`
`APPLICATION NUMBER
`
`
`
`FILING OR 371(C) DATE
`
`UNITED STATES PATENT AND TRADEMARK OFFIGE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`)
`OX.
`Address: COMMISSIONER FOR PATENTS
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`FIRST NAMED APPLICANT
`
`ATTY. DOCKET NO./TITLE
`
`14/716,401
`
`05/19/2015
`
`David F. MACNEIL
`
`31700.0555
`CONFIRMATIONNO. 6841
`
`115904
`Perkins IP Law Group LLC
`
`4200 Commerce Court
`
`Suite 310
`Lisle, IL 60532
`
`PUBLICATION NOTICE
`
`INOUE
`
`Title:DESIGNING AND MANUFACTURING VEHICLE FLOOR TRAYS
`
`Publication No.US-2015-0251338-A1
`Publication Date:09/10/2015
`
`NOTICE OF PUBLICATION OF APPLICATION
`
`The above-identified application will be electronically published as a patent application publication pursuant to 37
`CFR 1.211, et seq. The patent application publication number and publication date are set forth above.
`
`The publication may be accessed through the USPTO's publically available Searchable Databasesvia the
`Internet at www.uspto.gov. The direct link to access the publication is currently http:/Awww.uspto.gov/pattt/.
`
`The publication process established by the Office does not provide for mailing a copy of the publication to
`applicant. A copy of the publication may be obtained from the Office upon paymentof the appropriate fee set forth
`in 37 CFR 1.19(a)(1). Orders for copies of patent application publications are handled by the USPTO's Office of
`Public Records. The Office of Public Records can be reached by telephone at (703) 308-9726 or (800) 972-6382,
`by facsimile at (703) 305-8759, by mail addressed to the United States Patent and Trademark Office, Office of
`Public Records, Alexandria, VA 22313-1450 or via the Internet.
`
`In addition, information on the status of the application, including the mailing date of Office actions and the
`dates of receipt of correspondencefiled in the Office, may also be accessed via the Internet through the Patent
`Electronic Business Center at www.uspto.gov using the public side of the Patent Application Information and
`Retrieval (PAIR) system. The direct link to access this status information is currently http://pair.-uspto.gov/. Prior to
`publication, such status information is confidential and may only be obtained by applicant using the private side of
`PAIR.
`
`Further assistance in electronically accessing the publication, or about PAIR, is available by calling the Patent
`Electronic Business Center at 1-866-217-9197.
`
`
`
`Office of Data Managment, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
`
`page 1 of 1
`
`MacNeil Exhibit 2046
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`

`

`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Vatent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`www.uspto.g:
`Alexandria, Virginia 22313-1450
`
`APPLICATION NO.
`
`14/716,401
`
`ISSUE DATE
`
`09/22/2015
`
`115904
`
`7590
`
`09/02/2015
`
`Perkins IP Law Group LLC
`4200 Commerce Court
`Suite 310
`Lisle, IL 60532
`
`PATENT NO.
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`9138917
`
`31700.0555
`
`6841
`
`The projected patent numberandissue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 0 day(s). Any patent to issue from the above-identified application will include
`an indication of the adjustmenton the front page.
`
`If a Continued Prosecution Application (CPA) wasfiled in the above-identified application, the filing date that
`determines Patent Term Adjustmentis the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEBsite (http://pair-uspto. gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
`payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
`(ODM)at (571)-272-4200.
`
`APPLICANT(s)(Please see PAIR WEBsite http://pair.uspto.gov for additional applicants):
`
`David F. MACNEIL, Hinsdale, IL;
`MacNeil IP LLC, Bolingbrook, IL;
`Scott A. VARGO, Lombard, IL;
`
`The United States represents the largest, most dynamic marketplace in the world andis an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`worksto encourage andfacilitate business investment. To learn more about why the USAis the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectSA cov. ‘bit 2046
`IR103 (Rev. 10/09)
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
`
`

`

`PART 8 - FEE(S} TRANSMIEPTAL
`
`Coniplete and send this form, together with applicablefee(s), to: Mail Mail Stop ISSUE FRE
`Camumissioner for Patents
`PLO. Box 1450
`Alexandria, Virginis 22373-1450
`av Fax (571)-273-2888
`
`INSTRUCTIONS: This ford should be ss ad for rans:
`am PUBLICS
`
`AUTON FEE GP eeguired). Blacks 7
`mitne the ISSUR Ph
`theongh 3 should be completed whore
`
`
`appropmaic. AN tithes comespordence inchuding the Patent, advanes orders & a notification of maintenance fees
`will be maaed to the cumont corres
`silence add
`
`
`
`
`
`
`indicated unless corrected belowof directed otherwise in Black J, by fa} specifying a mew correspondence address:
`andor (b> indicating a separate
`ADDRESS
`maintonanre fee notifications,
`
`CRERENTCORRESEIN
`B ARGRESS ¢Moxe: Dae Bbak f fac any change ofaktss!
`
`
`only be used for domestic mailings of the
`f mailiny can
`This cottificate cannot he used for any other acconipanving
`5
`
`
`
`
`ch ae an asst garment or faunal dreeing, SHS
`DAES. Each siiditional paps
`have its Own certificate of maltiag or (ANATHRSIEN,
`
`Certificate of Mailing or Transntission
`
`
`
`
`
`
`
`2 ES oe pondenosisbePS: 4 WEE RRRES Lhereby certify that this ¢ dtted vis the ULS. Patent
`
`andTrademarkOffice (USPTO)clecteonicfilingsystem
`Perkins IP Law Group LEC
`(EFS.Web) ithe
`
`
`USPTOna August £2,
`$200 Comieree Court
`Seite 340
`—
`Liske, 1. 60832
`Cheabeth Zega
`fElzabeth 2ega!
`
`August 13, 2015
`
`APPLICATSIEN MOL
`Lah GAG
`
`PHASG TATE
`POON S
`
`FERSNAMED INVENTOR
`Dawid FL MACN
`
`CONEIRMATIONNC.
`
`EPLQF ENVENTION: DESTONENG ANT MANUCEACTURING VIEIOCLE FLOOR TRAY
`
`ATTORNEY DOCKET NOL,
`AYF80.0885
`
`|
`
`oka}
`
`PYIBYIC ATICES PRELIYUR|BRE, PAID
`
`acaupavisional
`
`CNDY SOGRUNPRES
`
`B66
`
`RQ
`
`30
`
`SQvui
`
`HY IGaOLS
`
`
`
`
`
`
`ot otmrespendince address ov inslicution of “Bee Address” (37
`
`sof up te 3 nesistoves §patent attomeys9bE,
`; Perkins IP Law Group LLC
`OFB 1.763),
`
`{4} The sai
` a ss dar Change of Correspondence
`awagents (RB,
`allernatively,
`tal Changeof corres
`
`
`
`Address form PY
`CMSEVT AE) attached,
`
`“Vises sseereass of singe Tem (having a5 4 sember a Flic eeceeeeneeneeeeeeeeeeleveneneneneeeeeeeaaeeeeseesaaeeeees
`
`
`
`atocwy oF agent? aad the names of up io
`indicationix
`3 Adhlress” Tat
`
`toss form
`
`
`
`af a Castenter
`
`pe momame willbeprinted0000Serrrrrrrrrreeerereeereerrrreneneeneeeeeeeeeeerettnnetneneeneeeee
`FA-02 or more pecan) attached,
`at patent athoraeys ovagents. fF ae mame is
`3
`
`
`Nunuberix requires.
`aisigidce data WAH appear on Nar rent Han assignes ts identified below. the doctimedt has heen Med for
`PLEAS
`
`recordatiin as
`set forth la 37 ra.3Th“eComtetieaof tess Pare is NOY a suhatitute for Nag an assignment.
`
`
`{Ad NAME OF ASSIGNEE
`i) RESIDENCH: fCPPY and STATE GR COUNTRY}
`MacNefi iP LLC
`Bolingbrook, Hlineis
`
`
`Pivase check the appropriate acstenes osioory cn cahegenies (adil mot be pratedtom the petentys - Tadivichral Bd Corperation or otherprivate proupreniity Ld Covernanent
`
`ab. Pasmeat of Preien (Please first reapply any previnusly paidissus fee shown above)
`ag. The loltivwiny foe(s} ary submitted:
`ul Avheckis enclosed,
`Blsue Bee
`a Payment by credit cand. Form PPO-288 bs attached.
`tad Publication Fee {No small entiny disccamnt permuted}
`
`SHthe divector ts heechy mathortded tocharge the ecquired feta}. any deficiency, or credits any tad Advance Onter ~ € of PIEScccceeeeeeeeesesteseneee
`
`svespreyment, { iW Gira copy of this
`
`feernt)
`
`5. Charge in Ratily Siatas (romstatusindicated shove}
`iad Applicant cectifviag micns entity status, See 37 CFR 1.29
`
`
`al Applicant asserting srialf entity statis. See AT OBR § 27
`
`
`
`
`NOTE: Absent a valid ventification of Micro Tantity Ststus {sex forme PTONSRYETA and 158), issue
`fer payne in the saiere eadity amount will aia be accepted al the risk of application shandonmen,
`
`MOTE: Ht the application was previnshy wader miceentity stshis, checking Unis box will be takes
`iy be a notification offuss of enthdement je mero ontiy Stans.
`Ns
`: Checking this bos will be takes to be 3 notification oftoss of entitlement to small or miter
`teed Applicant changing ka reenter auidisccmated fie status.
`
`ently states, as applicable,
` 333 form mast he sf
`ROLST and |
`
`
`
`
` Yyped.orprinted aan| Jefferson Perkins
` a U40
`Page 2083
`Yita v. MacNeil IP, IPR2020-01139
`CPB Gee1-008
`ELS. Patent and Trademark Gffices 2S. DEPARTMENT OF Ragessacn
`
`Audniieed Signature |
`
`This form is @ modified version of
`
`PTOL.-84 Pant Bien13) Approved fre wee through HSE2073,
`
`
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
`
`

`

`Filing Date:
`
`19-May-2015
`
`Title of Invention:
`
`DESIGNING AND MANUFACTURING VEHICLE FLOOR TRAYS
`
`Electronic Patent Application Fee Transmittal
`
`
`
`First Named Inventor/Applicant Name:
`
`David F. MACNEIL
`
`Filed as Large Entity
`
`Filing Fees for Utility under 35 USC 111(a)
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`USD(S$)
`
`Basic Filing:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance
`
`V
`Paret OO AY
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
`
`

`

`Extension-of-Time:
`
`Total in USD ($)
`
`Miscellaneous:
`
`MacNeil Exhibit 2046
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
`
`

`

`
`
`a i
`
`Electronic AcknowledgementReceipt
`
`tis
`
`Title of Invention:
`
`DESIGNING AND MANUFACTURING VEHICLE FLOOR TRAYS
`
`ee
`
`Paymentinformation:
`
`Submitted with Payment
`
`yes
`
`Payment was successfully received in RAM
`
`Yita v. MacNeil IP, IPR2020-01139
`
`Authorized User
`
`ZEGA, ELIZABETH
`
`TheDirector of the USPTO is hereby authorized to charge indicated fees and credit any overpaymentas follows:
`
`MacNeil Exhibit 2046
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 6
`
`

`

`File Listing:
`
`Document
`
`Information:
`
`gs
`
`File Size(Bytes)/
`
`Multi
`
`Pages
`
`Issue Fee Payment (PTO-85B)
`
`IssueFeeTransmittal3a.pdf
`
`628459
`
`b855dc21a5423c10cdb573ac93d8e4a7436}
`Sdcff
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`76af42cfadb438d7ce39bObb26b573e2d0d
`5961d
`
`the application.
`
`This AcknowledgementReceipt evidences receipt on the noted date by the USPTOofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable.It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfora filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shownonthis
`AcknowledgementReceiptwill establish thefiling date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903indicating acceptanceof the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shownon this AcknowledgementReceiptwill establish the international filing date of
`
`MacNeil Exhibit 2046
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 7
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 7
`
`

`

`
`
`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
`
`07/17/2015
`
`115904
`7590
`Perkins IP Law Group LLC
`4200 Commerce Court
`Scie 310
`Lisle, IL 60532
`
`ROMAIN,PINEL E
`
`3612
`
`DATE MAILED: 07/17/2015
`
`David F. MACNEIL
`05/19/2015
`14/716,401
`TITLE OF INVENTION: DESIGNING AND MANUFACTURING VEHICLE FLOOR TRAYS
`
`31700.0555
`
`6841
`
`
`
`
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEEENTITY STATUS ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`UNDISCOUNTED
`
`$960
`
`$0
`
`$0
`
`$960
`
`10/19/2015
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCEIS 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.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STATUTORY PERIOD CANNOT BE EXTENDED.
`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLYTO THIS NOTICE:
`
`I. Review the ENTITY STATUSshownabove.If the ENTITY STATUSis shown as SMALL or MICRO,verify whether entitlement to that
`entity status still applies.
`If the ENTITY STATUSis the same as shown above, pay the TOTAL FEE(S) DUE shown above.
`If the ENTITY STATUSis changed from that shown above, on PART B - FEE(S) TRANSMITTAL,complete section number5 titled
`"Change in Entity Status (from status indicated above)".
`For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amountof small entity
`fees.
`
`II. PART B - FEE(S) TRANSMITTAL,orits equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE(if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B isfiled, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalentof Part B.
`
`IH. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advisedto the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenancefees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev. 02/11)
`
`Page | of 3
`
`MacNeil Exhibit 2046
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 8
`
`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`or Fax (571)-273-2885
`
`through 5 should be completed where
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE(if required). Blocks 1
`appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`indicated unless corrected below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS"for
`maintenance fee notifications.
`
`CURRENT CORRESPONDENCE ADDRESS(Note: Use Block 1 for any changeof address)
`
`7590
`115904
`Perkins IP Law Group LLC
`4200 Commerce Court
`Suite 310
`Lisle, IL 60532
`
`0717/2015
`
`can only be used for domestic mailings of the
`Note: A certificate of mailing
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`apers. Each additional paper, such as an assignment or formal drawing, must
`have its own certificate of mailing or transmission.
`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`States Fostal Service with sufficient postagefor first class mailin an envelope
`addressed
`to
`the Mail
`Stop
`ISSUE FEE address above, or
`being
`facsimile
`transmitted to the USPTO (S71) 273-2885, on the date indicated belSw.
`(Depositors name)
`(Signature)
`
`(ate)
`
`APPLICATION NO.
`
`FILING DATE
`
`
`
`
`
` FIRST NAMED INVENTOR
`
`David F. MACNEIL
`05/19/2015
`14/716,401
`TITLE OF INVENTION: DESIGNING AND MANUFACTURING VEHICLE FLOOR TRAYS
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`31700.0555
`
`6841
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEEENTITY STATUS ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`UNDISCOUNTED
`
`$960
`
`$0
`
`$0
`
`$960
`
`10/19/2015
`
`EXAMINER
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`ROMAIN,PINEL E
`
`3612
`
`296-097230
`
`2. For printing on the patent front page,list
`(1) The namesofup to 3 registered patent attorneys
`or agents OR,alternatively,
`(2) The nameofa single firm (having as a member a
`2
`registered attorney or agent) and the namesof up to
`2 registered patent attorneys or agents. If nonameis
`listed, no namewill be printed.
`
`
`
`43
`
`
`
`
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`LI Change of correspondence address (or Change of Correspondence
`Address form PTO/SB/122) attached.
`LI "Fee Address" indication (or "Fee Address” Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Numberis required.
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT(printor type)
`If an assignee is identified below, the document has been filed for
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CFR 3.11. Completion of this form is NOT a substitute for filing an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE:(CITY and STATE OR COUNTRY)
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) :
`
`LV individual LJ Corporation or other private group entity (J Government
`
`4a. The following fee(s) are submitted:
`L] Issue Fee
`_] Publication Fee (No small entity discount permitted)
`LT Advance Order - # of Copies
`
`
`
`4b. Paymentof Fee(s): (Please first reapply any previously paid issue fee shown above)
`LIA checkis enclosed.
`Lj Paymentby credit card. Form PTO-2038 is attached.
`[I The directoris hereby authorized to charge the required fee(s), any deficiency, or credits any
`overpayment, to Deposit Account Number
`(enclose an extra copy ofthis form).
`
`
`
`5. Change in Entity Status (from status indicated above)
`| Applicantcertifying micro entity status. See 37 CFR 1.29
`
` Lj Applicant changing to regular undiscounted fee status.
`
`Lj Applicant asserting small entity status. See 37 CFR 1.27
`
`
`NOTE:Absenta valid certification of Micro Entity Status (see forms PTO/SB/15A and 15B), issue
`fee paymentin the micro entity amountwill not be accepted at the risk of application abandonment.
`
`NOTE:If the application was previously under micro entity status, checking this box will be taken
`to be a notification ofloss of entitlement to micro entity status.
`NOTE: Checking this box will be taken to be a notification ofloss of entitlement to small or micro
`entity status, as applicable.
`
`NOTE: This form mustbe signed in accordance with 37 CFR 1.31 and 1.33. See 37 CFR 14 for signature requirements and certifications.
`
`Authorized Signature
`
`Typed or printed name
`
`
`Date
`
`Registration No.
`
`PTOL-85 Part B (10-13) Approved for use through 10/31/2013.
`
`Page 2 of 3
`OMB 0651-0033
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`Yita v. MacNeil IP, IPR2020-01139
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF RageeQcr
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`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 9
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO.
`
`FILING DATE
`
`
`
`
`FIRST NAMED INVENTOR
`
`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
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`14/716,401
`
`05/19/2015
`
`David F. MACNEIL
`
`31700.0555
`
`6841
`
`07/17/2015
`
`115904
`7590
`Perkins IP Law Group LLC
`4200 Commerce Court
`Suite 310
`Lisle, IL 60532
`
`ROMAIN,PINEL E
`
`ART UNIT
`3612
`
`PAPER NUMBER
`
`DATE MAILED: 07/17/2015
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(Applicationsfiled on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
`
`to eliminate the
`Section 1(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i)
`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 patent term adjustment determination with the notice of allowance. The Office will continue to
`provide a patent term adjustment determination with the Issue Notification Letter that is mailed to applicant
`approximately three weeks prior to the issue date of the patent, and will include the patent term adjustment on the
`patent. Any request for reconsideration of the patent term adjustment determination (or reinstatement of patent term
`adjustment) should follow the process outlined in 37 CFR 1.705.
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of the Office of Patent Publication at 1-(888)-786-0101 or (571)-272-4200.
`
`PTOL-85 (Rev. 02/11)
`
`Page 3 of 3
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`MacNeil Exhibit 2046
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`Yita v. MacNeil IP, IPR2020-01139
`Page 10
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`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 10
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`OMB Clearance and PRA Burden Statement for PTOL-85 Part B
`
`The Paperwork Reduction Act (PRA) of 1995 requires Federal agencies to obtain Office of Management and
`Budget approval before requesting most types of information from the public. When OMB approves an agency
`request to collect information from the public, OMB (i) provides a valid OMB Control Number and expiration
`date for the agency to display on the instrument that will be used to collect the information and (ii) requires the
`agency to inform the public about the OMB Control Number’s legal significance in accordance with 5 CFR
`1320.5(b).
`
`The information collected by PTOL-85 Part B is required by 37 CFR 1.311. The information is required to obtain
`or retain a benefit by the public whichis to file (and by the USPTO to process) an application. Confidentiality is
`governed by 35 U.S.C. 122 and 37 CFR 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, Virginia 22313-1450. DO NOT
`SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box
`1450, Alexandria, Virginia 22313-1450. Under the Paperwork Reduction Act of 1995, no persons are required to
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`
`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 informationis
`35 U.S.C. 2(b)(2); (2) furnishing of the informationsolicited 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 mayresult in termination of
`proceedings or abandonmentof the application or expiration of the patent.
`
`The information provided by youin 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.C 552a). Records from this system of records
`may be disclosed to the Department of Justice to determine whether disclosure of these records is required
`by the Freedom of Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence
`to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of
`settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a
`request involving an individual, to whom the record pertains, when the individual has requested assistance
`from the Memberwith respect to the subject matter of the record.
`4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having
`need for the information in order to perform a contract. Recipients of information shall be required to
`comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 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 managementpractices 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, SaCRIEMbit 2046
`enforcement agency,if the USPTO becomesawareof a violation or potential yiolation of law or joey ation.
`Yita v. MacNeil IP,
`TPR2020-01139
`Page 11
`
`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 11
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`

`

`
`
`
`
`Applicant(s)
`MACNEIL ET AL.
`i
`AIA (First Inventor to
`
`No
`
`
`
`Notice of Allowability feet|File) StatusExarSAIN
`
`.
`
`ape
`
`Application No.
`14/716,401
`i
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`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 ALLOWABILITY IS NOT A GRANTOF 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. [J This communication is responsive to
`LIA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2. 1 An election was madeby the applicant in responseto a restriction requirementsetforth during the interview on
`requirement and election have been incorporated into this action.
`
`; the restriction
`
`3. KJ The allowed claim(s)is/are 1-6. As a result of the allowed claim(s), you maybeeligible to benefit from the Patent Prosecution
`mt
`Highwayprogramat a participating intellectual property office for the corresponding application. For more information, please see
`
`nito/www.usoto. gov/patenis/init events/poh/index.iso or send an inquiry to PPHicedback@uspto.gov .
`
`4. 1 Acknowledgmentis madeof a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`Certified copies:
`*c) [J None of the:
`a) All
`b)(JSome
`1. (J Certified copies of the priority documents have been received.
`2. (] Certified copies of the priority documents have been received in Application No.
`3. [1] Copiesofthe certified copies of the priority documents have been receivedin 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 a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT ofthis application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`5. DJ CORRECTED DRAWINGS( as “replacement sheets”) must be submitted.
`
`C1
`
`including changes required by the attached Examiner's Amendment / Commentor in the Office action of
`Paper No./Mail Date
`.
`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawingsin 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. [] DEPOSIT OF and/or INFORMATIONaboutthe deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. KJ Notice of References Cited (PTO-892)
`2. XJ Information Disclosure Statements (PTO/SB/08),
`
`Paper No./Mail Date 5/19/2015,5/19/2015,5/19/2015
`3. DJ Examiner's Comment Regarding Requirementfor Deposit
`of Biological Material
`4. ZF Interview Summary (PTO-413),
`Paper No./Mail Date
`.
`
`/PINEL ROMAIN/
`Primary Examiner, Art Unit 3612
`
`5. (] Examiner's Amendment/Comment
`6. XJ Examiner's Statement of Reasons for Allowance
`
`7. Other
`
`.
`
`
`U.S. Patent and Trademark Office
`
`PTOL-37 (Rev. 08-13)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20150710
`
`MacNeil Exhibit 2046
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 12
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`MacNeil Exhibit 2046
`Yita v. MacNeil IP, IPR2020-01139
`Page 12
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`

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`Application/Control Number: 14/716,401
`Art Unit: 3612
`
`Page 2
`
`REASONS FOR ALLOWANCE
`
`The following is an examiner's statement of reasons for allowance: prior art fails
`
`to disclose or render obvious the pro