UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRLAL AND APPEAL BOARD
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`IRON DOME LLC
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`Petitioner
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`V.
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`E-WATCH, INC.
`Patent Owner
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`Case: IPR2014-00439
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`Patent No. 7,365,871
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual
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`Image Signal Via A Digital Transmission System
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`PATENT OWNER E-WATCH INC’S RESPONSE
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`UNDER 37 C.F.R. §42.120
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`Apple Inc.
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`IPR NO. 2015-00414
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`EXHIBIT 1013
`Petitioner: App|e|nc.fPatent Owner: E-Watch, Inc.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
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`IRON DOME LLC
`Petitioner
`v.
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`E-WATCH, INC.
`Patent Owner
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`___________________________________
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`Case: IPR2014-00439
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`Patent No. 7,365,871
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`Title: Apparatus For Capturing, Converting And Transmitting A Visual
`Image Signal Via A Digital Transmission System
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`___________________________________
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`PATENT OWNER E-WATCH INC’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
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`
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`E-Watch, Inc.
`Petitioner – Iron Dome LLC
`Patent Owner – E-Watch, Inc.
`IPR2014-00439
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`TABLE OF CONTENTS
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` I.
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`STATEMENT OF MATERIAL FACTS IN DISPUTE ...................................................... 1
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`II.
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`INTRODUCTION................................................................................................................. 1
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`A.
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`B.
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`Statement Of Relief Requested ............................................................................... 1
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`Summary Of Patent Owner’s Argument................................................................. 1
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`III.
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`CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES RELIED UPON BY
`PETITIONER........................................................................................................................ 3
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`A.
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`B.
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`Primary Reference - U.S. Patent No. 6,122,526 (“the Parulski reference”)........... 3
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`Secondary Reference - U.S. Patent No. 5,893,037 (“the Reele reference”)........... 4
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`IV.
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`SWEARING BEHIND THE PARULSKI REFERENCE ................................................... 5
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`A.
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`B.
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`C.
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`D.
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`E.
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`Priority Date For The Parulski Reference............................................................... 5
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`Inventor 1.131 Declaration (“The Monroe Declaration”) ...................................... 6
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`The Inventor Exercised Reasonable Diligence to Reduce To
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`Practice The Invention Claimed In The ‘871 Patent. ............................................. 7
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`Independent Corroboration Regarding Conception And Diligence. ..................... 8
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`The ‘871 Patent Claims Are Entitled To An Invention Date Before The Parulski
`Reference. ................................................................................................................ 8
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`V.
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`CLAIM CONSTRUCTION.................................................................................................. 9
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`B.
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`C.
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`“Selectively Displaying” ....................................................................................... 10
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`“Selectively Transmitting”.................................................................................... 13
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`“Selected Digitized Framed Image”...................................................................... 14
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`VI.
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`PATENT OWNER’S RESPONSE TO PETITIONER’S CLAIM ANALYSIS AND
`OBVIOUSNESS ASSERTIONS.................................................................................................14
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`A.
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`The Relied Upon References Do Not Teach Or Suggest All Limitations Of The
`Challenged Claims.........................................................................................................14
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`The References Do Not Teach Or Suggest the Selectively
`Displaying/Transmitting Limitation As Recited In Claims 1, 6, 9, and 12.. 14
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`The References Do Not Teach Or Suggest the User Interface Enabling
`Limitation As Recited In Claims 1 and 6...................................................... 17
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`The References Do Not Teach Or Suggest the Prior To Capture Limitation
`As Recited In Claims 2, 9, and 12............................................................... 19
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`The References Do Not Teach Or Suggest the Non-Audio Signal
`Transmission/Reception Limitation As Recited In Claims 5, 9, 12, and 14 .... 21
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`The References Do Not Teach Or Suggest the Digital Signaling Limitation As
`Recited In Claims 9 and 12......................................................................... 25
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`The References Do Not Teach Or Suggest the Digitized Audio Signal
`Limitation As Recited In Claims 1, 9, and 1228
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`The References Do Not Teach Or Suggest the Plural Memory Module
`Limitation As Recited In Claims 4, 10, and 13............................................. 30
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`The References Do Not Teach Or Suggest the Integrated Electronic Camera
`Limitation As Recited In Claims 1 and 6...................................................... 32
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`B.
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`Expert Testimony Regarding Teaching and Combining Parulski and Reele as
`Suggested by Petitioner .................................................................................................35
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`1.
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`2.
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`The Parulski and Reele References Have Non-Enabling Disclosures That
`Would Preclude A Skilled Person From Attempting to Combine .......... 35
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`The Parulski and Reele References Being Directed To Solving Different
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`Problems Would Inhibit Motivation To Combine ..................................35
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`3.
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`The Reele Reference Teaches An Inoperable Combined Camera-Phone
`Unit....................................................................................................................36
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`VII. CONCLUSION ................................................................................................................... 37
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`EXHIBIT LIST
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`Previously Filed – Patent Owner
`[EXH. 2001] As-filed 1.131 Affidavit from U.S. patent application serial
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`no. 10/336,470 (“Swear Behind Affidavit”) (part 1)
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`[EXH. 2002] As-filed 1.131 Affidavit from U.S. patent application serial
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`no. 10/336,470 (“Swear Behind Affidavit”) (part 2)
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`[EXH. 2003] Office Action indicating sufficiency of the Swear Behind
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`[EXH. 2004] U.S. patent no. 5,666,159 (“Parulski ‘159 Patent”)
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`[EXH. 2005] U.S. patent no. 5,943,603 (“Parulski ‘603 Patent”)
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`[EXH. 2006] Artifact sheet from U.S. patent application serial no. 10/336,470
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`(“Artifact Sheet”)
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`[EXH. 2007] Unscanned artifacts from Swear Behind Affidavit (“Unscanned
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`Currently Filed – Patent Owner
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`[EXH. 2014] Declaration of David A. Monroe
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`[EXH. 2015] Declaration of Winston Ninh
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`[EXH. 2016] Declaration of Stephen Baker
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`[EXH. 2017] Declaration of Glen Davis
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`[EXH. 2018] Declaration of Michael Forman
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`[EXH. 2019] Declaration of Donald Kayser
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`[EXH. 2020] Declaration of Michael Kight
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`[EXH. 2021] Declaration of Vinh Le
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`[EXH. 2022] Declaration of Paul Stone Jr.
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`[EXH. 2024-2035] Declaration of Dorothy Calderon
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`[EXH. 2036] Declaration of Robert C. Curfiss
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`[EXH. 2037] Office Action dated March 8, 2007 for U.S. patent application
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`serial no. 10/336,470
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`[EXH 2038] Response To Office Action dated March 8, 2007 for U.S. patent
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`application serial no. 10/336,470
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`[EXH. 2039] Notice of Allowance for U.S. patent application serial no.
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`10/336,470
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`[EXH 2040] Declaration of Dr. Gavin Clarkson
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`Previously Filed – Petitioner
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`[EXH. 1001] U.S. Patent No. 7,365,871 (“the ’871 Patent”)
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`[EXH. 1002] U.S. Patent No. 6,122,526 of Kenneth A. Parulski et al. (“the
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`Parulski reference”)
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`[EXH. 1003] U.S. Patent No. 5,893,037 of Samuel Reele et al. (“the Reele
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`reference”)
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`[EXH. 1004]
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`Image File Wrapper Copy of Rule 131 Affidavit filed December
`27, 2004 for U.S. patent application serial no. 10/336,470
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`[EXH. 1005] Office Action dated August 9, 2005 for U.S. patent application
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`serial no. 10/336,470
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`CITATION FORMATS USED HEREIN
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`Supporting Document Citation “@ document title”
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`US Patent Content Citation [col:line number(s)] or [@ para ___]
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`Document With Line Numbers [page:line number(s)]
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`Term Distinguished From Other Text “term”
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`I.
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
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`Petitioner did not submit a statement of material facts in its Petition for Inter Partes
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`review (“the Petition”). Accordingly, no response to a statement of material facts is due
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`pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
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`II.
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`INTRODUCTION
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`Patent Owner E-Watch, Inc. (hereinafter “Patent Owner”) respectfully submits this Patent
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`Owner Response under 35 U.S.C. §§311–319 and 37 C.F.R. §42.120. It is being timely filed by
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`November 13, 2014 (the agreed deadline listed in the Stipulation Regarding Due Dates 1 and 2
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`filed on October 28, 2014).
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`“In an inter partes review instituted under this chapter, the petitioner shall have the burden
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`of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
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`§316(e). Petitioner’s proposition of unpatentability fails to meet that burden with respect to any
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`of the claims of U.S. Patent No. 7,365,871 (“the ’871 Patent”).
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`A.
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. §316, Patent Owner respectfully requests that the Patent Trial And
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`Appeal Board (i.e., “the Board”) find that originally issued claims 1-15 of the ‘871 Patent (“the
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`‘871 Patent Claims”) are not invalid and, specifically, that the ‘871 Patent is patentable in view of
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`the proposed ground of unpatentability under consideration.
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`B.
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`Summary of Patent Owner’s Argument
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`No proposed ground of unpatentability is premised on anticipation under 35 U.S.C. §102.
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`Instead, the sole ground of unpatentability for all of the ‘871 Patent Claims is premised on
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`obviousness based upon the combination of two references: (a) United States (“U.S.”) Patent No.
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`6,122,526 of Kenneth A. Parulski et al. (“the Parulski reference” – [EXH 1002]) and (b) U.S.
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`Patent No. 5,893,037 of Samuel Reele et al. (“the Reele reference” – [EXH 1003]). This proposed
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`ground of unpatentability fails for several independent reasons.
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`First, at least one of the two cited references is not prior art to the ‘871 Patent. As shown
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`in the Declaration of David A. Monroe (“Mr. Monroe”) Under 37 CFR §42.53 Concerning U.S.
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`Patent No. 7,365,871 (“the Monroe Declaration”), filed herewith as Exhibit 2014, Mr. Monroe
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`conceived of the invention recited in the ‘871 Patent Claims before the effective filing date of the
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`Parulski Reference and used reasonable diligence to reduce the invention to practice through the
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`filing of U.S. Patent Application No. 09/006,073, which is the earliest priority application of the
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`‘871 Patent and which is referred to herein (and in the Monroe Declaration) as the “Priority
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`Application.” Accordingly, the sole ground of unpatentability, which requires that both the
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`Parulski and Reele references be prior art, necessarily fails.
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`Second, even assuming the Parulski reference was prior art to the ‘871 Patent Claims, the
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`proposed combination of references nonetheless fails to teach each and every limitation as recited
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`by the ‘871 Patent Claims. In particular, as set forth herein, the Parulski reference (i.e., the
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`primary reference cited in the Petition) lacks one or more limitations present in each independent
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`claim of the ‘871 Patent and lacks one or more limitations present in several of the dependent
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`claims of the ‘871 Patent. The Reele reference (i.e., the secondary reference relied upon in the
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`Petition) does not teach or suggest these one or more limitations lacking in the Parulski reference.
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`Third, the Parulski and Reele references would not and could not have been combined in
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`the manner Petitioner suggests. Petitioner does not articulate a sufficient reason or rational
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`underpinning for the proposed combination necessary to support a legal conclusion of
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`obviousness under current legal precedent and United States Patent and Trademark Office
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`(“USPTO”) guidelines. Instead, Petitioner’s proposed obviousness grounds are based solely on
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`“mere conclusory statements,” and Petitioner fails to present any cogent reasoning as to why a
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`person of ordinary skill in the art would have or even could have modified or combined the cited
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`documents to arrive at the invention as recited in the ‘871 Patent Claims. KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). These
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`types of allegations fail to provide the specificity required by 37 C.F.R. ¶42.104(b)(5) and, for
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`this additional reason, the sole ground of unpatentability should be rejected.
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`Consequently, the Petition’s sole ground for unpatentability, which relies upon the
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`proposed combination of the Parulski and Reele references, is legally deficient. See 37 C.F.R.
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`§42.104(b)(5); KSR Int’l Co., 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988).
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`III. CONTEXT OF INVENTIVE DISCLOSURE OF REFERENCES RELIED UPON BY
`PETITIONER
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`A.
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`Primary Reference - U.S. Patent No. 6,122,526 (“The Parulski Reference”)
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`In the Parulski reference, the field of the invention is directed to “an electronic camera
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`system” and, more specifically, to “an electronic camera system that includes a transmission
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`mechanism for sending image data to selected receiver units.” @Parulski 1:12-16. The Parulski
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`reference further states that the invention provides: “an electronic camera system that includes a
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`programmable transmission capability for selectively transmitting electronic image data to a
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`plurality of remote receiver units.” @Parulski 1:51-54. Parulski discloses that this electronic
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`camera system includes a camera module 10 that takes still images that can be displayed on an
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`interactive display screen 16 of the pen-based computer 12, that still images captured by the
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`camera module 10 are transmitted from the pen-based computer 12 to one or more receiver units
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`so that the still images can be displayed, printed, manipulated or stored at the receiver units A-C.
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`@Parulski 2:65-65 and 3:7-12. In this respect, a skilled person would appreciate that the
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`invention of Parulski relates specifically to the technological solution of implementing an
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`electronic camera system configured with a programmable transmission capability for
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`transmitting still images to a plurality of remote receiver units.
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`B.
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`Secondary Reference - U.S. Patent No. 5,893,037 (“The Reele Reference”)
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`In the Reele reference, the field of the invention is directed to “combined electronic/silver-
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`halide image capture systems” and, more specifically, to “an electronic/silver-halide image
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`capture system that is capable of transmitting captured image data via cellular communications
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`transmission.” @Reele 1:9-14. The Reele reference further states that the present invention
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`provides: “a combined electronic/silver-halide image capture system that is capable of
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`transmitting electronic
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`image data using conventional cellular
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`telephone
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`transmission
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`technology.” @Reele 1:56-59. With respect to mode of operation, the Reele reference discloses
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`that “the operator selects an electronic image capture mode to command the camera control unit
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`50 to initiate operation of the aperture 34, shutter 36 and electronic image sensor 44 to
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`electronically capture a scene to be imaged” @Reele 5:3-6 and FIGS. 3 and 5. A skilled person
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`would appreciate that this shutter and aperture operation produces still images directly from a
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`scene to be imaged and that the invention of the Reele reference relates specifically to the
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`technological solution of an image capture system that is configured for transmitting such still
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`images via a conventional cellular telephone transmission technology.
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`IV.
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`SWEARING BEHIND THE PARULSKI REFERENCE
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`The Parulski reference is not prior art to the claims of the ‘871 Patent under 35 U.S.C.
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`§102(a) or 35 U.S.C. §102(e) because the inventor of the ‘871 Patent conceived of his invention
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`prior to the effective filing date of the Parulski reference and exercised reasonable diligence
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`during the legally relevant period (i.e., from a time just prior to the effective filing date of the
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`Parulski reference until the filing of the Priority Application), as established by the Monroe
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`Declaration. The Monroe Declaration and its corroborating evidence clearly establish that the
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`Parulski reference is not prior art, and the Board should confirm validity of the ‘871 Patent
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`Claims on this basis alone.
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`A.
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`Priority Date For The Parulski Reference
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`The earliest effective filing date of the Parulski reference is April 24, 1995. The Petition
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`applies the Parulski reference as 35 U.S.C. §102(a) or 35 U.S.C. §102(e) art and identifies no
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`basis on which the Parulski reference could be considered to be a reference under 35 U.S.C.
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`§102(b). Therefore, to antedate the Parulski reference, the Patent Owner need only show
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`conception prior to April 24, 1995 and reasonable diligence from just prior to April 24, 1995 until
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`the constructive reduction to practice upon filing of the Priority Application. In determining the
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`date of invention, courts have looked to 35 U.S.C. 102(g) for the “basic rule for determining
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`priority.” Under 102(g), priority of invention goes to the party that was “the first to conceive the
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`invention” and which “exercised reasonable diligence in later reducing that invention to practice.”
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`B.
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`Inventor 1.131 Declaration (“the Monroe Declaration”)
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`Pursuant to 37 C.F.R. §42.53, Patent Owner submits the Monroe Declaration to establish
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`an invention date that precedes the effective filing date of the Parulski reference. The Monroe
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`Declaration clearly demonstrates conception of the claimed invention in the ‘871 Patent by Mr.
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`Monroe no later than March 18, 1993, which is well before the effective filing date of the Parulski
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`reference. (@Monroe Decl. Items 5-10 (EXH 2014) and @EXH 2015). The Monroe Declaration
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`also clearly demonstrates reasonable diligence in reducing the claimed invention to practice from
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`at least as early as April 23, 1995 (i.e., just prior to the earliest possible effective date of the
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`Parulski reference) through filing on January 12, 1998 (i.e., the filing date of the Priority
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`Application (@Monroe Decl. Items 13-33).
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`The actual reduction to practice of the claimed invention was a technically challenging
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`and time-intensive effort based on the current state of the art (and enabling arts) during the
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`timeframe of this reduction to practice. See Scott v. Koyama, 281 F. 3d 1243, 1248-49 (Fed. Cir.
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`2002) (“[E]fforts toward actual reduction to practice are relevant to diligence until constructive
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`reduction to practice.”). Because Mr. Monroe conceived of the claimed invention before April
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`24, 1995 and exercised reasonable diligence in reduction to practice during the legally relevant
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`period, the Parulski reference is not prior art to the ‘871 Patent Claims and, thus, Petitioner’s
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`asserted sole basis of rejection of the ‘871 Patent Claims (i.e., rejection of the claims under 35
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`U.S.C. §103(a) as being unpatentable over the Parulski reference in view of the Reele reference)
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`is without merit.
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`C.
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`The Inventor Exercised Reasonable Diligence to Reduce to Practice the Invention
`Claimed in the ‘871 Patent.
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`The Monroe Declaration includes detailed information about tasks performed towards
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`actually reducing to practice and constructively reducing to practice the invention claimed in the
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`‘871 Patent (i.e., “the Subject Invention”). The summary of Mr. Monroe’s major work activities
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`related directly to the Subject Invention on a weekly basis and declarations of corroborating
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`witnesses submitted herewith show substantial and continuous activity towards reduction to
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`practice (without any significant gaps) of the Subject Invention. “Diligence can be shown by
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`evidence of activity aimed at reducing the invention to practice, either actually or constructively,
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`and/or by legally adequate excuses for inactivity.” Bai et al. v. Burlingham, Senior Party, 2004
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`WL 4981702, at *21 (BPAI Feb, 19, 2004). The level of activity in this case far exceeds that
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`required to show reasonable diligence through the entire critical period. See Monsanto Co. v
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`Mycogen Plant Sci., Inc., 261 F. 3d 1356, 1369 (Fed, Cir. 2001); cf. In re Meyer Mfg. Corp., 411
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`F. App’x 316, 319 (Fed. Cir. 2010).
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`Mr. Monroe or those under his direction worked nearly every day on activities relating to
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`the Subject Invention, devoting substantial effort to reducing it to practice beyond that required
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`under well-established case law. See Griffith v. Kanamaru, 816 F.2d 624, 626, 2 USPQ2d 1361,
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`1362 (Fed. Cir. 1987) (observing that courts have found that inventors exercised due diligence
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`even where (unlike Monroe here) the inventor delayed substantially (up to three weeks) in
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`reducing the invention to practice) (citing Reed v. Tornqvist, 436 F.2d 501, 168 USPQ 462
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`(CCPA 1971) and citing Courson v. O'Connor, 227 F. 890, 894 (7th Cir. 1915) (“exercise of
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`reasonable diligence . . . does not require an inventor to devote his entire time thereto, or to
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`abandon his ordinary means of livelihood”)). Accordingly, there is no doubt that reasonable
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`diligence during the relevant time period exists.
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`D.
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`Independent Corroboration Regarding Conception And Diligence
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`As shown in the Monroe Declaration, Mr. Monroe conceived of the invention recited in
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`the ‘871 Patent prior to April 24, 1995. (@Monroe Decl. Items 5-10) Various other declarations
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`are provided herewith (i.e., Corroborating Evidence Declarations) as Exhibits (i.e., exhibits EXH
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`2016-2022 and 2024-2036) in addition to the Monroe Declaration. The Corroborating Evidence
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`Declarations map corroborative evidence to claims 1-15 of the ‘871 Patent, identify representative
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`facts in such corroborative evidence, and demonstrate that all of the relevant claim limitations are
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`supported by the corroborative evidence, alone or in combination with the declaratory statements
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`in the Monroe declaration. The Monroe Declaration and Corroborating Evidence Declarations
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`provide other evidence that further corroborates the conception date and reasonable diligence.
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`Specifically, this corroborative evidence shows that the conception date for the invention claimed
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`in the ‘871 Patent precedes April 24, 1995, the earliest possible effective date for the Parulski
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`reference. Moreover, the Corroborating Evidence Declarations demonstrate that prior to April 24,
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`1995, the invention was definite, permanent, and complete in the inventor’s mind such that only
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`ordinary skill was required to reduce the invention to practice thereafter. (Monroe Decl.); see also
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`Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). The
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`Corroborating Evidence Declarations also show that Mr. Monroe and his attorneys were diligent
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`in actually filing the Priority Application.
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`E.
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`The ‘871 Patent Claims Are Entitled to an Invention Date Before The
`Parulski Reference
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`The Monroe Declaration, along with the Corroborating Evidence Declarations, show that
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`Mr. Monroe conceived of the invention as recited in claims 1-15 of the ‘871 Patent before April
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`24, 1995 and then diligently worked to actually and constructively reduce the claimed invention
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`to practice until the filing date of the Priority Application on January 12, 1998. Because the
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`invention date of the ‘871 Patent predates the Parulski reference, the Parulski reference is not
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`prior art under 35 U.S.C. §102(a) or §102(e), and the proposed ground of rejection, which relies
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`on the Parulski and Reele references qualifying as prior art, fails. However, as explained further
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`below, even if the Parulski reference qualified as prior art, which the Patent Owner has shown
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`that it does not, the Parulski and Reele references do not teach all of the limitations of the claims,
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`and they would not have been obvious to combine for the reasons detailed below.
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`V.
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`CLAIM CONSTRUCTION
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`A claim in an inter partes review proceeding is interpreted according to its broadest
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`reasonable construction in light of the specification. 37 C.F.R. § 42.100(b). Claim terms are to be
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`given their ordinary and customary meaning as would be understood by one of ordinary skill in
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`the art in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313
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`(Fed. Cir. 2005) (en banc); Research in Motion v. Wi-Lan, Case IPR2013-00126, Paper 10 at 7
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`(P.T.A.B. June 20, 2013). The inventor may rebut that presumption by providing a definition of
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`the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994). A claim term is interpreted using its ordinary and
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`customary meaning to a person of ordinary skill in the art in the absence of a specialized
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`definition. See 77 Fed. Reg. 48699-48700 (2012), Response to Comment 35 (citing In re Am.
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`Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Accordingly, the customary
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`meaning applies unless the specification reveals a special definition given to the claim term by the
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`patentee, in which case the inventor’s lexicography governs. See Phillips, 415 F.3d at 1316
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`(“[T]he specification may reveal a special definition given to a claim term by the patentee that
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`differs from the meaning that it would otherwise possess. In such cases, the inventor’s
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`lexicography governs.”).
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`A.
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` “Selectively Displaying”
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`The term “selectively displaying” is recited in all of the independent claims (i.e., 1, 6, 9,
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`and 12) of the ‘871 Patent. As an example, a representative portion of independent claim 1 that
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`recites “selectively displaying” is reproduced below.
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`…memory associated with the processor for receiving and storing the
`digitized framed image, accessible for selectively displaying in the
`display window and accessible for selectively transmitting over the
`cellular telephone network the digitized framed image…
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`@‘871 Patent 14:63-67 (emphasis added)
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`The specification of the ‘871 Patent provides the following:
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`The memory may selectively capture images, as indicated by the operator
`interface/capture interface 52, or may be programmed to selectively
`capture periodic images or all images. In the embodiment shown in FIG.
`2, an optional viewer device 48 is provided. This permits the operator to
`recall and view all or selective images before transmission, as indicated
`by the operator interface/recall interface 54. This permits the operator to
`review all images retained in the memory 46 and transmit selective
`images, as desired.
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`@’871 Patent 6:34-43 (emphasis added).
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`Moreover, the prosecution history of the Priority Application provides further support for
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`this interpretation of “selectively displaying” and for “selectively transmitting.” On March 8,
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`2007, an office action issued for U.S. Patent Application No. 10/336,470 (“’470 Patent
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`Application” – [EXH 2037]) from which the ‘871 Patent issued and which claims priority to the
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`Priority Application. In this office action, certain independent claims of record were rejected as
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`being obvious over a combination of two prior art references – JP 06-268582 to Kawazu (“the
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`Kawazu reference”) in view of US 5,191,601 to Ida (the “Ida reference”). In response to this
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`Office Action, the applicant filed an office action response on September 7, 2007 (“OA
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`Response” – [EXH 2038]) that included remarks clarifying the claimed invention with respect to
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`the Ida reference. It was submitted that the present invention provides “the ability for the user to
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`selectively transmit and display images from memory” (@ OA response, 60:11-12) and that “Ida
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`teaches transmitting a stored image from memory 24, but it is clearly shown in the same Fig. 4
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`and Fig. 5 to clearly lack the ability to display stored images on the device display of the
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`apparatus which collects the image.” (@ OA Response, 60:12-16) It was further submitted with
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`respect to Ida that “there is no teaching that the “prescribed picture” stored in memory is
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`selectively displayed by the local user so that he can determine whether to transmit it to the
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`remote station” (@ OA Response, 61:9-11) and that “…the Ida reference, properly understood,
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`does not disclose selectively displaying or transmitting a framed image that has been stored in
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`memory…” (@ OA Response, 61:18-20). With respect to the Petition, it should be noted that the
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`Parulski reference suffers from these same deficiencies, which are not cured by the Reele
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`reference.
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`In response to filing of the OA Response, the Examiner requested and conducted an
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`interview with the attorney of record for the ‘470 Application. At least one topic of discussion in
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`this interview was authorization to amend pending independent claims 43 and 51 (i.e., issued
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`claims 1 and 6) by an Examiner’s Amendment (“the Examiner’s Amendment”). The Examiner’s
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`Amendment, which was authorized by the attorney of record and mailed on December 27, 2007
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`as part of a Notice of Allowance [EXH 2039], included amendment of pending independent
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`claims 43 and 51 to include language providing additional specificity with respect to the
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`abovementioned functionality of the present invention in regard to “the ability for the user to
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`selectively transmit and display images from memory.” (@ OA Response, 60:11-12)
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`Specifically, the Examiner’s Amendment added the following language to independent claims 43
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`and 51, respectively.
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`…a memory associated with the processor for receiving and storing the
`digitized framed image, accessible for selectively displaying in the display
`window and accessible for selectively transmitting over the wireless
`telephone network the digitized framed image…
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`(@ Examiner’s Amendment, 3:1-3).
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`…a memory associated with the processor for receiving and storing the
`digitized framed image, accessible for selectively displaying in the display
`window and accessible for selectively transmitting over the cellular
`telephone network the digitized framed image…
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`(@ Examiner’s Amendment, 4:11-13).
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`This claim language was added to reflect the patentably distinguishing functionality of
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`providing the ability for the user to selectively transmit and display images from memory. As
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`indicated, the prior art of record did not disclose or suggest the functionality of this amended
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`claim language. @Office Action, 5:5-6:11. With respect to the Petition, the prior art of record at
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`the time the Office Action was issued included the Parulski reference and the Reele reference.
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`Accordingly, in view of the disclosure in the specification and the prosecution history of
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`the ‘871 Patent, “selectively displaying” refers to displaying a digitized framed image that has
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`been selected from among a plurality of digitized framed images that are within memory.
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`B.
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`“Selectively Transmitting”
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`The term “selectively transmitting” is recited in all of the independent claims (i.e., 1, 6, 9,
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`and 12) of the ‘871 Patent. As an example, a representative portion of independent claim 1 that
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`recites “selectively transmitting” is reproduced be