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, Vi
`'nia 22313-1450
`www.uspto.go
`
`APPLICATION NO.
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF {MATION NO.
`
`90/012,829
`
`04/03/2013
`
`7822816
`
`20351.RX816
`
`6993
`
`09/13/2013
`7590
`22206
`FELLERS SNIDER BLANKENSHIP
`BAILEY & TIPPENS
`THE KENNEDY BUILDING
`321 SOUTH BOSTON SUITE 800
`TULSA, OK 74103-3318
`
`EXAMINER
`
`DESAI, RACHNA SINGH
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`09/13/2013
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`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)
`
`RPX-‘I O03, p.1
`
`RPX-1003, p.1
`
`

`
` IJNI TED S '.['ATE'.~'_-I PATEN T AND T.l:"3.l3:;l.'.'Jl".‘.I‘l-‘.'lJl..I:'rI.K' QFFI CE
`
`Cornrnis-sinner for Patents
`United States Patent and Tradernark Office
`F'.O. Elu;~t145I:i
`Alexaridria, VA 2231 3-1 450
`vuvu-wuspro.gmr
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`NDQ Special Reexam Group
`1000 Louisiana Street
`
`Fifty—Third Floor
`Houston, TX 77002
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL FORM
`
`REEXAMINATION CONTROL NO. 90/012 829.
`
`PATENT NO. 7822816.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL—465 (Rev.07—04)
`
`RPX-1 O03, p.2
`
`RPX-1003, p.2
`
`

`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/012,829
`
`Examiner
`RACHNA DESAI
`
`Patent Under Reexamination
`7822816
`
`Art Unit
`
`3992
`
`AIA (First Inventor to
`File) Status
`No
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`a. IZ Responsive to the communication(s) filed on 6/24/2013 by P0 and 8/26/2013 by 3PR.
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`b. I] This action is made FINAL.
`
`c. D A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex paite reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part I
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. El Notice of References Cited by Examiner, PTO—892.
`
`3. El
`
`Interview Summary, PTO—474.
`
`2. D Information Disclosure Statement, PTO/SB/O8.
`
`4. El
`
`.
`
`Part II
`
`SUMMARY OF ACTION
`
`Claims 1 are subject to reexamination.
`
`Claims j are not subject to reexamination.
`
`Claims j have been canceled in the present reexamination proceeding.
`
`Claims
`
`are patentable and/or confirmed.
`
`Claims 1-14 are rejected.
`
`Claims
`
`are objected to.
`
`The drawings, filed on
`
`are acceptable.
`
`D The proposed drawing correction, filed on
`
`has been (7a) I:I approved (7b)I:I disapproved.
`
`El Acknowledgment is made of the priority claim under 35 U.S.C. § 119( )—(d) or (f).
`
`a) El All
`
`b) I] Some* c) I] None
`
`of the certified copies have
`
`1a.
`
`1b.
`
`2.
`
`3 4 5
`
`.
`
`6 7 8
`
`1 El been received.
`
`2 El not been received.
`
`3 [I been filed in Application No. j
`
`4 [I been filed in reexamination Control No.
`
`5 El been received by the International Bureau in PCT application No.
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9. El Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate 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.
`
`10. D Other:
`
`cc: Reuester (if third
`U.S. Patent and Trademark Office
`
`PTOL-466 (Rev. 08-13)
`
`Ottice Action in Ex Parte Reexamination
`
`f EfiB6'é\lop2 130829
`
`RPX-1003, p.3
`
`

`
`Application/Control Number: 90/012,829
`
`Page 2
`
`Art Unit: 3992
`
`Reexamination
`
`1.
`
`The present application is being examined under the pre-AlA first to invent
`
`provisions.
`
`2.
`
`An Ex Parte Reexamination has been granted for claims 1-14 of U.S. 7,822,816
`
`B2. See Order, mailed April 23, 2013. Patent Owner filed a PO Statement in Response
`
`to the Order on 06/24/2013 and the Requester filed a reply to the PO's Statement on
`
`08/26/2013.
`
`References Submitted by Requester
`
`3.
`
`The following references have been cited in the proposed rejections by the
`
`Requester:
`
`u.s. Patent No. 5,704,029 to Wright ("Wright")
`
`U.S. Patent No. 6,477,373 to Rappaport et al. ("Rappaport")
`
`U.S. Patent No. 6,584,464 to Warthen ("Warthen")
`
`U.S. Patent App. No. 2002/0007303 to Brookler et al. ("Brookler")
`
`European Patent Application EP 0779,759 to Rossmann ("Rossmann")
`
`PCT Published Application WO 99/33390 to Benigno ("Benigno")
`
`RPX-‘I O03, p.4
`
`RPX-1003, p.4
`
`

`
`Application/Control Number: 90/012,829
`
`Page 3
`
`Art Unit: 3992
`
`U.S. Patent No. 5,991,771 to Falls et al. ("Falls")
`
`U.S. Patent No. 5,442,786 to Bowen ("Bowen")
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The following is a quotation of 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.
`
`Issue 1
`
`5.
`
`Claims 1-3 and 5-14 are rejected under 35 U.S.C. 103(a) as being obvious over
`
`Rossmann in view of Rappaport (see pages 29-80 of the Request for Reexamination
`
`filed 04/03/2013, incorporated by reference).
`
`These rejections on pages 29-80 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`RPX-‘I O03, p.5
`
`RPX-1003, p.5
`
`

`
`Application/Control Number: 90/012,829
`
`Page 4
`
`Art Unit: 3992
`
`Issue 2
`
`6.
`
`Claim 4 is rejected under 35 U.S.C. 103(a) as being obvious over Rossmann in
`
`view of Rappaport and Bowen (see pages 80-85 of the Request for Reexamination filed
`
`04/03/2013, incorporated by reference).
`
`The rejection for claim 4 on pages 80-85 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 3
`
`7.
`
`Claims 1-14 are rejected under 35 U.S.C. 103 (a) as being obvious over
`
`Rossmann in view of Falls (see pages 85-170 of the Request for Reexamination filed
`
`04/03/2013, incorporated by reference).
`
`These rejections on pages 85-170 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 4
`
`8.
`
`Claims 1-14 are rejected under 35 U.S.C. 103(a) as being obvious over Benigno
`
`in view of Falls (see pages 170-277 of the Request for Reexamination 04/03/2013,
`
`incorporated by reference).
`
`These rejections on pages 170-277 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`RPX-‘I O03, p.6
`
`RPX-1003, p.6
`
`

`
`Application/Control Number: 90/012,829
`
`Page 5
`
`Art Unit: 3992
`
`Issue 5
`
`9.
`
`Claims 1-14 are rejected under 35 U.S.C. 103(a) as being obvious over Benigno
`
`in view of Rappaport (see pages 277-349 of the Request for Reexamination
`
`04/03/2013, incorporated by reference).
`
`These rejections on pages 277-349 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 6
`
`10.
`
`Claims 1, 2, 5, 7, 11, and 13-14 are rejected under 35 U.S.C. 103(a) as being
`
`obvious over Wright in view of Worthen, Rappaport, and Brookler, (see pages 349-390
`
`of the Request for Reexamination 04/03/2013, incorporated by reference).
`
`These rejections on pages 349-390 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 7
`
`11.
`
`Claims 12 is rejected under 35 U.S.C. 103(a) as being obvious over Wright in
`
`view of Worthen, Rappaport, Brookler, and Rossman (see page 384 of the Request for
`
`Reexamination 04/03/2013, incorporated by reference).
`
`RPX-‘I O03, p.7
`
`RPX-1003, p.7
`
`

`
`Application/Control Number: 90/012,829
`
`Page 6
`
`Art Unit: 3992
`
`The rejection for claim 12 on page 384 of the Request for Reexamination filed
`
`04/03/2013 is incorporated by reference.
`
`Response to Arguments
`
`PO’s Response:
`
`Issue 1
`
`PO argues it is noted that the Rossmann reference assumes that a connection to
`
`the server will always be available. PO refers to Declaration of John C. Hale Under 37
`
`C.F.R. § 1.132 (hereinafter "Hale Declaration"), paragraph 6. PO argues there is no
`
`suggestion or provision in this reference for the method of Rossmann to continue if
`
`connectivity is not available.
`
`On the other hand, PO argues the method of the '816 Patent specifically
`
`contemplates that connectivity to a central server will not be continuously available
`
`(Hale Declaration, paragraph 7). As such, it is intended to be operational within a
`
`loosely networked environment as that term is defined in the patent ('816 Patent at Col.
`
`4, Line 16 to Col. 5, Lines 1-5).
`
`PO argues the Rapport Reference teaches a method of maintaining connectivity
`
`of mobile terminals (Hale Declaration, paragraph 8). It teaches maintaining connectivity.
`
`It does not teach handling interruptions in connectivity (Hale Declaration, paragraph 9).
`
`RPX-‘I O03, p.8
`
`RPX-1003, p.8
`
`

`
`Application/Control Number: 90/012,829
`
`Page 7
`
`Art Unit: 3992
`
`PO argues combining the Rossmann Reference and the Rappaport Reference does not
`
`yield a method that is robustly intolerant of failures in connectivity as is taught by the
`
`'816 Patent.
`
`lnstead, PO argues a reference that requires connectivity has been paired
`
`with a method for maintaining connectivity, which does not yield the method of the '816
`
`Patent (Hale Declaration, paragraph 10).
`
`As such, PO argues Rossmann and Rappaport fail to raise a substantial new
`
`question of patentability regarding claims 1-3 and 5-14.
`
`Issue 2
`
`PO argues as was noted previously with respect to Issue 1 that combining
`
`Rappaport and Rossmann does not yield a method that is robustly intolerant of failures
`
`in connectivity. Further, PO argues supplying the Bowen reference does not change the
`
`basic combination. As such, it is believed that these references do not raise a
`
`substantial new question of patentability with respect to claim 4.
`
`Issue 3
`
`Regarding Rossmann in view of Falls raising a substantial new question of
`
`patentability regarding claims 1-14 under 35 U.S.C. §103(a), PO argues as was stated
`
`above, the Rossmann reference assumes a connection to a server will always be
`
`available (Hale Declaration, paragraph 6). There is no provision in this
`
`reference for the method of Rossmann to continue if connectivity is not available.
`
`RPX-‘I O03, p.9
`
`RPX-1003, p.9
`
`

`
`Application/Control Number: 90/012,829
`
`Page 8
`
`Art Unit: 3992
`
`The Falls reference includes a system and method for synchronizing transactions in a
`
`disconnectable network. The Falls reference specifically contemplates disconnection
`
`between a mobile computer and a network (Hale Declaration, paragraph 14).
`
`PO argues combining the Rossmann reference with the Falls reference will result
`
`in an inoperable combination (Hale Declaration, paragraph 15). More particularly, PO
`
`argues Rossmann assumes that the server will always be available and that additional
`
`decks or cards can be fetched if needed. PO argues combining the Rossmann
`
`reference with Falls does not provide a solution when additional decks are needed and
`
`there is no connectivity. As such, the combination is inoperable.
`
`In view of the foregoing, Rossmann and Falls do not raise a substantial new
`
`question of patentability regarding claims 1-14.
`
`Issue 4
`
`Regarding Benigno in view of Falls raising a substantial new question of
`
`patentability under 35 U.S.C. §103(a) for Claims 1-14, PO argues the instance of
`
`"tokenizing" said to correspond to Patentee's "tokens" in the subject claims (Hale
`
`Declaration, paragraph 17) fails because Benigno's "tokens" are not patentee's tokens.
`
`By way of explanation, Patentee clearly indicates that tokens of the '816 Patent are
`
`designed to be executed "...on any device, regardless of hardware differences or native
`
`operating system differences among the plurality of the devices." '816 Patent at column
`
`4, lines 55-60 (Hale Declaration, paragraph 19).
`
`RPX-1 003, p. 1 O
`
`RPX-1003, p.10
`
`

`
`Application/Control Number: 90/012,829
`
`Page 9
`
`Art Unit: 3992
`
`However, PO argues there is no evidence whatsoever that Benigno's "tokens"
`
`have this property. In fact, PO argues the evidence points to the opposite conclusion,
`
`i.e., that Benigno's "tokens" are customized to run on a single platform. See, for
`
`example, Figure 4 of Benigno and its associated text (p. 46, lines 4-9) which indicates a
`
`homogeneous computer network (Hale Declaration, paragraph 20).
`
`PO argues it is improper to conclude that just because Benigno happens to use
`
`the same term as patentee that the term is used the same way. In short, PO argues the
`
`Examiner has failed to find anything in Benigno that teaches this particular aspect of the
`
`instant invention. Thus, Benigno in view of Falls does not raise a substantial new
`
`question of patentability with respect to claim 1-14.
`
`Issue 5
`
`PO essentially repeats the same arguments presented above with respect to
`
`Issue 4 regarding Issue 5.
`
`Issue 6
`
`PO argues in the Warten Reference the term "tokenizing" merely means to take
`
`a search query which has been entered into a computer program and convert it into a
`
`list of words. That is all that the Warthen Reference teaches regarding tokenization. A
`
`syntactic structure is derived from the list of words which is in turn reformed into
`
`canonical forms by replacing synonyms with a canonical term (Warthen at Col. 5, Lines
`
`45-47). The canonical structure is then matched against a semantic network to obtain
`
`RPX-1 O03, p.11
`
`RPX-1003, p.11
`
`

`
`Application/Control Number: 90/012,829
`
`Page 10
`
`Art Unit: 3992
`
`well-formed questions which are representative of the possible meanings for the initial
`
`user query.
`
`In contrast, PO argues Patentee's use of the word "token" is much different than
`
`that of Warthen. In Patentee's claims 1, 2, 5-7, and 11-14, a plurality of tokens are
`
`transmitted to a remote computing device and then at least a portion of them are
`
`executed. Thus, tokens are executed by a remote device to implement the
`
`questionnaire. The "token" of Patentee's claims is not a list of words as defined by the
`
`Warthen Reference. As such, PO argues the Warthen Reference does not teach
`
`tokenizing as is recited in Patentee's specification and claims.
`
`Other Arguments
`
`PO argues the reexamination should not go forward because the parties are in
`
`litigation and cites several reasons why reexamination should not proceed (pages 8-10
`
`of response).
`
`Third Party Requester’s Response:
`
`Issue 1
`
`Regarding PO's argument that "the method of the '816 Patent specifically
`
`contemplates that connectivity to a central server will not be continuously available. As
`
`such, it is intended to be operational within a loosely networked environment as that
`
`RPX-1 O03, p.12
`
`RPX-1003, p.12
`
`

`
`Application/Control Number: 90/012,829
`
`Page 11
`
`Art Unit: 3992
`
`term is defined in the patent
`
`Patent Owner Statement at 3. Requester argues this is
`
`not an argument for patentability, as it is not required by the claims. Specifically,
`
`Requester argues claims 8-14 don't even mention the word "network" much less a
`
`"loosely networked environment," so any effort to limit claims 8-14 to a "loosely
`
`networked environment, is merely reading limitations from the specification into the
`
`claims. Reading limitations into the claims is prohibited by at least MPEP §2111.01.
`
`Further, claims 1-7 only require a "network" not a "loosely networked environment".
`
`Requester argues the '816 patent states:
`
`With regard to the present invention, the term "loosely networked" is used to
`
`describe a networked computer system wherein devices on the network are tolerant of
`
`intermittent network connections and, in fact, tolerant of the type of network connection
`
`available. In particular, if any communication connection is available between devices
`
`wishing to communicate, network transmissions occur normally, in real time. If a
`
`network connection is unavailable at that moment, the information is temporarily stored
`
`in the device and later transmitted when the connection is restored. Unless otherwise
`
`specified, hereinafter the terms "network" or "networked" refer to loosely networked
`
`devices.
`
`'816 at 4:61 -5:5.
`
`Requester notes that the explicit statement in the ' 816 patent that the Patent
`
`Owner refers to allows a "loosely networked" connection to be "tolerant of the type of
`
`network connection available" including "if any communications connection is available
`
`between the devices wishing to communicate, network transmissions occur normally, in
`
`real time."
`
`RPX-1 O03, p.13
`
`RPX-1003, p.13
`
`

`
`Application/Control Number: 90/012,829
`
`Page 12
`
`Art Unit: 3992
`
`Accordingly, Requester argues it is irrelevant if the '816 patent "contemplates
`
`that connectivity to a central server will not be continuously available" because the
`
`reference discloses that when connectivity is continuously available, a connection will
`
`exist. Communication will occur and be tolerant of the type of network connection
`
`available.
`
`Requester argues the limitations of the claims as well as the explicit definitions
`
`provided in the '816 patent, render the Patent Owner's arguments with respect to Issue
`
`No.
`
`1 moot.
`
`However, Requester argues should the Office disagree and require that the
`
`"loosely networked environment" only operates as argued by Patent Owner in the
`
`Patent Owner Statement, the combination of Rossmann and Rapport still teach this
`
`limitation. As stated in the Request and accepted by the Office in the Order, ''It would
`
`have been obvious to combine Rossmann with Rappaport so that when a connection
`
`fails, as will predictably happen, the device can reconnect and send the information
`
`upon reconnection. This would motivate a person of skill in the art to make the
`
`combination since disconnections are a common occurrence and Rappaport teaches a
`
`method of reconnection. See Rappaport at Abstract." EX parte Request at 27-28.
`
`Requester argues despite Patent Owner's suggestion to the contrary, the
`
`combination of Rappaport with Rossman teaches a method that is tolerant of
`
`intermittent failures of a wireless connection.
`
`RPX-1 O03, p.14
`
`RPX-1003, p.14
`
`

`
`Application/Control Number: 90/012,829
`
`Page 13
`
`Art Unit: 3992
`
`Issue 2
`
`Requester argues, as stated with respect to Issue No. 1, above, the claims do
`
`not require a method that is "robustly intolerant of failures in connectivity." Instead, the
`
`claims recite a "network" (claims 1-7) and "electronic communication" (claims 8-14).
`
`Requester argues Rappaport in view of Rossman teaches both a "network" and
`
`"electronic communication," and therefore, render the claims obvious. Requester argues
`
`Patent Owner has provided no argument to the contrary, and in fact, does not dispute
`
`the combination provides the feature of resuming connectivity upon a disconnection
`
`event. The claims do not recite multiple disconnection events, only connection,
`
`disconnection, followed by reconnection.
`
`Issue 3
`
`For Issue No. 3, Patent Owner raises nearly the same dispute of Issue No. 1,
`
`except to further argue that the combination would be "inoperable." Patent Owner
`
`Statement at 4. Requester argues Patent Owner's argument is based on an
`
`unsupported assertion by their expert, Dr. Hale. Requester argues if the declaration is
`
`considered, all that is stated is that the combination is inoperable because "[c]ombining
`
`the Rossmann reference with Falls does not provide a solution when additional decks
`
`are needed and there is no connectivity." Patent Owner Statement at 4. Requester
`
`argues this statement is not related to any aspect of the claim and is tantamount to an
`
`admission that Rossman in view of Falls teaches each limitation of the claims.
`
`Requester argues Patent Owner presents a hypothetical that the combination is not
`
`RPX-1 O03, p.15
`
`RPX-1003, p.15
`
`

`
`Application/Control Number: 90/012,829
`
`Page 14
`
`Art Unit: 3992
`
`operable in a situation where no connectivity exists, yet additional decks are needed.
`
`Requester argues the claims do not recite the argued "need" for additional decks and
`
`the prior art need only disclose that which is claimed.
`
`Requester argues the combination provides for a system that can encounter and
`
`recover from failed or terminated connections. Specifically, Requester argues Falls
`
`teaches that mobile devices can terminate connections and then reestablish those
`
`connections. Falls at 3:16-35, 16:24-29, and 7:16-21. Upon reestablishment of the
`
`connection, any requests will be processed and transmitted. Id. Accordingly, the
`
`combination solves the problem of inevitable connection failure. Requester argues
`
`nothing Patent Owner argues changes this fact, and reliance on Dr. Hale's testimony is
`
`not warranted by the contents of the declaration. Since the only "evidence" of
`
`inoperability is assertion, with no actual factual basis in the record, and Patent Owner
`
`has basically admitted that all the elements of the claims are taught by the combination,
`
`a rejection is proper in this instance.
`
`Issue 4
`
`Initially, Patent Owner states that the following quote is a definition of
`
`"tokenization" as used within the claims:
`
`In a preferred embodiment, a server is loosely networked to a plurality of
`
`computers (handheld, laptop, or desktop). Each computer is equipped with an
`
`operating system which allows common programming to execute on any device,
`
`RPX-1 O03, p.16
`
`RPX-1003, p.16
`
`

`
`Application/Control Number: 90/012,829
`
`Page 15
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`Art Unit: 3992
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`regardless of hardware differences or native operating system differences among
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`the plurality of devices. '816 patent at 4:55-60.
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`However, Requester argues tokens are not mentioned at all in this paragraph. It
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`is not clear how this is an express definition of tokenizing. Patent Owner also argues
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`that "there is no evidence whatsoever that Benigno's ‘tokens’ have this property —
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`operable when there exist hardware and operating system differences. Patent Owner
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`Statement at 5 (citing Benigno at FIG. 4 and 46:4-9). Requester fails to see any
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`indication that the system is "customized to run on a single platform" as argued by
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`Patent Owner. Figure 4, the basis of this statement, merely shows generic computers.
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`Patent Owner also cites to Benigno at 46:4-9, which reads:
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`In step 101, a nurse logs into a client computer 401. In step 102, the nurse, using
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`the client computer 401 (Figure 4) communicates with the server 402, in order to obtain
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`updated pathway instructions, etc., regarding what steps to perform during visit(s) for
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`one or more patient(s). The communication can take place via modern and standard
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`phone lines, via wireless transmission (e.g., cellular, etc.), via the Internet, or via any
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`other communication link.
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`Requester fails to see any indication that the "tokens" of Benigno are
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`"customized to run on a single platform" in the quoted section.
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`Finally, Patent Owner argues that "mere coincidence of vocabulary does not
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`raise a substantial new question of patentability." Patent Owner Statement at 5.
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`RPX-1 O03, p.17
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`RPX-1003, p.17
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`Application/Control Number: 90/012,829
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`Requester argues Benigno specifically discloses that the questionnaire tokens
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`represent pathway instructions. Requester argues Patent Owner fails to consider the
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`teachings of the references as a whole in reaching its conclusion that the questionnaire
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`features disclosed by the combination do not disclose the tokenizing feature recited in
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`the claims.
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`Issue 5
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`The Patent Owner makes that same argument for Issue No. 5 as was made with
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`respect to Issue No. 4. Since there are no new arguments presented by Patent Owner
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`and the arguments are still not persuasive, Requester refers to the rebuttals provided
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`for Issue No. 4.
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`Issue 6
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`Patent Owner argues that "in the Warthen Reference the term 'tokenizing' merely
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`means to take a search query which has been entered into a computer program and
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`convert it into a list of words." Patent Owner Statement at 7. Requester argues Patent
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`Owner does not actually make a substantive argument as to the differences between
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`the tokens taught by Warthen versus the tokens recited in the claims. The purported
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`difference argued is that "Patentee' s use of the word 'token' is much different than that
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`of Warthen. In Patentee' s claims
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`a plurality of tokens are transmitted to a remote
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`computing device and then at least a portion of them are executed." Patent Owner
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`Statement at 7. Requester argues devoid from this statement is any citation or proof
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`RPX-1 O03, p.18
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`RPX-1003, p.18
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`Art Unit: 3992
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`that the definition provided by Patent Owner is anything but attorney argument.
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`Requester argues merely saying that something is different is not sufficient to prevent
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`an obviousness rejection.
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`Requester argues Warthen teaches that a system can have a "[t]okenizer 150
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`convert[] the initial user query into a list of words and provides the list to parser 155.
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`One structure for conversion is an augmented transition network. Another approach to
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`tokenizing is to scan the initial user query and group the words into conceptual strings,
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`removing plurals and suffixes." Warthen at 5:28-33.
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`Requester argues the claims recite "tokenizing said questionnaire; thereby
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`producing a plurality of tokens representing said questionnaire." Specifically, the
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`Warthen tokenizer "converts the user query into a list of words" via an "augmented
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`transition network." So Warthen is converting, i.e., producing, a list of words, i.e.,
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`plurality of tokens, that provides a list, i.e., representing said questionnaire, to a parser.
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`This is entirely consistent with what the '816 patent describes for tokens: "As the client
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`enters questions and selects response types, server 24 builds a stack of questions and
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`responses, and assigns indices, or tokens, which point to each question or response."
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`'816 patent at 8:41 -43.
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`Requester argues Patent Owner provides no argument distinguishing the
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`Warthen tokens from the tokens of the claims at issue. Instead, merely saying that
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`tokens are not "a list of words" is not evidence that the tokenizing of the claims is not
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`taught by Warthen.
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`RPX-1 O03, p.19
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`RPX-1003, p.19
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`Further, Requester argues the Warthen reference is combined with Wright.
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`Wright teaches that a form engine "interprets one field at a time." Wright at Abstract.
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`Requester argues for a question to be interpreted by a form engine, it must be
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`executed, thereby being a "token" as argued by Patent Owner.
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`lmportantly, Requester
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`argues Patent Owner "cannot show nonobviousness by attacking references individually
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`where the rejections are based on combinations of references." MPEP §2145(lV).
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`Accordingly, the combination of Wright in view of Rappaport, Warthen, Brookler,
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`and Rossmann render claims 1, 2, 5-7, and 11-14 of the '816 patent obvious.
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`Other Arguments
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`Regarding PO’s arguments that the reexamination should not go fon/vard
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`because the parties are in litigation, Requester disagrees and argues the Office must
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`proceed with special dispatch (pages 7-8 of the Requester’s Response).
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`Examiner’s Response:
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`Issue 1
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`Regarding PO and Declarant arguments that Rossmann assumes a connection
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`to the server is always available and Rappaport teaches a method of maintaining
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`RPX-‘I003, p.20
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`RPX-1003, p.20
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`connectivity and the combination does not yield a method that is robustly intolerant of
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`failures in connectivity, Examiner disagrees.
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`Initially, the claims do not require a method be “robustly intolerant of failures in
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`connectivity”. The claims merely require establishing a network connection, terminating
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`a network connection and reestablishing a network connection.
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`Regarding PO's argument that "the method of the '816 Patent specifically
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`contemplates that connectivity to a central server will not be continuously available. As
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`such, it is intended to be operational within a loosely networked environment as that
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`term is defined in the patent
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`Patent Owner Statement at 3. A "loosely networked
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`environment," is also not required by the claims.
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`Further column 4, line 61—column 5, line 5 of the ‘816 patent states “With regard
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`to the present invention, the term "loosely networked" is used to describe a networked
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`computer system wherein devices on the network are tolerant of intermittent network
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`connections and, in fact, tolerant of the type of network connection available. In
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`particular, if any communication connection is available between devices wishing
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`to communicate, network transmissions occur normally, in real time. If a network
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`connection is unavailable at that moment, the information is temporarily stored in the
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`device and later transmitted when the connection is restored. Unless otherwise
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`specified, hereinafter the terms "network" or "networked" refer to loosely networked
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`devices.” This section allows a "loosely networked" connection to be "tolerant of the
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`type of network connection available" including "if any communications connection is
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`available between the devices wishing to communicate, network transmissions occur
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`RPX-‘I003, p.21
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`RPX-1003, p.21
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`normally, in real time." Accordingly, the reference discloses that when connectivity is
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`continuously available, a connection will exist. Communication will occur and be tolerant
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`of the type of network connection available.
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`Further, the combination of Rossmann and Rapport still teach this limitation even
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`as argued by the PO. As stated in the Request, ''It would have been obvious to combine
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`Rossmann with Rappaport so that when a connection fails, as will predictably happen,
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`the device can reconnect and send the information upon reconnection. This would
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`motivate a person of skill in the art to make the combination since disconnections are a
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`common occurrence and Rappaport teaches a method of reconnection. See Rappaport
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`at Abstract." Ex parte Request at 27-28. The combination of Rappaport with Rossman
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`teaches a method that is tolerant of intermittent failures of a wireless connection. As to
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`PO’s argument that Rappaport only teaches maintaining connectivity, Examiner
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`disagrees. See column 7, lines 44-63 and column 2, lines 44-58.
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`Issue 2
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`The claimed method does not recite a method that is "robustly intolerant of
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`failures in connectivity." Instead, the claims recite a "network" (claims 1-7) and
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`"electronic communication" (claims 8-14). Rappaport in view of Rossman teaches both
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`a "network" and "electronic communication," and therefore, render the claims obvious.
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`The combination provides the feature of resuming connectivity upon a disconnection
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`event. The claims do not recite multiple disconnection events, only connection,
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`disconnection, followed by reconnection.
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`RPX-‘I003, p.22
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`RPX-1003, p.22
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`Issue 3
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`For Issue No. 3, Patent Owner and Declarant raise nearly the same dispute of
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`Issue No. 1, except to further argue that the combination would be "inoperable."
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`Regarding the argument that the combination is inoperable because "combining the
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`Rossmann reference with Falls does not provide a solution when additional decks are
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`needed and there is no connectivity”, Examiner notes this statement is not related to
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`any aspect of the claim. The claims do not recite the argued "need" for additional
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`decks.
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`The combination provides for a system that can encounter and recover from
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`failed or terminated connections. Specifically, Falls teaches that mobil