Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 1 of 13 PageID #:
`5516
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` EXHIBIT 7
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 2 of 13 PageID #:
`5517
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re application of: BEYER, JR., Malcolm K.
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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
`FORCED ALERTS FOR
`INTERACTIVE REMOTE
`COMMUNICATIONS
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`Confirmation No: 9036
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`Group Art Unit: 2617
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`Examiner: LEBASSI, Amanuel
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`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`September 9, 2011
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`Filed Electronically
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`RESPONSE AND AMENDMENT
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`Dear Sir:
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`In response to the Office Action dated March 11, 2011, please amend the above
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`referenced patent application as follows and consider the remarks below. This Response is filed
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`within six months of the mailing date of the Office Action; therefore, a petition for a three-month
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`extension of time is submitted herewith. In the event that any further extension of time is
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`required, please consider this a request therefor. The Commissioner is authorized to charge any
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`additional fees 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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`1
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 3 of 13 PageID #:
`5518
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`CLAIM AMENDMENTS
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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. (Currently amended)
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`A communication system for
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`transmitting, rece1vmg,
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`confirming receipt, and responding to an electronic message, comprising:
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`a predetermined network of participants, 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 PDA/cell phones in different locations;
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`a sender PC or PDA/cell phone and at least one recipient PC or PDA/cell phone for each
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`electronic message;
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`a forced message alert software application program including a list of required possible
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`responses to be selected by a participant recipient of a forced message response loaded on each
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`participating 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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`recipient PC or PDA/cell phone, said forced message alert software packet containing a list of
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`possible required responses response list and 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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`PDA/cell phone as soon as said forced message alert is received by the recipient PC or PDA/cell
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`phone;
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`2
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 4 of 13 PageID #:
`5519
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`means for requiring a required manual response from the response list by the recipient in
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`order to clear recipient's response list from recipient's cell phone display;
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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 PDA/cell
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`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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`PDA/cell phones that have not automatically acknowledged the forced message alert; and
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`means for receiving and displaying a listing of which recipient PCs or PDA/cell phones
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`have transmitted a manual response 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. (Currently amended) The system as in claim 2, wherein the forced message alert
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`software application program on the recipient PC or PDA/cell 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/cell
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`phone;
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`means for controlling of the recipient PC or PDA/cell phone upon transmitting said
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`automatic acknowledgment and causmg, m 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 feree forced message alert is a voice message, the
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`voice message being periodically repeated by the speakers of the recipient PC or PD A/cell phone
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`while said response list is shown on the display;
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`3
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 5 of 13 PageID #:
`5520
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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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 transmitting said manual response to the sender PC or PDA/cell phone;
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`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 stopping the repeating voice message and clearing the response list
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`from the display of the recipient PC or PD A/cell phone once the manual response is transmitted.
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`4.
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`(Previously presented)
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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.
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`5. (Previously presented)
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`The system as in claim 2, wherein the response list that is
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`transmitted within the forced message alert software packet is a default response list that is
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`embedded in the forced message alert software application program.
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`6.
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`(Previously presented)
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`The system as in claim 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.
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`(Currently amended) A method of sending a forced message alert to one or more
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`recipient PCs or PDA/cell phones within a predetermined communication network, wherein the
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`receipt and response to said forced message alert 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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`accessmg 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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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 6 of 13 PageID #:
`5521
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`creating the forced message alert 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 recipient PCs or PDA/cell phones m the communication
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`network;
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`electronically transmitting the forced message alert to said recipient PCs or PDA/cell
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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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`acknowledged receipt of the forced message alert and which recipient PCs or PDA/cell phones
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`have not acknowledged receipt of the forced message alert;
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`periodically resending the forced message alert to the recipient PCs or PDA/cell phones
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`that have not acknowledged receipt;
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`receiving responses to the forced message alert from the recipient PCs or PDA/cell
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`phones and displaying the response from each recipient PC or PDA/cell phone; and
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`providing a manual response list on the display of the recipient PC or PDA/cell phone
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`that can only be cleared by the recipient providing a required response from the list;
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`clearing the receiver's recipient's display screen or causing the repeating voice alert to
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`cease upon recipient selecting a response from the response list required that can only be cleared
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`by manually selecting and transmitting a response to the manual response list.
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`8.
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`(Original) The method as in claim 7, 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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`5
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 7 of 13 PageID #:
`5522
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`9.
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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 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 electronically 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 comprises of a voice or text message and a forced message alert application
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`software packet, which triggers the activation of the forced message alert software application
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`program within the recipient PC or PDA/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 PDA/cell phone and show the content of the text message and a required
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`response list on the display recipient PC or PDA/cell phone or to repeat audibly the content of
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`the voice message on the speakers of the recipient PC or PDA/cell phone and show the required
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`response list on the display recipient PC or PDA/cell phone; and
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`6
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 8 of 13 PageID #:
`5523
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`transmitting a selected required response from the response list in order to allow the
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`message required response list to be cleared from the recipient's cell phone display, whether said
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`selected response is a chosen option from the response list, causing the forced message alert
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`software to release control of the recipient PC or PDA/cell phone and stop showing the content
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`of the text message and a response list on the display recipient PC or PD A/cell phone and or stop
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`repeating the content of the voice message on the speakers of the recipient PC or PDA/cell
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`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 alert PC or PD A/cell phone; and
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`providing a list of the recipient PC or PDA/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. (Original) The method as in claim 11, 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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`13. (Original) The method as in claim 11, 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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`14. (Original) The method as in claim 11, 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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`7
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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 9 of 13 PageID #:
`5524
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`REMARKS
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`The Office Action mailed March 11, 2011 has been received and reviewed. By the
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`present Response and Amendment, Claims 2, 3, 7 and 11 have been amended. No new matter is
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`introduced. Claim 1 has been cancelled previously.
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`Claim Rejections - 35 U.S. C. § 103
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`The Examiner's rejection of Claims 2-10 under U.S.C. § 103(a) as being unpatentable
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`over Keating et al. (US 2004/0082352) in view of Maggenti et al. (US 2002/0061762) is
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`respectfully traversed.
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`The Keating
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`(US 2004/0082352) reference describes an enhanced group call
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`implementation having nothing to do with Applicant's claimed invention providing a forced
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`message alert and requiring a specific response from a recipient selected from the prepared list of
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`responses prior to the recipients display being cleared of the message and required response.
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`Figures 2 and 4 of Keating show flowcharts delineating
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`the essence of the
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`communication system disclosed in Keating. The flowcharts are described in detail in paragraphs
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`0022 and 0031 of Keating. There is no discussion or disclosure that would suggest the system
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`and method recited in amended Claims 2, 7 and 11 concerning the initiation of a required
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`response from a recipient which is automatically transmitted by the recipient's device and the
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`requirement in response to the forced message alert that the recipient must respond with a
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`particular answer selected from previously provided list of potential answers especially before
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`the recipient's display screen can be cleared. In fact, Keating is concerned with the accurate
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`billing that reflects specific time spent by the mobile station participating in a group call. See
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`paragraph 0030 Keating. The purpose and function of the group calling system in Keating is
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`8
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 10 of 13 PageID #:
`5525
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`completely different than Applicant's claimed system and methods recited in the amended
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`Claims 2, 7 and 11. The statement of the Examiner that "Keating discloses a forced message alert
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`software application program" Applicant respectfully submits is incorrect and has a stretched
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`interpretation of what is actually disclosed in Keating.
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`The Maggenti et al. (US 2002/0061762) reference discloses a method for sending a
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`message to a communication device to determine whether the communication device wishes to
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`be a participant and then lists the communication device as a participant if there is a response to a
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`message within a predetermined time. See paragraphs 0010 and 0011. There is no teaching or
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`disclosure of Applicant's claimed system and method in Maggenti et al.
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`The communication system recited in amended Claims 7 and 11 includes a forced
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`message alert software system that requires a response from the recipient of a specific answer
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`from a selected list before the recipient can clear the recipient's display. This is completely
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`different in function and structure than a system asking whether a participant wants to stay as a
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`participant in the net.
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`It is Applicant's position - even if a person of ordinary skill in the art were to combine
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`the Keating reference with the Maggenti et al. reference, Applicant's claimed invention as recited
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`in the amended Claims 2 and 7 at issue could not possibly result because of the lack of relevant
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`disclosure in the references when combined. Therefore, the Examiner has not established a prima
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`facie case of obviousness under 35 U.S.C. § 103 with respect to Claims 2 - 10.
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`9
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 11 of 13 PageID #:
`5526
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`The Examiner's rejection of Claims 11 - 14 under 35 U.S.C. § 103(a) as being
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`unpatentable over Keating et al. (US 2004/0082352) in view of Dalton et al. (US 2004/0192365)
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`is respectfully traversed.
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`The Dalton (US 2004/0192365) communication system is a completely different system
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`than Applicant's claimed communication system and method recited in Claims 11 - 14. A key
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`element in Dalton is a data concentrator computer with a gateway device for communicating
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`with the data concentrator computer so that the gateway device provides communications data
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`between a first mobile data acquisition device and a second mobile data acquisition device
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`without communication with the data concentrator computer. Paragraphs 0010, 0014 and 0015 in
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`Dalton describe a system to manage two or more mobile devices forming a business data
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`collection and to communicate asynchronously in the operational needs of a business application.
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`None of the functions described in the Dalton reference have anything to do with providing a
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`forced message alert as required in Claims 11 - 14 as amended. Applicant reiterates the
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`comments above with respect to the Keating reference. Again, the combination of Keating and
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`Dalton cannot result in Applicant's claimed invention because the references together fail to
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`suggest Applicant's claimed invention. It is Applicant's position that the Examiner has failed to
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`establish a prima facie case of obviousness with respect to Claims 11 - 14.
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`As an initial matter, the Examiner bears the initial burden of factually supporting any
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`primafacie conclusion of obviousness. MPEP § 2143. A claim is obvious under 35 U.S.C. §103
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`if and only if the references relied on teach or suggest each and every element of the claimed
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`invention, and it would be obvious to one skilled in the art to combine the references so relied
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`on. A rationale to support a conclusion that a claim would have been obvious is that all the
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`claimed elements were known in the prior art and one skilled in the art could have combined the
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`10
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 12 of 13 PageID #:
`5527
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`elements as claimed by known methods with no change in their respective known methods with
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`no change in their respective functions, and the combination would have yielded nothing more
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`than predictable results to one of ordinary skill in the art. KSR International Co KSR
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`International Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); see also, KSR 550 U.S. at 415-417
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`(2007) citing Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152
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`(1950), Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63 (1969),and
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`Sakraida v. AG Pro,, Inc.,, 425 U.S. 273,282 (1976).
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`In determining the differences between the prior art and the claims, the question under 35
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`U.S.C. §103 is not whether the differences themselves would have been obvious, but whether the
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`claimed invention as a whole would have been obvious. § MPEP 2141.02; Stratoflex, Inc. v.
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`Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983). Additionally, an obviousness
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`rejection cannot be based on a reference or combination of references that are non-analogous to
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`the invention at issue. MPEP § 2141.0l(a).
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`11
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`Case 2:21-cv-00072-JRG-RSP Document 156-8 Filed 09/28/21 Page 13 of 13 PageID #:
`5528
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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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 further 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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`/Barry L. Haley/
`Barry L. Haley, Esq. (Reg. No. 25,339)
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`Customer No.: 22235
`MALIN 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@mhdpatents.com
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