Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 1 of 6 Page ID #:1294
`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 1 of 6 Page ID #:1294
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`EXHIBIT C
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`EXHIBIT C
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`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 2 of 6 Page ID #:1295
`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 2 of 6 Page ID #:1295
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`Serial No.: 12/211,033
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`REMARKS
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`Claims 1-18 were pending in this application. Claims 1-3, 7-9, l2, 14, 15, and l7 have
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`been amended, claim 5 has been cancelled, and claims 19-21 have been added. Support for these
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`amendments is described below. Reconsideration and allowance of all pending claims are
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`respectfully requested.
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`Interview
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`Applicant would first like to thank the Examiner for the courtesy of an interview
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`conducted March 8, 2010. The amendments to the claims were discussed, particularly the
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`distinction between physiologic data and data indicating an amount of exercise performed, and
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`the Examiner noted that Applicant’s suggested claim amendments would further clarify what
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`Applicant regards as the invention, obviating the definiteness rejections. The corresponding
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`amendments are found in the independent claims, as well as in dependent claims 7 and 12.
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`Dependent claim 17 was also discussed, and an amendment has been made (and new claim 19
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`added) to address the rejection. In the discussion of the prior art, Applicant noted how Brown
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`failed to disclose a system and method where data indicating a physiologic status of a subject is
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`received while the subject is exercising, and the Examiner indicated that this would likely be a
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`patentable distinction, and that the same would also likely overcome the double—patenting
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`rejection. The Examiner noted the importance for such amendments that the same be supported
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`by the original disclosure. Additional specific discussions are referenced in the remarks below.
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`Applicant has made the claim amendments noted, and further pointed out where the same
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`are based on the original disclosure. Consequently, Applicant submits that all the claims are
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`currently in condition for allowance.
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`Objection to the Information Disclosure Statement
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`In the current Office Action, the Examiner states that the information disclosure
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`statement filed May ll, 2009 fails to comply with 37 CFR 1.98(a)(2), which requires a legible
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`copy of each cited foreign patent document; each non-patent literature publication or that portion
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`which caused it to be listed; and all other information or that portion which caused it to be listed.
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`It has been placed in the application file, but the information referred to therein has not been
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`considered.
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`PA00029778
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`PA00029778
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`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 3 of 6 Page ID #:1296
`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 3 of 6 Page ID #:1296
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`Serial No.: 12/211,033
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`The Examiner’s direction is brought to the transmittal letter which was filed along with
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`the Information Disclosure Statement on May 11, 2009 wherein Applicant noted that all of the
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`references cited therein (for which a copy was not provided) were filed in one of the following
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`four parent applications: 11/649, 703, 10/418,845, 09/738,2 70, 11/184,274. For this reason,
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`copies of the non—US and NFL references were not required. The Examiner is therefore
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`requested to consider the Information Disclosure Statement filed May 11, 2009.
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`Objection due to informalities
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`Claim 15 is objected to because in line 1 there is an extra space between "medium" and
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`the comma. The examiner suggestion removing the extra character space from the claim to read,
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`e. g. "medium,’ . This informality has been obviated by amendment.
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`Rejection under 35 U.S.C. 101
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`Claims 8-15 are rejected under 35 U.S.C. 101 because the claims recite a computer
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`readable medium, and the phrase "computer readable medium" was allegedly never explicitly
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`defined in the specification. This subject was discussed in the interview, and the Examiner noted
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`the letter issued by the Director on January 26, 2010, regarding “Subject Matter Eligibility of
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`Computer-Readable Media”. Applicant has amended the claims to more specifically recite and
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`define the claimed computer—readable media. These amendments find support in the originally-
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`filed specification as follows. The amendment to claim 8 finds support at, at least, paragraphs
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`[0026] and [0062], which discusses a software program physically resident on a server. The
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`amendments to claims 14 and 15 find support at, at least, paragraph [0025], which discusses the
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`use of memory for storage of applications within a wireless web device.
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`Rejections under 35 U.S.C. 112, second paragraph
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`Claims 1—1 8 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite
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`for failing to particularly point out and distinctly claim the subject matter which Applicant
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`regards as the invention.
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`Applicant has made further amendments to clarify the distinction between the two types
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`of data, data indicating a physiologic status of a subject and data indicating an amount of
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`exercise performed by the subject, as well as clarifying that the data indicating a physiologic
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`status of a subject is received at least partially while the subject is exercising. The data
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`indicating a physiologic status of a subject is exemplified in new dependent claims 20 and 21,
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`7
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`PA00029779
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`PA00029779
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`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 4 of 6 Page ID #:1297
`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 4 of 6 Page ID #:1297
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`Serial No.: 12/211,033
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`and data indicating an amount of exercise performed by the subject is exemplified in amended
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`dependent claims 7 and 12. By way of support, Applicant notes that plural types of data are
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`noted in several locations, e.g., paragraphs [0013] (“Various health parameters... may be entered
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`into a health monitoring device. . .”), [0016] (“. . .the system may be employed to monitor the
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`physiologic status of a healthy subject while eating, exercising. . .”, emphasis added), [0063] (“In
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`a highly interactive embodiment, a patient may have numerous HMDs 11 connected via optional
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`adaptors to a WWD 12, and wireless application 70 may correspondingly send a large amount of
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`health data to server application 62.”)1, and [0075] (“Referring to FIG. 6, an example is given for
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`a system of health, nutrition, fl/or exercise management”, emphasis added).
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`Regarding other second paragraph rejections, an amendment to claim 17 removes the
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`offending Bluetooth® term, the amendment finding support in paragraph [0052], and
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`Bluetooth® per se is replaced by 802.15, which is the protocol associated with the Bluetooth®
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`specification.
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`In addition, Applicant has amended claim 2, this amendment finding support in
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`paragraph [0076].
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`Applicant submits that the above claim amendments better clarify what he regards as the
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`invention, and respectfully requests that the 35 U.S.C. §112 fl2 rejections of these claims be
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`withdrawn.
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`Rejection under 35 U.S.C. 1021b]
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`Claims 1-18 are rejected under 35 U.S.C. 102(b) as being anticipated by Brown US
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`Patent Number 5,997,476. This rejection is traversed with respect to the amended claims as
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`follows, this traversal tracking the arguments Applicant made in the interview.
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`Applicant first submits that the Brown reference is deficient as an anticipatory reference
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`because the same fails to disclose monitoring exercise data. While Brown discloses that the
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`reference is broader than just medical monitoring (4:23-35), the reference never discloses any
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`use of the device in the exercise field. Applicant next submits that while the Brown reference
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`discloses receiving data from more than one health monitor (device jacks 68A-C), it fails to
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`disclose receiving data indicating a physiologic status of a subject at least partially while the
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`subject is exercising (and where data indicating an amount of exercise performed by the subject
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`is also being received). At most, Brown discloses receiving data with “multiple device
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`1 Note that the teachings of the “medical” embodiment were extended to the “exercise” embodiment in paragraph
`[0081].
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`PA00029780
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`PA00029780
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`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 5 of 6 Page ID #:1298
`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 5 of 6 Page ID #:1298
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`Serial No.: 12/211,033
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`interfaces to accommodate monitoring devices which have diflerent connection standards.”
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`(6:47-50).
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`In fact, Applicant submits that even if systems were developed that modeled exercise data
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`in a better way based on physiologic data, the same would require additional data inputs, e.g.,
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`type of exercise performed, that Brown fails to disclose.
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`For at least these reasons, Applicant submits that the claims are not anticipated by Brown,
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`and further respectfully requests that the 35 U.S.C. §102 rejections of these claims be withdrawn.
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`Nonstatutory Double Patenting Rejection
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`Claims l-12 are rejected under the judicially created doctrine of obviousness-type double
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`patenting as being allegedly unpatentable over claims 3-6, and 33-43 of US. Patent No.
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`6,602,191. In particular, the Examiner states that although the conflicting claims are not
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`identical, they are not patentably distinct from each other because it would have been allegedly
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`obvious to one of ordinary skill in the art at the time of the invention to implement the method of
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`the patent in the manner set forth in the instant application since the claims of the instant
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`application are allegedly merely different renditions of the patented method and computer
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`readable medium.
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`This rejection is traversed with respect to the amended claims as follows, this traversal
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`again tracking the arguments Applicant made in the interview. Applicant submits that the
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`current claims are nonobvious over the claims noted for many of the same reasons they
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`distinguish from Brown. In particular, the claims noted fail to disclose receiving data indicating
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`a physiologic status of a subject at least partially while the subject is exercising (and where data
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`indicating an amount of exercise performed by the subj eet is also being received).
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`For at least these reasons, Applicant submits that the claims are not obvious over the
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`noted claims of US. Patent No. 6,602,191, and further respectfully requests that the double-
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`patenting rejections of these claims be withdrawn.
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`Conclusion
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`Should the Examiner be of the view that an interview would expedite consideration of the
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`application, request is made that the Examiner telephone the Applicants’ attorney at (619) 818—
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`4615 in order that any outstanding issues be resolved.
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`PA00029781
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`PA00029781
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`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 6 of 6 Page ID #:1299
`Case 2:19-cv-06301-AB-KS Document 76-3 Filed 06/26/20 Page 6 of 6 Page ID #:1299
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`Serial No.: 12/211,033
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`Authorization is given to charge deposit account 50-1047 in the amount of $110.00 in
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`additional claims fees Applicant believes is due as the application now has 20 claims, including 4
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`independent claims. Any deficiencies may also be charged to deposit account 50-1047.
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`Respectfully submitted,
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`Date: March 16, 2010
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`/Mark Wieczorek/
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`Attorney for Applicant
`Mayer & Williams PC
`251 North Avenue West, 211d Floor
`Westfield, NJ 07090
`Tel: 619—818—4615
`Fax: 908-518-7795
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`Mark D. Wieczorek
`Registration No. 37,966
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`10
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`PA00029782
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`PA00029782
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