`
`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.usplo.gov
`
`APPLICATION NO.
`
`14/721,540
`
`
`
`
` FILING DATE
`
`05/26/2015
`
`Locke Lord LLP
`
`Attn: IP Docketing
`‘Three World Financial Center
`New York, NY 10281-2101
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Scott McNulty
`
`1004294.014US
`
`3330
`
`BOUTAH, ALINA A
`
`2443
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/27/2017
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date” to the
`following e-mail address(es):
`ptopatcntcommunication @lockclord.com
`
`PTOT.-90A (Rev. 04/07)
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`
`Page 1 of 6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`Page 1 of 6
`
`

`

`
`Application No.
`Applicant(s)
`
` 14/721 ,540 MCNULTY, SCOTT
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`ALINA N. BOUTAH No 2443
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`- Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`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.
`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).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`1)&] Responsive to communication(s) filed on 5/26/15.
`(1) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a) This action is FINAL.
`2b) EX] This action is non-final.
`3) An election was made bythe applicant in responseto a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporatedinto this action.
`4)_] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`:
`
`Disposition of Claims*
`5)[X] Claim(s) 1-43 is/are pending in the application.
`
`5a) Of the aboveclaim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-43 is/are rejected.
`
`8)0 Claim(s)
`is/are objected to.
`
`9)F] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, 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
`
`nito//www. uspto.gov/patenis/init events/poh/index.isp or send an inquiry to PPHfeedback@uspto.dov.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)K] The drawing(s) filed on 5/26/15 is/are: a)KX] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)LJ All
`b)[.] Some** c)LJ None of the:
`1..] Certified copies of the priority documents have been received.
`2.1] Certified copies of the priority documents have been received in Application No.
`3.1] Copiesof the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`
`
`Attachment(s)
`1)
`Notice of References Cited (PTO-892)
`;
`;
`2) x4] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 12/2/16.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) [] interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4 Cl Other:
`ther: __.
`)
`
`Part of Paper No./Mail Date 20170120
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`
`Page 2 of 6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`Page 2 of 6
`
`

`

`Application/Control Number: 14/721,540
`Art Unit: 2443
`
`Page 2
`
`DETAILED ACTION
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`The present application is being examined underthe pre-AlA first to invent
`
`provisions.
`
`Information Disclosure Statement
`
`The IDS filed 12/02/2016 has been considered.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
`
`claim(s) because the examined application claim is either anticipated by, or would have
`
`been obvious over, the reference claim(s). See, ¢.g., In re Berg, 140 F.3d 1428, 46
`
`USP@Qé2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
`
`may be used to overcome an actual or provisional rejection based on nonstatutory
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`
`Page 3 of 6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`Page 3 of 6
`
`

`

`Application/Control Number: 14/721,540
`Art Unit: 2443
`
`Page 3
`
`double patenting provided the reference application or patent either is shown to be
`
`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scope of a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination underthe first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
`
`706.02(1)(3) for applications not subject to examination under the first inventor to file
`
`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`
`1.321 (b).
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
`
`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`befilled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`more information about eTerminal Disclaimers, refer to
`
`
`
`Claims 1-43 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-31 of U.S. Patent No. 8,539,047. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other because both of
`
`the patent and the present application teach the feature of program codes, when
`
`executed by processor device, are executed to render an interactive user interface on
`
`terminal output component, facilitate communications between the portable device and
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`
`Page 4 of 6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`Page 4 of 6
`
`

`

`Application/Control Number: 14/721,540
`Art Unit: 2443
`
`Page 4
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`the communication network node, and cause communication to be transmitted through
`
`the portable device network interface to the communications network node. The present
`
`application differs from the patent in that they are broader.
`
`Claims 1-43 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-29 of U.S. Patent No. 9,059,969. Although the claims at
`
`issue are notidentical, they are not patentably distinct from each other because both of
`
`the patent and the present application teach the feature of program codes, when
`
`executed by processor device, are executed to render an interactive user interface on
`
`terminal output component, facilitate communications between the portable device and
`
`the communication network node, and cause communication to be transmitted through
`
`the portable device network interface to the communications network node. The present
`
`application differs from the patent in that they are broader.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALINA N. BOUTAH whosetelephone number is
`
`(571)272-3908. The examiner can normally be reached on Monday-Friday (9:00 am -
`
`5:00 pm).
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Tonia L.M. Dollinger can be reached on 571-272-4170. The fax phone
`
`number for the organization wherethis application or proceeding is assigned is 571-
`
`273-8300.
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`
`Page 5 of 6
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`Page 5 of 6
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`

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`Application/Control Number: 14/721,540
`Art Unit: 2443
`
`Page 5
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`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 accessto 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.
`
`/ALINA N BOUTAH/
`Primary Examiner, Art Unit 2443
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`
`Page 6 of 6
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2041
`Page 6 of 6
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`