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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`90/013,301
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`07/2112014
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`6549130
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`1082
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`7590
`RAYMOND A. JOAO
`122 BELLEVUE PLACE
`YONKERS, NY 10703
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`09117/2014
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`EXAMINER
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`NGUYEN, MINH T
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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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`09/17/2014
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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. 1009
`Volkswagen Group of America, Inc., Petitioner
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`1
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`

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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
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`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. 901013,301.
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`PATENT NO. 6549130.
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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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`

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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 2
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`DECISION GRANTING EX PARTE REEXAMINATION
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`Reexamination has been requested for claim 48 of the United States Patent Number
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`5
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`6,549,130 to Joao, entitled "CONTROL APPARATUS AND METHOD FOR VEHICLES AND/OR
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`FOR PREMISES" by a third party requester ("Requester").
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`A substantial new question of patentability affecting claim 48 of the United States Patent
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`Number 6,549,130 to Joao ("the '130 patent") is raised by the request for ex parte rexamination.
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`Claim 48 will be reexamined. Because the '130 patent has expired, (i) the "ordinary and
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`customary meaning" standard as set forth in MPEP 2258 applies to this reexamination
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`proceeding; (ii) no amendment may be proposed for entry in an expired patent as set forth in
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`MPEP 2250.
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`10
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`15
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`The Examiner Interview filed on August 19, 2014 indicated that the Patent owner did not
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`agree to waive its right to file a patent owner's statement under 35 USC 304 at this time.
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`20
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`The substantial new question of patentability consideration is based on the following
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`Submitted Prior Art in the Request
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`references:
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`1.
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`U.S. Patent 5,070,320 to Ramona, filed June 12, 1989 and issued December 3,
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`1991 ("Ramona").
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`2.
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`U.S. Patent 6,072,402 to Kniffin, filed January 9, 1992 and issued June 6, 2000
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`25
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`("Kniffin").
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`3.
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`U.S. Patent 5,113,427 to Ryoichi et al, filed August 24, 1990 and issued May 12,
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`1992 ("Ryoichi").
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`4.
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`U.S. Patent 5,276,728 to Pagliaroli et al, filed November 6, 1991 and issued
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`January 4, 1994 ("Pagliaroli").
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`30
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`5.
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`U.S. Patent 5,081 ,667 to Drori et al, filed March 20, 1990 and issued January 14,
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`1992 ("Drori").
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`Paper No. 20140908
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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 3
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`6.
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`U.S. Patent 5,103,221 to Memmola, filed December 5, 1989 and issued April 7,
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`1992 ("Memmola").
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`5
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`Prosecution History
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`The '130 patent is titled "Control Apparatus and Method for Vehicles and/or for
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`Premises" and was issued on April 15, 2003, from U.S. Application Serial No. 09/277,935
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`("the '935 application"), filed on March 29, 1999. According to the '130 patent, it is a
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`continuation application of U.S. Patent Application Serial No. 08/683,828, filed July 18,
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`10
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`1996, issued as the '405 patent, which is a continuation-in-part of U.S. Patent Application
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`Serial No. 08/622,749, filed on Mar. 27, 1996, abandoned, and a continuation-in-part of U.S.
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`Patent Application Serial No. 08/587,628 ("the '628 application"), filed January 17, 1996,
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`abandoned, which is a continuation of U.S. Patent Application Serial No. 08/489,238, filed
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`June 12, 1995, issued as U.S. Patent No. 5,513,244, which is a continuation application of
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`15
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`U.S. Patent Application Serial No. 08/073,755 ("the '755 application"), filed June 8, 1993,
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`abandoned.
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`Initially, the '935 application contained 20 claims, including independent claims 1, 13,
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`and 19. Prior to receiving any Office Action, the Applicant filed three Preliminary Amendments.
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`The first Preliminary Amendment, filed on May 3, 1999, canceled claims 1 to 20 and added new
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`20
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`claims 21 to 40, the second Preliminary Amendment, filed on June 16, 1999, added a "Related
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`Application" section to the '935 Application, and the third Preliminary Amendment, filed on
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`February 25, 2000, added new claims 41 to 53. Among the claims added by the Preliminary
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`Amendments, claims 21, 31, 35, 37, 41, 50, and 51 were independent claims.
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`On December 4, 2000, the Examiner rejected claims 21, 23-26, 28-31, 33-43, 45-48,
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`25
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`and 50-53 under 35 U.S.C. § 1 02(e) as anticipated by U.S. Patent No. 6,028,537 to Suman et
`al., rejected claims 22 and 32 under 35 U.S.C. § 1 03(a) as obvious in view of Suman et al.,
`rejected claims 27, 44, and 53 under 35 U.S.C. § 1 03(a) obvious in view of the combination of
`Suman et al. and U.S. Patent No. 5,541,585 to Duhame et al., and rejected claims 26 and 49
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`under 35 U.S.C. § 1 03(a) as obvious in view of the combination of Suman et al. and U.S. Patent
`No. 5,081 ,667 to Drori et al..
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`30
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`In its response dated March 21, 2001, the Applicant presented arguments that
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`Suman et al. is not prior art to the '935 application. Amendment, Mar. 21, 2001, at 4. The
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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 4
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`Examiner then issued another Office Action, on April 16, 2001, in which all of the claims were
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`rejected for obviousness-type double patenting over claims 1 to 20 of the '405 patent. Office
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`Action, Apr. 16, 2001. Applicant thereafter submitted a Terminal Disclaimer over the '405 patent.
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`Terminal Disclaimer, Apr. 30, 2001.
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`5
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`After further amendments, a Notice of Allowance issued on June 4, 2001. Claims 21-53
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`were allowed. The Examiner provided the following reasons for allowance, identifying the chain
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`of three control devices:
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`15
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`[T]here are no references teaching of a control apparatus for
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`controlling of at least one activating, deactivating, enabling and
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`disabling of at least one of a premises having at least one of
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`system, subsystem, component, equipment and appliance.
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`Wherein the first control device is responsive to a second signal
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`and the second signal is at least generated by a a [sic] second
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`control device which is located remote from the premises. And
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`further wherein the second control device is responsive to a
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`third control signal which is generated by a third control device
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`which is located at a location remote from the premises and
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`remote from the second control device.
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`Notice of Allowance, Jun. 4, 2001, at 2.
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`20
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`Applicant filed additional amendments on July 25, 2001, and August 22, 2001,
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`addressing grammatical errors and antecedent basis issues. On August 29, 2001, the Applicant
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`filed Comments on Statement of Reasons for Allowance, listing each element of each
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`independent claim, and asserting, without any supporting argument, that the prior art does not
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`disclose or suggest those elements.
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`25
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`On October 26, 2001, the Applicant filed a petition to withdraw the application from
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`issue, and submitted a Request for Continued Examination, with a preliminary amendment
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`amending, canceling, and adding claims. In the preliminary amendment, Applicant stated that
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`the term "automatically" means "without human intervention," the term "automatically received"
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`means "received without human intervention." Amendment, Oct. 26, 2001, at 26. Applicant then
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`30
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`filed two more preliminary amendments, on December 3 and 18, 2001, canceling several
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`claims, adding and then canceling other claims, and adding new claims 57 to 62.
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`Following an interview on January 15, 2002, the Examiner's summary of the interview
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`stated that all independent claims are allowable over the prior art of record. Applicant filed two
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`Control Number: 90/013,301
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`Page 5
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`more preliminary amendments, canceling several claims, adding new dependent claims, and
`amending several claims, including application claim 57.
`New application claim 57, reproduced below, would eventually issue as claim 48 of the
`'130 patent:
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`10
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`20
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`25
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`57. A control apparatus, comprising:
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`a first control device, wherein the first control device is capable
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`of at least one of activating, de-activating, disabling, and re(cid:173)
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`enabling, one or more of a plurality of at least one of a vehicle
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`system, a vehicle component, a vehicle device, a vehicle
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`equipment, a vehicle equipment system, and a vehicle
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`appliance, of a vehicle, wherein the first control device at least
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`one of generates and transmits a first signal for at least one of
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`activating, de-activating, disabling, and re-enabling, the at least
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`one of a vehicle system, a vehicle component, a vehicle device,
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`a vehicle equipment, a vehicle equipment system, and a vehicle
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`appliance, wherein the first control device is located at the
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`vehicle, and further wherein the first control device is
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`responsive to a second signal, wherein the second signal is at
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`least one of generated by and transmitted from a second control
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`device,
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`wherein the second control device is located at a location which
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`is remote from the vehicle, and wherein the second signal is
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`transmitted from the second control device to the first control
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`device, and further wherein the second signal is automatically
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`received by the first control device,
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`wherein the second control device is responsive to a third
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`signal, wherein the third signal is at least one of generated by
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`and transmitted from a third control device, wherein the third
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`control device is located at a location which is remote from the
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`vehicle and remote from the second control device, wherein the
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`third signal is transmitted from the third control device to the
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`second control device, and further wherein the third signal is
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`automatically received by the second control device.
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`Ex Parte Reexamination - Non Final Office Action
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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 6
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`A Notice of Allowance was mailed the following week, on January 28, 2002. The
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`Examiner's statement of reasons for allowance merely refers to Applicant's August 2001
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`comment on the Examiner's stated reasons for allowance, in which Applicant listed each
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`claim element of each independent claim, and asserted, without any supporting argument,
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`5
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`that the prior art does not disclose or suggest those elements.
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`In response, on February 12, 2002, Applicant filed Comments on Statement of Reasons
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`for Allowance, again listing each element of each independent claim, and asserting, without any
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`supporting argument, that the prior art does not disclose or suggest those elements. Comments,
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`Feb. 12, 2002, at 16 to 17.
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`10
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`Applicant then filed another Request for Continued Examination, and two preliminary
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`amendments canceling and adding claims. Another Notice of Allowance issued on August 6,
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`2002, in which the Examiner's reasons for allowance merely lists the elements of application
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`claim 57. Applicant then filed identical comments on allowance, asserting again that the
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`independent claims in their entirety are not disclosed in the prior art.
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`15
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`Thereafter, Applicant filed yet another Request for Continued Examination, with a
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`preliminary amendment amending the specification to update the statement of related
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`applications. Another Notice of Allowance issued on September 25, 2002.
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`The '130 patent was issued on April15, 2003 with claims 1-149.
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`25
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`Issues Raised in this Request
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`The Requester asserts that the above cited references raise substantial new question of
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`patentability and proposes the following grounds of rejections:
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`1.
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`2.
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`3.
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`4.
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`5.
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`Ramona anticipates claim 48 under 35 U.S.C. § 1 02(b)
`Kniffin anticipates claim 48 under 35 U.S.C. § 1 02(e)
`Ryoichi anticipates claim 48 under 35 U.S.C. § 1 02(b)
`Pagliaroli anticipates claim 48 under 35 U.S.C. § 1 02(e)
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`The combination of Drori and Ramona renders obvious claim 48 under 35 U.S.C.
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`30
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`§ 1 03(a)
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`6.
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`The combination of Drori and Kniffin renders obvious claim 48 under 35 U.S.C. §
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`1 03(a)
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`Ex Parte Reexamination - Non Final Office Action
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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 7
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`7.
`§ 1 03(a)
`8.
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`The combination of Drori and Ryoichi renders obvious claim 48 under 35 U.S.C.
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`The combination of Drori and Pagliaroli renders obvious claim 48 under 35
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`U.S.C. § 1 03(a)
`9.
`The combination of Memmola and Ramona renders obvious claim 48 under 35
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`5
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`U.S.C. § 1 03(a)
`The combination of Memmola and Kniffin renders obvious claim 48 under 35
`1 0.
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`U.S.C. § 1 03(a)
`The combination of Memmola and Ryoichi renders obvious claim 48 under 35
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`11.
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`10
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`U.S.C. § 1 03(a)
`12.
`The combination of Memmola and Pagliaroli renders obvious claim 48 under 35
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`U.S.C. § 1 03(a).
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`15
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`Analysis of the Prior Art Provided in the Request
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`1.
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`Ramono reference:
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`Requester asserts that Ramona raises a substantial new question of patentability as to
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`claim 48 of the '130 patent. Specifically, Ramo no discloses the use of a chain of three control
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`20
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`devices, e.g., a vehicle alarm system (a first control device located at a vehicle), a fixed area
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`alarm unit 14 (a second control device located remote from the vehicle), and a remote alarm
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`initiator 12 (a third control device located remote from the second control device and remote
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`from the vehicle), sending control signals from one device to the next, culminating in the
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`activation (or deactivation) of a vehicle system, e.g., initiating an alarm, flashing exterior lights,
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`25
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`resetting the alarm, etc.
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`Ramona teaches that the vehicle alarm unit, i.e., the first control device, is
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`responsive to signals from a second control device, i.e., a fixed area alarm unit 14, that is
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`located remote from the vehicle. According to Ramona, the fixed area alarm unit 14 is used
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`"to transmit a signal that will be received by a vehicle alarm system." Col. 10, lines 6-8.
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`30
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`The fixed area alarm unit is located remote from the vehicle. For example, "fixed area alarm
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`14 may be mounted to existing utility poles or other elevated structures." Col. 4, lines 13-14.
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`When the fixed area alarm unit 14 receives the proper encoded message, it will transmit the
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`Control Number: 90/013,301
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`preset code which "will consist of short time duration coded bursts every few seconds, which
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`are transmitted to any auto alarm system in the reception area while still allowing other fixed
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`alarm systems to sense additional alarm initiations." Col. 10, lines 22-26 (emphasis added).
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`According to Ramona, signals transmitted by the fixed area alarm unit 14 are automatically
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`5
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`received by the vehicle alarm system: "If a fixed area alarm unit 14 receives a signal from a
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`remote alarm initiator 12, and shortly thereafter receives a properly coded alarm signal from
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`the same, it can be operative to transmit a signal that will be received by a vehicle alarm
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`system." Col. 10, lines 4-8 (emphasis added). That is, for example, signals transmitted by
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`the fixed area alarm unit 14 are received without human intervention by the vehicle alarm
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`10
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`system.
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`Additionally, Ramona teaches that the fixed area alarm unit 14, i.e., the second
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`control device, is responsive to signals from a third control device, i.e., a portable remote
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`alarm initiator unit 12, that is located remote from the fixed area alarm unit 14 and remote
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`from the vehicle. According to Ramona, the portable alarm initiator unit 12 is located remote
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`15
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`from the vehicle, e.g., it is carried by a person walking along a street. Col. 3, lines 27-38 ("A
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`portable remote alarm initiator unit 12 is operable outside the dwelling or facility 11, such as
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`by a person walking along a street."). The portable remote alarm initiator unit transmits an
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`alarm code for a pre-set time period "directly to a fixed area alarm 14." /d. Figure 1 of
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`Ramona illustrates the portable remote alarm initiator unit 12 and the fixed area alarm 14:
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`20
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`Therefore, Ramona teaches that "the second control device is responsive to a third
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`signal, wherein the third signal is at least one of generated by and transmitted from a third
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`control device, wherein the third control device is located at a location which is remote from
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`the vehicle and remote from the second control device, wherein the third signal is transmitted
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`from the third control device to the second control device, and further wherein the third signal
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`25
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`is automatically received by the second control device."
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`Thus, it is agreed that the consideration of Ramona raises a substantial new question of
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`patentability to claim 48 of the '130 patent. Pages A 1-A3 of the Claim Chart are hereby
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`incorporated by reference for an explanation as to how Ramona is being interpreted to allegedly
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`meet every limitation of claim 48 of the '130 patent. There is a substantial like hood that a
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`30
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`reasonable examiner would consider these teachings important in deciding whether or not the
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`claims are patentable. However, Ramona has not been previously considered by the examiner
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`in the original prosecution of the '130 patent. Accordingly, Ramo no raises a substantial new
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`Control Number: 90/013,301
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`question of patentability as to claim 48 which question has not been decided in the previous
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`examinations of the '130 patent.
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`2.
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`Kniffin reference:
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`5
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`Requester asserts that Kniffin raises a substantial new question of patentability as to
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`claim 48 of the '130 patent. Specifically, Kniffin discloses the use of a chain of three control
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`devices, e.g., an access control device 64 (a first control device located at a vehicle), a
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`clearinghouse 18 or 66 (a second control device located remote from the vehicle), and a
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`communications link 16 (a third control device located remote from the second control device
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`10
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`and remote from the vehicle), sending control signals from one device to the next, culminating in
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`the activation (or deactivation) of a vehicle system, e.g., storing an authorized schedule of
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`deliveries in a memory.
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`Kniffin teaches that the truck access control device 64, i.e., the first control device, is
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`responsive to signals from a second control device, i.e., a clearinghouse 66, that is located
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`15
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`remote from the delivery truck 62. According to Kniffin, the clearinghouse 18 of Figure 1
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`includes a computer 20 and a database 24 that communicates with the access control device 12
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`via a radio transmission. Col. 2, lines 44-47. This is done via a "paging system, a cellular
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`telephone system, or other RF carrier." /d. at lines 48-49. As illustrated in Figure 4, the
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`clearinghouse 66 receives signals from as communications link, and includes an RF
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`20
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`transmission system for transmitting the verified schedule of stops.
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`Kniffin teaches that the second control device, i.e., the clearinghouse 18 or 66, is
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`responsive to signals from a third control device, i.e., a communications link 16, that is
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`located remote from the clearinghouse 18 or 66 and from the delivery truck 62. According to
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`Kniffin, a "user who seeks access to the lock establishes communication (by a cellular
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`25
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`telephone, by a conventional telephone, or by some other communications link 16) to a
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`clearinghouse 18." Col. 2, lines 31-34. The user identifies the lock 12 to which access is
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`desired, using, for example, a telephone's Touch Tone pad 22, as illustrated in Figure 1 ; Col. 2,
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`lines 34-37.
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`Thus, it is agreed that the consideration of Kniffin raises a substantial new question of
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`30
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`patentability to claim 48 of the '130 patent. Pages A4-A8 of the Claim Chart are hereby
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`incorporated by reference for an explanation as to how Kniffin is being interpreted to allegedly
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`meet every limitation of claim 48 of the '130 patent. There is a substantiallikehood that a
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`Control Number: 90/013,301
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`Page 10
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`reasonable examiner would consider these teachings important in deciding whether or not the
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`claims are patentable. However, Kniffin has not been previously considered by the examiner in
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`the original prosecution of the '130 patent. Accordingly, Kniffin raises a substantial new question
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`of patentability as to claim 48 which question has not been decided in the previous
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`5
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`examinations of the '130 patent.
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`3.
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`Ryoichi reference:
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`Requester asserts that Ryoichi raises a substantial new question of patentability as to
`
`claim 48 of the '130 patent. Specifically, Ryoichi discloses the use of a chain of three control
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`10
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`devices, e.g., a personal radio paging unit 9 (a first control device located at a vehicle), a fixed
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`radio station St (a second control device located remote from the vehicle), and a telephone unit
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`TEL (a third control device located remote from the second control device and remote from the
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`vehicle), sending control signals from one device to the next, culminating in the activation (or
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`deactivation) of a vehicle system, e.g., unlocking the doors.
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`15
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`Ryoichi teaches that the personal radio paging unit 9, i.e., the first control device, is
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`responsive to a "radio calling signal" and a "following message signal" generated by a second
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`control device, i.e., the fixed radio station St, located remote from the vehicle. Col. 5, lines 16-
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`25; col. 7, line 64-col. 8, line 1 ("A radio wave indicating these calling and message numbers is
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`automatically radiated from a fixed radio station St of a telephone company, and the personal
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`radio paging unit 9 receives the calling number and the following message number '000'.")
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`According to Ryoichi signals transmitted from radio station St are automatically received by the
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`personal radio paging unit 9.
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`Additionally, Ryoichi teaches that the second control device, i.e., the radio station St, is
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`responsive to signals from a third control device, i.e., a telephone, located remote from the
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`25
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`personal radio paging unit 9 and from the radio station St.
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`In view of Ryoichi's discussion of, for example, the telephone unit and the signals
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`transmitted therefrom, Ryoichi teaches that "the second control device is responsive to a third
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`signal, wherein the third signal is at least one of generated by and transmitted from a third
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`control device, wherein the third control device is located at a location which is remote from the
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`30
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`vehicle and remote from the second control device, wherein the third signal is transmitted from
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`the third control device to the second control device, and further wherein the third signal is
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`automatically received by the second control device." The telephone (the third control device)
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`Ex Parte Reexamination - Non Final Office Action
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`Paper No. 20140908
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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 11
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`transmits a signal which is used to control the fixed radio station St (the second control device),
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`which in turn is used to control the radio paging unit 9 (the first control device), which is used to
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`generate signals that control vehicle functions (e.g., the handbrake).
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`Thus, it is agreed that the consideration of Ryoichi raises a substantial new question of
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`5
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`patentability to claim 48 of the '130 patent. Pages A9-A 13 of the Claim Chart are hereby
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`incorporated by reference for an explanation as to how Ryoichi is being interpreted to allegedly
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`meet every limitation of claim 48 of the '130 patent. There is a substantiallikehood that a
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`reasonable examiner would consider these teachings important in deciding whether or not the
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`claims are patentable. Although Ryoichi was cited during the prosecution of the related '755
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`10
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`application, Ryoichi was not relied upon by the Examiner during the prosecution of the '130
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`patent. Accordingly, Ryoichi raises a substantial new question of patentability as to claim 48
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`which question has not been decided in the previous examinations of the '130 patent.
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`4.
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`Pagliaroli reference:
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`15
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`Requester asserts that Pagliaroli raises a substantial new question of patentability as to
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`claim 48 of the '130 patent. Specifically, Pagliaroli discloses the use of a chain of three control
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`devices, e.g., a control unit 16 (a first control device located at the vehicle), a mobile telephone
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`signal transmitter 46 (a second control device located remote from the vehicle), and a telephone
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`48 (a third control device located remote from the second control device and remote from the
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`20
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`vehicle), sending control signals from one device to the next, culminating in the activation (or
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`deactivation) of a vehicle system, e.g., disabling the engine. Pagliaroli teaches the use of a
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`telephone to transmit signals over a telephone network to a control unit located inside the
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`vehicle that is used to control vehicle functions such as disabling the engine. Col. 5, lines 29-51.
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`Pagliaroli also teaches that the control unit 16 and receiver 14, i.e., the first control device, are
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`responsive to signals from a second control device, i.e., a mobile telephone signal transmitter
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`46, that is located remote from the vehicle. According to Pagliaroli, the mobile telephone signal
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`transmitter 46 communicates with the first control device in order to control vehicle functions.
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`Telephone signal transmitter 46 (located remote from the automobile) transmits signal code 40
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`to the receiver 14 (located in the automobile) when the car is in range of the cellular network.
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`30
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`Col. 5, lines 1-7 ("The local mobile telephone company would transmit the signal code 40,
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`associated with the telephone number dialed, through its network of mobile telephone signal
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`Ex Parte Reexamination - Non Final Office Action
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`Paper No. 20140908
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`12
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`

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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 12
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`transmitters 46. If the stolen vehicle were in the range of the mobile telephone transmitter
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`network, the receiver 14 would receive the signal code 40. ").
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`Pagliaroli teaches that the second control device, i.e., the mobile telephone signal
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`transmitter 46, is responsive to signals from a third control device, i.e., a telephone 48, that is
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`5
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`located remote from the mobile telephone signal transmitter 46 and remote from the vehicle. "To
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`transmit the signal code 40, a person, by using any telephone 48, need only dial the phone
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`number of the receiver 14." Col. 4, line 66-col. 5, line 1. As illustrated in Figure 1, the telephone
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`48 is linked to the second control device (the telephone signal transmitter 46). In view of
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`Pagliaroli's discussion of, for example, the telephone 48, Pagliaroli teaches that "the second
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`10
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`control device is responsive to a third signal, wherein the third signal is at least one of generated
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`by and transmitted from a third control device, wherein the third control device is located at a
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`location which is remote from the vehicle and remote from the second control device, wherein
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`the third signal is transmitted from the third control device to the second control device, and
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`further wherein the third signal is automatically received by the second control device."
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`15
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`The signal code 40 is generated at the telephone located remote from the vehicle (the
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`third control device), transmitted through the second control device located remote from the
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`vehicle (the telephone signal transmitter 46), to the first control device located at the vehicle
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`(control unit 16 and receiver 14) in order to, e.g., stop the ignition system in the event of a
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`vehicle theft.
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`20
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`Thus, it is agreed that the consideration of Pagliaroli raises a substantial new question of
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`patentability to claim 48 of the '130 patent. Pages A 14-A 19 of the Claim Chart are hereby
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`incorporated by reference for an explanation as to how Pagliaroli is being interpreted to
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`allegedly meet every limitation of claim 48 of the '130 patent. There is a substantiallikehood that
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`a reasonable examiner would consider these teachings important in deciding whether or not the
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`25
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`claims are patentable. Although Pagliaroli was cited during the prosecution of the related '755
`
`and '628 applications, Pagliaroli was not relied upon by the Examiner during the prosecution of
`
`the '130 patent. Accordingly, Pagliaroli raises a substantial new question of patentability as to
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`claim 48 which question has not been decided in the previous examinations of the '130 patent.
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`30
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`5.
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`Drori and Ramono references
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`Requester asserts that the consideration of the combination of Drori and Ramona raises
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`a substantial new question of patentability to claim 48 of the '130 patent. Drori describes a
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`Ex Parte Reexamination - Non Final Office Action
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`Paper No. 20140908
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`13
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`Control Number: 90/013,301
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`Art Unit: 3992
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`Page 13
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`system that allows for the installation of a cellular phone and a controller in an automobile. Col.
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`1, line 67-col. 2, line 5. The cellular telephone installed in the car can be activated by a signal
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`sent from another cellular phone located outside the vehicle, which can use a series of codes to
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`control various systems in the vehicle. Col. 10, lines 3-17.
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`5
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`Drori teaches a cellular telephone, i.e., the first control device located in the vehicle, is
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`hard-wired using cables 18 and 22 to the system 10. Col. 3, line 58 to col. 4, line 4. The system
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`can be used, e.g., as a remote starter or an engine kill switch to disable the engine. Col. 5, lines
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`19 to 32 Additionally, Drori et al. teaches that a user can generate commands using a touch
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`tone telephone, i.e., the third control device located remote from the vehicle, to instruct the
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`10
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`system to perform a number of tasks, e.g., starting or stopping the engine. Col. 10, lines 3-
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`17. According to Drori, the system "allows the user to remotely start and stop the engine." Col.
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`16, lines 58-59. In view of Drori's discussion of, for example, the cellular telephone system that
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`can function as a remote starter, Drori teaches "the second control device is responsive to a
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`third signal, wherein the third signal is at least one of generated by and transmitted from a third
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`15
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`control device, wherein the third control device is located at a location which is remote from the
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`vehicle and remote from the second control device, wherein the third signal is transmitted from
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`the third control device to the second control device, and further wherein the third signal is
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`automatically received by the second control device."
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`Ramona teaches the use of a chain of three control devices, e.g., a vehicle alarm
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`20
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`system (a first control device located at a vehicle), a fixed area alarm unit 14 (a second control
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`device located remote from the vehicle), and a remote alarm initiator 12 (a third control device
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`located remote from the second control device and remote from the vehicle), sending control
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`signals from one device to the next, culminating in the activation (or deactivation) of a vehicle
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`system, e.g., initiating an alarm, flashing exterior lights, resetting the alarm, etc. See, e.g., col.
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`25
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`10, lines 4-8 ("If a fixed area alarm unit 14 receives a signal from a remote alarm initiator 12,
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`and shortly thereafter receives a properly coded alarm signal from the same, it can be operate
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`to transmit a signal that will be received by a vehicle alarm system").
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`In other words, Drori describes a first control device, i.e., a cellular telephone, and a third
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`control devic