Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 1 of 15 PageID #: 14410
`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 1 of 15 PageID #: 14410
`
`EXHIBIT 5
`
`EXHIBIT 5
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`
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 2 of 15 PageID #: 14411
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`UNl'l'ED STATES PATE
`
`J' AND TRADEMARK 0 FHCE
`
`ll"IITJl.l) STA rns l)lcPA RTMF.iW Oil COMJl,IP. R<:R
`Unite4I States (>gfcnt and 1'rndem::n:k 0111«-
`Ad(hss, COMM ISS!ONf::R ~OR PATl:'.i'fl'.
`P.O. Tlo.., 14.'Vl
`Ale-:\Jl1drla, Vitgltlia '2231.3-l4!l0
`Wl.l.'W.1lii,!)IQ.jl,QU'
`
`/\PPLICATrON NO.
`
`FrLll'\0 DATE
`
`FIRST :-ri\MED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF£RMATIO NO.
`
`121324,[22
`
`I l/2612008
`
`Malcolm K. Beyer JR.
`
`l0963.38 l9
`
`9036
`
`03/J 112011
`75!r:J
`2223S
`MALIN HALEY DIMAGGIO BOWEN &LHOTA, P.A.
`1936 S AN DREWS A VE Lili
`PORT LAUDERDALE, FL 333 16
`
`EXAMI NER
`
`LEBAS J. A."1ANUEL
`
`A RT UNn
`
`PAPER NIIMBC:R
`
`2617
`
`NOTIFICATION CJATE
`
`03/ll/201 l
`
`Please find below and/or attached an Office communication concerning this application ot· proceeding.
`
`The time period for reply. if any, is set in the attached communication.
`
`otice of the Office cornmunicati.on was sent electronically on above-indicated "Notification Date" to the
`following e-mail addre (es):
`iufo@111hdpale111~.<.:om
`
`PTOL-90/\ <Rev. (W07)
`
`AG1STX_00001244
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 3 of 15 PageID #: 14412
`
`Application No.
`
`Applic ant(s)
`
`BEYER, MALCOLM K.
`
`Art Unit
`
`I
`
`Office Action Summary
`
`12/324, 122
`
`Examiner
`
`261 7
`AMANUEL LEBASSI
`- The MAILING DA TE of this communication appears on lhe cover sheet with the correspondence address -(cid:173)
`Period for Reply
`A SHORTEN ED STATUTORY PERIOD FOR REPLY IS SET TO EXPI RE J MONTH(S) OR THIRTY (30) DAYS ,
`WHIC HEVER IS LONG ER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of 11me may be avai lable underthe provisions of 37 CFR 1. 136(a), In no event, however, may a reply be 1imely f,led
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO peri od ior reply Is specified above, the maximum s1atu1ory period wl1I apply and will expi re SIX (6) MONTHS from the mailing da1e of 1his communication.
`Failure to reply within the set or ex1ended period for reply will, by statute, cause the application to oecome ABANOONED (35 U.S.C. § 133).
`Any reply received by the Office la1er 1han three mon1hs afte r 1he mailing da1e ol this commun ication, even II timely filed, may reduce any
`earned patent lerrn adJus1menl. See 'J/ CFR 1 /04(b).
`Status
`
`1 )[gl Responsive to communication(s) filed on 17 December 2010.
`2a)O This action is FINAL.
`2b)cgj This action is non-final.
`3)0 Since th is application is in cond ition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 G.D. 11 , 453 O.G. 213.
`
`Disposition of Claims
`
`4)[gl Claim(s) 2- 14 is/are pend ing in the application .
`4a) Of the above claim(s) __ is/are withd rawn from consideration.
`5)0 Claim(s) __ is/are allowed .
`6)[gl Claim(s) 2- 14 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restri ction and/or election requi rement.
`
`Application Papers
`
`9) 0 The specification is objected to by the Exam iner.
`10)cgj The drawing(s) filed on 26 November 2008 is/are: a)cgj accepted or b)O objected to by the Examiner.
`Applicant may not request that any objectio n 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).
`11) 0 The oath or declaration is objected to by the Examiner. ote the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some • c)O None of:
`1.0 Certified copies of the priori ty documents have been received.
`2.0 Ce rtified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`~ See the attached detailed Office action for a list of the certified copies not received .
`
`Attachment(s)
`1) cgj No1ice of References Cited (PT0 -892)
`2 ) 0 Notice o f Draftsporson's Patent Dra>Mng Review (PT0-948)
`3) 0 lnfonmation Disclosure Statem ent(s) (PTO/S B/08)
`Paper No(s)/Mail Date __ .
`
`4) 0 Interview Summary (PT0 -413)
`Paper No(s)/Mail Date . __
`5) 0 Notice of Informal Paten1 Appli cation
`6) 0 01her: __ .
`
`lJ.S Patenl and Tmdamark Olhce
`PTOL-326 (Rev. 08·06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 2011 0208
`
`AG1STX_00001245
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`

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`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 4 of 15 PageID #: 14413
`
`Application/Control Number: 12/324, i 22
`Art Unit: 2617
`
`Page 2
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`DETAILED ACTION
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`Response to Arguments
`
`1.
`
`Applicant's arguments with respect to claims 2-14 have been considered but are
`
`moot in view of the new ground(s) of rejection.
`
`Claim Rejections -35 USC§ 103
`
`1.
`
`The following is a quotation of 35 U.S.C. i 03(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`2.
`
`Claim 2-10 are rejected under 35 U.S.C. 103(a} as being unpatentable ave~
`
`Keating et al. US 20040082352 in view of Maggenti at al. US 20020061762.
`
`Regarding claim 2, Keating discloses a communication system for
`
`transmitting, receiving, confirming receipt, and responding to an electronic
`
`message (see abstract - selecting a group of mobile stations to participate
`
`in the wireless group call and causing an invitation message to be
`
`transmitted to the group of mobile stations). Keating discloses a
`
`predetermined network of participants, wherein each participant has a similarly
`
`equipped PC or PDA/cell phone that includes a CPU and a touch screen display
`
`a CPU and memory (paragraph [0016] where participants are mobile stations
`
`such as 16a and 16b and so on). Keating disclose a data transmission means
`
`that facilitates the transmission of electronic files between said PCs and said
`
`AGISTX_00001246
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 5 of 15 PageID #: 14414
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`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 3
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`PDA/cell phones in different locations (paragraph [0020] where wireless data
`
`controller controls transmission of data therefore a data transmission
`
`means that facilitates the transmission of electronic flies). Keating
`
`discloses a sender PC or PDA/cell phone and at least one recipient PC or
`
`PDA/cell phone for each electronic message (paragraph [0022] where a group
`
`call originator, or leader, initiates set-up of a group call through his or her
`
`mobile station y choosing or selecting a group call participant list therefore
`
`a sender PC or PDA/cell phone and at least one recipient PC or PDA).
`
`Keating discloses a forced message alert software application program loaded
`
`on each participating PC or PDA/cell phone (paragraph [0025] where an alert
`
`message is queued in the mobile stations therefore a message alert
`
`software application program). Keating discloses an alert message but is
`
`silent on disclosing means for attaching a forced message alert software packet
`
`to a voice or text message creating a forced message alert that is transmitted by
`
`said sender PC or PDA/cell phone to the recipient PC or PDA/cell phone,
`
`wherein said forced message alert software packet contains containing a
`
`response list and requires requiring the forced message alert software on said
`
`recipient PC or PDA/cell phone to transmit an automatic acknowledgment to the
`
`sender PC or PDA/cell phone as soon as said forced message alert is received
`
`by the recipient PC or PDA/cell phone; means for receiving and displaying a
`
`listing of which recipient PCs or PDA/cell phones have automatically
`
`acknowledged the forced message - alert and which recipient PCs or PDA/cell
`
`AG1STX_00001247
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 6 of 15 PageID #: 14415
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`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 4
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`phones have not automatically acknowledged the forced message alert; means
`
`for periodically resending said forced message alert to said recipient PCs or
`
`PDA/cell phones that have not automatically acknowledged the forced message
`
`alert; and means for receiving and displaying a listing of which recipient PCs or
`
`PDA/cell phones have transmitted a manual response to said forced message
`
`alert and details the response from each recipient PC or PDA/cell phone that
`
`responded.
`
`Maggenti teaches means for attaching a forced message alert software
`
`packet to a voice or text message creating a forced message alert that is
`
`transmitted by said sender PC or PDA/cell phone to the recipient PC or PDA/cell
`
`phone, wherein said forced message alert software packet contains containing a
`
`response list and requires requiring the forced message alert software on said
`
`recipient PC or PDA/cell phone to transmit an automatic acknowledgment to the
`
`sender PC or PDA/cell phone as soon as said forced message alert is received
`
`by the recipient PC or PDA/cell phone (paragraph [0120] and [0129] where an
`
`alert message is transmitted and upon receiving the request where the
`
`communication device acknowledges the response). Maggenti teaches
`
`means for receiving and displaying a listing of which recipient PCs or PDA/cell
`
`phones have automatically acknowledged the forced message alert and which
`
`recipient PCs or PDA/cell phones have not automatically acknowledged the
`
`forced message alert (paragraph [0141] where communication devices
`
`confirm the invitation by sending acknowledgements therefore list of
`
`AG1STX_00001248
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 7 of 15 PageID #: 14416
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`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 5
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`recipients have or not automatically acknowledged the forced message
`
`alert). Maggenti teaches means for periodically resending said forced message
`
`alert to said recipient PCs or PDA/cell phones that have not automatically
`
`acknowledged the forced message alert (paragraph [0129] where the alert is
`
`resend therefore periodically resending said forced message alert to said
`
`recipient) and means for receiving and displaying a listing of which recipient PCs
`
`or PDA/cell phones have transmitted a manual response to said forced message
`
`alert and details the response from each recipient PC or PDA/cell phone that
`
`responded (paragraph [0153] where server responds by resending the lost
`
`message response).
`
`At the time of invention, it would have been obvious to a person of
`
`ordinary skill in the art to modify the invention of Keating with that of Maggenti,
`
`thereby determining participants in a net within a group communication network
`
`as taught by Maggenti (paragraph [0004]).
`
`Regarding claim 3, Maggenti teaches wherein the forced message alert
`
`software application program on the recipient PC or PDA/cell phone includes:
`
`means for transmitting the acknowledgment of receipt to said sender PC or
`
`PDA/cell phone immediately upon receiving a forced message alert from the
`
`sender PC or PDA/cell phone (paragraph [0120] and [0129]. Maggenti teaches
`
`means for controlling of the recipient PC or PDA/cell phone upon transmitting
`
`AG1STX_00001249
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 8 of 15 PageID #: 14417
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`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 6
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`said automatic acknowledgment and causing, in cases where the force message
`
`alert is a text message, the text message and a response list to be shown on the
`
`display of the recipient PC or POA/cell phone or causes, in cases where the force
`
`message alert is a voice message, the voice message being periodically
`
`repeated by the speakers of the recipient PC or PDNcell phone while said
`
`response list is shown on the display (paragraph [01411) and means for allowing
`
`a manual response to be manually selected from the response list or manually
`
`recorded and transmitting said manual response to the sender PC or PDA/cell
`
`phone and means for clearing the text message and a response list from the
`
`display of the recipient PC or PDA/cell phone or stopping the repeating voice
`
`message and clearing the response list from the display of the recipient PC or
`
`PDA/cell phone once the manual response is transmitted (paragraph [0153]).
`
`Regarding claim 4, Keating discloses wherein said data transmission
`
`means is TCP/IP or another communications protocol (paragraph [0020] -
`
`Internet Protocol (IP)).
`
`Regarding claim 5, Keating discloses wherein the response list that is
`
`transmitted within the forced message alert software packet is a default response
`
`list that is embedded in the forced message alert software application program
`
`(paragraph [0027]).
`
`AGISTX_00001250
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 9 of 15 PageID #: 14418
`
`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 7
`
`Regarding claim 6, Keating discloses wherein the response list that is
`
`transmitted within the forced message alert software packet is a custom
`
`response list that is created at the time the specific forced message alert is
`
`created on the sender PC or PDA/cell phone (see Fig. 2).
`
`Regarding claim 7, Keating discloses A method of sending a forced
`
`message alert to one or more recipient PCs or PDA/cell phones within a
`
`predetermined communication network, wherein the receipt and response to said
`
`forced message alert by each intended recipient PC or PDA/cell phone is
`
`tracked, said method comprising the steps of: accessing a forced message alert
`
`software application program on a sender PC or PDA/cell phone paragraph
`
`[0025] where an alert message is queued in the mobile stations therefore a
`
`forced message alert software application program). Keating discloses
`
`creating the forced message alert on said sender PC or P DA/cell phone by
`
`attaching a voice or text message to a forced message alert application software
`
`packet to said voice or text message (paragraph [0022]). Keating discloses
`
`designating one or more recipient PCs or PDA/cell phones in the communication
`
`network (paragraph [0022] where a group call originator, or leader, initiates
`
`set-up of a group call through his or her mobile station y choosing or
`
`selecting a group call participant list). Keating discloses electronically
`
`transmitting the forced message alert to said recipient PCs or PDA/cell phones
`
`(paragraph [00221). Keating discloses receiving automatic acknowledgements
`
`AGISTX_00001251
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 10 of 15 PageID #: 14419
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`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 8
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`from the recipient PCs or PDNcell phones that received the message and
`
`displaying a listing of which recipient PCs or PDNcell phones have
`
`acknowledged receipt of the forced message alert and which recipient PCs or
`
`PDA/cell phones have not acknowledged receipt of the forced message alert
`
`(see Fig. 2 - steps 42 and 43 where acknowledgements are received from
`
`the recipient mobile phones). Keating discloses periodically resending the
`
`forced message alert to the recipient PCs or PDNcell phones that have not
`
`acknowledged receipt (see Fig. 2). Keating discloses receiving responses to
`
`the forced message alert from the recipient PCs or PDA/cell phones and
`
`displaying the response from each recipient PC or PDNcell phone and clearing
`
`the receiver's display screen or causing the repeating voice alert to cease upon
`
`selecting a response that can only be cleared by manually selecting and
`
`transmitting a response to the manual response list (paragraph [0028] where
`
`the message is cleared).
`
`Keating is silent providing a manual response list on the display of the
`
`recipient PC or PDNcell phone. Maggenti teaches providing a manual response
`
`list on the display of the recipient PC or PON cell phone (paragraph [0011]
`
`where the communication device sends a response to the message within a
`
`predetermined time period).
`
`At the time of invention, it would have been obvious to a person of
`
`ordinary skill in the art to modify the invention of Keating with that of Maggenti,
`
`AGISTX_00001252
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 11 of 15 PageID #: 14420
`
`Application/Control Number: 12/324, i 22
`Art Unit: 2617
`
`Page 9
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`thereby determining participants in a net within a group communication network
`
`as taught by Maggenti (paragraph [00041).
`
`Regarding claim 8, Keating discloses wherein each PC or PDNcell phone
`
`within a predetermined communication network is similarly equipped and has the
`
`forced message alert software application program loaded on it (paragraph
`
`[0016] where participants are mobile stations such as 16a and 16b and so
`
`on which are similarly equipped).
`
`Regarding claim 9, Keating discloses wherein said forced message alert
`
`application software packet contains a response list, wherein said response list is
`
`a default list embedded in the forced message alert software application program
`
`(paragraph (00271).
`
`Regarding claim i O, Keating discloses wherein said forced message alert
`
`application software packet contains a response list, wherein said response list is
`
`a custom response list that is created at the time the specific forced message
`
`alert is created on the sender PC or PDA/cell phone (paragraph [0027]).
`
`AGISTX_00001253
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 12 of 15 PageID #: 14421
`
`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 10
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`3.
`
`Claim 11-14 are rejected under 35 U.S.C. 103 a) as being unpatentable over
`
`Keating et al. US 20040082352 in view of Dalton et al. US 20040192365.
`
`Regarding claim 11 , Keating discloses a method of receiving,
`
`acknowledging and responding to a forced message alert from a sender PC or
`
`PDA/cell phone to a recipient PC or PDA/cell phone. wherein the
`
`receipt, acknowledgment, and response to said forced message alert is forced by
`
`a forced message alert software application program (paragraph [0027] where
`
`Keating discloses where a message is sent to inform the mobile stations
`
`that the group call is set to begin), said method comprising the steps of:
`
`receiving an electronically transmitted electronic message (Fig. 2 step 34 where
`
`message is received after being transmitted). Keating discloses identifying
`
`said electronic message as a forced message alert, wherein said forced
`
`message alert comprises of a voice or text message and a forced message alert
`
`application software packet, which triggers the activation of the forced message
`
`alert software application program within the recipient PC or PDA/cell phone
`
`(abstract where an invitation message to be transmitted to the group of
`
`mobile stations). Keating discloses transmitting an automatic acknowledgment
`
`of receipt to the sender PC or PDA/cell phone, which triggers the forced
`
`message alert software application program to take control of the recipient PC or
`
`PDA/cell phone and show the content of the text message and a response list on
`
`the display recipient PC or PDA/cell phone or to repeat audibly the content of the
`
`AGISTX_00001254
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 13 of 15 PageID #: 14422
`
`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 11
`
`voice message on the speakers of the recipient PC or P DA/cell phone and show
`
`the response list on the display recipient PC or PDA/cell phone (see Fig. 2 -
`
`steps 42 and 43 where acknowledgements are received from the recipient
`
`mobile phones) and transmitting a selected response, whether said selected
`
`response is a chosen option from the response list, causing the forced message
`
`alert software to release control of tile recipient PC or PDA/cell phone and stop
`
`showing the content of the text message and a response list on the display
`
`recipient PC or PDA/cel1 phone and or stop repeating the content of the voice
`
`message on the speakers of the recipient PC or PDA/cell phone (paragraph
`
`[0028] where a message is responded). Keating discloses displaying the
`
`response received from the PC or PDA cell phone that transmitted the response
`
`on the sender of the forced alert PC or PDA/cell phone (see Fig. 2 step 36
`
`where list of responsive participants is displayed upon request) and
`
`providing a list of the recipient PC or PDA/cell phones have automatically
`
`acknowledged receipt of a forced alert message (see Fig. 2 step 43 where
`
`group members allow communication therefore automatically
`
`acknowledged receipt of a forced alert message).
`
`Keating is silent their response to the forced alert message .. However,
`
`Dalton teaches responses to the forced message alert (paragraph [0014] where
`
`each active mobile device responds to the predetermined message and
`
`performs a specific function related to the predetermined message).
`
`AGISTX_00001255
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 14 of 15 PageID #: 14423
`
`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 12
`
`At the time of invention, it would have been obvious to a person of
`
`ordinary skill in the art to modify the invention of Keating with that of Dalton,
`
`thereby integrating plurality of mobile devices as taught by Dalton (paragraph
`
`[0001]).
`
`Regarding claim 12, Keating discloses wherein each PC or PDNcell
`
`phone within a predetermined communication network is similarly equipped and
`
`has the forced message alert software application program loaded on it
`
`(paragraph [0016] where participants are mobile stations such as 16a and
`
`16b and so on).
`
`Regarding claim 13, Keating discloses wherein said forced message alert
`
`application software packet contains a response list, wherein said response list is
`
`a default list embedded in the forced message alert software application program
`
`(paragraph [0027] where the message is displayed on the participating
`
`mobile phones).
`
`Regarding claim 14, Keating discloses wherein said forced message alert
`
`application software packet contains a response list, wherein said response list is
`
`a custom response list that is created at the time the specific forced message
`
`alert is created on the sender PC or PDA/cell phone(see Fig. 2).
`
`AG1STX_00001256
`
`

`

`Case 2:17-cv-00513-JRG Document 239-4 Filed 12/18/18 Page 15 of 15 PageID #: 14424
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`Application/Control Number: 12/324, 122
`Art Unit: 2617
`
`Page 13
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`Conclusion
`
`1.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Examiner should be directed to Amanuel Lebassi, whose telephone number is (571)
`
`270-5303. The Examiner can normally be reached on Monday-Thursday from 8:00am to
`
`5:00pm.
`
`If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's
`
`supervisor, Nick Corsaro can be reached at (571) 272-7876. The fax phone number for
`
`the organization where this application or proceeding is assigned is (571) 273-
`
`8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for published
`
`applications may be obtained from either Private PAIR or Public PAIR. Status
`
`information for unpublished applications is available through Private PAIR only. For
`
`more information about the PAIR system, see http://pair-direct.uspto.gov. Should you
`
`have questions on access to the Private PAIR system, contact the Electronic Business
`
`Center (EBC) at 866-217-9197 (toll-free) or 703-305-3028.
`
`Any inquiry of a general nature or relating to the status of this application or
`
`proceeding should be directed to the receptionist/customer service whose telephone
`
`number is (571) 272-2600.
`
`Amanuel Lebassi
`IA. L./
`3/01/2011
`
`/HUY PHAN/
`Primary Examiner, Art Unit 2617
`
`AGISTX_00001257
`
`