Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 1 of 11
`Case 1:19-cv-11586—IT Document 72-11 Filed 06/05/20 Page 1 of 11
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`EXHIBIT K
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`EXHIBIT K
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 2 of 11
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`Serial No.: 12/211,033
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Applicant:
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`Roger J. Quy
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`Serial No.:
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`12/211,033
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`Filed:
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`Title:
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`09/15/2008
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`METHOD AND APPARATUS FOR HEALTH AND DISEASE
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`MANAGEMENT COMBINING PATIENT DATA MONITORING WITH
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`WIRELESS INTERNET CONNECTIVITY
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`Art Unit:
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`3769
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`Examiner: Michael C. Astorino
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`Confirmation No.: 7693
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`Docket No.:
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`00125/002005
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`ViaEFS Web
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`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-14 5 0
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`AMENDMENT AND RESPONSE TO OFFICE ACTION
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`Sir:
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`In response to the Office Action mailed December 29, 2009, kindly amend the above(cid:173)
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`identified application as follows:
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`Certificate of Electronic Filing Under
`37 C.F.R. §1.8
`I certify that this correspondence and any document reference
`herein is being electronically deposited with the USPTO via EFS(cid:173)
`Web on March 16, 2010.
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`Michelle Wolf
`(Printed Name of Person Mailing Correspondence)
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`/rnichelle wow
`(Signature)
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 3 of 11
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`Serial No.: 12/211,033
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`Amendments to the Claims:
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`1.
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`(Currently Amended) 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-related
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`information;
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`b.
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`c.
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`rendering a user interface on the web-enabled wireless phone;
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`receiving data exercise related information in the v1eb enabled v1ireless phone, v1herein
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`the mcercise related information includes indicating a physiological data status of a subject;
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`d.
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`e.
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`receiving and data data indicating an amount of exercise performed by the subject;, and
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`wherein at least one of the data physiological data and the data indicating a physiologic
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`status of a subject or the data indicating an amount of exercise performed by the subject is
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`received from the device which provides exercise-related information, and wherein the data
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`indicating a physiologic status of a subject is received at least partially while the subject is
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`exerc1smg;
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`f.
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`g.
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`sending the exercise-related information to an internet server via a wireless network;
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`receiving a calculated response from a 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 exercise-
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`related information and displaying the response.
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`2. (Currently Amended) The method of claim 1, wherein the receiving data indicating a
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`physiologic status of a subject mcercise related information including physiological data
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`includes receiving data from a physiological sensor coupled to monitoring device or from an
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`exercise machine.
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`3. (Currently Amended) The method of claim 1, where the receiving_mcercise related
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`information including data indicating an amount of exercise performed by the subject includes
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`receiving data from an exercise machine or from a physiological monitoring device.
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`2
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 4 of 11
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`Serial No.: 12/211,033
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`4. (Previously Presented) The method of claim 1, wherein the web-enabled wireless phone
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`receives exercise-related information over a transmission medium, the transmission medium
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`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
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`an adapter to convert a signal from the device to a suitable input for the wireless phone.
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`7. (Currently Amended) The method of claim 1, wherein the data indicating an amount of
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`exercise performed is received from a device vthich provides exercise related information is
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`selected from the group consisting of: an electronic body 1tveight scale, a body fat gauge, a
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`pedometer, a biofeedback device, a treadmill, a stepper, an exercise cycle, an accelerometer, a
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`rowing machine, physiotherapy equipment, an aerobic or anaerobic exercise device, a
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`temperature monitor, a heart rate monitor, a blood pressure monitor, a respiratory monitor, and a
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`device that monitors an amount of work or rate of work performed.
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`8. (Currently Amended) A computer-readable medium, containing an application instructions
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`for performing an interactive method of exercise monitoring, the application physically residing
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`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, wherein the
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`exercise-related information includes data indicating a physiological data status of a subject and
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`data data indicating an amount of exercise performed by the subject, and wherein the data
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`indicating a physiologic status of a subject is received at least partially while the subject is
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`exerc1smg;
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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. (Currently Amended) 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 a
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`device; and
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`b. transmitting to the web-enabled wireless phone an device application including a user
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`interface on which the calculated response may be rendered.
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`3
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 5 of 11
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`Serial No.: 12/211,033
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`10. (Previously Presented) The medium of claim 8, wherein the calculating a response includes
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`calculating a response to assist a person in monitoring calorie expenditure, losing weight, or
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`maintaining a healthy lifestyle.
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`11. (Previously Presented) The medium of claim 8, wherein the instructions further cause the
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`web-enabled wireless phone to receive the exercise-related information via an adapter, the
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`adapter to convert a received data signal to a suitable input for the web-enabled wireless phone.
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`12. (Currently Amended) The medium of claim 8, wherein the data indicating an amount of
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`exercise performed by the subject exercise related information is received from a physiological
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`monitoring device which is selected from the group consisting of: an electronic body vteight
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`scale, a body fat gauge, a pedometer, a biofeedback device, a treadmill, a stepper, an exercise
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`cycle, an accelerometer, a rowing machine, physiotherapy equipment, an aerobic or anaerobic
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`exercise device, a temperature monitor, a heart rate monitor, a blood pressure monitor, a
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`respiratory monitor, 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-related
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`information includes receiving exercise-related information over a wireless or a wired
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`connection.
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`14. (Currently Amended) A web-enabled wireless phone, containing a computer-readable
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`medium, the computer-readable medium comprising memory within a web-enabled wireless
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`phone, the computer-readable medium comprising instructions for causing a processor in the
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`web-enabled wireless phone to perform the method of claim 1.
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`15. (Currently Amended) A computer-readable medium-, the computer-readable medium
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`comprising memory within a web-enabled wireless phone, the computer-readable medium
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`containing instructions for causing a processor in a web-enabled wireless phone to perform the
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`method of claim 1.
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`16. (Previously Presented) The method of claim 1, further comprising downloading the
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`application to the web-enabled wireless phone from a server.
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`4
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 6 of 11
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`Serial No.: 12/211,033
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`17. (Currently Amended) The method of claim 4, wherein the wireless connection includes an
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`infrared connection or a radio frequency communication protocol including a short-range
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`wireless transmission scheme Bluetooth® or 802.11.
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`18. (Previously Presented) The method of claim 4, wherein the wired connection includes a
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`USB connection, a cable, or a docking station.
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`19. (New) The method of claim 17, wherein the short-range wireless transmission scheme
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`includes 802.11 or 802.15.
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`20. (New) The method of claim 1, wherein the data indicating a physiologic status of a subject is
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`received from a device selected from the group consisting of: a heart rate monitor, a blood
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`pressure monitor, a body temperature monitor, a respiratory monitor, a biofeedback device, an
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`electronic body weight scale, and a body fat gauge.
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`21. (New) The medium of claim 8, wherein the data indicating a physiologic status of a subject is
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`received from a device which is selected from the group consisting of: a heart rate monitor, a
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`blood pressure monitor, a body temperature monitor, a respiratory monitor, a biofeedback
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`device, an electronic body weight scale, and a body fat gauge.
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`5
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 7 of 11
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`Serial No.: 12/211,033
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`REMARKS
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`Claims 1-18 were pending in this application. Claims 1-3, 7-9, 12, 14, 15, and 17 have
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`been amended, claim 5 has been cancelled, and claims 19-21 have been added. Support for these
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`amendments is described below. Reconsideration and allowance of all pending claims are
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`respectfully requested.
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`Interview
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`Applicant would first like to thank the Examiner for the courtesy of an interview
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`conducted March 8, 2010. The amendments to the claims were discussed, particularly the
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`distinction between physiologic data and data indicating an amount of exercise performed, and
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`the Examiner noted that Applicant's suggested claim amendments would further clarify what
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`Applicant regards as the invention, obviating the definiteness rejections. The corresponding
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`amendments are found in the independent claims, as well as in dependent claims 7 and 12.
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`Dependent claim 1 7 was also discussed, and an amendment has been made ( and new claim 19
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`added) to address the rejection. In the discussion of the prior art, Applicant noted how Brown
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`failed to disclose a system and method where data indicating a physiologic status of a subject is
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`received while the subject is exercising, and the Examiner indicated that this would likely be a
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`patentable distinction, and that the same would also likely overcome the double-patenting
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`rejection. The Examiner noted the importance for such amendments that the same be supported
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`by the original disclosure. Additional specific discussions are referenced in the remarks below.
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`Applicant has made the claim amendments noted, and further pointed out where the same
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`are based on the original disclosure. Consequently, Applicant submits that all the claims are
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`currently in condition for allowance.
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`Objection to the Information Disclosure Statement
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`In the current Office Action, the Examiner states that the information disclosure
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`statement filed May 11, 2009 fails to comply with 37 CFR 1.98(a)(2), which requires a legible
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`copy of each cited foreign patent document; each non-patent literature publication or that portion
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`which caused it to be listed; and all other information or that portion which caused it to be listed.
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`It has been placed in the application file, but the information referred to therein has not been
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`considered.
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 8 of 11
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`Serial No.: 12/211,033
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`The Examiner's direction is brought to the transmittal letter which was filed along with
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`the Information Disclosure Statement on May 11, 2009 wherein Applicant noted that all of the
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`references cited therein (for which a copy was not provided) were filed in one of the following
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`four parent applications: 11/649,703, 10/418,845, 09/738,270, 11/184,274. For this reason,
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`copies of the non-US and NPL references were not required. The Examiner is therefore
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`requested to consider the Information Disclosure Statement filed May 11, 2009.
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`Objection due to informalities
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`Claim 15 is objected to because in line 1 there is an extra space between "medium" and
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`the comma. The examiner suggestion removing the extra character space from the claim to read,
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`e.g. "medium,". This informality has been obviated by amendment.
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`Rejection under 35 U.S.C. 101
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`Claims 8-15 are rejected under 35 U.S.C. 101 because the claims recite a computer
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`readable medium, and the phrase "computer readable medium" was allegedly never explicitly
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`defined in the specification. This subject was discussed in the interview, and the Examiner noted
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`the letter issued by the Director on January 26, 2010, regarding "Subject Matter Eligibility of
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`Computer-Readable Media". Applicant has amended the claims to more specifically recite and
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`define the claimed computer-readable media. These amendments find support in the originally(cid:173)
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`filed specification as follows. The amendment to claim 8 finds support at, at least, paragraphs
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`[0026] and [0062], which discusses a software program physically resident on a server. The
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`amendments to claims 14 and 15 find support at, at least, paragraph [0025], which discusses the
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`use of memory for storage of applications within a wireless web device.
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`Rejections under 35 U.S.C. 112, second paragraph
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`Claims 1-18 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite
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`for failing to particularly point out and distinctly claim the subject matter which Applicant
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`regards as the invention.
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`Applicant has made further amendments to clarify the distinction between the two types
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`of data, data indicating a physiologic status of a subject and data indicating an amount of
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`exercise performed by the subject, as well as clarifying that the data indicating a physiologic
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`status of a subject is received at least partially while the subject is exercising. The data
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`indicating a physiologic status of a subject is exemplified in new dependent claims 20 and 21,
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 9 of 11
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`Serial No.: 12/211,033
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`and data indicating an amount of exercise performed by the subject is exemplified in amended
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`dependent claims 7 and 12. By way of support, Applicant notes that plural types of data are
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`noted in several locations, e.g., paragraphs [0013] ("Various health parameters ... may be entered
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`into a health monitoring device ... "), [0016] (" ... the system may be employed to monitor the
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`physiologic status of a healthy subject while eating, exercising ... ", emphasis added), [0063] ("In
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`a highly interactive embodiment, a patient may have numerous HMDs 11 connected via optional
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`adaptors to a WWD 12, and wireless application 70 may correspondingly send a large amount of
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`health data to server application 62.") 1, and [0075] ("Referring to FIG. 6, an example is given for
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`a system of health, nutrition, and/or exercise management.", emphasis added).
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`Regarding other second paragraph rejections, an amendment to claim 17 removes the
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`offending Bluetooth® term, the amendment finding support in paragraph [0052], and
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`Bluetooth® per se is replaced by 802.15, which is the protocol associated with the Bluetooth®
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`specification. In addition, Applicant has amended claim 2, this amendment finding support in
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`paragraph [0076].
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`Applicant submits that the above claim amendments better clarify what he regards as the
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`invention, and respectfully requests that the 35 U.S.C. § 112 ,i2 rejections of these claims be
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`withdrawn.
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`Rejection under 35 U.S.C. 102(b)
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`Claims 1-18 are rejected under 35 U.S.C. I02(b) as being anticipated by Brown US
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`Patent Number 5,997,476. This rejection is traversed with respect to the amended claims as
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`follows, this traversal tracking the arguments Applicant made in the interview.
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`Applicant first submits that the Brown reference is deficient as an anticipatory reference
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`because the same fails to disclose monitoring exercise data. While Brown discloses that the
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`reference is broader than just medical monitoring ( 4:23-35), the reference never discloses any
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`use of the device in the exercise field. Applicant next submits that while the Brown reference
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`discloses receiving data from more than one health monitor ( device jacks 68A-C), it fails to
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`disclose receiving data indicating a physiologic status of a subject at least partially while the
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`subject is exercising (and where data indicating an amount of exercise performed by the subject
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`is also being received). At most, Brown discloses receiving data with "multiple device
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`1 Note that the teachings of the "medical" embodiment were extended to the "exercise" embodiment in paragraph
`[0081].
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 10 of 11
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`Serial No.: 12/211,033
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`inteifaces to accommodate monitoring devices which have different connection standards."
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`(6:47-50).
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`In fact, Applicant submits that even if systems were developed that modeled exercise data
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`in a better way based on physiologic data, the same would require additional data inputs, e.g.,
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`type of exercise performed, that Brown fails to disclose.
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`For at least these reasons, Applicant submits that the claims are not anticipated by Brown,
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`and further respectfully requests that the 35 U.S.C. § 102 rejections of these claims be withdrawn.
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`Nonstatutory Double Patenting Rejection
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`Claims 1-12 are rejected under the judicially created doctrine of obviousness-type double
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`patenting as being allegedly unpatentable over claims 3-6, and 33-43 of U.S. Patent No.
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`6,602,191. In particular, the Examiner states that although the conflicting claims are not
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`identical, they are not patentably distinct from each other because it would have been allegedly
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`obvious to one of ordinary skill in the art at the time of the invention to implement the method of
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`the patent in the manner set forth in the instant application since the claims of the instant
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`application are allegedly merely different renditions of the patented method and computer
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`readable medium.
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`This rejection is traversed with respect to the amended claims as follows, this traversal
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`again tracking the arguments Applicant made in the interview. Applicant submits that the
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`current claims are nonobvious over the claims noted for many of the same reasons they
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`distinguish from Brown. In particular, the claims noted fail to disclose receiving data indicating
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`a physiologic status of a subject at least partially while the subject is exercising ( and where data
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`indicating an amount of exercise performed by the subject is also being received).
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`For at least these reasons, Applicant submits that the claims are not obvious over the
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`noted claims of U.S. Patent No. 6,602,191, and further respectfully requests that the double(cid:173)
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`patenting rejections of these claims be withdrawn.
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`Conclusion
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`Should the Examiner be of the view that an interview would expedite consideration of the
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`application, request is made that the Examiner telephone the Applicants' attorney at (619) 818-
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`4615 in order that any outstanding issues be resolved.
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`9
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`Case 1:19-cv-11586-IT Document 72-11 Filed 06/05/20 Page 11 of 11
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`Serial No.: 12/211,033
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`Authorization is given to charge deposit account 50-1047 in the amount of $110.00 in
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`additional claims fees Applicant believes is due as the application now has 20 claims, including 4
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`independent claims. Any deficiencies may also be charged to deposit account 50-1047.
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`Respectfully submitted,
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`/Mark Wieczorek/
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`Mark D. Wieczorek
`Registration No. 37,966
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`Date: March 16, 2010
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`Attorney for Applicant
`Mayer & Williams PC
`251 North A venue West, 2nd Floor
`Westfield, NJ 07090
`Tel: 619-818-4615
`Fax: 908-518-7795
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