Nokia Corporation v. Apple Inc.

Filing 57

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

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(~yji-y~UNITED STATEt 'DEPARTMENT Patent and Trademark Office Address: OF COMMERCE COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 [ATTORNEY DOCKET NO.] SERIAL NUMBER I FILNG DATE 12/03/92 FIRST NAMED INVENTOR StEERNINK (17/985,588 E APLIP053 M BAWER U!NER 26112 PAUL L. HICKMAN ART UNIT PAPER NUMBER HICKMAN & ASSC. P.O. BOX 61059 Nokia Corporation v. Apple Inc. PALO ALTO, CA. 94306 2609 DATE MAILED: AV Doc. 57 Att. 7 05/28/93 the This is a communic"iOn fromh examniner in chege of your application COMMISSIONER OF PATENTS AND TRADEMARKS S This application has been examined E3 Responsive to communication filed on -________ D This action Is made final. month(s), A shortened statutory period for response to this action Is set to sxpIre---3L Failure tD respond within the period for response will cause the application to become abandoned. Plart I 1. 3. a. 0 days from the date of this letter. 35 U.S.C. 133 THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTIOWt Notice of References Cited by Examiner, PTO-892. CNotice of Art Cited by Applicant, PTO-1449. 2. 4. 6. C C C Notice re Patent Drawing, PTO-948. Notice of Informal Patent Application, Form PTO-152. _____________________ C information on How to Effect Drawing Changes, PTO-1474. Part 11 11. SUMMARY OF ACTION C~Claims C C / -1,9 are pending In the application. ______________________________are Of the above, claims withdrawn from consideration. 2. 3. Claims Claims have been cancelled. are allowed. 4. S. Claims / 8are rejected. are objected to. CClaims S. D Claims ________________________________are subject to restriction or election requirement. 7. S. 9. E0 This application has been filied with Informal drawings under 37 C.F.R. 1.85 which are acceptable for examination purposes. drawings are required In response to this Office action. _____________.Under CFormal are 0The corrected or substitute drawings have been received on C acceptable. 37 C.F.R. 1.84 these drawings EC not acceptable (see explanation or Notice re Patent Drawing, PTO-948). -________ has (have) been 10. 0The proposed additional or substitute sheet(s) of drawings, filed on examiner. Dl disapproved by the examiner (see explanation). 0: approved by the 11. 12. C The proposed drawing correction, filied on ,has been C3 approved. 0 disapproved (see explanation). 0Acknowledgment Is made of the claim for priority under U.S.C. 13 119. The certified copy has ;____________ filed on 03 been received El not been received been filed In parent application, serial no. 13. 0Since this application appears to be In condition for allowance except for formal matters, prosecution as to the merits Isclosed In accordance with the practice under Ex parte Ouayle, 1935 C.D. 11; 453 0.G. 213. 14. E Other EXAMINER'S ACTION PTOLU326 (Rtev, 9-89) Dockets.Justia.com Serial No. 07/985,588 Art Unit 2609 1. -2- Claim 18 is rejected under 35 U.S.C. 112, second paragraph, for failing to particularly point out and as being indefinite distinctly claim the subject matter which applicant regards as the invention. claim. It is unclear as to the applicant's intent in the 2. 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. 3. Claims 1 through 18 are rejected under 35 U.S.C. 103 as being unpatentable over Liljenwall in view of Mizzi. Addressing claims 1 through 7, Liljenwall teaches a gesture sensitive button of Liljenwall consists of: digital computation means, a screen means coupled to said digital computation means, pointer means for pointing to locations on said screen means Serial No. 07/985,588 2609 Art Unit -3- (namely, a finger; Cal 1, ins 49-58), button means (the array of buttons A, B, C... ) displayed on said screen means (Fig 1) where the said button means least two different (the array of buttons) is responsive to at button gestures (where the gestures have meaning to the button means) made by said pointer on said screen means (namely, the transparent button array and display nodule), and gesture recognition means for detecting gestures made on said screen means by said pointer means and operative to initiate a process in said digital computation means upon the detection said at least two different button gestures, where said initiated process is determined by which button gesture is detected (namely, the decoding scheme in Figure 4). It is probable the applicant intended for the "button" to be a specific portion of the screen which is sensitive to gestures of various types. It would have been obvious to modify Liljenwall by substitution a soft button means (a specific portion of the touchsensitive {claim 4} screen), such as those taught by Mizzi (Mizzi Cal 1, ins 49-51) as opposed to a mechanical button means because using soft buttons is known to maximize the display surface (Mizzi Cal 1, lns 36-41). The type of stylus used by Liljenwall is a finger (Cal 1, lns 1-38), but use of another type of stylus would be .Furthermore, an obvious alteration (claim 3) the system can be thought of as a pen-based computer system (claim 2) in that it uses a stylus to enter input. Serial No. 07/985,588 2609 Art Unit As ("tap", to claims 5 and 6, the particular -4- choice of gestures "X" and "Check") are obvious choices of design in that they are common gestures and therefore not patentable. It is obvious to have buttons change their appearance (claim 7) when activated. In many cases, the buttons would appear to be In depressed, whereas in some cases, the button is highlighted. any event, altering the image of buttons upon detection of a button is well known in the art. Arguments for the rejections of claims 8 through 18 are like those presented against claims 1.through 7. It is would be obvious to compare gestures process. (Claims Similar 16 and gestures with a set of 17) and initiate measurement the of recognizable appropriate methods include Hamming distance of images (or gestures), et cetera. It is the probable intent of the applicant (Claim 18) to indicate that the initiating process could start a number of tasks. obvious to initiate any number of tasks because It would be the button (of Liljenwall) is sensitive to a plurality of gestures. 4. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sklarew (US Patent #4,972,496) shows a handwritten keyboardless entry computer system (word processor, etc). Cullum (UK Patent #2,193, 023 A) reveals a pen-operated symbol displaying apparatus. Serial No. 07/985,588 Art Unit 2609 5. Any inquiry concerning this communication should be directed (703) 305-4847. to Aaron Banerjee at telephone number JUPFVJSOq' HT. PFiIA liPF UI; EX.AM;NEn TO SEPARATE, I '0O TOP AND BOTTOM EDGES, SNAP-APART AKrC DISCARD CARBON FORM PTO-892 U.S. DEPARTMENT OF COMMERCE SERIAL NO. (REV. 2-92) PATENT AND TRADEMARK OFFICE JTO ~ ROUPAR'TUNIT ATCMN L'o,4e~, NOTICE OF REFERENCES CITED APIATS ~--O -c ~ A;09o~ C/c2PAPER NUMBER C ________________U.S. PATENT DOCUMENTS DATE NAME CLASS ___ _____ SUBDOCUMENT NO. CLASS FILING DATE IF APPROPRIATE 'A B C D E F G 6(o Gre9 qn FOREIGN PATENT DOCUMENTS * DCUMNT ATECOUTRYNAM O. DTE DOCMEN NO OUNRYNAM _ _ _ _ _ _ _ CLSS CLSS _ _ _ SUBCLASS _ _ _ _ PERTINENT PP. SHTS. DWG ISPEC. L_ N 0 OTHER REFERENCES (Including Author, Title, Date, Pertinent Pages, Etc.) S U EXAMINER DATE *A copy of this reference isnot being furnished with this office action. (See Manual of Patent Examining Procedure, section 707.05 (a).) UNITED STATES DEPARTMENT OF COMMERCE Patent and Trademark Office Address: COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 SRANUBR FILING DATE FIRST NAMED APPLICANT ATTORNEY DOCKET NO. KAI.NN T INU 9 2FRN-BWERAR -I BANICE- MIMAR I/ 0-4 PAUL L. HICKMAN ASSC.AR 26M2 /1115 A4 UNTP ERNM R DATE MAILED: HICKMAN & P.O. BOX 61059 PALO ALTO, CA. 94306 EXAMINER INTERVIEW SUMMARY RECORD 11/15/93 All participants (applicant, applicant's representative, PTO personnel): L (1))6hf At4 (3) Aeou) BAeA7Z:c Date of interview I/e )~Personal Tttr /' D applicant 0 Type: 51 Telephonic (copy is given to 1 .Yes 0 applicant's representative). /}E',njs2.4&J Exhibit shown or demonstration conducted: No. If yes, brief description: "A~oL Agreement /?/Anrtt" 6",A)mAAnr .s-$t7 151was not reached. E3 was reached with respect to some or all of the claims in question. m ( Claims discussed: Identification of prior art discussed: Description of the general nature of what was agreed to if an agreement was reached, or any other comments: >AATh ~-,vA"r C7-4 C4) 5 AID'~~~ a4 o (A fuller description, if necessary, and a copy of the amendments, if available, which the examiner agreed would render the claims allowable must be attached. Also, where no copy of the amesndmerIts which would render the claims allowable is available, a summary thereof must be attached.) Unless Ihe paragraphs below have been checked to indicate to the contrary, A FORMAL WRITTEN RESPONSE TO THE LAST OFF ICE ACTION IS NOT WAIVED AND MUST INCLUDE THE SUBSTANCE OF THE INTERVIEW (e.g., items 1-7 on the reverse side of this form). If a response to the last Off ice action has already been filed, then applicant is given one month from this interview dateto provide astatement of the substance of the interview. oI it is not necessary for applicant to provide a separate recordlof the substance of the interview. o Since the examiner's interview summary above (including any attachments) reflects a complete response to each of the objections, rejections and requirements that may be present in the last Office action, and since the claims are now allowable this completed fomnis c9isleed to fulfill the response requirements of the last Office action. PTOL413 REV -841Exam ner's Signature ORIGINAL FOR INSERTION IN RIGHT HAND FLAP OF FILE WRAPPER PATENT In the United States Patent and Trademark Office Applicant: Applicant's Ref: Serial No: Filed: Title: Beernink, et a] P1017 (APL1P053) Examiner: Banerjee, A. Art Unit: 2609 07/985,5 88 -~Group 12/03/92 Gesture Sensitive Buttons for Graphical User Interfaces AMENDMENT A Commissioner of Patents and Trademarks Washington, D.C. 20231 Dear Sir: In response to the Office Action dated 5/28/93, the period of response to which extends through August 30, 1993, please enter the following amendments and remarks: In the Specification: On page 3, l1pe 26 deete "a". On page 50'ine 28, change "replace" to --replaced--. On pae- ie30, replace"w ne 35, On page On page line 35, Iine 15, On page l On page 7line 16, On page %l,ine 35, ith -- 07/976,970--. change "button" to --buttons--. delete "is". change "remove" to --removes--. change "turn" to --turns--. delete the second period after "66". t al.,". ith --07/888,741--. On page ti ne 11, after Capps, delete On page 9, line 11, replace"w -On page , line 12, replace" "withl--Method for Selecting Objects on Olt r ~ 9is paguer ne 28- fe-sre",isr-sOnF On page 94Kine 28, after "sreune", insert --is--. k replace On page i6t'ne 2, "know" with --nown--. On page Tline 3, underline "Object Oriented Programming for the Macintosh". In the Claims: I- * 1. (amended) A gesture sensitive button for a gr hical user interface comprising: digital computation means; display screen means coupled to said digital c putation means; 5t pointer means for pointing to locations on id display screen means; C/ button [means] image displayed on said display screen means, said button [means] inmagt being substantially immediately responsive to at least two different button gestures made by said pointer means on said display screen means; *ng gestures made on said display screen means by said pointer means and operative to initiate a process in said digital computation means upon the detection of said at least two different utton gestures, where said initiated process is determined gesture recognition means for det by [the] which button gesture is detec d. *2. (amended) A gest re sensitive button as recited in claim 1 wherein said digital computation means, said dis computer system. screen means, and said pointer means are part of a pen-based *3. (amended) gesture sensitive button as recited in claim 2 wherein said dispVay screen means comprises a touc -sensitive screen and said pointer means comprises a stylus. *4. (amended) A gesture sensitivebuti2ecited in claim 3 wherein a button gesture is a gesture made by said stylus on said to -s n iti reen which both contacts said button image. [means] image and which has meaning to s Atmeans] I F ,, 65> > (amended) A gesture sensitive button as ecited in claim 4 wherein one of said button *5. gestures is a tap made by the tip of said stylus on sai screen over said button [means] image. *6. (amended) A gesture sensitive but n as recited in claim 5 wherein another of said button gestures is selected from the group of ch ck-marks and X-marks and is made by said stylus on said display screen means over said button eans] image. *7. (amended) A gesture sensit' e button as recited in claim 6 wherein said button [means] imaNe displays an altered image on the detection of a button gesture. *8. (amended) A method fo providing a gesture sensitive button for a graphical user interface comprising the steps of:, providing a button [means] i a on a computer display screen; CfiI detecting a gesture made up [a] said computer display screen by a pointer means; determining whether said g sture is associated with said button [means] image: and initiating one of at least o processes if said gesture is associated with said button [means] image, where said initiated pr ess is determined by the nature of said button image and what gesture is detected. *9. (amended) A wherein said button [mean display screen. ethod for providing a gesture sensitive button as recited in claim 8 image comprises an image of a button displayed upon said computer * 10. (amended A method for providing a gesture sensitive button as recited in claimS8 further comprising the step of altering the image of said button jm=g after said determining step determines that said g sture is associated with said button [means] image. *11. (ame ed) A method for providing a gesture sensitive button as recited in claim 8 wherein said comp ter display screen is a touch sensitive screen and said pointer means is a stylus. 4 *12. (amended) A method for iding a gesture sensitive button as recited in claim 8 wherein said determining step includ(s te steys of determining whether said gesture contacts said button [means] ima~ge and determinin#htter said gesture is a recognizable gesture in the context of said button [means] image. 3 S 13. (amended) A method for provdin a gesture sensitive button as recited in claim 12 wherein a tap gesture is a recognizable gesturersaid button [means] imaje. f~ method for providing a gesture sensitive button as recited in claim 13 *14. (amended) Swherein a check-mark g ture is a recognizable gesture for said button [means] imag. *15. (am e wherein an X-m ed) A method for providing a gesture sensitive button as recited in claim 13 gesture is a recognizable gesture for said button [means] inmagg. (ameded)A method for providing a gesture sensitive button as recited in claitnSr wherein said determining step includes the step of comparing said gesture with a set of recognizable gestures for said button [means] image. -7 A method for providin a gesture sensitive button as recited in claim 16 wherein said initiating step includes the step f initiating at least one process step when said gesture is one of said set of recognizable gestur 17. 18. A method or providing a gesture sensitive button as recited in claim 17 wherein of process steps as determined by said gesture. /plurality said initiating step initi s a 5 REMARKS Minor corrections to the specification have been made by this amendment. Claims 1-16 have been amended, and claims 1-18 remain pending in the application. Claim 18 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Applicant regards as the invention. Applicant respectfully traverses. In the specification, page 11, lines 3-17, a plurality of process steps are described which are initiated depending which gesture is detected. it is believed that the language of the claim clearly follows the language of the specification. It is therefore respectfully submitted that claim 18 does particularly point out and distinctly claim the subject matter regarded as the invention as set forth in the specification. Applicant respectfully requests the rejection under 35 U.S.C. 112 be withdrawn. The Examiner rejected claims 1-18 under 35 U.S.C. 103 as being unpatentable over Li1jenwall in view of Mizzi. Applicant respectfully disagrees. In claim 1, which has been amended to more clearly claim Applicant's invention, the button image is displayed on the display screen means and is substantially immediately responsive to at least two different button gestures made by the pointer means on the display screen means. The Examiner argues that this arr angement is obvious over the array of physical buttons of Li1j enwall in view of the soft buttons of Mizzi, but it clearly is not. Applicant's gesture sensitive "soft buttons" have more functionality than Li1jenwall and Mizzi combined in that, unlike Li1jenwall, they indicate what types of inputs that they will accept and what results of such inputs would be and, unlike Mizzi, they accept a multiplicity of inputs to accomplish a multiplicity of tasks. The combination of Li1jenwall and Mizzi would merely be a number of unlabeled, undifferentiated soft buttons, each of which can accept an "on-off'type input from a pointer, rather than a gesture input as claimed by Applicant. The Examiner further argues that the disclosure of Li1jenwall anticipates the responsiveness of Applicant's button means to more than one gesture. Applicant respectfully traverses. Li1jenwall teaches a modal system where the device must be switched from one mode to another to accept different gesture types, unlike Applicants non-modal system where the button images are substantially immediately responsive to a multiplicity of gestures. Language has been added to the claims to indicate this non-modal behavior ('substantially immediately responsive") of Applicant's invention. Further, in view of this distinction, it would not have been obvious to create Applicant's invention by Li1jenwall in combination with Mizzi, because even the inclusion of the soft buttons of Mizzi in Li1jenwall would not produce Applicant's non-modal functionality. Applicant respectfully submits that claim 1 in not disclosed nor reasonably suggested by the art of record and requests that rejection under 35 U.S.C. 103 be withdrawn. Claims 2-7 are dependent either directly or indirectly on claim 1 and are therefore respectfully submitted as allowable for at least the same reasons as set forth above with respect to claim 1. Each of these claims add element to a combination which is not shown, described, or suggested in the cited art. In particular, the prior art does not disclose check-mark and X-mark gestures to input buttons of any kind (claim 6), nor does the prior art show the alteration of a button image based upon the type of gesture made over the button image (claim 7). Applicant therefore respectfully request that the rejection of claims 2-7 also be withdrawn. Claim 8 has been amended to emphasize that the process initialization step is dependent both upon the type of gesture detected and the nature of the button image itself. Similar to those reasons as set forth with respect to claim 1, claim 8 is not disclosed nor reasonably suggested by the art of record. In Li1jenwall, there is no button image and, therefore, there is no context to the inputs to the device. A user inputs data and commands with physical buttons, and results are displayed on a display. Different types of gestures are input in Li1jenwall only by switching between modes rather than by recognizing a gesture in the context of an input button image. Again, Applicant has a non-modal approach wherein one of a plurality of processes are initiated depending upon the detected gesture, unlike Li1jenwall where only one process is initiated upon an input for a particular mode of operation. In view of these differences, Applicant respectfully requests that the rejection of claim 8 be withdrawn. Claims 9-18 are dependent either directly or indirectly on claim 8 and are therefore respectfully submitted as allowable for at least the same reasons as set forth above with respect to claim 8. Each of these claims add a step to a combination of steps which were not shown, described, or suggested in the cited art. For example, claim 12 recites a step of determining whether the gesture is recognizable in the context of the button image, where such a step is not shown in the cited art. Applicant therefore respectfully requests that the rejections of claims 9-18 be withdrawn. The prior art made of record but not relied upon by the Examiner has been considered, and jApplicant believes that the pending claims are patentable thereover, Applicant believes that all pending claims are allowable and respectfully requests a Notice of Allowance for this application from the Examiner. Should the Examiner believe that a telephone conference would expedite the prosecution of this application, the undersigned can be reached at the telephone number set out below. Respect bnutted, Paul L. Hickman Reg. 28,516 Palo Alto, California 415-328-6500 tmli TraiJlf a Response to an 8W Action f1=%=te ap2~osit: c Pate Docket No.: P1017 1hafd9 msananama of theb0W Moeso document Isbein a .C.,020231, 1.58Fsa ead adressed to the CommissIoner of Patents and Tradema=,hngton,D to erson on the be bignature o Paul L. Hicka Ne 0eon 8/30/93 ate Of MknteDeposit: MaI th Dost: e sWt te Uied States 08PeoStnvoe date rdeDQit. safng t-I IN THE UNITED STATES PATENT AND TRADEMARK OF Inventor(s): Serial No.: Filed: Beernink et al. 07/985,588 GroupArtUnit: Examiner: 26 12/03/92 A. Banerjee Title: Gesture Sensitive Buttons for Graphical User Interfaces The Commissioner of Patents and Trademarks Washington, D.C. 20231 Sir: Transmittal of a Response to an Office Action (Amendment) (Undera37 CFR 1.115)7 -x Transmitted herewith is a response to an office action for the above identified patent application'$ pajes). of substitute formal drawings. Transmitted herewith are -sheets Other: (for other than a small entity) ______ _______ TFee Calculation Fee Items Total Claims Independent Claims Claims Remaining After Amendment Highest Number of Claims Previously Paid For - Present Extra Claims ______ _ Fee Rate x$20. 00 x____ x $72 .00 ____ _____ Total #= # = ______ ______ - Multiple Dependent Claimn Fee (one or more, first added by this amendment) $220.00 4] _____ Total Fees -x No additional fee is required. check in the amount of $____ __A XAt any time during the pendency of this application, please charge any fees required or credit any overpayments to Deposit Account 08-2120. Aduplicate copy of this transmittal is enclosed. the Total Fees due to Deposit Account 08-21 20. At any time during the pendency of this application, please charge any fees required or credit any overpayments to Deposit Account 08-2120. A duplicate copy of this transmittal is enclosed. __Charge is enclosed. Paul L.Hickman Date: 8/30/93 Hickman & Beyer 490 California Avenue, Suite 202 Palo Alto, California 94306 (415) 328-6500 Reg. No. 28,516 Page 1 of 1 of 1[anamd Pagev.1.0 5111931

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