Free Claim Construction Opening Brief - District Court of Delaware - Delaware

Case 1:04-cv-00360-JJF Document 138-6 Filed 05/O9/2006 Page 1 of 3
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i PATENT
l Attorney Docket No. 18 1 67-9- l US
{ IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
i ln re application of:
l 'THOMAS W. STOREY Examiner: Y. Retta
: Application No.: Art Unit: 2764
[ 09/ l 05,227 TERMINAL DIS! QLAIMER
Filed: June 25, 1998
i For: FULLY INTEGRATED ON-LINE p, I
- INTERACTIVE FREQUENCY AND
gAAlVARD REDEMPTION PROGRAM
I Assistant Commissioner for Patents
1 Washington, D.C. 20231
l
] Sir:
i Petitioner, Netcentives, Inc., is the owner of 100 percent interest in the instant
i application. Petitioner hereby disclaims, except as provided below, the terminal part of the
i statutory term of any patent granted on the instant application, which would extend beyond the
i expiration date ofthe full statutory tenn defined in 35 U.S.C. 154 to 156 and 173, as presently
i shortened by any terminal disclaimer, of prior Patent No. 5,774,870. Petitioner hereby agrees
that any patent so granted on the instant application shall be enforceable only for and during such
i period that it and the prior patent are commonly owned. This agreement runs with any patent
l granted on the instant application and is binding upon the grantee, its successors or assigns.
1 In making the above disclaimer, petitioner does not disclaim the terminal part of
any patent granted on the instant application that would. extend to the expiration date of the full
i statutory term as detined in 35 U.S.C. 154 to 156 and 173 of the prior patent, as presently
i shortened by any terminal disclaimer, in the event that it later: expires for failure to pay a
07/E2/199 HEHSUH 00000001 061325 09105227
01 FC:240 55.00 CH

Case 1 :O4—cv-OO360—JJF Document 138-6 Filed 05/O9/2006 Page 2 of 3
r THOMAS W. S"lC¤1\.. r PATENT
1 09/105,227
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l maintenance fee, is heldlunenforceable, is found invalid by a court of competent jurisdiction, is
l statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321, has all claims
l cancelled by a reexamination certificate, is reissued, or is in any manner terminated prior to the
expiration of its full statutory term as presently shortened by any terminal disclaimer.
For submissions on behalf of an organization (e. g., corporation, partnership,
l
' university, govemment agency, etc.), the undersigned (wl1ose_title is supplied below) is
l empowered to act on behalfof the organization.
l 1 hereby declare that all statements made herein of my own knowledge are true
l and that all statements made on information and belief are believed to be true; and further that
l these statements were made with the knowledge that willful false statements and the like so
made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of thc
l
l United States Code and that such willful false statements may jeopardize the validity of the
{ application or any patent issued thereon.
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l Ted Chen
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l Title: Director, Corporate Counsel
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Case 1 :04-cv—OO360-JJF Document 138-6 Filed 05/O9/2006 Page 3 ptgu —, ~/( L {
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l hereby certify that this CC•l'l`...]:OlldEI1Ct .s being deposited with the United States
Postal Service as first class mail in an envelope addressed to: Attorney Docket NOJ I
Assistant Corntnissioner for Patents , _ -.\
Washington, DC. 2023l O l P
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By, /. at/{4/0‘vin A hl ehfdc 1 _;_ J
Erica L. artcnizado _ I U l ·i
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
ln re application of: Examiner: Y. Rett
Thomas W. Storey Art Unit: 2764
Application No.: 09/ 105,227 RESPONSE
Filed: June 25, 1998 ‘
F or: FULLY INTEGRATED, ON—Ll`NE
INTERACTIVE FREQUENCY AND AWARD
REDEMPTION PROGRAM
Assistant Commissioner for Patents
Washington, D.C. 20231
Sir:
This communication is in response to the Office Action mailed on May 18, 1999. In
response tothe rejected claims, please find the attached Terminal Disclaimer, which should overcome the
Examiner’s rejection. In view ofthe foregoing, Applicants believe all claims now pending in this
Application are in condition for allowance. The issuance of a formal Notice of Allowance at an early date is
respectfully requested. If the Examiner believes a telephone conference would expedite prosecution of this
application, please telephone the undersigned at 415-576-0200.
Respectfully submitted,
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Date l Philip H. Albert
` Reg. No. 35,819
TOWNSEND and TOWNSEND and CREW LLP
Two Embarcadero Center, Sth Floor
San Francisco, California 94111-3834
Tel: (415) 576-0200
Fax: (415) 576-0300
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Case 1:04-cv-00360-JJF

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Case 1:04-cv-00360-JJF

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