Apple Inc., et al.
`Exhibit 1002
`Apple Inc., et al. v. Global Touch Solutions, Inc.
`IPR2015-01173
`
`Exhibit 1002, Page 001
`
`

`
`(E
`
`Application/Control Number: 11/480,868
`
`Page 2
`
`Art Unit: 2836
`
`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office
`
`action under Ex Pan‘e Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since
`
`this application is eligible for continued examination under 37 CFR 1.114, and the fee
`
`set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has
`
`been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 9/11/07 has
`
`been entered.
`
`Allowable Subject Matter
`
`Claims 1-55 allowed.
`
`The following is an examiner’s statement of reasons for allowance: the prior art
`
`does not disclose or suggest “inter alia”, the module comprising the microchip and the
`
`switch nor the method including the steps of opening a user interface switch which is
`
`not a serial link in a circuit from the power source to the load to power the load.
`
`Any comments considered necessary by applicant must be submitted no later
`
`than the payment of the issue fee and. to avoid processing delays, should preferably
`
`accompany the issue fee. Such submissions should be clearly labeled “Comments on
`
`Statement of Reasons for Allowance.”
`
`
`
`Exhibit 1002, Page 002
`
`

`
`Application/Control Number: 11/480,868
`
`Art Unit: 2836
`
`'
`
`Page 3
`
`Any inquiry concerning this communication should be directed to Robert L.
`
`DeBeradinis whose number is (571) 272-2049. The Examiner can normally be reached
`
`Monday-Friday from 8:30 am to 5:00 pm.
`
`If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s
`
`supervisor, Michael Sherry, can be reached on (571) 272-2058. The Fax phone number
`
`for this Group is (571)272-8300.
`
`RLD
`
`SEPTEMBER 27, 2007
`
`
`
`
`
`Exhibit 1002, Page 003
`
`

`
`REMARKS
`
`By this Ftmendment, numerous changes are being made to the aiioweci ciaims.
`
`The ciaims have been reorganized to prmride better gamtectien and have been revised
`
`to remove possibie ambiguities. An effort has been made to reduce simiiarities with
`
`parenti patents recentiy aiiewed. Regarding independent ciaims 1 and 52, these have
`
`actueiiy been riarrcrswed siighiiy. As a result, Appiicani respecttuiiy submits that in spite
`
`at the extensive changes to the ciairris, the eppiicatiori stiii remains iri ceriditiuri tar
`
`aiiewencei A summary of the mere netabie of the ciaim changes and where support
`
`may be found in the ape-cificatiori feitowst
`
`Essehtieiiy ciaim 1 has been narrowed by iriciuding: iimitatiene previousty recited
`
`in dependent diaims. The changes inciude;
`
`- Narrowing and adding ciarity by including text “that is not the iead” making sure
`
`that the indicator is not miscenstrued as the lead. {see paragraph 62 of the
`
`specification);
`
`«
`
`Defining the inciicerter as iumineus and visible, { See paragraph 62 —- “this
`
`inciicetor may be a LED“);
`
`- Narrowing by moving “the toad is not activated” from ciaim 6 into ciaim ‘I;
`
`~ Claim 3 {a} narrowed by adding the touch sensor iimiatatioin. (See aiiewed ciaim 4).
`
`in ciaim 4‘. the iimitaiiori of direct current type power source has been removed.
`
`in ctaim Y, muiiipie switches have been added. Suppert for this ieriguage may he
`
`found in FiGe. Q and 105 as weil as in paragraphs 68 and B9 of the specification.
`
`Ciaim 8 has been amended to specify that the switch is activated for 3 short
`
`perieci of time. See paragraphs 62, 83 ‘Tnicrechip ‘H13 can activate the LED 1104 for a
`
`short time.
`
`Cieirris 9, 33 and 39 are amended to specify that the recited cornparients are
`
`eniciosed in or attached to the pane! musing (see FIG. i2);
`
`Ciaime ‘£0, 3?, 38, 45 and 47 have been amended to specify that the switch is
`
`integrai with the product housing. For support, see eg. paragraph 53 ~« “ wears he
`
`formed structuraiiy iritegrai with the product, for exempie, with the casing at a tleshiight
`‘.1
`
`‘I0
`
`
`
`Exhibit 1002, Page 004
`
`

`
`Ciaims 11-13 have been amended to specify that the fusnetion seiected by the
`
`microchip upon receiving a signal from the switch is at ieast dependent on the period at
`
`time that passed since a previous switch operation signai was received. The text in
`
`paragraphs 83 and 84 provides summon for this iimitation.
`
`Claim 1?’ has been amended to recite use of an address tieid. See paragraph 82
`
`of the specification for support.
`
`Ciaim 28 has been amended to recite that the toad is a device for generating
`
`seund signeis {e.g. such as the radio disclosed in paragraph 85).
`
`Claims 23 and 36 have been amended to recite that the power ievei is gradueiiy
`
`adiusted. See paragraph 83 fer the gradual dimming feature.
`
`Ciaims 32 and 45 have been amended to specify that the switch eperation is
`
`diependerzt on a ratio of resistances in the switch structure. For support, see Fit}. 9
`
`wherein the resistances are shown and the discussion in paragraph; 68 where the
`
`voitages derived from the resistances are discussed to indicate different commands.
`
`iiisdependent ciaim 52 has been amended to specify that the interface switch is a
`
`touch sensor switch and tr: cierify same at the ienguege in the ciaim. Finaiiy, cieims 53-e
`
`55 are dependent on method ciaim 52 and provide more comprehensive method type
`
`coverage at the invention as defined in the various apparatus eieiarns.
`
`in View of the foregoing, Applicant respecifuiiy submsits that the eppiication
`
`remains in csndition for aiiewence. Accorciingiy, teveretiie recenisideretion is
`
`respectfuiiy requested.
`
`JONES, TLJLLAR Si CQOPER, P.C.
`RC3‘ Box 2286, Esds Station
`Arlingtton, VA. 22202
`003} 4154500
`Dated: September ii, 200?
`
`Respectfuiiy euiamitted,
`
`By:
`
`iwebi
`
`Wiiiiam A. Biake
`
`Reg No. 30,548
`
`‘H
`
`
`
`Exhibit 1002, Page 005
`
`

`
`Notice of Allowability -
`
`Application No.
`
`I Applicant(s)
`
`
`Robert DeBeradinis
`2836 -
`
`‘
`
`11/480,868
`Examiner
`
`BRUWER, FREDERICK
`JOHANNES
`Art Unit
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`‘
`
`1. E] This communication is responsive to 4/18/07.
`
`2. [Z The allowed claim(s) is/are 1.
`
`3. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a) I] All
`b) [I Some*
`c) III None
`of the:
`
`1. El Certified copies of the priority documents have been received.
`2. El Certified copies of the priority documents have been received in Application No. _
`
`.
`
`3. El Copies of the certified copies of the priority documents have been received in this national stage application from the
`
`International Bureau (PCT Rule 17.2(a)).
`
`* Certified copies not received:
`
`A
`
`Applicant has THREE MONTHS FROM THE “MAILING DATE" of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`‘
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`»
`4. E] A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMlNER’S AMENDMENT or NOTICE OF
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
`
`5. CI CORRECTED DRAWINGS (as “replacement sheets") must be submitted.
`
`(a) Cl including changes required by the Notice of Draftsperson’s Patent Drawing Review ( PTO-948) attached
`1) CI hereto or 2) [:1 to Paper No./Mail Date
`(b) [:1 including changes required by the attached Examiner's Amendment / Comment or in the Office action of
`Paper No./Mail Date
`'
`.
`Identifying indicia such as the application number (see 37 CFR1.84(c)) should be written on the drawings in the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).
`
`6. El DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner’s_comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. E] Notice of References Cited (PTO-892)
`
`2. E] Notice of Draftperson's Patent Drawing Review (PTO-948)
`
`3. El Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date
`4. E] Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`—
`.
`
`.
`
`_
`
`5. El Notice of Informal Patent Application
`
`6. C] Interview Summary (PTO-413),
`Paper No./Mail Date
`.
`7. |___l Examiner's Amendment/Comment
`
`8. E Examiner's Statement of Reasons for Allowance
`.
`
`9. D Other
`
`.
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-06)
`
`Notice of Allowability
`
`'
`Part of Paper No./Mail Date 07022007 A
`
`'
`.‘
`
`h
`
`.‘
`
`£3‘.
`
`
`
`Exhibit 1002, Page 006
`
`

`
`Application/Control Number: 11/480,868
`
`Art Unit: 2836
`
`Page 2‘
`
`DETAILED ACTION
`
`The reply filed 4/18/07 consists of a terminal disclaimer.
`
`Terminal Disclaimer
`
`The terminal disclaimer has been recorded.
`
`Allowable Subject Matter
`
`Claims 1-52 allowed.
`
`The following is an examiner’s statement of reasons for allowance: the prior art
`
`l l i
`
`does not disclose or suggest “inter alia'’, the module comprising -the microchip and the
`
`switch nor the method including the steps of operating a user interface switch which is
`not a serial link in a circuit from the power source to the load to power the load.
`
`Any comments considered necessary by applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should preferably
`
`accompany the issue fee. Such submissions should be clearly labeled “Comments on
`
`Statement of Reasons for Allowance.”
`
`Any inquiry concerning this communication should be directed to Robert L.
`
`. DeBeradinis whose number is (571) 272-2049. The Examiner can normally be reached
`
`Monday-Friday from 8:30 am to 5:00 pm.‘
`
`
`
`Exhibit 1002, Page 007
`
`

`
`Application/Control Number: 11/480,868
`Art Unit: 2836
`'
`
`‘
`
`Page 3
`
`If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’;
`
`supervisor, Michael Sherry, can be reached on (571) 272-2058. The Fax phone number
`
`for this Group is (571) 272-8300.
`
`RLD
`
`JULY 2, 2007
`
`//
`' § 4” ’
`
`P may EXAumEn
`
`,
`
`’
`
`'.
`3
`
`{I
`
`
`
`Exhibit 1002, Page 008
`
`

`
`'
`
`"APR. 18. 2007
`
`6:47PM
`
`JONES TULLAR & COOPER
`
`
`.
`9
`NO. 0908—P.
`.RE.‘3E3lVED
`eEN’t’FtAL FAX NTER
`APR 1 8 2007
`
`REMARKS
`
`To overcome the obviousness type double patenting rejection set forth in the
`Office Action, an executed Tenninal Disclaimer is attached hereto.
`Minor amendments have been made to claims 1 and 52 to clarify the language
`regarding the switch not fonning a serial link between the power source and the load.
`Applicant respectfully submits that these clarifying amendments do not affect the scope
`of the claim and that the claims are thus still allowable over the prior art of record in the.
`parent applications.
`
`In view of the foregoing, Applicant respectfully submits that the application is now
`in condition for allowance. Accordingly, favorable reconsideration is respectfully
`requested.
`
`’ R
`
`espectfully submitted,
`
`By:
`
`lwabl
`William A. Blake
`
`Reg. No. 30,548
`
`JONES. TULIAR 8. COOPER, P.C_
`P.O. Box 2266, Eads Station
`Arlington, VA. 22202
`(703) 415-1500
`Dated: April 18. 2007
`
`PAGE 9l10* RCVD AT 4l18l20lJT 7:46:56 PM [Eastern Daylight Time] * SVR:USPTO-EFXRF-3l17 " DN|S:2738300 CSIDI * DURATION (mm-ss).02-32
`
`R
`
`
`
`Exhibit 1002, Page 009
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`Unlted States Patent and Trademark Ofllce
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 223 I 3-I450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`_
`
`I I/480,868
`
`07/06/2006‘
`
`I
`
`Frederick Johannes Bruwer
`
`P2l065/WAB
`
`4374
`
`JONES,TULLAR&COOPER,P.C. —
`'
`°’”‘”°°’
`7”“
`2”“
`1>.o. BOX 2266 EADS STATION
`,
`DEBERADINIS. ROBERT L
`ARLINGTON, VA 22202
`.
`
`»
`
`'
`
`I
`
`2836
`
`3 MONTHS
`
`‘
`
`O3/28_/2007
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`If NO period for reply is specified above, the maximum statutory period will apply and will expire 6 MONTHS
`from the mailing date of this communication.
`
`PTOL-90A (Rev. I 0/06)
`
`
`
`Exhibit 1002, Page 010
`
`

`
`Office Action Summary
`
`Application No.
`
`App|icant(s)
`
`11/480,868
`
`Examiner
`
`BRUWER. FREDERICK
`JOHANNES
`Art Unit
`
`Robert DeBeradinis
`
`2836
`
`- The MAILING DA TE of this communication appears on the cover sheet with the conespondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event. however. may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If No period for reply is specified above. the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communition.
`-
`- 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 tenn adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)[X] Responsive to communication(s) filed on 06 July 2006.
`
`2a)I:] This action is FINAL.
`
`2b)® This action is non-final.
`
`3)El 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)IZ Claim(s) 1 is/are pending in the application.
`
`4a) Of the above c|aim(s)_ is/are withdrawn from consideration.
`
`5)l:] Claim(s)_ is/are allowed.
`
`6)lZ Claim(s) i is/are rejected.
`
`7)|j Claim(s)_ is/are objected to.
`
`8)l:] Claim(s)Z are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)E] The specification is objected to by the Examiner.
`
`10)I:] The drawing(s) filed on __ is/are: a)I:] accepted or b)C} 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)Ij 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)l:l Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`M
`b)I:] Some * c)I:l None of:
`a)EI All
`1.1:] Certified copies of the priority documents have been received.
`
`2.l:I Certified copies of the priority documents have been received in Application No. _
`3.E] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`4) D interview Summary (PTO-413) '
`Paper N0(S)/Ma" Data _._-
`5) D N°fi‘-79 °f '"f°”“3' P3te”tAPP“°a“°"
`6) [:1 Other: _.
`
`1) E Notice of References Cited (PTO-892)
`2) [:1 Notice of Draflsperson's Patent Drawing Review (PTO-948)
`3) D Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date :.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 03222007
`
`
`
`Exhibit 1002, Page 011
`
`

`
`Application/Control Number: 11/480,868
`
`Page 2
`
`Art Unit: 2836
`
`DETAILED ACTION
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`doctrine grounded in public policy (a policy reflected in the statute)so as to prevent the
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`and to prevent possible harassment by multiple assignees. A nonstatutory
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`are not identical, but at least one examined application claim is not patentably distinct
`from the reference claim(s) because the examined application claim is either anticipated
`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`double patenting ground provided the conflicting application or patent either is shown to
`be commonly owned with this application, or claims an invention made as a result of
`activities undertaken within the scope of a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`37 CFR 3.73(b). .
`
`Claims 1-52 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims of U.S. Patent No. 6,249,089. Although
`
`the conflicting claims are not identical, they are not patentably distinct from each other
`
`because the microchip claimed and its use is not patentably distinct from the intelligent
`
`electrical switching device.
`
`Any inquiry concerning this communication should be directed to Robert L.
`
`DeBeradinis whose number is (571) 272-2049. The Examiner can normally be reached
`
`Monday-Friday from 8:30 am to 5:00 pm.
`
`
`
`Exhibit 1002, Page 012
`
`

`
`Application/Control Number: 11/480,868
`
`Page 3
`
`Art Unit: 2836
`
`If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's
`
`supervisor, Brian Sircus, can be reached on (571) 272-2058. The Fax phone number for
`
`this Group is (571)272-8300.
`
`RLD
`
`MARCH 22, 2007
`
`QZ7/Kfigw/M‘
`
`ROBERT L. DEBERADNS
`PRIMARY EXAIMNER
`
`
`
`Exhibit 1002, Page 013