Nokia Corporation v. Apple Inc.
Filing
57
Disregard; see 61 . Modified on 12/20/2010 (jas).
P
FSERIAL NUMB3ER 138/228,460 FILIN DT 04/15/94 BEERNINK IPAULL L. HICKMAN HICKMAN & BEYER P'. 0. BOX 61059
ENAD
UNITED4STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Address: COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 IATTORNEY DOCE E LMUIL, L ART UNIT PAPER NUMBER7 P1017CO5SA EXAMINER O
FIRST NAMED INVENTOR
26M2/1 128
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Nokia Corporation v. Apple Inc.
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~'uo2609
DATE MAILED: 1 /89
Doc. 57 Att. 9
This Isa communication from the examiner Incharge of your application. COMMISSIONER OF PATENTS AND TRADEMARKS
[9 This application
has been examined
[Z
Responsive to communication filed on
ell)E
______days
This actionIs made final.
A shortened statutory period for response to this action Isset to expre* t -~ month(s), from the date of this 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:
i.
[XI
a.
[J
Notice of References Cited by Examiner, PTO-892. 3EDNotice of Art Cited by Applicant, PTO-1 449.
Information on How to Effect Drawing Changes, PTO-1474.
2. 4.
6.
5 0
0
Notice of Draftsman's Patent Drawing Review, PTO-948. Notice of Informal Patent Application, PTO-1 52.
____________________
Part 11 SUMMARY OF ACTION
[X. claims
2.
3.
1J
2
are pending inthe aplication.
are withdrawn from consideration.
Of the above, claims ____________________________
Caims 4.
12
4 21- 23
If--20 alAJ 2E§
have been cancelled.
are allowed.
0
Claims
4.E lims 5. E:1 claims
1 -3,
are rejected.
are objected to. are subject to restriction or election requirement.
S.
7.
cI laims_____________________________
ElThis application has been filed with Informal drawings under 37 C.F.R. 1.85 which are acceptable for examination purposes. 8. 5Formal drawings are required In response to this Office action.
9. 0l The corrected or substitute drawings have been received on
_____________.Under
37 C.P.R. 1.84 these drawings
are [3 acceptable; 0 not acceptable (see explanation or Notice of Draftsman's Patent Drawing Review, PTO-948). 10o.
CiThe proposed additional or substitute sheet(s) of drawings, filed on _________.
examiner; 0 disapproved by the examiner (see explanation).
has (have) been
0 approved by the
11.l 12.
The proposed drawing correction, filied
1[3 been filed
_________
has been
0Oapproved; 0 disapproved (see explanation).
___________
E] Acknowledgement Ismade of the claim for priority under 35
in parent application, serial no.
_;_________
U.S.C. 119. The certified copy has 0 been received 03 not been received
filed on
13.
ElSince this application apppears to be Incondition for allowance except for formal matters, prosecution as to the merits Is closed In
accordance with the practice under Ex parte Ouayle, 1935 C.D. 11; 453 O.G. 213.
14.
Ciother
EXAbHNERIS ACTION PTOL-M1 (Rev. 2/9*)
Dockets.Justia.com
Serial Number: 08\228,460 Art Unit: 2609
1.
The finality of the previous office action is withdrawn in-
view of newly discovered prior art to Sach et al, More et al and Agulnick et al. regretted. The delay in the citation of this art is
Rejections based on the newly discovered art follow.
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 1-3, 5, 7-11, 13, 16-19, 20 and 24 are rejected under
35 U.S.C. § 103 as being unpatentable over Sach et al.
Sach et al teach a method for providing a gesture sensitive bul:ton comprising a digital processor(24); a display screen(il) connected to the digital processor(24); a pointer(a finger); a touch sensitive surface for detecting the position of pointer on the touch sensitive surface, a button image(22a or 22b) and gesture recognition means (21 and 24) for detecting gestures made by the pointer(a finger) (see figure 2; column 2, lines 18-68 and
Serial Number: 08\228,460 Art Unit: 2609
-3-
column 3, lines 1-8)
.
The processor(24) can be able to response
to at two different button gesture made by the pointer over the button image (22a or 22b) without any intermediate input(see column 3, lines 34-41). Sach et al fail to disclose a touch sensitive surface coextensive with a display screen. More et al disclose a graphical
interface system comprising a touch-sensitive surface(41-60, 62) for detecting the position of pointer( a pen or a finger)
.
The
surface(41-60, 62) is co-extensive with the display screen(l) (see figure 1 and column 12, lines 4-46). It would have been obvious
the have modified Sach et al with the teaching of More et al, so as to save the space for setting up a separate touch-sensitive panel and to be more easy for a user to carry or move the input system. As to claims 3, 11, 19, More et al teaches a pointer can be a stylus or a finger and the touch-sensitive surface(41-6O, with a bounding box(see figure 1 and column 1, lines 42-47). As to claim 2, More et al teach a pointer(3) are part of a pen-base computer system(see figure 2 and column 12, lines 4-12). As to claims 7 and 9-10, sach et al. teach button image(53A, 531B, 59, 62) for presenting an altered image(Left Margin, Right 62)
Margin or handwritten text) based on the detection of a button gesture(see figures 1-2; column 12, lines 47-68 and column 13, lines 1-14).
Serial Number: 08\228,460 Art Unit: 2609
-4-
As to claims 5 and 13, More et al teach one of the button gesture is tap; e.g. select a button (45) (see figure 1). As to claim 20, Sach et al teach button gestures (a finger) overlap at least approximately 40k of the bounding box(22a or 22b) (see figure 1). 4.
27
~7.
Claims 6, 14, 15 and 25 are rejected under 35 U.S.C. § 103
as being unpatentable over Sach et al in view of More et al and Agulnick et al. Sach et al as modified by More et al fail to disclose check marks and X-marks gestures. Agulnick et al teach a computer
system comprising a touch-sensitive surf ace(l0), a pointer(stylus or pen) for entering check-marks(652) and X-marks(629) gestures to a computer(see figures 1, 2, 24, 45, 53, 54; column 6, lines 11-31; column 12, lines 3-7 and column 13, lines 28-39)
.
It
would have been obvious to have modified the combination of Sach et al and More et al with the teaching of Agulnick et al, so as to allow a computer to discern the natural movement of the Operator's hand at the end of drawing and initiate processing or recognition and to offer better feedback to the operator. 5. Applicant's arguments with respect to claims 1-3, 5-11, 13-
20 and 24-25 have been considered but are deemed to be moot in
View Of the new grounds of rejection.
6.
The prior art made of record and not relied upon is
considered pertinent to applicant's disclosure.
Serial Number: Art Unit: 2609
O8\228,460
Tchao et al teach a method for manipulating notes on a screen of a computer display. 7. Any inquiry concerning this communication should be directed
to Lun-Yi, Lao at telephone number (703) 305-4873.
Novrember 17,
1995
Lun-Yi, Lao RICHARD HJERPE SUPERVISORY PATENT EXAMINERq GROUP 2600
TO SEPARATE, HOLD "OP AND BOTTOM EDGES, SNAP-APART AND DISCARD CARBON
FORM PT04892 (REV. 2-92)
PATENT
U.S. DEPARTMENT OF COMMERCE AND TRADEMARK OFFICE
SERIAL NO.
RO3UP ART UNIT IATTACHMENT TO
PAPER NUMBER
NOTICE OF REFERENCES CITED
APPLICANT(S)
_____________
US. PATENT DOCUMENTS
DATE NAME CLASS
____
SUBDOCUMENT NO. CLASS
FILING DATE IF APPROPRIATE
4 a /tso/s/Ps
mzgranr
349 709?
301
___
vCL/99
DI E F
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*DOCUMENT
NO.
DATE
COUNTRY
_____________ ___
NAME
___ ___ __DWG
CLASS
CLASS
SUB-
PERTINENT
SHTS. IPP. SPEC,
M N 0 P
OTHER REFERENCES (Including Author, Title, Date, Pertinent Pages, Etc.)
UIEXAMINER
JDATEI
4A
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*A
/L? 1)*e
copy of this reference is not being furnished with this office action. (See Manual of Patent Examining Procedure, section 707.05 (a).)
SERIAL NUMBER
IFILIN
AT 04/"15/94
Address: COMMISSIONER OF PATENTS AND TRADEMARKS Washington. D.C. 20231 FIRST NAMED INVENTOR ATTORNEY DOCKET NO. BEERNINK E PO7O3 EXAMINER
Z
Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
08/2:-'. 460
IAUL L.
HIFCKMAN
26M2/0409 ART UNIT PAPER NUMBER
I I
HICKMAN & BEYER
P. 0. BO--X 61059 PALO ALTO, 94306
26f9 DATE MAILED: This Isa communication from the examiner Incharge of your application. COMMISSIONER OF PATENTS AND TRADEMARKS 04 /09/':?6
This application has been examined
12Responsive to communication tiled on_________
E2 This action Ismade final.
Ashotened statutory period for response to this action Isset to expire
Failure to respond within the period for response will cause the application to become abandoned. 35 U.S.C. 133 Part I THE FOLLOVWNG ATTACHMENT(S) ARE PART OF THIS ACTION: 1. 3.
S.
.. A
K -4A month(s), ---- :!: ays from the date of this letter.
12Notice of References Cited by Examiner, PTO-892. 12Notice of Art Cited by Applicant. PTO-1 449. 12Information on How to Effect Drawing Changes, PTO-1474.
I-
2. [] Notice of Draftsman's Patent Drawing Review, PTC-948. 4. [:]Notice of Informal Patent Application, PTO-1 52.
6.
E
____________________
Part 11 SUMMARY OF ACTION 1. [Iclaims
2Sare
pending Inthe application. are withdrawn from consideraion.
Of the above, claims ____________________________
2.Soiaims
3.1'Claims
I 'Z p-
Z
-
have been cancelled.
are allowed.
4.I Claims
5. IDclaims
I~
R
Ztj(4) t.
z-
are rejected.
are objected to.
6. El Claims_____________________________ are subject to restriction or election requirement. 7.[1] This application has been fliled with Informal drawings under 37 C.F.R. 1.85 which are acceptable for examination purposes. 8.[]i Formal drawings are required Inresponse to this Office action.
9. El The corrected or substitute drawings have been received on
37 C.F.R. 1.84 these drawings are [3 acceptable; 0 not acceptable (see explanation or Notice of Draftsman's Patent Drawing Review, PTO-948).
_____________.Under
10. rl
The proposed additional or substitute sheet(s) of drawings, filed on examiner; 0 disapproved by the examiner (see explanation).
__________.has
-_______. has (have) been
03 approved by the
11
El The proposed drawing correction, filed
been
filied on
0Oapproved; 03disapproved (see explanation).
___________
12. El Acknowledgement Ismade of the ciaim for priority under 35 U.S.C.1119. The certified copy has 0Obeen received 0 not been received
0 been filed In parent application, serial no. _;_________
13.
12Since this application apppears to be Incondition for allowance except for formal matters, prosecution as to the merits is dlosed in
accordance with the practice under Ex paile Quayle, 1935 C.D. 11; 453 O.G. 213.
14.1 Other
EXANMNER'S ACTION PrOL-26 (Rev. 2I)
Serial Number:08/228,460 Art Unit: 2609
2
1. 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 (if) 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. 2. Claims 1-3, 5-11, 13-20, 24 and 25 are rejected under 35
U.S.C. § 103 as being unpatentable over Agulnick et al in view of More et al. Agulnick et al teach a method for providing a gesture sensitive button comprising a digital processor(50); a display screen(10) connected to the digital processor(50); a pointer(4) (see figures 1, 2 and column 6, lines 26-31); a touch sensitive surface(12) (see figures 1, 2 and column 8, lines 59-60) for detecting the position of pointer on the touch sensitive surface(12); a button image(190) (see figure 4) and gesture
recognition means(70, 90) (see figure 4) for detecting
gestures (single tap(621) and double-tap(622)) (see figures 4, 45 and column 11, lines 4-18) made by the pointer(4)
.
The
Serial Number:08/228,460 Art Unit: 2609
processor(50) can be able to response to at two different button gestures (a single tap(621) and a double tap(622)) made by the pointer(4) over the button image(190) without any intermediate input(see figures 3, 4, 45). Agulnick et al fail to disclose a touch sensitive surface co-extensive with a display screen. More et al disclose a
graphical interface system comprising a touch-sensitive surface(41-60, 62) for detecting the position of pointer( a pen or a finger). The surface(41-60, 62) is co-extensive with the
.
display screen(l) (see figure 1 and columnn 12, lines 4-46)
It
would have been obvious the have modified Agulnick et al with the teaching of More et al, so as to distinguish the display area and touch sensing area. As to claims 3, 11, 19, More et al teaches a pointer can be
a stylus or a finger and the touch-sensitive surface(41-60, 62) with a bounding box(see figure 1 and column 1, lines 42-47). As to claim 2, More et al teach a pointer(3) are part of a pen-base computer system(see figure 2 and column 12, lines 4-12).
As to claims 7 and 9-10, Agulnick et al teach a button image(lB0) for presenting an altered image(next page) based on
the detection of a button gesture(see figure 4 and lines 17-28).
As to claims 5 and 13, More et al teach one of the button gesture is tap; e.g. select a button(45) (see figure 1).
Serial Number:08/228,460 Art Unit: 2609
4
As to claim 20, button gestures (a single tap and double tap) overlap at least approximately 40% of the bounding box(190) (see figure 4) is obvious design choice it would depend how large the pointer would be. As to claims 6, 14, 15 and 25, Agulnick et al teach a a
computer system comprising a touch-sensitive surface(10),
pointer(stylus or pen) for entering check-marks(652) and Xmarks(629) gestures to a computer(see figures 1, 2, 24, 45, 53, 54; column 6, lines 11-31; column 12, lines 28-39). 3. Applicant's arguments with respect to claims 1-3, 5-11, 13lines 3-7 and column 13,
20 and 24-25 have been considered but are deemed to be moot in view of the new grounds of rejection. 4. Any inquiry concerning this communication should be directed
to Lun-Yi, Lao at telephone number (703) 305-4873.
April 4, 1996 Lun-Yi, Lao
RICHARD WJ PE SUPERVISORY PATENT EXAMINER GROUP 2600
~uJ '
:39
en ettyl that this conelodece isbigdeposited theUnited States Postal=rieas fis ls alIn a nvelope addressed to: Commissioner of Patents and 0231~aa 9,1996. on July a2TI emarkcs Washin ton
PATENT
js-
Melissa WnTrease
Cli ent/Attorney Docket No.: P1017C/APLIP53A
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re application of: BEERNINK, et a. Serial No.: 08/228,460 Filed: April 15, 1994 Examiner: Lao, L. Art Unit: 2609 RESPONSE
For: GEsTuRE SENsmvE BuroNs FoR
GRAPHIcAL. UsER INTERFAcEs
The Honorable Commissioner of Patents and Trademarks Washington, D. C. 20231 Sir: The Applicants in the above-identified matter respectfully request reconsideration of the objections and rejections set forth in the Office Action mailed April 9, 1996, in view of the following remarks.
REMARKS Claims 1-3, 5-11, 13-20, 24, and 25 remain pending in the present application. The Applicants acknowledge the Examiner's withdrawal of the rejections set forth in the Office Action mailed November 28, 1995, in view of the new grounds for rejection set forth in the Office Action mailed April 9, 1996. See, Examiner Interview Summary dated April 3, 1996.
Presently, all pending claims stand rejected as allegedly obvious over U.S. Patent
No. 5,347,295 to Agulntick, et al., ("Agulnick") in view of U.S. Patent No. 5,194,852 to More, et al. ("More"). The Examiner asserts that Agulnick teaches, inter alia, "a method for providing a gesture sensitive button" while More teaches, inter alia, "a touch-sensitive display screen." Office Action mailed April 9, 1996, at 2 and 3. These rejections are respectfully traversed in view of the following remarks.
In one aspect, the present invention provides gesture-sensitive, multi-fuction buttons for a graphical user interface. In one embodiment, the button of the invention includes a digital processor which is coupled to a display screen. A pointer for pointing to locations on the display screen in also included. This embodiment of the invention further includes a touch-sensitive surface co-extensive with the display screen and responsive to the position of the pointer on the touch-sensitive surface. Displayed on the display screen is a button image which image is responsive without any intermediate input to at least two different button gestures made by the pointer on the display screen at any location over said button region. Finally, gesture recognition means for detecting gestures made on the display screen by the pointer is provided. The gesture recognition means is operative to initiate a process in the digital processor that is determined by a recognizable button gesture made with the pointer on the display screen which gesture both selects the button image and which has meaning to the digital processor based upon a context associated with said button image. The gesture recognition means is arranged such that the function associated with each of the button gestures will be initiated and executed in an identical manner regardless of the location over the button image that the gesture was made. The gesture-sensitive, multi-function buttons provided by the present invention will be appreciated as reducing screen clutter by combining the control of several functions and/or processes with a single button that is displayed on the graphical user interface. Such conservation of display "real estate" is very useful in computer systems having limited display size, such as laptop computers and personal digital assistants. The Examiner asserts that Agulnick teaches gesture-sensitive buttons that respond to one- or two-tap gestures. Id. In support of this assertion, the Examiner suggests that Agulnick teaches the use of tab markers that can accept single or double taps. Id. at 3. However, the Applicants respectfully submit that Agulnick actually teaches away from the present invention by describing "gesture areas", capable of handing multiple gestures, which gestui&areas are distinct from buttons that can handle only a single tap: Gestures have a strong advantage over visible
controls. There may be, for a given computer action or
command, both a gesture which can be drawn in a gesture area and a button or other command symbol which may be tapped to carry out the cormmand. However, in the present invention, the gesture area which is sensitive to the command gesture is preferably much larger than the correspondingbutton or the like which may be tapped to accomplish the same command This is due to the fact that a given region of the display can distinguish between many gestures and can display BEERNINK, et al. Serial No.: 08/228,460 Page 2
changeable information, while a buffton must be labelled in some static way and can only accept a tap. Agulnick at Column 10, lines 1-14 (emphasis added). Thus, Agulnick teaches graphical user interfaces in which certain regions, called gesture areas, can accept and process multiple user gestures. Agulnick, however, maintains the prior art's teaching wit respect to buttons, i.e., Agulnick teaches a graphical user interface in which buttons are responsive to a single gesture only to initiate a single response, and, therefore, does not show or suggest the present invention. Thus, the Applicants respectfully submit that the tab markers to which the Examiner refers are not "buttons" are required by the rejected claims, but rather are interface devices that correspond to the above-described "gesture areas" which, Agulnick teaches, are distinct from buttons. Indeed, as the quote above indicates, Agulnick teaches that buttons respond solely to a single gesture (i.e., a tap) to provide a single response. Indeed, Agulnick's interface design does nothing to relieve the display clutter found on most small computer devices (e.g., laptops and PDAs). Thus, Agulnick cannot be said to show or suggest the present invention. More does nothing to overcome the deficiencies of Agulnick. More is directed solely to teaching touch-sensitive screens that are co-extensive with displays and are responsive to pointer devices. More does not show or suggest the multi-gesture sensitive buttons provided by the present invention as claimed. Therefore, the Applicants respectfully submit that neither Agulnick nor More, alone or in combination, shows or suggests the present invention. Withdrawal of the rejections of the above-listed claims is therefore respectfully requested.
BEERNINK, et at. Serial No.: 08/228,460 Page 3
CONCLUSION For the reasons presented above, the Applicants respectfully submit that the claims pending in the above-identified application are in condition for allowance. A Notice of Allowance is therefore respectfully requested. Should any unresolved issues remain, the Examiner is encouraged to contact the undersigned at the telephone number provided below.
Respectfully submitted,
,9C7;K:WVER
David P. Lentini Registration No. 33,944 Date: July 9, 1996 HICKMAN BEYER & WEAVER P.O. Box 61059 Palo Alto, CA 94306-1900 Tel: (415) 493-6400
BEERNINK, et al. Serial No.: 08/228,460
Page 4
Ini M applicatio6f
Beernink, ei al.
JUL
-f12
D
Attorney Docket No.: P 1017C/APLIP053A
) Examiner: Lao, L. ) Group Art Unit: 2~609
Date: July 9, 1996
Serial No.: 08/2
Filed: April 15, 1994 For:
GESTURE SENSITIVE BUITTONS FOR GRAPHICAL USER INTERFACES
CERTIFICATE OF MAILING I hereby certify that this correspondence is being deposited with the United States Postal Service as First Class Mail to: Commnissioner of Patents and Trademnarks, Washington, DC 20231
Signed:
Maka-0-MLILba
___
I
Melissa Va
ms
"omniissioner of Patents and Trademarks ashington, DC 20231 Transmtted herewith is a Response in the above-identified application. The fee has been calculated as shown below. Claims Highest Remaining SMALL ENTITY Present Previously After RATE FEE Extra Amendment Paid For TOTAL CLAIMS MNEP CLAIMS 00 03 00 Xl 11 X39
OR OR OR
LARGE ENTITY RATE FEE X22 =$ X78= $ $250
$
=$
[]Multiple Dependent Claim Present and Fee Not Previously Paid
TOTAL
$
$
month(s) extension of time to respond to the -____ Applicant(s) hereby petition for a Office Action. afomientioned Applicant(s) believe that no (additional) Extension of Time is required; however, if it is determined that such an extension is required, Applicant(s) hereby petition that such an extension be granted and authorize the Commissioner to charge the required fees for an Extension of Time under 37 CFR 1.136 to Deposit Account No. 08-2120. in the amount of $_______ to cover the Enclosed is our Check No. additional claim fee and/or extension of time fees. If the required fees are missing or any additional fees are required to facilitate filing the enclosed response, please charge such fees or credit any overpayment to Deposit Account No. 08-2120 (Order No. APLlPD53A). A copy of this sheet is enclosed.
_____
Respectfully submitted,
David P. Lentini Reg. No. 33,944 P.O. Box 61059 Palo Alto, CA 94306 (415) 493-6400
(Reviud 1196)
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