Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 1 of 15
`Case 1:19-cv-11586—IT Document 72-12 Filed 06/05/20 Page 1 of 15
`
`EXHIBIT L
`
`EXHIBIT L
`
`
`
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 2 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 1 of 7
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants:
`
`Roger J. Quy
`
`Application No.
`
`12/211,033
`
`Filed:
`
`Title:
`
`September 15, 2008
`
`METHOD AND APPARATUS FOR MONITORING EXERCISE
`WITH WIRELESS INTERNET CONNECTIVITY
`
`Art Unit:
`
`3769
`
`Examiner:
`
`Shirley Jian
`
`Confirm. No.:
`
`7693
`
`Docket No.:
`
`00125/002005
`
`ViaEFS Web
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-14 5 0
`
`Sir:
`
`Certificate of Electronic Transmission
`Under 37 C.F.R. §1.8
`
`I hereby certify that this correspondence and any document referenced
`herein are being electronically filed with the USPTO via EFS-Web on
`September 20, 2010
`
`Nancy Joyce Simmons
`(Printed Name of Person Sending Correspondence)
`
`/nancy joyce simmons/
`(Signature)
`
`AMENDMENT AND RESPONSE TO FINAL OFFICE ACTION
`
`This is responsive to the Office Action mailed August 13, 2010 in the above matter,
`
`in which the rejections of the claims was made final. A response is due November 13,
`
`2010, and thus this Amendment and Response is timely filed.
`
`No fees are believed to be due. Any fees deemed to be due or credit for any
`
`overpayment for this application should be directed to Deposit Account Number 50-1047
`
`and authorization is hereby given to charge such account.
`
`Please enter the following remarks:
`
`Amendments begin on page 2.
`
`Remarks/Arguments begin on page 6.
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 3 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 2 of7
`
`IN THE CLAIMS:
`
`1.
`
`(Previously Presented) A method for interactive exercise monitoring, the method
`
`comprising the steps of:
`
`a.
`
`coupling a web-enabled wireless phone to a device which provides exercise-
`
`related information;
`
`b.
`
`c.
`
`d.
`
`e.
`
`rendering a user interface on the web-enabled wireless phone;
`
`receiving data indicating a physiologic status of a subject;
`
`receiving data indicating an amount of exercise performed by the subject;
`
`wherein at least one of the data indicating a physiologic status of a subject or the
`
`data indicating an amount of exercise performed by the subject is received from the
`
`device which provides exercise-related information, and wherein the data indicating a
`
`physiologic status of a subject is received at least partially while the subject is exercising;
`
`f.
`
`sending the exercise-related information to an internet server via a wireless
`
`network;
`
`g.
`
`receiving a calculated response from the server, the response associated with a
`
`calculation performed by the server based on the exercise-related information; and
`
`h.
`
`running an application in the web-enabled wireless phone for receiving the
`
`exercise-related information and displaying the response.
`
`2. (Previously Presented) The method of claim 1, wherein the receiving data indicating a
`
`physiologic status of a subject includes receiving data from a physiological sensor
`
`coupled to an exercise machine.
`
`3. (Previously Presented) The method of claim 1, where the receiving data indicating an
`
`amount of exercise performed by the subject includes receiving data from an exercise
`
`machine.
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 4 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 3 of7
`
`4. (Previously Presented) The method of claim 1, wherein the web-enabled wireless
`
`phone receives exercise-related information over a transmission medium, the
`
`transmission medium including a wired connection or a wireless connection.
`
`5. (Canceled)
`
`6. (Original) The method of claim 1, wherein the web-enabled wireless phone receives
`
`data via an adapter to convert a signal from the device to a suitable input for the wireless
`
`phone.
`
`7. (Previously Presented) The method of claim 1, wherein the data indicating an amount
`
`of exercise performed is received from a device selected from the group consisting of: a
`
`treadmill, a stepper, an exercise cycle, an accelerometer, a rowing machine,
`
`physiotherapy equipment, an aerobic or anaerobic exercise device, and a device that
`
`monitors an amount of work or rate of work performed.
`
`8. (Previously Presented) A non-transitory computer-readable medium, containing an
`
`application for performing an interactive method of exercise monitoring, the application
`
`physically residing on a server, the method comprising the steps of:
`
`a.
`
`receiving exercise-related information from a web-enabled wireless phone,
`
`wherein the exercise-related information includes data indicating a physiologic status of a
`
`subject and data indicating an amount of exercise performed by the subject, and wherein
`
`the data indicating a physiologic status of a subject is received at least partially while the
`
`subject is exercising;
`
`b.
`
`c.
`
`calculating a response based on the exercise-related information;
`
`transmitting the calculated response to the web-enabled wireless phone.
`
`9. (Previously Presented) The medium of claim 8, wherein the method further comprises:
`
`a. enabling the web-enabled wireless phone to receive exercise-related information from
`
`a device; and
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 5 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 4 of7
`
`b. transmitting to the web-enabled wireless phone a device application including a user
`
`interface on which the calculated response may be rendered.
`
`10. (Previously Presented) The medium of claim 8, wherein the calculating a response
`
`includes calculating a response to assist a person in monitoring calorie expenditure,
`
`losing weight, or maintaining a healthy lifestyle.
`
`11. (Previously Presented) The medium of claim 8, wherein the instructions further
`
`cause the web-enabled wireless phone to receive the exercise-related information via an
`
`adapter, the adapter to convert a received data signal to a suitable input for the web(cid:173)
`
`enabled wireless phone.
`
`12. (Previously Presented) The medium of claim 8, wherein the data indicating an
`
`amount of exercise performed by the subject is received from a device which is selected
`
`from the group consisting of: a pedometer, a treadmill, a stepper, an exercise cycle, an
`
`accelerometer, a rowing machine, physiotherapy equipment, an aerobic or anaerobic
`
`exercise device, and a device that monitors an amount of work or rate of work performed.
`
`13. (Previously Presented) The medium of claim 8, wherein the receiving exercise(cid:173)
`
`related information includes receiving exercise-related information over a wireless or a
`
`wired connection.
`
`14. (Previously Presented) A web-enabled wireless phone, containing a computer(cid:173)
`
`readable medium, the computer-readable medium comprising memory within a web(cid:173)
`
`enabled wireless phone, the computer-readable medium comprising instructions for
`
`causing a processor in the web-enabled wireless phone to perform the method of claim 1.
`
`15. (Previously Presented) A computer-readable medium, the computer-readable
`
`medium comprising memory within a web-enabled wireless phone, the computer-
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 6 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 5 of7
`
`readable medium containing instructions for causing a processor in a web-enabled
`
`wireless phone to perform the method of claim 1.
`
`16. (Previously Presented) The method of claim 1, further comprising downloading the
`
`application to the web-enabled wireless phone from a server.
`
`17. (Previously Presented) The method of claim 4, wherein the wireless connection
`
`includes an infrared connection or a radio frequency communication protocol including a
`
`short-range wireless transmission scheme.
`
`18. (Previously Presented) The method of claim 4, wherein the wired connection
`
`includes a USB connection, a cable, or a docking station.
`
`19. (Currently Amended) The method of claim 17, wherein the short-range wireless
`
`transmission scheme includes 802.11 or 802.15 Bluetooth®.
`
`20. (Previously Presented) The method of claim 1, wherein the data indicating a
`
`physiologic status of a subject is received from a device selected from the group
`
`consisting of: a heart rate monitor, a blood pressure monitor, a body temperature monitor,
`
`a respiratory monitor, a biofeedback device, an electronic body weight scale, and a body
`
`fat gauge.
`
`21. (Previously Presented) The medium of claim 8, wherein the data indicating a
`
`physiologic status of a subject is received from a device which is selected from the group
`
`consisting of: a heart rate monitor, a blood pressure monitor, a body temperature monitor,
`
`a respiratory monitor, a biofeedback device, an electronic body weight scale, and a body
`
`fat gauge.
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 7 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 6 of7
`
`REMARKS
`
`Status of the Claims
`
`Claims 1-4 and 6-21 are pending in the application. Claim 5 has been previously
`
`cancelled. Claims 1, 8, 14, and 15 are the independent claims. Claim 19 has been
`
`amended.
`
`General Remarks
`
`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.
`
`Finality of Rejections
`
`Applicant notes that the Examiner has made the current Office Action final as
`
`follows:
`
`Applicant's arrn;ndmcn! necessitated the n.l:w· ground(,;_) of rejection prcs.l:ntcd tn this
`
`Office ,tctkm. AG.xmjingly, THIS /\.CHON lS .MADE FIN.AL. Sec 1\--fPEP ~ 706.07(;t).
`
`Applicant is wminded of the ('.X!1:,nsion of time polky as set forth in 37 CFR l. J 36(a).
`
`For the record, Applicant has reproduced a portion of this section of the MPEP
`
`below:
`
`706.07(a) 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 :n CFR L97{c) with the fee set forth in 37 CFR L17(p).
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 8 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 7 of7
`
`In the present case, Applicant submits the finality of the Office Action is
`
`premature for at least two reasons. First, Applicant amended the claims in a way
`
`suggested by the Examiner as discussed in the telephonic interview held between the
`
`Applicant's representative and the prior Examiner (Michael C. Astorino) on March 8,
`
`2010:
`
`St.~b ... ~t~m:e of h:ih::tvie~~· inc~t~~ng des.:..-:d;:-.;-tl1."J:n ~)f ~f-::e. i~er:-er.;:1:1 Mtmc~ ef \"i:·h:3:t ¥!.{~::s~ :£$t~re~:r.j: to ff <~n ;,::-.~~~nwnt ,~·a:s
`::~;.:i..<:n~~l:. {)~ ~ny ct~r C·:)mrn~nt::, f.~ttfr~~~r:~ d~t·ut~~*'r~' th~ l)~~·.-o~~-.;::: t"Jh"J~~i:f a~~'k"Jn ~ ... ~c.fudft.,g tt~~· r1)S. 3:5 lrS. c·. § rOf,
`-n~·fi (~.>.·t${}7fr~tt· ~?Jr}~ifJ.:;~~~ &S-t\1({~~*:fi!!)f.!Y to i:?A?~·~S:W
`Jfi trs. (~. ~$
`·~ 1 ;-;, ;3b {ls. q, § :1 oz. ~nd #o~~~~~ -t!i"l~~nt~.~g r~~i~~*-~·t~g..
`1fJ'LC&1k.;;titrl'ilt.!'&t!lKiz:fti:%l'i,[t'S'U,1'll&ilgfL12£./i:t:sK! ·
`
`Applicant submits that his attempt to meet the requirements of the Examiner
`
`should not be met with a Final Office Action, and that issuance of the same is in clear
`
`contravention to the Patent Office policy of compact prosecution. The amendments were
`
`of the type suggested by the Examiner in the telephonic interview, and merely clarified in
`
`a definitional way the two types of data previously claimed, as well as when such data are
`
`monitored. For this reason alone, the finality of the rejections should be withdrawn.
`
`Even assuming, arguendo, that the above were not the case, Applicant submits
`
`that the rejections ought not be rendered final for other reasons. In particular, Office
`
`Actions are improperly final where the Examiner introduces a new ground ofrejection
`
`that is not necessitated by applicant's amendment of the claims. In the current case, the
`
`Examiner introduced a new prior art reference, Root, that was not necessitated by
`
`Applicant's amendments of the claims.
`
`For these reasons, Applicants respectfully submit that the finality of the rejections
`
`should be withdrawn.
`
`Double Patenting Rejection
`
`Claims 1-12 stand rejected under the judicially created doctrine of obviousness(cid:173)
`
`type double patenting as being allegedly unpatentable over claims 3-6 and 33-43 of U.S.
`
`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
`
`current independent claims 1 and 8 in the current case. The recitation of claims 1-12 is
`
`confusing as there is no currently-pending claim 5. However, in the interest of compact
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 9 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 8 of7
`
`prosecution, Applicant will assume the Examiner is at least referring to the above-noted
`
`independent claims ( and claims 14 and 15 require the limitations of claim 1 ).
`
`Independent claim 1 requires, among other limitations, receiving data indicating a
`
`physiologic status of a subject and receiving data indicating an amount of exercise
`
`performed by the subject, wherein at least one of the data indicating a physiologic status
`
`of a subject or the data indicating an amount of exercise performed by the subject is
`
`received from the device which provides exercise-related information, and wherein the
`
`data indicating a physiologic status of a subject is received at least partially while the
`
`subject is exercising. Independent claim 8 includes similar limitations, although on the
`
`server side.
`
`Claims 3-6 and 33-43 of the '191 patent contain no such limitations about two
`
`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
`
`limitations in processing power, memory, and display capability with mobile phones at
`
`the time of the '191 patent, one of ordinary skill in the art would not have expected that
`
`two such types of data could be received and transmitted by a mobile phone. While voice
`
`communications were abundant and some data transmission was possible, the
`
`transmission of two data types in the way claimed would not have been obvious to one of
`
`ordinary skill in the art.
`
`With regard to dependent claims, the same include even more distinguishing
`
`limitations.
`
`For at least these reasons, Applicant submits that the double patenting rejections
`
`of the claims should be withdrawn.
`
`Claim Rejection Under 35 U.S.C. 112, first paragraph
`
`Claim 19 is rejected under 35 U.S.C. 112, first paragraph, as failing to comply
`
`with the written description requirement. In particular:
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 10 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 9 of7
`
`Claim 19 is rejected under 35 UXC. l t2, first paragraph, as failing to cnn1ply \.Vith the
`
`\Vritten description requircrncnL The dairn(s) conttiit1~ subject matter \vhich was not described
`
`in the specification in such a way as to rca;,onab1y convey to one skiikd in the rckvam ,tr! that
`
`the invent:or{s), at the tirnc thi." upplicution was fikd, had possession of the chdmcd irrv,~mion.
`
`The claim lirnitation '·802J 5'' is new matter, mH supported by the disdosurc.
`
`Applicant has amended the claim to recite Bluetooth® instead of 802.15.
`
`Support for Bluetooth® is provided in various locations in the specification, including,
`
`e.g., [0044], [0052], and [0092]. Bluetooth®, a term well-understood to one skilled in
`
`the relevant art, was used in the claims of all previous family patents included by
`
`reference. Consequently, the rejection of claim 19 on this basis should be withdrawn.
`
`Claim Rejections Under 35 U.S.C. 102 - Root
`
`Claims 1-4, 6-18 and 20-21 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by Root et al., U.S. Patent No. 6,013,007 ("Root"). Applicant respectfully
`
`traverses this rejection as follows.
`
`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
`
`generally relate to systems that employ ordinary phone lines, and which lack full back(cid:173)
`
`end server functionality.
`
`Applicant next notes that Root is not a wireless device. Root connects to a PC for
`
`downloading via a "standard telephone line" (see Figs. 7-9, 4:54-67, 5:66 - 6:41). The
`
`only communications disclosed in Root that have any wireless character at all are as
`
`follows: an AM/FM/TV radio which is only disclosed for entertainment purposes (see
`
`Fig. IA and 4:40-48), not for wireless communications; a GPS receiver (see Figs. 2-6 and
`
`4:4-26, 5:36-65, 7:29-50) to determine the position of the GPS antenna 301 and its
`
`current speed and direction; and, in one embodiment, an IR port 124 (Fig. IB, 6, 7 and
`
`6:1-2) allowing data communication between the device 101 and a local PC 701.
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 11 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 10 of7
`
`Consequently, and with respect to all the claims, Root is deficient as an
`
`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.
`
`That is, there is no wireless character nor is there web-enablement. As noted, the "radio"
`
`mentioned by the Examiner is AM/FM/TV radio module 607 which cannot send
`
`exercise-related information as claimed. The GPS system can only receive data, time
`
`signals, allowing geolocation. That is, the wireless GPS network 204 is not pertinent to
`
`such communications since the same is only employable to transmit radio signals to
`
`device 101 to determine location (7:29-40). The IR port cannot send exercise-related
`
`information to an internet server via a wireless network either.
`
`Regarding web-enablement, the only such aspect even potentially inferable is
`
`using an external computer via the serial or infrared port or using a remote computer via
`
`modem. But this inference would defeat the purpose of having a mobile device.
`
`Accordingly, Applicant submits that to equate these with a web-enabled wireless phone is
`
`simply not supportable, especially as the clear purpose of the claimed device is to be
`
`carried and used while exercising without being limited to the location of a PC or
`
`telephone jack [0017]. In fact, Figs. 2-3 of Root show the user exercising with no
`
`connections indicated, and Figs. 7-9 show the monitor alone being connected to a PC or
`
`to a remote computer for data storage and analysis ( 4:54-64).
`
`Applicant concurs that Root discloses that an "internet web site" may be
`
`employed to present performance data (8:64 - 9:9). But again Root only discloses PC(cid:173)
`
`based browsers, not web-enabled wireless phones, and thus this disclosure deficient as an
`
`anticipatory reference against the claims.
`
`Applicant submits that the equating of the claimed web-enabled wireless device
`
`with the device 101 in combination with the PC 701/801 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
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 12 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 11 of7
`
`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).
`
`In this case, Root fails to teach use of a 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
`
`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 internet server via a wireless network (in the
`
`case of claim 8, receiving such information). Many of the ways in which this limitation
`
`is lacking in Root are analogous to the arguments above. In particular, Root discloses
`
`two ways of having their device 101 communicate with a PC 701/801. In one way, the
`
`reference employs an RJ-11 type telephone port 113 which connects an internal modem
`
`613 via a standard telephone line to a remote computer 801, which is connected to the
`
`internet 803 by a modem bank 802 (Fig. 8 and 4:60-63 and 8:58-65).
`
`In the other way,
`
`the device 101 is connected to a PC 701 directly via a serial-type port 118 or an IR-type
`
`port 124 (Fig. 7 and 5:66 - 6:2). The PC 701 is then connected to the internet 803 via a
`
`modem 902 and standard telephone lines (Fig. 9 and 6:29-34). Notably, Root discloses
`
`other forms of communication too - but even where Root discloses these other forms,
`
`none of them are disclosed to be wireless (6:32-34).
`
`Applicant submits that even if the PC were able to connect wirelessly, the
`
`reference would still be deficient as anticipatory because the device 101 is incapable of
`
`wireless communications to the internet in the absence of a PC ( and such
`
`communications are clearly not the purpose of the IR port 124). The purpose of the
`
`invention would be completely defeated in this case, and thus such a reading would be
`
`impermissible.
`
`The Root reference clearly is for storing data about exercise and then uploading
`
`the same at a later time via a standard telephone line, which is far different from real-time
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 13 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 12 of 7
`
`monitoring of exercise and physiological data and real-time uploading of the same via a
`
`web-enabled wireless phone, thus enabling the user to be free from being limited only to
`
`the location of a PC or telephone jack. So for this reason as well, Applicant submits the
`
`rejections of the independent claims should be withdrawn.
`
`Even assuming, arguendo, Root was not deficient on this basis, the reference is
`
`deficient as an anticipatory reference for even more reasons.
`
`For example, with respect to claim 1, 14, and 15, Root fails to teach receiving a
`
`calculated response from a server (with respect to claim 8, calculating a response and
`
`transmitting such a calculated response). Rather, what is termed a calculated response by
`
`the Examiner is actually a compiling of multiple users' data for purposes of marketing or
`
`the like. Information is sent to an Internet web site (8:64 - 9:9). The same is nowhere
`
`disclosed to be received by the web-enabled wireless phone since the Root device is not a
`
`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
`
`that a subject may listen to such promotional items such as audio targeted advertising on
`
`the device 101, but only after the same has been downloaded to a computer 701/801 and
`
`transferred (9:21-30).
`
`The reference is further deficient because no calculated response could
`
`conceivably be received, at least not one associated with a calculation based on the
`
`exercise-related information, since exercise-related information is not sent to an internet
`
`server during the time of exercise. In other words, data indicating an amount of exercise
`
`performed by the subject may be received in Root because of the GPS connection, but the
`
`same could not be sent to an internet server and a response received based on the sent
`
`data. The same is true of data indicating a physiologic status of a subject. In both cases,
`
`the same is only disclosed to be uploaded later via a standard telephone line, and
`
`consequently is not disclosed to be used in a calculated response to a web-enabled
`
`wireless device.
`
`Even where Root discloses communicating other sorts of information to a subject,
`
`the same are not calculated responses from a server, but rather locally-derived
`
`information such as pre-set targets input by the subject.
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 14 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 13 of7
`
`For all of these reasons as well, Applicant submits the rejections of the
`
`independent claims should be withdrawn.
`
`The dependent claims are allowable for even more reasons. For example, with
`
`regard to claims 9 and 16, Root fails to disclose downloading applications to a web(cid:173)
`
`enabled wireless phone from a server. Root fails to disclose adaptors, as required by
`
`claims 6 and 11. As Root fails to disclose web-enabled wireless phones, the reference is
`
`deficient in anticipating claims 14 and 15, which are directed to these.
`
`Claim Rejection Under 35 U.S.C. 103 - Root
`
`Claim 19 is rejected under 35 U.S.C. I03(a), as being unpatentable over Root as
`
`applied to claim 1 above. Applicant respectfully traverses this rejection.
`
`Claim 19 refers to types of short-range wireless transmission schemes by which
`
`the web-enabled wireless phone receives exercise-related information, notably 802.11 or
`
`Bluetooth®. Root receives this information in device 101 in only one way that is
`
`wireless: GPS, which is in no way a short-range wireless transmission scheme. Root
`
`receives this information in device 101 in other ways, but they are all wired
`
`communications. It is true that Root discloses an IR port, but the same is for
`
`communications between the device 101 and the PC 701/801, not for transmitting data to
`
`the device 101. Since any structure or disclosure necessary to meet the claim limitation is
`
`lacking in Root, it cannot be obvious to include a Bluetooth® or 802.11 port as a means
`
`of receiving such exercise data, e.g., from physiological sensors or from exercise
`
`machines.
`
`

`

`Case 1:19-cv-11586-IT Document 72-12 Filed 06/05/20 Page 15 of 15
`
`Serial No.: 12/211,033
`Examiner Shirley Xueying Jian
`Group Art Unit 3769
`Page 14 of 7
`
`Conclusion
`
`Should the Examiner be of the view that an interview would expedite
`
`consideration of the application, request is made that the Examiner telephone the
`
`Applicants' attorney at (703) 433-0510 in order that any outstanding issues be resolved.
`
`Respectfully submitted,
`
`/Mark Wieczorek/
`Mark D. Wieczorek
`Registration No. 37,966
`
`Dated: _September 20, 2010
`Attorney for Applicant
`Mayer & Williams, PC
`251 North A venue West, 2nd Floor
`Westfield, NJ 07090
`Tel.: 703-433-0510
`Fax: 703-433-2362
`
`