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 I

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.

11/593,258

11/02/2006

Michael D. Doyle

006-1-7

3648

30080

7590

07/21/2010

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

07/21/2010

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)

11/593,258
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)Z Responsive to communication(s) filed on 10/02/09.
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) 95-118 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) 95-118 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, 04/07/08.

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 20100714

Application/Control Number: 11/593,258
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: 11/593,258
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 111-118 are rejected on the ground of nonstatutory double
patenting over claims 1-14 (particularly claim 10) and 1-47 (particularly claim 36)
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.

Claim(s) of patent 5,838,906 and 7,599,985 contain(s) every element of
claim(s) 111-118 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: 11/593,258

Page 4

Art Unit: 2454

Claims 95-110 are rejected on the ground of nonstatutory obviousnesstype double patenting as being unpatentable over claims 1-14 and 1-47 of U. S.
Patent No. 5,838,906 and 7,599,985 respectfully in view of Joseph et al.
(5,819,034).
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 the patents contain
every element of claim(s) of the instant application except wherein at least a
portion of the distributed application is for execution on two or more remote
computers coupled to the distributed network environment.
Joseph taught the use of remote computer to perform the execution of
requested computing in a client server environment (col. 1, lines 44-56).
Clearly the this would increase thru put and decrease the cost of the client
computer to perform advanced functions.

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.

Application/Control Number: 11/593,258
Art Unit: 2454
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.

/Larry Donaghue/
Primary Examiner, Art Unit 2454

Page 5

Application/Control No.
11/593,258
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-5,819,034
10-1998
Joseph et al.
A
*
US-5,838,906
11-1998
Doyle et al.
B
*
US-7,599,985
10-2009
Doyle et al.
C
D

US-

H

US-

I

US-

,j

US-

K

US-

L

US-

M

709/202

US-

G

715/205

US-

F

709/201

US-

E

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. 20100714

Application/Control No.

111 11 1111111 111111 11

11593258

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

Claims renumbered in the same order as presented by applicant

CLAIM
Final

•

CPA

•

T.D.

•

R.1.47

DATE

Original

07/17/2010

95

v

96

v

97

v

98

v

99

v

100

v

101

v

102

v

103

v

104

v

105

v

106

v

107

v

108

v

109

v

110

v

111

v

112

v

113

v

114

v

115

v

116

v

117

v

118

v

119
120
121
122
123
124
125
126
127
128
129
130
U.S. Patent and Trademark Office

Part of Paper No. : 20100714

Application/Control No.

111 11 1111111 111111 11

11593258

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

07/17/2010

131
132
133
134
135
136
137
138
139
140
141
142
143
144
145
146
147
148
149
150
151
152
153
154
155
156
157
158
159
160
161
162
163
164
165
166
U.S. Patent and Trademark Office

Part of Paper No. : 20100714

Application/Control No.

111 11 1111111 111111 11

11593258

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

07/17/2010

167
168
169
170
171
172
173
174
175
176
177
178
179
180
181
182
183
184
185
186
187
188
189
190
191
192
193
194
195
196
197
198
199
200
201
202
U.S. Patent and Trademark Office

Part of Paper No. : 20100714

Application/Control No.

111 11 1111111 111111 11

11593258

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

07/17/2010

203
204
205
206
207
208
209
210
211
212

U.S. Patent and Trademark Office

Part of Paper No. : 20100714

Application/Control No.
11593258

Examiner

Search Notes

111 11 1111111 111111 11

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

Larry Donaghue

2454

SEARCHED
Class
709
345
715
718
719
707

Subclass
202,218,219
419,427,619,638,649,653-656
205,738,760,777,804
106
310,315
E17.119

Date
07/12/2010
07/12/2010
07/12/2010
07/12/2010
07/12/2010
07/12/2010

Examiner
LD
LD
LD
LD
LD
LD

SEARCH NOTES
Search Notes
Revieww the re exam of the parent case findings of the parent case

Examiner

Date
07/12/2010

LD

INTERFERENCE SEARCH
Class

U.S. Patent and Trademark Office

Subclass

Date

Examiner

Part of Paper No. : 20100714