Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 1 of 12 PageID #: 1478
`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 1 of 12 PagelD#: 1478
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`EXHIBIT 11
`EXHIBIT 11
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 2 of 12 PageID #: 1479
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`Attorney Docket No, 194.0020-00000
`Customer No. 22882
`
`Confirmation No.: 8452
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`Group Art Unit 2646
`Examiner: Charles Terrell Shedrick
`
`)
`In re Application of:
`)
`Michael Faerber et al.
`Serial No.: 12/450,608
`)
`)
`Filed: February 2, 2010
`)
`For: METHOD, NETWORK AND
`)
`DEVICE FOR INFORMATION
`PROVISION BY USING PAGING AND )
`CELL BROADCAST SERVICES
`)
`
`Mail Stop RCE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Sir:
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`AMENDMENT
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`Prior to the further examination of the above-identified application and in reply to
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`the Final Office Action of January 30, 2014 ("Office Action"), the period for reply having
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`been extended for two (2) months by a request for extension and fee payment filed
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`concurrently herewith, the Applicant proposes that this application be amended as
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`follows:
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`Amendments to the Claims are reflected in the listing of claims, which begins on
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`page 2 of this paper.
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`Remarks begin on page 7 of this paper.
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`Amendment 06-26-14 - 1940020-00000
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`

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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 3 of 12 PageID #: 1480
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
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`Amendments to the Claims:
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`This listing of clainls will replace all prior versions, and listings, of claims in the
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`application:
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`Listing of Claims:
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`Claims 1-10 (canceled).
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`11.
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`(currently amended) A method of communicating with a terminal in a cellular
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`wireless communication system, the method comprising:
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`storing, at the terminal of the cellular wireless communication system, a
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`group of specific identifiers common to a plurality of terminals supporting an
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`emergency warning, at least two specific identifiers in the group of the specific
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`identifiers being for different types of emergencies, the cellular wireless
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`communication system being a bi-directional cellular wireless communication
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`system between a base station and the glurality of terminals;
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`checking, by the terminal, whether a paging message received from a-the
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`base station includes at least one specific identifier of the group of the specific
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`identifiers; aAG
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`switching directly, by the terminal, to a broadcast mode for receiving
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`broadcast content on a broadcast channel only if the received paging message
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`includes the at least one specific identifier of the group of the specific identifiers,
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`'Nithout requesting resources from the cellular vvireless commuAicatioA system, at
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`leaffi tv~'g. ~ecffiB iGet-HffieFS fH -I:~i-8 -§fau~ Bf tfl.& s~siHe iOOfi-l:4f&rS .ee+A§ faF
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`differeAt types of emergencies; and
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`establishing, by the terminal~ at least one of a Qhysical channel and a
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`logical channel onlv if the received paging message includes a temporary mobile
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`subscriber identity allocated to the terminal.
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`12.
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`(previously presented) A method according to clainl 11, wherein the terminal is a
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`mobile terminal attached to a mobile network, and the broadcast mode is a
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`Global System for Mobile Communications cell-broadcast mode.
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`13.
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`(currently amended) A method according to claim 11) wherein the terminal at
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 4 of 12 PageID #: 1481
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
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`least one of notifies and displays to a user of the terminal the broadcast content
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`received from the base station.
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`14.
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`(previously presented) A method according to claim 11, wherein a duration of
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`the broadcast mode is dependent on the at least one specific identifier of the
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`group of the specific identifiers.
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`15.
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`(previously presented) A method according to claim 11) wherein the group of the
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`specific identifiers are temporary subscriber mobile identities.
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`16.
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`(currently amended) A terminal operating in a cellular wireless communication
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`system having a plurality of terminals, the terminal comprising:
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`a memmy unit configured to:
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`store a group of specific identifiers common to the plurality of the
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`terminals supporting an emergency warning, at least two specific
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`identifiers in the grouQ of the sQecific identifiers being for different types of
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`enlergencies, the cellular wireless comnlunication system being a bi(cid:173)
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`directional cellular wireless communication system between a base station
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`and the Qlurality of terminals; and
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`a control unit configured to:
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`check whether a paging message received from a-the base station
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`includes at least one specific identifier of the group of the specific
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`identifiers; f:IftG
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`switch directly to a broadcast mode for receiving broadcast content
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`on a broadcast channel only if the paging message received frorn the
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`base station includes the at least one specific identifier of the group of the
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`specific identifiers, without requesting resources from the cellular wireless
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`€-er-nmI::IHiGat·foo··syst-eftlj··at··l-east··twe-··SFleGffi-c··IDffitifi-eFS··iH··tf.1B··gf0l:l-P·0f·.th·e
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`sFlecific identifiers being for different tYFles of emergencies: and
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`establish at least one of a physical channel and a logical channel
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`only if the received paging message includes a temporarv mobile
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`subscriber identity allocated to the terminal.
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`17.
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`(previously presented) A terminal according to claim 16, wherein the terminal is
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 5 of 12 PageID #: 1482
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
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`a mobile terminal attached to a mobile network and the broadcast mode is a
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`Global System for Mobile Communications cell-broadcast mode,
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`18.
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`(currentlyanlended) A terminal according to claim 16, further comprising:
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`an acoustical unit configured to notify a user of the terminal of tile
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`broadcast content received from the base station; and
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`a display unit configured to display the f€-Cef¥eG broadcast content to the
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`user of the terminal,
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`19.
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`(previously presented) A terminal according to claim 16, wherein a duration of
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`the broadcast mode is dependent on the at least one specific identifier of tile
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`group of the specific identifiers.
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`20.
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`(currently amended) A cellular wireless communication systenmetwork
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`OOffHlitfA+cat+Ag. wit!:l teftl'tiABl& aAd adapted to implement a cell broadcast service
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`and a paging mode, the network system comprising:
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`a transmitter configured to broadcast content and transmit at least one
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`paging message to tJ:1.e.-a plurality of terminals in a cell, the cellular wireless
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`communication system being a bi-directional cellular wireless communication
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`system between the transmitter and tile Qlurality of terminals; and
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`athe plurality of tJ:1.e.-terminals. each of the Qlurality of terminals comQrising:
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`a memory unit configured to:
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`storestefiAg a group of specific identifiers supporting an
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`emergency warning;, at least two specific identifiers in the g,rouQ of
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`the sQecific identifiers being for different tYQes of emergencies:
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`and, the at least OAe paging message iAcluding at least one
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`specific identifier of the group of the specific identifiers for directly
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`a control unit configured to:
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`check whether the at least one Qaging message received
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`from the transmitter includes at least one sQecific identifier of the
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`group of the specific identifiers;
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`switchsvvitching the terminals to a broadcast support mode
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`for receiving the ~aadcast content transmitted by the transmitter
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`-4-
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 6 of 12 PageID #: 1483
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
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`on a broadcast ctlannel only if the at least one paging message
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`transmitted by the transmitter includes the at least one specific
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`identifier of the group of the specific identifiers, at least two specific
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`+Elm~tifi.efS ift me §-ffiti-f:) &f j;fqe E>i300ifi€
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`ffiootifieFs 1geifi§ fer- e+ffeFooj;
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`types of emergencies~ and
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`establish at least one of a Qtwsical channel and a logical
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`channel only if the received paging message includes a temporary
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`mobile subscriber identity allocated to the terminal.
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`21.
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`(currently amended) A terminal operating in a cellular wireless communication
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`system having a plurality of terminals, the terminal comprising:
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`a mer-nory unit configured to store a group of specific identifiers common
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`to the plurality of the terminals supporting an emergency warning, at least two
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`sQecific identifiers in the grouQ of the sQecific identifiers being for different types
`
`of emergencies, the cellular wireless communication systenl being a bi(cid:173)
`
`directional cellular wireless communication system between a base station and
`
`the Qlurality of terminals; and
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`at least one programmed processor configured to:
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`check whether a paging message received from a-the base station
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`includes at least one specific identifier of the group of the specific
`
`identifiers; a-RG
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`switch eirectly to a broadcast mode for receiving broadcast content
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`on a broadcast channel only if the paging message received from the
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`base station includes the at least one specific identifier of the group of the
`
`specific identifiers, without waiting to confirm accurate receipt of an
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`em erg ency wa rn i ng m essage·-aAG-witt-1ol:l-1--r-eql:lBStifi§--F&OOlli£-8S--fr-om--U18
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`cellular '.'lireless communication system, at least tvvo specific identifiers in
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`the group of the specific ieentifiers being for different tyf:)es of
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`e ffi8f§-oocies; and
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`-5-
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 7 of 12 PageID #: 1484
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
`
`establish at least one of a g,hvsical cllannel and a logical channel
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`only if the received paging message includes a temporary mobile
`
`subscriber identity allocated to the terminal.
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`22.
`
`(previously presented) A method according to claim 14, wherein the duration of
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`the broadcast mode is for an indefinite length of time or for a limited duration of
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`time based on the at least one specific identifier of the group of the specific
`
`identifiers.
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`23.
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`(previously presented) A terminal according to claim 19, wherein the duration of
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`the broadcast mode is for an indefinite length of time or for a limited duration of
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`time based on the at least one specific identifier of the group of the specific
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`identifiers.
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`24.
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`(currently amended) A A€t'"vefk: system according to claim 20, wllerein a duration
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`of the broadcast mode is dependent on the at least one specific identifier of the
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`group of the specific identifiers.
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`25.
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`(currently amended) A netvvork system according to claim 24, wherein the
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`duration of the broadcast mode is for an indefinite length of time or for a limited
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`duration of time based on the at least one specific identifier of the group of the
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`specific identifiers.
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`26.
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`(previously presented) A terminal according to claim 21, wherein a duration of
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`the broadcast mode is dependent on the at least one specific identifier of the
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`group of the specific identifiers.
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`27.
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`(previously presented) A terminal according to claim 26, wherein the duration of
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`the broadcast mode is for an indefinite length of time or for a limited duration of
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`time based on the at least one specific identifier of the group of the specific
`
`identifiers.
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`-6-
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 8 of 12 PageID #: 1485
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
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`Applicant amended claims 11, 13, 16, 18, 20, 21, 24, and 25 (including
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`independent claims 11, 16, 20, and 21) to further define Applicant's claimed invention.
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`REMARKS
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`I. Rejections under 35 U.S.C. § 103{a).
`
`A. Case law regarding obviousness under 35 U.S.C. § 103(a).
`
`The framework governing obviousness under 35 U.S.C. § 103(a), as set forth in
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`Graham et al. v. John Deere Co. of Kansas City et ai., 383 U.S. 1, 148 U.S.P.Q. 459
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`(1966), has recently been reaffirmed in KSR International Co. v. Teleflex Ince et al.
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`(See KSR v. Teleflex, 127 S.Ct. 1727 (2007).) Under Graham v. John Deere, a
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`combination of references that does not teach or suggest each and every element of
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`the claimed invention supports a finding of non-obviousness. Furthermore,
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`according to the Federal Circuit, "a searching comparison of the claimed invention -
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`including alt its limitations - with the teachings of the prior art" is required of the
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`Examiner when determining whether a claim is obvious. (In re Ochiai, 71 F.3d 1565,
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`1572 (Fed. Cir. 1995) (emphasis added).) As such, "obviousness requires a suggestion
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`of all limitations in a claim." (CFMT, Inc. v. YieidUP InrI. CorQ., 349 F.3d 1333, 1342
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`(Fed. Cir. 2003) (citing In re Rovka, 490 F.2d 981, 985 (C.C.P.A. 1974)).) Accordingly,
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`a combination of references that does not result in each and every limitation of the
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`claimed invention can be detenilinative of a finding of non-obviousness and can defeat
`a rejection under 35 U.S.C. § 103(a).
`
`B. Rejection of claims 11: 13t 16: 1St 20: and 21 {including indeQEmdent
`claims 11, 16.20. and 21) based on Cragun in view of Aaron.
`
`In the Office Action, the Examiner (at page 2, line 22 to page 4, line 9) rejected
`
`claims 11, 13, 16, 18, 20, and 21 (including independent claims 11, 16, 20, and 21)
`
`under 35 U.S.Ce § 103(a) as being unpatentable over U.S. Patent No.6, 177,873 to
`Cragun ("Cragun") in view of U.S. Publication No. 2006/0128355 to Aaron ("Aaron").
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`-7-
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 9 of 12 PageID #: 1486
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
`
`(1) Rejection of independent claim 11"
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`Independent claim 11 has been amended to recite "storing, at the terminal of the
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`cellular wireless communication system, a group of specific identifiers cmnmon to a
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`plurality of terminals supporting an emergency warning, at least two specific identifiers
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`in the group of the specific identifiers being for different types of emergencies, the
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`cellular wireless cmnmunication system being a bi-directional cellular wireless
`
`communication system between a base station and the plurality of terminals," and
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`"switching, by the terminal, to a broadcast mode for receiving broadcast content on a
`
`broadcast channel only if the received paging message includes tile at least one
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`specific identifier of the group of the specific identifiers; and establishing, by the
`
`terminal, at least one of a physical channel and a logical channel only if the received
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`paging message includes a temporary mobile subscriber identity allocated to the
`
`terminal." The combination of Cragun and Aaron does not disclose the above-quoted
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`recitations of amended independent clainl 11" Therefore, Applicant respectfully
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`submits that amended independent claim 11 is patentable over the rejection under 35
`
`U.S.C. § 1 03(a) based on Cragun and Aaron.
`(2) Rejection of independent claim 16.
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`Independent claim 16 has been amended to recite "a memory unit configured to:
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`store a group of specific identifiers common to the plurality of the terminals supporting
`
`an emergency warning, at least two specific identifiers in the group of the specific
`
`identifiers being for different types of emergencies, the cellular wireless communication
`
`system being a bi-directional cellular wireless communication systenl between a base
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`station and the plurality of terminals," and "a control unit configured to:."switch to a
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`broadcast mode for receiving broadcast content on a broadcast channel only if the
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`paging message received from tile base station includes the at least one specific
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`identifier of the group of the specific identifiers; and establish at least one of a physical
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`channel and a logical channel only if the received paging message includes a
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`temporary mobile subscriber identity allocated to the terminal." The combination of
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`Cragun and Aaron does not disclose the above-quoted recitations of amended
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`independent claim 16. Therefore, Applicant respectfully submits that amended
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 10 of 12 PageID #: 1487
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`Application NOe 12i450,608
`Amendment dated June 26, 2014
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`independent claim 16 is patentable over the rejection under 35 U.S.C. § 103(a) based
`
`on Cragun and Aaron.
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`(3) Rejection of independent claim 20.
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`Independent claim 20 has been amended to recite a "cellular wireless
`
`communication system being a bi-directional cellular wireless communication system
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`between the transmitter and the plurality of terminals; and the plurality of terrilinals,
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`each of the plurality of terminals comprising: a memory unit configured to: store a group
`
`of specific identifiers supporting an emergency warning, at least two specific identifiers
`
`in the group of the specific identifiers being for different types of emergencies," and "a
`
`control unit configured to: ... switch to a broadcast support mode for receiving the
`
`content transmitted by the transmitter on a broadcast channel only if the at least one
`
`paging message transmitted by the transmitter includes the at least one specific
`
`identifier of the group of the specific identifiers; and establish at least one of a physical
`
`channel and a logical channel only if the received paging message includes a
`
`temporary mobile subscriber identity allocated to the terminal." The combination of
`
`Cragun and Aaron does not disclose the above-quoted recitations of amended
`
`independent claim 20. Therefore, Applicant respectfully submits that amended
`
`independent claim 20 is patentable over the rejection under 35 U.S.C. § 1 03(a) based
`on Cragun and Aaron.
`
`(4) Rejection of independent claim 21.
`
`Independent claim 21 has been amended to recite "a memory unit configured to
`
`store a group of specific identifiers common to the plurality of the terminals supporting
`
`an emergency warning, at least two specific identifiers in the group of the specific
`
`identifiers being for different types of emergencies, the cellular wireless communication
`
`system being a bi-directional cellular wireless communication system between a base
`
`station and the plurality of terminals," and "at least one programmed processor
`
`configured to ... switch to a broadcast mode for receiving broadcast content on a
`
`broadcast channel only if the paging message received from the base station includes
`
`the at least one specific identifier of the group of the specific identifiers, without waiting
`
`to confirm accurate receipt of an emergency warning message; and establish at least
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 11 of 12 PageID #: 1488
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
`
`one of a physical channel and a logical channel only if the received paging message
`
`includes a temporary mobile subscriber identity allocated to the terminal." The
`
`combination of Cragun and Aaron does not disclose the above-quoted recitations of
`
`amended independent claim 21. Therefore, Applicant respectfully submits that
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`amended independent claim 21 is patentable over the rejection under 35 U.S.C.
`
`§ 103(a) based on Cragun and Aaron.
`
`(5) Rejection of dependent claims 13 and 18.
`
`Given that amended independent claims 11 and 16 are patentable over the
`Examiner's rejections under 35 U.S.C. § 1 03(a) based on Cragun and Aaron, Applicant
`
`respectfully submits that amended dependent claims 13 and 18, dependent from
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`anlended independent claims 11 or 16, are patentable at least due to their dependency
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`from an allowable independent claim.
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`C. Rejection of dependent claims 12 and 17 based on Cragun in view of
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`Aaron and further in view of paragraph [0007] of the Application.
`
`The Examiner (at page 4, line 10 to page 5, line 2 of the Office Action) rejected
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`dependent claims 12 and 17 under 35 U.S.C. § 103(a) as being unpatentable over
`
`Cragun in view of Aaron, and further in view of paragraph [0007] of the Application
`
`alleged by the Examiner to be "Applicant Admitted Prior Art"
`
`Given that anlended independent claims 11 and 16 are patentable over the
`
`Examiner's rejections under 35 U.SeC. § 103(a) based on Cragun and Aaron, Applicant
`
`respectfully submits that dependent claims 12 and 17, dependent from amended
`
`independent claims 11 or 16, are patentable at least due to their dependency from an
`
`allowable independent claim.
`
`II. Conclusion.
`
`Applicant submits that amended independent claims 11, 16, 20, and 21 are
`
`patentable and that dependent claims 12-15, 17-19, and 22-27, dependent from
`
`amended independent claims 11, 16, 20, or 21, or claims dependent therefrom, are
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`patentable at least due to their dependency from an allowable independent claim.
`
`In view of the foregoing remarks, it is respectfully subnlitted that the claims, as
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`-10-
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`Case 6:14-cv-00982-KNM Document 147-11 Filed 11/09/15 Page 12 of 12 PageID #: 1489
`
`Application NOe 12i450,608
`Amendment dated June 26, 2014
`
`amended, are patentable. Therefore, it is requested that tile Examiner reconsider the
`
`outstanding rejections in view of the preceding comments. Issuance of a timely Notice
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`of Allowance ofthe claims is earnestly solicited.
`
`To the extent any extension of time under 37 C.FR. § 1.136 is required to obtain
`entry of this reply, such extension is hereby respectfully requested. If there are any
`
`fees due under 37 C.F.R. §§ 1.16 or 1.17 which are not enclosed herewith, including
`any fees required for an extension of time under 37 C.F.R. § 1.136, please charge such
`
`fees to our Deposit Account No. 50-1068.
`
`Respectfully submitted,
`
`MARTIN & FERRARO, LLP
`
`By:
`
`IAlfred Y. Chu/
`Alfred Y. Chu
`Registration NOe 62,317
`
`Date: June 26, 2014
`
`1557 Lake O'Pines Street, NE
`Hartville, Ohio 44632
`Telephone: (330) 877-0700
`Facsimile: (330) 877-2030
`
`-11-
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