PATENT
`
`Amendmentsto the Claims:
`
`Thelisting of claims will replace all prior versions, andlistings, of claims in the
`application:
`
`Listing of Claims:
`
`Ts
`
`(Currently amended) An article for managing communication of a user, in
`
`view of afirst-device-of a person trying to electronically convey a message frerR
`
`
`
`the-firstdeviceto a secernd-device of the user without the need to know contact
`
`information of the device of the user, the article comprising:
`
`a non-transitory computer readable storage medium comprising a plurality
`
`of instructions, when executedby a server, result in the server:
`
`receiving the message sernveyed from the-trst adeviceofthe
`
`person;
`
`identifying an identity of the person trying to electronically convey the
`
`message;
`
`
`
`determining whetherthe user is available to receive the message;
`
`sending information to the first device as to wretherthe—-useris
`
`available the availability of the user to receive the message; and
`
`setting a process fer to electronically convey the message from the
`
`device of
`
`the person to the device of
`
`the user through the contact
`
`information of the device of the user, using one or morerules, based on at
`
`least a current status associated with the user, a preference of the user,
`
`and an accesspriority associated with the person,
`
`wherein even when the process involves transmitting the message to the
`
`device of the user through the contact information of the device of the user, the
`
`contact information of the device of the user is not provided to the device of the
`
`person to prevent the person from contacting the device of the user through the
`
`contact information, without via the server.
`
`Appin. No. 14/922,344
`
`33
`
`Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 129
`
`

`

`PATENT
`
`2.
`
`(Currently amended) Anarticle as recited in claim 1,
`
`wherein the messageis conveyed from the frst device of the person based
`
`on Internet protocol,
`
`wherein the processallows the user to receive the message via an access
`
`identifier of the user,
`
`wherein the process allows the message to be conveyed from the frst
`
`device of the person via a set of modes of communication,
`
`wherein the set of modes of communication includes at least
`
`instant
`
`message and voicecall, and
`
`wherein the user has different access identifiers for at least two of the
`
`modes in the set of modes.
`
`3.
`
`(Currently amended) An article as recited in claim 1,
`
`wherein the message conveyed from the first device of the personis a text
`
`message, and
`
`wherein the process includes converting the text message to voice if the
`
`messageis to be presented as a voice message by the secerd device of the user
`
`to the user, in view at least of the preference of the user.
`
`4.
`
`(Currently amended) An article as recited in claim 1, wherein the process
`
`includes presenting at the seserd device of the user, the identity of the person.
`
`5.
`
`(Original) An article as recited in claim 1 wherein the process includes
`
`determining a reply to the messagein view of the current status of the user.
`
`Appin. No. 14/922,344
`
`34
`
`Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 130
`
`

`

`PATENT
`
`REMARKS
`
`Applicants presented claims 1-5 for examination.
`
`In the above-identified
`
`Office Action, the Examiner has rejected all the claims. By this amendment,
`
`Applicants have amended (a) the specification, and (b) claims 1-4 to further clarify
`
`the subject matter regarded as the invention. Accordingly, claims 1-5 remain
`
`pending. Applicants respectfully request
`
`that
`
`the Examiner
`
`reconsider
`
`the
`
`application in light of the amendments and the remarks expressed herein.
`
`Specification Amendment
`
`The specification has been amended. Support can be found, for example,
`
`in the Drawings,the Brief Description of the Drawings, and the Detailed Description
`
`of the Invention in US Patent 7,116,976, which has been incorporated by reference
`
`into the above-identified patent application.
`
`Double Patenting
`
`Claim 1 was rejected on the ground of nonstatutory obviousness-type
`
`double patenting as being unpatentable over claims 1 and 11 of US Patent
`
`9,204,268; claims 1, 8, 24, 39 and 53 of US Patent 8,744,407; claims 1, 10 and 17
`
`of US Patent 7, 729,688; and claims 1, 2, 7 and 9 of US Patent 7,116,976.
`
`Applicants respectfully disagree.
`
`Since Applicants have amendedclaim 1, it is respectfully requested that the
`
`Examiner reconsider and withdraw the rejection on the ground of double patenting.
`
`103 Rejection
`
`Under 35 U.S.C. 103(a), claims 1, 2, 4 and 5 were rejected as being
`
`unpatentable over Pepper et al. (US 5,930,700, hereinafter “Pepper”) in view of
`
`Hayes-Roth (US 2005/0038690 A1); and claim 3 was rejected as being
`
`unpatentable over Pepper in view of Hayes-Roth andfurther in view of Davis etal.
`
`(US 2005/0020288A,hereinafter “Davis”). Applicants respectfully disagree.
`
`Appin. No. 14/922,344
`
`35
`
`Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 131
`
`

`

`PATENT
`
`Pepper pertains to screening and directing calls. Pepper’s system allows a
`
`subscriber to have his incoming telephone calls screenedto identify calls of high
`
`importance to the subscribers. By entering schedule information into an
`
`appointment calendar, and by entering client’s information into the name and
`
`telephone number database, the subscriber indicates how to be located so that
`
`important calls will reach him immediately. These databasesalsotell the system
`
`whichclients are of high priority to the subscriber so that lower priority calls can be
`
`directed to a voice mail system for access at the subscriber's convenience or
`
`routed to an attendant for action.
`
`As acknowledgedin the Office Action, Pepper at least does not teach or
`
`suggest limitations similar to “sending information to the first device as to the
`
`availability of the user to receive the message”. To remedy the deficiencies, the
`
`Office Action cited Hayes-Roth.
`
`Hayes-Roth describes a hook-up assistant (HUA) capable of contacting all
`
`parties involved in an event to determine mutually agreeable dates, times, and
`
`arrange necessary devices, resources, and services, etc., to ensure all parties
`
`involved can actually participate in the event at the planned time and place.
`
`Hayes-Roth at
`
`least does not
`
`teach or suggest setting a process to
`
`electronically convey a message from the device of the person to the device of the
`
`user through the contact information of the device of the user, using one or more
`
`rules, based on an accesspriority associated with the person.
`
`Further, both Pepper and Hayes-Rothalso at least do not teach or suggest
`
`“managing communication of a user, in view of a person trying to electronically
`
`convey a message to a device of the user without the need to know contact
`
`information of the device of the user’; and “even when the process involves
`
`transmitting the message to the device of the user through the contact information
`
`of the device of the user, the contact information of the device of the user is not
`
`provided to the device of the person to prevent the person from contacting the
`
`device of the user through the contact information, without via the server”, as in
`
`Applicants’ independent claim 1.
`
`Appin. No. 14/922,344
`
`36
`
`Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 132
`
`

`

`PATENT
`
`For at least the reasons set forth above, Applicants submit that independent
`
`claim 1 is patentable over Pepper and Hayes-Roth, alone or in any combination.
`
`Claims 2, 4 and 5 depend from and add additional features to independent
`
`claim 1. Applicants submit that these dependentclaims are patentable over Pepper
`
`and Hayes-Roth for at least the reasons discussed above with respect to claim 1.
`
`Asto claim 3, the Office Action acknowledged that both Pepper and Hayes-
`
`Roth do not teach or suggest“the message conveyed from the device of the person
`
`is a text message, and the processincludes converting the text message to voice
`
`if the message is to be presented as a voice message bythe device of the user to
`
`the user,in view at least of the preference of the user.” To remedythe deficiencies,
`
`the Office Action introduced Davis.
`
`Even if combining Pepper, Hayes-Roth, and/or Davis were appropriate,
`
`which Applicants respectfully disagree, and even if the references were actually
`
`combinable,
`
`the above-noted serious deficiencies of Pepper and Hayes-Roth
`
`remain. The reliance on Davis for additional features in dependent claim 3 does
`
`not remedy the deficiencies of Pepper and Hayes-Roth noted aboveregarding the
`
`independent claim 1. Applicants submit that dependentclaim 3 is patentable over
`
`Pepper, Hayes-Roth and/or Davis, singly or in any combination, for at least the
`
`reasons discussed above with respectto claim 1.
`
`Further the independent or the dependentclaims recite additional elements
`
`which when taken in the context of the claimed invention further patentably
`
`distinguish from Pepper, Hayes-Roth and Davis. The additionallimitations recited
`
`in the independent claim or the dependentclaims are not further discussed as the
`
`above-discussed limitations are clearly sufficient
`
`to distinguish the claimed
`
`invention from Pepper, Hayes-Roth, and Davis.
`
`Thus, it is respectfully requested that the Examiner withdraw the rejection
`
`of claims 1-5 under 35 USC §103(a).
`
`Applicants further note that the Office Action makes a number of other
`
`assertions against Applicants’ claimed invention.
`
`It should not be concluded that
`
`Applicants agree with or acquiesceto the Office Action’s stated position on these
`
`matters, even if Applicants do not address the Office Action’s stated position
`
`Appin. No. 14/922,344
`
`37
`
`Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 133
`
`

`

`PATENT
`
`directly. Rather, in general, Applicants do not agree with the Office Action’s stated
`
`positions regarding these issues. For example, there is insufficient motivation,
`
`suggestion or teaching, or logical or practical reason that would lead one skilled
`
`artisan at the time of Applicants’ invention to combine Pepper, Hayes-Roth and/or
`
`Davis, as suggested in the Office Action. However, since it
`
`is believed that
`
`Applicants’ position stated above overcomesthe Office Action’s rejections, at this
`
`time Applicants do not feel the need to further address the Office Action’s other
`
`stated positions beyond the position addressed above. Nonetheless, Applicants
`
`reserve the right to address such positions of the Office Action at a later time.
`
`Summary
`
`In view of the foregoing,
`
`it
`
`is respectfully requested that all outstanding
`
`rejections be reconsidered and withdrawn. Reconsideration of the application and
`
`an early Notice of Allowance for claims 1-5 as well are earnestly solicited. If there
`
`are any issues remaining which the Examiner believes could be resolved through
`
`either a Supplemental Response or an Examiner's Amendment, the Examiner is
`
`respectfully requested to contact the undersigned representative at the telephone
`
`number listed below.
`
`5150 El Camino Real
`Building A, Suite 22
`Los Altos, CA 94022
`(650) 903-9200 ext 102
`
`Respectfully submitted,
`
`By:___/Peter P. Tong/
`Peter P. Tong
`Registration No.: 35,757
`
`Appin. No. 14/922,344
`
`38
`
`Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 134
`
`

`

`REPLACEMENT SHEET
`
`100
`
`
`
`FIG. 6
`
`Epic Games Ex. 1032
`Page 135
`
`

`

`REPLACEMENT SHEET
`
`202"
`
`INCOMING
`VOICE
`CALL
`
`
`
`
`
`NO
`
`YES
`
`214
`
`ANSWER THE
`INCOMING VOICE
`CALL
`
`AUDIO
`MESSAGE
`
`
`
`
`?
`ENGAGE IN
`OBTAIN AND SEND
`VOICE CALL
`
`AUDIO MESSAGE
`TO CALLER
`
`
`
`
`
`
`
`DROP THE INCOMING
`VOICE CALL
`
`FIG. 7
`
`OBTAIN AND SEND
`
`TEXT MESSAGE
`TO CALLER
`
`DIRECT TO
`VOICE MAIL
`
`Epic Games Ex. 1032
`Page 136
`
`

`

`NEW SHEET
`
`
`
`ANSWER THE INCOMING VOICE CALL
`
`S 300
`
`
`~ 302
`
`
`
`PRESENT ONE OR MORE PREDETERMINED
`AUDIO MESSAGES
`
`
`
`PREDET.
`
`AUDIO
`MESSAGE
`SELECTED
`?
`
`CUSTOM
`AUDIO
`MESSAGE
`
`REQUESTED
`?
`
`PLAY SELECTED AUDIO
`MESSAGE FOR CALLER
`
`RECORD CUSTOM AUDIO N32
`MESSAGE
`:
`
`PLAY CUSTOM AUDIO
`MESSAGE FOR CALLER
`
`;
`
`~ 314
`
`
`
`
`
`
`
`
`
`
`
`CLOSE THE INCOMING VOICE CALL
`
`,
`
`
`
`FIG. 8
`
`Epic Games Ex. 1032
`Page 137
`
`

`

`NEW SHEET
`
`DISPLAY ONE OR MORE PREDETERMINED
`
`TEXT MESSAGES
`
`PREDET.
`TEXT
`
`
`
`?
`
`
`MESSAGE
`SELECTED
`?
`
`TRANSMIT SELECTED
`TEXT MESSAGE
`TO CALLER
`
`CUSTOM
`
`TEXT
`MESSAGE
`
`REQUESTED
`
`ENTER CUSTOM
`TEXT MESSAGE
`
`~ 412
`
`TRANSMIT CUSTOM
`TEXT MESSAGE
`TO CALLER
`
`_ 414
`
`FIG. 9
`
`Epic Games Ex. 1032
`Page 138
`
`

`

`NEW SHEET
`
`202 |
`
`INCOMING
`VOICE
`
`CALL
`?
`
`i 500
`
`
`
`HEAD-SET
`ACTIVE
`2
`
`
`
`
`
`
`
`
`VOICE MAIL
`
`
`ANSWER THE
`INCOMING VOICE
`CALL
`
`ENGAGE IN
`VOICE CALL
`
`FIG. 10
`
`DISPLAY
`PRESENT
`;
`
`OBTAIN AND SEND
`AUDIO MESSAGE
`TO CALLER
`
`OBTAIN AND SEND
`TEXT MESSAGE
`
`TO CALLER
`
`DIRECT TO
`
`DROP THE INCOMING
`VOICE CALL
`
`Epic Games Ex. 1032
`Page 139
`
`

`

`NEW SHEET
`
`
`
`
`
`AUDIO
`OR TEXT
`PRESENTATION
`?
`
`
`
`
`
`610
`
`DISPLAY THE INCOMING
`TEXT MESSAGE
`
`
`
`606 ©
`
`
`
`:
`
`608 ~
`
`5
`
`CONVERT THE INCOMING TEXT
`
`MESSAGE TO AN AUDIO MESSAGE
`
`
`
`
`PLAY THE AUDIO MESSAGE
`
`FIG. 11
`
`Epic Games Ex. 1032
`Page 140
`
`

`

`NEW SHEET
`
`S 700
`
`702 |
`
`
` REPLY
`
`MESSAGE
`
`TO BE
`
`SENT
`
`?
`
`
`714
`
`
`
`
`
`
`
`?
`
`ENTERED
`
`FORMED
`
`
`
`DISPLAY TEXT
`ENTRY SCREEN
`
`
`
`AUDIO
`
`OR TEXT
`
`
`TEXT
`
`
`MESSAGE
`MESSAGE
`
`TO BE
`
`
`
`
`?
`
`PROMPT FOR AUDIO MESSAGE
`
`RECORDED
`?
`
`TO A TEXT MESSAGE
`
`
`
`
`AUDIO
`MESSAGE
`
`
` CONVERT THE AUDIO MESSAGE
`
`
`TRANSMIT THE TEXT MESSAGE
`OVER A WIRELESS NETWORK
`
`~ 712
`
`FIG. 12
`
`Epic Games Ex. 1032
`Page 141
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`In re application of: Cheung etal.
`
`Attorney Docket No.: IPVMCP02C3
`
`Application No.: 14/922,344
`
`Examiner: DOAN, KIET M.
`
`Filed: October 26, 2015
`
`Group: 2641
`
`Title: SYSTEMS AND PROCESSES TO
`MANAGE MULTIPLE MODES OF
`COMMUNICATION
`
`INFORMATION DISCLOSURE STATEMENT
`BEFORE FINAL ACTION OR NOTICE OF ALLOWANCE
`(37 CFR §§ 1.56 AND 1.97(c))
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`The referenceslisted in the attached PTO Form 1449, a copy of whichis attached,
`
`may be material
`
`to examination of the above-identified patent application. Applicants
`
`submit this reference in compliance with their duty of disclosure pursuant to 37 CFR §§1.56
`
`and 1.97. The Examiner is requested to make this citation of official record in this
`
`application.
`
`This Information Disclosure Statement is not to be construed as a representation
`
`that a search has been made, that additional information material to the examination of this
`
`application does notexist, or that this reference indeed constitutes prior art.
`
`This Information Disclosure Statement is being filed after the mailing date of the first
`
`Office Action on the merits, or after three months of the filing date of this application,
`
`whichever event occurredlast, but it is believed before the mailing date of either:
`
`(i) a final
`
`action under §1.113 or (ii) a notice of allowance under §1.311, whichever occursfirst.
`
`AppIn. No. 14/922,344
`
`]
`
`Atty. Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 142
`
`

`

`Accompanying this Information Disclosure Statementis
`[| a statementas specified in 37 CFR 1.97(e); or
`DX]
`the fee setforth in 37 CFR 1.17(p).
`
`Electronic Fee in paymentof the Information Disclosure Statement Fee is provided
`
`herewith.
`
`If
`
`it is determined that any additional fees are due, the Commissioner is hereby
`
`authorized to charge such fees to Deposit Account 50-3874 (Order No. IPVMCP02C3).
`
`Respectfully submitted,
`
`/Peter P. Tong/
`
`Peter P. Tong
`Registration No: 35,757
`
`5150 El Camino Real
`Building A, Suite 22
`Los Altos, CA 94022
`
`ApplIn. No. 14/922,344
`
`2
`
`Atty. Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 143
`
`

`

`Form 1449 (Modified)
`
`information Disclosure
`Statement By Applicant
`
` {Use Several Sheets if Necessary)
`
`IPVMGPO2C3
`Atty. Docket No.
`
`Application Na.:
`14/922,344
`Apslicant
`Cheung et al.
`Filing Date
`October 26, 2015
`Group
`2644
`Page 1 of
`
`1
`
`U.S. Patent Documents
`
`
`
`
`
`
`
`Examiner Class|Sub-class|FilingPatent No. Date Patentee
`
`
`
`———
`Initial
`|tt.|20010014611At]Aug-01[ufome et$$,—
`
`|8.|9.204,26882|Dec-15[Cheungeta.|||
`PT po
`
`potoP|
`
`Foreign Documents
`
`Translation
`
`_—_
`
`Other Documents(Including Author, Title, Date, Pertinent Pages,etc.
`
`
`
`
`
`—
`
`Examiner: Initial citation considered. Draw line through citation if not in conformance and not
`considered. Include copy of this form with next communicationto applicant.
`
`Epic Games Ex. 1032
`Page 144
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Filing Date:
`
`26-Oct-2015
`
`Title of Invention:
`
`SYSTEMS AND PROCESSES TO MANAGE MULTIPLE MODES OF
`COMMUNICATION
`
`Pre PeterP.Tong/Angela Nijim
`
`Extension-of-Time:
`
`Filing Fees for Utility under 35 USC 111(a)
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`USD($)
`
`Basic Filing:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`Epic Games Ex. 1032
`Page 145
`
`

`

`Miscellaneous:
`
`Sub-Total in
`
`2806 Lj»{|=|Total in USD ($)
`
`Submission-InformationDisclosureStmt
`
`Epic Games Ex. 1032
`Page 146
`
`

`

`
`
`aa
`
`Title of Invention:
`
`SYSTEMS AND PROCESSES TO MANAGE MULTIPLE MODES OF
`COMMUNICATION
`
`eC
`[ener
`
`Paymentinformation:
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpaymentas follows:
`
`Deposit Account
`
`Authorized User
`
`3759
`
`Angela Nijim
`
`Epic Games Ex. 1032
`Page 147
`
`

`

`37 CFR 1.21 (Miscellaneous fees and charges)
`
`Pages
`Multi
`File Size(Bytes)/
`Bicuinsni Gascintion
`Document
`
`
`
`Number MessageDigest|Part/.zip|P (if appl.)
`
`Miscellaneous Incoming Letter
`9
`
`IPCMCP02C3_AmdATrans_8-16
`.pdf
`
`0661975225 141 15042107839a8781 1304
`933cb
`
`253819
`
`IPVMCP02C3_AmdAwithRevDr
`aw ngs_ASFi|ed_8-1 6.pdf
`
`d6acbh439838d63714378fe7857011b67612
`3923
`
`Amendment/Req. Reconsideration-After Non-Final Reject
`
`Drawings-only black and whiteline drawings
`
`Transmittal Letter
`
`IPVMCP02C3_IDSTrans_8-16.
`pdf
`
`©b93738e70ne745 1f5 1907919708a0d6a0c}
`
`Information:
`
`Information:
`
`Information:
`
`S03a
`
`Information Disclosure Statement (IDS)
`Form (SB08)
`
`IPVMCP02C3_1449_8-16.pdf
`
`DeEAacc9a3C2311 3321caF3600124c3ce2aB4S
`1445
`
`Information:
`
`This is not an USPTO suppliedIDSfillable form
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`27efCQ7B4AN770CCOSCA16OHOdS23159891
`
`Epic Games Ex. 1032
`Page 148
`
`

`

`Information:
`
`This Acknowledgement Receipt 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.
`
`the application.
`
`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 componentsfor
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`andof the International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this AcknowledgementReceiptwill establish the international filing date of
`
`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 MPEP506), 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 Stageof 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 under35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`Epic Games Ex. 1032
`Page 149
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of: Cheungetal.
`
`Attorney Docket No.: IPVMCP02C3
`
`Application No.: 14/922,344
`
`Examiner: DOAN, KIET M.
`
`Filed: October 26, 2015
`
`Group: 2641
`
`Title: SYSTEMS AND PROCESSES TO
`MANAGE MULTIPLE MODES OF
`COMMUNICATION
`
`AMENDMENT A TRANSMITTAL
`
`Commissionerfor Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`Transmitted herewith is an Amendmentin the above-identified application.
`The fee has been calculated as shown below.
`
`Claims
`Highest
`After
`Previously
`Amendment etFor
`
`
`TotalClaimsraelGeie|__fos_|MINUS|00 |x X|xe0=|=
`x40=
`
`Present
`Extra
`
`Small Entity
`Rate Fee
`
`Large Entity
`Rate Fee
`
`Multiple Dependent Claim Present and Fee Not Previously PaidTotal|_$0.00Pa
`
`
`
`Claims
`
`Applicant(s) hereby petition for a__one - month extension(s) of time to respond to the
`
`X)
`
`aforementioned Office Action.
`Applicant(s) believe that no (additional) Extension of Time is required; however,ifit is
`determined that such an extension is required, Applicant(s) hereby petition that such an extension
`be granted and authorize the Commissioner to charge the required fees for an Extension of Time
`under 37 CFR 1.136 to Deposit Account No. 50-3874 (Order No. IPVMCP02C3).
`Any fees due are being paid electronically herewith.
`Please charge any additional fees required to facilitate filing the enclosed response, to Deposit
`Account No. 50-3874 (Order No. IPVMCP02C3).
`
`X
`
`KX
`
`Respectfully submitted,
`
`/Peter P. Tong/
`
`Peter P. Tong
`Reg. No. 35,757
`
`Appln. No. 14/922,344
`
`Atty. Docket No. IPVMCP02C3
`
`Epic Games Ex. 1032
`Page 150
`
`

`

`PATENT APPLICATION FEE DETERMINATION RECORDJ/pplication or Docket Number Filing Date
`
`Substitute for Form PTO-875 10/26/2015|CL] Tobe Mailed14/922 344
`
`
`
`PTO/SB/06 (09-11)
`Approvedfor use through 1/31/2014, 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 respondto a collection of information unlessit displays a valid OMB control number.
`
`(Column 1)
`
`APPLICATIONAS FILED — PART|
`(Column 2)
`
`Entity:
`
`[-]varce J smatt [] micro
`
`|FORsdsNUMBER FILED NUMBER EXTRA RATE($) FEE ($)
`
`
`
`
`
`
`{37 CFR 1.16{a). (b), or (c))
`Ue
`37 CER 1.16(k),
`LJ EXAMINATION FEE
`TOTAL CLAIMS
`(37 CFR 1.16(i))
`INDEPENDENT CLAIMS
`(37 CFR 1.16(h))
`
`(i), or (m))
`
`/
`
`Poa|
`ee
`
`(CarPuication size FEE
`{37 CFR 1.16{s))
`
`minus 20 =
`
`minus 3 =
`If the specification and drawings exceed 100 sheets
`of paper, the application size fee due is $310 ($155
`for small entity) for each additional 50 sheets or
`fraction thereof. See 35 U.S.C. 41(a)(1)(G) and 37
`CFR 1.16(s).
`
`x $
`
`x $
`
`=
`
`=
`
`The “Highest NumberPreviously Paid For” (Total or Independent)is the highest numberfoundin the appropriate box in column 1.
`
`(Column 1)
`(Column 2)
`CLAIMS
`HIGHEST
`REMAINING
`NUMBER
`AFTER
`PREVIOUSLY
`AMENDMENT
`PAID FOR
`Total (37
`:
`femind dent .
`
`
`| Pe
`CL] Application Size Fee (37 CFR 1.16(s))
`
`[_] MULTIPLE DEPENDENTCLAIM PRESENT(37 CFR1.16())
`* If the difference in column1is less than zero, enter “O” in column2.
`
`APPLICATION AS AMENDED - PARTII
`
`(Column 3)
`
`(Column 2)
`(Column 1)
`HIGHEST
`CLAIMS
`NUMBER
`REMAINING
`
`
`AMENDMENT
`PAID FOR
`
`08/08/2016}acre PREVIOUSLY||PRESENT EXTRA ( ADDITIONALFEE($)
`
`
`
`AMENDMENT
`
`mae
`ind
`dent
`
`.
`
`fo
`[0
`
`oO Application Size Fee (37 CFR 1.16(s))
`
`Oo FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR 1.16(j))
`
`(Column 3)
`
`PRESENT EXTRA
`
`AMENDMENT O FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR 1. 16(j))
`
`* If the entry in column1 is less than the entry in column2, write “O” in column 3.
`™* if the “Highest Number Previously Paid For" IN THIS SPACEis less than 20, enter “20”.
`= If the “Highest Number Previously Paid For” IN THIS SPACEisless than 3, enter “3”.
`
`ADDITIONALFEE($)
`
`TOTAL ADD'L FEE
`
`TOTAL ADD'L FEE
`
`LIE
`/RUTH LLOYD/
`
`This collection of information is required by 37 CFR 1.16. 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 camplete, including gathering,
`preparing, and submitting the completed application form to the USPTO. Time will vary depending uponthe individual case. Any comments on the amountof 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 FORMSTO THIS
`ADDRESS. SEND TO: Commissionerfor 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.
`
`Epic Games Ex. 1032
`Page 151
`
`

`

`
`
`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
`Wwwuspto. gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEYDOCKETNO.
`
`CONFIRMATION NO,
`
`14/922,344
`
`10/26/2015
`
`Kwok Wai Cheung
`
`IPVMCP02C3
`
`9763
`
`IPV
`INC
`eu
`IPVENTURE,INC. a
`5150 EL CAMINO REAL
`DOAN, KIET M
`SUITE A-22
`
`LOS ALTOS, CA 94022 2641
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period forreply, if any, is set in the attached communication.
`
`10/07/2016
`
`PAPER
`
`PTOL-90A(Rev. 04/07)
`
`Epic Games Ex. 1032
`Page 152
`
`

`

`Applicant(s)
`Application No.
`
`14/922,344 CHEUNGETAL.
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`2641KIET DOAN StatusNo
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondenceaddress--
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the 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 periodforreply 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, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timelyfiled
`
`Status
`1)K] Responsive to communication(s) filed on 08/08/2016.
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filedon__
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L) Anelection was madebythe applicant in responseto a restriction requirementsetforth during the interview on
`; the restriction requirement and election have been incorporatedinto this action.
`4)C Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5) Claim(s) 1-5 is/are pendingin the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)L Claim(s)
`is/are allowed.
`7)K] Claim(s) 1-5 is/are rejected.
`)
`8) Claim(s)
`is/are objected to.
`)
`9)C] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highwayprogram at a
`participating intellectual property office for the corresponding application. For more information, please see
`f
`or send an inquiry to PPHieedback@uspto.qov.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11) The drawing(s)filed on
`is/are: a)[_] accepted or b)[] objected to by the Examiner.
`Applicant may not requestthat 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) Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f).
`Certified copies:
`a)L] All
`bb) Some** c)L] Noneofthe:
`1.1] Certified copies of the priority documents have beenreceived.
`2.0] Certified copies of the priority documents have beenreceived in Application No.
`3.0] Copiesofthe certified copies of the priority documents have beenreceivedin this National Stage
`application from the International Bureau (PCT Rule 1 7.2(a)).
`
`** See the attached detailed Office action foralist of the certified copies not received. Attachment(s)
`
`1) CL Notice of References Cited (PTO-892)
`.
`.
`2) oO Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/O8b)
`Paper No(s)/Mail Date
`‘,
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) O Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`,
`4 oO Other:
`er: __.
`)
`
`Part of Paper No./Mail Date 20160930
`
`Epic Games Ex. 1032
`Page 153
`
`

`

`Application/Control Number: 14/922,344
`Art Unit: 2641
`
`Page 2
`
`DETAILED ACTION
`
`The present application is being examined underthe pre-AlA first to invent
`
`provisions.
`
`This Office Action is in response to Applicant Remarksfiled on 08/08/2016.
`
`Claims1-4 are amended.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based onajudicially 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
`obviousness-type double patenting rejection is appropriate wherethe conflicting claims
`are notidentical, but at least one examined application claim is not patentably distinct
`from the reference claim(s) because the examinedapplication claim is either anticipated
`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
`F.3d 1428, 46 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, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`F.2d 438, 164 USPQ 619 (CCPA 1970); and 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 actualor provisional rejection based on a nonstatutory
`double patenting ground provided the conflicting application or patent either is shown to
`be commonly owned with this application, or claims an invention made asa result of
`activities undertaken within the scopeof a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`terminal disclaimer. A terminal disclaimer signed by the assignee mustfully comply with
`37 CFR 3.73(b).
`
`Claim 1 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 1 and 11 of US Patent 9,204,268 B2; over
`
`claims 1, 8, 24, 39 and 53 of US Patent 8,744,407 B2; over claims 1, 10 and 17 of US
`
`Epic Games Ex. 1032
`Page 154
`
`

`

`Application/Control Number: 14/922,344
`Art Unit: 2641
`
`Page 3
`
`Patent 7,729,688 B2 and over claims 1, 2, 7 and 9 of US Patent 7, 116,976 B2 Although
`
`the conflicting claims are not identical, they are not patentably distinct from each other
`
`becauseclaim 1
`
`limitation are found in claims 1 and 11 of US Patent 9,204,268 B2;
`
`claims 1, 8, 24, 39 and 53 of US Patent 8,744,407 B2; claims 1, 10 and 17 of US Patent
`
`7,729,688 B2 with obvious wording variation such asthey all drawn to receiving the
`
`message conveyedfrom thefirst device; identifying an identity of the person trying to
`
`electronically convey the message; identifying contact information of the persontrying to
`
`electronically convey the message.
`
`It is important to note that claimed features recited in claims 1 and 11 of US
`
`Patent 9,204,268 B2; claims 1, 8, 24, 39 and 53 of US Patent 8,744,407 B2; claims 1,
`
`10 and 17 of US Patent 7,729,688 B2 and claims 1, 2, 7 and 9 of US Patent 7, 116,976
`
`B2 are more specific than claimed features recited in claim 1 of the instant application.
`
`Hence, the scopeof claims of present application is now broader than US Patent
`
`9,204,268 B2; US Patent 8,744,407 B2; US Patent 7,729,688 B2.
`
`Many decisions support the fact that a broad or generic claim is obvious from a
`
`specific claim, i.e., an obvious variation. See In re Van Ornum and Stang, 214 USPQ
`
`761 (CCPA 1982); In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993); In re Vogel
`
`and Vogel; 164 USPQ 619 (CCPA 1970); In re Berg (CA FC) 46 USPQ2d 1226
`
`(3/30/1998); Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2d 1865 (CA FC 2001).
`
`It is well settled that omission of an element and its function in a combination is an
`
`obvious expedientif the remaining elements