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 7

7590

02/03/2003

Paul J Farrell Esq
Dilworth & Barrese
333 Earle Ovington Boulevard

~,Ard~r~ER

I

J

ENG, GEORGE

Uniondale, NY 11663
I

ART UNIT

1

PAPER NUMBER

]

2643

DATE MAILED: 02/03/2003

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

PTO-90C (Rev. 07-OI)

APLNDC-WH-A 0000014229

Application No.
09/540,830

KIM ET AL.

Examiner

Office Action Summary

Applicant(s)

Art Unit

2643
- The MAILING DATE of this communication appears on the cover sheet with the correspondence address Period for Reply
George Eng

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)[~

Responsive to communication(s) filed on 12 November 2002.
This action is FINAL.

2b)l--I This action is non-final.

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
3)[--1

4)1~ Claim(s) 1-11 and 13-20 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)1~ Claim(s) 1-11 and 13-20 is/are rejected.
7)[-I Claim(s) ~ is/are objected to.
8)1"-1 Claim(s) ~ are subject to restriction and/or election requirement.
Application Papers
9)1~ The specification is objected to by the Examiner.
10)[-I The drawing(s) filed on ~ is/are: a)r-I 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)l-’l 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)[--I All b)l--I Some * c)l--I None of:
1.1--1 Certified copies of the priority documents have bee~ received.
2.1--1 Certified copies of the priority documents have been received in Application No. ~.
3.1~ 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)[--I 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)1--1 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 Draffsperson’s Patent Drawing Review (PTO-948)
3) [] Information Disclosure Statement(s) (PTO-1449) Paper No(s)

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

U.S. Patent and Trademark Office

PTO-326 (Rev. 04-01)

Office Action Summary

Part of Paper No. 7

APLNDC-WH-A 0000014230

Page 2

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

DETAILED ACTION

Response to Amendment
This office action is in response to amendment filed 11/12/2002 (paper no. 7).

Claim Objections
2.

Claim 1 is objected to because of the following informalities: claim 1, line 18, delete ".".

Appropriate correction is required.

Claim Rejections - 35 USC § 102
3.

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)).

APLNDC-WH-A 0000014231

Application/Control Number: 09/540,830
Art Unit: 2643
4.

Page 3

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

PAT. 6,009,336 hereinafter Harris).
Regarding claim 17, Harris discloses a communication method of operating a
communication device (104, figure 1) having one controller (118, figure 1), the communication
device which functions as both a portable phone and a camera comprising the steps of setting a
portable phone mode (700, figure 7) by tuning on the communication device, regulating voltage
supporting components of the portable phone mode, and performing a general portable phone
function (col. 9 lines 17-32), setting a camera mode (706, figure 7) upon user request for camera
operation, said user request being input through a camera mode switch (205, figure 2) and
processed by the controller, regulating voltage supporting components of the camera mode and
performing a camera function (col. 11 lines 39-58), capturing the image of an object upon user
for a photograph in the camera mode (col. 12 lines 5-12) and display a captured image stored in a
camera memory of the communication device on a display of the communication device upon
user request for displaying the image (col. 12 lines 20-23).
Regarding claims 18-19, Hart’is teaches the communication device having two housings
(108 and 110, figure 1) such that a first housing having a first power supply (113) for supplying a
first voltage to the communication device when the portable phone mode is set, and a second
housing having a second power supply for supply a second voltage to the camera unit when the
camera mode is set (col. 3 lines 25-40 and col. 9 lines 6-35).

APLNDC-WH-A 0000014232

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

Page 4

Claim Rejections - 35 USC § 103
5.

The following is a quotation of 35 U.S.C. 103(a) whichforms 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 the 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), (f) or (g) prior art under 35 U.S.C. 103(a).

7.

Claims 1-11, 13 and 15-16 are rejected under 35 U.S.C. 103(a) as being unpatentable

over Harris et al. (US PAT. 6,009,336 hereinafter Harris) in view of Hull et al. (US PAT.
5,806,005 hereinafter Hull).
Regarding claim 1, Harris discloses a communication device (104) as shown in figure 1
for voice communication and image transmission and reception comprising a camera unit
including a camera (188) and image DSP (152) 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 a camera memory (153) under a predetermined camera control (col. 4

APLNDC-WH-A 0000014233

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

Page 5

lines 24-44 and col.5 lines 60-67), a portable phone unit (108) having a controller (118) for
providing overall control to the communication device and selectively performing voice
communication and image transmission/reception of at least one image according in a selected
transmission mode among predetermined mode (col. 6 lines 25-49 and col. 9 line 17 through
col. 12 line 37), a display (184) for displaying external images produced by the camera unit and
character produced by the portable phone unit (figures 8-9 and col. 5 lines 52-59) and an
interface (112) between the portable phone unit (108) and the display (184) for displaying image
and characters on the display under the control of the portable phone unit (col. 6 lines 3-11).
Note while Harris clearly discloses the controller capable of being configured to control the
display of characters, i.e., soft-keys (202-204), and downloaded background image received from
the portable phone unit at a specific position of a currently-display external images on the
display in synchronization with signal received from the camera unit as shown in figure 8 and
selectively output an external image signal received from the camera unit and on screen display
signal received from the controller (figures 8-9 and col. 9 line 44 through col. 12 line 37). Thus, it
recognizes the communication device obviously further comprising an OSD controller that
controls the display of characters and downloaded background image received from the portable
phone unit at a specific position of a currently-display external images on the display in
synchronization with one of an external color sync signal received from the camera unit and an
internal color sync signal, and a selector that selectively outputs an external image signal
received from the camera trait and an OSD image signal received from the OSD controller to be
composed of one image on the display trader controller of the OSD controller. Harris differs
from the claimed invention in not specifically teaching to transmit/receive at least one image in

APLNDC-WH-A 0000014234

Page 6

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

an electronic mail. However, Hull teaches a portable image transfer system for transmitting
image in a format as electronic mail in order to improve portable image capture system (col. 1
lines 26-57 and col. 2 lines 38-44). Therefore, it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to modify Harries in transmission/reception of
at least one image included in electronic mail when the communication operates in camera mode,
as per teaching of Hull, because it improves the portable image capture system.
Regarding claim 2, Harris clearly discloses the communication device comprising a key
pad having a plurality of keys that interface with the portable phone unit and a plurality of keys
that interface with the camera unit for use in photographing and reproducing an image (figures 2
and 6, col. 9 lines 22-25 and col. 12 lines 5-8).
Regarding claim 3-4, Harris discloses the keys related with the camera unit including a
shutter key (133) for capturing an object image on the frontal of the communication device
(figure 6) and a camera on/off switch. Although Harris does not specifically teaches the keys
related with the camera unit including a play key, a mode key for selecting a camera
environment, and an enter key for setting a camera environment selected by the mode key, it is
old and notoriously well known in the art of digital camera having additional camera related
function keys, i.e., a play key, a mode key, and an enter key, in order to make user friendly.
Therefore, it would have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify Harries in having additional camera related function keys at the
communication device in order to make user friendly.
Regarding claim 5, Harris discloses modes selected by mode keys including data function
mode (204) and a display function mode (205) as shown in figure 2. It would have been obvious

APLNDC-WH-A 0000014235

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

Page 7

of modify Harris in further comprising a delete function mode and a sensitivity fimction mode in
order to enhance the communication device for providing additional operation modes.
Regarding claim 6, although Harris does not specifically teaching the photography key
and the camera on/off switch providing on the side of the communication device, it is old and
well known in the art of shifting locations of keys in a communication device in order to make
user friendly.
Regarding claim 7, although Harris does not specifically discloses the communication
device including a flip so that the mode key, the shutter key and the enter key are exposed when
a flip is folded in the communication device, it is old and well known in the art of portable
communication device comprising a flip for protecting a housing and exposing several fimction
keys even though the flip is folded for making user friendly in performing operations. Thus, it
would have been obvious to modify the communication device of Harris including a flip for
protecting the housing and exposing several function keys even though the flip is folded for
making user friendly in performing operations.
Regarding claim 8, Harris teaches the camera unit (188) as shown in figure 1, which
obviously comprises lens. Note while the camera unit and the display are movable as shown in
figure 13 so that the camera can be adjusted at an upper portion of the rear surface of the
communication device.
Regarding claims 9-11, Harris teaches the power supply (121) of the second housing
including the camera unit and the display unit capable of being regulated by the power supply
(113) of the portable phone controller (col. 3 lines 26-39).

APLNDC-WH-A 0000014236

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

Page 8

Regarding claim 13, Hull teaches the portable image transfer system comprising a
memory unit having programs, i.e., an operation program and an application program, data
ftmction, an Intemet protocol inclusive of a protocol connect to a point tot point (PPP) protocol
server and a protocol needed over an Internet over an Intemet, a radio link protocol for
establishing a radio link and a communication protocol (col. 2 line 38-62).

8.

Claim 14 is rejected under 35 U.S.C. 103(a) as being unpatentable over Harris et al. (US

PAT. 6,009,336 hereinafter Harris) in view of Hull et al. (US PAT. 5,806,005 hereinafter Hull)
as applied in claim 1 above, and further in view of Gerszberg et al. (US PAT. 6,044,403
hereinafter Gerszberg).
Regarding claim 14, the combination of Harris and Hull differs from the claimed
invention in not specifically teaching the application program including a voice dialing, character
recognition, game information and game function. However, Gerszberg teaches an application
program including voice dialing, character recognition, game information management and game
function (col. 11 lines 12-25, 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 Harris and Hull in having 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.

APLNDC-WH-A 0000014237

Application!Contr61 Number: 09/540,830
Art Unit: 2643
9.

Page 9

Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable over Harris et al. (US

PAT. 6,009,336 hereinafter Harris) in view of Hull et al. (US PAT. 5,806,005 hereinafter Hull)
and Sugiyama et al. (US PAT. 5,696,315 hereinafter Sugiyama).
Regarding claim 20, Harris discloses a communication method for a communication
device (104), which functions as both a portable phone and a camera 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, camera mode for capturing and displaying an image most recently
captured, and transmitting the address of the other party and a message received through a user
interface in the first E-mail transmission’ sub-mode (figure 11 and col. 11 lines 8-34). Harris
differs from the claimed invention in not specifically teaching to enter a second E-mail
transmission sub-mode upon user request for E-mail transmission while operating a display submode, the second e-mail transmission sub-mode displaying an image of most recently captured
in a camera mode, and transmitting the address of the other party and the message received
through the user interface and the image display on the display as an E-mail in the second E-mail
transmission sub-mode. However, Hull teaches a portable image transfer system for transmitting
image in a format as electronic mail to a server station during camera operation mode, which
obviously comprising the step of transmitting the address of the other party and the message
received through the user interface and the image display of the display as an E-mail (col. 2 lines
20-30 and col. 3 line 17-34) so that it improves portable image capture system. Therefore, it
would have been obvious to a person of ordinary skill in the art at the time the invention was
made to modify Harries in entering the second E-mail transmission sub-mode upon user request

APLNDC-WH-A 0000014238

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

Page 10

for E-mail transmission while operating a display sub-mode, the second e-mail transmission submode displaying an image of most recently captured in a camera mode, and transmitting the
address of the other party and the message received through the user interface and the image
display on the display as an E-mail in the second E-mail transmission sub-mode, as per teaching
of Hull, because it improves the portable image capture system. Furthermore, neither Harris nor
Hull teaches to use scroll key for sequentially displaying other images stored in the memory.
However, Sugiyama teaches to use scroll key to cause a plurality of images stored in a memory
sequentially displaying on a monitor in order to simplify in operation (col. 11 lines 38-42).
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 Harris and Hull in using scroll key for
sequentially displaying other images stored in the memory, as per teaching of Sugiyama, in order
to simplify in operation.

Response to Arguments
10. Applicant’s arguments with respect to claims 1-11 and 13-20 have been considered but
are moot in view of the new ground(s) of rejection.

Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant’s
disclosure.
Mita (US PAT. 5,757,346) discloses a technique for providing with a selecting section in
a display driving device to selectively switching output of various data stored in a memory

APLNDC-WH-A 0000014239

Page 11

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

section to an inspecting device and to output the stored data to a driving section on the basis of
execution instruction data from the inspection device (abstract and col. 7 line 47 through col. 8

line 32).

12. Applicant’s amendment necessitated the new ground(s) of rejection presented in this
Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
MONTHS of the mailing date of this final action and the advisory action is not mailed until after
the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
however, will the statutory period for reply expire later than SIX MONTHS from the date of this
final action.

13. Any inquiry concerning this communication or earlier communications the
from
examiner should be directed to George Eng whose telephone number is 703-308-9555.
The
examiner can normally be reached on Tue-Fri 7:30 AM-6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the
examiner’ s
supervisor, Curtis A. Kuntz can be reached on 703-305-4708.The fax phone numbers for the

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

Page 12

organization where this application or proceeding is assigned are 703-872-9314 for regular
communications and 703-308-6296 for After Final communications.
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 703-306-0377.

George Eng
Examiner
Art Unit 2643

APLNDC-WH-A 0000014241