fix AND
`”W
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/127,676
`
`12/19/2013
`
`Keigo Aso
`
`NIHE—51887
`
`3576
`
`02/03/2016 —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`NGUYEN, HA0 HONG
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2447
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/03/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
`jcholley @pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/127,676 ASO ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`StatusNo HAO NGUYEN 2447
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () 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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 12/19/2013.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-12is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-12 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 12/19/2013 is/are: a)IXI accepted or b)|:l 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).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 12/19/2013.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20151207
`
`

`

`Application/Control Number: 14/127,676
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`Page 2
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`Art Unit: 2447
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`DETAILED ACTION
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`1.
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`2.
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`Applicant’s Application filed on December 19, 2013 has been reviewed.
`
`Claims 1-12 have been examined.
`
`Notice of Pre-AIA or AIA Status
`
`3.
`
`The present application is being examined under the pre-AlA first to invent
`
`provisions.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`Priority
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`4.
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`Acknowledgment is made of applicant's claim for foreign priority under 35
`
`U.S.C. 119(a)-(d). The certified copy has been filed in Application No. JP 2011-146700,
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`filed on June 30, 2011.
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`5.
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`The effective priority date for the subject matter in the pending claims in this
`
`application is June 30, 2011.
`
`

`

`Application/Control Number: 14/127,676
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`Page 3
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`Art Unit: 2447
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`Information Disclosure Statement
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`6.
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`The information disclosure statement (IDS) submitted on December 19, 2013 was
`
`filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly,
`
`the information disclosure statement is being considered by the examiner.
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`Claim Objections
`
`7.
`
`Claim 8 and 10 are objected to because of the following informalities:
`
`In claim 8, line 2, “a network, comprising” should be changed to “a network,
`
`comprising;”.
`
`In claim 10, line 9, “Transmission request holding unit,.” should be changed to
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`“Transmission request holding unit[[,]].”.
`
`35 usc § 112
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be expressed as
`a means or step for performing a specified function without the recital of structure, material, or acts in
`support thereof, and such claim shall be construed to cover the corresponding structure, material, or
`acts described in the specification and equivalents thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing a
`specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the specification
`and equivalents thereof.
`
`Claim limitations of claim 1 “a message transmission unit for transmitting, to
`
`the network, a request message... ; a control message transmitting unit for
`
`

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`Application/Control Number: 14/127,676
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`Page 4
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`Art Unit: 2447
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`transmitting a control message including the application identification information
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`to the user terminal...; a control message receiving unit for receiving the control
`
`message from the network, and an application starting unit for starting an
`
`application...” ; claim limitations of claim 2 “a control message receiving unit for
`
`receiving, from the network, a control message...; and an application starting unit
`
`for starting an application...”; and claim limitations of claim 8 “a message
`
`transmission unit for transmitting, to the network, a request message...” have been
`
`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because
`
`they use a generic placeholder “unit for” coupled with functional language
`
`“...transmitting, to the network, a request message...;
`
`transmitting a control
`
`message including the application identification information to the user terminal...;
`
`receiving the control message from the network, and
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`starting an
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`application...” and “... receiving, from the network, a control message...; and
`
`...starting an application...” and “...transmitting, to the network, a request
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`message...” without reciting sufficient structure to achieve the function. Furthermore, the
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`generic placeholder is not preceded by a structural modifier, such as “message
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`transmission unit”, “control message transmitting unit
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`“control message receiving unit”,
`
`and “application starting unit”.
`
`Since the claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, claims 1, 2 and 8 have been interpreted to cover the corresponding
`
`structure described in the specification that achieves the claimed function, and
`
`equivalents thereof.
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`

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`Application/Control Number: 14/127,676
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`Page 5
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`Art Unit: 2447
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`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph limitation: paragraphs. [0070] - [0074].
`
`If applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structure, applicant must identify the corresponding
`
`structure with reference to the specification by page and line number, and to the drawing,
`
`if any, by reference characters in response to this Office action.
`
`If applicant does not intend to have the claim limitations treated under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim so that
`
`it will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or
`
`present a sufficient showing that the claim recites sufficient structure, material, or acts for
`
`performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
`
`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of Related
`
`Issues in PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
`
`Claim Rejections - 35 USC § 102
`
`8.
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
`
`102 that form the 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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
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`

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`Application/Control Number: 14/127,676
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`Page 6
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`Art Unit: 2447
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`9.
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`Claims 1-4 and 6-12 are rejected under pre-AIA 35 U.S.C. 102(b) as being
`
`anticipated by Stern (US 2007/0282959 A 1).
`
`With respect to claim 1, Stem discloses A communication system comprising:
`
`a user terminal, a network device including a network entity that is an
`
`element of a network, and a predetermined communication device as a
`
`communication partner of the user terminal (the system 300 comprises event
`
`message generator 320; the message delivery functionality of an SMS gateway server
`
`322 and SMS server 323 [network device] are implemented as part of the communication
`
`network 328, para. 0081; fig. 3; message to be delivered to a user's communication
`
`computing device [user terminal] via a communication network that will enable a
`
`communication session to be opened by the communication computing device between
`
`the communication computing device and an authorized content provider [predetermined
`
`communication device], para. 0017 and 0045),
`
`wherein
`
`the predetermined communication device (an authorized content provider
`
`[predetermined communication device], para. 0017 and 0045) includes
`
`a message transmission unit for transmitting, to the network, a
`
`request message including application identification information for
`
`identifying an application on the user terminal (the updating of the content 335
`
`on the server triggers the server to send an event update [request message] to the
`
`

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`Application/Control Number: 14/127,676
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`Page 7
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`Art Unit: 2447
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`event message generator 320 including: the content source, the location of the
`
`updated content 335, and information identifying the user's who have subscribed
`
`to the content provider to receive notification when the content is updated, from a
`
`web site subscriber register 337, para. 0082), the request message requesting
`
`the network device to transmit a control message to the user terminal (the
`
`validator 110 receives information regarding an event occurrence [request
`
`message] from a source 133, such as from a content provider 130 [predetermined
`
`communication device], and validates whether the source of the event is an
`
`authorized source 130; the event message generator 120 then generates event
`
`alert and content source information messages [control message] to be delivered
`
`139 to a user's communication computing device 140 via the communication
`
`network 150 when an event is validated as originating from an authorized source,
`
`para. 0045; para. 0069-0070),
`
`the network device (the system 300 comprises event message generator 320;
`
`the message delivery functionality of an SMS gateway server 322 and SMS server 323
`
`[network device] are implemented as part of the communication network 328, para. 0081 ;
`
`fig. 3) includes
`
`a control message transmitting unit for transmitting a control
`
`message including the application identification information to the user
`
`terminal (the UDH header of an event generated message contains a destination
`
`port address of the particular port 720b that the communications computing device
`
`has bound the application 740 to as a receiver; when a message 715 is received
`
`

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`Page 8
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`Art Unit: 2447
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`by the communications computing device with the particular port 720b information
`
`in the address, the application 740 on the communications computing device
`
`registered to that port 720b can be activated, para. 0069-0070) when receiving
`
`the request message from the predetermined communication device as the
`
`communication partner of the user terminal (the validator 110 receives
`
`information regarding an event occurrence [request message] from a source 133,
`
`such as from a content provider 130 [predetermined communication device], and
`
`validates whether the source of the event is an authorized source 130; the event
`
`message generator 120 then generates event alert and content source information
`
`messages [control message] to be delivered 139 to a user's communication
`
`computing device 140 via the communication network 150 when an event is
`
`validated as originating from an authorized source, para. 0045; para. 0069-0070),
`
`the control message being generated based on the request message (the
`
`validator 110 receives information regarding an event occurrence [request
`
`message] from a source 133, such as from a content provider 130, and validates
`
`whether the source of the event is an authorized source 130; the event message
`
`generator 120 then generates event alert and content source information
`
`messages [control message] to be delivered 139 to a user's communication
`
`computing device 140 via the communication network 150 when an event is
`
`validated as originating from an authorized source, para. 0045), and
`
`the user terminal (message to be delivered to a user's communication computing
`
`device [user terminal] via a communication network, para. 0017 and 0045) includes
`
`

`

`Application/Control Number: 14/127,676
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`Page 9
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`Art Unit: 2447
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`a control message receiving unit for receiving the control message
`
`from the network (when a message 715 [control message] is received by the
`
`communications computing device with the particular port 720b information in the
`
`address, the application 740 on the communications computing device registered
`
`to that port 720b can be activated; the SMS message 715 can actually cause the
`
`application 740 registered to the port to be launched or started and then the
`
`application can perform the action, such as retrieving a web page from a URL, etc.
`
`based on the received message, para. 0070; he message delivery functionality of
`
`an SMS gateway server 322 and SMS server 323 are implemented as part of the
`
`communication network 328, para. 0081 ; fig. 3), and
`
`an application starting unit for starting an application identified by the
`
`application identification information when the control message is received
`
`at the control message receiving unit (when a message 715 [control message]
`
`is received by the communications computing device with the particular port 720b
`
`information in the address, the application 740 on the communications computing
`
`device registered to that port 720b can be activated; the SMS message 715 can
`
`actually cause the application 740 registered to the port to be launched or started
`
`and then the application can perform the action, such as retrieving a web page
`
`from a URL, etc. based on the received message, para. 0070; he message
`
`delivery functionality of an SMS gateway server 322 and SMS server 323 are
`
`implemented as part of the communication network 328, para. 0081; fig. 3).
`
`

`

`Application/Control Number: 14/127,676
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`Page 10
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`Art Unit: 2447
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`With respect to claim 2, Stern discloses A user terminal for performing
`
`communication with a predetermined communication device through a network
`
`(message to be delivered to a user's communication computing device [user terminal] via
`
`a communication network that will enable a communication session to be opened by the
`
`communication computing device between the communication computing device and an
`
`authorized content provider [predetermined communication device], para. 0017 and
`
`0045), comprising:
`
`a control message receiving unit for receiving, from the network, a control
`
`message including application identification information for identifying an
`
`application on the user terminal (the UDH header of an event generated message
`
`contains a destination port address of the particular port 720b that the communications
`
`computing device has bound the application 740 to as a receiver; when a message 715 is
`
`received by the communications computing device with the particular port 720b
`
`information in the address, the application 740 on the communications computing device
`
`registered to that port 720b can be activated, para. 0069-0070), the control message
`
`being generated based on a request message (the validator 110 receives information
`
`regarding an event occurrence [request message] from a source 133, such as from a
`
`content provider 130, and validates whether the source of the event is an authorized
`
`source 130; the event message generator 120 then generates event alert and content
`
`source information messages [control message] to be delivered 139 to a user's
`
`communication computing device 140 via the communication network 150 when an event
`
`is validated as originating from an authorized source, para. 0045), and the request
`
`

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`Application/Control Number: 14/127,676
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`Page 11
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`Art Unit: 2447
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`message being transmitted from the predetermined communication device (the
`
`updating of the content 335 on the server triggers the server to send an event update
`
`[request message] to the event message generator 320 including: the content source, the
`
`location of the updated content 335, and information identifying the user's who have
`
`subscribed to the content provider to receive notification when the content is updated,
`
`from a web site subscriber register 337, para. 0082) and including the application
`
`identification information (the validator 110 receives information regarding an event
`
`occurrence [request message] from a source 133, such as from a content provider 130
`
`[predetermined communication device], and validates whether the source of the event is
`
`an authorized source 130; the event message generator 120 then generates event alert
`
`and content source information messages [control message] to be delivered 139 to a
`
`user's communication computing device 140 via the communication network 150 when
`
`an event is validated as originating from an authorized source, para. 0045; para. 0069-
`
`0070); and
`
`an application starting unit for starting an application identified by the
`
`application identification information when the control message is received at the
`
`control message receiving unit (when a message 715 [control message] is received by
`
`the communications computing device with the particular port 720b information in the
`
`address, the application 740 on the communications computing device registered to that
`
`port 720b can be activated; the SMS message 715 can actually cause the application
`
`740 registered to the port to be launched or started and then the application can perform
`
`the action, such as retrieving a web page from a URL, etc. based on the received
`
`

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`Application/Control Number: 14/127,676
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`Page 12
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`Art Unit: 2447
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`message, para. 0070; he message delivery functionality of an SMS gateway server 322
`
`and SMS server 323 are implemented as part of the communication network 328, para.
`
`0081; fig. 3).
`
`With respect to claim 3, Stem discloses The user terminal according to claim 2,
`
`further comprising a response message transmitting unit for transmitting a
`
`response message indicative of the start of the application to the network when
`
`the application starting unit starts the application (the communication sessions
`
`established in response to a user action, such as pressing a NEXT button to open the
`
`next communication session and acquire the next content data or a user may select the
`
`content to acquire from a list displayed on a device screen, para. 0080; once the
`
`application, which is registered for the destination address in the SMS header, receives
`
`the event message the application can send a response message 255 verifying that the
`
`message 254 has been received, para. 0072).
`
`With respect to claim 4, Stem discloses The user terminal according to claim 2,
`
`further comprising a control message transmission requesting unit for
`
`transmitting, to the predetermined communication device, a control message
`
`transmission request for requesting the predetermined communication device to
`
`transmit the request message to the network (the registering [control message
`
`transmission request] of an application to ports of a mobile device for receiving alert
`
`messages, para. 0043; figs. 7 and 8; the updating of the content 335 on the server
`
`

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`Page 13
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`Art Unit: 2447
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`triggers the server to send an event update [request message] to the event message
`
`generator 320 including: the content source, the location of the updated content 335, and
`
`information identifying the user's who have subscribed to the content provider to receive
`
`notification when the content is updated, from a web site subscriber register 337, para.
`
`0082)
`
`With respect to claim 6, Stem discloses The user terminal according to claim 4,
`
`further comprising an identification information adding unit for adding, to the
`
`control message transmission request, identification information for identifying an
`
`application on the user terminal (a record is created for this user in the user register
`
`data base 870 and the user information added, para. 0100; the registering [adding] of an
`
`application to ports of a mobile device for receiving alert messages, para. 0043; figs. 7
`
`and 8; the updating of the content 335 on the server triggers the server to send an event
`
`update [message request] to the event message generator 320 including: the content
`
`source, the location of the updated content 335, and information identifying the user's
`
`who have subscribed to the content provider to receive notification when the content is
`
`updated, from a web site subscriber register 337, para. 0082).
`
`With respect to claim 7, Stem discloses The user terminal according to claim 2,
`
`wherein the user terminal uses SMS as the control message (the user's
`
`communications computing device can be a cellular phone device or smart PDA device
`
`that supports both SMS/MMS and (GPRS) protocols for receiving the event alert
`
`

`

`Application/Control Number: 14/127,676
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`Page 14
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`Art Unit: 2447
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`message [control message], and the GPRS capability used for acquiring the event data,
`
`para. 0049).
`
`With respect to claim 8, Stem discloses A communication device for
`
`performing communication with a user terminal through a network (message to be
`
`delivered to a user's communication computing device [user terminal] via a
`
`communication network that will enable a communication session to be opened by the
`
`communication computing device between the communication computing device and an
`
`authorized content provider [communication device], para. 0017 and 0045), comprising
`
`a message transmission unit for transmitting, to the network, a request
`
`message including application identification information for identifying an
`
`application on the user terminal (the updating of the content 335 on the server triggers
`
`the server to send an event update [request message] to the event message generator
`
`320 including: the content source, the location of the updated content 335, and
`
`information identifying the user's who have subscribed to the content provider to receive
`
`notification when the content is updated, from a web site subscriber register 337, para.
`
`0082), the request message requesting a network device including a network entity
`
`that is an element of the network to transmit a control message to the user
`
`terminal (the system 300 comprises event message generator 320; the message
`
`delivery functionality of an SMS gateway server 322 and SMS server 323 [network
`
`device] are implemented as part of the communication network 328, para. 0081 ; fig. 3;
`
`the validator 110 receives information regarding an event occurrence [request message]
`
`

`

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`Page 15
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`Art Unit: 2447
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`from a source 133, such as from a content provider 130, and validates whether the
`
`source of the event is an authorized source 130; the event message generator 120 then
`
`generates event alert and content source information messages [control message] to be
`
`delivered 139 to a user's communication computing device 140 via the communication
`
`network 150 when an event is validated as originating from an authorized source, para.
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`0045; para. 0069-0070).
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`With respect to claim 9, Stem discloses The communication device according
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`to claim 8, further comprising a message forwarding unit for forwarding, to the
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`user terminal, a data packet related to an application when receiving, from the user
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`terminal, a response message indicating that the application has been started on
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`the user terminal based on reception of the control message (a user registers with
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`the alert and delivery system as part of the request to receive event messages from a
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`content provider, such as subscribing to updates on a web site or requesting e-mails
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`[data packet] to be forwarded to the user's mobile phone using an option provided by the
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`user's e-mail server, which in turn is registered with the event alert and delivery system,
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`para. 0098).
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`With respect to claim 10, Stem discloses The communication device according
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`to claim 8, further comprising
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`a control message transmission request holding unit for holding a control
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`message transmission request when receiving, from the user terminal, the control
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`message transmission request for requesting transmission of the request
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`message to the network (four users have subscribed to receive the content 435, users
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`2 and 3 both have profile Y and users 1 and 3 have profiles X and Z respectively
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`recorded [hold] in the user register 415 [control message transmission request], para.
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`0088;fig.4a%
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`wherein, upon starting communication with the user terminal, the message
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`transmission unit transmits the request message to the network in case that the
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`control message transmission request is held in the control message transmission
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`request holding unit (when a message 715 [control message] is received by the
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`communications computing device with the particular port 720b information in the
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`address, the application 740 on the communications computing device registered to that
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`port 720b can be activated; the SMS message 715 can actually cause the application
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`740 registered to the port to be launched or started and then the application can perform
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`the action, such as retrieving a web page from a URL, etc. based on the received
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`message, para. 0070; he message delivery functionality of an SMS gateway server 322
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`and SMS server 323 are implemented as part of the communication network 328, para.
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`0081; fig. 3).
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`With respect to claim 11, Stem discloses The communication device according
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`to claim 8, wherein the message transmission unit transmits the request message
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`to the network device based on the control message transmission request
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`received from the user terminal (the registering [control message transmission request]
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`of an application to ports of a mobile device for receiving alert messages [control
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`message], para. 0043; figs. 7 and 8; the updating of the content 335 on the server
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`triggers the server to send an event update [request message] to the event message
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`generator 320 including: the content source, the location of the updated content 335, and
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`information identifying the user's who have subscribed to the content provider to receive
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`notification when the content is updated, from a web site subscriber register 337, para.
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`0082)
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`With respect to claim 12, Stem discloses The communication device according
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`to claim 8, wherein the communication device requests the use of SMS as the
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`control message (the user's communications computing device can be a cellular phone
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`device or smart PDA device that supports both SMS/MMS and (GPRS) protocols for
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`receiving the event alert message [control message], and the GPRS capability used for
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`acquiring the event data, para. 0049).
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`Claim Rejections - 35 USC § 103
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`10.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for
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`all obviousness rejections set forth in this Office action:
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`(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.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contents of the prior art.
`2. Ascertaining the differences between the prior art and the claims at issue.
`3. Resolving the level of ordinary skill in the pertinent art.
`4. Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
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`11.
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`This application currently names joint inventors. In considering patentability of the
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`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of
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`the various claims was commonly owned at the time any inventions covered therein were
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`made absent any evidence to the contrary. Applicant is advised of the obligation under
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`37 CFR 1.56 to point out the inventor and invention dates of each claim that was not
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`commonly owned at the time a later invention was made in order for the examiner to
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`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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`12.
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`Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Stern (US 2007/0282959 A1) in view of Ma et al. (US 2006/0155851 A1), hereinafter
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`referred to as Ma.
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`W