Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 1 of 23 Page ID #:1364
`Case 2:19-cv-06301—AB-KS Document 76-10 Filed 06/26/20 Page 1 of 23 Page ID #: 1364
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`
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`EXHIBIT J
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`EXHIBIT J
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`

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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 2 of 23 Page ID #:1365
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 2 of 23 Page ID #:1365
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`Roger J. Quy
`
`Application No.: 12/211,033
`
`Filed: September 15, 2008
`
`For: METHOD AND APPARATUS FOR
`MONITORING EXERCISE WITH WIRELESS
`
`INTERNET CONNECTIVITY
`
`Examiner: Shirley Xueying Jian
`
`Confirmation No.: 7693
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`Art Unit: 3769
`
`Certificate of Electronic Transmission
`Under 37 C.F.R.
`1.8
`
`V13. EFS WCb
`_
`_
`Comm1ss1oner for Patents
`
`PHO BOX 1450
`Alexandria, VA 223 1 3- 1450
`
`Dear Sir:
`
`(Signature)
`
`I hereby certify that this correspondence and any document referenced
`herein are being electronically filed with the USPTO via EFS-Web on March
`12, 2012.
`
`Michelle Wolf
`(Printed Name of Person Sending Correspondence)
`/Michelle Wolf/
`
`APPEAL BRIEF UNDER 37 C.F.R. §41.37
`
`As set forth in the Notice of Appeal submitted October 27, 2011 and further to the Notice of
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`Panel Decision mailed January 10, 2012, Appellant appeals the decision of the Examiner mailed
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`August 30, 2011 (“Final Office Action”) in the above-identified application.
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`Appellant respectfully petitions under 37 C.F.R. 1.136(a) for a one-month extension of time
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`to respond. The US. Patent and Trademark Office is authorized to charge the Appeal Fee under 37
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`C.F.R. 41.20(b)(1) ($310), the fee for a one—month extension of time under 37 C.F.R. 1.17(a)(1)
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`($75), and to charge any other fees deemed owing, and/or to credit any overpayments made
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`regarding the application at large to Deposit Account 50-1047.
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`Appellant respectfully requests that the Board of Patent Appeals and Interferences reverse
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`the Examiner’s rejections.
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`PA00029555
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`PA00029555
`

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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 3 of 23 Page ID #:1366
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 3 of 23 Page ID #:1366
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`I. REAL PARTY IN INTEREST
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`Q-TEC Systems LLC is the assignee of the present invention and the real party in interest.
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`11. RELATED APPEALS AND INTERFERENCES
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`N 0 prior and pending appeals, judicial proceedings or interferences which may be related to,
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`directly affect or be directly affected by, or have a bearing on the Board's decision in the pending
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`appeal are known to the Appellant.
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`III. STATUS OF CLAIMS
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`The claims in the application are Claims 1-4 and 6-21. Claim 5 was previously canceled.
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`Claims 1-4 and 6-21 are finally rejected and on appeal.
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`IV. STATUS OF AMENDMENTS
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`A Final Office Action was mailed on August 30, 2011, rejecting Claims 1-4 and 6-21. In
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`response thereto, a Notice of Appeal was filed on October 28, 2011. No amendments have been
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`filed.
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`V. SUMMARY OF CLAIMED SUBJECT MATTER
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`A concise explanation of the subject matter defined in each of the independent claims
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`involved in the appeal, referring to the specification, follows. Claims 1 and 14 are the independent
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`claims presently pending.
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`Independent Claim 1 is directed to a method for interactive exercise monitoring, the method
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`comprising the steps of:
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`a.
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`coupling a web-enabled wireless phone to a device which provides exercise-related
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`information (see Fig. 2; WWD 12; HMD 11; paragraph [0015], lines 1-5 (corresponding to page 4,
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`lines 22-26); paragraph [0016], lines 1-7 (corresponding to page 5, lines 1-7) paragraph [0019],
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`lines 1-2 (corresponding to page 5, lines 19-20); paragraph [0020], lines 1-4 (corresponding to page
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`5, lines 25-28));
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`PA00029556
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`PA00029556
`

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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 4 of 23 Page ID #:1367
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 4 of 23 Page ID #:1367
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`b.
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`rendering a user interface on the web-enabled wireless phone (see Fig. 2; WWD 12; screen
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`41; paragraph [0049], lines 5-8 (corresponding to page 10, lines 17-18));
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`c.
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`receiving data indicating a physiologic status of a subject (see Fig. 6; steps 216, 218, 240,
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`220, 222; paragraph [0076], lines 1-5 (corresponding to page 16, lines 11-15); paragraph [0077],
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`lines 1-3 (corresponding to page 16, lines 16-18); paragraph [0078], lines 1-4 (corresponding to
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`page 16, lines 19-22));
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`d.
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`receiving data indicating an amount of exercise performed by the subject (see Fig. 6; steps
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`216, 218, 240, 220, 222; paragraph [0076], lines 1-5 (corresponding to page 16, lines 11-15);
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`paragraph [0077], lines 1-3 (corresponding to page 16, lines 16-18); paragraph [0078], lines 1-4
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`(corresponding to page 16, lines 19—22));
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`e.
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`wherein at least one of the data indicating a physiologic status of a subject or the data
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`indicating an amount of exercise performed by the subject is received from the device which
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`provides exercise-related information, and wherein the data indicating a physiologic status of a
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`subject is received at least partially while the subject is exercising (see paragraph [0013], lines 2-4
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`(corresponding to page 4, lines 13-15); paragraph [0016], lines 1-3 (corresponding to page 5, lines
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`1-3);
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`f.
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`sending the exercise-related information to an internet server via a wireless network (see
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`Fig. 1, WHMA 10, POP 19, antenna 15, server 17, Internet 21; paragraph [0047], lines 1-7
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`(corresponding to page 10, lines 1-7); paragraph [0055], lines 1-6 (corresponding to page 11, line 29
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`to page 12, line 5));
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`g.
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`receiving a calculated response from the server, the response associated with a calculation
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`performed by the server based on the exercise-related information (see Fig. 3; paragraph [005 8],
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`lines 1-5 (corresponding to page 12, lines 23-27); and
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`h.
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`running an application in the web—enabled wireless phone for receiving the exercise—related
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`information and displaying the response (see paragraph [0065], lines 1-2 (corresponding to page 14,
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`lines 8-9); Fig. 5, step 128; paragraph [0069], lines 8-9 (corresponding to page 15, lines 5-6); Fig. 6,
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`step 228; paragraph [0080], lines 4-5 (corresponding to page 17, lines 1-2)).
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`PA00029557
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`PA00029557
`

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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 5 of 23 Page ID #:1368
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 5 of 23 Page ID #:1368
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`Independent Claim 8 is directed to a non-transitory computer-readable medium, containing
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`an application for performing an interactive method of exercise monitoring, the application
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`physically residing on a server, the method comprising the steps of:
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`a.
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`receiving exercise-related information from a web-enabled wireless phone, wherein the
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`exercise-related information includes data indicating a physiologic status of a subject and data
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`indicating an amount of exercise performed by the subject, and wherein the data indicating a
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`physiologic status of a subject is received at least partially while the subject is exercising (see Fig.
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`6; steps 216, 218, 240, 220, 222; paragraph [0076], lines 1-5 (corresponding to page 16, lines 11-
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`15); paragraph [0077], lines 1-3 (corresponding to page 16, lines 16-18); paragraph [0078], lines 1-4
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`(corresponding to page 16, lines 19—22));
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`b.
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`calculating a response based on the exercise-related information (see Fig. 4, server 22;
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`paragraph [0058], lines 1-2 (corresponding to page 12, lines 23-24); Fig. 6, step 226; paragraph
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`[0080], lines 1-2 (corresponding to page 16, lines 26-27));
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`c.
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`transmitting the calculated response to the web-enabled wireless phone (see Fig. 6, step 228;
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`paragraph [0080], lines 4-5 (corresponding to page 17, lines 1-2)).
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`VI. GROUNDS OF REJECTION TO BE REVIEWED UPON APPEAL
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`A.
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`Whether Claims 1-4 and 6-21 are erroneously rejected under 35 U.S.C. 102(e) as
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`being anticipated by US. Patent No. 6,790,178 (Mault) (which includes a further ground of
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`rejection to be reviewed — whether the Declaration under 37 C.F.R. 1.131 submitted by Appellant
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`was erroneously rejected).
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`B.
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`Whether Claims 1-4, 7-10, 12-16 and 20-21 are erroneously rejected under 35 U.S.C.
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`103(a) as being unpatentable over US. Patent No. 6,059,692 (Hickman) in View of US. Patent No.
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`6,353,839 (King).
`
`C.
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`Whether Claims 11 and 17-19 are erroneously rejected under 35 U.S.C. 103(a) as
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`being unpatentable over Hickman in view of King and further in view of US. Patent No. 6,524,189
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`(Rautila).
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`PA00029558
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`PA00029558
`

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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 6 of 23 Page ID #:1369
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 6 of 23 Page ID #:1369
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`VII. ARGUMENT
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`A.
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`Whether Claims 1—4 and 6-21 are erroneously rejected as being anticipated by Mault
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`(and whether the Declaration under 37 C .F.R. 1.131
`submitted by Appellant was erroneously rejected)
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`Appellant first notes clear errors with regard to Office policy. The Final Office Action
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`initially addressed Appellant’s Response filed June 14, 2011 by alleging that “The applicant’s date
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`of invention for his provisional application 60/172,486 was signed on November 6, 1999; however,
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`the same application was not filed until December 17, 1999. Currently, the effective provisional
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`date for 60/172,486 is December 17, 1999.”
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`Appellant submits that this statement is clearly erroneous. Appellant is permitted under 37
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`CFR 1.131 to submit a Declaration to establish invention of the subject matter of the rejected claims
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`prior to the effective date of the reference on which the rejection is based. Appellant alleged and
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`provided evidence proving up a date of invention at least as early as November 6, 1999, i.e., a
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`Declaration under 37 CFR 1.131 to prove a date of invention prior to that of Appellant’s provisional
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`filing date, this date antedating most of the provisional applications to which the Mault reference
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`claimed priority. No substantive issues were raised with regard to this Declaration.
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`However, in the Final Office Action dated August 30, 2011, the Examiner rejected the
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`Declaration as moot under MPEP 715.05 because "When the reference in question is a non-
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`commonly owned US patent or patent application publication claiming the same invention as
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`applicant and its publication date is less than 1 year prior to the presentation of claims to that
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`invention in the application being examined, applicant's remedy, if any, must be by way of 37 CFR
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`41.202 instead of 37 CFR 1.131.” (Page 9 of Final Office Action; emphasis added herein).
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`Appellant submits that this allegation is also clearly erroneous. On this issue in particular,
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`Appellant is (again) submitting these arguments in writing as Appellant was advised to do so upon
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`calling the Office on September 21, 2011 in an attempt to remove this ground of rejection in a more
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`expeditious manner.
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`Appellant believes MPEP 715.05 is inappropriately applied to the present case because the
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`same deals with a US patent or application which claims the same invention as defined in 37 CFR
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`41 .203(a), as the Appellant. On the other hand, and pertinent to the present case, MPEP 706.02(b)
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`5
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`PA00029559
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`PA00029559
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 7 of 23 Page ID #:1370
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 7 of 23 Page ID #:1370
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`states that a rejection based on 35 USC 102(e) can be overcome by “(D) filing an affidavit or
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`declaration under 37 CFR 1.131 showing prior invention, if the reference is n_ot a US patent or US
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`patent application publication claiming the same patentable invention as defined in 37 CFR
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`41 .203(a)”. MPEP 715(I)(A) states the same examination guideline of 706.02(b) in an alternative
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`manner.
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`Appellant submits that the Examiner has not made the requisite showing under 37 CFR
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`41 .203(a) that the Mault reference claims the same patentable invention as recited in the present
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`pending claims.
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`Moreover, Appellant submits that a comparison of the single claim of the Mault reference1
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`with the present claims clearly indicates distinct subz'ect matter:
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`Mault requires an EKG and heart sound monitor including a housing with two or
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`more electrodes and a microphone, a two-part separable connector, the two parts being
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`operative when interconnected to physically join the monitor and a handheld unit in a rigid
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`manner, and so on, which does not provide any exercise information;
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`The present claims require coupling a web enabled wireless phone to a device which
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`provides exercise related information, receiving data indicating a physiological status of a
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`subject where the data is received at least partially while the subject is exercising, receiving
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`data indicating an amount of exercise performed by the subject, sending the information to
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`an Internet server and receiving a calculated response, and so on.
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`Clearly these are patentably distinct inventions.
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`In view of the preceding remarks, absent a valid application of the two-way obviousness
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`interference standard, Appellant requests the Office consider and accept the Rule 1.131 Declaration,
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`which swears behind the effective date of most of the Mault provisional applications, and withdraw
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`the 102(e) rejection based on Mault.
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`1 Appellant notes that the Mault provisional applications purport to have claims as well. However, claims are not
`required for such applications under 35 USC l l l(b)(2). Moreover, I
`l l(b)(8) states that provisional applications are not
`subject to interferences. By this analysis, and by extension to the present circumstances, Mault’s provisional "claims"
`cannot be properly used as the basis for the two-way obviousness interference standard. However, even if they were,
`Appellant submits such claims are clearly patentably distinct.
`6
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`PA00029560
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`PA00029560
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 8 of 23 Page ID #:1371
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 8 of 23 Page ID #:1371
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`Discussion of alleged teachings of Mault
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`On the more substantive issues regarding Mault, Appellant notes that the Examiner takes the
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`position that even the five Mault provisional applications having an earlier filing date than the date
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`of invention shown on Appellant's Rule 1.131 Declaration defeat the novelty of the claims.
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`Appellant submits this position is clearly in error.
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`Appellant initially notes the requirements of a novelty rejection. As noted at MPEP 2131:
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`“To anticipate a claim, the reference must teach every element of the claim: A claim is anticipated
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`only if each and every element as set forth in the claim is found, either expressly or inherently
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`described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
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`628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).... "The identical invention must be shown in as
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`complete detail as is contained in the
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`claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226,
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`1236 (Fed. Cir. 1989).”
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`Appellant respectfully submits that Mault fails to teach or disclose the inventions of each of
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`independent Claims 1 and 8, especially with regard to his five provisional applications filed prior to
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`November 6, 1999.
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`In particular, the five Mault provisional applications filed before November 6, 1999 disclose
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`the following types of devices (here Appellant notes in particular computing devices, apart from
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`physiological monitoring devices): PDAs and a handheld computer (60/ 155,85 1); a computer as
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`well as a PDA (60/158,553); and PDAs (60/ 158,556). The other two Mault provisional applications
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`filed during this period focus on specific types of physiological monitoring. The communication
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`schemes by which the PDA (Personal Digital Assistant) communicates with a central station via a
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`telecommunications network are disclosed as either a plug-in module for the PDA which electrically
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`connects to the network, or via a wireless connection to a transceiver which is connected to the
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`network, or through an intermediate unit such as a personal computer which connects to the network
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`via a modem or the like (60/ 155,851, 60/ 158,556), or alternatively, a portable unit with an electrical
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`output in the common format of the system for loading into a local computer or communications
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`device for transmission to the remote computer (60/ 158,553) .
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`The five Mault provisional applications filed before November 6, 1999 do not disclose a
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`phone, as the term is claimed by Appellant. A “phone” is shorthand for a “telephone”, the
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`7
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`PA00029561
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`PA00029561
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 9 of 23 Page ID #:1372
`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 9 of 23 Page ID #:1372
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`Application No.: 12/211,033
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`Docket No.: 00125/002005 (2051/14C4)
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`dictionary definition of which is “a system that converts acoustic vibrations to electrical signals in
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`order to transmit sound, typically voices over a distance using wire or radio” (Oxford Dictionary
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`Online). None of the devices disclosed by Mault in these provisional applications have such voice
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`functionality. Moreover, the Appellant is not required to disclose the voice capability of a telephone
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`expressly because it is inherent in the function of a telephone and would be so recognized by
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`persons of ordinary skill. According to MPEP 2163.07(A) “ By disclosing in a patent application a
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`device that inherently performs a function or has a property, operates according to a theory or has an
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`advantage, a patent application necessarily discloses that function, theory or advantage, even though
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`it says nothing explicit concerning it. The application may later be amended to recite the function,
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`theory or advantage without introducing prohibited new matter. In re Reynolds, 443 F.2d 384, 170
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`USPQ 94 (CCPA 1971); In re Smythe, 480 F. 2d 1376, 178 USPQ 279 (CCPA 1973). "To establish
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`inherency, the extrinsic evidence 'must make clear that the missing descriptive matter is necessarily
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`present in the thing described in the reference, and that it would be so recognized by persons of
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`ordinary skill”. It should be noted that appellant is not suggesting that descriptive matter is missing:
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`in fact, support for voice functionality is found in paragraph [0016], lines 6-7 and paragraph [0030],
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`lines 7-9.
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`Appellant notes in addition that on page 8 of the Final Office Action of August 30, 2011, the
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`Examiner gave an alternative definition for phone as "an instrument for reproducing sounds at a
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`distance; specifically: one in which sound is converted into electrical impulses for transmission (as
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`by wire or radio waves)". The Examiner construed this definition as “a device which transmits data
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`using electrical impulses”, and employed the same at the bottom of page 8 of the Final Office
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`Action to allege Mault’s disclosure of the claimed invention. Appellant respectfully submits these
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`definitions are untenable. For one, the first definition would fail to even read on the PDA of Mault,
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`as the PDA would fail to reproduce sounds at a distance. Next, the second definition of phone given
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`by the Examiner is clearly overly broad and would read on devices that do not have any voice
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`capability, which should not be construed as “phones” by anyone's definition. 2
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`2 In this regard, Appellant notes the Examiner made a similarly overly broad interpretation of a web-enabled Wireless
`phone in the Final Office Action of August 13, 2010, with respect to Root et al., US Patent No. 6,013,007. This
`rejection was withdrawn in response to the Pre-Appeal Brief Request for Review filed November 15, 2010.
`8
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`PA00029562
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`PA00029562
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 10 of 23 Page ID
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`PA00029563
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 11 of 23 Page ID
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`PA00029564
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 12 of 23 Page ID
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`PA00029565
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 13 of 23 Page ID
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`PA00029566
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 14 of 23 Page ID
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`PA00029567
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 15 of 23 Page ID
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`PA00029568
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 16 of 23 Page ID
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`PA00029569
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 17 of 23 Page ID
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`PA00029570
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 18 of 23 Page ID
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`PA00029571
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 19 of 23 Page ID
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`PA00029572
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 20 of 23 Page ID
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`PA00029573
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 21 of 23 Page ID
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`PA00029574
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 22 of 23 Page ID
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`PA00029575
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`Case 2:19-cv-06301-AB-KS Document 76-10 Filed 06/26/20 Page 23 of 23 Page ID
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`PA00029576
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