Application Number
`
`Application/Control No.
`
`10/244,334
`Examiner
`
`Van T. Trieu
`
`Applicant(s)/Patent under
`Reexamination
`JOAO, RAYMOND ANTHONY
`Art Unit
`
`2612
`
`tl.S. Patent and Trademark Office
`
`Part of Paper No. 20080420
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 1
`
`

`
`PATENT APPLICATION SERIAL NO.
`
`U.S. DEPARTMENT OF COMMERCE
`PATENT AND TRADEMARK OFFICE
`FEE RECORD SHEET
`
`09/18/2002 BSflYASIl 00000014 10244334
`01 FC:201
`370.00 OP
`
`PTO-1556
`(5/87)
`
`*U.S. Govommant Printing Office: 2002 — 489-267/69033
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 2
`
`

`
`premises equipment system, a premises component, and a
`premises appliance, wherein the second signal is transmitted
`to the first processing device on or over at least one of the
`Internet and the World Wide Web, and further wherein the
`second signal is automatically received by the first
`processing device, wherein the first signal is transmitted to
`and automatically received by a third processing device,
`wherein the third processing device is associated with or
`located at the premises, wherein the third processing device
`at least one of generates and transmits a third signal for at
`least one of activating, de-activating, disabling, re­
`enabling, and controlling an operation of, the at least one
`of a premises system, a premises device, a premises
`equipment, a premises equipment system, a premises component,
`and a premises appliance, all of which features are
`specifically recited features of independent Claim 44.
`
`Applicant respectfully submits that claims 1, 8-10,
`and 13 of U.S. Patent No. 6,549,130 do not disclose or
`suggest the recited apparatus wherein the recited first
`processing device is associated with a web site.
`
`Applicant further submits that claims 1, 8-10, and 13
`of U.S. Patent No. 6,549,130 do not disclose or suggest the
`
`13
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 3
`
`

`
`recited first processing device which at least one of
`generates and transmits the recited first signal in response
`to the recited second signal and which determines whether the
`recited operation associated with information contained in
`the recited second signal is an authorized operation.
`
`Applicant further submits that claims 1, 8-10, and 13
`of U.S. Patent No. 6,549,130 do not disclose or suggest the
`recited second signal which is transmitted to the recited
`first processing device on or over at least one of the
`Internet and the World Wide Web.
`
`In view of the foregoing, Applicant respectfully
`submits that Claims 1, 8-10, and 13 of U.S. Patent No..
`6,549,130 do not disclose or suggest many of the specifically
`recited features of independent Claim 44. In view of the
`foregoing, Applicant respectfully submits that the present
`invention, as defined by independent Claim 44, is patentable
`over claims 1, 8-10, and 13 of U.S. Patent No. 6,549,130. In
`view of the foregoing, allowance of independent Claim 44 is
`respectfully requested.
`
`14
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 4
`
`

`
`Support for the above definition can, for example, be
`found in the originally filed Specification at page 66, lines
`2-10; page 10, lines 5-13; page 112, lines 3-11; page 175,
`lines 10-24; page 66, line 2 to page 67, line 7; page 70,
`lines 13-20; page 112, line 23 to page 113, line 23; page 68,
`line 17 to page 71, line 3; page 84, lines 5-8; and page 151,
`lines 14-16; and in the originally filed Drawings in Figures
`1, 5A, 5B, 9, 11A, 11B, 12, 13, 14, 15, and 16,
`
`l. "Signal'';
`
`"Signal" means "an indication, or an indication having
`or conveying data, information, or a message, or a conveyor of
`data, information, or a message, or an indication representing
`data or information."
`
`Support for the above definition can, for example, be'
`found in the originally filed Specification at page 64, line 1
`to page 67, line 20; page 68, line 17 to page 76, line 11;
`page 101, line 17 to page 102, line 4; page 102, line 5 to .
`page 104, line 16; page 104, line 17 to page 114, line 21;
`Page 115, line 20 to page 135, line 2; page 161, line 8 to
`page 177, page 18; page 186, line 5 to page 188, line 8; page
`208, line 14 to page 211, line 2; page 231, line 18 to page
`
`10 ■ '
`PAGE 11/17 ' RCVD AT 11123/200710:32:25 AM [Eastern Standard Time] ‘ SVR:USPT0€FXRF-3/6 * DNIS:2738300 * CSID:914 969 2992 * DURATION (mm-ss):03-36
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 5
`
`

`
`234, line 6; page 255, line 4 to page 258, line 17; page 274,
`line 9 to page 279, line 14; page 300, lines 16-22; and page
`309, line 1 to page 310, line 18; and in the originally filed
`Drawings in FIG. 1 (arrows); FIGS, sa and 5B (arrows); figs.
`6A and 6B; FIG. 9 (arrows); FIGS. 11A and 11B (arrows); FIG.
`12 (arrows); FIG. 13 (arrows); FIG. 14 (arrows); FIG. 15
`(arrows); and fig. 16 (arrows).
`
`J. "Transmits";
`
`"Transmits" means "sends a signal, data, information,
`or a message, from a device, system, or location, to another
`' device, system, or location."
`
`Support for the above definition can, for example, be
`found in the originally filed Drawings in FIG. 1 (Transmitter
`2 and Transmitter 4A) , FIG. 2 (Position Data Transmitter 24),
`FIG. 3 (Transmitter 36), FIG. 4 (Transmitter 156 and
`Transmitter 159), FIG. 5A (Transmitter 4A) , FIG. 5B
`(Transmitter 4A and Transmitter 512) , FIG. 9 (Transmitter 2
`and Transmitter 4A) , FIG. 10 (Position Data Transmitter 24),
`FIG. 11A (Transmitter 2,. Transmitter 4A, and Transmitter 965),
`FIG. 11B (Transmitter 4A, Transmitter 965, and Transmitter
`957), FIG. 12 (Transmitter 2 and Transmitter 4A) , FIG. 13
`(Transmitter 2 and Transmitter 4A), FIG. 14 (Transmitter 2 and
`
`_
`
`n
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 6
`
`

`
`United States Patent and Trademark Office
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O.Box 1450
`Alexandria, Virginia 22313*1450
`www.uspto.gov
`
`APPLICATION NO.
`
`'
`
`10/244,334
`
`FILING DATE
`
`09/16/2002
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO. |
`
`Raymond Anthony Joao
`
`RJ425
`
`6007
`
`7590
`03/03/2006
`RAYMOND A. JOAO, ESQ.
`122 BELLEVUE PLACE
`YONKERS, NY 10703
`
`EXAMINER
`
`TRJEU, VAN THANH
`
`ART UNIT
`
`2636
`
`PAPER NUMBER
`
`DATE MAILED: 03/03/2006
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 7
`
`

`
`Application No.
`
`Applicant(s)
`
`---------------------------
`
`Office Action Summary
`
`10/244,334
`JOAO, RAYMOND ANTHONY
`Art Unit
`Examiner
`2636
`Van T Trieu
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`• Extensions of time may be available under the provisions of 37 CFR f. 136(a). in no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`'
`If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`-
`if NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`•
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. $ 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`
`:
`
`1)13 Responsive to communication(s) filed on 03 October 2005.
`2a)D This action is FINAL.
`2b)3 This action is non-final.
`3) 0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`4) 3 Claim(s) 24-43 is/are pending in the application.
`4a) Of the above daim(s)_____ is/are withdrawn from consideration.
`5) 3 Claim(s) 24-36 is/are allowed.
`6) 3 Claim(s) 37 and 41-43 is/are rejected.
`7) 3 Claim(s) 38 and 40 is/are objected to.
`8) 3 Claim(s)___ are subject to restriction and/or election requirement.
`
`Application Papers
`9) D The specification is objected to by the Examiner.
`10) Q The drawing(s) filed on___ is/are: a)D accepted or b)D objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`12) 3 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)D All b)D Some * c)D None of:
`1 .□ Certified copies of the priority documents have been received.
`2.Q Certified copies of the priority documents have been received in Application No.______.
`30 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`:
`
`:
`
`Attachment(s)
`1) Q Notice of References Cited (PTO-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3 Information Disclosure Statements) (PTO-1449 or PTO/SB/08)
`3) 3 Information Disclosure Statements) (PTO-1449 or PTO/SB/08)
`/Paper No(s)/Mail Date 10/3/05:. 12/1 lfb5: lsJlZ/OrT
`.
`I ^ .
`US. Patent arid Trademark Office
`PTOL-326 (Rev. 1-04)
`
`aHn 'VZ&)' <*^1
`
`4) □ Interview Summary (PTO-413)
`Paper No(s)/Mail Date._____ .
`i /_ 5) LJ
`5) O Notice of Informal Patent Application (PTO-152)
`Pn{%l 6) □
`Other:_____ .
`
`Part of Paper No./Mail Date Feb2006
`
`\/\3-/o6 >. ifa/t*
`
`Office Action Summary
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 8
`
`

`
`DETAILED ACTION
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`and to prevent possible harassment by multiple assignees. A nonstatutory
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`are not identical, but at least one examined application claim is not patentably distinct
`from the reference claim(s) because the examined application claim is either anticipated
`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`USPQ2d 2010 (Fed. Cir. 1993); In re Longl, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`double patenting ground provided the conflicting application or patent either is shown to
`be commonly owned with this application, or claims an invention made as a result of
`activities undertaken within the scope of a joint research agreement.
`Effective January 1,1994, a registered attorney or agent of record may sign a
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`37 CFR 3.73(b).
`
`1.
`
`Claims 37 and 41 -43 are rejected on the ground of nonstatutory double patenting
`
`over claims 1, 8-10 and 13 of U. S. Patent No. 6,549,130 since the claims, if allowed,
`
`would improperly extend the "right to exclude" already granted in the patent.
`
`The subject matter claimed in the instant application is fully disclosed in the
`
`patent and is covered by the patent since the patent and the application are claiming
`
`common subject matter, as follows: The claimed second signal is automatically received
`
`by the first control/processing device over at least one of the Internet and World Wide
`
`Web.
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 9
`
`

`
`Furthermore, there is no apparent reason why applicant was prevented from
`
`presenting claims corresponding to those of the instant application during prosecution of
`
`the application which matured into a patent. See In re Schneller, 397 F.2d 350,158
`
`USPQ 210 (CCPA 1968). See also MPEP § 804.
`
`2.
`
`Claims 24-36 are allowable over the prior art.
`
`Conclusion
`
`3.
`
`Claim 38-40 are objected to as being dependent upon a rejected base claim, but
`
`would be allowable if rewritten in independent form including all of the limitations of the
`
`base claim and any intervening claims.
`
`4.
`
`Any inquiry concerning this communication or earlier communications from
`
`examiner should be directed to primary examiner Van Trieu whose telephone number
`
`is (571) 272-2972. The examiner can normally be reached on Mon-Fri from 7:00 AM to
`
`3:00 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Mr. Jeffery Hofsass can be reached on (571) 272-2981.
`
`Van Trieu
`Primary Examiner
`Date: 2/16/06
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 10
`
`

`
`REMARKS
`
`This is a Preliminary Amendment in the above-identified
`application. Claims 24-43 are pending in this application.
`Applicant has cancelled Claims 4-23, without prejudice, and
`Applicant has added new Claims 24-43. Applicant respectfully
`submits that Claims 24-43 do not contain new matter. Applicant
`further submits that the amendments to the Claims do not
`contain new matter. Applicant further respectfully submits
`that the amendments to the Claims were not made for purposes
`related to patentability.
`
`Applicant has also deleted the Abstract Of The
`Disclosure and has substituted therefor the new Abstract Of The
`Disclosure which is attached hereto on a separate sheet,
`Applicant respectfully submits that the new Abstract Of The
`Disclosure does not contain new matter.
`
`Applicant uses the phrase "at least one of . . . and . .
`." in the claims. In all instances, the phrase "at least one of
`. . . and ..." means only one item from the list, or any
`combination of items in the list.
`
`13
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 11
`
`

`
`Applicant respectfully submits that the phrase having
`the form "at least one of A and B", where each of A and B is
`either a term or a phrase, the phrase "at least one of A and B"
`means "only A, only B, or A and B". In instances in which
`three or more terms and/or phrases are present in an "at least
`one of . . . and ..." phrase, Applicant provides the
`following example definitions: the phrase "at least one of A,
`B, and C" means "only A, only B, only C, or any combination of
`A, B, and C"; the phrase "at least one of A, B, C, and D" means
`"only A, only B, only C, only D, or any combination of A, B, C,
`and D"; the phrase "at least one of A, B, C, D, and E" means
`"only A, only B, only C, only D, only E, or any combination of
`A, B, C, D, and E", and so on.
`
`For example, in independent Claim 24, the phrase "at
`least one of activating, de-activating, disabling, re-enabling,
`and controlling an operation of" means "only activating, only
`de-activating, only disabling, only re-enabling, only
`controlling an operation of, or any combination of activating,
`de-activating, disabling, re-enabling, and controlling an
`operation of".
`
`14
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 12
`
`

`
`Applicant respectfully submits that the present
`invention, as defined by Claims 24-43, is patentable over the
`prior art.
`
`Entry of this Preliminary Amendment, before any
`Official Action is taken in this case, and allowance of pending
`Claims 24-43, is respectfully requested.
`
`Respectfully Submitted,
`
`Reg. No. 35,907
`
`Ends. - Abstract of the Disclosure
`December 11, 2005
`Raymond A. Joao, Esq.
`122 Bellevue Place
`Yonkers, New York 10703
`(914) 969-2992
`
`15
`
`Petitioner CoxCom, LLC - Exhibit 1005 Page 13