PTO/AIA/15 (03-13)
`Approved for use through 01/31/2014. OMB 0651-0032
`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
`1004294.013US
`First Named Inventor Scott McNulty
`
`Attorney Docket No.
`
`UTILITY
`PATENT APPLICATION
`TRANSMITTAL
`
`Title
`
`Apparatus, Method and System for a Tunneling Client Access Point
`
`(Only for new non provisional applications under 37 CFR 1.53(b))
`
`Express Mail Label No.
`
`APPLICATION ELEMENTS
`See MPEP chapter 600 concerning utility patent application contents.
`
`ADDRESS TO:
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1. ri Fee Transmittal Form
`
`(PTO/SB/17 or equivalent)
`
`2.17 A• pplicant asserts small entity status.
`See 37 CFR 1.27
`
`3. ri A• pplicant certifies micro entity status. See 37 CFR 1.29.
`
`Applicant must attach form PTO/SB/15A or B or equivalent.
`
`[Total Pages 77
`4.17 S• pecification
`Both the claims and abstract must start on a new page.
`(See MPEP § 608.01(a) for information on the preferred arrangement)
`[Total Sheets 10
`[Total Pages 9
`6. Inventor's Oath or Declaration
`(including substitute statements under 37 CFR 1.64 and assignments
`serving as an oath or declaration under 37 CFR 1.63(e))
`
`5. n
`
`Drawing(s) (35 U.S.C. 113)
`
`a. ri N• ewly executed (original or copy)
`b. ri A•
`7. ri A• pplication Data Sheet
`
`copy from a prior application (37 CFR 1.63(d))
`
`* See note below.
`See 37 CFR 1.76 (PTO/AIA/14 or equivalent)
`
`8.
`
`CD-ROM or CD-R
`in duplicate, large table, or Computer Program (Appendix)
`
`
`
` Landscape Table on CD
`
`9. Nucleotide and/or Amino Acid Sequence Submission
`(if applicable, items a. - c. are required)
`
`a. ri C• omputer Readable Form (CRF)
`b. ri S• pecification Sequence Listing on:
`
`i.
`
`CD-ROM or CD-R (2 copies); or
`
`ii.
`
`Paper
`
`c. ri S• tatements verifying identity of above copies
`
`10.
`
`ACCOMPANYING APPLICATION PAPERS
`Assignment Papers
`(cover sheet & document(s))
`Name of Assignee
`
`(when there is an assignee)
`
`11. ri 3• 7 CFR 3.73(c) Statement
`12. ri E• nglish Translation Document
`13. ri Information Disclosure Statement
`
`(if applicable)
`
`(PTO/S8/08 or PTO-1449)
`
`n Power of Attorney
`
`
`
` Copies of citations attached
`
`14. ri P• reliminary Amendment
`15. n Return Receipt Postcard
`16. ri C• ertified Copy of Priority Document(s)
`17. ri N• onpublication Request
`
`(MPEP § 503) (Should be specifically itemized)
`
`(if foreign priority is claimed)
`
`Under 35 U.S.C. 122(b)(2)(6)(i). Applicant must attach form PTO/SB/35
`or equivalent.
`
`18. ri O• ther:
`
`*Note: (1) Benefit claims under 37 CFR 1.78 and foreign priority claim
`under 1.55 must be included in an Application Data Sheet (ADS).
`
`(2) For applications filed under 35 U.S.C. 111, the application m ust contain an ADS specifying the applicant if the applicant is an
`assignee, person to whom the inventor is under an obligati
`n to assign, or person who otherwise shows sufficient proprietary
`interest in the matter. See 37 CFR 1.46(b).
`
`ri The address associated with Customer Number: 85775
`
`OR ri Correspondence address below
`
`19. CORRESPO DENCE ADDRESS
`
`Name
`
`Address
`
`City
`
`Country
`
`Signature
`
`/Robert K. Goethals/
`Name
`(Print/Type) Robert K. Goethals
`
`r
`
`State
`
`Telephone
`
`Zip Code
`
`Email
`
`Date
`
`08-06-2013
`Registration No.
`(Attorney/Agent) 36813
`
`This collection of 'nformation is required by 37 CFR 1.53(b). 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 1.11 and 1.14. This collection is estimated to take 12 minutes 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: 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.
`
`PayPal Ex. 1017, p. 1
`PayPal v. IOENGINE
`
`

`

`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.0 552a). Records from this system of
`records may be disclosed to the Department of Justice to determine whether disclosure of these
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`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting
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`552a(m).
`5. 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.
`6. 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)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator, 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 practices and programs,
`under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the
`GSA regulations governing inspection of records for this purpose, and any other relevant (i.e., GSA or
`Commerce) directive. Such disclosure shall not be used to make determinations about individuals.
`8. 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.
`9. 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.
`
`PayPal Ex. 1017, p. 2
`PayPal v. IOENGINE
`
`

`

`Docket No. 4602-4001
`
`COMBINED DECLARATION AND POWER OF ATTORNEY FOR
`ORIGINAL, DESIGN, NATIONAL STAGE OF PCT, SUPPLEMENTAL,
`DIVISIONAL, CONTINUATION OR CONTINUATION-IN-PART APPLICATION
`
`s a below named inventor, I hereby declare that:
`
`My residence, post office address and citizenship are as stated below next to my name,
`
`I believe I am the original, first and sole inventor (if only one name is listed below) or an original, first
`and joint inventor (if plural names are listed below) of the subject matter which is claimed and for which
`a patent is sought on the invention entitled:
`
`Apparatus, Method and System For A Tunneling Client Access Point
`
`the specification Ul which
`
`a.
`
`q
`
`is attached hereto
`
`b. E
`
`was filed on March 23, 2004 as application Serial No. 10/807,731 and was amended on
`. (if applicable).
`
`PCT FILED APPLICATION ENTERING NATIONAL STAGE
`
`c.
`
`q
`
`was described and claimed in International Application No.
`. (if any).
`as amended on
`
`filed on
`
`and
`
`I hereby state that I have reviewed and understand the contents of the above-identified specification,
`including the claims, as amended by any amendment referred to above.
`
`I acknowledge the duty to disclose information which is material to patentability as defined in 37 C.F.R.
`1.56.
`
`I hereby specify the following as the correspondence address to which all communications about this
`application are to be directed:
`
`SEND CORRESPONDENCE TO:
`E Bar Code label attached (see right)
`
`q
`
`Address Shown (see below)
`
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`New York, N.Y. 10154
`DIRECT TELEPHONE CALLS TO:
`
`820558 vl
`
`27123
`
`CUSTOMER NUMBER''
`
`PayPal Ex. 1017, p. 3
`PayPal v. IOENGINE
`
`

`

`q
`
`q
`
`I hereby claim foreign priority benefits under Title 35, United States Code § 119 (a)-(d) or under
`§ 365(b) of any foreign application(s) for patent or inventor's certificate or under § 365(a) of any
`PCT international application(s) designating at least one country other than the U.S. listed below
`and also have identified below such foreign application(s) for patent or inventor's certificate or
`such PCT international application(s) filed by me on the same subject matter having a filing date
`within twelve (12) months before that of the application on which priority is claimed:
`
`Docket No. 4602-4001
`
`The attached 35 U.S.C. § 119 claim for priority for the application(s) listed below forms a part of
`this declaration.
`
`Country/PCT
`
`Application
`Number
`
`Date of filing
`(day, month, yr)
`
`Date of issue
`(day, month, yr)
`
`Priority
`Claimed
`❑Y El N
`
`❑Y ❑N
`
`1-1 V riN
`
`q
`
`I hereby claim the benefit under 35 U.S.C. § 119(e) of any U.S. provisional application(s) listed
`below.
`
`Provisional Application No.
`
`Date of filing (day, month, yr)
`
`ADDITIONAL STATEMENTS FOR DIVISIONAL,
`CONTINUATION OR CONTINUATION-IN-PART
`OR PCT APPLICATION(S) DESIGNATING THE U.S.
`
`I hereby claim the benefit under Title 35, United States Code § 120 of any United States application(s) or
`under § 365(c) of any PCT international application(s) designating the U.S. listed below.
`
`US/PCT Application Serial No.
`
`Filing Date
`
`Status (patented, pending, abandoned)/ U.S.
`application no. assigned (For PCT)
`
`US/PCT Application Serial No.
`
`Filing Date
`
`Status (patented, pending, abandoned)/ U.S.
`application no. assigned (For PCT)
`
`q
`
`In this continuation-in-part application, insofar as the subject matter of any of the claims of this
`application is not disclosed in the above listed prior United States or PCT international
`application(s) in the manner provided by the first paragraph of Title 35, United States Code, §
`112, I acknowledge the duty to disclose material information as defined in Title 37, Code of
`Federal Regulations, § 1.56(a) which occurred between the filing date of the prior application(s)
`and the national or PCT international filing date of this application.
`
`820558 v I
`
`-2-
`
`PayPal Ex. 1017, p. 4
`PayPal v. IOENGINE
`
`

`

`Docket No. 4602-4001
`
`I hereby declare that all statements made herein of my own knowledge are true and that all statements
`made on information and belief are believed to be true; and further that these statements were made with
`the knowledge that willful false statements and the like so made are punishable by fine or Imprisonment,
`or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements
`may jeopardize the validity of the application or any patent issued thereon.
`
`I hereby appoint the following attorneys and/or agents with full power of substitution and revocation, to
`prosecute this application, to receive the patent, and to transact all business in the Patent 'and Trademark
`Office connected therewith: David H. Pfeffer (Reg. No. 19,825), Harry C. Marcus (Reg. No. 22,390),
`Stephen R. Smith (Reg. No. 22,615), Kurt E. Richter (Reg. No. 24,052), Eugene Moroz (Reg. No.
`25,237), John F. Sweeney (Reg. No. 27,471), Arnold I. Rady (Reg. No. 26,601), Christopher A. Hughes
`(Reg. No. 26,914), William S. Feiler (Reg. No. 26,728), Joseph A. Calvaruso (Reg. No. 28,287), James
`W. Gould (Reg. No. 28,859), Richard C. Komson (Reg. No. 27,913), Israel Blum (Reg. No. 26,710),
`Bartholomew Verdirame (Reg. No. 28,483), Maria C.H. Lin (Reg. No. 29,323), Joseph A. DeGirolamo
`(Reg. No. 28,595), Michael P. Dougherty (Reg. No. 32,730), Seth J. Atlas (Reg. No. 32,454), Andrew M.
`Riddles (Reg. No. 31,657), Bruce D. DeRenzi (Reg. No. 33,676), Mark J. Abate (Reg. No. 32,527), John
`T. Gallagher (Reg. No. 35,516), Steven F. Meyer (Reg. No. 35,613), Kenneth H. Sonnenfeld (Reg. No.
`33,285), Tony V. Pezzano (Reg. No. 38,271), Andrea L. Wayda (Reg. 43,979), Walter G. Hanchuk (Reg.
`No. 35,179), John W. Osborne (Reg. No. 36,231), Robert K. Goethals (Reg. No. 36,813), Peter N. Fill
`(Reg. No. 38,876), Kenneth S. Weitzman (Reg. No. 36,306), Richard Straussman (Reg. No. 39,847),
`Stephen J. Manetta (Reg. No. 40,426), Dorothy R. Auth (Reg. No. 36,434) and Michael 0. Cummings,
`(Reg. No. 40,575) of Morgan & Finnegan, L.L.P. whose address is: 345 Park Avenue, New York, New
`York, 10154; and Michael S. Marcus (Reg. No. 31,727), and John E. Hoel (Reg. No. 26,279), of
`Morgan & Finnegan, L.L.P., whose address is 1775 Eye Street, Suite 400, Washington, D.C. 20006.
`
`q
`
`I hereby authorize the U.S. attorneys and/or agents named hereinabove to accept and follow
`instructions from
`as to any action to be taken in the U.S. Patent and Trademark Office
`regarding this application without direct communication between the U.S. attorneys and/or agents
`and me. In the event of a change in the person(s) from whom instructions may be taken I will so
`notify the U.S. attorneys and/or agents named hereinabove.
`
`Full name of sole or first inventor:
`
`cott McNulty
`
`Inventor's signature*
`
`
`
`
`
`
`
`e
`
`4-41
`
`Residence:
`
`Citizenship:
`
`22 Ensign Road, Rowa ton, CT 06853
`
`USA
`
`Post Office Address:
`
`Same as above
`
`7-it-oy
`Date
`
`Full name of second inventor:
`
`Inventor's signature*
`
`Residence:
`
`Citizenship:
`
`Post Office Address:
`
`Date
`
`ATTACHED IS ADDED PAGE TO COMBINED DECLARATION AND POWER OF ATTORNEY FOR
`SIGNATURE BY THIRD AND SUBSEQUENT INVENTORS FORM.
`
`820558 v I
`
`-3-
`
`PayPal Ex. 1017, p. 5
`PayPal v. IOENGINE
`
`

`

`Docket No. 4602-4001
`
`*Before signing this declaration, each person signing must:
`
`1. Review the declaration and verify the correctness of all information therein; and
`
`2. Review the specification and the claims, including any amendments made to the claimVn
`
`After the declaration is signed, the specification and claims are not to be altered.
`
`To the inventor(s):
`
`The following are cited in or pertinent to the declaration attached to the accompanying
`application:
`
`Title 37, Code of Federal Regulation, §1.56
`
`Duty to disclose information material to patentability
`
`(a)
`
`A patent by its very nature is affected with a public interest. The public interest is best served, and the most
`effective patent examination occurs when, at the time an application is being examined, the Office is aware
`of and evaluates the teachings of all information material to patentability. Each individual associated with
`the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the
`Office, which includes a duty to disclose to the Office all information known to that individual to be
`material to patentability as defined in this section. The duty to disclose information exists with respect to
`each pending claim until the claim is cancelled or withdrawn from consideration, or the application
`becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn
`from consideration need not be submitted if the information is not material to the patentability of any claim
`remaining under consideration in the application. There is no duty to submit information which is not
`material to the patentability of any existing claim. The duty to disclose all information known to be
`material to patentability is deemed to be satisfied if all information known to be material to patentability of
`any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by
`§§ 1.97(b)-(d) patentability of any existing claim. The duty to disclose all information known to be material
`to patentability is deemed to be satisfied if all information known to be material to patentability of any
`claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§
`1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud
`on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or
`intentional misconduct. The Office encourages applicants to carefully examine:
`
`(1)
`
`(2)
`
`prior art cited in search reports of a foreign patent office in a counterpart application, and
`
`the closest information over which individuals associated with the filing or prosecution of a patent
`application believe any pending claim patentably defines, to make sure that any material
`information contained therein is disclosed to the Office.
`
`(b)
`
`Under this section, information is material to patentability when it is not cumulative to information already
`of record or being made of record in the application, and
`
`(1)
`
`(2)
`
`It establishes, by itself or in combination with other information, a prima facie case of
`unpatentability of a claim; or
`
`It refutes, or is inconsistent with, a position the applicant takes in:
`
`820558 vl
`
`PayPal Ex. 1017, p. 6
`PayPal v. IOENGINE
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`

`

`Docket No. 4602-4001
`
`Opposing an argument of unpatentability relied on by the Office, or
`
`(ii)
`
`Asserting an argument of patentability. A prima facie case of unpatentability is
`established when the information compels a conclusion that a claim is
`unpatentable under the preponderance of evidence, burden-of-proof standard,
`giving each term in the claim its broadest reasonable construction consistent
`with the specification, and before any consideration is given to evidence which
`may be submitted in an attempt to establish a contrary conclusion of
`patentability.
`Individuals associated with the filing or prosecution of a patent application within the meaning of this
`section are:
`
`(1)
`
`(2)
`
`(3)
`
`Each inventor named in the application;
`
`Each attorney or agent who prepares or prosecutes the application; and
`
`Every other person who is substantively involved in the preparation or prosecution of the
`application and who is associated with the inventor, with the assignee or with anyone to whom
`there is an obligation to assign the application.
`
`Individuals other than the attorney, agent or inventor may comply with this section by disclosing
`information to the attorney, agent, or inventor.
`
`In any continuation-in-part application, the duty under this section includes the duty to disclose to the
`Office all information known to the person to be material to patentability, as defined in paragraph (b) of
`this section, which became available between the filing date of the prior application and the National or
`PCT international filing date of the continuation-in-part application.
`
`(c)
`
`(d)
`
`(e)
`
`Title 35, U.S. Code § 101
`
`Inventions patentable
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
`
`Title 35 U.S. Code § 102
`
`Conditions for patentability; novelty and loss of right to patent
`
`A person shall be entitled to a patent unless --
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`the invention was known or used by others in this country, or patented or described in a printed publication
`in this or a foreign country, before the invention thereof by the applicant for patent,
`
`the invention was patented or described in a printed publication in this or foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States, or
`
`he has abandoned the invention, or
`
`the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by
`the applicant or his legal representatives or assigns in a foreign country prior to the date of the application
`for patent in this country on an application for patent or inventor's certificate filed more than twelve months
`before the filing of the application in the United States, or
`
`820558 vl
`
`PayPal Ex. 1017, p. 7
`PayPal v. IOENGINE
`
`

`

`Docket No. 4602-4001
`
`(e)
`
`The invention was described in--
`
`(1)
`
`(2)
`
`an application for patent, published under section 122(b), by another filed in the United States
`before the invention by the applicant for patent, except that an international application filed under
`the treaty defined in section 351(a) shall have the effect under this subsection of a national
`application published under section 122(b) only if the international application designating the
`United States was published under Article 21(2)(a) of such treaty in the English language; or
`
`a patent granted on an application for patent by another filed in the United States before the
`invention by the applicant for patent, except that a patent shall not be deemed filed in the United
`States for the purposes of this subsection based on the filing of an international application filed
`under the treaty defined in section 351(a); or
`
`(f)
`
`(g)
`
`he did not himself invent the subject matter sought to be patented, or
`
`(1) during the course of an interference conducted under section 135 or section 291, another inventor
`involved therein establishes, to the extent permitted in section 104, that before such person's invention
`thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2)
`before such persons invention thereof, the invention was made in this country by another inventor who had
`not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there
`shall be considered not only the respective dates of conception and reduction to practice of the invention,
`but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time
`prior to conception by the other.
`
`Title 35, U.S. Code § 103
`
`103. Conditions for patentability; non-obvious subject matter
`
`(a)
`
`(b)
`
`A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be
`negatived by the manner in which the invention was made.
`
`(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under
`this subsection, a biotechnological process using or resulting in a composition of matter that is novel under
`section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if—
`
`(A)
`
`(B)
`
`claims to the process and the composition of matter are contained in either the same
`application for patent or in separate applications having the same effective filing date;
`and
`
`the composition of matter, and the process at the time it was invented, were owned by the
`same person or subject to an obligation of assignment to the same person.
`
`(2)
`
`A patent issued on a process under paragraph (1)—
`
`(A)
`
`(B)
`
`shall also contain the claims to the composition of matter used in or made by that process,
`or
`
`shall, if such composition of matter is claimed in another patent, be set to expire on the
`same date as such other patent, notwithstanding section 154.
`
`(3)
`
`For purposes of paragraph (1), the term "biotechnological process" means--
`
`820558 v I
`
`PayPal Ex. 1017, p. 8
`PayPal v. IOENGINE
`
`

`

`Docket No. 4602-4001
`
`(A)
`
`a process of genetically altering or otherwise inducing a single- ormulti-celled organism
`to--
`
`(i)
`
`(ii)
`
`express an exogenous nucleotide sequence,
`
`inhibit, eliminate, augment, or alter expression of an endogenous nucleotide
`sequence, or
`
`(iii)
`
`express a specific physiological characteristic not naturally associated with said
`organism;
`cell fusion procedures yielding a cell line that expresses a specific protein, such as a
`monoclonal antibody; and
`
`a method of using a product produced by a process defined by subparagraph (A) or (B),
`or a combination of subparagraphs (A) and (B).
`
`(B)
`
`(C)
`
`(c)
`
`Subject matter developed by another person, which qualifies as prior art only under one or more of
`subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section
`where the subject matter and the claimed invention were, at the time the invention was made, owned by the
`same person or subject to an obligation of assignment to the same person.
`
`Title 35, U.S. Code § 112 (in part)
`
`Specification
`
`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.
`
`Title 35, U.S. Code, § 119
`
`Benefit of earlier. iling date in foreign country; right of priority
`
`(a)
`
`(b)
`
`An application for patent for an invention filed in this country by any person who has, or whose legal
`representatives or assigns have, previously regularly filed an application for a patent for the same invention
`in a foreign country which affords similar privileges in the case of applications filed in the United States or
`to citizens of the United States, or in a WTO member country, shall have the same effect as the same
`application would have if filed in this country on the date on which the application for patent for the same
`invention was first filed in such foreign country, if the application in this country is filed within twelve
`months from the earliest date on which such foreign application was filed; but no patent shall be granted on
`any application for patent for an invention which had been patented or described in a printed publication in
`any country more than one year before the date of the actual filing of the application in this country, or
`which had been in public use or on sale in this country more than one year prior to such filing.
`
`(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and
`Trademark Office, identifying the foreign application by specifying the application number on that foreign
`application, the intellectual property authority or country in or for which the application was filed, and the
`date of filing the application, at such time during the pendency of the application as required by the
`Director.
`
`(2)
`
`The Director may consider the failure of the applicant to file a timely claim for priority as a
`waiver of any such claim. The Director may establish procedures, including the payment of a
`surcharge, to accept an unintentionally delayed claim under this section.
`
`820558 vl
`
`-iv-
`
`PayPal Ex. 1017, p. 9
`PayPal v. IOENGINE
`
`

`

`Docket No. 4602-4001
`
`(3)
`
`The Director may require a certified copy of the original foreign application, specification, and
`drawings upon which it is based, a translation if not in the English language, and such other
`information as the Director considers necessary. Any such certification shall be made by the
`foreign intellectual property authority in which the foreign application was filed and show the
`date of the application and of the filing of the specification and other papers.
`In like manner and subject to the same conditions and requirements, the right provided in this section may
`be based upon a subsequent regularly filed application in the same foreign country instead of the first filed
`foreign application, provided that any foreign application filed prior to such subsequent application has
`been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection
`and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for
`claiming a right of priority.
`
`Applications for inventors' certificates filed in a foreign country in which applicants have a right to apply,
`at their discretion, either for a patent or for an inventor's certificate shall be treated in this country in the
`same manner and have the same effect for purpose of the right of priority under this section as applications
`for patents, subject to the same conditions and requirements of this section as apply to applications for
`patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris
`Convention at the time of such filing.
`
`(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed
`in the manner provided by the first paragraph of section 112 of this title in a provisional application filed
`under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall
`have the same effect, as to such invention, as though filed on the date of the provisional application filed
`under section 1 1 1(b) of this title, if the application for patent filed under section 111(a) or section 363 of
`this title is filed not later than 12 months after the date on which the provisional application was filed and if
`it contains or is amended to contain a specific reference to the provisional application. No application shall
`be entitled to the benefit of an earlier filed provisional application under this subsection unless an
`amendment containing the specific reference to the earlier filed provisional application is submitted at such
`time during the pendency of the application as required by the Director. The Director may consider the
`failure to submit such an amendment within that time period as a waiver of any benefit under this
`subsection. The Director may establish procedures, including the payment of a surcharge, to accept an
`unintentionally delayed submission of an amendment under this subsection during the pendency of the
`application.
`
`(2)
`
`(3)
`
`A provisional application filed under section 111(b) of this title may not be relied upon in any
`proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C)
`of section 41(a)(1) of this title has been paid.
`If the day that is 12 months after the filing date of a provisional application falls on a Saturday,
`S