tion History Date i-l .1 - L.
`Transa
`rmation retrieved from USPTO Patent
`Date in1
`ation Information Retrieval (PAIR)
`Appli
`tem records at www.uspto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`Attorney Docket No. 03680.0083-01
`
`In re Application of:
`
`Dennis W. CAMERON et al.
`
`Serial No.: 08/124,219
`
`Filed: September 21, 1993
`
`For: NATIONWIDE COMMUNICATION
`SYSTEM
`
`)
`
`)
`
`)
`
`)
`
`)
`)
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Sir:
`
`Group Art Unit: 2611
`
`Examiner: T. Le,
`
`5-91i
`I %
`
`PROPOSED AMENDMENT UNDER 37 C.F.R. § 1.116
`
`Pursuant to 37 C.F.R. § 1.116 and in response to the Office
`
`Action dated August 8, 1995, the period for response to which has
`
`been extended to January 11, 1995 (the Federal government being
`
`closed on January 8-10 due to inclement weather) by the concurrent
`
`filing of a two-month extension of time, applicants propose that
`
`this application be amended as follows:
`
`IN THE CLAIMS:
`
`tt
`
`Please cancel claim 2 without prejudice or disclaimer of the
`
`subject matter thereof and amend claims Y, 3, 6, and 9 as follows:
`
`1. (Twice Amended) A mobile unit for trans
`
`ing and
`
`receiving radio frequency signals to
`
`rom a communications
`
`network comprising:
`
`means for rec
`
`ing a radio frequency message from the
`
`network;
`
`LAW OFFICES
`
`NNEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER,L.L.P.
`1300 I STREET, N. W.
`'ASHINGTON, DC 20005
`202-408-4000
`
`Microsoft Ex. 1016
`Page 1 of 9
`
`
`Transa
`rmation retrieved from USPTO Patent
`Date in1
`ation Information Retrieval (PAIR)
`Appli
`tem records at www.uspto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`Attorney Docket No. 03680.0083-01
`
`In re Application of:
`
`Dennis W. CAMERON et al.
`
`Serial No.: 08/124,219
`
`Filed: September 21, 1993
`
`For: NATIONWIDE COMMUNICATION
`SYSTEM
`
`)
`
`)
`
`)
`
`)
`
`)
`)
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Sir:
`
`Group Art Unit: 2611
`
`Examiner: T. Le,
`
`5-91i
`I %
`
`PROPOSED AMENDMENT UNDER 37 C.F.R. § 1.116
`
`Pursuant to 37 C.F.R. § 1.116 and in response to the Office
`
`Action dated August 8, 1995, the period for response to which has
`
`been extended to January 11, 1995 (the Federal government being
`
`closed on January 8-10 due to inclement weather) by the concurrent
`
`filing of a two-month extension of time, applicants propose that
`
`this application be amended as follows:
`
`IN THE CLAIMS:
`
`tt
`
`Please cancel claim 2 without prejudice or disclaimer of the
`
`subject matter thereof and amend claims Y, 3, 6, and 9 as follows:
`
`1. (Twice Amended) A mobile unit for trans
`
`ing and
`
`receiving radio frequency signals to
`
`rom a communications
`
`network comprising:
`
`means for rec
`
`ing a radio frequency message from the
`
`network;
`
`LAW OFFICES
`
`NNEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER,L.L.P.
`1300 I STREET, N. W.
`'ASHINGTON, DC 20005
`202-408-4000
`
`Microsoft Ex. 1016
`Page 1 of 9
`
`
`
`a display for displaying said message;
`
`I
`
`switch means for allowing a user to sel
`
`vely request
`
`etransmission of [at least portio
`
`a portion of said message
`
`from the communications n
`
`ork;
`
`means for t
`
`smitting, upon actuation of the switch means, a
`
`signal t
`
`he communications network requesting retransmission of
`
`said [at least portions] portion of said message.
`
`!I
`
`.
`
`(Amended) The mobile unit of claim [2] 1, further
`
`comprising:
`
`means for detecting errors in the received message [messages;
`
`and]
`
`said display including means for highlighting [displaying]
`
`said errors when the message is displayed on said display.
`
`Claim '3,
`
`line 1, replace "2" with --1--.
`
`Claim 6,
`
`lir 7, replace "the" (first occurrence) with --a--.
`
`Claim\ 9,
`
`line 8, after "retransmit" insert --a portion of--;
`
`and
`
`of--.
`
`line 13, after "retransmitting" insert --the portion
`
`REMARKS
`
`Applicants appreciate the courtesies extended by the Examiner
`
`during a personal interview on December 20, 1995. During the
`
`interview, the Examiner and applicants' representative discussed
`
`proposals for overcoming the outstanding rejections. The
`
`discussion covered, among other things, the final rejection of
`
`claims 1-3, 5-6, and 8-9 under 35 U.S.C. § 103 as being
`
`unpatentable over Tsurumi (JAPAN 64-82715) in view of Spragins et
`
`- 2 -
`
`LAW OFFICES
`
`:INNEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER, L. L. P.
`1300 I STREET, N. W.
`WASHINGTON, DC 20005
`202-408=4000
`
`Microsoft Ex. 1016
`Page 2 of 9
`
`
`
`al. and the final rejection of claims 4 and 7 under 35 U.S.C.§ 103
`
`as being unpatentable over Tsurumi in view of Spragins et al. and
`
`Iwasaki (JAPAN 1-181241).
`
`In accordance with the interview, applicants propose amending
`
`the claims to make patentable distinctions more apparent.
`
`Applicants submit that, upon entry of these amendments, the final
`
`rejections should be withdrawn and the pending claims allowed.
`
`Independent claim 1, as proposed, defines a mobile unit
`
`comprising a unique combination of elements. According to
`
`proposed claim 1, the mobile unit includes a display for
`
`displaying a received message. Switch means allows a user to
`
`selectively request retransmission of a portion of the message
`
`from a communications network. Another means transmits, upon
`
`actuation of the switch means, a signal to the communications
`
`network requesting retransmission of the portion of the message.
`
`After viewing the received message displayed on the display, a
`
`user can elect whether to request a portion of the message to be
`
`retransmitted. For example, if a portion of the message contains
`
`an error, but is nonetheless understandable, the user may elect
`
`not to request retransmission of the portion containing the error
`
`(page 37 of the specification, lines 23-26). Alternatively, if
`
`the user is unable to understand the message, the user may elect
`
`to request retransmission of the portion containing the error. In
`
`this way, the mobile unit of claim 1 maximizes system efficiency
`
`in two ways. First, the mobile unit does not automatically
`
`request retransmission of a received message when it contains an
`
`error. Rather, the user must actuate the switch means to cause
`
`- 3
`
`LAW OFFICES
`
`EGAN, HENDERSON,
`RABOW, GARRETT
`DUNNER, L. L. P.
`DO I STREET, N. W.
`-IINGTON, DC 20005
`202-408-4000
`
`Microsoft Ex. 1016
`Page 3 of 9
`
`
`
`the mobile unit of claim 1 to request retransmission. Second, the
`
`user can elect retransmission of only a portion of a message,
`
`rather than the entire message.
`
`The cited references, alone or in combination, do not
`
`disclose or suggest the mobile unit of claim 1. Tsurumi, the main
`
`reference cited by the Examiner, discloses a paging system in
`
`which a base station transmits messages to a pager according to
`
`the state of the pager's memory. When a user finishes reading a
`
`message stored in the pager, the pager transmits a process
`
`confirmation signal to the base station. In response, the base
`
`station transmits a new message to be stored in the pager. In
`
`this way, messages are transmitted as the user finishes reading
`
`them, thereby minimizing the pager's memory capacity.
`
`Tsurumi does not disclose or suggest any structure for
`
`requesting retransmission of a received message, much less a
`
`portion of a message, as required by claim 1. Tsurumi also does
`
`not disclose any structure for allowing a user to selectively
`
`request retransmission, as required by claim 1. The Examiner
`
`appears to acknowledge the deficiencies of Tsurumi in the final
`
`Office Action (page 3, lines 2-5).
`
`Spragins et al. does not overcome Tsurumi's deficiencies.
`
`Spragins et al. discloses a technique for requesting
`
`retransmission of a message frame. If a received message frame
`
`contains an error, a negative acknowledgment signal requesting
`
`retransmission is automatically transmitted, regardless of whether
`
`the user decides that retransmission is necessary. Thus, under
`
`this technique, there is no provision for allowing a user to
`
`- 4
`
`-
`
`LAW OFFICES
`
`MECAN, HENDERSON,
`\RABOW, GARRETT
`DUNNER, L. L.P.
`300 I STREET, N. W.
`IHINGTON, DC 20005
`202-408-4000
`
`Microsoft Ex. 1016
`Page 4 of 9
`
`
`
`selectively request retransmission of a portion of a received
`
`message, as provided by the mobile unit of claim 1.
`
`Accordingly, neither reference discloses or suggests the
`
`mobile unit of proposed claim 1 and therefore, upon entry of the
`
`proposed amendments, the final rejection of claim 1 should be
`
`withdrawn. The rejection of claims 3, 5, and 8 should also be
`
`withdrawn at least because of their dependence from claim 1.
`
`In addition, proposed claim 3 contains an additional
`
`recitation not disclosed or suggested by the cited references.
`
`Specifically, claim 3, as proposed, recites that the display of
`
`the mobile unit of claim 1 includes means for highlighting errors
`
`in the received message when the message is displayed on the
`
`display. The cited references do not in any way disclose or
`
`suggest this recitation. Indeed, the cited references appear to
`
`teach away by disclosing automatically requesting retransmission
`
`of messages containing errors. Thus, upon entry of the proposed
`
`amendments, claim 3 should be allowed for this additional reason.
`
`Claim 6 defines a communications network, including means for
`
`receiving radio frequency signals from the mobile unit. According
`
`to claim 6, the signals indicate that a user desires the network
`
`to retransmit a portion of the message to the mobile units. The
`
`network also includes means for retransmitting radio frequency
`
`signals containing the portion of the message the user desires
`
`retransmitted to the mobile unit.
`
`The cited references do not disclose or suggest such a
`
`network. For example, the base station of Tsurumi receives an
`
`automatically transmitted confirmation signal indicating that a
`
`- 5
`
`-
`
`LAW OFFICES
`
`4NEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER, L. L.P.
`1300 I STREET, N. W.
`%SHINGTON, DC 20005
`202-408:4000
`
`Microsoft Ex. 1016
`Page 5 of 9
`
`
`
`user has read a message so that the base station can transmit
`
`another message. No disclosure or suggestion is made of
`
`retransmitting a portion of a previously transmitted message, much
`
`less a portion that a user desires to be retransmitted.
`
`The Spragins et al. reference contains the same deficiency.
`
`According to Spragins et al., a base station receives
`
`automatically transmitted acknowledgment signals and negative
`
`acknowledgment signals. While the negative acknowledgment signals
`
`represent automatic requests for message retransmission, they do
`
`not in any way indicate a portion of a message that a user desires
`
`to be retransmitted. Since the cited references do not disclose
`
`or suggest all of the recitations, the rejection of claim 6 should
`
`be withdrawn.
`
`Claim 9 defines a method for transmitting messages comprising
`
`a combination of steps. The mobile unit receives a request from a
`
`user to retransmit a portion of message data. The mobile unit
`
`transmits a request transmission signal to the network. The
`
`network receives the request retransmission signal and retransmits
`
`the portion of the message data.
`
`None of the cited references, alone or in combination,
`
`discloses or suggests such a method. As discussed above, neither
`
`Tsurumi nor Spragins et al. discloses or suggests requesting
`
`retransmission of a portion of a message and retransmitting the
`
`portion to the mobile unit. Accordingly, the rejection of claim 9
`
`should be withdrawn.
`
`The rejection of dependent claims 4 and 7, which depend from
`
`claim 1, is also improper. In particular, Iwasaki does not
`
`- 6-
`
`LAW OFFICES
`
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER,L.L.P.
`1300 I STREET, N. W.
`WASHINGTON, DC 20005
`202-408-4000
`
`Microsoft Ex. 1016
`Page 6 of 9
`
`
`
`overcome the above-noted deficiencies of Tsurumi or Spragins et
`
`al. That is, Iwasaki does not disclose or suggest any structure
`
`for allowing a user to selectively request retransmission of a
`
`portion of a received message, as provided by the mobile unit of
`
`claim 1. As discussed above, this allows a user to elect whether
`
`to request retransmission of a portion of a message. Accordingly,
`
`the rejection of dependent claims 4 and 7 should be withdrawn, and
`
`these claims should be allowed.
`
`Applicants respectfully request that this Amendment Under 37
`
`C.F.R. § 1.116 be entered by the Examiner, placing claims 1 and
`
`3-9 in condition for allowance. Applicants submit that the
`
`proposed amendments do not raise new issues or necessitate the
`
`undertaking of any additional search of the art, since all of the
`
`elements and their relationships claimed were either earlier
`
`claimed or inherent in the claims as examined. Therefore, this
`
`Amendment should allow for immediate action by the Examiner.
`
`Finally, applicants submit that the entry of the Amendment
`
`would place the application in better form for appeal, should the
`
`Examiner dispute the patentability of the pending claims.
`
`In view of the foregoing remarks, applicants request entry of
`
`this amendment, reconsideration and withdrawal of the rejections,
`
`and timely allowance of the pending claims.
`
`If an extension of time required to timely file this
`
`Amendment under 37 C.F.R. § 1.136 is not accounted for above, such
`
`extension is hereby requested and the fee for the extension should
`
`be charged to our Deposit Account No. 06-0916. If there are any
`
`other fees due in connection with the filing of this Amendment not
`
`-
`
`7 -
`
`LAW OFFICES
`
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER,L.L.P.
`1300 I STREET, N. W.
`WASHINGTON, DC 20005
`202-408-4000
`
`Microsoft Ex. 1016
`Page 7 of 9
`
`
`
`accounted for above, such fees should also be charged to our
`
`Deposit Account.
`
`Respectfully submitted,
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER
`
`By:
`
`Allen M. Lo
`Reg. No. 37,059
`
`Dated: January 11, 1996
`
`LAW OFFICES
`
`:INNEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER,LL.LP.
`
`1300 I STREET, N. W.
`WASHINGTON, DC 20005
`202-408-4000
`
`- 8 -
`
`Microsoft Ex. 1016
`Page 8 of 9
`
`
`
`3 - /i
`
`/
`
`6 //
`
`I---
`PATENT
`Attorney Docket No. 03680.0083-01
`
`IN THE UNITED STATES PATENT
`
`AND TRADEMARK OFFICE
`
`In re Application of:
`
`Dennis CAMERON et al.
`
`05'AL
`
`Serial No.: 08/124,219
`
`) Group Art Unit:
`
`261.
`
`Filed: September 21, 1993
`
`)
`
`Examiner: T. Le
`
`....
`1 -, .. ..:..
`
`For: NATIONWIDE COMMUNICATION
`SYSTEM
`
`Assistant Commissioner for Patents
`Washington, D.C. 20231
`
`Sir:
`
`-
`
`-
`
`,
`
`- " '
`
`i. t
`
`PETITION FOR EXTENSION OF TIME
`
`Applicants hereby petition for a two month extension of time
`
`to respond to the Office Action of August 8, 1995. A fee of
`
`$380.00 is enclosed.
`
`If there are any other fees due in connection with the filing
`
`of this response, please charge the fees to our Deposit Account
`
`No. 06-0916. If a fee is required for an extension of time under
`
`37 C.F.R. § 1.136 not accounted for above, such an extension is
`
`requested and the fee should also be charged to our Deposit
`
`Account.
`
`Respectfully submitted,
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER
`
`By\
`
`Allen M. Lo...
`Reg. o. 37 ,05 9
`
`LAW OFFICES
`
`INNEGAN, HENDERSON,
`FARABOW, GARRETT
`8 DUNNER, L. L.P.
`1300 1 STREET, N. W.
`VASHINGTON, DC 20005
`202-408-4000
`
`Dated: January 11, 1996
`
`Microsoft Ex. 1016
`Page 9 of 9
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