Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 1 of 25 PageID #: 9498
`
`Exhibit 17
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 2 of 25 PageID #: 9499
`Case 2-4}.Cv00040-JRG Document,199-2 Filed. 01/11/22 Page 2 of 25 PagelD #: 9499
`NITED STATES
`PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`
`
`90/014,901
`
`11/11/2021
`
`7933431
`
`75281.00085
`
`5983
`
`Williams Simons & Landis PLLC/ GTP
`TheLittlefield Building
`601 Congress Ave., Suite 600
`
`POKRZYWA,JOSEPH R
`
`3992
`
`MAIL DATE
`
`01/11/2022
`
`DELIVERY MODE
`
`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)
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 3 of 25 PageID #: 9500
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 3 of 25 PagelD #: 9500
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissionerfor 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)
`
`PAUL HASTINGS LLP (GENERAL)
`2050 M. STREET NW
`
`WASHINGTON, DC 20036
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/074,907 .
`
`PATENT UNDER REEXAMINATION 7933437 .
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 4 of 25 PageID #: 9501
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 4 of 25 PagelD #: 9501
`
`Patent Under Reexamination
`
`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`JOSEPH R POKRZYWA
`3992
`No
`
`90/014,901
`
`7933431
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for exgarfe reexamination filed 11/11/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)
`
`PTO-892,
`
`b)v¥)
`
`PTO/SB/08,
`
`c)Q Other:
`
`1.
`
`The requestfor exgarfe reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`lf Patent Owner does notfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`cc:Requester ( if third party requester }
`U.S. Patent and Trademark Office
`PTOL-471 G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20211129
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 5 of 25 PageID #: 9502
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 5 of 25 PagelD #: 9502
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 2
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`DETAILED ACTION
`
`Response to Requestfor ex parte Reexamination
`
`1.
`
`The present application is being examined under the pre-AIAfirst to invent provisions.
`
`2.
`
`Reexamination has been requested for claims 1-31 of U.S. Patent 7,933,431, issued to
`
`Timothy R. Pryor (hereafter “the ‘431 Patent’).
`
`3.
`
`A substantial new question affecting claims 1-31 of the “431 Patent is raised by the Third
`
`Party’s request for ex parte reexamination.
`
`4.
`
`The ‘431 Patent originally issued on April 26, 2011 with patented claims 1-31, being
`
`filed as U.S. Application 12/834,281 (hereafter “the original ‘281 Application”) on July 12,
`
`2010. Here, the original ‘281 Application was filed as a continuation of U.S. Application
`
`11/980,710, filed on October 31, 2007, now U.S. Patent 7,756,297, which is a continuation of
`
`U.S. Application 10/893,534, filed on July 19, 2004, now U.S. Patent 7,401,783, which is a
`
`continuation of U.S. Application 09/612,225, filed on July 7, 2000, now U.S. Patent 6,766,036,
`
`which claims domestic priority to provisional U.S. Application 60/142,777, filed on July 8, 1999.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 6 of 25 PageID #: 9503
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 6 of 25 PagelD #: 9503
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 3
`
`Listing of Prior Art
`
`5.
`
`In the current Request for Reexamination filed November 11, 2021, the Third Party
`
`Requester alleges that claims 1-31 of the “431 Patent are unpatentable over the following
`
`references:
`
`a.
`
`U.S. Patent 5,982,853, with the inventor of Liebermann, which issued on November9,
`
`1999 (noted as “Liebermann’”);
`
`b.
`
`U.S. Patent 6,385,331, with the inventor of Harakawaet al., which issued on May7,
`
`2002 (noted as “Harakawa’);
`
`Cc.
`
`U.S. Patent 6,191,773, with the inventor of Marunoet al., which issued on February 20,
`
`2001 (noted as “Maruno’”);
`
`d.
`
`U.S. Patent 5,644,324, with the inventor of Maguire, Jr., which issued on July 1, 1997
`
`(noted as “Maguire”);
`
`e.
`
`U.S. Patent 6,198,485, with the inventor of Mack et al., which issued on March 6, 2001
`
`(noted as “Mack”); and
`
`f.
`
`U.S. Patent 4,219,847, with the inventor of Pinkneyef al., which issued on August26,
`
`1980 (noted as “Pinkney’”).
`
`6.
`
`The Examinernotesthat the references of Liebermann, Harakawa, Maruno, Maguire, and
`
`Mack were each notcited, nor discussedin the original prosecution that matured into the ‘431
`
`Patent, and are not cumulative to the references considered during the original prosecution that
`
`matured into the “431 Patent. But in this regard, the reference of Pinkney was noted within the
`
`specification of the ‘431 Patent (see for instance, col. 2, lines 27-35), but it is not clear if the
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 7 of 25 PageID #: 9504
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 7 of 25 PagelD #: 9504
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 4
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`reference was specifically considered as prior art, as the reference was not discussed throughout
`
`the original prosecution of the original ‘281 Application that matured into the “431 Patent.
`
`7.
`
`The Requestindicates that the Third Party Requesteralleges that:
`
`Requester’s Position
`
`SNO#I1.
`
`A substantial new question of claims 1-9, 11-21, 25-26, and 28-31 of the
`
`‘431 Patent is raised by the reference of Liebermann;
`
`SNQ#2.
`
`A substantial new question of claim 20 of the ‘431 Patentis raised by the
`
`combination of the references of Liebermann in view of Harakawa;
`
`SNO#3.
`
`A substantial new question of claims 9, 10, 22, and 23 of the “431 Patentis
`
`raised by the combination of the references of Liebermann in view of Maruno;
`
`SNO#4.
`
`A substantial new question of claim 24 of the ‘431 Patentis raised by the
`
`combination of the references of Liebermann in view of Maruno and Maguire;
`
`SNQ#5.
`
`A substantial new question of claims 10, 23, and 27 of the ‘431 Patentis
`
`raised by the combination of the references of Liebermann in view of Mack;
`
`SNQO#H6.
`
`A substantial new question of claims 7-9 and 11-13 of the ‘431 Patentis
`
`raised by the combination of the references of Liebermannin view of Pinkney;
`
`SNQ#7.
`
`A substantial new question of claims 9 and 10 of the ‘431 Patent1s raised
`
`by the combination of the references of Liebermann in view of Pinkney and Maruno; and
`
`SNO#S.
`
`A substantial new question of claim 10 of the ‘431 Patentis raised by the
`
`combination of the references of Liebermann in view of Pinkney and Mack.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 8 of 25 PageID #: 9505
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 8 of 25 PagelD #: 9505
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 5
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`Discussion of the Prosecution History and Patentable Subject Matter
`
`8.
`
`Upon review of the prosecution history of the original ‘281 Application, the Examiner
`
`notes that throughout the prosecution history of the original ‘281 Application, the original
`
`Examinerdid not cite any prior art in any rejections against any claim, nor did the original
`
`Examiner expressly discuss any specific prior art with respect to the claims.
`
`9.
`
`Particularly, a first Office action was mailed on November 16, 2010, which indicated that
`
`claims 1-31 were allowable, but a couple of claims contained informalities, whereby a term in
`
`independentclaim 7 had insufficient antecedent basis, and claim 14 included a minor
`
`typographical error. In response, the Applicant filed an amendment dated December3, 2010
`
`amending claims 7 and 14, which corrected the indicated informalities. Subsequently, a Notice
`
`of Allowance was mailed on December 22, 2010, which indicated that claims 1-31 were allowed.
`
`In the Notice of Allowance mailed December 22, 2010, the original Examinerstated “Prior art of
`
`record, taken alone or in combination, fails to teach all the features in independentclaims 1, 7
`
`and 14.” [see page 2 of the Notice of Allowance dated December 22, 2010]. In this regard, the
`
`only specific discussion of prior art appearsin the first Office action dated November 16, 2010,
`
`which stated on page 2 that reference of Endohef al. (U.S. Pat. 6,453,180) is pertinent to
`
`Applicant’s disclosure. Three other references were included in a Notices of References Cited
`
`form with the Office action, but these references were not specifically discussed.
`
`10. With this, the perceived patentable features 1n the original prosecution of the “431 Patent
`
`are seen to appear in the bodies of the independent claims, with each having some similar
`
`features that overlap each other. Along this vein, looking at allowed claims 1-31 of the “431
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 9 of 25 PageID #: 9506
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 9 of 25 PagelD #: 9506
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 6
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`Patent, claims 1, 7 and 14 are independent, and each revolve around the functions of a “handheld
`
`computing device” or a “handheld computer apparatus”.
`
`11.
`
`Particularly, independent claim 1 defines “a method for controlling a handheld computing
`
`device”, which includesthe steps that require “holding said device in one hand; movingat least
`
`one finger in space in order to signal a commandto said device; electro-optically sensing light
`
`reflected from said at least one finger using sensing means associated with said device;
`
`determining from said sensed light movementofsaid finger; and using said sensed finger
`
`movement information, controlling said device in accordance with said command”.
`
`Additionally, independent claim 7 defines a “handheld computer” that comprises “a housing; a
`
`camera meansassociated with said housing for obtaining an image usingreflected light of at
`
`least one object positioned by a user operating said object; computer means within said housing
`
`for analyzing said image to determine information concerning a position or movementof said
`
`object; and meansfor controlling a function of said apparatus using said information.” Finally,
`
`independentclaim 14 defines “a method for controlling a handheld computing device”that
`
`includes steps of “providing a computer within said device; associating a camera with said
`
`device, said camera viewingat least a portion of the body of a user operating said device or an
`
`object held by said user, in order to provide image data concerning said portion or object; using
`
`said computer, analyzing said image data to determine information concerning a user input
`
`command; and from said determined information, controlling a function of said device.”
`
`12.
`
`Therefore, it is seen that the perceived patentable features in the original prosecution of
`
`the claims in the ‘431 Patent appear to be found in the overlapping subject matter. Here, the
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 10 of 25 PageID #: 9507
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 10 of 25 PagelD #: 9507
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 7
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`perceived patentable features of independent claim 1 revolve around the functions of a handheled
`
`computing device that includes steps of “movingat least one finger...; electro-optically sensing
`
`light reflected from said at least one finger using sensing meansassociated with said device;
`
`determining from said sensed light movementofsaid finger; and using said sensed finger
`
`movement information, controlling said device...”, as recited in independentclaim 1.
`
`Additionally, the perceived patentable features of independent claim 7 revolve around the
`
`functions of a handheled computer apparatus that comprises “a camera means... for obtaining an
`
`image using reflected light of at least one object positioned by a user ...; computer means within
`
`said housing for analyzing said image to determine information concerning a position or
`
`movementof said object; and means for controlling a function of said apparatus using said
`
`information”, as recited in independent claim 7. Finally, the perceived patentable features of
`
`independent claim 14 revolve around the functions of a handheled computing device that
`
`includes steps of “associating a camera with said device, said camera viewingat least a portion
`
`of the body of a user operating said device or an object held by said user, in order to provide
`
`image data concerning said portion or object; using said computer, analyzing said image data to
`
`determine information concerning a user input command; and from said determined information,
`
`controlling a function of said device,” as recited in independent claim 14.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 11 of 25 PageID #: 9508
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 11 of 25 PagelD #: 9508
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 8
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`Discussion of Substantial New Question of Patentability
`
`13.
`
`MPEP 2240 [R-07.2015] states, in part:
`
`a7 CPR LSIS Determination ofthe request for ex parte reexamination.
`
`(a) Within three months following the filing date of a request for an ex parte
`
`reexamination, an examiner will consider the request and determine whether or
`
`not a substantial newquestion of patentability affecting amy claim of the patent
`
`is raised by the request and the prior art cited therin, with or without
`
`consideration of other patents or printed publications. A statement and any
`
`accompanying information submitted pursuant to § 1.501(a)(2) will not be
`
`considered by the examiner when making a determination on the request. The
`
`examiners determunation will be based on the claims in effect at the ame of the
`
`determination, will becorne a part of the official fle of the patent, and will be
`
`given or mailed to the patent ownerat the address providedfor in § 1.33(c) and
`
`to the person requesting reexamination. [Emphasis added].
`
`SNO#I
`
`14. With respect to the Third Party Requester’s proposed SNQ#1, noted above, the Requester
`
`alleges that the reference of Liebermannraises a substantial new question patentability as to
`
`claims 1-9, 11-21, 25-26, and 28-31 of the “431 Patent.
`
`It is agreed that the reference of
`
`Liebermannraises a substantial new question of patentability as to at least independentclaims 1,
`
`7, and 14.
`
`15.
`
`Particularly, with respect to independent claim 1 of the ‘431 Patent, Liebermann discloses
`
`a method for controlling a handheld computing device [see Fig. 5B, illustrated as a “set-top box
`
`38”; also see Fig. 6, illustrated as a “cellular telephone version” ] comprising the steps of:
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 12 of 25 PageID #: 9509
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 12 of 25 PagelD #: 9509
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 9
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`movingat least one finger [see Abstract, wherein “An electronic communications system
`
`for the deaf includes a video apparatus for observing and digitizing the facial, body and hand and
`
`finger signing motionsof a deaf person, an electronic translator for translating the digitized
`
`signing motions into words and phrases, and an electronic output for the words and phrases.”;
`
`also see col. 6, lines 2-6, wherein “The device is supported in a stable position and the deaf
`
`personis positioned so that the camera lens 10 will record the signing movementof the hands
`
`and fingers and body andfacial motions and expressions.”; also see Figs. 14A-14D];
`
`electro-optically sensing light reflected from said at least one finger using sensing means
`
`associated with said device [via the camera lens 10, seen in Figs. 1, 5B, and 6; also see col. 6,
`
`lines 2-6, wherein “The device is supported 1n a stable position and the deaf person is positioned
`
`so that the camera lens 10 will record the signing movement of the hands and fingers and body
`
`and facial motions and expressions.”|;
`
`determining from said sensed light movementofsaid finger [see col. 6, lines 2-14,
`
`wherein “The signing motions captured by the camera are converted into digital data for
`
`processing by the translation software, (i.e., artificial intelligence) to produce data representing
`
`numbers, words and phrases which are then combined into coherent sentences.”; also see col. 6,
`
`lines 42-63, wherein “The deaf person uses sign languagein front of the transmitter/receiver
`
`device containing the camera. The images captured by the cameraare of the finger and hand
`
`motions and of body motionsand of facial expressions and motions captured by a digital device
`
`which does initial processing. In the initial processing, each of the frames containing a captured
`
`image undergoes a process whereby the imageis collapsed into a small set of fixed identifiers.”];
`
`and
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 13 of 25 PageID #: 9510
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 13 of 25 PagelD #: 9510
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 10
`
`using said sensed finger movement information, controlling said device [see Abstract,
`
`wherein “The system may function as a translator by outputting the translated words and phrases
`
`as synthetic speech at the deaf person’s location for another person at that location ...”; also see
`
`Fig. 1; also see col. 6, lines 42-63, wherein “At the end ofthe initial processing, the resulting
`
`information is sent as data on a regular and designated phoneline using an internal modem in the
`
`device to the data processing center.”; also see col. 7, lines 18-49; also see col. 13, lines 32-39].
`
`16.
`
`Additionally, with respect to independent claim 7 of the “431 Patent, Liebermann
`
`discloses a handheld computer apparatus [see Fig. 5B, illustrated as a “set-top box 38”; also see
`
`Fig. 6, illustrated as a “cellular telephone version” ] comprising:
`
`a camera means... for obtaining an imageusing reflected light of at least one object ...
`
`[via the camera lens 10, seen in Figs. 1, 5B, and 6; also see col. 4, lines 60-61, wherein
`
`“Generally, the deaf person uses sign language in front of a device containing a video camera.”;
`
`also see col. 5, line 53-col. 6, line 6, wherein “A portable transmitter/receiver generally
`
`designated by the numeral 8 for use by a deaf person is shownin FIG. 6 andit contains a video
`
`camera, the lens 10 of which 1s disposedin the upright portion 12. ... The device is supported in a
`
`stable position and the deaf person is positioned so that the camera lens 10 will record the
`
`signing movement of the hands andfingers and body and facial motions and expressions.” |;
`
`computer means within said housing for analyzing said image to determine information
`
`concerning a position or movementofsaid object [see col. 4, line 60-col. 5, line 13, wherein
`
`“The images captured by the camera at 20-30 frames/secondare processed bya digital device
`
`which does initial and extended image processing. In the processing, each of the frames
`
`containing a captured image undergoes a process whereby the imageis transformed into
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 14 of 25 PageID #: 9511
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 14 of 25 PagelD #: 9511
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 11
`
`manageable identifiers.”; also see col. 6, lines 42-63, wherein “The deaf person uses sign
`
`language in front of the transmitter/receiver device containing the camera. The images captured
`
`by the cameraare of the finger and hand motionsand of body motionsand offacial expressions
`
`and motions captured by a digital device which doesinitial processing. In the initial processing,
`
`each of the frames containing a captured image undergoes a process wherebythe imageis
`
`collapsed into a small set of fixed identifiers.” ]; and
`
`meansfor controlling a function of said apparatus using said information [see Abstract,
`
`wherein “The system may function as a translator by outputting the translated words and phrases
`
`as synthetic speech at the deaf person’s location for another personat that location ...”; also see
`
`Fig. 1; also see col. 6, lines 42-63, wherein “At the end ofthe initial processing, the resulting
`
`information is sent as data on a regular and designated phoneline using an internal modem in the
`
`device to the data processing center.”; also see col. 7, lines 18-49; also see col. 13, lines 32-39].
`
`17.
`
`Similarly, with respect to independent claim 14 of the ‘431 Patent, Liebermann discloses
`
`a method for controlling a handheld computing device [see Fig. 5B, illustrated as a “set-top box
`
`38”; also see Fig. 6, illustrated as a “cellular telephone version”|] comprising the steps of:
`
`associating a camera with said device, said camera viewing at least a portion of the body
`
`of a user operating said device or an object held by said user, in order to provide image data
`
`concerning said portion or object [via the camera lens 10, seen in Figs. 1, 5B, and 6; also see col.
`
`4, lines 60-61, wherein “Generally, the deaf person uses sign language in front of a device
`
`containing a video camera.”; also see col. 5, line 53-col. 6, line 6, wherein “A portable
`
`transmitter/receiver generally designated by the numeral 8 for use by a deaf person is shown in
`
`FIG. 6 and it contains a video camera, the lens 10 of whichis disposed in the upright portion 12.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 15 of 25 PageID #: 9512
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 15 of 25 PagelD #: 9512
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`Application/Control Number: 90/014,901
`Art Unit: 3992
`
`Page 12
`
`... The device is supportedin a stable position and the deaf person is positioned so that the
`
`camera lens 10 will record the signing movementof the hands andfingers and body andfacial
`
`motions and expressions.”’];
`
`using said computer, analyzing said image data to determine information concerning a
`
`user input command[seecol. 4, line 60-col. 5, line 13, wherein “The images captured by the
`
`camera at 20-30 frames/secondare processed by a digital device which does initial and extended
`
`image processing. In the processing, each of the frames containing a captured image undergoes a
`
`process whereby the imageis transformed into manageable identifiers.”; also see col. 6, lines 42 -
`
`63, wherein “The deaf person uses sign languagein front of the transmitter/receiver device
`
`containing the camera. The images captured by the cameraare of the finger and hand motions
`
`and of body motions and of facial expressions and motions captured by a digital device which
`
`doesinitial processing. In the initial processing, each of the frames containing a captured image
`
`undergoes a process whereby the imageis collapsed into a small set of fixed identifiers.” ]; and
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`from said determined information, controlling a function of said device [see Abstract,
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`wherein “The system may function as a translator by outputting the translated words and phrases
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`as synthetic speech at the deaf person’s location for another person at that location ...”; also see
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`Fig. 1; also see col. 6, lines 42-63, wherein “At the end ofthe initial processing, the resulting
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`information is sent as data on a regular and designated phoneline using an internal modem in the
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`device to the data processing center.”; also see col. 7, lines 18-49; also see col. 13, lines 32-39].
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`18.
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`Here, the reference of Liebermannappearsto describe the features that are deemed to be
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`the patentable features of independent claims 1, 7, and 14 in the original prosecution of the “431
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`Patent. As discussed above, these teachings provided in the reference of Liebermann are seen to
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`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 16 of 25 PageID #: 9513
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 16 of 25 PagelD #: 9513
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`Application/Control Number: 90/014,901
`Art Unit: 3992
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`Page 13
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`provide disclosure of the features that are deemed to be the patentable features in the original
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`prosecution of at least independent claims 1,7, and 14 of the “431 Patent. With this, the
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`reference of Licbermann is seen to raise a substantial new question of patentabilityas to at least
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`claims t, 7. and 14 of the “431 Patent, which question was not present in a previous exammmiation
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`ofthe “431 Patent. The reference of Liebermann was not utilized in any rejection, nor discussed
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`in the original prosecution, as noted above. Thus, there is a substantial likelihoodthat a
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`reasonable examiner would consider the teachings of Licbermann important in deciding whether
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`cr not at icast independent claims 1, 7, and 14 are patentabic. Therefore, the reference of
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`Liebermann is seen to raise a substantial new question of patentability as to af least claims 7, 7,
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`and 14 of the ‘431 Patent. Further, for similar reasons discussed above, the reference of
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`Liebermann raises a substantial new question of patentability as to dependent claims 2-6, 3-9,
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`14-13, 15-21, 25-26, and 28-31 based on theirespective dependence on independent claims 1,7
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`and 14. Therefore, the reference of Liebermann is seen fo raise a substantial new question of
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`patentability as to claims 1-9, 11-21, 25-26, and 28-31 ofthe “431 Patent,
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`SNO#2
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`19. With respect to the Third Party Requester’s proposed SNQ#2, noted above, the Requester
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`alleges that the combination of Liebermannin view of Harakawaraises a substantial new
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`question patentability as to dependent claim 20 of the ‘431 Patent. It is agreed that the
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`combination of Liebermannin view of Harakawaraises a substantial new question of
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`patentability as to dependent claim 20.
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`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 17 of 25 PageID #: 9514
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 17 of 25 PagelD #: 9514
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`Application/Control Number: 90/014,901
`Art Unit: 3992
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`Page 14
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`20.
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`Here, as discussed above in SNQ#1, the reference of Liebermann,initself, is seen to
`
`raise a substantial new question of patentability with respect to independent claim 14. Because
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`of this, with respect to dependent claim 20, based on its dependence to independentclaim 14, the
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`combination of Liebermannin view of Harakawais seen to raise a substantial new question of
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`patentability as to dependent claim 20. There is a substantial hikeliyhood that a reasonable
`
`cxaminer would consider these teachings of Liebermann and Harakawa important in deciding
`
`whether or not claim 20 is patentabic. Therefore, the combination of Licbermann in viewof
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`Harakawa is scen {0 raise a substantial new question of patentability as to claim 20 of the “431
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`Patent.
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`SNO#3
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`21. With respect to the Third Party Requester’s proposed SNQ#3, noted above, the Requester
`
`alleges that the combination of Liebermann in view of Marunoraises a substantial new question
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`patentability as to dependent claims 9, 10, 22, and 23 of the ‘431 Patent.
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`It is agreed that the
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`combination of Liebermann in view of Marunoraises a substantial new question of patentability
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`as to dependent claims 9, 10, 22, and 23.
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`22.
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`Here, as discussed above in SNQ#1, the reference of Liebermann,in itself, is seen to
`
`raise a substantial new question of patentability with respect to independentclaims 7 and 14.
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`Because of this, with respect to claims 9, 10, 22, and 23, based on their ultimate dependence to
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`independentclaims 7 and 14, respectively, the combination of Liebermann in view of Marunois
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`seen to raise a substantial new question of patentability as to dependentclaims 9, 10, 22, and 23.
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 18 of 25 PageID #: 9515
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 18 of 25 PagelD #: 9515
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`Application/Control Number: 90/014,901
`Art Unit: 3992
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`Page 15
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`There is a substantial likelihood that a reasonable exammner would consider these teachings of
`
`Liebermann and Maruno important in deciding whether or nat claims 9, 10, 22, and 23 are
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`patentable. Therefore, the combination of Liebermann in view of Marinois seen to raise a
`
`
`substantial new questionof patentability as to claims 9, 10, 22, and 23 of the “43.1 Patent.
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`SNO#4
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`23. With respect to the Third Party Requester’s proposed SNQ#4, noted above, the Requester
`
`alleges that the combination of Liebermann in view of Maruno and Maguireraises a substantial
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`new question patentability as to dependent claim 24 of the ‘431 Patent. It is agreed that the
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`combination of Liebermannin view of Maruno and Maguireraises a substantial new question of
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`patentability as to dependentclaim 24.
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`24,
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`Here, as discussed above in SNQ#1, the reference of Liebermann,initself, is seen to
`
`raise a substantial new question of patentability with respect to independent claim 14. Because
`
`of this, with respect to dependent claim 24, based onits ultimate dependence to independent
`
`claim 14, the combination of Liebermann in view of Maruno and Maguireis seen to raise a
`
`substantial new question of patentability as to dependent claim 24. Vhere is a
`
`substantial iikelihood that a reasonable examiner would consider these teachings of Licbermann,
`
`Maruno, and Maguire important in deciding whether or not claim 24 is patentable, Therefore,
`
`the combination of Liebermann in view of Maruno and Maguire is seen to raise a
`
`
`substantial new question of patentability as to claim 24 of the “441 Patent.
`
`SNO#S
`
`

`

`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 19 of 25 PageID #: 9516
`Case 2:21-cv-00040-JRG Document 199-2 Filed 01/11/22 Page 19 of 25 PagelD #: 9516
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`Application/Control Number: 90/014,901
`Art Unit: 3992
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`Page 16
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`25. With respect to the Third Party Requester’s proposed SNQ#5, noted above, the Requester
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`alleges that the combination of Liebermann in view of Mackraises a substantial new question
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`patentability as to dependent claims 10, 23, and 27 of the “431 Patent. It is agreed that the
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`combination of Liebermann in view of Mackraises a substantial new question of patentability as
`
`to dependent claims 10, 23, and 27.
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`26.
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`Here, as discussed above in SNQ#1, the reference of Liebermann,in itself, is seen to
`
`raise a substantial new question of patentability with respect to independent claims 7 and 14.
`
`Because of this, with respect to claims 10, 23, and 27, based on their ultimate dependence to
`
`independentclaims 7 and 14, respectively, the combination of Liebermann in view of Mack is
`
`seen to raise a substantial new question of patentability as to dependent claims 10, 23, and 27.
`
`There is a substantial hkelibood that a reasonable examuner would consider these teachings of
`
`Liebermann and Mack important in deciding whether or not claims 10, 23, and 27 are patentable.
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`Therefore, the combination of Liebermann in view of Mackis seen to raise 2
`
`substantial new question of patentability as to claims 10, 23, and 27 of the “431 Patent.
`
`SNO#6
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`27. With respect to the Third Party Requester’s proposed SNQ#6, noted above, the Requester
`
`alleges that the combination of Liebermann in view of Pinkneyraises a substantial new question
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`patentability as to claims 7-9 and 11-13 of the ‘431 Patent. It is agreed that the combination of
`
`Liebe