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 10

THE UNITED STATES PATENT AND TRADEMARK OFFICE

APPLICANTS:

Paulick, Thomas;EJ'

SERIAL NO.:

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EXAMINER:

Pham, C.

08/023,234

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2611

FILED:

February 25,1993

CASE NO.:CE00802RW01

ENTITLED:

Receiver Having Concealed External Antenna

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Motorola, Inc.
Corporate Offices
1303 E. Algonquin Road
Schaumburg, II., 60196
February 28, 1996
AMENDMENT and RESPONSE

Honorable Commissioner of
Patents and Trademarks
Washington, D.C. 20231
Dear Sir:

In response to the Office Action dated 31 August 1995, the applicant hereby
submits the following amendment and response.

(Amended 8/26/94, 6/2/95, 2/28/96)
eluding a user interface, comprising:
a housing enclosing radiotelepho
nd pager circuitry;
oupled to the radiotelephone circuitry; and
a radiotelephone anten
a pager ante
upled to the pager circuitry;
wherei
e pager antenna forms a loop surrounding at least a portion of the
ace and is disposed between an outside surface of the housing and the at
st a portion of the user interface.

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2.
(Amend ed 8/26/94) A combin ation radiote lephone /pager unit acco
claim 1 further compri sing a shield for shieldin g at least one of the
and pager circuitry.
3.
(Amend ed 8/26/94) A combin ation radiote le
ne/page r unit accordi ng to
claim 1 wherei n the user interfac e further co
ses at least one of the following: an
acoustic, a visual and a tactile interfac e.
4.
A combin ation radiote l
one/pag er unit according to claim 3 wherei n the
acoustic, visual and tacti nterfac e further compri ses an electroa
cotistic
transdu cer, a displa nd a switch, respectively.
5.

A combin ation radiote lephone /pager unit accordi ng to claim 1 wherei
n the
pager antenn a is integra lly formed with at least a portion of the user
interfac e.
7.
(Amended 8/26/94, 6/2/95, 2/28/96) A combin ation radiote lephone
/pager unit
compris ing:
a housing enclosing radiote lephone and pa
. cuitry;
a radiote lephone antenn a couple
e radiote lephone circuitr y;
a pager antenn a couple
e pager circuitr y and attache d to an outside .
nonconductive surface
e housing; and
a subst
.a ly planar cover, attache d to the outside surface of the housing ,
for
the pager antenn a betwee n the cover and the outside surface of the
sing such that the antenn a is unnotic eable to a user of the unit.
8.
A combin ation radiote lephone /pager unit according to claim 7 wherei
n th:---cover ftlrther compri ses at least one of the following: a hand grip,
a ke
an escutch eon, a keypad and a cap.
9.
(Amended 8/26/94)
ination radiote lephone /pager unit accordi ng to
claim 7 further com . mg a shield for shieldin g at least one of the
radiote lephone
and pager ci

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10.
A combination radiotelephone/pager unit according to claim 7 wherein
pager antenna is disposed between the outside surface of the housing a

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11.
A combination radiotelephone/pager unit according t
pager antenna is integrally formed with the cover.

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12.
A combination radiotelephone/pager·
pager antenna further comprises a 10

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ephone/pager unit according to ciaim 12 further
13.
A combination radi
comprises user intert e substantially surrounded by the loop antenna.

it according to claim 7 wherein the

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14.
A co mation radiotelephone/pager unit according to claim 13 wherein the
user i rface further comprises at least one of the following: an acoustic, a visual
tactile interface.

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A receiver including a user interface

comprising:
a housing;
receiver circuitr
sed in the housing; and
an antenna co
to the receiver circuitry;
wherein the ntenna forms a loop surrounding at least a portion of the user
interface and is sposed between an outside surface of the housing and the at least
a portion of th ser interface.
16.
A receiver according to claim 15 wherein the user interface further compri
at least one of the following: an acoustic, a visual and a tactile interfac
17.
(Amended 6/2/95) A receiver according to claim 1
erein the acoustic,
visual and tactile interface further comprises an
troacoustic transducer, a
display and a switch, respectively.

18.
19.

A recei
according to claim 15 wherein the antenna is integrally formed with
portion of the user interface.
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987FH101

(Amended 8/26/94, 6/2/95, 2/28/96) A receiver comprising:
a housing;
receiver circuitry disposed in the housing;
an antenna coupled to the recei
. cuitry and attached to an outside,
nonconductive surface of th
smg; and
a substanf
planar cover, attached to the outside surface of the housing, for
conceali
e antenna between the cover and the outside surface of the housing such
the antenna is unnoticeable to a user of the receiver.
. ..,;

21.
(Amended 6/2/95) A receiver according to claim 20 wherein the cover further
comprises at least one of the following: a hand grip, a keypad, a lens, an escutch
a keypad and a cap.
22.
(Amended 6/2/95) A receiver according to claim 20 wherein
disposed between the outside surface of the housing and the c
23.

(Amended 6/2/95) A receiver according to clai

integrally formed with the cover.
24.
(Amended 6/2/95) A receiver ac
further comprises a loop aotenn
25.
(Amended 8/26/9
/2/95) A receiver according to claim 24 further comprises
a user interface sub antially surrounded by the loop antenna.
26.
(Ame ed 8/26/94,6/2/95) A receiver according to claim 25 wherein the user
interfac urther comprises at least one of the following: an acoustic, a visual and a
7nterface.

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REMARKS

Claims 1-4,6,15-17 and 19 were rejected by Examiner under 35 U.s.c. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Examiner stated that claim 1-4,6, 15-17, and 19 would be all allowable if rewritten or
amended to overcome the rejection under 35 US.c. 112. Claims 1 and 15 have been
amended to overcome the Examiner's rejection. Therefore, claims 1-4, 6, 15-17 and
19 are in a condition for allowance.
Claims 20~22 were rejected by Examiner under 35 US.c. § 102 (e) as being
anticipated by Yokoyama (U.s. Pat. No. 5,392,461). Claim 20 has been amended to
recite that the antenna is coupled to the receiver circuitry and attached to an outside,
noncuductive surface of the housing. Yokoyama teaches that the antenna section 31
is exposed to a space outside of the shielding case 33. (col. 2, line 45) Yokoyama also
teaches that the shielding case 33 is conductive. Yokoyama does not teach that the
antenna section 31 is attached to an outside, noncuductive surface of tJ:e shielding
case 33. If the antenna section 31 were attached to an outside surface of the
shielding case 33, as the Examiner described, the the antenna section 31 would not
work properly. The conductive 'surface of the shielding case 33 would effectively
ground the antenna section 31 or significantly interfere with the operation of the
antenna section 31. Therefore, claims 20-26 are now in a condition for allowance.
Examiner rejected claim 24 under 35 US.c. § 103 as being unpatentable over
Yokoyama. Claim 24 is dependent upon a presumably allowable independent claim
20, and therefore in a condition for allowance.
Claims 7-10 and 12 are rejected under 35 U.s.c. § 103 as being unpatentable
over Yokoyama in view of Metroka, et al. (US. Pat. No. 5,117,449). Claim 7 has been
amended to recite that the pager antenna is coupled to the pager circuitry and
attached to an outside, noncuductive surface of the housing. The same argument as
for claim 20 applies here. Therefore, claim 7-14 are now in a condition for
allowance.
Examiner stated that claims 11, 13, 14, 23, 25, and 26 were objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in

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987FH103

independent form including all of the limitations of the base claim and any
intervening claims. Claims 7 and 20 have been amended to overcome the
Examiner's rejections. Claims (11; 13, 14), (23, 25, and 26) are dependent upon a
presumably allowable Independent claims 7 and 20, respectively, and therefore in a
condition for allowance.
Accordingly, the applicant respectfully request reconsideration of the claims
and passage to allowance at the earliest possible date.
Respectfully submitted,

PAUUCK, THOMAS E.

by:

~~K~

Kevin D. Kaschke
Agent for Applicants
Registration No, 35,767
Phone: [phone]
Fax: [phone]

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