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 K

UNITED STATES PATENT AND TRADEMARK OFFICE
I~NITED STA’FF~q DEPARTMENT OF COMMERCE
United Sta~cs Paten! and Trademark Office

APPLICATION NO.
l 1/778,466

]

FILING DATE
07/16/2007

1

FIRST NAMF~I INVENTOR

ATTORNEY DOCKETNO. I CONF!RMATION NO.

Moon-Sang JEONG

Jefferson IP Law, LLP
1730 M S~eet, NW

0201-0055

1475

I
~o. ~ ~

Suite 807

W~hington, DC 20036
2195

MAIL DATE
08/01/2008

|

DELIVERY MODE
PA PER

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)

APLNDC-WH-A 0000016975

Application No.
11/778,466
Examiner

Office Action Summary

Applicant(s)
JEONG, MOON-SANG
Art Unit

JENNIFER N. TO
2195
-- The MAILING DATE 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 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THiS COMMUNICATION.
Extensions of time may be available under the provisions of 37 CFR l.t36(a). In no event, however, may a reply be timely filerJ
after SIX (6) MONTHS from the roailing date of this communication.
- If NO period for reply is specified above, the maximum stalutory period will apply and will expire SIX (6) MONTHS from the mailing date of this cemmunication.
- Failure to reply w~lhin the set or extended period for reply will, by statute, cause the application Io become ABANDONED (35 U.S.C. § 133).

Any reply reCeived by the Office later lhan three months after the mai[ir~g date of this communication, even if timely filed, may’ reduce any
earned patent term adjustment. See 37 CFR 1

Status
1 )[~ Responsive to communication(s) filed on 27 May 2008.
2a)[’-~ This action is FINAL.
2b)[~ This action is non-final.
3)[--1 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 Exparte 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)_ istare withdrawn from consideration.
5)r-] Claim(s)__ is/are allowed.
6)[] Claim(s) !-20 is/are rejected.
7)[--1 Claim(s)__ is/are objected to.
8)1"--I Claim(s) ~ are subject to restriction and/or election requirement.
Application Papers
9)[--I The specificat!on is objected to by the Examiner.
10)[-] 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 drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 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.C. § 119
12)[-] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)l--I All b)r-] Some * c)[--I None of:
l.r-] Certified copies of the priority documents have been received.
2.[-"1 Certified copies of the pdority 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.

Attachment(s)
1) [] Notice of References Cited (PTO-892)
2) [] Notice of Draftaperson’s Patent Drawing Review (PTO-948)
3) [] Information Disclosure Statement(s) (PTO/SB/08)
Paper No(s)/Mail Date __
U.S. Patent and Trademark Office
PTOL-326 {Rev. 08-06)

Office Action Summary

4) [] Interview Summary (PTO-413)
Paper No(s)/Meil Dale. __
5) [] Notice of Informal Patent Application
6) [] Other:__
Part of Paper No./Mail Date 20080723

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

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DETAILED ACTION
Claims 1-20 are pending for examination.

Claim Rejections - 35 U$C § 103
2.

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

obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

3.

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
Publication 2005/0083642), and further in view of Robertson (U.S. Publication No.
2002/0067308).

4.

5.

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 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

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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 /
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 - 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.

6. 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 the main display is displayed in sub-display

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

(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 subdisplay 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
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).

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Application/Control Number: 11/778,466
Art Unit: 2195
7.

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
another. Therefore, it would be obvious to one of ordinary skirl 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).

8. The combination of KOKUBO and SENPUKU did not specifically teach a touch
screen, and using the touch screen to perform the selecting, switch, and displaying
steps.

9. However, ROBERTSON teaches a mobile communication device including a
touch screen and the touch screen being used as an input and output device (fig. 1,
item 14; abstract; the mobile communication device comprise a LCD including the touch
screen enable the user to enter and display information).

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10. It would have been obvious to one of an ordinary skill in the ar~ at the time the
invention was made to have combined the teaching of KOKUBO, SENPUKU, and
ROBERTSON because ROBERTSON teaching of a mobile communication device
including a touch screen and the touch screen being used as an input and output device
would improved the integrity of KOKUBO and SENPUKU’s system by reducing the
complexity of mobile communication device (i.e. combined the input and output device
into one), and also allowing the user to enter and view information in a friendly
environment.

11. As to claim 2, KOKUBO teaches displaying of the indication comprises displaying
an icon (col. 13, lines 4-10; col. 14, lines 17-31).

12. As to claim 6, KOKU BO 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).

13. 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,

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lines 54-62) and switches between the software performing these different tasks (col. 9,
line 56~col. 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
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.

14. 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.

15. 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 teaches a pocket communication device consisting
of a single display unit (col. 14, lines 52-54).

16. Claims 3-5, 11-13 and 19 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
Publication 2005/0083642), and further in view of ROBERTSON (U.S. Publication No.

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2002/0067308), as applied to claims 1,9 and 17 above, and further in view of
NIRHAMO (U.S. Patent Publication 2006/0246955).

17.

KOKUBO, SENPUKU, and NIRHAMO were cited in the previous office action.

18. As to claims 3-5, the combination of KOKUBO, SENPUKU, and ROBERTSON
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, a musician, and an
album title.

19. 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).

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20. 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, 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).

21. 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.

22. 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
23. Applicant’s arguments with respect to claims 1-20 have been considered but are
moot in view of the new ground(s) of rejection.

Conclusion
24. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure (see attached PTO 892 form for details).

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25. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to JENNIFER N. TO whose telephone number is (571)2727212. The examiner can normally be reached on M-T 6AM- 3:30 PM, F 6AM- 2:30 PM.

26. 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 assigned is 571-273-8300.

27. 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 system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Meng-Ai An/
Supervisory Patent Examiner, Art Unit 2195

Jennifer N. To
Patent Examiner
AU 2195

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AppLication/Control Number: 111778,466
Art Unit: 2195

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