Group 4 – Google’s Sur-Reply In Support of Responsive Claim Construction Brief 

(Civil Case Nos. 6:20-cv-00572-ADA, 6:20-cv-00581-ADA, and 6:20-cv-00582-ADA) 

EXHIBIT #14 

Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 1 of 12
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PATENT APPLICATION 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

In re the Application of: 

Jan CHIPCHASE 

Application No.: 10/957,743 

Filed: October 5, 2004 

For: ALARM CLOCK 

.Confinnation No. 8886 

Art Unit: 2612 

Examiner: Daniel Previl 

Attorney Dkt. No.: 59643.00533 

RESPONSE UNDER37CFR§ 1.111 

Commissioner for Patents 

P.O. Box 1450 

Alexandria, VA 22313-1450 

Sir: 

August 16, 2006 

In response to the Office Action dated May 16, 2006, please amend the aboveidentified application as set forth below. 

Amendments to the specification are submitted on page 2. 

Amendments to the claims are submitted beginning on page 3. 

Remarks are submitted beginning on page 8. 

Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 2 of 12
IN THE SPECIFICATION: 

Please amend the Specification as follows: 

Please replace figure 1 of the d_rawings with the enclosed replacement sheet 

including figure 1. 

Please add the heading TITLE OF THE INVENTION before the TITLE on page 

1. 

Please add the heading BACKGROUND OF THE INVENTION before paragraph 

0001. 

Please add the heading SUMMARY OF THE INVENTION before paragraph 

0007. 

Please add the heading BRIEF DESCRIPTION OF THE DRAWINGS before 

paragraph 0024. 

Please add the heading DETAILED DESCRIPTION OF PREFERRED 

EMDODIMENTS before paragraph 0025. 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 3 of 12
IN THE CLAIMS: 

Please add claim 19, cancel claim 2, and amend claims 1, 3-18 as follows. 

1. (Currently Amended) A mobile communication terminal1 comprising: 

a clock for maintaining an indication of the current time; 

a memory for storing a definition of an alert time; and 

an alerting unit configurable to issue an alert when the current time matches the 

alert time, the alerting unit being capable of issuing configured to issue the alert by 

initiating a connection to another communication terminal over a network so as to cause 

that other terminal to locally signal the incidence of the connection incoming thereto; 

wherein the alerting unit comprises a signaling unit configured to locally signal to 

a user, and the alerting unit is configured to issue the alert by causing the signaling unit to 

locally signal to a user. 

2. (Cancelled) 

3. (Currently Amended) A The mobile communication terminal as claimed in claim 1i, 

wherein the memory is capable of storiag configured to store an indication of whether the 

alerting unit is MTaBged to configured to issue the alert by means of the signaling unit, 

and the alerting unit is arranges to configured to issue the alert by means of the signaling 

unit in accordance with that indication. 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 4 of 12
4. (Currently Amended) A The mobile communication terminal as claimed in claim 1i, 

wherein the alerting unit is configured to issue the alert by initiating the connection to 

another communication terminal at a predetermined time offset from signaling the user 

by means of the signaling unit. 

5. (Currently Amended) A The mobile communication terminal as claimed in claim 1, 

wherein the saie connection to another communication terminal is a phone call. 

6. (Currently Amended) A The mobile communication terminal as claimed in claim 1, 

wherein the mobile communication terminal is eaJ:lable of configured to perform wireless 

communication with a communication network and the saie connection is communicated 

over a wireless link with the network. 

7. (Currently Amended) A The mobile communication terminal as claimed in claim 1, 

wherein the communication terminal is a mobile phone. 

8. (Currently Amended) A The mobile communication terminal as claimed in claim 1, 

comprising a user interface whereby a user can enter data for storage by the memory. 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 5 of 12
9. (Currently Amended) A The mobile communication terminal as claimed in claim 8, 

the terminal being configured to enable a user to enter the alert time by means of the 

keypad and to store that time in the memory. 

10. (Currently Amended) A The mobile communication terminal as claimed in claim 8, 

the terminal being configured to enable a user to enter the address of the other 

communication terminal by means of the keypad and to store that time in the keypad, and 

wherein the alerting unit is configured to initiate the connection to that terminal by means 

of that address. 

11. (Currently Amended) A The mobile communication terminal as claimed in claim 9, 

wherein the address is a telephone number. 

12. (Currently Amended) A The mobile communication terminal as claimed in claim 1, 

comprising a message generation unit for generating an audible message defined by data 

stored at the communication terminal, and wherein the alerting unit is arranged to play 

out that message over the connection. 

13. (Currently Amended) A The mobile communication terminal as claimed in claim 1, 

wherein the terminal is portable. 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 6 of 12
14. (Currently Amended) A The mobile communication terminal as claimed in claim 1, 

wherein the terminal is a battery-powered terminal. 

15. (Currently Amended) A method for alerting a user by means of a mobile 

communication terminal, the method comprising: 

maintaining QY means of a clock an indication of the current time; 

storing in a memory a definition of an alert time; and 

issuing an alert when the current time matches the alert time by initiating a 

connection to another communication terminal over a network so as to cause that other 

terminal to locally signal the incidence of the connection incoming thereto. 

16. (Currently Amended) A The method as claimed in claim 15, comprising locally 

signaling the incidence of the incoming connection by means of the said other terminal. 

17. (Currently Amended) A The method as claimed in claim 16, wherein the said 

signaling is audible signaling. 

18. (Currently Amended) A The method as claimed in claim 17, wherein the audible 

signaling is a ring tone. 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 7 of 12
19. (New) An apparatus for alerting a user by means of a mobile communication 

terminal, the apparatus comprising: 

maintaining means for maintaining an indication of the current time; 

storing means for storing in a memory a definition of an alert time; and 

issuing means for issuing an alert when the current time matches the alert time by 

initiating a connection to another communication terminal over a network so as to cause 

that other terminal to locally signal the incidence of the connection incoming thereto. 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 8 of 12
REMARKS 

The Office Action dated May 16, 2006, has been received and carefully noted. 

The above amendments to the specification, drawings and claims, and the following 

remarks, are submitted as a full and complete response thereto. 

Claims 1 and 3-18 have been amended to more particularly point out and distinctly 

claim the subject matter of the invention. Claim 2 has been cancelled and claim 19 has 

been added. No new matter has been added, and no new issues are raised which require 

further consideration and/or search. 1 and 3-19 are submitted for consideration. 

Claims 1-14 were objected to because of informalities. Specifically, claims 1, 2, 3 

and 6 were objected to because they include the phrase "capable of." Claims 4-5 and 7-

14 were objected to because they depend on objected claims 1, 2, 3 and 6. Claim 2 has 

been cancelled and claims 1, 3 and 6 have been amended to overcome this objection. 

Therefore, Applicant requests that this objection be withdrawn. 

The drawings were objected to because Figure 1 was handwritten and is not in 

compliance with 3 7 CFR 1.121 ( d). Enclosed herewith is a replacement sheet including 

figure 1 which is now in compliance with 37 CFR l.12l(d). Thus, Applicant requests 

that this objection be withdrawn. 

The Office Action also suggested that the specification be amended to comply 

with 3 7 CFR 1. 77 (b ). The specification has been amended, as outlined above. 

Claims 1-18 were rejected under 35 U.S.C. 102(e) as being anticipated by U.S. 

Patent No. 6,940,395 to Steinmark. The rejection is traversed as being based on a 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 9 of 12
reference that neither teaches nor suggests the novel combination of features clearly 

recited in independent claims 1 and 15, upon which claims 3-18 depend, and newly added 

corresponding apparatus claim 19. 

Claim 1, upon which claims 3-18 depend, recites a mobile communication 

terminal including a clock for maintaining an indication of the current time, a memory for 

storing a definition of an alert time, and an alerting unit configurable to issue an alert 

when the current time matches the alert time. The alerting unit is configured to issue the 

alert by initiating a connection to another communication terminal over a network so as 

to cause that other terminal to locally signal the incidence of the connection incoming 

thereto. The alerting unit includes a signaling unit configured to locally signal to a user, 

and the alerting unit is configured to issue the alert by causing the signaling unit to 

locally signal to a user. 

Claim 15, upon which claims 16-18 depend, recites a method for alerting a user of 

a mobile communication terminal. The method includes maintaining by a clock an 

indication of the current time, storing in a memory a definition of an alert time, and 

issuing an alert when the current time matches the alert time by initiating a connection to 

another communication terminal over a network so as to cause that other terminal to 

locally signal the incidence of the connection incoming thereto. 

As will be discussed below, Steinmark does not teach or suggest each element of 

claims 1 and 3-19. 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 10 of 12
Steinrnark discloses a system for adjusting an alarm or reminder activation time. 

An information server gathers information regarding situations or events that may effect 

the time at which the user wishes the alarm to signal and via a connecting link changes 

the time at which the alarm is signaled. 

According to Steinmark, the system includes an alarm clock device or embodied 

in an automated call back service. In operation, a call back service makes a phone call to 

the user's phone or sends a signal to the user's receiver at either the regular userrequested alarm time or an adjusted time based upon unexpected conditions. See at least 

Col. 3, line 21-Col. 5, line 4. 

Applicant submits that Steinmark does not teach or suggest each element of claims 

1 and 3-19. Each of claims 1, .15 and 19 recites, in part, alerting unit that is configured to 

issue the alert by initiating a connection to another communication terminal over a 

network so as to cause that other terminal to locally signal the incidence of the 

connection incoming thereto, the alerting unit includes a signaling unit configured to 

locally signal to a user, and the alerting unit is configured to issue the alert by causing the 

signaling unit to locally signal to a user. There is no disclosure in Steinmark of an alert 

unit, which is both capable of producing a local signal itself via a signalling unit and 

also connecting over a network to a further communication terminal to cause that 

terminal to also activate an alarm signal. Therefore, Applicant respectfully asserts that the 

rejection under 35 U.S.C. §102(e) should be withdrawn because Steinmark fails to teach 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 11 of 12
or suggest each feature of claims 1, 15 and 19 and hence, dependent claims 3-14 and 16-

18 thereon. 

As noted previously, claims 1 and 3-19 recite subject matter which is neither 

disclosed nor suggested in the prior art references cited in the Office Action. It is 

therefore respectfully requested that all of claims 1 and 3-19 be allowed and this 

application passed to issue. 

If for any reason the Examiner determines that the application is not now in 

condition for allowance, it is respectfully requested that the Examiner contact, by 

telephone, the applicant's undersigned attorney at the indicated telephone number to 

arrange for an interview to expedite the disposition of this application. 

In the event this paper is not being timely filed, the applicant respectfully petitions 

for an appropriate extension of time. Any fees for such an extension together with any 

additional fees may be charged to Counsel's Deposit Account 50-2222. 

Customer No. 32294 

Respectfully submitted, 

Arlene P. Neal 

Registration No. 43,828 

S~RE, SANDERS & DEMPSEY LLP 

14 Floor 

8000 Towers Crescent Drive 

Tysons Comer, Virginia 22182-2700 

Telephone: 703-720-7800 

Fax: 703-720-7802 

APN:kmp 

Enclosures: Replacement sheet drawing - Figure 1 

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Case 6:20-cv-00572-ADA Document 37-1 Filed 03/12/21 Page 12 of 12