Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 62

Joint Claim Construction and Prehearing Statement by Skyhook Wireless, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40, # 41 Exhibit 41, # 42 Exhibit 42, # 43 Exhibit 43, # 44 Exhibit 44, # 45 Exhibit 45, # 46 Exhibit 46, # 47 Exhibit 47, # 48 Exhibit 48, # 49 Exhibit 49)(Lu, Samuel)

EXHIBIT 25 UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.o. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. ISSUE DATE PATENT NO. ATTORNEY DOCKET NO. CONFIRMATION NO. 111261,848 10/07/2008 7433694 2000319.00123USI 9162 23483 7590 09/17/2008 WILMERHALE/BOSTON 60 STATE STREET BOSTON, MA 02109 ISSUE NOTIFICATION The projected patent number and issue date are specified above. Determination of Patent Term Adjustment under 35 U.S.C. 154 (b) (application filed on or after May 29,2000) The Patent Term Adjustment is 404 day(s). Any patent to issue from the above-identified application will include an indication of the adjustment on the front page. If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that determines Patent Term Adjustment is the filing date of the most recent CPA. Applicant will be able to obtain more detailed information by accessing the Patent Application Information Retrieval (PAIR) WEB site (http://pair.uspto.gov). Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be directed to the Customer Service Center of the Office of Patent Publication at (571)-272-4200. APPLICANT(s) (Please see PAIR WEB site http://pair.uspto.gov for additional applicants): Edward J. Morgan, Needham, MA; Farshid Alizadch-Shabdiz, Wayland, MA; Russel K. Jones, Roswell, GA; Michael G. Shean, Boston, MA; IRI03 (Rev. 11105) GSHFED_0000274 UNITED STAlES PAlENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.o. Box 1450 Alexandria., Virginia 22313-1450 www.uspto.gov NOTICE OF ALLOWANCE AND FEE(S) DUE 23483 7590 EXAMINER 06116/2008 LE,DANHC WILMERHALE/BOSTON 60 STAlE STREET BOSTON, MA 02109 r - -ART- - - - - - -PAPER - - - - - UNIT - - NUMBER 2617 DATE MAILED: 06/16/2008 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 111261,848 10/28/2005 Edward J. Morgan 2000319.00123US 1 9162 TITLE OF INVENTION: LOCATION BEACON DATABASE APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREVo PAID ISSUE FEE TOTAL FEE(S) DUE DATE DUE nonprovisiona1 YES $720 $300 $0 $1020 09/16/2008 THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT. PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS. THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308. THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.c. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW DUE. HOW TO REPLY TO THIS NOTICE: I. Review the SMALL ENTITY status shown above. If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO: SMALL ENTITY status: A. If the status is the same, pay the TOTAL FEE(S) DUE shown above. A. Pay TOTAL FEE(S) DUE shown above, or B. If the status above is to be removed, check box Sb on Part B Fee(s) Transmittal and pay the PUBLICATION FEE (if required) and twice the amount of the ISSUE FEE shown above, or B. If applicant claimed SMALL ENTITY status before, or is now claiming SMALL ENTITY status, check box Sa on Part B - Fee(s) Transmittal and pay the PUBLICATION FEE (if required) and 1/2 the ISSUE FEE shown above. II. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office (USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b" of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing the paper as an equivalent of Part B. III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to Mail Stop ISSUE FEE unless advised to the contrary. IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due. Page I of 3 PTOL-85 (Rev. 08/07) Approved for use through 08/31/2010. GSHFED_0000282 PART B - FEE(S) TRANSMITTAL Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450 or Fax (571)-273-2885 INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks I through 5 should be completed where appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as indicated unless corrected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for maintenance fee notifications. Note: A certificate of mailing can only be used for domestic mailings of the CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1 for any change of address) Fee(s) Transmittal. This certificate cannot be used for any other accompanying papers. Each additional paper, such as an assignment or formal drawing, must have its own certificate of mailing or transmission. 23483 7590 06116/2008 Certificate of Mailing or Transmission WILMERHALE/BOSTON I hereby certify that this Fee(s) Transmittal is being deposited with the United States Postal Service with sufficient postage for first class mail in an envelope 60 STATE STREET addressed to the Mail Stop ISSUE FEE address above, or being facsimile transmitted to the USPTO (571) 273-2885, on the date indicated below. BOSTON, MA 02109 (Depositor's name) (Signature) (Date) I APPLICATION NO. I ll/261,848 FILING DATE I I FIRST NAMED INVENTOR 10/28/2005 ATTORNEY DOCKET NO. I CONFIRMATION NO. 2000319.00123US I Edward J. Morgan 9162 TITLE OF INVENTION: LOCATION BEACON DATABASE APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREVo PAID ISSUE FEE TOTAL FEE(S) DUE DATE DUE nonprovisional YES $720 $300 $0 $1020 09/16/2008 EXAMINER ART UNIT CLASS-SUBCLASS LE,DANHC 2617 455-456100 1. Change of correspondence address or indication of "Fee Address" (37 CFR 1.363). Change of correspondence address (or Change of Correspondence Address form PTO/SB/122) attached. 2. For printing on the patent front page, list (I) the names of up to 3 registered patent attorneys or agents OR, alternatively, o o "Fee Address" indication (or "Fee Address" Indication form PTO/SB/47; Rev 03-02 or more recent) attached. Use ofa Customer (2) the name of a single firm (having as a member a registered attorney or agent) and the names of up to 2 registered patent attorneys or agents. If no name is listed, no name will be printed. Number is required. 2 _ 3 _ 3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type) PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent. If an assignee is identified below, the document has been filed for recordation as set forth in 37 CFR 3.11. Completion of this form is NOT a substitute for filing an assignment. (A) NAME OF ASSIGNEE (B) RESIDENCE: (CITY and STATE OR COUNTRY) Please check the appropriate assignee category or categories (will not be printed on the patent) : 4a. The following fee(s) are submitted: o Issue Fee o Publication Fee (No small entity discount permitted) o Advance Order - # of Copies 0 Individual 0 Corporation or other private group entity 0 Government 4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above) _ 5. Change in Entity Status (from status indicated above) a. Applicant claims SMALL ENTITY status. See 37 CFR 1.27. o o A check is enclosed. o Payment by credit card. Form PTO-2038 is attached. o overpayment,istohereby authorized Number the required fee(s), any deficiency, or credit any The Director to charge (enclose an extra copy of this form). Deposit Account 0 b. Applicant is no longer claiming SMALL ENTITY status. See 37 CFR 1.27(g)(2). NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in interest as shown by the records of the United States Patent and Trademark Office. Authorized Signature Typed or printed name _ _ Date Registration No. _ _ This collection of information is required by 37 CFR 1.311. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.c. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, Virginia 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTOL-85 (Rev. 08/07) Approved for use through 08/3112010. OMB 0651-0033 U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE GSHFED_0000283 UNITED STAlES PAlENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.o. Box 1450 Alexandria., Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 111261,848 10128/2005 Edward J. Morgan 2000319.00123USI 9162 23483 7590 EXAMINER 06116/2008 LE,DANHC WILMERHALE/BOSTON 60 STAlE STREET BOSTON, MA 02109 r - -ART- - - - - - -PAPER - - - - - UNIT - - NUMBER 2617 DATE MAILED: 06/16/2008 Determination of Patent Term Adjustment under 35 U.S.C. 154 (b) (application filed on or after May 29,2000) The Patent Term Adjustment to date is 404 day(s). If the issue fee is paid on the date that is three months after the mailing date of this notice and the patent issues on the Tuesday before the date that is 28 weeks (six and a half months) after the mailing date of this notice, the Patent Term Adjustment will be 404 day(s). If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that determines Patent Term Adjustment is the filing date of the most recent CPA. Applicant will be able to obtain more detailed information by accessing the Patent Application Information Retrieval (PAIR) WEB site (http://pair.uspto.gov). Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be or directed to the Customer Service Center of the Office of Patent Publication at 1-(888)-786-0101 (571)-272-4200. Page 3 of 3 PTOL-85 (Rev. 08/07) Approved for use through 08/31/2010. GSHFED_0000284 Application No. 11/261,848 Examiner Notice of Allowability Applicant(s) MORGAN ET AL. Art Unit DANH c. LE 2617 -- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address-Ail claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308. IZI This communication is responsive to 4/8/08. 2. IZI The allowed c1aim(s) islare 1 and 2. 1. 3. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). a) D All b) D Some* c) D None of the: D Certified copies of the priority documents have been received. D Certified copies of the priority documents have been received in Application No. _ _ . 3. D Copies of the certified copies of the priority documents have been received in this national stage application from the 1. 2. International Bureau (PCT Rule 17.2(a)). * Certified copies not received: _ _. Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements noted below. Failure to timely comply will result in ABANDONMENT of this application. THIS THREE-MONTH PERIOD IS NOT EXTENDABLE. 4. D A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient. 5. D CORRECTED DRAWINGS ( as "replacement sheets") must be submitted. (a) D including changes required by the Notice of Draftsperson's Patent Drawing Review ( PTO-948) attached 1) (b) D D hereto or 2) D to Paper No./Mail Date _ _. including changes required by the attached Examiner's Amendment I Comment or in the Office action of Paper No./Mail Date _ _. Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the front (not the back) of each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d). 6. D DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL. Attachment(s) 1. D Notice of References Cited (PTO-892) 2. D D 6. D 5. Notice of Draftperson's Patent Drawing Review (PTO-948) 3. [gIlnformation Disclosure Statements (PTO/SB/08), Paper No./Mail Date _ _ 4. D Examiner's Comment Regarding Requirement for Deposit of Biological Material Interview Summary (PTO-413), Paper No./Mail Date _ _ . 7. [gI Examiner's AmendmenUComment 8. [gI Examiner's Statement of Reasons for Allowance 9. u.s. Patent and Trademark Office PTOL-37 (Rev. 08-06) Notice of Informal Patent Application D Other _ _. Notice of Allowability Part of Paper No./Mail Date 20080523 GSHFED_0000285 Application/Control Number: 11/261,848 Page 2 Art Unit: 2617 EXAMINER'S AMENDMENT 1. An examiner's amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee. Authorization for this examiner's amendment was given in a telephone interview with Mr. Hobgood on 6/2/2008. In the Abstract: In line 14, after "is provided", deleted" In response to a". Deleted line 15 to line 26. GSHFED_0000286 Application/Control Number: 11/261,848 Page 3 Art Unit: 2617 Allowable Subject Matter 2. The following is an examiner's statement of reasons for allowance: Claims 1 and 2 are allowed as stated in the Applicant's remarks on pages 4 and 5. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance." Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANH C. LE whose telephone number is 571-272-7868. The examiner can normally be reached on 8:00AM-5:00PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, WILLIAM TROST can be reached on 571-272-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. GSHFED_0000287 Application/Control Number: 11/261,848 Page 4 Art Unit: 2617 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. May 23,2008 /DANH C LE/ Primary Examiner, Art Unit 2617 GSHFED_0000288 Docket No.: 2000319.123US1 (PATENT) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE Applicant: Morgan, Edward 1. et al. Confirmation No.: 9162 Application No.: 11/261,848 Art Unit: 2617 Filed: October 28, 2005 Examiner: Le, Danh C Title: LOCATION BEACON DATABASE MS Amendment Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 AMENDMENT Dear Sir: INTRODUCTORY COMMENTS In response to the Office Action dated February 5,2008, please amend the above- identified U.S. patent application as follows: Amendments to the Specification begins on page 2 of this paper. Amendments to the Claims are reflected in the listing of claims which begins on page 3 of this paper. Remarks/Arguments begin on page 4 of this paper. USlDOCS 6626626vl GSHFED_0000295 Application No. 11/261,848 Amendment dated April 8, 2008 Reply to Non-Final Office Action of February 5, 2008 Docket No.: 20003l9.l23USl Amendments to the Specification: Please replace paragraphs [0002]-[0005] in the application as published with the following: [0002] This application is related to the following U.S. Patent Applications, filed on an even date herewith: [0003] U.S. Patent Application No. 11/261,898, entitled Server for Updating Location Beacon Database; [0004] U.S. Patent Application No. 11/261,988, entitled Location-Based Services that Choose Location Algorithms Based on Number ofDetected Access Points Within Range ofUser Device; and [0005] U.S. Patent Application No. 11/261,987, entitled Method and Systemfor Building a Location Beacon Database. 2 USlDOCS 6626626vl GSHFED_0000296 Application No. 11/261,848 Amendment dated April 8, 2008 Reply to Non-Final Office Action of February 5, 2008 Docket No.: 20003l9.l23USl Amendments to the Claims: The following listing of the claims will replace all prior versions and listings of claims in the application. Listing of the Claims; 1. (Currently Amended) A database ofWi-Fi access points for at least one target area having a radius on the order of tens of miles, said database being recorded in a computerreadable medium and including database records for substantially all Wi-Fi access points in the target area, each record including identification information for a corresponding Wi-Fi access point and calculated position information for the corresponding Wi-Fi access point, wherein said calculated position information is obtained from recording multiple readings of the Wi-Fi access point at different locations around the Wi-Fi access point so that the multiple readings to ]9ro¥ide refereRee sj"llHHetry VAlOR ealeula-tiRg the ]9ositioR ofthe Vii Pi aeeess ]9oiHt aftd to avoid arterial bias in the calculated position information of the Wi-Fi access point, and wherein the database records for substantially all Wi-Fi access points in the target area provide reference symmetry within the target area. 2. (Original) The database of claim 1 having database records for a plurality of target areas, said database records being organized by target areas. 3 USlDOCS 6626626vl GSHFED_0000297 Application No. 11/261,848 Amendment dated April 8, 2008 Reply to Non-Final Office Action of February 5, 2008 Docket No.: 20003l9.l23USl REMARKS Claims 1-2 are pending in the application. Applicants respectfully request reconsideration of the application in view of the amendments. Telephonic Interview on April 7, 2008 Applicants thank Examiner Danh for the telephonic interview held on April 7, 2008, with the undersigned. During this interview, the participants discussed claim 1 and u.s. Pat. App. Pub. No. 2004/0039520 of Khavakh et al. Applicants proposed amending claim 1 to more particularly recite characteristics of the calculated position information and presented the amendments above in a facsimile to Examiner Danh on April 8, 2008. During the telephone call, applicants submitted that the cited references do not teach or suggest these features. Examiner Danh stated that the amendments overcome the cited references. Amendments to the Specification Applicants have amended the Specification to include the serial numbers of the related applications that were not available at the time the subject application was filed. Information Disclosure Statement Applicants enclose an Information Disclosure Statement (IDS) with this submission. This IDS is being filed after the mailing date of the first Office Action on the merits and before the mailing date of a final Office Action or a Notice of Allowance. Authorization to charge the $180.00 fee to our Deposit Account No. 08-0219 is enclosed. Applicants request that the Examiner initial and return a copy of the enclosed Form PTO SB-08 with the next 4 USlDOCS 6626626vl GSHFED_0000298 Application No. 11/261,848 Amendment dated April 8, 2008 Reply to Non-Final Office Action of February 5, 2008 Docket No.: 20003l9.l23USl communication. Conclusion Applicants respectfully request an early and favorable reconsideration and issuance of this application as amended herein. The Examiner is encouraged to contact the undersigned to expedite prosecution of this application. Authorization to charge the $180.00 fee in connection with the IDS submission is enclosed. No other fees are believed to be due in connection with this response. However, please charge any fees due in connection with this application or credit any overpayments to Deposit Acct. No. 08-0219. Respectfully submitted, Date: April 8, 2008 /John V. Hobgood/ John V. Hobgood Registration No. 61,540 Attorney for Applicant Wilmer Cutler Pickering Hale and DOff LLP 60 State Street Boston, MA 02109 Tel: (617) 526-6658 Fax: (617) 526-5000 5 USlDOCS 6626626vl GSHFED_0000299 Bes~ Available Copy I UNITED STATES Pft,..TENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United Slales Palenl and Trademark Office Addms: COMMISSIONER FOR PATENTS P.O. Box 1450 AlC'.'(andria. Virginia 223 13-1450 \A,'ww.usplo.gcw no:'\' NO. 23'1~:; FILING DATI: FIRST NAMED INVE;-"'TOR A"nORNEY DOCKET NO. CO!'lFiRMATJON NO. 10/2812005 A"PLICA Edward.l. Morgan 2000319.00123US I 9162 7.'90 07.'0512008 WI Uvl ERHALE/BOSTON 60 STATE STREET BOSTON, MA 02109 EXAMINER I.E, DANHC ART UNIT PAPER NUMBER 2617 NOTIFICATION DATE DELIVERY MODE 02/05/2008 ELECTRONIC; Please find below and/or attached an orncr communication concerning this application or proceeding.. The time period for reply, ifany,!is set in the attached communication. I Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail 'address(es): michael.mathewson@wilmerhale.eom tercsa.carvalho@wilmcrhale.com sharon. matthews@wilmcrhale.com I'TOL-'IOA (Rev. 04/07) GSHFED 0000309 Application No. Applicant(s) 11/261,848 Examiner Office Action Summary MORGAN ET AL. Art Unit DANH C. LE 2617 - The MAILING DATE 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 ~ 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, maya 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). Status 1)f8J Responsive to communication(s) filed on 10/28/05. 2a)0 This action is FINAL. 2b)f8J 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. Disposition of Claims 4)f8J Claim(s) 1 and 2 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)f8J Claim(s) 1 and 2 is/are rejected. 7)0 Claim(s) _ _ is/are objected to. 8)0 Claim(s) _ _ are subject to restriction and/or election requirement. Application Papers 9)0 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). 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 PTO-152. ) Priority under 35 U.S.C. § 119 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)). * See the attached detailed Office action for a list of the certified copies not received. Attachment(s) 1) f8J Notice of References Cited (PTO-892) 2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948) 3) f8J Information Disclosure Statement(s) (PTO/S8/08) Paper No(s)/Mail Date _ _. 4) 0 Interview Summary (PTO-413) Paper No(s)/Mail Date. _ _ . 5) 0 Notice of Informal Patent Application 6) 0 Other: _ _. U.s. Patent and Trademark Office PTOL-326 (Rev. 08-06) Office Action Summary Part of Paper No./Mail Date 20080128 GSHFED_0000310 Application/Control Number: 11/261,848 Art Unit: 2617 Page 2 DETAILED ACTION Information Disclosure Statement The information disclosure statement (lOS) submitted on 11/09/06 has been considered by the examiner and made of record in the application file. Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Claims 1, 2 are rejected under 35 U.S.C. 103(a) as being unpatentable over Khavakh (US 2004/0039520) in view of Root (US 2004/0058640). As to claim 1, Khavakh teaches a database of Wi-Fi access points for at least one target area (figure 3 and paragraphs 35, 36), said database being recorded in a computer-readable medium and including database records for substantially all Wi-Fi access points in the target area, each record including identification information for a corresponding Wi-Fi access point and calculated position information for the corresponding Wi-Fi access point, wherein said calculated position information is obtained from recording multiple readings of the Wi-Fi access point to provide reference symmetry when calculating the position of the Wi-Fi access point and to avoid arterial bias in the calculated position information. Khavakh fails to teach having a radius on the order of tens of miles. Root teaches having a radius on the order of tens of miles (paragraph 38). Therefore, it GSHFED_0000311 Application/Control Number: 11/261,848 Art Unit: 2617 Page 3 would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teaching of Root into the system of Khavakh in order to predict of events within a particular spatial range of a particular dynamic spatial location. As to claim 2, the combination of Khavakh and Root teaches the database of claim 1 having database records for a plurality of target areas, said database records being organized by target areas (figure 3, layer number). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. A. Patel US 5,315,636) teaches personal telecommunications system. B. Chow et al (US 5,564,121) teaches microcelliayout having .... in a building. C. Martinez (US 4,415,771) teaches public alert and advisory systems. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANH C. LE whose telephone number is 571-272-7868. The examiner can normally be reached on 8:00AM-5:00PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, WILLIAM TROST can be reached on 571-272-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. GSHFED_0000312 Application/Control Number: 11/261,848 Art Unit: 2617 Page 4 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. JanUlfAYN1(3, f~08 PRIMARY EXAMINER GSHFED_0000313