`Volkswagen Group of America, Inc., Petitioner
`
`1
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`
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`record at the address provided below:
`
`Clifford A. Ulrich, Esq.
`
`KENYON & KENYON LLP
`
`One Broadway
`
`New York, NY l0004.
`
`Date:
`
`June 1, 2015
`
`Raymond A. Joao, Esq.
`122 Bellevue Place
`
`Yonkers, New York 10703
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`Tel. (914) 969-2992
`
`Respectfully Submitted,
`
`/Raymond A. Joao/
`Raymond A. Joao
`Reg. No. 35,907
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`2
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`
`
`REEXAM-7397363
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Reexamination of: PATENT OF RAYMOND A. JOAO
`
`Patent No.: 7,397,363
`
`For: CONTROL AND/OR MONITORING APPARATUS AND METHOD
`
`Control No.: 90/013,303
`
`Issue Date: JULY 8, 2008
`
`Examiner: SAMUEL G. RIMELL
`
`Group Art Unit: 3992
`
`Conf1rrnationNo.: 3482
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`RESPONSE TO OFFICE ACTION
`
`Sir:
`
`This is a Response To Office Action in response to the Office Action, mailed
`
`March 31, 2015, in the above-referenced Ex Parte Reexamination of Claim 21 of U.S.
`
`Patent No. 7,397,363 (the '363 Patent), wherein the Examiner rejected Claim 21 in View of
`
`prior art references. The Patent Owner respectfully traverses the rejection of Claim 21.
`
`Based on the following Remarks, the Patent Owner respectfully submits that Claim
`
`21 of U.S. Patent No. 7,397,363 is patentable over the prior art.
`
`3
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`
`
`REMARKS
`
`U.S. Patent No. 7,397,363 contains 88 claims. Claim 21 is subject to
`
`reexamination. Claims l-20 and 22-88 are not subject to reexamination. The Examiner
`
`has rejected Claim 2l in View of prior art references. In View of the following Remarks,
`
`Applicant respectfully submits that Claim 2l is patentable oVer the prior art.
`
`I. THE 35 U.S.C. §103 REJECTION:
`
`The Examiner asserts that Claim 21 of U.S. Patent No. 7,397,363 (the '363 Patent)
`
`is rejected under pre-AIA 35 U.S.C. §l03(a) as being unpatentable oVer Spaur, et al., U.S.
`
`Patent No. 5,732,074 (Spaur) in View of Kniffin, et al., U.S. Patent No. 6,072,402
`
`(Kniffin). The Patent Owner respectfully traverses the Examiner's rejection of Claim 2l.
`
`In View of the following Remarks, the Patent Owner respectfully submits that the
`
`Examiner has failed to establish a primafacie case of obViousness, as required under 35
`
`U.S.C. §l03, and that Claim 2l of the '363 Patent is patentable oVer the prior art.
`
`IA. The Examiner's Rejection Of Claim 21 Over Spaur In View Of Kniffin:
`
`The Examiner, at pages 2 through 8 of the Office Action, mailed March 3l, 2015,
`
`sets forth his rationale for rejecting Claim 2l of the '3 63 Patent oVer Spaur in View of
`
`Kniffin.
`
`As best understood by the Patent Owner, the Examiner seeks to reconfigure the
`
`Various components of the Spaur system, as depicted in Fig. 2 of Spaur, in order to group
`
`them into: 1) a "lst DeVice"; 2) a "2nd DeVice"; and 3) a "3rd DeVice" (see page 3 of the
`
`Office Action, mailed March 3 l, 20l5). The Examiner contends that the "lst DeVice"
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`4
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`
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`corresponds to the following components of the Spaur system: 10a (remote station 10a), 64
`
`(modem 64), 68 (Internet 68), 30 (controller 30 which is "contained in the vehicle" see,
`
`Spaur at Col. 7, lines 23-25), and 122 (controller area network control unit 122, which is
`
`also located at the vehicle and is a component of the CAN l24 also located at the vehicle,
`
`see Spaur at Col. l0, lines 23-50 and Fig. 2). The Examiner further contends that the "2nd
`
`Device" corresponds to the following components of the Spaur system: 80 (cellular phone
`
`80 "which is contained in the vehicle", see Spaur at Col. 7, lines 40-47 and Fig. 2), 82
`
`(vehicle CDPD network modem 82 which is also located at the vehicle and demodulates
`
`the information received by the cellular phone 80, see Spaur at Col. 7, lines 50-54 and Fig.
`
`2), and 84 (phone interface 84 which "links the cellular phone 80 with the controller 30",
`
`see Spaur at Col. 7, lines 54-58 and Fig. 2, and thus, is also located at the vehicle). The
`
`Examiner also contends that the "3rd Device" corresponds to vehicle devices 50a to 50n in
`
`the Spaur system (see page 3 of the Office Action, mailed March 31, 2015).
`
`The Examiner then, at page 5, lines l-3, of the Office Action, mailed March 3l,
`
`2015, stated that: "Kniffin et al at FIG 3 teaches a first processing device (clearing house
`
`database and transmission system 54) and second processing device (mobile phone 52) as
`
`being remote from the lock mechanism."
`
`The Examiner further stated:
`
`"This configuration allows a user to be granted authorization for direct
`access to the lock system by use of the remote telephone (Kniffin et al at
`col. 7, lines 16-3 0). It would therefore have been obvious to one of ordinary
`skill in the art to modify Spaur et alto allow its first and second devices to
`be connected remotely to the devices on the vehicle, whereby such
`configuration allows the user to advantageously gain direct access to the
`devices on the vehicle (Kniffin et al at col. 7, lines 16-30)". See Office
`Action, mailed March 3 l, 2015 at page 5, lines 3-8.
`
`As provided herein, the Patent Owner respectfully traverses the Examiner's
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`5
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`
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`rejection of Claim 21 over Spaur in view of Kniffin on the following grounds: 1) the
`
`Examiner's proposed modification of Spaur in View of Kniffin would render the Spaur
`
`system inoperable; 2) the Examiner's proposed modification of Spaur in view of Kniffin
`
`would still fail to disclose, teach, or suggest, a second processing device having all of the
`
`recited limitations of the recited second processing device of Claim 21; 3) one skilled in
`
`the art would not look to Kniffin for any modification of the Spaur system; and 4) the
`
`Examiner has not articulated a reason supported by some rational underpinning for
`
`combining the teachings of Spaur and Kniffin and thus the Examiner has failed to make a
`
`primafacie case of obviousness with regards to Claim 21.
`
`IB. Claim 21 Of The '363 Patent Is Patentable Over Spaur In View Of Kniffin And Is
`Patentable Over The Prior Art:
`
`For at least the reasons set forth herein, the Patent Owner respectfully submits that
`
`Claim 21 of the '363 Patent is patentable over Spaur in view of Kniffin and is patentable
`
`over the prior art.
`
`1) The Examiner's Proposed Modification Of Spaur In View Of Kniffin
`Would Render The Spaur System Inoperable:
`
`If a proposed modification would render the prior art invention being modified
`
`unsatisfactory for its intended purpose, then there is no suggestion or motivation to make
`
`the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).
`
`The proposed modification of Spaur in view of Kniffin would render the Spaur
`
`system inoperable, and thus unsatisfactory for its intended purpose. The system disclosed
`
`in Spaur does not include three separate processing devices in which two of the three
`
`processing devices are remote from the vehicle. As best understood by the Patent Owner,
`
`6
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`
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`the Spaur system is designed to provide a mobile portable wireless communication system
`
`which allows any one or more users of a remote station to access a vehicle via the Internet.
`
`As best understood by the Patent Owner, any information transmitted from the remote
`
`station 10a is transmitted to, and received by, the cellular phone 80 which is specifically
`
`described as being located at the vehicle. Furthermore, the Spaur system relies on the
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`cellular phone 80 being intentionally integrated into the vehicle. Information is then
`
`provided to the controller 30 which is also specifically described as being located at the
`
`vehicle. Vehicle devices 50a - 50n can be controlled via the controller 30 and the
`
`controller area network control unit l22, which is also located at the vehicle.
`
`As best understood by the Patent Owner, it is essential that controller 30 be located
`
`at the vehicle. Spaur, at Col. 6, lines ll-50 specifically provides:
`
`"The wireless device l8 bi-directionally communicates with a controller 30
`contained in the vehicle through a network protocol converter 26 using a
`wireless device interface 22. .
`.
`.
`. In the embodiment to be described in
`
`greater detail herein, the network protocol converter 26 includes a TCP/IP stack
`which can be part of the controller 30 so that the controller 30 is also
`definable or can be referred to as a controller/network protocol converter 30.
`The controller 30 is responsible for a number of functions related to
`understanding and acting on information received from one or more remote
`
`stations l0 obtaining and responding to requested information and operatively
`functioning with information including data available from other elements
`
`in the vehicle. In that regard the controller 30 communicates with a
`controller interface 34 that electrically links the controller 30 with a vehicle
`standardized network 40. The vehicle standardized network 40 includes a
`
`controller unit 44 that provides appropriate message and data handling
`functions associated with sending and receiving information including data
`from each of a plurality of physical vehicle devices 50 that are operatively
`connected to a bus 46 of the vehicle standardized network 40. Like the remote
`
`standardized network l4, the vehicle standardized network 40 is an established
`
`and previously developed network that interfaces with components in a vehicle,
`such as engine related components in order to provide desired or requested data
`concerning the operations or status of these components."(emphasis added).
`
`In view of the above, any modification of Spaur that would include removing the
`
`7
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`
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`controller 30 fiom the vehicle would result in the Spaur system being rendered inoperable.
`
`Without the controller 30 being located at the vehicle, there would be no controller at the
`
`vehicle which could perform all of the numerous functions specifically described in Spaur
`
`as being performed by the controller 30.
`
`As best understood by the Patent Owner, it is also essential that the controller area
`
`network control unit l22 also be located at the vehicle. Spaur, at Col. l4, lines 4-9
`
`specifically provides:
`
`"At block 300, vehicle positioning data is available fiom one of the vehicle
`devices 50, which might be a GPS. On a requested or regular input scheme,
`such vehicle device data is sent to the CAN bus 126 at block 304. The CAN
`
`controller l22 is responsible for controlling the receipt and transmitting of such
`data to the controller 30 at block 308." (emphasis added).
`
`In view of the above, the vehicle positioning data is available from a vehicle device
`
`50 at the vehicle. The CAN controller l22 "is responsible for controlling the receipt and
`
`transmitting of such data to the controller 30" and, as noted herein, the controller 30 is
`
`located at the vehicle.
`
`In view of the above, any modification of Spaur that would include removing the
`
`CAN controller 122 fiom the vehicle would result in the Spaur system being rendered
`
`inoperable. Without the CAN controller 122 being located at the vehicle, there would be
`
`no controller at the vehicle which could control the receipt and transmitting of the vehicle
`
`positioning data to any device at the vehicle.
`
`As best understood by the Patent Owner, it is also essential that the cellular phone
`
`80, the vehicle CDPD network modem 82, and the phone interface 84, also be located at
`
`the vehicle. Spaur, at Col. 7, lines 40-54 specifically provides:
`
`"The Internet 68 operatively communicates with a standardized network
`
`8
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`
`
`transmission protocol that permits information to be bi-directionally
`communicated over the airlink and, in one embodiment, includes a remote
`CDPD network modem 76 which prepares the information in a conventionally
`acceptable manner for transmission and communication with a cellular phone
`80 which is contained in the vehicle. The cellular phone 80 can be any selected
`one of a number of conventional cellular phones that have the capabilit_v_ of
`properly communicating with the desired formatted or arranged information. In
`the illustrated embodiment of FIG. 2, the cellular phone 80 is operatively
`associated with a vehicle CDPD network modem 82 that demodulates the
`
`received information so that it is acceptable for further handling or processing.
`A phone interface 84 links the cellular phone 80 with the controller 30 and is,
`preferably, configured to work with a variety of cellular phones having
`differing output connections and/or arrangements of output connections. In that
`regard, the phone interface 84 is useful in providing a proper batteLv_ charging
`function for the cellular phone 80, assisting in the identification of the particular
`cellular phone 80 that is being utilized, and establishing the correct electrical
`connections for passage or communication of the signals between the cellular
`phone 80 and the controller 30." (emphasis added).
`
`In view of the above, any modification of Spaur that would include removing the
`
`cellular phone 80, the vehicle CDPD network modem 82, and the phone interface 84, from
`
`the vehicle would result in the Spaur system being rendered inoperable. Without the
`
`cellular phone 80 being located at the vehicle, there would simply be no means by which
`
`any outside processing device could communicate with the vehicle. Thus, the Spaur
`
`system, modified such that the cellular phone 80 is located remote from the vehicle, would
`
`be rendered inoperable. Without the vehicle CDPD network modem 82 being located at
`
`the vehicle, there would be no device at the vehicle for demodulating the information
`
`received from any processing device so that it is acceptable for further handling or
`
`processing. Thus, the Spaur system, modified such that the vehicle CDPD network
`
`modem 82 is located remote from the vehicle, would be rendered inoperable. Lastly,
`
`without the phone interface 84 being located at the vehicle, there would be no interface
`
`device for establishing the correct electrical connections for passage or communication of
`
`9
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`
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`the signals between the cellular phone 80 and any processing device at the vehicle.
`
`Not only would the Examiner's proposed modification of the Spaur system, by
`
`combining certain Spaur system components and placing some of those combined system
`
`components remote from the vehicle, render the Spaur system inoperable (as set forth
`
`above), such would also run counter to the teachings of Claim 21 of the '363 Patent, which
`
`requires a second processing device to first processing device to third processing device
`
`communication sequence. The Examiner's proposed "lst Device" combines multiple
`
`devices, some that Spaur teaches are located remote from the vehicle, and others that Spaur
`
`teaches are located at the vehicle, with some of these devices and, in particular, the remote
`
`station l0a, the modem 64, and the Internet 68 having no direct connection or no direct
`
`interaction with any of the controller 30 or the CAN controller l22. To be clear, there is
`
`simply no support for the proposed combination of the Spaur system components 10a, 64,
`
`68, 30, and 122 being combined to form the proposed "lst Device". Further, as noted
`
`above, such a reconfiguration of the Spaur system components would render Spaur
`
`inoperable. There would, for example, be no processing device remaining in the Spaur
`
`system for interacting with the vehicle devices 50a-50n (see the Examiner's Figure on page
`
`3 of the Office Action, mailed March 31, 2015).
`
`The Examiner's proposed "2nd Device" also renders Spaur inoperable. By
`
`"pulling" the cellular phone 80 out of, or from, the vehicle and placing it at a location
`
`remote from the vehicle, there would be no means for any processing device to
`
`communicate with any device at the vehicle. Further, Claim 2l of the '3 63 Patent
`
`specifically requires that the recited "second processing device" generate the recited
`
`"second signal" or transmit the recited "second signal", which recited "second signal"
`
`10
`
`10
`
`
`
`contains information "to at least one of activate, de-activate, disable re-enable, and control
`
`an operation of, the at least one of a vehicle system, a vehicle equipment system, a vehicle
`
`component, a vehicle device, a vehicle equipment, and a vehicle appliance" and which
`
`recited "second signal" is transmitted to the recited "first processing device". The recited
`
`"first processing device" of Claim 21 generates the recited "first signal" or transmits the
`
`recited "first signal" in response to the recited "second signal". None of the cellular phone
`
`80, the vehicle CDPD network modem 82, or the phone interface 84 (the Examiner's
`
`proposed "2nd Device" of Spaur), perform, or are described as being capable of
`
`performing, the above-described recited and claimed functionality of the recited "second
`
`processing device". Therefore, the Patent Owner respectfully submits that the Examiner's
`
`proposed "2nd Device" of Spaur cannot serve as the recited "second processing device" of
`
`Claim 21 .
`
`In view of the foregoing, the EXaminer’s proposed modification of Spaur, so as to
`
`reconfigure the components of Spaur, and the Examiner's reliance on the teachings of
`
`Kniffin to remove components of the Spaur system from the vehicle, would render Spaur
`
`inoperable and, therefore, would be untenable and improper.
`
`2) The Examiner's Proposed Modification Of Spaur In View Of Kniffin
`Would Still Fail To Disclose, Teach, Or Suggest, A Second Processing
`Device Having All Of The Recited Limitations Of The Recited Second
`Processing Device Of Claim 21:
`
`Assuming, arguendo, that the Examiner could remove certain components of the
`
`Spaur system from the vehicle so as to locate the components of the Examiner's asserted
`
`"lst Device" and "2nd Device" at a location remote from the vehicle, the resulting system
`
`would still fail to disclose, teach, or suggest, the recited "second processing device" of
`
`11
`
`11
`
`
`
`Claim 21 of the '363 Patent. The combination of the cellular phone 80, the vehicle CDPD
`
`network modem 82, and the phone interface 84, to form the asserted "2nd Device" would
`
`fail to serve as the recited "second processing device" of Claim 21. Specifically, the
`
`combination of the cellular phone 80, the vehicle CDPD network modem 82, and the
`
`phone interface 84, to form the asserted "2nd Device" of Spaur, does not, and cannot, serve
`
`as the recited "second processing device" of Claim 21 because, regardless of where it is
`
`placed, it does not perform the functionality of generating or transmitting the recited
`
`"second signal" which contains the information "to at least one of activate, de-activate,
`
`disable re-enable, and control an operation of, the at least one of a vehicle system, a
`
`vehicle equipment system, a vehicle component, a vehicle device, a vehicle equipment, and
`
`a vehicle appliance", which recited "second signal" is generated by or is transmitted from
`
`the recited "second processing device" and which recited "second signal" is transmitted to
`
`the recited "first processing device". The recited "first processing device" of Claim 21
`
`generates the recited "first signal" or transmits the recited "first signal" in response to the
`
`recited "second signal. To the contrary, the combination of the cellular phone 80, the
`
`vehicle CDPD network modem 82, and the phone interface 84 (the Examiner's proposed
`
`"2nd Device" of Spaur) receives a signal at the vehicle from a remotely located processing
`
`device and conveys it to a device at the vehicle.
`
`In view of the above, the espoused combination of the teachings of Spaur and
`
`Kniffin, at the very least, still fails to disclose, teach, or suggest, and the Examiner's
`
`proposed "2nd Device" cannot serve as, the recited "second processing device” of Claim
`
`2 1 .
`
`In view of the foregoing, the combination of Spaur and Kniffin, at the very least,
`
`10
`
`12
`
`12
`
`
`
`fails to disclose, teach, or suggest, the recited "second processing device" and the recited
`
`"second signal" generated by or transmitted from the recited "second processing device",
`
`all of which features are specifically recited features of Claim 21. In View of the
`
`foregoing, the Patent Owner submits that Claim 21 is patentable over Spaur in view of
`
`Kniffin.
`
`3) One Skilled In The Art Would Not Look To Kniffin For Any
`Modification Of The Spaur System:
`
`If the proposed modification or combination of the prior art would change the
`
`principle of operation of the prior art invention being modified, then the teachings of the
`
`references are not sufficient to render the claims primafacie obvious. In re Ratti, 270 F.2d
`
`810, 813, 123 USPQ 349, 352 (CCPA 1959). See also MPEP 2143.01(V).
`
`The Patent Owner further submits that one having ordinary skill in the art would
`
`not look to Kniffin for any modification of the Spaur system, because such a combination
`
`would change the principle of operation of the Spaur system. Specifically, Spaur discloses
`
`a system that allows one or more users to communicate with a vehicle over the Internet and
`
`using a remote user station 10a. In Spaur, the communications occur between the remote
`
`station 10a and the cellular phone 80 via the Internet. One having ordinary skill in the art
`
`at the time of the invention of Claim 21 would appreciate the infrastructure of the Internet
`
`and its improved signal transmission capabilities, as compared to the rf system used in
`
`Kniffin, as being a superior system for transmitting a signal or a message from one
`
`location to another.
`
`The invention disclosed in Kniffin is described as being used in conjunction with a
`
`radio freguency grf) system, a primitive system compared to the Internet. Further, it is
`
`11
`
`13
`
`13
`
`
`
`noteworthy that Kniffin expressly acknowledges the problems and limitations of the rf
`
`system disclosed therein. See, for example, Kniffin at Col. 9, line 57 to C01. 10, line 15
`
`which provides.
`
`"It will be recognized that in embodiments employing radio transmissionsfrom
`power-limited devices, the range of transmission may be limited.
`Transmissions may also be degraded by the location of the device when
`transmitting and the characteristics of surrounding terrain. Accordingly, it is
`often desirable to provide one or more conventional repeater stations
`throughout a geographical area served by the system. Such stations receive
`the weak signal from a power-limited device, amplify it, and rebroadcast it to
`the destination station. In a sophisticated system, a geosynchronous satellite can
`be employed as a repeater. U.S. Pat. Nos. 4,189,675 and 4,831,619 show
`systems of this sort. Alternatively, path losses associated with transmissions to
`geosynchronous altitude can be greatly reduced by employing a plurality of low
`altitude satellites. Yet another option is use of a plurality of repeater satellites in
`elliptical orbit, as disclosed in U.S. Pat. No. 4,854,527.
`
`It will further be recognized that the transmissions from the clearinghouse to
`the receiving units are desirably made redundantly so as to reduce the
`likelihood ofa failed transmission. Systems for redundantly transmitting
`messages in paging systems are well known and are disclosed, by way of
`example, in U.S. Pat. Nos. 4,897,835 and 4,713,808." (emphasis added).
`
`In this regard, the above-described and acknowledged problems and limitations of
`
`the Kniffin system's operation in connection with the rf communication system disclosed
`
`therein, include, at the very least: 1) the recognized limited range of radio frequency signal
`
`transmissions; 2) the recognition that transmissions can be degraded by the location of the
`
`device used; 3) the recognized need for additional communication system infrastructure,
`
`including the deployment of Earth orbiting satellites; and 4) the recognition that failed
`
`transmissions from the clearinghouse to the receiving units would give rise to the need to
`
`make transmissions redundantly.
`
`One having ordinary skill in the art, given the task of having to improve upon the
`
`system disclosed in Spaur in order to arrive at the invention of Claim 21 of the '3 63 Patent,
`
`12
`
`14
`
`
`
`would simply have no need or reason to look to the teachings of Kniffin and its use of the
`
`primitive and unreliable rf communication system disclosed therein, which rf
`
`communication system utilizes a completely different principle of operation than the
`
`Intemet-based communication system disclosed in Spaur.
`
`4) The Examiner Has Not Articulated A Reason Supported By Some Rational
`Underpinning For Combining The Teachings Of Spaur And Kniffin And Thus
`The Examiner Has Failed To Make A Prima Facie Case Of Obviousness:
`
`As provided herein, the Examiner has failed to make a primafacie case of
`
`obviousness.
`
`MPEP 2143.01(IV) states that a “mere statement that the claimed invention is
`
`within the capabilities of one of ordinary skill in the art is not sufficient by itself to
`
`establish primafacie obviousness.”
`
`“‘[R]ej ections on obviousness cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.”’ KSR,
`
`550 U.S. at 418, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 988,
`
`78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
`
`The Examiner has not articulated a reason with some rational underpinning for the
`
`asserted rejection of Claim 21. Instead, only a broad and conclusory statement has been
`
`provided for the asserted combination ("It would therefore have been obvious to one of
`
`ordinary skill in the art to modify Spaur et alto allow its first and second devices to be
`
`connected remotely to the devices on the vehicle, whereby such configuration allows the
`
`user to advantageously gain direct access to the devices on the vehicle (Kniffin et al at col.
`
`13
`
`15
`
`15
`
`
`
`7, lines 16-30)" (see Office Action, mailed March 31, 2015 at page 5, lines 3-8.").
`
`Here, the “rational underpinning” appears to be to allow the first and second
`
`devices to be connected remotely to the devices on the vehicle in order for the user to gain
`
`direct access to the devices on the vehicle. However, the Patent Owner respectfully
`
`submits that the Spaur system, as it exists without any modification, already allows a user
`
`to advantageously gain direct access to devices on the vehicle without having to
`
`communicate via a separate clearinghouse as taught by Kniffin. In fact, Spaur provides a
`
`system which allows a user of a remote station l0a to access the cellular phone 80 directly
`
`via the Internet, and one of ordinary skill in the art would recognize that the Intemet-based
`
`communication system of Spaur provides a far superior communication system than the rf
`
`communication system disclosed in Kniffin. There would simply be no need for one
`
`skilled in the art to look backwards, by looking to the teachings of Kniffin, and to
`
`introduce, into the Spaur system a separate clearinghouse used in connection with an rf
`
`system, which rf system is primitive compared to the Internet and which has many
`
`recognized and acknowledged drawbacks, as evidenced by the Kniffin disclosure itself.
`
`Accordingly, the Examiner’s articulated reason for the rejection of Claim 21 simply lacks
`
`any rational underpinning and, as a result, is not sufficient to establish a primafacie case
`
`of obviousness.
`
`In view of the foregoing, the Patent Owner respectfully requests that the Examiner
`
`reconsider the rejection of Claim 21 and find Claim 21 of the ‘363 Patent to be patentable
`
`over Spaur in view of Kniffin and patentable over the prior art.
`
`14
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`16
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`16
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`11. Conclusion:
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`In View of the foregoing, the Patent Owner respectfully submits that Claim 21 is
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`patentable over Spaur and Kniffm and is in condition for confirmation. Withdrawal of the
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`rejection of, and confirmation of the patentability of, Claim 21 of the ‘363 Patent is
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`respectfully requested.
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`III. Patent Owner Reguest For Personal Interview:
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`The Patent Owner hereby requests a Personal Interview with the Examiner to
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`discuss this Response as the Patent Owner believes a Personal Interview can assist in
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`expediting this Reexamination Proceeding.
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`Respectfully Submitted,
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`/Raymond A. Joao/
`Raymond A. Joao
`Reg. No. 35,907
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`Date: June 1, 2015
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`Raymond A. Joao, Esq.
`122 Bellevue Place
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`Yonkers, New York 10703
`Tel. (914) 969-2992
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`Electronic Acknowledgement Receipt
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`M—
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`Title of Invention:
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`CONTROL AND/OR MONITORING APPARATUS AND METHOD
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`RAYMOND A. JOAO, ESQ.
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`122 BELLEVUE PLACE
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`— Y
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`ONKERS
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`US
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`9149692992
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`Correspondence Address:
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`Filer Authorized By
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`Application Type
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`Reexam (Third Party)
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`Payment information:
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`File Listing:
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`18
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`Document
`Number
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`Document Description
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`File Size(Bytes)/
`Message Digest
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`Pages
`Multi
`Part /.zip (if appl.)
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`Reexam Certificate of Service
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`Reexam-7397363-
`CertificateOfService-06-01-201
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`bb50
`5004aa3f70ec26cdeabb74a72ff7e7a04758
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`Information:
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`Response after non-final action-owner
`timely
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`Reexam-7397363-
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`222107
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`ResponseToOfficeAction-06-01
`-201 5. pdf
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`2f4
`4f7d2e02b91ccc2fcfba619f6f1f4404b434a
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
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`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
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`National Stage of an International Application under 35 U.S.C. 371
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`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
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`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
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