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).

Nokia Corporation v. Apple Inc.

Doc. 61 Att. 3

UNITED STATEQ DEPARTMENT OF COMMERCE Patent and Trademark Office
Address: COMMISSIONER OF PATENTS AND TRADEMARKS Washington, D.C.20231

I

APPLICATIONNO.

I

FILING DATE

I

FIRST NAMED INVENTOR

1

ATTORNEY DOCKETNO.

Please find below and/or attached an Office communication concerning this application or proceeding.
Commissioner of Patents and Trademarks

PTO-9OC (Rev. 2/96) 'U S GPO 2000-473-M)0144602

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Dockets.Justia.com

I Application No.
Office Action Summary
Responsive to communication(s) filed on Mav 10. 2000
091567,909
Examiner

I Applicant(s)
4i

Lahtl
Group Art Unit

Jim Cllnger

2821

0 This action is

FINAL.

Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed in accordance with the practice under Ex parte QuaP835 C.D. 11; 453 O.G. 213. A shortened statutory period for response to this action is set to expire three month(s), or thirty days, whichever is longer, from the mailing date of this communication. Failure to respond within the period for response will cause the application 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 Claim Claim(s) 1-23 Of the above, claim(s) islare pending in the applicat idare withdrawn from consideration idare allowed. is/are rejected. is/are objected to. are subject to restriction or election requirement.

0 Claim(s) B Claim(s) f-23 0 Claim(s) 0 Claims
Application Papers

0See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948. idare objected to by the Examiner. 0The drawing(s) filed on is 0approved 0The proposed drawing correction, filed on 0The specification is objected to by the Examiner.
0 The oath or declaration is objected to by the Examiner.

Disapproved.

Priority under 35 U.S.C.5 119 0 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. Q 119(a)-(d).

0All D o m e * @bne of the CERTIFIED copies of the priority documents have been 0 received: 0 received in Application No. (Series Code/Serial Number) 0 received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
*Certified copies not received: JI Acknowledgement is made of a claim for domestic priority under 35 U.S.C. Q 119(e).

Attach ment(sj B Notice of References Cited, PTO-892 Information Disclosure Statement(s), PTO-1449, Paper No(s). 0 interview Summary, PTO-413 0 Notice of Draftsperson's Patent Drawing Review, PTO-948 0 Notice of Informal Patent Application, PTO-152

4

- SEE OFHCE ACTL.Y ON THE FC
U S Patent and Trademark Onice

LOWING PAGES

Part of Paper No.
5

PTO-326 (Rev. 9-95)

Office Action Summary
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ApplicationlControl Number: 09/567,909
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 -(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.

2.

Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by Kawahata et

al.(5,696,5 17). Figure 1 of Kawahata discloses an RF antenna with a resonating region(5) a feeding region(6). The antenna can communicate with a network(co1. 1, lines 6-10).

Claim Rejections 35 USC 8 103
3. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness

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rejections set forth in this Office action:
(a) A patent may not be obtained though die 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.
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Claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kawahata in view

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ApplicatiodControl Number: 09/567,909
Art Unit: 2821

Page 3

Kawahata does not disclose two antenna elements. Figure 2 of Erkocevic discloses two RF antenna elements(20 and 22) positioned on opposing ends of a communication device for antenna diversity(abstract). It would have been obvious to one of ordinary skill in the art at the time of the invention to position an antenna element as disclosed in Kawahata opposite to another antenna element as disclosed in Erkocevic to obtain diversity reception and transmission as disclosed in Erkocevic.
5.

Claims 3-5 and 8-23 are rejected under 35 U.S.C. 103(a) as being unpatentable over

Kawahata in view of Clapper(6,023,24 1). Kawahata does not disclose operation in the bluetooth frequency range. Clapper discloses antenna usage in the bluetooth frequency band(co1. 3, lines 15-17) and the W N band(co1. 3, line 53) for an increased variety of applications for a hand held A device(abstract). Claim 5, WLAN systems are well known in the art and the use of the disclosed device in a
WLAN system would produce no unexpected results.

Claims 8 and 19, Kawahata discloses a non planar radiator(fig. 9, no. 25) and Clapper discloses a controller(fig. 2, no. 28). Claims 9, 10, 12 and 20, Kawahata discloses a signal ground(2) and the recited impedances joined to the same end of the radiator as the signal conduit(3). Claim 11, the conductors disclosed in Kawahata are all strips and determine the device impedance.

ApplicatiodControl Number: 09/567,909 Art Unit: 2821

Page 4

Claims 13-14, chip and coil inductors are well lcnown in the art and their use in place of the disclosed inductive elements would produce no unexpected results for one skilled in the art. Claims,15-16, Kawahata discloses mounting impedance matching elements and a signal conduit( 1 l a and 1lb) on a PCB(11). Claim 17, Kawahata discloses antenna elements which are mounted on both a PCB( 11)

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and a substrate(l0). Claim 18, Kawahata discloses a resonating region(5) which is a single strip. Claims 2 1-22, Kawahata discloses a slot( 1a) positioned as recited. Claim 23, figure 2 of Kawahata discloses a folded radiator. It would have been obvious to one of ordinary skill in the art at the time of the invention to use the frequency bands disclosed in Clapper with the antenna disclosed in Kawahata to increase the applications of a hand held device as disclosed in Clapper.
6.

Claims 6-7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kawahata in

view of Eichler et a1.(4,286,335). Kawahata does not disclose a wired connection between a hand held device and a network.

I

Figure 1 of Eichler discloses a hand held device(10) which galvanically connects( 18) to a device(l4) which can be part of a network giving an improved impedance match(abstract).

ApplicatiodControl Number: 09/567,909

Page 5

Art Unit: 2821

It would have been obvious to one of ordinary skill in the art at the time of the invention to use a wired connection as disclosed in Eichler with the hand held device disclosed in Kawahata for an improved impedance match as disclosed in Eichler.

Correspondence
7. Any inquiry concerning this communication or earlier communications from the examiner

should be directed to Examiner Jim Clinger whose phone number is [phone]. 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 oficial response must be clearly marked "DRAFT". The faxing of such papers must conform with the notice published in the Oficial Gazette, 1096 OG 30 (November 15, 1989). The Technology Center Fax Center number is [phone] or [phone].

IApplication No.
091567,909
Examiner

.

I Applicant(s)
Lahti
Group ~ r Unit t 2821 Page 1 of I

Jim Clinger

DOCUMENT NO. A

DATE

4,286,335 5,696,517 6,023,241

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NAME

CLASS

SUBCLASS

Eichler et ai.

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Clapper

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FOREIGN PATENT DOCUMENTS

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DATE

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U. S Patent and Trademark Office

PTO-892 (Rev. 9-95)

Notice of References Cited

Part of Paper No.

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F O R M P T O-1440 ( R E V . 7-101

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U.S. DEPARTMENT O F COMMERCE P A T E N T A N 0 TRADEMARK O F F I C E

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PATENT

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Application of: S. Lahti Serial No.: 091567,909 Filed: May 10,2000 For: RADIO FREQUENCY ANTENNA Attorney Docket No. 944-001.023 Examiner: J. Clinger Group k U n i t : 2821

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Box Non-Fee Amendment Assistant Commissioner for Patents Washington, D.C. 2023 1
AMENDMENT IN RESPONSE TO NON-FINAL OFFICE ACTION Sir:

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In response to the Non-Final Office Action, mailed January 19,2001,please amend the
patent application as follows:

I hereby certify that this correspondence is being deposited with the United States Postal Service on the date shown below with sufficient postage as first class mail in an envelope addressed to: Assistant Commissioner for Patents, Washington, D.C. 20231.

Attorney Docket No. 944-001.023 Serial No. 09/567,909 In the Specification On page 2, line 34, please replace "planer" with --planar--.

In the claims
Please amend claims 8 and 19 as follows:

8.

(Amended) The radio frequency antenna of claim 1, wherein the resonating region is non-

planar, wherein the non-planar resonating region is folded into at least two sections located in
two different but intersecting planes, and wherein the hand-held communication device includes

an electronic processor to process the communication signals, and the feeding region comprises a signal conduit part to convey the communication signals between the resonating region and the electronic processor. 19. (Amended) A method of conveying communication signals in a radio frequency range

between a hand-held communication device and another communication device, said method comprising the steps of: providing a non-planar resonating region to radiate or receive electromagnetic waves carrying the communication signals; and providing a feeding region coupled to the resonating region for impedance matching, wherein the non-planar region is folded into at least two sections located in two different but intersecting planes.

2

Attorney Docket No. 944-001.023 Serial No. 09667,909

REMARKS
In the patent application, claims 1-23 are pending. In the Office Action, all pending
claims are rejected. At section 2, claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by
Kawahata et al. ( U . S . Patent No. 5,6963 17, hereafter referred to as Kuwahata). The Examiner

states that Kawahatu discloses an RF antenna with a resonating region and a feeding region (Figure 1). As shown in Figure 1 of Kuwahata, the antenna 10 has a stripline radiation electrode 5 and a bent feeding electrode 6. The antenna 10 can be used in a communication apparatus 9 (Figure 8). It is respectfully submitted that the claimed invention is about a radio frequency antenna to be used in a hand-held communication device having a system connector and the radio-

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frequency anteya is integrated into the system connector. The hand-held communication device can be a communicator (10), which usually has a system connector (1 8) located at one of the devices away from the phone antenna (13) (See Figure l), and the radio frequency antenna is placed at one end of the system connector, away from the bottom connector pins (19).
Kawahatu does not disclose or even suggest that the radio frequency antenna is integrated

into the system connector of a hand-held communication device. Therefore, claim 1 is distinguishable from the cited Kawuhata reference. At section 4, claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over

Kuwahata in view of Erkocevic (EPO 0 623 967 Al). The Examiner states that Erkocevic has
two RF antennas (20,22) positioned on opposing ends of a communication device.

As claimed in claim 2, the system connector is placed apart from the telephone antenna so that the radio frequency antenna is also positioned apart from the telephone antenna. 3

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Attorney Docket No. 944-001.023 Serial No. 09/567,909
Erkocevic does not disclose or even suggest a hand-held communication device having a system

connector wherein the radio frequency antenna is integrated into the system connector. For the foregoing reason, claim 2 is distinguishable over the cited Kawahata and Erkocevic references. At section 5, claims 3-5 and 8-23 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kawahata in view of Clapper (US. Patent No. 6,023,241). The Examiner states that Kawahata fail to disclose a Bluetooth antenna, but point to Clapper for disclosing a hand-held communication device operating in the Bluetooth frequency range (co1.3, lines 15-19). It is respectfully submitted that Clapper does not disclose or even suggest that the
Bluetooth antenna is integrated into a system connector as claimed.

As for claims 8 and 19, the Examiner states that Kawahata discloses a non-planar
radiator (Figure 9, elements 25 and 26).
1

7

It is respectfully submitted that Kawahata discloses an antenna composed of a tube-like radiation electrode (25a) electrically connected to a tube-like feeding electrode (26a) (Figure 9). In contrast, the radio frequency antenna as claimed comprises a non-planar resonating region and a feeding region, wherein the non-planar resonating region is folded into at least two sections located in two different but intersecting planes, and the feeding region is coupled to the resonating region for impedance matching. Kawahata does not disclose or even suggest such a non-planar resonating region. For the foregoing reasons, it is respectfully submitted that claims 3-5 and 8-23 are distinguishable over the Kawahata and Clapper references. At section 6, claims 6 and 7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kawahata in view of Eichler et al. W.S. Patent No. 4,286,335, hereafter referred to as

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Attorney Docket No. 944-001.023 Serial No. 09/567,909
,

Eichler). The Examiner states that Kawahata does not disclose a wired connection between a

hand held device and a network, but Eichler discloses a hand held device (10) which is galvanically connected (18) to a device (14) which can be part of a network giving an improved impedance match (Abstract). It is respectfully submitted that Eichler discloses a method and device for switching one antenna to another for allowing an external co-axial signal source to be connected directly to the internal circuitry of the portable unit. Eichler does not disclose the hand-held device and the network having a wired-connection. Furthermore, claims 6 and 7 are dependent from claim 1 and recite features not recited in claim 1. For reasons regarding claim 1 above, it is respectfully submitted that claims 6 and 7 are distinguishable over the cited Kawahata and Eichler references. CONCLUSION "Claims 1-23 are clearly distinguishable over the cited references. Early allowance of all pending claims is earnestly solicited. Attached hereto is a marked-up version of the changes made to the claims by the current amendment. The attached page is captioned "Version with markings to show changes made". Respectfully submitted, Date:

4

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1
Kenneth Q. Lao Attorney for the Applicant Registration No. 40,061

WARE, FRESSOLA, VAN DER SLUYS & ADOLPHSON LLP Bradford Green, Building Five 755 Main Street, P.O. Box 224 Monroe, CT 06468 Telephone [phone] Facsimile: [phone] USPTO Customer No. 004955

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Attorney Docket No. 944-001.023 Serial No. 09/567,909

Version with markings to show changes made
8.
(Amended) The radio fiequency antenna of claim 1, wherein the resonating region is non-

planar, wherein the non-planar resonating region is folded into at least two sections located in two different but intersecting planes, and wherein the hand-held communication device includes an electronic processor to process the communication signals, and the feeding region comprises a. signal conduit part to convey the communication signals between the resonating region and the electronic processor. 19. (Amended) A method of conveying communication signals in a radio frequency range

between a hand-held communication device and another communication device, said method comprising the steps of providing a non-planar resonating region to radiate or receive electromagnetic waves carrying the communication signals; and providing a feeding region coupled to the resonating region for impedance matching, wherein the non-planar region is folded into at least two sections located in two different but intersecting planes.

6

6

&\ctitioner's

Docket No.

944-001.023

Ir?r-,-PATNT

IN THE UNITED STATES PATENT AND TRADEMARK OF,FICE
In re application of: S. Lahti

Application No.: 09/567,909 Filed: May

Group No.: 2821 Examiner: J. Clinger

IO, 2000

For: RADIO FREQUENCY ANTENNA

Assistant Com%issioner for Patents BOX AMENDMENT NO FEE Washington, DC 20231

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I
1.

AMENDMENT TRANSMITTAL

Transmitted herewith is a n amendment for this application.

STATUS

I

2.

Applicant is

0 a small entity. A statement:

0

is attached.
was already filed

other than a small entity.

CERTIFICATE OF MAILING/TRANSMISSION UNDER 37 C.F.R. § 1.8(a) I hereby certify that this correspondence is, on the date s h o w n below, being: MAILING FACSIMILE

El deposited with the United States Postal
Service w i t h sufficient postage as firstclass mail, in an envelope addressed t o the Assistant Commissioner for Patents, Washington, DC 20231.

0 transmitted by facsimile t o the

U.S. Patent and Trademark Office.

Date:

v(</o

1

Jennifer A. Hanlon (type or print name of person certifying)

(Amendment Transmittal (9-191- page 1 of 41

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Attorney Docket No. 944-001.023 Serial No. 09/567,909

EXTENSION OF TERM
NOTE: "Extension of Time in Patent Cases 1Supplement Amendments) If a timely and complete response has been filed after a Non-Final Office Action. an extension of time is not required to permit filing andlor entry of an additional amendment after expiration of the shortened statutory period.
~

If a timely response has been filed after a Final Office Action. an extension of time is required to permit filing and/or entry of a Notice of Appeal or tiling and/or entry of an additional amendment after expiration o f the shortened statutory period unless the timely-filed response placed the application in condition for allowance. Of course. i f a Notice of Appeal has been filed within the shortened statutory period, the period has ceased to run." Notice of December 10. 1985 11061 O.G. 34-35). NOTE: See 37 C.F.R. 5 1.645 for extensions of time in interference proceedings, and 37 C.F.R. 51.550(c) for extensions of time in reexamination proceedings.
'

3.

The proceedings herein are for a patent application and the provisions of 37 C.F.R. 5 1.136 apply.
(complete (a) or (b), as applicable)

(a)

Applicant petitions for an extension of time under 37 C.F.R. 5 1.136 (fees: 37 C.F.R. § 1.1 7(a)(l)-(4)) the total number of months checked for below: Fee for other than small entity Fee for small entity

Extension (months)

0 one month
t w o months

0 four months

0 three months

110.00 390.00 890.00 $1,390.00
$ $ $

55.00 $195.00 $445.00 $695.00
$

Fee: $ .

.

If an additional extension of time is required, please consider this a petition therefor.
(check and complete the next item, if applicable)

A n extension for months has already been secured. The fee is deducted from the total fee due for the paid therefor of $ total months of extension n o w requested. Extension fee due with this request $

.OR
Applicant believes that no extension of term is required. However, this conditional petition is being made t o provide for the possibility that applicant has inadvertently overlooked the need for a petition for extension of time.
IAmendment Transmittal 19-191- page 2 of 4)

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Attorney Docket No. 944-001.023 Serial No. 09/567,909

FEE FOR CLAIMS
4. The fee for claims (37 C.F.R. 0 1.16(b)-(d))has been calculated as shown below:
OTHER THAN A SMALL ENTITY ADDIT. RATE

(Col. 1)
CLAIMS REMAINING AFTER AMENDMENT TOTAL: INDEP: 23 2

(Col. 2)

(Col. 3)

SMALL ENTITY ADDIT. RATE
x$9=

'

HIGHEST NO. PREVIOUSLY PAID FOR 23 3

PRESENT EXTRA

FEE

OR

FEE

MINUS MINUS

=
=

o
o

$

x $18 = $
x

-0-0-

x $40 = $

$80 =

$

0 FIRST PRESENTATION OF MULTIPLE DEP. CLAIM

+$135=$
TOTAL ADDL. FEE

+ $270= $
TOTAL ADDL. FEE
$ 0.00

$

WARNING: "After final rejection or action ( 5 1.1 13) amendments may be made cancelling claims or complying with any requirement of form which has been made." 37 C.F.R. f1.1161a) (emphasis added].

(complete (c) or (d), as applicable)

(c)

No additional fee f o r claims is required.

OR
(d) c] Total additional fee for claims required is $

FEE PAYMENT

5.

0
0

Attached is a check in the sum of $

Charge Account No. this transmittal is attached.

the sum of $

.

A duplicate of

(Amendment Transmittal 19-19] - page 3 of 4)

Attorney. Docket No. 944-001.023 Serial No. 09/567,909

FEE DEFICIENCY

NOTE:

If there is a fee deficiency and ;here is no authorization to charge an account, additional fees are necessary to cover the additional time consumed in making up the original deficiency. If the maximum six-month period has expired before the deficiency is noted and corrected. the application is held abandoned. In those instances where authorization to charge is included. processing delays are encountered in returning the papers to the PTO Finance Branch in order to apply these charges prior to action on the cases. Authorization to charge the deposit account for any fee deficiency should be checked. See the Notice of April 7, 1986 11065 O.G.31-33).

(

6.

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If any additional extension and/or fee is required, charge Account No. 2 3 - 0 4 4 2

AND/OR
If any additional fee for claims is required, charge Account No. 23-0442

.

Signature of Practitioner

Reg. No.: 40,061

Kenneth Q. Lao Ware, Fressola, Van Der Sluys & Adolphson LLP

Telephone No.: (203) 6 1 - 1 2 3 4 2

Bradford Green, Building Five

755 Main Street, P.O. Box 224
Customer No.: 004955
Monroe, CT 06468

(Amendment Transmittal 19-191 - page 4 of 4)