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 O

PATENT
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Appl. No.

11/778,466

Confirmation
No.

1475

Applicant(s)

Moon-Sang JEONG

TCiA.U.

2195

Filed

July 16, 2007

Examiner

Jenni~rN. To

Title

Multi-Tasking Apparatus
and Method in Portable
Terminal

Docket No.

0201-0055

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Amendment in Response to Non-Final Office Action

Sir:
In response to the Office Action dated November 09, 2009, please amend the
above-identified application as follows:
Amendments to the Claims are reflected in the listing of claims which begins
on page 2 of this paper.
Remarks/Arguments begin on page 6 of this paper.

APLNDC-WH-A 0000017161

Appl. No.: 11/778,466
Reply to Off]ee Action of: November 09, 2009

Amendments to the Claims:
This listing of claims will replace all prior versions and listings of the claims
in the application.

h (Currently Amended) A multi-tasking method in a pocket-sized mobile
communication device including an MP3 playing capability, the multi-tasking method
comprising:
generating a music background play object, wherein the music background
play obiect includes an application module includin~ at least one applet;
providing an interface for music play by the music background play object;
selecting an MP3 mode in the pocket-sized mobile communication device
using the interface;
selecting and playing a music file in the pocket-sized mobile communication
device in the MP3 mode;
switching from the MP3 mode to a standby mode while the playing of 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 of the pocket-sized mobile
communication device from the standby mode while the playing of the music file
continues; and
continuing to display the indication that the music file is being played while
performing the selected function.
2. (Original) The multi-tasking method of claim 1, wherein the displaying of the
indication comprises displaying an icon.

3. (Original) The multi-tasking method of claim 1, wherein the displaying of the
indication comprises displaying information relating to the music file.
4. (Original) The multi-tasking method of claim 3, wherein the information
comprises at least one of a music title, a musician and an album title.

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Appl. No.: 11/778,466
Reply to Office Action of: November 09, 2009

5. (Original) The muki-tasking method of claim 3, wherein the displaying of the
information comprises overlaying the information relating to the music file on a
screen.

6. (Original) The multi-tasking method of claim 1, further comprising selecting to
continue the playing of the music file.
7. (Original) The multi-tasking method of claim 1, wherein the function selected from
the standby mode comprises a message function.
8. (Original) The multi-tasking method of claim 1, wherein the function selected
from the standby mode comprises a phone-book function.
9. (Currently Amended) A multi-tasking apparatus in a pocket-sized mobile
communication device including an MP3 playing capabiiity, the multi-tasking
apparatus comprising:
a controller for generating a music background play object, wherein the music
background play obiect includes an application module including at least one applet,
for providing an interface for music play by the music background play object, for
selecting an MP3 mode in the pocket-sized mobile communication device using the
interface, for selecting and playing a music file in the pocket-sized mobile
communication device in the MP3 mode, for switching from the MP3 mode to a
standby mode while the playing of the music file continues and for selecting and
performing at least one function of the pocket-sized mobile communication device
from the standby mode while the playing of the music file continues; and
a display unit for displaying an indication that the music file is being played
in the standby mode and for continuing to display the indication that the music rite is
being played while performing the selected function.
10. (Original) The multi-tasking apparatus of claim 9, wherein the indication
comprises an icon.

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Appl. No.: 1 U778,466
Reply to Of’rice Action of: November 09, 2009

11. (Original) The multi-tasking apparatus of claim 9, wherein the indication
comprises information relating to the music file.
12. (Original) The multi-tasking apparatus of claim 11, wherein the information
comprises at least one of a music title, a musician and an album title.
13. (Original) The multi-tasking apparatus of claim 11, wherein the display unit
overlays the information relating to the music file on a screen.
14. (Original) The multi-tasking apparatus of claim 9, wherein the controller selects
to continue the playing of the music file.
15. (Original) The multi-tasking apparatus of claim 9, wherein the function selected
from the standby mode comprises a message function.
16. (Original) The multi-tasking apparatus of claim 9, ~vherein the function selected
from the standby mode comprises a phone-book function.
17.
(Currently Amended) A multi-tasking apparatus in a pocket-sized mobile
communication device consisting of a single display unit and including an MP3
playing capability, the multi-tasking apparatus comprising:
a controller for generating a music background play object, wherein the music
background play obiect includes an application module including at least one applet,
for providing an inter~ace, for music play by the music background play object, for
selecting an MP3 mode in the pocket-sized mobile communication device using the
interface, for selecting and playing a music file in the pocket-sized mobile
communication device in the MP3 mode, and’for switching from the MP3 mode to a
standby mode while the playing of the music file continues; and
the single display unit for displaying an indication that the music file is being
played in the standby mode.
18. (Original) The multi-tasking apparatus of claim 17, wherein the indication
comprises an icon.

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Appl. No.: 11/778,466
Reply to Office Action of: November 09, 2009

19. (Original) The multi-tasking apparatus of claim 17, wherein the indication
comprises information relating to the music file.
20. (Original) The multi-tasking apparatus of claim 17, wherein the controller selects
to continue the playing of the music file.

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AppL No.: 11/778,466
Reply to Office Action of: November 09, 2009

REMARKS/ARG UMENTS
I.

Status of Claims
Claims 1-20 are pending, wherein claims 1, 9 and 17 are independent. The

application was previously allowed as indicated by the Notice of Allowance dated
August 12, 2009. The Applicant wishes to thank the Examiner for allowing the
application. However, after review of the subject matter covered by the previously
allowed claims, it was believed that the scope of the allowed claims was unduly
narrow. Accordingly, Applicant filed a Request for Continued Examination (RCE)
which included an amendment to each of independent claims 1, 9 and 17 to delete
reference to being in a standby mode of a device when generating a music background
play object. In response, the Office has rejected independent claims 1, 9 and 17 as
obvious over Kokubo in view of Senpuku, which references have been used in several
previous rejections. An Applicant initiated interview, which is summarized below,
was held with the Examiner and Supervisory Primary Examiner (SPE). Applicant
wishes to thank the Examiner and SPE for granting the interview and for the candid
discussion held therein. As a result of the interview, Applicant has amended each of
the independent claims to better define Applicant’s invention. Applicant believes that
the amended claims distinguish over the prior art and thus respectfully requests
withdrawal of the rejections and allowance of the application.
If.

Interview Summary
On December 8, 2009, a personal interview was held between the Examiner

and her SPE, Mr. Gisang Lee and Mr. David Park representing the assignee, and
Applicant’s representatives Mr. Maeng-Ho Shin and Mr. George Eckert. All
representatives of the Applicant and assignee wish to thank the Examiner and SPE for
granting the interview and the candid discussion held therein. The purpose of the
interview wag to discuss the outstanding rejection and especially to better understand
the OftSce’s position regarding the interpretation of Kokubo.
During the interview, discussion focused on the limitation of a music
background play object. It is Applicant’s position that a background play object is not
disclosed by Kokubo. However, it is the Office’s position that the icon 10 of Kokubo
does disclose a music background play object, especially in light of the disclosure by
Kokubo in column 2, beginning at line 10. The Office did suggest however, that the

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Reply to Office Action of: November 09, 2009

inclusion of a limitation further defining the music background play object would
distinguish over the art of record, though not necessarily be allowable depending on
the results of a further search. Specifically, the Office suggested including a limitation
indicating that the music background play object includes an application module
including at least one applet. Applicant appreciates the Office’s suggestion and has
amended the independent claims as suggested.
Discussion was also held during the interview regarding the alleged disclosure
by Senpuku of a standby mode and regarding the double patenting rejection. As
discussed below, it is Applicant’s position .that Senpuku does not disclose a standby
mode and that the double patenting rejection must be clarified in light of the claim
amendments made with the filing of the RCE. Regarding Senpuku, the Office
maintained the position that, because Kokubo discloses switching between various
modes and Senpuku discloses a standby mode, their combination makes obvious the
switching to a standby mode in the disclosure of Kokubo. Regarding the double
patenting rejection, the Office indicated that they would consider the propriety of the
double patenting rejection in light of the claim amendments as well as the status of the
terminal disclaimer. At the conclusion of the interview, the Office indicated that, once
submitted, the arguments and amendments would be considered based on the
discussion. Accordingly, an agreement was not reached.
III. Applicant’s Invention as Claimed
The present invention is drawn to a mobile communication terminal that is
capable of playing an MP3 file in the background while other applications are running
on the terminal.
As discussed in the originally filed specification, portable communication
terminals of the prior art allowed a user to play an MP3 file by including a separate
player in the terminal. See para. [0003]. Ho~vever, ~vhen using the separate player to
play an MP3 file, the user could not simultaneously use any of the other functions
provided by the terminal. See para. [0004]. One proposed solution was to include a
control processor for the playing of MP3 files. That is, a dedicated MP3 processor
would be added to manage and control only the MP3 files. See para. [0005].
However, the addition of a dedicated processor increased both the cost and
complexity of the terminal. Id.

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Appl. No.: 11/778,466
Reply to Office Action of." November 09, 2009

The presently claimed invention addresses these issues. That is, the claimed
invention provides for independently playing a music file in the background while
allowing a user to execute other menu functions of the device. The present invention
achieves this ability by including application modules that include at least one applet
such that each application module independently performs multi-tasking. See para.
[O018J. For the specific invention as claimed, a music background play object,
wherein the music background play object includes an application module including
at least one applet, is included such that an MP3 file can be played in the background
while other menu tasks can be executed by the user.
Independent claims 1, 9 and 17 recite these unique features. Specifically, each
of independent claims 1, 9 and ]7 recite the specific method or function that allows
for a terminal to play a music file in the background while allowing a user to
concurrently use other functions of the terminal. Specifically, the claims recite the
limitations of:
generating a music background play object, wherein the
music background play object includes an application
module including at least one applet;
providing an interface for music play by the music
background play object; and
selecting an MP3 mode ... using the intert~ace.
By use of the music background play object, which is an application module
including at least one applet as discussed with reference to para. [0018], the terminal
is able to perform multi-tasking. That is, by generating the application module of the
music background play object, the music background play object provides an
interface for the playing of music, specifically the selecting of an MP3 mode. At the
same time, the user is able to execute other menu functions of the device and thus
multi-task using the device.
It is Applicant’s contention that independent claims 1, 9 and 17 are allowable
based on the unique use of the music background play object, wherein the music
background play object includes an application module including at least one applet,
alone, and not based on the use of the music background play object in a standby or
any other mode. That is, none of the prior art discloses a music background play
object, wherein the music background play object includes an application module
including at least one applet in any mode of a device. Accordingly, Applicant believes
that the claims are in condition for immediate allowance.

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Appl. No.: i 1/778,466
Reply to Office Action of: November 09, 2009

IV.

Kokubo Does Not Disclose a Music Background Play Ob[ect~
Wherein the Music Background Play Object Includesan
Application Module Including at Least One Applet, as Claimed
As amended, each of independent claims 1, 9 and 17 now recites "generating a
music background play object, wherein the music background play object includes an
application module including at least one applet," support for which can be found in
the originally filed application, at least in paragraph [0018]. The independent claims
also recite "providing an interface for music play by the music background play
object," and "selecting an MP3 mode...using the interJhce." (emphasis added).
Applicant submits that Kok-ubo does not disclose any, let alone, all of these
limitations,
First, Kokubo does not disclose "generating a music background play object,
wherein the music background play object includes an application module including
at least one applet". In the outstanding rejection, the Office asserts that Kokubo’s
disclosure of an icon reads on Applicant’s background music play object.
Specifically, the Office cites to lines 9-10 of the abstract ("an icon associated with a
task displayed on a first display region is generated"), lines 34-39 of col. 2 ("an icon
corresponding to a task (application software) displayed in a first region is
generated"), lines 2-3 of col. 3 (an icon generating means for generating icons
corresponding to tasks"), and lines 8-10 of col 13 ("and a manually or automatically
generated [music note symbol] icon 10f is displayed") as disclosing a music
background play object.
Although it is not conceded that the icon of Kokubo is a disclosure of a music
background play object, Applicant has amended the independent claims to further
clarify that the music background play object includes an application module
including at least one applet. As suggested by the Office during the interview, this
clarifying limitation is not disclosed, taught or suggested by Kokubo. Rather, as
acknowledged by the Office in the outstanding rejection, Kokubo merely discloses the
generating of"an icon corresponding to a task (application software)" cot. 2, lines 3439; see also col. 13, lines 8-10 ("manually or automatically generated [music note
symbol] icon 10f is displayed." The generating of the icon by Kokubo is not a
disclosure of generating a music background play object, wherein the music
background play object includes an application module including at least one applet.

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Appl. No.: 11/778,466
Reply to Office Action off November (-19, 2009

That is, Kokubo makes no disclosure that the icon includes an application module, or
that the application module includes at least one applet as instantly claimed.
Given that icon 10 is not a music background play object, wherein the music
background play object includes an application module including at least one applet,
it is self-evident that the icon 10 cannot be considered as a music background play
object that provides an interface for music play, or that an MP3 mode may be selected
using the interface. Considering that Kokubo does not disclose the amended
limitations, Applicant respectful ly requests that the rejection be withdrawn.
V.

Senpuku Does Not Cure the Deficiencies of Kokubo and Fails to
Disclose the Switching to a Standby Mode as Claimed.
As discussed above, Kokubo does not disclose a music background play
object, wherein the music background play object includes an application module
including at least one applet, or the related limitations as instantly claimed. And,
although Senpuku was not cited for disclosing a music background play object, a
review of Senpuku indicates that it fails to disclose the limitation as well.
Accordingly, for at least the reasons stated above, it is respectively requested that the
rejection be withdrawn.
Senpuku was cited for allegedly disclosing the switching to a standby mode.
However, while Senpuku discloses several methods regarding the use of a main
display and a sub-display, including the automatic display of an execution step, the
automatic display of a help screen, and the automatic display of an already running
execution, Senpuku does not disclose, teach or suggest a method wherein, when the
sub-display is opened, an application executing on the main display is moved to the
sub-display, leaving a standby screen displayed on the main display. First, in the
methocks of Senpuku wherein applications are switched between the main display and

sub-display, there is no discussion of a standby mode or screen. Specifically, Senpuku
discloses that images may be switched from the sub-display to a part of the main
display if the sub-display is closed (see again FIGs. 11 and 12) when the user is
executing a video telephone call. Senpuku discloses in another method that, if a
plurality of applications are being executed, when the sub-display is opened one of
the applications may be displayed on the sub-display. In yet another method, Senpuku
discloses that if a plurality of application are being executed, when the sub-display is
closed, the application on the "active" screen wiil continue to be displayed on the

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Reply to el’rice Action of: November 09, 2009

main display. However, nowhere in any of these examples does Senpuku disclose,
teach or suggest that a standby screen is displayed when an application is moved from
one display to the other.
Second, and in direct contra~st to the assertions in the outstanding rejection, in
the onl), description by Senpttku of a standby screen (FIG. 18 and para. [0110]), there
is no disclosure of the moving of an application to a sub-display from a main display
when the sub-display is opened. Rather, as explicitly disclosed by Senpuku, in a state
in which a standby screen is already displayed on the main display, and then the subdisplay is opened, a pre-registered second application may be automatically executed
and displayed on the sub-display. The disclosure of Senpuku does not support the
assertions made in the outstanding rejection and does not supply the element missing
from Kokubo.
Senpuku does not disclose, teach or suggest the "switching from the MP3
mode to a standby mode while the playing of the music file continues." For this
reason, Applicant believes that the rejection is in error and respectfully requests
withdrawal of the same.
VI.

The Double Patentin~ Rejection in Light of the Claim Amendments
The double patenting rejection made in the Office action mailed May 27, 2009

was based on Iimitations that are no longer present in independent claims 1, 9 and 17.
Specifically, independent claims 1, 9 and 17 were amended (with the filing of the
RCE) to delete the limitation regarding generating a music background play object "in
a standby mode." However, in light of this amendment, the double patenting rejection
was not asserted in the outstanding Office action, presumably because a terminal
disclaimer was previously filed. However, given the previous claim amendments as
well as the amendments in the present response, Applicant respectfully requests that
the Office elaborate on its position regarding the propriety of the double patenting
rejection.

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Reply to Office Action of: November 09, 2009

VII.

Conclusion
In view of the above, it is believed that the application is now in condition for

allowance and notice to that effect is respectfully requested. If there are questions, the
Examiner is encouraged to contact the undersigned at the indicated telephone number.
Respectfully submitted,

Date: December 08, 2009

/George C. ECKERT/
George C. Eckevt
Reg. No. 58,892
Representative for Applicant

Jefferson IP Law, LLP
1730 M Street, NW, Suite 807
Washington, D,C. 20036
Main: (202)-293-0804
Direct: (202)-293-2829

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