Apple Inc. v. Samsung Electronics Co. Ltd. et al
RESPONSE to re 623 Order on Administrative Motion to File Under Seal, Apple Inc.s Responsive Claim Construction Brief, Refiled by Court Order (D.N. 623) by Apple Inc.(a California corporation). (Attachments: # 1 Declaration of Mark D. Selwyn in Support of Apple's Responsive Claim Construction Brief, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K, # 13 Exhibit L, # 14 Exhibit M, # 15 Exhibit N, # 16 Exhibit O, # 17 Exhibit P, # 18 Exhibit Q, # 19 Exhibit R, # 20 Exhibit S)(Selwyn, Mark) (Filed on 1/13/2012)
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United Slates Patent and Trademark O[Bce
Address: COMM/SS2ON;:R FOR PATENTS
Jefferson IP Law, LLP
1730 M Street, NW
Washington, DC 20036 [
BULLOCK JR, LEWIS ALEXANDER
] 2/I 2,’2007
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 (Rrv, 04/07)
Office Action Summary
Lewis A. Bullock, Jr.
. -- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -Since this application has been granted special status under the accelerated examination program,
NO extensions of time under 37 CFR 1.136(a) will be permitted and a SHORTENED STATUTORY PERIOD FOR
REPLY IS SET TO EXPIRE:
ONE MONTH OR THIRTY (30) DAYS, WHICHEVER IS LONGER,
FROM THE MAILING DATE OF THIS COMMUNICATION - if this is a non-final action or a Quayle action.
(Examiner: For FINAL actions, please use PTOL-326.)
The objective of the accelerated examination program is to complete the examination of an application within twelve
months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will
be expe6itiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the
application may occur later than twelve months from the filing of the application.
1)[-I Responsive to communication(s) filed on ~
2)[-] 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)~;~ Claim(s) 1-20 is/are pending in the application.
3a) Of the above claim(s) __ is/are withdrawn from consideration.
4)[-I Claim(s) __ is/are allowed.
5)~;;~] Claim(s) !-20 is/are rejected.
6)[--1 Claim(s) __ is/are objected to.
7)r-~ claim(s) __ are subject to restriction and/or election requirement.
8)[’-} The specification is objected to by the Examiner.
9)[-J The drawing(s) filed on __ is/are: a)[-I accepted or b)[~ 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).
Replacement drawir~g sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
10)[’-’] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
Priority under 35 U.S.C. § 119
11)~] Acknowledgment is made of a claim for foreigr~ priority under 35 U.S.C. § 119(a)-(d) or (f).
a)~;;~] All b)[-I Some * c)[-’] None of:
1.C~ Certified copies of the priority documents have been received.
2J--I Certified copies of the priority documents have been received in Application No. __
3.r-] 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.
1)  Notice of References Cited (PTO-892)
2)  Notice of Draflsperson’s Patent Drawing Review (PTO-948)
3)  Information Disclosure Statement(s) (PTO/SB/08)
Paper No(s)/Mall Date ~.
PTOL-326AE (Rev. 08-06)
Office Action Summa~
4)  Inle~view Summary (PTO-413)
Paper No(s)fMail Date. __
5)  Notice of Informal Palent Application
6)  Other: __.
Part of Paper No./Mail Date 20071128
Art Unit: 2195
Claim Rejections. 35 USC § 103
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 subiect matter as a whole would have been obvious at the time the
invention was made to a parson 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.
Claims 1, 2, 6-10, 14-18 and 20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over KOKUBO (U.S. Patent 7,123,945) in view of SENPUKU (U.S. Patent
As to claim 1, KOKUBO teaches a multi-tasking method in a pocket-sized mobile.
communication device including a MP3 playing capability, the multi-tasking method
comprising: selecting an MP3 mode in the pocket-sized mobile communication device
(an audio screen is displayed on the main display unit, reproduction processing of audio
data is carried out / the audio player software is active) (col. 12, lines 44-47; col. 13,
lines 4-10); selecting and playing a music file in the pocket-sized mobile communication
device in MP3 mode (via the audio screen to the audio player allowing the user to
listening to music) (col. 12, lines 44-47; col. 13, lines 4-10); and switching the pocketsized mobile communication device from the MP3 mode (audio player mode) to another
application (sWitch to telephone call software / other application software via the input /
call keys) (col. 13, lines 10-22; col. 13, lines 23-41); displaying an indication that the
music file is being played (via displaying the music icon on the sub-display and moving
the display of the music application / music player / task such that the main display !
Art Unit: 2195
other application / other task is executed on the main display) (col. 13, lines4-22; col. 9,
line 57 - col. 10, line 19; col. 10, lines 54-62); selecting and performing at least one
function of the communication device while the playing of the music file continues (via
continuing to play the music file in the sub-display while the new task / application
executes in the main display) (col. 13, lines 4-22; col. 9, line 57 -col. 10, line 19; col.
10, lines 54-62); and continuing to display the indication that the music file is being
played while performing the selected function (via the display of the icon of the music
file) (col. 14, lines 16-30). Although KOKUBO teaches that applications are parallel
executed and switched from the main display to the sub-display, KOKUBO does not
explicitly detail that the switching to the sub-display, displays the standby state / mode,
e.g. the standby screen.
SENPUKU teaches a mobile communication device that executes a plurality of
applications and allows for a) parallel execution of a piurality of applications (P9.6,
paragraph 0105) and b) switching between applications wherein when the sub-display is
open the application currently executing on the main display is displayed in sub-display
(pg. 6, paragraph 0090). SENPUKU further details that when the sub-display is closed,
the active screen on the display is continued execution while the other executing
applications are continued in the background (pg. 6, paragraph 0105). SENPUKU
outlines that parallel execution of applications allow for the content displayed on the
main display to not have a relation to the contents of the sub display, thereby being
independent application execution (pg. 6, paragraph 0106), and details wherein when
the sub-display is shown, the applications on the main display are displayed on the sub-
Art Unit: 2195
display and a standby screen is shown on the main display (pg. 7, paragraph 0110; fig.
18). Official Notice is taken in that it is well known in the art that applications are
invoked for execution from the desktop / menu of the standby screen and since the two
displayed contents do not need to have any relation, e.g. independent application
execution, the applicatiQn executing ! moved on / to the sub-display does not have any
relation to the application that is potentially invoked in the main display. It would be
obvious to one of ordinary skill in the art that the combination of references allow for the
switching from the MP3 mode to a stanclby mode while the playing of the music file
continues since playing music files is a mobile communication device application
function (see KOKUBO reference) and the opening of the sub-display (another function
/ key or input combination) moves the application executing on the main display to the
sub-display (based on the KOKUBO reference teaching the main display initially
displaying a music playing application and moving it to a secondary display) such that
the main screen is now operating in standby mode (displaying a standby screen) (see
SENPUKU). The combination of references also obviously teaches displaying an
indication that the music file is being played in the standby mode (via the sub-display);
the selecting and performing at least one function of the mobile communication device
from the standby mode (standby screen) while playing the music file; and continuing to
display the indication that the music file is being played while performing the selected
function, since the continuing playing of the music file is shown in the sub-display and
the main display allows users to select other functions/applications to execute in the
main display which neither parallel executing applications have any relationship to one
Art Unit: 2195
another. Therefore, it would be obvious to one of ordinary skill in the art to combine the
teachings of KOKUBO with the teachings of SENPUKU in order to facilitate the improve
user interfaces to handle the execution of a plurality of application programs (pg. 1,
paragraph 0004, 0006).
As to claim 2, KOKUBO teaches displaying of the indication comprises disPlaying
an icon (col. 13, lines 4-10; col.. 14, lines 17-31).
As to claim 6, KOKUBO teaches selecting to continue the playing of the music
file (via once task B is finished execution, continuing the execution of task A, the playing
of music, back onto the main display) (col. 14, lines 17-30; see col. 7, line 65 - col. 8,
line 36 for how this is performed via the pointer-type icon without stopping the execution
of the music player).
As to claims 7 and 8, KOKUBO teaches the switching execution between
selected functions wherein the functions are a telephone function or a message function
/via the portable telephone is equipped with multiple functions including telephone
calling functions and creation, transmission, and reception of e-mail functions) (col. 10,
lines 54-62) and switches between the software performing these different tasks (col. 9,
line 56---co1.10, line 21; col. 10, lines 59-62). It is obvious to one of ordinary skill in the
art that a telephone calling function invokes the phone book of the telephone to call a
registered number. SENPUKU teaches that the switching of tasks on a mobile
Art Unit: 2195
telephone involves moving the current function to the sub-display and displaying the
standby screen. It is well known in the art that the stand-by screen allows for users to
invoke functions for execution. Therefore, the combination with the support of the well
known teachings discloses the limitations as detailed, e.g. invoking phonebook /
messaging functions via a standby screen.
As to claims 9, 10 and 14-16, reference is made to an apparatus that
corresponds to the method of claims 1, 2 and 6-8 and is therefore met by the rejection
of claims 1, 2 and 6-8 above.
As to claims 17, 18 and 20, reference is made to an apparatus that corresponds
to the method of claims 1, 2, and 6 and is therefore met by the rejection of claims 1, 2
and 6 above.
Claims 3-5, 11-13 and 19 are rejected under 35 U.S.C. 103(~) as being
unpatentable over KOKUBO in view of SENPUKU as applied to claim 1 above, and
further in view of NIRHAMO (U.S. Patent Publication 2006/0246955).
As to claims 3-5, the combination of KOKUBO and SENPUKU substantially
discloses the switching of playing MP3 music, e.g. MP3 mode, to standby mode by
switching the MP3 music playing to a sub-display wherein an icon is displayed in the
sub-display (col. 13, lines 4-10; col. 14, lines 17-31). KOKUBO also details that sub-
Art Unit: 2195
display displays the icons, data and the like, including apparatus statuses, such as
signal field strength, remaining batter capacity, the time, information on apparatus
settings, presence of stored data and the like, through the icons and the like (col. 7,
lines 3-17). However, the cited combination does not teach that the data indicates the
information about the music file, i.e. at least one of a music title, a musician, and an
NIRHAMO teaches the display of header or other indicia notifying what current
software application is currently being run and a list of selections or selectable items
played with/on/by the software application, including the song title and artist (see pg. 3,
paragraph 0035). It is obvious based on the combination that since the icon is an
indication that the application is currently execution (KOKUBO) that the other data is "
stored / displayed with the icon such that it indicates information associated with a
music file, e.g. the title or musician. Therefore, !t would be obvious to combine the
teachings of KOKUBO with the teachings of SENPUKU and NIRHAMO in order to
enhance the presentation, navigation, selection and/or operation options for mobile
devices (pg. 1, paragraph 0003-0004).
As to claims 11-13, reference is made to an apparatus that corresponds to the
method of claims 3-5 and is therefore met by the rejection of claims 3-5 above.
As to claim 19, reference is made to an apparatus that corresponds to the
method of claim 3 and is therefore met by the rejection of claim 3 above.
Art Unit: 2195
Relevant Prior Art
U.S. Patent Publications 2006/0135198; 2006/0211454; 2006/0229106 and
2007/0225022 detail various parts of the embodiment wherein one of the references
teach switching the execution of task from a standby state/screen (U.S. Patent
This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136
and has a shortened statutory period of ONE (1) MONTH or THIRTY (30) DAYS,
whichever is longer. Since this application has been granted special status under the
accelerated examination program, NO extensions of time under 37 CFR 1.136(a) will be
The objective of the accelerated examination program is to complete the
examination of an application within twelve months from the filing date of the
application. Any reply must be filed electronically via EFS-Web so that the papers will
be expeditiously processed and considered. If the reply is not filed electronically via
EFS-Web, the final disposition of the application may occur later than twelve months
from the filing of the application.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Lewis A. Bullock, Jr. whose telephone number is (571)
Art Unit: 2195
272-3759. The examiner can normally be reached on Monday-Friday, 8:30 a.m. - 5:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
supervisor, Meng An can be reached on (571) 272-3756. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR systeml contact the Electronic
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LEWIS A. B,I~LI.OCK, JR.
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