Case 2:17-cv-00514-JRG Document 162-5 Filed 02/13/19 Page 1 of 4 PageID #: 14456
`Case 2:17-cv-00514-JRG Document 162-5 Filed 02/13/19 Page 1 of 4 PageID #: 14456
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`Case 2:17-cv-00514-JRG Document 162-5 Filed 02/13/19 Page 2 of 4 PageID #: 14457
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`Docket No. : MOC-005
`(PATENT)
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`First Named Inventor:
`Malcolm K. Beyer, Jr.
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`Application No.: 14/633,804
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`Confirmation No.: 8573
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`Filed : February 27, 2015
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`Art Unit: 2646
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`For: METHOD TO PROVIDE AD HOC AND
`PASSWORD PROTECTED DIGIT AL AND
`VOICE NETWORKS
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`Examiner: 0. Obayanju
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`AMENDMENT FILED WITH REQUEST FOR CONTINUED EXAMINATION {RCE)
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`Mail Stop RCE
`Commissioner for Patents
`P .O. Box 1450
`Alexandria, VA 22313-1450
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`INTRODUCTORY COMMENTS
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`In response to the Final Office Action dated December 10, 2015, please amend the
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`above-identified US patent application as follows :
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`Amendments to the Claims are reflected in the listing of claims which begins on
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`page 2 of this paper.
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`Remarks/Arguments begin on page 8 of this paper.
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`ACT!VE/84854759.1
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`Case 2:17-cv-00514-JRG Document 162-5 Filed 02/13/19 Page 3 of 4 PageID #: 14458
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`Application No. 14/633,804
`Reply to Office Action of December 10, 2015
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`8
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`Docket No.: MOC--005
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`Administrative Overview
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`REMARKS
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`Prior to the Office Action ofDecember 10, 2015, claims 1-2, 5, 8-14, 17, 20-24, and 31-
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`42 were pending. In the Office Action :
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`•
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`claims 9, 12, 21, 24, 35, and 41 were rejected under 35 U.S.C. § 112 as purportedly
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`faili ng to comply with the written description requirement;
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`•
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`claims l, 2, 9, 13, 14, 21, 31, 32, 34-38, and 40-42 were rejected under 35 U.S.C.
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`§ 102 as purportedly being anticipated by U.S. Pub. No. 2004/0148090 ("Melen");
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`•
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`claims 8, 11, 20, and 23 were rejected under 35 U.S.C. § 103 as purportedly being
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`obvious over Melen in view of U.S. Pub. No. 2006/0047825 ("Steenstra");
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`•
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`claims 5, 10, 17, and 22 were rejected under 35 U.S.C. § 103 as purportedly being
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`obvious over Melen in view of U.S. Patent No. 8,014,763 ("Hymes");
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`•
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`claims 12 and 24 were rejected under 35 U.S.C. § 103 as purportedly being obvious
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`over Melen in view of U.S. Pub. No. 2004/0252050 ("Tengler"); and
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`•
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`claims 33 and 39 were rejected under 35 U.S.C. § 103 as purportedly being obvious
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`over Melen in view of U.S. Pub. No. 2005/0130666 ("Levy").
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`In the present Amendment, claims 5, 10, 17, and 22 are canceled without prejudice or
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`disclaimer. Claims 1 and 13 are amended to recite the subject matter of previously-pending
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`claims 10 and 22, respectively, and are further amended to recite "using an Internet Protocol to
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`send data." Claims 43 and 44 are added.
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`No new matter is added. Support for the claim amendments can be found
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`U.S. Patent No. 7 630 724 e.g. in col. 10:57 - col. 11 :15 col. 12:63 - col. 13:26· and col. 16:42-
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`59). S@ ort for the new claims can be found for exam le in the ' 724 atent (e.g. in col. 4:52-
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`65). It is noted that the '724 patent was incorporated by reference into the present application at
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`the time of the present application's filing.
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`Applicability of Post-AIA Provisions of the Patent Laws to the Present Application
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`The Office Action (p. 2) states that " [t]he present application is being examined under the
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`pre-AIA first to invent provisions" of the patent laws. For the reasons stated in the Response
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`ACTIVE/84854759.1
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`Case 2:17-cv-00514-JRG Document 162-5 Filed 02/13/19 Page 4 of 4 PageID #: 14459
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`Application No. 14/633,804
`Reply to Office Action of December 10, 2015
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`9
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`Docket No.: MOC--005
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`filed on November 13, 2015, it is understood that the present application will be examined under
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`the post-AIA, first-to-file provisions of the patent laws.
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`Interview Summary
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`Applicant thanks Examiner Obayanju for conducting a telephonic interview on January
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`21 , 2016. The participants included Examiner Obayanju, Applicant's undersigned representative
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`(Daniel J. Burns), and Applicant' s attorney (Samuel S. Stone). The interview was held pursuant
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`to a Proposed Interview Agenda that was emailed to the Examiner on January 21, 2016. Copies
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`of the Interview Agenda and the email message are submitted herewith. A summary of the
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`interview is provided below.
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`During the interview, the participants discussed the rejections of claims 1 and 32 under
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`35 U.S.C. § 102 as purportedly being anticipated by Melen. Applicant's representatives referred
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`to the portions of Melen identified in the Proposed Interview Agenda, and pointed out that those
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`portions of Melen do not teach or suggest the limitations of claim 1, nor the limitations of claim
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`32. No agreement was reached with respect to claim 1. Regarding claim 32, the Examiner agreed
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`that the claim was not anticipated by Melen.
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`Claim Rejections Under 35 U.S.C. § 112
`Claims 9, 12, 21, 24, 35, and 41 were rejected under 35 U.S.C. § 112 as purportedly
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`failing to comply with the written description requirement. Reconsideration is respectfully
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`requested. Since the application describes the subject matter of each of the claims in sufficient
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`detail that one of ordinary skill in the art can reasonably conclude that the inventors had
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`possession of the claimed subject matter at the time of the application's filing, each of the claims
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`satisfies the written description requirement.
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`In particular, the Office Action alleges that there is insufficient written description
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`support for sending "a request for a second map, wherein the request specifies a map location,"
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`as recited in claims 9 and 21 . Sugport for the sub· ect matter of claims 9 and 21 is found for
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`example, in U.S. Patent No. 7,630 724, which was incorporated by reference into the present
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`application at the time of the present application's filing. For example, the ' 724 patent states that
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`"[t]he cell phone device application software, however, can also provide the user the ability to
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`ACTIVE/84854759.1
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