Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 1 of 9 Page ID #:1355
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 1 of 9 Page ID #:1355
`
`
`
`EXHIBIT I
`
`EXHIBIT I
`
`

`

`
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 2 of 9 Page ID #:1356
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 2 of 9 Page ID #:1356
`Application/Control No.
`Applicant(s)/Patent under
`Reexamination
`
`
`
`
`12/211,033
`QUY, ROGER J.
`Art Unit
`
`
`
`
`
`
`3769
`
`Notice of Panel Decision
`
`from Pre-Appeal Brief
`Review
`
`SHIRLEY JIAN
`
`PA00029582
`
`This is in response to the Pre-Appeal Brief Request for Review filed 28 October 2011.
`
`1. El Improper Request — The Request is improper and a conference will not be held for the following
`reason(s):
`
`[I The Notice of Appeal has not been filed concurrent with the Pre-Appeal Brief Request.
`I] The request does not include reasons why a review is appropriate.
`D A proposed amendment is included with the Pre—Appeal Brief request.
`D Other:
`
`The time period for filing a response continues to run from the receipt date of the Notice of Appeal or from
`the mail date of the last Office communication, if no Notice of Appeal has been received.
`
`Proceed to Board of Patent Appeals and lnterferences — A Pre—Appeal Brief conference has been
`2.
`held. The application remains under appeal because there is at least one actual issue for appeal. Applicant
`is required to submit an appeal brief in accordance with 37 CFR 41.37. The time period for filing an appeal
`brief will be reset to be one month from mailing this decision, or the balance of the two-month time period
`running from the receipt of the notice of appeal, whichever is greater. Further, the time period for filing of the
`appeal brief is extendible under 37 CFR 1.136 based upon the mail date of this decision or the receipt date
`of the notice of appeal, as applicable.
`
`IXI The panel has determined the status of the claim(s) is as follows:
`Claim(s allowed:
`.
`.
`Claim(s objected to:
`Claim(s) rejected: 1-4 and 6-21.
`Claim(s) withdrawn from consideration:
`
`) )
`
`3. |:| Allowable application — A conference has been held. The rejection is withdrawn and a Notice of
`Allowance will be mailed. Prosecution on the merits remains closed. No further action is required by
`applicant at this time.
`
`4. |:| Reopen Prosecution — A conference has been held. The rejection is withdrawn and a new Office
`action will be mailed. No further action is required by applicant at this time.
`
`All participants:
`
`(1) Shirley Jian.
`
`(2) Sam Yao.
`
`/SH|RLEY JIAN/
`
`(3)Linda Dvorak.
`
`(4)
`
`.
`
`/SAM YAO/
`
`/Linda C Dvorak/
`
`Examiner, Art Unit 3769
`
`Supervisory Patent Examiner, Art
`Unit 3769
`
`Supervisory Patent Examiner, Art
`Unit 3739
`
`US. Patent and Trademark Office
`
`Part of Paper No. 20120105
`
`PA00029582
`

`

`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 3 of 9 Page ID #:1357
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 3 of 9 Page ID #:1357
`
`DOC Code: AP.PRE.REQ
`
`PTO/SB/33 (07.09)
`Approved for use through 07/31/2012. OMB 0651-0031
`U.S. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
`Under the Paoerwork Reduction Act of 1995, no oersons are reouired to resoond to a collection of information unless it dis-la s a valid OMB control number.
`
`PRE-APPEAL BRIEF REQUEST FOR REVIEW
`
`Docket Number (Optional)
`
`00125/002005 (2051/1404)
`
`I hereby certify that this correspondence is being deposited with the
`United States Postal Service with sufficient postage as first class mail
`in an envelope addressed to “Mail Stop AF, Commissioner for
`Patents, PO. Box 1450, Alexandria, VA 22313—1450” [37 CFR 1.8(a)]
`
`on September 28, 2011
`
`Signature
`
`/Michelle Wolf/
`
`Application Number
`
`Filed
`
`12/211’033
`First Named Inventor
`
`Roger J. Quy
`
`September 15’ 2008
`
`Examiner
`
`.
`.
`.
`Typed or printed M' h H W If
`nameL Shirley Xeuyrng Jran
`
`Applicant requests review of the final rejection in the above—identified application. No amendments are being filed
`with this request.
`
`
`
`This request is being filed with a notice of appeal.
`
`The review is requested for the reason(s) stated on the attached sheet(s).
`Note: No more than five (5) pages may be provided.
`
`I am the
`
`_
`_
`|:| applicant/Inventor.
`assignee of record of the entire interest.
`See 37 CFR 3.71. Statement under 37 CFR 3.73(b) is enclosed.
`(Form PTO/SB/96)
`
`/MarkWieczorek/
`
`Signature
`
`-
`Mark D' Wieczorek
`Typed or printed name
`
`
`attorney or agent of record. 37966
`Registration number
`
`.
`
`619-818-4615
`
`Telephone number
`
`October 27’ 2011
`attorney or agent acting under 37 CFR 1.34.
`Registration number if acting under 37 CFR 1.34— Date
`
`NOTE: Signatures of all the inventors or assignees of record of the entire interest or their representative(s) are required.
`Submit multiple forms if more than one signature is required, see below”.
`
`D *Total of — forms are submitted.
`
`This collection of information is required by 35 U.S.C. 132. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11, 1.14 and 41.6. This collection is estimated to take 12 minutes to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer,
`US Patent and Trademark Office, US Department of Commerce, PO. Box 1450, Alexandria, VA 22313—1450. DO NOT SEND FEES OR COMPLETED
`FORMS TO THIS ADDRESS. SEND TO: Mail Stop AF, Commissioner for Patents, P.0. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`PA00029583
`
`PA00029583
`

`

`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 4 of 9 Page ID #:1358
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 4 of 9 Page ID #:1358
`
`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection
`with your submission of the attached form related to a patent application or patent. Accordingly,
`pursuant to the requirements of the Act, please be advised that: (1) the general authority for the
`collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary;
`and (3) the principal purpose for which the information is used by the US. Patent and Trademark
`Office is to process and/or examine your submission related to a patent application or patent. If you do
`not furnish the requested information, the US. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or
`abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the
`Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
`this system of records may be disclosed to the Department of Justice to determine whether
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`
`A record in this system of records may be disclosed, as a routine use, to a contractor of the
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`amended, pursuant to 5 U.S.C. 552a(m).
`A record related to an International Application filed under the Patent Cooperation Treaty in
`this system of records may be disclosed, as a routine use, to the International Bureau of the
`World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to
`the Atomic Energy Act (42 U.S.C. 218(c)).
`A record from this system of records may be disclosed, as a routine use, to the Administrator,
`General Services, or his/her designee, during an inspection of records conducted by GSA as
`part of that agency’s responsibility to recommend improvements in records management
`practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall
`be made in accordance with the GSA regulations governing inspection of records for this
`purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not
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`
`A record from this system of records may be disclosed, as a routine use, to the public after
`either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent
`pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37
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`A record from this system of records may be disclosed, as a routine use, to a Federal, State,
`or local law enforcement agency, if the USPTO becomes aware of a violation or potential
`violation of law or regulation.
`
`PA00029584
`
`PA00029584
`

`

`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 5 of 9 Page ID #:1359
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 5 of 9 Page ID #:1359
`
`Serial No.: 12/211,003, Examiner Jian, Group Art Unit 3769
`Page 1 of 5
`
`REASONS FOR REQUESTING PRE-APPEAL RELIEF
`
`Claims 1—4 and 6—21 are pending and stand rejected as per a Final Office Action dated August 30,
`
`2011. The claims stand rejected under 35 USC 102 (e) as being allegedly anticipated by US Patent No.
`
`6,790,178 to Mault et a1. (hereinafter “Mault”). In addition, Claims 1-4, 7-10, 12-16, and 20-21 stand
`
`rejected under 35 USC 103(a) as being allegedly unpatentable over US Patent No. 6,059,692 to Hickman
`
`(hereinafter "Hickman") in view of US Patent No. 6,353,839 to King et al. (hereinafter "King”). Finally,
`
`Claims 11 and 17—19 stand rejected as being allcgcdly unpatentable ovcr Hickman in view of King and
`
`further in view of US Patent No. 6,524,189 to Rautila (hereinafter "Rautila”). These rejections are
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`discussed in turn, as necessary, below.
`
`Applicant first notes clear errors with regard to Office policy. The Final Office Action initially
`
`addressed Applicant’s Response filed June 14, 201 1 by alleging that “The applicant’s date ofinvention
`
`for his provisional application 60/ 172,486 was signed on November 6, 1999; however, the same
`
`application was not filed until December 17, 1999. Currently, the effective provisional date for
`
`60/172,486 is December 17, 1999.”
`
`Applicant submits that this statement is clearly erroneous. Applicant is permitted under 37 CFR 1.131
`
`to submit a Declaration to establish invention of the subject matter of the rejected claims prior to the
`
`effective date of the reference on which the rejection is based. Applicant alleged and provided evidence
`
`proving up a date of invention at least as early as November 6, 1999, i.e., a Declaration under 37 CFR
`
`1.131 to prove a date of invention prior to that of Applicant’s provisional filing date, this date antedating
`
`most of the provisional applications to which the Mault reference claimed priority. No substantive issues
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`were raised with regard to this Declaration.
`
`However, in the Final Office Action dated August 30, 201 1, the Examiner rejected the Declaration as
`
`moot under MPEP 715.05 because "When the reference in question is a non-commonly owned US patent
`
`or patent application publication claiming the same invention as applicant and its publication date is less
`
`than 1 year prior to the presentation of claims to that invention in the application being examined,
`
`applicant's remedy, if any, must be by way of 37 CFR 41.202 instead of 37 CFR 1.131.” (Page 9).
`
`Applicant submits that this allegation is also clearly erroneous. On this issue in particular, Applicant
`
`is submitting these arguments in writing as Applicant was advised to do so upon calling the Office on
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`September 21, 2011 in an attempt to remove this ground of rejection in a more expeditious manner.
`
`Applicant believes MPEP 715.05 is inappropriately applied to the present case because the same
`
`deals with a US patent or application which claims the same invention as defined in 37 CFR 41 .203(a), as
`
`the Applicant. On the other hand, and pertinent to the present case, MPEP 706.02(b) states that a rejection
`
`based on 35 USC 102(6) can be overcome by “(D) filing an affidavit or declaration under 37 CFR 1.131
`
`showing prior invention, if the reference is n_ot a US patent or US patent application publication claiming
`
`the same patentable invention as defined in 37 CFR 41.203(a)”. MPEP 715(I)(A) states the same
`
`examination guideline of 706.02(b) in an alternative manner.
`
`PA00029585
`
`PA00029585
`

`

`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 6 of 9 Page ID #:1360
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 6 of 9 Page ID #:1360
`
`Serial No.: 12/211,003, Examiner Jian, Group Art Unit 3769
`Page 2 of 5
`The Examiner has not made the requisite showing under 37 CFR 41 .203(a) that the Mault reference
`
`claims the same patentable invention as recited in the present pending claims. Moreover, Applicant
`submits that a comparison of the single claim of the Mault reference1 with the present claims clearly
`
`indicates distinct subject matter: Mault requires an EKG and heart sound monitor including a housing
`
`with two or more electrodes and a microphone, a two-part separable connector, the two parts being
`
`operative when interconnected to physically join the monitor and a handheld unit in a rigid manner, and
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`so on, which does not provide any exercise information ; while the present claims require coupling a web
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`enabled wireless phone to a device which provides exercise related information, receiving data indicating
`
`a physiological status of a subject where the data is received at least partially while the subject is
`
`exercising, receiving data indicating an amount of exercise performed by the subject, sending the
`
`information to an Internet server and receiving a calculated response, and so on. Clearly these are
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`patentably distinct inventions.
`
`In view of the preceding remarks, absent a valid application of the two-way obviousness interference
`
`standard, Applicant requests the Office consider and accept the Rule 1.131 Declaration, which swears
`
`behind the effective date of most of the Mault provisional applications, and withdraw the 102(e) rejections
`based on Mault.
`
`On the more substantive issues regarding Mault, Applicant notes that the Examiner takes the position
`
`that even the five Mault provisional applications having an earlier filing date than the date of invention
`
`shown on Applicant's Rule 1.131 Declaration defeat the novelty of the claims. Applicant submits this
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`position is clearly in error.
`
`Applicant noted reasons for novelty in his response of June 14, 2011 at pages 6-10. Applicant
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`illustrated how Mault failed to teach or disclose the inventions of independent claims 1 and 8, especially
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`with regard to his five provisional applications filed prior to November 6, 1999 (see Page 9, first and third
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`complete paragraphs).
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`Also in the prior response, Applicant noted additional deficiencies with regard to the dependent
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`claims.
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`The Examiner disagreed and alleged the following primary points in the latest Final Office Action.
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`The Examiner equated the claimed web enabled wireless phone with devices in Mault, and the Examiner
`
`alleged that the earliest provisional applications of Mault establish a wireless device that meets the
`
`requirements of the claims.
`
`In discussing these allegations, Applicant initially notes the requirements of a novelty rejection.
`
`As noted at MPEP 2131: “To anticipate a claim, the reference must teach every element of the claim: A
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`claim is anticipated only if each and every element as set forth in the claim is found, either expressly or
`
`inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814
`
`1 Applicant notes that the Mault provisional applications purport to have claims as well. However, claims are not
`required for such applications under 35 USC 111(b)(2). Moreover, 111(b)(8) states that provisional applications are not
`subject to interferences. By this analysis, and by extension to the present circumstances, Mault’s provisional "claims" cannot be
`properly used as the basis for the two-way obviousness interference standard. However, even if they were, Applicant submits
`such claims are clearly patentably distinct.
`
`PA00029586
`
`PA00029586
`

`

`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 7 of 9 Page ID #:1361
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 7 of 9 Page ID #:1361
`
`Serial No.: 12/211,003, Examiner Jian, Group Art Unit 3769
`Page 3 of 5
`F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). . .. "The identical invention must be shown in as
`
`complete detail as is contained in the
`
`claim." Richardson V. Suzuki Motor Co., 868 F.2d 1226, 1236
`
`(Fed. Cir. 1989).”
`
`Mault fails to do this. In particular, the five Mault provisional applications filed before November 6,
`
`1999 disclose the following types of devices (here Applicant notes in particular computing devices, apart
`
`from physiological monitoring devices): PDAs and a handheld computer (60/ 155,85 1); a computer as
`
`well as a PDA (60/158,553); and PDAs (60/ 158,556). The other two Mault provisional applications filed
`
`during this period focus on specific types of physiological monitoring. The communication schemes by
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`which the PDA (Personal Digital Assistant) communicates with a central station via a
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`telecommunications network are disclosed as either a plug-in module for the PDA which electrically
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`connects to the network, or via a wireless connection to a transceiver which is connected to the network ,
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`or through an intermediate unit such as a personal computer which connects to the network via a modem
`
`or the like (60/155,851, 60/158,556); or alternatively, a portable unit with an electrical output in the
`
`common format of the system for loading into a local computer or communications device for
`
`transmission to the remote computer (60/ 158,553) .
`
`Clearly none of these references provides disclosure sufficient to defeat the novelty of the claimed
`
`invention, to wit, a method for interactive exercise monitoring, with steps of: coupling a web-enabled
`
`wireless phone to a device which provides exercise—related information; rendering a user interface on the
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`web-enabled wireless phone; receiving data indicating a physiologic status of a subject; receiving data
`
`indicating an amount of exercise performed by the subject, where 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 where the data indicating a
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`physiologic status of a subject is received at least partially while the subject is exercising; sending the
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`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-
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`related information; and running an application in the web-enabled wireless phone for receiving the
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`exercise-related information and displaying the response.
`
`As one specific example, Applicant notes that on page 2 of the Final Office Action of August 30,
`
`2011, the Examiner alleges that Mault teaches “. . .a wireless computing device, such as a PDA or cellular
`
`phone,” which the Examiner then equates to a web enabled wireless phone. This interpretation is clearly
`
`erroneous, especially as part of a novelty rejection. No support is given in the Mault provisional
`
`applications noted above for phones, only for PDAs. The fact that the PDA requires a separate transceiver
`
`which is connected to the Internet inherently implies the deficiency of the reference to anticipate a web
`
`enabled wireless phone.
`
`Applicant notes in addition that on page 8 of the Final Office Action of August 30, 2011, the
`
`Examiner gave an alternative definition for phone as "an instrument for reproducing sounds at a distance;
`
`specifically: one in which sound is converted into electrical impulses for transmission (as by wire or radio
`
`waves)". The Examiner construed this definition as “a device which transmits data using electrical
`
`PA00029587
`
`PA00029587
`

`

`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 8 of 9 Page ID #:1362
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 8 of 9 Page ID #:1362
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`Serial No.: 12/211,003, Examiner Jian, Group Art Unit 3769
`Page 4 of 5
`impulses”, and employed the same at the bottom of page 8 to allege Mault’s disclosure of the claimed
`
`invention. Applicant respectfully submits these definitions are untenable. For one, the first definition
`
`would fail to even read on the PDA of Mault, as the PDA would fail to reproduce sounds at a distance.
`
`Next, the second definition of phone given by the Examiner is clearly overly broad and would read on
`devices such as garage door openers, which should not be construed as phones by anyone's definition. 2
`
`Applicant submits that PDAs and phones were recognized in the industry as separate devices at the
`
`time of the invention in 1999. Their functions were not combined until later. Tellingly, Mault discloses a
`
`mobile phone in one of his provisional applications, but such disclosure occurs subseguent to November
`
`6, 1999; and as a distinct disclosure from a PDA. Applicant’s provisional application disclosed the same
`
`as separate embodiments of a wireless web device.
`
`Applicant notes that the remainder of the Examiner’s comments in the Final Office Action of August
`
`30, 2011 based on Mault alone concern provisional applications filed after November 6, 1999.
`
`Accordingly, for at least all of the above reasons, Applicant submits the 102(e) novelty rejection is
`
`clearly erroneous and should be withdrawn.
`
`With regard to the rejection of Claims 1-4, 7-10, 12-16, and 20-21 as being allegedly unpatentable
`
`over Hickman in view of King, Applicant provided clear reasons for patentability on pages 10-12 of the
`
`Response filed June 14, 2011. The reasons included that, at the time the invention was made, it would not
`
`have been obvious to replace the computer of Hickman with the mobile phone of King. In addition,
`
`Applicant argued that to do so would change the principle of operation of the references, which is
`
`prohibited by MPEP 2143.01(VI). In particular, to combine the script system of Hickman with the
`
`necessarily non-script system of King would require changing the principle of operation of one or the
`
`other. However, the script system of Hickman appears to be a key element of the invention, and is
`
`included in all the claims. In the same way, using a script system in King would not be a mere design
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`variation; rather, the same is explicitly stated to be "too complicated to be used in mobile devices".
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`(2210—1 1).
`
`The Examiner disagreed, noting that the King reference acknowledges that there is a growing need
`
`for a mobile paradigm in which the Internet can be instantly accessed by mobile devices. First, Applicant
`
`notes that he himself acknowledged this disclosure in King at the bottom of page 11 of the Response filed
`
`June 14, 2011. The King reference, intended to increase usability and navigation of web pages using thin
`
`devices such as mobile phones, would naturally have come about from a growing need for a mobile
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`paradigm. But Applicant submits that this is a very different matter from the problem faced by the
`
`Applicant in developing the invention, to wit, providing mobile devices for health and exercise
`
`monitoring. Applicant solved the problem by placing much of the processing on the server side and using
`
`the limited computing capacity of the mobile device to serve as a conduit for health and exercise data.
`
`The King reference, on the other hand, “solves [the problem] without the necessity of the server round-
`
`In this regard, Applicant notes the Examiner made a similarly overly broad interpretation of a web-enabled Wireless phone in
`2
`the Final Office Action of August 13, 2010, with respect to Root et a1., US Patent No. 6,013,007. This rejection was
`withdrawn in response to the Pre-Appeal Brief Request for Review filed November 15, 2010.
`
`PA00029588
`
`PA00029588
`

`

`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 9 of 9 Page ID #:1363
`Case 2:19-cv-06301-AB-KS Document 76-9 Filed 06/26/20 Page 9 of 9 Page ID #:1363
`
`Serial No.: 12/211,003, Examiner Jian, Group Art Unit 3769
`Page 5 of 5
`m and without incurring all the memory and processing requirements of a full scripting language.”
`
`(2:27-30, Emphasis added). In short, clearly neither King nor Hickman nor their combination point the
`
`way for one of ordinary skill in the art to make and use the claimed invention.
`
`Next, Applicant submits that to replace the computer of Hickman with the mobile phone of King
`
`without clear reasons to do so is employing impermissible hindsight. The Examiner stated that it would
`
`have been obvious to do so to one of ordinary skill in the art at the time of the invention because
`
`“replacing a cumbersome desktop computer with a mobile web—enabled phone is merely a product of
`
`market pressure.” But it is important to note that the time period in question is almost 12 years ago.
`
`Applicant submits that many industry experts would question that a mobile phone could rcplacc a
`
`computer for many computing tasks, even with smart phones today, much less 12 years ago. At the time
`
`of the invention it was not the case that there were a "finite number of identifiable solutions” as suggested
`
`by the Examiner.
`
`It took several more years for those solutions to emerge. To summarize, the proposed
`
`combination does not suggest the desirability of the claimed invention, running afoul of MPEP
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`2143.01(I). The same renders the prior art unsatisfactory for its intended purpose, running afoul of MPEP
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`2143.01(V). And the same changes the principle of operation of the references, running afoul of MPEP
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`2143.01(VI).
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`Accordingly, as one of ordinary skill in the art would not been led to combine King with Hickman at
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`the time the invention was made, a primaflzcz’e case of obviousness has not be shown, and consequently
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`Applicant respectfully submits that maintaining the rejection is clearly erroneous and the same should be
`withdrawn.
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`With regard to the rejection of claims 11 and 17-19 based on Hickman in view of King and fiarther in
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`view of Rautila, Applicant provided clear reasons for patentability on pages 12-13 of the Response filed
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`June 14, 2011. No additional comments with regard to this rejection were made by the Examiner in the
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`Final Office Action of August 30, 201 1 and accordingly Applicant respectfully submits that maintaining
`the rejection is erroneous and the same should be withdrawn.3
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`Finally, Applicant notes that his patent application has undergone rigorous prosecution with two
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`Examiners, having had three non-final Office Actions and two Final Office Actions over the last several
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`years, each with varying rejections set forth and then changed, and has successfully had rejections
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`withdrawn at the Board level. Clearly his innovation is pioneering, and was previously recognized by the
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`Office, as he has been successful in obtaining five patents in this family. He was approached by Royal
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`Philips Electronics and successfully assigned several of these patents to the same for significant value. In
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`the interest of compact prosecution as laid out in the Official Gazette November 7, 2003, Applicant
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`respectfully submits that if the clearly erroneous rejections are again withdrawn, it is time to allow the
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`case to pass to issuance in an expeditious manner.
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`3 In this regard Applicant notes a similar obviousness rejection using the above noted Root reference was previously
`withdrawn by the Board.
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`PA00029589
`
`PA00029589
`