UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/012,829
`
`04/03/2013
`
`7822816
`
`20351.RX816
`
`6993
`
`03/07/2014
`7590
`22206
`FELLERS SNIDER BLANKENSHIP
`BAILEY & TIPPENS
`THE KENNEDY BUILDING
`321 SOUTH BOSTON SUIIB 800
`TULSA, OK 74103-3318
`
`EXAMINER
`
`CABRERA, ZOILA E
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`03/07/2014
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/012,829
`
`04/03/2013
`
`7822816
`
`20351.RX816
`
`6993
`
`03/07/2014
`7590
`22206
`FELLERS SNIDER BLANKENSHIP
`BAILEY & TIPPENS
`THE KENNEDY BUILDING
`321 SOUTH BOSTON SUIIB 800
`TULSA, OK 74103-3318
`
`EXAMINER
`
`CABRERA, ZOILA E
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`03/07/2014
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"W."I.IJ:.'=ptO.QOV
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`NDQ Special Reexam Group
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, TX 77002
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012.829.
`
`PATENT NO. 7822816.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1 .550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 2
`
`I. Summary
`
`DETAILED ACTION
`
`This office action is in response to the Patent Owner's response filed on
`
`November 13, 2013. Original claims 1-14 of the U. S. Patent 7,822,816 [hereinafter "the
`
`'816 Patent"] are pending in the present ex parte reexamination application.
`
`II. Status of Claim(s)
`
`The rejection of claims 1-14 is maintained.
`
`Ill. Amendment to Claims 7 and 8
`
`Patent Owner states that the amendments to claims 7 and 8 were made to
`
`correct typographical errors.
`
`Examiner notes that claim 7 is amended to correct a typographical error because
`
`steps (j) and (k) are not recited in Claim 1, which Claim 7 is dependent from.
`
`Claim 8 is also corrected to recite "placing said remote computer into electronic
`
`communication" instead of "electrical communication" in step (i). Examiner notes that
`
`step
`
`(I) of claim 8 recites "removing said
`
`remote computer
`
`from electronic
`
`communication with said second computer" [emphasis added]. Thus, since the
`
`amendments to these claims are only to correct typographical errors, the amendment
`
`has been entered herein.
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 3
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`IV. Claim Rejections
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`Claim Rejections - 35 USC § 103
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`1.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`Issue 1
`
`2.
`
`Claims 1-3 and 5-14 are rejected under 35 U.S.C. 103(a) as being obvious over
`
`Rossmann in view of Rappaport (see pages 29-80 of the Request for Reexamination
`
`filed 04/03/2013, incorporated by reference).
`
`These rejections on pages 29-80 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 4
`
`lssue2
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`3.
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`Claim 4 is rejected under 35 U.S.C. 103(a) as being obvious over Rossmann in
`
`view of Rappaport and Bowen (see pages 80-85 of the Request for Reexamination filed
`
`04/03/2013, incorporated by reference).
`
`The rejection for claim 4 on pages 80-85 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 3
`
`4.
`
`Claims 1-14 are rejected under 35 U.S.C. 103 (a) as being obvious over
`
`Rossmann in view of Falls (see pages 85-170 of the Request for Reexamination filed
`
`04/03/2013, incorporated by reference).
`
`These rejections on pages 85-170 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 4
`
`5.
`
`Claims 1-14 are rejected under 35 U.S.C. 103(a) as being obvious over Benigno
`
`in view of Falls (see pages 170-277 of the Request for Reexamination 04/03/2013,
`
`incorporated by reference).
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 5
`
`These rejections on pages 170-277 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 5
`
`6.
`
`Claims 1-14 are rejected under 35 U.S.C. 103(a) as being obvious over Benigno
`
`in view of Rappaport (see pages 277-349 of the Request for Reexamination
`
`04/03/2013, incorporated by reference).
`
`These rejections on pages 277-349 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 6
`
`7.
`
`Claims 1, 2, 5, 7, 11, and 13-14 are rejected under 35 U.S.C. 103(a) as being
`
`obvious over Wright in view of Warthen, Rappaport, and Brookler, (see pages 349-390
`
`of the Request for Reexamination 04/03/2013, incorporated by reference).
`
`These rejections on pages 349-390 of the Request for Reexamination filed
`
`04/03/2013 are incorporated by reference.
`
`Issue 7
`
`8.
`
`Claims 12 is rejected under 35 U.S.C. 103(a) as being obvious over Wright in
`
`view of Warthen, Rappaport, Brookler, and Rossmann (see page 384 of the Request for
`
`Reexamination 04/03/2013, incorporated by reference).
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 6
`
`The rejection for claim 12 on page 384 of the Request for Reexamination filed
`
`04/03/2013 is incorporated by reference.
`
`Response to Arguments
`
`9.
`
`Applicant's arguments filed November 13, 2013 have been fully considered but
`
`they are not persuasive.
`
`Patent Owner
`
`Issue 1
`
`Regarding independent Claim 1, Patentee argues (PO Remarks, pp. 10-14)
`
`that Rappaport teaches a system and method for "maintaining connectivity" in a
`
`voice/data environment wherein voice is given priority over "time-insensitive" data
`
`streams. Patentee asserts that the term "server" cannot be found in Rappaport
`
`because the invention sits between the handheld and the server and is only designed to
`
`maintain connectivity between two devices that communicate over a network. Patentee
`
`further states that Rappaport's goal is maintaining continuously end-to-end network
`
`connectivity where possible so that the remote device is oblivious to being temporarily
`
`disconnected from the recipient of the communication.
`
`With regards to the Rossmann's reference, Patentee argues that the word
`
`"disconnect" does not appear in Rossmann because while Fig. 8A shows a server
`
`connection in step 802, Rossmann does not handles the case where such a connection
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 7
`
`is not available and, therefore, Rossmann does not provide for continuing with the
`
`operating logic until transmissions are sent and received from the server.
`
`Patentee further argues that in the Request, p. 15, it is stated that "[f]urther, since
`
`each of the cards in the card deck can be transmitted through a single operation, the
`
`connection is effectively established and terminated with each transmission", but
`
`Patentee does not know what "effectively established and terminated" means because it
`
`appears that Requestor has created a "termination" in Rossmann where one is simply
`
`not disclosed. Patentee argues that "terminating" as recited in Claim 1 is not described
`
`in Rossmann because Rossmann's system would fail if the remote server is not
`
`available, i.e., if the connection to the remote server is not available via "termination".
`
`Patentee concludes that Rossmann does not teach "a method wherein when services
`
`are not available from a remote server, a questionnaire is executed on the local device",
`
`but instead Rossmann teaches continuous connectivity.
`
`Patentee contends that combining Rossmann and Rappaport would provide a
`
`system wherein network connectivity between a mobile user and a remote computer is
`
`always present because both Rossmann and Rappaport teach abrupt failure of the
`
`associated program by active termination (Rappaport) or failure of program logic
`
`(Rossmann) if connectivity is not available and, therefore, the combination does not
`
`yield Patent Owner's invention.
`
`Patentee disputes that Rappaport teaches a method of reconnection as stated in
`
`the obviousness statement (see non-final action, p. 20) because the only time a
`
`"reconnection" between the mobile user and the intended recipient can take place is if
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 8
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`the data transmission (or voice) is only temporarily suspended, but if the session is
`
`dismissed due to the unavailability of resources the connection is terminated and
`
`thereby no reconnection is possible. Patentee concludes that this is in contrast to his
`
`invention where "store and hold" during communication outages is explicit or at least
`
`inherent in the definition of "loosely networked".
`
`Lastly, Patentee contends that the combination of Rossmann with Rappaport
`
`would be inoperable if Rossmann's connection to a remote computing device were
`
`actually terminated as is provided for in Rappaport. Patentee further contends that the
`
`combination of Rossmann and Rappaport is improver because Rappaport is non(cid:173)
`
`analogous art.
`
`Patentee concludes that Rossmann and Rappaport do not disclose, regarding
`
`claim 1, step (c) which requires a loosely networked connection; and step (h) which also
`
`requires a loosely networked connection and, therefore, claim 1 as well as dependent
`
`claims 2, 3, 6, and 7 are allowable over the cited prior art of record.
`
`Regarding dependent claims 2, 3, 6, 7, Patentee states that for the same
`
`reasons stated above regarding claim 1, dependent claims 2, 3, 6, 7 are allowed.
`
`As for dependent claims 5, Patentee states that for the same reasons that
`
`claim 1 is allowed, claim 5 is allowed as well. Patent Owner further argues that steps
`
`(a) and (d) of claim 5 are not disclosed since it requires transmitting an incremental
`
`change to a portion of the questionnaire and modifying the questionnaire.
`
`As for independent claim 8, Patent Owner argues that steps (c) and (m) require
`
`"a loosely networked connection".
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 9
`
`Patentee further argues that step U) requires "transmitting incremental changes"
`
`and Patentee further argues that "there is no provision in Rossmann for transmitting
`
`changes to a card or a deck, only full decks". Patentee concludes that since neither
`
`Rossmann nor Rappaport disclose transmitting incremental updates of a card deck of
`
`Rossmann, there is no disclosure of incorporating such changes at the remote device
`
`[step (k)].
`
`Regarding independent claim 11, Patent Owner argues that steps (d) and step
`
`(h) require "a loosely networked connection".
`
`As for dependent claim 9-10, 12-14, Patentee states that for the same reasons
`
`stated above with respect to claims 8 and 11, these claims are allowed.
`
`Examiner's response
`
`Regarding Claim 1, in response to patentee's arguments against the references
`
`individually, one cannot show nonobviousness by attacking references individually
`
`where the rejections are based on combinations of references. See In re Keller, 642
`
`F.2d 413, 208 USPQ 871 (CCPA 1981 );
`
`In re Merck & Co., 800 F.2d 1091, 231
`
`USPQ 375 (Fed. Cir. 1986). It is noted that Rossmann was relied upon for the limitation
`
`"server" [step (g) in Claim 1] and not Rappaport as argued by Patent Owner.
`
`It is
`
`further noted that Rappaport was relied upon for the teaching that when a connection
`
`fails ... the device can reconnect and send the information upon reconnection (see non(cid:173)
`
`final, p. 20) and not Rossmann as Patentee argues.
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 1 O
`
`Regarding the argument of the statement on Page 15 of the Request, i.e.,
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`"[f]urther, since each of the cards in the card deck can be transmitted through a single
`
`operation,
`
`the connection
`
`is effectively established and
`
`terminated with each
`
`transmission" [emphasis added], it is clear from the statement that it is "the connection
`
`[that]
`
`is effectively established and
`
`terminated".
`
`Thus, Rossmann discloses
`
`"terminating ... [a] connection" (see also Request, p. 36, Fig. 13, i.e. CONNECTION
`
`TERMINATED). Furthermore, the claims do not require, as patentee contends, "a
`
`method wherein when services are not available from a remote server, a questionnaire
`
`is executed on the local device". The claims merely require establishing a network
`
`connection, terminating a network connection and reestablishing a network connection.
`
`As for the argument that combining Rossmann and Rappaport would provide a
`
`system wherein network connectivity between a mobile user and a remote computer is
`
`always present, Examiner respectfully disagrees because Rappaport teaches that when
`
`link failures occur between mobile users and a remote site, "users can continue to
`
`function essentially undisturbed by link failures since connectivity and reconnection
`
`procedures are managed by the network in a manner that is transparent to the end
`
`users" (Rappaport, Col. 2,
`
`II. 44-58).
`
`Thus, Rappaport discloses a method of
`
`reconnection.
`
`Patentee admits that Rappaport teaches a "reconnection" between the mobile
`
`user and the intended recipient, but argues that it takes place only when temporarily
`
`suspended. Examiner notes that the claims merely require reestablishing a network
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 11
`
`connection and Rappaport teaches a method of reconnection (Rappaport, Col. 2, II. 44-
`
`58).
`
`With regards to the argument that Patentee's invention is to "store and hold"
`
`during communication outages, which is explicit or inherent in the definition of" loosely
`
`networked', Examiner would like to point out that these limitations are not recited in the
`
`claims. Further column 4, line 61-column 5, line 5 of the '816 patent states "With regard
`
`to the present invention, the term "loosely networked" is used to describe a networked
`
`computer system wherein devices on the network are tolerant of intermittent network
`
`connections and, in fact, tolerant of the type of network connection available. In
`
`particular, if any communication connection is available between devices wishing
`
`to communicate, network transmissions occur normally, in real time. If a network
`
`connection is unavailable at that moment, the information is temporarily stored in the
`
`device and later transmitted when the connection is restored. Unless otherwise
`
`specified, hereinafter the terms "network" or "networked" refer to loosely networked
`
`devices." This section allows a "loosely networked" connection to be "tolerant of the
`
`type of network connection available" including "if any communications connection is
`
`available between the devices wishing to communicate, network transmissions occur
`
`normally, in real time." Accordingly, the reference discloses that when connectivity is
`
`continuously available, a connection will exist. Communication will occur and be tolerant
`
`of the type of network connection available.
`
`Further, the combination of Rossmann and Rapport still teach this limitation even
`
`as argued by the PO. As stated in the Request, "It would have been obvious to combine
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 12
`
`Rossmann with Rappaport so that when a connection fails, as will predictably happen,
`
`the device can reconnect and send the information upon reconnection. This would
`
`motivate a person of skill in the art to make the combination since disconnections are a
`
`common occurrence and Rappaport teaches a method of reconnection. See Rappaport
`
`at Abstract." Ex parte Request at 27-28. The combination of Rappaport with Rossmann
`
`teaches a method that is tolerant of intermittent failures of a wireless connection.
`
`With regards to Patentee's argument that the combination of Rossmann and
`
`Rappaport would be inoperable since if the connectivity is present the combination will
`
`work as Rossmann describes it, but in the instances for which the present invention was
`
`designed, i.e.,"loosely networked" connection, then the combination will fail, Examiner
`
`notes that "loosely networked" connection is not recited in the claims, however, as noted
`
`above, Rossmann and Rapport still teach this limitation because the combination of
`
`Rappaport with Rossmann teaches a method that is tolerant of intermittent failures of a
`
`wireless connection.
`
`In response to patentee's argument that Rappaport is nonanalogous art, it has
`
`been held that a prior art reference must either be in the field of patentee's endeavor or,
`
`if not, then be reasonably pertinent to the particular problem with which the patentee
`
`was concerned, in order to be relied upon as a basis for rejection of the claimed
`
`invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this
`
`case, both Rossmann and Rappaport are directed to two way data communication
`
`network for mobile terminals and a remote site (see Rossmann's and Rappapport's
`
`Abstracts).
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 13
`
`Examiner respectfully disagrees with Patent Owner that Claim 1, step (c) and
`
`step (h) require "a loosely networked connection" because step (c) merely requires
`
`"establishing a ... network connection" and steps (g)-(h) requires reestablishing a network
`
`connection.
`
`Thus, for the above reasons the rejection of claims 1, 2-3, 6 and 7 is maintained.
`
`Regarding independent claim 8, the Examiner disagrees that steps (c) and (m)
`
`requires "a loosely networked connection" because step (c) recites "bringing a remote
`
`computer into electronic communication with said first computer'' and step (m)
`
`recites "within said remote computer, using said modified tokenized questionnaire
`
`to obtain at least one additional user response".
`
`Patent Owner admits that Rossmann transmits changes to full decks but not to a
`
`card or a deck (PO Remarks, p. 15). Examiner would like to point out that the claim as
`
`written it requires that the complete or full questionnaire is transmitted to the remote
`
`computer (see Claim 8, step (d)). Furthermore, Rossmann discloses that "to update an
`
`application requires only changes on the server computer and not changes in each two(cid:173)
`
`way data communication device that communicates with that server computer. This
`
`invention eliminates the usual requirements for distribution of application software, and
`
`application software updates to the end user of the two-way data communication
`
`device" (see Request, p. 55, step (h), i.e., modifying ... with incremental changes). Thus,
`
`Rossmann discloses "transmitting said incremental changes" as broadly recited in Claim
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 14
`
`8, step (j) from the server to the user device because if a card deck is changed and
`
`transmitted then the incremental changes are also transmitted.
`
`Furthermore, it is noted that Rossmann discloses that "the client process using
`
`the information transmitted from server computer 121, i.e., the cards, generates a wide(cid:173)
`
`variety of user interfaces as illustrated in Figures 2A to 2H" (Rossmann, p. 11, II. 15-16).
`
`Please note that Rossmann discloses, as shown in Figs. 2A-2H, that an initial card deck
`
`is transmitted to the user device as shown in Fig. 2A, and another card deck as shown
`
`in Fig. 2B and other card decks as shown in Fig. 2C-2H, respectively (Rossmann p. 9, I.
`
`4 to p. 11, I. 20). Thus, every card deck transmitted shows incremental changes such
`
`as shown in Fig. 2G "Fax details to what number" and Fig. 2H shows "(415) 341-4473"
`
`(Rossmann, p. 9, I. 47 - p. 10, I. 3) and thereby making and transmitting incremental
`
`changes to a portion of a questionnaire.
`
`Regarding independent claim 11, Examiner disagrees that steps (d) and step
`
`(h) requires "a loosely networked connection" because step (d) recites "placing a
`
`handheld remote computing device into electronic communication with said first
`
`computer' and step (h) recites "placing said handheld remote computing device
`
`into electronic communication with a second computer'.
`
`As for dependent claim 2, 3, 5-10, 12-14 for the same reasons stated above
`
`with respect to claims 1, 8, and 11 the rejection of claims 2-3, 5-10, 12-14 is maintained.
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 15
`
`lssue2
`
`Patent Owner
`
`Patentee argues that for the same reasons stated above with regards to claim 1,
`
`dependent claim 4 should be allowed or confirmed.
`
`Examiner's response
`
`Examiner incorporates by reference the reasoning presented above with respect
`
`to claim 1. Thus, the rejection of claim 4 is maintained.
`
`Patent Owner
`
`Issue 3
`
`Patent Owner contends that the combination of Rossmann and Falls would be
`
`inoperable or unsuitable for its intended purpose and that Rossmann's approach
`
`teaches away. Patentee argues that Rossmann intends that the cards are fetched as
`
`needed due to reasons related to bandwidth and storage capacity of the phone and,
`
`therefore, Rossmann's cards are fetched when such are required by user's selections.
`
`Patentee further argues that the Falls reference teaches synchronization of
`
`databases wherein changes that are made to one database will be communicated to
`
`another when the two are brought into electronic communication. Patentee concludes
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 16
`
`that the teaching in Falls would frustrate the purpose of Rossmann which is a real-time
`
`application.
`
`Patentee asserts that Rossmann assumes the connection will always be present
`
`and there is no provision for instances when the server cannot be reached and,
`
`therefore, the combination would be inoperable.
`
`Patentee argues that combining Rossmann and Falls would result in an invention
`
`that synchronizes the cards between the server and the client device, but patentee
`
`argues that there is no mention of database synchronization between the server and the
`
`phone in Rossmann and there is no
`
`indication that a client would be able to
`
`accommodate synchronization of a server-side database.
`
`Patentee concludes that Rossmann and Falls do not disclose, regarding claim 1,
`
`step (c) which requires a loosely networked connection; and step (h) which also
`
`requires a loosely networked connection and, therefore, claim 1 is allowable over the
`
`cited prior art of record.
`
`Regarding dependent claims 2-7, Patentee states that for the same reasons
`
`stated above regarding claim 1, dependent claims 2-7 are allowed.
`
`As for independent claim 8, Patent Owner argues that steps (c) and (m) require
`
`"a loosely networked connection".
`
`Regarding independent claim 11, Patent Owner argues that steps (d) and step
`
`(h) require "a loosely networked connection".
`
`As for dependent claim 9-10, 12-14, Patentee states that for the same reasons
`
`stated above with respect to claims 8 and 11, these claims are allowed.
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 17
`
`Examiner's response
`
`Regarding claim 1, Examiner notes that Patent Owner's arguments are not
`
`commensurate with the claimed invention. Specifically, Patent Owner's arguments that
`
`the combination would be inoperable because Falls invention is contrary to Rossmann's
`
`real-time application in that "Rossmann intends that the cards are fetched as needed"
`
`and that Rossmann's program would progress until a new card was required [or
`
`requirement of the connection always present] and then stop and, therefore, it would not
`
`continue until after it had been brought into electronic communication with the server,
`
`Examiner notes that these arguments are not commensurate with the recited limitations.
`
`Furthermore, please note that the argument that Rossmann does not mention
`
`"database synchronization between the server and the phone" is not persuasive since
`
`this statement is not related to any aspect of the claim.
`
`The combination provides for a system that can encounter and recover from
`
`failed or terminated connections. Specifically, Falls teaches that mobile devices can
`
`terminate connections and then reestablish those connections. Falls at 3:16-35, 16:24-
`
`29, and 7:16-21. Upon reestablishment of the connection, any requests will be
`
`processed and transmitted. Id. Accordingly, the combination solves the problem of
`
`inevitable connection failure and does not change the principle operation of the primary
`
`reference or render the reference inoperable for its intended purpose.
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 18
`
`Regarding independent claim 8, the Examiner disagrees that steps (c) and (m)
`
`requires "a loosely networked connection" because step (c) recites "bringing a remote
`
`computer into electronic communication with said first computer'' and step (m)
`
`recites "within said remote computer, using said modified tokenized questionnaire
`
`to obtain at least one additional user response".
`
`Regarding independent claim 11, Examiner disagrees that steps (d) and step
`
`(h) requires "a loosely networked connection" because step (d) recites "placing a
`
`handheld remote computing device into electronic communication with said first
`
`computer'' and step (h) recites "placing said handheld remote computing device
`
`into electronic communication with a second computer''.
`
`As for dependent claim 2-7, 9-10, 12-14 for the same reasons stated above
`
`with respect to claims 1, 8, and 11 the rejection of claims 2-7, 9-10, 12-14 is maintained.
`
`Patent Owner
`
`Issue 4
`
`Regarding claim 1, Patent Owner argues (PO Remarks, pp. 19-23) that there is
`
`no evidence that Benigno's questionnaire language is customizable to run on any other
`
`than a single platform whereas Patent Owner's "tokens" are designed to be device
`
`independent and "some of which must be executable on multiple types of clients".
`
`Patent Owner relies on the following portions of the '816 Patent specification for support
`
`of the previous statements as follows:
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 19
`
`"Any program developed under the inventive system will run on any
`
`handheld computer equipped with the OIS and files on one such handheld
`
`will transfer freely to any other handheld or any computer connected to the
`
`inventive system." ('816 Pat., Col. 7, lines 41-45)
`
`"The operating system provided in each computer device allows the
`
`use of a common instruction set in any such device, regardless of
`
`compatibility issues between the devices, wherein "instruction set" is used
`
`herein to mean the commands, tokens, etc., that are recognized by the
`
`operating system as valid instructions." Id at Col. 5, lines 12-17
`
`"Each token preferably corresponds to a logical, mathematical, or
`
`branching operation and is preferably selected and made a part of the
`
`questionnaire through a graphical user interface." Id Col. 8, lines 43-46.
`
`Patentee argues that "device independent" is an inherent property of Patent
`
`Owner's "tokens" as cited above. Patentee further states that "at least some
`
`tokens ... must correspond to programming functions, e.g., logical, mathematical, or
`
`branching operation.
`
`Patent Owner concludes that Benigno's tokens are not patentee's tokens
`
`because Benigno's tokens are not designed to be device independent and, therefore,
`
`Benigno does not teach or suggest such a device independent approach.
`
`Patent Owner further argues that Fig. 4 of Benigno and 46:4-9 indicate the same
`
`computer at each one and there is no support that Benigno was intended to be
`
`multiplatform. Patent Owner argues that the client computer 401 mentioned in
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 20
`
`Benigno's specification was never taught or suggested that such computer could be
`
`other than the same platform. Patent Owner asserts that it would be simpler and more
`
`efficient to implement the questionnaire language on a single platform, rather than make
`
`it device independent.
`
`Patent Owner argues that Benigno uses login/logout which suggests that the
`
`user is executing a program on the server, not downloading the program locally and
`
`executing it. Patentee addresses Figs. 1 A and 2A of Benigno to show that a user
`
`queries a database on a remote server and the connection steps 102 and 105, i.e.,
`
`"COMMUNICATE WITH HOMEOPT SERVER" cannot be said that are on the same
`
`computer. Patent Owner states that the claims require that the steps of establishing a
`
`connection, getting a questionnaire, executing the questionnaire must all be performed
`
`on the same device and it cannot be said that the questionnaire of Benigno is executed
`
`on the client computer because apparently Benigno's users execute a program on the
`
`server. Patent Owner states that in Benigno, if the connection fails, the information
`
`must be encoded manually and cites the following from Benigno:
`
`"Otherwise, step 128 is encountered. In step 128, an alert is set at
`
`the client computer 401, indicating that the transmission between the
`
`client computer 401 and server was unsuccessful, allowing the nurse to
`
`manually provide the data to the physician, or other personnel at the
`
`central location e.g., via voice telephone, etc.)" (Benigno at page 48, lines
`
`1-4)
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 21
`
`Patent Owner asserts
`
`that there
`
`is no
`
`indication
`
`that the client processes a
`
`questionnaire after connection with the remote server is terminated.
`
`Lastly, Patent Owner argues that Benigno teaches away from a loosely
`
`networked connection and that Claim 1, steps (c) and (g) requires a loosely networked
`
`connection and further argues that there is no indication in Benigno that the tokens are
`
`executed on the client side or that the connection to the server is terminated during the
`
`questionnaire.
`
`Regarding claims 2-14, Patent Owner repeats similar arguments as stated
`
`above with regards to claim 1.
`
`Examiner's response
`
`Regarding claim 1, in response to Patent Owner's argument that the references
`
`fail to show certain features of the invention, it is noted that the features upon which
`
`Patent Owner relies (i.e., "tokens are designed to be device independent"; "some of [the
`
`tokens] must be executable on multiple
`
`types of clients"; "loosely networked
`
`connection"; "the connection to the server is terminated during the questionnaire'') are
`
`not recited in the rejected claim(s). Although the claims are interpreted in light of the
`
`specification, limitations from the specification are not read into the claims. See In re
`
`Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
`
`
`
`Application/Control Number: 90/012,829
`Art Unit: 3992
`
`Page 22
`
`It is noted herein that Benigno's tokens are also executable tokens because
`
`correspond
`
`to a Questionnaire Language (QL)
`
`that contains
`
`logical operations
`
`(Benigno, p. 13, II. 1-18; pp. 38-45, II. 14-20).
`
`Regarding the repeated Patent Owner's argument that Fig. 4 of Benigno and
`
`46:4-9 indicate the same computer at each node, Examiner reiterates that Fig. 4 shows
`
`generic computers. Furthermore, contrary to Patent Owner's assertions, Benigno
`
`discloses that "[w]hile the present invention has been described in terms of particular
`
`data structures and data flow, the computational steps could be carried out by any
`
`Von Neuman machine,i.e., the processing means can be any programmable
`
`digital computer, whether imbedded into a device or not or whether part of a
`
`network or not" [emphasis added] (Benigno, p. 20, II. 14-17). Thus, Benigno suggests
`
`that any comput
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