Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 1 of 27 PageID 385
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`
`
`
`
`R2 Solutions LLC,
`
` Plaintiff,
`
`v.
`
`
`7-Eleven, Inc.,
`
` Defendant.
`
`
`
`
`
`
`
`
`Civil Action No. 3:22-cv-02868
`
`Jury Trial Demanded
`
`
`APPENDIX IN SUPPORT OF PLAINTIFF’S RESPONSE IN OPPOSITION TO RULE
`12(B)(6) MOTION TO DISMISS OF DEFENDANT 7-ELEVEN, INC
`
`Description
`
`Appx Page
`
`Exhibit
`
`A
`B
`
`Prosecution History of U.S. Patent No. 7,698,329
`Prosecution History of U.S. Patent No. 9,805,097
`
`
`4-17
`19-27
`
`
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`Appx. 1
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`

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`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 2 of 27 PageID 386
`
`Dated: March 17, 2023
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/s/ Edward R. Nelson III
`EDWARD R. NELSON III
`State Bar No. 00797142
`ed@nelbum.com
`BRENT N. BUMGARDNER
`State Bar No. 00795272
`brent@nelbum.com
`CHRISTOPHER G. GRANAGHAN
`State Bar No. 24078585
`chris@nelbum.com
`JOHN P. MURPHY
`State Bar No. 24056024
`murphy@nelbum.com
`CARDER W. BROOKS
`State Bar No. 24105536
`carder@nelbum.com
`NELSON BUMGARDNER CONROY PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`817.377.9111
`
`COUNSEL FOR PLAINTIFF
`R2 SOLUTIONS LLC
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing document was electronically filed with the Clerk of
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`Court using the CM/ECF filing system, which will generate and send an e-mail notification of
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`the filing to all counsel of record on this the 17th day of March, 2023.
`
`
`/s/ Edward R. Nelson III
`
`
`
`Appx. 2
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 3 of 27 PageID 387
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`
`
`
`
`Exhibit A
`
`Appx. 3
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 4 of 27 PageID 388
`UNITED STA TES p A TENT 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.
`
`11/652,356
`
`ISSUE DATE
`
`04/13/2010
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`7698329
`
`50269-0884
`
`3475
`
`03/24/2010
`7590
`73066
`HICKMAN PALERMO TRUONG & BECKER LLP/Yahoo! Inc.
`2055 Gateway Place
`Suite 550
`San Jose, CA 95110-1083
`
`The projected patent number and issue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 522 day(s). Any patent to issue from the above-identified application will
`include an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`determines Patent Term Adjustment is 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) WEB site (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 WEB site http://pair.uspto.gov for additional applicants):
`
`Priyank S. Garg, San Jose, CA;
`Amit J. Basu, San Jose, CA;
`Timothy M. Converse, Sunnyvale, CA;
`
`IR103 (Rev. 10/09)
`
`Appx. 4
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 5 of 27 PageID 389
`
`Notice of Allowability
`
`Application No.
`
`11/652,356
`Examiner
`
`Applicant(s)
`
`GARG ET AL.
`Art Unit
`
`ALEX GOFMAN
`
`2162
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`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. IZI This communication is responsive to After-Final filed 1-4-10.
`2. IZ! The allowed claim(s) is/are 1-7 and 15-21 renumbered as 1-14.
`3. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a) D All
`b) D Some*
`c) D None
`of the:
`1. D Certified copies of the priority documents have been received.
`2. D Certified copies of the priority documents have been received in Application No. __ .
`3. D 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)).
`* 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.
`4. 0 A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
`5. D CORRECTED DRAWINGS ( as "replacement sheets") must be submitted.
`(a) D including changes required by the Notice of Draftsperson's Patent Drawing Review ( PTO-948) attached
`1) D hereto or 2) D to Paper No./Mail Date __ .
`(b) D 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).
`
`6. □ 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.
`
`Attachment(s)
`1. D Notice of References Cited (PTO-892)
`2. D Notice of Draftperson's Patent Drawing Review (PTO-948)
`3. D Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date __
`4. D Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`5. D Notice of Informal Patent Application
`6. D Interview Summary (PTO-413),
`Paper No./Mail Date __ .
`7. D Examiner's AmendmenUComment
`
`8. 18] Examiner's Statement of Reasons for Allowance
`9. D Other __ .
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-06)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20100115
`
`Appx. 5
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 6 of 27 PageID 390
`
`Application/Control Number: 11/652,356
`Art Unit: 2162
`
`Page 2
`
`DETAILED ACTION
`
`Amendment submitted July 14, 2009 has been considered by examiner. Claims
`
`1-7 and 15-21 are pending.
`
`ALLOWANCE
`
`1.
`
`Claims 1-7 and 15-21 are allowed over the prior art made of record.
`
`2.
`
`The following is an examiner's statement of reasons for allowance:
`
`The Examiner's cited prior art as well as the prior art available prior to the
`
`filing date deals with meta tags, such as a "noindex" tag, which tell a search
`
`engine crawler to ignore a certain section of a web page. Once the crawler
`
`ignores a section, it does not take the ignored section into consideration for
`
`ranking purposes.
`
`However, the Claims of the instant application claim reading the ignored
`
`( or the "noindex") section and using that section for purposes of ranking the web
`
`page. But, the Claims do not index the section containing the command to ignore
`
`the specified section. It only uses that section for ranking purposes. This is
`
`demonstrated in Applicant Remarks in at least the table on Page 8. The reason
`
`for allowance lies specifically in the concept of using an ignored section only for
`
`purposes of ranking and not indexing.
`
`Appx. 6
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 7 of 27 PageID 391
`
`Application/Control Number: 11/652,356
`Art Unit: 2162
`
`Page 3
`
`As such, the cited prior art of record, Edlund et al (US Patent Application
`
`Publication 2003/0120654), Cutts (Handling noindex meta tags), and Kamholz et
`
`al (US Patent Application Publication 2005/0091580) in view of Applicant
`
`presented arguments in at least page 7-8 of Remarks filed 1-4-10 does not
`
`disclose, teach or suggest the claimed invention (in combination with all other
`
`features in the claims) with respect to Independent Claims 1 and 15.
`
`Any comments considered necessary by applicant must be submitted no
`
`later than the payment of the issue fee and, to avoid processing delays, should
`
`preferably accompany the issue fee. Such submissions should be clearly labeled
`
`"Comments on Statement of Reasons for Allowance."
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from
`
`the examiner should be directed to ALEX GOFMAN whose telephone number is
`
`(571)270-1072. The examiner can normally be reached on Mon-Fri 9am-3pm
`
`EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the
`
`examiner's supervisor, John Breene can be reached on (571)272-4107. The fax
`
`phone number for the organization where this application or proceeding is
`
`assigned is 571-273-8300.
`
`Appx. 7
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 8 of 27 PageID 392
`
`Application/Control Number: 11/652,356
`Art Unit: 2162
`
`Page 4
`
`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(cid:173)
`
`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(cid:173)
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`free). If you would like assistance from a USPTO Customer Service
`
`Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA) or 571-272-1000.
`
`Alex Gofman
`Examiner
`Art Unit 2162
`
`AG
`1-15-10
`
`/John Breene/
`Supervisory Patent Examiner, Art Unit 2162
`
`Appx. 8
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 9 of 27 PageID 393
`Docket No.: 50269-0884
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of:
`
`Confirmation No.: 3475
`
`Pri yank S. Garg, et al.
`
`Examiner: Alex N. Gofman
`
`Group Art Unit No.: 2162
`
`Serial No.: 11/652,356
`
`Filed: January 10, 2007
`
`For: METHOD FOR IMPROVING QUALITY OF
`SEARCH RESULTS BY A VOIDING
`INDEXING SECTIONS OF PAGES
`
`ViaEFS
`Commissioner for Patents
`Alexandria, VA 22313-1450
`
`Sir:
`
`RESPONSE TO OFFICE ACTION
`
`This is in response to the Final Office Action mailed November 9, 2009, the shortened
`
`statutory period for which runs until February 9, 2010.
`
`Amendments to the claims, and Remarks, are presented on separate sheets below.
`
`Claim amendments begin on page 2.
`
`Remarks begin on page 6.
`
`Y01905US00
`
`1
`
`Appx. 9
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 10 of 27 PageID 394
`Docket No.: 50269-0884
`
`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in the application:
`
`1.
`
`(Currently Amended) A method, comprising:
`
`ranking a plurality of documents recalled by a search engine for a query;
`
`wherein the plurality of documents contain certain documents, each document of said
`
`certain documents containing at least one section that is not used by said search
`
`engine for recall and one or more sections that are used by said search engine for
`
`recall;
`
`wherein ranking a plurality of documents includes ranking said plurality of documents
`
`based, at least in part, on the at least one section the one or more sections of said
`
`certain documents not used by said search engine to recall documents; and
`
`wherein the method is performed by one or more computing devices.
`
`2.
`
`(Currently Amended) The method of Claim 1, wherein said at least one section eR8--0f
`
`more sections of said certain documents not used by said search engine to recall documents are
`
`demarcated by a tag of an element having a name from a set of one or more names.
`
`3.
`
`(Original) The method of Claim 1, wherein at least one document of said certain
`
`documents does not comprise data that contains element tags.
`
`4.
`
`(Currently Amended) The method of Claim 1, further including said search engine
`
`generating data representing results of said query, wherein:
`
`said data includes an abstract describing each document of said plurality of documents;
`
`and
`
`Y01905US00
`
`2
`
`Appx. 10
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 11 of 27 PageID 395
`Docket No.: 50269-0884
`
`for each respective abstract of each document of said certain documents, said abstract
`
`excludes terms from the respective at least one section one or more sections not
`
`used by said search engine to recall said each document.
`
`5.
`
`(Original) The method of claim 1, said search engine using a search engine index to recall
`
`said plurality of documents; and wherein said search engine index does not index any term in
`
`said certain documents that is found only in one or more sections of said certain documents
`
`established as a no-recall section.
`
`6.
`
`(Original) The method of Claim 1, wherein ranking a plurality of documents recalled by a
`
`search engine for a query depends in part on a vector space model associated with each of said
`
`documents.
`
`7.
`
`(Original) The method of Claim 1, wherein ranking a plurality of documents recalled by a
`
`search engine for a query depends in part on a language model associated with each of said
`
`documents.
`
`Claims 8-14
`
`(canceled).
`
`15.
`
`(Currently Amended) A computer-readable storage medium that stores instructions
`
`which, when executed by one or more processors, cause performance of:
`
`ranking a plurality of documents recalled by a search engine for a query;
`
`wherein the plurality of documents contain certain documents, each document of said
`
`certain documents containing at least one section that is not used by said search
`
`engine for recall and one or more sections that are used by said search engine for
`
`recall; and
`
`Y01905US00
`
`3
`
`Appx. 11
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 12 of 27 PageID 396
`Docket No.: 50269-0884
`
`wherein ranking a plurality of documents includes ranking said plurality of documents
`
`based, at least in part, on the at least one section one Of more sections of said
`
`certain documents not used by said search engine to recall documents.
`
`16.
`
`(Currently Amended) The computer-readable storage medium of Claim 15 wherein said
`
`at least one section one Of morn sections of said certain documents not used by said search
`
`engine to recall documents are demarcated by a tag of an element having a name from a set of
`
`one or more names.
`
`17.
`
`(Previously Presented) The computer-readable storage medium of Claim 15 wherein at
`
`least one document of said certain documents does not comprise data that contains element tags.
`
`18.
`
`(Currently Amended) The computer-readable storage medium of Claim 15 further
`
`comprising instructions for including said search engine generating data representing results of
`
`said query, wherein:
`
`said data includes an abstract describing each document of said plurality of documents;
`
`and
`
`for each respective abstract of each document of said certain documents, said abstract
`
`excludes terms from the respective at least one section one Of morn sections not
`
`used by said search engine to recall said each document.
`
`19.
`
`(Previously Presented) The computer-readable storage medium of Claim 15, said search
`
`engine using a search engine index to recall said plurality of documents; and wherein said search
`
`engine index does not index any term in said certain documents that is found only in one or more
`
`sections of said certain documents established as a no-recall section.
`
`Y01905US00
`
`4
`
`Appx. 12
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 13 of 27 PageID 397
`Docket No.: 50269-0884
`
`20.
`
`(Previously Presented) The computer-readable storage medium of Claim 15, wherein
`
`ranking a plurality of documents recalled by a search engine for a query depends in part on a
`
`vector space model associated with each of said documents.
`
`21.
`
`(Previously Presented) The computer-readable storage medium of Claim 15, wherein
`
`ranking a plurality of documents recalled by a search engine for a query depends in part on a
`
`language model associated with each of said documents.
`
`Y01905US00
`
`5
`
`Appx. 13
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 14 of 27 PageID 398
`Docket No.: 50269-0884
`
`REMARKS
`
`Claims 1, 2, 4, 15, 16 and 18 have been amended. Thus, claims 1-7 and 15-21 are
`
`currently pending in the application. The amendments to the claims as indicated herein do not
`
`add any new matter to this application. Furthermore, amendments made to the claims as
`
`indicated herein have been made to exclusively improve readability and clarity of the claims and
`
`not for the purpose of overcoming alleged prior art. Reconsideration of the application in view
`
`of the above amendments and the following remarks is respectfully requested.
`
`EXAMINER INTERVIEW
`
`Examiner is thanked for the opportunity to discuss the present application in the
`
`interview of December 9, 2009. Participants in the interview included Page Ponsford, Marcel
`
`Bingham and Examiner Gofman. Mr. Ponsford and Mr. Bingham pointed out several distinctions
`
`between the cited references and Claim 1 of the present application. Examiner Gofman
`
`responded by indicating that the use of data within noindex metatags for recall or ranking is
`
`contrary to industry standards and is generally frowned upon.
`
`CLAIM AMENDMENTS
`
`Claims 1, 2, 4, 15, 16 and 18 are voluntarily amended to correct the antecedent basis in
`
`the claims. For example, present Claim 1 recites "wherein ranking a plurality of documents
`
`includes ranking said plurality of documents based, at least in part, on the at least one section of
`
`said certain documents not used by said search engine to recall documents." Claims 2, 4, 15, 16
`
`and 18 are amended to include similar recitations.
`
`CLAIMS 1, 3-7, 15 AND 17-21-EDLUND IN VIEW OF CUTTS
`
`In the Office Action, the Examiner rejected claims 1, 3-14, 15 and 17-21 under 35 U.S.C.
`
`§ 103(a) as allegedly unpatentable over Edlund et al. (U.S. Patent Application Publication
`
`Y01905US00
`
`6
`
`Appx. 14
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 15 of 27 PageID 399
`Docket No.: 50269-0884
`
`2003/0120654) in view of Cutts (Handling noindex meta tags). These rejections are respectfully
`
`traversed.
`
`Edlund and Cutts, taken individually or in combination, fail to suggest or describe,
`
`"ranking a plurality of documents includes ranking said plurality of documents based, at least in
`
`part, on the one or more sections of said certain documents not used by said search engine to
`
`recall documents," as recited by Claim 1. The Examiner admits, and Applicant agrees, that
`
`Edlund does not contain such teaching. Instead, the Examiner cites Cutts pages 1-2 for
`
`describing this feature. Respectfully, this is incorrect.
`
`Cutts describes an experiment to determine how various search engines handle noindex
`
`meta tags. In summary, Cutts describes that search engines either 1) use the data contained
`
`within a noindex meta tag for the purposes of both recall and ranking, or 2) do not use the data
`
`contained within a noindex meta tag for the purposes of both recall and ranking. In this way, the
`
`search engines discussed in Cutts make no distinction between the use of noindex data for recall
`
`and ranking.
`
`By contrast, Claim 1 recites "ranking a plurality of documents includes ranking said
`
`plurality of documents based, at least in part, on the one or more sections of said certain
`
`documents not used by said search engine to recall documents." Thus, Claim 1 teaches
`
`ignoring the data contained within a noindex metatag for the purposes of recall but using the data
`
`contained within a noindex metatag for the purposes of ranking. Examiner expressly indicated in
`
`the interview of December 9, 2009, that the approach described in Claim 1 is contrary to
`
`industry standards and generally frowned upon by the industry. Thus, Claim 1 recites a
`
`counterintuitive method for ranking documents recalled by a search engine
`
`Y01905US00
`
`7
`
`Appx. 15
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 16 of 27 PageID 400
`Docket No.: 50269-0884
`
`Moreover, Cutts fails to describe treating data in the noindex section differently for
`
`recall purposes than ranking purposes, as recited in Claim 1. Instead, Cutts describes treating
`
`data in the noindex section the same for both recall and ranking purposes. The table below
`
`illustrates the differences in the treatment of the data within a noindex tag for the search engines
`
`tested by Cutts and the treatment of the noindex sections recited by Claim 1.
`
`Search Engine
`
`Use noindex data for
`recall?
`
`Use noindex data for
`ranking?
`
`Google
`Ask
`MSN
`Yahoo!
`Claim 1
`
`Difference
`Comparison
`No/No
`No/No
`Yes/Yes
`Yes/Yes
`No/Yes
`
`As illustrated by the table above, none of the search engines tested by Cutts ignore ( do
`
`not use) the noindex data for recall and use the noindex data for ranking, as taught by Claim 1.
`
`Further, Cutts fails to describe such a treatment of the noindex data anywhere else. Hence,
`
`because Cutts fails to describe "ranking a plurality of documents includes ranking said plurality
`
`of documents based, at least in part, on the one or more sections of said certain documents not
`
`used by said search engine to recall documents," as recited by Claim 1, the combination of
`
`Edlund and Cutts fails to describe this feature of Claim 1.
`
`Accordingly, independent Claim 1 is in condition for allowance for at least the reasons
`
`described above. Independent Claim 15 recites similar, although not identical, features as Claim
`
`1 and is in condition for allowance for at least the same reasons as Claim 1.
`
`Claims 3-14 and 17-21 depend, directly or indirectly, from Claims 1 and 15 discussed
`
`above and include, by dependency, the features identified above that distinguish Claims 1 and 15
`
`from Edlund and Cutts. Therefore, Claims 3-14 and 17-21 are in condition for allowance for, at
`
`least, the same reasons as stated above for Claims 1 and 15 from which they depend.
`
`Y01905US00
`
`8
`
`Appx. 16
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 17 of 27 PageID 401
`Docket No.: 50269-0884
`
`CLAIMS 2 AND 16 - EDLUND IN VIEW OF CUTTS AND KAMHOLZ
`
`The Examiner rejected Claim 2 under 35 U.S.C. § 103(a) as allegedly unpatentable over
`
`Edlund in view of Cutts, and further in view of Kamholz et al. (U.S. Patent Application
`
`Publication 2005/0091580). These rejections are respectfully traversed.
`
`Claims 2 and 16 depend, directly or indirectly, from Claims 1 and 15 discussed above
`
`and include, by dependency, the features identified above that distinguish Claims 1 and 15 from
`
`Edlund and Cutts. Moreover, Kamholz fails to describe the features of Claims 1 and 15,
`
`discussed above, that Edlund and Cutts fail to describe. Therefore, Claims 2 and 16 are in
`
`condition for allowance for, at least, the same reasons as stated above for Claims 1 and 15 from
`
`which they depend.
`
`CONCLUSION
`
`For the reasons set forth above, Applicant respectfully submits that all pending claims are
`
`patentable over the art of record, including the art cited but not applied. Accordingly, allowance
`
`of all claims is hereby respectfully solicited.
`
`The Examiner is respectfully requested to contact the undersigned by telephone if it is
`
`believed that such contact would further the examination of the present application.
`
`Respectfully submitted,
`
`HICKMAN PALERMO TRUONG & BECKER LLP
`
`Dated: January 4, 2010
`
`/MarcelKBingham#42327 /
`Marcel K. Bingham
`Reg. No. 42,327
`
`2055 Gateway Place, Suite 550
`San Jose, CA 95110
`Telephone No.: (408) 414-1080
`Facsimile No.: (408) 414-1076
`
`Y01905US00
`
`9
`
`Appx. 17
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 18 of 27 PageID 402
`
`
`
`
`
`Exhibit B
`
`Appx. 18
`
`

`

`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 19 of 27 PageID 403
`UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`118844
`7590
`06/29/2017
`Pillsbury Winthrop Shaw Pittman LLP - Yahoo!
`(Yahoo Inc.)
`P.O. Box 10500
`McLean, VA 22102
`
`EXAMINER
`
`STEVENS, ROBERT
`
`ART UNIT
`
`PAPER NUMBER
`
`2164
`
`DATE MAILED: 06/29/2017
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/435,660
`
`04/14/2015
`
`Ming Chang
`
`022994-0438237
`
`3978
`
`TITLE OF INVENTION: METHOD AND SYSTEM FOR PROVIDING A SEARCH RESULT
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$960
`
`$0
`
`$0
`
`$960
`
`09/29/2017
`
`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
`IF AN ISSUE FEE HAS
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`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.
`
`IL PART B - FEE(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
`
`Appx. 19
`
`

`

`PART B - FEE(S) TRANSMITTAL
`Case 3:22-cv-02868-S Document 22 Filed 03/17/23 Page 20 of 27 PageID 404
`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
`(571)-273-2885
`
`or Fax
`
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks I 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 I, 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 I for any change of address)
`
`118844
`7590
`06/29/2017
`Pillsbury Winthrop Shaw Pittman LLP - Yahoo!
`(Yahoo Inc.)
`P.O. Box 10500
`McLean, VA 22102
`
`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.
`
`14/435,660
`
`04/14/2015
`
`Ming Chang
`
`022994-0438237
`
`3978
`
`TITLE OF INVENTION: METHOD AND SYSTEM FOR PROVIDING A SEARCH RESULT
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$960
`
`$0
`
`$0
`
`$960
`
`09/29/2017
`
`EXAMINER
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`STEVENS, ROBERT
`
`2164
`
`707-706000
`
`I. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`0 Change of correspondence address ( or Change of Correspondence
`Address form PTO/SB/122) attached.
`0 "Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Number is required.
`
`2. For printing on the patent front page, list
`(I) The names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) The name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name will be printed.
`
`2 ______________ _
`
`3 ______________ _
`
`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) : 0 Individual O Corporation or other private group entity O Government
`
`4a. The following fee(s) are submitted:
`0 Issue Fee
`0 Publication Fee (No small entity discount permitted)
`0 Advance Order - # of Copies _________ _
`
`4b. Payment ofFee(s): (Please first reapply any previously paid issue fee shown above)
`0 A check is enclosed.
`0 Payment by credit card. Form PTO-2038 is attached.
`0 The director is hereby authorized to charge the required fee( s ), any deficiency, or credits any
`( enclose an extra copy of this form).
`overpayment, to Deposit Account Number
`
`5. Change in Entity Status (from status indicated above)
`0 Applicant certifying micro entity status. See 37 CFR 1.29
`0 Applicant asserting small entity status. See 37 CFR 1.27
`0 Applicant changing to regular undiscounted fee