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 L
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTM ENT OF COMMERCI~
Add~’~s: COMMISSIONER FOR PATENTS
APPLICATION NO.
FILING DATE
I 1t778,466
07/16/2007
I
FIRST NAMED INVENTOR
I^ ORNE = ETN0. I CONF,
Moon-Sang JEONG
0201-0055
1475
01/26~009
J~’ff’~rson IP Law, LLP
I ":30 M Street, NW
TO, JENNIFER N
Suite 807
Washinstono DC 20036
2195
MAIL DATE
0 ]/26/’2~)09
I
DELIVERY MODE
PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for ~’eply, if any, is set in the attached communication.
PTOL-90A (Rcv. 04107)
APLNDC-WH-A 0000017045
Application No.
Applicant(s)
111778,466
JEONG, MOON-SANG
Examiner
Office Action Summary
Art Unit
JENNIFER N. TO
2195
o, TI~ MAILING DATE of =his 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 tt, e provisions of 37 CFR ~. t 36(a). In no event, t’.owever, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
- tf NO period for reply is specifte~, above, the maximum s~atutort period will appty and wilt expire SIX (6) MONTHS from 1P, e mailing ~a’~e of this communication.
- Failure to reply within the set or ex~ended period for reply will, by slatute, cause the applicalion to become ABANDONED (35 U.S.C. § 133)¯
Any reply received by the Office late~ than three months after the rnailing clare of this communicalion, even if timely I~led, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).
Status
1)~;;~ Responsive to communication(s) filed on 29 December 2008.
2a)[~ This action is FINAL.
2b)i--] This action is non-final.
3)[--I 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
4)[~ Claim(s) 1-20 islare pendin9 in the application.
4a) Of the above claim(s) __ is/are withdrawn fiom consideration.
5)1--I Claim(s) ~ is/are allowed.
6){~ Claim(s) 1.20 is/are rejected.
7){--~ Claim(s) ~ is/are ob.~ected to.
" 8)[--I Claim(s)~ are subject to restriction and/or election requirement.
Application Papers
9)r-] The specification is objected to by the Examiner.
10)[--I The drawing(s) filed on _~ is/are: a)l-] accepted or b)[--I objected to by the Examiner.
Applicant may not request that any objection to the drawi~gls) be held in abeyance. See 37 CFR t85(a).
Replacement drawing sheet(s) including the correction is required if the drawing{s) is objected to. See 37 CFR 1.121(d)..
11 )i--i 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)[-] All b)r"] Some" c)l-’l None of:
1.1-"1 Certified copies of the priority documents have been received.
2.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
applicatibn from the International Bureau (PCT Ru!e 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-Sg2)
2) [] Notice of Dra~sperson’s Patent Drawing Review (PTO-948}
3) [] Information Disclosure Statement(s) (PTOtSB/OS)
Paper No(s)lMail Date 11/03/2008 & 12/29/2008,
U.S. Patent and Traderna~ Office
PTOL-326 (Rev. 08-06)
Office Action Summary
4) [] Interview Sunnma~,. (PTO.413)
Paper No(s}lMail Date. ~.
5) [] Notice of Informal Patent Application
6) [] Olher: __
Par~ of Paper No,lMail Date 20090113
APLNDC-WH-A 0000017046
Application/Control Number: 11/778,466
Art Unit: 2195
Page.2
DETAILED ACTION
1.
Claims 1-20 are pending for examination.
Claim Rejections - 35 USC § 103
2.
The followihg is a quotation of 35 U.S.C. I03(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 dot identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject mailer 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 subjecl matter pertains. Patentabifity 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), in view ofKIM (U.S. Publication No. 2006/0036569), and further in
view of ROBERTSON (U.S. Publication No. 2002/0067308).
4.
KOKUBO, SENPUKU, and ROBERTSON were cited in the previous office action.
5.
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: providing an interface for music play by the music background play object (col. 12,
lines 44-47; col. 13, lines 4-10); 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
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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 pocket-sized mobile
communication device from the MP3 mode (audio player mode) to another application (switch to
telephone call softwar~ / other application software via the input / call keys) (col. I3, 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 ! 6-30). 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 (pg. 6, paragraph
0090). SENPUKU further details that when the sub-display is closed, the active screen on the.
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Page 4
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 mair~ 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-display and a standby screen is shown on the main display (pg. 7, paragraph 01 I0; fig. 18).
Offic~ial 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 ihe 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).
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
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Page 5
(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 playin~ 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 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).
8.
The combination ofKOKUBO and SENPUKU did not specifically teach generating a
music background play object in a standby mode 0fthe device.
9.
However, KIM teaches generating a music background play object in a standby mode of
the device (abstract, paragraphs [0016], lines ~ 0-13; [0032], [0036], creating thump icon in the
background screen).
10. It would have been obvious to one of an ordinary skill in the art at the time the invention
was made to have combined the teaching of KOKUBO, SENPUKU, and KIM because KIM
teaching of generating a music background play object (thump icon) in a standby mode
(background screen) of the device would improve the integrity of KOKUBO and SENPUKU’s
system by allowing user to select a background screen suitable for present task from a variety of
background screens to thereby increasing task efficiency (KIM, abstract).
APLNDC-WH-A 0000017050
.Application/Control Number: 11/778,466
Art Unit: 2195
11.
page 6
The combination of KOKUBO, SENPUKU, and KIM did not specifically teach a touch
screen, and using the touch screen to perform the selecting, switch, and displaying steps.
12.
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).
13. It would have been obvious to one of an ordinary skill in the art at the time the invention
was made to have combined the teaching of KOKUBO, SENPUKU, KIM and ROBERTSON
because ROBERTSON t+aching 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, SENPUKU, and KIM’s system by reducing the complexity of mobile
communication device (i.e. combined the input and output device into one), and also allowing
the u~er to enter and view information in a friendly environment.
14. As to claim 2, KOKUBO teaches displaying of the indication comprises displaying an
icon (col. 13, lines 4-10; col. 14, lines 17-31)~
15. 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
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Page 7
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).
16. A,s 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 functionsincluding 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. 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.
17. 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.
18. 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 ~;nd 6 above. In
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¯ Application/Control Number: 111778,466
Art Unit: 2195
addition, KOKUBO teaches a pocket communication device consisting of a.single display unit
(col. 14, lines 52-54).
19. Claims 3-5, I 1-13 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), in view ofKIM (U.S. Publication No. 2006/0036569), and further in view of
ROBERTSON (U.S. Publication No. 2002/0067308), as applied to claims 1,9 and 17 above, and
further in view of.NIRHAMO (U.S. Patent Publication 2006/0246955).
20. KOKUBO, SENPUKU, ROBERTSON, and NIRHAMO were cited in the p[evious office
action.
21.
As to claims 3-5, the combination ofKOKUBO, SENPUKU, KIM, 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 subdisplay (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.
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22. 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).
;
23. 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, KIM and NIR_HAMO in order to enhance the presentation, navigation, selection
and/or operation options for mobile devices (pg. 1, paragraph 0003-0004).
24.
As to claims 11-1.3, 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.
25. 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
26. . Applicant’s arguments with respect to claims 1-20 have been considered but are moot in
view of the new ground(s) of rejection..
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¯ Application/Control Number: 11/778,466
Art Unit: 2195
Conclusio.
2?. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to JENNIFER’N. TO whose telephone number is (57 I)272-7212.
The examiner can normally be reached on M-T 6AM- 3:~0 PM, F 6AM- 2:30 PM.
28. If attempts to reach ~he examiner by telephone are unsuccessful, the examiner’s
supervisor, Meng-Ai 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.
29. Information regarding the status of an application may be obtained from the Patent
Applicationlnformation Retrieval (PAIR) system. Status information for published applications
may be obtained fromeither Private PAIR or Public PAIR. Status information for unpublished
appiications 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 ElectronicBusiness Center (EBC) at 866-217-9197 (to!l-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.
/Jennifer N. To/
Patent Examiner
AU 2195
L~’WIS A. BULLOCK, JR,
SUPERV~SOF,’~’ ; ;, -.. ,T EXAMlNEF~
APLNDC-WH-A 0000017055
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