Motorola Mobility, Inc. v. Apple, Inc.

Filing 93

Defendant's MOTION Defendant and Counterclaim-Plaintiff Apple Inc.'s Claim Construction Brief by Apple, Inc.. (Attachments: # 1 Declaration of Christine Saunders Haskett, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20)(Pace, Christopher)

EXHIBIT 9

.
00
•
,

I SERIAL NUMBER I
03/45CJ.376

UNITE" D STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Address:-,COMMISSIONER OF PATENTS AND TRADEMARKS
Wsshington. D.C. 20231

I ATIORNEY DOCKET NO. I

FIRST NAMED INVENTOR

FlUNG DATE

06/02/<J5

~'.
!!!J,

PAULICK

T

PHAM.C
26"2/0831
MOTOROLA INC
INTELLECTUAL PROPERTY DEPARTMENT
CORPORATE OFFICES
1303 E ALGONQUIN ROAD
SCHAU(IIBURG IL 60196

ART UNIT

KDK
2611
DATE MAILED:

08/31/95

This Is a communication from the examiner In charge of your application.
COMMISSIONER OF PATENTS AND TRADEMARKS

~s

application has been examined

o

PAPER NUMBER

Responsive to communlcatlon flied on,

o

_

This action Is made flnal.

0.3

A shortened statutory period for response to this action Is set to expire
month(s).
cays from the date of this leller.
Failure to respond within the period for respqnse will cause the application to become abandoned. 35 U.S.C. 133

Pert I THE
1.

FOlLOW~

ATIACHMENT(S) ARE PART OF THIS ACTION:

~otlce ,of References Cited by Examiner. PTO-892.

2.

3. 0

Notice of Art Cned by Applicant, PTO·1449.

4.

5. 0

Information on How to Effect Drawing Changes, PT0-1474..

6.

Part II
1.

0
0

0

Notice of Draftsman's Patent Drawing Review. PTO-948.
Notice 01 Informal Patent Application, PTO·152.

SUMMARY OF Ac;TION

~clalms,_~A~-_4--'-"'-""-'_-_1_'_7_.LA:'_'_N:..oJ?~_'_~4_'__-_"Z_"_·

--'-

arependlnglntheappllcatlon.

Of the above, claims

~

Clalms,

are withdrawn from consideration.

5",,'---'--....L::frN-'C'
""1.1>"",-_,:,>~-,,,8'

have been cancelled.

3.0 Clalms

4.

areallowed.

~ Claims _...:..A.:....-_lf"-l,'-',,"'----'..'.::::C>.J,l...:..l.(c.:'2.:....L..l-".{~s_-_-1-'-7.L...L, ~A_'_'1~--=2:...:z..=--~A-....:.IJ..:.....::])--''2.-~S'-

are re)ected.

5. ~Ialms _ _-----'A""tf"""l<-...:.",.:.?...j(:...<f.:.-Y--'--ll_,~~3+,.....:'l::...S-oL-'--'f.nJ-'-'-'}::..-_2._..(
6. 0

'

are obJected

~

C!alms,

to.

are subject to restriction or election requirement.

7.

0

This application has been flied with Informal drawings under 37 C:F.R. 1:85 which are acceptable for examlnatlon purposes.

8.

0

Formal drawings are required In response to this Office action.

9.0 The corrected or substitute drawings have been received on
. Under 37 C.F.R. 1.84 these drawings
are 0 acceptable; 0 not acceptable (see explanallon or No11c8 01 Draftsman's Patent Drawing Review, PT0-948).

~. has (have) been

10.0 The proposed additional or substltuts sheet(s) of drawings, flied on
examiner; 0 disapproved by the examiner (see explanation).

• has been

0

0

11. 0

The proposed dlawlng correction, ItJed

12. 0

Acknowledgement Is made of ·the claim for priority under 35 U.S.C. 119. The cer1lfled copy has
been filed In parent appllcaflon, serial no.
; filed on

o

approved;

o approved by the

disapproved (see explanation).

0

been received
_

0

not been received

13.0 Since this application apppears to be In colldltion lor allowance excep1 for formal matters, prosecution as to Uhe mertts is closed In
acoordanca with the practice under Ex parte Quayle, 1935 C.D. 11; 453 O.G. 213.
14.

o

Other

EXAMINER'S ACTION
PTOL-32ll (1leY. 2113)

987FH090

Serial Number: 08/459,376

-2-

Art Unit: 2611

Part III

1.

DETAILED ACTION

The preliminary amendment filed on 6-2-95 has been fUlly

considered and made of record.

By this amendment, claims 1-4, 6-

17 and 19-26 are pending in the application and claims 5 and 8
have been canceled.

Claim Rejections - 35 USC

2.
§

§

112

Claims 1-4, 6, 15-17 and 19 are rejected under 35 U.S.C.
112, second paragraph, as being indefinite for faiiing to

particularly point out and distinctly claim the subject matter
which applicant regards as the invention.
- Claim 1, lines 7-8, it is not clear whether or not the
recited "at least a portion" is the same as the portion recited
at line 6.
- Claim 15, lines 6-7, it is also not clear whether or not
the recited "at least a portion" is the same as the portion
recited at line 5.

Claim Rejections - 35 USC

§

102

3.
The following is a quotation of the appropriate paragraphs
of 35 U.S.C. § 102 that form the basis for the rejections under
this section made in this Office action:

.. -----······-1
I

987FH091

Serial Number: 08/459,376

-3-

Art Unit: 2611

A person shall be entitled to a patent unless -(e). the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or
on an international application by another .who has fulfilled
the requirements of paragraphs (I), (2), and (4) of section
371(c) of this title before the invention thereof by the
applicant for patent.

4.

Claims 20-22 are rejected under 35 U.S.C.

§

102(e) as being

anticipated by Yokoyama (5,392,461).
- Consider claims 20 and 22, Yokoyama shows in figure 1a
radio device having receiver circuitry disposed in a housing
(shielding case 33), an antenna (31) coupled to the receiver
circuitry and attached to the outside surface of the housing, a
substantially. planar cover (the back side of housing 32) attached
to the outside surface of the shielding case for concealing the
antenna between the cover and the outside surface of the
shielding case.
- As to claim 21, the back side of the housing (32) of
Yokoyama is considered an escutcheon.

Claim Rejections - 35 USC § 103

5.
The following is a quotation of 35 U.S.C. § 103 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 between the subject

. -. -------'-'-l
987FH092

Serial Number: 08/459,376

-4-

Art Unit: 2611

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.
Subject matter developed by another person, which qualifies
as prior art only under subsection (fl or (g) of section 102
of this title, shall not preclude patentability under this
section where the subject matter and the claimed invention
were, at the time the invention was made, owned by the same
person or sUbject to an obligation of assignment to the same
person. '

6.

Claim 24 is rejected under 35 U.S.C.

§

103 as being

unpatentable over Yokoyama.
- Yokoyama discloses a radio device as discussed above.
Although Yokoyama does not specify the type of antenna used in
its antenna section (31), it is known in the art that loop
antenna are also widely used.

therefore, it would have been

obvious to those ordinarily skilled in the art to use a loop
antenna in the antenna section (31) of the device.

7,

Claims 7-10 and 12 'are rejected under 35 U.S.C.

§

103 as

being unpatentable over Yokoyama in view of Metroka et al
(5,117,449) .

- Consider claims 7 and 10, Yokoyama discloses a radio
device as discussed above.

Yokoyama, however, fails to show the

radio device including pager circuitry and a pager antenna.
Nevertheless, it is known in the art to incorporate pager

987FH093

Serial Number: 08/459,376

-5-

Art Unit: 2611

circuitry in a radio device, as shown by Metroka (see figure 1,
element 105), such that the user of the radio can use the pager
to screen incoming calls (col. 1, lines 14-59).

Therefore, it

would have been obvious to those of ordinary skill in the art to
implement the radio device of Yokoyama with a pager as taught by
Metroka for the above noted purpose to improve its use.

Such

implementation could have been done by providing the pager
circuitry inside the shielding case (33) and a pager antenna in
an antenna section structured similar to the antenna section (31)
of the radio device.
- As to claim 8, the back side of the housing (32) is
considered an escutcheon.
- As to claim 9, the shielding case (33) also acts as a
shield.
- As to claim 12, the antenna pager when implementing the
radio device of Yokoyama as taught by Metroka could also take the
form of a loop antenna.

Allowable Subject Matter

8.

Claims 11, 13, 14, 23, 25 and 26 are objected to as being

dependent upon a rejected base claim, but would be allowable if
rewritten in independent form including all of the limitations of
the base claim and any intervening claims.

-_.-,
I

987FH094

.'_..

Serial Number: 08/459,376

-6-

Art Unit: 2611

9.

Claims 1-4, 6, 15-17 and 19 would be allowable if rewritten

or amended to overcome the rejection under 35 U.S.C. 112.

10.
Any inquiry concerning this communication or earlier
communications from the examiner should be directed to Chi Pham
whose telephone number is [phone]. The examiner can
normally be reached on Monday-Friday from 9:00 AM to 5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful,
the examiner's supervisor, Mr. Eisenzopf, can be reached on (703)
305-4711. The fax phone number for this Group is [phone].
Any inquiry of a general nature or relating to the status of this
application or proceeding should be directed to the Group
receptionist whose telephone number is [phone].

Ci-(l"
CHP
August 29, 1995

~'~v-J
CHI H. PHAM
PRIMARY EXAMINER
GROUP2eOO

987FH095