Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Docket Nos. 51020-012USRX and -012USRX2
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Confirmation No.: 7141
`
`Group Art Unit: 3992
`
`Examiner: Roland Foster
`
`Confirmation No.: 3478
`
`Group Art Unit: 3992
`
`Examiner: Roland Foster
`
`Patent Owner: MobileMedia Ideas LLC
`
`Patent No.: 6,427,078
`
`Control No.: 90/011,736
`
`Reexam Request Date: June 10, 2011
`
`Title: Device for Personal Communications,
`Data Collection and Data Processing, and a
`Circuit Card
`
`Patent Owner: MobileMedia Ideas LLC
`
`Patent No.: 6,427,078
`
`Control No.: 90/011,883
`
`Reexam Request Date: August 30, 2011
`
`Title: Device for Personal Communications,
`Data Collection and Data Processing, and a
`Circuit Card
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-14 50
`
`AMENDMENT AFTER FINAL REJECTION
`
`Sir:
`
`In response to the Final Office Action dated February 27, 2012 in the merged
`
`reexamination proceedings identified above, the Patent Owner respectfully requests entry of this
`
`Amendment pursuant to M.P .E.P. § 2272 and 3 7 C.F .R. § 1.116. The Patent Owner notes that,
`
`6385/51 020-001 currenU28094943v5
`
`04/23/2012 3:31 pm
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`pursuant to M.P.E.P. § 2272-I, the filing of this response to the final rejection triggers an
`
`automatic 1 month extension of time. The Commissioner is authorized to charge any fees that
`
`may be required in connection with this paper to Deposit Account No. 50-3081.
`
`Amendments to the Claims are reflected in the listing of claims that begins on page 3 of this
`
`paper.
`
`Remarks and Arguments begin on page 6 of this paper.
`
`Page 2 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`Amendments to the Claims:
`
`Please cancel claims 1, 6, 29, and 69 without prejudice and without disclaimer of subject
`
`matter.
`
`Please amend claims 2, 4, 5, 8, and 18 and add claims 77-79 in compliance with 37
`
`C.P.R. §§ 1.530(d)(2) and (f) as follows:
`
`2. (Amended) A device according to claim [1] 22, wherein said means for transmitting image
`
`information comprises a cellular mobile phone unit.
`
`4. (Amended) A device for personal communication. data collection and data processing. which
`
`is a small-sized. portable and hand-held work station including a housing and comprising a data
`
`processing unit. a display. a user interface. a number of peripheral device interfaces. at least one
`
`memory unit" a power source and application software wherein the device also comprises:
`
`a camera unit for obtaining and outputting image information comprising:
`
`a camera for receiving image information· optics connected to said camera for passing
`
`said image information to the camera·
`
`at least one memory unit for storing said image information· and
`
`an output coupled to said data processing unit for outputting image information from said
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`memory unit to the processing unit;
`
`and wherein at least a portion of said camera unit is located within said housing, and
`
`said data processing unit processes image information output by said camera unit, and
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`Page 3 of25
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`Ex. GOOG 1048
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`

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`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`wherein said device further comprises means for transmitting image information processed
`
`by said processing unit to another location using a radio frequency channeL
`
`wherein said means for transmitting image information comprises a cellular mobile phone
`
`unit, and
`
`wherein the cellular mobile phone unit comprises a telefax modem.
`
`5. (Amended) A device according to claim [1] 22, further comprising an infrared link for data
`
`transmission between external devices and the device.
`
`8. (Amended) A device according to claim [1] 22, wherein said camera unit further comprises
`
`means for processing image information from an image received by said camera and means for
`
`storing at least a portion of the processed image information in said at least one memory unit of
`
`said camera unit for later recall.
`
`18. (Amended) A device according to claim [1] 22, wherein the camera unit is located entirely
`
`within the housing of the device.
`
`77. The portable cellular mobile phone of claim 73 wherein the means for transmitting image
`
`information transmits the image information processed by said microprocessor to another
`
`location by transmitting an electronic mail message
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`Page 4 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`78. The portable cellular mobile phone of claim 73, wherein the image information obtained by
`
`the camera unit depicts data presented on paper.
`
`79. The portable cellular mobile phone of claim 73, wherein the image information obtained by
`
`the camera unit depicts an image of a person.
`
`Page 5 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`REMARKS
`
`This paper cancels all of the independent claims that were rejected in the Office Action
`
`(claims 1, 29, and 69) and also cancels dependent claim 6.
`
`This paper also amends the dependencies of claims 2, 5, 8, and 18 so as to depend on
`
`claim 22, which has not been rejected. These amendments make those four claims allowable and
`
`also make claims 3 and 34 (which depend on claim 2) allowable.
`
`The claim cancellations and amendments identified above obviate all the rejections set
`
`forth in the Office Action, and clearly place this application in condition for allowance. Entry of
`
`this Amendment after Final Rejection is therefore believed proper under M.P.E.P. § 2272 and 37
`
`C.P.R.§ 1.116.
`
`This paper also (a) rewrites claim 4 (which is not subject to reexamination) in
`
`independent form and (b) adds new dependent claims 77-79 to recite some additional features
`
`that are clearly supported in the specification and which are specific implementations of the
`
`subject matter of allowed claim 73, as explained in greater detail below. Since all the new
`
`claims depend on independent claim 73, which was previously indicated as being allowable, no
`
`additional searching should be necessary.
`
`In short, after entry of this amendment there will be no pending independent claims that
`
`are subject to rejection, and the pending dependent claims will all be dependent on an allowable
`
`claim. Entry of this amendment should therefore end these reexamination proceedings.
`
`Page 6 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`Finally, the Office Action indicated that Claim 17 and 73 are patentable, and the Patent Owner
`
`thanks the examiners for that indication. However, because the Patent Owner disagrees with
`
`some of the Office Action's comments on two means-plus-function limitations in claim 73, the
`
`Patent Owner respectfully requests consideration of the comments set forth below.
`
`Status of the Claims
`
`Claims 1-3, 5, 6, 8, 17, 18, 29, 34, 69, and 73 are subject to reexamination. The Patent
`
`Owner hereby amends claims 2, 4, 5, 8, and 18 and adds new claims 77-79 in compliance with
`
`37 C.P.R. §1.530 (d) (2) and (f). Pursuant to 37 C.P.R.§ 1.530 (e), the Patent Owner submits the
`
`following chart identifying the status and support for all the claims that are subject to
`
`reexamination and the new and amended claims. The Patent Owner respectfully submits that the
`
`new claims add no new matter to the application and do not broaden the scope of any pending
`
`claims.
`
`Claim
`1
`2
`3
`
`4
`
`5
`6
`8
`17
`18
`29
`34
`69
`73
`
`Status as of the date of this
`amendment:
`Cancelled
`Pending
`Pending
`Pending (not subject to
`reexamination)
`Pending
`Cancelled
`Pending
`Pending (and allowed)
`Pending
`Cancelled
`Pending
`Cancelled
`Pending (and allowed)
`
`Support for new or amended
`claim can be found at least at:
`N/A
`original claims 2 and 22
`original claims 3, 2, and 22
`
`original claims 4, 2, and 22
`
`original claims 5 and 22
`N/A
`original claims 8 and 22
`original claim 1 7
`original claims 18 and 22
`N/A
`original claims 34 2, and 22
`N/A
`original claim 73
`
`Page 7 of25
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`Ex. GOOG 1048
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`

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`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`Claim
`
`77
`
`78
`79
`
`New (upon entry of this amendment)
`
`Status as of the date of this
`amendment:
`
`Support for new or amended
`claim can be found at least at:
`Col. 7, lines 37-40 and
`Col. 8, lines 5-18
`New (upon entry of this amendment) Col. 3, lines 18-20
`New (upon entry of this amendment) Col. 3, lines 18-20
`
`Comments on New Claims 77-79
`
`New claims 77-79 recite additional features which are specific implementations of the
`
`subject matter of claim 73 on which they depend. Thus, claims 77-79 are all narrower in scope
`
`than allowed claim 73.
`
`New claim 77 recites that "the means for transmitting image information transmits the
`
`image information processed by said microprocessor to another location by transmitting an
`
`electronic mail message." Support for this language can be found in the following passages of
`
`the '078 patent specification:
`
`The bitmap images or converted ASCII texts/graphics transferred to the
`memory from digitizer pad 29 of notebook computer 27 can be later
`forwarded via telefax or electronic mail services. ('078 patent at Col. 7,
`lines 37-40, emphasis added)
`
`***
`
`message reading is read by the data collection device such as camera unit
`14. After the message has been transmitted via a cellular mobile phone to a
`GSM short message centre, it is forwarded to the recipient. The recipient is
`chosen from the phone list or the user inputs it manually.
`An electronic mail message is implemented in the same way as the SMS
`message above, but the electronic mail message may be longer.
`('078 patent at Col. 8, lines 10-18, emphasis added)
`
`Page 8 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`The first of these two passages indicates that images can be transmitted via email, and the
`
`second indicates that material that is input using the camera unit 14 can be transmitted via either
`
`SMS or email. These two passages therefore provide support for transmitting image information
`
`to another location via email, as recited in new claim 77, and refute the Office Action's
`
`contention that the transmission of image information in the '078 patent is limited to SMS only.
`
`New claims 78 and 79 recite that "the image information obtained by the camera unit
`
`depicts data presented on paper" and that "the image information obtained by the camera unit
`
`depicts an image of a person." Both of these claims are supported by the following passage of
`
`the '078 patent specification:
`
`The notebook computer further comprises a data collection device which is
`Implemented by means of a camera unit. . . . Camera unit 14, which is
`represented in the form of a block diagram in FIG. 5, consists of camera
`arrangement 140 which comprises camera 14a provided with suitable optics
`14b, and image processing unit 14c connected to the camera arrangement.
`This data collection unit can be used to transfer data presented on paper or
`the like as well as an image taken of the surroundings, for instance of a.
`person, to the notebook computer to be processed further. ('078 patent at
`Col. 3, lines 5-21, emphasis added)
`
`Two things are notable in the passage quoted above. First, it uses "data collection
`
`device," "camera unit," and "data collection unit" interchangeably. And second, it indicates that
`
`the data collection unit (i.e., the camera) can operate on (1) data presented on paper, (2) an image
`
`taken of the surroundings, and (3) an image of a person. Of course, this is not surprising because
`
`a camera will take a picture of anything that it is pointed at. The passage quoted above therefore
`
`rebuts the Office Action's contention that the subject matter of the transmitted images must be
`
`limited to images of words that were written on paper.
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`Page 9 of25
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`Ex. GOOG 1048
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`

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`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`Additional support can be found at col. 4, lines 48-54, which explain that
`
`Camera unit 14 functions in the following way ... a picture of a document
`or three-dimensional environment taken by camera 14a through optics 14b
`is transferred to image processing unit 14c and through its microprocessor
`23 to memory unit 24, such as RAM.
`
`This passage provides further support for the position that the disclosure in the '078 patent is not
`
`limited to photos of documents only, and new claim 79 has been added to clarify that other types
`
`of images can be handled.
`
`Comments on Allowed Claim 73
`
`Claim 73 reads as follows:
`
`73. A portable cellular mobile phone comprising:
`a built in camera unit for obtaining image information;
`a user interface for enabling a user to input signals to operate the
`camera unit;
`a display for presenting image information obtained by the camera
`unit;
`a microprocessor adapted to control the operations of the camera unit
`in response to input signals from the user interface, and to
`process image information received by the camera unit; and
`means coupled to said microprocessor for transmitting image
`information processed by said microprocessor to another location
`using a radio frequency channel;
`and wherein the camera unit comprises:
`optics for obtaining image information;
`an image sensor for obtaining image information; and
`means for processing and for storing at least a portion of the
`image information obtained by the camera unit for later
`recall and processing.
`
`For convenience, the four limitations underlined above are referred to herein as the
`
`"portable cellular mobile phone" limitation, the "display" limitation, the "means for
`
`transmitting" limitation, and the "means for processing" limitation. Although claim 73 has been
`
`Page 10 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`allowed, the Patent Owner is submitting the following comments to refute the Office Action's
`
`construction of the "means for transmitting" and "means for processing" limitations.
`
`The Office Action indicated that claim 73 is patentable over Rostoker for three
`
`independent reasons: (1) because Rostoker fails to teach the "means for transmitting" limitation;
`
`(2) because Rostoker fails to teach the "means for processing" limitation; and (3) because
`
`Rostoker fails to clearly teach the "display" limitation. (See pages 25-27 of the Office Action.)
`
`The Office Action also indicated that claim 73 is patentable over Britz for two
`
`independent reasons: (1) because Britz fails to teach the "means for transmitting" limitation; and
`
`(2) because Britz fails to clearly teach the "display" limitation. (See page 27 of the Office
`
`Action.)
`
`The Office Action also indicated that claim 73 is patentable over McNelly for three
`
`independent reasons: (1) because the "portable cellular mobile phone" limitation is limiting; (2)
`
`because McNelly fails to teach the "means for processing" limitation; and (3) because McNelly
`
`fails to teach the "means for transmitting" limitation. (See pages 27-29 of the Office Action.)
`
`As a result of these independent reasons, the Office Action's construction of the "means
`
`for processing" and "means for transmitting" limitations should have no bearing on the
`
`allowability of claim 73 or the scope of claim 73, because even if those two limitations are
`
`disregarded, at least one alternative independent reason for patentability over each reference
`
`Page 11 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`would still remain. 1 In particular, claim 73 would remain patentable over Rostoker because of
`
`the "display" limitation, claim 73 would remain patentable over Britz because of the "display"
`
`limitation, and claim 73 would remain patentable over McNelly because of the "portable cellular
`
`mobile phone" limitation. Nevertheless, the Patent Owner respectfully submits that the Office
`
`Action's construction of the "means for transmitting" and "means for processing" limitations is
`
`incorrect for the reasons set forth below.
`
`The Office Action's Construction of the "Means for Processing" and
`"Means for Transmitting" Limitations
`
`The Office Action correctly notes (at page 22-23) that the "means for transmitting" and
`
`"means for processing" limitations in claim 73 should be analyzed under 35 U.S.C. § 112, sixth
`
`paragraph.
`
`Construing a means-plus-function limitation is a two-step process. The first step is to
`
`"determine the claimed function," JVW Enterprises Inc. v. Interact Accessories Inc., 424 F.3d
`
`1324, 76 USPQ2d 1641, 1645 (Fed. Cir. 2005), and the second step is to "identify the
`
`corresponding structure in the written description that performs that function." !d. These two
`
`steps "must occur in a particular order. . . . function must be determined before corresponding
`
`structure can be identified." !d.
`
`For the first step of determining the claimed function, it is impermissible to "adopt[] a
`
`function different from that explicitly recited in the claim." !d., 76 USPQ2d at 1646 (citations
`
`1 The Patent Owner's Reply dated December 27, 2011 in 90/011,883 explains why claim 73 is
`patentable over Rostoker, Britz, and McNelly at pages 8-12, 12-14, and 14-19, respectively, and
`those arguments are incorporated herein by reference. The patentability arguments based on
`commercial success at pages 20-21 of that paper are also incorporated herein by reference.
`
`Page 12 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`omitted). And it is also impermissible to "import[] the functions of a working device into the[]
`
`specific claims, rather than reading the claims for their meaning independent of any working
`
`embodiment." !d. (citations omitted).
`
`The Patent Owner respectfully submits that the Office Action's construction of the
`
`"means for transmitting" and the "means for processing" limitations did not follow these rules,
`
`for two reasons.
`
`First, the Office Action merged together its discussion of function and structure, instead
`
`of treating those two analyses as two distinct steps. This merging is apparent from the following
`
`excerpts from the Office Action (at page 25), which failed to maintain a clear distinction between
`
`function and structure.
`
`Thus, the function "transmitting an image processed at the microprocessor
`to another location using a radio frequency channel" must correspond to the
`structure and acts for wirelessly transmitting a digital image using a
`technology (e.g .. SMS) distinct from email. where the digital image was
`converted (processed) at a camera microprocessor from a physical message
`(e.g .. a message written on paper intended for facsimile).
`
`Regarding the structure and acts corresponding to the function "processing
`and storing the image information obtained by the camera unit," see Fig. 3,
`data processing unit 2 and camera unit 14, which includes Fig. 5, memory
`24. The structure and acts for storing image information includes digitally
`converting (processing) physical messages using the camera and then
`storing the images in memory 24, as discussed above.
`
`As indicated by the case law cited above, such merging of function and structure is improper
`
`when construing means-plus-function limitations.
`
`Page 13 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`And second, the Office Action did not identify the correct function and corresponding
`
`structure for the "means for transmitting" and "means for processing" limitations, as explained
`
`below.
`
`The "Means for Transmitting" Limitation
`
`In the "means for transmitting" limitation of claim 73, the function that is explicitly
`
`recited in the claim is "transmitting image information processed by said microprocessor to
`
`another location using a radio frequency channel" and that is the proper function to use for claim
`
`construction.
`
`As a result of the merging between the Office Action's discussion of function and
`
`structure discussed above, the function that the Office Action ultimately used for this limitation
`
`is not completely clear. But as best understood by the undersigned, the Office Action did not use
`
`the function quoted in the previous paragraph, which is explicitly recited in the claim. Instead, it
`
`looks like the Office Action adopted the following function: "wirelessly transmitting a digital
`
`image using a technology (e.g. SMS) distinct from email, where the digital image was converted
`
`(processed) at a camera microprocessor from a physical message (e.g. a message written on
`
`paper intended for facsimile) "2 and provided no justification for deviating from the function that
`
`actually appears in the claim.
`
`Reading additional phrases like "using a technology (e.g., SMS) distinct from email" and
`
`"from a physical message (e.g., a message written on paper intended for facsimile)" into the
`
`2 See page 25 of the Office Action construing the "means for transmitting" limitation, and pages
`25-27 reading that limitation on Rostoker and Britz.
`
`Page 14 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`function of the "means for transmitting" limitation improperly limits the scope of that limitation.
`
`As the Federal Circuit explained in JVW, "when construing the functional statement in a means-
`
`plus-function limitation, we must take great care not to impermissibly limit the function by
`
`adopting a function different from that explicitly recited in the claim." JVW, 7 6 USPQ2d at 1646
`
`(citations omitted, emphasis added). The Patent Owner respectfully submits that the Office
`
`Action has not followed the Federal Circuit's guidelines in JVW for determining the function,
`
`and that the Office Action's construction of the "means for transmitting" limitation is therefore
`
`incorrect.
`
`Furthermore, the additional phrases that the Office Action has read into the function of
`
`the "means for transmitting" limitation are not even consistent with the patent's specification.
`
`The '078 patent clearly indicates that the camera can be used for alternative purposes, including
`
`photographing "data presented on paper," "an image taken of the surroundings," and "a person."
`
`'078 patent at col. 3, lines 18-20. The '078 patent also indicates that the camera can take "a
`
`picture of a document or three-dimensional environment." '078 patent at col. 4, lines 51-52. 3
`
`Limiting the scope of the function of the "means for transmitting" limitation to only one of those
`
`alternatives (i.e., to messages written on paper intended for facsimile) is therefore legally
`
`1m proper.
`
`Limiting the scope of the function of the "means for transmitting" limitation to "a
`
`technology (e.g., SMS) distinct from email" is also contradicted by the '078 patent's
`
`3 As explained above, new claims 78 and 79 have been added to clarify that the '078 patent
`covers cases in which the image information obtained by the camera unit depicts data presented
`on paper (claim 78) or an image of a person (claim 79).
`
`Page 15 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`specification because it unambiguously indicates that SMS and email are two alternative ways to
`
`send a message. More specifically, in its discussion of sending data that was captured using a
`
`camera, the '078 patent states:
`
`message reading is read by the data collection device such as camera unit
`14. After the message has been transmitted via a cellular mobile phone to a
`GSM short message centre, it is forwarded to the recipient. The recipient is
`chosen from the phone list or the user inputs it manually.
`An electronic mail message is implemented in the same way as the SMS
`message above, but the electronic mail message may be longer.
`('078 patent at Col. 8, lines 10-18, emphasis added)
`
`Since this passage first indicates that messages can be sent via SMS, and then goes on to indicate
`
`that "an electronic mail message is implemented in the same way as the SMS message above, but
`
`the electronic mail message may be longer," the '078 patent clearly contemplates that either
`
`SMS or email may be used to transmit a message, and that message transmission in not restricted
`
`to SMS only. 4
`
`Because the Office Action's constructions of the function of the "means for transmitting"
`
`limitation unduly narrowed the function with respect to the actual function that is expressly
`
`recited in claim 73, the Patent Owner respectfully submits that the Office Action's construction
`
`of that limitation is incorrect.
`
`Please note that, as best understood by the undersigned, the scope of the "means for
`
`transmitting" limitation was unduly restricted in the Office Action based on an incorrect
`
`determination of the function of that limitation. However, to the extent that the undersigned is
`
`incorrect and the scope is being restricted based on the corresponding structure, the Office
`
`4 New claim 77 is specifically directed to situations in which the means for transmitting transmits
`the image information to another location by transmitting an electronic mail message.
`
`Page 16 of25
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`Ex. GOOG 1048
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`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`Action's construction of the "means for transmitting" limitation would still be problematic for at
`
`least one of the following reasons: (a) the structure relied on in the Office Action would not
`
`correspond to the function that is actually recited in the "means for transmitting" limitation, or
`
`(b) the structure relied on in the Office Action would exclude alternative structures for
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`performing the function that is actually recited in the "means for transmitting" limitation. Both
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`of these problems are explained in the following paragraphs.
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`Structures that perform functions other than the function that is explicitly recited in a
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`means-plus-function limitation are not considered "corresponding" structures in a§ 112, ~ 6
`
`analysis. Micro Chemical Inc v. Great Plains Chemical Co., 194 F.3d 1250, 52 USPQ2d 1258,
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`1263 (Fed. Cir. 1999) ("The statute does not permit ... incorporation of structure from the
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`written description beyond that necessary to perform the claimed function.") Thus, to the extent
`
`that the function identified in the Office Action is incorrect, any structures that correspond to the
`
`incorrect function should not be considered "corresponding" structures.
`
`In particular, the Office Action used "wirelessly transmitting a digital image using a
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`technology (e.g., SMS) distinct from email, where the digital image was converted (processed) at
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`a camera microprocessor from a physical message (e.g. a message written on paper intended for
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`facsimile)" as the function for the "means for transmitting" limitation instead of "transmitting
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`image information processed by said microprocessor to another location using a radio frequency
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`channel." Because the verbiage underlined above does not actually appear in the "means for
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`transmitting" limitation and does not relate to the recited transmitting function, structures for that
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`verbiage should not be deemed "corresponding," in a§ 112, ~ 6 analysis.
`
`Page 17 of25
`
`Ex. GOOG 1048
`
`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`In the alternative, if "distinct from email" and the verbiage underlined above !§., for some
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`reason, deemed to be part of the structure, then the Office Action's construction of the "means
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`for transmitting" limitation would be impermissibly excluding alternative structures from the
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`scope of "corresponding" structure. More specifically, the law is clear that "when multiple
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`embodiments in the specification correspond to the claimed function, proper application of§
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`112, ~ 6 generally reads the claim element to embrace each of those embodiments." Micro
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`Chemical, 52 USPQ2d at 1264. Any claim interpretation that only includes only some structures
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`that perform the recited function but omits other structures for performing that same function
`
`would therefore be legally improper.
`
`In particular, since the '078 patent explains (in the context of sending data that was
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`captured using the camera) that messages can be transmitted by either SMS or email, as
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`explained above, the Office Action's claim construction that explicitly excludes transmitting the
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`digital images using email is unduly limiting. Similarly, in view of the '078 patent's statements
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`that the camera can be used for alternative purposes, including photographing "data presented on
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`paper," "an image taken of the surroundings," and "a person,"5 the Office Action's claim
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`construction that does not include the two latter alternatives is also unduly limiting.
`
`The "Means for Processing" Limitation
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`In the "means for processing" limitation of claim 73, the function that is explicitly recited
`
`in the claim is "processing [and] storing at least a portion of the image information obtained by
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`the camera unit for later recall and processing" and that is the proper function to use for claim
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`5 '078 patent at col. 3, lines 18-20.
`
`Page 18 of25
`
`Ex. GOOG 1048
`
`

`
`Control Nos. 90/011,736 and 90/011,883
`Amendment After Final Rejection dated April23, 2012
`(in response to the Office Action dated February 27, 2012)
`
`construction. However, as best understood by the undersigned, the Office Action actually used a
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`different function, as explained below.
`
`First, the Office Action indicated (at page 25) that
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`Regarding the structure and acts corresponding to the function "processing
`and storing the image information obtained by the camera unit," see Fig. 3,
`data processing unit 2 and camera unit 14, which includes Fig. 5, memory
`24. The structure and acts for storing image information includes digitally
`converting (processing) physical messages using the camera and then
`storing the images in memory 24, as discussed above.
`
`Then, when comparing the function of the "means for processing" limitation to Rostoker, the
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`Office Action indicated (at page 26) that:
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`Rostoker also fails to teach "means for processing and storing the image
`information obtained by the camera unit." As discussed above, the
`corresponding structure and acts for this means plus function limitation in
`the Wilska patent under reexamination includes digitally converting
`physical messages (e.g. a message written on paper intended for facsimile)
`using the camera and then storing the images in memory. Rostoker in
`contrast teaches in all embodiments the storage of generalized images (e.g.,
`security images, video- telephone and 2-way video' communications) not
`specifically scanned by a camera from a physical message.
`
`Based on the two passages quoted above, it is clear that the Office Action did not use
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`"processing [and] storing at least a portion of the image information obtained by the camera unit
`
`for later recall and processing" as the function for the "means for processing" limitation.
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`Instead, the Office Action appears to have ad