`
`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.
`
`13/941,502
`
`TILING DATE
`
`07/14/2013
`
`TIRST NAMED INVENTOR
`
`ATTORNEYDOCKET NO.
`
`CONTIRMATION NO.
`
`Robert Paul Morris
`
`PMORO148A
`
`8208
`
`The Caldwell Firm, LLC
`PO Box 59655
`Dept. SVIPGP
`Dallas, TX 75229
`
`MCLEOD, MARSHALL M
`
`2454
`
`NOTIFICATION DATE
`
`08/25/2015
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`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):
`pcaldwell @ thecaldwellfirm.com
`Icaldwell@ thecaldwellfirm.com
`
`PTOT.-90A (Rev. 04/07)
`
`Page 1 of 138
`
`GOOGLEEXHIBIT 1065
`
`Page 1 of 138
`
`GOOGLE EXHIBIT 1065
`
`

`

`
`
` . we . 13/941 ,502 MORRIS, ROBERT PAUL
`
`
`
`
`Examiner-Initiated Interview Summary
`_
`_
`Examiner
`Art Unit
`
`Application No.
`
`Applicant(s)
`
`MARSHALL MCLEOD
`
`2454
`
`
`
`
`
` U.S. Patent and Trademark Office
`
`All participants (applicant, applicant’s representative, PTO personnel):
`
`(1) MARSHALL MCLEOD.
`
`(2)__.
`
`Date of Interview: 17 August 2015.
`
`Type:
`
`([] Video Conference
`Telephonic
`CJ Personal[copy given to:[] applicant
`
`(3).
`
`(4).
`
`[J applicant's representative]
`
`Exhibit shown or demonstration conducted:
`If Yes, brief description:
`
`[[] Yes
`
`LC] No.
`
`(101 [112 [102 (103 (others
`Issues Discussed
`(For each of the checked box(es) above, please describe belowthe issue and detailed description of the discussion)
`
`Claim(s) discussed:
`
`Identification of prior art discussed:
`
`Substance of Interview
`(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics mayinclude: identification or clarification of a
`reference or a portion thereof, claim interpretation, proposed amendments, arguments of any applied referencesetc...)
`
`The examinercalled and left a message for applicant's attorney who did not return the examiner's call.
`
`Applicant recordation instructions:
`
`It is not necessary for applicant to provide a separate record of the substanceofinterview.
`
`Examinerrecordation instructions: Examiners must summarize the substance of any interview of record. A complete and properrecordation of
`the substance of an interview should include the items listed in MPEP 713.04 for complete and proper recordation including the identification of the
`general thrust of each argumentor issue discussed, a generalindication of any other pertinent matters discussed regarding patentability and the
`general results or outcomeofthe interview, to include an indication as to whether or not agreement was reached on the issues raised.
`
`J Attachment
`
`PTOL-413B (Rev. 8/11/2010)
`
`Interview Summary
`
`Paper No. 20150819
`
`Page 2 of 138
`
`Page 2 of 138
`
`

`

`.
`Notice of Abandonment
`
`13/941 ,502
`Examiner
`
`MORRIS, ROBERT PAUL
`Art Unit
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`MARSHALL MCLEOD
`
`2454
`
`sting,
`
`This application is abandonedin view of:
`
`1. KX] Applicant's failure to timely file a proper reply to the Office letter mailed on 26 January 2015.
`(a) (A reply was received on
`(with a Certificate of Mailing or Transmission dated
`period for reply (including a total extension of time of
`month(s)) which expired on
`(b) JA proposedreply was received on
`, but it does not constitute a proper reply under 37 CFR 1.113 to the final rejection.
`(A proper reply under 37 CFR 1.113 to a final rejection consists only of: (1) a timely filed amendment which places the
`application in condition for allowance; (2) a timely filed Notice of Appeal (with appeal fee); or (3) if this is utility or plant
`application, a timely filed Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. Note that RCEsare not
`permitted in design applications.)
`(c) DA reply was received on
`but it does not constitute a proper reply, or a bona fide attempt at a properreply, to the non-
`final rejection. See 37 CFR 1.85(a) and 1.111.
`(See explanation in box 7 below).
`(d)XJNo reply has been received.
`
`), which is after the expiration of the
`
`:
`
`3.00 Applicant's failure to timely file corrected drawings as required by, and within the three-month period setin, the Notice of
`Allowability (PTO-37).
`(a) J Proposed corrected drawings were received on
`after the expiration of the period for reply.
`(b) [] No corrected drawings have been received.
`
`(with a Certificate of Mailing or Transmission dated
`
`
`
`2. CF Applicant's failure to timely pay the required issue fee and publication fee, if applicable, within the statutory period of three months
`from the mailing date of the Notice of Allowance (PTOL-85).
`(with a Certificate of Mailing or Transmission dated
`(a) (J The issue fee and publication fee,
`if applicable, was received on
`), which is after the expiration of the statutory period for payment of the issue fee (and publication fee) set in the Notice of
`Allowance (PTOL-85).
`is due.
`is insufficient. A balance of $
`(b) [J The submitted fee of $
`The issue fee required by 37 CFR 1.18 is $
`. The publication fee, if required by 37 CFR 1.18(d), is $
`(c) FJ The issue fee and publication fee, if applicable, has not been received.
`
`), whichis
`
`4. (J The letter of express abandonmentwhichis signed by the attorney or agentof record or other party authorized under 37 CFR
`1.33(b). See 37 CFR 1.138(b).
`
`5. FJ The letter of express abandonmentwhichis signed by an attorney or agent(acting in a representative capacity under 37 CFR
`1.34) upon the filing of a continuing application.
`
`6. [] The decision by the Board of Patent Appeals and Interference rendered on
`of the decision has expired and there are no allowed claims.
`
`and becausethe period for seeking court review
`
`7. &] The reason(s) below:
`
` Please see attached PTO-413B
`
`‘Joseph E Avellino/
`Supervisory Patent Examiner, Art Unit 2454
`
`
`Petitions to revive under 37 CFR 1.137, or requests to withdraw the holding of abandonment under 37 CFR 1.181, should be promptly filed to minimize
`any negative effects on patent term.
`U.S. Patent and Trademark Office
`PTOL-1432 (Rev. 07-14)
`
`Notice of Abandonment
`
`Part of Paper No. 20150819
`
`Page 3 of 138
`
`Page 3 of 138
`
`

`

`
`
` . we . 13/941 ,502 MORRIS, ROBERT PAUL
`
`
`
`
`Examiner-Initiated Interview Summary
`_
`_
`Examiner
`Art Unit
`
`Application No.
`
`Applicant(s)
`
`MARSHALL MCLEOD
`
`2454
`
`
`
`
`
` U.S. Patent and Trademark Office
`
`All participants (applicant, applicant’s representative, PTO personnel):
`
`(1) MARSHALL MCLEOD.
`
`(2)__.
`
`Date of Interview: 17 August 2015.
`
`Type:
`
`([] Video Conference
`Telephonic
`CJ Personal[copy given to:[] applicant
`
`(3).
`
`(4).
`
`[J applicant's representative]
`
`Exhibit shown or demonstration conducted:
`If Yes, brief description:
`
`[[] Yes
`
`LC] No.
`
`(101 [112 [102 (103 (others
`Issues Discussed
`(For each of the checked box(es) above, please describe belowthe issue and detailed description of the discussion)
`
`Claim(s) discussed:
`
`Identification of prior art discussed:
`
`Substance of Interview
`(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics mayinclude: identification or clarification of a
`reference or a portion thereof, claim interpretation, proposed amendments, arguments of any applied referencesetc...)
`
`The examinercalled and left a message for applicant's attorney who did not return the examiner's call.
`
`Applicant recordation instructions:
`
`It is not necessary for applicant to provide a separate record of the substanceofinterview.
`
`Examinerrecordation instructions: Examiners must summarize the substance of any interview of record. A complete and properrecordation of
`the substance of an interview should include the items listed in MPEP 713.04 for complete and proper recordation including the identification of the
`general thrust of each argumentor issue discussed, a generalindication of any other pertinent matters discussed regarding patentability and the
`general results or outcomeofthe interview, to include an indication as to whether or not agreement was reached on the issues raised.
`
`J Attachment
`
`PTOL-413B (Rev. 8/11/2010)
`
`Interview Summary
`
`Paper No. 20150819
`
`Page 4 of 138
`
`Page 4 of 138
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`COMMISSIONER FOR PATENTS
`P.O.BOX 1450
`-
`ALEXANDRIA VA 22313-1451
`
`PRESORTED
`FIRST-CLASS MAIL
`U.S. POSTAGE PAID
`POSTEDIGITAL
`NNNNN
`
`The Caldwell Firm, LLC
`PO Box 59655
`Dept. SVIPGP
`Dallas, TX 75229
`
`
`
`Courtesy Reminderfor
`Application Serial No: 13/941,502
`Attorney Docket No: PMORO148A
`Customer Number: 92045
`Date of Electronic Notification: 01/26/2015
`
`This is a courtesy reminder that new correspondenceis available for this
`application. If you have not done so already, please review the
`correspondence. The official date of notification of the outgoing
`correspondencewill be indicated on the form PTOL-90 accompanying the
`correspondence.
`
`An email notification regarding the correspondence wassentto the following
`email address(es) associated with your customer number:
`pcaldwell@thecaldwellfirm.com
`Icaldwell@thecaldwellfirm.com
`
`To view your correspondenceonline or update your email addresses, please
`visit us anytime at https://sportal.uspto.gov/secure/myportal/privatepair.
`If you have any questions, please email the Electronic Business Center (EBC)
`at EBC@uspto.govor call 1-866-217-9197.
`
`Page 5 of 138
`
`Page 5 of 138
`
`

`

`
`
`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.
`
`13/941,502
`
`TILING DATE
`
`07/14/2013
`
`TIRST NAMED INVENTOR
`
`ATTORNEYDOCKET NO.
`
`CONTIRMATION NO.
`
`Robert Paul Morris
`
`PMORO148A
`
`8208
`
`The Caldwell Firm, LLC
`PO Box 59655
`Dept. SVIPGP
`Dallas, TX 75229
`
`MCLEOD, MARSHALL M
`
`2454
`
`01/26/2015
`
`PAPER NUMBER
`
`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):
`pcaldwell @ thecaldwellfirm.com
`Icaldwell@ thecaldwellfirm.com
`
`PTOT.-90A (Rev. 04/07)
`
`Page 6 of 138
`
`Page 6 of 138
`
`

`

`
`Application No.
`Applicant(s)
`
` 13/941 ,502 MORRIS, ROBERT PAUL
`Examiner
`Art Unit
`AIA(FirstInventorto File)
`Office Action Summary
`
`2454MARSHALL MCLEOD No
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`-
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- Failure to reply within the set or extended periodfor reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 GFR 1.704(b).
`
`In no event, however, may a reply be timelyfiled
`
`Status
`1) Responsive to communication(s) filed on 07/14/2013.
`LJAdeclaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)0] An election was made by the applicant in responseto a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)D1 Claim(s) 1-20 is/are pending in the application.
`5a) Of the above claim(s)__ is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-20 is/are rejected.
`8)L] Claim(s)__ is/are objected to.
`
`9\[] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, 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
`
`
`nito/Aanww. uspto.dov/ atenis/init_ events/ooh/index.js
`
`or send an inquiry to PPHieedback@uspto. doy.
`
`
`
`
`
`Application Papers
`10)[] The specification is objected to by the Examiner.
`11)] The drawing(s) filed on 07/14/2013 is/are: a)BX] accepted or b)[] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacementdrawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a) All) Some** c)L Noneofthe:
`1.1] Certified copies of the priority documents have been received.
`2.1 Certified copies of the priority documents have been received in Application No.
`3.0] Copies ofthe certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PGT Rule 17.2(a)).
`*™ See the attached detailed Office action for a list of the certified copies not received.
`
`1)
`
` Attachment(s)
`
`3) EC Interview Summary (PTO-413)
`Notice of References Cited (PTO-892)
`4
`Paper No(s)/Mail Date.
`:
`.
`4) Ol Other:
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 07/14/2013.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20150111
`
`Page 7 of 138
`
`Page 7 of 138
`
`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`The present application is being examined underthe pre-AlA first to invent
`
`provisions. Claims 1-20 are pending examination for this application.
`
`Claim Objections
`
`2.
`
`Claims 6 and 15 are objected to becauseof the following informalities: Each
`
`claim begins with a capital letter and ends with a period. Periods may not be used
`
`elsewherein the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQe2d
`
`1211 (D.D.C. 1995). See MPEP 608.01(m) Form of Claims. Appropriate correction is
`
`required.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or moreclaims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`4.
`
`Claims 11, 18 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112
`
`(pre-AlA), second paragraph, as being indefinite for failing to particularly point
`
`out and distinctly claim the subject matter which the inventor or a joint inventor,
`
`or for pre-AlA the applicant regards as the invention.
`
`Page 8 of 138
`
`Page 8 of 138
`
`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 3
`
`5.
`
`With respect to claims 11, 18 and 20 applicant’s use the term “...receiving, for
`
`identifying a first command. . .” whichis indefinite.
`
`It is unclear as to what is being
`
`received. As such, appropriate correction or clarification is required.
`
`Double Patenting
`
`6.
`
`A rejection based on double patenting of the “same invention”typefinds its
`
`support in the language of 35 U.S.C. 101 which states that “whoever invents or
`
`discovers any new and useful process... may obtain a patent therefor...” (Emphasis
`
`added). Thus, the term “same invention,” in this context, means an invention drawn to
`
`identical subject matter. See Miller v. Eagle Mig. Co., 151 U.S. 186 (1894); In re Vogel,
`
`422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ
`
`330 (CCPA 1957).
`
`The nonstatutory double patenting rejection is based onajudicially created
`
`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the claims at issue are not identical, but at least
`
`one examined application claim is not patentably distinct from the reference claim(s)
`
`because the examined application claim is either anticipated by, or would have been
`
`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQe2d
`
`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
`
`1993); In re Longi, 759 F.2d 887, 225 USPQ 645(Fed. Cir. 1985); In re Van Ornum,
`
`Page 9 of 138
`
`Page 9 of 138
`
`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 4
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); and /n re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
`
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`
`double patenting ground provided the reference application or patent either is shown to
`
`be commonly ownedwith this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The USPTOinternet Website contains terminal disclaimer forms which may be
`
`used. Pleasevisit http:/Wwww.uspto.gov/forms/. Thefiling date of the application will
`
`determine what form should be used. A web-based eTerminal Disclaimer maybefilled
`
`out completely online using web-screens. An eTerminal Disclaimer that meetsall
`
`requirements is auto-processed and approved immediately upon submission. For more
`
`information about eTerminal Disclaimers, refer to
`
`http://www. uspto.gov/patents/process/file/efs/guidance/eT D-info-|.jsp.
`
`7.
`
`Claims 1, 2, 11, 14, 17-20 are rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 8, 9 and 19 of U.S. Patent No.
`
`8,577,958 B2. Although the claims at issue are notidentical, they are not
`
`patentably distinct from each other because:
`
`Claims 1, 17 and 19 of the instant
`
`Claims 1, 4 and 5 of Patent No.
`
`Page 10 of 138
`
`Page 10 of 138
`
`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`
`Page 5
`
`application
`
`A method comprising: sending, by a
`
`server via a network to a user agent,
`
`a first resource; in response to
`
`sending thefirst resource, receiving
`
`from the user agent a first message
`
`identifying, based on at least oneof
`
`a first instruction sent in the first
`
`resource and a first markup
`
`element, in the first resource, a non-
`
`returnable first command, wherein
`
`the markup first markup element is
`
`in a first markup language; and
`
`processing the first command
`
`including sending no command
`
`responsefor the non-returnable first
`
`commandto the user agent.
`
`
`
`Page 11 of 138
`
` 8,577,958 B2
`
`A methodfor processing a non-
`
`returnable command response based on
`
`a markup element, the method
`
`comprising: sending, via a network to a
`
`user agent node,a first resource
`
`including a no-return markup element
`
`for identifying no-return-request
`
`information for a first command
`
`identified based on the first resource; in
`
`responseto sending thefirst resource,
`
`receiving a first request message
`
`identifying, based on thefirst resource
`
`based onat least one of an instruction
`
`sent in the first resource and a markup
`
`element in the first resource,the first
`
`command, requested by a user agentin
`
`the user agent node,and including the
`
`no-return-request information specified
`
`to identify the first command as non-
`
`returnable; and processing thefirst
`
`commandincluding, in responseto
`
`
`
`Page 11 of 138
`
`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`
`Page 6
`
`
`
`
`
`Claims 11, 18 and 20 of the instant
`
`application
`
`A method comprising: receiving, for
`
`identifying a first command to a
`
`server by a user agent, a first
`
`resource; determining, based on at
`
`least one ofa first instruction
`
`includedin the first resource and a
`
`first markup elementin thefirst
`
`resource,that the first commandis
`
`non-returnable indicating that no
`
`command responsefor thefirst
`
`commandis to be sentfor delivery
`
`from the server to the user agent;
`
`and sending, by the user agent, a
`
`first messagethat identifies the first
`
`command as non-returnable.
`
`receiving the no-return-request
`
`information, sending no command
`
`response, for the non-returnable first
`
`command, for delivery to the user agent.
`
`Claims 8, 9 and 19 of Patent No.
`
`8,577,958 B2
`
`A methodfor processing a non-
`
`returnable command response based on
`
`a markup element, the method
`
`comprising: receiving, for identifying a
`
`first command to a server by a user
`
`agent, a first resource including a no-
`
`return markup element; determining
`
`based on the no-return markup element
`
`that the first commandis non-returnable
`
`indicating that no command response
`
`for the first commandis to be sent for
`
`delivery from the server to the user
`
`agent; and setting, in response to the
`
`determination, a no-return indicator in a
`
`data storage media to configure a node ina
`
`network path including the user agent and
`
`
`
`Page 12 of 138
`
`Page 12 of 138
`
`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`
`Page 7
`
`the server for sending no command
`
`responseforthe first commandfor delivery
`
`from the serverto the user agent; sending
`
`a first request messageidentifying,
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`based on the first resource based on at
`
`least one of an instruction sent in the
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`first resource and a markup element in
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`the first resource, the first command for
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`delivery to the server.
`
`Claim 10 of Patent No. 8,577,958 B2
`
`Claims 2 and 14 of the instant
`
`application
`
`
`
`The methodof claim 1 wherein the
`
`The method of claim 9 wherein the no-
`
`first command is identified as non-
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`return-request information is specified
`
`returnable based on at least one of
`
`based on at least one of a MIME type
`
`a MIME type identifier in the first
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`and a request message method token.
`
`message and a method token in the
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`first message.
`
`
`
`
`
`
`
`8.
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`Claims 3-10, 12-13 and 15-16 are rejected for the same reasons as claim 11
`
`above and for being dependent upona rejected base claim.
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`Page 13 of 138
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`Page 13 of 138
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`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 8
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`Claim Rejections - 35 USC § 102
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`9.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections under this section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`10.
`
`Claims 1-5, 7, 17 and 19 are rejected under pre-AlA 35 U.S.C. 102(b) as
`
`being anticipated by Morris (Publication number US 20080077653 A1).
`
`11. With respect to claims 1, 17 and 19 Morris disclose, a method comprising:
`
`sending, by a server via a network to a user agent, a first resource (Paragraph [0028];
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`"_..the web server will send the resource requested by the get message...”); in response
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`to sending the first resource, receiving from the user agent a first messageidentifying,
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`based on at least one ofafirst instruction sent in the first resource andafirst markup
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`element, in the first resource, a non-returnable first command, wherein the markup first
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`markup elementis in a first markup language (Paragraph [0049]); and processing the
`
`first command including sending no command responsefor the non-returnable first
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`command to the user agent (Paragraph [0037]).
`
`12. With respect to claim 2 Morris disclose, wherein the first commandis identified as
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`non-returnable based on at least one of a MIME typeidentifier in the first message and
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`a method token in the first message (Paragraph [0021)).
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`Page 14 of 138
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`Page 14 of 138
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`

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`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 9
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`13.|With respect to claim 3 Morris disclose, wherein the at least one of the MIME
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`type identifier and the methodtoken is includedin the first message based on the at
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`least one of the first instruction and the first markup element (Paragraph [0022]; “...the
`
`examiner is interpreting the content handler as the methodtokeni.e. “how to handle
`
`the message and its content”).
`
`14. With respect to claim 4 Morris disclose, wherein the MIME type identified defines
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`a content type processed by the serverincluding sending no command responsefor the
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`first command to the user agent (Paragraph [0021]; i.e. ...distributes the data to the
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`content handler associated with the identified content type...).
`
`15. With respect to claim 5 Morris disclose, wherein the at least one ofthe first
`
`instruction and the first markup element indicates at least one of that no command
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`responsefor the first command is to be generated and that no response message for
`
`the first message is to be transmitted (Paragraph [0037]; i.e. ...an indicator that no
`
`updates are available).
`
`16. With respect to claim 7 Morris disclose, wherein the first markup elementis
`
`represented via an output device (Paragraph [0032]) by at least one of a hyperlink user
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`interface element (Paragraph [0033]), an event markup element, a form user interface
`
`element, and by an input user interface element selectable by a user to send the first
`
`Page 15 of 138
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`Page 15 of 138
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`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 10
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`command to the server without waiting for a command responsefor the first command
`
`(Paragraphs [0032]-[0033]).
`
`17.—The following is a quotation of pre-AlA 35 U.S.C. 103(a) which forms the basis
`
`Claim Rejections - 35 USC § 103
`
`for all obviousnessrejections setforth 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 ofthis 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 atthe 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.
`
`18.
`
`Claims 8-11, 13-16, 18 and 20 are rejected under pre-AlA 35 U.S.C. 103(a) as
`
`being unpatentable over Morris in view of Morris (Publication number US
`
`20090144753 A1), hereinafter Morris 2.
`
`19. With respect to claim 8 Morris disclose, wherein sending no command response
`
`includes: identifying a duration associated with the first command (Paragraph [0055];
`
`i.e. timer).
`
`Morris does not disclose determining that a condition based on the duration is met; and
`
`sending no command response, in responseto determining that the condition is met.
`
`Page 16 of 138
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`Page 16 of 138
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`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 11
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`However, Morris 2 discloses determining that a condition based on the duration is met
`
`(Paragraph [0130]); and sending no commandresponse, in responseto determining
`
`that the condition is met (Paragraph [0130)]).
`
`lt would have been obvious to a person having ordinary skill in the art at the time of the
`
`invention to modify the teachings of Morris with the teachings of Morris 2 in order to
`
`provide updated content in a markup language-based resource (Morris 2; paragraph
`
`[0007}).
`
`20. With respect to claims 9 and 16 the combined teachings of Morris and Morris 2
`
`disclose wherein the first message is an asynchronous message (Morris 2; Paragraph
`
`[0082]; i.e. ...the resource can be sent in an asynchronous message to the ...).
`
`21. With respect to claim 10 the combined teachings of Morris and Morris 2 disclose
`
`wherein the first markup element includes at least one of a markup element attribute
`
`identifier, a markup element attribute value, and a markup element tag that identifies the
`
`first command as non-returnable (Morris 2; Paragraph [0021)).
`
`22. With respect to claims 11, 18 and 20 the combined teachings of Morris and
`
`Morris 2 disclose a method comprising: receiving, for identifying a first command to a
`
`server by a user agent, a first resource (Morris; Paragraph [0028]); determining, based
`
`on at least one ofafirst instruction includedin the first resource andafirst markup
`
`Page 17 of 138
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`Page 17 of 138
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`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 12
`
`element in the first resource, that the first commandis non-returnable indicating that no
`
`command responsefor the first commandis to be sent for delivery from the server to
`
`the user agent (Morris 2; Claim 1); and sending, by the user agent, a first message that
`
`identifies the first command as non-returnable (Morris; Paragraph [0037)).
`
`23. With respect to claim 13 the combined teachings of Morris and Morris 2 disclose
`
`wherein the first instruction is included in setting the no-return indicator (Morris 2;
`
`Paragraph [0098)).
`
`24. With respect to claim 14 the combined teachings of Morris and Morris 2 disclose
`
`wherein the first command is identified as non-returnable via at least one of a MIME
`
`type identifier in the first message and a methodtokenin the first message (Morris;
`
`paragraph [0021]).
`
`25. With respect to claim 14 the combined teachings of Morris and Morris 2 disclose
`
`wherein determining the first command is non-returnable includes determining the first
`
`command is non-returnable based on a userinput detected corresponding to a
`
`representation of the first markup element in a presentation of at least a portion of the
`
`first resource presented via an output device (Morris; paragraph [0056)).
`
`Page 18 of 138
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`Page 18 of 138
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`

`

`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 13
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`Allowable Subject Matter
`
`26.
`
`Claims 6 and 12 are objected to as being dependent upon a rejected base claim,
`
`but would be allowable if rewritten in independent form including all of the limitations of
`
`the base claim and anyintervening claims.
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MARSHALL MCLEOD whosetelephone number is
`
`(571)270-3808. The examiner can normally be reached on Monday - Thursday 6:30
`
`a.m-4:00 p.m..
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, JOSEPH AVELLINO can be reached on (571) 272-3905. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Page 19 of 138
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`Page 19 of 138
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`

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`Application/Control Number: 13/941 ,502
`Art Unit: 2454
`
`Page 14
`
`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 moreinformation 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). 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 GANADA)or 571-272-1000.
`
`/M. M./
`Examiner, Art Unit 2454
`1/12/2015
`
`/Joseph E Avellino/
`
`Supervisory Patent Examiner, Art Unit 2454
`
`Page 20 of 138
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`Page 20 of 138
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`

`

`Application/Control No.
`
`13/941,502
`
`MARSHALL MCLEOD
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`MORRIS, ROBERT PAUL
`Art Unit
`2454
`
`Page 1 of 1
`
`Notice of References Cited Examiner
`
`PePctus *A copyofthis reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`
`J+||conantatentinverincode|anevewy|Nameasco|
`
`Document Number
`Date
`
`
`|*|a|US-2008/0077653US-2008/0077653