Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 1 of 18 Page ID #:1331
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 1 of 18 Page ID #:1331
`
`
`
`EXHIBIT G
`
`EXHIBIT G
`
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 2 of 18 Page ID #:1332
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 2 of 18 Page ID #:1332
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 1 of 17
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants:
`
`Roger J. Quy
`
`Application No.
`
`12/211,033
`
`Filed:
`
`Title:
`
`September 15, 2008
`
`METHOD AND APPARATUS FOR MONITORING EXERCISE
`WITH WIRELESS INTERNET CONNECTIVITY
`
`Art Unit:
`
`3769
`
`Examiner:
`
`Shirley Jian
`
`Confirm. No.:
`
`7693
`
`Docket NO .
`' '
`
`,
`V13. EFS Web
`
`00125/007005
`A
`
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`Certificate of Electronic Transmission
`Under 37 C.F.R.
`1.8
`
`I hereby certify that this correspondence and any document referenced
`herein are being electronically filed with the USPTO via EFS-Web on June
`14, 2011.
`
`(Signature)
`
`Michelle Wolf
`(Printed Name of Person Sending Correspondence)
`
`Michelle Wolf,
`
`RESPONSE TO NON-FINAL OFFICE ACTION
`
`This filing is in response to thc non-final Office Action mailcd March 18, 2011,
`
`having a due date for response of June 18, 2011. This Response is timely filed and no
`
`fees are believed to be due.
`
`However, if any fees are deemed to be due for this application, or if any credits
`
`for any overpayments are to be returned, the same should be directed to Deposit Account
`
`Number 50-1047 and authorization is hereby given to charge such account.
`
`Claims begin on page 2.
`
`Remarks begin on page 6.
`
`PA0002961 2
`
`PA00029612
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 3 of 18 Page ID #:1333
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 3 of 18 Page ID #:1333
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 2 of 17
`
`IN THE CLAIMS:
`
`1.
`
`(Previously Presented) A method for interactive exercise monitoring, the method
`
`comprising the steps of:
`
`a.
`
`coupling a web-enabled wireless phone to a device which provides exercise-
`
`related information;
`
`b.
`
`c.
`
`d.
`
`e.
`
`rendering a user interface on the web-enabled wireless phone;
`
`receiving data indicating a physiologic status of a subject;
`
`receiving data indicating an amount of exercise performed by the subject;
`
`wherein at least one of the data indicating a physiologic status of a subject or the
`
`data indicating an amount of exercise performed by the subject is received from the
`
`device which provides exercise-related information, and wherein the data indicating a
`
`physiologic status of a subject is received at least partially while the subject is exercising;
`
`f.
`
`sending the exercise-related information to an intemet server via a wireless
`
`network;
`
`g.
`
`receiving a calculated response from the server, the response associated with a
`
`calculation performed by the server based on the exercise-related information; and
`
`h.
`
`running an application in the web-enabled wireless phone for receiving the
`
`exercise-related information and displaying the response.
`
`2. (Previously Presented) The method of claim 1, wherein the receiving data indicating a
`
`physiologic status of a subject includes receiving data from a physiological sensor
`
`coupled to an exercise machine.
`
`3.
`
`(Previously Presented) The method of claim 1, where the receiving data indicating an
`
`amount of exercise performed by the subject includes receiving data from an exercise
`
`machine.
`
`PA0002961 3
`
`PA00029613
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 4 of 18 Page ID #:1334
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 4 of 18 Page ID #:1334
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 3 of 17
`
`4. (Previously Presented) The method of claim 1, wherein the web-enabled wireless
`
`phone receives exercise-related information over a transmission medium, the
`
`transmission medium including a wired connection or a wireless connection.
`
`5. (Canceled)
`
`6. (Original) The method of claim 1, wherein the web-enabled wireless phone receives
`
`data via an adapter to convert a signal from the device to a suitable input for the wireless
`
`phone.
`
`7. (Previously Presented) The method of claim 1, wherein the data indicating an amount
`
`of exercise performed is received from a device selected from the group consisting of: a
`
`treadmill, a stepper, an exercise cycle, an accelerometer, a rowing machine,
`
`physiotherapy equipment, an aerobic or anaerobic exercise device, and a device that
`
`monitors an amount of work or rate of work performed.
`
`8. (Previously Presented) A non-transitory computer-readable medium, containing an
`
`application for performing an interactive method of exercise monitoring, the application
`
`physically residing on a server, the method comprising the steps of:
`
`a.
`
`receiving exercise-related information from a web-enabled wireless phone,
`
`wherein the exercise-related information includes data indicating a physiologic status of a
`
`subject and data indicating an amount of exercise performed by the subject, and wherein
`
`the data indicating a physiologic status of a subject is received at least partially while the
`
`subject is exercising;
`
`b.
`
`c.
`
`calculating a response based on the exercise—related information;
`
`transmitting the calculated response to the web-enabled wireless phone.
`
`9. (Previously Presented) The medium of claim 8, wherein the method further comprises:
`
`PA0002961 4
`
`PA00029614
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 5 of 18 Page ID #:1335
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 5 of 18 Page ID #:1335
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 4 of 17
`
`a. enabling the web-enabled wireless phone to receive exercise-related information from
`
`a device; and
`
`b.
`
`transmitting to the web-enabled wireless phone a device application including a user
`
`interface on which the calculated response may be rendered.
`
`10. (Previously Presented) The medium of claim 8, wherein the calculating a response
`
`includes calculating a response to assist a person in monitoring calorie expenditure,
`
`losing weight, or maintaining a healthy lifestyle.
`
`11. (Previously Presented) The medium of claim 8, wherein the instructions further
`
`cause the web—enabled wireless phone to receive the exercise—related information via an
`
`adapter, the adapter to convert a received data signal to a suitable input for the web-
`
`enabled wireless phone.
`
`12. (Previously Presented) The medium of claim 8, wherein the data indicating an
`
`amount of exercise performed by the subject is received from a device which is selected
`
`from the group consisting of: a pedometer, a treadmill, a stepper, an exercise cycle, an
`
`accelerometer, a rowing machine, physiotherapy equipment, an aerobic or anaerobic
`
`exercise device, and a device that monitors an amount of work or rate of work performed.
`
`13. (Previously Presented) The medium of claim 8, wherein the receiving exercise-
`
`related information includes receiving exercise-related information over a wireless or a
`
`wired connection.
`
`14. (Previously Presented) A web-enabled wireless phone, containing a computer-
`
`readable medium, the computer-readable medium comprising memory within a web-
`
`enabled wireless phone, the computer-readable medium comprising instructions for
`
`causing a processor in the web-enabled wireless phone to perform the method of claim 1.
`
`PA0002961 5
`
`PA00029615
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 6 of 18 Page ID #:1336
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 6 of 18 Page ID #:1336
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 5 of 17
`
`15.
`
`(Previously Presented) A computer-readable medium, the computer-readable
`
`medium comprising memory within a web-enabled wireless phone, the computer-
`
`readable medium containing instructions for causing a processor in a web-enabled
`
`wireless phone to perform the method of claim 1.
`
`16. (Previously Presented) The method of claim 1, further comprising downloading the
`
`application to the web-enabled wireless phone from a server.
`
`17. (Previously Presented) The method of claim 4, wherein the wireless connection
`
`includes an infrared connection or a radio frequency communication protocol including a
`
`short—range wireless transmission scheme.
`
`18. (Previously Presented) The method of claim 4, wherein the wired connection
`
`includes a USB connection, a cable, or a docking station.
`
`19. (Previously Presented) The method of claim 17, wherein the short-range wireless
`
`transmission scheme includes 802.11 or Bluetooth®.
`
`20. (Previously Presented) The method of claim 1, wherein the data indicating a
`
`physiologic status of a subject is received from a device selected from the group
`
`consisting of: a heart rate monitor, a blood pressure monitor, a body temperature monitor,
`
`a respiratory monitor, a biofeedback device, an electronic body weight scale, and a body
`
`fat gauge.
`
`21. (Previously Presented) The medium of claim 8, wherein the data indicating a
`
`physiologic status of a subject is received from a device which is selected from the group
`
`consisting of: a heart rate monitor, a blood pressure monitor, a body temperature monitor,
`
`a respiratory monitor, a biofeedback device, an electronic body weight scale, and a body
`
`fat gauge.
`
`PA0002961 6
`
`PA00029616
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 7 of 18 Page ID #:1337
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 7 of 18 Page ID #:1337
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 6 of 17
`
`REMARKS
`
`Status ofthe Claims
`
`Claims 1-4 and 6-21 are pending in the application. Claims 1-4 and 6-21 are
`
`rejected. No claims have been amended or cancelled, and thus claims 1-4 and 6-21 are
`
`currently pending, of which claims 1 and 8 are in independent form. Claims 14 and 15
`
`are in independent form, but include all the limitations of claim 1.
`
`Re'ection under 35 U.S.C.
`
`102
`
`Claims 1-4 and 6-21 are rejected under 35 U.S.C. 102(e) as being anticipated by
`
`Mault et al. US 6,790,178 B1 (Mault). These rejections are traversed with respect to the
`
`amended claims as follows.
`
`Applicant’s date of invention pre-dates the effective date of the Mault reference.
`
`As shown in the attached Declaration Under 37 CFR 1.131 (Appendix I, referencing
`
`Appendix II), Applicant’s date of invention for his provisional application 60/ 172,486 is
`
`at least as early as November 6, 1999. Thus Applicant’s provisional patent application
`
`has an earlier effective date than all of the Mault provisionals with the possible
`
`exceptions of the following:
`
`60/ 15 5,85 1
`
`60/ l 5 8 ,5 5 3
`
`60/ 1 5 8 ,5 5 4
`
`60/ l 5 8 ,5 5 6
`
`60/ l 5 9,285
`
`These provisional patent applications are reproduced in Appendix 111.
`
`With respect to independent claim 1, it is noted that the claim requires a method
`
`for interactive exercise monitoring, including coupling a web-enabled wireless phone to a
`
`device which provides exercise-related information; rendering a user interface on the
`
`web-enabled wireless phone; receiving data indicating a physiologic status of a subject;
`
`PA0002961 7
`
`PA00029617
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 8 of 18 Page ID #:1338
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 8 of 18 Page ID #:1338
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 7 of 17
`
`and receiving data indicating an amount of exercise performed by the subject. At least
`
`one ofthe data indicating a physiologic status ofa subject or the data indicating an
`
`amount of exercise performed by the subject is received from the device which provides
`
`exercise—related information, and the data indicating a physiologic status of a subject is
`
`received at least partially while the subject is exercising. Other steps include sending the
`
`exercise-related information to an internet server via a wireless network; receiving a
`
`calculated response from the server, the response associated with a calculation performed
`
`by the server based on the exercise-related information; and running an application in the
`
`web-enabled wireless phone for receiving the exercise-related information and displaying
`
`the response.
`
`With respect to independent claim 8, it is noted that the claim requires a non—
`
`transitory computer-readable medium, containing an application for performing an
`
`interactive method of exercise monitoring, the application physically residing on a server,
`
`the method including receiving exercise-related information from a web-enabled wireless
`
`phone, where the exercise-related information includes data indicating a physiologic
`
`status of a subject and data indicating an amount of exercise performed by the subject,
`
`and where the data indicating a physiologic status of a subject is received at least partially
`
`while the subject is exercising; calculating a response based on the exercise-related
`
`information; and transmitting the calculated response to the web-enabled wireless phone.
`
`These claims are clearly supported by Applicant’s provisional patent application,
`
`provided in its entirety in Appendix II and excerpted below:
`
`
`
`PA0002961 8
`
`PA00029618
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 9 of 18 Page ID #:1339
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 9 of 18 Page ID #:1339
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 8 of 17
`
`
` 1:131:11 mm 11.11113 31111::13123111; human" as .
`
`
`dismay Set=-‘$233.; 6111-111}: 10151113, the ts j
`.st 3“ 11111011111111;(1:311:. 3:21 1mmthe 111.11335' .tswpxshki its
`
`stern
`‘
`
`
`[11%. patter: is {mi w:mu'tai1c(1‘11)
`--
`
`'
`111113011111.
`.It‘ 1;}?
`
`‘
`‘
`by) A;
`writ}:tits:stems sewn111111 11-11-111. 11.13 1‘111131:} the $9131
`
`
`
`"strciss snacking*9 over the1when: and
`‘1
`1*E1“the *3'1151'1:1310111311?
`
`
`1p1 “zlshsme11‘ 111331111 .- "
`
`
`_
`:11. 111$: chalets: 111m 1:
`l thrice:steam
`
`
`
`Q13 11312.1 pert. ail-‘53 adapter
`.mtt11511.1 or =13 {31111211. :1:
`:_;atiets§
`
`
`
`
`
`'
`
`
`
`
`. em11 7
`
`watt the twtput s
`
`orthe pitch-1 The patient mt: ‘ifii‘l‘tfl' S131
`.-
`
`
` fii‘ 1?.“1m“:11111111}?! I118»? ‘I’T .- 1 " 1"1W51‘itifSfi \(‘t
`
`
`
`
`111pis-Cts of a rmsemwmt an .
`'
`
`
`
`
`'
`tar be mtt::1t:t1;vt} ems
`' " .eed;trek t1;
`emit:
`
`
`
`
`
`1.1311113 use
`3
`
`
`
`{111.31.1‘1‘if11383115 .-‘1t1“°t‘t‘$?1 tit-muses is11mm
`1113:3112 progmt‘t. {112-1-11th en $1 re-
`
`iitfitl-t'fllpkffiitlfif11:111C1“’°’110‘1\1$Pendant: 1111031113301 t1~stt~et.ate>‘tt:hea§th
`
`>1 tame.m. 1".trtttmfi'
`timtstim may 1:1:
`titted mthe user swarms: tn
`
`
`. r isgptsts. that East: heist:enter1:511tas
`'
`
`
`
`disks er
`
`
`Mault, on the other hand, has no such disclosure, particularly not in the
`
`provisionals noted above. Rather, these disclose PDAs that primarily employ plug-ins
`
`(though internal software is disclosed) that allow a physiological or activity
`
`measurement. The FDA incorporates apparatus for sending results to "a central station
`
`Via a telecommunications network such as the Internet". The link between the PDA and
`
`the telecommunications network could be "via a wireless connection to a transceiver
`
`PA0002961 9
`
`PA00029619
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 10 of 18 Page ID #:1340
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 10 of 18 Page ID #:1340
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 9 of 17
`
`which is connected to the Internet". The same link return signals to the PDA for display
`
`to the user. See, e.g., 60/155,851, page 2, at paragraph 3. Monitors may also be coupled
`
`to the PDA through a wireless channel. See, e.g., 60/158,553, page 3, at paragraph 3.
`
`Therefore, Applicant submits that Mault is deficient as anticipatory reference as
`
`the same lacks teaching or disclosure of a web enabled wireless phone. Mault’s PDA
`
`cannot meet this claim limitation as, at the time of filing, a PDA and a mobile phone were
`
`quite distinct devices: it was in fact several years later until their functions became
`
`similar. The present application and the provisional application on which it is based
`
`disclose one type of wireless web device being a PDA equipped with a wireless modem,
`
`and another type of wireless web device being a web enabled wireless phone, and a third
`
`type being a device that combines the fiJnctions of a computer, PDA, and telephone.
`
`Mault also teaches a mobile phone in his 60/265,166, but as a distinct disclosure from a
`
`M as described in his earlier provisional applications. And 60/265,166 was filed
`
`subsequently to Applicant’s declaration of invention.
`
`Therefore, for at least this reason, Applicant submits that the rejection of claims 1
`
`and 8 based on Mault should be withdrawn.
`
`Even assuming, arguendo, the reference was not deficient on this basis, other
`
`distinctions may also be seen. For example, with respect to claim 1, Mault lacks teaching
`
`or disclosure of a user interface to display a response via a web enabled phone as
`
`disclosed and claimed by Applicant. What makes a web-enabled mobile phone distinct
`
`from a conventional cellular phone are features, e.g., a microbrowser, designed to operate
`
`within the constraints of a small display screen, to access and display information derived
`
`from the web (see, e. g., Applicant’s provisional patent application at page 2, paragraph
`
`2), and an operating system that includes the ability to download application programs
`
`from a website. For additional information about the known characteristics of a web-
`
`enabled phone, the Examiner is referred to:
`
`htt
`:f/ww, I.educauscedu/EDUCAUSE+ uarterl I/EDUCAUSE uarterl lit/iarazine‘v’olu
`
`
`
`ran/Smart blionesandOtherh/lobi leDeVic/ 1 57292).
`
`For at least this reason as well, Applicant submits that the rejection of claim 1
`
`based on Mault should be withdrawn.
`
`PA00029620
`
`PA00029620
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 11 of 18 Page ID #:1341
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 11 of 18 Page ID #:1341
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 10 of 17
`
`The reference is even more deficient with respect to the dependent claims. For
`
`example, with respect to claims 9 and 16, Mault lacks teach or disclosure of downloading
`
`an application program from an internet server. See, e.g., Applicant’s provisional patent
`
`application 60/172,486, at page 2, para 2, and page 3, para 1. Rather, Mault teaches that
`
`the local application software is loaded from plug-in modules. Alternatively, the
`
`reference discloses that the application software may be resident in the memory of the
`
`PDA. See, e.g., Mault ‘178 at 4:44-47. However, the reference does not teach by what
`
`means the application software is loaded into the PDA memory. It is noted that in one of
`
`the Mault provisional cases (60/ 165,166), filed subsequently to Applicant’s provisional
`
`patent declaration of invention, the reference discloses a server program to receive and
`
`process data from a mobile phone; but notably, even in this disclosure, there is no
`
`teaching of downloading the application program to the phone, as required by instant
`
`claims 9 and 16.
`
`Re'ection under 35 U.S.C.
`
`103
`
`Claims 1-4, 7-10, 12-16 and 20-21 stand rejected under 35 U.S.C. 103(a) as being
`
`allegedly unpatentable over Hickman US 6,059,692 (Hickman) in view of King et al. US
`
`6,353,839 Bl (King).
`
`Applicant initially notes the requirements of the cited code section (35 USC 103):
`
`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 ordinary
`skill in thc art to which said subjcct mattcr pertains.
`Patentability shall not be negatived by the manner in which
`the invention was made.
`
`(Emphasis added.)
`
`Applicant submits that at the time the invention was made, the claimed invention
`
`was clearly non-obvious over the prior art cited.
`
`PA00029621
`
`PA00029621
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 12 of 18 Page ID #:1342
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 12 of 18 Page ID #:1342
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 11 of 17
`
`In particular, the Examiner alleges that it is obvious that a conventional computer,
`
`as taught by Hickman in the light of King, can be replaced by a mobile phone. The
`
`Examiner states that, “replacing a cumbersome desktop computer with a mobile web-
`
`enabled phone is merely a product of market pressure as a result of increasing demand for
`
`mobile access to the Internet and increasing processing power for such mobile devices.”
`
`The Applicant concurs that nowadays mobile phones are being used for many
`
`tasks previously requiring a personal computer. However, this was clearly not the case at
`
`the time the invention was made twelve years ago. Rather, the use of a web-enabled
`
`wireless phone to replace the personal computer and standard telephone modem, or a
`
`conventional telemetry system of the time, was a product innovation and by no means
`
`obvious to a person having ordinary skill in the art—as previously discussed in response
`
`to prior rejections, e.g., those under the Root reference,
`
`In particular, the relatively small amount of memory and processing capability
`
`provided on a wireless phone in the 1990s, as compared to the present time, severely
`
`limited the fiinctionality of applications running on the wireless phone, especially in
`
`terms of computing capacity, processing power, and user interface. In the current
`
`claimed systems, e.g., the application program downloaded from a server is thus designed
`
`to suit the constraints of the small display screens of a mobile phone. By providing
`
`significant application functionality on the server, less memory and processing
`
`capabilities become necessary on the wireless phone; thus freeing memory and
`
`processing for an interactive user interface and for receiving the exercise related data.
`
`The external application running on the intemet server and external data storage were
`
`other examples of ways employed to overcome the computing limitations of a mobile
`
`phone.
`
`Even the King reference acknowledges that mobile phones at the time of their
`
`invention were extremely limited in computing power, memory capacity, display
`
`capability, input interface, and web browser implementation in comparison to desktop
`
`personal computers. See, e.g., 1:35—54. Hence, the purpose of King was to improve the
`
`display functionality of a mobile wireless device by reducing the delay involved in
`
`interacting with a back-end server. See, e.g., 2:3-29.
`
`PA00029622
`
`PA00029622
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 13 of 18 Page ID #:1343
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 13 of 18 Page ID #:1343
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 12 of 17
`
`Consequently, King does not teach or disclose the use of mobile phones to control
`
`and monitor devices connected via a generic input/output port to the mobile phone. Nor
`
`does the reference teach or disclose how exercise or physiological data may be received
`
`by means of a wired or wireless connection to the phone, or that an application program
`
`downloaded from the server controls the manner, content, and display of the measured
`
`data to the user.
`
`As one of ordinary skill in the art would not have been led to combine King with
`
`Hickman at the time the invention was made, a primafacz‘e case of obviousness cannot be
`
`shown, and thus the rejection of claims 1, 8, 9, 14, and 15 should be withdrawn.
`
`Even assuming, arguendo, the above were not the case, the references clearly
`
`teach away from their own combination. In particular, the Office uses Hickman for a
`
`basic disclosure of a “virtual personal trainer”, while using King for a disclosure of a
`
`mobile phone as a computing device. Hickman specifically uses a script system to
`
`control and monitor the operation of the exercise apparatus. In fact, the script system
`
`appears to be a key element of the invention, and is included in all of the claims.
`
`However, King specifically teaches away from script systems (216-11). Thus, one of
`
`ordinary skill in the art, with Hickman in hand, would never look to the King reference
`
`for potential combination.
`
`Claims 11, 17-19 stand rejected under 35 U.S.C. 103(a) as being allegedly
`
`unpatentable over Hickman in View of King and further in view of Rautila US 6,524,189
`
`B1 (Rautila).
`
`Rautila teaches a system to link together multiple mobile phones and game units
`
`using a short range radio communication link, e.g., Bluetooth, to bypass a cellular
`
`network, or alternatively through a public wireless network. See, e. g., 4:55-65. The
`
`mobile phones are used to share game-related data with users. However, Rautila does not
`
`disclose that which is missing from the combination of Hickman and King. In particular,
`
`Rautila provides no more evidence of why one of ordinary skill in the art would develop
`
`the claimed invention at the time of the invention using the combination of references
`
`proposed by the Office. Applicant respectfully submits that it is only with the benefit of
`
`hindsight, gained through over a decade of development of mobile phones, can the
`
`PA00029623
`
`PA00029623
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 14 of 18 Page ID #:1344
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 14 of 18 Page ID #:1344
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 13 of 17
`
`claimed invention seem obvious. Accordingly, Applicant submits that the rejection based
`
`on the combination is improper and should be withdrawn.
`
`Conclusion
`
`Should the Examincr bc of the vicw that an interview would cxpcditc
`
`consideration of the application, request is made that the Examiner telephone the
`
`Applicants” attorney at (619) 818-4615 in order that any outstanding issues be resolved.
`
`Dated: _June 14, 2011
`
`Respectfully submitted,
`
`_/Mark Wieczorek/
`
`Mark D. Wicczorck
`
`Registration No. 37,966
`
`Attorncy for Applicant
`
`Mayer & Williams, PC
`
`251 North Avenue West, 2nd Floor
`
`Westfield, NJ 07090
`
`Tel: 703-433-0510
`
`Fax: 703-433-2362
`
`PA00029624
`
`PA00029624
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 15 of 18 Page ID #:1345
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 15 of 18 Page ID #:1345
`
`Serial N0.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 14 of 17
`
`APPENDIX I
`
`(Declaration Under 37 CFR 1.131)
`
`PA00029625
`
`PA00029625
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 16 of 18 Page ID #:1346
`Case 2:19-cv-06301—AB-KS Document 76-7 Filed 06/26/20 Page 16 of 18 Page ID #:1346
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 15 of 17
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants:
`
`Roger J. Quy
`
`Application No.
`
`12/211,033
`
`Filed:
`
`Title:
`
`September 15, 2008
`
`METHOD AND APPARATUS FOR MONITORING EXERCISE
`WITH WIRELESS INTERNET CONNECTIVITY
`
`Art Unit:
`
`3769
`
`Examiner:
`
`Shirley Jian
`
`Confirm. No.:
`
`7693
`
`Docket NO .
`
`00125/007005
`
`,
`V13. EFS Web
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`Certificate of Electronic Transmission
`Under 37 C.F.R.
`1.8
`
`I hereby certify that this correspondence and any document referenced
`herein are being electronically filed with the USPTO via EFS-Web on
`
`Michelle Wolf
`(Printed Name of Person Sending Correspondence)
`
`
`
`(Signature)
`
`DECLARATION UNDER 37 CFR 1.131
`
`1.
`
`1, Roger Quy, do declare and state:
`
`2.
`
`I am the sole inventor of claims 1-4 and 6-21 of the above-identified
`
`application.
`
`3. On or before November 6, 1999, I completed my invention as described in the
`
`provisional patent application on Which the above-identified non—provisional
`
`patent application is based, i.e., US. Provisional Patent Application Serial No.
`
`60/172,486, as evidenced by the following:
`
`a.
`
`1 prepared the text of the above—identified provisional patent
`
`application.
`
`PA00029626
`
`PA00029626
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 17 of 18 Page ID #:1347
`Case %E11~%1fi¥5961§9}ffi§3§5 Document 76-7 Flled 06/26/20 Page 17 of 18 Page ID #:1347
`Examiner Shirley Xueying Jian
`Group Art Unit 3?69
`Page 16 of 17
`
`b.
`
`I signed the above-identified provisional patent application on
`
`November 6, 1999, as evidenced by my dated signature on the final
`
`page of the same, under the notation “I hereby declare that I am the
`
`Inventor of the above-described invention on this date.“
`
`l declare that all statements made herein elm)! own knowledge are true. and that
`
`all statements made on information and heliet'are believed to be true, and further
`
`that the statements were made with the knowledge that willful false statements
`
`and the like so made are punishable by line or ittipi‘i301i.nterit._ 01‘ both, under
`
`Section. ‘1 001 of Title 18 ofthe United States Code and that such willful false
`
`statements mayjeopardize the validity of the application or any patent issuing
`
`thereon.
`
`Date:
`
`[9 l Roger Quy
`
`PA00029627
`
`PA00029627
`

`

`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 18 of 18 Page ID #:1348
`Case 2:19-cv-06301-AB-KS Document 76-7 Filed 06/26/20 Page 18 of 18 Page ID #:1348
`
`Serial No.: 12/211,033
`
`Examiner Shirley Xueying J ian
`Group Art Unit 3769
`Page 17 of 17
`
`APPENDIX 11
`
`(File History of Applicant’s 60/172,486 provisional)
`
`PA00029628
`
`PA00029628
`