Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 1 of 6 Page ID #:1325
`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 1 of 6 Page ID #:1325
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`EXHIBIT F
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`EXHIBIT F
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`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 2 of 6 Page ID #:1326
`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 2 of 6 Page ID #:1326
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`Serial N0.: 12/211,033
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`Examiner Shirley Xueying J ian, Group Art Unit 3769
`Page 1 0f 5
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`REASONS FOR REQUESTING PRE-APPELLATE REVIEW
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`The Claim Rejections under 35 USC §102
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`Claims 1-4, 6-18 and 20-21 stand rejected under 35 USC. 102(e) as being anticipated by Root et
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`al., US. Patent No. 6,013,007 (“Root”). Applicant submits that the Examiner’s rejections were
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`clearly erroneous at least because the reference fails to disclose a wireless phone as a means to
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`wirelessly transmit exercise/physiologic data to an intemet server. Root also fails to disclose
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`receiving a calculated response, the calculation based on the exercise/physiologic data, and
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`displaying the response. In making these submissions, Applicant cites MPEP 2131, which notes
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`that “to anticipate a claim, the reference must teach every element of the claim”. The reference fails
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`to do this, and thus the rejections are erroneous.
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`The Examiner interpreted “the remote device 101 as a web-enabled wirelessM because it has an
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`internal modem for connecting to the intemet and connecting to a telephone line.” Office Action of
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`8/ 13/10 at page 4, emphasis added. The interpretation of this claim element (which appears in all
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`the independent claims) is clearly erroneous. The disclosed internal modem 613 and telephone line
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`with jack 113 do not configure the remote device 101 as a wireless phone, and are not ways to
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`connect to wireless networks (also required by the independent claims, e.g., claim 1, element (D),
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`and are at most ways to connect to standard landline networks. See 4:60-67. The only wireless
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`ways of communicating in the Root system are the disclosed GPS satellite receiver (4:4-26), the
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`AM/FM/TV receiver (4:40-48), and the IR port 124 (6:2). The GPS and AM/FM/TV receivers
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`clearly cannot meet the claim limitation of sending exercise-related information to an intemet server
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`via a wireless network; rather, they are merely passive receivers of radio wave signals.
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`Similarly, the IR port 124, while at least potentially capable of transmitting data, clearly cannot
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`anticipate a claim limitation of sending exercise data to an intemet server via a wireless network, as
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`alleged by the Examiner in the comments on the Advisory Action (continuation sheet of PTO-33).
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`The Examiner provides no indication of how such an IR port renders the device as a wireless phone,
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`any more than how the presumed complementary IR port on the PC would render the PC a wireless
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`phone. Moreover, the Examiner’s interpretation of the IR port 124 would lead to other missing
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`elements. In this analogy, the remote device 101 in Root would be identified as the claimed
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`wireless phone, and the PC in Root would be identified as the device which provides exercise-
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`PA00029709
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`PA00029709
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`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 3 of 6 Page ID #:1327
`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 3 of 6 Page ID #:1327
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`Serial No.: 12/211,033
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`Examiner Shirley Xueying J ian, Group Art Unit 3769
`Page 2 of 5
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`related information. But this interpretation fails: the PC in Root does not provide exercise-related
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`information: rather, the PC is only disclosed to upload data from an exercise session for storage and
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`trend analysis, or to download waypoints and preferences to configure the remote device. See 2:30-
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`33, 3:47-50, 4:54-59, and 8:52-57. Thus, the interpretation is untenable.
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`Applicant further submits that the Examiner’s attempt to expand the meaning of the term “wireless
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`phone” to “any device with wireless capability” (see Advisory Action, continuation sheet of PTO—
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`33) is overly broad; the extreme weight of industry usage gives a particular meaning to the term as a
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`device that uses mobile telecommunication cellular network technologies to transfer data, this
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`meaning is entirely consistent with Applicant’s usage. It is clearly erroneous, running afoul of
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`MPEP 2131, to ignore this usage.
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`With respect to claims 1, 14, and 15, Root also fails to teach receiving a calculated response (with
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`respect to claim 8, calculating a response and transmitting such a calculated response to the web-
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`enabled wireless phone), the calculation based on the exercise/physiologic data, and displaying the
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`response. Root discloses various data trending and review aspects. For example, the user can set a
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`course and have course changes indicated by the remote device (811-4). The remote device can
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`provide feedback on athletic performance (8: 17-22); however, and notably, the remote device m
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`not access an intemet server to provide such feedback. Once the remote device 101 has transferred
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`data to the PC 701, historical trending may be displayed, but the display is on the PC 701, not on the
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`remote device 101 (8:52-57) as claimed by Applicant.
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`Root also discloses that a remote computer 801 may be employed for this purpose, the remote
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`computer 801 having received the data “via a standard telephone line” (8:58-64). The remote
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`computer 801 may then combine multiple users’ data and present the data on a user-accessible
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`intemet web site (8:64 — 9:9). However, the intemet web site is also clearly distinct from the
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`remote device 101, and the web site is never disclosed to be received and displayed on the same. In
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`fact the remote device 101 is never disclosed to have any sort of capability of displaying user
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`performance data. Thus, Applicant submits that the Examiner has misapplied the reference when
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`alleging that the Root rcmotc device is capable of “receiving feedback from said wcbsitc regarding
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`personal fitness recommendations and data trending” (Final Office Action, page 5). Correctly
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`applied, the Root device is incapable of satisfying the requirement of the instant claims that the
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`calculated response is received and displayed by the wireless phone.
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`PA0002971 0
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`PA00029710
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`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 4 of 6 Page ID #:1328
`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 4 of 6 Page ID #:1328
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`Serial No.: 12/211,033
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`Examiner Shirley Xueying Jian, Group Art Unit 3769
`Page 3 of 5
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`Despite this, Applicant concurs that some data from a server may be delivered to the Root remote
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`device. However, this data is not a calculated response based on the exercise/physiologic data.
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`Rather, what is termed a “calculated response” by the Examiner (Office Action of 8/13/10, page 5)
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`is actually “[g]eographically and demographically targeted messages” relating to advertising (9:21-
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`30), and not a calculated response based on the exercise/physiologic data.
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`In summary, the rejections of the claims based on Root are clearly erroneous because the reference
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`fails to disclose a wireless phone as a means to wirelessly transmit exercise/physiologic data to an
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`internet server by means of a wireless network, and further fails to teach receiving and displaying a
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`calculatcd rcsponsc (with rcspcct to claim 8, calculating a rcsponsc and transmitting such a
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`calculated response for display to the web-enabled wireless phone), where the calculation is based
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`on the exercise/physiologic data, nor does Root teach displaying the response. Even where Root
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`teaches playback to a user, the same is directed to audio related to advertising. For at least these
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`reasons, the claim rejections under 35 USC §102 should be withdrawn as clearly erroneous.
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`The Claim Rejections under Obviousness-Type Double Patenting
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`The Examiner has rejected Claims 1-4 and 6-12 under the judicially-created doctrine of
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`obviousness-type double patenting as being allegedly unpatentable over claims 3-6 and 33-43 of
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`US. Patent No. 6,602,191.
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`In particular, the Examiner has stated that “the claims of the instant
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`application are merely different renditions of the patented method and computer readable medium.”
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`(Office Action of August 13, 2010, page 3, emphasis added).
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`Applicant submits that this conclusion is crroncous and not supportcd by the actual tcxt of the
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`claims. Instant claim 1 requires, among other limitations, receiving data indicating a physiologic
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`status of a subject and receiving data indicating an amount of exercise performed by the subject,
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`where at least one of the data indicating a physiologic status of a subject or the data indicating an
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`amount of exercise performed by the subject is received from the device which provides exercise—
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`related information, and wherein the data indicating a physiologic status of a subject is received at
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`least partially while the subject is exercising.
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`Independent claim 8 includes similar limitations,
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`although on thc scrvcr sidc.
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`Claims 3-6 and 33-43 of the ‘ 191 patent contain no such limitations about two types of data being
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`received, nor that a physiologic status is received at least partially while a subject is exercising.
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`PA0002971 1
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`PA00029711
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`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 5 of 6 Page ID #:1329
`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 5 of 6 Page ID #:1329
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`Serial N0.: 12/211,033
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`Examiner Shirley Xueying J ian, Group Art Unit 3769
`Page 4 of 5
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`Rather, the same states only that a health parameter signal is received, the same corresponding to a
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`health, fitness, nutrition, or exercise state or condition of a patient. At most, the cited claim 37 of
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`USP 6,602,191 relates to supplemental health data, but the same is not defined as in the instant
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`claims, nor is the timing of reception of such supplemental health data specified.
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`Regarding obviousness and double patenting, the Office is reminded of the requirements of MPEP
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`804.II.B.1, requiring comparison for purposes of obviousness to be made between the instant claims
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`and the patented claims, not the specification of the patent. Moreover, as specified in the above
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`MPEP section, the analysis follows the standard Graham formula. Because of limitations in
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`processing power, memory, and display capability with mobile phones at the time of the ‘ 191
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`patent, and despite the ubiquity of voice communications and even a certain level of data
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`transmission, one of ordinary skill in the art would not have expected that two such types of data
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`could be received and transmitted by a mobile phone given the ‘ 191 claims. Therefore, the instant
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`claims are clearly nonobvious over the patented claims. For at least these reasons, Applicant
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`submits that the double patenting rejections of the claims were clearly erroneous and should be
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`withdrawn.
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`The Claim Rejection under 35 USC §112
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`Applicant next submits that the rejection of claim 19 on new matter grounds is clearly erroneous.1
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`First, Applicant notes that the term “Bluetooth®” is provided in various locations in the
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`specification, including, e.g., [0044], [0052], and [0092]. Bluetooth®, a term well-understood to
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`one skilled in the relevant art, was used in the claims of previous family patents.2 Next, Applicant
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`cites MPEP 2173.05(u) and 608.01(v) for their teachings that trademarks are permissible in patent
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`applications, even in claims, so long as they are properly used. In the present case, both 802.15 and
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`Bluetooth® are not used generically but in reference to a particular short-range wireless
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`transmission scheme. Finally, Applicant notes that the recitation of the 802.15 scheme is
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`In the last amendment, Applicant replaced the term “802. 15" with “Bluetooth®" in reference to a short-range
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`wireless transmission scheme, so as to obviate a new matter rejection. That amendment was not entered. Here,
`Applicant reiterates his argument that 802.15 is not new matter. Applicant additionally notes that the prior Examiner
`had suggested changing “Bluetooth®” to “short range wireless transmission scheme”. Applicant made this change, but
`inserted “Bluetooth®” in a dependent claim to further specify the transmission scheme (along with “802.11”), these
`transmission schemes fully disclosed in the specification. To parallel the use of the standard “802.11”, Applicant
`replaced the “Bluetooth®” term with its ratified standard, “802.15”.
`A See, e.g., 7,156,809. And as ofOctober 26, 2010, the term appears in the claims ofover 2300 patents issued by the
`USPTO.
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`PA0002971 2
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`PA00029712
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`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 6 of 6 Page ID #:1330
`Case 2:19-cv-06301-AB-KS Document 76-6 Filed 06/26/20 Page 6 of 6 Page ID #:1330
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`Serial No.: 12/211,033
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`Examiner Shirley Xueying J ian, Group Art Unit 3769
`Page 5 0f 5
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`unambiguously and inherently tied to the Bluetooth® scheme disclosure. To wit, the IEEE 802.15
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`standard is the ratification of the Bluetooth® scheme. So the inclusion of 802.15 cannot be new
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`matter vis-a-viz the specification’s inclusion of Bluetooth®. Consequently, for at least these
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`reasons, Applicant submits that the 35 USC §112 rejection of claim 19 is clearly erroneous and
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`should be withdrawn.
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`The Claim Rejections under 35 USC §103
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`Claim 19 is rejected under 35 USC. 103(a), as being unpatentable over Root as applied to claim 1.
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`Applicant submits that this rejection is clearly erroneous, at least for the following reasons.
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`Claim 19 refers to types of short-range wireless transmission schemes by which the web-enabled
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`wireless phone receives exercise—related information, notably 802.11 or 802.15. Root receives this
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`information in device 101 in only one wireless way: GPS, which is in no way a short-range wireless
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`transmission scheme. Root receives this information in device 101 in other ways, but they are all
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`wircd communications. It is true that Root discloses an IR port, but the same is for communications
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`between the device 101 and the PC 701/801, not for transmitting data t2 the device 101. See also
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`the argument above opposing this interpretation, bridging pages 1 and 2. Since any structure or
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`disclosure necessary to meet the claim limitation is lacking in Root, it cannot be obvious to include
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`a 802.11 or 802.15 port as a means of receiving such exercise data, e. g., from physiological sensors
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`or from exercise machines.
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`Other Reasons for Patentability
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`The Applicant has provided various other reasons for patentability in the prior responses,
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`particularly in the Response filed September 20, 2010 at pages 9—13 (“Prior Response”). For
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`example, with regard to claims 9 and 16, Root fails to disclose downloading applications to a web-
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`enabled wireless phone from a server. Root fails to disclose adaptors, as required by claims 6 and
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`l 1. And as Root fails to disclose wcb-cnablcd wireless phones, the reference is deficient in
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`anticipating claims 14 and 15, which are directed to these.
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`PA0002971 3
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`PA00029713
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