IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Group Art Unit: 2622
`
`Examiner: Joseph R. Pokrzywa
`
`Serial No.: 10/336,470
`
`Filed: January 3, 2003
`
`In re Application of:
`
`David A. Monroe
`
`§
`§
`§
`§
`§
`§
`§
`§
`For: APPARATUS FOR CAPTURING, §
`CONVERTING AND
`§
`§
`TRANSMITTING A VISUAL
`IMAGE SIGNAL VIA A DIGITAL §
`TRANSMISSION SYSTEM
`§
`
`AFFIDAVIT OF DAVID A. MONROE UNDER 37 CFR 1.131
`
`David A. Monroe, being duly sworn, states as follows:
`
`1.
`
`2.
`
`3.
`
`4.
`
`I am over 21 years of age and am competent to make this declaration.
`
`I am the named inventor of the applications for patent, U.S. Serial Nos. 10/326,503 and
`10/338,470, each of which have an effective filing date of January 12, 1998.
`
`During the prosecution of these applications I have become aware of a number of patents
`and publications which may be relevant to the scope of my invention. These patents and
`publications (the "131 Prior Art") have an effective prior art date which is earlier than my
`filing date but later than the date of the invention in each of the respective applications.
`
`Some, but not all of the 131 Prior Art has been cited by the Examiner during prosecution
`of each of the subject applications. However, in the interest of thoroughness I desire to
`disclose all of the 131 Prior Art known to me at this time. The relevant 131 Prior Art is
`as follows:
`
`Patent/Publication
`
`Earliest Effective Date
`
`Cited by Examiner
`
`U.S. Pat. No. 5,546,194
`
`March 23, 1994
`
`U.S. Pat. No. 5,550,654
`
`May 13, 1994
`
`U.S. Pat. No. 5,689,300
`
`November 18, 1997
`
`SN 10/336,470
`
`SN 10/336,470
`
`SN 10/336,4 70
`
`U.S. Pat. No. 5,754,227
`
`September 28, 1994
`
`NOT CITED
`
`Apple Ex. 1002
`
`Page 1
`
`

`

`U.S. Pat. No. 5,854,694
`
`October 17, 1995
`
`U.S. Pat. No. 5,893,037
`
`December 9, 1994
`
`U.S. Pat. No. 5,517,683
`
`January 18, 1995
`
`U.S. Pat. No. 5,711,013
`
`January 18, 1995
`
`NOT CITED
`
`NOT CITED
`
`NOT CITED
`
`NOT CITED
`
`U.S. Pat. No. 5,666,159
`
`April 24, 1995
`
`SN 10/336,470
`
`U.S. Pat. No. 5,793,416
`
`December 29, 1995
`
`SN 1 0/326,503
`
`U.S. Pat No. 5,825,408
`
`March 18, 1994
`
`U.S. Pat. No. 5,893,037
`
`December 9, 1994
`
`SN 10/326,503
`
`SN 10/326,503
`
`U.S. Pat. No. 5,929,901
`
`October 6, 1997
`
`NOT CITED
`
`U.S. Pat. No. 5,995,041
`
`December 30, 1996
`
`SN 10/336,470
`
`U.S. Pat. No. 5,969,750
`
`September 4, 1996
`
`U.S. Pat. No. 6,072,600
`
`January 30, 1996
`
`U.S. Pat. No. 5,806,005
`
`May 10, 1996
`
`U.S. Pat. No. 5,864,766
`
`August 13, 1996
`
`U.S. Pat. No. 6,043,839
`
`January 12, 1998
`
`U.S. Pat. No. 6,085,112
`
`November 7, 1996
`
`SN 1 0/326,503
`
`SN 10/336,470
`
`SN 10/326,503
`
`NOT CITED
`
`NOT CITED
`
`NOT CITED
`
`U.S. Pat. No. 6,111,863
`
`December 29, 1995
`
`SN 10/326,503
`
`U.S. Pat. No. 6,122,526
`
`April24, 1997
`
`PCT Publication
`wo 97/26744
`
`July 24, 1997
`
`NOT CITED
`
`SN 10/326,503
`
`U.S. Pat. No. 6,181,954
`
`January 12, 1998
`
`SN 10/326,503
`
`U.S. Pat. No. 6,452,626
`
`October 6, 1997
`
`NOT CITED
`
`2
`
`Apple Ex. 1002
`
`Page 2
`
`

`

`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`The earliest effective date of any of the 131 Prior Art is March 18, 1994. My invention
`date for each of the inventions shown and described in the subject applications is more
`than one year earlier than the earliest effective date of any of the 131 Prior Art, namely,
`earlier than March 18, 1993. This is supported by the schematic drawings Exhibits 10
`and 11, that are dated earlier than March 18, 1993, and by the design renderings and
`sketches contained in Exhibits 7, 8, and 9, all of which are dated earlier than March 18,
`1993.
`
`During the period from the date of the inventions to the filing date of January 12, 1998 I
`was diligent in pursuing the invention and did not abandon the inventions. During this
`period the invention conceived and shown in Exhibits 6-16 was continually refined and
`revised, primarily in an effort to achieve a viable commercial product that met all the
`requirements of the inventions while at the same time being feasible. Commercial success
`demanded meeting both acceptable performance criteria and financial (cost) criteria.
`
`I began working with the concept of sending image data over transmission systems as
`early as 1983, In 1983 I developed the "PhotoPhone™", a pioneering desktop device
`ultimately was extensively used and thrived as an early "tele-radiology" system for the
`transmission of medicalX-Ray images, see Exhibit 1.
`
`In 1985 I started a company called PhotoTelesis that focused on extending the
`PhotoPhone to specific Government applications.
`In 1986 I extended this desktop
`technology to enable transmission over radio circuits, including cellular. This was done
`by the addition of a cellular/radio interface circuit board called "CIS", see Exhibit 2. On
`May 26, 1986, a press release was released that discussed several new products that were
`announced at the Armed Forces Communication and Electronics Associations in
`Washington, D.C. The Com-RIT ™ product included the CIS board and provided image
`transmission from a desktop unit over mobile telephones and portable satellite terminals,
`see Exhibit 3.
`
`Over the next several years, I developed several Remote Image Transceivers or R.I.T.'s
`for the United States Military, see Exhibit 4, and as shown and described in the 1987
`Business Plan of my company PhotoTelesis, see Exhibit 5.
`In 1989 I conceived the
`circuitry for a concept model R.I.T. which could be handheld, see Exhibit 6. Over the
`next several years I continued to develop the handheld R.I.T. while continuing to work
`on, develop and build the military R.I.T. systems such as those shown in the 1986
`Business Plan,Exhibit 5. Evidence of this continuing effort is the design concept
`drawings of Exhibits 7 and 8, dated 1990. Additional concepts were generated during
`1991 (Exhibit 9).
`In addition, in 1991, the first detailed schematic was generated
`(Exhibit 1 0), which would permit a prototype circuit to be built.
`
`3
`
`Apple Ex. 1002
`
`Page 3
`
`

`

`10.
`
`11.
`
`12.
`
`13.
`
`I perceived that a small, handheld image RIT was needed and in 1989 I conceived the
`circuit architecture for a concept model R.I. T. that could be handheld, see Exhibit 6. This
`design, although functionally viable, was in practice power hungry and slow in
`performance. Over the next several years I continued my efforts to develop the handheld
`R.I.T. while continuing to work on, develop and build the larger specialized tactical
`military R.I.T. systems such as those shown in the 1987 Business Plan, Exhibit 5.
`Evidence of this continuing effort are the design concept drawings generated in
`corroboration with an industrial designer shown in Exhibits 7 and 8, dated 1990.
`In
`addition, in 1991 I developed the enhanced architecture that enabled the first detailed
`schematic (Exhibit 1 0), which would permit a higher performance and low-power
`prototype circuit to be built.
`
`In 1992, the first comprehensive circuit was completed for a handheld R.I.T., as shown in
`Exhibit 11. This circuit became Fig. 8 of U.S. Application No. 10/336,470. Continued
`work done in 1992 on a packaging modification that would be more desirable to
`Government Customers, as is shown in Exhibits 12 and 13. Some of the design concepts
`of the 1992 and earlier period were also included in the Government model as was shown
`in the Application. Compare, for example, Fig. 6 in the application to the 1992 concept
`drawings Exhibits 12 and 13.
`
`Over the next several years, 1993-1997, Photo-Telesis became the standard R.I.T. for
`Government
`tactical
`image
`transmission. The
`tactical systems developed and
`commercialized by PhotoTelesis were employed by the U.S. Government in many
`systems. Many of the products developed and sold by PhotoTelesis followed the
`concepts shown and described in the 1987 Business Plan (Exhibit 5).
`
`During this time, I continued to be interested in and continued to develop the concept of a
`true handheld R.I.T. product. In fact, I came up with a formal proposal of a handheld
`R.I.T. in 1995 and put together a concept proposal in November, 1995 (Exhibit 14), using
`secure radio transmission. Ultimately this project was never Government funded, I went
`on to fund and develop a commercially feasible handheld R.I.T.
`that was first
`publicly disclosed in late 1997 and first sold to the Government in 1998.
`
`14. While the proposal shown in Exhibit 14 did not feature a cellular telephone compatible
`R.I. T., it was architecturally consistent and a development stepping-stone toward that
`goal. The final product incorporated my design concepts of 1993 and earlier, and did
`include cellular telephone compatibility. A first prototype of this product is embodied
`in physical Exhibit 15. Physical Exhibit 15, which was shown to the Examiner in charge
`of prosecution of each subject cases during an interview, is a prototype of the first
`commercial embodiment of the invention. This was completed in mid-1997 and was first
`publicly disclosed sometime early 1998. Photographs of this one-of-a-kind prototype are
`contained in this record as Exhibit 15.
`
`15.
`
`The circuitry for supporting the product resulting from the 1995 proposal is provided in
`the schematics of Exhibit 16, which ultimately became Fig. 5 of Application No.
`I 0/326,503.
`
`4
`
`Apple Ex. 1002
`
`Page 4
`
`

`

`16.
`
`1 7.
`
`18.
`
`19.
`
`The product based on the prototype (Exhibit 15 and Exhibit 16) was put into production
`and sold to the Government. One of the production units, Physical Exhibit 17 as is
`photographed in Exhibit 17, was demonstrated transmitting over cellular telephone to the
`Examiner.
`
`As shown by the Exhibits attached hereto, I conceived the invention at least as early as
`March 18, 1993 and worked diligently in developing a commercially viable product
`culminating in the first commercial handheld R.I.T. in late 1997. This handheld R.I.T.
`used cellular telephone transmission technology, as evidenced by Exhibits 15-17 as first
`conceived and document as early as March 18, 1993, see Exhibits (6 -13).
`
`The subject applications were timely filed, being within one year of the first public
`disclosure of the inventions, and in fact, prior to any public disclosure.
`
`The above facts establish reduction to practice prior to the earliest effective dates of the
`131 Prior Art, or as a minimum, establish conception of the invention prior to the earliest
`effective date of the 131 Prior Art coupled with due diligence from prior to this date to a
`subsequent reduction of practice culminating in the prototype of. the commercial
`embodiment Exhibit 15 in mid-1997.
`
`Further affiant sayeth naught.
`Executed this 2. f J6 day of December, 2004, by:
`
`David A.
`
`5
`
`Apple Ex. 1002
`
`Page 5
`
`

`

`•
`
`•
`
`•
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Group Art Unit: 2622
`
`Examiner: Joseph R. Pokrzywa
`
`Serial No.: 10/336,470
`
`Filed: January 3, 2003
`
`In re Application of:
`
`David A. Monroe
`
`§
`§
`§
`§
`§
`§
`§
`§
`For: APPARATUS FOR CAPTURING, §
`CONVERTING AND
`§
`§
`TRANSMITTING A VISUAL
`IMAGE SIGNAL VIA A DIGITAL §
`§
`TRANSMISSION SYSTEM
`
`INDEX
`
`Exhibit 1
`
`PhotoPhone Transmission System- 1983
`
`Exhibit 2
`
`Circuit Board
`
`Exhibit 3
`
`Press Release FOCIS System -1986
`
`Exhibit 4
`
`Brief Case Telecommunication
`
`Exhibit 5
`
`Phototelesis Business Plan (1987)
`
`Exhibit 6
`
`Circuitry Sketch for a Concept Model R.I.T.- Handlheld -1989
`
`Exhibit 7
`
`Design Concept Drawing - 1990
`
`Exhibit 8
`
`Design Concept Drawing - 1990
`
`Exhibit 9
`
`3-D Design - 1991
`
`Exhibit 10
`
`Detailed Schematic- 1991
`
`Exhibit 11
`
`Comprehensive Circuit Schematic - 1992
`
`Exhibit 12
`
`Concept Drawing- 1992
`
`Exhibit 13
`
`Concept Drawing- 1992
`
`Exhibit 14
`
`MicroRIT Proposal - 1995
`
`Exhibit 15
`
`Photos of Physical Exhibit- Handheld R.I.T. -1997
`
`Exhibit 16
`
`Schematics -1997
`
`Exhibit 17
`
`Photos of Production Model- 1998
`
`3760972v.l
`
`Apple Ex. 1002
`
`Page 6
`
`