`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 1 of 6 Page ID #:1274
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`
`
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 2 of 6 Page ID #:1275
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 2 of 6 Page ID #:1275
`Application No.
`Applicant(s)
`
`12/211,033
`QUY, ROGER J.
`
`Examine,
`Art Unit
`Office Action Summary
`
`Michael C. Astorino 3769
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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.
`If 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
`
`1)IZI Responsive to communication(s) filed on 15 September 2008.
`
`2a)I:I This action is FINAL.
`
`2b). This action is non-final.
`
`3)I:I 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 EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4). Claim(s) 1-12 is/are pending in the application.
`
`
`4a) Of the above Claim(s)
`
`
`5)I:I Claim(s)
`
`is/are allowed.
`
`is/are withdrawn from consideration.
`
`6)IZI Claim(s)1-_12 is/are rejected.
`
`7)I:I Claim(s) _ is/are objected to.
`
`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)IZI The specification is objected to by the Examiner.
`
`
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`10)|:I The drawing(s) filed on
`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).
`
`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)I:I Acknowledgment is made ofa claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`a)|:l AII b)|:| Some * c)|:l None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No.
`
`
`
`3.I:I 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)
`
`4) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper N0(S)/M3” Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`5) I:I Notice of Informal Patent Application
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`6)I:I Other.
`Paper No(s)/Mail Date _.
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20090502
`
`
`
`PA00029883
`
`PA00029883
`
`
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 3 of 6 Page ID #:1276
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 3 of 6 Page ID #:1276
`
`Application/Control Number: 12/21 1,033
`
`Art Unit: 3769
`
`Page 2
`
`DETAILED ACTION
`
`Specification
`
`The abstract of the disclosure is objected to because the abstract should be generally
`
`limited to a single paragraph on a separate sheet within the range of 50 to 150 words.
`
`Correction is required. See MPEP § 608.01(b).
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the ”right to exclude" granted by a patent and to prevent possible
`
`harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornurn, 686
`
`F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
`
`l970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(0) may be used to
`
`overcome an actual or provisional rejection based on a nonstatutory double patenting ground
`
`provided the conflicting application or patent is shown to be commonly owned with this
`
`application. See 37 CFR 1.130(b).
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37
`
`CFR 3.73(b).
`
`Claims 1-12 are rcjcctcd under the judicially crcatcd doctrine of obviousncss-typc doublc
`
`patenting as being unpatentable over claims 3-6, and 33-43 of US. Patent No. 6,602,191.
`
`PA00029884
`
`PA00029884
`
`
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 4 of 6 Page ID #:1277
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 4 of 6 Page ID #:1277
`
`Application/Control Number: 12/21 1,033
`
`Art Unit: 3769
`
`Page 3
`
`Although the conflicting claims are not identical, they are not patentably distinct from each other
`
`because it would have been obvious to one of ordinary skill in the art at the time of the invention
`
`to implement the method of the patent in the manner set forth in the instant application since the
`
`claims of the instant application are merely different renditions of the patented method and
`
`computer readable medium.
`
`The Applicant is invited to explain, to make the record clear, reasons that the double
`
`patenting rejection does not apply.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his invention.
`
`Claims 1-12 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite
`
`for failing to particularly point out and distinctly claim the subject matter which applicant
`
`regards as the invention.
`
`The examiner cannot discern based on the specification the distinction between
`
`physiological data and exercise data. In fact, often times the two overlap. For example, heart
`
`rate could be "physiological data" and "exercise data". The broadest reasonable limitation of
`
`both terms cannot be discerned and as such the terms are indefinite.
`
`The Applicant is invited to explain, to make the record clear, reasons that the rejection
`
`under 35 U.S.C. 112, second paragraph does not apply.
`
`PA00029885
`
`PA00029885
`
`
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 5 of 6 Page ID #:1278
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 5 of 6 Page ID #:1278
`
`Application/Control Number: 12/21 1,033
`
`Art Unit: 3769
`
`Page 4
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless 7
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`Claims 1-12 are rejected under 35 U.S.C. 102(b) as being anticipated by Brown US
`
`Patent Number 5,997,476.
`
`Brown teaches the use of a remote apparatus (26/28) with a communication network (24,
`
`Internet) workstation (20) to remotely monitor a patient/user, (figure 1). The remote apparatus is
`
`disclosed as being on a cellular/wireless network, i.e. a cellular/wireless phone (column 4, lines
`
`36-63). The remote apparatus includes many different types of monitoring devices including
`
`weight scales and heart rate/pulse rate (column 5, lines 3-6) with an RS-232 connection (column
`
`6, lines 44-46). Brown’s remote apparatus further includes a keyboard/buttons to input data
`
`regarding how people feel (see fig. 7).
`
`The Applicant is invited to request an interview to discuss suggestions to overcome
`
`the applied prior art.
`
`PA00029886
`
`PA00029886
`
`
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 6 of 6 Page ID #:1279
`Case 2:19-cv-06301-AB-KS Document 76-1 Filed 06/26/20 Page 6 of 6 Page ID #:1279
`
`Application/Control Number: 12/21 1,033
`
`Art Unit: 3769
`
`Page 5
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Michael C. Astorino Whose telephone number is (571)272-4723.
`
`The examiner can normally be reached on Monday-Friday, 8:30AM to 3:30PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Henry Johnson can be reached on 571-272-4726. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/Michael C. Astorino/
`
`Primary Examiner, Art Unit 3769
`
`May 3, 2009
`
`PA00029887
`
`PA00029887
`