Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 1 of 13 PageID #: 14397
`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 1 of 13 PageID #: 14397
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`EXHIBIT 4
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`EXHIBIT 4
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 2 of 13 PageID #: 14398
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`CN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Serial No.: 1.2/324, 122
`Attorney Oocket No.: 10963.3819
`PA'IE.KT
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`ru re application of: Malcolm K. Beyer, .Jr.
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`Confirmation No: 9036
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`Group Art Unlt: 2617
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`Examiner: LEBASSI, Amanuel
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`Serial No.: 12/324,122
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`Filed: November 26, 2008
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`Entitled: METHOD OF UTILIZING
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`FORCED ALERTS FOR
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`INTERACTIVE REMOTE
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`COMMUNfCA TfONS
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`________________ )
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`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`December 17, 2010
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`Filed Electronically
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`RESPONSE AND AMENDMENT
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`Dear Sir:
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`Tn response to the Office Action dated September 20, 2010, please amend the above
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`referenced patent application as follows and consider the remarks below. This Response is
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`believed to be timely. However, in the event that any further extension of time is required, please
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`consider this a request therefor. The Commissioner is authorized to charge any additional fees
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`due or credit any overpayment to Deposit Account 13-1130.
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`Please amend the claims as shown on pages 2-7.
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`Remarks begin on page 8.
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`AG1STX_00001268
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 3 of 13 PageID #: 14399
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`CLAIM Al\lIBNDMENTS
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`Please amend the claims (strikethrough indicating deletion and underline indicating
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`insertion) as follows:
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`1. (Cancelled)
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`2. (C1u-rently Amended)
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`A communication svstem for
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`transmitting. receiving.
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`confirming receipt. and responding to an electronic message. comprising:
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`a predetermined network of pa1ticipants. wherein each participant has a similarly
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`equipped PC or PDA/cell phone that includes a CPU and a touch screen display a CPU and
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`memory;
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`a data transmission means that facilitates the transmission of electronic files between said
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`PCs and said PD A/cell phones in different locations;
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`a sender PC or PD A/cell phone and at least one recipient PC or PD A/cell phone for each
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`electronic message; aad
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`a forced message alert software application program loaded on each participating PC or
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`PD A/cell phone [.] ;
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`'fb.e system as in claim L wherein the forced messnge alert sofuvare application progrnrn
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`on the se11det· PC or PDA/cell phone:
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`means for attaching a forced message alert software packet to a voice or text message
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`creating a forced message alert that is transmitted by said sender PC or PDA/cell phone to the
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`recipjent PC or PDA/cell phone, wherein said forced message ale1t software packet contatRS
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`containirn? a response List and feqt1ires requiring the forced message alert software on said
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`recipient PC or PDA/cell phone to transmit an automatic acknowledgment to the sender PC or
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`2
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`AG1STX_00001269
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 4 of 13 PageID #: 14400
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`PDA/cell phone as soon as said forced message alert is received by the reclpiem PC or PDA/cell
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`phone;
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`means for receiving and displaying a listing of which recipient PCs or PDA/cell phones
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`have automatically acknowledged the forced message ~ alert and which recipient PCs or
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`PDA/ceU phones have not automatically acknowledged the forced message alert;
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`means for periodically resending said forced message alert to said recipient PCs or
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`PD A/cell phones that have not automatically acknowledged the forced message ale1t; and
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`meai1s for receiving and displaying a listing of which recipient PCs or PDA/cell phones
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`have transmitted a manual respOL1se to said forced message alert and details the response from
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`each recipient PC or PD A/cell phone that responded.
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`3.
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`(Currently Amended) The system as in claim+ 2 . wherein the forced message
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`alert software application program on the recipient PC or PDA/ceU phone includes:
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`means for transmitting the acknowledgment of receipt to said sender PC or PDA/cell
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`phone immediately upon receiving a forced message alert from the sender PC or PDA/celi
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`phone;
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`means for controlling of the recipient PC or PDAJcell phone upon transmi.tting said
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`automatic aclrnowledgment and effilf,ef,- causing, in cases where the force message alert is a text
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`message, the text message and a response List to be shown on the display of the recipient PC or
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`PDA/cell phone or causes, in cases where the force message ale1t is a voice message, the voice
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`message~ being periodically repeated by the speakers of the recipient PC or PDA/cell phone
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`while said response list is shown on the display;
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`3
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`AG1STX_00001270
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 5 of 13 PageID #: 14401
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`means for allowing a manual response to be manually selected from the response list or
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`manually recorded and traAsmits transmitting said manual response to the sender PC or PDA/cell
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`phone;and
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`means for clearing the text message and a response list from the display of the recipient
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`PC or PDA/cell phone or steps- stopping the repeating voice message and cleftffl clearing the
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`response list from the display of the recipient PC or PD A/cell phone once the manual response is
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`transmitted.
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`4. (CrnTently Amended)
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`The system as in claim + 2, wherein said data transmission
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`means is TCP/IP or another communications protocol.
`The system as in claim + 2,, wherein the response list that is
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`5. (Currently Amended)
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`transmitted within the forced message ale1t software packet is a default response list that is
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`embedded in the forced message ale1t software application program.
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`6. (Currently Amended)
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`The system as in claim l 2, wherein the response list that is
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`transmitted within the forced message alert software packet is a custom response list that is
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`created at the time the specific forced message alert is created on the sender PC or PDA/cell
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`phone.
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`7. (Currently Amended)
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`A method of sending a forced message alert to one or more
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`recipient PCs or PDA/ceU phones within a predetermined communication network, wherein the
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`receipt and response to said forced message ale1t by each intended recipient PC or PDA/cell
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`phone is tracked, said method comprising the steps of:
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`accessing a forced message alert software application program on a sender PC or
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`PDA/cell phone;
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`4
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`AG1STX_00001271
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 6 of 13 PageID #: 14402
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`creating the forced message alett on said sender PC or PDA/cell phone by attaching a
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`voice or text message to a forced message alert application software packet to said voice or text
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`message;
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`designating one or more reclpient PCs or PDNcell phones in the communication
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`network;
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`electrottically transmitting the forced message alert to said recipient PCs or PDNcell
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`phones;
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`receiving automatic acknowledgements from the recipient PCs or PDA/cell phones that
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`received the message and displaying a listing of which recipient PCs or PDA/cell phones have
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`aclmowledged receipt of the forced message alert and wltich recipient PCs or PDNcell phones
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`have not acknowledged receipt of the forced message ale1t;
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`pedodically resending the forced message alert to the recipient PCs or PDNcell phones
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`that have not acknowledged receipt;
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`receiving responses to the forced message ale1t from the recipient PCs or PDA/celi
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`phones and displaying the response from each recipient PC or PDNcell phone; and
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`providing a manual response list on the display of the recipient PC or PD A/cell phone;
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`clearing the receiver's display screen or causing the repeating voice ale1t to cease upon
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`selecting a response that can only be cleared by manually selecting and transntitting a response
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`to the manual response list.
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`8. (Original) The method as in claim 7, wherein each PC or PDNcell phone \.Vithin a
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`predetermined communication network is similarly equipped and has the forced message alert
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`software applicatLon program loaded on it.
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`5
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`AG1STX_00001272
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 7 of 13 PageID #: 14403
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`9. (Original) The method as in claim 7, wherein said forced message alert application
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`software packet contains a response list, wherein said response list is a default list embedded in
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`the forced message alert software application program.
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`10.
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`(Original) The method as in claim 7, wherein said forced message alert application
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`software packet contains a response list. wherein said response list is a custom response list that
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`is created at the time the specific forced message alert is created on the sender PC or PDA/cell
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`phone.
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`11. (Currently Amended) A method of receiving, acknowledging and responding to a
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`forced message alert from a sender PC or PDA/cell phone to a recipient PC or PDA/cell phone,
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`wherein the receipt, acknowledgment, and response to said forced message alert is forced by a
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`forced message alert software application program, said method comprising the steps of:
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`receiving an electrotlically transmitted electronic message;
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`identifying said electronic message as a forced message alert, wherein said forced
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`message alert consists comptises of a voice or text message and a forced message alert
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`application software packet, which triggers the activation of the forced message alert software
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`applicatiou program within the recipient PC or PD A/cell phone;
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`transmitting an automatic acknowledgment of receipt to the sender PC or PDA/cell
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`phone. which triggers the forced message alert software application program to take control of
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`the recipient PC or PD A/cell phone and show the content of the text message and a response list
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`on the display recipient PC or PDA/cell phone or to repeat audibly the content of the voice
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`message on the speakers of the recipient PC or PD A/cell phone and show the response list on the
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`di.splay recipient PC or PD A/cell phone; and
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`6
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`AG1STX_00001273
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 8 of 13 PageID #: 14404
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`transmitting a selected response, whether said selected response is a chosen option from
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`the response list, causing the forced message alert software to release control of the recipient PC
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`or PDA/cell phone and stop showing the content of the text message and a response list on the
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`display recipient PC or PDA/cell phone and or stop repeating the content of the voice message
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`on the speakers of the recipient PC or PD A/cell phone;
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`displaying the response received from the PC or PDA cell phone that transmitted the
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`response on the sender of the forced ale1t PC or PD A/cell phone; and
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`providing a list of the recipient PC or PD A/cell phones have automatically acknowledged
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`receipt of a forced alert message and their response to the forced alert message.
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`12. (Oliginal) The method as in claim l L, wherein each PC or PDA/cell phone within a
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`predetermined communication network is similarly equipped and has the forced message alert
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`software application program loaded on it.
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`L3.
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`(Original) The method as in claim 11, wherein said forced message alert applicati.on
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`software packet contains a response list, wherein said response list is a default list embedded in
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`the forced message alert software application program.
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`14. (Original) The method as in claim l l , wherein said forced message alert application
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`software packet contains a response list. wherein said response list is a custom response list that
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`is created at the time the specific forced message ale1t is created on the sender PC or PDA/cell
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`phone
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`7
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`AG1STX_00001274
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 9 of 13 PageID #: 14405
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`REMARKS
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`The Office Action mailed September 20, 2010 has been received and reviewed. By the
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`present Response and Amendment. Claim l is canceled. Claims 2-7 and 11 have been amended
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`and claims 2-14 remain. No new matter is introduced.
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`Claim Rejections - 3.5 USC § 1()2
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`The Examiner's rejection of Claims 1, 4 and 6 under 35 U.S.C. § I02(e) as being
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`anticipated by Keating et at. (US 2004/0082352) is respectfully u·aversed. It is elementary patent
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`law that to sustain a rejection based on anticipation, each and every element recited in the claims
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`that are rejected must be present in the reference cited by the Examiner. Claim l has been
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`canceled. Remaining claims 4 and 6 bave been amended to depend from amended claim 2. The
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`Keating er at. patent is very specific about being a system and method to develop accurate billing
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`for Push To TaU< (PTI) phones. The described technique sets up a group of mobile stations
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`based on digital replies automatically received from the group of mobile stations. Applicant's
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`invention ls about sending commands to itldividuals using any communications means that
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`require a manual response from the individual to whom the command was issued, in much the
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`same manner that when a U.S. Marine issues a command and he demands a ''Yes Sir" or "No
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`Sir" response from the person co whom the command was issued. Additionally, there is no use of
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`remote or automatically generated voice commands that demand a response being sent in
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`Keating er al. The Keating et at. reference does not disclose a forced message alert software
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`application program loaded on each pruticipating PC or PDA/cell phone as required in amended
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`independent claim 2 from which claims 4 and 6 depend. The system in the Keating et al.
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`reference is completely different in purpose and methodology and i.n other words structure and
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`8
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`AG1STX_00001275
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 10 of 13 PageID #: 14406
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`function. The purpose of the system in the Keating et al. reference is to enable accurate billing of
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`multiple call pa1ticipants in a wireless group. There is no discussion or suggestion in Keating et
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`nl. to provide a forced message alert which is described in Applicant's specification. The
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`Examiner states in the rejection that "Keating et al. discloses a forced message alert software
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`application program loaded on each participating PC in paragraph (0025)". A review of
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`paragraph (0025) of the Keating et al. reference shows that the leader sends a message to a
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`wireless data controller that requests a list of participants that have responded that want to
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`participate in a group call. This is not the forced message alert as described in applicant's
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`specification and recited in amended claim 2. [n the Keating et al. reference if there is no
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`response then the recipient is not added to the group. Applicant's forced message ale1t forces a
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`recipient to respond with an appropriate predetermined response. Again, the whole purpose of
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`the Keating et al. invention is to make sure that there is an accurate billing among the receipt
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`members. See paragraph (0005) of Keating et at.; the Keating et al. reference does not anticipate
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`amended claim 2 from which claims 4 and 6 depend and therefore claims 4 and 6 are allowable.
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`Claim Rejections - 35 U.S.C. § 1()3
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`The Exan1iner's rejection of Claims 2, 3 and 5 under 35 U.S.C. l03(a) as being
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`unpatentable over Keating et al. (US 2004/0082352) i.n view of Esler et al. (US 2005/0241026)
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`is respectfully traversed. As stated above, with respect to the Keating et al. reference, the
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`structure, methodology, and purpose of the Keating et al. reference are completely different than
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`those in Applicant's claimed invention. Applicant's Claim 2 has been amended to distinguish the
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`forced message alert. Esler et al. shows a device and method for storing data message alerts on
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`medical devices. The medical device can be interrogated with a programmer. The method in
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`9
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`AG1STX_00001276
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 11 of 13 PageID #: 14407
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`Esler's patent is the reverse of Applicant's patent claims. In the Esler patent, the individuals
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`automatically provide unsolicited data to a remote computer which periodically polls for health
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`data. There is no command sent to the participant to manually respond. There is no voice
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`command involved. The method may also include commu11icating the data message alert by the
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`programmer in response to detecting the data message alert stored in a dedicated ale1t field of a
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`medical device. It is difficult to understand how a person of ordinary skill in the art that deals
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`with the communication network that has forced message alerts would even consider the
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`combination of device and method disclosed in the Keating et al. reference in conjunction with
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`the method disclosed in Esler et al. since the two methods and systems are completely different
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`and offer no suggestion or motivation to arrive at Applicant's claimed invention. It is Applicant's
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`position that even if one combined or attempted to combine the method and systems described in
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`Keating et al. with the method and systems described iit Esler et al., one would not arrive at
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`AppLicant's claimed invention. Since the references even if combined do not provide a prima
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`facie obviousness rejection of these claims, it is Applicant's position that these claims are
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`allowable over the references cited by the examiner.
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`The Examiner's rejection of Claims 7 - 14 under 35 U.S.C. § l03(a) as being
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`unpatentable over Keating et at. (US 2004/0082352) in view of Dalton et al. (US 2004/0192365)
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`is respectfully traversed. Applicant hereby asserts the arguments made above as to why Keating
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`et at. is not an appropriate reference with respect to Applicant's claimed invention and claims 7
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`res onse list on the dis lay of the reci ient PC/PDA and roviding that cleari.n of the receiver' ·
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`lay screen in order to et the alert to cease can only be cl.eared by manually selecting and
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`transmitting a res on:,e to the manual res onse list. Additionally, there is no use of remote or
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`10
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`AG1STX_00001277
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 12 of 13 PageID #: 14408
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`automatically generated voice commands that demand a response being sent in Dalton el al. Th
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`ste s are not taught or suggested in the references when viewed to ether cited bv the Examiner.
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`Dalton et al. shows a communications system and method that includes a data concentrator
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`computer atld a gateway device that allows direct communication between first and second
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`mobile data acquisition devices. Again, it is Applicant's position that even if the method and
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`reference device shown in Keating et al. were somehow to be combined with the system and
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`method shown in Dalton et al., Applicant's claimed invention cannot result based on the
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`amendments to claim 7. Therefore, the Examiner has failed to present a prima facie case of
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`obviousness under 35 U.S.C. § 103 with respect to claim 7. Therefore, it is AppLicant's position
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`that claims 7-14 are allowable over the art of record.
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`Claim 1 is canceled. Claims 2 through 14 are believed allowable over the art record for
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`the reasons stated above.
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`11
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`AG1STX_00001278
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`Case 2:17-cv-00513-JRG Document 239-3 Filed 12/18/18 Page 13 of 13 PageID #: 14409
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATEKT
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`CONCLUSION
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`In view of the amendments submitted herein and the above comments, it is believed that all
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`grounds of rejection are overcome and that the application has now been placed in full condition
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`for allowance. Accordingly, Applicant earnestly solicits early and favorable action. Should there
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`be any fmiher questions or reservations, the Examiner is urged to telephone Applicant's
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`undersigned attorney at (954) 763-3303.
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`Respectfully submitted,
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`s/ Barry L. Haley
`Barry L. Haley, Esq. (Reg. No. 25 ,339)
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`Customer No.: 22235
`MAUN HALEY DiMAGGIO
`BOWEN & LHOTA, P.A.
`1936 South Andrews A venue
`Fort Lauderdale, Florida 33316
`Telephone: (954) 763-3303
`Facsimile: (954) 522-6507
`E-Mail: info@ m.h<lpaten ts.com
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`12
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`AG1STX_00001279
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