10/486,377
`Application No.:
`March 19, 2014
`Amendment Dated:
`Reply to Office Action of: December 19, 2013
`
`'
`
`W&A—101US
`
`RemarkslArguments:
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`Applicants
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`acknowledge with
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`thanks
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`the
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`courtesy extended
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`to
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`their
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`representative by Examiner Coppola. During the course of the interview, the current
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`rejections of record were discussed. No agreement wasreached.
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`Claim Rejections - 35 USC § 102
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`Claims 31, 32, 37, 38, 40 and 42 have been rejected under 35 U.S.C. § 102(e)
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`as being anticipated by Horita (US 6,759,970). Regarding claim 42, this rejection is
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`rendered moot by the cancellation of that claim. The remaining claims are patentable .
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`over the art of record for the reasons set forth below.
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`Applicant’s invention, as recited by claim 31, includes a feature which is neither
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`disclosed nor suggested by Horita, namely:
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`the service
`if the determining part determines that
`cannot be utilized by the electronic information terminal
`at the current position, then the condition acquisition part
`acquires the position different from the current position at
`which the service can be utilized by the electronic
`information terminal
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`This feature is supported by the originally filed application at page 20, lines 15—
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`26‘.
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`In particular, the determining part determines if a service can be used based on,
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`among other criteria, position information. Examples of services are set forth in the
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`originally filed application at page 11, lines 5—13. The examples which are described
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`include displaying maps in the vicinity of the electronic. device, downloading music
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`data and storing the data in media,
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`rendering music data stored in media, and
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`displaying coupons in order to obtain discounts on product prices.
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`In accordance with the amendment to claim 31,
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`the determining part may
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`determine that one of the above services (or any other service) cannot be used “at the
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`current position." Claim 31 previously describes a situation information acquisition
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`that can identify the current position of the electronic information terminal.
`part
`Returning to the determining part, if the determining part determines that the service
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`cannot be used at the current position, then the condition acquisition part can acquire
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`Page 5 of 11
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`

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`10/486,377
`Application No.:
`March 19, 2014
`Amendment Dated:
`Reply to Office Action of: December 19, 2013
`
`W&A—101US
`
`an alternative position at which the service can be utilized by the electronic
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`information terminal.
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`As another example, an exemplary embodiment of the present invention is
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`described in Applicant’s specification at page 20, last paragraph, where it is stated:
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`In step 51001, situation information under which service
`becomes
`available
`is
`acquired
`by
`the
`condition
`information
`acquisition
`part
`901.
`The
`situation
`information is acquired using the situation in which it is
`determined in the determining part 102 that a service
`cannot be executed. For example,
`in the case where
`service can be executed if the electronic device 100 exists
`in Higashi Shinagawa 4-Chome Shinagawa—ku, Tokyo, if it
`is determined that
`the service cannot be executed
`because the electronic device 100 exists in Minato—ku,
`Tokyo, the condition that "the electronic device 100 must
`exist
`in Higashi Shinagawa
`4—Chome Shinagawa—ku,
`Tokyo" is acquired.
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`~
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`An exemplary embodiment of the present invention which includes the above
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`feature is also illustrated by step 51001 which is also included as an attachment to
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`this Amendment.
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`The Office Action specifies that Applicant’s claims determining part is disclosed
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`by Horita as information selecting equipment 3138.
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`Applicant’s
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`representative
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`reviewed the Horita patent and found an explanation of the information selecting
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`equipment at column 50, lines 14—19, where it is stated:
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`information selecting equipment 3138 for selecting only
`the appropriate advertisement contents according to the
`particular situation of the user, from all the advertisement
`contents that have been received on the basis of the
`comparisons obtained by comparator equipment 3146,
`and; display equipment 3152
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`Thus, Horita has no disclosure regarding a) what would happen if
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`it
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`is
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`determined “that the service cannot be utilized by the electronic information terminal
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`l
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`at the current position” and subsequently b) that a “position different from the current
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`position" is acquired at which the service can be utilized by the electronic information
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`terminal.
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`Page 6 of 11
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`

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`10/486,377
`Application No.:
`March 19, 2014
`Amendment Dated:
`Reply to Office Action of: December 19, 2013
`
`W&A—101US
`
`As the above feature is neither disclosed nor suggested by Horita, claim 31 is
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`patentable over Horita.
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`Claims 32, 37 and 38 are patentable by virtue of their dependency on allowable
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`claim 31.
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`Claim 40, while not identical
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`to claim 31,
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`is also patentable over the art of
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`record for reasons similar to those set forth above with regard to claim 31.
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`Withdrawal of all rejections under 35 U.S.C. § 102 is respectfully requested.
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`Specification Objection
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`The specification has been objected to.
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`In response, Applicant has made
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`numerous amendments to claim 31, and Applicant has cancelled claim 42. Attached
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`to this Amendment
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`is an Exhibit
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`in which support
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`is provided for each of the
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`amendments to claim 31. Withdrawal of the objection is respectfully requested.
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`Claim Rejections - 35 USC § 112
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`Claim 31, 32, 37, 38 and 42 are rejected under 35 U.S.C. 112, second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim
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`the subject matter which applicant regards as the invention.
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`In response thereto, without waiver or disclaimer, claim 31 has been amended
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`so that the claim limitation is a structural term.
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`Specifically, claim 31 recites an “electronic information terminal comprising: at
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`least one memory, an input—output device and a central processing unit (CPU), said at
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`least one memory storing computer—readable instructions, said at least one memory
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`storing information specific to at least one of the electronic information terminal and a
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`user of the electronic information terminal, execution of the instructions by the CPU
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`configuring the electronic information terminal" (emphasis added).
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`Support for corresponding structure to the claimed function is provided, for
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`example, in Figs. 1—6 and paragraphs [0082]-[0087] of the US Published Application.
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`Page 7 of 11
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`

`

`10/486,377
`Application No.:
`March 19, 2014
`Amendment Dated:
`Reply to Office Action of: December 19, 2013
`
`W&A—101US
`
`In addition, claim 42 has been cancelled.
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`Therefore, withdrawal of the rejection of claim 31, and all claims dependent
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`therefrom, under the second paragraph of 35 USC § 112 is respectfully requested.
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`Claim Rejections 35 USC § 112
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`Claim 40 is rejected under 35 USC § 112, first paragraph, as failing to comply
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`with the written description requirement.
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`In response thereto, without waiver or disclaimer, claim 40 has been amended.
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`Specifically, claim 40 is amended to recite “determining a service which the
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`electronic information terminal can utilize based on the position information,
`the
`condition information and the stored information” (emphasis added). Support for this
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`language is provided, for example, in paragraphs [0073], [0091] and [0157] of the US
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`Published Application as discussed above.
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`In addition,
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`the algorithm for “determining a service which the electronic
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`information terminal can utilize based on the position information,
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`the condition
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`information and the stored information” is disclosed, as examples,
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`in paragraphs
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`[0091] and [0097].
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`Therefore, withdrawal of the rejection under the first paragraph of 35 USC §
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`112 is respectfully requested.
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`Page 8 of 11
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`

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`10/486,377
`Application No.:
`March 19, 2014
`Amendment Dated:
`Reply to Office Action of: December 19, 2013
`
`W&A—101US
`
`This application is
`
`in condition for allowance which action is
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`respectfully
`
`requested.
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`LEA/fp
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`Re pectfully su
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`Lawrence E. Ashery, Reg. No. 34,515
`Attorney for Applicant
`
`
`
`
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`
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`Attachments: Appendix
`Marked—up copy of page 20 of Specification
`Marked—up copy of FIG. 10
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`Dated: March 19, 2014
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`PD. Box 980
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`Valley Forge, PA 19482
`(610) 407—0700
`
`FP_2241715V1
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`Page 9 of 11
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