REMARKS
`
`Claims 1—20 are pending and rejected. Claims 1, 3, 4, 9, 11, 12, 16, 18, and 19 are
`
`amended herein, and claims 2, 10, and 17 are canceled.
`
`REJECTIONS UNDER 35 U.S.C. § 102 and/or 35 U.S.C. § 103
`
`Claims 1—6, 9—14, and 16—20 were rejected under 35 U.S.C. § 103 as unpatentable over
`
`Evans, Nicholas George et al. (US 20140213301 A1), hereafter “Evans,” in view of
`
`SAKARGAYAN, Anupam (US 20100315236 A1), hereafter “SAKARGAYAN,” and further in
`
`view of Kim, Hyun-Jeong (US 20020006782 A1), hereafter “Kim”.
`
`Claims 7—8 and 15 were rejected under 35 U.S.C. § 103 as unpatentable over Evans in
`
`view of SAKARGAYAN and Kim as applied to claims 6 and 14 above, and further in view of
`
`Krishnamurthi, Govindaraj an et al. (US 20060258371 A1), hereafter “Krishnamurthi”.
`
`Claim 1 is amended to incorporate the subject matter of now-canceled claim 2, and
`
`recites in part:
`
`a controller configured to:
`in response to receiving the response to the configuration instruction that indicates
`that the mobile device received the configuration instruction, cause the
`speaker to emit a second sound, and
`in response to failing to receive the response to the configuration instruction from
`the mobile device, cause the speaker to emit a third sound different from
`the second sound.
`
`In the rejection of claim 2, the Office Action notes “Evens [sic] further discloses wherein
`
`the controller is further configured to, in response to failing to receive the response to the
`
`configuration instruction from the mobile device, cause the speaker to emit a third sound
`
`different from the second sound (see pars. 0039 and 0044).” Office Action, page 8.
`
`Paragraph [003 9] of Evans teaches:
`
`

`

`As mentioned above, the tracking system 100 can assist a user 103 in locating a tracking
`device 106. The tracking device may be a chip, tile, tag, or other device for housing
`circuitry and that may be attached to or enclosed within an object such as a wallet, keys,
`purse, car, or other object that the user 103 may track. Additionally, the tracking device
`106 may include a speaker for emitting a sound and/or a transmitter for broadcasting a
`beacon. In one configuration, the tracking device 106 may constantly transmit a beacon
`signal that may be detected using a nearby mobile device 102 and/or community mobile
`device 104. In some configurations, the tracking device 106 broadcasts a beacon at
`regular intervals (e.g., one second intervals) that may be detected from a nearby mobile
`device (e.g., community mobile device 104). The strength of the signal emitted from the
`tracking device 106 may be used to determine a degree of proximity to the mobile device
`102 or community mobile device 104 that detects the signal. For example, a higher
`strength signal would indicate a close proximity between the tracking device 106 and the
`mobile device 102 and a lower strength signal would indicate a more remote proximity
`between the tracking device 106 and the mobile device 102. In some cases, the strength
`of signal or absence of a signal may be used to indicate that a tracking device 106 is lost.
`
`Paragraph [0044] of Evans teaches:
`
`The tracking device location manager 206 may further receive updated locations from the
`community of mobile devices 104 that are constantly scanning for nearby tracking
`devices 106. In this example, the tracking device location manager 206 may receive
`location updates from the community of mobile devices 104 and, based on the tracking
`device 106 being indicated as lost, provide a response to a lost indication to the mobile
`device 102. The response to the lost indication may be a text message, push notification,
`ring tone, automated voice message, or other response for informing a user 103 that a
`tracking device 106 has been found and/or an updated location of the tracking device
`106.
`
`These paragraphs variously teach (among other concepts) a tracking device with a
`
`speaker that can emit sound, the broadcasting of beacon signals that can be used by mobile
`
`devices to detect the tracking device, the scanning by mobile devices for tracking devices, and
`
`the providing of lost notifications to a tracking device location manager. Although the Office
`
`Action does not describe which portions of these paragraphs are being mapped to the claim
`
`language, it is clear from a plain reading of these passages that they do not teach or suggest “in
`
`response to failing to receive the response to the configuration instruction from the mobile
`
`device, cause the speaker to emit a third sound different from the second sound” as claimed. The
`
`emission of multiple different sounds by a tracking device in response to either receiving or
`
`

`

`failing to receive a confirmation that a mobile device received a configuration instruction from
`
`the tracking device is thus not addressed in Evans, either within the cited paragraphs or the
`
`remainder of Evans.
`
`The remaining references do not remedy this deficiency, nor does the Office Action so
`
`assert. As the combination of references fails to teach or suggest every element of claim 1, claim
`
`1 and all similar and dependent claims are patentable over the combination for at least these
`
`same reasons, and the withdrawal of these rejections is requested.
`
`CONCLUSION
`
`Based on the foregoing, the application is in condition for allowance of all claims, and a
`
`Notice of Allowance is respectfully requested. If the examiner believes for any reason direct
`
`contact would help advance the prosecution of this case to allowance, the examiner is
`
`encouraged to telephone the undersigned at the number given below.
`
`If extensions of time are necessary to prevent abandonment of this application, then such
`
`extension of time are hereby petitioned under 37 CFR l.l36(a), and any fees required therefore
`
`are hereby authorized to be charged to our Deposit Account 19-2555.
`
`Dated:
`
`January 1, 2020
`
`Respectfully submitted,
`
`/Anthony T. Jacobson/
`Anthony T. Jacobson, Reg. No. 72,388
`FENWICK & WEST LLP
`
`801 California Street
`
`Mountain View, CA 94041
`Phone: (650) 335-7158
`
`10
`
`