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 M

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES D]~PARTMENT OF COMMERCE
Uniled SIIIlcs Patenl and Ttadem~ark Ofl]¢e
Ad~ct~s: COMMISSIONER FOR PA~S

APPLICATION NO.

[

I I/"/78,466

FILING DATE

FIRST NAMED INVENTOR

jA’I~OKNEY DOCKET NO. [

CONFIRMATION NO.

07116/2007

Moon-Sang )’EONG

0201-0055

1475

Jefferson IP Law, LLP
] 730 M Street, NW
Suite 807

J

"

I

TO, JETqN]FER N

J

Washington, DC 20036

MAIL DATE

05/27~009

]

DELIVERY 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 (Rcv. 04/07)

APLNDC-WH-A 0000017078

Application No.
11t778,466
Office Action Summary

Examiner

Applicant(s)
JEONG, MOON-SANG
Art Unit

JENNIFER N~ TO
2195
.- The MAILING DA TE of this communication appears on the cover sheet with the correspQndence 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 MA[LtNG DATE OF THIS COMMUNICATION.
Exlensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
If NO period tot reply is speci~ecl above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mmling date of this ~ommunicati0n.
Failure to reply within the set or extended period for reply will, by statute, cause the al)plication to become ABANDON EO (35 US.C, § 1
Any reply received by the Oflice later than three months after the mailing dale of this communication, even if timely flied, may reduce any
earned pa~e~,t term adjustment. See 37 CFR 1

Status
1 )~] Responsive to communication(s) filed on 16 April 2009.
2a)[] This action is FINAL.
2b)r-] This action is non-final.
3)[-’~ Since this application is in condition for a~lowance except for forma~ matters,, prosecution as to the merits is
closed in accordance with the practice under Ex part? 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 consic~eration.
5)1--~ Claim(s) __ is/are allowed.
6)~;;~ Claim(s) 1-20is/are rejected.
7)lJ--]’ Claim(s) ~ is/are objected to.
8)r-] claim(s) __ are subject to restriction and/or election requirement.
Application Papers
9)~--] The specification is objected to by the Examiner.
10)[-J The drawing(s) flied on __ is/are: a)l-"] 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 correclion 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)[~ Acknowl~edgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)r-] All b)[-] Some ° c)i"] None of:
1.r-~ Certified copies of the pdority documents have been received.
2.[’-] Certified copies of the priority documents have been received in Application No. ~
3.r-I 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{el
1) [] Notice of References Cited (PTO-892)
2) [] Notice of Draftsperson’s Patent Drawing Review (PTO-948)
3) [] Inlormation Disclosure Statement(s) (PTO./SB./08)
Paper No(s)lMail Date 03/09/’20~,
PTOL-326 (Rev. 08-06)

Office Action Summary

4) [] Interview Summary (PTO-413)
Paper No(s)/Mail Date. __
5) [] Notice of ~ntormal Paten’, Applicmien
6) [] Other: __
Part of Paper No./Mail Date 20090520

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DETAILED ACTION
1.

2.

C~aims 1-20 are pending for examination.

Applicant’s request for reconsideration of the finality of the rejection of the last

Office action is persuasive and, therefore, the finality of that action is withdrawn.

Double Patenting
3.

The nonstatutory double patenting rejection is based on a judicially created

doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
uniustified or improper timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. A nonstatutory
obviousness-type double patenting rejection is appropriate where the conflicting claims
are not identical, but at leastone examined application claim is not patentably distinct
from the reference claim(s) because the examined application claim is either anticipated
by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
may be used to overcome an actual or provisional rejection based on a nonstatutory

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double patenting ground provided the conflicting application or patent either is shown to
be commonly owned with this application, or claims an invention made as a result of
activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
37 CFR 3.73(b).

4.

Claims 1, 9, 17 are rejected on the ground of nonstatutory obviousness-type

double patenting as being unpatentable over claim13 of U.S. Patent No. 7526558.
. Although the conflicting claims are not identical, they are not patentably distinct from
each other because the differences are minor encompass replacement of the recitation
of the limitations in the claims and it appears to be substantially the same or in some
instance obvious over one another. For example, the recited steps of generating a
music play object in a standby mode, providing an interface for music play object,
selecting the MP3 mode, selecting and playing a music file, switching from the MP3
mode to the standby mode while the music file continues, displaying an indication that
the music file is being played in the standby mode, selecting and performing at least
one function from the standby mode while the playing of the music file is continues, and
continues to display the indication that the music files is being played while performing
the selected function of claims 1, 9, 17 of the instant application are obvious over the
steps as recited in claim 13 of the U.S. Patent No. 7526558.

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Claim Rejections - 35 USC § 103
5.

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 tirhe 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.
6.

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 of HEUMESSER (U.S. Publication No.
2005/0097506), and further in view of ROBERTSON (U.S. Publication No.
2002/0067308).

7.

KOKUBO, SENPUKU, and ROBERTSON were cited in the previous office

action.

8. 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,
repro.duction 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 pocketsized mobile communication device in MP3 mode (via the audio screen to the audio

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player a,owing the user to ~istening 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 software ! other
appl!cation software via the input/call keys) (col. 13, lines 10-22; col. 13, lines 23-4!);
displaying an indication that the music rite 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 disptay / 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 or~e function of the communication device while the
playing of the music file continues (via continuing to play the music file in the subdisplay while the new task ! application executes in the main display) (col 13, lines 422; 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 dispfay 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.

9.

SENF)UKU 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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(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 screenand 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
switchingfrom 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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10. 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 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).

11. The combination of KOKUBO and SENPUKU did not specifically teach
generating a music background play object in a standby mode of the device.

12. However, HEUMESSER teaches generating a music background ~)lay object in a
standby mode of the device (paragraph [0045], generating task icons in the background
of the device).

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, and

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HEUMESSER because HEUMESSER teaching of generating a music background play
object (task icon) in a standby mode (background) of the device would improve the
integrity of KOKUBO and SENPUKU’s system by allowing user to generating different
icons for different application so that upon switching from one application to another,
different iconsare dispiayable.

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

15. However, ROBER’i’SON 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).

16. 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,
HEUMESSER 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, SENPUKU, and
HEUMESSER,’s system 5y reducing the complexity of mobile communication device

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(i.e. combined the input and output device into one), and also allowing the user to enter
and view information in a friendly environment.

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

18. 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).

19. 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 56mcol. 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 welf known in the art that the stand-by screen allows for users to

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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.

20. 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.

21. 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 si0gle display unit (col. 14, lines 52-54).

22. 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), in view of HEUMESSER (U.S. Publication No.
2005/0097506), and further in view of ROBERTSON (U.S. Publication No.
200210067308), as applied to claims 1, 9 and 17 above, and further in view of
NIRHAMO (U.S. Patent Publication 2006/0246955).

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

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24. As to claims 3-5, the combination of KOKUBO, SENPUKU, HEUMESSER, and
ROBERTSON substantially discloses the switching of p~aying 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
musi.cian, anti an album title.

25. 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 ~ong title and artist (see pg. 3,
paragraph 0035).

26. 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, HEUMESSER and NIRHAMO in order to enhance the

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presentation, navigation, selection and/or opeiation options for mobile devices (pg. 1,
paragraph 0003-0004).

27. 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.

28. As to claim 19, reference is made to an apparatus that corresponds to the
method of claim 3 and is therefore met by the reiection of claim 3 above.

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

30. Applicant’s amendment necessitated the new ground(s) of rejection presented in
thisOffice action. Accordingly, THIS ACTION IS MADE FINAL.--See MPEP
§ 706.07(a). 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
I-VVO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the

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shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37. CFR 1.1 36(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 date of this final action.

31. 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.

32. 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.

33. 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 f~om either Private PAIR or Public PAIR.
Status information for unpublished applications is availabl~ through Private PAIR only.
For more information about the PAIR system, see http://pair-directuspto.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.

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/Jennifer N. To/
Patent Examiner
AU 2195

SUPeRVISOrY PA~ ~,r~

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