Nokia Corporation v. Apple Inc.

Filing 57

Disregard; see 61 . Modified on 12/20/2010 (jas).

UNITED STATES PATENT %ADEMARK OFFICE AND

Addmi. COMMlaSlONER OF PA'TENTSANDTIUDEMIKS Wa.bryton, D C W13L X W I u.pta,O.

UNITED ETATE3 DEPARTMENTOP COMMERCE U n l d S u b . Pahlra and Tr-duarrk Omo.

Nokia Corporation v.APPLICATION NO. Apple Inc.
09/939,3 I 3
2512 7590

FILING DATE
08/24/2001 I im6n002

I

FIRSTNAMW INVENTOR

A'lTORNEY DOCKET NO.
324-0 1052 I -US(PAR)

I

CONFIRMATION NO.
2843

Doc. 57 Att. 1

Olli Talvitic

PERMAN & GREEN

425 POST ROAD FAIRFIELD, CT 06824

I
ARTUNIT
2821

EXAMMER

1
PAPERNUMBER

CLINGER, JAMES C

I

1

DATE MAILED: I l f l 6 0 0 0 2

Please find below andor attached an Office communication concerning this application or proceeding.

PTO-9OC (Rcv. 07-01)

Dockets.Justia.com

Office Action Summary
The MAILING DATE o f this cornmunicetion appears on the cover sheet with the correspondence address Period for Reply MONTH(S1 FROM A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE three THE MAILING DATE OF THIS COMMUNICATION.

-

-

In no wont, howsvsr. may a rsph be lbnsty filed aftsr SIX I61 MONTHS from tha miling date of thu communbation. .If the period for iapty apacllind above ilose than thiw (30) b y a , a repb within the Ptatutory mininum of t h i q (30) iwill be conaidsrd tinsty. h .tf NO period for raph is Ppscifiadebova. ths maxhum statutory period will opph end will sxpin SIX (61 MONTHS from tha mailing dale of this communication. .Failure to iapw within tha set or axtsndbd period for repty will. by ntatuts, cawe ths application I o becoma ABANDONED 135 U.S.C. 1 133). .Am/ reply received by tha Onice M a r than thee month after tha mailing date of thb communicatian oven if timob fibd. may reducs any sarmd patem t o m adjustment. See 37 CFR 1.704(b).

. Extonsionsof t i n s msy be avnilabb under the provbiom of 37 CFR 1.136 le).

status
1) @ Responsive to communication(sl filed on Sep 3, 2002

2al@ This action is FINAL.

2 b ) o This action is non-final.

3) 0 Since this application is in condition for allowance except for formal matters, prosecutlon as to the merits is closed in accordance with the practice under Ex parte Quey/e, 1935 C.D. 11: 453 O.G. 21 3. Disoosition of Claims
4 ) @ Claimb) I-8 4a) Of the above, claim(s1 5 1 0 CIaim(s) idare pending in the application. islare withdrawn from consideration. islare allowed. islare rejected. idare objected to. are subject to restriction and/or election requirement.

I

61@ Clairn(s) 1-8
7a Claim(s1 1

810 Claims
Application Papers

91 0 The specification is.objected to by the Examiner.
lo)@ The drawing(s) filed on
111 0

Aug 24, 2001

i s h e a)

accepted or b ) n objected to by the Examiner.

Applicant may not request that any objection t o the drawing(s) be held in abeyance. See 37 CFR 1.85ta). is: approved b l n disapproved by the Examiner. The proposed drawing correction filed on

ala

If approved, corrected drawings are required in reply to this Office action.

1 2 1 0 The oath or declaration is objected to by the Examiner.
Priorlty under 35 U.S.C. If 119 and 120 13)@ Acknowledgement is made of a claim for foreign priority under 35 U.S.C.
§

119(a)-(d) or (11.

a]@

All b l n

Some'

None of:

1. @ Certified copies of the priority documents have been received.

2 . 0 Certified copies of the priority documents have been received in Application

NO.

3. 0 Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau (PCT Rule 17.2(a)). 'See the attached detailed Office action for a list of the certified copies not received.
1 4 ) n Acknowledgement is made of a claim for domestic priority under 3 5 U.S.C. 5 1191e). a) 0 The translation of the foreign language provisional application has been received. 1 5 ) 0 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. 5 5 120 and/or 121.
Anechmentls)
1I

@ Notice of Raferancsa Cited IPTO492)

41

21
3)

0Notice of Oraftrpsnon'r f a r n t Drawing Revww (PTO9481
@ Intomotion Dircbaure Statamnt(al IPTO14491 Paper Nolal.
5

5)

0bltONkW SUnVnaW IPTO-413) Pepor Nola). 0Notice of lnformal Patem Agplkaion IPTO-152)
other:

BI

U. S. Patent and Tmdamrk Officr

PTO-326 (Rev. 04-01)

Office Action Summary

Part of Paper No. 8

ApplicatiodControl Number: 09/939,3 13
Art Unit: 2821

Page 2

DETAILED ACTION

Claim Rejections 35 USC 8 102
1.

-

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 w a s described in(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 35 l(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States w a s published under Article 21(2)(a) of such treaty in the Engjish language; or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes n of this subsection based on the filing of an international application filed under the treaty defined i section 351(a).

2.

Claims 1-3 and 5-8 are rejected under 35 U.S.C. SO2(e) as being anticipated by

Johson(6,236,368). Claims 1 and 7-8, figure 10 discloses a mobile station with an antenna(28), ground plane which is part of pcb(32), antenna raising component(48), and a speaker(not number, but on opposite side of pcb; col. 2, lines 40-43) all in a shared space( 1 1) but with the distance between the antenna(28) and the ground plane(32) greater than a circuit board(32) and a back cover(1ower portion of back cover). Claim 2, the shared space disclosed in figure 10 includes the back and front covers.

ApplicatiodControl Number: 09/939,3 13
Art Unit: 2821

Page 3

Claim 3, the sound radiated from the back of the speaker in figure 10 will echo in the volume which is enclosed by the dielectric(30) and the pcb(32) which is part of the shared space disclosed in figure 8. Claim 5 , feed conductors are fastened to the antenna raising component(48) disclosed in figure 10. Claim 6 , the circuit board(32) disclosed in figure 10 is in the shared space.

Claim Rejections - 35 VSC $103

3.

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all

obviousness rejections set forth in this Office action:
(a) 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.

4.

Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Johson in view of

.El-Sharawy(W0 97/47054). Johson does not disclose a PIFA antenna. Claim 4, figure 8 of El-Sharawy discloses a PIFA for multiple frequency operation(abstract). It would have been obvious to one of ordinary skill in the art at the time of the invention to use a PIFA element as disclosed in El-Sharawy with the device disclosed in Johson for multiple frequency operation as disclosed in El-Sharawy.

ApplicatiodControl Number: 09/939,313
Art Unit: 2821

Page 4

Response to Arguments
5.

Applicant's arguments with respect to claims 1-8 have been considered but are moot in

view of the new ground(s) ofrejection.

Conclusion

6.

Applicant's amendment necessitated the new ground(s) of rejection presented in this

Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP 0 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE

MONTHS from the mailing date of this action. In the event a first reply 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 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this fina1 action.

Correspondence

7.

Any inquiry concerning this commhication or earlier communications from the examiner

shouId be directed to Examiner Jim Clinger whose phone number is [phone].

ApplicatiodControl Number: 09/939,3 13
Art Unit: 2821

Page 5

Any inquiry of a general nature or relating to the status of this application should be

directed to the Technology Center whose telephone number is [phone]. Papers related to Technology Center 2800 applications only may be submitted to Technology Center 2800 by facsimile transmission. Any transmission not to be considered an official response must be clearly marked "DRAFT". The faxing of such papers must conform with the notice published in the Official Gazette, 1096 OG 30 (November 15, 1989). The Technology Center Fax Center number is [phone] or [phone].

... .

P

L

ApplicationlConttol

No. 091939,313
Jim Clinger

4pplicent(s)/Patant

Under Reexam
01.

Tahritie at
A r t Unit

Notice of References Cited

Examiner

2821

Page 1 of 1

Counlrf Code.Numbor-K!nd Cod4

Document Number

MM-YYYY' Date

Name

Cfadfication

A

6,236,368

5/2001

Johson

343

I

702

I 1.1

I

I

I

I IJI
K
L
M

I

I

I

Counly Coda-Numbor-KindCod4

Document Number

MM-YYYY'

Date

Country

Name

Clasdfication*

N

I
S

I

1

I

I

T

NONSATENT DOCUMENTS Include, as applhb!e: Author, Tltle. Dete, Publlsher. Edition or Volume, Pertinent Pages
I I

V

lw I
' A CODY 01 Ihh reisranee Is no1 balng lumishad with Iha Ollica aclion.
U.

3 s MPEP I 707.0513.

' Dalas in MM-YYYY lowrar a n publication ditos.

CIarliiicallonI may bo U S . or ioroign

PTO-892 (Rev. 0 -20011 1

s. Potmi and Tradom~rk Ollica

Notice of References Clted

Part of Paper No. 8

J.7N-17-2003 15:38

F'RMRN

& GREEN, LLP

P.02

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICANT ( S )
:

Olli Talviti
09/939,313

SERIAL NO. :

I
AND

ART UNIT:

2821

FILING DATE:
TITLE :

August

2 4 , 2001

EXAMINER:
ANTEDIVA

Jamea

C.

Clinger

MOBILE STATION MOBILE STATION

ARRANGEMENT

IN

ATTORNEY

DOCKET NO. 2

Washington, D . C . 20231 BOX AF

Commiasioner of Patent6

FAX RECEIVED
JAN 1 7 2003

Sir:

RESPONSB

TECHNOLOGY CENTER 2800

This is in response to the O f f i c e Action mailed, November, 6 ,
2002

(Paper No.

6)

in regard t o the above-identified patent

application.
remarks.

Reconsideration of the r e j e c t i o n of the claims is

respectfully eolicited in light of the following amendment and

amend the Application as follows, amendments with the amendments highlighted
Please
Appendix A :

a

copy

of

the
a8

is

attached

JQN-17-2003 15:3a

PERMAN

8,

GREEN- LLP

P. E3

Please delete claims 1 and 2 without prejudice.
Please amend the following claim(8) as rewritten below:

34.

(Amended) A mobile station as claimed in claim , , wherein # said antenna assembly space is arranged to constitute an echoing volume f o r the speaker.
(Amended) A mobile station as claimed claim#, t y p e o t h e antenna is PIFA.
A mobile station as claimed claim/,

I

31

)

wherein the

+/ (Amended)

$.
1//

wherein conductors or electronic components are fastened to the antenna raising component. (Amended) A mobile station as claimed in claim/, wherein an antenna circuit board is arranged in said antenna assembly space.

I

/

`b.

(Amended) An antenna arrangement for a mobile station, comprising an integrated antenna, an antenna ground plane and an antenna elevation piece arranged to keep the antenna at a determined height from the ground plane, wherein the antenna arrangement is arranged in a space ahared with a speaker of the mobile station, and a circuit board is mounted in the mobile station such that it does not extend into said space. / (Amended) An the

antenna

arrangement is

a8

claimed
ae

in

claim

6

wherein module -

antenna

arrangement

arranged

an

assembly

JRN-17-2003

15:38

PERMRN

GREEN, LLP
3

P.04

Ser. NO.: 09/939,313 Art Unit: 2821

assembly including, an antenna ground plane an antenna, and an
antenna raising component arranged to keep

the

antenna

at

a

determined height

in respect of the ground plane, said mobile

station comprising:
a front cover and back cover which define an overall space

there bet ween, an antenna assembly space defined as part of said overall
space,

wherein

said

antenna

aesembly

is mounted,

said

space

extending from said front cover to s a i d back cover;
a main circuit board space defined ae part of said overall

space separate from eaid antenna assembly space, wherein a main printed circuit board is mounted at a predetermined height from said bock cover; and wherein a speaker o f the mobile station is also mounted in s a i d antenna assembly space, and wherein said printed circuit board does not extend i n t o said antenna assembly space.

REMARKS
StatuB of the Claims

Applicant has cancelled claims 1 and 2, added new claim 9 and amended claims
claim 9.
3-8.

Claims 3-6 are now dependent

on new

Applicant hat3 amended the claims to clarify the novel

features of the invention for which protection is sought in this application. rejection in

Them

amendments

are

submitted

after

final

order to place the claims in condition for allowance or in the alternative to place the claims in better
condition for appeal. The Examiner is requested to exercise his

JRN-17-2003 15:39

PERMQN & GREEN, LLP

P. 05

Ser. No.: 09/939,313 Att Unit: 2821
under consideration.

4

discretion and e n t e r these amendments.

Claims 3-8 and 9 remain

Prior claims 1-3, and 5-8 etand rejected under 35USClOZ(e)

based

on

the

newly in

cited

reference

Johson,

US

Patent

No.
WO

6,236,368.

Claim 4 stands rejected under 35USC103, based on the
Johson

reference
97/47054.

view

of

the

reference

El-Sharawy,

The Examiner is respectfully requested to reconsider

his rejection in view of the above amendments and the following
remarks.
T h e Invention

The

eubject

invention

relates

to an

antenna

assembly,

which

includea an antenna, an antenna support

(raising component) and The antenna

a ground plain, for a mobile telephone or the like.

is a planar type constructed to be contained within the housing

of a mobile unit.
separating the

In order to maximize the available space f o r element
of

radiating

the

antenna

from

its

associated ground plane a dedicated space io provided within the housing to accommodate the antenna assembly. this dedicated space. mounted
on

The circuit board

of the mobile u n i t is shortened so that i t does not intrude into

The ground plane of t h e antenna is not
board,
as

the

circuit

is

typical

of

prior

art

designs, but may be mounted opposite from the radiating elements
at a distance which

is only limited by the thickness of the

housing.

This space is also advantageously used to enclose the

speaker, thereby improving the speaker response.

This avoids

the need to provide sufficient height: above the circuit board to
provide the necessary separation of the radiating elements from the
ground

plane.

The

antenna art

configuration and
does

of

the

cited the

referenee

typifies

the p r i o r

not

diacloBe

dedicated space provided by the subject invention, a e described

..

JQN-17-2003

15:39

PERMQN & GREEN, LLP

P. 06

Ser. No.: 09/939,313 A r t Unit: 2821

5

in the claims.
Discutasion of the C i t e d Referencee The
Johson . Examiner

now

relies

on
the

the

disclosure
has
cited

of

the

reerence

In
of

particular figure
10

Examiner the

referred reference.

to

the

embodiment

of

Thi 8

embodiment, shows an antenna aseembly 12, eupported at a height above a ground plane 32 in a typical fashion.

The ground plane
extending examiner under
with

is mounted on a printed circuit which is element 20 in figure 1.
The
printed circuit
12,

board
as

is

clearly

shown
by

antenna

assembly

acknowledged

the

reference to a speaker.

The examiner indicates:

figure 10 discloees a mobile station with an antenna(28), ground plane which i s part of peb(331 8 8ntaMa raising component ( 4 8 ) I and a epeakar ( n o t number., but on opposite s i d e of gcb; col. 2 , l i n e s 4 0 - 4 3 ) a l l in u shared space (11I rr

.....*

.

This is the typical configuration of the prior art. board does n o t extend into the antenna space. greater height to be maintained of the antenna plane.

New claim 9

and amended claim 7 clearly indicate that the printed circuit
This permite a

from the ground

The extension of the printed circuit board under the
This i s precisely

antenna, as shown in the cited reference, necessarily limits the
height of the antenna from the ground plane.

the problem to which this invention is addressed.
the
speaker

In addition the printed circuit board effectively divides the space in which
operates
from

the

space

in

which

the

antenna

operates.

There is therefore no "shared space" as described in

t h e claims of this application.

..

J l - 7 2 0 15:39 GN1-03

PERMQN 8 GREEN, LLP

P.07

09/939,313 Art Unit: 2821
T h e Iseue o f Arrtacipation
AB

S e r . No.:

6

previously

stated,

it

ie well

settled

that

a

claim

is

anticipated, "only if each and every element as set f o r t h in the claim is found, either expressly or inherently described, in a single prior art reference. 'I (See CHISOLM, Federal Circuit Guide, Pg. 1221).
. i t must be shown t h a t the reference contains a l l of the

'I..

elements

of the claims apart

from

irrelevant

or merely

extraneous variations, and the elements are arranged in the same way to achieve the same result which is asserted to be an inventive function.. . ' I 454 U.S- 1129 (1981) The elements of the claim and their function and purpose within the claim

must
would

be
not

reviewed

in

a

manner

similar

to

an

infringement analysis.
reference

If the device described in the cited infringe if it was later, it will not

anticipate if the reference is earlier. Applying this standard to the antenna arrangement of Johson, miss ing : For example in claim 9: -an antenna assambly apace defined a m part of said overall apace, wherein e a i d antenna aesembly i s mounted, maid epace extending from said f r o n t cover to said back
it

i s clear that key elements o f the claims of this application are

cover; a main circuit board space defined a6 part of s a i d overall space separate from eaid antenna alssembly apace, wherein a main p r i n t e d circuit board l e mounted at a predetermined height frcw eaid back covert and wherein a Bpeaker of the mobile s t a t i o n ie a l a 0 mounted in said antenna aaaembly apace, a ~ d wherein s a i d printed circuit board does not extend into eafd anteana a e d l y space. * m

JRN-17-2003

15:40

PERMRN 8, GREEN, LLP

p.08

Ser. No.: 09/939,313 A r t Unit: 2821
Ad n

7

in claim 7:
lwherein the antenna arrangement is arranged in a space shared with a speaker of the mobile etation, and a circuit board i e m o u a t e d in the mobile station such t h s t it does not extend into e a i d apace."

Accordingly there would be no infringement and therefore, the cited reference .cannot
support

the

rejection

based

on

anticipation. Since the primary reference fails to support the rejection of the independent claims, the rejection of must fail. to the rejected dependent claims. With regard to the rejection of claim the elements of the claims and
these
4

dependent claims also

T h e above arguments are therefore equally applicable

under

35USC103,

it

follows that the primary reference Johson does not teach all of
deficiencies are not
The remedied by the teaching of t h e cited reference El-Sharauzy.

combined references do not support the rejection as presented by the Examiner.

In view of the amendments to this application and the arguments
stated
above,

Applicant

submits

that

the

claims
and

under

consideration

contain patentable

subject matter

favorable

action by the Examiner is respectfully requested.
The Commissioner is hereby authorized to charge payment for any
fees

associated

with

thia

communication

or

credit

any

over

I

JQN-17-2003

15:40

PERMFlN & GREEN, LLP

P.09

Ser. No.:

09/939,313

0

A r t Unit: 2821

payment to Deposit Account No. 16-1350.
Respectfully submitted,

Janik Marcovici (Reg. No. 42,841)
Perman & Green, LLP
425

Date

Poet Road

Fairfield, CT 06624
203-259-1600
Customer No.: 2512
CERTIFICATE OF FACSIMILE TRANSMISSION
I hereby certify that this c~rresgondence ie being transmitted by faceimlle to (703) 3 0 0 - 7 7 2 2 on the date indicated below, addreseed to the Box A?. Comm%asionsr of Patents, Washington, D.C. 20231.
Signature:

Person Making Deposit

FAX RECflVED
.IAN 1 7 2003

I

i

.

JQN-17-2003 15:40

PERMRN & GREEN, LLP

P. 10

Ser. No.:
Art

Unit: 2821

09/939,313

9

Appendix A to Response i n Application No.:

03/939,313

Amendment to the Claims:
3.

(Amended) A mobile station as claimed in claim &-, 9 antenna assembly space ; * arranged to constitute an echoing volume

wherein

-ad si

s i speaker.

rt;e+ag for the

..

4. (Amended) A mobile station as claimed claim

42, wherein the

type o f the antenna i s PZFA.

1

5. (Amended) A mobile station as claimed claim 42, wherein conductors or electronic components a r e fastened to the antenna raising component.
6. (Amended) A mobile station as claimed in claim %- , wherein an 9

I

si antenna circuit board is arranged in -ad assembly space.

antenna

7. (Amended} An antenna arrangement for a mobile etation, comprising an integrated antenna, an antenna ground plane and an

antenna elevacion piece arranged to keep the antenna at a determined height from the ground plane, wherein the antenna arrangement is arranged in a space shared with a speaker of the mobile atation, and 3
u

.a .-

circuit board is mounted in t h e mobile station such that it does

not extend i n t o said space.
8.

(Amended) An the

antenna

arrangement

as

claimed

in
an

claim

7,

wherein module,

antenna

arrangement

is

arranged

as

assembly

TOTQL

P.1 0

\

. ." '...
\

JqN-17-2003

15:37

PERMFlN 8 GREEN, LLP

P.01

FACSIMILE MESSAGE FROM

PERMAN & GREEN, LLP
425 P o s t Road F a i r f i e l d . , CT 06430

Main telephone number: 203/259-1800
Date:

Facsimile number: 203/255-5170

January 17, 2003 James C. Clinger Art Unit: 2821
( 7 0 3 1 308-7722
-6-

To : Fax No. :

--.---_.

RE :
From :

Serial No. 09/939, 313 Janik Marcovici
I

-I--

.

..

sa.

Number o f pages, including this s h e e t , being transmit t ed : 10
Attached f o r filing please f i n d :

FAX RECEIVED
JAN 1 7 2003
TECHNOLOGY CENTER 2800

Amendment I 9 p a g e s )