Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 1 of 59 PageID #: 421
`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 1 of 59 PagelD#: 421
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`EXHIBIT B
`EXHIBIT B
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`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 2 of 59 PageID #: 422
`
`PTO/SB/57 (01-18)
`Approved for use through 11/30/2021. 0MB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid 0MB control number.
`(Also referred to as FORM PTO-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parle Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.: 2525.993REX0
`
`Date: May 15, 2020
`
`issued July 3, 2012
`
`1. 00 This is a request for ex parle reexamination pursuant to 37 CFR 1.51 0 of patent number 8,213,970 B2
`. The request is made by:
`D patent owner.
`[ii third party requester.
`2. 00 The name and address of the person requesting reexamination is:
`
`Jonathan Tuminaro
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`1100 New York Avenue, N.W., Suite 600, Washington, DC 20005
`
`3.
`
`4.
`
`Requester D asserts small entity status (37 CFR 1.27) or D certifies micro entity status (37 CFR 1.29). Only
`a patent owner requester can certify micro entity status. Form PTO/SB/1 SA or B must be attached to certify
`micro entity status.
`
`This request is accompanied by payment of the reexamination fee as set forth in:
`
`00 37 CFR 1.20(c)(2); or
`D 37 CFR 1.20(c)(1 ). In checking this box for payment of the fee set forth in 37 CFR 1.20(c)(1 ), requester
`
`asserts that this request has forty (40) or fewer pages and complies with all other requirements of
`37 CFR 1.20(c)(1 ).
`
`Payment of the reexamination fee is made by the method set forth below.
`
`a. D A check in the amount of$ _______ is enclosed to cover the reexamination fee;
`b. D The Director is hereby authorized to charge the reexamination fee
`c. D Payment by credit card. Form PTO-2038 is attached; or
`d. 00 Payment made via EFS-Web.
`00 In addition, the Director is hereby authorized to charge any fee deficiencies to
`
`to Deposit Account No. __________ _
`
`Deposit Account No. _1_9_-_00_3_6 _______ _
`
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`5. 00 Any refund should be made by D check or [!] credit to Deposit Account No._1_9_-0_0_3_6 ____ _
`6. 00 A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`7. D CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`D Landscape Table on CD
`
`enclosed. 37 CFR 1.51 0(b)(4).
`
`[Page 1 of 3]
`This collection of information is required by 37 CFR 1.510. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) a request for reexamination. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1 .11 and 1.14. This collection is estimated to take 18 minutes to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S.
`Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO
`THIS ADDRESS. SEND TO: Mail Stop Ex Parle Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`ff you need assistance in completing the form, ca/11-800-PTO-9199 and select option 2.
`
`Page 1 of 1942
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`

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`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 3 of 59 PageID #: 423
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,507
`
`05/15/2020
`
`8213970
`
`2525.993REX0
`
`6188
`
`07/27/2020
`7590
`22235
`Malin Haley DiMaggio & Bowen, P.A.
`Spectrum Office Building
`4901 NW 17th Way, Suite 308
`FORT LAUDERDALE, FL 33309
`
`EXAMINER
`
`KISS.ERIC B
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`07/27/2020
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Page 1664 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 4 of 59 PageID #: 424
`
`Control Number: 90/014,507
`Art Unit: 3992
`
`Page4
`
`Applicant responded by a mending claims 2, 3, and 7. Applicant again contended, intera/ia, that
`
`Keating did not disclose a forced message alert system. See '122 App., Remarks, Sep. 9, 2011, p. 7.
`
`The examiner subsequently allowed claims 2-14 upon entry of an Examiner'sAmendment
`
`removing references to a "PC" in all pending claims. '122 App., Examiner's Amendment, Apr. 25, 2012.
`
`The examiner provided the following statement of reasons for allowance of the amended claims:
`
`[C]laims 2-14 have been found to be novel and the inventive because prior art record
`fails to show or teach means for attaching a forced message alert software packet to a
`voice or text message creating a forced message alert that is transmitted by said sender
`PDA/cell phone to the recipient PDA/cell phone, said forced message alert software
`packet containing a list of possible required responses and requiring the forced message
`alert software on said recipient PDA/cell phone to transmit an automatic
`acknowledgment to the sender PD A/cell phone as soon as said forced message alert
`is received by the recipient PD A/cell phone; means for requiring a required manua I
`response from the response list by the recipient in order to clear recipient's response list
`from recipient's cell phone display; means for receiving and displaying a listing of which
`recipient PDA/cell phones have automatically acknowledged the forced message alert
`and which recipient PDA/cell phones have not automatically acknowledged the forced
`message alert.
`
`Id. at 9.
`
`Priority Date
`
`The Request contends thatthe '970 patent is not entitled to priority to any of the earlier-filed
`
`applications in its continuity cha in, and is instead entitled to a priority date of only November 26, 2008-
`
`its actual filing date, (Request at 17-20).
`
`U pan review, the examiner agrees with the contentions and evidentia ry support in the Request,
`
`(see id.), that none of the earlier-filed applications provide sufficient written description support for at
`
`least a forced-message alert software-application program, as required by each independent claims of
`
`the '970 patent. Accordingly, the examiner agreesthatthe '970 patent is entitled to a priority date of
`
`November 26, 2008.
`
`Ex Porte Reexamination - Order Granting the Request
`
`Part of Paper No. 20200727
`
`Page 1669 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 5 of 59 PageID #: 425
`
`Control Number: 90/014,507
`Art Unit: 3992
`
`Page6
`
`printed publication important in deciding whether or not the claim is patentable, unless the same
`
`question of patentability has already been decided as to the claim in a final holding of invalidity by the
`
`Federal court system or by the Office in a previous examination. MPEP § 2242.
`
`B.
`
`KubalaandHammond{SNQl)
`
`The request asserts that a substa ntia I new question of patenta bility as to claims 2 and 10-13 of
`
`the '970 patent is raised by Kubala and Hammond, (Request at 7). The examiner agrees.
`
`Neither Kubala nor Hammond were considered by the examiner during the prosecution of the
`
`application that matured into the '970 patent.
`
`As described in the Request, Kuba la discloses PD As that send and receive mandatory-response
`
`messages, (see Request at 32-35 (citing Kuba la at Abstract, FIGS. 2, 9, 11A, llC, ,i,i 22, 32, 33, 35, 36,
`
`50, 51, 57, and 61)).
`
`As described in the Request, Hammond discloses tracking acknowledgements of and responses
`
`to mandatory-response messages, (see Request at 35-37 (citing Hammond at 1:13-16, 1:21-26, 3:1-5,
`
`3:31-43, 6:3-19, 6:56-8:45, 10:5-11:48; FIGS. 2, 4, SA, SB)).
`
`Because these new and non-cummulative technica I teachings appear to be releva ntto the
`
`specific features cited by the examiner as being absent from the prior art during prosecution of the '970
`
`patent, there is a substantial likelihood that a reasonable examiner would consider these teachings
`
`important in deciding whether claims 2 and 10-13 of the '970 patent are patentable. Accordingly,
`
`Kubala and Hammond raise a substantial new question of patentability as to these claims.
`
`C.
`
`Hammond,Johnson,and Pepe{SNQ2)
`
`The request asserts that a substantial new question of patentability as to claims 2 and 10-13 of
`
`the '970 patent is raised by Hammond, Johnson, and Pepe, (Request at 8-9). The examiner agrees.
`
`Hammond, Johnson, and Pepe were not considered by the examiner in the application that
`
`matured into the '970 patent.
`
`Ex Porte Reexamination - Order Granting the Request
`
`Part of Paper No. 20200727
`
`Page 1671 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 6 of 59 PageID #: 426
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,507
`
`05/15/2020
`
`8213970
`
`2525.993REX0
`
`6188
`
`03/03/2021
`
`7590
`
`172615
`Fabricant LLP
`411 Theodore Fremd Road
`Suite 206 South
`Rye, NY 10580
`
`EXAMINER
`
`KISS.ERIC B
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`03/03/2021
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Page 1689 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 7 of 59 PageID #: 427
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEWYORKAVENUE, N.W.
`WASHINGTON, DC 20005
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,507.
`
`PATENT UNDER REEXAMINATION 8213970.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`Page 1690 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 8 of 59 PageID #: 428
`Control No.
`Patent Under Reexamination
`90/014,507
`8213970
`
`Office Action in Ex Parle Reexamination
`
`Examiner
`ERIC B KISS
`
`Art Unit
`3992
`
`AIA (FITF) Status
`No
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`a. 0 Responsive to the communication(s) filed on 15 May 2020.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`
`b. 0 This action is made FINAL.
`
`c. 0 A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire 2 month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`Part I
`1. 0 Notice of References Cited by Examiner, PTO-892.
`3. 0
`2. 0
`4. 0
`Information Disclosure Statement, PTO/SB/08.
`
`Interview Summary, PTO-474.
`
`Claims __ have been canceled in the present reexamination proceeding.
`
`Claims __ are patentable and/or confirmed.
`
`Claims 2 and 10-13 are rejected.
`
`Claims __ are objected to.
`
`0 disapproved.
`
`SUMMARY OF ACTION
`Part II
`1 a. 0 Claims 2 and 10-13 are subject to reexamination.
`1 b. 0
`Claims 1 and 3-9 are not subject to reexamination.
`2. □
`3. □
`4. 0
`5. □
`6. □
`The drawings, filed on __ are acceptable.
`0 approved (7b)
`7. □ The proposed drawing correction, filed on __ has been (7a)
`8. □ Acknowledgment is made of the priority claim under 35 U.S.C. 119(a)-(d) or (f).
`a) 0 All b)
`0 Some* c) 0 None
`of the certified copies have
`1 0 been received.
`2 0 not been received.
`3 0 been filed in Application No. __
`4 0 been filed in reexamination Control No. - -
`5 0 been received by the International Bureau in PCT application No. __
`* See the attached detailed Office action for a list of the certified copies not received.
`9. 0 Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under ExparteQuayle, 1935 C.D.
`11, 453 O.G. 213.
`
`10. 0 Other:
`
`cc: Requester (if third oartv requester)
`U.S. Patent and Trademark Office
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No.
`
`20210114
`
`Page 1691 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 9 of 59 PageID #: 429
`
`Application/Control Number: 90/014,507
`Art Unit: 3992
`
`Page 3
`
`Petitions for Inter Portes Review of commonly-assigned U.S. Pat. 9,820,123 have also been filed.
`
`Patents and Publications Cited in the Request
`
`The request cites the following prior art patents and printed publications:
`
`1)
`
`2)
`
`3)
`
`4)
`
`U.S. Pat. App. Pub. 2006/0218232 (Kubala);
`
`U.S. Pat. 6,854,007 (Hammond);
`
`U.S. Pat. 5,325,310 (Johnson); and
`
`U.S. Pat. 5,742,905 (Pepe).
`
`Additional Evidence Considered
`
`The Declaration of David Hilliard Williams, filed by the third party requester, has been
`
`considered.
`
`Priority Date
`
`The Request contends that the '970 patent is not entitled to priority to any of the earlier-filed
`
`applications in its continuity chain, and is instead entitled to a priority date of only November 26, 2008-
`
`its actual filing date, (Request at 17-20).
`
`Upon review, the examiner agrees with the contentions and evidentiary support in the Request,
`
`(see id.), that none of the earlier-filed applications provide sufficient written description support for at
`
`least a forced-message alert software-application program, as required by each independent claims of
`
`the '970 patent. Accordingly, the examiner agrees that the '970 patent is entitled to a priority date of
`
`November 26, 2008.
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
`
`and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and
`
`the rationale supporting the rejection, would be the same under either status.
`
`Page 1693 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 10 of 59 PageID #: 430
`
`Application/Control Number: 90/014,507
`Art Unit: 3992
`
`Page 4
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102, if the differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`Claims 2 and 10-13 are rejected under pre-AIA 35 U.S.C. 103{a) as being unpatentable over
`
`Kubala and Hammond.
`
`The claim chart below discusses relevant teachings of the prior art corresponding to the claim
`
`elements.
`
`Claims
`2. [A communication system for transmitting,
`receiving, confirming receipt, and responding to
`an electronic message, comprising:]
`
`Prior Art
`Kubala discloses a communication system for
`transmitting, receiving, and responding to an
`electronic message. See Kubala at ,i [0054],
`Abstract.
`
`Kubala also discloses that the communication
`system was known to "generate return receipts
`to the sender when the sender's e-mail message
`is received at its intended destination or when
`the recipient opens the e-mail message, thereby
`providing an acknowledgment that a particular
`message has been received and/or opened. Id. at
`,J[0006].
`
`[a predetermined network of participants,
`wherein each participant has a similarly equipped
`PDA/cell phone that includes a CPU and a touch
`screen display a CPU and memory;]
`
`Kubala discloses a predetermined network of
`participants, which includes a plurality of
`personal digital assistants 107, 112. Kubala at
`,J,J[0026]-[0027], Fig. lA.
`
`Each PDA/cell phone includes at least one CPU
`122, a memory 124, 126, and a user interface
`adapter 148, which Kubala describes as being
`coupled to a touch-screen display. Id. at
`,i,i [0029]-[0030], Fig. 1B.
`
`[a data transmission means that facilitates the
`transmission of electronic files between said
`PDA/cell phones in different locations;]
`
`Kubala supports a network 109, a client 110, and
`PDAs/cell phones 112 that (1) "communicate
`with one another" using, for example, TCP/IP or
`(2) "directly transfer data between themselves"
`
`Page 1694 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 11 of 59 PageID #: 431
`
`Application/Control Number: 90/014,507
`Art Unit: 3992
`
`Page 23
`
`mail message that was received from the
`sender, in which case the text strings may
`have been configured as user-specifiable
`or system-administrator-
`specifiable parameters in the sender's
`instance of the enhanced e-mail
`application."
`
`Id.; see also id. at ,i [0060]. Kubala's disclosure of
`"configurable" menu items teaches or suggests
`the claimed "custom response list."
`
`Claims 2 and 10-13 are rejected under pre-AIA 35 U.S.C. 103{a) as being unpatentable over
`
`Hammond, Johnson, and Pepe.
`
`The claim chart below discusses relevant teachings of the prior art corresponding to the claim
`
`elements. The Declaration of David Hilliard Williams (filed with the Request) is also cited below, as
`
`relevant to determining the scope and content of the prior art.
`
`Claims
`2. [A communication system for transmitting,
`receiving, confirming receipt, and responding to
`an electronic message, comprising:]
`
`Prior Art
`Hammond, Johnson, and Pepe each disclose
`communication systems for transmitting,
`receiving, and responding to electronic messages.
`See Hammond at Abstract, 2:11-18; Johnson at
`Abstract, 3:4-15, Fig. 1; Pepe at Abstract, 3:45-57,
`5:28-14:21, Figs. 1-6. And, Hammond's and
`Johnson's systems "confirm [] receipt" of
`electronic messages, as claimed. See Hammond
`at 3:1-30, 5:17-61; Johnson at 1:58-61, 3:64-4:2.
`
`Hammond, Johnson, and Pepe each disclose "a
`[a predetermined network of participants,
`wherein each participant has a similarly equipped predetermined network of participants," as
`PDA/cell phone that includes a CPU and a touch
`claimed. See Hammond at Abstract, 2:11-18;
`screen display a CPU and memory;]
`Johnson at Abstract, 2:16-31, 3:4-15, Fig. 1; Pepe
`at Abstract, 3:45-57, 5:28-14:21, Figs. 1-6. But,
`Hammond's and Johnson's networks include
`"computers." See, e.g., Hammond at 4:29-47, Fig.
`1 (describing computer systems 100, 150, 160,
`170, and 180); Johnson at 3:4-4:2, Fig. 1
`
`Page 1713 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 12 of 59 PageID #: 432
`
`Attorney Docket No.: 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Pat. No. 8,213,970)
`
`Patent Owner respectfully submits that, with the one-month extension, the proceedings
`
`will proceed with "special dispatch" under 35 U.S.C. 305, while providing the Patent Owner
`
`with a fair opportunity to present argument against the challenges to its patents. A one-month
`
`extension in this reexamination would provide a due date of June 3, 2021.
`
`CONCLUSION
`
`Given the foregoing, Patent Owner believes that this extraordinary situation warrants
`
`additional time needed to respond to the grounds ofrejection in the Non-final Office Action.
`
`Because of substantial delays arising from the COVID-19 pandemic, Patent Owner respectfully
`
`requests a one-month extension of time to file its response to the Office Action mailed on March
`
`3, 2021 in the '970 Reexam. The requested extension would Office Action would extend the
`
`current due date of May 3, 2021 to June 3, 2021.
`
`The Commissioner is further authorized to deduct any underpayment of fees or any
`
`additional fees required in connection with the filing of this paper from Deposit Account No.
`
`603614.
`
`Dated: April 12, 2021
`
`FABRICANTLLP
`230 Park Ave, 3rd Fl. W.
`New York, NY 10169
`Tel: 212-257-5797
`Fax: 212-257-5796
`
`Respectfully submitted,
`FABRICANT LLP
`
`/Peter Lambrianakos/
`Peter Lambrianakos, Reg. No. 58,279
`Attorney for Patent Owner
`Email: plambrianakos@fabricantllp.com
`
`7
`
`Page 1740 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 13 of 59 PageID #: 433
`Control No.
`Patent Under Reexamination
`
`90/014,507
`Ex Parle Reexamination Interview Summary Examiner
`
`ERIC B KISS
`
`8213970
`
`Art Unit
`
`3992
`
`AIA (FITF) Status
`
`No
`
`All participants (USPTO personnel, patent owner, patent owner's representative):
`
`(1) ERIC KISS
`
`(3) Jialin Zhong, Vincent Rubino
`
`(2) Nick Corsaro, Andrew Fischer
`
`(4) Enrique Iturralde
`
`Date of Interview: 17 May 2021
`
`Type: a)~ Telephonic
`b) □ Video Conference
`c) □ Personal (copy given to: 1) □ patent owner
`
`2) □ patent owners representative)
`
`Exhibit shown or demonstration conducted:
`If Yes, brief description: __
`
`d) □ Yes
`
`e) ~ No.
`
`Agreement with respect to the claims f) D was reached. g) ~ was not reached. h) D N/A.
`Any other agreement(s) are set forth below under "Description of the general nature of what was agreed to ... "
`Claim(s) discussed: g.
`
`Identification of prior art discussed: Kubala, Hammond .
`
`Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
`See Continuation Sheet .
`
`(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the
`claims patentable, if available, must be attached. Also, where no copy of the amendments that would render the
`claims patentable is available, a summary thereof must be attached.)
`
`A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION MUST INCLUDE PATENT OWNER'S
`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. (See MPEP § 2281 ). IF A RESPONSE TO THE
`LAST OFFICE ACTION HAS ALREADY BEEN FILED, THEN PATENT OWNER IS GIVEN ONE MONTH FROM
`THIS INTERVIEW DATE TO PROVIDE THE MANDATORY STATEMENT OF THE SUBSTANCE OF THE
`INTERVIEW
`(37 CFR 1.560(b)). THE REQUIREMENT FOR PATENT OWNERS STATEMENT CAN NOT BE WAIVED.
`EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`/Eric B. Kiss/
`Patent Reexamination Specialis, Art
`Unit 3992
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-474 (Rev. 04-01)
`
`Ex Parte Reexamination Interview Summary
`
`PaperNo.20210518
`
`Page 1766 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 14 of 59 PageID #: 434
`Continuation Sheet (PTOL-474)
`Reexam Control No.
`
`90/014,507
`
`Continuation of Description of the general nature of what was agreed to if an agreement was reached, or
`any other comments: In addition to claim 2, the parties discussed proposed new claims 14-16 (see attached
`agenda).
`
`Parties discussed the "means for controlling of the recipient PDA/cell phone ... " feature of claim 2. Patent
`Owner's representatives contended that this limitation required more than merely taking control of an email
`program, for example, because a user could hypothetically close the email program or use different software
`applications on the controlled device. The examiners stressed that the system claims must be structurally
`different from the prior art and requested clarification as to the specific structure corresponding to the
`claimed "means for controlling of the recipient PDA/cell phone". Patent Owner's representatives explained
`that the means described in the specification is software, and the examiners requested that the Patent
`Owner clarify in its response the specific algorithm within the patent disclosure that corresponds to the
`claimed feature. Similarly, with regard to proposed new claims 14 and 15, the examiners requested that
`Patent Owner specifically point out the corresponding structures for the claimed means, and to the extent
`that any of the means are software, to point to the specific algorithms disclosed in the patent.
`
`With regard to proposed new claims 15 and 16, Patent Owner's representatives indicated that the
`corresponding disclosure is found in the '728 patent, incorporated by reference into the '970 patent
`disclosure. The examiners requested that Patent Owner demonstrate in its response that such an
`incorporation is legally proper to support the proposed claims.
`
`Page 1767 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 15 of 59 PageID #: 435
`
`EXAMINER INTERVIEW AGENDA
`
`App. No.: 90/014,507
`Title: Method of utilizing forced alerts for interactive remote communications
`Examiners: Eric B. Kiss, Nick Corsaro, Andrew J. Fischer
`Time: 15:00-16:00 PM, May 17, 2021
`Communication: TBD by Examiners
`Patent Owner's Representatives: Jialin Zhong, Vincent Rubino, Enrique Iturralde
`
`Relevant Issues:
`
`1. Claims 2 and 10-13 are rejected as unpatentable over Kubala and Hammond.
`2. Claims 2 and 10-13 are rejected as unpatentable over Hammond, Johnson, and Pepe.
`
`Agenda: to discuss:
`
`1. the feature of "means for controlling of the recipient PDA/cell phone ... " recited in
`claim 2 in view of Kubala and Hammond and in view of Hammond, Johnson, and Pepe, and
`2. proposed new claims 14-16.
`
`New claims 14-16:
`
`14. (New) The system as in claim 2, further comprising means for releasing control of the
`recipient PDA/cell phone after selection of the response to the sender PDA/cell phone.
`
`15. (New) The system as in claim 2, further comprising:
`means for displaying a geographical map with georeferenced entities on the display of
`the sender PDA/cell phone;
`means for obtaining location and status data associated with the recipient PDA/cell
`phone;and
`means for presenting a recipient symbol on the geographical map corresponding to a
`correct geographical location of the recipient PDA/cell phone.
`
`16. (New) The method as in claim 10, further comprising:
`displaying a geographical map with georeferenced entities on the display of the sender
`PDA/cellphone;
`obtaining location and status data associated with the recipient PDA/cellphone; and
`presenting a recipient symbol on the geographical map corresponding to a correct
`geographical location of the recipient PDA/cellphone based on at least the location data.
`
`Date: May 13, 2021
`
`/Jialin Zhong/
`Jialin Zhong
`Reg. No.: 62,937
`
`Page 1768 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 16 of 59 PageID #: 436
`
`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`U.S. PATENT NO.:
`
`8,213,970
`
`ART UNIT:
`
`3992
`
`CONTROL
`NUMBER:
`
`90/014,507
`
`FILING DATE: May 15, 2020
`
`CONF. NO.:
`
`6188
`
`EXAMINER: Kiss, Eric B.
`
`TITLE: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
`
`FILED ELECTRO NI CALLY
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`AMENDMENT AND REPLY UNDER 37 C.F.R. 1.111 TO A NON-FINAL OFFICE
`ACTION
`
`This paper is submitted under 37 C.F.R .1.111 in response to the Office Action mailed
`
`from the Office on March 3, 2021. Owner authorizes any required fee to be charged to Deposit
`
`Account No. 60-3614.
`
`A listing of the claims begins on page 2.
`
`Remarks begin on page 9.
`
`1
`
`Page 1770 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 17 of 59 PageID #: 437
`
`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
`
`CLAIMS
`
`A listing of claims follows:
`
`1. A communication system for transmitting, receiving, confirming receipt, and responding to an
`
`electronic message, comprising: a predetermined network of participants, wherein each
`
`participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen
`
`display a CPU and memory; a data transmission means that facilitates the transmission of
`
`electronic files between said PDA/cell phones in different locations; a sender PDA/cell phone
`
`and at least one recipient PDA/cell phone for each electronic message; a forced message alert
`
`software application program including a list of required possible responses to be selected by a
`
`participant recipient of a forced message response loaded on each participating PDA/cell phone;
`
`means for attaching a forced message alert software packet to a voice or text message creating a
`
`forced message alert that is transmitted by said sender PDA/cell phone to the recipient PDA/cell
`
`phone, said forced message alert software packet containing a list of possible required responses
`
`and requiring the forced message alert software on said recipient PDA/cell phone to transmit an
`
`automatic acknowledgment to the sender PDA/cell phone as soon as said forced message alert is
`
`received by the recipient PD A/cell phone; means for requiring a required manual response from
`
`the response list by the recipient in order to clear recipient's response list from recipient's cell
`
`phone display; means for receiving and displaying a listing of which recipient PD A/cell phones
`
`have automatically acknowledged the forced message alert and which recipient PDA/cell phones
`
`have not automatically acknowledged the forced message alert; means for periodically resending
`
`said forced message alert to said recipient PD A/cell phones that have not automatically
`
`acknowledged the forced message alert; and means for receiving and displaying a listing of
`
`2
`
`Page 1771 of 1942
`
`

`

`Case 2:22-cv-00443-JRG Document 42-2 Filed 01/16/24 Page 18 of 59 PageID #: 438
`
`Attorney Docket No. 2525.993REX0
`Control No.: 90/014,507 (Re-exam of U.S. Patent No. 8,213,970)
`
`which recipient PDA/cell phones have transmitted a manual response to said forced message
`
`alert and details the response from each recipient PD A/cell phone that responded.
`
`2. The system as in claim 1, wherein the forced message alert software application program on
`
`the recipient PD A/cell phone includes: means for transmitting the acknowledgment of receipt to
`
`said sender PDA/cell phone immediately upon receiving a forced message alert from the sender
`
`PD A/cell phone; means for controlling of the recipient PD A/cell phone upon transmitting said
`
`automatic acknowledgment and causing, in cases where the force message alert is a text
`
`message, the text message and a response list to be shown on the display of the recipient
`
`PDA/cell phone or causes, in cases where the forced message alert is a voice message, the voice
`
`message being periodically repeated by the speakers of the recipient PD A/cell phone while said
`
`response list is shown on the display; means for allowing a manual re