Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 1 of 24 PageID #: 6328
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 1 of 24 PagelD #: 6328
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`EXHIBIT 1
`EXHIBIT 1
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 2 of 24 PageID #: 6329
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 2 of 24 PagelD #: 6329
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`U.S. PATENT NO.:=8,213,970 ART UNIT: 3992
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`CONTROL CONF. NO.:=6188
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`NUMBER:
` 90/014,507
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`FILING DATE: May 15, 2020
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`EXAMINER:_
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`Kiss, Eric B.
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`TITLE: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
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`FILED ELECTRONICALLY
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`Mail Stop Ex Parte Reexam
`ATTIN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`AMENDMENT AND REPLY UNDER37 C.F.R. 1.111 TO A NON-FINAL OFFICE
`ACTION
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`This paper is submitted under 37 C.F.R .1.111 in response to the Office Action mailed
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`from the Office on March 3, 2021. Ownerauthorizes any required fee to be charged to Deposit
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`Account No. 60-3614.
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`A listing of the claims begins on page2.
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`Remarksbegin on page 9.
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`

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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 3 of 24 PageID #: 6330
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 3 of 24 PagelD #: 6330
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`CLAIMS
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`A listing of claims follows:
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`1. A communication system for transmitting, receiving, confirming receipt, and responding to an
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`electronic message, comprising: a predetermined networkof participants, wherein each
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`participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen
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`display a CPU and memory; a data transmission meansthat facilitates the transmission of
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`electronic files between said PDA/cell phonesin different locations; a sender PDA/cell phone
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`and at least one recipient PDA/cell phonefor each electronic message; a forced messagealert
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`software application program includinga list of required possible responsesto be selected by a
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`participant recipient of a forced message response loaded on each participating PDA/cell phone;
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`meansfor attaching a forced messagealert software packet to a voice or text message creating a
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`forced messagealert that is transmitted by said sender PDA/cell phoneto the recipient PDA/cell
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`phone, said forced messagealert software packet containing a list of possible required responses
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`and requiring the forced message alert software on said recipient PDA/cell phone to transmit an
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`automatic acknowledgment to the sender PDA/cell phone as soon as said forced messagealertis
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`received by the recipient PDA/cell phone; means for requiring a required manual response from
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`the responselist by the recipient in order to clear recipient’s responselist from recipient’s cell
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`phone display; meansfor receiving and displaying a listing of which recipient PDA/cell phones
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`have automatically acknowledged the forced message alert and which recipient PDA/cell phones
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`have not automatically acknowledged the forced message alert; means for periodically resending
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`said forced messagealert to said recipient PDA/cell phones that have not automatically
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`acknowledged the forced message alert; and means for receiving and displaying a listing of
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`

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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 4 of 24 PageID #: 6331
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 4 of 24 PagelD #: 6331
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`whichrecipient PDA/cell phones have transmitted a manual responseto said forced message
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`alert and details the response from each recipient PDA/cell phone that responded.
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`2. The system as in claim 1, wherein the forced messagealert software application program on
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`the recipient PDA/cell phone includes: meansfor transmitting the acknowledgmentof receipt to
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`said sender PDA/cell phone immediately upon receiving a forced message alert from the sender
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`PDA/cell phone; meansfor controlling of the recipient PDA/cell phone upon transmitting said
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`automatic acknowledgment and causing, in cases where the force messagealert is a text
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`message, the text message and a responselist to be shown on the display of the recipient
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`PDA/cell phone or causes, in cases where the forced message alert is a voice message, the voice
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`message being periodically repeated by the speakers of the recipient PDA/cell phone while said
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`responselist is shown on the display; means for allowing a manual response to be manually
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`selected from the response list or manually recorded and transmitting said manual response to the
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`sender PDA/cell phone; and meansfor clearing the text message and a responselist from the
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`display of the recipient PDA/cell phone or stopping the repeating voice message andclearing the
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`responselist from the display of the recipient PDA/cell phone once the manual responseis
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`transmitted.
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`3. The system as in claim 1, wherein said data transmission means is TCP/IP or another
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`communications protocol.
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`4. The system as in claim 1, wherein the responselist that is transmitted within the forced
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`messagealert software packetis a default responselist that is embedded in the forced message
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`alert software application program.
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 5 of 24 PageID #: 6332
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 5 of 24 PagelD #: 6332
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`5. The system as in claim 1, wherein the responselist that is transmitted within the forced
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`messagealert software packet is a custom responselist that is created at the time the specific
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`forced messagealert is created on the sender PDA/cell phone.
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`6. A method of sending a forced message alert to one or more recipient PDA/cell phones within a
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`predetermined communication network, wherein the receipt and responseto said forced message
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`alert by each intended recipient PDA/cell phoneis tracked, said method comprising the steps of:
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`accessing a forced messagealert software application program on a sender PDA/cell phone;
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`creating the forced messagealert on said sender PDA/cell phone by attaching a voice or text
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`message to a forced messagealert application software packet to said voice or text message;
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`designating one or more recipient PDA/cell phones in the communication network; electronically
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`transmitting the forced messagealert to said recipient PDA/cell phones; receiving automatic
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`acknowledgements from the recipient PDA/cell phonesthat received the message and displaying
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`a listing of which recipient PDA/cell phones have acknowledgedreceipt of the forced message
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`alert and which recipient PDA/cell phones have not acknowledgedreceipt of the forced message
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`alert; periodically resending the forced messagealert to the recipient PDA/cell phones that have
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`not acknowledged receipt; receiving responses to the forced messagealert from the recipient
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`PDA/cell phones and displaying the response from each recipient PDA/cell phone; and providing
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`a manual responselist on the display of the recipient PDA/cell phonethat can only be cleared by
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`the recipient providing a required response from thelist; clearing the recipient’s display screen or
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`causing the repeating voice alert to cease upon recipient selecting a response from the response
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`list required that can only be cleared by manually selecting and transmitting a responseto the
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`manual responselist.
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`

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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 6 of 24 PageID #: 6333
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 6 of 24 PagelD #: 6333
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`7. The method as in claim 6, wherein each PDA/cell phone within a predetermined
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`communication network is similarly equipped and has the forced messagealert software
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`application program loaded onit.
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`8. The methodas in claim 6, wherein said forced messagealert application software packet
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`contains a responselist, wherein said responselist is a default list embedded in the forced
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`messagealert software application program.
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`9. The method as in claim 6, wherein said forced messagealert application software packet
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`contains a responselist, wherein said responselist is a custom responselist that is created at the
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`time the specific forced messagealert is created on the sender PDA/cell phone.
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`10. A method of receiving, acknowledging and responding to a forced messagealert from a
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`sender PDA/cell phoneto a recipient PDA/cell phone, wherein the receipt, acknowledgment, and
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`response to said forced messagealert is forced by a forced messagealert software application
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`program, said method comprising the steps of: receiving an electronically transmitted electronic
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`message; 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 messagealert 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 PDA/cell phone; transmitting an automatic acknowledgmentof
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`receipt to the sender PDA/cell phone, whichtriggers the forced messagealert software
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`application program to take control of the recipient PDA/cell phone and showthe contentof the
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`text message and a required responselist on the display recipient PDA/cell phoneor to repeat
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`audibly the content of the voice message on the speakers of the recipient PDA/cell phone and
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`show the required responselist on the display recipient PDA/cell phone; and transmitting a
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`

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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 7 of 24 PageID #: 6334
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 7 of 24 PagelD #: 6334
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`selected required response from the responselist in order to allow the message required response
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`list to be cleared from the recipient’s cell phone display, whether said selected responseis a
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`chosen option from the responselist, causing the forced message alert software to release control
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`of the recipient PDA/cell phone and stop showingthe content of the text message and a response
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`list on the display recipient PDA/cell phoneandor stop repeating the content of the voice
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`message on the speakers of the recipient PDA/cell phone; displaying the response received from
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`the PDAcell phone that transmitted the response on the sender of the forced alert PDA/cell
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`phone; and providinga list of the recipient 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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`11. The methodas in claim 10, wherein each PDA/cell phone within a predetermined
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`communication network is similarly equipped and has the forced messagealert software
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`application program loaded onit.
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`12. The methodas in claim 10, wherein said forced message alert application software packet
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`contains a responselist, wherein said responselist is a default list embedded in the forced
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`messagealert software application program.
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`13. The methodas in claim 10, wherein said forced message alert application software packet
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`contains a responselist, wherein said responselist is a custom responselist that is created at the
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`time the specific forced messagealert is created on the sender PDA/cell phone.
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`14. (New) The system as in claim 2, further comprising: means for displaying a geographical
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`map with georeferenced entities on the display of the sender PDA/cell phone; means for
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`obtaining location and status data associated with the recipient PDA/cell phone; and means for
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`

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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 8 of 24 PageID #: 6335
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 8 of 24 PagelD #: 6335
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`presenting a recipient symbol on the geographical map corresponding to a correct geographical
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`location of the recipient PDA/cell phone.
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`15. (New) The method as in claim 10, further comprising: displaying a geographical map with
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`georeferenced entities on the display of the sender PDA/cellphone; obtaining location and status
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`data associated with the recipient PDA/cellphone; and presenting a recipient symbol on the
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`geographical map corresponding to a correct geographical location of the recipient
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`PDA/cellphone based onat least the location data.
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 9 of 24 PageID #: 6336
`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 9 of 24 PagelD #: 6336
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`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
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`REMARKS
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`This paperis in responseto the Office Action dated March 3, 2021. Claims 2 and 10-13
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`(the “Challenged Claims’) are subject to reexamination and stand rejected. Patent Owner
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`respectfully traverses the rejection of Claims 2 and 10-13 for the reasons stated herein. No
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`claims are amended or cancelled in this paper. Claims 14 and 15 are added. Therefore, Claims 2
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`and 10-13 are subject to reexamination and Claims 14-15 are subject to examination.
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`Patent Owner’s Summary of Examiner Interview
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`Patent Ownerthanks the Examiners for the courtesy extended during the Examiner
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`interview on May 17, 2021 between Examiners Erik B. Kiss, Nick Corsaro, and Andrew J.
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`Fischer, and Patent Owner’s representatives, Jialin Zhong (Reg. No. 62,937), Vincent J. Rubino,
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`III (Reg. No. 68,594), and Enrique W. Iturralde (Reg. No. 72,883).
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`During the interview, Patent Owner’s representative Vincent Rubino discussed the
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`rejection of claims 2 and 10 over the Kubala and Hammondreferences, including (a) the means-
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`plus function limitation “meansfor controlling...” of claim 2, and the (b) limitation for taking
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`control and releasing control of claim 10. Patent Owner’s representative Jialin Zhong discussed
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`new claims. Examiners requested an identification of the corresponding algorithm for the
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`“meansfor controlling...” limitation of claim 2, and Examiners indicated that Patent Owner’s
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`forthcoming response and expert declaration would be given further consideration. No
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`agreement was reached during the interview.
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 10 of 24 PageID #:
`6337
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 11 of 24 PageID #:
`6338
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 12 of 24 PageID #:
`6339
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 13 of 24 PageID #:
`6340
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 14 of 24 PageID #:
`6341
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 15 of 24 PageID #:
`6342
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 16 of 24 PageID #:
`6343
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 17 of 24 PageID #:
`6344
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 18 of 24 PageID #:
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 19 of 24 PageID #:
`6346
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 20 of 24 PageID #:
`6347
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 21 of 24 PageID #:
`6348
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 22 of 24 PageID #:
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 23 of 24 PageID #:
`6350
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`Case 2:22-cv-00263-JRG-RSP Document 89-2 Filed 07/21/23 Page 24 of 24 PageID #:
`6351
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