`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 1 of 15
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`EXHIBIT A
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`EXHIBIT A
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`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 2 of 15
`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 2 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3?69
`Page | of?
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants:
`
`Roger]. Quy
`
`Application No.
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`12121 1,033
`
`Filed:
`
`Title:
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`September 15, 2008
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`METHOD AND APPARATUS FOR MONITORING EXERCISE
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`WITH WIRELESS INTERNET CONNECTIVITY
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`Art Unit:
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`3769
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`Examiner:
`
`Shirley Jian
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`Confirm. No.:
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`7693
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`0012521002005
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`Docket No:
`,
`V13 EFS ch
`Commissioner for Patents
`PO. Box 1450
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`Alexandria, VA 22313-1450
`
`Sir:
`
`Certificate of Electronic Transmission
`W
`
`(Signalurei
`
`I hereby certify that [his cerrespondence and any documenl referenced
`gifiggbrzrbgéngggroctronlcally filed mm the USPTO Vla EFS—Web on
`Nancy Jame Simmons
`(Printed Name of Person Sending Correspondence)
`Mane:
`i0: Ge simmons,
`
`AMENDMENT AND RESPONSE TO FINAL OFFICE ACTION
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`This is responsive to the Office Action mailed August 13, 2010 in the above matter,
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`in which the rejections of the claims was made final. A response is due November 13,
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`2010, and thus this Amendment and Response is timely filed.
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`No fees are believed to be due. Any fees deemed to be due or credit for any
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`overpayment for this application should be directed to Deposit Account Number 50-1047
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`and authorization is hereby given to Charge such account.
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`Please enter the following remarks:
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`Amendments begin on page 2.
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`Remarkszrguments begin on page 6.
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`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 3 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 3 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 2 of 7
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`IN THE CLAIMS:
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`1.
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`(Previously Presented) A method for interactive exercise monitoring, the method
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`comprising the steps of:
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`a.
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`coupling a web-enabled wireless phone to a device which provides exercise-
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`related information;
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`b.
`
`0.
`
`(:1.
`
`0.
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`rendering a user interface on the web-enabled wireless phone;
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`receiving data indicating a physiologic status of a subject;
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`receiving data indicating an amount of exercise performed by the subject;
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`wherein at least one of the data indicating a physiologic status of a subject or the
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`data indicating an amount of exercise performed by the subject is received from the
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`device which provides exercise-related information, and wherein the data indicating a
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`physiologic status of a subject is received at least partially while the subject is exercising;
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`f.
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`sending the exercise-related information to an intemet server via a wireless
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`network;
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`g.
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`receiving a calculated response from the server, the response associated with a
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`calculation performed by the server based on the exercise-related information; and
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`h.
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`running an application in the web-enabled wireless phone for receiving the
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`exercise-related information and displaying the response.
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`2. (Previously Presented) The method of claim 1, wherein the receiving data indicating a
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`physiologic status of a subject includes receiving data from a physiological sensor
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`coupled to an exercise machine.
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`3.
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`(Previously Presented) The method of claim 1, where the receiving data indicating an
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`amount of exercise performed by the subject includes receiving data from an exercise
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`machine.
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`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 4 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 4 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 3 of 7"
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`4. (Previously Presented) The method of claim 1, wherein the web-enabled wireless
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`phone receives exercise-related information over a transmission medium, the
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`transmission medium including a wired connection or a wireless connection.
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`5. (Canceled)
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`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
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`phone.
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`7. (Previously Presented) The method of claim I, wherein the data indicating an amount
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`of exercise performed is received from a device selected from the group consisting of: a
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`treadmill, a stepper, an exercise cycle, an accelerometer, a rowing machine,
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`physiotherapy equipment, an aerobic or anaerobic exercise device, and a device that
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`monitors an amount of work or rate of work performed.
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`8. (Previously Presented) A non-transitory computer-readable medium, containing an
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`application for performing an interactive method of exercise monitoring, the application
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`physically residing on a server, the method comprising the steps of:
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`a.
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`receiving exercise-related information from a web-enabled wireless phone,
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`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
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`the data indicating a physiologic status of a subject is received at least partially while the
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`subject is exercising;
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`b.
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`c.
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`calculating a response based on the exercise-related information;
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`transmitting the calculated response to the web-enabled wireless phone.
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`9. (Previously Presented) The medium of claim 8, wherein the method further comprises:
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`a. enabling the web-enabled wireless phone to receive exercise-related information from
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`a device; and
`
`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 5 of 15
`Case 1:19-cv-11586—|T Document 35-1 Filed 12/10/19 Page 5 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 4 of 7
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`b.
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`transmitting to the web-enabled wireless phone a device application including a user
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`interface on which the calculated response may be rendered.
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`10. (Previously Presented) The medium of claim 8, wherein the calculating a response
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`includes calculating a response to assist a person in monitoring calorie expenditure,
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`losing weight, or maintaining a healthy lifestyle.
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`1 1. (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-
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`enabled wireless phone.
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`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
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`exercise device, and a device that monitors an amount of work or rate of work performed.
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`13. (Previously Presented) The medium of claim 8, wherein the receiving exercise-
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`related information includes receiving exercise-related information over a wireless or a
`
`wired connection.
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`14. (Previously Presented) A web-enabled wireless phone, containing a computer-
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`rcadable medium, the computer-readable medium comprising memory within a web-
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`enabled wireless phone, the computer-readable medium comprising instructions for
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`causing a processor in the web-enabled wireless phone to perform the method of claim 1.
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`15.
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`(Previously Presented) A computer-readable medium, the computer-readable
`
`medium comprising memory within a web-enabled wireless phone, the computer-
`
`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 6 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 6 of 15
`
`Serial No: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 5 of 7"
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`readable medium containing instructions for causing a processor in a web-enabled
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`wireless phone to perform the method of claim 1.
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`16. (Previously Presented) The method of claim I, further comprising downloading the
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`application to the web-enabled wireless phone from a server.
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`13". (Previously Presented) The method of claim 4, wherein the wireless connection
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`includes an infrared connection or a radio frequency communication protocol including a
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`short-range wireless transmission scheme.
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`18. (Previously Presented) The method of claim 4, wherein the wired connection
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`includes a USB connection, a cable, or a docking station.
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`19. (Currently Amended) The method of claim 17, wherein the short-range wireless
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`transmission scheme includes 802.1 1 or 892715 Bluetooth®.
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`20. (Previously Presented) The method of claim 1, wherein the data indicating a
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`physiologic status of a subject is received from a device selected from the group
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`consisting of: a heart rate monitor, a blood pressure monitor, a body temperature monitor,
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`a respiratory monitor, a biofeedback device, an electronic body weight scale, and a body
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`fat gauge.
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`21. (Previously Presented) The medium of claim 8, wherein the data indicating a
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`physiologic status of a subject is received from a device which is selected from the group
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`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
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`fat gauge.
`
`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 7 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 7 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 6 of 7"
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`Status ofthe Claims
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`REMARKS
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`Claims 1-4 and 6-2] are pending in the application. Claim 5 has been previously
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`cancelled. Claims 1, 8, l4, and 15 are the independent claims. Claim 19 has been
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`amended .
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`General Remarks
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`Applicant notes the removal of certain objections and rejections due to
`
`Applicant’s prior response. Applicant requests reconsideration of the remaining claims in
`
`light of the arguments provided below.
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`Finality of Rejections
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`Applicant notes that the Examiner has made the current Office Action final as
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`follows:
`
`Applicant's amendn'icn: necessitated the new ground“) of rcéccstitm presented in this
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`{3ch action.
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`s—“t.ceurdingiy, THIS ACTTIGN IS MADE- H‘NX? Sec MPEP § ?{i£i.0?(a}.
`
`Appiicant is reminded ofthe extension ofiimc. policy as set forth in 3? CFR 3.136(a}.
`
`For the record, Applicant has reproduced a portion of this section of the MPEP
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`below:
`
`706.07ja] Final Rejection, When Proper on Second Action [R-6]
`Due to the change in practice as affecting final rejections, older decisions on questions of
`prematureness of final rejection or admission of subsequent amendments do not necessarily reflect
`present practice.
`Under present practice, second or any subsequent actions on the merits shall be final, except
`where the examiner introduces a new ground of rejection that is neither necessitated by applicant's
`amendment of the claims. nor based on information submitted in an information disclosure statement
`
`filed during the period set forth in 37 CPR 3.3314(2) with the fee set forth in 3? {FR 1.1?{pi.
`
`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 8 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 8 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 7 of 7
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`In the present case, Applicant submits the finality of the Office Action is
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`premature for at least two reasons. First, Applicant amended the claims in a way
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`suggested by the Examiner as discussed in the telephonic interview held between the
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`Applicant’s representative and the prior Examiner (Michael C. Astorino) on March 8,
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`2010:
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`33113131111111:N, .31 interview m;“using siestagait-:11 at" 111+13ers:ral 11211139: 1‘31 what wasW In if 115139912amen: was
`mach-es? 1111:1111; ens-:1 rem:191115 i‘afifieffsanrs [fissxrsws‘ffie 1119350111: @139 actionsmmm 111111113. 35 {1.8 G; R:fl‘f
`
`
`:
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`Applicant submits that his attempt to meet the requirements of the Examiner
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`should not be met with a Final Office Action, and that issuance of the same is in clear
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`contravention to the Patent Office policy of compact prosecution. The amendments were
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`of the type suggested by the Examiner in the telephonic interview, and merely clarified in
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`a definitional way the two types of data previously claimed, as well as when such data are
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`monitored. For this reason alone, the finality of the rejections should be withdrawn.
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`Even assuming, arguendo, that the above were not the case, Applicant submits
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`that the rejections ought not be rendered final for other reasons. In particular, Office
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`Actions are improperly final where the Examiner introduces a new ground of rejection
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`that is not necessitated by applicant‘s amendment of the claims.
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`In the current case, the
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`Examiner introduced a new prior art reference, Root, that was not necessitated by
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`Applicant’s amendments ofthe claims.
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`For these reasons, Applicants respectfully submit that the finality of the rejections
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`should be withdrawn.
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`Double Patcnting Rejection
`
`Claims 1-12 stand rejected under the judicially created doctrine of obviousness—
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`type double patenting as being allegedly unpatentable over claims 3-6 and 33-43 of US.
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`Patent No. 6,602,191. This rejection is traversed with respect to the claims as follows.
`
`Applicant initially notes that he assumes the Examiner is referring to at least the
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`current independent claims 1 and 8 in the current case. The recitation of claims l-l2 is
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`confiJsing as there is no currently-pending claim 5. However, in the interest of compact
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`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 9 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 9 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 8 of 7"
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`prosecution, Applicant will assume the Examiner is at least referring to the above-noted
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`independent claims (and claims 14 and 15 require the limitations of claim 1).
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`Independent claim 1 requires, among other limitations, receiving data indicating a
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`physiologic status of a subject and receiving data indicating an amount of exercise
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`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
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`data indicating a physiologic status of a subject is received at least partially while the
`
`subject is exercising.
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`Independent claim 8 includes similar limitations, although on the
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`server side.
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`Claims 3-6 and 33-43 of the ‘191 patent contain no such limitations about two
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`types of data being received, nor that a physiologic status is received at least partially
`
`while a subject is exercising. Nor can the same be an obvious variant. Because of
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`limitations in processing power, memory, and display capability with mobile phones at
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`the time of the ‘ 191 patent, one of ordinary skill in the art would not have expected that
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`two such types of data could be received and transmitted by a mobile phone. While voice
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`communications were abundant and some data transmission was possible, the
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`transmission of two data types in the way claimed would not have been obvious to one of
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`ordinary skill in the art.
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`With regard to dependent claims, the same include even more distinguishing
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`limitations.
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`For at least these reasons, Applicant submits that the double patenting rejections
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`of the claims should be withdrawn.
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`Claim Reiection Under 35 U.S.C. 112, first naragranh
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`Claim 19 is rejected under 35 U.S.C. l 12, first paragraph, as failing to comply
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`with the written description requirement.
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`In particular:
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`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 10 of 15
`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 10 of 15
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`Serial No.: 121211933
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 9 of "1'
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`Ciaim .19 is raiect'ed under 35 1:51? .132, first paragraph, as failisg to c-omp1y with the
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`written description requirement. The 6121111315} contain-s subject matter which was not described
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`in the specification in such. a way as to 't'casonabiy convey to one skiiied in the ieievant art that
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`the inventoris), at the time the application was filed. had gmssession of the claimed invention.
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`The chain} limitation “1103.15" is new matter, not supported 1;: the disclosure.
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`Applicant has amended the claim to recite Bluetooth® instead of 802.15.
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`Support for Bluetooth® is provided in various locations in the specification, including,
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`ca, [0044], [00521,and10092].—
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`— -
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`Consequently, the rejection of claim 19 on this basis should be withdrawn.
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`Claim Reiections Under 35 U.S.C. 102 - Root
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`Claims 1-4, 6-18 and 20-21 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by Root et al., US. Patent No. 6,013,007 (“Root”). Applicant respectfully
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`traverses this rejection as follows.
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`Applicant first notes that Root is much like the devices disclosed by the Applicant
`
`in the Background section of the current application. See [0007] and [0010]. These
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`generally relate to systems that employ ordinary phone lines, and which lack full back-
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`end server functionality.
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`Applicant next notes that Root is not a wireless device. Root connects to a PC for
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`downloading via a “standard telephone line" (see Figs. 7-9, 4:54-67, 5:66 — 6:41). The
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`only communications disclosed in Root that have any wireless character at all are as
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`follows: an AMIFMXTV radio which is only disclosed for entertainment purposes (see
`
`Fig. 1A and 4:40-48), not for wireless communications; a GPS receiver (see Figs. 2-6 and
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`4:4—26, 5:36-65, 7:29-50) to determine the position of the GPS antenna 301 and its
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`current speed and direction; and, in one embodiment, an IR port 124 (Fig. 13, 6, 7 and
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`6:1-2) allowing data communication between the device 101 and a local PC 70].
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`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 11 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 11 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page 10 of 7
`
`Consequently, and with respect to all the claims, Root is deficient as an
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`anticipatory reference because the same lacks teaching or disclosure of, at least, coupling
`
`a web-enabled wireless phone to a device which provides exercise-related information.
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`That is, there is no wireless character nor is there web-enablement. As noted, the “radio“
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`mentioned by the Examiner is AMIFMITV radio module 607 which cannot send
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`exercise-related information as claimed. The GPS system can only receive data, time
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`signals, allowing geolocation. That is, the wireless GPS network 204 is not pertinent to
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`such communications since the same is only employable to transmit radio signals to
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`device 101 to determine location (7:29-40). The IR port cannot send exercise-related
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`information to an internet server via a wireless network either.
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`Regarding web-cnablement, the only such aspect even potentially infcrable is
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`using an external computer via the serial or infrared port or using a remote computer via
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`modem. But this inference would defeat the purpose of having a mobile device.
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`Accordingly, Applicant submits that to equate these with a web-enabled wireless phone is
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`simply not supportable, especially as the clear purpose of the claimed device is to be
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`carried and used while exercising without being limited to the location of a PC or
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`telephone jack [0017].
`
`In fact, Figs. 2—3 of Root show the user exercising with no
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`connections indicated, and Figs. 7-9 show the monitor alone being connected to a PC or
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`to a remote computer for data storage and analysis (4:54-64).
`
`Applicant concurs that Root discloses that an “internet web site" may be
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`employed to present performance data (8:64 — 9:9). But again Root only discloses PC-
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`based browsers, not web-enabled wireless phones, and thus this disclosure deficient as an
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`anticipatory reference against the claims.
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`Applicant submits that the equating of the claimed web-enabled wireless device
`
`with the device 101 in combination with the PC 701f801 same runs afoul of the MPEP
`
`2131, which states that:
`
`TO ANTICIPATE A CLAIM, THE REFERENCE MUST TEACH
`EVERY ELEMENT OF THE CLAIM
`
`"A 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
`
`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 12 of 15
`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 12 of 15
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`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page I
`l of 7
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`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, 9 USPQ2d
`
`1913, 1920 (Fed. Cir. 1989).
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`[n this case, Root fails to teach use ofa web-enabled wireless phone or anything
`
`like it, and thus Applicants respectfully submit that the novelty rejection based on this
`
`reference should be withdrawn.
`
`Even assuming, arguendo, Root taught a web-enabled wireless phone, the
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`reference is deficient as an anticipatory reference for even more reasons.
`
`For example, with respect to claims 1, 14, and 15, Root fails to teach or disclose
`
`sending exercise-related information to an intemet server via a wireless network (in the
`
`case of claim 8, receiving such information). Many ofthe ways in which this limitation
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`is lacking in Root are analogous to the arguments above.
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`In particular, Root discloses
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`two ways of having their device 101 communicate with a PC 'x'01f801.
`
`In one way, the
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`reference employs an RJ-l 1 type telephone port 1 13 which connects an internal modem
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`613 via a standard telephone line to a remote computer 801, which is connected to the
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`intemet 803 by a modem bank 802 (Fig. 8 and 4:60-63 and 8:58-65).
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`In the other way,
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`the device 101 is connected to a PC 70] directly via a serial-type port 118 or an IR-type
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`port 124 (Fig. 3’ and 5:66 - 6:2). The PC 701 is then connected to the intemet 803 via a
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`modem 902 and standard telephone lines (Fig. 9 and 6:29-34). Notably, Root discloses
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`other forms of communication too - but even where Root discloses these other forms,
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`none of them are disclosed to be wireless (6:32-34).
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`Applicant submits that even if the PC were able to connect wirelessly, the
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`reference would still be deficient as anticipatory because the device 10] is incapable of
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`wireless communications to the intemet in the absence of a PC (and such
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`communications are clearly not the purpose of the IR port 124). The purpose of the
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`invention would be completely defeated in this case, and thus such a reading would be
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`impermissible.
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`The Root reference clearly is for storing data about exercise and then uploading
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`the same at a later time via a standard telephone line, which is far different from real-time
`
`
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`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 13 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 13 of 15
`
`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page l2 of 7
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`monitoring of exercise and physiological data and real-time uploading of the same Via a
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`web-enabled wireless phone, thus enabling the user to be free from being limited only to
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`the location ofa PC. or telephone jack. So for this reason as well, Applicant submits the
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`rejections of the independent claims should be withdrawn.
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`Even assuming, arguendo, Root was not deficient on this basis, the reference is
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`deficient as an anticipatory reference for even more reasons.
`
`For example, with respect to claim 1, l4, and 15, Root fails to teach receiving a
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`calculated response from a server (with respect to claim 8, calculating a response and
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`transmitting such a calculated response). Rather, what is termed a calculated response by
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`the Examiner is actually a compiling of multiple users’ data for purposes of marketing or
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`the like. Information is sent to an Internet web site (8:64 — 9:9). The same is nowhere
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`disclosed to be received by the web-enabled wireless phone since the Root device is not a
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`proper forum for this information. The promotional or other such information appears to
`
`be sent to a user’s computer, not the device carried or worn by a user. Applicant concurs
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`that a subject may listen to such promotional items such as audio targeted advertising on
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`the device 101, but only after the same has been downloaded to a computer 701/80] and
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`transferred (9:2 I -30).
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`The reference is Further deficient because no calculated response could
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`conceivably be received, at least not one associated with a calculation based on the
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`exercise-related information, since exercise-related information is not sent to an internet
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`server during the time of exercise.
`
`In other words, data indicating an amount of exercise
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`performed by the subject may be received in Root because of the GPS connection, but the
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`same could not be sent to an internet server and a response received based on the sent
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`data. The same is true of data indicating a physiologic status of a subject.
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`In both cases,
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`the same is only disclosed to be uploaded later Via a standard telephone line, and
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`consequently is not disclosed to be used in a calculated response to a web-enabled
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`wireless device.
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`Even where Root discloses communicating other sorts of information to a subject,
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`the same are not calculated responses from a server, but rather locally-derived
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`information such as pre-set targets input by the subject.
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`
`
`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 14 of 15
`Case 1:19-cv-11586—IT Document 35-1 Filed 12/10/19 Page 14 of 15
`
`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 37"69
`Page l3 of 7
`
`For all of these reasons as well, Applicant submits the rejections of the
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`independent claims should be withdrawn.
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`The dependent claims are allowable for even more reasons. For example, with
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`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
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`claims 6 and l 1. As Root fails to disclose web-enabled wireless phones, the reference is
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`deficient in anticipating claims 14 and 15, which are directed to these.
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`Claim Reiection Under 35 U.S.C. 103 — Root
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`Claim I9 is rejected under 35 U.S.C. 103(a), as being unpatentable over Root as
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`applied to claim 1 above. Applicant respectfiilly traverses this rejection.
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`Claim l9 refers to types of short-range wireless transmission schemes by which
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`the web-enabled wireless phone receives exercise-related information, notably 802.11 or
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`BluetoothCR). Root receives this information in device 101 in only one way that is
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`wireless: GPS, which is in no way a short-range wireless transmission scheme. Root
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`receives this information in device 101 in other ways, but they are all wired
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`communications.
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`[t is true that Root discloses an IR port, but the same is for
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`communications between the device 101 and the PC 701x’80l, not for transmitting data to
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`the device 101. Since any structure or disclosure necessary to meet the claim limitation is
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`lacking in Root, it cannot be obvious to include a Bluetooth® or 802.] 1 port as a means
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`of receiving such exercise data, e.g., from physiological sensors or from exercise
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`machines.
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`
`
`Case 1:19-cv-11586-IT Document 35-1 Filed 12/10/19 Page 15 of 15
`Case 1:19-ev-11586—IT Document 35-1 Filed 12/10/19 Page 15 of 15
`
`Serial No.: 12f211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3?69
`Page l4 of 7
`
`Conclusion
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`Should the Examiner be of the ViCW that an interview would expedite
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`consideration of the application, request is made that the Examiner telephone the
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`Applicants’ attorney at (T03) 433-0510 in order that any outstanding issues be resolved.
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`Respectfully submitted,
`
`fMark Wieczorek/
`Mark D. Wieczorek
`Registration No. 3?,966
`
`Dated: _September 20, 2010
`Attorney for Applicant
`Mayer & Williams, PC
`251 North Avenue West, 2“d Floor
`Westfield, NJ 07090
`Tel.: 703-433-0510
`
`Fax: 703-433-2362
`
`