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 N

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
Add~s~: COMMISSIONER FOR PA~TS

07116/2007

-0201-0055

Moon-Sang JEONG

1475

11,09/2009

.Tcfferson ]P Law, LLP
1130 Connecticut Ave., NW
Suite 420
Washington, DC 20036

I

EXAMINER

I

TO, JE?4NIFER ?4
ART UNIT

I

PAPER NUMBER

219S

I ~/09/2009

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 (Rev. 04/07)

APLNDC-WH-A 0000017145

Application No.

Applicant(s)

11/778,466
Examiner

Office Action Summary
for Appfications
Under Accelerated Examination

JEONG, MOON-SANG

Art Unit
JENNIFER N. TO
2195
o- 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
REPL Y 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 Quay/e action.
(Examiner: For FINAL actions, please use PTOL-326.)
The obiective 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. II= 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.
Status

1 )[~ Responsive to communication(s) filed on 30 October 2009.
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 Exparte 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) ~ islam withdrawn from consideration.
4)[-’] Claim(s) ~ is/are allowed.
5)[~ Claim(s) 1-20 is/are rejected.
6)[~] Claim(s) ~ is/are objected to.
7)1--] Claim(s) ~ are subject to restriction and/or election requirement.
Application Papers
8)[-1 The specification is objected, to by the Examiner.
9)[-] The drawing(s) filed on __ islam: a)[--I accepted or b)~-I 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 Qbjected to. See 37 CFR 1.121(d).
10)[--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
11 )[~ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)r-] All b)r’-] Some * c)[--I None of:
1.[--1 Certified copies of the priority documents have been received.
2.F-] Certified copies of the priority 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 Draftsperson’s Patent Drawing Review (PTO-948)
3) [] Information Disclosure Statement(s) (PTOISB/08)
Paper No(s}/Mail Date 10/30/2009 & 11/02/2009.
PTOL-326AE (Rev, 08-06)

Office Action Summary

4) [] Interview Summary (PTO.-413)
Paper No(syMail Date. __
5) [] Notice of Infon~al Patan~ Application
6) [] Other: ~.
Part of Paper No./Mail Date 20091105

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Page 2

Application/Control Number: 11/778,466
Art Uniti 2195
DETAILED ACTION
1.

A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office
action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935). Since
this application is eligible for continued examination under 37 CFR 1.114, and the fee
set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has
been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 10/30/2009
has been entered.

2.

Applicant request for personal interview filed 10/30/2009 had been considered.

The interview had been scheduled for. December 8th, 2009 at 11:00 AM.

3.

Claims 1-20 are pending for examination.

(~laim Rejections - 35 U$~, § 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 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 b~tween 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 ordinal, skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

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Application/Control Number: 11/778,466
Art Unit: 2195
4.

Page 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.So Patent 7,123,945), and in view of SENPUKU (U.S.
Patent Publication 2005/0083642).

5.

6.

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:
generating a music background play object (abstract, lines 10-12; col. 2, lines 3439; col. 3, lines 2-3; col. 13, lines 8-10);
providing an interface for music play by the music background play object (col. 2,
lines 39-47; 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
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);

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Page 4

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 subdisplay while the new task / application executes in the main display) (col. 13, lines 422; col. 9, line 57 -col. 10, tine 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).

7.

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.

8.

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,

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Page 5

paragraph 0105) and b) switching between applications wherein when the sub-display
is open the application currently executing on the main display is displayed ~n subdisplay (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-displayis 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). 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.

9.

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 subdisplay (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

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Page 6

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). In addition, the combination of.
references also obviously teaches displaying an indication that the music file is being
~layed 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).

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

11. 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 -

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Page 7

col. 8, line 36 for how this is performed via the pointer-type icon without stopping the

execution of the music player).

12. 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 tel.ephone 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.

13. 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.

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

14. 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 52o54).

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

16.

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

17. 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 subdisplay 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).

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

18. 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)°

20. It is obvious based on the combination that since the icon is an indication that
the application is currently execution (KOKUI30) 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. Asto 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.

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

25. 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.

26. Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applic.ations 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 Pdvate PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a

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

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 To/
Patent Examiner, AU 2195

APLNDC-WH-A 0000017156