Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 1 of 21 PageID #: 33120
`Case 5:19-cv-00036—RWS Document 649-1 Filed 03/08/21 Page 1 of 21 PageID #: 33120
`
`EXHIBIT 1
`
`EXHIBIT 1
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 2 of 21 PageID #: 33121
`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.
`
`90/014,678
`
`02/12/2021
`
`7116438
`
`2638-19.11
`
`1283
`
`03/04/2021
`7590
`177632
`BANNER & WITCOFF, LTD.
`1100 13th STREET, N.W.
`SUITE 1200
`WASHINGTON, DC 20005-4051
`
`EXAMINER
`
`GE. YUZHEN
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`03/04/2021
`
`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)
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 3 of 21 PageID #: 33122
`
`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)
`
`ERISE IP, P.A.
`7015 COLLEGE BLVD., STE 700
`OVERLAND PARK, KS 66211
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,678.
`
`PATENT UNDER REEXAMINATION 7116438.
`
`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)
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 4 of 21 PageID #: 33123
`
`Order Granting Request For
`Ex Parle Reexamination
`
`Control No.
`
`90/014,678
`
`Examiner
`
`YUZHEN GE
`
`Patent Under Reexamination
`
`7116438
`
`Art Unit
`
`AIA (FITF) Status
`
`3992
`
`No
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 02/12/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a) □ PT0-892,
`
`PTO/SB/08,
`
`c)O Other:
`
`1. 0
`
`The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`NUZHEN GE/
`Primary Examiner, Art Unit 3992
`
`cc:Requester ( if third party requester)
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 5 of 21 PageID #: 33124
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page2
`
`ORDER GRANTING REQUEST FOR EX PARTEREEXAMINATION -
`
`CONTINUED
`
`I. ACKNOWLEDGMENTS
`
`On Feb. 12, 2021, Third Party Requester ("Requester") filed a request ("Request") for
`
`ex parte reexammation of claims 1-2 and 4 ("Requested Claims") of US Patent 7,116,438 ("the
`
`'438 Patent")which issued to Maeoka et al with title "TERMINAL FOR INFORMATION
`
`PROCESSING." The '438 Patent was filed on Dec. 30, 2003 with application number
`
`10/747,267 ("the 267 Application") and issued on Oct. 3, 2006 with claims 1-7.
`
`Based on the analysis herein, ex pa rte reexammation of claims 1-7 of the '438 Patent is
`
`ordered.
`
`II. PRIORITY CLAIMS
`
`Based upon a review of the '438 Patent, the Exammer finds that the '438 Patent or the
`
`267 Application does not claim any domestic priority.
`
`The 267 Application claims foreign priority to JP 2003-144259, filed on May 22, 2003.
`
`Because the effective filing date of the '438 Patent is not on or after March 16, 2013, the
`
`AIAFirst Inventor to File ("AIA-FITF") provisions does not apply and the earlier 'First to
`
`Invent' provisions apply.
`
`III. PRIOR OR CONCURRENT PROCEEDINGS
`
`Based upon Exammer' s review of the '438 Patent itself, the Request, and its prosecution
`
`history, the Exammer finds that there are no prior or concurrent ex parte or supplemental
`
`reexammations for the '438 Patent. There was a prior inter parte reviews petition, 1.e.,
`
`IPR2020-00201, which was denied institution of Inter Partes Review.
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 6 of 21 PageID #: 33125
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`A.
`
`References Cited Herein
`
`IV. REFERENCES
`
`Page 3
`
`1.
`
`Japanese Unexammed Patent Application Publication JP 2003-6110 to
`
`Yamazaki ("Yamazaki"), published on Jan. 10, 2003.
`
`11.
`
`U.S. Patent Application Publication No. 2003/0149874 to Balfanz et al.
`
`("Balfanz"), filed on Feb. 6, 2002.
`
`m.
`
`U.S. Patent No. 7,340,214 to Hamberg ("Hamberg'), filed on Feb. 13,
`
`2002.
`
`B.
`
`Availability of References for Rejections Under35 U.S.C. § 103
`
`Reference~ i.e., Yamazaki, qualifies as prior art under § 102 (a). Yamazaki was not
`
`cited or considered during prosecution of the '438 Patent.
`Reference a i.e., Balfanz, qualifies as prior art under § 102 (e ). Balfanz was not cited
`
`nor considered during prosecution of the '438 Patent. However, Balfanz was cited in the
`
`IPR2020-00201 petition.
`
`Reference~ i.e., Hamberg, qualifies as prior art under § 102 (e). Hamberg was not cited
`
`nor considered during prosecution of the '438 Patent. However Hamberg was cited in the
`
`IPR2020-00201 petition.
`
`Because Yamazaki was not cited or considered during prosecution of the '438 Patent or
`
`the 267 Application and in the IPR2020-00201 Petition. The Requested Claims were not
`
`reviewed in the IPR2020-00201 or in the original prosecution based on Yamazaki in view of
`
`Balfanz or Yamazaki in view of Hamberg. Therefore, Yamazaki in view of Balfanz and
`
`Yamazaki in view of Hamberg can be used to raise a Substantial New Question of Patentability
`
`("SNQ") for claims 1-2 and 4 in this ex parte reexammation proceeding. See MPEP 2258.
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 7 of 21 PageID #: 33126
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page4
`
`V. PROSECUTION HISTORY
`
`The Exammer has reviewed the prosecution history file provided by the third party
`
`requester (see Request at p. 2) and basically agrees with the Requester's summary of the
`
`prosecution history.
`
`A.
`
`Original Prosecution
`
`For the 267 Application which matured into the '438 Patent, based on the independent
`
`review of the Exammer, the prosecution history can be summarized as: after the non-final Office
`
`action on Oct. 19, 2005 and Applicant amended independent claims 1 and 4 by adding these
`
`following limitations :
`
`said first short-distance communication unit using said input, carries out
`an authentication process for allowance to use said display apparatus;
`said second communication unit carries out data exchange with said
`display apparatus if said authentication process is affirmed; and
`said second communication unit does not carry out data exchange with
`said display apparatus if said authentication process is not affirmed.
`
`On May 17, 2006, a Notice of Allowability was sent by the Office indicating the
`
`following as reasons for allowance:
`
`a first short-distance communication unit for carrying out a short-distance
`communication with a display apparatus or information processing termmal;
`and a second communication unit for carrying out a communication with
`the display apparatus or information-processing termmal through a network;
`wherein the first short-distance communication unit using the input,
`carries out an authentication process for allowance to use the display apparatus or
`information processing termmal;
`the second communication unit carries out data exchange with the display
`apparatus or information-processing termmal if the authentication process
`is affirmed; and
`the second communication unit does not carry out data exchange with the
`display apparatus or information-processing termmal if the authentication process
`is not affirmed.
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 8 of 21 PageID #: 33127
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`B.
`
`IPR2020-00201
`
`Page 5
`
`In IPR2020-00201, PTAB did not instituted an inter parte reviews (IPR) based on
`
`different combinations of references by Nagano in view of Balfanz and Nagano in view of
`
`Balfanz and/or Hamberg and based on the reason that "the information presented does not show
`
`there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of
`
`any challenged claim of the '438 Patent." (Decision Denying Institution of Inter Partes Review,
`
`Jun. 19, 2020, p. 1).
`
`C.
`
`Conclusion
`
`Based on the prosecution history, a reference or a combination of references that
`
`discloses or make obvious the limitations of:
`
`the first short-distance communication unit using the input, carries out an
`authentication process for allowance to use the display apparatus or information
`processing terminal;
`the second communication unit carries out data exchange with the display
`apparatus or information-processing terminal if the authentication process is
`affirmed ; and the second communication unit does not carry out data exchange
`with the display apparatus or information-processing terminal if the authentication
`process is not affirmed
`
`in the context of
`
`a first short-distance communication unit for carrying out a short-distance
`communication with a display apparatus or information processing terminal;
`and a second communication unit for carrying out a communication with
`the display apparatus or information-processing terminal through a network;
`
`will raise an SNQ.
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 9 of 21 PageID #: 33128
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page 6
`
`VI. PROPOSED SUBSTANTIAL NEW QUESTION OF PATENTABILITY
`
`A.
`
`Proposed SNQs
`
`The Request alleges the following substantial new questions of patentability (SNQs)
`
`based on the above-identified art:
`
`SNQI: Claims I and 4 are unpatentable under 35 U.S.C. 103 over Yamazaki and
`
`Balfanz.
`
`SNQ2: Claim 2 is unpatentable under 35 U.S.C. 103 over Yamazaki in view of Balfanz
`
`and further in view of Hamberg.
`
`SNQ3: Claims 1, 2, and 4 are unpatentable under 35 U.S.C. 103 over Yamazaki and
`
`Hamberg.
`
`B.
`
`SNQl: Claims 1 and 4 - Yamazaki in viewofBalfanz
`
`I 1 3l .
`
`~ '.·i f~li.;.:t!- ,;_~( :,_1~~ :i~m
`
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`!)
`i
`
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`
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`·"['[~,;:' i:i..llJf:C:tlt:--.: ,l]');:: l'il,'f) i:i:•~•:i-ifr1,_--;~k~-. ~:
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`t, kR'S.'; ,;:.c,~;:t:~~;'t Th,
`
`l
`7
`
`-Fig. 2 of Yamazaki.
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 10 of 21 PageID #: 33129
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page 7
`
`Yamazaki teaches a mobile information terminal I configured with two separate wireless
`
`transceivers-a Bluetooth communication part 25 and wireless communication part 24 (i.e., a
`
`cellular transceiver) (Fig. 2 of Yamazaki). Yamazaki further teaches that either wireless
`
`transceiver may communicate with electronic Bulletin Board 5, allowing a user to be
`
`authenticated and to post information to the Bulletin Board (e.g., advertisements,
`
`classified listings, etc.) (Fig. 2 and Fig. 21 of Yamazaki). Yamazaki teaches that a user's
`
`Bulletin Board posts may include more than simple text. For example, Yamazaki discloses
`
`allowing a user to include an "attachment file" that may be opened and displayed on the
`
`electronic Bulletin Board (Yamazaki, paragraph [0049]). Fig. 17 of Yamazaki illustrates one
`
`such example in which a posting indicates that the user is waiting at a particular location, and the
`
`attachment includes a map of the user's location). Yamazaki further discloses a process by which
`
`a user can provide images to be displayed via URL links in an uploaded post (paragraph [0049]
`
`and [0058], Fig. 18 illustrates on such example in which a restaurant ad includes a URL, which
`
`links to an image of the restaurant itself).
`
`Claim I of the '438 Patent recites:
`
`1. An information-processing terminal comprising:
`an input unit for receiving an input entered by a user;
`a first short-distance communication unit for carrying out a short-distance
`communication with a display apparatus; and
`a second communication unit for carrying out a communication with said
`display apparatus through a network;
`wherein said first short-distance communication unit using said input,
`carries out an authentication process for allowance to use said display apparatus;
`said second communication unit carries out data exchange with said
`display apparatus if said authentication process is affirmed; and
`said second communication unit does not carry out data exchange with
`said display apparatus if said authentication process is not affirmed.
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 11 of 21 PageID #: 33130
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page 8
`
`rn::1 \:vaiting
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`
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`
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`
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`
`-Figs. 17-18 of Yamazaki.
`
`\
`
`7
`
`Regarding claim 1, Yamazaki teaches an information-processing terminal (Yamazaki,
`
`mobile information terminal I in Fig. 2) comprising:
`
`an input unit for receiving an input entered by a user (Yamazaki, paragraphs [0016] and
`
`[0020], a user can input identification information or keyword information, see also Figs. 8-10);
`
`a first short-distance communication unit for carrying out a short-distance
`
`communication with a display apparatus (Yamazaki, Fig. 2, Bluetooth communication part 25 is
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 12 of 21 PageID #: 33131
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page 9
`
`a first short-distance communication unit, paragraph [0020], Bulletin Board 5 is the display
`
`apparatus); and
`
`a second communication unit for carrying out a communication with said display
`
`apparatus through a network (Yamazaki, Fig. 2, wireless communication part 24, the
`
`communication is via a wireless network, see also paragraph [0056] and Fig. 21);
`
`wherein said first short-distance communication unit using said input, carries out an
`
`authentication process for allowance to use said display apparatus (Yamazaki, Fig. 3 shows that
`
`the mobile terminal sends information, posting conditions and terminal ID to electronic Bulletin
`
`Board 5, paragraphs [0027]-[0028] discloses that the first communication unit sends terminal ID,
`
`posting conditions to the Bulletin Board 5. Sending the terminal ID to the Bulletin Board 5 is
`
`carrying out an authentication process for permission to post on or acquire information from the
`
`Bulletin Board 5. See also paragraph [0060] which discloses sending a carrier code to the
`
`Bulletin Board 5 and check if the codes match to authenticate. This is similar to the '438 Patent
`
`see Fig. 7 of the '438 Patent, the authentication process carried out by the terminal is to send ID
`
`and password to the display apparatus in the '438 Patent).
`
`[0027] Then, after the posting conditions are set, when the CPU 23 detects that an
`operation of sending the previously created information
`to the electronic
`bulletin board 5 is performed ("YES" in step A5), it causes the Bluetooth
`link with
`communication part 25 to establish a Bluetooth communication wireless
`the electronic Bulletin Board 5 and to send the previously created information and
`previously set posting conditions along with a terminal ID uniquely assigned to the
`mobile information terminal 1 of the information poster from the Blue tooth
`communication part 25 to the electronic Bulletin Board 5 (step A6).
`
`[0028] In the electronic Bulletin Board 5, when the CPU 27 detects that the Bluetooth
`communication part 28 has received the information, the posting conditions, and the
`terminal ID from the mobile information terminal I of the information poster ("YES"
`in step Cl), it sends the received terminal ID of the information poster from the
`communication part 31 to the host server 13 through the internet 14 (step C2).
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 13 of 21 PageID #: 33132
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page 10
`
`[0029] When the host server 13 detects that the termmal ID of the information poster
`is received from the electronic Bulletin Board 5 through the internet 14 ("YES" in
`step DI), the received termmal ID of the information poster is authenticated by the
`authentication
`server 15 based on authentication
`information
`stored
`in
`the
`authentication database 19 (step D2).
`
`-paragraphs [0027]-[0029] of Yamazaki.
`
`Also Figs. 13-15 of Yamazaki shows when the authentication is true, then posting or
`
`acquiring information is performed and when the authentication is false, no posting or acquiring
`
`information with the Bulletin Board 5 is performed by the mobile termmal using any of the
`
`communication units including the second communication unit.
`
`Therefore Yamazaki also discloses "said second communication unit does not carry out
`
`data exchange with said display apparatus if said authentication process is not affirmed."
`
`It appears that Yamazaki does not expressly disclose "said second communication unit
`
`carries out data exchange with said display apparatus if said authentication process is affirmed."
`
`In other words, Yamazaki discloses using the Bluetooth communication part 25 to post or
`
`acquire information from the Bulletin Board 5 or wireless communication part or
`
`telecommunication through a mobile phone network 41 (Yamazaki, Fig. 21). However
`
`Yamazaki does not expressly teach using the wireless communication part 24 to post to or
`
`acquire information from the Bulletin Board 5 if authentication is affirmed.
`
`In the field of system and methods for authentication communication in a network
`
`medium, Balfanz discloses a method of for authenticating a communication over a network
`
`medium between a first wireless device and a second wireless device (Balfanz, Abstract).
`
`Balfanz teaches a first "location-limited communication channel" or "a first communication
`
`unit" that is used to exchange authentication information between the devices and a
`
`second "main wireless link'' or "a second communication unit" that is used for communications
`
`after the location-limited authentication exchange (Balfanz, paragraphs [0034-0036] and Fig. 3).
`
`Ex Parte Reexamination - Order Granting Ex Parte Reexamination
`
`Part of Paper No. 20210219
`
`

`

`Case 5:19-cv-00036-RWS Document 649-1 Filed 03/08/21 Page 14 of 21 PageID #: 33133
`
`Control Number: 90/014,678
`Art Unit: 3992
`
`Page 11
`
`314--.._
`
`.----340
`I
`f I r I 1 , 1 (
`,-324
`
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`
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`
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`
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`
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`
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`
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`
`FIG. 3
`
`-Fig. 3 of Balfanz.
`
`[0034] If the first wireless device 310 initiate communication with the second
`wireless device 320, the first wireless device 310 initially sends pre-authentication
`information through the location-limited channel receiver/transmitter 312 to the
`second wireless device 320 via the location-limited channel 330. The second
`wireless device 320 receives the pre-authentication information from the first
`wireless device 310 through the location-limited channel receiver/transmitter 322.
`
`[0035] In various embodiments, where mutual authentication is not required, for
`example, where the second wireless device 320 is a wireless printer that services
`any request, the first wireless device 310 does not need to send pre-authentication
`information to the second wireless device 320. A wireless device that does not
`mutually exchange pre-authentication information with another wireless device
`cannot authenticate the communication received from the other wireless device.
`Thus, that wireless device is unprotected against attacks by an eavesdropper.
`Thus, where mutual authentication is required, such as an exchange of sensitive
`information between two wireless devices, such as between two laptop computers,
`the second wireless device 320 responds by sending additional pre-authentication
`information through the location-limited channel receiver/transmitter 322 to the
`wireless device 310 via the location-limited channel 330.
`
`[0036] The first wireless device 310 receives the pre-authentication information
`through its location-limited channel receiver/transmitter 312. With the pre-
`
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`authentication information exchanged between the first and second wireless
`device 310 and 320, the first wireless device 310 uses the main wireless link
`receiver/transmitter 314 to communicate with the second wireless device 320 via
`the main wireless link 340. The second wireless device 320 uses its main wireless
`link receiver/transmitter 324 to communicate with the first wireless device 310
`via the main wireless link 340. Because pre-authentication information has been
`exchanged between the two wireless devices 310 and 320 in both directions, each
`of the first and second wireless devices 310 and 320 authenticates the
`communication of the other wireless device 320 and 310, respectively, using the
`received pre-authentication information received from that other wireless device
`320 or 310, respectively.
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`-paragraphs [0034]-[0036] of Balfanz.
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`Balfanz explains that security benefits result from ensuring the location-limited channel
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`"has physical limitations" and notes that "the amount of information exchanged across the
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`location-limited channel is a small fraction of the amount of information sent across the main
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`wireless link because the location-limited channel usually has limited data rate." (Balfanz,
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`paragraphs [0041] and [0046]). Accordingly, the Balfanz method allows a system to realize the
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`security benefits of a location-limited channel while also realizing the bandwidth benefits of a
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`main wireless channel for post-authentication communications. In other words, Balfanz discloses
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`the limitation "said second communication unit carries out data exchange with said display
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`apparatus if said authentication process is affirmed."
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`Therefore the combination of Yamazaki and Balfanz discloses the limitations of claim 1
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`that were found important to the patentability of claim 1 of the '438 Patent. The teachings of
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`Yamazaki and Balfanz, discussed herein, are not cumulative to any written discussion on the
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`record of the teachings of the prior art, and were not previously considered nor addressed during
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`a prior examination, and the same question was not the subject of a final holding of invalidity in
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`the Federal Courts. Accordingly, the Examiner finds that a reasonable examiner would consider
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`the teacmngs important to the aforementioned claims. Therefore Yamazaki and Balfanz raises
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`an SNQ to claim I of the '438 Patent.
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`Claim 4 recites a display apparatus which is in communication with the mobile
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`information terminal of claim 1. Yamazaki discloses a display apparatus (the Electronic bulletin
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`board in Fig. 2) that comprises a first short-range communication unit, second communication
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`unit (Fig. 2). Yamazaki and Balfanz raises an SNQ to claim 4 of the '438 Patent based on the
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`similar analysis set forth above for claim 1.
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`C.
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`SNQ2: claim 2 - Yamazaki in viewofBalfanz and Hamberg
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`Claim 2 depends on claim I and further limits independent claim 1. Because Yamazaki
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`in view of Balfanz raises an SNQ to claim I and claim 2 depends on claim I and because claim 2
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`was allowed based on the limitations of claim I in the prosecution of the '438 Patent, Yamazaki
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`and Balfanz in view of Hamberg also raises an SNQ to claim 2.
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`D.
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`SNQ3: claims 1-2 and 4 - Yamazaki in view of Hamberg
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`As explained above under SN Q 1, Yamazaki discloses the limitations of claim I except
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`the limitation "said second communication unit carries out data exchange with said display
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`apparatus if said authentication process is affirmed."
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`In the field of short-range wireless system and multimedia tags, Hamberg discloses an
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`electronic bulletin board in which users post "tags" comprising text and multimedia content and
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`in which a short-range Bluetooth transceiver is used to upload the text and a higher bandwidth
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`cellular transceiver is used to upload the multimedia:
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`The multimedia messages contained in an electronic tag can be extracted and
`relayed over the cellular telephone network as a multimedia message. The best
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`aphorisms, jokes, etc. from "the wall" server can be circulated. It is not the
`electronic tag, itself, that is transmitted over the cellular network, but the
`multimedia content of the tag. The electronic tag, itself, can only be transferred
`over a short-range wireless radio link, such as a Bluetooth link, to preserve the
`close proximity of the sender and the receiver.
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`-col. 10, lines 37-46, Hamberg.
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`In other words, Hamberg discloses using a second communication unit to communicate
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`via a cellular network to carry out data exchange with another apparatus instead of short-range
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`Bluetooth communication unit.
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`Therefore the combination of Yamazaki and Hamberg discloses the limitations of claim
`
`1 that were found important to the patentability of claim 1. The teachings of Yamazaki and
`
`Hamberg, discussed herein, are not cumulative to any written discussion on the record of the
`
`teachings of the prior art, and were not previously considered nor addressed during a prior
`
`examination, and the same question was not the subject of a final holding of invalidity in the
`
`Federal Courts. Accordingly the Examiner finds that a reasonable examiner would consider the
`
`teachings important to the aforementioned claims. Therefore Yamazaki and Hamberg raises an
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`SNQ to claim 1 of the '438 Patent.
`
`Claim 2 depends on claim 1 and further limits independent claim 1. Because Yamazaki
`
`in view of Hamberg raises an SNQ to claim 1 and claim 2 depends on claim 1 and because claim
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`2 was allowed based on the limitations of claim 1 in the prosecution of the '438 Patent,
`
`Yamazaki and Hamberg in view of Hamberg also raises an SNQ to claim 2.
`
`Claim 4 recites a display apparatus which is in communication with the mobile
`
`information terminal of claim 1. Yamazaki discloses a display apparatus (the Electronic bulletin
`
`board in Fig. 2) that comprises a first short-range communication unit, second communication
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`unit (Fig. 2). Yamazaki and Balfanz raises an SNQ to claim 4 of the '438 Patent based on
`
`similar analysis set forth above for claim 1.
`
`E.
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`Claims 3 and 5-7
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`Claims 3 and 5-7 are not requested to be reexamined in this ex parte reexamination
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`proceeding. However because Yamazaki in view of Balfanz and Yamazaki in view of Hamberg
`
`raise an SNQ to independent claims I and 4 of the '438 Patent, Yamazaki in view of Balfanz and
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`Yamazaki in view of Hamberg also raise an SNQ to dependent claims 3 and 5-7 of the '438
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`Patent. See MPEP § 2243 which states "The decisions to reexamine any claimfor which
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`reexamination has not been requested under 35 U.S.C. 302 lies solely with the discretion of the
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`Office."
`
`VII. PATENT OWNER STATEMENT (OPTIONAL)
`
`In response to this Order for Reexamination, the Patent Owner is given a two (2) month
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`period to file an optional Patent Owner Statement in accordance with 37 C.F.R. l.530(b) and (c).
`
`The Patent Owner Statement must clearly point out why the patent claims are believed to be
`
`patentable, considering the cited prior art patents or printed publications alone or in any
`
`reasonable combination. In addition, the Patent Owner may utilize the Patent Owner Statement
`
`to introduce amendments. A copy of the Patent Owner Statement must be served on the Third
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`Party Requester. See MPEP § 2249.
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`If a Patent Owner Statement is timely filed and served on the Third Party Requester, the
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`Third Party is given the opportunity to reply within two (2) months from the date of service in
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`accordance with 37 C.F.R. 1.535. The reply need not be limited to the issues raised in the Patent
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`Owner Statement and may include additional prior art patents and printed publications as well as
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`any issue appropriate for reexammation. A copy of the reply must be served on the Patent
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`Owner. If no Patent Owner Statement is filed, no reply is permitted from the Third Party
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`Requester. See MPEP § 2251.
`
`VIII. EX PARTE REEXAMINATION REMINDER
`
`A.
`
`Specific Explanation of Support Must be Provided
`37 CFR 1.530 (e) states:
`
`(e) Status of claims and support for claim changes. Whenever there is an
`amendment to the claims pursuant to paragraph ( d) of this section, there must also
`be supplied, on pages separate from the pages containing the changes, the status
`(i.e., pending or canceled), as of the date of the amendment, of all patent claims
`a