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 26

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.

111359,271

01106/2009

7474897

2000319.00132USI

9304

23483

7590

12/17/2008

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 491 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;
Michael G. Shean, Boston, MA;
Farshid Alizadeh-Shabdiz, Wayland, MA;
Russel K. Jones, Roswell, GA;

IRI03 (Rev. 11105)

GSHFED_0000373

Application No.
11/359,271
Examiner

MORGAN ET AL.
Art Unit

DANH C. LE

Notice of Allowability

Applicant(s)

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 6/22/06.
2. IZI The allowed c1aim(s) islare 1-4.
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. ~ Notice of References Cited (PTO-892)
2.

D

D
6. D
5.

Notice of Draftperson's Patent Drawing Review (PTO-948)

3. ~ Information 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. ~ Examiner's AmendmenUComment
8. ~ 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 20080814

GSHFED_0000392

Application/Control Number: 11/359,271

Page 2

Art Unit: 2617
DETAILED ACTION
Information Disclosure Statement

1.

The information disclosure statement (IDS) submitted on 11/20/06 and 8/7/08

have been considered by the examiner and made of record in the application file.
EXAMINER'S AMENDMENT

2.

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. Dichiara on 7/30/08.
On page 1 of the specification, paragraph 3, line 3, after the word "No.", replaced
"TBA" by "11/359154".
On page 1 of the specification, paragraph 3, line 5, after the word "No.", replaced
"TBA" by "11/359144".

GSHFED_0000393

Page 3

Application/Control Number: 11/359,271
Art Unit: 2617

Allowable Subject Matter

3.

The following is an examiner's statement of reasons for allowance:
Claims 1-4 are allowed.
As to claim 1, Choti et al (US 2006/0128397) teaches system and method for

verifying access based on determined geographic location of a subscriber of a service
provided via a computer network. Agrawa et al (US 2006/0092015) teaches notify
users of device events in a network environment. Orwant et al (US 2005/0227711)
teaches method and apparatus for creating ... at a designated location. Biffar (US
20040124977) teaches rule based proximity and time based tracking system. Carter
(US 2003/0146835) teaches object location monitoring within building. Nagda et al (US
6,862,524) teaches using location data to determine traffic and routing information.
Zellner et al (US 6,799,049) teaches system and method for tracking of a wireless
device. The teaching of above prior arts either alone or in combine fails to teach further
comprising using the recorded location information for each of the observed WiFi
access points in conjunction with predefined rules to determine whether an observed
WiFi access point should be included or excluded from a set of WiFi access pointsusing
the recorded location information of only the WiFi access points included in the set and
omitting the recorded location information of the excluded WiFi access points to
calculate the geographical position of the WiFi-enabled device.
Dependent claims 2-4 are allowed for the same reason.

GSHFED_0000394

Application/Control Number: 11/359,271

Page 4

Art Unit: 2617
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, DWAYNE D. BaST can be reached on 571-272-7023. The fax phone
number for the organization where this application or proceeding is assigned is 571273-8300.
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.

August 14, 2008
/DANH C LE/
Primary Examiner, Art Unit 2617

GSHFED_0000395