`Document Description: Electronic Terminal Disclaimer - Filed
`
`PTO/SB/26
`U.S. Patent and Trademark Office
`Department of Commerce
`
`Electronic Petition Request
`
`TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING REJECTION OVER A
`"PRIOR" PATENT
`
`Application Number
`
`Filing Date
`
`First Named Inventor
`
`Attorney Docket Number
`
`Title of Invention
`
`14922344
`
`26-Oct-2015
`
`Kwok Cheung
`
`IPVMCP02C3
`
`SYSTEMS AND PROCESSES TO MANAGE MULTIPLE MODES OF COMMUNICATION
`
`„ Filing of terminal disclaimer does not obviate requirement for response under 37 CFR 1.111 to outstanding
`Office Action
`
`This electronic Terminal Disclaimer is not being used for a Joint Research Agreement.
`
`Owner
`
`IpVenture, Inc.
`
`Percent Interest
`
`100%
`
`The owner(s) with percent interest listed above in the instant application hereby disclaims, except as provided below, the
`terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration
`date of the full statutory term of prior patent number(s)
`
`9204268
`8744407
`7729688
`as the term of said prior patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so
`granted on the instant application shall be enforceable only for and during such period that it and the prior patent are commonly
`owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors
`or assigns.
`
`In making the above disclaimer, the owner does not disclaim the terminal part of the term of any patent granted on the instant
`application that would extend to the expiration date of the full statutory term of the prior patent, "as the term of said prior patent
`is presently shortened by any terminal disclaimer," in the event that said prior patent later:
`- expires for failure to pay a maintenance fee;
`- is held unenforceable;
`- is found invalid by a court of competent jurisdiction;
`- is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321;
`- has all claims canceled by a reexamination certificate;
`- is reissued; or
`- is in any manner terminated prior to the expiration of its full statutory term as presently shortened by any terminal disclaimer.
`
`Epic Games Ex. 1032
`Page 176
`
`
`
`(•) Terminal disclaimer fee under 37 CFR 1.20(d) is included with Electronic Terminal Disclaimer request.
`
`„ I certify, in accordance with 37 CFR 1.4(d)(4), that the terminal disclaimer fee under 37 CFR 1.20(d)
`required for this terminal disclaimer has already been paid in the above-identified application.
`
`Applicant claims the following fee status:
`
`(•) Small Entity
`
`Q Micro Entity
`
`Q Regular Undiscounted
`
`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.
`
`THIS PORTION MUST BE COMPLETED BY THE SIGNATORY OR SIGNATORIES
`
`I certify, in accordance with 37 CFR 1.4(d)(4) that I am:
`
`An attorney or agent registered to practice before the Patent and Trademark Office who is of record in
`this application
`
`Registration Number 35757
`
`O A sole inventor
`
`A joint inventor; I certify that I am authorized to sign this submission on behalf of all of the inventors as evidenced by the
`power of attorney in the application
`
`Q A joint inventor; all of whom are signing this request
`
`Signature
`
`Name
`
`/Peter P. Tong/
`
`Peter P.Tong
`
`*Statement under 37 CFR 3.73(b) is required if terminal disclaimer is signed by the assignee (owner).
`Form PTO/SB/96 may be used for making this certification. See MPEP § 324.
`
`Epic Games Ex. 1032
`Page 177
`
`
`
`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`14922344
`
`26-Oct-2015
`
`Title of Invention:
`
`SYSTEMS AND PROCESSES TO MANAGE MULTIPLE MODES OF
`COMMUNICATION
`
`First Named Inventor/Applicant Name:
`
`Kwok Wai Cheung
`
`Filer:
`
`Attorney Docket Number:
`
`Filed as Small Entity
`
`Filing Fees for Utility under 35 USC 111 (a)
`
`Peter P.Tong
`
`IPVMCP02C3
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
`
`STATUTORY OR TERMINAL DISCLAIMER
`
`2814
`
`1
`
`160
`
`160
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-lnterference:
`
`Post-Allowance-and-Post-lssuance:
`
`Epic Games Ex. 1032
`Page 178
`
`
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USD($)
`
`Extension-of-Time:
`
`Miscellaneous:
`
`Total in USD ($)
`
`160
`
`Epic Games Ex. 1032
`Page 179
`
`
`
`Doc Code: DISQ.E.FILE
`Document Description: Electronic Terminal Disclaimer - Approved
`
`Application No.: 14922344
`
`Filing Date:
`
`26-Oct-2015
`
`Applicant/Patent under Reexamination: Cheung
`
`Electronic Terminal Disclaimer filed on January 9, 2017
`
`[X] APPROVED
`
`This patent is subject to a terminal disclaimer
`
`□ DISAPPROVED
`
`Approved/Disapproved by: Electronic Terminal Disclaimer automatically approved by EFS-Web
`
`U.S. Patent and Trademark Office
`
`Epic Games Ex. 1032
`Page 180
`
`
`
`Electronic Acknowledgement Receipt
`
`EFS ID:
`
`Application Number:
`
`28015643
`
`14922344
`
`International Application Number:
`
`Confirmation Number:
`
`9763
`
`Title of Invention:
`
`SYSTEMS AND PROCESSES TO MANAGE MULTIPLE MODES OF
`COMMUNICATION
`
`First Named Inventor/Applicant Name:
`
`Kwok Wai Cheung
`
`Customer Number:
`
`Filer:
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`34071
`
`Peter P.Tong
`
`IPVMCP02C3
`
`09-JAN-2017
`
`26-OCT-2015
`
`20:50:25
`
`Application Type:
`
`Utility under 35 USC 111 (a)
`
`yes
`CARD
`
`$160
`
`Payment information:
`Submitted with Payment
`Payment Type
`Payment was successfully received in RAM
`RAM confirmation Number
`Deposit Account
`Authorized User
`Angela Nijim
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`37 CFR 1.21 (Miscellaneous fees and charges)
`
`011017INTEFSW20502300
`
`503874
`
`Epic Games Ex. 1032
`Page 181
`
`
`
`File Listing:
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size(Bytes)/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(ifappl.)
`
`1
`
`Electronic Terminal Disclaimer-Filed
`
`eTerminal-Disclaimer.pdf
`
`Warnings:
`Information:
`
`2
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`Warnings:
`Information:
`
`33877
`
`41b22a56c5c96bb1580c556299287dcfc4d
`7d014
`
`30674
`
`a2c96bcea54393bf4329121f54c12f161f460
`3a7
`
`no
`
`no
`
`2
`
`2
`
`Total Files Size (in bytes)
`
`64551
`
`»PTO of the indicated documents.
`This Acknowledgement Receipt evidences receipt on the noted date by the I
`It serves as evidence of receipt similar to a
`characterized by the applicant, and including page counts, where applicable.
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. Ill
`If a new application is being filed and the application includes the necessary c
`omponents for a 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 shown on this
`Acknowledgement Receipt will establish the filing 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 applicati
`on is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicati
`ng acceptance of the application as a
`e Filing Receipt, in due course.
`national stage submission under 35 U.S.C. 371 will be issued in addition to th«
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international applicat
`ion 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 duec
`ourse, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will
`establish the international filing date of
`the application.
`
`Epic Games Ex. 1032
`Page 182
`
`
`
`PTO/SB/06 (09-11)
`Approved for use through 1/31/2014. 0MB 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.
`PATENT APPLICATION FEE DETERMINATION RECORD
`Application or Docket Number
`Filing Date
`14/922,344
`10/26/2015
`Substitute for Form PTO-875
`
`I | To be Mailed
`
`ENTITY: LARGE
`
`SMALL MICRO
`
`(Column 1)
`
`APPLICATION AS FILED - PART I
`(Column 2)
`
`NUMBER FILED
`
`NUMBER EXTRA
`
`RATE ($)
`
`FEE ($)
`
`FOR
` BASIC FEE
`(37 CFR 1.16(a), (b), or (c))
` SEARCH FEE
`(37 CFR 1.16(k), (i), or (m))
` EXAMINATION FEE
`(37 CFR 1.16(o), (p), or (q))
`TOTAL CLAIMS
`(37 CFR 1.16(iY)
`INDEPENDENT CLAIMS
`(37 CFR 1.16(h))
`
`N/A
`
`N/A
`
`N/A
`
`minus 20 =
`
`•
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`X $
`
`X $
`
`□application SIZE FEE
`(37 CFR 1.16(s))
`
`•
`minus 3 =
`If the specification and drawings exceed 100 sheets
`of paper, the application size fee due is $310 ($155
`for small entity) for each additional 50 sheets or
`fraction thereof. See 35 U.S.C. 41(a)(1)(G) and 37
`CFR 1.16(s).
`MULTIPLE DEPENDENT CLAIM PRESENT (37 CFR 1.16(j))
`
`* If the difference in column 1 is less than zero, enter “0” in column 2.
`
`TOTAL
`
`(Column 1)
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`APPLICATION AS AMENDED - PART II
`
`(Column 2)
`
`(Column 3)
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`PRESENT EXTRA
`
`RATE ($)
`
`ADDITIONAL FEE ($)
`
`Total (37 CFR
`
`Minus
`
`Independent
`Minus
`(37 CFR 1.16(h))
` Application Size Fee (37 CFR 1.16(s))
`
`■*.:**
`
`=
`
`=
`
`| | FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16(j))
`
`X $
`
`X $
`
`(Column 1)
`
`(Column 2)
`
`(Column 3)
`
`TOTAL ADD’L FEE
`
`---------------------------
`
`AMENDMENT
`
`AMENDMENT
`
`01/09/2017
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`Total (37 CFR
`** 20
`1.16(i))
`Independent
`Minus ™3
`(37 CFR 1.16(h))
` Application Size Fee (37 CFR 1.16(s))
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`“ 11
`„ 2
`
`Minus
`
`PRESENT EXTRA
`
`RATE ($)
`
`ADDITIONAL FEE ($)
`
`= 0
`= 0
`
`X $40 =
`x $210 =
`
`| | FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1 16(j))
`
`0
`0
`
`0
`
`* If the entry in column 1 is less than the entry in column 2, write “0” in column 3.
`** If the “Highest Number Previously Paid For” IN THIS SPACE is less than 20, enter “20”.
`*** If the “Highest Number Previously Paid For” IN THIS SPACE is less than 3, enter “3”.
`The “Highest Number Previously Paid For” (Total or Independent) is the highest number found in the appropriate box in column
`1.
`This collection of information is required by 37 CFR 1.16. 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 1.14. 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.
`
`SAY
`
`TOTAL ADD’L FEE
`|j
`THERESA LIND
`
`Epic Games Ex. 1032
`Page 183
`
`
`
`United States Patent and Trademark Office
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`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
`
`W14Ö017
`
`34071
`7590
`IPVENTURE, INC.
`5150 EL CAMINO REAL
`SUITE A-22
`LOS ALTOS, CA 94022
`
`EXAMINER
`
`DOAN, KIET M
`
`ART UNIT
`
`2641
`
`PAPER NUMBER
`
`DATE MAILED: 02/14/2017
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`10/2672015
`Kwok Wai Cheung
`14/922,344
`TITLE OF INVENTION: SYSTEMS AND PROCESSES TO MANAGE MULTIPLE MODES OF COMMUNICATION
`
`IPVMCP02C3
`
`9763
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonprovisional
`
`SMALL
`
`$480
`
`$0
`
`$0
`
`$480
`
`DATE DUE
`
`05/15/2017
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS 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 REPLY TO THIS NOTICE:
`
`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
`entity status still applies.
`If the ENTITY STATUS is the same as shown above, pay the TOTAL 'FEE(S) DUE shown above.
`If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 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 amount of small entity
`fees.
`
`II. PART B - I-'EE(S) TRANSMITTAL, or its 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 is filed, 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 equivalent of Part B.
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev. 02/11)
`
`Page 1 of 3
`
`Epic Games Ex. 1032
`Page 184
`
`
`
`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
`(57D-273-2885
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks 1 through 5 should be completed where
`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 changeofaddress)
`
`02/14/2017
`
`34071
`7590
`IPVENTURE, INC.
`5150 EL CAMINO REAL
`SUITE A-22
`LOS ALTOS, CA 94022
`
`Note: A certificate of mailing can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`papers. 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 Postal Service with sufficient postage for first class mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being facsimile
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`
`(Depositor's name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Kwok Wai Cheung
`10/26/2015
`14/922,344
`TITLE OF INVENTION: SYSTEMS AND PROCESSES TO MANAGE MULTIPLE MODES OF COMMUNICATION
`
`IPVMCP02C3
`
`9763
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonprovisional
`
`SMALL
`
`DATE DUE
`
`05/15/2017
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`455-414100
`DOAN, KIETM
`2641
`2. For printing on the patent front page, list
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`(1) The names of up to 3 registered patent attorneys 1--------------------------------------------------
`Q Change of correspondence address (or Change of Correspondence
`or agents OR, alternatively,
`Address form PTO/SB/122) attached.
`(2) The name of a single firm (having as a member a 2--------------------------------------------------
`Q "Fee Address" indication (or "Fee Address" Indication form
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is 3
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`listed, no name will be printed.
`Number is required.
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent. If an assignee is identified below, the document has been filed for
`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) : Q Individual Ql Corporation or other private group entity Q Government
`
`4a. The following fee(s) are submitted:
`Q Issue Fee
`d Publication Fee (No small entity discount permitted)
`d Advance Order - # of Copies______________________
`
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`d A check is enclosed.
`Ql Payment by credit card. Form PTO-2038 is attached.
`d The director is hereby authorized to charge the required fee(s), any deficiency, or credits any
`overpayment, to Deposit Account Number___________(enclose an extra copy of this form).
`
`5. Change in Entity Status (from status indicated above)
`d Applicant certifying micro entity status. See 37 CFR 1.29
`d Applicant asserting small entity status. See 37 CFR 1.27
`d Applicant changing to regular undiscounted fee status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/15A and 15B), issue
`fee payment in the micro entity amount will 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 of loss of entitlement to micro entity status.
`NOTE: Checking this box will be taken to be a notification of loss of entitlement to small or micro
`entity status, as applicable.
`NOTE: This form must be signed in accordance with 37 CFR 1.31 and 1.33. See 37 CFR 1.4 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 Ü.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Epic Games Ex. 1032
`Page 185
`
`
`
`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
`
`APPLICATION NO.
`
`14/922,344
`
`FILING DATE
`
`10/26/2015
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Kwok Wai Cheung
`
`IPVMCP02C3
`
`9763
`
`02/14/2017
`
`34071
`7590
`IPVENTURE, INC.
`5150 EL CAMINO REAL
`SUITE A-22
`LOS ALTOS, CA 94022
`
`EXAMINER
`
`DOAN, KIET M
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 02/14/2017
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(Applications filed on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
`Section 1(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i) to eliminate the
`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 Tenn 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 l-(888)-786-0101 or (571)-272-4200.
`
`PTOL-85 (Rev. 02/11)
`
`Page 3 of 3
`
`Epic Games Ex. 1032
`Page 186
`
`
`
`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 0MB approves an agency
`request to collect information from tire public, 0MB (i) provides a valid 0MB 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 0MB 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 which is to file (and by the USPTO to process) an application. Confidentiality is
`governed by 35 U.S.C. 122 and 37 CFR 1.14. 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 tire Paperwork Reduction Act of 1995, no persons are required to
`respond to a collection of information unless it displays a valid OMB control number.
`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 tire 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 tlris 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 tire application or expiration of tire 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 tire 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 Member with respect to the subject matter of the record.
`4. A record in tlris 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 tire 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 putposes
`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 tire 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.
`
`Epic Games Ex. 1032
`Page 187
`
`
`
`Notice of Allowability
`
`Application No.
`14/922,344
`Examiner
`KIET DOAN
`
`Applicant(s)
`CHEUNG ET AL.
`AIA (First Inventor to File)
`Art Unit
`Status
`2641
`No
`
`— The MAILING DATE of 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 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.
`1.13 This communication is responsive to 07/09/2077.
` A deciaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2. n An election was made by the applicant in response to a restriction requirement set forth during the interview on; the restriction
`requirement and election have been incorporated into this actior
`3. E| The allowed claim(s) is/are 1,2 and 4-11. As a result of the allowed claim(s), you may be eligible to benefit from the Patent
`Prosecution Highway program at a participating intellectual property office for the corresponding application. For more information,
`please see http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`4.
`
` Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a) All b)
` Some *c)
` None of the:
` Certified copies of the priority documents have been received.
`1.
` Certified copies of the priority documents have been received in Application No..
`2.
` Copies of the certified copies of the priority documents have been received in this national stage application from the
`3.
`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 of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
` CORRECTED DRAWINGS ( as “replacement sheets”) must be submitted.
`5.
` including changes required by the attached Examiner’s Amendment / Comment or 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 drawings in 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).
` DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner’s comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`6.
`
`3.
`
`Attachment(s)
` Notice of References Cited (PTO-892)
`1.
`2. [3 Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date_____
` Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
` Interview Summary (PTO-413),
`Paper No./Mail Date_____.
`ZKIET DOAN/
`Primary Examiner, Art Unit 2641
`
`4.
`
`5.
`6.
`
`7.
`
` Examiner's Amendment/Comment
`Examiner's Statement of Reasons for Allowance
`
` Other_____.
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-13)
`20170211
`
`Notice of Allowability
`
`Part of Paper No./Mail Date
`
`Epic Games Ex. 1032
`Page 188
`
`
`
`Application/Control Number: 14/922,344
`Art Unit: 2641
`
`Page 2
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`01/09/2017 has been entered.
`
`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 08/08/2016. The
`
`submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the
`
`information disclosure statement is being considered by the examiner.
`
`Allowable Subject Matter
`
`The following is an examiner’s statement of reasons for allowance:
`
`Claims 1-2 and 4-11 are allowance according to Applicant Remarks filed on
`
`08/08/2016 and Terminal Disclaimer filed on 01/09/2017.
`
`Epic Games Ex. 1032
`Page 189
`
`
`
`Application/Control Number: 14/922,344
`Art Unit: 2641
`
`Page 3
`
`Any comments considered necessary by applicant must be submitted no