Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 1 of 13
`Case 1:19-cv-11586—IT Document 72-1 Filed 06/05/20 Page 1 of 13
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`EXHIBIT A
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`EXHIBIT A
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 2 of 13
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`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of:
`Roger J. QUY
`
`Serial No.: 13/632,771
`
`Filed: October 1, 2012
`
`For
`METHOD AND APPARATUS FOR
`MONITORING EXERCISE WITH
`WIRELESS INTERNET CONNECTIVITY
`
`§
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`Atty. Docket: 1999P01960US06
`
`Confirmation No. 4536
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`Group Art Unit: 3792
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`Examiner: Shirley Xueying Jian
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`ReQly under 37 CFR 1.116{b}
`- Expedited Procedure -
`Technology Center 3792
`
`Mail Stop AF
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Examiner:
`
`In response to the Office Action electronically delivered on January 10, 2019, and
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`having a period for response set to expire on April 10, 2019, Applicant respectfully
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`requests that the Examiner enter this response and reconsider the application, as
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`follows.
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`Amendments to the Claims begin on page 2 of this paper.
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`Remarks/Arguments begin on page 7 of this paper.
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`Page 1 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 3 of 13
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`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
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`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`Amendments to the Claims:
`This listing of claims will replace all prior versions, and listings, of claims in the
`application,
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`Ustin_g of Claims:
`
`Claims 1 - 19 (Canceled)
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`20. (Currently Amended) A method for interactive exercise monitoring, the method
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`comprising the steps of:
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`downloading a computer application program directly from a remote server over
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`the internet to a non-transitory computer readable medium within a web-enabled,
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`wireless mobile device. wherein the downloaded comQuter aQQlication Qrogram
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`comprises a user-selected. interactive application program for measurement an
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`exercise parameter and an interactive user interface, the interactive aQQlication program
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`(i) being selectable from among a variety: of application programs of varying complexity
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`and {ii) for which significant application functionality, memory: and processing
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`capabilities are Qrovided for via a back-end server compared to aQQlication functionality:,
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`memory and processing capabilities of the web-enabled wireless mobile device;
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`monitoring and receiving data at the web-enabled, wireless mobile device
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`indicating a physiologic status of a subject, the monitoring using the downloaded
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`computer application program;
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`monitoring and receiving data at the web-enabled, wireless mobile device
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`indicating an amount of exercise performed by the subject, the monitoring using the
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`downloaded computer application program;
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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 at the web(cid:173)
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`enabled, wireless mobile device by transmitting, using the downloaded computer
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`application program and the interactive user interface, exercise-related information from
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`Page 2 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 4 of 13
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`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
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`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`a device configured to provide exercise-related information to the web-enabled wireless
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`mobile device, and wherein the data indicating a physiologic status of a subject is
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`received at least partially while the subject is exercising; and
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`using the downloaded computer application program, displaying an indication of
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`the data indicating an amount of exercise performed, or the data indicating a physiologic
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`status of a subject, or both, on a user interface, of the web-enabled, wireless mobile
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`device, enhanced via the interactive user interface.
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`21. (Previously Presented) The method of claim 20, wherein the device to provide
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`exercise-related information includes an integral physiological sensor, and wherein the
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`receiving data indicating a physiologic status of a subject includes receiving data from
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`the physiological sensor.
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`22. (Previously Presented) The method of claim 20, where the device to provide
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`exercise-related information includes an integral accelerometer, and wherein the
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`receiving data indicating an amount of exercise performed by the subject includes
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`receiving data from the accelerometer,
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`23. (Previously Presented) The method of claim 20, wherein the web-enabled wireless
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`mobile device is configured to receive the exercise-related information over a
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`transmission medium, the transmission medium including a wired connection or a
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`wireless connection.
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`24. (Previously Presented) The method of claim 23, wherein the transmission medium is
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`wireless, and wherein the wireless connection includes a radio frequency
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`communication protocol including a short-range wireless transmission scheme,
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`Page 3 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 5 of 13
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`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`25. (Previously Presented) The method of claim 24, wherein the short-range wireless
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`transmission scheme includes IEEE 802.11 protocol or short-wavelength radio
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`transmission in the ISM band of 2400-2480 MHz.
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`26. (Previously Presented) The method of claim 23, wherein the transmission medium is
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`a direct or wired connection, and wherein the wired connection includes a USB
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`connection, a cable, or a docking station.
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`27. (Previously Presented) The method of claim 20, wherein the device to provide
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`exercise-related information is a physiological sensor integral or external to the web(cid:173)
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`enabled wireless mobile device, and wherein the receiving data indicating a physiologic
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`status of a subject includes receiving data from the physiological sensor.
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`28. (Previously Presented) The method of claim 20, where the device to provide
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`exercise-related information is an accelerometer integral or external to the web-enabled
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`wireless mobile device, and wherein the receiving data indicating an amount of exercise
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`performed by the subject includes receiving data from the accelerometer,
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`29. (Previously Presented) The method of claim 20, wherein the data indicating an
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`amount of exercise performed is received from a GPS device integral or external to the
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`web-enabled wireless mobile device.
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`30. (Previously Presented) The method of claim 20, wherein the web-enabled wireless
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`mobile device is configured to be carried on the person and includes a keypad, touch
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`screen, or voice processing technology for receiving user input.
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`31. (Previously Presented) The method of claim 20, wherein the web-enabled, wireless
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`Page 4 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 6 of 13
`
`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`mobile device is in signal communication with an internet server, and wherein the non(cid:173)
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`transitory computer application program, further contains instructions causing the web(cid:173)
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`enabled wireless mobile device to send the exercise related information to the internet
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`server.
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`32. (Previously Presented) The method of claim 20, further comprising another non(cid:173)
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`transitory computer application program physically residing on a computer-readable
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`medium located on one or more remote servers, wherein the computer application
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`program on the web-enabled, wireless mobile device is downloadable directly from the
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`one or more remote servers; the downloadable non-transitory computer application
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`program containing instructions causing the wireless mobile device to perform the steps
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`of receiving data and displaying an indication, whereby the another non-transitory
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`computer application program on the one or more remote servers can serve as a source
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`for downloads of the downloadable non-transitory computer application program.
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`33. (Canceled)
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`34. (Canceled)
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`35. (Canceled)
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`36. (Canceled)
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`37. (Currently Amended) A method for interactive exercise monitoring, the method
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`comprising the steps of:
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`downloading a computer application program directly from a remote server over
`
`the internet to a non-transitory computer readable medium within a wireless mobile
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`Page 5 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 7 of 13
`
`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`device, wherein the downloaded computer application program comprises a user(cid:173)
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`selected, interactive application program for measurement an exercise parameter and
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`an interactive user interface, the interactive application program (i) being selectable
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`from among_ a variety: of apQlication grog_rams of varying_ comglexity and (ii) for which
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`significant application functionality. memoey and processing capabilities are provided for
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`via a back-end server comgared to apQlication functionality,._ memo[Y and grocessing
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`caQabilities of the wireless mobile device;
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`monitoring and receiving data at the wireless mobile device indicating a
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`physiologic status of a subject, the monitoring using the downloaded computer
`
`application program;
`
`monitoring and receiving data at the wireless mobile device indicating an amount
`
`of exercise performed by the subject, the monitoring using the downloaded computer
`
`application program;
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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 determined by a
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`sensor within the wireless mobile device which measures exercise-related information,
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`and wherein the data indicating a physiologic status of a subject is received at least
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`partially while the subject is exercising; and
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`using the downloaded computer application program, displaying an indication of
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`the data indicating an amount of exercise performed, or the data indicating an amount
`
`of exercise performed by the subject, or both, on a user interface of the wireless mobile
`
`device-', enhanced via the interactive user interface.
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`38. (Canceled)
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`Page 6 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 8 of 13
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`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
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`REMARKS
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`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`Applicant submits that this Amendment After Final Rejection places this
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`application in condition for allowance by amending claims in manners that are believed
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`to render all pending claims allowable over the cited art and/or at least place this
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`application in better form for appeal. This Amendment is necessary to clarify certain
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`claim limitations and was not earlier presented because Applicant believed that the prior
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`response(s) placed this application in condition for allowance, for at least the reasons
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`discussed in those responses, Accordingly, entry of the present Amendment, as an
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`earnest attempt to advance prosecution and/or to reduce the number of issues, is
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`requested under37 C,F.R. §1.116.
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`In the event that the Office declines to enter the present Amendment, and (i) any
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`portion of the present Amendment would place some of the claims in better form for
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`appeal if a separate paper were filed containing only such amendments or (ii) any
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`proposed amendment to any claim would render that claim allowable, Applicant
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`respectfully requests that the Office inform Applicant of the same pursuant to MPEP
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`§714.13.
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`By this response, claims 20 and 37 have been amended. Claims 1-19, 33-36 and
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`38 were previously canceled. Claims 20-32 and 37 remain in this application. This
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`application has been carefully considered in connection with the Office Action.
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`Reconsideration, withdrawal of the Final Action, and allowance of the application are
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`respectfully requested.
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`Rejection under 35 U.S.C. §103
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`Claims 20-32 and 37 stand rejected under 35 U.S.C, §103(a) as allegedly being
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`unpatentable over Lindberg et al. (US 7,069,552 B2; hereinafter "Lindberg") in view of
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`Mault (US 6,790,178; hereinafter "Mault'} With respect to claim 1, applicant respectfully
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`traverses this rejection on the grounds that the Lindberg and Mault references are
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`Page 7 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 9 of 13
`
`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
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`defective in establishing a prima facie case of obviousness.
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`Independent claim 20, as amended for clarification, now more clearly recites a
`method for interactive exercise monitoring that comprises inter a!ia "downloading a
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`computer application program directly:, from a remote server ... [that] comprises a user(cid:173)
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`selected, interactive application program for measurement an exercise parameter and
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`an interactive user interface, the interactive application program (i) being selectable
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`from among a variety of application programs of varying complexity and (ii) for which
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`significant application functionality, memory and processing capabilities are provided for
`via a back-end server compared to application functionality, memory and processing
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`capabilities of the web-enabled wireless mobile device ... "(emphasis added).
`
`Support for the limitations of claim 20 can be found in, or reasonably inferred
`from, the specification as originally filed, at least in paragraphs [001 O] "full back-end
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`server functionality''; [0011] "providing a full-feature health-monitoring system that may
`wirelessfy connect to a back-end server application via the internet. The invention
`allows wireless access to and from a wide variety of present , , . health-related
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`instruments and devices"; [0015]; [0017] "collecting health-related data and providing
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`information in response to those data by means of a [wireless-web device] WWD
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`designed to display interactive information through a connection to the lntemef'; [0019]
`"a variety of aggjication programs (or "Apps") specifically designed for various brands of
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`mobile phones can be downloaded from the internef'; [0020] "distribution of third-party_
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`a_g_g_lications via downloaded distribution from sources known as App Stores ... [t]hus ...
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`an App for monitoring exercise may be downloaded ... from an Internet servel'; [0026]
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`"In particular, the relatively small amount of memory ... provided on a WWD as
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`compared to a back-end server severely limits the functionality of applications running
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`on the WWD, especially in terms of computing capacity, processing power, and user
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`Page 8 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 10 of 13
`
`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`intetface. fu providing significant application functionality on the back-end, fess
`memory and processing capabilities become necessary on the WWD .... Thus,
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`memory may be used in the WWD for an enhanced user interface ... "; and [0027] "the
`user connects to a specific Internet site and a software program, resident on a remote
`server located on the Internet, downloads [(i)J an interactive user interface ... and [(ii)]
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`an agp!ication for the measurement of an exercise Qarameter ... [The] software
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`algorithm or application ... may be of varying complexity, from a simple program that
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`merely acknowledges receipt of information to an artificial intelligence algorithm, such
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`as an expert system, collaborative filtering system, rules based system, case-based
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`reasoning system, or other such artificial intelligence application."
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`Applicant submits that neither Lindberg nor Ma.ult discloses at least the
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`aforementioned specific feature limitation of independent claim 1. In particular, it is
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`submitted that the primary citation to Lindberg does not disclose the claimed user(cid:173)
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`selected, interactive application program ... selectable from among a variety of
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`application programs of varying complexity. It is further submitted that the secondary
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`citation to Ma.ult does not remedy the deficiency in the primary citation to Lindberg.
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`Accordingly, without conceding the propriety of the asserted combination, the asserted
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`combination of Lindberg and Ma.ult is likewise deficient, even in view of the knowledge
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`of one of ordinary skill in the art.
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`The primary citation to Lindberg relates to "a method for g_roviding_ software to an
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`implantable medical device system, including an implanted medical device and a
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`presentation unit in communication with each other, a most current version of software
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`for operating one or more of these system units is stored at a server which is remote
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`from the implanted medical device system. Upon each start-up of the presentation
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`unit, a communication link is established between the server and the presentation unit,
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`Page 9 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 11 of 13
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`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`and information is provided from the presentation unit to the server identifying the
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`software which is respectively currently stored in one or more of the system units. The
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`server determines whether the currently stored software in the system units requires an
`update and, ft so, the server downloads the software version stored at the server to
`any of the system units which is/are in need of updated software." (Emphasis added,
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`see Lindberg, Abstract). In one embodiment, Lindberg discloses that "for an
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`implantable medical device system which is in use for any significant length of time ...
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`[t]his means that the software currently stored in the components of the implantable
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`medical device system must be replaced." (Emphasis added, see Lindberg, col. 1, lines
`25-29). Lindberg further discloses "Every time the presentation unit is activated, a
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`communication with the server can be established and whatever software is stored at
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`the server for designated task will then be automatically downloaded to the
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`presentation unit for use by the presentation unit in conducting the current procedure.
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`Since the server will always contain the most recent version of the operating software, it
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`is insured that the programmer [i.e., the presentation unit] will always operate with this
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`most recent version. ... [T]he server identifies all relevant information regarding_ the
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`presentation unit, such as its model number, the type of user (Le.: patient or physician
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`or nurse), time and date of last use, etc. Based on this information [i.e., the information
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`regarding the presentation unit], the most appropriate software is downloaded to the
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`presentation unit." (Emphasis added, see Lindberg, col. 2, lines 43-58).
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`In other words, the method of providing software of Lindberg requires
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`regjacement of current software in a presentation unit (i.e., it must be re.Q.laced) to
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`ensure that the programmer [i.e., the presentation unit] will always operate with this
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`most recent version. (Emphasis added, see Lindberg, Abstract; col. 1, lines 25-29; and
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`coL 2, lines 43-58). However, it is also respectfully submitted that the method and
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`system of the primary citation to Lindberg, cannot reasonably be interpreted to disclose
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`Page 10 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 12 of 13
`
`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`"downloading a computer application program directly from a remote server , , . [that]
`
`comprises a user-selected, interactive application program for measurement an
`
`exercise parameter and an interactive user interface, the interactive application program
`(i) being selectable from among a variety of application programs of varying complexity
`
`and (ii) for which sig_nificant application functionality, memory and processing
`capabilities are provided for via a back-end server comg_ared to application
`
`functionality, memory and processing capabilities of the web-enabled wireless mobile
`device ... "(emphasis added) as is explicitly recited in claim 20. For at least this
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`reason, the rejection should be withdrawn.
`
`The secondary citation to Ma.ult relates to a physiological monitor and associated
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`computation, display, and communication unit and is cited for its alleged disclosure of a
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`downloaded program for monitoring exercise. (Office Action, pages 5-6). Applicant
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`submits that Mault does not add anything that would remedy the aforementioned
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`deficiency in Lindberg. For at least this reason, the rejection should be withdrawn.
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`Accordingly, favorable reconsideration and withdrawal of the rejection of claim 20
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`under 35 U.S.C. §103(a) are respectfully requested. Claims 21-32 depend from and
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`further limit independent claim 20 and therefore are allowable as well. Accordingly, the
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`35 U.S.C. §103(a) rejection thereof has now been overcome.
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`Independent claim 37 has been amended to contain limitations similar to those in
`
`amended independent claim 20. For similar reasons as presented herein above for
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`overcoming the rejection of claim 20, claim 37 is also believed allowable. Withdrawal of
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`the rejection is requested.
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`Page 11 of 12
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`Case 1:19-cv-11586-IT Document 72-1 Filed 06/05/20 Page 13 of 13
`
`Appl. No, 13/632,771
`Response to Finai Action of Janua1y 10, 2019
`
`Conclusion
`
`EXPEDITED PROCEDURE
`PATENT
`Docket No. 1999P01960US06
`Customer No. 24737
`
`Except as indicated herein, the claims were not amended in order to address
`
`issues of patentability and Applicants respectfully reserve all rights they may have under
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`the Doctrine of Equivalents. Applicants furthermore reserve their right to reintroduce
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`subject matter deleted herein at a later time during the prosecution of this application or
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`a continuation application. In addition, the Office Action contains a number of
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`statements characterizing the claims, the specification, and the prior art. Regardless of
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`whether such statements are addressed by Applicant, Applicant refuses to subscribe to
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`any of these statements, unless expressly indicated by the Applicant
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`The matters identified in the Office Action of January 10, 2019 are now believed
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`resolved. Accordingly, the application is believed to be in proper condition for allowance.
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`Issuance of an early formal notice of allowance of claims 20-32 and 37 are requested.
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`Respectfully submitted,
`
`By:
`
`/Michael J. Balconi-Lamica/
`
`Michael J. Balconi-Lamica
`Registration No. 34,291
`for Eric Halsne, Reg. No. 46,753
`
`March 6 2019
`Dated:
`Philips Intellectual Property & Standards
`465 Columbus Avenue
`Suite 340
`Valhalla, NY 10595
`Telephone: 425-487 -7 489
`Facsimile: 914-495-9540
`File: 1999P01960US06
`
`a-a2658. 01427
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`Page12of12
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