UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
`
`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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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`90/013,302
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`07/2112014
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`6,542,076 Bl
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`2538
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`7590
`RAYMOND A. JOAO ESQ.
`122 BELLEVUE PLACE
`YONKERS, NY 10703
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`09/08/2014
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`EXAMINER
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`REICHLE, KARIN M
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`ART UNIT
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`PAPER NUMBER
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`3992
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`MAIL DATE
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`DELIVERY MODE
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`09/08/2014
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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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`VWGoA - Ex. 1012
`Volkswagen Group of America, Inc., Petitioner
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`1
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`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
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`KENYON & KENYON LLP
`
`ONE BROADWAY
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`NEW YORK, NY 10004
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 901013,302.
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`PATENT NO. 6,542,076 81 E.
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`ART UN IT 3992.
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`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)).
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`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)).
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`PTOL-465 (Rev.0?-04)
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`2
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 2
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`DECISION ON REQUEST FOR EX PARTE REEXAMINATION
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`Third Party requester submitted a request for reexamination with a filing date of July 21,
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`2014, requesting reexamination of claim 3 of US Patent 6,542,076 (hereinafter also referred to as
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`'076). A substantial new question of patentability affecting claim 3 of '076 is raised by the
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`request for ex parte reexamination. Accordingly, claim 3 will be reexamined.
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`Extensions of Time
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`Extensions of time under 37 CPR 1.136(a) will not be permitted in these proceedings
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`because the provisions of 37 CPR 1.136 apply only to "an applicant" and not to parties in a
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`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
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`"will be conducted with special dispatch" (37 CPR 1.550( a)). Extension of time in ex parte
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`reexamination proceedings are provided for in 37 CPR 1.550(c).
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`Notification of Concurrent Proceedings
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`The patent owner is reminded of the continuing responsibility under 37 CPR 1.565( a), to
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`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving
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`Patent No. 6,542,076 throughout the course of this reexamination proceeding. See MPEP §§
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`2207, 2282 and 2286.
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`Amendment in Reexamination Proceedings
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`Patent owner is notified that any proposed amendment to the specification and/or claims
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`in this reexamination proceeding must comply with 37 CPR 1.530(d)-U), must be formally
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 3
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`presented pursuant to 37 CPR 1.52(a) and (b), and must contain any fees required by 37 CPR
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`1.20(c). See also discussion infra, i.e. Other Matters
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`Submissions
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`In order to insure full consideration of any amendments, affidavits or declarations or
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`other documents as evidence of patentability, such documents must be submitted in response to
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`the first Office action on the merits (which does not result in a close of prosecution).
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`Submissions after the second Office action on the merits, which is intended to be a final action,
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`will be governed by the requirements of 37 CPR 1.116, after final rejection and by 37 CPR 41.33
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`after appeal, which will be strictly enforced.
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`Waiver of Right to File Patent Owner Statement
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`In a reexamination proceeding, Patent Owner may waive the right under 37 C.P.R. 1.530
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`to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner
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`waives the right under 37 C.P.R. 1.530 to file a Patent Owner Statement and proof of service in
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`the manner provided by 37 C.P.R. 1.248, if the request for reexamination was made by a third
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`party requester, see 37 C.F.R 1.550(f). The Patent Owner may consider using the following
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`statement in a document waiving the right to file a Patent Owner Statement:
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`WAIVER OF RIGHT TO FILE PATENT OWNER STATEMENT
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`Patent Owner waives the right under 37 C.P.R. 1.530 to file a Patent Owner Statement.
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 4
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`The Interview Summary dated August 4, 2014 indicates that USPTO personnel were
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`unable to reach the patent owner, i.e. the patent owner did not agree to waive its right to file a
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`patent owner statement under 35 U.S.C. 304 in the event the reexamination request is granted.
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`Service of Papers
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`After filing of a request for ex parte reexamination by a third party requester, any
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`document filed by either the patent owner or the third party requester must be served on the other
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`party (or parties where two or more third party requester proceedings are merged) in the
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`reexamination proceeding in the manner provided in 37 CPR 1.248. The document must reflect
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`service or the document may be refused consideration by the Office. See 37 CPR 1.550(f).
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`References Asserted as Raising a Substantial New Question
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`The asserted substantial new question of patentability (SNQP) regarding claim 3 of the
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`'076 Patent is based upon the following references:
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`(1) U.S. Patent 5,070,320 to Ramono, filed June 12, 1989 and issued December 3, 1991
`(hereinafter also referred to as '320 or Ramono '320).
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`(2) U.S. Patent 6,072,402 to Kniffin, filed January 9, 1992 and issued June 6, 2000
`(hereinafter also referred to as '402 or Kniffin '402).
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`(3) U.S. Patent 5,113,427 to Ryoichi et al, filed August 24, 1990 and issued May 12,
`1992 (hereinafter also referred to as '427 or Ryoichi '427).
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`(4) U.S. Patent 5,276,728 to Pagliaroli et al, filed November 6, 1991 and issued January
`4, 1994 (hereinafter also referred to as '728 or Pagliaroli '728).
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`5
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 5
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`(5) U.S. Patent 5,081,667 to Drori et al, filed March 20, 1990 and issued January 14,
`1992 (hereinafter also referred to as '667 or Drori '667).
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`(6) U.S. Patent 5,103,221 to Memmola, filed December 5, 1989 and issued April 7, 1992
`(hereinafter also referred to as '221 or Memmola '221).
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`Availability of Asserted References as Prior Art
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`The references to Ramono, Ryoichi et al, Drori et al and Memmola include
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`issue/publication dates more than one year prior to June 8, 1993, i.e. the filing date of the earliest
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`application 08/073,755, discussed infra, from which benefit was claimed by the patent ('076)
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`requested for reexamination, and thus, are available as prior art under 35 USC 1 02(b) and 35
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`usc 103.
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`The references to Kniffin et al and Pagliaroli et al include filing dates prior to June 8,
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`1993, i.e. the filing date of the earliest application 08/073,755, discussed infra, from which
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`benefit was claimed by the patent ('076) requested for reexamination, and thus, are available as
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`prior art under 35 USC 102(e) and 35 USC 103.
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`Summary of Prosecution History
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`Great-great-great-grandfather Application 08/073,755:
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`U.S. Patent Application Serial No. 08/073,755 (herein after also referred to as '755 or the
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`'755 application) was filed on June 8, 1993. The '755 application as filed included a 49 page
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`specification, claims 1-20, a one page abstract and three drawing sheets with Figures 1-3.
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`The PTO mailed a non-final Office Action on June 27, 1994. In addition to drawing
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`objections and rejections based on indefiniteness, the Examiner rejected under 35 U.S.C. § 102
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`6
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 6
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`claims 1-6, 14 and 16 as being anticipated by Ryoichi et al '427 or Pagliaroli et al '728 and
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`claims 1-20 as being anticipated by Drori et al '667 and claims 7-13, 15 and 17-20 under 35
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`U.S.C. § 103 as unpatentable over Ryoichi et al '427 or Pagliaroli et al '728 in view ofDrori et
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`al '667.
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`A response was filed December 8, 1994. The response amended claims 1, 4-10 and 13-
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`19, cancelled claims 2-3 and 11-12 and added claims 21-24. The response also argued:
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`Applicant submits that claims 1, 4-10, 13-17 and 21-24 are unpatentable over
`Pagliaroli [sic], Drori, Pagliaroli, and any combination thereof, as said
`references, either alone or in combination, fail to disclose or suggest many of the
`specifically recited and important features of independent claims 1 and 7.
`Specifically, Applicant submits that Ryoichi, Drori, Pagliaroli, or any
`combination thereof, fails to disclose or suggest a transmitting means which
`transmits data signals to at least two remote locations, which are specifically
`recited and important features of independent claims 1 and 7. Further, Ryoichi,
`Drori, Pagliaroli, or any combination thereof, fails to disclose or suggest first
`and second receiving means and first and second control means which are
`respectively associated therewith, which have all the respectively recited features
`set forth in independent claims 1 and 7, which are specifically recited and
`important features of said independent claims. (Bold emphasis added.)
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`... Applicant further submits that dependent claims ... are also patentable because
`said dependent claims depend from allowable subject matter.
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`The PTO mailed a FINAL Office Action on March 20, 1995 rejecting all claims.
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`Specifically, claims 1, 4-6, 14, 16, 21 and 22 were rejected under 35 U.S.C. § 103 as obvious
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`over Pagliaroli et al and claims 7-10, 13, 15, 17-20, 23 and 24 were rejected under 35 U.S.C. §
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`103 as obvious over Pagliaroli et al and Drori et al. The Examiner considered Pagliaroli et alto
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`disclose everything claimed but 1) the second receiving and control means or 2) the first control
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`means preventing deactivation but concluded it well known in the art and further within the
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`scope set forth by Pagliaroli to include 1) order to provide automatic contact and to include 2) as
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`7
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 7
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`taught by Drori to prevent life threatening situations. A patent to Siwiak '579 was cited as
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`exemplifying the well-known concept of "group calling".
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`An interview held on May 22, 1995 discussed both Pagliaroli and Siwiak with regard to
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`claims 1, 7 and 18 but Examiner maintained the rejection was proper.
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`A letter of express abandonment was filed June 12, 1995 along with a request for filing a
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`FWC continuation. A Notice of Abandonment was mailed by the PTO on July 31, 1995.
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`Great-great-grandfather Application 08/489,238:
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`U.S. Patent Application Serial No. 08/489,238 (hereinafter also referred to as '238 or the
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`'238 application) was filed on June 12, 1995, as a FWC of the '755 application. A preliminary
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`amendment was also filed June 12, 1995. The amendment cancelled all pending claims and
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`added new claims 25-44.
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`The PTO mailed a Notice of Allowability, including an Examiner's amendment and
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`Reasons for Allowance on September 7, 1995. The Examiner's amendment cancelled claims 27
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`and 35 and amended claims 25, 29-33 and 37-42. The Statement of Reasons for Allowance set
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`forth:
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`The prior art of record fails to teach or reasonably suggest the claimed means for
`transmitting the same non-voice signal to at least two remote locations, wherein
`one of the remote locations is a security office, law enforcement office or law
`enforcement agency; the claimed second receiving means for receiving said non(cid:173)
`voice signal at a second of the two remote locations; or the claimed second
`control means for processing said non-voice signal and providing information
`indicative of the vehicle's identification, theft of a vehicle or controlling of a
`vehicles component as is defined in independent claims 25, 33 and 42. (Emphasis
`original.)
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`The claims were renumbered 1-18.
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 8
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`U.S. Patent No. 5,513,244 (hereinafter also referred to as the '244 patent) issued on April
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`30, 1996.
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`A Notice of Patent Expiration was issued May 26, 2008.
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`Great-grandfather Application 08/587,628:
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`U.S. Patent Application Serial No. 08/587,628 (hereinafter also referred to as '628 or the
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`'628 application) was filed on January 17, 1996 as a continuation of the '238 application (which,
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`as indicated above, was filed as a continuation of the '755 application). The filed application as
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`filed again included a 49 page specification, claims 1-20, a one page abstract and three drawing
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`sheets with Figures 1-3. Also on the same date, a preliminary amendment was filed canceling
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`claims 1-20 and adding claims 21-40. On June 3, 1996, a second preliminary amendment was
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`filed cancelling claims 21-40 and adding claims 41-60.
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`The PTO mailed an initial non-final Office Action on July 9, 1996. In addition to
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`rejecting all the pending claims under the judicially created doctrine of double patenting over
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`claims 1-18 of the '244 patent, the Examiner rejected claims 41-54 and 56-60 under 35 U.S.C. §
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`103 as obvious over Pagliaroli et al in view of Carrier et al wherein Pagliaroli differed from the
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`claims in that there was no disclosure of transmitting data signals to a second remote location in
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`addition to the first remote location but Carrier was relied upon for teaching transmission to two
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`remote locations at the same time. The Examiner also rejected claim 55 further relying upon
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`Drori et al again to teach the first control means preventing deactivation.
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 9
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`A response was filed on October 2, 1996. The response amended claims 41-60 and
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`provided arguments with respect to the double patenting rejection as well as the 103 rejections.
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`Specifically Applicant argued:
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`Applicant respectfully submits that neither Pagliaroli, nor Carrier, nor their
`combination, disclose or suggest a security apparatus which comprises a second
`receiver for receiving the signal at a second location, which are important and
`recited features of independent claim 41. Applicant further respectfully submits
`that neither Pagliaroli nor Carrier, nor their combination, disclose or suggest a
`security apparatus which comprises a second control device for processing the
`signal received by the second receiver, wherein the second control device
`provides information indicative of at least one of the vehicle's identification, a
`theft of a vehicle and a function to be one of controlled and performed by the
`apparatus, which are still other important and recited features of independent
`claim 41. (Emphasis added.)
`
`Applicant respectfully submits that neither Pagliaroli nor Carrier, nor their
`combination, disclose or suggest a security apparatus which comprises a control
`device for processing the signal, wherein the control device at least one of
`generates and issues a signal indicative of at least one of the vehicle's
`identification, a theft of a vehicle and a function to be one of controlled and
`performed by the apparatus, which are still other important and recited features of
`independent claim 41. (Emphasis added.)
`
`Applicant respectfully submits that neither Pagliaroli nor Carrier, nor their
`combination, disclose or suggest a method for providing security for a motor
`vehicle which has the steps enumerated in independent claim 58, which are other
`important and recited features of said independent claim. (Emphasis added.)
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`A second non-final rejection was issued by the PTO on December 23, 1996. Claims 49,
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`52, 54, 56 and 57 were rejected under 35 U.S.C. § 102(e) as anticipated by Pagliaroli et al.
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`Claims 41-48, 50-51, 53 and 58-60 were again rejected under 35 U.S.C. § 103 as obvious over
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`Pagliaroli et al in view of Carrier et al and claim 55 was again rejected further in view of Drori
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`et al.
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`10
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 10
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`Another response was filed April21, 1997. The response amended claims 41-57 and
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`provided arguments with respect to the prior art rejections. Specifically Applicant argued:
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`Applicant submits that Pagliaroli does not disclose or suggest a system which
`comprises a control device, which control device is located at a location which is
`not at the motor vehicle, which are recited features of independent claim 49.
`Further Pagliaroli does not disclose or suggest a control device, which has the
`above claimed features, which at least one of generates and issues a signal
`indicative of at least one of the vehicle's identification, a theft of a vehicle and a
`function to be one of controlled and performed by the apparatus, which are still
`other important and recited features of independent claim 49. (Bold emphasis
`added.)
`
`... Applicant respectfully submits that neither Pagliaroli, nor Carrier, nor their
`combination, disclose or suggest a security apparatus which comprises a second
`receiver for receiving the signal at a second location, which are important and
`recited features of independent claim 41. Applicant further respectfully submits
`that neither Pagliaroli nor Carrier, nor their combination, disclose or suggest a
`security apparatus which comprises a second control device for processing the
`signal received by the second receiver, wherein the second control device
`provides information indicative of at least one of the vehicle's identification, a
`theft of a vehicle and a function to be one of controlled and performed by the
`apparatus, which are still other important and recited features of independent
`claim 41. (Emphasis added.)
`
`Applicant respectfully submits that neither Pagliaroli, nor Carrier, nor their
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`combination, disclose or suggest a method for providing security for a motor
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`vehicle which has the steps enumerated in independent claim 58, which are other
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`important and recited features of said independent claim. (Emphasis added.)
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`A third non-final rejection was issued by the PTO on July 18, 1997. Claims 41-54, 56-59
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`were again rejected under 35 U.S.C. § 102 as anticipated but by Gray et al. Claims 55 and 60
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 11
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`were again similarly rejected under 35 U.S.C. § 103 in view of Drori et al. or Carrier et al,
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`respectively, but in combination with Gray.
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`An interview was held on November 4, 1997. The Summary issued on the same date set
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`forth: "Applicant explained the inventive concept of the invention, including the transmission of
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`a signal from a remote site to the vehicle. The examiner suggested claim language to overcome
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`the present art rejection claiming such features as well as the simultaneous transmission to
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`multiple sites based upon the one signal."
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`A response was filed on November 10, 1997. The response amended claims 41, 43, 49,
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`51, 58 and 60 and provided arguments with respect to the prior art rejections.
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`A FINAL Office Action was issued by the PTO on February 19, 1998. Claims 49-54, 56-
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`57 were again rejected under 35 U.S .C. § 102 as anticipated but by Gray et al. Claims 41-48 and
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`58-59 were rejected under 35 U.S.C. § 103 as obvious over Gray in view of Song where Song
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`was relied upon for its teaching of locating a transmitter at a third location which is remote from
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`the first and second location. Claims 55 and 60 were again similarly rejected under 35 U.S.C. §
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`103 in view of Drori et al. or Carrier et al, respectively, but in combination with Gray and Song.
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`There was no response to such Office action by August 19, 1998 and accordingly the
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`application was considered abandoned. A Notice of Abandonment was mailed by the PTO on
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`December 8, 1998.
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`Great-grandfather Application 08/622,749:
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`U.S. Patent Application Serial No. 08/622,749 (hereinafter also referred to as '749 or the
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`'749 application) was filed on March 27, 1996. The application as filed included an 81 page
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`12
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 12
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`specification, claims 1-20, a one page abstract and thirteen drawing sheets with Figures 1-llB.
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`A plurality of IDS were subsequently filed including July 3, 1996 and August 28, 1996 both of
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`which cited Drori '667, Ryoichi '427 and Pagliaroli '728 and the '244 patent.
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`The PTO mailed an initial non-final Office Action on March 17, 1998 including signed
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`and dated copies of such IDS. In addition to rejecting claims for reasons of indefiniteness all the
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`claims were rejected under 35 U.S.C. § 103 as obvious over the '244 patent in view of Lewis,
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`U.S. Patent No. 5,587,715.
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`A response was filed July 20, 1998. The response cancelled claims 1-20 and added
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`claims 21-40 and provided arguments with respect to the 103 rejections. Specifically Applicant
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`argued:
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`... Applicant respectfully submits that Joao ['the '244 patent] fails to disclose or
`suggest an activation device for activating said first control device, wherein said
`activation device is located at the vehicle, and further wherein said activation
`device detects one of a use of the vehicle and an unauthorized use of the vehicle
`and activates an operation of at least one of said first control device and said
`vehicle positioning device, all of which are important and recited features of
`independent claim 21.
`
`Applicant further respectfully submits that Lewis fails to disclose or suggest an
`activation device for activating said first control device, wherein said activation
`device is located at the vehicle, and further wherein said activation device detects
`one of a use of the vehicle and an unauthorized use of the vehicle and activates an
`operation of at least one of said first control device and said vehicle positioning
`device, all of which are important and recited features of independent claim 21 .
`
`. . . Applicant respectfully submits that Joao ['the '244 patent] fails to disclose or
`suggest a method for vehicle security comprising the step of activating a first
`control device with an activation device, wherein said activation device is located
`at the vehicle, all of which features are important and recited features of
`independent claim 31.
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`13
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`

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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 13
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`Applicant further respectfully submits that Lewis fails to disclose or suggest a
`method for vehicle security, comprising the step of activating a first control
`device with an activation device, wherein said activation device is located at the
`vehicle, all of which features are important and recited features of independent
`claim 31.
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`A FINAL Office Action was issued by the PTO on September 29, 1998. Claims 21-23,
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`25, 27-34, and 36-40 were again under 35 U.S.C. § 103 as obvious over Joao '244 in view of
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`Lewis. Claims 24, 26 and 35 were rejected under 35 U.S.C. § 103 as obvious over Joao '244 in
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`view of Zicker U.S. Patent No. 5,247,564.
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`On January 4, 1999 an after FINAL amendment was filed. The amendment proposed a
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`priority claim statement be added to the specification and provided a newly executed declaration
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`also including such claim.
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`An Advisory Action was issued by the PTO on January 28, 1999. The action refused
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`entry of the amendment as raising new issues that would require further consideration and/or
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`search.
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`There was no further response to the FINAL Office action by March 29, 1999 and
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`accordingly the application was considered abandoned. A Notice of Abandonment was mailed
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`by the PTO on May 14, 1999.
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`Grandfather Application 08/683,828:
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`U.S. Patent Application Serial No. 08/683,828 (hereinafter also referred to as '828 or the
`
`'828 application) was filed on July 18, 1998. The application included 155 pages of
`
`specification, 20 claims, 18 sheets of drawings with Figures 1-16 and an abstract.
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`14
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 14
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`An IDS was filed on September 12, 1996. The IDS cited Drori '667, Ryoichi '427 and
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`Pagliaroli '728 and the '244 patent.
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`The PTO mailed a non-final Office Action on March 11, 1997. A signed copy of the
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`September 12, 1996 IDS accompanied such action. The action rejected all pending claims
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`relying on U.S. Patent No. 5,334,974 to Simms et al. The action also set forth "the prior art
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`made of record and not relied upon is [sic] considered pertinent to applicant's disclosure are
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`Berard et al. [US 5,515,043]; Pagliaroli et al. [US 5,276,728]; Drori et al. [US 5,081,667];
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`Nyfelt [US 5,563,453]; Bird [US 5,418,537] and Mansell et al. [US 5,223,844] [sic] cited
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`references disclose vehicle tracking and monitoring by means of a telecommunication device."
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`(Emphasis added.)
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`A response was filed July 10, 1997. Claims 15-17 were cancelled, without prejudice,
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`claims 21-23 were added and claims 1-14 and 18-20 were amended. Arguments were provided
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`with regard to the prior art to Simms.
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`A FINAL Office action was issued by the PTO on October 20, 1997. The action rejected
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`all pending claims relying on U.S. Patent No.5, 557,254 to Johnson et al.
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`A request for CPA including a preliminary amendment was filed on January 26, 1998.
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`The amendment cancelled claims 1-14 and 18-23, without prejudice and added new claims 24-
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`43. The amendment also amended the Specification so as to claim priority to earlier filed
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`applications. The amendment argued that Johnson, U.S. Patent No. 5,557,254, which reference
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`was cited in the Office Action, dated October 20, 1997, was not available as prior art as against
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`the present application.
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`A second preliminary amendment was filed on March 9, 1998 amending the claims.
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`15
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`

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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 15
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`A non-final Office Action was issued by the PTO on April28, 1998. The action rejected
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`claims 24-33, and 42 under 35 U.S.C. 102(b) as being anticipated by Drori et al. '667 and claims
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`34-41 under 35 U.S.C. 102(b) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as
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`obvious over Drori.
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`A response was filed on July 27, 1998. The response cancelled claims 24-43, without
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`prejudice, and added new claims 44-63. The response argued Drori disclosed a system for
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`integrating a cellular telephone with a vehicle security system, but Drori did not disclose or
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`suggest a control apparatus or method for a vehicle which comprised first, second and third
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`control devices as recited in the independent claims 44, 55 and 59.
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`A Notice of Allowance was issued by the PTO on October 29, 1998. Claims 44-63 were
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`allowed. The Examiner's statement of reasons for allowance set forth:
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`Examiner's primary reason for allowance is in the environment of a control
`apparatus for a vehicle comprising, 'a first control device, located at a vehicle, for
`generating and transmitting a control signal, first control device is responsive to a
`second signal, second signal is generated and transmitted by a second control
`device remote from first control device and second control device is responsive to
`a third signal, third signal is generated and transmitted by a third control device,
`third control device is at a location remote from vehicle and second control
`device, in that signals are sequentially relayed from outside control devices to a
`control device within the vehicle'.
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`The claims were renumbered 1-20.
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`An Amendment After Allowance Pursuant to 37 C.P.R. §1.312 was filed January 4,
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`1999. The specification was amended so as to claim the priority of U.S. Patent Application Serial
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`No. 08/622,749, filed March 27, 1996 (i.e. "This is a continuation-in-part application of U.S.
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`Patent Application Serial No. 08/587,628, filed January 17, 1996, abandoned, which in tum is a
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`continuation application of U.S. Patent Application Serial No. 08/489,238, filed June 12, 1995,
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`16
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`

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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 16
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`now U.S. Patent No. 5,513,244, which in turn is a continuation application of U.S. Patent
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`Application Serial No. 08/073,755, filed June 8, 1993, abandoned. This application is also a
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`continuation-in-part application of U.S. Patent Application Serial No. 08/622,749, filed March
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`27, 1996."). A copy of a newly executed Declaration was also submitted.
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`On January 26, 1999 a Response to Rule 312 Communication was issued by the PTO
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`indicating entry of the amendment as directed to matters of form not affecting the scope of the
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`invention.
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`U.S. Patent No. 5,917,405 (hereinafter also referred to as the '405 patent) issued on June
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`29, 1999. The earliest application, '755, see supra, from which the '405 patent claimed a benefit
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`under 35 U.S.C. 120 was filed on June 8, 1993. Accordingly, the '405 patent expired June 8,
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`2013, see MPEP 2701, I., i.e. "A patent granted on a continuation, divisional, or continuation-in-
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`part application that was filed on or after June 8, 1995, will have a term which ends twenty years
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`from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120,
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`121, or 365(c), regardless of whether the application for which a benefit is claimed under 35
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`U.S.C. 120, 121, or 365(c) was filed prior to June 8, 1995."
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`Parent Application 09/277,935:
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`U.S. Application No. 09/277,935 (hereinafter also referred to as '935 or the '935
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`application) was filed on March 29, 1999 as a continuation of the '828 application. The
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`application included 162 pages of specification, claims 1-20, including independent claims 1, 13,
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`and 19, 18 sheets of Figures 1-16 and an abstract. Prior to receiving any Office Action, the
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`Applicant filed three Preliminary Amendments. The first Preliminary Amendment, filed on May
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`17
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`

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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 17
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`3, 1999, canceled claims 1 to 20 and added new claims 21 to 40, the second Preliminary
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`Amendment, filed on June 16, 1999, added a "Related Application" section (i.e. claiming priority
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`as a continuation of U.S. Patent Application Serial No. 08/683,828, which is a CIP of U.S. Patent
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`Application Serial No. 08/587,628, filed January 17, 1996, abandoned, and U.S. Patent
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`Application Serial No. 08/622,749, filed March 27, 1996, abandoned, the former which is a
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`continuation of U.S. Patent Application Serial No. 08/489,238, filed June 12, 1995, now U.S.
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`Patent No. 5,513,244, which is a continuation of U.S. Patent Application Serial No. 08/073,755,
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`filed June 8, 1993, abandoned) and the third Preliminary Amendment, filed on February 25,
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`2000, added new claims 41 to 53. Added claims 21, 31, 35, 37, 41, 50, and 51 were the only
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`independent claims. An IDS was also filed on May 24, 1999 citing Drori '667, Ryoichi '427 and
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`Pagliaroli '728 and the '244 patent.
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`A non-final Office action was issued by the PTO on December 4, 2000 including a
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`signed/considered copy of the IDS. Claims 21, 23-26, 28-31, 33-43, 45-48, and 50-53 were
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`rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 6,028,537 to Suman et al.,
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`claims 22 and 32 were rejected under 35 U.S.C. § 103(a) as obvious in view of Suman et al.,
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`claims 27, 44, and 53 were rejected under 35 U.S.C. § 103(a) obvious in view of the combination
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`of Suman et al. and U.S. Patent No. 5,541,585 to Duhame et al. and claims 26 and 49 were
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`rejected under 35 U.S.C. § 103(a) as obvious in view of the combination of Suman et al. and
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`U.S. Patent No. 5,081,667 to Drori et al. Drori et al was relied on for its teachings of an
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`interfacing system for integrating a wide variety of cellular communication systems with most
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`vehicle security systems comprising a commercially available speech synthesizer.
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`18
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 18
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`A response was filed on March 21, 200lpresenting only arguments that Suman et al. is
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`not prior art to the '935 application.
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`Another non-final Office Action was issued by the PTO on April 16, 2001, in which all
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`of the claims were rejected for obviousness-type double patenting over claims 1 to 20 of the '405
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`patent.
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`2001.
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`A response including a Terminal Disclaimer over the '405 patent was filed on April 30,
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`A Notice of Allowance issued on June 4, 2001. Claims 21-53 were allowed. The
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`Examiner's Statement of Reasons for Allowance set forth:
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`... there are no references teaching of a control apparatus for controlling of at
`le