09/01/04
`
`17:27 FAX
`
`.
`
`Kinko's Austin-Brodie Ln
`
`007
`
`. initiating wireless communication of the selected audio information to the
`
`electronic device.
`
`(Canceled)
`
`(Canceled)
`
`(Currently amended) The method of Claim 1_1-1-2!: wherein the interface
`
`12.
`
`13.
`
`14.
`
`operates in a browsing environment and the wireless communication operates
`
`outside the browsing environment and the music file has a format selected from a
`
`goup consisting of an MP3 format, a MIDI format, and a WAV format.
`
`15.
`
`(Original) The method of Claim 11 wherein the wireless communication
`
`comprises communicating via a cellular communications network
`
`16.
`
`(Currently amended) An electronic device for receiving selected audio
`
`information via wireless communication, the device comprising:
`
`a long-range communication module operable to receive wireless communication
`
`of information;
`
`a short—range RF communication module operably coupled to a processor module;
`
`‘
`
`a storage medium
`
`
`
` mrable to store selected audio information
`
`that comprises an audio file;
`
`the processor module coupled to the storage medium, the processor module
`
`operable to stop an in process plam g of the audio file in resppnse to
`
`receivin an incomin tele hone call
`
`'
`
`'
`
` ; and
`
`a display operable to display a web browser within a user interface.
`
`17.
`18.
`
`_
`(Canceled)
`(Currently amended) The device as recited in Claim 16,~ wherein-the
`
`T
`
`further comprising the processor operable to play a different audio file in response
`
`to receiving the incoming telephonecaH.
`
`19.
`
`(Currently amended) The device as recited in Claim 1§8 wherein the
`
`
`processor module outputs - .
`
`audio sigal indirectly to an audio speaker in connection with
`
`playing the audio file.
`
`PAGE 7118 ' RCVD AT 9!1I‘2004 6:22:18 PM [Eastern Daylight Time] ' SVRIUSPTO-EFXRF-1I1 ' DNlS:8T29303 " CSID: " DURATION (mm-ss):08-04
`
`5
`
`U.S. App. No.: 09/537,812
`
`Samsung Ex. 1318 p. 351
`
`Samsung Ex. 1318 p. 351
`
`

`
`09/01/04
`
`17:27 FAX
`
`Kinko's Austin-Brodie Ln
`
`008
`
`20.
`
`(Original) The device as recited in Claim 16 further comprising software
`
`for processing the selected information.
`
`21.
`
`(Previously amended) The device as recited in Claim 16. wherein the
`
`short-range communications module is operable to scan frequencies.
`
`22.
`
`23.
`
`(Canceled)
`
`(Previously Amended) The device as recited in Claim 16 wherein the
`
`short-range RF communication module is operable with a “Bluetooth"
`
`communication standard.
`
`24.
`
`25.
`
`26.
`
`(Canceled)
`
`(Canceled)
`
`.
`
`(Currently amended) The system-d_iof Claim l_6-1- wherein the
`
`electronic device is a wmless telephone.
`
`27.
`
`(Cuirently amended) The system-device of Claim 26 wherein the wireless
`
`telephone is operable to communicate with a short-range wireless communication
`
`network.
`
`28.
`
`29.
`
`(Canceled)
`
`(Currently amended) The system-device of Claim 1_6-l- wherein the selected
`
`audio information further comprises streaming audio information.
`
`30.
`
`31.
`
`(Canceled)
`
`(Currently amended) The device as recited in Claim g_§,-1-6-fa-Ether
`
`is operable to receive the incoming telephonecm
`
`wherein the long-range communication module
`
`32.
`
`(Previously presented) The device as recited in Claim 16 wherein the
`
`audio file includes at least one of a WAV file, an MP3 file or a MIDI file.
`
`33.
`
`34.
`
`(Canceled)
`
`(Currently amended) An electronic device for communicating selected
`
`audio infonnation via wireless communication, the device comprising:
`
`
`
`PAGE BI18 ' RCVD AT 9I1I2004 6:22:18 PM [Eastern Daylight Tlme] ‘ SVRIUSPTO-EFXRF-1/1 ' DN|S:8729306 " CSID: ' DURATION (mm-ss):0t‘>o4
`
`6
`
`U.S. App. No.: 09/537,812
`
`Samsung Ex. 1318 p. 352
`
`Samsung Ex. 1318 p. 352
`
`

`
`09/01/04
`
`17:27 FAX
`
`Kinko's Aust1n—Brod1e Ln
`
`009
`
`a storage medium operably coupled to the a long-range RF communication
`
`module, the storage medium operable to store the selected audio
`
`information; and
`
`
`a processor module -
`
`operable to ter a playing of
`
`the selected audio information in association with an incoming telephonic
`
`communication.
`
`35.
`
`(Previously presented) The device as recited in Claim 34 further
`
`comprising a display operable to display a user interface operably associated with
`
`a web browsing environment.
`
`36.
`
`(Currently amended) The device as recited in Claim 315 further
`
`comprising a cellular phone : : -.
`
`
`
`: - -
`
`aetwer-k—including a short-range RF communication module ograble to
`
`communicate at about 2.4 GHz, wherein the stogge medium and the short-range
`
`RF communication module are encased within the cellular phone.
`
`37.
`
`(Currently amended) The device as recited in Claim 36 wherein the
`
`cellular phone is operable to pause the plafing of the selected audio information
`
`at a time subseguent to receiving the incoming telephonic
`
`communication.
`
`
`
`38.
`
`(Currently amended) The device as recited in Claim §§34, further
`
`comprising:
`
`a display operable to display a user interface; and
`
`
`
`selected audio information includes an audio filem
`
` received via the long-range RF communication
`
`module and stored within the storage medium prior to receiving the
`
`incoming telephonic communication.
`
`39
`
`(Currently amended) The device as recited in Claim £31? further
`
`
`
`PAGE 9/18 ‘ RCVD AT 9!1f2004 6:22:18 PM [Eastern Daylight Time] ' SVR:USPTO-EFXRF-111 ' DNlS:87293D8 ' CSID: ' DURATION (mm-ss):0B-04
`
`7
`
`U.s. App. No.: 09/537,812
`
`Samsung Ex. 1318 p. 353
`
`Samsung Ex. 1318 p. 353
`
`

`
`09/01/04
`
`17:28 FAX
`
`Kinko's Aust1n—Brod1e Ln
`
`010
`
`
`
`module is funher operable to start a playing of a different audio fiie in connection
`
`with receiving an indication of the incoming telephonic communicatio11.tl'-ie
`
`
`
`PAGE 10I18 ' RCVD AT 9I1I2004 6:22:18 PM [Eastern Daylight Tlme]" SVR:USPTO-EFXRF-1I1 ' DNlS:8729306 " CSID: ' DURA110N (mm-ss):06-04
`
`8
`
`‘
`
`U.S. App. No.: 09/531812
`
`Samsung Ex. 1318 p. 354
`
`Samsung Ex. 1318 p. 354
`
`

`
`09/01/04
`
`17:28 FAX
`
`Kinko's Aust;1n—Brod1e Ln
`
`011
`
`REMARKS
`
`Applicants appreciate the time taken by Examiner Perez-Gutierrez to prepare the
`
`Office Action of June 1, 2004. Applicants further appreciate the time taken by Examiner
`
`Perez-Gutienez to engage in a telephonic interview on August 18, 2004 — the substance
`
`of which is described in the Interview Summary mailed on August 25, 2004.
`
`With respect to the outstanding § 102 and § 103 rejections of claims 1, 4, 8-10,
`
`16, 18-20, 23, 26-29, and 31-39, Applicants respectfully traverse and submit that each of
`
`these claims is allowable.
`
`To simplify the issues presented and to facilitate full allowance of the now
`
`pending claims, claims 11, 14, 16, 19, 26, 29, 31, 34, and 36 - 39 have been amended.
`
`Claims 1, 4, 8-10, 13, 28, and 30 have been cancelled without prejudice. These claims
`
`have been cancelled to advance the remaining claims to allowance and not for reasons
`
`related to patentability of the cancelled claims. Applicants intend to pursue protection for
`
`the subject matter of the cancelled claims in to—be-filed continuing applications.-
`
`No.C1aims have been added. No new subject matter has been added. Applicants
`
`respectfully request that the Examiner issue a Notice of Allowance for claims 11, 14-16,
`
`' 18-21, 23, 26, 27, 29, 31, 32, and 34-39.
`
`Drawing Objections
`
`Figures 1, 6, and 8, are objected to under 37 CFR 1.83(a) and 1.84(p)(5).
`
`Replacement sheets including proposed corrections for Figures 1 and 6 are included
`
`herewith. Regarding the objection of Figure 8, Applicants respectfully request that the
`
`specification be amended as indicated herein. Applicants submit that the proposed
`
`corrections and amendments overcome the Drawing Objections and request that the
`
`objections be removed.
`
`Claim Objections
`
`Claim 19 is objected to for an informality related to proper antecedent basis. As
`
`mentioned above, claim 19 has been amended. Applicants submit that as amended Claim
`
`PAGE 11:13 - ncvc AT 9m2oo4 6:22:18 PM [Eastern nayugm Time] - SVR:USPTO-EFXRF-1I1 * omszsrzaaos - CSID: - DURATION (mm-ss):06-04
`
`9
`
`U.S. App. No.: 09/537,812
`
`Samsung Ex. 1318 p. 355
`
`Samsung Ex. 1318 p. 355
`
`

`
`
`
`09/01/04 012 17:28 FAX Kinko's Aust1n—Brod1e Ln
`
`
`
`
`
`19 is not objectionable and is fully allowable. Applicants respectfully request full
`
`allowance of Claim 19.
`
`Claim Rejections — 35 U.S.C. § 112
`
`Claim 14 is rejected under 35 U.S.C. § 112 as being indefinite. As mentioned
`
`above, claim 14 has been amended. Applicants submit that, as amended, Claim 14 is
`
`fully allowable. Applicants respectfully request full allowance of Claim 14.
`
`Claim Rejections — 35 U.S.C. § 102
`
`Claims 1, 4, 8-10, 16, 18-20, 23, 26-29, and 31-39 are rejected under 35 U.S.C. §
`
`102 as being anticipated by U.S. Patent No. 6,587,835 (Treyz, et al.). As mentioned
`
`above, claims 1, 4, 8-10, and 28, have been cancelled without prejudice. Claims 18-20,
`
`23, 26 —- 29 and 31 — 33, depend from independent claim 16, which has been amended.
`
`Claims 35 ~ 39 depend from independent claim 34, which has also been amended.
`
`Applicants respectfully point out that independent claims 16 and 34, each include’
`
`a limitation that is completely missing from Treyz, et al. Both independent claims
`
`include a limitation related to altering the playing of an audio file in response to an
`
`incoming telephone call. The audio file in question existed at the telephonic device
`
`prior to receiving the incoming call — the file was not included with the incoming
`
`call.
`
`Treyz, et al. fails to disclose, teach, or suggest, altering or stopping the playing of
`
`a stored audio file in response to an incoming telephone call. In fact, Treyz, et al. fails to
`
`disclose doing anything in response to an incoming telephone call.
`
`Treyz et al. does mention once, in passing, the ability to receive a telephone call —
`
`“handheld computing device 12 may be used to provide the user with an opportunity to
`
`send and receive e-mail, telephone calls, voice mail, paging messages, data service feeds,
`
`and any other suitable information or messages.” Col. 16, lines 60-63, but this disclosure
`
`in Treyz, et al. is unrelated to the currently pending claims. Applicants are attempting to
`
`claim a device that alters the playing of a stored audio file in response to an indication of
`
`incoming telephone call — Treyz et al. never mentions any such capability.
`
`PAGE 12I18 ' RCVD AT 9I1I2004 6:22:18 PM [Eastern Daylight Time] " SVR:USPTO-EFXRF-1/1 " DNIS:8729306 ' CSID: ' DURATION (mm-ss):06-O4
`
`10
`
`U.S. App. No.: 09/537,812
`
`Samsung Ex. 1318 p. 356
`
`Samsung Ex. 1318 p. 356
`
`

`
`09/01/04
`
`17:29 FAX
`
`Kinko's Aust1n—Brod1e Ln
`
`@013
`
`The Examiner has pointed out that Treyz, et a]. does mention that “[i]f the user
`
`receives an incoming message, handheld computing device 12 may be used to present the
`
`message to the user at step 140.” Col. 17, lines 5-7. Again, this disclosure in Treyz et al.
`
`misses the mark. Unlike the embodiment currently claimed, the shopping assistant of
`
`Treyz, et al. is merely receiving a message and presenting that same message to a user.
`
`In their current forms, claim 16 recites a “processor module operable to stop an
`
`in process playing of the audio file in response to receiving an indication of an
`
`incoming telephone call” (emphasis added), and claim 34 recites “a processor module
`
`operable to alter a playing of the selected audio information in association with an
`
`incoming telephonic communication" (emphasis added). As mentioned above, Treyz,
`
`et al. fails to disclose doing anything in response to an incoming telephone call or
`
`stopping the playing-of an audio file for any reason. For at least these reasons, Treyz, et
`
`al. cannot anticipate Claim 16, Claim 34, or the claims depending there from.
`
`All of the currently pending claims relate to embodiments of Applicants’
`
`invention that facilitate storing an audio file (like an MP3 file) on a wirelessly enabled
`
`device‘ and altering the playing of the file in response to an incoming telephone call.
`
`For example, a person may be storing an MP3 file on her cellular telephone, someone
`
`may call the telephone, and the telephone may begin playing the MP3 file. In practice,
`the person may hear the MP3 _music start to play and know that someone is calling her
`
`cellular telephone. Similarly, the same person may be using her cellular telephone as an
`
`MP3 player. An incoming call signal may be recognized at the telephone, and the
`
`telephone may, for example, automatically reduces the volume of the MP3 music, stop
`
`the playing of the music, pause the playing (which may involve stopping the playing and
`
`restarting the playing at some later point in time), and/or otherwise alter the playing. In
`
`fact, in some cases, some of these capabilities may be combined. A device may be
`
`playing a first song. An incoming call signal may be received. The device may stop the
`
`playing of the first song and begin playing a different song.
`
`4
`
`Treyz, et al., does not relate in any way to these ideas. Treyz et al. describes a
`
`shopping assistant. Treyz et al. completely lacks any mention, teaching, disclosure, etc.
`
`of the above-discussed limitations. As such, Applicants submit that Treyz et al. cannot
`
`PAGE 13118 ' RCVD AT 9I1l2004 6:22:18 PM [Eastern Davyllght Time] ' SVR:USPTO-EFXRF-1/1 ' DNI8:8729306 ' CSID: ' DURATION (mm-ss):08-04
`
`11
`
`U.S. App. No.: 091537.812
`
`Samsung Ex. 1318 p. 357
`
`Samsung Ex. 1318 p. 357
`
`

`
`09/01/04
`
`17:29 FAX
`
`Kinko's Aust:1n—Brodie Ln
`
`@014
`
`anticipate any currently pending claim and that in light of the amendments to claims 16
`
`and 34, Claims 16, 18-20, 23, 26, 27, 29, and 31-39 are fully allowable over Treyz et al.
`
`As such, Applicants respectfully request full allowance of Claims 16, 18-20, 23, 26, 27,
`
`29. and 31-39.
`
`Claim Rejections — 35 U.S.C. § 103
`
`Claims 5-7 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable
`
`over Treyz, et al. in view of allegedly well-known prior art. As mentioned above,
`
`Applicants respectfully traverse.
`
`Claims 5—7 have been canceled without prejudice.
`
`Claim 21 depends from claim 16, which has been amended to include a
`
`“processor module operable to stop an in process playing of the audio file in response
`
`to receiving an indication of an incoming telephone call” (emphasis added). As
`
`mentioned above, neither Treyz et al. nor the allegedly well-known prior art discloses,
`
`teaches, or even suggests, this limitation. Applicants submit that in light of the
`
`amendment to claim 16, claim 21 is fully allowable. As such, Applicants respectfully
`
`request full allowance of Claim 21.
`
`Additionally, Applicants submit that any reliance on the disclosure of Treyz et al.
`
`in combination with a wide area wireless technology having always-on capabilities (such
`
`as GSM or CDMA) is improper. Treyz et al. actively teaches away from such a
`
`combination.
`
`' Treyz et al. discloses “a handheld computing device . . . to provide a user with
`
`shopping assistance services." See Treyz et aL Abstract. While Treyz et a]. does
`
`mention cellular networks a handful of times in its more than 150 pages, when reference
`
`is made to cellular networks, the reference is largely derisive.
`
`In fact, Treyz et al. goes
`
`out of its way to suggest that cellular network resources are “too scarce to provide a
`
`practical [always-on] data communication link." Col. 51, lines 1-10. According to Treyz
`
`et al., in an always-on configuration, considerations (like scarce wide-area resources)
`
`dictate using local communication links. See Id.
`
`'
`
`PAGE 14118 ‘ RCVD AT 9I1l2D04 6:22:18 PM [Eastern Dayllgm Tlme] " SVR:USPTO-EFXRF-1I1 " DN|S:8729308 " CSID: ' DURATION (mm-ss):06-04
`
`12
`
`‘
`
`U.S. App. No.: 09/537,812
`
`Samsung Ex. 1318 p. 358
`
`Samsung Ex. 1318 p. 358
`
`

`
`09/01/04
`
`17:30 FAX
`
`Kinko's Aust1n—Brod1e Ln
`
`015
`
`Claims 11, 13-15, and 30 are rejected under 35 U.S.C. § 103(a) as being
`
`unpatentable over Treyz, et al_. in view of U.S. Patent No. 6,014,569 (Bottum).
`
`Applicants respectfully traverse the rejection. To expedite allowance of claims 11, 14,
`
`and 15, Claims 13 and 30 have been canceled without prejudice.
`
`Like Treyz et aL, Bottum completely lacks any mention of affecting the playing
`
`of an audio file in response to an incoming telephone call. Moreover, Bottum does not
`
`relate to devices that are capable of receiving telephone calls — let alone doing something
`
`in response to a telephone call.
`
`Claims 14 and 15 depend from claim 1 1, which has been amended to include the
`
`limitation of “a music file configured to be stored within a memory of an electronic
`
`device operable to play and pause the music file in response to an incoming cellular
`telephone call” (emphasis added). As indicated above, neither Treyz et al. nor Bottum
`
`‘
`
`discloses, teaches, or even suggests, this limitation. As such, Applicants submit that
`
`Claims 11, 14, and 15, are fully allowable. Applicants respectfully request full allowance
`
`of Claims 11, 14, and 15.
`
`Conclusion
`
`Each of the independent claims, as amended, includes a limitation related to
`
`affecting the playing of an audio file in response to an incoming telephone call. The cited
`references fail to teach, disclose, or even suggest such a feature. In light of this failing in
`
`the art and for other reasons not discussed herein, Applicants submit that each of the
`currently. pending independent claims is in condition for allowance.
`
`Since each of independent claims 11, 16, and 34, is allowable, each of the
`
`dependent claims is likewise allowable over the relied upon references. Moreover, the
`
`dependent claims include additional features not discussed herein or found in the cited
`
`references.
`
`Thus, for at least the foregoing reasons, Applicants respectfully submit that the
`
`present application is now in condition for allowance and reconsideration is respectfully
`
`requested. Accordingly, the Examiner is requested to issue a Notice of Allowance for all
`
`pending claims.
`
`PAGE 15I18 ' RCVD AT 9I1I20D4 6:22:18 PM [Eastern Daylight Time] " SVR:USPTO-EFXRF-‘II1 " DN|S:8729308 " CSID: ' DURATION (mm-ss):08-04
`
`13
`
`U.S. App. No.: 09/537,812
`
`Samsung Ex. 1318 p. 359
`
`Samsung Ex. 1318 p. 359
`
`

`
`
`09/01/04
`17:30 FAX
`
`Kinko's Aust1n—Brod1e
`
`015
`
`If, for any reason, the Office is unable to allow the Application on the r xt Office
`
`Action, and believes a telephone interview would be helpful, the Examiner is u- spectfully
`
`requested to contact the undersigned attorney or agent. App1icant(s) does not elieve that
`
`any additional fees are due.
`
`PAGE 18/18 ' RCVD AT 91112004 6:22:18 PM [Eastern Daylight Tlme] " 8VR:USPTO-EFXRF-1/1 " DNlS:87293OB ' CSID: ' DURATION (mm-ss):0B-04
`
`Samsung Ex. 1318 p. 360
`
`Samsung Ex. 1318 p. 360
`
`

`
`09/01/04
`
`17:30 FAX
`
`Kin]-(o'§ Aust;1n—Brod1e Ln
`
`017
`
`Electronic
`Device
`
`103
`
`1/9
`
`3
`_
`.
`¢omrnun!cation
`;
`Engine
`102 '
`
`_ 5
`
`‘E;
`
`i
`i
`l
`
`.50
`1
`
`100
`
`101
`
`Digital
`Engine
`
`I:
`
`
`
`1I
`
`PAGE 17I18 ' RCVD AT 9l1l2004 8:22:18 PM [Eastern Daylight Time] " SVR:USPTO-EFXRF-1I1 ' DNlS:8729300 ' CSID: ' DURATION (mm-ss):06-04
`
`Samsung Ex. 1318 p. 361
`
`Samsung Ex. 1318 p. 361
`
`

`
`09/01/04
`
`17:30 FAX
`
`Kinko's Aust1n—Brod1e Ln
`
`018
`
`,...A;::;:°*;::s:.;vL?L:;;:::;.
`
`6/9
`
`
`
`; I
`
`‘:
`15!.=
`555
`3:I
`
`»
`
`—
`
`~
`
`F‘
`
`
`
`STORAGE
`
`DEVICE
`
`FIG.6
`
`VOZCE MAIL
`
`
`
`
`
`PAGE 18I1§ ' RCVD AT 9I1l2D04 6:22:18 PM [Eastern Daylight Tlme] ‘ SVR:USPTO-EFXRF-1I1 " DNIS:872930B ' CSID: ' DURATION (mm-ss):03-04
`
`Samsung Ex. 1318 p. 362
`
`Samsung Ex. 1318 p. 362
`
`

`
`UNITED STATEs PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United Stntes Patent and Trademark Oflice
`P.O. Box I450
`'
`Address: COMMISSIONER FOR PATE'NTS
`Alexandria, Virginia 21%|}-I450
`www.usp1n.gcv
`
`.:
`
`09/537,812
`
`03/28/2000
`
`Russell w. White
`
`llllll.l I 11
`
`°°""RMA“°“'N°-
`4698
`
`FERF1 GUTIERREZ, RAFAEL '
`
`PAPER NUMBER
`
`. /
`
`}
`
`ART UNIT
`
`2686
`
`DATE MAILED: 08/25/2004
`
`759°
`Russell W White
`10704 Redmond
`Austin, TX 78739
`
`M50004
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Samsung Ex. 1318 p. 363
`
`Samsung Ex. 1318 p. 363
`
`

`
`
`
`
`
`Interview Summary
`
`Examiner
`
`Art Unit
`
`Application No.
`
`.
`
`App|icant(s)
`
`Rafael Perez-Gutierrez -
`
`
`(4)____-
`(2) Kevin R. lmes.
`
`All participants (applicant, appIicant’s representative, PTO personnel):
`
`
`
`(1 ) Rafael Perez-Gutierrez.
`
`(3)RusselI W. White.
`
`
`
`
`b)D Video Conference
`Type: a)E Telephonic
`c)l:I Personal [copy given to: 1)|:] applicant
`
`2)[:] app|icant’s representative]
`
`
`
`Date of Interview: 18 August 2004.
`
`
`
`Exhibit shown or demonstration conducted:
`If Yes, brief description: _.
`
`d)l:] Yes
`
`e)XI No.
`
`
`C|aim(s) discussed: 11 16 and 34.
`
`Identification of prior art discussed: Treyz et al. (US Patent # 6,587,835 B1).
`
`Agreement with respect to the claims f)l:] was reached. g)E] was not reached. h)[] N/A.
`
` Substance of Interview including description of the general nature of what was agreed to if an agreement was
`
`reached, or any other comments: See Continuation Sheet.
`
`
`
`
`
`(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the claims
`allowable, if available, must be attached. Also, where no copy of the amendments that would render the claims
`allowable is available, a summary thereof must be attached.)
`
`
`
`
`THE FORMAL WRITTEN REPLY TO THE LAST OFFICE ACTION MUST INCLUDE THE SUBSTANCE OF THE
`INTERVIEW. (See MPEP Section 713.04).
`If a reply to the last Office action has already been filed, APPLICANT IS
`GIVEN ONE MONTH FROM THIS INTERVIEW DATE, OR THE MAILING DATE OF THIS INTERVIEW SUMMARY
`FORM, WHICHEVER IS LATER, TO FILE A STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. See
`Summary of Record of Interview requirements on reverse side or on attached sheet.
`
`(
`
`
`
`
`
`Examiner Note: You must sign this form unless it is an
`ner’s signature, if required
`Exa
`Attachment to a signed Office action.
` U.S. Patent and Trademark Office
`
`
`
`PTOL-413 (Rev. 04-03)
`
`Interview Summary
`
`RAFAEL PER£z£
`Paper No. 13
`HTEHEFXW'"§fl1sung Ex. 1318 p. 364
`
`
`
`
`
`Samsung Ex. 1318 p. 364
`
`

`
`Qummary ofRecord of Interview Requiremg
`
`Manual of Patent Examining Procedure (MPEP), Section 713.04, Substance of Interview Must be Made of Record
`A complete written statement as to the substance of any face-to-face, video conference. or telephone interview with regard to an application must be made of record in the
`application whether or not an agreement with the examiner was reached at the interview.
`
`Title 37 Code of Federal Regulations (CFR) § 1.133 interviews
`Paragraph (b)
`in every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as
`warranting favorable action must be filed by the applicant. An intenriew does not remove the necessity for reply to Office action as specified in §§ 1.111, 1.135. (35 U.S.C. 132)
`
`37 CFR §1.2 Business to be transacted in writing.
`All business with the Patent or Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and
`Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to
`any alleged oral promise. stipulation, or understanding in relation to which there is disagreement or doubt.
`
`The action of the Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself
`incomplete through the failure to record the substance of interviews.
`It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, unless
`the examiner indicates he or she will do so.
`It is the examiner's responsibility to see that such a record is made and to correct material inaccuracies
`which bear directly on the question of patentabllity.
`Examiners must complete an interview Summary Fonn for each interview held where a matter of substance has been discussed during the
`interview by checking the appropriate boxes and filling in the blanks. Discussions regarding only procedural matters, directed solely to restriction
`requirements for which interview recordation is othenuise provided for in Section 812.01 of the Manual of Patent Examining Procedure, or pointing
`out typographical errors or unreadable script in Office actions or the like, are excluded from the interview recordation procedures below. Where the
`substance of an interview is completely recorded in an Examiners Amendment, no separate Interview Summary Record is required.
`The interview Summary Form shall be given an appropriate Paper No., placed in the right hand portion of the file, and listed on the
`"Contents" section of the file wrapper.
`in a personal interview, a duplicate of the Form is given to the applicant (or attorney or agent) at the
`conclusion of the interview.
`in the case of a telephone or video-conference interview, the copy is mailed to the applicant's correspondence address
`either with or prior to the next official communication. If additional correspondence from the examiner is not likely before an allowance or if other
`circumstances dictate, the Fonn should be mailed promptly after the interview rather than with the next official communication.
`
`The Form provides for recordation of the following information:
`— Application Number (Series Code and Serial Number)
`— Name of applicant
`— Name of examiner
`— Date of interview
`
`- Type of interview (telephonic, video-conference, or personal)
`— Name of participant(s) (applicant, attorney or agent, examiner, other PTO personnel, etc.)
`— An indication whether or not an exhibit was shown or a demonstration conducted
`— An identification of the specific prior art discussed
`— An indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by
`attachment of a copy of amendments or claims agreed as being allowable). Note: Agreement as to allowability is tentative and does
`not restrict further action by the examiner to the contrary.
`- The signature of the examiner who conducted the interview (if Form is not an attachment to a signed Office action)
`
`It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview of each case. It
`should be noted, however, that the Interview Summary Form will not nonnally be considered a complete and proper recordation of the interview
`unless it includes, or is supplemented by the applicant or the examiner to include, all of the applicable items required below oonceming the
`substance of the interview.
`
`A complete and proper recordation of the substance of any interview should include at least the following applicable items:
`1) A brief description of the nature of any exhibit shown or any demonstration conducted,
`2) an identification of the claims discussed,
`3) an identification of the specific prior art discussed,
`4) an identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the
`interview Summary Fonn completed by the Examiner,
`.
`5) a brief identification of the general thrust of the principal arguments presented to the examiner,
`(The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not
`required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments made to the
`examiner can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully
`describe those arguments which he or she feels were or might be persuasive to the examiner.)
`6) a general indication of any other pertinent matters discussed, and
`7) if appropriate, the general results or outcome of the interview unless already described in the Interview Summary Fonn completed by
`the examiner.
`
`Examiners are expected to carefully review the applicant's record of the substance of an interview.
`accurate, the examiner will give the applicant an extendable one month time period to correct the record.
`
`If the record is not complete and
`
`Examiner to Check for Accuracy
`
`If the claims are allowable for other reasons of record, the examiner should send a letter setting forth the examiner's version of the
`statement attributed to him or her.
`If the record is complete and accurate, the examiner should place the indication, “Interview Record OK” on the
`paper recording the substance of the interview along with the date and the examiner's initials.
`
`2
`
`Samsung Ex. 1318 p. 365
`
`Samsung Ex. 1318 p. 365
`
`

`
`I’
`
`Continuation Sheet (PTOL-413)
`
`h
`
`I}
`
`.
`
`.
`
`Application No. 09/537,812
`
`Continuation of Substance of Interview including description of the general nature of what was agreed to if an
`agreement was reached, or any other comments: The Examiner, Mr. White, and Mr. Imes discussed a proposed
`amendment to the above-mentioned claims. Specifically, the limitation of managing playing of the audio file in response
`to receiving an indication of an incoming telephone call was discussed. The Examiner suggested to further specify the
`type of managing playing (e.g., stopping, pausing) performed in the above-mentioned claims. Mr. White and Mr. Imes
`advised the Examiner that they will consider the above suggestion when preparing a formal response.
`
`3
`
`Samsung Ex. 1318 p. 366
`
`Samsung Ex. 1318 p. 366
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`.“
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria, Virginia 223|3-I450
`www.uspI.o.gov
`
`0‘
`
`APRLICATION N0.
`09/537,812
`
`FILING DATE
`03/28/2000
`
`FIRST NAMED INVENTOR
`Russell w. White
`
`ATTORNEY DOCKET NO.
`I I I I I I.I l I I
`
`CONFIRMATION NO.
`4698
`
`Russell W White
`10704 Redmond
`Austin, TX 78739
`
`PEREZ GUTIEKREZ, RAFAEL
`
`ART UNIT
`PAPER NUMBER
`
`2686
`
`DATE MAILED: 06/01/2004
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Samsung Ex. 1318 p. 367
`
`Samsung Ex. 1318 p. 367
`
`

`
`Office Action Summary
`
`Application No.
`
`09/537,812
`
`Examine,
`
`Rafael Perez-Gutierrez
`
`App|icant(s)
`
`White et al.
`
`An Unit
`
`2686 -
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE Q MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`It the period for reply specified above is less than thirty (30) days. a reply within the statutory minimum of thirty (30) days will be considered timely.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event. however, may a reply be timely filed
`
`Status
`
`DE Responsive to communication(s) filed on 18 February 2003.
`
`2a)[:] This action is FINAL.
`
`2b)lZ This action is non- inal.
`
`3)[:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4) Claim(s) 1 4-11 13-16 18-21 23 and 26-39 is/are pending in the application.
`
`4a) Of the above claim(s) j is/are withdrawn from consideration.
`
`5)l:l Claim(s) j is/are allowed.
`
`6)lZ Claim(s) 1 4-11 13-16 18-21 23 and 26-39 is/are rejected.
`
`7)l:] Claim(s) __ is/are objected to.
`
`8)l:] Claim(s)
`
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)[:] The specification is objected to by the Examiner.
`
`10)|Z The drawing(s) filed on 28 March 2000 is/are: a)D accepted or b)|X| objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`11)l:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)I:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)D All
`b)l:] Some * c)l:I None of:
`
`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documen