Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`44579874
`
`90014507
`
`International Application Number:
`
`Confirmation Number:
`
`6188
`
`Title of Invention:
`
`METHOD OF UTILIZING FORCED ALERTS FOR INTERACTIVE REMOTE
`COMMUNICATIONS
`
`First Named Inventor/Applicant Name:
`
`8213970
`
`Customer Number:
`
`172615
`
`Filer:
`
`John Christopher Kappas/Cinda Pacheco
`
`Filer Authorized By:
`
`John Christopher Kappas
`
`Attorney Docket Number:
`
`2525.993REX0
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`21-DEC-2021
`
`15-MAY-2020
`
`17:28:09
`
`Application Type:
`
`Reexam (Third Party)
`
`Payment information:
`
`Submitted with Payment
`
`I no
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`1
`
`Reexam Change in Pwr Atty for Third
`Party Requester
`
`90_014507-PTOSB81 C-970-
`patent.pdf
`
`Warnings:
`
`File Size(Bytes}/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(if appl.)
`
`332738
`
`Sff4ac05c452565b7f4bbffd531ccf58774d8
`c94
`
`no
`
`2
`
`Verizon 1024 P1
`U.S. Patent No. 8,213,970
`
`Page 1
`
`

`

`The PDF file has been signed with a digital signature and the legal effect of the document will be based on the contents of the file not the
`digital signature.
`
`Information:
`
`2
`
`Reexam Certificate of Service
`
`90_014507-Reexam-Certificate-
`of-Service-970-patent.pdf
`
`162300
`
`58c32ea11dba0b95bccd9f11bbd3d19f7cb
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`
`no
`
`1
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`495038
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the 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.
`
`New Agglications Under 35 U.S.C. 111
`If a 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
`Acknowledgement Receipt will establish the filing date of the application.
`National Stage of an International Agglication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`New International Agglication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 O), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Page 2
`
`

`

`I 1111111111111111 11111 1111111111 11111 11111 1111111111 11111 111111111111111111
`US008213 970C 1
`c12) EX PARTE REEXAMINATION CERTIFICATE (11959th)
`us 8,213,970 Cl
`United States Patent
`(10) Number:
`Beyer
`(45) Certificate Issued:
`Dec. 9, 2021
`
`(54) METHOD OF UTILIZING FORCED ALERTS
`FOR INTERACTIVE REMOTE
`COMMUNICATIONS
`
`(75)
`
`Inventor: Malcolm K. Beyer, Jupiter Inlet
`Colony, FL (US)
`
`(56)
`
`References Cited
`
`To view the complete listing of prior art documents cited
`during the proceeding for Reexamination Control Number
`90/014,507, please refer to the USPTO's public Patent
`Application Information Retrieval (PAIR) system under the
`Display References tab.
`
`(73) Assignee: AGIS Software Development LLC
`
`Primary Examiner - Eric B. Kiss
`
`Reexamination Request:
`No. 90/014,507, May 15, 2020
`
`Reexamination Certificate for:
`8,213,970
`Patent No.:
`Jul. 3, 2012
`Issued:
`12/324,122
`Appl. No.:
`Nov. 26, 2008
`Filed:
`
`Related U.S. Application Data
`
`(63) Continuation-in-part of application No. 11/612,830,
`filed on Dec. 19, 2006, now Pat. No. 7,853,273,
`(Continued)
`
`(51)
`
`(2021.01)
`(2021.01)
`(2021.01)
`(2021.01)
`(2009.01)
`
`Int. Cl.
`H04M 117243
`H04M 1172457
`H04M 1172415
`H04M 1172427
`H04W 4112
`(52) U.S. Cl.
`CPC ...... H04M 117243 (2021.01); H04M 1/72415
`(2021.01); H04M 1/72427 (2021.01); H04M
`1/72457 (2021.01); H04M 2250/06 (2013.01);
`H04M 2250/22 (2013.01); H04M 2250/62
`(2013.01); H04M 2250/64 (2013.01); H04W
`4/12 (2013.01)
`
`( 58) Field of Classification Search
`None
`See application file for complete search history.
`
`ABSTRACT
`(57)
`The system and method having a specialized software
`application on a personal computer or a PDA/cell phone that
`that enables a participant to force an automatic acknowl(cid:173)
`edgement and a manual response to a text or voice message
`from other participants within the same network. Each
`participant's PDA/cell phone includes a force message alert
`software application program for both creating and process(cid:173)
`ing these forced message alerts. The system and method
`enabled by the force message alert software application
`program provides the ability to (a) allow an operator to
`create and transmit a forced message alert from a sender
`PDA/cell phone to one or more recipient PCs and PDA/cell
`phones within the communication network; (b) automati(cid:173)
`cally transmit an acknowledgement of receipt to the sender
`PDA cell phone upon the receipt of the forced message alert;
`( c) periodically resend the message to the recipient PCs and
`PDA/cell phones that have not sent an acknowledgement;
`( d) provide an indication of which recipient PCs and PDA/
`cell phones have acknowledged the forced message alert; ( e)
`provide a manual response list on the display of the recipient
`PC and PDA/cell phone's display that can only be cleared by
`manually transmitting a response; and (f) provide an indi(cid:173)
`cation on the sender PDA/cell phone of the status and
`content the manual responses.
`
`Attention is directed to the decision of AGIS Software
`Dev., LLC v. Google LLC, No. 2020-1401, slip op. (Fed.
`Cir. Feb. 4, 2021) relating to this patent. This reexami(cid:173)
`nation may not have resolved all questions raised by this
`decision. See 37 CFR 1.552(c) for ex parte reexamination
`and 37 CFR 1.906(c) for inter partes reexamination.
`
`10
`
`/
`
`Page 3
`
`

`

`US 8,213,970 Cl
`Page 2
`
`Related U.S. Application Data
`
`which is a continuation-in-part of application No.
`11/308,648, filed on Apr. 17, 2006, now Pat. No.
`7,630,724, which is a continuation-in-part of appli(cid:173)
`cation No. 10/711,490, filed on Sep. 21, 2004, now
`Pat. No. 7,031,728.
`
`Page 4
`
`

`

`US 8,213,970 Cl
`
`1
`EXPARTE
`REEXAMINATION CERTIFICATE
`
`THE PATENT IS HEREBY AMENDED AS
`INDICATED BELOW.
`
`Matter enclosed in heavy brackets [ ] appeared in the
`patent, but has been deleted and is no longer a part of the
`patent; matter printed in italics indicates additions made 10
`to the patent.
`
`2
`means for transmitting the acknowledgment ofreceipt to
`said sender PDA/cell phone immediately upon receiv(cid:173)
`ing a forced message alert from the sender PDA/cell
`phone;
`means for controlling of the recipient PDA/cell phone
`upon transmitting said automatic acknowledgment and
`causing, in cases where the force message alert is a text
`message, the text message and a response list to be
`shown on the display of the recipient PDA/cell phone
`or causes, in cases where the forced message alert is a
`voice message, the voice message being periodically
`repeated by the speakers of the recipient PDA/cell
`phone while said response list is shown on the display;
`means for allowing a manual response to be manually
`selected from the response list or manually recorded
`and transmitting said manual response to the sender
`PDA/cell phone; and
`means for clearing the text message and a response list
`from the display of the recipient PDA/cell phone or
`stopping the repeating voice message and clearing the
`response list from the display of the recipient PDA/cell
`phone once the manual response is transmitted.
`10. A method of receiving, acknowledging and respond(cid:173)
`ing to a forced message alert from a sender PDA/cell phone
`25 to a recipient PDA/cell phone, wherein the receipt, acknowl(cid:173)
`edgment, and response to said forced message alert is forced
`by a forced message alert software application program, said
`method comprising the steps of:
`receiving an electronically transmitted electronic mes(cid:173)
`sage; identifying said electronic message as a forced
`message alert, wherein said forced message alert com(cid:173)
`prises of a voice or text message and a forced message
`alert application software packet, which triggers the
`activation of the forced message alert software appli-
`cation program within the recipient PDA/cell phone;
`transmitting an automatic acknowledgment of receipt to
`the sender PDA/cell phone, which triggers the forced
`message alert software application program to take
`control of the recipient PDA/cell phone and show the
`content of the text message and a required response list
`on the display recipient PDA/cell phone or to repeat
`audibly the content of the voice message on the speak(cid:173)
`ers of the recipient PDA/cell phone and show the
`required response list on the display recipient PD A/cell
`phone; and
`transmitting a selected required response from the
`response list in order to allow the message required
`response list to be cleared from the recipient's cell
`phone display, whether said selected response is a
`chosen option from the response list, causing the forced
`message alert software to release control of the recipi-
`ent PDA/cell phone and stop showing the content of the
`text message and a response list on the display recipient
`PDA/cell phone and or stop repeating the content of the
`voice message on the speakers of the recipient PDA/
`cell phone;
`displaying the response received from the PDA cell phone
`that transmitted the response on the sender of the forced
`alert PDA/cell phone; and
`providing a list of the recipient PDA/cell phones have
`automatically acknowledged receipt of a forced alert
`message and their response to the forced alert message;
`and displaying a geographical map with georeferenced
`entities on the display of the sender FDA/cellphone;
`obtaining location and status data associated with the
`recipient FDA/cellphone; and presenting a recipient
`symbol on the geographical map corresponding to a
`
`AS A RESULT OF REEXAMINATION, IT HAS BEEN
`DETERMINED THAT:
`
`Claims 1 and 3-9 were previously cancelled.
`Claims 2 and 10 are determined to be patentable as
`amended.
`Claims 11-13, dependent on an amended claim, are
`determined to be patentable.
`
`15
`
`20
`
`2. [The system as in claim 1] A communication system for
`transmitting, receiving, confirming receipt, and responding
`to an electronic message, comprising: a predetermined
`network of participants, wherein each participant has a
`similarly equipped PDA/cell phone that includes a CPU and
`a touch screen display a CPU and memory; a data trans(cid:173)
`mission means that facilitates the transmission of electronic
`files between said PDA/cell phones in different locations; a 30
`sender PDA/cell phone and at least one recipient PDA/cell
`phone for each electronic message; a forced message alert
`software application program including a list of required
`possible responses to be selected by a participant recipient
`of a forced message response loaded on each participating 35
`P DA/cell phone; means for attaching a forced message alert
`software packet to a voice or text message creating a forced
`message alert that is transmitted by said sender PDA/cell
`phone to the recipient PDA/cell phone, said forced message
`alert software packet containing a list of possible required 40
`responses and requiring the forced message alert software
`on said recipient PDA/cell phone to transmit an automatic
`acknowledgment to the sender PDA/cell phone as soon as
`said forced message alert is received by the recipient PDAI
`cell phone; means for requiring a required manual response 45
`from the response list by the recipient in order to clear
`recipient's response list from recipient's cell phone display;
`means for receiving and displaying a listing of which
`recipient PDA/cell phones have automatically acknowl(cid:173)
`edged the forced message alert and which recipient PDAI 50
`cell phones have not automatically acknowledged the forced
`message alert; means for periodically resending said forced
`message alert to said recipient PDA/cell phones that have
`not automatically acknowledged the forced message alert;
`and means for receiving and displaying a listing of which 55
`recipient PDA/cell phones have transmitted a manual
`response to said forced message alert and details the
`response
`from each
`recipient PDA/cell phone
`that
`responded; and means for displaying a geographical map
`with georeferenced entities on the display of the sender 60
`PDA/cell phone; means for obtaining location and status
`data associated with the recipient PDA/cell phone; and
`means for presenting a recipient symbol on the geographical
`map corresponding to a correct geographical location of the
`recipient PDA/cell phone, wherein the forced message alert 65
`software application program on the recipient PDA/cell
`phone includes:
`
`Page 5
`
`

`

`US 8,213,970 Cl
`
`3
`correct geographical location of the recipient PDAI
`cellphone based on at least the location data.
`* * * * *
`
`4
`
`Page 6
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,507
`
`05/15/2020
`
`8213970
`
`2525.993REX0
`
`6188
`
`11/15/2021
`
`7590
`
`172615
`Fabricant LLP
`411 Theodore Fremd Road
`Suite 206 South
`Rye, NY 10580
`
`EXAMINER
`
`KISS.ERIC B
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`11/15/2021
`
`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)
`
`Page 7
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEWYORKAVENUE, N.W.
`WASHINGTON, DC 20005
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,507.
`
`PATENT UNDER REEXAMINATION 8213970.
`
`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)
`
`Page 8
`
`

`

`Notice of Intent to Issue
`Ex Parle Reexamination Certificate
`
`Control No.
`90/014,507
`
`Examiner
`ERIC B KISS
`
`Patent Under Reexamination
`8213970
`
`Art Unit
`3992
`
`AIA Status
`No
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`2.
`
`1. @ Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
`issued in view of
`(a) @ Patent owner's communication(s) filed: 19 October 2021.
`(b) □ Patent owner's failure to file an appropriate timely response to the Office action mailed: __ .
`(c) □ Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31 ).
`(d) D The decision on appeal by the D Board of Patent Appeals and Interferences D Court dated __
`(e) D Other: __ .
`The Reexamination Certificate will indicate the following:
`(a) Change in the Specification: □ Yes @ No
`(b) Change in the Drawing(s): □ Yes @ No
`(c) Status of the Claim(s):
`.
`(1) Patent claim(s) confirmed:
`(2) Patent claim(s) amended (including dependent on amended claim(s)): 2 and 10-13
`(3) Patent claim(s) canceled:
`.
`(4) Newly presented claim(s) patentable: __ .
`(5) Newly presented canceled claims: 14-15.
`(6) Patent claim(s) □ previously □ currently disclaimed: __
`(7) Patent claim(s) not subject to reexamination: __ .
`3. DA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`.
`4. @ Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for
`Patentability and/or Confirmation."
`
`5. □ Note attached NOTICE OF REFERENCES CITED (PTO-892).
`
`6. □ Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/08 substitute).
`
`7. D The drawing correction request filed on __ is: □ approved □ disapproved.
`
`8. □ Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a) □ All b) □ Some*
`c) □ None of the certified copies have
`□ been received.
`□ not been received.
`□ been filed in Application No. __ .
`□ been filed in reexamination Control No. __
`□ been received by the International Bureau in PCT Application No. __ .
`
`* Certified copies not received: __ .
`
`9. □ Note attached Examiner's Amendment.
`
`10. □ Note attached Interview Summary (PTO-474).
`
`11.@ Other: Claims 1 and 3-9 were canceled in IPR2018-01079 (Trial Cert. issued Sep. 1, 2021).
`
`All correspondence relating to this reexamination proceeding should be directed to the Central Reexamination
`Unit at the mail, FAX, or hand-carry addresses 1iven at the end of this Office action.
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`PTOL-469 (Rev. 08-13)
`
`Part of Paper No. 20211104
`
`Page 9
`
`

`

`Control Number: 90/014,507
`Art Unit: 3992
`
`Page 2
`
`NOTICE OF INTENT TO ISSUE EX PARTE REEXAMINATION CERTIFICATE
`
`Claims 2 and 10-13 of U.S. Pat. 8,213,970 are under reexamination.
`
`The reply filed October 19, 2021, has been received and entered. Previously proposed claims 14
`
`and 15 have been canceled, their subject matter being incorporated into the proposed amendments to
`
`claims 2 and 10, respectively.
`
`Related Proceedings
`
`The examiner is aware of the following related matters:
`
`The '970 patent is currently involved in the litigation styled AGIS Software Dev., LLC v. Google
`
`LLC, Case No. 2:19-cv-00361 (E.D. Tex.), which was filed on November 4, 2019.
`
`The '970 patent was involved in an Inter Portes Review of claims 1 and 3-9, in which a Final
`
`Written Decision found the challenged claims unpatentable. See Google LLC v. AGIS Software Dev., LLC,
`
`IPR2018-01079, Final Written Decision (P.T.A.B. Nov. 19, 2019). A Notice of Appeal to the United States
`
`Court of Appeals for the Federal Circuit was filed on January 21, 2020. The Federal Circuit affirmed the
`
`decision of the Patent Trial and Appeal Board. AGIS Software Dev., LLC v. Google LLC, No. 2020-1401,
`
`slip op. (Fed. Cir. Feb. 4, 2021).
`
`Requests for Ex Porte Reexamination have been filed for commonly-assigned U.S. Pats.
`
`9,408,055; 9,445,251; and 9,467,838.
`
`Petitions for Inter Portes Review of commonly-assigned U.S. Pat. 9,820,123 have also been filed.
`
`Ex Porte Reexamination - Notice of Intent to Issue Ex Porte Reexamination Certificate
`
`Part of Paper No. 20211104
`
`Page 10
`
`

`

`Control Number: 90/014,507
`Art Unit: 3992
`
`Patentable Subject Matter
`
`Claims 2 and 10-13 are patentable as amended.
`
`Page 3
`
`STATEMENT OF REASONS FOR PATENTABILITV AND/OR CONFIRMATION
`
`The following is an examiner's statement of reasons for patentability and/or confirmation of the
`
`claims found patentable in this reexamination proceeding:
`
`The prior art cited in the Request fails to teach or fairly suggest means for obtaining location and
`
`status data associated with the recipient PDA/cell phone (i.e., the algorithm described in the '970 patent
`
`at col. 3, lines 52-67) and means for presenting a recipient symbol on the geographical map (displayed
`
`on the means for displaying ... , i.e., on the LCD display of the sender PDA/cell phone, described in the
`
`'970 patent at col. 4, lines 12-16) corresponding to a correct geographical location of the recipient
`
`PDA/cell phone (i.e., the algorithm described in the '970 patent at col. 5, lines 28-44), in the context of
`
`independent claim 2.
`
`The prior art cited in the Request fails to teach or fairly suggest obtaining location and status
`
`data associated with the recipient PDA/cellphone and presenting a recipient symbol on the geographical
`
`map (displayed on the sender PDA/cell phone) corresponding to a correct geographical location of the
`
`recipient PDA/cellphone based on at least the location data, in the context of independent claim 10.
`
`Any comments considered necessary by PATENT OWNER regarding the above statement must
`
`be submitted promptly to avoid processing delays. Such submission by the patent owner should be
`
`labeled: "Comments on Statement of Reasons for Patentability and/or Confirmation" and will be placed
`
`in the reexamination file.
`
`Ex Porte Reexamination - Notice of Intent to Issue Ex Porte Reexamination Certificate
`
`Part of Paper No. 20211104
`
`Page 11
`
`

`

`Control Number: 90/014,507
`Art Unit: 3992
`
`Conclusion
`
`Page 4
`
`Claims 2 and 10-13 of U.S. Pat. 8,213,970 are patentable as amended.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`
`By Mail to:
`
`Mail Stop Ex Porte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`Any inquiry concerning this communication should be directed to Central Reexamination Unit at
`
`telephone number (571) 272-7705.
`
`/Eric B. Kiss/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/NICK CORSARO/
`Primary Examiner, Art Unit 3992
`
`/ANDREW J. FISCHER/
`Supervisory Patent Reexamination Specialist, Art Unit 3992
`
`Ex Porte Reexamination - Notice of Intent to Issue Ex Porte Reexamination Certificate
`
`Part of Paper No. 20211104
`
`Page 12
`
`

`

`Reexamination
`
`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`90/014,507
`
`Certificate Date
`
`8213970
`
`Certificate Number
`
`C1
`
`Requester Correspondence Address: D
`
`Patent Owner 0
`
`Third Party
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`LITIGATION REVIEW 0
`
`/EBK/
`(examiner initials)
`
`Case Name
`AGIS Software Dev., LLC v. Google LLC, Case No. 2:19-cv-00361 (E.D.
`Tex.)
`
`16 May 2020
`(date)
`Director Initials
`
`COPENDING OFFICE PROCEEDINGS
`
`TYPE OF PROCEEDING
`
`NUMBER
`
`IPR
`IPR
`
`IPR
`IPR
`
`IPR2018-00821 (Institution Denied)
`IPR2018-01079 (FWD)
`
`IPR2019-00411 (Terminated)
`IPR2019-00485 (Institution Denied)
`
`U.S. Patent and Trademark Office
`
`DOC. CODE RXFILJKT
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`Page 13
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`

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`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`Search Notes
`
`90/014,507
`
`Examiner
`
`ERIC B KISS
`
`I CPC - Searched•
`Symbol
`
`8213970
`
`Art Unit
`
`3992
`
`I Date
`
`I Examiner
`
`CPC Combination Sets - Searched*
`
`Symbol
`
`Date
`
`Examiner
`
`US Classification - Searched*
`
`Class
`
`Subclass
`
`Date
`
`Examiner
`
`* See search history printout included with this form or the SEARCH NOTES box below to determine the scope of
`the search.
`
`Search Notes
`
`Search Notes
`
`Reviewed patent file history
`
`Interference Search
`
`Date
`
`07/02/2020
`
`Examiner
`
`/EBK/
`
`US Class/CPC
`Symbol
`
`US Subclass/CPC Group
`
`Date
`
`Examiner
`
`U.S. Patent and Trademark Office
`
`Page 1 of 1
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`Part of Paper No.: 20211104
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`Page 14
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`

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`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`Issue Classification
`
`90/014,507
`
`Examiner
`
`ERIC B KISS
`
`8213970
`
`Art Unit
`
`3992
`
`CPC
`
`Symbol
`
`H04M
`
`H04M
`
`H04M
`
`H04M
`
`H04M
`
`H04M
`
`H04M
`
`H04M
`
`H04W
`
`1
`
`I rI 1
`I ff 1
`11
`I mt 1
`1 mr 2250
`I t? 2250
`I mt 2250
`1 rnr 2250
`I ff 4
`
`rnI 7243
`rnr 72457
`mt 72415
`mt 72427
`rnr 06
`mt 22
`mt 62
`rnr 64
`rnr 12
`
`CPC Combination Sets
`
`Symbol
`
`1 rnr1
`
`1 rnr1
`
`Type
`
`Version
`
`F
`A
`
`A
`A
`
`A
`
`A
`A
`
`A
`A
`
`2021-01-01
`
`2021-01-01
`
`2021-01-01
`
`2021-01-01
`
`2013-01-01
`
`2013-01-01
`
`2013-01-01
`
`2013-01-01
`
`2013-01-01
`
`Type
`
`Set
`
`Ranking
`
`Version
`
`NONE
`
`(Assistant Examiner)
`/Eric B. Kiss/
`Patent Reexamination Specialis, Art Unit 3992
`(Primary Examiner)
`U.S. Patent and Trademark Office
`
`(Date)
`28 October 2021
`
`Total Claims Allowed:
`
`5
`
`O.G. Print Claim(s) O.G. Print Figure
`
`(Date)
`
`2
`
`1a
`
`Part of Paper No.: 20211027
`
`Page 1 of 3
`
`Page 15
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`

`

`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`Issue Classification
`
`INTERNATIONAL CLASSIFICATION
`
`CLAIMED
`
`H04M1/7243
`
`H04M1/72457
`
`H04M1/72415
`
`H04M1/72427
`
`H04W4/12
`
`I NON-CLAIMED
`
`US ORIGINAL CLASSIFICATION
`
`CLASS
`
`CROSS REFERENCES(S)
`
`CLASS
`
`90/014,507
`
`Examiner
`
`ERIC B KISS
`
`1
`
`Jr
`t? 1
`mt 1
`mt 1
`rnr 4
`
`8213970
`
`Art Unit
`
`3992
`
`7243
`
`rm
`mt 72457
`rnr 72415
`mt 72427
`mt 12
`
`SUBCLASS
`
`I
`
`SUBCLASS (ONE SUBCLASS PER BLOCK)
`I
`I
`I
`
`I
`
`NONE
`
`(Assistant Examiner)
`/Eric B. Kiss/
`Patent Reexamination Specialis, Art Unit 3992
`(Primary Examiner)
`U.S. Patent and Trademark Office
`
`(Date)
`28 October 2021
`
`Total Claims Allowed:
`
`5
`
`O.G. Print Claim(s) O.G. Print Figure
`
`(Date)
`
`2
`
`1a
`
`Part of Paper No.: 20211027
`
`Page 2 of 3
`
`Page 16
`
`

`

`Application/Control No.
`
`Applicant(s)/Patent Under Reexamination
`
`Issue Classification
`
`90/014,507
`
`Examiner
`
`ERIC B KISS
`
`8213970
`
`Art Unit
`
`3992
`
`2
`
`D Claims renumbered in the same order as presented by applicant D CPA D T.D. D R.1.47
`CLAIMS
`Final Original Final Original Final Original Final Original Final Original Final Original Final Original Final Original
`1
`10
`10
`2
`11
`11
`3
`12
`12
`4
`13
`13
`-
`5
`14
`-
`15
`6
`7
`8
`9
`
`NONE
`
`(Assistant Examiner)
`/Eric B. Kiss/
`Patent Reexamination Specialis, Art Unit 3992
`(Primary Examiner)
`U.S. Patent and Trademark Office
`
`(Date)
`28 October 2021
`
`Total Claims Allowed:
`
`5
`
`O.G. Print Claim(s) O.G. Print Figure
`
`(Date)
`
`2
`
`1a
`
`Part of Paper No.: 20211027
`
`Page 3 of 3
`
`Page 17
`
`

`

`Application No:
`
`Foreign Priority claimed:
`
`Bibliographic Data
`90/014,507
`0 Yes
`0Yes
`I /Eric B. Kiss/
`Examiner's Signature
`
`35 USC 119 (a-d) conditions met:
`
`Verified and Acknowledged:
`
`D Met After Allowance
`
`Initials
`
`Title:
`
`METHOD OF UTILIZING FORCED ALERTS FOR INTERACTIVE
`REMOTE COMMUNICATIONS
`
`FILING or 371(c) DATE
`
`CLASS
`
`GROUP ART UNIT
`
`ATTORNEY DOCKET NO.
`
`455
`
`3992
`
`2525.993REXO
`
`05/15/2020
`
`RULE
`
`APPLICANTS
`
`INVENTORS
`
`8213970,
`
`AGIS SOFTWARE DEVELOPMENT LLC, MARSHALL, TX, UNITED STATES
`
`JONATHAN TUMINARO (3RD PTY REQ.), WASHINGTON, DC, UNITED STATES
`
`CONTINUING DATA
`
`This application is a REX of 12324122 11/26/2008 PAT 8213970
`
`12324122 is a CIP of 11612830 12/19/2006 PAT 7853273
`
`11612830 is a CIP of 11308648 04/17/2006 PAT 7630724
`
`11308648 is a CIP of 10711490 09/21/2004 PAT 7031728
`
`FOREIGN APPLICATIONS
`
`IF REQUIRED, FOREIGN LICENSE GRANTED**
`
`STATE OR COUNTRY
`
`ADDRESS
`
`Fabricant LLP
`411 Theodore Fremd Road
`Suite 206 South
`Rye, NY 10580
`UNITED STATES
`
`FILING FEE RECEIVED
`
`$12,000
`
`Page 18
`
`

`

`Receipt date: 10/19/2021
`
`OK TO ENTER:
`
`/EBK/
`
`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`U.S. PATENT NO.:
`
`8,213,970
`
`ART UNIT:
`
`3992
`
`CONTROL
`NUMBER:
`
`90/014,507
`
`FILING DATE: May 15, 2020
`
`CONF. NO.:
`
`6188
`
`EXAMINER: Kiss, Eric B.
`
`TITLE: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
`
`FILED ELECTRO NI CALLY
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`AMENDMENT AND REPLY UNDER 37 C.F.R. 1.113 TO A FINAL OFFICE ACTION
`
`This paper is submitted under 37 C.F.R. 1.113 in response to the final Office Action
`
`mailed from the Office on August 19, 2021. Owner authorizes any required fee to be charged to
`
`Deposit Account No. 60-3614.
`
`A listing of the claims begins on page 2.
`
`Remarks begin on page 9.
`
`1
`
`Page 19
`
`

`

`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`U.S. PATENT NO.:
`
`8,213,970
`
`ART UNIT:
`
`3992
`
`CONTROL
`NUMBER:
`
`90/014,507
`
`FILING DATE: May 15, 2020
`
`CONF. NO.:
`
`6188
`
`EXAMINER: Kiss, Eric B.
`
`TITLE: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
`
`FILED ELECTRO NI CALLY
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`AMENDMENT AND REPLY UNDER 37 C.F.R. 1.113 TO A FINAL OFFICE ACTION
`
`This paper is submitted under 37 C.F.R. 1.113 in response to the final Office Action
`
`mailed from the Office on August 19, 2021. Owner authorizes any required fee to be charged to
`
`Deposit Account No. 60-3614.
`
`A listing of the claims begins on page 2.
`
`Remarks begin on page 9.
`
`1
`
`Page 20
`
`

`

`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
`
`CLAIMS
`
`A listing of claims follows:
`
`Claim 1. A communication system for transmitting, receiving, confirming receipt, and
`
`responding to an electronic message, comprising: a predetermined network of participants,
`
`wherein each participant has a similarly equipped PDA/cell phone that includes a CPU and a
`
`touch screen display a CPU and memory; a data transmission means that facilitates the
`
`transmission of electronic files between said PDA/cell phones in different locations; a sender
`
`PDA/cell phone and at least one recipient PDA/cell phone for each electronic message; a forced
`
`message alert software application program including a list of required possible responses to be
`
`selected by a participant recipient of a forced message response loaded on each participating
`
`PDA/cell phone; means for attaching a forced message alert software packet to a voice or text
`
`message creating a forced message alert that is transmitted by said sender PDA/cell phone to the
`
`recipient PD A/cell phone, said forced message alert software packet containing a list of possible
`
`required responses and requiring the forced message alert software on said recipient PDA/cell
`
`phone to transmit an automatic acknowledgment to the sender PDA/cell phone as soon as said
`
`forced message alert is received by the recipient PD A/cell phone; means for requiring a required
`
`manual response from the response list by the recipient in order to clear recipient's response list
`
`from recipient's cell phone display; means for receiving and displaying a listing of which
`
`recipient PDA/cell phones have automatically acknowledged the forced message alert and which
`
`recipient PDA/cell phones have not automatically acknowledged the forced message alert; means
`
`for periodically resending said forced message alert to said recipient PD A/cell phones that have
`
`not automatically acknowledged the forced message alert; and means for receiving and
`
`displaying a listing of which recipient PD A/cell phones have transmitted a manual response to
`
`2
`
`Page 21
`
`

`

`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
`
`said forced message alert and details the response from each recipient PDA/cell phone that
`
`responded.
`
`Claim 2. (amended), [The system as in claim l] A communication system for transmitting,
`
`receiving, confirming receipt, and responding to an electronic message, comprising: a
`
`predetermined network of participants, wherein each participant has a similarly equipped
`
`PDA/cell phone that includes a CPU and a touch screen display a CPU and memory; a data
`
`transmission means that facilitates the transmission of electronic files between said PDA/cell
`
`phones in different locations; a sender PDA/cell phone and at least one recipient PDA/cell phone
`
`