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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`11/768,729
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`06/26/2007
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`Kenneth P. Weiss
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`W0537—7006
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`3536
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`EXAMINER
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`Jew/Imam —
`”3’2““ —
`”90
`c/o Lowrie, Lando & Anastasi, LLP
`DADA, BEEMNET w
`Riverfront Office Park, One Main Street
`ART UNIT
`PAPER
`Cambridge, MA 02142
`— NW
`2435
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`BER
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`MAIL DATE
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`02/03/2010
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`DELIVERY MODE
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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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`1 of 5
`1 0f 5
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`APPLE 1107
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`APPLE 1 107
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`Office Action Summary
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`Application No.
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`Applicant(s)
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`11/768,729
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`WEISS, KENNETH P.
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`Examiner
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`BEEMNET w. DADA
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`Art Unit
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`2435 -
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION
`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.
`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 for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IXI Responsive to communication(s) filed on 20 November 2009.
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`2a)IZI This action is FINAL.
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`2b)I:I This action is non-final.
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`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZI Claim(s) 1-5 8-16 18-21 and 24-40 is/are pending in the application.
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`4a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`5)I:I Claim(s) _ is/are allowed.
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`6)IXI Claim(s) 1-5 8-16 18-21 24-40 is/are rejected.
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`7)I:I Claim(s) _ is/are objected to.
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`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`9)I:I The specification is objected to by the Examiner.
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`10)I:I The drawing(s) filed on
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`is/are: a)I:I accepted or b)I:I 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)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)I:I All
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`b)I:I Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No.
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`3.I:I Copies of the 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)
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`4) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`5) I:I Notice of Informal Patent Application
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`Paper No(s)/Mai| Date
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`6) D Other:
`U.S. Patent and Trademark Office
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`PTOL-326 (Rev. 08-06)
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`Office Action Summary
`20f5
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`2 of 5
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`Part of Paper No./Mai| Date 20100201
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`Application/Control Number: 11/768,729
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`Page 2
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`Art Unit: 2435
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`DETAILED ACTION
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`This office action is in reply to an amendment filed on November 20, 2009. Claims 1, 3-
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`5, 8, 9, 11, 16 and 21 have been amended and new claims 31-40 have been added. Claims 1-5,
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`8-16, 18-21, 24-40 are pending.
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`Response to Arguments
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`Applicant's arguments with respect to claims 1-5, 8-16, 18-21, 24-40 have been
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`considered but are moot in view of the new ground(s) of rejection. Examiner would point out that
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`the claim amendments include a phrase that is directed to negative limitation: "..where the
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`information is unknown to the service provider..." and "...provide the service without the service
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`provider's knowledge of the information..." “Any negative limitation or exclusionary proviso must
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`have basis in the original disclosure. If alternative elements are positively recited in the
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`specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008,
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`1019, 194 USPQ 187, 196
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`(CCPA 1977) ("[the] specification, having described the whole, necessarily described the part
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`remaining. ’9. See also Ex parte Grasse/li, 231 USPQ 393 (Bd. App. 1983), aff ’dmem., 738 F. 2d
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`453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion.
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`Any claim containing a negative limitation which does not have basis in the original disclosure
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`should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written
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`description requirement.”
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`The phrase clearly recites a negative limitation. Indeed, the specification must contain a
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`full, clear and concise description of the claimed subject matter.
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`Claim Rejections - 35 USC § 112
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`Application/Control Number: 11/768,729
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`Page 3
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`Art Unit: 2435
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`The following is a quotation of the first paragraph of 35 U.S.C. 112:
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`The specification shall contain a written description of the invention, and of the manner and process of
`making and using it,
`in such full, clear, concise, and exact terms as to enable any person skilled in the
`art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
`set forth the best mode contemplated by the inventor of carrying out his invention.
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`Claims 1-5, 8-16, 18—21and 24-40 are rejected under 35 U.S.C. 112, first paragraph, as
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`failing to comply with the written description requirement. The claim(s) contains subject matter
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`which was not described in the specification in such a way as to reasonably convey to one
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`skilled in the relevant art that the inventor(s), at the time the application was filed, had
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`possession of the claimed invention. The specification fails to mention or teach the
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`system/method, "...where the information is unknown to the service provider..." and "...provide
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`the service without the service provider's knowledge of the information..."
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant
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`is reminded of the extension of time policy as set forth in 37 CFR 1.136(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.
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`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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`the 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.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
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`Application/Control Number: 11/768,729
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`Page 4
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`Art Unit: 2435
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to BEEMNET W. DADA whose telephone number is (571 )272—3847. The
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`examiner can normally be reached on Monday - Friday (9:00 am - 5:30 pm).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Kim Y. Vu can be reached on (571) 272-3859. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
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`would like assistance from a USPTO Customer Service Representative or access to the
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`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/Beemnet W Dada/
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`Primary Examiner, Art Unit 2435
`February 1, 2010
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