Case &2i-cv-00531-A04& Document3 Filed OS/28/21 Page Lott
`
`AO 126 (Rev. 08/10}
`
`10.
`
`,
`
`Mail Stop8
`
`TRADEMARK
`
`Birector of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`|
`
`|
`
`REPORTON THE
`
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`in Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 vou are hereby advised that a court action has been
`Sled in the U.S. District Court
`for the Western District of Texas Waco Division on the folowing
`
`PF] Trademarks or
`ff Patents.
`[[] the patent action involves 35 U.S.C. § 292.3:
`(
`
`DOCKET NO,
`6:21-ov-531
`PLAINTIFF
`MEMORYWEB, LLC
`
`DATE FELED
`05/25/2024
`
`U.S. DISTRICT COURT
`for the Western District of Texas Waco Division
`[DEFENDANT
`| APPLE, INC.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`DEMARK
`DATER
`OR
`ER
`SIA.
`HOLDER OF PATENT OR TRADEM
`
`SL
`
`DATE INCLUDED
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`
`In the above—cniitied case, the following patent(s)/ trademark(s) have been included:
`
`[i Cross Bill
`
`[| Other Pleading
`
`
`OF TRADEMARK
`(BY) DEPUTY CLERE.
`
`in the above---entitied case, the following decision las been rendered or judgement issued:
`DECTSIONSUDGEMENT
`
`Copy 1-—Upon initiation of action, mail this copy te Director Copy 3--Upon termination of action, mail this capy te Birector
`Copy 2--Upon filing document adding patent(s}, mail this copy to Birector Copy 4-—Case fle capy
`1
`
`SAMSUNG 1002
`
`1
`
`SAMSUNG 1002
`
`

`

`Case 6:21-cv-O0411-ADA Document? Filed Q4/26/21 Page 1 oft
`
`AO 120 (Rev. 08/10}
`
`TO:
`
`Mail Stop 8
`Birector of the U.S. Patent and Trademark Office
`P.O. Box 1456
`Alexandria, VA 22313-1450
`
`|
`
`:
`
`TRADEMARK
`
`REPORTON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`in Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`for the Western District of Texas Waco Division on the folowing
`
`filed in the U.S. District Court
`
`
`C] fradematks or=A Patents. ( (7) the patent action invofves 35 U.S.C. § 292.3:
`
`
`DOCKET NO.
`6:21-cv-00441
`PLAINTIFF
`MEMORYWEB, LLC
`
`DATE FILED
`4/26/2021
`
`I
`
`U.S, DISTRICT COURT
`for the Western District of Texas Waco Division
`| DEFENDANT
`| SAMSUNG ELECTRONICS CO.,LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.
`
`OR TRADEMARK
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`ATWRIADEE
`we
`DATER
`CE
`=n
`.
`HOLDER OF PATENT OR TRADEMARK
`
`1 10,423,658
`
`9/24/2019
`
`4/14/2020
`
`MemoryWeb, LLC
`
`MemoryWeb, LLC
`
`DATE INCLUDED
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`
`(i Cress Bilt
`
`[-] Other Pleading
`
`In the above—-entitied case, the following decision has been rendered or judgement issued:
`DECISIONJUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy i-—Upon initiation of action, mail this copy te Director Copy 3--Upon termination of action, mail this copy te Director
`Copy 2—-Upon filing document adding patent(s), mail this copy te Birector Copy 4-—Case fide copy
`
`2
`
`

`

`
`
`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.goyv
`
`CONFIRMATION NO.
`
`ATTORNEY DOCKFT NO.
`
`069366-000002USC3
`
`4358
`
`APPLICATION NO.
`
`16/578,238
`
`ISSUE DATE
`
`04/14/2020
`
`PATENT NO.
`
`10621228
`
`70001
`
`7590
`
`03/25/2020
`
`NIXON PEABODY LLP
`70 West Madison Street, Suite 3500
`CHICAGO,IL 60602
`
`ISSUE NOTIFICATION
`
`The projected patent number andissue date are specified above.
`
`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 adjustmentonthe 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):
`
`Christopher J. Desmond, Glen Ellyn, IL;
`NCMIP Holdings, LLC, Glen Ellyn, IL;
`NancyL. Desmond, Glen Ellyn, IL;
`T.. Michael Taylor, Chicago, IT.;
`
`The United States represents the largest, most dynamic marketplace in the world and is 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
`works to encourage and facilitate 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 SelectUSA. gov.
`IR103 (Rev. 10/09)
`
`3
`
`

`

`
`
`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.
`
`16/578,238
`
`FILING DATE
`
`09/20/2019
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Christopher J. Desmond
`
`069366-000002USC3
`
`4358
`
`NIXON PEABODY LLP
`70 West Madison Street, Suite 3500
`CHICAGO, IL 60602
`
`TRAN, LOC
`
`2165
`
`03/20/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`docketingchicago @ nixonpeabody.com
`ipairlink @nixonpeabody.com
`
`PTOT.-90A (Rev. 04/07)
`
`4
`
`

`

`Correct
`Noti Flo bili
`otice o
`Owanl uy
`
`Application No.
`16/578,238
`Examiner
`LOC TRAN
`
`Applicant(s)
`Desmondetal.
`Art Unit
`AIA (FITF) Status
`2165
`No
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence adaress--
`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 PATENTRIGHTS.This application is subject to withdrawalfrom issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`.{¥] This communication is responsiveto a printer rush filed on 03/12/2020.
`(1) A declaration(sVaffidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`:
`
`4.13 Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`~—_*c) () None of the:
`a) Call
`b) Some
`1. G Certified copies of the priority documents have been received.
`2. C) Certitied copies of the priority documents have been receivedin Application No.
`3. [1 Copiesof the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`
`
`
` [¥] The allowed claim(s) is/are See Continuation Sheet . As a result of the allowed claim(s), you may beeligible to benefit from the
`
`CJ An election was made by the applicantin responseto a restriction requirementset forth during the interview on
`restriction requirement and election have been incorporatedinto this action.
`
`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.
`
`* 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-MONTHPERIODIS NOT EXTENDABLE.
`
`5.1) CORRECTED DRAWINGS (as"replacement sheets") must be submitted.
`() 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).
`
`6.1] DEPOSIT OF and/or INFORMATIONabout the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1.) Notice of References Cited (PTO-892)
`2.) Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date
`.
`3.2 Examiner's Comment Regarding Requirementfor Deposit
`of Biological Material
`4.C Interview Summary (PTO-413),
`Paper No./Mail Date.
`/LOC TRAN/
`Examiner, Art Unit 2165
`
`5. (] Examiner's Amendment/Comment
`6. (1) 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 20200317
`
`5
`
`

`

`Continuation Sheet (PTOL-37)
`
`Application No. 16/578,238
`
`Continuation of 3. The allowed claim(s) is/are: 40-48 ,52-59 and 61-62
`
`6
`
`

`

`|
`
`| |
`
`Examiner
`
`LOC TRAN
`
`Application/Control No.
`Applicant(s)/Patent Under Reexamination
`Issue Classification|16)578.038
`Desmond et al.
`
`ArtUnit
`
` NONE
`
`(Assistant Examiner)
`ao
`.
`.
`17 March 2020
`/LOC TRAN/
`
`Examiner, Art Unit 2165 O.G. Print Claim(s)|O.G. Print Figure
`(Primary Examiner)
`(Date)
`1
`1
`U.S. Patent and Trademark Office
`Part of Paper No.: 20200317
`
`19
`
`Total Claims Allowed:
`
`Page 1 of 3
`
`7
`
`7
`
`

`

`Application/Control No.
`Applicant(s)/Patent Under Reexamination
`Issue Classification|16)578.038
`Desmond et al.
`
`|
`
`| |
`
`Examiner
`
`LOC TRAN
`
`ArtUnit
`
`2165
`
`SUBCLASS
`
`SUBCLASS (ONE SUBCLASS PER BLOCK)
`
`INTERNATIONAL CLASSIFICATION
`
`CLAIMED
`
`GO6F
`
`NON-CLAIMED
`
`US ORIGINAL CLASSIFICATION
`
`CROSS REFERENCES(S)
`
`CLASS
`
` NONE
`
`(Assistant Examiner)
`ao
`.
`.
`17 March 2020
`/LOC TRAN/
`
`Examiner, Art Unit 2165 O.G. Print Claim(s)|O.G. Print Figure
`(Primary Examiner)
`(Date)
`1
`1
`U.S. Patent and Trademark Office
`Part of Paper No.: 20200317
`
`19
`
`Total Claims Allowed:
`
`Page 2 of 3
`
`8
`
`8
`
`

`

`Application/Control No.
`Applicant(s)/Patent Under Reexamination
`Issue Classification|16)578.038
`Desmond et al.
`
`|
`
`| |
`
`Loota
`
`LOC TRAN
`
`
`
` NONE
`
`(Assistant Examiner)
`ao
`.
`.
`17 March 2020
`/LOC TRAN/
`
`Examiner, Art Unit 2165 O.G. Print Claim(s)|O.G. Print Figure
`(Primary Examiner)
`(Date)
`1
`1
`U.S. Patent and Trademark Office
`Part of Paper No.: 20200317
`
`19
`
`Total Claims Allowed:
`
`Page 3 of 3
`
`9
`
`9
`
`

`

`Doc Code: IFEE
`
`PTOL/85B-EFS
`
`Document Description: Issue Fee Payment (PTO-85B)
`
`
`Application Number
`Filing Date
`First Named Inventor
`Atty. Docket No.
`Confirmation No.
`
`Issue Fee Transmittal Form
`
`16578238
`
`4358
`
`20-Sep-2019
`
`Christopher Desmond
`
`069366-000002USC3
`
`TITLE OF INVENTION :
`
`METHOD AND APPARATUS FOR MANAGING DIGITAL FILES
`
`
`Entity Status
`Application Type
`Art Unit
`[Class - Subclass
`EXAMINER
`
`Issue Fee Due
`
`Publication Due
`
`Total Fee(s) Due
`
`Prev. Paid Fee
`
`Utility under 35 USC 111(a
`
`2165
`
`722000
`
`LOC TRAN
`
`500
`
`1.Change of Correspondence Address and/or Indication Of Fee Address (37 CFR 1.33 & 1.363)
`Current Correspondence Address:
`Current Indicated Fee Address:
`
`02-Mar-2020
`
`
`70001
`NIXON PEABODYLLP
`
`70 West Madison Street, Suite 3500
`
`CHICAGO IL 60602
`UNITED STATES
`312-977-4400
`inachi
`.
`O Changeof correspondence address requested, system
`generated AIA/122-EFS form attached
`
`O Fee Address indication requested, system generated SB/47-EFS
`form attached
`
`
`
`2.Entity Status
`
`Changein Entity Status
`
`Applicant certifying micro entity status; system generated Micro Entity certification form attached. See 37 CFR 1.29.
`Note: Absenta valid certification of micro entity status, issue fee paymentin the micro entity amountwill not be accepted at the risk of application abandonment.
`O If this box is checked, you will be prompted to choose a micro entity status on the gross incomebasis (37 CFR 1.29(a)) or the institution of higher education basis
`(37 CFR 1.29(d)), and make the applicable certification online.
`
`© Applicant asserting small entity status. See 37 CFR 1.27.
`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.
`
`O Applicant changing to regular undiscounted fee status.
`Note: Checking this boxwill be taken to be a notification of loss of entitlement to small or micro entity status, as applicable.
`
`WEB IFEE 1.0
`
`10
`
`10
`
`

`

`Doc Code: IFEE
`
`PTOL/85B-EFS
`
`Document Description: Issue Fee Payment (PTO-85B)
`
`3.The Following Fee(s) Are Submitted:
`
`Issue Fee
`
`x
`
`[_] Publication Fee
`
`[_] Advance Order - # of copies
`
`4.Firm and/or Attorney Names To Be Printed
`NOTE: If no nameis listed, no namewill be printed
`For printing on the patentfront page,list to be displayed as entered
`
`1. NIXON PEABODY LLP
`
`q | authorize USPTO to apply mypreviously paid issue fee to the
`current fees due
`
`[_]
`
`The Director is hereby authorized to apply my previously paid
`issue fee to the current fee due and to charge deficient fees to
`Deposit Account Number
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`If in addition to the payment of the issue fee amount submitted
`with this form, there are any discrepancies in any amount(s) due,
`the Director is authorized to charge any deficiangy, or credit any
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`and providing a deposit account numberwill NOT be
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`
`
`5.Assignee Name(s) and Residence Data To Be Printed
`PLEASE NOTE: Unless an assigneeis identified below, no assignee data will appear on the patent.If an assigneeis identified below, the documenthas been filed for
`recordation as set forth in 37 CFR 3.11. Completion of this form is NOT a substitute forfiling an assignment.
`
`Name
`
`City
`
`State
`
`Country
`
`Category
`
`NCM IP Holdings, LLC
`
`Glen Ellyn
`
`ILLINOIS
`
`united states
`
`corporation
`
`6.Signature
`
`| certify, in accordance with 37 CFR 1.4(d)(4) that | am an attorney or agent registered to practice before the Patent and Trademark Office who hasfiled and has been granted
`powerof attorneyin this application. | also certify that this Fee(s) Transmittal form is being transmitted to the USPTO via EFS-WEB on the date indicated below.
`
`Signature
`
`Name
`
`WEB IFEE 1.0
`
`/Bradley M. Taub/
`
`02-28-2020
`
`Registration Number| 67300
`
`Bradley Michael Taub
`
`11
`
`11
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`16578238
`
`20-Sep-2019
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR MANAGINGDIGITALFILES
`
`First NamedInventor/Applicant Name:
`
`Christopher J. Desmond
`
`Bradley Michael Taub
`
`Attorney Docket Number:
`
`069366-000002USC3
`
`Filed as Small Entity
`
`Filing Fees for Utility under 35 USC 111(a)
`
`Sub-Total in
`Fee Code Quantity AmountDescription USD(S)
`
`
`
`
`
`
`
`
`
`
`
`
`
`UTILITY APPL ISSUE FEE
`
`Basic Filing:
`
`PUBL. FEE- EARLY, VOLUNTARY, OR NORMAL
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`
`12
`
`
`
`12
`
`

`

`Post-Allowance-and-Post-Issuance:
`
`Total in USD (S$)
`
`Extension-of-Time:
`
`Miscellaneous:
`
`13
`
`13
`
`

`

`
`
`a s
`
`Electronic AcknowledgementReceipt
`
`een
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR MANAGINGDIGITALFILES
`
`First Named Inventor/Applicant Name:
`
`Christopher J. Desmond
`
`Customer Number:
`
`70001pe
`
`aa
`
`Utility under 35 USC 111{a)
`Application Type:
`
`
`Paymentinformation:
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
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`
`14
`
`14
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`

`

`
`
`Pages
`Multi
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`Document
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`
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`Number Message Digest|Part /.zip|P (if appl.)
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`New Applications Under 35 U.S.C. 111
`If a new applicationis being filed and the application includes the necessary componentsfor a filing date (see 37 CFR
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`fee-info.pdf
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`4£9139b7214407604952c5cc4a835 lab37c8}
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
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`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TINITED STATES DEPARTMENT OF COMMERCE
`United States Patent and 'lrademarkOffice
`Address: COMMTSSIONER, FOR PATENTS
`P.C. Box 1450
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`Wwww.uspto.gov
`
`
`
` APPLICATION NUMBER FILING OR 371(C) DATE FIRST NAMED APPLICANT ATTY. DOCKET NO/TITLE
`
`
`
`16/578,238
`
`09/20/2019
`
`70001
`NIXON PEABODY LLP
`
`70 West MadisonStreet, Suite 3500
`CHICAGO, IL 60602
`
`Christopher J. Desmond
`
`069366-000002USC3
`CONFIRMATION NO. 4358
`PUBLICATION NOTICE
`
`IMTS0
`‘00000
`8/
`
`2
`
`Title: METHOD AND APPARATUS FOR MANAGING DIGITAL FILES
`
`Publication No.US-2020-0026727-A1
`Publication Date:01/23/2020
`
`NOTICE OF PUBLICATION OF APPLICATION
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`
`
`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.
`
`16/578,238
`
`FILING DATE
`
`09/20/2019
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Christopher J. Desmond
`
`069366-000002USC3
`
`4358
`
`NIXON PEABODY LLP
`70 West Madison Street, Suite 3500
`CHICAGO, IL 60602
`
`TRAN, LOC
`
`2165
`
`01/16/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`docketingchicago @ nixonpeabody.com
`ipairlink @nixonpeabody.com
`
`PTOT.-90A (Rev. 04/07)
`
`17
`
`17
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`

`
`
`16/578, 238
`Desmondetal.
`
`Response to Rule 312 Communication Art Unit|AIA (FITF) StatusExaminer
`LOC TRAN
`
`Application No.
`
`Applicant(s)
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`
`1. The amendment filed on 09 December 2019 under 37 CFR 1.312 has been considered, and has been:
`a)
`entered.
`
`b) (entered as directed to matters of form notaffecting the scope ofthe invention.
`
`c)()
`
`disapproved because the amendmentwasfiled after the paymentofthe issue fee.
`
`Any amendment filed after the date the issue fee is paid must be accompanied by a petition under 37 CFR 1.313(c)(1)
`and the required fee to withdraw the application from issue.
`
`disapproved. See explanation below.
`
`entered in part. See explanation below.
`
`Examiner, Art Unit 2165 U.S. Patent and Trademark Office
`
`[LOC TRAN/
`
`PTOL-271 (Rev. 04-01)
`
`Reponseto Rule 312 Communication
`
`Part of Paper No. 20200110
`
`18
`
`18
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`

`

`It's ok to enter /L.T./
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`Serial No.
`Applicant
`Filed
`Title
`
`TC/A.LU.
`Examiner
`Docket No.
`Customer No.
`
`:
`:
`;
`:
`
`:
`:
`:
`:
`
`16/578,238
`NCMIP Holdings, LLC
`September 20, 2019
`METHOD AND APPARATUS FOR MANAGING DIGITAL FILES
`
`Confirmation No.: 4358
`
`2165
`Loc Tran
`069366-000002USC3
`70001
`
`
`
`AMENDMENT AFTER ALLOWANCE UNDER37 C.E.R.§ 1.312
`
`Mail Stop: Issue Fee — via EFS
`COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`This Amendment After Allowance is submitted in response to the “Notice of Allowance
`
`and Fee(s) Due” mailed December 2, 2019 pursuant to 37 CFR 1.312. The statutory period for
`
`paying the issue fee is three months from the mailing date, i.e, by March 2, 2019. This
`
`amendmentis timelyas it is being filed prior to the payment of the issue fee. Please enter the
`
`following amendments and remarksinto the record forthis application.
`
`Amendments to the Claims are reflected in the Listing of Claims on page 2 of this
`
`paper.
`
`Remarksbegin on page 6 of this paper.
`
`4840-5562-7 182.1
`
`19
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`19
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`21:44:51
`
`Electronic AcknowledgementReceipt
`
`a s
`
`een
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR MANAGINGDIGITALFILES
`
`First Named Inventor/Applicant Name:
`
`Christopher J. Desmond
`
`Customer Number:
`
`70001
`
`Bradley Michael Taub
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`069366-000002USC3
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`09-DEC-2019
`
`20-SEP-2019
`
`
`
`Application Type: Utility under 35 USC 111{a)
`
`Paymentinformation:
`
`Submitted with Payment
`
`64378I45U 185e34e4ae8ccMeb1 Obae321b}
`
`Pages
`Multi
`File Size(Bytes)/
`Document Description
`Document
`
`
`
`Number Message Digest|Part/.zip|P (if appl.)
`
`Amendmentafter Notice of Allowance|069366-2USC3-312_Amendme
`(Rule 312)
`nt.pdf
`
`20
`
`20
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`

`

`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the 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 Applications Under 35 U.S.C. 111
`If a new applicationis 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
`Acknowledgement Receiptwill 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 under35 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 componentsfor
`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 shown on this Acknowledgement Receiptwill establish the international filing date of
`
`21
`
`21
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`Serial No.
`Applicant
`Filed
`Title
`
`TC/A.LU.
`Examiner
`Docket No.
`Customer No.
`
`:
`:
`;
`:
`
`:
`:
`:
`:
`
`16/578,238
`NCMIP Holdings, LLC
`September 20, 2019
`METHOD AND APPARATUS FOR MANAGING DIGITAL FILES
`
`Confirmation No.: 4358
`
`2165
`Loc Tran
`069366-000002USC3
`70001
`
`
`
`AMENDMENT AFTER ALLOWANCE UNDER37 C.E.R.§ 1.312
`
`Mail Stop: Issue Fee — via EFS
`COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`This Amendment After Allowance is submitted in response to the “Notice of Allowance
`
`and Fee(s) Due” mailed December 2, 2019 pursuant to 37 CFR 1.312. The statutory period for
`
`paying the issue fee is three months from the mailing date, i.e, by March 2, 2019. This
`
`amendmentis timelyas it is being filed prior to the payment of the issue fee. Please enter the
`
`following amendments and remarksinto the record forthis application.
`
`Amendments to the Claims are reflected in the Listing of Claims on page 2 of this
`
`paper.
`
`Remarksbegin on page 6 of this paper.
`
`4840-5562-7 182.1
`
`22
`
`22
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`

`

`2
`
`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in the
`
`application:
`
`Listing of Claims:
`
`1-39.
`
`(Canceled)
`
`40.
`
`(Previously Presented)
`
`A method comprising:
`
`responsive to a first input, causing a map view to be displayed on an interface, the map
`
`view including:
`
`(i) an interactive map;
`
`(ii) a first location selectable thumbnail imageat a first location on the interactive
`
`map; and
`
`(i11) a second location selectable thumbnail
`
`image at a second location on the
`
`interactive map;
`
`responsive to an input that is indicative of a selection of the first location selectable
`
`thumbnail image, causingafirst location view to be displayed on the interface,
`
`the first location view including (i) a first location name associated with the first
`
`location and (ii) a representation of at least a portion of one digital file in a first
`
`set of digital files, each of the digital files in the first set of digital files being
`
`produced from outputs of one or more digital imaging devices, the first set of
`
`digital files including digital files associated with the first location;
`
`responsive to an input that is indicative of a selection of the second location selectable
`
`thumbnail image, causing a second location view to be displayed on the interface,
`
`the second location view including (1) a second location nameassociated with the
`
`second location and (ii) a representation of at least a portion of one digital file in a
`
`second set of digital files, each of the digital files in the second set of digital files
`
`being produced from outputs of the one or more digital
`
`imaging devices,
`
`the
`
`second set of digital files including digital files associated with the second
`
`location; and
`
`responsive to a second input that is subsequentto the first input, causing a people view to
`
`be displayed on the interface, the people view including:
`
`4840-5562-7 182.1
`
`23
`
`23
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`

`

`3
`
`(i) a first person selectable thumbnail image including a representation of a face
`
`of a first person, the first person being associated with a thirdset of digital
`
`files including digital photographs and videos;
`
`(ii) a first name associated with the first person, the first name being displayed
`
`adjacentto the first person selectable thumbnail image;
`
`(i11) a second person selectable thumbnail image including a representation of a
`
`face of a second person, the second person being associated with a fourth
`
`set of digital files including digital photographs and videos; and
`
`(iv) a second name associated with the second person, the second name being
`
`displayed adjacent to the second person selectable thumbnail image.
`
`41.
`
`(Previously Presented)
`
`The method of claim 40, wherein the map view further
`
`includes a first indication feature associated with the first location selectable thumbnail image,
`
`the first indication feature being based on a numberofdigital files in the first set of digital files.
`
`42.
`
`(Previously Presented)
`
`The method of claim 41, wherein the first indication feature
`
`is connectedto thefirst location selectable thumbnail image.
`
`43.
`
`(Previously Presented)
`
`The method of claim 41, wherein the first indication feature
`
`includesa first numberindicative of the numberofdigital files in the first set of digital files.
`
`44.
`
`(Previously Presented)
`
`The method of claim 41, wherein the map view further
`
`includes a second indication feature associated with the second location selectable thumbnail
`
`image, the second indication feature being based on a numberofdigital files in the second set of
`
`digital files.
`
`45,
`
`(Previously Presented)
`
`The method of claim 44, wherein the second indication
`
`feature is connected to the second location selectable thumbnail image.
`
`46.
`
`(Previously Presented)
`
`The method of claim 44, wherein the second indication
`
`feature includes a second numberindicative of the number ofdigital files in the second set of
`
`digital files.
`
`47,
`
`(Previously Presented)
`
`The method of claim 41, further comprising, subsequent to
`
`the map view being displayed on the interface, responsive to an input that is indicative of
`
`zooming in on the interactive map, modifying the first indication feature.
`
`48.
`
`(Previously Presented)
`
`The method of claim 41, further comprising, subsequent to
`
`the map view being displayed on the interface, responsive to an input that is indicative of
`
`zooming out on the interactive map, modifying the first indication feature.
`
`4840-5562-7 182.1
`
`24
`
`24
`
`

`

`49-51. (Canceled)
`
`52.
`
`(Previously Presented)
`
`The method of claim 41, further comprising, subsequent to
`
`the map view being displayed on the interface, responsive to an input that is indicative ofa filter
`
`selection, modifying the first indication feature.
`
`53.
`
`(Previously Presented)
`
`The method of claim 40, wherein the first
`
`location
`
`selectable thumbnail imageis a first collection cover image and wherein the second location
`
`selectable thumbnail image is a second collection cover image that is different than the first
`
`collection cover image.
`
`54.
`
`(Previously Presented)
`
`The method of claim 40, wherein the first
`
`location
`
`selectable thumbnail image includes a representation of at least one of the digital files in the first
`
`set of digital files, and wherein the second location selectable thumbnail
`
`image includes a
`
`representation ofat least one ofthe digital files in the second set ofdigital files.
`
`55.
`
`(Previously Presented)
`
`The method of claim 54 wherein the representation ofthe at
`
`least a portion of the one digital file in the first set of digital files is not overlaid on the
`
`interactive map, and wherein the representation of the at l