Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 1 of 13 PageID #:
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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 2 of 13 PageID #:
`5530
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of: Malcolm K. Beyer, Jr.
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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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`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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`In 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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`1
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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 3 of 13 PageID #:
`5531
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
`
`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; aft6:
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`a forced message alert software application program loaded on each participating PC or
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`PDA/cell phone [.] ;
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`The system as in claim 1, wherein the forced message alert software application program
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`on the sender 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, wherein said forced message alert software packet contains
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`containing a response list and requires 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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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 4 of 13 PageID #:
`5532
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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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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`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/cell 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.
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`(Currently Amended) The system as in claim -l 2 , wherein the forced message
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`alert 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 causes 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 alert is a voice message, the voice
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`message te--be 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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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 5 of 13 PageID #:
`5533
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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 transmits 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 €leaFS- 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.
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`(Currently 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.
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`5. (Currently Amended)
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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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`(Currently Amended)
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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. (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/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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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 6 of 13 PageID #:
`5534
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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 PD A/cell phone;
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`clearing the receiver's display screen or causing the repeating voice alert to cease upon
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`selecting a response that can only be cleared by manually selecting and transmitting a response
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`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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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 7 of 13 PageID #:
`5535
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
`
`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 consists comprises 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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`application 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 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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`display recipient PC or PDA/cell phone; and
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`6
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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 8 of 13 PageID #:
`5536
`
`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
`
`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 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 156-9 Filed 09/28/21 Page 9 of 13 PageID #:
`5537
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
`
`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 1 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-35 USC§ 102
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`The Examiner's rejection of Claims 1, 4 and 6 under 35 U.S.C. § 102(e) as being
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`anticipated by Keating et al. (US 2004/0082352) is respectfully traversed. 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 1 has been
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`canceled. Remaining claims 4 and 6 have been amended to depend from amended claim 2. The
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`Keating et al. patent is very specific about being a system and method to develop accurate billing
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`for Push To Talk (PTT) 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 is about sending commands to individuals 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 to 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 et al. The Keating et al. reference does not disclose a forced message alert software
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`application program loaded on each participating 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 in other words structure and
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`8
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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 10 of 13 PageID #:
`5538
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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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 participants in a wireless group. There is no discussion or suggestion in Keating et
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`al. 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. In 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 alert 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 al.; 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. § 103
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`The Examiner's rejection of Claims 2, 3 and 5 under 35 U.S.C. 103(a) as being
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`unpatentable over Keating et al. (US 2004/0082352) in 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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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 11 of 13 PageID #:
`5539
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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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 communicating the data message alert by the
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`programmer in response to detecting the data message alert stored in a dedicated alert 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 in 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. § 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. Applicant hereby asserts the arguments made above as to why Keating
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`et al. is not an appropriate reference with respect to Applicant's claimed invention and claims 7
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`through 14. Applicant's claim 7 has been amended to include the steps of providing a manual
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`response list on the display of the recipient PC/PD A and providing that clearing of the receiver's
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`display screen in order to get the alert to cease can only be cleared by manually selecting and
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`transmitting a response to the manual response list. Additionally, there is no use of remote or
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`10
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`

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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 12 of 13 PageID #:
`5540
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
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`automatically generated voice commands that demand a response being sent in Dalton et al. The
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`steps are not taught or suggested in the references when viewed together cited by 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 and 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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`Case 2:21-cv-00072-JRG-RSP Document 156-9 Filed 09/28/21 Page 13 of 13 PageID #:
`5541
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`Serial No.: 12/324,122
`Attorney Docket No.: 10963.3819
`PATENT
`
`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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`s/ 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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`I:\10000\10963\3819\To PTO\0l_Response to OA Mailed 09-20-10.doc
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