Apple, Inc. v. Motorola, Inc. et al

Filing 107

Declaration of Winslow B. Taub filed by Plaintiffs Apple, Inc., Next Softward, Inc. re: 90 Motion Requesting Claims Construction by Plaintiffs. (Attachments: # 1 Ex. A, '486 Inf. Chart, # 2 Ex. B, '354 file history excerpt, # 3 Ex. C, '354 file history excerpt, # 4 Ex. D, Spielman report excerpts, # 5 Ex. E, '983 file history excerpts, # 6 Ex. F, '983 file history excerpts, # 7 Ex. G, '337 Inf. Chart, # 8 Ex. H, '002 Inf. Chart, # 9 Ex. I, '002 file history excerpt, # 10 Ex. J, '002 file history excerpt, # 11 Ex. K, '002 file history excerpt, # 12 Ex. L, dictionary definitions, # 13 Ex. N, JPS63-167588 cert. trans., # 14 Ex. O, appl. 08/050952 file history excerpt, # 15 Ex. P, invalidity conten. excerpt, # 16 Ex. Q, 6,371,977, # 17 Ex. R, 5,474,831) (Haslam, Robert) Modified on 7/18/2011 (llj).

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EXHIBIT J UNITED STATES Patent Mdrsss COMMISSIONER Washington. APPUCATION NO. FILING 00/021004 FIRST DATE O3/20fl7 NAMED DEPARTMENT OF COMMERCE and Trademark Office D.C. OF PATENTS AND TRAOEMARKS 20231 INVENTOR LMO1/O918 BLAKELY SOKOLOFF TAYLOR 12400 BOULEVARD WILSHIRE SEVENTH FLOOR LOS ANQELES CA 9002S find below and/cr NO. EXAMINER DtLA ZAFMAN ART TLJRFthL UNIT PAPER .41 attached an Office communication concerning thIs NUMBER 23 O9/1S/9d DATEMAIL.ED Please DOCKET AIr0RNEY CHRI5TENGEN application or proceeding. Commlnloner PTO-900 of Patents and Wadomarks I. 21951 U.S.QOVUNMEHT CE PRINTiNG OFFICE Flis CODY 19S411Nia/iMiS 182.100-\ 002FH270 WI-AppIe000l 175 No. Application Applicants Christensen 08/821004 Office Action Summary Crescelle Xl Responsive is action Li Since this application the 29 Jun 1998 for period date allowance for underExperte practice mailing become to to response of action U.S.C. 135 matters 11 453 CD. to expire set Failure 133. formal for 1935 is communication. this abandoned. this except Quayfe to of time Of the 1-31 above claims __________________________________________________________________ 131 Li Claims Li Claims Application merits is closed days thirty will the under whichever cause provisions the of pending the in from is/are _________________________________________________ rejected. is/are subject are to consideration. allowed. is/are __________________________________________________________________ application. restriction objected or to. election requirement. Papers See the attached Li The drawings Li The proposed Li The specification Li The oath or 35 under Notice Li to declaration to objected the by Ehpproved is __________________ Examiner. Lbisapproved. the Examiner. by to objected is on filed P10-948. Review Drawing is/are objected by the Examiner. 119 U.S.C. Li Patanr Draftspersons correction drawing is of on filed Acknowledgement Li the response withdrawn is/are claims Priority or for obtained is/era Claims Li the period be to Claims of Claims Li may as 213. months three within respond Extensions prosecution 0.13. 1136a. Disposition Xl the statutory from longer 37 CFR with condition in is application shortened on filed Unit 2773 Deletorre FINAL. accordance in Is communications to This Art Group Esarninsr made is Some Li claim of None the of for foreign copies 35 under priority CERTIFIED of the U.S.C. 19aI-ldl. documents priority have been Li received. Li received in Application Li received in this Certified Li copies not Acknowledgement No. national Series stage received made is of Number Code/Serial application from the ____________________ Bureau International PCI Rule 17.2a. ______________________________ for domestic P10-i 449 claim priority under 35 _____________ U.S.C. 119e. Attachments Notice of References Li Information Cited PTO -892 Statements Disclosure Paper Summary Li Notice of Draftsperaons Patent Li Notice of Informal Application Patent Drawing Review P10-948 P10-152 SEE OFFICEACTION S. Patent 10-326 and Trademark Rev. Nos. P10-413 Li Interview ON THE FOLLOWING PAGES- Offse 9.95 Office Action Summary Part of Paper No. 23 002FH271 WI-AppIe000l 176 Number ApplicationlControl Art Unit 08/821004 Page 2773 DETAiLED This This action action is is This Amendment filed pending Amendment CPA is of title and Control Claims the 31 to particularly 6129198 filed 15 25 and 26 11 11 and claims on 6/29/98 15 are amended were and of 08/821004 filed the Status are point on 3/20/97 which and Apparatus for an is FWC of invention is Information Method in Computer rejected out under and 35 35 U.S.C 112 distinctly claim the System USC as Displaying originally and filed 112 second paragraph subject matter as which being indefinite applicant regards for as invention As clear on now abandoned on 9/30/94 present Claims in this application Claim Rejections failing filed added application 08/316237 Accessing are In the were 31 The 31 claims 25 claims communications final Claims independent to responsive ACTION how per the independent first window claim and region which the other consists independent of plurality claims It 15 25 and 26 of display areas can both it is not be 002FH272 WI-AppIe000l 177 Number 08/821004 anplicatio procram Application/Control Art Unit 2773 of any independent which modules plurality those the Page of are display that means program Unless wherein portion the window first of noted by window is region In rsrograms application any orogramming with.plurality.ofindiyidual application otherwise first the associated different be independent areas programs application amended with associated and applicant is region when program of any independent displayed is it by examiner that application from any separately the with associated presumed is it words how can other application program Claim The basis for the the sale be shall invention in this al U.S As patent to window to more are unless patent or than rejected described one year under 102 paragraphs appropriate made Usc in this Office U.S.C 102 of 35 that form the action -- in printed prior 35 to she in publication date of this or for application U.S.C 102b as being foreign patent in country the anticipated or United in use public or States by Takagi 4885704 claim window the 30 the this section patented country Claims 26 et entitled was of quotation under rejections person on is following 35 Rejections 26 Takagi region region et al independent having hereinafter of any interactive Takagi application display areas teaches the program such as Fl following with F4 function at col subject area lines matter 202 in 49 52 Fig 002FH273 WI-AppIe000l 178 Number Application/Control Art Unit individual the to generate to In 49 addition 28 do not Scanner as plurality in the 14 and wherein 271 teaches at of the one of least 29 The found in 8. Cohausz patent the at areas areas display area as at illustrated text prior Claims EPO of those Office one of and Figs. at 202 region that Figs. information 30 function at window is the is executable is and Figs. sensitive displayed display that the which Figs. col. to user input at areas window shows that bottom at shows region of status on always is such windows as top 201 202. Claim Rejections 7. display in Fig. modules programming of plurality and File Display individual of with one of associated Printer plurality that the shown as windows overlap the for display Takagi control other such F4 57. screen of one of least line col. display and Page areas Fl display modules information lines col. at of plurality programming wherein 42 1004 2773 each of line 08/82 sections of Title 35 U.S. -35 USC Code not 103 included in this action can be action. 25 584 392 are rejected Al based under upon the 35 U.S.C. 103a English translation as being in unpatentable view of Takagi over et at. U.S. 4885704. 002FH274 WI-AppIe000l 179 Number Application/Control Art Unit claim per indicator Cohausz for to which the execute data plurality of bridging paragraph first displays having wherein each modules indicia is sensitive communication enable between to interactive the status control of at since is processor in necessary paragraph field individual and and generation at environment operating status provide window is paragraph at create an to that areas display least to user one of at at generates the and paragraph and with one of associated logic at Fig for functions control control and Figs fields information and at the the in least at one of plurality of paragraph at activity indicator execute for display input exchange to logic information display logic the with system with at the paragraph plurality of individual paragraph at at screen modules areas display display indicator with ohlong region Cohausz by mouse cursor wherein pp generation wherein status computer-controlled comprises taught with and plurality to generate paragraph module of that with monitor device modules programming an of of the the programming window plurality program of generation individual interactive an inherently screen control window is functions display cursor teaches computer processor order Page 2773 As status 08/821004 to the and paragraph program the plurality plurality of areas and display coordinate respective one of ftrther activities which area text display using of the teaches of programming areas associated its at programming message-based indicia generation information or information logic to passing segment 002FH275 WI-AppIe000l 180 Number Application/Control Art Unit Page 2773 claim Regarding with bar 08/821004 of plurality does Cohausz teach teaches Cohausz individual that the window Cohausz individual programming modules individual programming fields representing On displayed of the line 14 Thus as invention have the of from to would it of plurality per have claim paragraph and been because application Regarding for the also in teaches teaches the and of user with and 201 area access 202 also teaches that the associated are which with line is plurality different 42 to col in the skill from any status at the application programs to art and time of program as taught control the and by Takagi in information region strip area as Cohausz different control interpreted and col 202 ordinary separate were fhnction Figs in of plurality program region with separately with associated functions control single at nor application window one displayed provides programs Cohausz Cohausz region it from any missing elements to status separately of File teach nrograms in function and obvious modules programming claim F4 Display window first of Cohausz invention up in programs with not different window first but does program wherein single status above associated displayed portions teaches Printer makes for provide modules Fl Scanner include individual As application Takagi Therefore that Takagi programming such programs indicator hand other separately individual status is region program claimed is modules programming first teaches that all that at least with oblong one display field area is at Figs variably sized at paragraph 002FH276 WI-AppIe000l 181 Number ApplicationlControl Art Unit addition Cohausz to control at element 10 reference to execute the data window of bridging paragraph individual having wherein each at in modules of least at at of the one least p. device with and display plurality at indicia one data paragraph p. with oblong of display at or acts to only provide an displays access additional matter subject since is processor in necessary to at provide areas is environment operating status generation at individual paragraph p. create an window field paragraph p. cursor that the with following Cohausz screen modules areas or Figs. areas display indicator logic wherein region by mouse control at of plurality paragraph p. the taught status the 3. teaches with monitor pp. modules programming display of plurality the programming window first of generation plurality paragraph inherently screen control at 11 Cohausz is and paragraph p. p. functions display cursor displays claim which processor to at one of least when selected information In at that teaches information displays display Page 2773 in order 08/821004 and control functions and control logic and Figs. fields at and of the at the generates and paragraph atp. Fig. with one associated for at p. paragraph plurality of individual paragraph graphics display generation area by logic executing at that generates least one of the user sensitive plurality graphics for of programming and 002FH277 WI-AppIe000l 182 Number Application/Control Art Unit said the window signals selected least at As with the one of the claim to of plurality Cohausa teach Cohausz indicia graphics the teaches window programming modules programming fields representing On of the 14 Thus as Takagi Therefore invention have the of it to include individual invention plurality application of have application been window programming of Cohausz for the up programs associated user separate has area response not different from any the teach from were nor does program application of bar status orograms plurality with and individual as individual 202 which interpreted in function also area teaches that the are associated with and col 202 Figs line is plurality different 42 to col Cohausz skill ordinary separately with with 201 area at one of displayed provides in window and File to with region missing elements region it window in display program in flmction obvious modules because P4 Fl Display Printer would first programs modules makes single initiates does but functions control first above wherein data paragraph separately program of then at associated displayed and status teaches Takagi Scanner is also claimed modules single portions hand programming such programs provide from separately individual line other that for is which logic modules that region indicator status all when determines logic generation programming first control of programming plurality 11 Cohausz that and generation individual teaches displayed Page 2773 wherein been 08/821004 from any to status art at the application programs different access in the and as taught control time of program the and by Takagi in information region 002FH278 WI-AppIe000l 183 Number Application/Control Art Unit As also teaches claims As to 13 claim creating provide 14 accommodate modules wherein each of programming selecting said the plurality modules an indicia displaying one of areas display the indicia entire program with areas is and individual of the one least that paragraph Figs at modules programming fields associated at and Figs of individual with one of plurality to paragraph at the at programming plurality of paragraph shown as the during individual to field display at module programming of at of plurality indicia for visible 12 steps paragraph at is user to claims following for from executing resulting paragraph individual of plurality the with oblong window first indicator status to the visible always is region respectively teaches functions control the environment operating generating that correspond they window first teaches 15 Cohausz an and status that the he since paragraph per Page 2773 Cohausz at 08/821004 at Figs and paragraph at in function performing response to the selection at paragraph Regarding bar with does plurality Cohausz program teach Cohausz claim of 15 Cohausz individual that the teaches first teaches all status region indicator is claimed modules programming window that for is associated displayed single above with separately program but does teach status jffgrent programs nor from any application wherein the not plurality of 002FH279 WI-AppIe000l 184 Number ApplicationlControl Art Unit Page programming modules individual programming fields representing On displayed the Thus have from as application it to include makes would invention of Cohausz of plurality of In have at As to at p. paragraph other 18 Cohausz in module response area at 202 in of displayed separate that the message returns to message interaction that the associated with line col. is plurality different 42 to col. in the from any different access application programs to status at the art and as time of the program by Takagi taught control and in information region. 16 and control information 3. paragraphs teaches arc skill ordinary with user teaches which Cohausz. separately with also Figs. in function and 202 status information p. to user one to provides sends paragraph programming with each at and File associated modules it in function and 201 missiag elements region teaches and claim F4 obvious programs Cohausz Figs. been because application addition 17 the as program. region with window in programs for the window first the and up individual programming features interpreted area functions control single window first Display Printer of portions teaches and status provide modules Fl Scanner Takagi Therefore invention Takagi programming such programs that hand other separately individual line 14. were 2773 individual of 10 08/821004 programming first the programming such with the that first the module module programming programming set requests of indicative modules module of features interact also at p. 2. 002FH280 WI-AppIe000l 185 Number ApplicationiControl Art Unit window also and individually wherein the variable status claim to Claims 4- 4885704 and Cohausz that the areas first is based in On is region so col lines that is region above other are Mills also none or of the all display display al at U.S applicants et al and the at first paragraph window first is region et al Patent 5202961 of and the portion is of none does but paragraph that window first the plurality region not teach of display Nor does visible invention lines Mills and teach also that the teaches with visible portion over Cohausz unpatentable and Takagi such hereinafter are being fields or areas the paragraph 20 23 as patent sized of or 103a paragraph col is areas paragraph translation visible at display and program entire areas at variably elements hand Mills sized all the English of of plurality windows at U.S.C the that the variable region view the claim 35 upon variably also of paragraph the during to at application under rejected visible the visible is corresponds it of 21 24 Al window teach Takagi 25 are are in front layer teaches field 19 22 appears each that following sized further 584 392 the indicator window private As teaches always region EPO 11 Page 2773 Cohausz in 08/821004 of the close display size sizing box areas of the 28 the first first at window Fig are visible window and both at at cot lines 002FH281 WI-AppIe000l 186 Number Application/Control Art Unit as of the in claimed claims to Claim 31 is 4885704 patent that shown the On is variable claim display of the areas display col been obvious window display region of the to of or some Mills with are visible one of as taught function being does window ordinary that hereinafter close box 28 at teach skill variably ordinary skill in the art by Mills because at sized time the the gives it indicator over unpatentable et al Takagi U.S with region of none the function area of plurality but does areas are 202 display not displayed teaches not is 5202961 patent such region as taught region as also both one of to U.S.C 103a U.S window first status al et the the and visible Takagi window teaches are obvious display resizeable is that of to et 31 Takagi teach been first the 35 Mills lines areas Although under hand other are have of size region displayed the at view window are all the rejected in Regarding teach would it vary nor Takagi how much and what over control Cohausz neither invention 10 12 Page 2773 Although user 08/821004 col by Mills because the size region col of lines at so window the that or of none all or region the portion lines that in the and Fig that window the sizing at teach Mills the art it window at the gives region time the of user the is variably invention control over sized to would it vary the size have of how much and what the to area 002FH282 WI-AppIe000l 187 Number Application/Control Unit Art 08/821004 Page 2773 Applicants view of new wounds of the As the to that applicant anolication However in combined with teaches first programming Scanner window that teach individual Cohausz does and teach that function area and also in function File but are moot in at 202 teaches the which that 202 are examiner is the is include that agrees with displayed the bar status agrees region is reference which obvious invention displayed of with line with different since is 42 such programs col line 14 application of any Cohausz does programs that applicant independent Taicagi individual different to when from separately plurality associated with associated examiner that Takagi and col window first region applicants Figs the window to 31 and Fig found teaches area modules the renders The Foster 30 lines examiner the reference programming not considered program first For instance still 201 F4 Cohausz the that the col with window Display Printer teach Foster reference region in been amended each claim applicant application program modules Fl Regarding not nor orogram Cohausz have 31 of any independent an update search programs application as the 11 15 25 26 application to the attached claims rejection Cohausz neither from any separately is region to respect claims independent window first with arguments Arguments to Response 11 13 and application program However based the communication examiner which disagrees is defined with as applicant passing that information Cohausz to the does not module teach to message either tell it what 002FH283 WI-AppIe000l 188 Number ApplicationiControl Art Unit to do Page 14 2773 information or to obtain based 08/821004 communication control button executes the information he since which upon being module to module the teaches tell what its of fields constitutes into do with the the step of teaches Cohausz teaches the panel area program executing message- control associated Thus abstract to Cohausz capabilities these branches activated it and each that function proumm associated to the about or or passing associated program function Conclusion 12 amendment Applicants action reminded of the ACTION THIS Accordingly extension of shortened MONTHS from mailing MONTHS of end of the time statutory the will expire on CER 1.136a however final the the mailing necessitated the date will be will the the calculated statutory period from the is mailed mailing for reply expire action later is first then and any of MPEP in this Office presented 706.07a Applicant is the than reply is is fee within not mailed MONTHS statutory pursuant action advisory TWO filed shortened the extension SIX THREE set to expire action advisory period date rejection CFR 1.136a event the of See 37 final and statutory action in In the action final shortened advisory to this action this of this THREE-MONTH set forth for reply of date new grounds MADE FINAL as policy period date IS the In from no the to until after period 37 event date of this action Responses 13 Responses to this action should be mailed to Commissioner of Patents and Trademarks 002FH284 WI-AppIe000l 189 Number ApplicationlControl Art Unit Page 15 2773 D.C. 20231. Washington formal communications Please final 08/821004 or 703 305-9724 or to fax DRAFT 703 response for informal AFTER FINAL label please desires applicant PROPOSED label responses If or draft for informal may be used for communications. communications. facsimile PROCEDURE EXPEDITED or 308-9051 on For after the document. Hand-delivered VA. Arlington. should responses Sixth Floor be brought to Crystal Park 2121 II Drive Crystal Receptionist. Inquiries 14. Any this concerning inquiry dela communication Tone whose or earlier should be directed examiner number can normally be reached on Mondays-Thursdays to from Fridays alternating If attempts Kim Matthew Any Crescelle dela Art 830 reach am the be reached of general to the Group inquiry directed Patent to can should be Crescelle to telephone from is 703 am 830 from the The 305-9782. 400 to pm examiner and on 300 pm. examiner at communications by telephone 703 or relating the unsuccessful examiners supervisor 305-3821. nature are receptionist whose to the status telephone of this application number is 703 or proceeding 305-3800. Tone Examiner 2773 Unit 2773 September 11 1998 Matthew Supervisory lechnoloqy M. Kim Pttnt Examiner uncf 2700 002FH285 WI-AppIe000l 190 No Applicetion Appiiants Christencen 081821004 Notice of References Cited Examiner Group Crce1Ie U.S DOCUMENT NO Art Unit 2773 Delatorre Page of DOCUMENTS PATENT NAME DATE CLASS SUBCLASS 4862389 4885704 12/1989 Takeg et ci 345 4931957 6/1990 Takagi ci ci 345 5091868 211992 345 34 5.640498 6/1997 Chew 345 48C..yn 5678034 AJ 8/1989 10/1997 Chew 345 Takagi __ 5757371 5/1 998 Oran POREIGN DOCUMENT NO and Drcd Rev ank Including Aatho 11Cc 168 34- 345 ci DOCUMENTS PATENT NON-PATENT Pwn PTO.892 at COUNTRY DATE DOCUMENT 345 Takagi NAME CLASB SUBCLASS DOCUMENTS Serge and PerCnant DATE Paged 0nca 9-95 Notice of References Cited Part ol Paper No 23 002FH286 WI-AppIe000l 191

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