UNITED STATES PATENT AND TRADEMARK OFFICE
`
`mi
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO, Box 1450
`Alexandria. Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`10/699,555
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`10/31/2003
`
`Beth Marcus
`
`ATTORNEY DOCKET NO.
`—_
`19146-002001
`3602
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`FISH & RICHARDSON, PC
`P.O. BOX 1022
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`MINNEAPOLIS, MN 5544041022
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`'
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`OSORIO, RICARDO
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`PAPER NUMBER
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`.
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`'
`
`ARTUNIT
`2629
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`DATE MAILED: 10/05/2006
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. 10/03)
`
`APLIX EXHIBIT 2002
`
`SCEA v. Aplix IP Holdings Corp.
`
`| PR2015-00230
`
` APLIX EXHIBIT 2002
` SCEA v. Aplix IP Holdings Corp.
` IPR2015-00230
`
`

`

`Application No.
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`Applicant(s)
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`10/699,555
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`MARCUS ET AL.
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`Office Action Summary
`
`Examiner
`
`RICARDO L- OSORIO ”-
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(3).
`In no event, however. may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply15 specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date 01 this communication, even it timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`UK Responsive to communication(s) filed on 31 October 2003.
`2a)I:I This action is FINAL.
`2b)IZ This action is non-final.
`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`
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`Disposition of Claims
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`4)IZ Claim(s) 1.3-21 and 23-55 is/are pending in the application.
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`4a) Of the above claim(s) __ is/are withdrawn from consideration.
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`5)IZ| Claim(s) 29 32-42 and 54 is/are allowed.
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`6)[:I Claim(s) 1 5-19 23—28 30 31 43-46 49-53 and 55 is/are rejected.
`NZ Claim(s) 3 4 20 21 47 and 48 is/are objected to.
`8)I:I Claim(s)
`are subject to restriction and/or election requirement.
`
`Application Papers
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`9)l:] The specification is objected to by the Examiner.
`10)lj The drawing(s) filed on _ is/are: a)lj accepted or b)I:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11)|:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`a)I:] All
`b)l:] Some * CH] None 01:
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`11:] Certified copies of the priority documents have been received.
`2.l:l Certified copies of the priority documents have been received in Application No. __
`3.I:l Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) IX] Notice of References Cited (PTO—892)
`2) E] Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) E Information Disclosure Statement(s) (PTO/SB/OB)
`Paper No(s)/Mai| Date 10131103; 519105; 5115106.
`US. Patent and Trademark Office
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`4) El Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. _ -
`5) CI Notice of Informal Patent Application
`6) [:1 Other:
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`PTOL—326 (Rev. 08-06)
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`Office Action Summary
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`Pan of Paper No./Mai| Date 20061001
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`

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`Application/Control Number: 10/699,555
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`Art Unit: 2629
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`Page 2
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`Applicant's election with traverse of species # 1 in the reply filed on 7/14/2006 is
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`acknowledged. The traversal is on the ground(s) that Figures 4a-4b, 5a-5b, 6a-6b, and 7a-7b, are
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`only illustrative of the above mentioned variations in the input elements disposed on the first and
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`second assembly of the human interface device. This is found persuasive and all claims 1, 3—21,
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`and 23-55 will be examined as follows.
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`Claim Rejections - 35 USC § 102
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`1.
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`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
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`2.
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`Claims 1, 5, 6, 12, 13, 17-19, 24-28, 30, 31, 43, 49-53, and 55 are rejected under 35
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`USC. 102(e) as being anticipated by Liebenow et al. (6,909,424).
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`Regarding claims 1, 12, 17, and 43, Liebenow teaches of a hand-held electronic device (Fig. 1,
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`reference character 100) comprising a memory configured to store a plurality of applications,
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`wherein each application is associated with a set of functions (Fig. 13, reference character 504);
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`a processor configured to process a selected one of the plurality of applications (Fig. 13,
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`reference character 502); a first input assembly having a plurality of input elements on a first
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`surface configured to receive input from a human user through manipulation of the plurality of
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`

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`Application/Control Number: 10/699,555
`Art Unit: 2629
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`'
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`Page 3
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`input elements, wherein at least one of the input elements on the first surface is configured to
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`selectively map to one or more input functions, including more than one text input functions, of
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`the set of functions associated with the selected one of the plurality of applications (col. 4, lines
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`33-43, col. 8, lines 45-67, and col. 9, lines 53-67); and a second input assembly having one or
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`more input elements on a second surface configured to be manipulated by one or more of the
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`human user's fingers, wherein each one of the input elements on the second surface is further
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`configured to be selectively mapped to one or more input functions of the set of functions, or to a
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`different shifting function, corresponding to the selected one of the plurality of applications
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`wherein manipulation of one of the selectable active area causes the text symbol function of the
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`one or more input elements of the first surface to change (col. 5, line 36-001. 6, line 17, col. 8,
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`lines 45-67, and col. 9, lines 53-67) further wherein the plurality of input elements on the first
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`surface and the one or more input elements on the second surface are arranged so as to
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`substantially optimize a biomechanical effect of the human user's hand (see Figs. 3, 4, and 7, and
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`col. 4, line 13-25).
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`Regarding claim 24, Liebenow further, teaches of a method for inputting data on a hand-held
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`electronic device, wherein at least one of the input elements is further configured lo map to a
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`plurality of symbols in a data input mode, wherein each of the plurality of symbols is associated
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`with a unique index position identifier (col. 4, lines 33-43, col. 8, lines 45-67, and col. 9, lines
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`53-67), and a second surface having one or more selection elements configured to be
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`manipulated by one or more of the human user's fingers, wherein each selection element
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`corresponds to one of the unique index position identifiers (col. 5, line 36-001. 6, line 17, co]. 8,
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`Application/Control Number: 10/699,555
`Art Unit: 2629
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`Page 4
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`lines 45-67, and col. 9, lines 53-67), further wherein the plurality of input elements and the one
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`or more selection elements are arranged to substantially optimize a biomechanical effect of the
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`human user’s hand (see Figs. 3, 4, and 7, and col. 4, line 13-25), the method comprising
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`executing a selected application from a plurality of applications, wherein the selected application
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`is associated with a set of functions; determining the index position identifier of a desired symbol
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`to be inputted based on the functions associated with the selected application; pressing the
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`selection element corresponding to the index position identifier of the desired symbol with
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`any digit or object held in the human user's hand; and pressing the input element configured to
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`map to the desired symbol with any digit or object held in the human user's hand (col. 4, lines
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`33-43, col. 5, line 36-c01. 6, line 17, col. 8, lines 45-67, and col. 9, lines 53-67).
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`Regarding claim 28, Liebenow, further, teaches of a method of inputting data on a hand-held
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`electronic device comprising a plurality of input elements in a thumb-manipulated assembly to
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`substantially optimize a biomechanical effect of the human user's thumb and fingers (see Figs. 3,
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`4, and 7, and col. 4, line 13-25), wherein at least one input element is mapped to more than one
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`text function, and one or more selection elements in a finger-manipulated input assembly,
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`wherein each selection element is mapped to a unique shift position (col. 4, lines 33-43, col. 5,
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`line 36-col. 6, line 17), the method comprising executing a selected text application from a
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`plurality of applications, wherein the selected application is associated with a set of functions;
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`pressing a desired selection element of the finger—manipulated input assembly with a human
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`finger to select a desired shift position the selected text application; and pressing a desired input
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`element of the thumb-manipulated input assembly with a human thumb to input a desired text
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`

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`Application/Control Number: 10/699,555
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`Art Unit: 2629
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`Page 5
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`character (col. 4, lines 33—43, col. 5, line 36—001. 6, line 17, col. 8, lines 45-67, and col. 9, lines
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`53-67).
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`Regarding claim 5, Liebenow, further, teaches that the processor receives signals generated by
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`the input elements of first or second input assemblies when manipulated by the human use
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`(Although not specifically mentioned, it is inherent that processor (Fig. 13, character 502) will
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`receive the signals generated by the input elements since the selection is related to a specific
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`software included in said processor and because the processor interprets the input signal and
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`formulates a response or output related to the input).
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`Regarding claims 6, 13, and 19, Liebenow, further, teaches of an input controller, wherein the
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`input controller receives signals generated by the input elements of first surface or active areas
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`input assembly, or second input assemblies, when manipulated by the human user and converts
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`the signals into a form suitable to be interpreted by the processor (Fig. 13, reference character
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`24).
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`Regarding claims 18 and 25, Liebenow teaches of physically or electronically labeling at least
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`one input element of the first input assembly or the second input assembly so as to visually
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`indicate an input function that can be selectively accessed by actuating the input element (see
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`Figs 15 and 16).
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`Regarding claim 26, Liebenow teaches of that determining the index position identifier of the
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`desired character to be inputted comprises locating the input element configured to map to the
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`desired symbol; and counting from left to right the number of symbols preceding the desired
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`symbol labeled on the located input element, wherein the index position identifier of the desired
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`symbol is the number of symbols preceding the desired symbol plus one (see Figs. 15 and 16).
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`

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`Application/Control Number: 10/699,555
`Art Unit: 2629
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`Page 6
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`Regarding claim 27, Liebenow teaches of at least one of the input elements or selection elements
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`is further configured to map to a plurality of modes corresponding to the selected application
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`executing on the hand-held electronic device, at least one of the modes is the data input mode,
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`the method further comprising enabling the data input mode (see Fig. 2, and col. 8, lines 45-67,
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`and col. 9, lines 53-67).
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`Regarding claim 30, Liebenow teaches of the selected one of the plurality of applications is a
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`text application; and the one or more input elements on the second surface of the second input
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`assembly comprises one or more selection elements, wherein manipulations of the one or more
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`selection elements causes the input elements on file first surface of the first input assembly to be
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`selectively mapped from one text function to another text function (see Fig. 2, and col. 8, lines
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`45-67, and col. 9, lines 53-67).
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`Regarding claims 49-53, and 55, Liebenow teaches of the processor is further configured to be
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`communicatively coupled to a host electronic device (col. 12, lines 31-40).
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`Regarding claims 7-11, 14-16, 23, 41, and 44-46, applicant admits in the REMARKS filed
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`7/14/2006, page 2, lines 13-15, that Figures 4a-4b, 5a-5b, 6a-6b, and 7a-7b, are only illustrative
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`of the above mentioned variations in the input elements disposed on the first and second
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`assembly of the human interface device.
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`Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention
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`was made to have the limitations of claims 7-11, 14-16, 23, 41, and 44-46, as taught by
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`applicant, in the device of Liebenow, which are related to Figures 4a-4b, 5a—5b, 6a-6b, and 7a-7b
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`of the instant application, because they are obvious differences, or variations of the input
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`

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`Application/Control Number: 10/699,555
`Art Unit: 2629
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`Page 7
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`elements disposed on the first and second assembly of the human interface device of Figures 3a-
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`3d, as admitted by applicant.
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`Allowable Subject Matter
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`3.
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`Claims 3, 4, 20, 21, 36, 37, 47, and 48 are objected to as being dependent upon a rejected
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`base claim, but would be allowable if rewritten in independent form including all of the
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`limitations of the base claim and any intervening claims.
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`4.
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`Claims 29, 32, and 54 are allowed.
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`The following is an examiner’s statement of reasons for allowance: Claims 29, 32, and 54 are
`allowable since certain key features of the claimed invention are not taught or fairly suggested by
`the prior art. In claim 29, “wherein at least one of the input elements of the second input
`assembly is a selectively configurable sensing surface so as to provide a plurality of delineated
`active areas, further wherein one or more of the delineated active areas is mapped to one or more
`functions associated with the selected application”. The prior art of record however singularly or
`in combination fails to anticipate or render the above underlined limitations obvious.
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`‘ Any comments considered necessary by applicant must be submitted no later than the
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`payment of the issue fee and, to avoid processing delays, should preferably accompany the issue
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`fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for
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`Allowance.”
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`Any inquiry concerning this communication or earlier communications from the
`5.
`examiner should be directed to Ricardo L. Osorio whose telephone number is 571-272-7676.
`The examiner can normally be reached on Monday through Thursday from 7:00 AM. to 5:30
`P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner‘s supervisor,
`Bipin Shalwala whose telephone number is 571—272-7681.
`Any response to this action should be mailed to:
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`Commissioner of Patents and Trademarks
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`

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`Application/Control Number: 10/699,555
`' Art Unit: 2629
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`Page 8
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`or faxed to:
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`Washington, DC. 20231
`571-273-8300 (for Technology Center 2600 only)
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`Hand—delivered responses should be brought to the Customer Service Window at the
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`Randolph Building, 401, Dulany Street, Alexandria, VA 22314.
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`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be
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`obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished
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` RICARDO osumo
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`PRIMARY EXAMINER
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`Technology Division: 2629
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`RLO
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`October 1, 2006
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