Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 1 of 9 Page ID #:1300
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 1 of 9 Page ID #:1300
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`EXHIBIT D
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`EXHIBIT D
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 2 of 9 Page ID #:1301
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 2 of 9 Page ID #:1301
`Application No.
`Applicant(s)
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`12/211,033
`QUY, ROGER J.
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`Examine,
`Art Unit
`Office Action Summary
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`SHIRLEY JIAN 3769
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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).
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`Status
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`1)IZI Responsive to communication(s) filed on 02 June 2010.
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`2a)IXI This action is FINAL.
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`2b)I:I This action is non-final.
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`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.
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`Disposition of Claims
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`4). Claim(s) 1-4 and 16-21 is/are pending in the application.
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`is/are withdrawn from consideration.
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`4a) Of the above Claim(s)
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`5)I:I Claim(s)
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`is/are allowed.
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`6)IZI Claim(s) 1-4 and 16-21 is/are rejected.
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`7)I:I Claim(s) _ is/are objected to.
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`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`9)I:I The specification is objected to by the Examiner.
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`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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made ofa claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)|:l All b)|:| Some * c)|:l None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No.
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`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)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`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)
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`5) I:I Notice of Informal Patent Application
`Paper No(s)/Mail Date
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`6)I:I Other.
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`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 08—06)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20100805
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`PA00029741
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`PA00029741
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 3 of 9 Page ID #:1302
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 3 of 9 Page ID #:1302
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`Application/Control Number: 12/211,033
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`Page 2
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`Art Unit: 3769
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`DETAILED ACTION
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`Acknowledgement
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`The Examiner acknowledges the response filed March 16, 2010 and the supplemental
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`response filed June 2, 2010 wherein claims 1-4 and 6-21 are pending. For the record claims 14
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`and 15 are claims with a separate statutory class from method claims 1 and 8. The fact that
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`claims 14 and 15 refer back, or reference claim 1 does not make claims 14 and 15 dependent
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`claims. As such there are four independent claims and fourteen dependent claims pending in this
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`application.
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`Response to Arguments
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`The 35 USC § 101 rejection to claims 8-15 are withdrawn due to claim amendments.
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`The claim objection to claim 15 is withdrawn due to claim amendment.
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`The 35 USC § 112— second paragraph rejection to claims 1 and 8 are withdrawn due to
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`claim amendments.
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`The 35 USC § 112— second paragraph rejection to claim 17 is withdrawn due to claim
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`amendment.
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`The claims stand rejected under obviousness type nonstatutory double patenting
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`rejection, because, as previously stated, the broadest reasonable interpretation of claims in this
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`application is merely a different rendition of the claims in the patent.
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`With regard to 102(b) rejections, the Applicant's arguments have been considered but are
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`moot in View of the new ground(s) of rejection.
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`PA00029742
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`PA00029742
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 4 of 9 Page ID #:1303
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 4 of 9 Page ID #:1303
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`Application/Control Number: 12/211,033
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`Page 3
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`Art Unit: 3769
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`Double Patenting
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`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 Ornam, 686
`F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
`1970);and, In re Thoringz‘on, 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).
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`Claims 1-12 are rejected under the judicially created doctrine of obviousness-type double
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`patenting as being unpatentable over claims 3-6, and 33-43 of US. Patent No. 6,602,191.
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`Although the conflicting claims are not identical, they are not patentably distinct from each other
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`because it would have been obvious to one of ordinary skill in the art at the time of the invention
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`to implement the method of the patent in the manner set forth in the instant application since the
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`claims of the instant application are merely different renditions of the patented method and
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`computer readable medium.
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`The Applicant is invited to explain, to make the record clear, reasons that the double
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`patenting rejection does not apply.
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`Claim Rejections - 35 USC § 112
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`The following is a quotation of the first paragraph of 35 USC. 112:
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`The specification shall contain a written description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
`art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
`set forth the best mode contemplated by the inventor of carrying out his invention.
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`PA00029743
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`PA00029743
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 5 of 9 Page ID #:1304
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 5 of 9 Page ID #:1304
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`Application/Control Number: 12/211,033
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`Page 4
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`Art Unit: 3769
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`Claim 19 is rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the
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`written description requirement. The claim(s) contains subject matter which was not described
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`in the specification in such a way as to reasonably convey to one skilled in the relevant art that
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`the inventor(s), at the time the application was filed, had possession of the claimed invention.
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`The claim limitation “802.15” is new matter, not supported by the disclosure.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(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.
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`Claims 1-4, 6-18, and 20-21 are rejected under 35 U.S.C. 102(e) as being anticipated
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`by Root et al. US Patent No. 6,013,007 (“Root").
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`Root teaches the use of a personal athletic performance monitor (device 101) with a
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`communication network (Internet 803) to remotely monitor a user while he/she is exercising
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`(Figs. 1-3, 6-8). The Examiner interprets the remote device 101 as a web-enabled wireless phone
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`because it has an internal modem for connecting to the intemet and connecting to a telephone
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`line (c012, 11.36-39, and see Fig.1). The remote monitor is disclosed as being on a wireless GPS
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`satellite network (col.4, 11.4-21, Figs. 2-3), a radio network (col.4, 1141-47) and modem 613
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`PA00029744
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`PA00029744
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 6 of 9 Page ID #:1305
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 6 of 9 Page ID #:1305
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`Application/Control Number: 12/211,033
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`Page 5
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`Art Unit: 3769
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`(Fig.6). The remote monitor is optionally connected to physiological sensors such as a heart rate
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`sensor 611 and temperature sensor 612 (Fig.6) via a Wired or wireless connection. The remote
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`device is adapted to be worn by a user during exercise (see Figs.2-3).
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`In operation, a user controls the operation of the remote device via a user interface
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`comprised of a variety of input buttons with different functions (col.4, 11.16-59: LED indicator,
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`“NOW” button, volume thumb wheel, pause/position button, band selection button). A display
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`112 indicates the remote device's operating status (c014, 117-13), and audio headphones provide
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`exercise feedback to the user during exercises (col.7, 11.16-28 & 11.51-67). Upon activation, the
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`remote monitor utilizes the built-in GPS receiver to calculate and rate the user’s athletic
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`performance, i.e. elapsed distance, and calories burned (col.7, 11.30-51). While the user exercises,
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`the remote monitor continuously monitors the user’s vitals signs in order to issue a real-time
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`warning when predetermined thresholds are crossed (001.2, 11.17-20). The remote monitor is
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`additionally capable of transmitting stored data to an Internet web site for performance trending
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`and analysis via an internal modem 613 (c012, 1136—39), or a remote PC 801 (Fig.8); and
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`receiving feedback from said web site regarding personal fitness recommendations (001.8, 11.58—
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`col.9, 11.9, col.9, 11.20-30, data trending and a recommendation is interpreted as a calculated
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`response).
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`Regarding claims 8-15, the remote monitor is disclosed to have a CPU 602 and
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`associated memory 608 (Fig.6) with executable programming instructions for carry out the
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`operation of the device as described above (col.6, ll.62-col.8, 11.65).
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`Regarding claims 17-18, the remote monitor is disclosed as having a Wireless connection
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`including an infrared type port 124 (0015, 1136-49, Fig.6) and a wired connection including
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`PA00029745
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`PA00029745
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 7 of 9 Page ID #:1306
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 7 of 9 Page ID #:1306
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`Application/Control Number: 12/211,033
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`Page 6
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`Art Unit: 3769
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`serial port 118, and a cable (see Fig.1A cables 121, 123 for connecting with GPS and
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`headphones).
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`Claim Rejections - 35 USC § 1 03
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth
`in section 102 of this title, if the differences between the subject matter sought to be patented and the prior
`art are such that the subject matter as a Whole would have been obvious at the time the invention was made
`to a person having ordinaiy skill in the alt to Which said subject matter pertains. Patentability shall not be
`negatived by the manner in Which the invention was made.
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`Claim 19 is rejected under 35 U.S.C. 103(a) as being unpatentable Root as applied to
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`claim 1 above.
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`Regarding claim 19, Root does not teach using a short-range wireless transmission
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`scheme including 802.11 or 802.16. However, Root discloses a wireless GPS receiver antenna,
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`301, radio antenna 614, infrared port 124, and modem 613 for connecting to the Internet (Fig.6).
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`At the time the invention was made, it would have been an obvious matter of design choice to a
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`person of ordinary skill in the art to substitute the infrared port to 802.11 or 802.15 connection,
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`because the Applicant has not disclosed 802.11 or 802.15 provides an advantage over an infrared
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`connection. In fact, the specification lists various wireless techniques, including infrared,
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`microwaves, radio frequency, BLUETOOTH, and 802.11 protocols (Specification [0024]).
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure:
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`PA00029746
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`PA00029746
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 8 of 9 Page ID #:1307
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 8 of 9 Page ID #:1307
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`Application/Control Number: 12/211,033
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`Page 7
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`Art Unit: 3769
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`o Alyfuku et al. US Patent No. 5,410,471, networked health care and monitoring
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`system for monitoring a user's daily activities (see Fig. l);
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`0 Begun et al. US Patent No. 5,474,090, apparatus and method for monitoring
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`exercise activity and exercise responses of a user;
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`0 Hickman US Patent No. 6,059,692, an exercise system includes a local system
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`having an exercise apparatus and remote system;
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`0 Caimes US Patent No. 6,139,494, integrated clinical tele-informatics based
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`system.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
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`Applicant is reminded of the extension of time 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. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`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 SHIRLEY JIAN whose telephone number is (571)270-7374. The
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`examiner can normally be reached on Monday-Friday 10:30am-6:00pm
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`PA00029747
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`PA00029747
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`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 9 of 9 Page ID #:1308
`Case 2:19-cv-06301-AB-KS Document 76-4 Filed 06/26/20 Page 9 of 9 Page ID #:1308
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`Application/Control Number: 12/211,033
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`Page 8
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`Art Unit: 3769
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Hank Johnson can be reached on 571-272-4768. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/SHIRLEY JIAN/
`Examiner, Art Unit 3769
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`August 10, 2010
`
`/Henry M. Johnson, 111/
`Supervisory Patent Examiner, Art Unit
`3769
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`PA00029748
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`PA00029748
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