Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1002

Declaration of Sam Stake in Support of #1005 Samsung's Opposition to Apple's Motion for Summary Judgment filed by Samsung Electronics America, Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14)(Maroulis, Victoria) (Filed on 6/1/2012) Modified on 6/4/2012 linking entry to document #1005 and correcting filing date. counsel posted document on 6/1/2012 (dhm, COURT STAFF).

EXHIBIT 5

UNITI~D STAT’K~ DI~PABTMI~NT Ol~ COMMERCE

APPLICATION NO.

FILING DATE

09/540,830

0313112000
7590

I

FIRST NAMED INVENTOR

CONFIRMATION NO. [

I ATTORNEY DOCKET NO. I
678-430(P8851)

2348

08/08F2002

Paul J Farrell Esq

EXAMINER

Dilworth & Barrcs¢
333 Earle Ovington Boulevard
Uniondal¢, NY 11663

ENG, GEORGE
[

ART UNIT

[ PAPER NUMBBP.

2643

DATE MAILED: 08/08/2002

Please find below and/or attached an Office communication conceming this application or proceeding.

PTO-90C (Rev. 07-01)

APLNDC-WH-A 0000014255

Application No.

O Applicant(s)

09/540,830

KIM ET AL.

Examiner

Office Action Summary

Art Unit

George Eng
2643
- The MAILING DATE of this communication appears on the coversheet with the correspondence address Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.
Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
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).

Status
1)1~
2a)[--I

Responsive to communication(s) filed on 3/31/2000.
This action is FINAL.

2b)[~ This action is non-final.
3)[-I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11,453 O.G. 213.
Disposition of Claims
4)[~ Claim(s) 1-20 is/are pending in the application.
4a) Of the above claim(s) __ is/are withdrawn from consideration.
5)[--I Claim(s) __ is/are allowed.
6)[~ Claim(s) 1-20 is/are rejected.
7)[-J Claim(s) __ is/are objected to.
8)[-1 Claim(s) __ are subject to restriction and/or election requirement.
Application Papers
9)[--I The specification is objected to by the Examiner.
10)1--1 The drawing(s) filed on __ is/are: a)[-] accepted or b)[--I 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).
11)[--I The proposed drawing correction filed on ~ is: a)[--I approved b)[--I disapproved by the Examiner.
If approved, corrected drawings are required in reply to this Office action.
12)[--I The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§ 119 and 120
13)[~ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)[~] All b)[--~ Some * c)[--~ None of:
1.~;~] Certified copies of the priority documents have been received.
2.[-] 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.
14)r-] Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e/(to a provisional application).
a) [] The translation of the foreign language provisional application has been received.
15)[] Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
Attachment(s)
1) [] Notice of References Cited (PTO-892)
2) [] Notice of DraRsperson’s Patent Drawing Review (PTOo948)
3) [] Information Disclosure Statement(s) (PTO-1449) Paper No(s) 3.

4) [] Interview Summary (PTO-,413) Paper No(s)..__
5) [] Notice of Informal Patent Application (PTO-152)
6) [] Other:

U.S. Patent and Tr~C,~,~a~’,~ Office

PTO-326 (Rev. 04-01 )

Office Action Summary

Part of Paper No. 5

APLNDC-WH-A 0000014256

Page 2

Application/Control Number: 09/540,830
Art Unit: 2643
DETAILED ACTION

Priority
1.

Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers

have been placed of record in the file.

Information Disclosure Statement
The information disclosure statement filed 5/28/2002 (paper no. 3) has been considered.

Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.

4.

Claim 9 is 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.
Claim 9 recites the limitation "the portable phone controller" in line 2. There is
insufficient antecedent basis for this limitation in the claim. It appears that "the portable phone
controller" should be --the portable phone unit --.

APLNDC-WH-A 0000014257

Application/Control Number: 09/540,830
Art Unit: 2643

Page 3

Claim Rejections - 35 USC § 102
5.

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the

basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless (e) the invention was described in a patent granted on an application for patent by another filed in the United
States before the invention thereof by the applicant for patent, or on an international application by another who
has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention

thereof by the applicant for patent.

The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999
(AIPA) do not apply to the examination of this application as the application being examined
was not (1) filed on or after November 29, 2000, or (2) voluntarily published under 35 U.S.C.
122(b). Therefore, this application is examined under 35 U.S.C. 102(e) prior to the amendment
by the AIPA (pre-AIPA 35 U.S.C. 102(e)).

6.

Claims 17-19 are rejected under 35 U.S.C. 102(e) as being anticipated by Irube (US PAT.

6,377,818 hereinafter Irube).
Regarding claim 17, Irube discloses a method of operating a communication terminal
apparatus which functions as both a portable phone and a camera comprising the steps of setting
a portable phone mode by turning on the communication terminal apparatus, regulating voltage
supporting components of the portable phone mode and performing a general portable phone
function (col. 6 line 48 through col.8 line 17), setting a camera mode upon user request of
camera operation, regulating voltage supporting components of the camera mode and performing
a camera function (col. 8 line 52 through col.9 line 8 and col. 13 line 25 though 14 line 48),
capturing the image of an object upon user request for photograph in camera mode and

APLNDC-WH-A 0000014258

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Application/Control Number: 09/540,830
Art Unit: 2643

displaying a captured image stored in a camera memory of the communication terminal
apparatus on a display of the communication terminal apparatus upon user request for displaying
the image (col. 14 lines 50-63).
Regarding claims 18-19, Irube teaches a first voltage supplied from a first power supply
unit (55, figure 2) to a portable phone unit (2) of the communication terminal apparatus and a
second power voltage is supplied from a second power supply unit (36, figure 1) to a camera unit
(4) of the communication terminal apparatus when the portable phone mode is set.

Claim Rejections - 35 USC § 103
7.

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all

obviousness rejections set forth in this Office action:
(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.

This application currently names joint inventors. In considering patentability of the
claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various
claims was commonly owned at ~he time any inventions covered therein were made absent any
evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out
the inventor and invention dates of each claim that was not commonly owned at the time a later
invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c)
and potential 35 U.S.C. 102(e), (t) or (g) prior art under 35 U.S.C. 103(a).

APLNDC-WH-A 0000014259

Application/Control Number: 09/540,830
Art Unit: 2643
8.

Page 5

Claims 1-12 and 15-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over

Hsieh et al. (US PAT. 5,969,750 hereinafter Hsieh) in view of Irube et al. (US PAT. 6,377,818
hereinafter Irube).
Regarding claim 1, Hsieh discloses a portable composite communication terminal (300)
for voice communication and image transmission and reception as shown in figure 6 comprising
a camera unit (110) for digitally capturing an image of an object, constructing the image in a
predetermined format, compressing the formatted image, and storing the compressed image in
the camera memory under a predetermined camera control (col. 6 line 27 through col. 7 line 7), a
portable phone unit (320) obviously including a controller for providing overall control to the
portable composite communication terminal, a display (310 and 315) for displaying images (col.
11 lines 8-10), and an interface (117) between the portable phone unit and the display (col. 1013). Hsieh differs from the claimed invention in not specifically teaching the portable phone unit
selectively performing voice communication and image transmission and reception and the
display for displaying characters under control of the portable phone unit. However, Irube
teaches a communication terminal device providing modes selection function for selectively
performing voice commtmication and image transmission and reception (col. 1 lines 44-56 and
col. 4 line 33 through col. 5 line 9) and a display for displaying characters under the control of a
main controller (col. 4 lines 10-32 and col. 6 lines 18-34) in order to providing a videophone
function comprising a video input and output function without impairing its portability and
storability. Therefore, it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify Hsieh, in having the portable phone unit selectively
performing voice communication and image transmission and reception and the display for

APLNDC-WH-A 0000014260

Application/Control Number: 09/540,830
Art Unit: 2643

Page 6

displaying characters under control of the portable phone unit, as per teaching of Irube, because
it provides a videophone function comprising a video input and output function without
impairing its portability and storability.
Regarding claim claims 3-7, Irube teaches the keys related with the camera unit including
a play key, a mode key for selecting a camera environment, a shutter key for capturing an object
image, an enter key for setting a camera environment selected by the mode key and a camera
on/off switch, wherein the play key and the camera on/off switch are provided on a side of the
portable composite communication terminal (figures 3A- 3D, col. 6 lines 18-45 and col. 14 line
22 through col. 16 line 28)
Regarding claim 8, Hsieh discloses the camera unit (110) has a lens at an upper portion of
the portable composite communication terminal (figure 6). Although Hsieh does not specifically
teach the camera unit locating at the rear surface, Irube teaches camera unit can be attached on a
front surface or a rear surface in order to improve the portability by providing two states of
camera unit attachment. Therefore, it would have been obvious to a person of ordinary skill in
the art at the time the invention was made to modify Hsieh in having an attachable camera unit
for attaching at an upper portion of the rear surface of the portable composite communication
terminal, as per teaching of Irube, because it improves the portability.
Regarding claims 9-11, Irube disclose the communication terminal device (1) comprising
the main controller (11) for controlling a battery power voltage to be supplied to the camera
interface unit, the camera unit and the display unit when a user turns on the camera on/off switch
(col. 6 lines 32-45 and col. 8 lines 52-61).

APLNDC-WH-A 0000014261

Application/Control Number: 09/540,830
Art Unit: 2643

Page 7

Regarding claim 12, Irube teaches an on screen display controller for controlling one of a
download background image and characters on the display and a switch for selectively output
ting an external image signal received from camera unit and an image received from the on
screen display under the control of the on screen display controller (col. 10 lines 23-65 and col.
14 lines 50-63).
Regarding claim 15, Hsieh discloses the camera unit for converting the digitally captured
image to a motion picture signal, i.e., JPEG format, compressing the formatted image data,
storing the compressed image data and decompressed the stored compress image data under a
predetermined read control (col. 6 line 27 through col. 9 line 11).
Regarding claim 16, the limitations of the claim are rejected as the same reasons as set
forth in claim 1. In addition, Hsieh teaches to use a cellular communication for transmission and
reception of voice and images to and from the portable composite communication terminal (col.
11 lines 39-47).

9.

Claims 13-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hsieh et al.

(US PAT. 5,969,750 hereinafter Hsieh) in view of Irube et al. (US PAT. 6,377,818 hereinafter
Irube) as applied in claims above, and further in view of Gerszberg et al. (US PAT. 6,044,403
hereinafter Gerszberg).
.Regarding claims 13-14, Irube discloses the main controller (1 l) comprising a memory
having an operation program, an application program, a data function including e-mail and
facsimile and a user interface function including graphic user interface, a radio link protocol and
a communication protocol (col. 4 lines 10-15, col. 13 lines 34-41 and col. 17 line 30 through col.

APLNDC-WH-A 0000014262

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Art Unit: 2643

Page 8

19 line 15). The combination of Hsieh and Irube differs from the claimed invention in not
specifically teaching the memory having an Internet protocol and the application program
including a voice dialing, character recognition, game information and game function. However,
Gerszberg discloses a videophone for provide a vast array of new services comprising a memory
for storing a user profile including Intemet protocol for connect the videophone to a server over
Internet (col. 8 lines 59 through col.9 line 4) and application program including voice dialing,
character recognition, game information management and game function (col. Col. 11 lines 1225, col. 18 lines 14-20, col. 24 lines 17-30 and col. 25 lines 29-39). Therefore, it would have
been obvious to a person of ordinary skill in the art at the time the invention was made to modify
the combination of Hsieh and Irube in having an Internet protocol in the memory and the
application program including a voice dialing, character recognition, game information and game
function, as per teaching of Gerszberg, because it makes user friendly by providing a vast array
of new services.

10. Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable over Wagner et al.
(US PAT. 6,169,911 hereinafter Wagner) in view of Suso et al. (US PAT. 6,069,648 hereinafter
Suso) and Dawson (US PAT 6,252,588).
Regarding claim 20, Wagner discloses a data transmission method for a portable
composite communication terminal (1, figure 1), which functions as a portable phone comprising
the steps of entering a first E-mail transmission sub-mode upon user request for E-mail
transmission while operating in a portable phone mode, the first E-mail transmission sub-mode
performing a portable phone function, and transmitting the address of the other party and a

APLNDC-WH-A 0000014263

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Art Unit: 2643

Page 9

message received through a user interface in the first E-mail transmission sub-mode (col. 6 line
64 through col. 7 line 19). Wagner differs from the claimed invention in not specifically teaching
the portable composite communication terminal functioning as a camera for recording image.
However, Suso teaches an information communication terminal device (1, figure 6) comprising a
camera for providing a recording mode to obtain an image for displaying (col. 4 line 63 through
col. 6 line 34). Therefore, it would have been obvious to a person of ordinary skill in the art at
the time the invention was made to modify Wagner in having a camera in the portable composite
communication terminal, as per teaching of Suso, because it makes user friendly by providing an
additional function for recording desired images during a camera recording mode. Furthermore,
neither Wagner nor Suso specifically teaches to enter a second E-mail transmission sub-mode
upon use request for E-mail transmission while operating in a display sub-mode, the second E- .
mail transmission sub-mode displaying image captured in a camera mode and transmitting the
address of the other party and the message received through the user interface and the image
displayed on the display as an E_mail in the second E-mail transmission sub-mode. However,
Dawson teaches an audio-visual e-mail system having a first E-mail transmission mode for
transmitting a text-only email message and a second E-mail transmission sub-mode upon user
request for E-mail transmission, wherein the second E-mail sub-mode displays an image
captured by a digital camera and transmits the address of the other party and the message
received through the user interface and the image display on the display (col. 12 line 64 through
col. 14 line 49). Therefore, it would have been obvious to a person of ordinary skill in the art at
the time the invention was made to modify the combination of Wagner and Suso in having the
second E-mail transmission sub-mode, as per teaching of Dawson, because it reduces the

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Application/Control Number: 09/540,830
Art Unit: 2643

complexity of sending e-mail message to a level that allows a user to send e-mail with a
minimum of inconvenience.

Conclusion
11.

The prior art made of record and not relied upon is considered pertinent to applicant’s

disclosure.
Ejima et al. (US PAT. 6,259,469) discloses an electronic camera integrated in a
communication device for recording image (figure 1 and abstract).
Ray (US PAT. 6,192,257) discloses wireless commtmication terminal having video
image capability (abstract).
Yuyama et al. (US PAT. 5,825,408) discloses a portable monitor and image data taken by
the imaging apparatus in compressed and stored (abstract).
Umezawa et al. (US PAT. 5,49,507) discloses a handy type video telephone equipment
which permits a user to transmit and receive pictures and speech with a casing held in one hand
(abstract).

12.

Any response to this action should be mailed to:
Commissioner of Patents and Trademarks
Washington D.C. 20231
Or faxed to:
[phone] (for Technology Center 2600 only)

APLNDC-WH-A 0000014265

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Application/Control Number: 09/540,830
Art Unit: 2643

Hand delivered responses should be brought to Crystal Park II, 2121 Crystal Drive,
Arlington, V.A., Sixth Floor (Receptionist).

13. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to George Eng whose telephone number is 703-308-9555. The
examiner can normally be reached on Tuesday to Friday from 7:30 AM to 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
supervisor, Curtis A. Kuntz, can be reached on [phone]. The fax phone number for the
organization where this application or proceeding is assigned is 703-308-6306.
Any inquiry of a general nature or relating to the status of this application or proceeding
should be directed to the receptionist whose telephone number is [phone].

George Eng
Examiner
Art Unit 2643

APLNDC-WH-A 0000014266