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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/644,524
`
`07/07/2017
`
`Clayton K. Redmon
`
`REDM-POOOlUS
`
`2303
`
`Grable Mart1n Fulton PLLC
`
`2709 Dublin Road
`Plano, TX 75094
`
`NGUYEN, PHUNG HOANG JOSEPH
`
`ART UNIT
`
`2656
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/ 1 1/2019
`
`ELECTRONIC
`
`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`doeketing @ gehub.eom
`
`PTOL-90A (Rev. 04/07)
`
`
`
`0/7709 A0170” Summary
`
`Application No.
`15/644,524
`Examiner
`PHUNG-HOANGJ NGUYEN
`
`Applicant(s)
`Redmon et al.
`Art Unit
`2656
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 5/6/19.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—32 is/are pending in the application.
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`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
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`11):] The drawing(s) filed on
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`is/are: a)C] accepted or b)Ej objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)C] All
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`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/OBa and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190702
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 2
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
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`Claims 1, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Moore et al (US 2015/0371456) in view of Hillstrom (U82002/0002469).
`
`Claim 1, Moore teaches a mobile lawyer system comprising:
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`at least one video camera configured for mounting inside the passenger
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`compartment of a vehicle and capture video images of at least one passenger in the
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`vehicle (in-car device 10 with microphone 16, speaker 18 and at least one camera
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`20 are included in or connected to device 10, Figs. 1 and 2 and [0014-0017,
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`[0023]);
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 3
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`a display screen configured for mounting inside the passenger compartment of a
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`vehicle (display 22 of device 10, Figs. 1 and 2 and [0017]);
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`a remote server and a database (data captured by camera are transceiving
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`to/from remote server 14, [0013, 0016]),
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`While Moore teaches “a mobile device executing a mobile application and in
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`wireless communication with the video camera and display screen, configured, upon
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`command from a user, to communicate with the remote server (the portable device
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`can be a customers personal electronic device such as a mobile smartphone
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`having its own camera and display screen; the device 10 includes an application
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`configured to communicate with server 14; figs 1 and 2; and [0017, 0021, 0022]).
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`Moore does not explicitly discuss “configured to store information about a
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`plurality of lawyers licensed in a plurality of jurisdictions;
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`wherein the remote server is configured to automatically and immediately
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`determine a location of the vehicle, automatically and immediately identify a jurisdiction
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`associated with the vehicle location, automatically and immediately identify at least one
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`lawyer licensed in the identified jurisdiction, and automatically and immediately notify
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`the at least one identified lawyer”.
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`Hillstrom teaches a system where the database is configured to store information
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`about a plurality of lawyers licensed in a plurality of jurisdictions (The system of the
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`present invention will have in its database information about the attorneys,
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`managing attorneys and practicing attorneys. Information should include
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 4
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`personal information, name, address, how to be contacted. Other information
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`concerning their legal background also should be inputted. The legal background
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`should include in what states the attorney is licensed, and the type of law that
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`they specialize in, [0018, 0034, 0098]).
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`And furthermore, Hillstrom teaches “wherein the remote server is configured to
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`automatically and immediately determine a location of the vehicle, automatically fl
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`immediately identify a jurisdiction associated with the vehicle location, automatically fl
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`immediately identify at least one lawyer licensed in the identified jurisdiction, and
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`automatically and immediately notify one of the at least one identified lawyer located
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`remotely”. Hillstrom’s system is “to select particularly qualified lawyers to pursue,
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`prosecute, defend and manage legal claims on behalf of clients, [0011]... Prospective
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`client-users may create and submit a file on-line answering questions that will enable
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`the system of the present invention to forward the file to an appropriate Managing
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`Lawyer licensed in an appropriate jurisdiction, [0018]
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`Prospective clients are enabled
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`to request to be contacted by a Managing Lawyer licensed in an appropriate state or
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`states for consultation concerning the particular prospective client and claims, [0022]
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`and where these particular qualified lawyers can accommodate/work on issues
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`associated with different states or national laws to server users in disparate
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`geographical locations, [0034].
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`While Moore's system is capable of notifying the remote server 14 for
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`communication with the customer service agent using terminal 24 for communication (If
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`in-vehicle device 10 detects that vehicle 12 has broken down and is inoperable, device
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 5
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`10 sends a signal to server 14 indicating the nature of the mechanical problem and the
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`location of vehicle 12 as determined by GPS data, [0021-0023] and not just live voice
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`but also live video between the passenger and the customer representative, [0024]).
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`Moore does not explicitly spell out “notify an attorney”; and the display screen
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`configured to automatically live-stream a video image of the remote lawyer, and the at
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`least one video camera is configured to automatically and immediately live-stream video
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`captured by the at least one video camera for viewing by the remote lawyer and for
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`storage in the remote database, where the at least one mobile device being configured
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`to enable bi-directional audio and video communication between the at least one
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`identified lawyer and the at least one passenger”
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`Hillstrom teaches the “recording and transmission of live video and audio data of
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`proceeding, recording and transmission of live video and audio data of proceedings,
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`including depositions, court hearings, trials, conferences and the like to Managing
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`Lawyers and Clients, [0067]”
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`Therefore , it would have been obvious to an ordinary artisan before the effective
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`filing date to incorporate the teaching of Hillstrom into the teaching of Moore to match
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`qualified lawyers who are licensed to practice in an appropriate jurisdiction to the clients
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`who are involved in a legal matter of said jurisdiction (Hillstrom, [0097]. The benefit of
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`this matching will contribute to the proceedings of an event, i.e., traffic stop or court
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`proceeding, with greater transparency within the guideline of the law and certainly to
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`preserve the originality of the information collect.
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 6
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`Claim 5, The mobile lawyer system of claim 1, wherein the database is
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`configured to store information about a plurality of licensed lawyers, including in
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`which jurisdiction where each lawyer is licensed, and contact information for each
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`lawyer (see claim 1 or Hillstrom, [0098]).
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`Claim 7. The mobile lawyer system of claim 1, wherein the at least one identified
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`lawyer is able to receive and view the live-streamed video data of the at least one
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`passenger on a computing device, which is also configured to capture video images of
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`the at least one identified lawyer and transmit them to the remote server (Please see
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`claim 1).
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`Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Moore in view of Hillstrom and further in view of Hatori et al (US 2015/0015706).
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`Claim 2, Moore, in view of Hillstrom, discloses the mobile lawyer system of claim
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`1. Moore does not further disclose wherein the at least one video camera comprises a
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`360-degree high—definitien video camera configured to capture video images in a
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`plurality of directions.
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`Hatori teaches the claimed feature as he discusses “The vehicle interior
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`camera 70 may be constituted by a 360-degree camera (omnidirectional camera)
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`in which instance the interior image 71 corresponds to an image taken with
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`respect to an angular range of from 0 to 180 degrees, and the interior image 72
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`corresponds to an image taken with respect to an angular range of from 180 to
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`360 degrees, [0049].
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 7
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`It would have been obvious to ordinary artisan before the effective filing date to
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`incorporate the teaching of Hatori into the teaching of Moore with a 360-degree camera
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`in order to provide a more comprehensive and thorough view of the occupants of a
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`vehicle during video conferencing.
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`Examiner further notices that Hatori does not spell out the camera being the high
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`definition one.
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`It is however an obvious decision for the user to utilize his or her
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`purchase capability and it would be wise for the developer to leave the choice to the
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`user as it deems appropriate spending.
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`Claim 8, Moore in view of Hillstrom, teaches claim 1, Moore does not further
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`teach at least one video camera configured for mounting outside the passenger
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`compartment of the vehicle and capture video images of at least one passenger in the
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`vehicle and surrounding environment.
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`Hatori teaches “three vehicle exterior cameras 40a, 40b and 400. The exterior
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`image capturing unit may be constituted either by a single vehicle exterior camera or by
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`a plurality of vehicle exterior cameras. In the embodiment shown in FIG. 2, the vehicle
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`exterior camera 40a is disposed on a rear end portion of the vehicle roof. The vehicle
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`exterior camera 40b is disposed on a dashboard, and the vehicle exterior camera 40c is
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`disposed on a front bumper. Each of the three vehicle exterior cameras 40a, 40b, 40c is
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`able to image the exterior of the compartment 130 and also to generate a series of
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`exterior images, [0034].
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`It would have been obvious to the ordinary artisan before the effective filing date
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`to incorporate the teaching of Hatori into Moore for the purpose of providing some
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 8
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`exterior camera for capturing the outside surrounding for greater view of conferencing
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`communication and also for the court proceeding.
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`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Moore
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`in view of Hillstrom and further in view of Hassan Zureikat (US 2016/0173742).
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`Claim 3, Moore, in view of Hillstrom, discloses the mobile lawyer system of claim
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`1. Moore does not further disclose wherein the at least one video camera comprises a
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`video camera mounted on a drone. Hassan discloses wherein the at least one video
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`camera comprises a video camera mounted on a drone (a drone equipped with a
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`camera; abstract; paragraph [0012]).
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`It would have been obvious to an ordinary artisan before the effective filing date
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`to modify the Moore invention to provide at least one video camera comprising a video
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`camera mounted on a drone, as taught by Hassan Zureikat, in order to provide
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`expanded functionality by gaining the ability to record video of the immediate area
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`surrounding a vehicle during video conferencing, especially in remote areas.
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`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Moore
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`in view of Hillstrom and further in view of Mokashi (US 9,288,446).
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`Claim 4, Moore, in view of Hillstrom, discloses the mobile lawyer system of claim
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`1. Moore does not further disclose wherein the at least video camera comprises a
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`plurality of video cameras mounted on the vehicle configured to capture video images in
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`a plurality of directions. Mokashi discloses wherein the at least video camera comprises
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`a plurality of video cameras mounted on the vehicle configured to capture video images
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`in a plurality of directions (a plurality of additional video cameras fixedly mounted to
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 9
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`mutually differing prescribed locations around an outer periphery of the vehicle in
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`prescribed orientations providing respective video images of areas around the outer
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`periphery of the vehicle; claim 1).
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`It would have been obvious to an ordinary artisan before the effective filing date
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`to modify the Moore invention to provide at least video camera comprising a plurality of
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`video cameras mounted on the vehicle configured to capture video images in a plurality
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`of directions, as taught by Mokashi, in order to provide a plurality of
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`different perspectives during video conferencing, so as to offer a more thorough and
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`comprehensive view of the vehicle.
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`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Moore
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`in view of Hillstrom and further in view of Yuen (US 2016/0140179).
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`Claim 6, Moore, in view of Hillstrom, discloses the mobile lawyer system of claim
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`1. Moore does not further disclose wherein the database is configured to store
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`encrypted data. Yuen discloses wherein the database is configured to store encrypted
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`data (a symmetrically encrypted database; abstract; figure 1; paragraph [0032]).
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`It would have been obvious to an ordinary artisan before the effective filing date
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`to modify the Moore invention to provide a database configured to store encrypted data,
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`as taught by Yuen, in order to provide protection of information subject to the attorney-
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`client privilege from unauthorized disclosure.
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 10
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`Response to Arguments
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`Applicant's arguments filed 5/6/19 have been fully considered but they are not
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`persuasive.
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`Applicant argues (Remark: pages 8-10) that the combination of Moore and
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`Hillstrom is improper because the Office Action relies on information solely from the
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`applicants ‘specification... as stated by MPEP § 2142 that "impermissible hindsight
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`must be avoided and the legal conclusion must be reached on the basis of the facts
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`gleaned from the prior art" and not from only Applicants' disclosure. (emphasis added).
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`"Nonobviousness can be shown when a person of ordinary 3 kill in the art would not
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`have reasonably predicted the claimed invention based on the prior art, and the
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`resulting invention would not have been expected." MPEP § 2145. Applicants believe
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`that the Examiner has used the claims as a road map to pick and choose elements of
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`prior art references to arrive at the combination. There is no motivation or suggestion
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`within these references to include or implement all of the limitations in claim 1 because
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`the need for these limitations is lacking for each of the intended goals and purposes of
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`the prior art.
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`While examiner can understand the position the applicant takes as MPEP § 2145
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`states “The tendency td reedtt te "hindeight“ beeed updn eppiicent“e diesieeure is etten
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`diiticuit to avoid due to the very nature at the examination eteceee. However,
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`impermissibte hindsight must be avoided and the iegai eeneiusiett must be reached en
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`the basis at the tecte gieaned ti’CiiTi the pater art”.
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 11
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`MPEP § 2145 also states “the exarninet meet step backward in time and ihte the
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`eheee wern by the hypethetieai ”eereen ei‘ erdinary skiii in the art“ when the invention
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`was unknown and juet before it wee made. in view at ait feetnai intermatien. the
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`examiner rntiet then make a determination whether the eieirned inventieh “as a wheie“
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`wentd have been ebviene at that time tn that pereen. Knewiedge ei apptieant’e
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`dieeieeare meet be put aeide in reaching this determinatéen, yet kept in mind in erder te
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`determine the "ethereheee,“ eenduet the search and evaieete the “enhieet matter ae e
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`whete” of the invention.
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`With due respect to the applicant and in line with the MPEP and in response to
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`applicant's argument that the examiner's conclusion of obviousness is based upon
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`improper hindsight reasoning, it must be recognized that anyjudgment on obviousness
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`is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long
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`as it takes into account only knowledge which was within the level of ordinary skill at the
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`time the claimed invention was made, and does not include knowledge gleaned only
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`from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin,
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`443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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`In this specific case, Moore does not explicitly discuss “configured to store
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`information about a plurality of lawyers licensed in a plurality of jurisdictions”. The
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`rectification is provided by Hillstrom who presents a need to have a lawyer who is
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`knowledgeable with the local law and guideline so that he or she can help a specific
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 12
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`client who has encountered a legal matter/issue in that locality where the legal matter
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`occurred, [0097].
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`Clearly, Hillstrom’s teaching is based on factual evidence not assumption or any
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`kind of knowledge gleaned from the applicant’s disclosure, rather from the fact of the
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`prior art. Thus examiner believes that examiner has met the requirement set by the
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`MPEP “in View at aii iaettiai information, the examiner must then make a determination
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`whether the eiainieci invention "ae a whoie“ wotiiti have been obvious at that time to that
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`person. Knowiedge of appiioant’s oisoiosure must be put aside in reaching this
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`determination, yet kept in mind in order to determine the “ditterenoee,” conduct the
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`search and eveitiate the "subject matter ae a whoie" of the invention”. As guided by the
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`MPEP that the comhination/rnoditioatien is soundly established where there is some
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`teaching, suggestion, or motivation to do so found either in the references themselves
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`or in the knowledge generally available to one of ordinary skill in the art. See In re Fine,
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`837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21
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`USPQ2d 1941 (Fed. Cir. 1992), and KSFi International Co. v. Teleflex, Inc., 550 U.S.
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`398, 82 USPQ2d 1385 (2007).
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`In this case, please see the immediately previous
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`paragraph.
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`Apotioante (pages It) further argues that “Moore combined with t-tiiietrom do not
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`teach or euggeet eii oi the oiaimeo iimitatione in oiaim t. iv‘ioore teaches a eyetem that is
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`initiated by "an incident eignai from a vehioie“ that indicates a vehioie breakdown or
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`coiiieion. Paras. {0013] and [0027]. Theretore, ivioere epeoiiioaiiy teaches away item a
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`driver—initiated communication session. Aithongh Moore‘s system conveys; a GPS
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 13
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`Eocatien of the vehicte some time during the communication session, the location
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`information is used by a customer service agent who may then manuaiiy dispatch
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`assistance to the vehicte‘s tocation it needed. See pate. [$0211. Theretere. Moore’s
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`system does not “automatically and immediate-31y" communicate the location information
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`upon receiving a command from the user”.
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`Examiner respectfully disagrees and requests the applicant to consult MPEP
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`2144.04 (Legal Precedence as Source of Supporting Rationale) on Automating a
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`Manual Activity in view of “In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA
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`1958) (Appellant argued that claims to a permanent mold casting apparatus for molding
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`trunk pistons were allowable over the prior art because the claimed invention combined
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`“old permanent-mold structures together with a timer and solenoid which automatically
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`actuates the known pressure valve system to release the inner core after a
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`predetermined time has elapsed.” The court held that broadly providing an automatic or
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`mechanical means to replace a manual activity which accomplished the same result is
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`not sufficient to distinguish over the prior art.)”.
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 14
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to PHUNG-HOANG J. NGUYEN whose telephone number
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`is (571)270-1949. The examiner can normally be reached on Reg. Sched. 6:00-3:00.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
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`Application/Control Number: 15/644,524
`Art Unit: 2656
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`Page 15
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`/Phung-Hoang J Nguyen/
`Primary Examiner, Art Unit 2656
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