FINALSTEP AI

11.1 Rule 99 Third-Party Prior Art Submission - 2011

In 2011, Litman Law Offices submitted prior art to the USPTO under Rule 99 during prosecution of Microsoft's Gesture Coach application. The purpose of the submission was to place earlier Baker patent material before the examiner while the application was pending.

Rule 99, as it then existed, provided a procedure for third parties to submit prior-art references for consideration during examination. The filing itself did not determine infringement, validity or ownership. Its role was to place identified material into the prosecution record.

11.2 Citation and Prosecution Record

The archive preserves the citation record and related USPTO documents associated with the Rule 99 submission. These materials are significant because they document the identity of the submitted references and their place within the official prosecution record.

The broader file wrapper also contains bibliographic information, Information Disclosure Statements, foreign references, non-patent literature, search notes, Office Actions, applicant amendments, requests for continued examination and allowance documents.

11.3 USPTO Office Actions and Examination

The Gesture Coach application encountered USPTO rejections before allowance. The prosecution record shows the examiner relying upon cited prior art and the applicant responding through amendments, arguments and continued prosecution.

The significance of these documents lies in showing how the claims evolved. They allow readers to see which claim language was challenged, what distinctions were argued, and how the application changed during examination.

11.4 Microsoft's Applicant Responses and Amendments

One of the most important prosecution documents is Microsoft's substantive response filed on 2 August 2012. The response addressed an earlier Office Action and included amendments to independent claims, cancellation of several claims, introduction of new claims and detailed argument concerning the cited prior art.

A central prosecution argument distinguished between modifying gesture definitions and modifying the resulting output. The applicant argued that the cited references did not disclose the amended claim features in the form then being pursued.

11.5 Examiner's Statement of Reasons for Allowance

The examiner's Statement of Reasons for Allowance, dated 12 December 2012, records the USPTO's official explanation for allowing the remaining claims.

The statement refers to the prior art of record, including an Information Disclosure Statement filed on 16 October 2012, and identifies the combination of claim features that the examiner considered allowable.

The document is particularly important because it is the examiner's own explanation of why the amended claims were considered patentable at that stage.

11.6 Notice of Allowance

The Notice of Allowance was issued on 12 December 2012. It records the formal conclusion that the application had reached an allowable condition following the preceding examination and amendments.

The Notice of Allowance should be read together with the Reasons for Allowance and the applicant's earlier amendments rather than as a stand-alone event.

11.7 PTO-1449 and the Baker Prior-Art Listing

A later PTO-1449 records Baker prior-art references as having been considered by the examiner. The document is dated 18 January 2013.

The prosecution chronology preserved in the archive therefore shows the following sequence:

11.8 Complete USPTO File Wrapper

The archive also preserves an index to the complete public prosecution record. This is important because the Gesture Coach section does not rely upon a handful of selected documents in isolation.

The file wrapper includes the original application materials, bibliographic records, reference submissions, search records, rejections, amendments, continued examination, allowance material and issue-related documents.

11.9 Chain of Notice and Service

Related records include service and delivery documents associated with efforts to place material before the USPTO and relevant parties. These documents are preserved separately from the patentability analysis because their evidential role is different.

They can establish that documents were sent, served or delivered to identified recipients. They do not, without further evidence, establish what action any recipient took after receiving them.

This distinction between proof of delivery and proof of subsequent conduct is maintained throughout the archive.

11.10 Section Summary

Viewed chronologically, the Gesture Coach prosecution record shows:

• Microsoft filed and prosecuted the Gesture Coach application;
• earlier Baker patent material was submitted to the USPTO during prosecution;
• the examiner issued rejections and continued examination;
• Microsoft amended and argued the claims;
• the examiner issued Reasons for Allowance;
• the Notice of Allowance followed; and
• the later PTO-1449 recorded Baker prior art as considered by the examiner.

The value of this section lies in preserving that chronology without overstating what any single document proves. The next section continues with related documentary evidence concerning notice, service, delivery and associated records.