36. (currently amended) The mobile phone system device of claim 30,
`
`wherein the computer instructions are configured to enable the mobile
`
`phone system device:
`
`(1) to enable a graphical user interface for accessing first, second,
`
`third and fourth gadgets for news, stock market information, weather and
`
`social media, respectively, each gadget comprising an area containing at
`
`least a portion of dynamically generated data related to that gadget,
`
`wherein the user interface:
`
`(a) arranges the gadgets in a layout that is larger than
`
`said display, whereby some of the gadgets are in said display and others of
`
`the gadgets are out of said display;
`
`(b) expands one of the gadgets in said display to show
`
`more data therein by shifting other gadgets; and
`
`(c) [[pans]] scrolls the layout within said display to bring
`
`some of the gadgets into said display and/or to move some of the gadgets
`
`out of said display, in response to (i) the object user's thumb or finger
`
`touching one of the gadgets on said display, and then (ii) the object user's
`
`thumb or finger gliding along said display away from the touched location;
`
`and
`
`(2) to detect an object the user's thumb or finger touching with
`
`hard pressure an on-screen element from a group consisting of a gadget,
`
`a letter, a key, a button or an icon and then to activate the on-screen
`
`element, thereby resulting in (a) enlarging the on-screen element, (b)
`
`displaying a callout balloon with a copy of the on-screen element inside, or
`
`(c) a combination thereof.
`
`37. (currently amended) A mobile phone system device, comprising:
`
`a top surface comprising a touch sensitive display, the top surfuce
`
`containing no movable button;
`
`Goertz et al.
`Application No. 16/796,880
`
`-10-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1179 of 1315
`
`

`

`a processor;
`
`a transceiver for sending and receiving wireless signals over a
`
`communications network;
`
`a solid-state memory storing computer instructions configured to
`
`enable the mobile phone system device to register input to said display
`
`from contact between (1) a user's thumb or finger, and (2) said display,
`
`and to provide a user interface, the user interface comprising at least two
`
`states, namely: (a) a tap-present state, wherein a plurality of tap(cid:173)
`
`activatable icons for activating a plurality of corresponding pre-designated
`
`applications, functions, services, services or settings or tasks are present,
`
`each of the plurality of pre-designated applications, functions, services,
`
`services or settings or tasks being configured to be activated in response
`
`to a tap on its corresponding icon, and wherein the tap-activatable icons
`
`are not enclosed by a window frame, and (b) a tap-absent state, wherein
`
`no tap-activatable icons are present, the tap-absent state configured to be
`
`transitioned to the tap-present state in response to a .f.i-Fs-t multi-step user
`
`gesture comprising: the object the user's thumb or finger (i) touching f!
`
`graphic located in an edge area of said display, and then (ii) gliding on said
`
`display away from the edge area, wherein neither the direction nor the final
`
`destination of the gliding determines the content or format of such content
`
`presented on said display as a result of the transition to the tap-present
`
`state, and wherein the graphic does not move to a different location on said
`
`display after the transition; and
`
`a housing surrounding said display and enclosing said processor,
`
`said transceiver, and said solid-state memory.
`
`38. (currently amended) The mobile phone system device of claim 37,
`
`wherein the computer instructions are further configured to enable the
`
`mobile phone system device to run a plurality of applications, the
`
`Goertz et al.
`Application No. 16/796,880
`
`-11-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1180 of 1315
`
`

`

`applications comprising a phone, chat or SMS, a calculator, a camera, an
`
`alarm, a clock, a music player, and email, the plurality of applications
`
`comprising: (a) a first application wherein a touch keyboard presented on
`
`said display enables a user to edit or save text in the first application, (b)
`
`a second application providing options for editing, deleting and sending a
`
`picture on said display, (c) a third application and a fourth application
`
`capable of running simultaneously, the third application capable of being
`
`presented on top of the fourth application on said display, and (d) a fifth
`
`application and a sixth application capable of running simultaneously, the
`
`fifth application being a music player, and the sixth application being email,
`
`chat or SMS, and (e) a seventh application providing at least two
`
`communication options
`
`for given
`
`text,
`
`the communication options
`
`comprising two or more of call, email, and chat or SMS.
`
`39. (currently amended) The mobile phone system device of claim 38,
`
`wherein the instructions are configured to enable the mobile phone system
`
`device: (a) to scroll content on said display in response to the object user's
`
`thumb or finger touching a first location on said display and gliding up or
`
`down on said display from the first location, wherein the first location may
`
`be anywhere within said display, (b) to move an application, a function, a
`
`service or a setting one step forward or backward or to close or remove an
`
`application, a function, a service or a setting on said display in response to
`
`the object user's thumb or finger touching a second location on said display
`
`and gliding to the right or to the left from the second location, wherein the
`
`first and second locations second location may be anywhere within said
`
`display, and (c) to activate a function in response to a second multi-step
`
`user gesture comprising the object user's thumb or finger touching an area
`
`corresponding to a demarcated representation of an icon representing the
`
`function followed by gliding away from the area on said display, wherein
`
`Goertz et al.
`Application No. 16/796,880
`
`-12-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1181 of 1315
`
`

`

`the demarcated representation
`
`icon represents only [[the]] a single
`
`function and does not relocate or replicate during the second multi-step
`
`user gesture, and the function is not activated differently based on a
`
`direction or final destination of the gliding neither the direction nor the final
`
`destination of the gliding determines the particular function activated or the
`
`content presented on said display as a result of activation of the function.
`
`40. (currently amended) The mobile phone system device of claim 39,
`
`wherein the computer instructions are configured to enable the mobile
`
`phone system device:
`
`(a) to enable a graphical user interface for accessing first, second,
`
`third and fourth gadgets for news, stock market information, weather and
`
`social media, respectively, each gadget comprising an area containing at
`
`least a portion of dynamically generated data related to that gadget,
`
`wherein the user interface:
`
`(i) arranges the gadgets in a layout that is larger than
`
`said display, whereby some of the gadgets are in said display and others of
`
`the gadgets are out of said display;
`
`(ii) expands one of the gadgets in said display to show
`
`more data therein by shifting other gadgets; and
`
`(iii) [[pans]] scrolls the layout within said display to bring
`
`some of the gadgets into said display and/or to move some of the gadgets
`
`out of said display, in response to the object user's thumb or finger touching
`
`one of the gadgets on said display, and then the object user's thumb or
`
`finger gliding along said display away from the touched location; and
`
`(b) to detect an object the user's thumb or finger hard-pressing
`
`an on-screen element from a group consisting of a gadget, a letter, a key,
`
`a button or an icon, and then to activate the on-screen element, thereby
`
`resulting in (i) enlarging the on-screen element, (ii) displaying a callout
`
`Goertz et al.
`Application No. 16/796,880
`
`-13-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1182 of 1315
`
`

`

`balloon with a copy of the on-screen element inside, or (iii) a combination
`
`thereof.
`
`Goertz et al.
`Application No. 16/796,880
`
`-14-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1183 of 1315
`
`

`

`Please add the following new claims.
`
`41. (new)
`
`The portable hand held wireless computer device of claim
`
`22, wherein upon transition from the tap-absent to the tap-present state
`
`the icons are presented on substantially the entirety of said display
`
`regardless of the direction or final destination of the gliding.
`
`42. (new)
`
`The portable wireless computer system of claim 41,
`
`wherein the graphic is not relocated or replicated during the multi-step user
`
`gesture.
`
`Goertz et al.
`Application No. 16/796,880
`
`-15-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1184 of 1315
`
`

`

`REMARKS
`
`Applicant,s
`
`representative
`
`has
`
`carefully
`
`studied
`
`the
`
`outstanding Office Action. The present amendment is intended to place
`
`the application in condition for allowance and is believed to overcome all of
`
`the rejections made by the Office Action. Favorable reconsideration and
`
`allowance of the application are respectfully requested.
`
`Applicant has amended claims 21, 22 and 24 - 40 without
`
`acquiescence to the Office Acton,s reasons for rejection, and without
`
`disclaiming the right to pursue the subject matter of these claims prior to
`
`amendment. Applicant has cancelled claim 23 without acquiescence to the
`
`Office Action,s reasons for rejection, and without disclaimer of the ability
`
`to pursue the subject matter of this claim in a continuation, divisional or
`
`other application. Applicant has added new claims 41 and 42. No new
`
`matter has been introduced, and support for the claim amendments and
`
`the new claims is provided below. Claims 21, 22 and 24 - 42 are
`
`presented for examination.
`
`For ease of reference in Applicant's responses below, Applicant
`
`is numbering the various objections and rejections in the Office Action.
`
`Priority
`
`At Paragraphs 5 - 7, the Office Action indicates that the priority
`
`claim to US Serial No. 10/315250 does not comply with 35 U.S.C §120,
`
`since the disclosure of the 10/315250 application fails to supply adequate
`
`support
`
`(1)
`
`for the limitation "a fourth application and a fifth application
`
`capable of running simultaneously, the fourth application being a
`
`music player, and the fifth application being email, chat or SMSu or
`
`analogous variants in dependent claims 22, 33 and 38;
`
`Goertz et al.
`Application No. 16/796,880
`
`-16-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1185 of 1315
`
`

`

`(2)
`
`for the limitation "(a) a tap-present state, wherein a plurality of
`
`tap-activatable icons ... are present ... and (b) a tap-absent state,
`
`wherein no tap-activatable icons are present, the tap-absent state
`
`configured to be transitioned to the tap-present state in response to
`
`a multi-step user gesture comprising the object: (i) touching an edge
`
`area of said display, and then (ii) gliding on said display away from
`
`the edge area" or analogous variants in dependent claims 22 and 31,
`
`and independent claim 37; and
`
`(3)
`
`for the limitation "(a) to enable a graphical user interface for
`
`accessing ... each gadget comprising an area containing at least a
`
`portion of dynamically generated data related to that gadget, wherein
`
`the user interface: (i) arranges the gadgets in a layout that is larger
`
`than said display, whereby some of the gadgets are in said display
`
`and others of the gadgets are out of said display; (ii) expands one of
`
`the gadgets in said display beyond an edge of said display to show
`
`more data therein by shifting other gadgets" or analogous variants in
`
`dependent claims 29, 36 and 40.
`
`Response to Priority
`
`(1)
`
`Applicant respectfully submits that the limitation "a fourth
`
`application and a fifth application capable of running simultaneously, the
`
`fourth application being a music player, and the fifth application being
`
`email, chat or SMS", is supported in the 10/315250 application, at least by
`
`page 1, lines 7 - 9 ("The computer unit is adapted to run several
`
`applications simultaneously") and page 2, lines 19 - 21 ("which computer
`
`unit is adapted to run several applications simultaneously") taken in
`
`conjunction with FIGS. 6, 8 and 9, showing the computer unit of the present
`
`invention adapted to run music player applications ("MP3 PLAYER" in FIG.
`
`6 and "MUSIC" in FIG. 9) and email, chat and SMS applications ("E-MAIL",
`
`Goertz et al.
`Application No. 16/796,880
`
`-17-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1186 of 1315
`
`

`

`"CHAT" and "SMS" in FIG. 6). FIG. 6 and part of FIG. 9 are reproduced
`
`below with the relevant applications highlighted. Applicant respectfully
`
`submits that a person skilled in the art at the time of the invention would
`
`understand from the statements at pages 1 and 2 that music and
`
`communication applications would run simultaneously as they do not utilize
`
`the same hardware resources, as music applications utilize audio hardware
`
`and communication applications utilize text on the display.
`
`(2)
`
`Applicant respectfully submits that the limitation "(a) a tap-
`
`present state, wherein a plurality of tap-activatable icons ... are present ...
`
`and (b) a tap-absent state, wherein no tap-activatable icons are present,
`
`the tap-absent state configured to be transitioned to the tap-present state
`
`in response to a multi-step user gesture comprising the object: (i) touching
`
`an edge area of said display, and then (ii) gliding on said display away from
`
`the edge area" is supported in the 10/315250 application, at least by page
`
`2, line 25 - page 3, line 4, and page 5, line 24 - page 6, line 13, taken in
`
`conjunction with FIGS. 1 - 4, as indicated in TABLE I below.
`
`Goertz et al.
`Application No. 16/796,880
`
`-18-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1187 of 1315
`
`

`

`lication
`TABLE I: Su ort for claim limitations in 10/315250 a
`Limitation
`FIG.
`S ecification Text
`a tap-present state,
`wherein tap(cid:173)
`activatable icons ... are
`present ...
`
`a tap-absent state,
`wherein no tap(cid:173)
`activatable icons are
`present
`
`page 6, lines 7 - 11
`("no application is
`currently active on the
`computer unit")
`
`Ail) .. \"
`
`·~ ·•·•· .. -. ............................. .,. ... ,, . . ~-. ',
`4
`
`7
`
`:
`
`/'-.., ...
`
`page 5, lines 24 - 27
`
`~~1==-
`
`.. :
`
`:~
`
`.c:.,.
`:◄ 2
`3
`. •-------,--+
`'§
`
`the tap-absent state
`configured to be
`transitioned to the
`tap-present state in
`response to a multi(cid:173)
`step user gesture
`comprising a user's
`thumb or finger: (i)
`touching a graphic
`located in an edge
`area of said display,
`and then (ii) gliding on
`said display away from
`theed e area
`
`Y'}
`1'~-..--~,.
`f"lfl, ~,
`
`Claim Rejections - 35 U.S.C. §112
`
`At Paragraphs 14 and 15, the Office Action rejects claims 25 -
`
`28, 30 - 36, 39 and 40 under pre-AIA 35 U.S.C. §112, second paragraph,
`
`as being indefinite. Specifically,
`
`( 4)
`
`the
`
`limitation "in response to a multi-step user gesture
`
`comprising
`
`the object
`
`touching said display at a
`
`location
`
`corresponding to a demarcated representation of the
`
`function
`
`Goertz et al.
`Application No. 16/796,880
`
`-19-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1188 of 1315
`
`

`

`followed by the object gliding away from the location along said
`
`display, wherein . .. the representation represents only the function"
`
`or analogous variants in dependent claim 25, independent claim 30
`
`and dependent claim 39 is indefinite; and
`
`(5)
`
`the
`
`limitation "wherein
`
`...
`
`the
`
`function
`
`is not activated
`
`differently based on a direction or final destination of the gliding" or
`
`analogous variants in dependent claims 25, independent claim 30
`
`and dependent 39 is indefinite.
`
`Applicant has amended the claims.
`
`At Paragraphs 18 - 23, the Office Action rejects claims 21 - 40
`
`under pre-AIA 35 U.S.C. §112, first paragraph, as failing to comply with
`
`the written description requirement. Specifically,
`
`(6)
`
`the limitation "a top surface comprising a touch sensitive
`
`display, the top surface containing no movable button" or analogous
`
`variants in independent claims 21, 30 and 37 fails to comply with
`
`the written description requirement since a negative limitation must
`
`have a basis in the original disclosure and mere absence of a positive
`
`recitation (such as a movable button on a top surface) is not basis
`
`for an exclusion;
`
`(7)
`
`the limitation "a tap-absent state, wherein no tap-activatable
`
`icons are present" in dependent claims 23 and 31, and independent
`
`claim 37 fails to comply with the written description requirement
`
`since a negative limitation must have a basis in the original disclosure
`
`and mere absence of a positive recitation is not basis for an exclusion;
`
`(8)
`
`the
`
`limitation "in response to a multi-step user gesture
`
`comprising
`
`the object
`
`touching said display at a
`
`location
`
`corresponding to a demarcated representation of the
`
`function
`
`followed by the object gliding away from the location along said
`
`display, wherein ... the representation represents only the function"
`
`Goertz et al.
`Application No. 16/796,880
`
`-20-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1189 of 1315
`
`

`

`or variants thereof in dependent claims 25, independent claim 30,
`
`and dependent claim 39 fails to comply with the written description
`
`requirement;
`
`(9)
`
`the
`
`limitation "wherein
`
`...
`
`the
`
`function
`
`is not activated
`
`differently based on a direction or final destination of the gliding" in
`
`dependent claim 25, independent claim 30 and dependent claim 39
`
`fails to comply with the written description requirement;
`
`(10)
`
`the limitation "wherein the first and second locations may be
`
`anywhere within said display" in the context of the limitation "(a) to
`
`enable the portable wireless computer system to scroll content on
`
`said display in response to the object touching a first location on said
`
`display and gliding up or down on said display from the first location,
`
`and (b) to enable the portable wireless computer system to move an
`
`application, a function, a service or a setting one step forward or
`
`backward or to close or remove an application, a function, a service
`
`or a setting on said display in response to the object touching a
`
`second location on said display and gliding to the right or to the left
`
`from the second location" or analogous variants, fails to comply with
`
`the written description requirement; and
`
`(11)
`
`the limitation "wherein the first application is not an address
`
`book, and wherein the text saved in the first application is configured
`
`for use as an address, a telephone number, or a message in phone
`
`call, email, chat or SMS" in independent claim 34 fails to comply with
`
`the written description requirement since a negative limitation must
`
`have a basis in the original disclosure and mere absence of a positive
`
`recitation is not basis for an exclusion.
`
`Applicant has amended the claims. Further, in order to advance the
`
`prosecution, Applicant has removed the phrase "the top surface containing
`
`no movable button", without acquiescence to the Office Action's reasons
`
`Goertz et al.
`Application No. 16/796,880
`
`-21-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1190 of 1315
`
`

`

`for rejection. Regarding claim 23, Applicant has cancelled this claim
`
`without acquiescence to the Office Action's reasons for rejection, and
`
`respectfully submits that rejection is this claim is thus rendered moot.
`
`Response to Claim Rejections - 35 U.S.C. §112
`
`The Office Action cites MPEP 2173.05[i] regarding negative
`
`limitations. MPEP 2173.05[i] indicates that
`Any negative limitation ... must have basis in the original disclosure .
`... The mere absence of a positive recitation is not basis for an
`exclusion.
`
`Applicant notes that MPEP 2173.05[i] does not indicate that drawings are
`
`not considered positive recitations. The Office Action at Paragraph 83
`
`indicates that "... any depictions in the figures ... can be viewed as
`
`coincidental". Applicant respectfully disagrees.
`
`Indeed, the 10/315250 application refers to each of the
`
`drawings as being "a schematic". FIG. 1 is described as being "a schematic
`
`and highly simplified view". FIGS. 2 - 13 are not described as being
`
`simplified. As such, all aspects of FIGS. 2 - 13 should be considered as a
`
`basis for the claimed negative limitations. In fact, FIGS. 3, 5 and 13 are
`
`replicas of Neonode's mobile phone screen, as may be seen from the
`
`images below.
`
`Goertz et al.
`Application No. 16/796,880
`
`-22-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1191 of 1315
`
`

`

`,l.
`::a,::::
`
`Screen shots of the Neonode mobile phone
`
`Goertz et al.
`Application No. 16/796,880
`
`-23-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1192 of 1315
`
`

`

`(4)
`
`Applicant has amended dependent claim 25, independent claim
`
`30 and dependent claim 39 to recite "in response to a multi-step user
`
`gesture comprising the user's thumb or finger touching said display at
`
`a location corresponding to an icon representing the function followed
`
`by the user's thumb or finger gliding away from the location along said
`
`display, wherein ... the icon represents only a single function".
`
`(5)
`
`Applicant has amended dependent claim 25, independent claim
`
`30 and dependent claim 39 to recite "wherein ... neither the direction
`
`nor the final destination of the gliding determines the particular
`
`function activated or the content presented on the display as a
`
`result of activation of the function".
`
`(7)
`
`Applicant respectfully submits that the limitation "a tap-absent
`
`state, wherein no tap-activatable icons are present" in dependent claims
`
`23 and 31, and independent claim 37, has a basis in the original disclosure,
`
`as explained hereinbelow. On page 4, lines 10 - 14, the specification states
`
`that the subject invention provides a user-friendly interface "regarding
`
`general application set-up functions, text input functions, and file and task
`
`management", i.e., all phone tasks. The description, at least at page 2,
`
`line 15 - page 3, line 30, provides a comprehensive description of how the
`
`three predefined functions activated by swipe gestures from the menu area
`
`to the display area, enable all phone functions to be performed. Thus, when
`
`there is no active application, as stated at page 3, lines 1 and 2, and on
`
`page 6, line 8, one skilled in the art at the time of the invention would
`
`understand that there are no tap-activatable icons on the display, as in this
`
`state all functions are accessed via one of the three predefined functions.
`
`Moreover, in light of the description that explicitly mentions a state when
`
`no application is active, one skilled in the art would understand that FIG.
`
`1, showing the phone display without any tap-activatable icons, illustrates
`
`the phone display when no application is active.
`
`Goertz et al.
`Application No. 16/796,880
`
`-24-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1193 of 1315
`
`

`

`(8)
`
`Applicant has amended dependent claim 25, independent claim
`
`30 and dependent claim 39 to recite "in response to a multi-step user
`
`gesture comprising the user's thumb or finger touching said display at a
`
`location corresponding to an icon representing the function followed by
`
`the user's thumb or finger gliding away from the location along said
`
`display, wherein ... the icon represents only a single function". Support
`
`for these features is provided in TABLE II below.
`
`(9)
`
`Applicant has amended dependent claim 25, independent claim
`
`30 and dependent claim 39 to recite "wherein ... neither the direction
`
`nor the final destination of the gliding determines the particular
`
`function activated or the content presented on the display as a
`
`result of activation of the function". Support for these features is
`
`provided in TABLE II below.
`
`the icon represents only a sing le
`function
`
`TABLE II: Support for claim limitations in 10/315250 application
`Support
`Limitation
`page 2, lines 21 - 24
`an icon representing the function
`page 5, lines 19 - 22
`page 8, lines 21 - 25
`page 2, lines 21 - 24
`page 5, lines 19 - 22
`paqe 8, lines 21 - 25
`FIGS. 3, 5 and 6
`Each touch-and-glide gesture
`beginning at a representation of a
`function opens the corresponding
`function, as shown in FIGS. 3, 5
`and 6. Neither the direction nor
`the final destination of the gliding
`determines the particular function
`activated or the content presented
`on the display as a result of
`activation of the function.
`
`neither the direction nor the final
`destination of the gliding
`determines the particular function
`activated or the content presented
`on the display as a result of
`activation of the function
`
`(10)
`
`Applicant respectfully submits that the limitation "wherein the
`
`first and second locations may be anywhere within said display" is
`
`Goertz et al.
`Application No. 16/796,880
`
`-25-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1194 of 1315
`
`

`

`supported in the 10/315250 application, at least by page 7, line 27 - page
`
`8, line 20, by page 4, lines 3 - 7, and by FIGS. 8 - 12, as indicated in
`
`TABLE III below.
`
`TABLE III: Sup1 1ort for claim limitations in 10/315250 application
`Limitation
`Specification Text
`FIGS.
`page 7, line 27 -
`wherein the first
`location may be
`page 8, line 14,
`anywhere within
`taken in
`said display
`conjunction with
`page 4, lines 3 - 7
`
`Fig .. R
`
`wherein the
`second location
`may be anywhere
`within said display
`
`FIGS. 8 and 9
`illustrate the list
`occupying the
`entire display and
`the scroll gestures
`being performed on
`the list. One skilled
`in the art at the
`time of the
`invention would
`understand that the
`scroll gestures may
`begin anywhere
`within said display.
`page 8, lines 17 -
`20 taken in
`conjunction with
`page 4, lines 3 - 7
`
`FIGS. 11 and 12
`illustrate the
`forward and
`backward gestures
`without any specific
`displayed controls.
`One skilled in the
`a rt at the time of
`the invention would
`understand that
`this gesture may
`begin anywhere
`within said display.
`
`Goertz et al.
`Application No. 16/796,880
`
`-26-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1195 of 1315
`
`

`

`Claim Rejections - 35 U.S.C. §103
`
`(12)
`
`At Paragraph 25 - 33, the Office Action rejects claims 21 and
`
`22 as being unpatentable over
`
`the
`
`IBM Simon Personal
`
`Communicator ("Simon") as evidenced by "Simon Says 'Here's How'
`
`- User's Manual",
`
`IBM Corp., Part Number 83G9872 ("Simon
`
`Manual") and O'Malley, "Simonizing the PDA", Byte.com, Internet
`
`Archive Wayback Machine ("O'Malley"), in view of Frank et al., US
`
`Patent No. 5,651,107 ("Frank") and Schultz et al., US Publication No.
`
`2004/0203350 Al ("Schultz").
`
`(13)
`
`At Paragraphs 34 - 41, the Office Action rejects claims 23, 24,
`
`37 and 38 as being unpatentable over Simon in view of Frank and
`
`Schultz, and in further view of a certified translation of Hisatomi et
`
`al., JP Patent Publication No. 2002-055750 A ("Hisatomi"). Regarding
`
`claim 23, Applicant has cancelled this claim without acquiescence to
`
`the Office Action's reasons for rejection, and respectfully submits that
`
`rejection of this claim is thus rendered moot.
`
`(14)
`
`At Paragraphs 42 - 51, the Office Action rejects claims 25, 26
`
`and 28 as being unpatentable over Simon in view of Frank and
`
`Schultz, and in further view of Gough et al., US Patent No. 5,603,053
`
`("Gough") and Hisatomi.
`
`(15)
`
`At Paragraphs 52 - 66, the Office Action rejects claim 27, 30 -
`
`35 and 39 as being unpatentable over Simon, Frank, Shultz, Gough
`
`and Hisatomi, and in further view of Nakagawa et al., US Patent No.
`
`6,128,014 1 ("Nakagawa") and Amro et al., US Patent No. 6,278,443
`
`("Amro").
`
`(16)
`
`At Paragraphs 67 - 77, the Office Action rejects claim 29 as
`
`being unpatentable over Simon, in view of Simon in view of Frank
`
`1 Applicant understands that the Office Action intends to cite Nakagawa et al., US
`6,128,014, instead of Freeman, US 5,289,168.
`
`Goertz et al.
`Application No. 16/796,880
`
`-27-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1196 of 1315
`
`

`

`and Schultz, and in further view of Hughes et al., US Publication No.
`
`2009/0192849 Al ("Hughes"), as evidenced by Hughes et al., US
`
`Patent Application No. 61/020,702 ("Hughes Parent"), Ording, US
`
`Publication No. 2008/168404 Al ("Ording") and Schwesig et al., US
`
`Publication No. 2008/0303799 Al ("Schwesig").
`
`(17)
`
`At Paragraphs 78 - 80, the Office Action rejects claims 36 and
`
`40 as being unpatentable over Simon in view of Frank, Schultz,
`
`Gough, Hisatomi, Nakagawa and Amro, and
`
`in further view of
`
`Hughes, Ording and Schwesig.
`
`Brief Discussion of Applied References
`
`The references of Simon Manual, O'Malley, Schultz, Frank,
`
`Gough, Nakagawa, Hughes, Hughes Parent, Ording and Schwesig were
`
`discussed in Applicant's response filed on 3 December 2020.
`
`Hisatomi describes a pen-based touch screen with menus that
`
`the user pulls out from the sides of the screen by dragging a graphic border
`
`of the screen towards the interior of the screen (Hisatomi/ paragraphs
`
`[0018] -
`
`[0025]; FIG. 5 - 7).
`
`Amro describes a touch screen with mouse pad functionality
`
`for moving a cursor on the screen (Amro/ col. 4, line 36 - col. 5, line 13).
`
`Brief Discussion of Additional Reference Cited
`
`The Office Action cites an additional reference, not relied upon;
`
`namely, Singh et al., US Patent No. 6,400,376.
`
`Singh describes panning a virtual page on a screen of a hand(cid:173)
`
`held device in response to movement of the device, as sensed by
`
`accelerometers (Singh/ col. 4, line 43 - col. 5, line 54).
`
`Goertz et al.
`Application No. 16/796,880
`
`-28-
`
`Examiner: Pack, Conrad R.
`Art Unit: 2174
`
`GOOGLE EXHIBIT 1043
`GOOGLE v. NEONODE
`IPR2021-01041
`
`Page 1197 of 1315
`
`

`

`Response to Claim Rejections - 35 U.S.C. §103
`
`The rejections of the claims under 35 U.S.C. §103 will now be
`
`addressed specifically.
`
`Claims 21, 22, 24 - 29, 41 and 42
`
`Claim 21
`
`Independent claim 21
`
`for a portable handheld wireless
`
`computer device, as amended, incudes the features of
`
`"the display having a maximum width of such length as to
`
`enable a user to hold the device in one hand and simultaneously provide
`
`input to the device by touching the display and gliding on the display
`
`away from the touched location by a distance of up to the maximum
`
`width using the thumb of the same hand",
`
`"computer instructions configured to .. . cause the portable
`
`handheld wireless computer device to present a selected application on
`
`top of another application previously presented in said display",
`
`"computer instructions configured to ... enable the portable
`
`wireless computer system to present a user interface, the user interface
`
`comprising at least two states, namely: (a) a tap-present state, wherein
`
`tap-activatable icons for activating a plurality of corresponding pre(cid:173)
`
`designated applications, functions, services or settings are present, each
`
`of the plurality of pre-designated applications, functions, services or
`
`settings configured to be activated in response to a tap on its corresponding
`
`icon ... and (b) a tap-absent state, wherein no tap-activatable icons are
`
`present, the tap-absent state configured to be transitioned to the tap(cid:173)
`
`present state in response to a multi-step user gesture comprising a user's
`
`thumb or finger: (i) touching a graphic located in an edge area of said
`
`display, and then (ii) glid