UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`04/04/2019
`
`26362
`7590
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane
`Suite 2
`Scottsdale, AZ 85260
`
`EXAMINER
`
`GARG. YOGESH C
`
`ART UNIT
`
`PAPER NUMBER
`
`3625
`
`DATE MAILED: 04/04/2019
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/582,105
`
`04/28/2017
`
`D Delano Ross JR.
`
`23-CON6
`
`8709
`
`TITLE OF INVENTION: Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1000
`
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`$0.00
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`$1000
`
`07/05/2019
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
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`Page 1 of 3
`
`PTOL-85 (Rev. 02/11)
`
`DDR Holdings, LLC - Ex. 2034
`Shopify, Inc. v. DDR Holdings, LLC
`IPR2018-01008
`
`

`

`PART B- FEE(S) TRANSMITTAL
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`Complete and send this form, together with applicable fee(s), by mail or fax, or via EFS-Web.
`By mail, send to: Mail Stop ISSUE FEE
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`I hereby certify that this Fee(s) Transmittal is being deposited with the United
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`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1 for any change of address)
`
`04/04/2019
`
`26362
`7590
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane
`Suite 2
`Scottsdale, AZ 85260
`
`(Typed or printed name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/582.105
`
`04/28/2017
`
`D Delano Ross JR.
`
`23-CON6
`
`8709
`
`TITLE OF INVENTION: Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1000
`
`$0.00
`
`$0.00
`
`$1000
`
`07/05/2019
`
`EXAMINER
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`GARG. YOGESH C
`
`3625
`
`705-026410
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`
`0 Change of correspondence address (or Change of Correspondence
`Address form PTO/SB/122) attached.
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`2. For printing on the patent front page. list
`( 1) The names of up to 3 registered patent attorneys
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`0 "Fee Address" indication (or "Fee Address" Indication form PTO/
`SB/47; Rev 03-09 or more recent) attached. Use of a Customer
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`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
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`2 ________________________ _
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`3 ________________________ _
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`PLEASE NOTE: Unless an assignee is identified below. no assignee data will appear on the patent. If an assignee is identified below. the document must have been previously
`recorded. or filed for recordation. as set forth in 37 CFR 3.11 and 37 CFR 3.81(a). Completion of this form is NOT a substitute for filing an assignment.
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`(A) NAME OF ASSIGNEE
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`Authorized Signature _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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`Date _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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`Typed or printed name _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __
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`Registration No. _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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`PTOL-85 Part B (08-18) Approved for use through 0113112020
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`Page 2 of3
`OMB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 2 of 20
`
`

`

`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
`
`15/582,105
`
`FILING DATE
`
`04/28/2017
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`D Delano Ross JR.
`
`23-CON6
`
`8709
`
`04/04/2019
`
`26362
`7590
`LOUIS J. HOFFMAN, P.C.
`7689 East Paradise Lane
`Suite 2
`Scottsdale, AZ 85260
`
`EXAMINER
`
`GARG. YOGESH C
`
`ART UNIT
`
`PAPER NUMBER
`
`3625
`
`DATE MAILED: 04/04/2019
`
`Determination of Patent Term Adjustment under 35 U.S.C.154 (b)
`(Applications filed on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
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`Section 1(h)(2) of the AlA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i) to eliminate the requirement
`that the Office provide a patent term adjustment determination with the notice of allowance. See Revisions to Patent
`Term Adjustment, 78 Fed. Reg. 19416, 19417 (Apr. 1, 2013). Therefore, the Office is no longer providing an initial
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`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
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`PTOL-85 (Rev. 02/11)
`
`Page 3 of 3
`
`Page 3 of 20
`
`

`

`OMB Clearance and PRA Burden Statement for PTOL-85 Part B
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`Page 4 of 20
`
`

`

`Notice of Allowability
`
`Application No.
`15/582,105
`Examiner
`YOGESH C GARG
`
`Applicant(s)
`Ross et al.
`Art Unit
`3625
`
`I AlA (FIT F) Status
`
`No
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOW ABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1.~ This communication is responsive to 03/06/2019.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`
`2.0 An election was made by the applicant in response to a restriction requirement set forth during the interview on __ ; the
`restriction requirement and election have been incorporated into this action.
`
`3.~ The allowed claim(s) is/are 71-90. As a result of the allowed claim(s), you may be eligible to benefit from the Patent Prosecution
`Highway program at a participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`4.0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`*c) 0 None of the:
`a) OAII
`b) 0 Some
`1. 0 Certified copies of the priority documents have been received.
`2. 0 Certified copies of the priority documents have been received in Application No. __ .
`3. 0 Copies of the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`
`* Certified copies not received: __ .
`
`Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file areply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`5.0 CORRECTED DRAWINGS (as "replacement sheets") must be submitted.
`including changes required by the attached Examiner's Amendment I Comment or in the Office action of
`0
`Paper No./Mail Date __ .
`Identifying indicia such as the application number {see 37 CFR 1.84{c)) should be written on the drawings in the front {not the back) of each
`sheet. Replacement sheet{s) should be labeled as such in the header according to 37 CFR 1.121{d).
`
`6.0 DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. 0 Notice of References Cited (PT0-892)
`2.0 Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date
`.
`3. 0 Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`.
`4.0 Interview Summary (PT0-413),
`Paper No./Mail Date. __ .
`/YOGESH C GARG/
`Primary Examiner, Art Unit 3625
`
`5. 0 Examiner's Amendment/Comment
`6. ~ Examiner's Statement of Reasons for Allowance
`
`7. OOther __
`
`U.S. Patent and Trademark Off1ce
`PTOL-37 (Rev. 08-13)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20190319
`
`Page 5 of 20
`
`

`

`Application/Control Number: 15/582,1 05
`Art Unit: 3625
`
`Page 2
`
`Notice of Pre-A/A or AlA Status
`
`The present application is being examined under the pre-AlA first to invent provisions.
`
`1.
`
`Applicant's response for "Request for Reconsideration -After Non-Final Rejection" filed
`
`03/06/2019 is entered. Claims 71-90 are pending, wherein claims 71 and 81 are independent
`
`claims and claims 72-80 depend from claim 71 and claims 82-90. Claims 1-70 are canceled
`
`claims.
`
`Response to Arguments
`
`2.
`
`Applicant's arguments, see pages 2-9, filed 03/06/2019, with respect to (i) rejection of
`
`claims 71-75, 78-85, 88-90 under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Moore
`
`et al. [US Patent 6,330, 575 B1 ], hereinafter Moore, cited in the filed IDS, and (ii) rejection of
`
`claims 76-77 and 86-87 under pre-AlA 35 U.S.C. 103(a) as being unpatentable over in view of
`
`Voorhees et al. [US 20090144176 A 1 ], hereinafter Voorhees, cited in the filed IDS have been
`
`fully considered and are persuasive. The rejection of claims 71-75, 78-85, 88-90 under pre-AlA
`
`35 U.S.C. 1 03(a) as being unpatentable over Moore and rejection of claims 76-77 and 86-87
`
`under pre-AlA 35 U.S.C. 1 03(a) as being unpatentable over Moore in view of Voorhees have
`
`been withdrawn.
`
`Examiner does agree with the Applicant's arguments that reference Moore explicitly
`
`does not teach or render obvious the limitations of independent claims 71 and 81.
`
`Moore fails to explicitly teach searching an electronic catalog or category of products,
`
`nor does it disclose or necessitate the use of a catalog or category of products on the linked-to
`
`page. None of the references Digital River Publications, Loshin book, Arnold, Voorhees and
`
`other lnfoHaus-related documents teach this element and a "composite page" that includes an
`
`electronic catalog or category of products.
`
`In Moore the Development tool is used:
`
`Page 6 of 20
`
`

`

`Application/Control Number: 15/582,1 05
`Art Unit: 3625
`
`Page 3
`
`(i) for allowing merchants to design and create their websites [See Moore col.3, lines
`
`18-20, " ...... There is, therefore, a need for a development tool which simplifies the design, creation, and
`
`maintenance of a Web site for merchants.", col.5, lines 27-35, "There is provided, according to the
`
`present invention, a Development Tool for designing the Web storefront 106. This tool greatly simplifies
`
`the task of creating the Web storefront initially and of modifying it and updating it", and col.?, lines
`
`33-37, "The Web storefront performs one basic service, and that is to present the multi-media content to
`
`the customer in order to let the customer shop. The format of this presentation is controlled by the
`
`merchant, and can easily be designed using the Development Tool disclosed in this application",
`
`and
`
`(ii) for using a linked "price URL" which already includes text description of the selected
`
`product, a picture of the product, its costs, quantity, merchant's ID, several fields to customize
`
`the Buy Page as shown in Fig. 16 [See Col.12, lines 3-28, "The Development Tool can be used to
`
`support a variety of electronic commerce models. The preferred embodiment uses a special URL referred
`
`to as a "price URL." A price URL is a link to the Java servlets residing, in the preferred embodiment, on
`
`the Store Builder Server and can be attached to any style component. The Web customer would then
`
`select, for example by clicking with a mouse, the style component in order to buy the product which it
`
`describes. Alternate embodiments could use the price URLs to link straight to the Transaction Server, or
`
`to another site. The price URL has attached an encrypted message that contains a text description
`
`of the item for sale, including a picture, its costs, quantity of measure, the merchant's ID, several
`
`fields used to customize the Buy Page that is created from the attached data, and a special
`
`signature from the Store Builder Server. The encoding is done with the public key of the Store
`
`Builder Server, but other encryption means are possible . ..... The Store Builder Server is able to
`
`decrypt the price URL data and convert it into an HTML page (a Buy Page). A typical Buy Page is shown
`
`in FIG. 16, and its purpose and operation has been explained earlier.").
`
`Contrary to Moore's teachings the limitations of claim 71 in the instant Application refer
`
`to a method that includes the server of the "composite page" directing the visitor device to
`
`display a composite page visually corresponding to the source page in terms of overall visual
`
`Page 7 of 20
`
`

`

`Application/Control Number: 15/582,1 05
`Art Unit: 3625
`
`Page 4
`
`appearance, and "to download data defining the overall appearance of the composite web page
`
`from an [accessible] information storage." Moore requires, by contrast (as noted above), that
`
`the information defining the Buy Page be "contained" in the Price URL. Therefore, teachings of
`
`Moore neither teaches nor renders obvious the limitations of independent claims 71 and 81.
`
`Further, Applicant's arguments , see Remarks pages 6-8, are persuasive that the other
`
`cited arts in the lOSs Digital River, Loshin, Voorhees, Arnold, alone or combined with Moore do
`
`not teach or render obvious the limitations of independent claims 71 and 81.
`
`3.
`
`Claims 71-90 allowed.
`
`Allowable Subject Matter
`
`The following is an examiner's statement of reasons for allowance:
`
`Regarding claim 71, the prior art of record, alone or combined, neither teaches nor
`
`renders obvious the limitations, as a whole, comprising with a computer system of an outsource
`
`provider: upon receiving over the Internet an electronic request generated by an Internet-
`
`accessible computing device of a visitor in response to selection of a uniform resource locator
`
`(URL) within a source web page that has been served to the visitor computing device when
`
`visiting a website of a host that is a third party to the outsource provider, wherein the URL
`
`correlates the source web page with a category or catalog of products offered for sale by at
`
`least one seller that is a third party to both the outsource provider and the host, automatically
`
`serving to the visitor computing device HTML instructions directing the visitor computing device
`
`to display indicia of the category or catalog of products associated with the URL that has been
`
`activated, wherein the indicia are displayed to the visitor computing device on a composite web
`
`page visually corresponding to the source web page, wherein the visual correspondence relates
`
`to overall appearance of the composite web page as compared to the source web page, but
`
`Page 8 of 20
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`

`

`Application/Control Number: 15/582,1 05
`Art Unit: 3625
`
`Page 5
`
`excluding the indicia and the URL, and wherein the HTML instructions direct the visitor
`
`computing device to download data defining the overall appearance of the composite web page
`
`from an information storage accessible to the visitor computing device through the Internet.
`
`Since limitations of claim 81 are similar to the limitations of claim 71, it is analyzed and
`
`allowed on the basis as established for claim 71 above.
`
`The reasons for allowance for dependent claims 72-80, 82-90 are the same as
`
`established for independent claims 71 and 81.
`
`Any comments considered necessary by applicant must be submitted no later than the
`
`payment of the issue fee and, to avoid processing delays, should preferably accompany the
`
`issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons
`
`for Allowance."
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to YOGESH C GARG whose telephone number is (571 )272-6756. The
`
`examiner can normally be reached on Max-Flex.
`
`Examiner interviews are available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Jeffrey A Smith can be reached on 571-272-6763. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Page 9 of 20
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`

`

`Application/Control Number: 15/582,1 05
`Art Unit: 3625
`
`Page 6
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
`
`would like assistance from a USPTO Customer Service Representative or access to the
`
`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/YOGESH C GARG/
`Primary Examiner, Art Unit 3625
`
`Page 10 of 20
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`

`

`Application/Control No.
`Issue Classification 15/582,105
`Examiner
`
`I IIIII
`
`CPC
`
`Symbol
`
`G06Q
`
`G06Q
`
`1 m 30
`30
`
`1 m
`
`CPC Combination Sets
`
`Symbol
`
`YOGESH C GARG
`
`·········~········· 0635
`·········~········· 0274
`
`I ffi I
`
`I ffi I
`
`Applicant(s)/Patent Under Reexamination
`
`Ross et al.
`
`Art Unit
`
`3625
`
`Type
`
`Version
`
`2013-01-01
`
`F
`
`I
`
`Type
`
`Set
`
`Ranking
`
`Version
`
`NONE
`
`(Assistant Examiner)
`/YOGESH C GARG/
`Primary Examiner, Art Unit 3625
`(Primary Examiner)
`U.S. Patent and Trademark Off1ce
`
`(Date)
`21 March 2019
`
`Total Claims Allowed:
`
`20
`
`O.G. Print Claim(s) O.G. Print Figure
`
`(Date)
`
`71
`
`8
`Part of Paper No.: 20190319
`
`Page 1 of 3
`
`Page 11 of 20
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`

`

`Application/Control No.
`Issue Classification 15/582,105
`Examiner
`
`I IIIII
`
`YOGESH C GARG
`
`Applicant(s)/Patent Under Reexamination
`
`Ross et al.
`
`Art Unit
`
`3625
`
`INTERNATIONAL CLASSIFICATION
`
`CLAIMED
`
`G06Q
`
`I NON-CLAIMED
`
`1 r 130
`
`I ~ I oo
`
`US ORIGINAL CLASSIFICATION
`
`CLASS
`
`705
`
`CROSS REFERENCES(S)
`
`CLASS
`
`705
`709
`
`26.1
`218
`
`26.41
`228
`
`26.81
`
`SUBCLASS
`
`SUBCLASS (ONE SUBCLASS PER BLOCK)
`
`26.81
`
`27.1
`
`NONE
`
`(Assistant Examiner)
`/YOGESH C GARG/
`Primary Examiner, Art Unit 3625
`(Primary Examiner)
`U.S. Patent and Trademark Off1ce
`
`(Date)
`21 March 2019
`
`Total Claims Allowed:
`
`20
`
`O.G. Print Claim(s) O.G. Print Figure
`
`(Date)
`
`71
`
`8
`Part of Paper No.: 20190319
`
`Page 2 of 3
`
`Page 12 of 20
`
`

`

`Application/Control No.
`Issue Classification 15/582,105
`Examiner
`
`I IIIII
`
`YOGESH C GARG
`
`Applicant(s)/Patent Under Reexamination
`
`Ross et al.
`
`Art Unit
`
`3625
`
`0 CPA ~ T.D.
`
`~ Claims renumbered in the same order as presented by applicant
`CLAIMS
`Final Original Final Original Final Original Final Original Final Original Final Original Final Original Final Original
`71
`80
`89
`72
`81
`90
`73
`82
`74
`83
`75
`84
`76
`85
`77
`86
`78
`87
`79
`88
`
`0 R.1.47
`
`NONE
`
`(Assistant Examiner)
`/YOGESH C GARG/
`Primary Examiner, Art Unit 3625
`(Primary Examiner)
`U.S. Patent and Trademark Off1ce
`
`(Date)
`21 March 2019
`
`Total Claims Allowed:
`
`20
`
`O.G. Print Claim(s) O.G. Print Figure
`
`(Date)
`
`71
`
`8
`Part of Paper No.: 20190319
`
`Page 3 of 3
`
`Page 13 of 20
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`

`

`Bibliographic Data
`
`Application No:
`
`15/582,105
`0 Yes
`35 USC 119 (a-d) conditions met: DYes
`
`Foreign Priority claimed:
`
`®No
`
`0No
`
`D Met After Allowance
`
`Verified and Acknowledged:
`
`1/YOGESH C GARG/
`Examiner's Signature
`
`Initials
`
`Title:
`
`Methods of expanding commercial opportunities for internet websites
`throu h coordinated offsite marketin
`
`FILING or 371(c) DATE
`
`CLASS
`
`GROUP ART UNIT
`
`ATTORNEY DOCKET NO.
`
`04/28/2017
`
`RULE
`
`APPLICANTS
`
`705
`
`3625
`
`23-CON6
`
`DDR Holdings, LLC, Dunwoody, GA, UNITED STATES
`
`INVENTORS
`
`D Delano Ross JR., Peachtree Corners, GA, UNITED STATES
`
`Daniel D. Ross Dunwoody, GA, UNITED STATES
`
`Joseph R. Michaels Bellevue, W A, UNITED STATES
`
`William R. May Atlanta, GA, UNITED STATES
`
`Richard A. Anderson Powder Springs, GA, UNITED STATES
`
`CONTINUING DATA
`
`This application is a CON of 14719009 05/21/2015 PAT 9639876
`
`14719009 is a CON of 13970515 08119/2013 PAT 9043228
`
`13970515 is a CON of 12906979 10118/2010 PAT 851582