Nokia Corporation v. Apple Inc.

Filing 61

Declaration of Allyson J. Portney filed by Counter Claimants Apple, Inc., Defendant Apple, Inc. re: 55 Motion Requesting Claims Construction by Counter Claimants Apple, Inc., Defendant Apple, Inc. (Attachments: # 1 Exhibit A - November 6, 2002 Office Action and January 17, 2003 Amendment in Response from the prosecution history of United States Patent No. 6,603,431, # 2 Exhibit B - March 25, 2003 Notice of Allowability from the prosecution history of United States Patent No. 6,603,431 File History, # 3 Exhibit C - January 19, 2001 Office Action and April 5, 2001 Amendment in Response from the prosecution history of United States Patent No. 6,348,894, # 4 Exhibit D - September 22, 2005 Notice of Allowance from the prosecution history of United States Patent No. 7,532,680, # 5 Exhibit E - December 27, 2005 Preliminary Amendment from the prosecution history of United States Patent No. 7,532,680, # 6 Exhibit F - Cited Reference, M. Soviero, Your World According to Newton, Popular Science, September 1992, from the prosecution history of United States Patent No. 5,612,719, # 7 Exhibit G - May 28, 1993 Office Action and August 30, 1993 Response from the prosecution history of United States Patent No. 5,612,719, # 8 Exhibit H - November 15, 1993 Office Action and January 18, 1994 Response from the prosecution history of United States Patent No. 5,612,719, # 9 Exhibit I - November 28, 1995 Office Action and July 9, 1996 Response from the prosecution history of United States Patent No. 5,612,719, # 10 Exhibit J - July 7, 1994 Office Action and October 21, 1994 Response from the prosecution history of United States Patent No. 5,612,719, # 11 Exhibit K - September 27, 1996 Office Action and November 5, 1996 Response from the prosecution history of United States Patent No. 5,612,719, # 12 Exhibit L - Declaration of Daniel Sievenpiper, Ph.D, # 13 Exhibit M - Declaration of Patrick Fay, # 14 Exhibit N - Declaration of Michael Braasch, Ph.D, # 15 Exhibit O - Excerpt from 1st Edition of Websters Dictionary) (Massa, Dominic) Modified exhibit descriptions and docket text on 12/20/2010 (jas/p).

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UNITED STATI JEPARTMENT OF COMMERCE Patent and Trademark Office Address: COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 F-PLCATION NUMBER I FILING DATEI FIRST NAMED APPLICANT I ATrORNEY DOCKET NO. 08/22E: 460 Qi4/ t15/9 4 EEERNINV LA- E L. PF10 7CCib-3A XAIE E6..1. //0927 AR-r UNrT PAPER NUMBER HI1~ C ~BEYER DATE MAILED: 2!1 2c 7 Doc. 61 Att. 11 FALO A. , 943176 Nokia Corporation v. Apple Inc. This is a communication from the examiner In charge of your application. COMMISSIONER OF PATENTS AND TRADEMARKS OFFICE ACTION SUMMARY SResponsive to communication(s) filed on 1-(7- 116 0l This action is FINAL. in condition for allowance except for formal matters, prosecution as to the merits is closed in accordance with the practice under Ex parts Ousyle, 1935 D.C. 11; 453 O.G. 213. LiSince this application is or thirty days, wmonth(s), o A shortened statutory period for response to this action is set to expire whichever is longer, from the mailing date of this communication. Failure to respond within the period for response will cause the applicatiorn to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of 37 CFR 1.136(a). Disposition of Claims SClaim(s) I z5ic/are Of the above, claim(s) 4+, 1Z G4 2 23 pending in the application. Wsare withdrawn from consideration. is/are allowed. HClaim(s) ~Clairn(s) HClaim(s) HClaims.____________________________ Application Papers t , S- 11 /3- Zd ad z ' z§ isare rejected. isare objected to. are subject to restriction or election requirement. l El See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948. The drawing(s) filed on ____________________ is/are objected to by the Examiner. __________________ El The proposed drawing correction, filed on is D approved El disapproved. EH H El The specification is objected to by the Examiner. The oath or declaration is objected to by the Examiner. Priority under 35 U.S.C. § 119 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d). ID All 0 Some 0 received. 0 None of the CERTIFIED copies of the priority documents have been EH received in Application No. (Series Code/Serial Number) El received in this national stage application from the International Bureau (PCT Rule 17.2(a)). *Certified copies not received: ________________________________________ HAcknowledgement Attachment(s) is made of a claim for domestic priority under 35 U.S.C. § 119(e). HNotice of Reference Cited, PTO-892 HInformation Disclosure Statement(s), El Interview Summary, PTO-413 PTO-1449, Paper No(s). i Notice of Draftsperson's Patent Drawing Review, PTO-948 ElNotice of Informal PTOL-1265 (Rev. IMS9) Patent Application, PTO-1 52 -SEE OFFICE ACTION ON THE FOLLOWING PAGES *US GPO 1996-409-2W040029 Dockets.Justia.com Serial Number:08/228,460 Art Unit: 2609 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 (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. 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 Mlore et al. Agulnick et al teach a method for providing a gesture sensitive button comprising a digital processor(50); a display E;creen(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 3 processor(S0) 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 column 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 (180) 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 computer system comprising a touch-sensitive surface(lO), a pointer(stylus or pen) for entering check-marks(652) and Xmiarks(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). 3. Applicant's arguments filed on July 12, 1996 have been fully considered but they are not deemed to be persuasive. Applicants state that Agulnick's gesture areas do not corresponding to buttons which is cited in claims on page 3. TChe definition of applicants' button is a box-like area which can be responsive to at least two different button gestures made by a pointer without any intermediate input. Agulnick teaches a plurality of small box areas (190) (see figure 4) can be able to :recognize two different gestures(single tap(621) and a doubletap(622)) which is same as applicants' button(see figure 45 and column 11, lines 4-18) . Agulnick teaches a gesture can be drawn In order to distinguish on both a gesture area and a button. between a gesture area and a button, Agulnick designs to have a button can only respond to a tap(see column 10, lines 1-13). Serial Number: 08/228,460 However, Agulnick teach a small box area(190) (see figure 4) on a dlisplay(1o) which meets the definition of applicants' button as Actually, Agulnick has a same ability as cited in claims. applicants to recognize different gestures on a touch panel display. 4I. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a). 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 MAILING 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. 5. Any inquiry concerning this communication should be directed (703) 305-4873. to Lun-Yi, Lao at telephone number September 16, Lun-Yi, Lao 1996 RICHARD HJERPE SUPERVISORY PATENT EXAMINER GROUP 2600 .t %ns 0 SERIAL-NUMBER PILING DATE-F UNITED STATES DEPARTMENT OF COMMERCE jPatent and Trademark Office r Address: COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C. 20231 ATTORNEY DOCKET NO. FIRST NAMED APPLICANT ' 5/ 4N 43 D/ E2 "47 \1 ,* II Pt10 :1 -1u 5:-i :b7 EXAMINER r AUL L.. H EI rIN M HICKiMAN & DEV'ER F', ~, zv~;ART Cx 1.6MJI /11I 1:*2" 6 LAI 1 1 UNIT PAPER NUMBER Z7 DATE MAILED: 1 2,'6 EXAMINER PMTRVMEW SUMMARY RECORD All participants (applicant, applicant's representative, PTO personnel): (1) 3 $QP R*p LC6&4j K (2 L OWN Y1~' ZAO (PTO) Date of interview Type: 4 (3) N;tC" (4) rv I4-/C H 0 Personal (copy is given to 03YIE R Telephonic 0Oapplicant ONO. 0 applican's representative). Exhibit shown ordemonstration cnducted: If yes, brief descripion: Agreement 0Ewas reached with respect I I ? uJ II to somne mrall of the claims In question. 01 was not reached. Caims discussed: Identification of prior art discussed: Description of the general nature of what was agreed to if an agreement wa readhed, or any other comments: I( If I UbALA) im k - v' hatil & t d a d r sI,,A e!t LUt- ApC t ,AOJ~O9tO 1 L J .AlCr. - ptr071f p aPLvaInl9 . ch thI'Aminr d render th e claims allowable must be attached. Also, where no copy of the amendments lhl amendm ent I the claims allowable is available, gredW which would render a summ1ar thereof must be attached.) Unless the paragraphs below hove been checked to indicate to tha contrary, A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION IS NOT WAIVED AND MUST INCLUDE THE SUBSTANCE OF THE INTERVIEW (e.g., items 1-7 on the reverse side of this form). Ifa response to the last Office action has already been filed, then applicant is given one month from this interview date to provide a statement of the substance of the interview. -dJC o1 It is not necessary for8applicant to provide a separate record of the substaence of the interview. 0 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 form is considered to fulfill the responrse requirements of the last Office action. PT0113 (Ev. .84)Examiner's Signature ORIGINAL FOR INSERTION IN RIGHT HAND FLAP OF FILE WRAPPER (D UNITED STATES DEPARTMENT OF COMMERCE Patent and Trademark Office Address: COMMISSIONER OF PATENTS AND TRADEMARKS NAMED APPLICANT SERIAL NUMBER 46 PILING DATE jFIRST L 71/1T/4 IATTAB~4OCI5 7Cl C riI KMF 6111/1 J -I EXAMINER rs -1 AfLJsL 1'0. 615v 0II 94:W1 uN',-. -iARTUNIT PAPER NUMBER DATE MAILED: EXAMINER INTERVIEW SUMMARY RECORD All Participants lapplicant.applicantes representastive, PTO personnel): Date of interview, 1112n)1U 0 Personal (copy isgiven to Type: P Telephonic 0Oapplicant 0DaPiPlicant'srepresentative). Exhibit shown or demonstrastion conducted: 0 Yes UNo. If yes, brief description: Agreement Nwas reached with respect to some or all of th. claims in question. 01 was not reached. Claims discussed: in' WL 19 - Identification of prior art discussed: Description of the general nature of what wsagreed to if an agreement was reached, or ~ 9#~ X/, any other comments: 6 , 5 AJC2 1 ' ~~~~~a hioirw4 c4 t~ ~q407 Ixro7SOnAMA (A fuller description, if necessary, and a copy of the amendments, if available, which the examiner agreed would render the attached. Also, where no copy of the amendments which would render the claims allowable isavailable, a summary thereof must claims allowable must be be attached.) Unless the paragraphs below have been checked to indicate to the contrary. A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION IS NOT WAIVED AND MUST INCLUDE THE SUBSTANCE OF THE INTERVIEW (e.g., items t- on the reverse side of this form), If a response to the -7 lat Off ice action has already been filed, then applicant is given one month from this interview date to provide astatement of the substance of the interview. [I~ it is riot necessary for applicant to provide a separate record of the substance of the interview. D Since the examineres interview summary above (including any attarcns) reflects a complete response to each of the objections, rejections and requirements that my be present in the last Off ice action, and since the claims are now allowable, this completed form is considered to fulf ill the response requirements of the last Office action. t.l PTOL-413 JAEV1-841 ,W Examiner's Signature ORIGNALFOR INSERTION IN RIGHT HAND FLAP OF FILE WRAPPER NOU-05-1996 09:05 NCIJ-0--199609:05HICKMAN BEYER & WAVER 454968 415 493 6484 .20 P.02ZO7 OFFICIAL In the United Statei Patent and Trademark Office In re application of: BIEERNINK et al. Examiner: Lao,.L. Group Art Unit: 2609 Attorney Docket: P1O17C/P053A Title: GESTURE SENSITVE BUTTONS FOR GRAPHICAL USER INTERFACES ewti,rr I !ebycs Ilh ah UniteW P nr PACUIMM R PATENT Serial No: 0&/228,460 Filed: April 15, 1994 wavaconpoadence Is being fawml.e Taunsamiawd to sService and is addmood to: commissioner of Patent and Tradomarks. BOX AF Washinguan, DC 20231 on Novcncr$. 1996 signed: Bian R. Coleman Amendment .D Commissioner of Patents and Trademarks BOX AF Washington, D.C. 20231 Dr-ar Sir. FAX RECEIVED NOY 0 b 1996 GROUP 2600 In response to the Office Action dazed September 27, 1996, please amend the above identified patent application as follows. 1. (Thrice amended) A gesture sensitive button for a graphical user interface comprising: a digital processor, C a display screen coupled to said digital processor, NOV--05-1996 09:05 BEYER & WJEVER 09:~5HICKMA1N NDY-05-196 4543~8 6464 415 493 .30 P.03/07 a pointer for pointing to locations on said display screen; a button image displayed on said display screen, said digital processor being responsive without any intermediate input to at least two different button gestures made by said pointer on said display screen at any location aver said button image; and .gesture- recognition means for detecting gestures made an said display screen by said pointer and operative to initiate a process in said digital processor that is determined by a recognizable button gesture made with said pointer an said display screen which bottt selects said button image and which has meaning to said digital processor based upon a context associated with said button image wherein the gesture recognition means is arranged such that the function regardless of dhe location over the button image that the gesture was made. wherein said digial processor is Oerable such that when said gesturm rccoiition means j3xognizes a particUilar recognizable button gosture for said button image. saidAdigital grmcessor Umovides feedback relative to said button confirming tha said button inm has been selected, said feedback relative to said button also indicative of the particular function. associated with said arcula rmnizale bUM gms= k jgonflr=ing that said button-inmWe has been selected includes altring fth appearance of said button hrnage, [the appearance of said button image is altcred upon the detection of a button gesture.] g {tciassociated with each of said button gestures will be initiated and executed in an identical manner ~ d (t(Twice amended) A gesture sensitive button as rctd in clabizwhriatkd C (Thrice amended) A method for providing and utilizing a gesture sensitive button for a graphical user interface, wherein the gesture sensitive button has a plurality of distinct gestures associated therewith, each distinct gesture that is associated with the gesture sens itive button having a distinct process associated therewith, the method comprising the steps of: providing a button image on a computer display screen; detecting an inputted gesture made upon said computer display screen by a painter; determining whether said inputted gesture is associated with said button image by deternmining whether said gesture contacts said button imnage and determining whether said gesture is one of the distinct gestures that is as:fociated with the gesture sensitive button; and when the inputted gesture is determined to be associated with the.button irnagepj[Qjmi" the following substens of: (a)~ prgadding Teedback relative to the button image confirrning that the 1utton imame has been selected- (b) providing feedback relative to fth butto image indicative ofth pcess associated. with the inputted gesture, and (c)~ initiating the process associated with said inputted gesture and the button image. USSN 08/228,460 USSN 8/22,460APLIP053A/DPLIBRC NOV--05-1996 09:05 NOU-*0-i99609:05HICKMPN BEYER a WIEPVER 454368 415 493 6484 .40 P.04/07 9 H A (Twice amended) A method fur providing a gesture sensitive button as recited in claim ,W wherein said feedback confirming that the button imaIM has been selected includes [further 9) V compnising the step of] altering the visual representation of said button image [after said determining step determines that said gesture is associated with said button imnagl. A method for initiating and executing one of a plurality of command sequences from inputs made with a stylus on a gesture sensitive button image displayed on a touch-sensitive display screen of a pen-based computer system, the method comprising the steps of: displaying a button object having a button context on the display screen of the pen-based computer system said button object having a button bounding box; entering wi"hx stylus a gesture object. having a gesture bounding box, anywhere over said I*.(Twice amended) (4 (4) button object M determining whether said gesture bounding box substantially overlaps said button bounding box; and [executing a command sequence in said pen-based computer system thaliIs associated with the entered gesture without utilizing an intermediate input to the pen-based computer system] when the gesture bounding box is determined to substantially overlap thec button bounding box, lmxfoiUains! the Mste of (a) nroviding feedback relative to the buton confirmingz that said buttn Iha is asoitdwth Sg=mutr ystm; the meSgtre wiout utlzn nitermeda ipt t h e-a wherein when a first gesture type is entered, the executed command sequence turns a function associated with said button object on if previously off and off if previously on; and wherein when a second gesture type is entered, the executed command sequence brings up a choice palette wherein a further selection within the choice palette can be made and a function associated therewith executed. USSN 08/228,460 USSN 08228,460APLlIP053A/DPUS/RC NOU--05-1996 09:05 BEYER & WIEAVER NOU--0-199609:05HICKMAN 454368 415 493 6484 .50 P.05/07 REMARKS The Examiner and her Supervisor Richard Hijerpe are thanked for the telephone interview with the undersigned on Tuesday November 5, 1996. In that interview the present amendments and the cited art was discussed. The Examiner is further thanked for the indication that the claims as amended are now in condition for allowance. Claims 1, 7, 8, 10, and 19 have been amended. No new matter has been added. Claims 4. 12, and 21-23 were previously canceled. Claims 1-3, 5-11. 13-20, and 24-25 are pending. The Examiner rejected claims 1-3, 5-11, 13-20, and 24-25 under 35 U.S.C. § 103 as allegedly unpatentable over Agulnick in view of More. The Applicants respectfully traverse these rejections. Further, the Applicants maintain their position on the patentability of the present invention as presented in earlier responses. However, in order to expedite prosecution, the claims hAve been amended to more particularly distinguish the present invention. The Applicants wish to focus the Examiner's attention on the following patentable features found in each independent claim as amended. The independent claims each require initiating a desired computer processes utilizing a gesture sensitive button responsive to at least two different input gestures, wherein the desired computer process is determined by the specific input gesture entered. Furthermore, as amended, the independent claims require providing feedback relative to the button both confirming selection of the button and indicative of the desired computer process associated with the specific input gesture entered. - The primary reference, Aguinick, is broadly directed at control of a computer -through a position-sensed stylus. As will be appreciated, the Agulnickc teaching relates to Go Corporation's pen-based operating system "PenPoint," which is no longer available due in part to its inadequate functionality. In essence, the relevant portion of Agulnick teaches graphical user interfaces in which certain regions, called gesture areas, can accept and process different user gestures. However, Agulnick's relevant teaching seems to be inconsistent and at certain instances teaches away from the Applicants' invention. For example, Agulnick column 10, lines 1-14, states: Gestures have a strong advantage aver 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 command. However. in the present invention, the gesture area which is sensitive to the command gesture is preferabi much largerthan the corresponding button or the like which maybte 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 changeable information, while a button must be labelled in some static way and can only acceptdb tap. (Emphasis added.) USSN 08/229,460 USSN 8/22.460APLlPO53A/DPLIBRC NOV-05-1996 09:06 NOU-5--196 e:06HICKMRN BEYER & WEAVER 415 493 G4e4 P.06/0~7 Thus it appears that an Agulnick button corresponds to only a single computer function. the Agulnick button merely responding to a single tap to perform a desired computer function, Corresponding to the Agulnickc button is a larger gesture area responsive to other command gestures to "accomplish the same command" as the single tap. However, other portions Of Agulnick teach that different gestures result in different commands being performed. Also, Agulnick teaches 'tabs" responsive to both single and double taps, the different input resulting in performance of different computer functions. Agulnick column 11, lines 6-12. Hence it is uncertain how Agulnick's buttons actually operated, and what distinguished a button's responsiveness when compared to gestures entered elsewhere on the touch-screen. The secondary reference, More, is relied upon as teaching a touch sensitive surface coextensive with a display screen. In contrast with the cited art, claims 1. 8, and 19 require that when a particular gesture is entered for a button, feedback relative to the button is provided confirming that the button has been selected. Agulnick, on the other hand, teaches bare execution of the desired process. See, i.e., column 11. liEs 6-12. Hence the present invention provides feedback reiative to the button useful'for confirming proper selection of a button which is neither taught nor reasonably suggested in the cited art Further, claims 1, 8, and 19 require that when a particular gesture is entered for a button, feedback relative to the button is provided indicating which process is associated with the particular gesture. In contrast, Agulnick does not require such feedback. At best. in some instances Agulnick accidentally and indirectly provides feedback indicating which process is associated with the particular gesture since the process itself may provide feedback, However, the Applicant's claims require consistent provision of such feedback. Consistently providing feedback as to which process is associated with the particular gesture entered is especially valuable here where the button is responsive to different gestures. Such feedback relative to the button allows a user to verily proper gesture entry. This is neither taught nor reasonably suggested in the cited artApplicants' Figure 9 and the corresponding description on page 11I provide one particular embodiment supporting the present Amendments. Figure 9 illustrates a script table 224 for a button responsive to three different gestures, a tap 226, a check-mark 228, and an X-mark 230. In response to a tap-.226, the button highlights momentarily (feedback indicating selection) and then the button state is reversed (feedback indicating the process associated with the tap 226 gesture). In response to a check-mark 228. the button highlights momentarily (feedback indicating selection) and then a pop-up -recognizer is displayed (feedback indicating the process associated with the check-mark 228 gesture). In response to an X-mark 230, the button highlights momentarily (feedback indicating selection) and then a recognizer button is displayed in an on state (feedback indicating the process associated with the X-mark 230 gesture). As will be appreciated, this USSN 08/228,460 5 APLIP053A/'D?'LBRC NOV-05-1996 09:06 BEYER & 09:06HICKMAN WJEAVER NOU-gs-196 454366 415 493 6484 .70 P.07/07 embodiment is merely illustrative and does not define the scope of the claimed invention. However, the present example does illustrate how the claimed invention provides the user feedback regarding input of a gesture, thereby allowing the user to determine inrunediately whether the proper gesture was entered._ Claims 2, 3, and 5-7, claims 9-11 and 13-18, and claims 20. 24 and 25, all depend either directly or indirectly from claims 1, 8, and 19. respectively. Accordingly, they are each submitted as patentable aver the art of record for at least the reasons stare above. Each of these claims adds additional limitations which, when viewed in light of the claimed combination, further patentably distinguish them. In view of the foregoing, the Applicants submit that the pending claims are patentable over the cited art and respectfully requests that the rejection under 35 U.S.C. § 103 be withdrawn. Applicant believes that all pending claims ame allowable and respectfully requests a Notice of Allowance far 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. The Commissioner is authorized to- charge any fees that may bo due to our Deposit Account No. 08-2120 (Order No. APL IP053A). A duplicate copy of this sheet is enclosed for this purpose. Respectfully submitted. JEC134AN BEYER & WEAVER Brian Pu. Coleman Reg. No. 39,145 1P.0. Box 61059 Palo Alto, CA 94306 415-328-6500 IUSSN 081228,460 6 APLIP0S3A/DPIJBRC TOTAL P.07 NOV-05-1996 09: 04 HICKMRN BEYER & WERVER 415 493 6464 P.01/0? OF, ICIAL 5L - Aw k / FAX (415) 493-6484 HICKMAN BEYER & WEAVER Y -L A W L HECT7U AL -r Ro0PRT IN T 620 Hansen Way Suite A Palo Alto, California 94304 (415) 493-6400 EXANMNERS COURMBY COPY Date: November 5, 1996 CONFIDENTIALITY NOTE: FAX RECEIVED NOVW 0 b 1996 -- ROUP 2600 e ~,~qTheinformation contained on this facsimile (FA ) message is legally £-~privileged and confidential information intended o nly for the use of th e If the reader of this message is not the receiver or firm named below, any dissemination, notified th at you are hereby receiver, itended clistribution or copy of this FAX is strictly prohibited. If you have received this FAX in error, please immediately notify the sender a the telephone number provided below and return the original message to th ec sender at the address Thank you. above via the United States Postal Service. Examiner Company: Art Unit: IFAX No.: Message Do Ierpe Date: November 5, 1996 Pages (incl.): .~ c U.S. Patent & Trademark Off!I e 2609 (703) 305-9508 Please deliver directly to not olace with the file Examiner Richard Ierpe. Enclosed Is a courte'sy copy of an amendment I filed today by facsimile. If you have any questions or comments, Thank you. please do not hesitate to contact me. Brian R. Coleman C7

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