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

Filing 628

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)

EXHIBIT J

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United Stales Patemt and Trademark Office
Address’, COMMISSIONER FOR PATENTS
P.O. Be>: 1450
Atexandda. Virglni~ 22313-1450
www.u|pto,gov

APPLICATION NO,

[

111778,466
681133

F|LINO DATE

I

D7/16,’2007
7590

Fffi.ST NAMED INVENTOR

IATTORNEY DOCKET NO, I

CONFIRMATION NO.

Moon-S~ng JEONG

0201-0055

1475

02128/2008

Jefferson IP Law, LLP
1730 M Street, NW

Suite 807
Washington, DC 20036

]

EXAMINER

70, JEIff~q]FER N
[

ART UNIT

[

PAPER NUMBER

2195

MAIL DATE
02/2812008

I

DELIVERY MODE
PAPER

I
I
I
I

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. 04t~}7)

APLNDC-WH-A 0000016928

Application No.
11/778,466

Office Action Summary

Examiner

Applicant(s)
J EON G, MOON-SANG
Art Unit

JENNIFER N. TO
2195
-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE .~ MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
Extensions of time may be available under the provisiot~s of 37 CFR 1.136(a). Innoevent, however, may a reply be timely filed

after SIX (6) MONTHS from the mailing date of this c~mmunication.

If NO period for reply is speci~ed 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 pedod for reply will, by statute, cause the application to become ABANDONEO [35 US.C. § 133).

Any reply received by the Office later than three months after the mailing date of this cammunicalion, even if timely filed, may reduce any
earned paLent lerm adjustment. See 37 CFR 1.704(b).

Status
1)[~ Responsive to communication(s) filed on 08 January 2008.
2a)[~3 This action is FINAL.
2b)r-] This action is non-final.
3)[-] Since this application is in condition for allowar~ce except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parle 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(a) __ is/are allowed.
6)[~ Claim(s) 1-20 is/are rejected.
7)[--I Claim(s) __ is/are objected to.
8)~’-~ Claim(s) ~ are subject to restriction and/or e~ecti0n requirement.
Application Papers
9)r-] The specification is objected to by the Examiner.
10)[--] The drawing(s) filed on ~ is/are: a)~--] accepted or b)[-] objected to by the Examiner.
Applicant may not request that any objection Io the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 C FR 1..121 (d).
11)[-’] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
Priority under 35 U.S.Co § 119
¯ 12)[’-} Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §
a)l’-] All b)l~ Some ° c)~-] None of:
1.1--1 Certified copies of the priority documents have been received.
2.i--I 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.

Attachment(s)
1) [] Notice of References Cited (PTO-892)
2) [] Notice of D~aftsperson’s Patent Drawing Review (P’1~O-948)
3) [] Information Disclosure Statement(s) (PTOtSBt06)
Paper No(s)/Mail Date __
u.s, Patent and Trademark Office
PTOL-326 (Rev. 08-06)

4) [] tnterview Summary (PTO-413).
Paper No(s)/Mail Date. ~.
’ 5) [] Notice ~f Informal Patent Application
6) [] Other:__

Office Action Summary

Part of Paper No./Mail Date 20080221

APLNDC-WH-A 0000016929

Application/Control Number: 11/778,466
Art Unit: 2195

Page 2"

DETAILED ACTION
Claims 1-20 are pending for examination.

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 pdor 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 sub oct matter pertains. Patentability shall not be negatived by the manner in which the
invention was made.

3.

Claims 1-2, 6-10, 14-18, and 20 are rejected under 35 U.S.C. 103(a) as

being unpatentable over KOKU BO (U.S. Patent 7,123,945) in view of SENPUKU
(U.S. Patent Publication 2005/0083642).

4.

KOKUBO and SENPUKU were cited in the previous office action.

As to claim 1, KOKUBO teaches a multi-tasking method in a pocket-sized
mobile communication device including a MP3 playing capability, the multitasking 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 ca[ried out / the audio player software is
active) (col. 12, lines 44-47; col. 13, lines 4-10); selecting andplaying 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

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Page 3

44-47; col. 13, lines 4-10); and switching the pocket-sized 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 /
other application ! other task is executed on the main display) (col. 13, lines 4-22;
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
- dol. 10, line 19; col. 10, lines 54-62); and continuing to displaythe 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, ~tisplaysthe 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 plurality of
applications (pg. 6, paragraph 0105) and b) switching between applications
wherein when the sub-display is open the application currently executing on th~
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

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Application/Control Number: 11/778,466
Art Unit: 2195
display is continue~l execution while the other executing al~plications are
continued in the background (pg. 6, paragraph 0105). SENPUKU outlines that
p~rallel execution of applicationsallow 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 0101~), and details wherein
when the sub-display is shown, the applications on the main display are
displayed on the sub-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 application 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 standby mode while the playing of the music file continues since
playing music files is a mobile communication device application fur~ction (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

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Page 5

(via the sub-display); the selecting and performir~g at ~east 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
I~laying of the music file is shown in the sub-display and the main display allows
users to select other functi0ns/applications to execute in the main display whiclfi
neither paraflel executing applications have any relationship to one another.
Tl~erefore, it would be obvious to one of ordinary skill in the art io combine the
teachings of-KOKUBO with the teachings of S£NPUKU 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 switchi.ng execution between
selected functions wherein the functions are a telephone function or a message

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Art Unit: 2195

Page 6

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---col. "~0, 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 telepho~qe to call a registered number. SENPUKU teaches
that the switching of tasks on a mobile 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 cfaims 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. In addition, KOKUBO teache~ a pocket
communication device consisting of a single display unit (col. 14, lines 52-54).

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Application/Control Number: 11/778,466
Art Unit: 2195
5.

Page 7

Claims 3-5, 11-13 and 19 are rejected under 35 U.S.C. 103(a) 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).

6.

KOKUBO, SENPUKU, and NIRHAMO were cited in the ~reviousoffice

action.

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-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,amusician, and an album title.
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 andartist (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

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Application/Control Number: 111778,466
Art Unit: 2195
that it indicates information associated with a music file, e.g. the title or musician.
Therefore,. it 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
abo’~e.

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.

Response to Arguments
7.

Applicant’s arguments filed 01/08/2008 have been fully considered but

they are not persuasive.

8.

In the remark, applicant argued that KOKUBO and sENPUKU fail to teach

or suggest (1) switching the pocket-sized mobile communication device from the
MP3 mode to a standby mode while the playing of the music file continues; (2)
single dispiay unit.

9.

Examiner respectful disagreed with applicant.

APLNDC-WH-A 0000016936

Application/Control Number: 1 1/778,466
Art Unit: 2195

Page 9

As to point (1), applicant is reminded that examiner-rejected claims 1, 9
based on the teaching of KOKUBO, and in view of SENPUKU. Thus, applicant
couldn’t attack the reference indivicIually. KOKUBO teaches a system that
switching the.execution of task A and its as.sociated display (the execution of task
A is an MP3 mode) while the execution of task A is continued (while the playing
of the music continues) to execution of task B (figs. 4A-4B; col. 9,’lines 56-67).
Thus the execution mode of task A is switching to "another mode". While "
KOKUBO did not specifically disclosed what is the mode that the execution of
task A is in. However, SENPUKU teaches whenthe execution of task A is switch
to the execution of task B, the displaY association with the execution of task A
being executed in the main display is now displayed in a sub-display (paragraphs
[0100], [0090]). Thus SENPUKU teaches the execution mode of task A is switch
to a standby mode. Thus, the combination of KO ~KUBO and SENPUKU teach
switching the pocket-sized mobile communication device from the MP3 mode to
a standby mode while the playing of the music file continues. In addition,
applicant seemto give a weight to the term "standby mode", however, the
specification is not defined what is applicant consider as "standby mode" that is
consider as different from the references..
As to point (2), KOKUBO teaches a pocket communication device
consisting of a single display unit (col. 14, lines 52-54). ¯

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Page 10

Conclusion
10. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
CAO et al. teaches a multitasking communication device that capable of
switching from one task to another.
SONY. ERICSSON teaches a multitasking communication device (cell
phone that allowing a user to perform multipie functions). Specifically, SONY
teaches switching the device from the MP3 mode to a standby mode while the
playing music continues (pages 9-10, 49"-50).

11. TH!S ACTION IS MADE. FINAL. 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 thi.~ 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 mailing.
date of this final action.

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Application/Control Number: 11/778,466 "
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Page 11

12. Any inquiry concerning this communication or earlier communications from
the examiner should be directed to JENNIFER N. TO whose telephone number is
[phone]. The examiner can normally be reached on M-T 6AM- 3:30 PM,
F 6AM- 2:30 PM.

13. If attempts to reach the examiner by telephone are unsuccessful, the
examiner’s supervisor, Meng-Ai An can be reached on [phone]. The fax
phone number for the organization where this application or proceeding is
ass!gned is 571-273-8300.

14. 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://pairdirect.uspto.gov. Should you have questions on. access to the Private PAIR
system, contact the Electronic Business Center (EBC) at 866-217-9197 (tollfree). If you would like assistance from a USPTO Customer Service
Representative or access to the automated information system, call 800-7869199 (IN USA OR CANADA) or 571-272-1000.

CENTER 2100

APLNDC-WH-A 0000016939