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, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/013,302
`
`07/2112014
`
`6,542,076 B1
`
`2538
`
`7590
`RAYMOND A. JOAO ESQ.
`122 BELLEVUE PLACE
`YONKERS, NY 10703
`
`02112/2015
`
`EXAMINER
`
`REICHLE, KARIN M
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`02/12/2015
`
`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)
`
`VWGoA - Ex. 1013
`Volkswagen Group of America, Inc., Petitioner
`
`1
`
`

`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`KENYON & KENYON LLP
`
`ONE BROADWAY
`
`NEWYORK, NY 10004
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/013,302.
`
`PATENT NO. 6,542,076 81 E.
`
`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.0?-04)
`
`2
`
`

`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/013,302
`
`Examiner
`Karin Reichle
`
`Patent Under Reexamination
`6,542,076 81 E
`
`Art Unit
`
`3992
`
`AlA (First Inventor to
`File) Status
`No
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`a. [8J Responsive to the communication(s) filed on 11124/2014.
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`
`b. D This action is made FINAL.
`c. [8J 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?. 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 parte 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
`
`1.
`
`2.
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`D Notice of References Cited by Examiner, PT0-892.
`D Interview Summary, PT0-474.
`D
`[8J Information Disclosure Statement, PTO/SB/08.
`
`3.
`
`4.
`
`1 a.
`
`Part II SUMMARY OF ACTION
`[8J Claims .J. are subject to reexamination.
`[8J Claims 1.2 and 4-218 are not subject to reexamination.
`1 b.
`2. D Claims __ have been canceled in the present reexamination proceeding.
`3. D Claims __ are patentable and/or confirmed.
`[8J Claims .J. are rejected.
`4.
`5. D Claims __ are objected to.
`6. D The drawings, filed on __ are acceptable.
`7. D The proposed drawing correction, filed on __ has been (7a) D approved (7b)0 disapproved.
`8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a) D All b) D Some* c) D None
`of the certified copies have
`1 D been received.
`2 D not been received.
`3 D been filed in Application No. __ .
`4 D been filed in reexamination Control No. __
`5 D 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. D 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.
`1 0. D Other: __
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Off1ce
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20150202
`
`3
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`

`
`Application/Control Number: 90/013,302
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`Introduction
`
`1. This Office Action addresses the ex parte reexamination of claim 3 of U.S. Patent No.
`
`6,542,076 (hereinafter also referred to as '076) issued to Joao for which a Substantial New
`
`Question of Patentability has been deemed to exist. The status of the claims is as follows:
`
`Claim 3 is rejected.
`
`Patents, Non-Patent Literature, Other Evidence
`
`Patents
`
`-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).
`
`-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).
`
`-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).
`
`-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).
`
`-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).
`
`4
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`

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`Application/Control Number: 90/013,302
`Art Unit: 3992
`
`Page 3
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`Claim Rejections
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`Claim Interpretation/Analysis:
`
`As set forth in the 9/8/2014 Order and on page 14 of the Request, the '076 patent has
`
`expired. Therefore, see again page 9 of the Request as well as MPEP 2258, "[i]n a
`
`reexamination proceeding involving claims of an expired patent, claim construction pursuant to
`
`the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d
`
`1321, 1329 (Fed. Cir. 2005) (words of a claim 'are generally given their ordinary and customary
`
`meaning' as understood by a person of ordinary skill in the art in question at the time of the
`
`invention) should be applied since the expired claim are not subject to amendment. See Ex parte
`
`Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986).
`
`Furthermore, "means-plus function" language of a claim if meeting the 3-prong analysis
`
`set forth in MPEP 2181, I, "shall be construed to cover the corresponding structure, material, or
`
`acts described in the specification and equivalents thereof', see MPEP 2181, II. As also set forth
`
`in 2181, II, "If one employs means plus function language in a claim, one must set forth in the
`
`specification an adequate disclosure showing what is meant by that language", i.e. sets forth the
`
`structure, materials, or acts corresponding to a means- (or step-) plus-function.
`
`Specifically:
`
`... examiners will apply 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth
`paragraph to a claim limitation if it meets the following 3-prong analysis:
`
`(A) the claim limitation uses the term "means" or "step" or a term used as a
`substitute for "means" that is a generic placeholder (also called a nonce term or a
`non-structural term having no specific structural meaning) for performing the
`claimed function;
`
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`Application/Control Number: 90/013,302
`Art Unit: 3992
`
`Page 4
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`(B) the term "means" or "step" or the generic placeholder is modified by
`functional language, typically, but not always linked by the transition word "for"
`(e.g., "means for") or another linking word or phrase, such as "configured to" or
`"so that"; and
`
`(C) the term "means" or "step" or the generic placeholder is not modified by
`sufficient structure, material, or acts for performing the claimed function.
`
`The language of claim 3 (e.g., "a first control device ... at least one of generates a first
`
`signal and transmits a first signal for at least one of activating, de-activating, disabling, andre-
`
`enabling, [sic] at least one of a vehicle system, a vehicle equipment system, a vehicle
`
`component, a vehicle device, a vehicle equipment, and a vehicle appliance, [sic] of a vehicle",
`
`"wherein the first control device at least one of generates the first signal and transmits the first
`
`signal in response to a second signal, wherein the second signal is at least one of generated by a
`
`second control device and transmitted from a second control device,", "and further wherein the
`
`second control device at least one of generates the second signal and transmits the second signal
`
`in response to a third signal, wherein the third signal is at least one of generated by a third
`
`control device and transmitted from a third control device, ... " does not meet the analysis and is
`
`not deemed to invoke 35 USC 112, sixth paragraph.
`
`'076 Patent
`
`See '076 at, e.g., Figures 1 and 9, elements 2, 3, 4, 15, 16, col. 21, line 7-col. 25, line 39
`
`(i.e. "FIG. 1 illustrates a block diagram of the apparatus which is the subject of the present
`
`invention and which is denoted generally by the reference numerall. As illustrated in FIG. 1, the
`
`apparatus 1 includes a transmitter system 2, for transmitting an electrical, an electronic, an
`
`electromagnetic or other suitable signal, upon an activation by a motor vehicle owner or
`
`6
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`Application/Control Number: 90/013,302
`Art Unit: 3992
`
`Page 5
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`authorized user or operator, hereinafter referred to collectively as the "authorized user or
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`operator". While the foregoing description of the preferred embodiment is directed to a motor
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`vehicle and, in particular, to an automobile, the term "motor vehicle" includes, but is not limited
`
`to, automobiles, trucks, buses, school buses, trains, subway trains, mass transportation vehicles,
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`tractor trailers, construction equipment, equipment, mobile structures, mobile and/or moveable
`
`industrial and/or commercial and/or equipment, structures and/or work platforms, mining
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`equipment, drilling equipment, drilling platforms, farm equipment, commercial vehicles,
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`recreational vehicles, motorcycles, recreational vehicles, motor and/or mobile homes, etc. Any of
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`the above noted vehicles may be manned and/or unmanned and may also include law
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`enforcement and/or military vehicles and/or equipment. The present invention may also be
`
`utilized in marine vehicles and/or vessels, boats, ships, aircraft, airplanes, jets, submersible
`
`and/or underwater vehicles and/or vessels, space vehicles and/or vessels and satellites, all of
`
`which may be manned and/or unmanned. The present invention may also be employed in
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`conjunction with gasoline, diesel, alternate fuel and/or electrically powered and/or propelled
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`vehicles. In the preferred embodiment, the transmitter system 2 consists of a user interface
`
`device 2A and a transmitting device or transmitter 2B. The transmitter 2 also has a receiver 2C
`
`for receiving signals as will be described below. In this regard, the transmitter/receiver
`
`combination may also be implemented by utilizing a transceiver. The user interface device 2A
`
`provides the means by which the authorized user or operator may access or activate the apparatus
`
`1, as well as the means by which the authorized user or operator may enter access and/or
`
`command codes into the transmitter system 2. The transmitter 2B transmits a signal, in response
`
`to the authorized user or operator accessing or activating the apparatus 1 .... The transmitter
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`7
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 6
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`system 2 is a remote system, which is not physically connected to the remainder of the apparatus
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`1. Further, the transmitter system 2, in the preferred embodiment, is not located in the motor
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`vehicle, but rather, is located external from, and separate and apart from, the motor vehicle. In
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`the preferred embodiment, the transmitter system 2 or transceiver, is designed to be capable of
`
`transmitting signals over long distances, i.e. tens, hundreds, and/or thousands of miles or farther.
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`The transmitter system 2 or transceiver, in the preferred embodiment, is also capable of
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`transmitting a multitude of signals. As will be described below, this capability to transmit a
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`multitude of signals allows for the transmission of a variety of command codes, and of multiple
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`command codes, to the apparatus 1, which in turn, provides for an apparatus which may provide
`
`for a multitude of responses in the control and operation thereof. In the preferred embodiment,
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`the transmitter system 2 or transceiver is a touch tone telephone which may be a line-connected
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`telephone, a cordless telephone and/or a cellular or mobile telephone. As described hereinafter,
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`the transmitter system 2 may also be a home and/or a personal computer, having associated
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`telecommunication devices or other suitable peripheral device(s) such as a modem and/or a
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`fax/modem, or other personal communication device, which can operate over an appropriate
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`telecommunications system, and/or other suitable communications systems, including radio
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`signal, optical, satellite and/or other communications systems. The communications system
`
`utilized may operate anywhere in the electromagnetic and/or radio spectrum. In this regard,
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`personal communication service (PCS) systems and devices, including stationary, portable
`
`and/or hand-held devices, may also be utilized. Digital signal communications devices and
`
`systems may also be utilized. Interactive and/or digital televisions, personal communication
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`devices, personal communication services (PCS) devices, personal digital assistants, cellular
`
`8
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`
`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 7
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`telephones, display telephones, video telephones, display cellular telephones and electronically
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`equipped watches and/or other devices and/or effects or accessories may also be utilized for user
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`interactive and/or display or output applications and/or functions ... Referring once again to FIG.
`
`1, the apparatus 1 also includes a receiver 3, for receiving the signals which are transmitted by
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`the transmitter system 2. The receiver 3 may be any receiver which is capable of receiving the
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`remote electrical, electronic, electromagnetic, and/or other signals, which may be transmitted by
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`the transmitter system 2. In the preferred embodiment, the receiver 3 is also capable of receiving
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`any of a wide variety of signals, and/or multitude of signals, which may be transmitted by the
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`transmitter system 2. The transmitter system 2/receiver 3 combination, of the apparatus 1 is
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`implemented, in the preferred embodiment, by a telephone/telephone beeper or pager system
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`which systems and related techniques are well known in the telecommunications art. In such a
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`telephone/telephone beeper or pager system, the transmitter 2 can be any touch-tone telephone
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`which provides a user interface, in the form of the touch-tone keypad or buttons, or the like, for
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`entering a data code or sequence, and which may provide a means by which to transmit a signal,
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`in response to the entered data, to an appropriate receiver device which is typically a telephone
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`beeper or pager which may be serviced by an appropriate communications system or service ... In
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`this regard, in the preferred embodiment, the receiver 3 is provided with its own transmitter 3A,
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`or the communication system or service which services the receiver 3 may provide a transmitter
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`(not shown) as may be the case with certain pager systems, such as and including two-way pager
`
`systems, for transmitting signals back to the transmitter system 2. The receiver 3/transmitter 3A
`
`combination, in appropriate cases, may be replaced with and/or implemented by a transceiver.
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`The receiver 3 and/or receiver 3/transmitter 3A combination or transceiver may also be a cellular
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 8
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`and/or mobile telephone which can receive and transmit signals at and from a mobile location. It
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`should be noted that the telephone/telephone beeper or pager system, including two-way pager
`
`systems, may be replaced with any other type of transmitter/receiver combination, electronic or
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`otherwise, which provides for the transmission and reception of a multitude of remote electrical,
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`electronic, electromagnetic, and/or other suitable signals, over long distances and/or in a mobile
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`and/or a wireless communications environment. As noted above, a personal computer system
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`which may be adapted to such operation, or a personal communication device(s) or personal
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`communication services (PCS) device(s) may also be utilized for, or in, any of the
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`transmitter/receiver system combinations described herein. Two way pagers may also be utilized
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`for any, or in any, of the transmitter/receiver system combinations described herein. In the
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`preferred embodiment, upon receiving the signal, the receiver 3, generates a distinct signal which
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`may be a digital, an electrical, an electronic and/or an electromagnetic or other suitable signal,
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`which signal is indicative of the signal transmitted from the transmitter 2B of the transmitter
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`system 2 and received by the receiver 3. At least a portion of the signal transmitted from the
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`transmitter system 2 to the receiver 3 may include a valid access code, which accesses the
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`receiver 3, and the apparatus 1, which access code serves to provide for security measures which
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`may be taken in conjunction with the use of the apparatus 1. The apparatus 1 also includes a
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`controller or a CPU 4 (CPU) 4, which is electrically connected with the receiver 3 and
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`transmitter 3A and which receives, or reads, whichever the case may be, the digital signal or
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`signals, or portions thereof, which are received by the receiver 3 and/or generated by the receiver
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`3 in response to the received signal. The CPU 4 may be any type of digital processing device. In
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`the preferred embodiment, the CPU 4 is implemented by a microprocessor. The use of a
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 9
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`microprocessor as the CPU 4 provides for versatility in apparatus programmability, as well as
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`facilitates an apparatus which can be made as small in size as possible. The CPU 4 may also be
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`implemented by a micro-computer, a mini-computer, or any other digital computer device or
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`system, along with the requisite associated memory devices and other necessary and/or selected
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`peripheral devices. The functions of the CPU 4 may also be performed by appropriately
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`integrating the apparatus 1 with the electronic command computer of the vehicle. It should be
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`noted that the provision of an apparatus 1, which is as small in size as possible, allows for an
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`apparatus which may be more easily installed and concealed in the vehicle, so as to prevent its
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`being located and defeated by a car thief. It is also envisioned that the apparatus 1 may be
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`installed in the motor vehicle during the vehicle's manufacture and/or assembly process so as to
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`insure that it will not be easily detectable or accessible by a car thief. The more cancelable the
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`apparatus, the less likelihood that it could be located and defeated. It is envisioned that the
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`apparatus 1 and any associated circuitry and/or wiring, may be designed into the motor vehicle
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`so as to be inaccessible to a thief .... The CPU 4 is electrically connected and/or linked to the
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`motor vehicle ignition system 7, which is located externally from the apparatus 1 .... In the
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`preferred embodiment, the CPU 4 is also electrically connected and/or linked to the motor
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`vehicle fuel pump system 9 which is also located externally from the apparatus 1 .... The CPU 4,
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`in the preferred embodiment, is also electrically connected and/or linked to at least one or more
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`of a vehicle equipment system or systems 11 ... The vehicle equipment system or systems 11 may
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`include a loud siren or alarm, which may be located in the passenger compartment of the motor
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`vehicle and, which may produce a loud piercing sound so as to make it unbearable for an intruder
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`to remain inside the motor vehicle passenger compartment. The vehicle equipment system 11
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`11
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`Application/Control Number: 90/013,302
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`Page 10
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`may also include an external siren or alarm, which may produce a loud piercing sound, which
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`may be utilized to draw attention to the motor vehicle. The vehicle equipment system 11 may
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`also include a horn, which may blare continuously or intermittently, so as to also draw attention
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`to the motor vehicle. The vehicle equipment system(s) 11 may also include the vehicle external
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`light systems(s), which may include the vehicle head lights, taillights or flashers, which may be
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`constantly illuminated or which may blink on and off repeatedly so as to draw attention to the
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`motor vehicle."), col. 31, lines 35-39 (i.e. "The vehicle equipment system or systems 11 receives
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`signals from the CPU 4, which signals serve to activate or de-activate, or vice versa, whichever
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`the case may be, the respective vehicle equipment system(s) 11 which are utilized in conjunction
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`with the apparatus 1. "), col. 32, lines 8-18 (i.e. "While the preferred embodiment, as illustrated in
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`FIG. 1, describes certain connections between various components and/or devices of the
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`apparatus as being made by a direct and/or a wired electrical connection, it is noted that any
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`direct and/or wired electrical connection(s) between any of the components and/or devices
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`described herein, may be replaced with wireless devices, wireless communication devices,
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`equipment, links and/or linkups, along with their respective and associated technologies and/or
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`devices, which wireless devices and technologies are known and the teachings of which are
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`incorporated by reference herein."), col. 36, lines 27-61 (i.e. "Upon the occurrence, or the
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`discovery thereof, of the theft of a motor vehicle, or simply to monitor vehicle status or location,
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`the authorized user or operator of the vehicle may activate the apparatus 1 by entering an access
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`code into the transmitter interface 2A which, as noted above, may be a touch tone telephone
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`keypad. The entry of a valid access code will activate a signal transmission from the transmitting
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`device 2B in a manner similar to that of making a telephone call. In the preferred embodiment,
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`Page 11
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`the above sequence of events may occur by the authorized user or operator simply utilizing a
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`touch-tone telephone, which may be a public pay telephone, a private telephone, a line telephone,
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`a cordless or wireless telephone, or a cellular or mobile telephone, and by entering in the pre-
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`determined access code which is assigned to the particular apparatus 1. In the case of a touch-
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`tone telephone/telephone beeper or pager system, wherein the beeper or pager is the receiver 3 in
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`the apparatus 1, this access code would typically be a code which would comprise a given
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`telephone area code and telephone number assigned to, or programmed for, the beeper or pager
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`(receiver 3). Upon receiving the transmitted signal, the receiver 3, or beeper or pager, or the
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`communication system servicing the beeper or pager, will typically generate, via transmitter 3A
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`or by another appropriate device, which may or may not be an integral part of the receiver 3, a
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`signal, electrical or otherwise, which is indicative of the receiver 3 having received the signal
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`from the transmitter 2 and which further indicates that the receiver 3 has been accessed. In the
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`case of a communication system or service which services the beeper or pager, the transmitter
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`3A may be located externally from the apparatus 1 and may be linked to the receiver 3 via the
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`communication link which services the receiver 3 (i.e., the beeper or pager communications
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`service system)."), col. 37, lines 12-44 (i.e. " ... the authorized user or operator may enter the
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`desired command code data or command code, which may include a vehicle disable command
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`code, a vehicle re-enable or reset command code, a cancel code, or any other suitable command
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`code by which the authorized user or operator may exercise control over the apparatus 1. The
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`authorized user or operator may then enter the code or number sequence into the transmitter
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`interface 2A or, in this case, the telephone keypad .... In a case when the motor vehicle has been
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`stolen, the command code may be a vehicle disable command code. It should also be noted that a
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`Application/Control Number: 90/013,302
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`Page 12
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`vehicle re-enable or reset command code, or any other suitable command code, which would
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`represent a function or operation to be performed by the apparatus 1, may also be entered, as the
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`circumstances may require, at this time. The command code is then transmitted from the
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`transmitting device 2B of the transmitter system 2 and is received by the receiver 3 or beeper or
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`pager .... The command code data is then transmitted to, or read by, the CPU 4 for command code
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`identification and for further processing, if necessary."), col. 38, lines 7-40 (i.e. "The apparatus 1
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`may also be equipped with an alternate and/or an auxiliary transmitter device(s), such as a
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`remote control unit or home and/or personal computer system, which could be employed in
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`addition to a telephone. In this manner, if the authorized user or operator should leave the remote
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`control unit in the vehicle, or should lose it, the apparatus 1 may still be accessed by the
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`authorized user or operator. Still further, some telephone/telephone beeper or pager systems,
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`wireless telephones, and/or wireless communication devices, may have effective distance ranges
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`on the order of hundreds or thousands of miles which may be economical and reliable for long
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`range signal transmission .... The data entered into, and transmitted from, the transmitter system
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`2, and received by the receiver 3, will then be transmitted to, or read by, the CPU 4 for command
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`code identification and for subsequent processing, if necessary."), and col. 50, line 57-col. 52,
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`line 28 (i.e. "FIG. 9 illustrates another preferred embodiment of the present invention, wherein
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`an arming device 15 and an activation device 16 are utilized in conjunction with the components
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`of the apparatus 1 of FIG. 1. In FIG. 9, the arming device 15 is utilized to arm, activate, or access
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`the apparatus 1 and provides a means by which to access the apparatus 1 separate and apart from
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`the transmitter 2/receiver 3 combination. The arming device 15 may be a remote transmitter such
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`as those utilized in conjunction with anti-theft devices or systems and/or alarm systems .... As
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`14
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 13
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`with any of the above devices and/or components, the arming device(s) may be directly
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`connected to the CPU 4 or may be linked to the CPU 4 via a wireless communication link or
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`medium. It is also envisioned that, with a suitable arming device 15, such as a keypad or other
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`device for data input, the authorized user or operator may arm the apparatus 1 with a desired
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`command code. In this manner, a programmable arming device may be utilized wherein
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`apparatus operation, under the command of any of the variety of possible command codes, can
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`be made automatic and/or programmable. An automatic activation may also be performed by an
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`appropriate code being transmitted to the apparatus 1 via the transmitter 2 or transceiver. The
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`activation device 16 is chosen to correspond with the arming device 15. In this regard, the
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`activation device 16 may be ... connected to the CPU 4 via a wireless communication link or
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`medium .... The command code may be pre-programmed as a default code and/or may be
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`operator selected and programmed in any manner described above for user or operator entry of
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`such a code. In this regard, if an unauthorized user or operator fails to properly activate the
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`activation device 16, within the predetermined time period, the CPU 4 will recognize such failure
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`as that which results from an unauthorized use or operation of the vehicle. In the above-described
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`manner, the embodiment of FIG. 9 provides a mechanism by which the apparatus 1, may be
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`activated automatically or self-activated .... It is also important to note that the arming device
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`15/activation device 16 may be utilized to activate the apparatus 1 and/or any one or more of the
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`vehicle systems, including the ignition system 7, the fuel pump system 9, any one or more of the
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`various vehicle equipment systems 11 which are utilized in conjunction with the apparatus 1,
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`and/or the vehicle position and locating device 13. In this regard, the arming device 15 and the
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`activation device 16 provide a mechanism by which to automatically activate the apparatus 1
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`15
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 14
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`along with any other anti-theft system utilized in the vehicle which may be controlled by the
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`apparatus 1. The vehicle position and locating device 13 may also be activated by an automatic
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`activation of the apparatus 1. It is also possible to program the apparatus 1 with a command code
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`so that the apparatus will be programmed to become activated, or de-activated, automatically,
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`such as upon the occurrence, or lack thereof, of a pre-defined event or occurrence and/or at any
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`")
`d 'd '
`esrre
`time....
`.
`
`Claim Rejections-35 USC §1 02
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`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(a) the invention was known or used by others in this country, or patented or described in a printed
`publication in this or a foreign country, before the invention thereof by the applicant for a patent.
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
`
`(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 applicant for patent or (2) a patent granted
`on an application for patent by another filed in the United States before the invention by the applicant
`for patent, except that an international application filed under the treaty defined in section 351(a) shall
`have the effects for purposes of this subsection of an application filed in the United States only if the
`international application designated the United States and was published under Article 21(2) of such
`treaty in the English language.
`
`(e) the invention was described in a patent granted on an application for patent by another filed in the
`United States before the invention thereof by the applicant for patent, or on an international application
`by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this
`title before the invention thereof by the applicant for patent.
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`16
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`Application/Control Number: 90/013,302
`Art Unit: 3992
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`Page 15
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`The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999
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`(AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002
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`do not apply when the reference is a U.S. patent resulting directly or indirectly from an
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`international application filed before November 29, 2000. Therefore, the prior art date of the
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`reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AlP A
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`35 U.S.C. 102(e)).
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`2. Claim 3 is rejected under 35 USC 102(b) as being anticipated by Ramono.
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`The reference to Ramono includes an issue/publication date more than one year prior to
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`June 8, 1993, i.e. the filing date of the earliest application 08/073,755, from which benefit was
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`claimed by the patent ('076) requested for reexamination, and thus, is available as prior art under
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`35 USC 102(b) and 35 USC 103. It is noted that Ramono has not been applied in a rejection
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`against the claims nor explicitly discussed anytime during the prosecution history of the '365
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`application of the '076 patent, see pages 5-27 of the 9/8/2014 Order,
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`With regard to Ram