Match Group, LLC v. Bumble Trading Inc.

Western District of Texas, txwd-6:2018-cv-00080

Exhibit 12

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5 EXHIBIT 12 5 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. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/059,192 10/2112013 Sean Rad 076533.0146 1044 5073 7590 12/09/2015 EXAMINER BAKER BOTTS L.L.P. 2001 ROSS AVENUE CHOI, YUK TING SUITE 600 DALLAS, TX 75201-2980 ARTUNIT PAPERNUMBER 2164 NOTIFICATION DATE DELIVERY MODE 12/09/2015 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): ptomaill @bakerbotts.com ptomai12@bakerbotts.com PTOL-90A (Rev. 04/07) MTCH-0000604 Case 6:18-cv-00080-ADA Document 83-4 Filed 05/15/19 Applicant(s) Application No. Page 3 of 15 14/059,192 RAD ET AL. Office Action Summary Examiner Art Unit AlA (First Inventor to File) Status YUK TING CHOI 2164 No -- 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;2 MONTHS 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)~ Responsive to communication(s) filed on 1111812015. 0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on _ _. 2a)~ This action is FINAL. 2b)0 This action is non-final. 3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on _ _;the restriction requirement and election have been incorporated into this action. 4)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* 5)~ Claim(s) 23.25-28.30.32-35.37 and 39-42 is/are pending in the application. 5a) Of the above claim(s) _ _ is/are withdrawn from consideration. 6)0 Claim(s) _ _ is/are allowed. 7)~ Claim(s) 23.25-28.30.32-35.37 and 39-42 is/are rejected. 8)0 Claim(s) _ _ is/are objected to. 9)0 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 http:ilvvww.uspto.gov!patents/init events/pph/index.jsp or send an inquiry to PPHfeedback(wuspto.oov. Application Papers 10)0 The specification is objected to by the Examiner. 11)0 The drawing(s) filed on _ _ is/are: a)O accepted or b)O 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). Replacement drawing 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)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). Certified copies: a)O All b)O Some** c)O None of the: 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) 0 Notice of References Cited (PT0-892) 3) 0 Interview Summary (PT0-413) Paper No(s)/Mail Date. _ _ . 2) 0 Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b) Paper No(s)/Mail Date _ _ . 4) 0 Other: _ _ . U.S. Patent and Trademark Off1ce PTOL-326 (Rev. 11-13) Office Action Summary Part of Paper No./Mail Date 20151130 MTCH-0000605 5 Application/Control Number: 14/059,192 Page 2 Art Unit: 2164 DETAILED ACTION Response to Amendment 1. This office action is in response to applicant's communication filed on 11/18/2015 in response to PTO Office Action mailed 08/18/2015. The Applicant's remarks and amendments to the claims and/or the specification were considered with the results as follows. 2. In response to the last Office Action, claims 23, 25-28, 30, 32-35, 37, 39-42 have been amended. Claims 24, 29, 31, 36, 38 and 43 have been canceled. As a result, claims 23, 25-28, 30, 32-35, 37, 39, 40-42 are pending in this office action. Response to Arguments 3. Applicant's arguments with respect to claims 23, 25-28, 30, 32-35, 37, 39, 40-42 have been fully considered but are not persuasive and details are as follows: Applicant's argument states as "Janssens discloses a social interaction system that includes a way for a user to find people of interest. .. additionally, clicking, mouse dragging, hovering, swiping and gesturing, may indicate to the system to display a new card. Therefore, the cited portions of Janssens do not disclose in response to determining that the first user expressed the positive preference indication regarding the first potential match, automatically causing the graphical user interface to display a graphical representation of a second potential match of the set of potential matches instead of the graphical representation of the first potential match" as recited in amended independent claims 23, 30 and 37. In response to applicant's response, the Examiner disagrees because the Janssens reference discloses the user of the card-feed may cycle through various cards or other potential matches beside the first potential match. The system records different forms of user interactions such as clicking, mouse dragging, hovering, swiping, gesturing and so on are used MTCH-0000606 5 Application/Control Number: 14/059,192 Page 3 Art Unit: 2164 to indicate whether a new potential match or previously viewed potential match is to be displayed to the user (See Janssens, para. [0047]). The feed of potential matches is automatically cycled periodically and the system uses information such as user settings and past interactions between users, e.g., the interactions such as a user liked another user and/or gave a gift to another user to determine and select which card to show next from a set of cards or potential matches. The user may go forward in the feed by selecting the forward control and the process may select the next card to display to the user in the card-feed. Similarity, when another user likes the user's profile card, the user may go forward in the feed by selecting the forward control and the process automatically select the card of the person that liked that user as the next card to display to the user in the card feed (See Janssens, para. [0118]). Therefore, Janssens still teaches in response to determine that the first user expressed "liked" indication regarding the first potential match, the system automatically use such interaction information to determine and select the next card in the card feed. Applicant further argues "the office action relies on Janssens at paragraph 64 and 95 as allegedly disclosing enabling communication between the first user and the second user in response to determining that the second user has expressed approval for the first user, the cited paragraphs merely disclose updating a user's contact list or chat list...Janssens teaches away from enabling communication after users have been linked because it discloses that users exist in the chat before they are linked ... Janssens merely discloses that a contact may be automatically added to a given's user's contact list when two users are linked and suggests that users could communicate before being linked ... therefore, Janssens does not disclose determining to enable communication between the first user and the second user in response to determining that both the first user has expressed the positive preference indication regarding MTCH-0000607 5 Application/Control Number: 14/059,192 Page 4 Art Unit: 2164 the second user and the second user has expressed the positive preference indicating regarding the first user". In response to applicant's response, the Examiner disagrees because the Janssens reference clearly indicates there are different ways to enable communication between the users. Rules can be defined by users in the user's account data or by a system administrator indicates which users can communicate/chat with other users (See Janssens para. [0045] and para. [0056]). One of the ways to enable chat communication between two users is adding both users to their contact lists. A contact is added automatically to a given user's contact list when two users link, for example, if user A "likes" user B and user B "likes" user A back, a link is created, and the system adds user A to the contact list of user B and user B to the contact list of user A. User A enables communication with user B by clicking the chat button once the system has successfully placed user B on the contract list of user A after user A has indicated a positive indication such as the liked indication (See Janssens para. [0095]). Therefore, the Janssens reference still reads on the argued feature. Claim Rejections- 35 USC§ 102 4. In the event the determination of the status of the application as subject to AlA 35 U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 5. 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 made in this Office action: A person shall be entitled to a patent unless- MTCH-0000608 5 Application/Control Number: 14/059,192 Page 5 Art Unit: 2164 (e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351 (a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21 (2) of such treaty in the English language. 6. Claims 23, 25 26, 28, 30, 32, 33, 35, 37 and 39-41 are rejected under pre-AlA 35 U.S.C. 102(e) as being anticipated by Janssens (US 2014/0040368 A1). Referring to claims 23, 30 and 37, Janssens discloses a computer implemented method of profile matching (See para. [0005], a matching system identifies a plurality of matching users from a plurality users based at least in part on the received profile information), comprising: electronically receiving a first request for matching, the first request electronically submitted by a first user using a first electronic device (See Figure 9, para. [0041] and para. [0112] and para. [0113], receiving a request for a new card from a user device, a request for a profile card); determining a set of potential matches for the first user in response to receiving the first request (See para. [0115] and Figure 9, item 906, identifying a set of available cards by the system as potentially interesting to the viewing user); causing the display of a graphical representation of a first potential match of the set of potential matches to the first user on a graphical user interface of the first electronic device, the first potential match corresponding to a second user (See para. [0115]-para. [0117] and Figure 9, selecting and displaying a card from the set of available cards that is estimated or determined to be the highest rank or greater interest to the user); determining that the first user expressed a positive preference indication regarding the first potential match at least by determining that the first user performed a first swiping gesture MTCH-0000609 5 Application/Control Number: 14/059,192 Page 6 Art Unit: 2164 associated with the graphical representation to the first potential match on the graphical user interface (See Figure 5, para. [0005], para. [0052], para. [0053], para. [0064] and para. [0095], the system receives "like" expression from the first user or the A user on the card-feed pane, also See para. [0047] and para. [0068] and Figure 4, swiping across the interface using a finger on the card, user can swipe on the "like "feature, and the system maintain a history of which cards a given user has viewed and the user's interaction with a given card); in response to determining that the first user expressed the positive preference indication regarding the first potential match, automatically causing the graphical user interface to display a graphical representation of a second potential match of the set of potential matches instead of the graphical representation of the first potential match (See para. [0047] and para. [0118], the user of the card-feed may cycle through various cards or other potential matches beside the first potential match, the system records different forms of user interactions such as clicking, mouse dragging, hovering, swiping, gesturing and so on are used to indicate whether a new potential match or previously viewed potential match is to be displayed to the user, the feed of potential matches is automatically cycled periodically and the system uses information such as user settings and past interactions between users, e.g., the interactions such as a user liked another user and/or gave a gift to another user to determine and select which card to show next from a set of cards or potential matches, the user may go forward in the feed by selecting the forward control and the process may select the next card to display to the user in the card-feed, also when another user likes the user's profile card, the user may go forward in the feed by selecting the forward control, and the system automatically selects the MTCH-0000610 5 Application/Control Number: 14/059,192 Page 7 Art Unit: 2164 card of the person that liked that user as the next card to display to the user in the card feed); determining that the second user has expressed a positive preference indication regarding the first user after determining that the first user expressed the positive preference indication regarding the first potential match (See Figure 5, para. [0005], para. [0052], para. [0053], para. [0064] and para. [0095], the system also receives "like" expression from the second user when the second user or the user 8 likes user A back); determining to enable communication between the first user and the second user in response to determining that both the first user has expressed the positive preference indication regarding the second user and the second user has expressed the positive preference indication regarding the first user (See para. [0045] and para. [0056], One way to enable chat communication between two users is adding both users to their contact lists, a contact is added automatically to a given user's contact list when two users link, for example, if user A "likes" user 8 and user 8 "likes" user A back, a link is created, and the system adds user A to the contact list of user 8 and user 8 to the contact list of user A. User A enables communication with user 8 by clicking the chat button once the system has successfully placed user 8 on the contract list of user A after user A has indicated a positive indication such as the liked indication); in response to determining to enable communication between the first user and the second user, causing the graphical user interface to display to the first user both the graphical representation of the first potential match and a text area, the text area configured to receive text inputted by the first user to send to the second user (See Figure 3, text area 312, para. [0045] and para. [0056], if user A "likes" user 8 and user 8 "likes" user A back, a link is created, and the system adds user A to the contact list of user 8 and user 8 to the MTCH-0000611 5 Application/Control Number: 14/059,192 Page 8 Art Unit: 2164 contact list of user A, user A enables communication with user 8 by clicking the chat button once the system has successfully placed user 8 on the contract list of user A after user A has indicated a positive indication such as the liked indication, clicking the chat button opens the chat pane is a text area enable the user to chat other users); and wherein the first user is identified using a first social networking platform and the second user is identified using a second social networking platform that is different than the first social networking platform (See para. [0178], the system determines the potential match based on one of the factors such as the common friends listed on the user profiles associated with one or more social networks). As to claims 25, 32 and 39, Janssens discloses further comprising: in response to determining that both the first user has expressed the positive preference indication regarding the second user and the second user has expressed the positive preference indication regarding the first user, causing the display of a graphical notification, on the graphical user interface of the first electronic device, that a match exists between the first user and the second user, the graphical notification comprising a user interface control enabling the text area to be presented to the first user (See Figure 3, text area 312, para. [0045] and para. [0056], if user A "likes" user 8 and user 8 "likes" user A back, a link is created, and the system adds user A to the contact list of user 8 and user 8 to the contact list of user A, user A enables communication with user 8 by clicking the chat button once the system has successfully placed user 8 on the contract list of user A after user A has indicated a positive indication such as the liked indication, clicking the chat button opens the chat pane is a text area enable the user to chat other users). MTCH-0000612 5 Application/Control Number: 14/059,192 Page 9 Art Unit: 2164 As to claims 26, 33 and 40, Janssens discloses the set of potential matches for the first user comprises one or more potential matches that are each associated with a geographic location within a threshold distance of a geographic location associated with the first user, the threshold distance being a stored value (See para. [0055] and para. [0130], user can set preferences on the types of cards they want to receive, e.g. a user can specify limits on geographic range such as 10 miles from his/ her house, 20 miles from his/her work address and etc.). As to claims 28, 35 and 41, Janssens discloses causing the display of a graphical representation of a second potential match of the set of potential matches to the first user on the graphical user interface of the first electronic device (See para. [0145] and Figure 12, the system identifies the most relevant potential users whose cards may be displayed to the viewing user); determining that the first user expressed a negative preference indication regarding the second potential match (See para. [0052], the system also provides a control via which the user can indicate a disinterest in another user); and determining not to enable communication between the first user and a user associated with the second potential match after determining that the first user expressed the negative preference indication regarding the second potential match (See para. [0052], preventing communication between the first user and the other user, e.g. if user B is a second potential match, user B is automatically be placed in ignored state and or any future communication because the first user dislikes the profile card for user B). MTCH-0000613 5 Application/Control Number: 14/059,192 Page 10 Art Unit: 2164 Claim Rejections - 35 USC § 103 7. The following is a quotation of pre-AlA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 8. Claims 27, 34 and 42 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Janssens (US 2014/0040368 A1) and in view of Kulas (US 2011/0087974 A1). As to claims 27, 34 and 42, Janssens discloses causing the display of a graphical representation of a second potential match and a third potential match to the first user on the graphical user interface of the first electronic device, the set of potential matches comprising the second potential match and the third potential match (See para. [0145] and Figure 12, the system identifies the most relevant potential users whose cards may be displayed to the viewing user). Janssens discloses determining that the first user expressed a positive preference indication regarding the second potential match at least by determining that the first user performed a second swiping gesture associated with the graphical representation of the second potential match on the graphical user interface (See para. [0047] and para. [0068] and Figure 4 swiping across the interface using a finger on the card, user can swipe on the "like "feature) and determining that the first user expressed a negative preference indication regarding that the third potential match at least by determining that the first user performed a third swiping gesture associated with the graphical representation of the third MTCH-0000614 5 Application/Control Number: 14/059,192 Page 11 Art Unit: 2164 potential match on the user interface (See para. [0052], the system also provides a control via which the user can indicate a disinterest in another user). Janssens does not explicitly disclose determining an expression of approval by detecting a second swiping gesture associated with a first direction; and determining an expression of disapproval from the first user by detecting a third swiping gesture associated with a second direction different than the first direction. Kulas discloses determining an expression of approval by detecting a second swiping gesture associated with a first direction; and determining an expression of disapproval from the first user by detecting a third swiping gesture associated with a second direction different than the first direction (See para. [0027], a user can swipe their finger downward to indicate disapproval or upward to indicate approval). Hence, it would have been obvious to one having ordinary skill in the art at the time of invention was made to modify the sensitive touch- screen movement detection module of Janssens's system to comprise: determining an expression of approval by detecting a second swiping gesture associated with a first direction; and determining an expression of disapproval from the first user by detecting a third swiping gesture associated with a second direction different than the first direction, as taught by Kulas, in order to improve the service provided to a user by determining ways of identifying a user's state of mind (See Kulas, para. [0004]). Conclusion 9. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). MTCH-0000615 5 Application/Control Number: 14/059,192 Page 12 Art Unit: 2164 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 date of this final action. 10. The examiner requests, in response to this Office action, support be shown for language added to any original claims on amendment and any new claims. That is indicate support for newly added claim language by specifically pointing to page(s) and line no(s) in the specification and/or drawing figure(s). This will assist the examiner in prosecuting the application. Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUK TING CHOI whose telephone number is (571)270-1637. The examiner can normally be reached on 9:30AM-6:00PM EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Christyann Pulliam can be reached on (571) 270-1007. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. MTCH-0000616 5 Application/Control Number: 14/059,192 Page 13 Art Unit: 2164 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. /YUK TING CHOI/ Primary Examiner, Art Unit 2164 MTCH-0000617