 of correspondence address or indication of "Fee Address" (37
`
`
`CFR l. 63).
`2. For printing on the patent front page, list
`I KILPATRICK TOWNSEND & STOCKTON
`(I) The names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`EU
`CI Chan e of cones ondence address (or Change of Correspondence
`Address omi l-‘TO/ B/I22) attached.
`(2) The name ofa single firm (having as a member a
`registered attorney or agent) and the names of up to
`CI "Fee Address" indication (or "Fee Address" Indication fomi
`PTO/SB/47; Rev 03-02 or more recent) attached. Use ofa Customer
`2 registered patent attorneys or agents. If no name is
`Number is required.
`listed, no name will be printed.
`
`2
`
`3
`
`
`
`
`
`
`
`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 assignec is identified below, no assigncc data will appear on the patent.
`recordation as set forth in 37 CF 3.! I. Completion of this form is NOT a substitute Ior filing an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`SAN JOSE, CA
`IMMERSION CORPORATION
`Please check the appropriate assignee category or categories (will not be printed on the patent) : CI Individual Corporation or other private group entity CI Government
`
`
`
`4a. The following fee(s) are submitted:
`KI Issue Fee
`I:I Publication Fee (No small entity discount pennitted)
`C] Advance order . # of Copies
`
`4b. Payment of Fee(s): (Please llrst reapply any previously paid issue fee shown above)
`D A check is enclosed.
`E Payment by credit card. Form PTO-2038 is attached.
`W The Director is hereby authorized to
`overpayment, to Deposit Account Number
`
`20-1430
`
`or credits any
`enclose an extra copy of this fonn).
`
`5. Change In Entity Status (from status indicated above)
`D Applicant certifying micro entity status. See 37 CFR L29
`
`CI Applicant asserting small entity status. See 37 CFR l.27
`
`MQIE; Absent a valid certification of Micro Entity Status (see forms PTO/SB/ISA and ISB), issue
`fee payment in the micro entity amount will not be accepted at the risk of application abandonment.
`NQIE; 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.
`NQIE; 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 si ned in accordance with 37 CFR l.3l and 1.33. See 37 CFR "I .4 for si nature re uircments and certifications.
`
`D Applicant changing to regular undiscounted fee status.
`
`
`
`
`
`Authorized Signature
`
`5/[L2/ZQ/‘1
`Dare
`C_._
`Typed or printed name Zachari’ 3- Keno“
`Registration No. 1] 345
`
`
`
`PTOL-85 Part B (10-13) Approved for use through 10/31/2013.
`
`OMB 0651-0033
`
`Page 2 of 3
`
`U.S. Patent and Trademark Office; US DEPARTMENT OF COMMERCE
`APPLE INC.
`EXHIBIT 1104 - PAGE 14
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 14
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR PROVIDING TACTILE SENSATIONS
`
`;
`
`Utility under 35 USC111(a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`Basic Filing:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-AlIowance-and-Post-Issuance:
`
`Extension-of-Time:
`
`APPLE |NC_
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 15
`
`

`

`Miscellaneous:
`
` S“:-S1-;(t$a)| in
`
`Total in USD (S)
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 16
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 16
`
`

`

`Electronic Acknowledgement Receipt
`
`Application Number:
`
`International Application Number:
`
`19064389
`
`13362113
`
`Confirmation Number:
`
`3915
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR PROVIDING TACTILE SENSATIONS
`
`First Named Inventor/Applicant Name:
`
`Customer Number:
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`Application Type:
`
`Payment information:
`
`Submitted with Payment
`
`Payment Type
`
`Payment was successfully received in RAM
`
`RAM confirmation Number
`
`
`
`Deposit Account
`
`Authorized User
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File SIze(Bytes)/
`Message =9’;
`_
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 17
`
`

`

`Miscellaneous Incoming Letter
`
`Transmitta|.pdf
`
`ac53ec85I b55a9c76b00eb63786587c8a49
`82120
`
`Issue Fee Payment (PTO-85B)
`
`|ssueFee.pdf
`
`bl f5aa466b5d267dI Ib7af502e8a5009fdb
`08950
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`761 0f4I d7a42a4bd5bb4cc778a79dbd7c6d
`5:507
`
`Information:
`
`Information:
`
`Information:
`
`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.
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 18
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 18
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Application of
`Application No.
`Filed
`For
`Examiner
`Art Unit
`
`Conf. No.
`
`:
`:
`:
`:
`:
`:
`
`:
`
`Kenneth Martin et al.
`13/362,1 13
`January 31, 2012
`Method and Apparatus for Providing Tactile Sensations
`Ricardo Osorio
`2692
`
`3915
`
`Mail Stop Issue Fee
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`TRANSMITTAL
`
`Transmitted herewith are the following document(s) for filing in the above-
`identified application:
`
`1. Transmittal;
`2. Part B — Fee Transmittal (PTOL-85); and
`3. Payment in the amount of $960.
`
`The Commissioner is hereby authorized to charge any deficiency to Deposit
`Account Number 20-1430.
`
`Respectfully submitted,
`
`By: , k‘
`
`Za a/Ty S. Kelton
`Reg. No. 71,345
`
`Date:
`
`KILPATR CK TOWNSEND
`& STOCKTON LLP
`1001 West Fourth Street
`
`Winston-Salem, NC 27101
`(336) 607-7300
`
`Certificate of Electronic Filing
`I hereby certify that this correspondence is being
`electronically filed with the United States Patent
`Office via EFS Web on Llg H Ifl £131
`.
`flmbu C
`653.4
`
`I
`
`V»
`
`Amber C Johnson
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 19
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 19
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`: Kenneth M. Martin
`
`Application No.
`
`:
`
`13/3 62,1 13
`
`For
`
`Filed
`
`Examiner
`
`Art Unit
`
`Confirmation No.
`
`: Method and Apparatus for Providing Tactile Sensations
`
`:
`
`January 31, 2012
`
`: Ricardo Osorio
`
`:
`
`:
`
`2692
`
`3 915
`
`Mail Stop Issue Fee
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`RESPONSE TO NOTICE TO FILE CORRECTED APPLICATION PAPERS
`
`Dear Sir,
`
`The following Amendments and Remarks are submitted in response to the Notice to File
`
`Corrected Application Papers mailed May 5, 2014 (the “Notice”).
`
`Amendments to the Specification begin on page 2 of this paper.
`
`Remarks begin on page 3 of this paper.
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 20
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 20
`
`

`

`Application No. 13/362,113
`Attorney Docket No. 51851/821825 (IMMl47.C3)
`
`AMENDMENTS TO THE SPECIFICATION
`
`Please replace paragraph 18 with the following paragraph:
`
`[0018]
`
`Figure 9 is a table illustrating a first set of data to be used in one embodiment of
`
`the present invention;—and
`
`Please replace paragraph l9 with the following paragraph:
`
`[0019]
`
`Figure l0 is a table illustrating a second set of data to be used in another
`
`embodiment of the present invention[[.]]; and
`
`Please add the following paragraph immediately following paragraph 19:
`
`[0020]
`
`Figure 11 shows a device for providing tactile sensations according to one
`
`embodiment of the present invention.
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 21
`
`APPLE INC.
`EXHIBIT 1104 - PAGE 21
`
`

`

`Application No. 13/362,113
`Attorney Docket No. 51851/821825 (IMM147.C3)
`
`REMARKS
`
`This paper is filed in response to the Notice to File Corrected Application Papers (the
`
`“Notice”) mailed May 5, 2014.
`
`The Notice o

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