Case 1:19-cv-11586-IT Document 72-8 Filed 06/05/20 Page 1 of 7
`Case 1:19-cv-11586—IT Document 72-8 Filed 06/05/20 Page 1 of 7
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`EXHIBIT H
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`EXHIBIT H
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`Case 1:19-cv-11586-IT Document 72-8 Filed 06/05/20 Page 2 of 7
`UNITED STA IBS p A IBNT AND TRADEMARK OFFICE
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`UNITED STA TES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria., Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`12/211,033
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`09/15/2008
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`RogerJ. Quy
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`00125/002005
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`7693
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`05/04/2009
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`7590
`27774
`MA YER & WILLIAMS PC
`251 NORTH A VENUE WEST
`2NDFLOOR
`WESTFIELD, NJ 07090
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`EXAMINER
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`ASTORINO, MICHAEL C
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`ART UNIT
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`PAPER NUMBER
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`3769
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`MAIL DATE
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`DELIVERY MODE
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`05/04/2009
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`Case 1:19-cv-11586-IT Document 72-8 Filed 06/05/20 Page 3 of 7
`Application No.
`Applicant(s)
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`Office Action Summary
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`12/211,033
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`Examiner
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`QUY, ROGER J.
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`Art Unit
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`3769
`Michael C. Astorino
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)[8J Responsive to communication(s) filed on 15 September 2008.
`2a)0 This action is FINAL.
`2b)[8J This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)[8J Claim(s) 1-12 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8J Claim(s) 1-12 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`9)[8J The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
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`Priority under 35 U.S.C. § 119
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`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17 .2(a)).
`*Seethe attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
`1) [8J Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
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`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
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`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No./Mail Date 20090502
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`Case 1:19-cv-11586-IT Document 72-8 Filed 06/05/20 Page 4 of 7
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page2
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`DETAILED ACTION
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`Specification
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`The abstract of the disclosure is objected to because the abstract should be generally
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`limited to a single paragraph on a separate sheet within the range of 50 to 150 words.
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`Correction is required. See MPEP § 608.0l(b).
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy ( a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the "right to exclude" granted by a patent and to prevent possible
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`harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
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`Cir. 1993); In re Langi, 759 F.2d 887,225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686
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`F.2d 937,214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
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`1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to
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`overcome an actual or provisional rejection based on a nonstatutory double patenting ground
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`provided the conflicting application or patent is shown to be commonly owned with this
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`application. See 37 CFR 1.130(b).
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`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
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`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 3 7
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`CFR 3.73(b).
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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 unpatentable over claims 3-6, and 33-43 of U.S. Patent No. 6,602,191.
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`Case 1:19-cv-11586-IT Document 72-8 Filed 06/05/20 Page 5 of 7
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 3
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`Although the conflicting claims are not identical, they are not patentably distinct from each other
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`because it would have been obvious to one of ordinary skill in the art at the time of the invention
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`to implement the method of the patent in the manner set forth in the instant application since the
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`claims of the instant application are merely different renditions of the patented method and
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`computer readable medium.
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`The Applicant is invited to explain, to make the record clear, reasons that the double
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`patenting rejection does not apply.
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`Claim Rejections- 35 USC§ 112
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`The following is a quotation of the second paragraph of 35 U.S.C. 112:
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`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his invention.
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`Claims 1-12 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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`The examiner cannot discern based on the specification the distinction between
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`physiological data and exercise data. In fact, often times the two overlap. For example, heart
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`rate could be "physiological data" and "exercise data". The broadest reasonable limitation of
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`both terms cannot be discerned and as such the terms are indefinite.
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`The Applicant is invited to explain, to make the record clear, reasons that the rejection
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`under 35 U.S.C. 112, second paragraph does not apply.
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`Case 1:19-cv-11586-IT Document 72-8 Filed 06/05/20 Page 6 of 7
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page4
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`Claim Rejections - 35 USC§ 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351 (a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
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`Claims 1-12 are rejected under 35 U.S.C. 102(b) as being anticipated by Brown US
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`Patent Number 5,997,476.
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`Brown teaches the use of a remote apparatus (26/28) with a communication network (24,
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`Internet) workstation (20) to remotely monitor a patient/user, (figure 1). The remote apparatus is
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`disclosed as being on a cellular/wireless network, i.e. a cellular/wireless phone ( column 4, lines
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`36-63). The remote apparatus includes many different types of monitoring devices including
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`weight scales and heart rate/pulse rate (column 5, lines 3-6) with an RS-232 connection (column
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`6, lines 44-46). Brown's remote apparatus further includes a keyboard/buttons to input data
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`regarding how people feel (see fig. 7).
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`The Applicant is invited to request an interview to discuss suggestions to overcome
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`the applied prior art.
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`Case 1:19-cv-11586-IT Document 72-8 Filed 06/05/20 Page 7 of 7
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`Application/Control Number: 12/211,033
`Art Unit: 3769
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`Page 5
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Michael C. Astorino whose telephone number is (571)272-4723.
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`The examiner can normally be reached on Monday-Friday, 8:30AM to 3:30PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Henry Johnson can be reached on 571-272-4726. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/Michael C. Astorino/
`Primary Examiner, Art Unit 3769
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`May 3, 2009
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