Google, Inc. v. Eolas Technologies Inc. et al

Filing 1

COMPLAINT against Eolas Technologies Incorporated. The Regents of the University of California. Filed byGoogle, Inc.(Filing fee $400.00, receipt number 0971-8262256.). (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Civil Cover Sheet)(Mitro, Keith) (Filed on 12/30/2013) Modified on 12/31/2013 (ha, COURT STAFF). Modified on 1/3/2014 (jlmS, COURT STAFF).

Exhibit J

UNITED STA I ES PA PENT 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.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

11/586,918

10/26/2006

Michael D. Doyle

006-1-6

2537

30080

7590

06/22/2010

LAW OFFICE OF CHARLES E. KRUEGER
P.O. BOX 5607
WALNUT CREEK, CA 94596-1607

EXAMINER
DONAGHUE, LARRY D
ART UNIT

PAPER NUMBER

2454

MAIL DATE

DELIVERY MODE

06/22/2010

PAPER

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.

PTOL-90A (Rev. 04/07)

Application No.

Applicant(s)

11/586,918
Examiner

Art Unit

Larry Donaghue

Office Action Summary

DOYLE ET AL.

2454

-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --

Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
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 period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status
1)u Responsive to communication(s) filed on
2a)u This action is FINAL.

.

2b)Z This action is non-final.

3)u Since this application is in condition for allowance except for 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
4)Z Claim(s) 40-67 is/are pending in the application.
4a) Of the above claim(s)
5)0 Claim(s)

is/are withdrawn from consideration.

is/are allowed.

6)Z Claim(s) 40-67 is/are rejected.
7)0 Claim(s)

is/are objected to.

8)u Claim(s)

are subject to restriction and/or election requirement.

Application Papers
9)0 The specification is objected to by the Examiner.
10)0 The drawing(s) filed on

is/are: a)u accepted or bElobjected 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).
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. Note the attached Office Action or form PTO-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).
b)E1Some * c)u None of:
1.0 Certified copies of the priority documents have been received.
2.0 Certified 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) Z Notice of References Cited (PTO-892)
2) u Notice of Draftsperson's Patent Drawing Review (PTO-948)
3) Z Information Disclosure Statement(s) (PTO/SB/08)
Paper No(s)/Mail Date 6/22/07,4/7/08.

4) u Interview Summary (PTO-413)
Paper No(s)/Mail Date.
5) u Notice of Informal Patent Application
6) u Other:

U.S. Patent and Trademark Office

PTOL-326 (Rev. 08-06)

Office Action Summary

Part of Paper No./Mail Date 20100620

Application/Control Number: 11/586,918
Art Unit: 2454
1.

Claims 40-67 are presented for examination.
The nonstatutory double patenting rejection is based on a judicially

created doctrine grounded in 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 obviousness-type double patenting rejection is appropriate where
the conflicting claims 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 USPQ2d 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, 686
F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ
619 (CCPA 1970); and In 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 conflicting application or
patent either is shown to be commonly owned with this application, or claims an
invention made as a result of activities undertaken within the scope of a joint
research agreement.

Page 2

Application/Control Number: 11/586,918
Art Unit: 2454
Effective January 1, 1994, a registered attorney or agent of record may
sign a terminal disclaimer. A terminal disclaimer signed by the assignee must
fully comply with 37 CFR 3.73(b).
Claims 40-67 are rejected on the ground of nonstatutory double patenting
over claims 1-14 and 1-47 of U. S. Patent No. 5,838,906 and 7,599,985
respectfully since the claims, if allowed, would improperly extend the "right to
exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the
patent and is covered by the patent since the patent and the application are
claiming common subject matter, as follows: The Claim(s) of patents contain
every element of claim(s) of the instant application and as such anticipate(s)
claim(s) of the instant application.
"A later patent claim is not patentably distinct from an earlier patent claim if the
later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759
F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double
patenting because the claims at issue were obvious over claims in four prior art
patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998)
(affirming a holding of obviousness-type double patenting where a patent
application claim to a genus is anticipated by a patent claim to a species within
that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC.,
United States Court of Appeals for the Federal Circuit, ON PETITION FOR
REHEARING EN BANC (DECIDED: May 30, 2001).

Page 3

Application/Control Number: 11/586,918

Page 4

Art Unit: 2454
Furthermore, there is no apparent reason why applicant was prevented
from presenting claims corresponding to those of the instant application during
prosecution of the application which matured into a patent. See In re Schneller,
397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Any inquiry concerning this communication or earlier communications from
the examiner should be directed to Larry Donaghue whose telephone number is
[phone]. The examiner can normally be reached on Monday-Friday 9:00 6:00.
If attempts to reach the examiner by telephone are unsuccessful, the
examiner's supervisor, Nathan Flynn can be reached on 571-272-1915. 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://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR
system, contact the Electronic Business Center (EBC) at 866-217-9197 (tollfree). If you would like assistance from a USPTO Customer Service
Representative or access to the automated information system, call 800-7869199 (IN USA OR CANADA) or 571-272-1000.

Application/Control Number: 11/586,918
Art Unit: 2454

/Larry Donaghue/
Primary Examiner, Art Unit 2454

Page 5

Application/Control No.
11/586,918
Examiner

Art Unit

Larry Donaghue

Notice of References Cited

Applicant(s)/Patent Under
Reexamination
DOYLE ET AL.

2454

Page 1 of 1

U.S. PATENT DOCUMENTS
Document Number
Date
*Name
Country Code-Number-Kind Code
MM-YYYY
*
US-7,599,985
10-2009
Doyle et al.
A
*
US-5,838,906
11-1998
Doyle et al.
B
O

US-

F

US-

G

US-

H

US-

I

US-

,j

US-

K

US-

L

US-

M

715/205

US-

E

709/202

US-

D

Classification

USFOREIGN PATENT DOCUMENTS
Document Number

*

Country Code-Number-Kind Code

Date
MM-YYYY

Country

Name

Classification

N
0
P
Q
R
S
T
NON-PATENT DOCUMENTS
*

Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

V

W

X

*A copy of th's reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office

PTO-892 (Rev. 01-2001)

Notice of References Cited

Part of Paper No. 20100620

Application/Control No.

111 11 1111111111 111 11

11586918

Examiner

Index of Claims

Applicant(s)/Patent Under
Reexamination
DOYLE ET AL.
Art Unit

Larry Donaghue

2454

Rejected
Allowed
•

Cancelled
Restricted

N

Non-Elected

A

Appeal

Interference

0

Objected

•

• T.D.

Claims renumbered in the same order as presented by applicant

CLAIM
Final

CPA

• R.1.47

DATE

Original

06/20/2010

40

V

41

V

42

V

43

V

44

V

45

V

46

V

47

V

48

V

49

V

50

V

51

V

52

V

53

V

54

V

55

V

56

V

57

V

58

V

59

V

60

V

61

V

62

V

63

V

64

V

65

V

66

V

67

V

68
69
70
71
72
73
74
75
U.S. Patent and Trademark Office

Part of Paper No. : 20100620

Application/Control No.

111 11 1111111111 111 11

11586918

Examiner

Index of Claims

Applicant(s)/Patent Under
Reexamination
DOYLE ET AL.
Art Unit

Larry Donaghue

2454

Rejected
Allowed
•

Cancelled
Restricted

N

Non-Elected

A

Appeal

Interference

0

Objected

•

• T.D.

Claims renumbered in the same order as presented by applicant

CLAIM
Final

CPA

• R.1.47

DATE

Original

06/20/2010

76
77
78
79
80
81
82
83
84
85
86
87
88
89
90
91
92
93
94
95
96
97
98
99
100
101
102
103
104
105
106

U.S. Patent and Trademark Office

Part of Paper No. : 20100620

UNITED STA I ES PA PENT 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.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

11/586,918

10/26/2006

Michael D. Doyle

006-1-6

2537

30080

7590

12/22/2010

LAW OFFICE OF CHARLES E. KRUEGER
P.O. BOX 5607
WALNUT CREEK, CA 94596-1607

EXAMINER
DONAGHUE, LARRY D
ART UNIT

PAPER NUMBER

2454

MAIL DATE

DELIVERY MODE

12/22/2010

PAPER

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.

PTOL-90A (Rev. 04/07)

Application No.
11/586,918

Office Action Summary

Applicant(s)
DOYLE ET AL.

Examiner

Art Unit

Larry Donaghue

2454

-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --

Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
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 period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status
1)Z Responsive to communication(s) filed on 13 November 2010.
2a)Z This action is FINAL.
2b)EIThis action is non-final.
3)0 Since this application is in condition for allowance except for 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
4)Z Claim(s) 40-67 is/are pending in the application.
4a) Of the above claim(s)

is/are withdrawn from consideration.

5)0 Claim(s)
is/are allowed.
6)Z Claim(s) 40-67 is/are rejected.
7)0 Claim(s)
is/are objected to.
8)0 Claim(s)

are subject to restriction and/or election requirement.

Application Papers
9)0 The specification is objected to by the Examiner.
10)0 The drawing(s) filed on
is/are: a)E accepted or bElobjected 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).
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. Note the attached Office Action or form PTO-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).
b)E1Some * c)EINone of:
1.0 Certified copies of the priority documents have been received.
2.0 Certified 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) u Notice of References Cited (PTO-892)
2) u Notice of Draftsperson's Patent Drawing Review (PTO-948)
3) u Information Disclosure Statement(s) (PTO/SIB/08)
Paper No(s)/Mail Date

4) u Interview Summary (PTO-413)
Paper No(s)/Mail Date.
5) u Notice of Informal Patent Application
6) u Other:

U.S. Patent and Trademark Office

PTOL-326 (Rev. 08-06)

Office Action Summary

Part of Paper No./Mail Date 20101218

Application/Control Number: 11/586,918

Page 2

Art Unit: 2454
1.

Claims 40-67 are presented for examination.

2.

The following rejections are maintained.
The nonstatutory double patenting rejection is based on a judicially created

doctrine grounded in 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
obviousness-type double patenting rejection is appropriate where the conflicting claims
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 USPQ2d 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, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
F.2d 438, 164 USPQ 619 (CCPA 1970); and In 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 conflicting application or patent either is shown to
be commonly owned with this application, or claims an invention made as a result of
activities undertaken within the scope of a joint research agreement.

Application/Control Number: 11/586,918

Page 3

Art Unit: 2454
Effective January 1, 1994, a registered attorney or agent of record may sign a
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
37 CFR 3.73(b).
Claims 40-67 are rejected on the ground of nonstatutory double patenting over
claims 1-14 and 1-47 of U. S. Patent No. 5,838,906 and 7,599,985 respectfully since
the claims, if allowed, would improperly extend the "right to exclude" already granted in
the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and
is covered by the patent since the patent and the application are claiming common
subject matter, as follows: The Claim(s) of patents contain every element of claim(s)
of the instant application and as such anticipate(s) claim(s) of the instant application.
"A later patent claim is not patentably distinct from an earlier patent claim if the later
claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896,
225 USPQ at 651 (affirming a holding of obviousness-type double patenting because
the claims at issue were obvious over claims in four prior art patents); In re Berg, 140
F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousnesstype double patenting where a patent application claim to a genus is anticipated by a
patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR
LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON
PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
The Terminal Disclaimer was denied entry as the signature is not of an attorney
of record. Examiner could find no power of attorney filed in the application.

Application/Control Number: 11/586,918

Page 4

Art Unit: 2454
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Larry Donaghue whose telephone number is (571)2723962. The examiner can normally be reached on Monday-Friday 9:00 -6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Joseph E. Avellino can be reached on 571-272-3905. The fax phone
number for the organization where this application or proceeding is assigned is 571273-8300.

Application/Control Number: 11/586,918

Page 5

Art Unit: 2454
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). 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.

/Larry Donaghue/
Primary Examiner, Art Unit 2454

Application/Control No.

Applicant(s)/Patent Under
Reexamination

Index of Claims

11586918

DOYLE ET AL.

* 11 58691

Examiner

Art Unit

Larry Donaghue

2454

8

*

Rejected
Allowed
•

Cancelled

N

Restricted

Non-Elected

A

Appeal

Interference

0

Objected

Claims renumbered in the same order as presented by applicant

CLAIM
Final

•

CPA

•

T.D.

•

R.1.47

DATE

Original

06/20/2010 12/18/2010

40

v

v

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U.S. Patent and Trademark Office

Part of Paper No.: 20101218

Application/Control No.

Applicant(s)/Patent Under
Reexamination

Index of Claims

11586918

DOYLE ET AL.

* 11 58691

Examiner

Art Unit

Larry Donaghue

2454

8

*

Rejected
Allowed
•

Cancelled

N

Restricted

Non-Elected

A

Appeal

Interference

0

Objected

Claims renumbered in the same order as presented by applicant

CLAIM
Final

•

CPA

• T.D.

• R.1.47

DATE

Original

06/20/2010 12/18/2010

73
74
75
76
77
78
79
80
81
82
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85
86
87
88
89
90
91
92
93
94
95
96
97
98
99
100
101
102
103
104
105
U.S. Patent and Trademark Office

Part of Paper No.: 20101218

Application/Control No.

Applicant(s)/Patent Under
Reexamination

Index of Claims

11586918

DOYLE ET AL.

* 11 58691

Examiner

Art Unit

Larry Donaghue

2454

8

*

Rejected
Allowed
•

Cancelled

N

Restricted

Non-Elected

A

Appeal

Interference

0

Objected

Claims renumbered in the same order as presented by applicant

CLAIM
Final

•

CPA

• T.D.

• R.1.47

DATE

Original

06/20/2010 12/18/2010

106

U.S. Patent and Trademark Office

Part of Paper No.: 20101218