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 [phone]
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 [phone], 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: [phone]
Fax: [phone]

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):
[e-mail]
[e-mail]
sharon. [e-mail]

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
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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