Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 1 of 19
`Case 1:19-cv-11586—IT Document 72-3 Filed 06/05/20 Page 1 of 19
`
`EXHIBIT C
`
`EXHIBIT C
`
`
`
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 2 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Roger J. Quy
`
`Serial No.:
`
`12/692,080
`
`Filed:
`
`January 22, 2010
`
`Art Unit:
`
`3762
`
`Examiner:
`
`Catherine M. Voorhees
`
`Confirmation No.
`
`1077
`
`Docket No.:
`
`00125/005001
`
`Title:
`
`METHOD AND APPARATUS FOR EXERCISE MONITORING
`COMBINING EXERCISE MONITORING AND VISUAL DATA WITH
`WIRELESS INTERNET CONNECTIVITY
`
`ViaEFS Web
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-14 5 0
`
`Dear 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
`10/22/12
`
`Joanne Ryan
`(Printed Name of Person Sending Correspondence)
`
`/Joanne Ryan/
`(Signature)
`
`RESPONSE TO NON-FINAL OFFICE ACTION
`
`This is in response to the non-final Office Action mailed May 22, 2012, having a
`
`shortened statutory deadline of August 22, 2012, This paper is filed with a Petition for a
`
`Two-Month Extension of Time and is thus timely filed.
`
`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.
`
`Amendments to the Specification begin on page 2.
`
`Amendments to the Claims begin on page 3.
`
`Remarks begin on page 10.
`
`1
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 3 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`In The Specification:
`
`Please amend paragraph [0001] as follows:
`
`CROSS-REFERENCE TO RELATED APPLICATIONS
`
`This application is a continuation-in-part of U.S. Patent Application Ser. No.
`
`11/649,355, filed January 3, 2007, entitled "Method and Apparatus For Health and
`
`Disease Management Combining Patient Data Monitoring With Wireless Internet
`
`Connectivity," now abandoned, which is a continuation of U.S. Patent Application Ser.
`
`No. 11/156,177, filed June 17, 2005, entitled "Method and Apparatus For Health and
`
`Disease Management Combining Patient Data Monitoring With Wireless Internet
`
`Connectivity," now U.S. Pat. No. 7,156,809, which is a continuation-in-part of U.S.
`
`Patent Application Ser. No. 10/773,501, filed Feb. 6, 2004, now U.S. Patent No.
`
`6,976,958, the entirety of each prior application being incorporated by reference herein.
`
`2
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 4 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`IN THE CLAIMS:
`
`1. (Currently Amended) A wireless internet system for monitoring exercise or fitness,
`
`connected in wireless communication with a network, comprising:
`
`a wireless internet device including a camera, a first port and a second port, the
`
`first port for receiving an exercise parameter, wherein the exercise
`
`parameter is physiological data related to exercise or data related to the
`
`amount of exercise performed, and the second port for communicating
`
`with an internet server, at least a portion of a communication path being
`
`wireless; and
`
`a non-transitory computer-readable medium within the wireless internet device,
`
`the computer-readable medium having instructions stored thereon for
`
`performing a method for monitoring exercise, nutrition, or fitness, the
`
`method comprising steps of:
`
`accepting the exercise parameter via the first port;
`
`accepting visual data captured by the camera; and
`
`transmitting data corresponding to the accepted exercise parameter and the
`
`visual data to the internet server via the second port,
`
`wherein the transmitting is performed wirelessly along at least a least a
`
`portion of a communication path.
`
`2. (Currently Amended) The system of claim 1 where the wireless transmitting employs
`
`a protocol selected from the group comprising consisting of: a variety of cellular
`
`protocols, a variety of 802.11 protocols, 802.15 protocols, 802.16 protocols, 802.20
`
`protocols, ultrawideband protocols, wireless universal serial bus protocols, VOIP
`
`protocols, broadband wireless protocols, or satellite communication protocols.
`
`3. (Original) The system of claim 1, wherein the wireless internet device is a web(cid:173)
`
`enabled mobile phone.
`
`3
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 5 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`4. (Currently Amended) The system of claim 1, wherein the digi-tal camera is integral
`
`with the wireless internet device.
`
`5. (Currently Amended) The system of claim 1, wherein the digi-tal camera is connected
`
`to the wireless internet device via a wired or wireless connection.
`
`6. (Currently Amended) The system of claim 1, wherein the first port is adapted to
`
`receive the exercise parameter is received from a sensor coupled to an exercise monitor,
`
`and wherein the exercise monitor is selected from the group comprising coRsistiRg of: a
`
`heart rate monitor, a respiration rate monitor, a blood pressure monitor, an accelerometer,
`
`a pedometer, a GPS device, a body weight scale, a body fat gauge, a biofeedback device,
`
`a treadmill, a rowing machine, an exercise bicycle, a stepper, other exercise equipment,
`
`and combinations thereof.
`
`7. (Currently Amended) The system of claim 1, further comprising 1tvhereiR the mcercise
`
`parameter is received from a sensor within the wireless internet device, and wherein the
`
`exercise parameter is received from the sensor.
`
`8. (Original) The system of claim 7, wherein the sensor within the wireless internet
`
`device is a GPS device or an accelerometer.
`
`9. (Currently Amended) The system of claim 1, wherein the instructions further perform
`
`a method of providing a user interface for the wireless internet device, wherein the
`
`exercise parameter is a nutrition parameter, and wherein the nutrition parameter is
`
`received from the a user interface associated vtith the vtireless iH:temet device.
`
`4
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 6 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`10. (Currently Amended) The system of claim 1, wherein the first port is adapted to
`
`receive the exercise parameter, the exercise parameter being -i-s-a physiological parameter
`
`related to exercise, and wherein the physiological parameter is received from a
`
`physiological sensor associated with a device selected from the group comprising
`
`consisting of: a heart rate monitor, an ECG monitor, a respiration rate monitor, a blood
`
`pressure monitor, a temperature monitor, a body weight scale, a body fat gauge, a
`
`biofeedback device, a treadmill, a rowing machine, an exercise bicycle, a stepper, other
`
`exercise equipment, and combinations thereof.
`
`11. (Currently Amended) The system of claim 10, wherein the first port is adapted to
`
`receive the exercise parameter from a physiological sensor is disposed on an exercise
`
`machine.
`
`12. (Currently Amended) The system of claim 1, wherein the internet server is
`
`instructions are further configured to transmit data corresponding to the exercise
`
`parameter, or the visual data, or both, to another wireless internet device through the
`
`Internet server, whereby a user of the another wireless internet device may monitor
`
`exercise performed by the user of the wireless internet device.
`
`13. (Original) A method of monitoring an exercise parameter using a wireless internet
`
`device, the device connected in wireless communication with a network, comprising:
`
`receiving an exercise parameter via a first connection from an exercise monitor;
`
`receiving visual data captured by a camera in data communication with the
`
`wireless internet device, the visual data corresponding to an exercise condition, a
`
`nutrition condition, or a fitness condition; and
`
`transmitting data corresponding to the exercise parameter and the visual data to an
`
`internet server via a second connection that is at least in part wireless.
`
`5
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 7 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`14. (Currently Amended) The method of claim 13 wherein the second connection
`
`employs a protocol selected from the group comprising eoRsistiRg of: a variety of cellular
`
`protocols, a variety of 802.11, 802.15, or 802.16, or 802.20 protocols, ultrawideband
`
`protocols, wireless universal serial bus protocols, VOIP protocols, broadband wireless
`
`protocols, or satellite communication protocols.
`
`15. (Currently Amended) A computer program, residing on a non-transitory computer(cid:173)
`
`readable medium, containing instructions for causing a wireless internet device to
`
`perform the method of claim 13.
`
`16. (Currently Amended) A computer program, residing on a non-transitory computer(cid:173)
`
`readable medium, containing instructions for causing a server in signal communication
`
`with the internet to:
`
`provide a device application and user interface to a wireless internet device,
`
`wherein the device application contains instructions for causing the
`
`wireless internet device to receive an exercise parameter from a generic
`
`input/output port;
`
`receive a signal corresponding to an exercise parameter and a visual image from
`
`the wireless internet device, the exercise parameter and visual image
`
`corresponding to an exercise condition, a nutrition condition, or a fitness
`
`condition;
`
`calculate a response based at least in part on the received signal; and
`
`communicate the response to the wireless internet device.
`
`6
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 8 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`17. (Currently Amended) A system for monitoring exercise, comprising:
`
`a wireless internet device in signal communication 1tvith including a digital camera
`
`and a port for connection to an exercise monitor, the wireless internet
`
`device running including an application stored on a non-transitory
`
`computer readable medium, the application functioning to accept inputs
`
`from the digital camera and from a the port for connection to an exercise
`
`monitor, the wireless internet device further including a communications
`
`port including a wireless link to a network; and
`
`a server application stored on a non-transitory computer readable medium, the
`
`server application in communication with connected to a network and in
`
`communication with the wireless internet device, the server application for
`
`reviewing exercise as indicated by the wireless internet device via the
`
`camera and a signal from the port for connection to an exercise monitor.
`
`18. (Original) The system of claim 17, wherein the wireless internet device is a web(cid:173)
`
`enabled mobile phone.
`
`19. (Currently Amended) The system of claim 17, wherein the port for connection to an
`
`exercise monitor is adapted to receive signals from a device selected from the group
`
`comprising consisting of: a heart rate monitor, a respiration rate monitor, a blood pressure
`
`monitor, an accelerometer, a pedometer, a GPS device, a body weight scale, a body fat
`
`gauge, a biofeedback device, a treadmill, a rowing machine, an exercise bicycle, a
`
`stepper, other exercise equipment, and combinations thereof.
`
`20. (Currently Amended) The system of claim 17, wherein the port for connection to an
`
`exercise monitor is configured to provide a wired connection between the wireless
`
`internet device and the mcercise monitor is wired.
`
`7
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 9 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`21. ( Currently Amended) The system of claim 1 7, wherein the port for connection to an
`
`exercise monitor is configured to provide a wireless connection bet\veen the 1tvireless
`
`internet device and the mcercise monitor is wireless.
`
`22. (Currently Amended) The system of claim 21, wherein the port for connection to an
`
`exercise monitor is configured to provide a wireless connection that employs a protocol
`
`selected from is-¥ia a variety of 802.11, 802.15, or 802.16 protocols or other short range
`
`wireless transmission methods.
`
`23. (Currently Amended) The system of claim 17, wherein the communication support
`
`including a wireless link to a network is configured to provide a wireless link that
`
`employs a protocol selected from -via-a variety of 802.11, 802.16, or 802.20 protocols,
`
`cellular, other broadband wireless protocols, or satellite communication protocols.
`
`24. (Original) The system of claim 17, wherein the server application is further
`
`configured to transmit exercise data to another wireless internet device, whereby a user of
`
`the another wireless internet device may monitor exercise performed by the user of the
`
`wireless internet device.
`
`8
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 10 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`25. (Currently Amended)
`
`A system for monitoring exercise, comprising:
`
`a wireless internet device adapted to be in signal communication with a digital
`
`camera, the wireless internet device running including a communications
`
`port and an application, the application stored on a non-transitory
`
`computer readable medium, the application functioning to accept inputs
`
`from the digital camera and from a the communications port, the
`
`communications port including a wireless link to a network, the wireless
`
`internet device further adapted to be coupled to an exercise monitor; and
`
`a server application stored on a non-transitory computer readable medium, the
`
`server application in communication with connected to a network and in
`
`communication with the wireless internet device, the server application for
`
`reviewing exercise as indicated by the wireless internet device via the
`
`camera and a signal from the exercise monitor.
`
`9
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 11 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`Status of Claims
`
`Claims 1-25 are pending in the application and are rejected. Claims 1, 2, 4-7, 9-
`
`12, 14 - 17, 19 - 23, and 25 are amended here, and no claims are canceled. The
`
`amendments to the claims are primarily formal in nature and find full support in the
`
`originally filed application. Claims 1, 13, 16, 17, and 25 remain in independent form.
`
`Information Disclosure Statement
`
`Regarding the Information Disclosure Statement filed with the initial filing, the
`
`Examiner crossed out all of the WO references. Applicant contacted the Examiner and
`
`pointed out that our transmittal indicated that copies of the WO references could be found
`
`in the parent applications. The Examiner stated that she will consider the WO references
`
`without requiring the Applicant to refile the IDS.
`
`Objections
`
`The drawings are objected to for including reference characters not mentioned in
`
`the description. Amended drawings are included here.
`
`The specification is objected to for not including updated information on
`
`application numbers listed in the disclosure. Upon review Applicant submits only a
`
`notation of "now abandoned" was missing, and an amendment to that effect is included
`
`here.
`
`Claim 1 is objected to for informalities. These informalities have been obviated
`
`by amendment.
`
`Rejections Under 35 U.S.C. § 112, second paragraph
`
`Claims 1-12 and 17-25 are rejected under 35 U.S.C. 112, second paragraph, as
`
`being allegedly indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which Applicant regards as the invention. These rejections have been
`
`addressed as follows.
`
`10
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 12 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`With respect to the term "internet server" in claim 1, Applicant submits the same
`
`was introduced in line 7 with the term "for", e.g., "the second port for communicating
`
`with an internet server". With respect to the use of the same term in claim 12, the
`
`rejection has been overcome by amendment.
`
`With respect to the term "communication path" in claim 1, Applicant submits the
`
`term is used in a clause that makes more specific the same clause noted above, i.e., "the
`
`second port for communicating with an Internet server". Thus, the "for" used in the noted
`
`clause further modifies the term "communication path" and thus serves as a functional
`
`limitation on the second port.
`
`The rejections of claims 2, 4-11, 14, 17, 19, 22-23, and 25 have been overcome by
`
`amendment. Consequently, the rejections of claims 3, 18, and 24 have also been
`
`overcome.
`
`Rejections Under 35 U.S.C. § 101
`
`Claim 16 is rejected under 35 U.S.C. 101 because the claimed invention is
`
`allegedly directed to non-statutory subject matter. This rejection has been overcome by
`
`amendment.
`
`Rejections Under 35 U.S.C. § 103(a)
`
`Claims 1, 3-6, 10-13, 15-21 and 24-25 are rejected under 35 U.S.C. 103(a) as
`
`being allegedly unpatentable over David et al. (US 5,441,047, "David") in view of Surwit
`
`et al. (US 7,739,130, "Surwit").
`
`Claims 2, 14 and 21-22 are rejected under 35 U.S.C. 103(a) as being allegedly
`
`unpatentable over David in view of Surwit as applied to claims 2, 13, 17, and 21, and
`
`further in view ofMault et al. (US 6,790,178, "Mault")
`
`These rejections are traversed with respect to the amended claims as follows.
`
`As an initial matter, Applicant notes that, to support an obviousness rejection,
`
`MPEP 2143.03 requires "all words of a claim to be considered" and MPEP 2141.02
`
`11
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 13 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`requires consideration of the "[claimed] invention and prior art as a whole." Further, the
`
`Board Of Patent Appeals and Interferences recently confirmed that a proper, post -KSR
`
`obviousness determination still requires the Office making "a searching comparison of
`
`the claimed invention - including all its limitations - with the teaching of the prior art."
`
`In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572
`
`(Fed. Cir. 1995) and CFMT v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
`
`2003). In sum, it remains well-settled law that an obviousness rejection requires at least a
`
`suggestion of all of the claim elements.
`
`Starting with the primary reference David, Applicant notes that the reference
`
`relates to a system for patient health monitoring. In the portion of the reference cited by
`
`the Examiner, a patient's gait is diagnosed [16:3-56]. Gait is observed to indicate
`
`abnormality and the patient's predisposition to falling [4:56-65, 6:24-34, 15:47 - 16:39].
`
`However, independent claim 1 specifically requires receiving physiological data related
`
`to exercise or data related to the amount of exercise performed. Independent claim 13
`
`requires receiving an exercise parameter from an exercise monitor. Independent claim 16
`
`requires a device application that causes the reception of an exercise parameter
`
`corresponding to an exercise condition, nutrition condition, or fitness condition.
`
`Independent claim 17 requires a port for connection to an exercise monitor such that
`
`exercise can be reviewed by a server application. Independent claim 25 requires a
`
`wireless internet device adapted to be coupled to an exercise monitor, again such that
`
`exercise can be reviewed by a server application.
`
`The David reference bears no relation to monitoring exercise, fitness, nor
`
`nutrition. And such makes sense given the purpose of the reference, which is to monitor
`
`a patient rather than to monitor exercise. Thus exercise is not disclosed nor more specific
`
`steps of receiving data relating to an amount of exercise, much less of review of such data
`
`by a server application. In fact David does not disclose any exercise monitor at all for
`
`determining physiological data related to exercise or data relating to an amount of
`
`exercise performed, instead disclosing various medical monitors for monitoring patient
`
`12
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 14 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`vital signs, especially for the homebound. The camera disclosed is for observing
`
`primarily the gait of patients, the same being for medical diagnosis purposes and far from
`
`an exercise monitor. This is particularly true as there appears no facility for measuring
`
`even the number of gait-related movements of a patient over a period of time, the same
`
`being a most basic function of an exercise monitor. Moreover, its use with the display of
`
`the monitor screen [15:32-37] cannot logically be equated to both the digital camera for
`
`visual data and the exercise monitor. Surwit provides nothing in this regard, being related
`
`to networking for patient compliance, and for at least this reason, Applicant submits the
`
`rejections of the independent claims should be withdrawn.
`
`In addition, the references lack teaching or disclosure of a wireless internet device
`
`as the same has been defined by the claims and the disclosure. The Examiner refers to
`
`remote sites IOA, IOB, or the remote site shown in Fig. 6 of David, as wireless internet
`
`devices. Applicant respectfully submits that such reference is overbroad. In particular,
`
`David discloses that the transmission to the central station may be made by satellite, radio
`
`transmission, telephone lines, or cable TV [5:37-42], but the reference does not disclose a
`
`cellular phone, but only refers to "a combination with the bulk of a cellular phone".
`
`Previous applications by the same Applicant have dealt with this issue in various
`
`ways as well. As per the MPEP, the state-of-the-art is determined at the time of filing of
`
`the application, including its priority date. At the time of priority of the application, it
`
`was far from clear that modem technology was leading in this direction. Certainly
`
`miniaturization would be accomplished, but providing ports for receiving exercise
`
`parameters, as required in some way by each of the independent claims, was not in any
`
`way a foregone conclusion or even suggested in the fashion claimed. Moreover, using
`
`such ports to monitor data about exercise or fitness, and the use of integrated cameras,
`
`particularly the incorporation of such into a conventional cell phone, was also not
`
`obvious at the time, because of the limited processing power, memory, and display size
`
`of cell phones at that time. In any event it clearly would not have been obvious to add all
`
`of these capabilities to the device of David to monitor exercise since the reference itself
`
`13
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 15 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`says nothing about fitness or exercise. For this reason, Applicant respectfully submits the
`
`development of cell phone technology was far less predictable than the Examiner posits.
`
`Thus, for at least this reason as well, Applicant submits the rejections of the independent
`
`claims should be withdrawn.
`
`Even more, the combination of references fails to disclose a non-transitory
`
`computer readable medium disposed within the wireless internet device, as required by
`
`the independent claims (in independent claim 13, the references fail to disclose the
`
`processing steps performed by the wireless internet device). For example, in the David
`
`reference, the home unit only includes the sensor part of the measuring device. Raw data
`
`is sent to a central station which performs the display [8:4-12]. No disclosure is made of
`
`processing at the unit. Thus, for at least this reason as well, Applicant submits the
`
`rejections of the independent claims should be withdrawn.
`
`Moreover, and with particular regard to independent claim 16, the combination of
`
`references fails to teach or disclose providing a device application and user interface to a
`
`wireless internet device which causes the wireless internet device to receive an exercise
`
`parameter from a generic input/output port. Even if the central station software of David
`
`is equated to the server application, the same does not provide instructions, a device
`
`application, nor a user interface for the wireless Internet device. Thus, for at least this
`
`reason as well, Applicant submits the rejection of the independent claim 16 should be
`
`withdrawn.
`
`As an additional reason for patentability, Applicants respectfully submit that the
`
`Examiner has not provided sufficient reason why one of ordinary skill in the art would
`
`combine the references. In particular, according to KSR Int'l Co. v. Teleflex, Inc., 550
`
`U.S. 398 (2007) "rejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness." KSR, citing In re
`
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Moreover, MPEP 2143.01 entitled
`
`"Suggestion or Motivation to Modify the References" states:
`
`14
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 16 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`"A statement that modifications of the prior art to meet the claimed invention would have
`
`been 'well within the ordinary skill of the art at the time the claimed invention was
`
`made'" because the references relied upon teach that all aspects of the claimed invention
`
`were individually known in the art is not sufficient to establish a prima facie case of
`
`obviousness without some objective reason to combine the teachings of the references.
`
`Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993)."'
`
`In other words, explicit and articulated reasoning is required, not just conclusory
`
`statements. In the present case, the reason given is that "One of ordinary skill in the art
`
`at the time of the invention would have recognized the benefits of using a
`
`communications network such as the Internet between a patient monitor attached to a
`
`server and the remote health care providers in view of the teachings of Surwit." Page 9
`
`of Office Action of May 22, 2012.
`
`Applicant concurs that Surwit teaches a networked system for analyzing patient
`
`compliance with medications and therapies, but disagrees that one of ordinary skill in the
`
`art would be led to combine Surwit with David. The point of the David reference is
`
`networking so that a healthcare worker need not be physically on site. The David
`
`reference itself points to no deficiencies in this regard. Thus, it is unclear why one of
`
`ordinary skill in the art, with the David reference at hand, would look to Surwit for what
`
`would essentially be a redundant system. In this regard it is noted that the "wireless"
`
`aspects of the disclosures are essentially the same in each reference.
`
`Thus, for at least all of these reasons as well, Applicant submits the rejection of
`
`the claims based on the combination of David and Surwit is insufficient to set forth a
`
`proper primafacie rejection and thus the rejections should be withdrawn.
`
`Applicant submits that the dependent claims are in allowable condition for even
`
`additional reasons.
`
`For example, with respect to dependent claims 3 and 18, the combination of
`
`references fails to teach or disclose a Web-enabled mobile phone. With respect to
`
`dependent claims 6, 10, 11, and 19-22, the combination of references fails to teach or
`
`15
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 17 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`disclose a system including a wireless internet device that has a port adapted to receive an
`
`exercise parameter from a sensor, e.g., one that measures physiological parameters
`
`related to exercise or that is designed to measure an amount of exercise performed, e.g.,
`
`one on a treadmill or the like. With respect to dependent claim 7, the combination fails to
`
`teach or disclose a sensor within the wireless internet device. In this regard it is noted that
`
`the additional reference Teller is employed for the teaching of an accelerometer, but the
`
`accelerometer detects body movement or motion to calculate sleep parameters, not an
`
`amount of exercise performed as claimed. With respect to dependent claim 9, no
`
`provision of a user interface is disclosed. With respect to this claim, Teller is again
`
`suggested for the teaching of an input of a nutrition parameter. However, Teller does not
`
`teach that the nutrition parameter is received from a user interface on the wireless internet
`
`device, as claimed. In contrast, the reference teaches that the same are entered in the form
`
`of text to a website, or by response to e-mails, or by a programmed telephone call [8:41-
`
`9:13]. With respect to dependent claims 12 and 24, as noted the central station cannot be
`
`read as a wireless internet device and thus cannot be read as an "another" wireless
`
`internet device as claimed.
`
`With regard to the rejections of claims 2, 14, and 21-22 as unpatentable over
`
`David in view of Surwit and further in view of Ma ult, Applicant notes that Mault teaches
`
`wireless protocols to substitute physical docking of the PDA with the monitor module
`
`[5:34-49], as opposed to the claimed connection from the wireless internet device to the
`
`server. Applicant concurs that the reference notes wireless communications, but does not
`
`suggest any of the claimed protocols.
`
`For at least these reasons as well, Applicant submits the rejections of the
`
`dependent claims should be withdrawn.
`
`16
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 18 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`Nonstatutory Double Patenting Rejections
`
`Claims 1-25 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 1-17 of US Patent No. 6,976,958 in view of
`
`US Patent Publication No. 2003/0065257 to Mault et al.
`
`Claims 1-7 and 10-25 are rejected on the ground of nonstatutory obviousness-type
`
`double-patenting as being unpatentable over claims 1-47 of US Patent No. 7,156,809.
`
`Applicant traverses these rejections as the claims noted in '958 and '809 only
`
`relate to disease states or conditions of a patient. They do not relate to exercise
`
`parameters, much less to specific exercise monitors and machine such as treadmills. The
`
`Mault reference adds little in this regard. In particular, the Mault reference cited relates to
`
`a device that combines activity monitoring and diet monitoring. The camera that is
`
`employed in Mault is solely related to imaging food for this diet monitoring, not for any
`
`sort of exercise monitoring.
`
`In contrast, the current invention relates to physiological and exercise monitoring,
`
`and in particular receiving exercise data from an exercise monitor and receiving visual
`
`data from the camera corresponding to an exercise or fitness condition. Applicant
`
`respectfully submits that the requirement that both visual data and physiological or
`
`exercise data are employed is a patentable feature as the same have not been disclosed or
`
`suggested before in combination, as required by the MPEP sections cited above.
`
`Applicant further notes that the field of exercise is particularly well-suited to additional
`
`analysis using visual data. For example, an exercise machine or running track may be
`
`imaged to record information about its condition or gradient, weather conditions may be
`
`recorded, or the like.
`
`17
`
`

`

`Case 1:19-cv-11586-IT Document 72-3 Filed 06/05/20 Page 19 of 19
`
`12/692,080
`Group Art Unit 3762
`Examiner Catherine M. Voorhees
`
`CONCLUSION
`
`Applicant respectfully submits that all pending claims are in condition for
`
`allowance, early notification of which is earnestly solicited. Should the Examiner be of
`
`the view that an interview would expedite prosecution of the application, request is made
`
`that the Examiner telephone the undersigned attorney at ( 619) 818-4615 in order to
`
`resolve any outstanding issues.
`
`Dated: October 22, 2012
`- - -
`
`Respectfully submitted,
`
`/Mark Wieczorek/ - - - - -
`Mark D. Wieczorek
`Registrat