Elan Microelectronics Corporation v. Apple, Inc.

Filing 86

Declaration of Derek C. Walter in Support Apple's of Opening Claim Construction Brief re 85 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, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U, # 22 Exhibit V) (Powers, Matthew) (Filed on 5/7/2010) Modified on 5/10/2010 (bw, COURT STAFF).

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EXHIBIT S TATES P A T E N T AND T R A D E M A R K O F F I C E Applicants: Serial No: Filed: Title: Yen-Chang Chiu, et al. : Group A r t U n i t #2629 Examiner: 10/668,352 24 September 2003 CAPACITIVE TOUCHPAD INTEGRA TED P.M. Dharia WITH K E Y A N D H A N D W R I T I N G F U N C T I O N S AMENDMENT M a i l Stop - A m e n d m e n t Honorable Commissioner for Patents P.O. B o x 1450 Alexandria, VA 22313-1450 Sir: The Examiner issued a non-final Office Action dated 30 May 2006 in the above-referenced Patent Application. In the Office Action, the Examiner set a three month shortened statutory period for reply. The reply period having now expired, a Request and fee for a two month Extension o f Time is concurrently filed herewith to ensure timely filing. Responsive to the 30 May 2006 Office Action, please amend the abovereferenced Patent Application as follows: A m e n d m e n t s t o t h e C l a i m s are reflected in the Listing o f Claims which begins on page 2 o f this paper. 18/12/2886 SDEHBOB1 88888113 18668352 81 FC:2281 488.88 OP R e m a r k s / A r g u m e n t s begin on page 12 o f this paper. Page 1 o f 16 A P E L0000831 3 5 3 CFH 0 0 8 9 MR2707-46 Serial N u m b e r : 1 0 / 6 6 8 , 3 5 2 Reply to Office Action dated 3 0 M a y 2006 IN T H E C L A I M S : This Listing o f Claims will replace all prior versions, and listings, o f claims in the subject Patent Application: Listing o f Claims: 1. (Currently Amended) A capacitive touchpad integrated with key and handwriting functions, comprising: a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a k e y mode and a handwriting mode; a plurality o f regions selectively defined on said panel responsive to actuation o f said mode switch; and a plurality o f second patterns selectively defined on said plurality o f regions for operation in said key and handwriting modes. 2. (Original) A capacitive touchpad o f claim 1, further comprising a mouse mode for switching thereto b y touching said first pattern. 3. (Original) A capacitive touchpad o f claim 1, further comprising an LCD for displaying an input from said panel. Page 2 o f 16 APEL0000832 353 CFH 0090 MR2707-46 Serial Number: 10/668,352 R e p l y to O f f i c e A c t i o n d a t e d 3 0 M a y 2 0 0 6 4. (Currently Amended) A capacitive touchpad o f claim 1 integrated with key and handwriting functions, comprising: a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a key mode and a handwriting mode; a plurality o f regions defined on said panel; and a plurality o f second patterns on said plurality o f regions for operation in said key and handwriting modes; w h e r e i n s a i d p a n e l comprises: a substrate selected from the group consisting o f PCB, m e m b r a n e and t r a n s p a r e n t p l a t e ; a conductor wiring on said substrate; and an insulator covered on said conductor wiring. 5. (Original) A capacitive touchpad o f claim 4, wherein said conductor wiring comprises an ITO. 6. (Original) A capacitive touchpad o f claim 4, wherein said insulator is transparent. Page 3 o f 16 APEL0000833 353 CFH 0091 MR2707-46 Serial Number: 10/668,352 R e p l y to O f f i c e A c t i o n d a t e d 3 0 M a y 2 0 0 6 7. (Original) A capacitive touchpad o f claim 1, further comprising a backlight for said panel. 8. (Original) A capacitive touchpad o f claim 1, further comprising a recognition module for recognizing an input trace onto said panel in said handwriting mode. 9. (Original) A capacitive touchpad o f claim 1, further comprising a judgment module for determining a number o f fingers touching onto said panel. 10. (Original) A capacitive touchpad o f claim 1, wherein said plurality o f second patterns comprises a plurality o f key patterns for performing a telephone keyboard. 11. (Currently Amended) A mobile telephone characterized in a capacitive touchpad included thereon, said capacitive touchpad comprising: a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a key mode and a handwriting mode; a plurality o f regions selectively defined on said panel responsive to actuation o f said mode switch; and Page 4 o f 16 APEL0000834 353 CFH 0092 MR2707-46 Serial N u m b e r : 10/668,352 R e p l y to O f f i c e A c t i o n d a t e d 3 0 M a y 2 0 0 6 a plurality o f second patterns selectively defined on said plurality o f regions for operation in said key and handwriting modes. 12. (Original) A mobile telephone o f claim 11, wherein said capacitive touchpad further comprising a mouse mode for switching thereto by touching said first pattern. 13. (Original) A mobile telephone o f claim 11, further comprising an LCD for displaying an input from said panel. 14. (Currently Amended) A mobile telephone o f claim 11 characterized in a c a p a c i t i v e t o u c h p a d i n c l u d e d thereon, s a i d c a p a c i t i v e t o u c h p a d c o m p r i s i n g : a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a key mode and a handwriting mode; a plurality o f regions defined on said panel; and a plurality o f second patterns on said plurality o f regions for operation in said key and handwriting modes; w h e r e i n s a i d p a n e l comprises: a substrate selected from the group consisting o f PCB, m e m b r a n e a n d t r a n s p a r e n t plate; Page 5 o f 16 APEL0000835 353 CFH 0093 MR2707-46 Serial Number: 1 0 / 6 6 8 , 3 5 2 Reply to Office Action dated 30 M a y 2006 a conductor wiring on said substrate; and an insulator covered on said conductor wiring. 15. (Original) A mobile telephone o f claim 14, wherein s a i d conductor w i r i n g c o m p r i s e s an ITO. 16. (Original) A mobile telephone o f claim 14, wherein said insulator is transparent. 17. (Original) A mobile telephone o f claim 11, further c o m p n s m g a backlight for said panel. 18. (Original) A mobile telephone o f claim 11, further c o m p n s m g a recognition module for recogmzmg an input trace onto said panel in said handwriting mode. 19. (Original) A mobile telephone o f claim 11, further c o m p n s m g a judgment module for determining a number o f fingers touching onto said panel. Page 6 o f 16 AP E L0000836 3 5 3 CFH 0 0 9 4 MR2707-46 Serial N u m b e r : 10/668,352 R e p l y t o O f f i c e A c t i o n d a t e d 3 0 M a y 2006 20. (Original) A mobile telephone o f claim 11, wherein said plurality o f second patterns comprises a plurality o f key patterns for performing a telephone keyboard. 21. (Currently Amended) A capacitive touchpad integrated with key a n d m o u s e functions, c o m p r i s i n g : a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a key mode and a mouse mode; a plurality o f regions selectively defined on said panel responsive to a c t u a t i o n o f s a i d m o d e switch; a n d a plurality o f second patterns selectively defined on said plurality o f regions for operation in said key and mouse modes. 22. (Original) A capacitive touchpad o f claim 21, further comprising a handwriting mode for switching thereto b y touching said first pattern. 23. (Original) A capacitive touchpad o f claim 21, further comprising an LCD for displaying an input from said panel. Page 7 o f 16 APEL0000837 353 CFH 0095 MR2707-46 S e r i a l N u m b e r : 10/668,352 R e p l y to O f f i c e A c t i o n d a t e d 3 0 M a y 2 0 0 6 24. (Currently Amended) A capacitive touchpad o f elaim 21 integrated with k e y and mouse functions, comprising: a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a key mode and a mouse mode; a plurality o f regions defined on said panel; a n d a plurality o f second patterns on said plurality o f regIOns for operation in said k e y and mouse modes; w h e r e i n s a i d p a n e l comprises: a substrate selected from the group consisting o f PCB, membrane and t r a n s p a r e n t p l a t e ; a conductor wiring on said substrate; and an insulator covered on said conductor wiring. 25. (Original) A capacitive touchpad o f claim 24, wherein said conductor w i r i n g c o m p r i s e s a n ITO. 26. (Original) A capacitive touchpad o f claim 24, wherein said insulator is transparent. Page 8 o f 16 AP E L0000838 3 5 3 CFH 0 0 9 6 MR2707-46 S e r i a l Number: 1 0 / 6 6 8 , 3 5 2 Reply to Office A c t i o n dated 3 0 M a y 2006 27. (Original) A capacitive touchpad o f claim 21, further comprising a backlight for said panel. 28. (Original) A capacitive touchpad o f claim 22, further comprising a recognition module for recognizing an input trace onto said panel in said handwriting mode. 29. (Original) A capacitive touchpad o f claim 21, further comprising a judgment module for determining a number o f fingers touching onto said panel. 30. (Original) A capacitive touchpad o f claim 21, wherein said plurality o f second patterns comprises a plurality o f key patterns for performing a telephone keyboard. 31. (Currently Amended) A capacitive touchpad integrated with mouse and handwriting functions, comprising: a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a mouse mode and a handwriting mode; a plurality o f regions selectively defined on said panel responsive to actuation o f said mode switch; and Page 9 o f 16 APEL0000839 353 CFH 0097 MR2707-46 Serial Number: 10/668,352 Reply t o O f f i c e A c t i o n d a t e d 3 0 M a y 2 0 0 6 a plurality o f second patterns selectively defined on said plurality o f regions for operation in said mouse and handwriting modes. 32. (Original) A capacitive touchpad o f claim 31, further comprising a key mode for switching thereto by touching said first pattern. 33. (Original) A capacitive touchpad o f claim 31, further comprising an LCD for displaying an input from said panel. 34. (Currently Amended) A capacitive touchpad o f claim 31 integrated w i t h m o u s e a n d h a n d w r i t i n g functions, c o m p r i s i n g : a panel for touch inputting; a first pattern on said panel for representing a mode switch to switch said touchpad between a mouse mode and a handwriting mode; a plurality o f regions defined on said panel; and a plurality o f second patterns on said plurality o f regions for operation in said mouse and handwriting modes; w h e r e i n s a i d p a n e l comprises: a substrate selected from the group consisting o f PCB, m e m b r a n e and t r a n s p a r e n t p l a t e ; a conductor wiring on said substrate; and Page 10 o f 16 APEL0000840 353 CFH 0098 MR2707-46 Serial Number: 10/668,352 Reply to Office Action dated 30 May 2006 an insulator covered on said conductor wiring. 35. (Original) A capacitive touchpad o f claim 34, wherein said conductor wiring comprises an ITO. 36. (Original) A capacitive touchpad o f claim 34, wherein said insulator is transparent. 37. (Original) A capacitive touchpad o f claim 31, further comprising a backlight for said panel. 38. (Original) A capacitive touchpad o f claim 31, further comprising a recognition module for recognizing an input trace onto said panel in said handwriting mode. 39. (Original) A capacitive touchpad o f claim 31, further comprising a judgment module for determining a number o f fingers touching onto said panel. 40. (Original) A capacitive touchpad o f claim 31, wherein said plurality o f second patterns comprises a plurality o f key patterns for performing a telephone keyboard. Page I I o f 16 A P E L0000841 3 5 3 CFH 0 0 9 9 MR2707-46 Serial N u m b e r ; 10/668,352 Reply to Office Action dated 3 0 M a y 2006 REMARKS/ARGUMENTS T h i s c a s e h a s b e e n c a r e f u l l y r e v i e w e d a n d a n a l y z e d i n v i e w o f the O f f i c e Action dated 30 May 2006. Responsive to that Office Action, Claims 1, 4, 11, 14, 21, 24, 31, and 34 are amended for further prosecution with the other pending Claims. I t is believed that with such amendment o f Claims, there is a further c l a r i f i c a t i o n o f their recitations. In the Office Action, the Examiner rejected Claims 1-3, 8-10, 11-13, 18-20, 2 1 - 2 3 , 2 8 - 3 0 , 3 1 - 3 3 , and 38-40 under 35 U . S . c . 103(a) as being unpatentable over the Ichikawa reference in view o f the Moriya, et al. reference. I n setting forth this rejection, the Examiner acknowledged that Ichikawa fails to disclose various features, b u t cited Moriya, et aI. for disclosing a mobile phone and the switching o f a touchpad between key and handwriting modes, as well as other features. The Examiner concluded that it would have been obvious to one o f ordinary skill in the art to have accordingly modified Ichikawa's device. Also in the Office Action, the examiner rejected Claims 7, 17, 27, and 37 under 35 U . S . c . 103(a) as being unpatentable over Ichikawa in view o f Moriya, et aI., further in view o f the Nozaki reference. The Examiner cited Nozaki in this regard for disclosing a backlight for a panel, concluding once more that it would have been obvious to one o f ordinary skill in the art to have accordingly modified the Ichikawa device to include such feature. Page 12 o f 16 APEL0000842 353 CFH 0100 MR2707-46 Serial N u m b e r : 1 0 / 6 6 8 , 3 5 2 Reply to Office Action dated 3 0 May 2006 As for Claims 4-6, 14-16, 24-26, and 34-36, the Examiner merely objected to the Claims for being dependent upon a rejected base claim. The Examiner indicated that they would be allowable i f rewritten in independent form to include all o f the limitations o f the base and any intervening claims. Accordingly, each o f the Claims 4, 14, 24, and 34 is now amended to independent form, incorporating therein the subject matter o f Claims 1, 11, 21, and 31 from which they had respectively depended. It is believed, therefore, that Claims 4, 14, 24, and 34, as well as Claims 5-6, 15-16,25-26, and 35-36 which depend respectively therefrom, are now in allowable form. Each o f the remaining independent Claims 1, 11, 21, and 31 is also now amended to now more clearly recite among its combination o f features a panel for touch input on which a mode switch is represented for switching the touchpad' s configuration between various selective modes such as a key mode and a handwriting mode. A plurality o f regions are "selectively defined on said panel responsive to actuation o f said mode switch," as the newly-amended independent Claims 1, 11, 21, and 31 each clarify, with " a plurality o f second patterns selectively defined on said plurality o f regions" for appropriate operation in the mode selected. The full combination o f these and other features now more clearly recited by Applicants' newly-amended Claims is nowhere disclosed by the cited references. As the Examiner readily acknowledged, the primarily-cited Ichikawa Page 13 o f 16 AP E L0000843 3 5 3 CFH 0101 MR2707-46 Serial N u m b e r : 1 0 / 6 6 8 , 3 5 2 Reply to Office Action dated 3 0 May 2006 reference simply discloses a particular touchpad or screen. Nowhere does the reference disclose such features as a plurality o f regions and patterns "selectively defined" thereon in accordance with a mode selection, as each o f the newlyamended independent Claims 1, 1 1 , 2 1 , and 31 now more clearly recites. The Moriya, et al. reference which the Examiner cited secondarily for disclosing a touchpad having mode switching features, among other things, actually forms a handheld stylus 20. Although it may be manipulated upon various surfaces, it is this handheld "stylus" which serves as the pointing, or position inputting, device. The reference makes very clear that this stylus device thus provides " a handheld movable part, or module, which inputs to the P D A information about all o r some o f the six spatial variables o f the movable part, namely its [own] orientation about any o f three orthogonal axes," (page 2, paragraph [0010]). Where the reference describes its use with respect to an imaginary keyboard, Moriya, et al. makes clear that even in such applications, it is the "threedimensional spatial information" o f the stylus i t s e l f - relative to a calibrated reference point - that effectuates the keyboard selection, not the actuation o f any selectively defined panel o f a touchpad. The reference plainly explains for such i m a g i n a r y k e y b o a r d operation, " a one-time c a l i b r a t i o n - o r t e a c h i n g p r o c e d u r e , programmed into the processor, is required" to preset the stylus configuration (page 2, paragraph [0013]). This teaches against any notion o f selective Page 14 o f 16 APEL0000844 353 CFH 0102 MR2707-46 Serial Number: 10/668,352 Reply to Office Action dated 30 May 2006 reconfigurability "responsive to actuation o f . . . [a] mode switch," let alone " a panel for touch inputting" with a plurality o f regions are "selectively defined" thereon "responsive to actuation o f said mode switch," as each o f the newlyamended independent Claims 1, 11, 21, and 31 now more clearly recites. Given such deficient teachings o f the Ichikawa and Moriya, et aI. references, the disclosures o f the secondarily-cited Nozaki reference are found to be quite ineffectual to the present patentability analysis. The reference was cited for its backlighting o f an LCD display. Far from remedying the deficiencies o f Ichikawa and Moriya, et aI., however, Nozaki prescribes and contemplates a touch panel having a fixed set o f copier control buttons set thereon. I t is respectfully submitted, therefore, that the cited Ichikawa, Moriya, et aI., and Nozaki references, even when considered together, fail to disclose the unique combination o f elements now more clearly recited b y Applicants' pending Claims for the purposes and objectives disclosed in the subject Patent Application. I t is now believed that the subject Patent Application has been placed fully in condition for allowance, and such action is respectfully requested. Page 15 o f 1 6 APEL0000845 353 CFH 0103 MR2707-46 S e r i a l N u m b e r : 10/668,352 Reply to Office Action dated 30 May 2006 I f t h e r e a r e a n y f u r t h e r c h a r g e s a s s o c i a t e d w i t h this f i l i n g , t h e H o n o r a b l e C o m m i s s i o n e r for Patents is h e r e b y authorized to charge Deposit Account # 182011 for s u c h charges. Respectfully submitted, For: ROSENBERG, KLEIN & L E E ~~. l u n Y. Lee Registration # 4 0 , 2 6 2 Dated: / 6 / 1 / / Suite 101 3 4 5 8 Ellicott C e n t e r Drive E l l i c o t t City, M D 2 1 0 4 3 (410) 4 6 5 - 6 6 7 8 C u s t o m e r No. 04586 ~O 6r.a Page 16 o f 16 APEL0000846 3 5 3 CFH 0 1 0 J

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