`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMlVIERCE
`United States Patent and Trademark Office
`Address: COlVllVIISSIONER FOR PATENTS
`HO. Box 1450
`Alexandria Virginia 2231371450
`www.usplo.gov
`
`
`
`
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`14/721,540
`
`05/26/2015
`
`Scott McNulty
`
`1004294014113
`
`3330
`
`Locke Lord LLP
`
`Attn: IP Docketing
`Three World Financial Center
`New York, NY 10281-2101
`
`BOUTAH- ALINAA
`
`2443
`
`PAPER NUMBER
`
`NOTIFICATION T) ATE
`
`DELIVERY MODE
`
`01/27/2017
`
`ELECTRONIC
`
`Please find below and/0r 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):
`ptopatentcommunication @lockelord.com
`
`PTOIrOOA (Rev. 04/07)
`
`PayPal Inc. v. IOENGINE, LLC
`|PR2019-00885 (US 8,539,047)
`Exhibit 2041
`
`Page 1 of 6
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2041
`Page 1 of 6
`
`

`

`
`Application No.
`Applicant(s)
`
` 14/721 ,540 MCNULTY, SCOTT
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action summary
`
`2443ALINA N. BOUTAH ~3ng
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`lf 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).
`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).
`
`In no event, however, may a reply be timely filed
`
`Status
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`1)IZ| Responsive to communication(s) filed on 5/26/15.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`.
`
`2b). This action is non-final.
`2a)I:I This action is FINAL.
`3)I:I 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.
`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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims"
`5)IZI Claim(s) fl is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:I Claim(s)
`is/are allowed.
`7)IZ| Claim(s) fl is/are rejected.
`
`8)|:I Claim(s)
`is/are objected to.
`
`9)|:I 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
`
`hit )1/z’wvtiv.l.usoi:o.( ow téitefiIIS/ii’llt events/3 th/'index.‘s ) or send an inquiry to f-‘PI-iteedback-‘ébus )EO.CIOV.
`
`Application Papers
`10)I:I The specification is objected to by the Examiner.
`11)IZI The drawing(s) filed on 5/26/15 is/are: a)IZI accepted or b)I:I 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)I:I All
`b)|:l Some” c)I:I None of the:
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I 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)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`3) El jmerview Summary (PTO.413)
`Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`_
`_
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`4 I:I O h
`_
`Paper No(s)/Mai| Date 12/2/15.
`)
`I “—-
`
`U 8 Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170120
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2041
`
`Page 2 of 6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2041
`Page 2 of 6
`
`

`

`Application/Control Number: 14/721 ,540
`Art Unit: 2443
`
`Page 2
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`DETAILED ACTION
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Information Disclosure Statement
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`The IDS filed 12/02/2016 has been considered.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
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`USPQ2d 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,
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`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
`|PR2019-00885 (US 8,539,047)
`Exhibit 2041
`
`Page 3 of 6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2041
`Page 3 of 6
`
`

`

`Application/Control Number: 14/721 ,540
`Art Unit: 2443
`
`Page 3
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`double patenting provided the reference application or patent either is shown to be
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`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
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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) —
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`706.02(l)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321 (b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal Disclaimer may
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`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
`
`
`www.us«wnto.ov/atents/ rocess/fiEe/efs/o uidance/eTD—infdlist.
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`Claims 1-43 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-31 of U.S. Patent No. 8,539,047. Although the claims at
`
`issue are not identical, 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
`|PR2019-00885 (US 8,539,047)
`Exhibit 2041
`
`Page 4 of 6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (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
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`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 not identical, 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.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ALINA N. BOUTAH whose telephone number is
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`(571 )272—3908. The examiner can normally be reached on Monday-Friday (9:00 am -
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`5:00 pm).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Tonia L.M. Dollinger can be reached on 571—272—4170. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`PayPal Inc. v. IOENGINE, LLC
`|PR2019-00885 (US 8,539,047)
`Exhibit 2041
`
`Page 5 of 6
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2041
`Page 5 of 6
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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 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—1 000.
`
`/ALINA N BOUTAH/
`
`Primary Examiner, Art Unit 2443
`
`PayPaI Inc. v. IOENGINE, LLC
`|PR2019-00885 (US 8,539,047)
`Exhibit 2041
`
`Page 6 of 6
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2041
`Page 6 of 6
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