Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 1 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 1of11
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`EXHIBIT 2
`EXHIBIT 2
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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 2 of 11
`ese >heyOf053-BLF
`cument 103-3 Filed 04/18/22 Page 2 of 11
`NITED STATES FATENT ANDIRADEMARK UFFICE
`
`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
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`
`
`90/014,890
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`10/22/2021
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`7031728
`
`4733 1.00004
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`3424
`
`Malin Haley DiMaggio & Bowen,P.A.
`Spectrum Office Building
`4901 NW 17th Way, Suite 308
`FORT LAUDERDALE,FL 33309
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`KISS, ERIC B
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`3992
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`MAIL DATE
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`12/06/2021
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`

`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 3 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 3 of 11
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`PAUL HASTINGS LLP (GENERAL)
`2050 M STREET NW,
`WASHINGTON, DC 20036
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/074,890 .
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`PATENT UNDER REEXAMINATION 7031728 .
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`ART UNIT 3992.
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
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`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 4 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 4 of 11
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`Patent Under Reexamination
`
`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`ERIC B KISS
`3992
`No
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`90/014,890
`
`7031728
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for exgarfe reexamination filed 10/22/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)
`
`PTO-892,
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`b)v¥)
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`PTO/SB/08,
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`c)Q Other:
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`1.
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`The requestfor exgarfe reexamination is GRANTED.
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`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`lf Patent Owner does notfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`cc:Requester ( if third party requester }
`U.S. Patent and Trademark Office
`PTOL-471 G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20211103
`
`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 5 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 5 of 11
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`Application/Control Number: 90/014,890
`Art Unit: 3992
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`Page 2
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`ORDER GRANTING EX PARTE REEXAMINATION
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`A substantial new question of patentability affecting claim 7 of United States Patent 7,031,728is
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`raised by the request for ex parte reexamination.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because
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`the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a reexamination
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`proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination proceedings "will be
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`conducted with special dispatch" (37 CFR 1.550(a)). Extensions of time in ex parte reexamination
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`proceedingsare provided for in 37 CFR 1.550(c).
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`The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to apprise
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`the Office of anylitigation activity, or other prior or concurrent proceeding, involving Patent 7,031,728
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`throughout the course of this reexamination proceeding. The third party requester is also reminded of
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`the ability to similarly apprise the Office of any such activity or proceeding throughoutthe course ofthis
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`reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
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`Patents and Publications Cited in the Request
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`The request cites the following prior art patents and printed publications:
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`1.
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`2.
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`3.
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`4.
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`U.S. Pat. 6,366,782 (Fumarolo et al.);
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`U.S. Pat. App. Pub. 2004/0054428(Sheha atal.);
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`U.S. Pat. App. Pub. 2005/0221876 (Van Bosch etal.); and
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`Japanese Pat. App. Pub. JP 2003-264861 (Ozaki).
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`Prosecution History
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`U.S. Patent 7,031,728 issued from App. 10/711,490, filed on September 21, 2004.
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`The ’490 App. was originally filed with claims 1-15. The history of original claim 6 is pertinent to
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`this proceeding.
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`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 6 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 6 of 11
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`Application/Control Number: 90/014,890
`Art Unit: 3992
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`Page 3
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`The examiner initially rejected claim 6 under 35 U.S.C. § 112, second paragraph, as being
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`indefinite. The examiner also rejected claim 6 under § 103(a) as unpatentable over U.S. Pat. 6,868,337
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`(Muramatsu) in view of U.S. Pat App. Pub. 2004/0192331 (Gordayetal.). 490 App., Non-Final Rej.,
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`08/10/2005, pp. 2-3 and 9-11.
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`Claim 6 was amendedto specify that each of the participants’ cellular phones include “voice
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`communication, free and operator selected text messages, photograph and video.” ’490 App.,
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`Response, 11/12/2005, p.5. The applicant contended:
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`The Examiner’s rejection of claim 6 under 35 U.S.C. 103(a) as being unpatentable over
`Muramatsu ‘377 in view of Gorday,et al. ‘331 is respectfully traversed. Again, applicant
`reiterates the arguments presented above with respect to the combination of the
`Muramatsu ‘377 reference with the Gorday,et al. ‘331 reference urged by the Examiner
`with reference to claim 2. Muramatsu ‘377 reference discloses a navigational system
`that uses a navigational server to provide navigational information to users requesting
`such information in a given area. Muramatsu 377 does not suggest providing a network
`of users that establish rapid voice communication, free text message communication,
`photographs communication and video information using a geographical display with
`icons that are tied into the cell phone number database for rapid communication
`purposes. Gorday,et al. ‘331 referenceis also primarily a navigation system that allows
`sending a pre-prepared messageto one of the other participants in an ad hoc network
`within a certain distance or with other criteria. Gorday does not suggest nor teach
`having a networkthat allows for rapid voice communication, free and operator selected
`text message communication, photographs and video being transferred rapidly using a
`geographical display and icons that have pre-existing cell phone numbersfor rapid
`communication. The Graham test of scope and contentof the prior art again applies to
`the Examiner’s rejection of claim 6. Clair 6 requires a method and system that can
`rapidly be used to establish voice communication, free text message communication,
`photograph and video information to one or more selected participants in a rapid
`manner. The differences between claim 6 and the systems and methods disclosed in
`Muramatsu ‘377 and Gorday,etal. ‘331 are significant. The system and methodin
`Muramatsu ‘377 and Gorday,etal. ‘331 relate to navigational devices that seek to solve
`different problems than the device claimed in claim 6.
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`Id. at 13-14.
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`The claims were subsequently allowed without further comment by the examiner. Claim 6 was
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`renumbered as claim 7 in the ’728 patent.
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`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 7 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 7 of 11
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`Application/Control Number: 90/014,890
`Art Unit: 3992
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`Page 4
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`Substantial New Questions of Patentability (SNQs)
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`A.
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`The SNQ requirement
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`The Office may only grant a reexamination request if an SNQ affecting any claim of the patent
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`concernedis raised by the request, with or without consideration of other patents or printed
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`publications. 35 U.S.C. §§ 303(a) and 304.
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`The court in Swanson evaluated the scope of the SNQ requirement in reexamination, extensively
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`citing the legislative history of the original reexamination statute and the 2002 amendment:
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`“[l]n passing the original reexamination statute, Congress stated that ‘this new procedurewill
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`permit any party to petition the patent office to review the efficacy of a patent, subsequenttoits
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`issuance, on the basis of new information about preexisting technology which may have escaped review
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`at the time of the initial examination of the patent application,’ and explained that the substantial new
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`question requirement bars‘reconsideration of any argument already decided by the office, whether
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`during the original examination or an earlier reexamination.” In re Swanson, 540 F.3d 1368, 1377 (Fed.
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`Cir. 2008) (quoting H.R. Rep. No. 96-1307 (1980)) (emphasis omitted). “[T]he substantial new question
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`requirement ‘guard[s] against simply repeating the prior examination on the same issues and
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`arguments’ and bars ‘a second examination, on the identical ground that had previously been raised and
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`overcome.” /d. at 1380 (quoting In re Recreative Technologies Corp., 83 F.3d 1394, 1396-97 (Fed. Cir.
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`1996)). Further, “[t]he issue raised must be more than just questioning the judgmentof the examiner.”
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`Id. (quoting H.R. Rep. No. 107-120 (2002)). “[T]o decide whether a reference that was previously
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`considered by the PTO creates a substantial new question of patentability, the PTO should evaluate the
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`context in which the reference was previously considered and the scope of the prior consideration and
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`determine whether the reference is now being considered for a substantially different purpose.” /d.
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`A prior art patent or printed publication raises a substantial question of patentability where
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`there is a substantial likelihood that a reasonable examiner would consider the prior art patent or
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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 8 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 8 of 11
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`Application/Control Number: 90/014,890
`Art Unit: 3992
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`Page 5
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`printed publication important in deciding whether or not the claim is patentable, unless the same
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`question of patentability has already been decided as to the claim in a final holding of invalidity by the
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`Federal court system or by the Office in a previous examination. MPEP § 2242.
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`B.
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`Fumarolo in view of Sheha and Van Bosch (SNQ 1)
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`The request asserts that a substantial new question of patentability as to claim 7 of the ’728
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`patentis raised by Fumarolo in view of Sheha and Von Bosch, (Request at 9). The examiner agrees.
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`Fumarolo is cited as disclosing a communication system that enables various communication
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`units to share location information with a terminal that “displays a map .
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`.
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`. indicating locations of
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`communication units in at least a portion of the communication system,” (Request at 9 (citing Fumarolo
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`at 3:21-26)). Sheha is cites as disclosing a method for displaying the locations of objects such as phones
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`and vehicles on a map of a computing device, where the invention may be implemented on a phone,
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`and objects displayed on the map areassociated with unique identifiers such as a telephone number,
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`(Request at 11 (citing Sheha at 7] 0019, 0022, 0079, 0084, 0099 Fig. 2)).
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`Although the Request acknowledgesthat neither Fumarolo nor Sheha disclose cellular phones
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`that include photograph and video capabilities, (see Request at 17), Van Bosch is cited as teaching a
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`communication network similar to Fumarolo and Sheha with similar functionality, (Request at 17 (citing
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`Van Boschat Abstract)). The request further contends that Van Bosch teachesusing cellular phones
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`equipped with voice communications, free and operator selected text messages, photo and video,(id.
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`(citing Van Boschat Abstract, 9/{] 0028-29, 41-45)). More specifically, the request contends that Van
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`Bosch discloses a “system and procedurefor posting a receiving location-based messagesin a wireless
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`communication based network,” where the system includes communication devices that are capable of
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`sending and receiving voice data (textual or SMS), and/or video,(id. (citing Van Bosch at Abstract, {|
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`0029)). Users can leave messagesfor other users that may be associated with a particular location, and
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`the location-based messages maybe in the form of a text message, voice message, audio or video
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`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 9 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 9 of 11
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`Application/Control Number: 90/014,890
`Art Unit: 3992
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`Page 6
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`message,or picture,(id. (citing Van Bosch at 9] 0028, 0042-45)). Van Bosch describes using this form of
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`communication for notifying others of an accident,(id. (citing Van Bosch at 4 0041)).
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`Because the new, non-cumulative teachings appear to be relevant to the features asserted to be
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`missing from the prior art during prosecution, there is a substantial likelihood that a reasonable
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`examiner would consider Fumarolo, Sheha, and Van Bosch important in deciding whether or not claims
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`1-9, 11-13, and 15-20 of the ’097 patent are patentable. Accordingly, Fumarolo, Sheha, and Van Bosch
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`raise an SNQ as to claim 7.
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`Cc.
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`Fumarolo in view of Sheha, Van Bosch, and Ozaki (SNQ 2)
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`The request asserts that a substantial new question of patentability as to claim 7 of the ’728
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`patentis raised by Fumarolo in view of Sheha, Van Bosch, and Ozaki, (Request at 27). The examiner
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`agrees.
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`The request cites Ozaki as disclosing “a method for displaying information on the position and
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`velocity of a mobile terminal device a on a mobile terminal device b,” (Request at 27 (citing Ozaki at q
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`0012)). The mobile terminal device includes position detection means to acquire the current position of
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`the device and transmission means to transmit the detected position information to the mobile terminal
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`device b, (id.). The mobile terminal device b includes reception means to receive the position
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`information of mobile terminal device a, (id.). “Then, along with displaying map data managesd by the
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`map management means using the map display means, the position display means display the
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`previously received position information superimposed on the map,”(id.).
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`The request again cites to the teachings of Fumarolo, Sheha, and Van Bosch for the feature of
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`cellular phones that include “voice communication, free and operator selected text messages,
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`photograph and video,” (see Request at 30).
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`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 10 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 10 of 11
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`Application/Control Number: 90/014,890
`Art Unit: 3992
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`Page 7
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`At least to the extent that Fumarolo, Sheha, and Van Bosch raise an SNQ as to claim 7, as set
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`forth above, the examiner agrees that Fumarolo, Sheha, Van Bosch, and Ozaki raise an SNQ as to claims
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`7 for the same reasons.
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`

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`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 11 of 11
`Case 5:21-cv-04653-BLF Document 103-3 Filed 04/18/22 Page 11 of 11
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`Application/Control Number: 90/014,890
`Art Unit: 3992
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`Page 8
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`Conclusion
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`A substantial new question of patentability has been raised as to claim 7 of United States Patent
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`7,031,728.
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`All correspondencerelating to this ex parte reexamination proceeding should be directed:
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`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
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`By FAX to:
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`(571) 273-9900
`Central Reexamination Unit
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`By hand:
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`Customer Service Window
`
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
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`Any inquiry concerning this communication should be directed to Central Reexamination Unit at
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`telephone number (571) 272-7705.
`
`/Eric B. Kiss/
`Primary Examiner, Art Unit 3992
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`/NICK CORSARO/
`Primary Examiner, Art Unit 3992
`
`/ALEXANDER J KOSOWSKI/
`Supervisory Patent Examiner, Art Unit 3992
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`