Elan Microelectronics Corporation v. Apple, Inc.

Filing 104

Declaration of Nathan Greenblatt in Support of Apple's Responsive Claim Construction Brief re 103 filed by Apple, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J) (Powers, Matthew) (Filed on 6/2/2010) Modified on 6/4/2010 (bw, COURT STAFF).

EXHIBIT H

UNITED S T A T E S l . .:.PARTMENT O F C O M M E R C E Patent and T r a d e m a r k O f f i c e
Address: COMMISSIONER OF PATENTS AND TRADEMARKS

Washington. D.C. 20231
APPLICATION NO. F I L I N G DATE FIRST N A M E D INVENTOR ATTORNEY DOCKET NO.

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Please find below and/or attached an Office communication concerning this application or proceeding.
C o m m i s s i o n e r o f P a t e n t s and T r a d e m a r k s

APEL0000475

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A p p l i c a t i o n No.

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B i s s e t e t 81.
Group A r t U n i t

Office ActioOn S u m m a r y

Examiner

PAUL BELL

2775

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Responsive t o communication(s) filed on .:...A.:.:u""g<....;2=2:=.,'--'-1;:;.9;:;.9.;...7

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o This action is FINAL.
o Since this application is in condition for allowance except for formal matters,
prosecution as t o t h e merits is closed in accordance w i t h the practice under Ex p a r t e Quayle, 1 9 3 5 C.D. 11; 4 5 3 O.G. 213. 3 month(s), or t h i r t y days, whichever A shortened s t a t u t o r y period for response t o this action is set t o expire is longer, from t h e mailing date of this communication. Failure t o respond w i t h i n the period f o r response will cause the application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions o f 37 CFR 1.136(a). Disposition o f Claims

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Claim(s) 1-13, 15-17, a n d 2 0 - 4 5 Of the above, c1aim(s)

is/are pending in the application. is/are w i t h d r a w n from consideration. is/are a l l o w e d . is/are r e j e c t e d . is/are o b j e c t e d t o . are subject t o restriction or election requirement.

o Claim{s)
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Claim (s) 1-13, 15-17, and 2 0 - 4 5 Claim(s) Claims

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Application Papers

o See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948.
o The drawing(s) filed on
is/are objected t o by the Examiner. is Qpproved DJisapproved.

o The proposed drawing correction, filed on o The specification is objected to by the Examiner.

o The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. § 1 1 9

o Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(dl. o All 0 Some* 0 None of the CERTIFIED copies of the priority documents have been o received. o received in Application No. (Series Code/Serial Number) - - - - - - - o received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
·Certified copies not received: _

o Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
Attachmentls)

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Notice of References Cited, PTO·892 Information Disclosure Statement(sl. PTO-1449, Paper No(s). 5

o Interview S u m m a r y , P T O - 4 1 3 o Notice of Draftsperson's Patent Drawing Review, PTO-948 o Notice of Infor~al Patent Application, PTO-152

- - - S E E OFFICE A C T I O N O N T H E F O L L O W I N G P A G E S - - -

O f f i c e A c t i o n Summary

Part o f Paper No. _ __ _ 8

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DETAILED A C T I O N RESPONSIVE TO A M E N D M E N T FILED ON 08/22/97. 1. The examiner is withdrawing his statement in office action mailed 4/18/97 that claims 1-13, 15-17 and 20-23 are allowable over the prior a r t o f record. As a result o f careful . reconsideration o f the prior a r t the allowance o f these claims would be inappropriate. 2. Claims 2 and 15-17 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. In regards to claim 2, it is not clear what an aggregate area or aggregate position is, therefore it is vague and indefinite. In regards to claim 15, it is not clear how an individual user o f this method could have up to 15 fingers being scanned. The applicant for example, claims there are three groups o f fingers and each group has up to five fingers. Therefore the claim is vague and indefinite as to how this can be done when an average user has 8 fingers and 2 thumbs. r Claim 17 recites the limitation "the pointing device". There is insufficient antecedent basis for this limitation in the claim. 3. The following is a quotation o f 3 5 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A p a t e n t may not be obtained though the invention is not identically disclosed o r described as set forth in section 102 o f this title, i f the differences between the subject matter sought to be patented and the prior art a r e 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 s u b j e c t matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

4. Claims 1,-3-13, 26.3.4 is rejected u n d e r 35 U . S . c , § 103 as being unpatentable over Miller e t al. (5,648,642). In regards to claim 1, Miller et al. shows a method for detecting the operative Coupling o f multiple fingers to a touch sensor and scanning the touch sensor to identify a first maxima and minima following the maxima (abstract, figure 2 item 54 and 46 and figure 3A, column 1, lines 10-15, column 2, lines 1-10 and lines 52-64).

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Although Miller et al. does not directly show all possible waveforms such as a second maxima fol~owing the minima such a feature is suggested in the Miller et al. apparatus. To support this contention the examiner points to figure 3A where a single horizontal x line scan illustrates the centroid o f the profile o f an object touching the apparatus which by mathematical concept has a maxima and a minima. When you consider that Miller et al. states that his apparatus can detect and report i f one or more points are being touched (column 2, lines 8-9) and further that his apparatus saves information for every node in its sensor matrix and can thereby give the full X/Y dimension picture o f what it is sensing (column 2, lines 53-64). It is obvious that i f two fmgers were to touch the Miller et al. apparatus the corresponding profile plots would illustrate exactly what the applicant is claiming in 1. In regards to claims 3-6 and 29-34 where the applicant claims mouse functions such as pointing device, drag, select ink function, removal and replacement o f maxima and reaching the edge, the examiner contends that such mouse functions are common and since Miller e t al. states that his apparatus can be used as a mouse (column 2, lines 1-10) such functions would be obvious. The examiner serves official notice that all o f these claimed mouse functions o r methods o f operation are well-known. In regards to claims 26-28 Miller et al. shows the maxima the largest local peak variation in a single value on a line due to capacitive coupling o f a fmger (figure 3a). In regards to claims 7-13, 23 and 35-45 all o f the limitations were already addressed above. 5. The following is a quotation o f the appropriate paragraphs o f 3 5 U.S.C. 102 that fonn the basis for the rejections under this section made in this Office action:
. A person shall be entitled to a patent unless -(b) the invention was patented o r described in a printed publication in this o r a foreign country o r in pubJi$: use or on sale in this country, more than one year prior to the date o f application for patent in the United States.

6. Claims 2 , 1 5 - 1 7 , 2 0 - 22, 24-25 are rejected under 35 U.S.C. 102(b) as being anticipated by Dunthom (4,914,624). In regards to claim 2, Dunthom to summarize shows a method for detecting the operative coupling o f a plurality o f fingers to a touch sensor based on the position or area o f t h o s e fingers (abstract and figure I item 22 and 29 and column 3, lines 1-44 and column 4, lines 11-24).

APEL0000478

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In regards to claim 15, Dunthorn to summarize shows in figure 1 three buttons that each respond to a g r o u p o f at least one finger.
.,

In regards to claim 16, Dunthorn to summarize shows in figure 1 fingers and as a result o f motion o f those fingers to touch buttons they are detected. In regards to claim 17, Dunthorn to summarize shows in figure 1 item 28 which is text and states in column 6, lines 56-66 that you Can scroll (cycle) through it. In regards to claim 20, Dunthorn to summarize shows the operative coupling and decoupling o f multiple objects to a touch sensor to perform a control function (abstract and figure 1 item 22 and 29 and column 3, lines 1-44 and column 4, lines 11-24). In regards to claims 21 and 22, D u n t h o m to summarize shows the "button down" feature (figure 1 and 2). In regards to claims 24 and 25, D u n t h o m to summarize shows the control function comprises a cursor movement (column 2, lines 28-47) and objects comprise fingers (figure I and 2). 7. Claims 2, 15 and 20 are rejected under 35 U.S.C. 102(b) as being anticipated by Greanias e t al. (4,686,332). In regards to claim 2, Greanias et al to summarize shows a method for detecting the operative coupling o f a plurality o f fingers to a touch sensor based on the position or area o f those fingers (figure 19). This claim is very broad because an average user has a plurality o f fingers and he may use one finger at one instant o f time and the next use a different finger or he may even use two fingers together and since the Greanias device works under all these conditions o f finger use it reads on the applicants broad claim 2. In regards to claim 15, Greanias et al. to summarize shows i n figure 19 a finger controlling a cursor on a tOUGh display. I t is inherent that at time 1 on scan I that a operator can have finger 1 on the screen and before time 2 lift finger one and put down finger 2 for scan 2 and for time 3 have finger 3 for scan 3. This claim is very broad. In regards to claim 20, Greanias et aI. to summarize shows the operative coupling and decoupling o f multiple objects to a touch sensor to perform a control function (figure 19, item 70, 60, 270 and 260).

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APEL0000479

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8. The prior art made o f record and not relied upon is considered pertinent to applicant's disclosure; Logan et al. (5,327,161), Stein et aI. (5,365,461), Mikan (5,376,946), Calder et aI. (5,432,531); Tannenbaum et al. (5,442,376), Miller et aI. (5,495,077), Gerpheide et aI. (5,565,658), Arbeitman et al. (5,528,266) and Gillespie et al. (5,543,591) all show display touch input devices. 9. Applicant's arguments filed 8/22/97 with respect to claims 1-45 have been considered but are moot in view o f the new ground(s) o f r e j e c t i o n . (Reference 1-45 rejections above) 10. Any inquiry concerning this communication or earlier communications from t h e e x a m i n e r s h o u l d b e d i r e c t e d t o P a u l B e l l w h o s e t e l e p h o n e n u m b e r i s (703) 3 0 6 3019. A n y i n q u i r y o f a g e n e r a l n a t u r e or r e l a t i n g t o t h e s t a t u s o f t h i s a p p l i c a t i o n s h o u l d b e d i r e c t e d t o t h e G r o u p r e c e p t i o n i s t w h o s e t e l e p h o n e n u m b e r i s (703) 3053900. Any r e s p o n s e to this action should be mailed to: Commissioner o f Patents and Trademarks Washington, D.C. 20231 o r faxed to: [phone], (for fonnal communications intended for entry) O r : ( 7 0 3 ) 308- 8606 (for informal or draft communications, please label "PROPOSED" or "DRAFT")
H a n d - d e l i v e r e d r e s p o n s e s s h o u l d b e b r o u g h t t o : Crystal P a r k II, 2121 C r y s t a l Drive, Arlington.
VA., S i x t h Floor
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Paul Bell 11/24/97

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