Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
462
Declaration of DEOK KEUN Matthew Ahn IN SUPPORT OF #461 APPLES OPENING CLAIM CONSTRUCTION BRIEF PURSUANT TO PATENT L.R. 4-5 filed by Apple Inc.(a California corporation). (Attachments: #1 Exhibit A, #2 Exhibit B Part 1, #3 Exhibit B Part 2, #4 Exhibit C Part 1, #5 Exhibit C Part 2, #6 Exhibit D Part 1, #7 Exhibit D Part 2, #8 Exhibit D Part 3, #9 Exhibit D Part 4, #10 Exhibit E Part 1, #11 Exhibit E Part 2, #12 Exhibit F, #13 Exhibit G, #14 Exhibit H, #15 Exhibit I, #16 Exhibit J, #17 Exhibit K, #18 Exhibit L, #19 Exhibit M Part 1, #20 Exhibit M Part 2, #21 Exhibit N, #22 Exhibit O, #23 Exhibit P, #24 Exhibit Q)(Jacobs, Michael) (Filed on 12/8/2011) Modified on 12/9/2011 linking entry to document #461 (dhm, COURT STAFF).
Exhibit P
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
/
11/677,958
69753
FILING DATE
/
FIRST NAMED um van iuR
ATTORNEY DOCKET NO. /
CONFIPMATION NO.
WayneWesterman
10684-25086.04
1844
02/22/2007
7590
02/02/2010
APPLE C/O MORRISON AND FOERSTER ,LLP
LOS ANGELES
555 WEST
S
T SUITE 3500
LOS ANGELES, CA 90013-1024
EXAMINER
SHARIFI-TAFRESHI,KOOSHA
ARTUNIT
/
PAPERJwivory
/
D
2629
MAIL DATE
02/02/2010
Y MODE
PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
APLNDC00021674
Application No.
11/677,958
WESTERMAN ET AL.
Examiner
Art Unit
Koosha Sharifi
Interview Summary
Applicant(s)
2629
All participants (applicant, applicant's representative, PTO personnel):
(1) Amarg Mengistu.
(3)GregoracWggygr.
(2) Koosha Sharifi.
(4)
Date of Interview: 2Oanuay 2010.
Type: a)
c)
Telephonic b)
Video Conference
Personal [copy given to: 1)O applicant
Exhibit shown or demonstration conducted:
If Yes, brief description: kevboard.
d)
Yes
2)
e)
applicant's representative]
No.
Claim(s) discussed: 1Identification of prior art discussed: Bisset et al..
Agreement with respect to the claims f)
was reached. g)O was not reached. h)
N/A.
Substance of Interview including description of the general nature of what was agreed to if an agreement was
reached, or any other comments: The proposed amendment "mathematical fitting an ellipse"would overçome the art
of record..
(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the claims
allowable, if available, must be attached. Also, where no copy of the amendments that would render the claims
allowable is available, a summary thereof must be attached.)
THE FORMAL WRITTEN REPLY TO THE LAST OFFICE ACTION MUST INCLUDE THE SUBSTANCE OF THE
INTERVIEW. (See MPEP Section 713.04). If a reply to the last Office action has already been filed, APPLICANT IS
GIVEN A NON-EXTENDABLE PERIOD OF THE LONGER OF ONE MONTH OR THIRTY DAYS FROM THIS
INTERVIEW DATE, OR THE MAILING DATE OF THIS INTERVIEW SUMMARY FORM, WHICHEVER IS LATER, TO
FILE A STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. See Summary of Record of Interview
requirements on reverse side or on attached sheet.
IK. S./
Examiner, Art Unit 2629
u.s. Patent and Trademark Office
PTOL-413 (Rev. 04-03)
Interview Summary
Paper No. 20100128
APLNDC00021675
Summary of Record of Interview Requirements
Manual of Patent Examining Procedure (MPEP), Section 713.04, Substance of Interview Must be Made of Record
A complete written statement as to the substance of any face-to-face, video conference, or telephone interview with regard to an application must be made of record in the
application whether or not an agreement with the examiner was reached at the interview.
Title 37 Code of Federal Regulations (CFR) § 1.133 Interviews
Paragraph (b)
In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as
warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office action as specified in §§ 1.111, 1.135. (35 U.S.C. 132)
37 CFR §1.2 Business to be transacted in writing.
All business with the Patent or Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and
Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to
any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
The action of the Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself
incomplete through the failure to record the substance of interviews.
It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, unless
the examiner indicates he or she will do so. It is the examiner's responsibility to see that such a record is made and to correct material inaccuracies
which bear directly on the question of patentability.
Examiners must complete an Interview Summary Form for each interview held where a matter of substance has been discussed during the
interview by checking the appropriate boxes and filling in the blanks. Discussions regarding only procedural matters, directed solely to restriction
requirements for which interview recordation is otherwise provided for in Section 812.01 of the Manual of Patent Examining Procedure, or pointing
out typographical errors or unreadable script in Office actions or the like, are excluded from the interview recordation procedures below. Where the
substance of an interview is completely recorded in an Examiners Amendment, no separate Interview Summary Record is required.
The Interview Summary Form shall be given an appropriate Paper No., placed in the right hand portion of the file, and listed on the
"Contents" section of the file wrapper. In a personal interview, a duplicate of the Form is given to the applicant (or attorney or agent) at the
conclusion of the interview. In the case of a telephone or video-conference interview, the copy is mailed to the applicant's correspondence address
either with or prior to the next official communication. If additional correspondence from the examiner is not likely before an allowance or if other
circumstances dictate, the Form should be mailed promptly after the interview rather than with the next official communication.
The Form provides for recordation of the following information:
- Application Number (Series Code and Serial Number)
- Name of applicant
- Name of examiner
- Date of interview
- Type of interview (telephonic, video-conference, or personal)
- Name of participant(s) (applicant, attorney or agent, examiner, other PTO personnel, etc.)
- An indication whether or not an exhibit was shown or a demonstration conducted
- An identification of the specific prior art discussed
- An indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by
attachment of a copy of amendments or claims agreed as being allowable). Note: Agreement as to allowability is tentative and does
not restrict further action by the examiner to the contrary.
- The signature of the examiner who conducted the interview (if Form is not an attachment to a signed Office action)
It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview of each case. It
should be noted, however, that the Interview Summary Form will not normally be considered a complete and proper recordation of the interview
unless it includes, or is supplemented by the applicant or the examiner to include, all of the applicable items required below concerning the
substance of the interview.
A complete and proper recordation of the substance of any interview should include at least the following applicable items:
1) A brief description of the nature of any exhibit shown or any demonstration conducted,
2) an identification of the claims discussed,
3) an identification of the specific prior art discussed,
4) an identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the
Interview Summary Form completed by the Examiner,
5) a brief identification of the general thrust of the principal arguments presented to the examiner,
(The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not
required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments made to the
examiner can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully
describe those arguments which he or she feels were or might be persuasive to the examiner.)
6) a general indication of any other pertinent matters discussed, and
7) if appropriate, the general results or outcome of the interview unless already described in the Interview Summary Form completed by
the examiner.
Examiners are expected to carefully review the applicant's record of the substance of an interview. If the record is not complete and
accurate, the examiner will give the applicant an extendable one month time period to correct the record.
Examiner to Check for Accuracy
If the claims are allowable for other reasons of record, the examiner should send a letter setting forth the examiner's version of the
statement attributed to him or her. If the record is complete and accurate, the examiner should place the indication, "Interview Record OK" on the
paper recording the substance of the interview along with the date and the examiner's initials.
APLNDC00021676
Application No.: 11/677,958
2
Docket No.: 106842508604
AMENDMENTS TO THE CLAIMS
1. (currently amended) A method of processing input fi·om a touch-sensitive surface, the
method comprising:
receiving at least one proximity image representing a scan of a plurality of electrodes of the
touch-sensitive surface;
segmenting each proximity image into one or more pixel groups that indicate significant
proximity, each pixel group representing proximity of a distinguishable hand part or other touch
object on or near the touch-sensitive surface; and
mathematically fitting an ellipse to at least one of the pixel groups.
2. (original) The method of claim 1 further comprising transmitting one or more ellipse
parameters as a control signal to an electronic or electromechanical device.
3. (original) The method of claim 2 wherein the one or more ellipse parameters is selected
from the group consisting of position, shape, size, orientation, eccentricity, major radius, minor
radius, and any combination thereof.
4. (original) The method of claim 3 wherein the one or more ellipse parameters are used to
distinguish a pixel group associated with a fingertip from a pixel group associated with a thumb.
5. (original) The method of claim I wherein fitting an ellipse to a group of pixels comprises
computing one or more eigenvalues and one or more eigenvectors of a covariance matrix associated
with the pixel group.
6. (original) The method of claim 1 further comprising: tracking a path of at least one of the
one or more pixel groups through a time-sequenced series of proximity images;
fitting an ellipse to the at least one of the one or more pixel groups in each of the time-
sequenced series of proximity images; and
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Application No.: 11/677,958
3
Docket No.: 106842508604
tracking a change in one or more ellipse parameters through the time-sequenced series of
proximity images.
7. (original) The method of claim 6 further comprising transmitting the change in the one
or more ellipse parameters as a control signal to an electronic or electromechanical device.
8. (original) The method of claim 7 wherein the change in the one or more ellipse
parameters is selected from the group consisting of position, shape, size, orientation, eccentricity,
major radius, minor radius, and any combination thereof.
9. (original) The method of claim 6 wherein fitting an ellipse to the one pixel group
comprises computing one or more eigenvalues and one or more eigenvectors of a covariance matrix
associated with the pixel group.
10. (currently amended) A touch-sensing device comprising:
a substrate;
a plurality of touch-sensing electrodes arranged on the substrate;
electronic scanning hardware adapted to read the plurality of touch-sensing electrodes;
a calibration module operatively coupled to the electronic scanning hardware and adapted to
construct a proximity image having a plurality of pixels corresponding to the touch-sensing
electrodes; and
a contact tracking and identification module adapted to:
segment the proximity image into one or more pixel groups, each pixel group representing
proximity of a distinguishable hand part or other touch object on or near the touch-sensitive surface;
and
mathematicallv fit an ellipse to at least one of the one or more pixel groups.
11. (original) The touch-sensing device of claim 10 further comprising a host
communication interface adapted to transmit one or more ellipse parameters as a control signal to an
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Application No.: 11/677,958
4
Docket No.: 106842508604
electronic or electromechanical device.
12. (original) The touch-sensing device of claim 11 wherein the touch-sensing device is
integral with the electronic or electromechanical device.
13. (original) The touch-sensing device of claim 11 wherein the one or more ellipse
parameters comprise one or more parameters selected from the group consisting of position, shape,
size, orientation, eccentricity, major radius, minor radius, and any combination thereof.
14. (original) The method of claim 13 wherein the one or more ellipse parameters are used
to distinguish a pixel group associated with a fingertip from a pixel group associated with a thumb.
15. (original) The touch-sensing device of claim 10 wherein the contact tracking and
identification module is adapted to compute one or more eigenvalues and one or more eigenvectors
to fit the ellipse.
16. (original) The touch-sensing device of claim 10 wherein the contact tracking and
identification module is further adapted to:
track a path of one or more pixel groups through a plurality of time-sequenced proximity
images;
fit an ellipse to at least one of the one or more pixel groups in a first proximity image of the
plurality of time-sequenced proximity images; and
track a change in one or more ellipse parameters associated with the fitted ellipse through
two or more of the time-sequenced proximity images.
17. (original) The touch-sensing device of claim 16 further comprising a host
communication interface adapted to transmit the change in at least one of the one or more ellipse
parameters as a control signal to an electronic or electromechanical device.
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Application No.: 11/677,958
5
Docket No.: 106842508604
18. (original) The touch-sensing device of claim 17 wherein the touch-sensing device is
integral with the electronic or electromechanical device.
19. (original) The touch-sensing device of claim 17 wherein the change in one or more
ellipse parameters used as a control input to an electronic or electromechanical device comprises
one or more parameters selected from the group consisting of position, shape, size, orientation,
eccentricity, major radius, minor radius, and any combination thereof.
20. (original) The touch-sensing device of claim 16 wherein the contact tracking and
identification module is adapted to compute one or more eigenvalues and one or more eigenvectors
to fit the ellipse.
21. (original) The touch-sensing device of any one of claims 10-12 and 16-18 wherein the
touch-sensing device is fabricated on or integrated with a display device.
22. (original) The touch-sensing device of claim 21, wherein the display device comprises a
liquid crystal display (LCD) or a light-emitting polymer display (LPD).
23. (original) A computer-readable medium having embodied thereon instructions
executable by a machine to perform a method according to any of claims 1-9.
24. (original) A touch-sensing device comprising:
means for producing a proximity image representing a scan of a plurality of electrodes of a
touch-sensitive surface, the proximity image having a plurality of pixels corresponding to the touchsensing electrodes; and
means for segmenting the proximity image into one or more pixel groups, each pixel group
representing a touch object on or near the touch-sensitive surface; and
means for fitting an ellipse to at least one of the pixel groups.
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APLNDC00021680
Application No.: 11/677,958
6
Docket No.: 106842508604
25. (original) The touch-sensing device of claim 24 wherein the touch object comprises at
least a portion of a hand.
26. (original) The touch-sensing device of claim 24 wherein the touch object comprises at
least a portion of one or more fingers.
27. (original) The touch-sensing device of claim 24 wherein the touch object comprises at
least a portion of a body part.
28. (original) The touch-sensing device of claim 27 wherein the body part comprises one or
more of a hand, a finger, an ear, or a cheek.
29. (original) The touch-sensing device of claim 24 further comprising means for
transmitting one or more ellipse parameters as a control signal to an electronic or electromechanical
device.
30. (original) The touch-sensing device of claim 27 wherein the touch-sensing device is
integral with the electronic or electromechanical device.
31. (original) The touch-sensing device of claim 24 further comprising:
means for tracking a path of one or more pixel groups through a plurality of time-sequenced
proximity images;
means for fitting an ellipse to at least one of the pixel groups in a plurality successive
proximity images; and
means for tracking a change in one or more ellipse parameters through a plurality of timesequenced proximity images.
32. (original) The touch-sensing device of claim 29 further comprising means for
transmitting the change in the one or more ellipse parameters as a control signal to an electronic or
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APLNDC00021681
Application No.: 11/677,958
7
Docket No.: 106842508604
electromechanical device.
33. (original) The touch-sensing device of claim 32 wherein the touch-sensing device is
integral with the electronic or electromechanical device.
34. (original) The touch-sensing device of any one of claims 24 and 29-33 wherein the
touch-sensing device is fabricated on or integrated with a display device.
35. (original) The touch-sensing device of claim 34, wherein the display device comprises a
liquid crystal display (LCD) or a light-emitting polymer display (LPD).
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APLNDC00021682
CERTIFICATF OF TRANSMISSION UNDFR 37 CFR S 1 A
I hereby certify that this document is being electronically transmitted via the
United States Patent and Trademark Office E -Web
2010..
Signature:
VIA EFS
Docket No.: 106842508604
Client Ref. No.: P3950USCl3
(PATENT)
(Lisa D. Bronk)
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Patent Application of:
Wayne WESTERMAN et al.
Application No.: 11/677,958
Confirmation No.: 1844
Filed: February 22, 2007
Art Unit: 2629
For: ELLIPSE FITTING FOR MULTI-TOUCH
SURFACES
,
Examiner: Koosha Sharifi-Tafreshi
STATEMENT OF SUBSTANCE OF INTERIVEW.
REOUEST FOR CORRECTED OFFICE ACTION.
AND
AMENDMENT IN RESPONSE TO NON-FINAL OFFICE ACTION
MS Amendment
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Sir:
INTRODUCTORY COMMENTS
This is in response to the non-final Office Action dated December 24, 2009, for which a
response is due on March 24, 2010. Reconsideration and allowance of the pending claims, as
amended, in light of the remarks presented herein are respectfully requested.
Amendments to the claims are reflected in the list beginning on page 2 of this paper.
A Request for Corrected Office Action begins on page 8 of this paper
Remarks/Arguments begin on page 10 of this paper.
la-1060965
APLNDC00021683
VIA EFS WEB
Patent
Docket No. 106842508604
Client Reference No. P3950USC13
IN THE UNITED STATES PATENT AND I < =EMARK OFFICE
In re Patent Application of:
Examiner: Koosha Sharifi-Tafreshi
Wayne WESTERMAN et al.
Group Art Unit: 2629
Serial No.: 11/677,958
Confirmation No.: 1844
Filing Date: February 22, 2007
For:
ELLIPSE FITTING FOR MULTI-TOUCH
SURFACES
SUPPLEMENTAL INFORMATION DISCLOSURE
STATEMENT UNDER 37 C.F.R. § 1.97 & § 1.98
MS Amendment
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Sir:
Pursuant to 37 C.F.R. § 1.97 and § 1.98, Applicants submit for consideration in the
above-identified application the documents listed on the attached Form PTO/SB/08a/b. Copies of
foreign documents and non-patent literature are submitted herewith. The Examiner is requested to
make these documents of record.
Applicants would like to draw the Examiner's attention to the fact that document no. 19
(EP-0 546 704) listed on the attached Form PTO/SB/08a/b is the English language counterpart of
document no. 20 (JP-06-083523).
la-1061139
APLNDC00021684
Application No. 11/677,958
VIA EFS WEB
Patent
Docket No. 106842508604
Client Reference No. P3950USCl3
This Supplemental Information Disclosure Statement is submitted:
O
With the application; accordingly, no fee or separate requirements are required.
O
Before the mailing of a first Office Action after the filing of a Request for Continued
Examination under § 1.114. However, if applicable, a certification under 37 C.F.R. § 1.97
(e)(1) has been provided.
O
Within three months of the application filing date or before mailing of a first Office Action
on the merits; accordingly, no fee or separate requirements are required. However, if
applicable, a certification under 37 C.F.R. § 1.97 (e)(1) has been provided.
After receipt of a first Office Action on the merits but before mailing of a final Office Action
or Notice of Allowance.
A fee is required.
A Certification under 37 C.F.R. § 1.97(e) is provided above; accordingly; no fee is
believed to be due.
After mailing of a final Office Action or Notice of Allowance, but before payment of the
issue fee.
O
A Certification under 37 C.F.R. § 1.97(e) is provided above and a Fee Transmittal
form (PTO/SB/17) is attached to this submission in duplicate.
Applicants would appreciate the Examiner initialing and returning the Form
PTO/SB/08a/b, indicating that the information has been considered and made of record herein.
The information contained in this Supplemental Information Disclosure Statement under
37 C.F.R. § 1.97 and § 1.98 is not to be construed as a representation that: (i) a complete search has
been made; (ii) additional information material to the examination of this application does not exist;
(iii) the information, protocols, results and the like reported by third parties are accurate or enabling;
or (iv) the above information constitutes prior art to the subject invention.
la-1061139
2
APLNDC00021685
Application No. 11/677,958
VIA EFS WEB
Patent
Docket No. 106842508604
Client Reference No. P3950USC13
In the unlikely event that the transmittal form is separated from this document and the
Patent and Trademark Office determines that an extension and/or other relief (such as payment of a
fee under 37 C.F.R. § 1.17 (p)) is required, Applicants petition for any required relief including
extensions of time and authorize the Commissioner to charge the cost of such petition and/or other
fees due in connection with the filing of this document to Deposit Account No. 03-1952
referencing 106842508604.
Dated: February 24, 2010
Respectfully submitted,
By: /Gregory S. Weaver, #53,751/
Gregory Weaver
Registration No.: 53,751
MORRISON & FOERSTER LLP
555 West Fifth Street
Los Angeles, California 90013-1024
(213) 892-5399
la-1061139
3
APLNDC00021686
Application No.: 11/677,958
8
Docket No.: 106842508604
REOUEST FOR CORRECTED OFFICE ACTION
The Office Action appears to contain an error that affects Applicants ability to reply, and
therefore, Applicants respectfully request a corrected Office Action with a reset period for reply
under MPEP § 710.06.
The Office Action indicates that Applicants have "failed to further elect species from
... Species 1-4, and ... Species X, Y and Z and is required to [sic, do] this in response to this
action." (Office Action, page 2 (emphasis in the Office Action).) However, the Office Action also
indicates that the restriction requirement is "still deemed proper and is therefore made FINAL."
(Office Action, page 5 (emphasis in the Office Action).) According to 37 CFR § 1.143, because the
Examiner made the requirement final, the Examiner has accepted Applicants' provisional election
of claims as the invention elected:
"In requesting reconsideration [of a restriction requirement] the
applicant must indicate a provisional election of one invention for
prosecution, which invention shall be the one elected in the event the
reguirement becomes final. The requirement for restriction will be
reconsidered on such a request. If the requirement is repeated and
made final, the examiner will at the same time act on the claims to the
invention elected." (37 CFR § 1.143 (emphasis added).)
In other words, Rule 1.143 mandates that if the Examiner makes the requirement final,
the Examiner must at the same time act on the provisionally elected claims as the claims to the
invention elected. In line with the Rule, the Office Action does include a substantive examination
of the claims provisionally elected by Applicants.' However, the Office Action's requirement that
Applicants elect further species contradicts the Rule and results in an ambiguity that affects
Applicants' ability to reply to the Office Action.
* The restriction requirement in the Office Action dated October 27, 2009 indicates "The species are independent or
distinct because claims to the different species rççite thç mutually exghisiyg characteristics of such species" and
"Currently, no claim is generic." (page 3 (emphasis added).) Therefore, the restriction requirement alleges that there
are patentably distinct species claims. The acceptance of Applicants' provisional election of all claims (without
amendment) and substantive examination of all claims is tantamount to an admission that the basis for requiring
restriction is incorrect.
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Application No.: 11/677,958
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Docket No.: 106842508604
If the Examiner intends to maintain the restriction requirement, Applicants request a
corrected Office Action correcting this contradiction, so that the record is clear whether or not there
is a requirement that Applicants elect further species. Under MPEP § 710.06, the corrected Office
Action is a non-fmal action with a reset period for reply.
Alternatively, Applicants note that regardless of the propriety of the restriction
requirement when first asserted, there currently appears to be no rationale for maintaining the
restriction requirement because all of the claims have been searched on the merits and,
consequently, no search burden exists. Furthermore, although the Office Action asserts "searching
for the mutually exclusive characteristics/features would be a search burden for the examiner
because different searches with different keywords would be required for each of the mutuallv Esic,
exclusivel characteristics/features as identified above" (Office Action, page 5 (emphasis added)),
the Examiner's December 14, 2009 Search History (available on PAIR) does not appear to contain
any search keywords that would distinguish between the alleged "mutually exclusive characteristic"
of provisionally elected species A and any alleged mutually exclusive characteristic of another
species of the restriction requirement. In other words, the search actually performed by the
Examiner does not appear to take into account any of the alleged "mutually exclusive
characteristics" of the species, listed on pages 2-4 of the Office Action, on which the restriction
requirement is based. Thus, there is currently no search burden because all of the claims have
already been searched, and because none of the alleged mutually exclusive characteristics were
actually considered in the search anyway.
Because the restriction requirement is moot, Applicants respectfully request that the
Examiner withdraw the restriction requirement. In the case that the restriction requirement is
withdrawn, Applicants withdraw the request for a corrected Office Action and request that the
Examiner continue examination of the application on the merits by entering this paper as a response
to the Office Action. Therefore, if the Examiner withdraws the restriction requirement in lieu of
issuing a corrected Office Action, Applicants respectfully request the Examiner enter the foregoing
amendments and consider the Applicants' following remarks in response to the Office Action.
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Application No.: 11/677,958
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Docket No.: 106842508604
REMARKS
Claims 1-35 are pending in the application. Further examination and reconsideration are
respectfully requested.
Applicants would like to thank the Examiner for the indication of allowable subject
matter in dependent claims 5, 9, 15, and 20. Applicants have chosen not to amend these claims into
independent form because the base claims are believed to be allowable.
Applicants would like to thank the Examiner for the courtesies and thoughtful treatment
afforded to Applicants' undersigned representative during the January 26, 2010 interview. The
foregoing amendments and following remarks reflect the substance of the interview.
Claims 1-3, 6-8, 23-29, 31, and 32 were rejected under 35 U.S.C. § 102(e) over U.S.
Patent No. 5,825,352 (Bisset). The rejections are respectfully traversed. Reconsideration and
withdrawal of the rejections are respectfully requested.
THE OFFICE ACTION'S INTERPRETATION OF "FITTING AN ELLIPSE TO
AT LEAST ONE OF THE PIXEL GROUPS" IS UNREASONABLE IN LIGHT OF
THE PLAIN MEANING OF "FITTING AN ELLIPSE TO" AND, IN
PARTICULAR. DISREGARDS THE REOUIREMENT TO INTERPRET CLAIMS
IN LIGHT OF THE SPECIFICATION
During the interview, the Examiner's interpretation of the feature of "fitting an ellipse to
at least one of the pixel groups" (claim 1) was discussed. Applicants' representative disagreed with
the Office Action's assertion that Bisset's "finger profile" (shown, e.g., in FIG. 7B of Bisset), which
is simply a series of capacitance values measured when a finger contacts a touchpad, discloses the
feature of "fitting an ellipse to ...". Specifically, paraphrasing the Office Action's interpretation,
merely obtaining measured data is the same as fitting an ellipse to the data, so long as the measured
data happens to be measured from an object that "is in general ellipse-like". (Office Action, page
7.) Applicants representative asserted that, under the plain meaning of the language of the claims,
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Application No.: 11/677,958
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Docket No.: 106842508604
without more, one skilled in the art would not interpret "fitting an ellipse to at least one of the pixel
groups" in such a manner. Furthermore, the Office Action's interpretation is particularly
unreasonable when the claim language is viewed in light of the specification, as it must be viewed.
In this regard, Applicants submit that the Office Action fails to consider the disclosure of the
specification when interpreting at least the feature of "fitting an ellipse to at least one of the pixel
groups." In light of the foregoing, Applicants respectfully traverse the rejections.
Nonetheless, claim 1 has been amended to recite mathematically fitting an ellipse to at
least one of the pixel groups. During the interview, the Examiner indicated that the amendment
would overcome the rejections. Claim 10 has been similarly amended. Accordingly, withdrawal of
the rejections of claims 1 and 10 is respectfully requested.
THE OFFICE ACTION FAILS TO MEET THE RELUIREMENT TO EXPLAIN
WHY "MEANS FOR" FEATURES ARE NOT BEING TREATED UNDER 35
U.S.C. 6 112. SIXTH PARAGRAPH
Claim 24 has not been amended. The rejection of claim 24 is respectfully traversed.
Claim 24 includes, among other features, means for fitting an ellipse to at least one of the pixel
groups. In entering the rejection of claim 24, the Office Action does not indicate that this feature, or
any other feature of the claim that begin with "means for," is being treated under 35 U.S.C. § 112,
sixth paragraph. MPEP § 2181(I) requires examiners to state the reasons why a claim limitation that
uses the phrase "means for" is not being treated under § 112, sixth paragraph:
"If a claim limitation does include the phrase "means for" or "step
for," that is, the first prong of the 3-prong analysis is met, but the
examiner determines that either the second prong or the third prong of
the 3-prong analysis is not met, then in these situations, the examiner
must include a statement in the Office action exolainine the reasons
why, a çlaim limitation which uses the phrase "means f9r" gr "step
for" is not being treated under 35 U.S.C. 112, sixth paragraph."
(MPEP § 2181(I) (emphasis added).)
Therefore, the rejection fails to meet the requirement of MPEP § 2181.
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Application No.: 11/677,958
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Docket No.: 106842508604
Even more clearly than with the rejections of claims 1 and 10, the Office Action's
rejection of claim 24 fails to interpret the claims in light of the specification. In asserting that Bisset
discloses a means for fitting an ellipse to at least one of the pixel groups, the Office Action simply
cuts-and-pastes the language used in the rejection of claim 1. Thus, the Office Action apparently
does not interpret the language of the "means for" features of claim 24 as required by law. (See,
e.g., MPEP § 2181 ("a "means-or-step-plus-function" limitation should be interpreted in a manner
different than patent examining practice had previously dictated"); MPEP § 2106(II)(C) ("Where
means plus function language is used to define the characteristics of a machine or manufacture
invention, such language must be interpreted to read on ongthe strugtures or materials disçlosed in
the specifiçation and "eguiyalents thereof' that correspond to the recited function.")(emphasis
added)(citations omitted); Id. ("Thus, at the outset, USPTO personnel must attempt to correlate
claimed means to elements set forth in the written description that perform the recited step or
function. The written description includes the original specification and the drawings and USPTO
personnel are to give the claimed means plus function limitations their broadest reasonable
interpretation consistent with all corresponding structures or materials described in the specification
and their equivalents including the manner in which the claimed functions are
performed.")(emphasis added)(citations omitted).)
Therefore, Applicants have chosen not to amend claim 24. Applicants respectfully
request that, if the rejection is maintained, the Examiner clarify whether the language of claim 24 is
being treated under § 112, sixth paragraph, and if so, the Examiner clarify how he interprets the
language "means for fitting an ellipse to at least one of the pixel groups" to read only on the
structures/materials disclosed in the specification and equivalents thereof including the manner in
which the claims functions are performed. However, in light of the foregoing, Applicants believe
claim 24 is allowable.
The remaining claims depend from the independent claims discussed above, and are
believed to be allowable for at least the foregoing reasons. Therefore, each of the presently pending
claims in this application is believed to be in immediate condition for allowance. Accordingly, the
Examiner is respectfully requested to withdraw the outstanding rejections of the claims and to pass
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Application No.: 11/677,958
'
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Docket No.: 106842508604
this application to issue. If it is determined that a telephone conference would expedite the
prosecution of this application, the Examiner is invited to telephone the undersigned at the number
given below.
In the event the U.S. Patent and Trademark office determines that an extension and/or
other relief is required, applicant petitions for any required relief including extensions of time and
authorizes the Commissioner to charge the cost of such petitions and/or other fees due in connection
with the filing of this document to Deposit Account No. 03-1952 referencing Docket No.
106842508604. However, the Commissioner is not authorized to charge the cost of the issue fee to
the Deposit Account.
Dated: February 24, 2010
Respectfully submitted,
By /Gregory S. Weaver, #53,751/
Gregory Weaver
Registration No.: 53,751
MORRISON & FOERSTER LLP
555 West Fifth Street
Los Angeles, California 90013-1024
(213) 892-5399
la-1060965
APLNDC00021692
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