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 6

(j)
I SERIAL NUMBER

1 .--=F..:;IL=IN:.:;G=D:.::AT.:.:E=--...!-

UNITED STAres DEPARTMENT OF COMMERCE

Patent and Trademark Office

Address: (XlMMISSIONER OF PATENTS AND lRAOEMARKS
Washington, D.C. 20231

~F.::.IR:.::S"_T.:.:N::;.:A=M=EO:::..:.:.IN:..:V_":E:.::NT.:.:O::::R..:-.

..J..;IA:::.TT~O::cR~N,"::.IEY~D~OC~K~E=.:T:..:N~O::.: •.....I

PN.io..,ICi<
EXAMINER

PHf4t·1, C
:.:'::I,SfYl::: /

!"IOT1:"":OI.fq INC
IN 1 ':tL.ECTI..!?il..
CORPO~~TE

(I ~1:."2l

ART UNIT

PAPER NUMBER ]

F'F~CIPF:F~TY

OFFICES

:l :)0:'/ F (\LfiONOU J 1'.1 nOr:)V
:::;CHf;i.it'lJ:iUI'(I:;; I L

261

6 (1196

j

DATE MAILED:

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

o

This application has been examined

~

Responsive to communication flied on

~ This action is made final.

_

I> 5

A shortened stalU/ory period for response to this action Is set to expire
month(s),
days from the date of thls letter.
Failure to respond within the period for response will cause the application to become abandoned, 35 U.S.C. 133

Part I THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
1 . 0 Notice of References

0

3.
5. 0

Part II

C~ed by Examiner, PTD-892.

2. 0
4. 0

Notice of Art Cited by Applicant, PTO-1449.
Information on How to Effect Drawing Changes, PTO-1474.

6.

0

Notice of Draftsman's Patent Drawing Review. PTO-94B,
Notice of Informal Patent Application, PTO-152,

.

SUMMARY OF ACTION

are pending In the application.
Of the above, cfalms

2.

are withdrawn from consideration.

~

[l.1 Clalms,_5'=---,Oc!'\·_L/Z1L.

have been cancelled.

3.llJ Claims ~J_-~LJ'-tJ~(P2j,--,-J ""'5_-..:../. .7'---'f---"L-qL-.

are allowed.

4.00 clalms_/~-...:./-'t.f!.....-.:.lR_'_'0~QIo£..._2.D=_-_'=7..W=_

are reJec1ed.

5.0 Clalms

are objected to.

6.0 Clalms,
7.

0

are SUbject to restriction or election requirement

This application has bean flied with Informal drawings under 37 C.F.R. 1.85 which are acceptable for examination purposes,

0 Formal drawings ara required In response to this Office action.
9.0 The corrected or substitute drawings have bean received on
8.

are

0

acceptable;

0

. Under 37 C.F.R. 1.64 these drawings
not acceptabla (see explanation or Notice of Draftsman's Patent Drawing Review, PTQ-94B).

10.0 The proposed additional or substiMe sheet(s} of drawings, filed on
examiner: 0 disapproved by the examiner (see explanation).
11. 0
12.

0

The proposed drawing correction, filed

" has (have) been

Oapproved by the

~. has been, 0 approvad; 0 disapproved (see explanation).

Acknowledgement Is made of the claim for prlor1ty under 35 U.S.C. 119. The certifled copy has
o been filed In parent application. serial no.
; flied on

0 been received 0 not been receIved
~_

13.0 Since this application apppears to be In condltlon for allowance except for formal matters, prosecution as to the merits Is closed In
accordance with the prectlce under Ex parte Quayle, 1935C.D. 11; 453 O.G. 213,
14.

o

Other

EXAMINER'S ACTION
PTOl·328 (Rev. 2193)

987FH107

-2-

Serial Number: 08/459,376
Art Unit: 2611

Part III

1.

DETAILED ACTION

The amendment filed on -3-4-96 has been fully considered and

made of record.

Claim Rejections - 35 USC

§

102

2.
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:
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 qas fulfilled
the requirements of paragraphs (1), (2), and (4) of section
371(c) of this title before the invention thereof by the
applicant for patent.

3.

Claims 20-24 are rejected under 35 U.S.C. § 102(e) as being

anticipated by Krenz et al (5,170,173, previously cited).
- Consider claims 20, 22 and 24, Krenz shows in figures 1
and 4 a radio device having receiver circuitry (401) disposed in
a housing (main body

~01

and hinge element 102 are read as the

housing), a loop antenna (110) coupled to the receiver circuitry
and attached to the outside, nonconductive surface of the housing
(the antenna 110 is sitting on top of the nonconductive hinge
element as shown in figure 1), a

sUb~tantially

planar cover (the

cut away surface that covers a portion of the antenna as shown in
figure 1) attached to the outside surface of the housing for

987FH108

Serial Number: 08/459,376

-3-

Art Unit: 2611

concealing the antenna between the cover and the outside surface
of the housing.
- As to claim 21, the cover of Krenz is considered an
escutcheon.
- As to claim 23, the antenna (110) of Krenz is integrally
formed with the cover as shown in figure 1.

Claim Rejections - 35 USC

§

103

4.
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
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 (f) 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.

5.

Claims 25 and 26 are rejected under 35 U.S.C.

§

103 as being

unpatentable over Krenz et al in view of Stantos et al (5,258,892
previously cited) .

--l
987FH109

Serial Number: 08/459,376

-4-

Art Unit: 2611

- Krenz et al discloses a receiver as discussed above.
Although it does not show the antenna surrounding a user
interface, it is well known 'in the art to provide a microphone
surrounded by a loop antenna on the hinge element of a radio
device.

Therefore, implementing Krenz's device with such a

microphone would have been obvious to one skilled in the art.

6.

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

§

103 as being

unpatentable over Krenz et al in view of Metroka et al
(5,117,449) .
- Consider claims 7, 10 and 12, Krenz discloses'a radio
device as discussed above.

Krenz, however, fails to show the

radio device including pager circuitry.

Nevertheless, it is

known in the art to incorporate pager circuitry in a radio
device, as shown by Metroka (see figure 1, element lOS), 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 Krenz with pager circuitry 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 main body (33) and using the antenna (102)
as the pager antenna.

._.

__

._--I

I

987FH110

-5-

Serial Number: 08/459,376
Art Unit: 2611

- As to claim 8, the cover of Krenz is considered an
escutcheon.
- As to claim 9, although not shown by Krenz, its radio
device inherently includes a shield for shielding the circuitry
inside the main body case {lOll.
- As to claim 11, the antenpa of Krenz is integrally formed
with the cover as shown in figure 1.

7.

Claims 13 and 14 are rejected under 35 U.S.C.

§

103 as being

unpatentable over Krenz et al in view of Metroka et al as applied
to claim 12 above, and further in view of Stanton et al.
- Claims 13 and 14 are anlyzed,in the same manner as applied
above in claims 25 and 26.

Response to Amendment

8.

Applicant's arguments with respect to claims 7 and 20 have

been considered but are deemed to be moot in view of the new
grounds of rejection.

9.

Applicant's amendment necessitated the new grounds of

rejection.
§

706.07(al.

Accordingly, THIS ACTION IS MADE FINAL.

See M.P.E.P.

Applicant is reminded of the extension of time

policy as set forth in 37 C.F.R.

§

1.136(al.

987FH111

-6-

Serial Number: 08/459,376
Art Unit: 2611

A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL
ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS
ACTION.
IN THE EVENT A FIRST RESPONSE IS FILED WITHIN TWO MONTHS
OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION
IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED
STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE
ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE
PURSUANT TO 37 C.F.R. § 1.136(a) WILL BE CALCULATED FROM THE
~ILING DATE OF THE ADVISORY ACTION.
IN NO EVENT WILL THE
STATUTORY PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS FROM
THE DATE OF. THIS FINAL ACTION.

Allowable Subject Matter

10.

Claims 1-4, 6, 15-17 and 19 are allowable over the prior art

of record.

11.

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.

12."
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)
305-47:1.:1..
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].

CHP
May 16, 1996

(iM !ttJ0
r

CHIH. PHAM
PRIMARY EXAMINER

GAOUP2600

987FH112