SIN 95f002,239
`
`INTER PARTES REEXAMINATION
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent No.:
`
`8,005,455
`
`Examiner:
`
`Colin LaRose
`
`Serial No.:
`
`95f002,239
`
`Group Art Unit:
`
`3992
`
`Filed:
`
`September 13, 2012
`
`Docket No.:
`
`613 I2USR2
`(102.0l05USR2)
`
`Title:
`
`REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR
`AN ESTABLISHMENT
`
`RESPONSE
`
`Mail Stop “Inter Partes Reexam”
`Attn: Central Reexamination Unit
`
`Commissioner for Patents
`
`I) O Box
`.
`Alexandrla, VA 223 I 3-I450
`
`Sir:
`
`CI'IR'TII"IC:\'TF. OF N'IAII.IN(i OR 'TR;\XS_\«'II.‘s'SION [37 CFR 13(3)]
`I hereby curli 1'}! that Ihis correspondence is being:
`
`E Lransmilled lo Failed Slates Patient and Trademark ()1'IICe on lhc dale
`shown in ‘low via th ‘ I'Sl"l'() ‘l‘c11'<mie filing S}-‘SI ‘m.
`I
`I
`L L
`I
`
`l-‘cbruaiy 6, 2013
`Dale
`
`flielsy l)eVriesx"
`Bets}-' ])e\«"ries
`
`In response to the Inter Partes Reexam Non-Final Office Action dated December 6,
`
`2012, the following response is respectfully submitted.
`
`Remarks begin on page 2 of this paper.
`
`APP23OO
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`APP2300
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: I02.0I05USR2
`
`Remarks
`
`The Office Action mailed December 6, 2012 (“Office Action”) has been received
`
`and carefully considered. Claims I-20 of U.S. Patent No. 8,005,455 (“the ’455 patent”)
`
`stand rejected. Claims 1-20 are pending. Patentee respectfully submits that the pending
`
`claims are in condition for allowance.
`
`Background
`
`The specification of the ‘455 patent discloses a new wireless intercom system for
`
`use in an establishment such as a quick service restaurant with vehicular drive-up lanes.
`
`A wireless intercom system can be used to facilitate communication between a customer
`
`who places an order at a menu board at the drive-up lane and the staff of the
`
`establishment (e.g., restaurant), including the order taker inside the establishment. The
`
`intercom system also allows communication between staff within the establishment.
`
`In a quick service restaurant, an intercom system typically includes a post-
`
`mounted speaker and microphone, located near the menu board in the drive-up lane that
`
`is, typically, hard-wired to a base station within the restaurant. The system also includes
`
`portable receiversftransmitters (e.g., headsets) that wirelessly communicate with the base
`
`station. A staff member with a headset can communicate with other staff wearing a
`
`headset andfor with the customer at the post-mounted speaker. The base station typically
`
`includes various parameters for the system, such as volume or gain, which a staff member
`
`can adjust at the base station. The settings for these parameters are typically set up by a
`
`technician or installer when the system is first installed.
`
`The reliability ofintercom systems is vital to establishments, such as quick
`
`service restaurants, with drive-thru ordering.
`
`In some quick service restaurants a majority
`
`of its business comes from its drive-through customers. (‘455 patent at col. 1, 11. 54-57.)
`
`As such, if the intercom system becomes maladjusted, or otherwise does not function
`
`properly, there is a potential of losing a significant amount of business.
`
`Wireless intercom systems can become maladjusted for various reasons. For
`
`example, the conditions of the environment at the establishment may have changed from
`
`the time that the installer initially set up the system.
`
`In addition, a common problem
`
`encountered in the prior art is that intercom adjustments made at the headsets (or the base
`
`Page 2 of 78
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`APP2301
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`APP2301
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: I02.0I05USR2
`
`station) could throw off the balance of the intercom system and thus render it unstable,
`
`unusable, or both. (‘455 patent at col. 4, line 63 - col. 5, line 2.)
`
`Prior to the present invention, when a wireless intercom system experienced
`
`problems that could not be resolved by staff at the establishment, a service technician had
`
`to be called onto the premises to make adjustments directly at the base station of the
`
`intercom system. For some geographical locations, it could take a considerable time for
`
`the technician to arrive at the establishment. Such delays resulted in considerable
`
`downtime for the intercom system and the corresponding loss of drive-up business.
`
`The wireless intercom system of the ‘455 patent overcomes this and other
`
`problems of prior art systems. The disclosed system allows for adjustments to the system
`
`to be made locally at the base station as well as remotely, such as by a repair technician
`
`who is at a different facility. The base station is directly connectable to a wide area
`
`network (eg, the internet), thereby permitting a technician to access the base station and
`
`make necessary adjustments to the system without being on-site.
`
`In addition, the ’455 patent discloses storing a group of parameter settings into a
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`template of parameters that can be recalled either locally at the establishment or from a
`
`remote location via the wide area network connection. For example, the template could
`
`be the initial settings developed by the installer when the system was first set up. Also,
`
`known settings for parameters which provide for a particular response or performance of
`
`intercom systems, or which may typically eliminate common issues associated with
`
`maladjustment of parameters, may be formed as a template. A template can also be used
`
`to ensure consistency in the settings of the intercom systems of multiple establishments.
`
`These improvements reduce the amount of downtime that occurs when a wireless
`
`intercom system malfunctions or otherwise requires adjustment.
`
`Primary Cited References
`
`There are nine prior art references cited in the Office Action. However, the
`
`Office Action relies on two primary references as a basis for all of the adopted rejections:
`
`U.S. Patent Publication No. 2005;’0l I3 I 36Al (“Gosieski) and HM Electronics PRO850
`
`Wireless Intercom Operating Instructions (“PRO850” or “the PRO850 Manual”). A brief
`
`description of these two primary references, including a discussion of the features that are
`
`disclosed and features that are not disclosed in these references, is set forth below. This
`
`Page 3 of 78
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`APP2302
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`APP2302
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`discussion provides a quick primer and reference point for understanding the disclosure
`
`germane to the analysis that follows.
`
`A. Gosieski
`
`Gosieski is directed to a “wireless multi-media system” which can incorporate a
`
`wireless microphone system and an in-ear monitoring system for enhanced sound
`
`transmission, production, recording, sound reinforcement and monitoring in real-time.
`
`(Gosieskt at 111] 2, 18.) Gosieski is principally directed to communication systems for
`
`studios, live performances, and other professional audio settings in which technicians are
`
`located on-site. (See Gosieski at 1]1| 18, 65 (referring to “performers” and
`
`“instrumentalists”), 66 (referring to “vocalists”), 69 (referring to “artistst
`
`instrumentalists”).)
`
`Gosieski does discuss “remote” adjustment of parameters of microphones,
`
`instruments, cameras, or other audio or visual input devices, but Gosieski is using the
`
`term “remote” to distinguish between adjustments made directly to the input device itself,
`
`such as a guitar being played by a musician engaged in a concert performance, from
`
`adjustments made at an access point or control panel and not to the input device being
`
`used by the musician/performer. As stated by Gosieski:
`
`In this way, the user operating a microphone, instrument,
`camera or other audio or visual input device can be
`monitored, and various parameters associated with the
`sound or visual input can be ar_i;'u.sted rem()te}y, as opposed
`to phy.s't‘cal, t‘a-person a({jt:.s'tment by an engineer or st‘mt’!ar
`t’nd£vt'dttaf .
`
`(Gosieski at 1] 35 (emphasis added); see .c1.".s'o 1| 5?‘ (“The present invention allows for the
`
`remote monitoring and adjustment of all system, base station, [EM subsystem, audio
`
`subsystem and visual subsystem functions e!t‘mt‘natt‘ag the need to phy.s't‘cally argjmst
`
`traa.s'cet‘ver parameters at the traascet’ver t’t.s'e)_’ff”)_',1 9 (characterizing prior art as lacking
`
`because “Controls related to the body pack and handheld transmitters reside within each
`
`unit” which “hinders the ability to effectively manage the system remotely” such that
`
`prior art systems “still requires the engineer, assistant or stagehand to ph,v.s'icaHy t'r.-teract
`
`with the tram-.s'mitter in order to modify the transmitter's parameters.”).)
`
`Page 4 of 78
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`APP2303
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`APP2303
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`This particular definition of “remote” being used by Gosieski is further
`
`demonstrated by the fact that “remote management” is a reference to the ability of the
`
`access pointfbase station to manage the clientsfaudio inputs located at the same location
`
`as the access pointfbase station. (See, e.g._. Gosieski at 1| 18 (“The present invention also
`
`provides a method for bi-directional communication between the remote components and
`
`the access point enabling remote system management”) Gosieski does not teach any
`
`applications where the access point (i.e., base station) is at a different establishment than
`
`the audiofvisual inputs;-‘transceivers. The engineer that operates the system is also on-site.
`
`(See, e.g. , Gosieski at 1|1l 6?‘, 69 (explaining how an engineer sets up the system before
`
`performances and operates the system during performances)) These references to
`
`“remote” control are readily contrasted with the way in which Gosieski refers to
`
`interactions with a different locationfpremises:
`
`In another embodiment, the access point or base station can
`act as a server for web based content and control backed up
`by an appropriate database and data routing algorithms.
`The local .s'erver_fimcti'0a' is to provide a web based
`ermtmand, c()rm'o." and S_}FSI£:‘fI£ manfro:'ing_f.§1c*ifi1j:_fE):' the
`engineer. Additionally, the web server providing that
`facility provides an interface to the outside worm’. Webcast
`and interactive functions are thus available through this
`portal, allowing a myriad of applications heretofore
`unavailable in a single integrated media network product.
`For example, the present invention in this embodiment can
`provide web casts to be broadcast over the Internet. Such
`webcasts may be applied in a variety of business situations.
`For example, performers can market their services to the
`recording industry by broadcasting events directly to the
`decision makers. Integration of the performances can be
`integrated with multimedia packaging overlays. Also,
`performers and venues can broadcast events for profit
`extending the reach of the performance to the living room
`or other venues. Further, venues can charge performers a
`nominal fee for use of the Internet infrastructure within the
`
`venue using as a carrier for the broadcast. Also, producers
`now have a means by which performances can be broadcast
`
`' The access point would not be able to function as a “local server” if at a
`different location than the audiofvisual input componentsftransceivers. This passage also
`confirms that the engineer operating the communication system is also on-site (since sfhe
`is issuing commands using the access point functioning as a “local server”).
`
`Page 5 of 78
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`APP2304
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`APP2304
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`

`
`Amendment and Response
`Serial No: 95:’002,239
`Docket No.: I02.0I05USR2
`
`and scripted via Edit Decision Lists or ad hoc direction to
`the outside world thus providing a better packaged, more
`professional product.
`
`In addition, audiences located anywhere where there is
`Internet access can provide feedback to performers and
`producers in real time even to the point of requesting
`specific material, thus improving the quality of the event
`experience for all concerned. Further, educators can be
`provided the opportunity to teach from the classroom or the
`field at will, interactively with students located anywhere
`the Internet goes.
`
`(Gosieski at 1|1| 80-81.) Patentee believes this is the only discussion in Gosieski relating
`
`to audio or data Communications involving the Internet or other WAN. Notably absent
`
`from this passage is any suggestion that the engineer is adjusting audio parameters from a
`
`different location than the venue of the performance.
`
`It bears noting that the above-quoted passage was not included in the original
`
`provisional filing of Gosieski. This language was added for the first time in the October
`
`2?‘, 2004 non-provisional application that ultimately published as the Gosieski application
`
`on which Requester and Office Action rely. This is relevant because, as explained below,
`
`the Patentee’s invention predates the Gosieski October 27, 2004 filing date.
`
`B. PRO850 Manual
`
`The PRO850 Manual generally discloses a wireless intercom system, the context
`
`ofwhich is exemplified in Figure l on page 1, which depicts an environment consistent
`
`with a broadcastfproduction studio. Beyond Figure l of the PRO850 Manual, there is
`
`little in the way of further details regarding the applications for which the system is
`
`designed. That information can be found in Exhibit F, attached herewith, which is the
`
`Press Release for the PRO850 Wireless Intercom System dated September 2, 2003
`
`(hereinafter, “Press Release”) corresponding to the September I1, 2003 publication date
`
`of the PRO850 Manual. The Press Release characterizes the PRO850 system as a “UHF
`
`Wireless Intercom System,” which is consistent with the statement in the PRO850
`
`Manual that the “PRO850 equipment operates in the UHF band...” (PRO850 Manual at
`
`p. 1.) The Press Release further indicates that while the “PRO850’s potential application
`
`spans a wide range of business segments,” it is specifically designed to be used in
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`Page 6 of 78
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`APP2305
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`APP2305
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`production environments by “pro-audio professionals” who are “technically savvy
`
`professionals” who “preferred more flexibility and operating power in a wireless
`
`intercom system.” (Press Release at para. 2.)
`
`Referring back to the PRO850 Manual, the disclosed system has a base station
`
`and one or more beltpacs that communicate with the base station. The base station is
`
`connectable to a computer via a “USB type-B computer connector” or a “9-pin RS-232
`
`computer connector.” (See page 2 of the PRO850 Manual, for example). Users may
`
`connect the PRO850system to a PC in order to modify and save base station and beltpac
`
`configuration settings. Specifically, the PRO850 Manual teaches that an RS-232
`
`interface cable can be used to connect the PRO850 base station to the PC in which PC850
`
`software is installed. (PRO850 Manual at p. 35.)
`
`The PRO850 Manual indicates that changes to the settings of the beltpaes cannot
`
`be changed wirelessly, and require a wired connection between the base station and the
`
`beltpaes. (PROSSO Manual at p. 2, no. 2 (“After beltpac configuration settings have been
`
`made in the base station, plug one end of the enclosed R110 interconnect cable into this
`
`connector, and plug the other end into the. . .bottom of a beltpac to upload the settings into
`
`the beltpac. Repeat this to upload settings for each beltpac to be used”); p. 21 (“A
`
`beltpac must be connected to the BELTPAC CONFIG connector on the front panel of the
`
`base station to enable uploading of beltpac settings. To ensure that new settings are
`
`properly activated, turn the beltpac off and disconnect it after uploading.”).)
`
`Claim Interpretation Ruling in Order Granting Reexamination
`
`The Office Action was attached to an Order Granting Reexamination of U.S.
`
`Patent No. 8,005,455 (hereafter “Order”).
`
`In the Order, the examiner addressed the issue
`
`of whether the recitation in claim 1 of “a base station connectable to a wide area
`
`communications network” requires the base station to be capable of connection to a wide
`
`area communication network (WAN) or whether it requires the base station to be actually
`
`physically connected to a WAN. (See Order at pp. 6-7) The examiner concluded that
`
`this claim language (from claim l) requires the base station to in fact be connected to a
`
`WAN, such that the claims would only cover a system that has been installed and would
`
`not directly read on a system “in the box” (i.e., the state in which the system is distributed
`
`and sold by its rnanufacturerfdistributorfretailer). (Order at p. 7). According to the
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`Page 7 of 78
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`APP2306
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`APP2306
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`examiner, this claim language could not be more broadly interpreted to cover a system in
`
`which the base station is configured for connection to, but not actually connected to, a
`
`WAN because such an interpretation conflicts with the prosecution history and the
`
`alleged essentiality ofa WAN to operation ofthe system. (Id. at 6-7".)
`
`Contrary to the Order, claim 1 only requires the capability of connecting to a
`
`WAN, not a live connection to a WAN. The claim language dictates this conclusion.
`
`The claim recites a “base station connectabfe to a wide area communications network.”
`
`The use of the word “connectable” indicates that this limitation relates to the capability of
`
`the base station being connected to a WAN. Federal Circuit case law confirms that
`
`language referring to capabilities does not confine claims to devices in which those
`
`capabilities are being actively exploited. See, e.g., Intel Corp. v. ITC, 946 F.2d 821, 832
`
`(Fed. Cir. 1991) (“Because the language of claim l refers to ‘programmable selection
`
`means‘ and states ‘whereby when said alternate addressing mode is selected‘, the accused
`
`device, to be infringing, need only be capable of operating in the page mode”); see also
`
`Finfjan, Inc. v. Secure C()mpun'ng Corp., 626 F.3d 1 l9?', l204 (Fed. Cir. 2010) (“[T]o
`
`infringe a claim that recites capability and not actual operation, an accused device ‘need
`
`only be capable of satisfying the claim limitations, even though it may also be capable of
`
`noninfringing modes of operation.”’ (quoting Ime{))_; CSB—Sy.s'tem Int ‘I, Inc. v. SAP Am,
`
`Ir.-c., No. 10-2156, 2012 U.S. Dist. LEXIS 53794, *36 (E.D. Pa. Apr. 16, 2012) (“Had
`
`the drafters of the patent intended that the telephone devices be connected, they would
`
`have used the phrase ‘directly connected’ in lieu of ‘directly connectable."’). A base
`
`station can have the capability ofa WAN connection without actually being connected to
`
`a WAN.
`
`In the same way, a trailer is towable (or connectable) to a car without a car
`
`actually being connected up to a trailer.
`
`The analysis in the Order shows that the Examiner appreciates the difference
`
`between the terms “connected” and “connectable,” and that the claim language does not
`
`require an actual WAN connection. The Order includes the following statement:
`
`If the claims were interpreted so as to not require a WAN
`(i.e., to require only an intercom system corm-eerabfe to a
`WAN), then the claims putatively would not differentiate
`from or be unobvious over the prior art advanced by the
`examiner during the original prosecution.
`
`Page 8 of 78
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`APP2307
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`APP2307
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`(Order at pp. 6-?‘ (emphasis in original).) In the parenthetical provided in the above
`
`quote, the examiner provides language that would be consistent with an interpretation
`
`that does n_ot require a WAN.
`
`In order to express that idea, the parenthetical uses (and in
`
`fact emphasizes) the word “connectable.” That is the very word that appears in claim 1.
`
`As such, it is clear that the plain meaning of the claim language does not require an actual
`
`WAN connection. Rather, it merely requires that the base station be capable of
`
`connection to a WAN.
`
`The Examiner‘s proposed construction improperly equates the term “connectable”
`
`with “connected,” creating a situation in which the claims are confined to a device that is
`
`actually installed, plugged in, and running. The Patentee specifically chose claim
`
`language that covers a system regardless of whether it is still “in the box” or installed,
`
`plugged in, and running, and the case law confirms that the Patentee’s choice in language
`
`cannot be ignored.
`
`The other language in claim l
`
`is Consistent with an interpretation that only
`
`requires the base station to be capable of a WAN connection. All of the elements in
`
`claim l referring to connections and operability are directed to capability (e.g., “said base
`
`station being configui'a!J}e, “at least one parameter being adjustable .
`
`.
`
`. [and] remotely
`
`i‘eviewab!e and being remotely adj usta!J}e”), further demonstrating that the Patentee
`
`crafted its claims to cover devices “in the box” in addition to devices that have been
`
`installed and are in active operation. An intercom system that has the structure that
`
`enables a WAN connection and that allows for remote monitoringfadjustment has those
`
`capabilities regardless of whether the system is actually physically connected to a WAN.
`
`The Order also states that a WAN is an “essential element” of the intercom
`
`system in the ‘455 patent. (Order at p. 7.) In support of this assertion, the Order states
`
`that without a WAN the system could not achieve its main purpose of being remotely
`
`configurable. (M) Patentee respectfully disagrees. The specification never refers to a
`
`WAN as an essential element, and the claims expressly state otherwise. A system can
`
`have the capability of remote configuration (i.e., remotely configurable) without actually
`
`being connected to a WAN. Admittedly that capability is displayed when the system is
`
`connected to a WAN, but the connection to a WAN does not provide the capability.
`
`Page 9 of 78
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`APP2308
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`APP2308
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`Rather, a system is remotely configurable by virtue of the system (i.e., the base station)
`
`having features that allow connection and remote access to the system parameters.
`
`The Order also suggest the prosecution history dictates a construction requiring an
`
`active WAN connection. (Order at pp. 6-7.) The Order includes a summary of the
`
`prosecution history that purportedly shows that the claims were allowed because the
`
`WAN limitation was missing from the prior art. (Order at pp. 3-6.)
`
`Patentee disagrees that the referenced prosecution history supports the claim
`
`interpretation set forth in the Order. The plain meaning of the claim limitation controls
`
`absent a clear showing in the specification or prosecution history that the patentee gave a
`
`claim term a different meaning. See MPEP § 21 l 1.01. The quoted excerpts from the
`
`prosecution do not clearly alter the plain meaning of the language in claim l.2 The
`
`arguments that the references fail to disclose a WAN connection (or making remote
`
`changes via a WAN) are not inconsistent with an interpretation of claim 1 that merely
`
`requires the capability to connect to a WAN (and the capability to make remote
`
`adjustments via a WAN).
`
`In distinguishing the Laurila reference (see excerpts cited on
`
`pages 5-6 of the Order), the applicant explained that the disclosed personal area network
`
`(PAN) is not used to adjust handset parameters, and thus it did not disclose at least one
`
`parameter that is remotely adjustable and reviewable via a WAN. Similarly, applicant
`
`explained that because the disclosed Laurila PAN was not used to adjust parameters,
`
`Laurila actually taught away from the use of a WAN to remotely adjust parameters.
`
`These arguments support a conclusion that Laurila does not disclose the capabifiry of
`
`connection to a WAN or the capabt'lt‘ry of remotely adjusting parameters as recited in
`
`claim l. None of these statements say that claim 1 requires an operating WAN
`
`connection. Conversely, an interpretation that claim 1 requires an actual connection is
`
`inconsistent with the Patentee‘s statement distinguishing Laurila in view of Sabongi.
`
`(April l8, 201 l Response at pp. 6-7 (“Laurila in view of Sabongi does not render obvious
`
`3 It is noteworthy that the quoted statements from the prosecution history
`pertained to application claims 1 and 2. Application claim 2 ultimately issued as patent
`claim l0, which as mentioned above is directed to a method that explicitly recites the step
`of remote adjustment via a WAN. Thus, any theoretical discussion of actual connection
`to a WAN is relevant to the specific language in application claim 2 (issued claim 10).
`
`Page 10 of 78
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`APP2309
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`APP2309
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`technology where at least one configurable parameter .
`
`.
`
`. can be remotely i‘eviewab!e
`
`and remotely adjustable via a [WAN].”) (emphasis added).)
`
`Lastly, the statement in the Office Action that a WAN connection is an essential
`
`element of the claims because it is necessary to perform remote adjustments is legally
`
`incorrect. This logic would apply with equal force to electricity—electricity being
`
`essential to the ability to make remote adjustments to the system. But an applicant need
`
`not claim the electricity necessary to power a device with novel functionality.
`
`In the
`
`same way, Patentee need not claim a WAN.
`
`Ground #1: Adopted Rejections Based on Gosieski
`
`The Office Action, under the heading Ground #1, adopted five different rejections
`
`based on Gosieski. (Office Action at 4.) Patentee respectfully traverses all of these
`
`rejections. As discussed below, Gosieski is not prior art to the claimed inventions and
`
`thus cannot be relied on to support a rejection ofthe present claims. Further, the claims
`
`are patentable because neither Gosieski nor any combination of the above-mentioned
`
`references discloses all the elements of the rejected claims.
`
`A. Rejection of Claims 1-5, 7, 8, 10-15 and 17-20 under 35 U.S.C. § 102(e) as
`
`Anticipated by Gosieski
`
`The Office Action rejected claims 1-5, 7, 8, 10-15 and 17-20 as anticipated by
`
`Gosieski. Patentee respectfully traverses this rejection because (1) Patentee’s invention
`
`antedates the effective date of the Gosieski reference, and also because (2) Gosieski does
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`not teach the invention encompassed by the claims.
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`For the reasons set forth below this rejection is improper and should be withdrawn.
`
`1. Gosieski is Not Prior Art
`
`2. The effective priority date of Gosieski under 35 U.S.C. § I02(e) is
`October 27, 2004.
`
`Pursuant to 35 USC § l02(e):
`
`A person shall be entitled to a patent unless- (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 Patentee for patent or (2) a patent
`granted on an application for patent by another filed in the United States before
`the invention by the Patentee for patent. ..
`
`Page 11 of 78
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`APP231O
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`APP2310
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`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No.: l02.0l05USR2
`
`In this case, the Office Action relies upon the published non-provisional Gosieski
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`patent application to support an anticipation rejection under l02(e). The Office Action
`
`did not address the issue of the effective l02(e) reference date of Gosieslci.
`
`The Request for Reexamination (“Request”) states that “[s]hould 3M attempt to
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`swear behind the priority date of the Gosieslci patent publication, [Requester] reserves the
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`right to rely on the disclosure of US. Provisional Patent Application No. 60f524,T’9,
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`from which the Gosieski patent publication claims priority.” (Request, p. 12) To the
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`extent the Requester meant to suggest that it was reserving the right to later argue that the
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`Gosieski publication should be given an effective l02(e) date based on the filing date of
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`the provisional application (see MPEP 2l36.03(lll) (stating that a provisional application
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`can be relied upon to establish a critical reference date under l02(e) for a published
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`application only when it provides 35 USC. § 1 12 support for the relied upon subject
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`matter in the published application)), the Requester never actually made the argument
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`that the provisional disclosure invalidates the claims, and never explained the basis for
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`such a position. Patentee is, therefore, precluded from challenging such a proposition.
`
`The presumptive reason Requester does not rely upon the date of the provisional
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`Gosieski filing is that the provisional application does not properly support the subject
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`matter relied upon by Requester, or examiner, to make the rejection pursuant to MPEP
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`2l36.03(lll). Asjust one example, paragraph 80 of Gosieski (which is relied upon in the
`
`Office Action in support of the pending rejections) is not included in the provisional
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`filing, yet this was the primary passage on which Requester relies to argue that Gosieski
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`discloses remote adjustment via a wide area communication network.
`
`In sum, neither the Requester nor the Office Action has taken the position that the
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`date ofthe Gosieski provisional can be relied upon pursuant to MPEP 2l36.03(lll). As
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`such, for purposes of addressing this rejection, the critical reference date of Gosieski is
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`October 2?‘, 2004, which is the filing date of the non-provisional application.)
`
`3 It would deprive Patentee of its due process rights if the examiner were to
`sustain the pending rejection based on the filing date of the provisional application
`without first providing Patentee an opportunity to address such a new position.
`It would
`also be improper for Requester to be permitted to take this position, in the first instance,
`only after Patentee has filed its responsive papers, since that would similarly deprive
`Patentee the opportunity to address those arguments. Accordingly, any rejection that
`
`Page 12 of 78
`
`APP2311
`
`APP2311
`
`

`
`Amendment and Response
`Serial No: 95:’()()2,239
`Docket No: l02.0l05USR2
`
`b. The inventor of the patented invention conceived of the invention
`no later than June 1, 2004, and Gosieski does not qualify as prior
`art under 102(e).
`
`As demonstrated in the appended Declaration of Steven Awiszus Under 3?‘ C.F.R.
`
`1.131 (“Awiszus Declaration”), the inventor of the claimed invention conceived of the
`
`invention to which all pending claims are directed no later than June 1, 2004.4 The
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`Awiszus Declaration confirms that the inventor diligently pursued the invention from the
`
`date of conception through the date on which he filed the application that resulted in the
`
`subject patent. Based on this conception date, and the subsequent diligence of the
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`inventor in reducing his invention to practice, Gosieski does not qualify as prior art under
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`35 U.S.C. § l02(e). For this reason alone, all rejections based on Gosieski should be
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`withdrawn.
`
`2. Gosieski Lacks Elements Required by the Claims
`
`a. Gosieski does not disclose remote adjustment of a parameter
`
`Independent Claim l (and its dependent claims 2-5 and 7-8) is directed to a
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`“remotely configurable wireless intercom system” in which the wireless communication
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`between a base station and each of a plurality of headsets is “configurable with at least one
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`parameter.” The claim further recites the following:
`
`0
`
`0
`
`“a base station connectable to a wide area communication network”; and
`
`“said at least one parameter being remotely reviewable and being remotely
`adjustable via said wide are communication network”
`
`Independent claim 10 (and its dependent claims l l-l 5 and 17-20) is directed to “a
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`method of providing a remotely configurable wireless intercom system .
`
`.
`
`. having a base
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`station connectable to a wide area communication network.” Also, these claims (similar to
`
`claim 1) recite the step of “remotely reviewing and adjusting said at least one parameter via
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`said wide area communication network.”
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`might be based on such a new position would not properly be the subject of an Action
`C losing Prosecution.
`4 The Patentee believes the inventor conceived of the claimed invention prior to
`June 1, 2004, but relies on the June l, 2004 conception date for purposes of the present
`Response. Patentee reserves the right to offer evidence of an earlier conception date
`should that be necessary to address any new art relied upon by the examiner.
`
`Page 13 of 78
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`APP2312
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`APP2312
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`

`
`Amendment and Response
`Serial No: 95t’()()2,239
`Docket No.: I02.0I05USR2
`
`The Office Action concluded that Gosieski disclosed all of the above-quoted claim
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`elements.
`
`In his discussion, the examiner incorporated by reference the portions of the
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`Request that explain how Gosieski purportedly discloses the claim elements in the rejected
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`claims. See page 5 of the Office Action (incorporating Exhibit 13 and pages 7'-I3 of the
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`Request).
`
`In support of the conclusion that Gosieslci discloses the claimed element of
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`remote review and remote adjustment of a parameter vi