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 1

IN THE UNITED STATES PATENT AND TRADEMARK a F

Case No,: PT01748U
Application No.: 08/522,026

Group Art Unit: 2211

Filed: August 31, 1995

Examiner: W. Wilson

For: Multiple Pager Status Synchronization System And Method
I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING
DEPOSITED WITH THE UNITED STATES POSTAL SERVICE AS
FIRST CLASS MAIL IN AN ENVELOPE ADDRESSED TO:
ASSISTANT COMMISSIONER OF PATENTS
Iune20 1997
WASHINGTON, D.C. 20231, ON:
Da te of Deposit

Michael Zazzara
Name of A plicant, Assignee or Registered Representative
DATE

AMENDMENT UNDER 37 C.F.R. §1.115

Assistant Commissioner of Patents
Washington, D.C. 20231
Sir:
In response to the Office Action dated April 1, 1997, please amend the above
identified application as follows:

IN THE SPECIFICATI7

.

page I, line 32 r 7 e "page" with -pager-;
page 2, line 17 rjce "substantial" with -substantially-;
page 4, line 11 replace "signal;" with -signal.-;
page 4 ,line 18 4ace "block" with -signaling-;

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page 4, line 20

~ace "block" with -signaling-;

/

page 4, line 22 replace "block" with -signaling-;
page 4, line

2~lace "block" with -signaling-;

p.ge 4, line 31

fee

"block" with -signaling-,

page 5, line 32 replace "system" with -network-;
page 6, line 14ace "ReFlex" with -ReFLEXTM-;
page 7, line 1

r~e "Tango" with -Tango™-;

page 9, line 14
page 9, line 14

pog. 9, line

~ "be" insert -identified as being-; ,

~ce "pagers" with -pager-;

257' "p.ge" 150" with -P'g" ISD-,

page la, lines 7 rep7 "FIG. 3, dotted-line" with -FIG. 5,-;
page la, lines

~ replace "and its sequences, dotted-line" with -,-;

page la, line 9 ilete "dotted-line";

p.ge 11, line

264"

the firs' 'pp"""'" of 'he wmd -.-,

page 12, line 22 replace "Message 655" with -Referring now to FIG. 5,
message 655-;

/

page 12, line 23 replace "pagers" with -pager-

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page 12, line 28 replace "pagers 550 change the their" to -pager 550 changes
its-;
page 13, line 2 Lnumber" insert -of-;

/

page 13, line 5 re7e "he" with -thew;
page 13, line 20 after "because" insert -thew;
page 13, line 21 ~er "therefore" insert -the-;

/

page 15, line 15 replace "an other" with -another-,
IN THE "fTRACT
/

lines 12-14 delete "This allows a user to own several of the pagers (150 and
550) and switch between their use without having to adjust the status of each
pager.".
REMARKS
The specification and abstract are amended. Claims 1-14 remain in the
application without amendment. Corrected formal drawings will be submitted
upon indication of allowability of the claims.
A Corrected Information Disclosure Statement, including copies of the
U.S. Patents and other publications listed therein, is being filed concurrently with
this amendment. Applicants respectfully request that the Examiner consider the
information referred to in the Corrected Information Disclosure Statement as to
the merits. The titles listed in the Corrected Information Disclosure Statement
are composed of the titles listed in the Information Disclosure Statement filed
with the application plus the one title listed in the Supplemental Information
Disclosure Statement filed on June 24, 1996, A corresponding "Corrected Form
PTO-1449" is also being filed concurrently with this amendment.
The Examiner has objected to the Abstract of the Disclosure as speculative,
"'~f)
and suggested that the last sentence be deleted. By this amendment, the,li;l,st,.,
sentence of the Abstract of the Disclosure is deleted.
' .!( t;' 4 r.r;\~1
"',

.:.:,:,:

.

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Independent claims 13 and 14 are rejected under 35 U.S.c. 103(a) as being
unpatentable over DeLuca '826 in combination with Davis '582. Applicants
respectfully disagree with the Examiner's analysis and assert that the Examiner
has not established a prima facie case of obviousness. The Examiner not
established that the cited references show all the claimed elements of Applicants'
invention and has the benefit of Applicant's invention to construct a
combination that a person of ordinary skill in the art would not otherwise
construct without the benefit of Applicants' invention description.
In one embodiment, Applicants' invention describes a method whereby a
user having a plurality of pagers will have status changes the user has made on a
message on one pager automatically made on other pagers of the user. This
results in an advantage that the status of message on all pagers of the user are
synchronized. For example, a message is sent to a user who has two pagers, a
first carried by the user and a second to be used later. The first pager could be
fashioned for use in a professional environment with a more formal dignified
styling. The second pager could be used after working hours in sporting events,
the second pager having a bright yellow color and perhaps improved moisture
resistance, less suitable for use in a professional environment. During working
hours the user receives the message, decides the message is very important and
changes the status of the message to "protect" it from possible deletion. This
status change is made by the user on the first pager because it is the one currently
being carried by the user. According to the invention, the first pager would send
a signal to the infrastructure that the status of the message has been changed to
"protected". The infrastructure then broadcasts the status change. Upon
receiving the status change signal the second pager changes the status of the
message to "protected". Thus the status of the message in both pagers is
synchronized, or the same, as "protected", even though the user made the status
change on only the first pager. The user may then switch to using the second
pager without having to manually change the status of the message on the
second pager. Alternate embodiments of Applicants' invention include
synchronization of alarm times, key word status or message threshold value
status between multiple pagers.

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DeLuca '826 describes a pager that changes the status of a message on the
basis of information received in the message or a manual input. In DeLuca, a
message is received with status information included in the message which is to
have its status changed at various times (FIGS. 2 & 3), or the status is changed in
response to a manual input using time of day (FIG. 9). Davis '582 shows a
sending a message with a limited set of responses included in the message (FIG. 3
and column 5, line 37 to column 6, line 65). This allows a user to read a message
and respond to the sender with a limited number or replies selected by the
sender. The reasonable combination of DeLuca and Davis by one of ordinary
skill in the art would be a message having a limited number of responses
included in the message, that also would change its status in response to signals
included in the message or a manual input. For example the message "WHAT
TIME TO YOU WANT TO MEET MR. JONES FOR DINNER? 6PM; 7PM; 8PM;
CALL BACK" of Davis FIG. 3 when considering DeLuca FIG, 2, would be HELD
until 12:25 PM at which time it would be alerted and the user would then read

the message select from one of the limited responses which would then be
forwarded to the sender (Mr. Jones presumably). Then at 1:30 PM the message
would be DELETED.
With respect to claim 13, the Examiner has not established that either
DeLuca or Davis describes Applicants' claimed means to produce a synchronizing
signal for signaling the infrastructure of the current state of the status category, as
recited in claim 13, lines 11-12. With respect to claim 14, the Examiner has not
established that either DeLuca or Davis describes Applicants' claimed software
element for controlling transmission of a synchronizing signal by the transmitter
after a change of state of a status category. See claim 14, lines 13-14. DeLuca
shows changing the status of messages based upon information received in the
message or a manual input and Davis shows a user selecting from a limited set
of responses included in a message. The Examiner has not suggested how either
reference would indicate to the infrastructure the current state of a status
category. Applicants assert that the Examiner has not established that the cited
references show all of the elements of the claimed invention, and further, has
not established a reason a person of ordinary skill in the art would combine
elements of the cited references in such a way that would result in a system for
synchronizing a status category of a plurality of communications devices, as in
claim 13, or a system for synchronizing messages among a multiplicity of

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selective call transceivers, as in claim 14. Consequently Applicant's respectfully
assert that the obviousness of the invention of claims 13 and 14 has not been
established and request removal of the rejection of claims 13 and 14.
Claims 8-12 are rejected under 35 U.S.c. 103(a) as being unpatentable in
view of DeLuca '826 in combination with Davis '582. The Examiner has extended
the analysis of the rejection of claim 13 above to claims 8-12 noting that claims 812 recite a method of operation corresponding to the apparatus of claim 13. With
respect to claim 8, Applicants respectfully disagree with the Examiner's analysis
and, as in claim 13, assert that the Examiner has not established a prima facie case
of obviousness. Furthermore, the Examiner has not established that either
DeLuca or Davis describes Applicants' claimed transmitting a first message
indicative of the second status (see claim 8, line 17) in the first transceiver, nor
changing the status of the second transceiver to the second status in response
thereto (see claim 8, lines 24-25). And the examiner has not established why a
person of ordinary skill in the art would combine elements of the cited
references in such a way that would result in a method for synchronizing a status
of a plurality of transceivers. Consequently, Applicants respectfully assert that
the obviousness of the invention of claim 8 has not been established and request
removal of the rejection of claim 8. Claims 9-12 are dependent upon claim 8 are
also believed allowable for the above reasons.
Claims 4-7 are rejected under 35 U.S.c. 103(a) as being unpatentable in
view of DeLuca '826 in combination with Davis '582. The Examiner has extended
the analysis of the rejection of claim 14 above to claims 4-7 noting that claims 4-7
recite a method of operation corresponding to the apparatus of claim 14. With
respect to claim 4, Applicants respectfully disagree with the Examiner's analysis
and, as in claim 14, assert that the Examiner has not established a prima facie case
of obviousness. Furthermore, the Examiner has not established that either
DeLuca or Davis describes Applicants' claimed transmitting a second message
indicative of the second status (see claim 4, line 7-8) in one transceiver, nor
changing the status of the message to the second status (see claim 4, line 14) in at
least one other transceiver. Furthermore, the Examiner has not established why
a person of ordinary skill in the art would combine elements of the cited
references in such a way that would result in a method of synchronizing message
information among a plurality of transceivers.

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Consequently, Applicants respectfully assert that a the obviousness of the
invention of claim 4 has not been established and request removal of the
rejection of claim 4. Claims 5-7 are dependent upon claim 4 are also believed
allowable for the above reasons.
Claims 1-3 are rejected under 35 V.S.c. 103(a) as being unpatentable over
Mitchell '318 in combination with DeLuca '826. Applicants respectfully disagree
with the Examiner's analysis and assert that the Examiner has not established a
prima facie case of obviousness. The Examiner has not established that the cited
references show the processes of Applicants' claimed invention and furthermore
has used the benefit of Applicant's invention to construct a combination of
processes which a person of ordinary skill in the art would not otherwise
construct without the benefit of Applicants' invention description. While
Mitchell shows multiple messages being transmitfed from a pager, the
functionality of the messages do not compare with the functionality of
Applicants' claimed messages. Mitchell in FIG. 7 shows a method of replying to
multiple messages received by a pager based upon the priority of the reply
assigned by the user. Referring to FIG. 7, Reply to #1 is a user response to
Message #1 and is sent immediately because the user prepared a high priority
reply. ' The user then prepared a low priority Reply #2 in response to receiving
Message #2. Contrary to Reply to #1 being sent immediately, Reply #2 is delayed
until high priority message #4 is received, then Reply #2 is added to ACK #4.
The reasonable combination of Mitchell and DeLuca by a person of ordinary skill
in the art would be making each message of Mitchell, Message #1 to Message #4
of FIG. 7, a message that also would change its status in response to signals

included in the message or amanual input as described in DeLuca FIGS, 2, 3and
9. High or low priority replies to each message could be prepared, grouped and
transmitted, according to the teaching of Mitchell. With respect to claim I, the
Examiner has not established that either Mitchell or DeLuca describes Applicants'
claimed process step of wirelessly transmitting a message having information
indicative of the status change of the received message, as recited in claim I, lines
10-12. Nor has the Examiner indicated why a person of ordinary skill in the art
would transmit this kind of information in view of the cited references.
Applicants assert that the Examiner has not established that the cited references
show all the processes of the claimed invention and further, has not established
a reason a person of ordinary skill in the art would combine processes of the cited

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references in such a way that would result in the synchronization of multiple
pager benefits of Applicants' invention. Consequently Applicants respectfully
disagree that the obviousness of the invention of claim 1 has not been
established and request removal of the rejection of claim 1. Claims 2-4 are
dependent upon claim 1 are also believed allowable for the above reasons.
The remaining references made of record by the Examiner: DeLuca '751,
Cannon '227, Fawcett '258 and Minami '848 have been considered and are not
believed applicable to Applicants' claimed invention.
The Commissioner is hereby authorized to charge any fees which may be
required or credit any overpayment to deposit account # 13-4778.
In view of the above, it is submitted that the claims are in condition for
allowance. Reconsideration of the rejections is requested. However, should the
Examiner disagree with applicant's attorney in any respect, it is respectfully
requested that the Examiner telephone applicant's attorney in an effort to resolve
such differences.
Respectfully submitted,
DELUCA ET AL.

Michael Zazzara
Attorney Appli nts
Reg. No. 35,743
Tel. [phone]
FAX [phone]

MOTOROLA, INC.
Intellectual Property Department
1500 Gateway Boulevard, MS 96
Boynton Beach, Florida 33426-8292

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