Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 1 of 14 PageID #: 12222
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 1 of 14 PageID #: 12222
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`EXHIBIT 19
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`EXHIBIT 19
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`

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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 2 of 14 PageID #: 12223
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 2 of 14 PageID #: 12223
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`Attorney Docket No. 0723880418
`
`IN THE UNITED STATES PATENT AND TRADER/[ARK OFFICE
`
`Applicant: Hirabayashi, et al.
`
`Examiner:
`
`Shiue, Dong-Chang
`
`Serial No.:
`
`13/874,535
`
`Confirmation No.2
`
`9744
`
`Filed:
`
`May 1, 2013
`
`Art Unit:
`
`2648
`
`Title:
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`MOBILE TERMINAL AND CONTROL METHOD THEREOF
`
`AMENDMENT
`
`FILED ELECTRONICALLY
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 223 13- 1450
`
`Sir:
`
`In response to the Non-Final Office Action dated April 27, 2018, for which a shortened
`
`statutory period of three months, ending July 27, 2018, was set in which to respond,
`
`the
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`following remarks are submitted and reconsideration of the claim rejections is respectfully
`
`requested.
`
`AMENDMENTS TO THE CLAIMS begin on page 2 of this document.
`
`REMARKS begin on page 9 of this document.
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`Active 38004014.]
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`1
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`MAXELL_APPLE0002039
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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 3 of 14 PageID #: 12224
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`Attorney Docket No. 072388.0418
`
`AMENDMENTS TO THE CLAIMS
`
`Please amend the claims as follows:
`
`1.
`
`(Currently Amended) A mobile terminal configured to switch between an unlocked and a
`
`locked state in which a predetermined operation is limited, comprising:
`
`a transceiver which performs short-range wireless communications;
`
`a memory which previously stores information about gr another mobile terminal; Ed
`
`a controller Which switches the mobile terminal between an unlocked and a locked state
`
`based on an authentication input to the mobile terminal;
`
`wherein, when predetermined conditions are met,
`
`the controller controls the mobile
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`terminal to transmit information to the another mobile terminal for switching a state of the
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`another mobile terminal from a locked state to an unlocked state te—the—aaet-her—mebi—le—termi—n—ale,
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`wherein the predetermined conditions include:
`
`
`first, a—srare-ef the mobile terminal is i_n a locked state,
`
`the another mobile
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`terminal is in a locked state, and the another mobile terminal is Within communication range of
`
`the short—range wireless communications of the transceiver while in the locked state;
`
`
`
`
`
`second after the mobile terminal is in the locked state the another mobile
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`terminal is in the locked state, and the another mobile terminal is within communication range of
`
`the short—range wireless communications of the transceiver while in the locked state, performing,
`
`gig the transceiver, per—farms the short-range wireless communications with the another mobile
`
`Active 38004014.]
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`2
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`MAXELL_APPLE0002040
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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 4 of 14 PageID #: 12225
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 4 of 14 PageID #: 12225
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`Attorney Docket No. 072388.0418
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`terminal; and
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`third, after the performing, receiving, by the controller, reeeives the authentication
`
`input for switching the mobile terminal from the locked state to the unlocked state.
`
`2.
`
`(Cancelled)
`
`3.
`
`(CurrentlyAmended) The mobile terminal according to claim 13, wherein[[:]]
`
`the
`
`transceiver, based on the authentication input, transmits, to the another mobile terminal, a signal
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`to transit the another mobile terminal to a locked state by performing the short—range wireless
`
`communications.
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`4.
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`(CurrentlyAmended) The mobile terminal according to claim 13, wherein[[:]] before
`
`unlocking the another mobile terminal, the mobile terminal requests confirmation from a user.
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`5.
`
`(CurrentlyAmended) The mobile terminal according to claim 13, wherein[[:]]
`
`the
`
`controller performs short—range wireless communications with the another mobile terminal by
`
`the transceiver and sets the mobile terminal to be in an unlocked state when the another mobile
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`terminal is stored in the memory and is in communication range of the short—range wireless
`
`communications by the transceiver when the mobile terminal is in a locked state
`
`6.
`
`(Cancelled)
`
`7.
`
`(Cancelled)
`
`Active 38004014.]
`
`3
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`MAXELL_APPLE0002041
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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 5 of 14 PageID #: 12226
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 5 of 14 PageID #: 12226
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`Attorney Docket No. 0723880418
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`REMARKS
`
`Claims 1, 3-5, 8, 10, and 12-25 are pending in this application; claims 1, 3-5, 8, 10, and
`
`13-16 are amended; and claims 2, 6, 7, 9, and 11 are canceled. Support for the amendments may
`
`be found throughout the specification, for example in paragraphs [0022]—[0031] of the published
`
`application,
`
`the corresponding figures, and the originally-filed claims. Thus, Applicant
`
`respectfully submits that no new matter is being added by the Amendments to the Claims.
`
`Rejection of Claims under 35 U.S.C. § 1021b)
`
`Claims 1, 8, and 15 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Chin
`
`(US 2006/0224882). Applicant respectfully traverses the rejection.
`
`Independent claim 1 is hereby amended to recite the feature, “... wherein the conditions
`
`include: first, the mobile terminal is in a locked state, the another mobile terminal is in a locked
`
`state, and the another mobile terminal is within communication range of the short—range wireless
`
`communications of the transceiver while in the locked state; second, after the mobile terminal is
`
`in the locked state, the another mobile terminal is in the locked state, and the another mobile
`
`terminal
`
`is within communication range of the short—range wireless communications of the
`
`transceiver while in the locked state, performing, via the transceiver, the short-range wireless
`
`communications with the another mobile terminal; and third, after the performing, receiving, by
`
`the controller, the authentication input for switching the mobile terminal from the locked state to
`
`the unlocked state...” Independent claims 8 and 15 are also hereby amended to recite similar
`
`features. No such configuration is taught or suggested by Chin.
`
`Specifically, these amendments to claims 1, 8, and 15 clearly identify a condition relating
`
`to when the controller transmits information to the another mobile terminal. That is, the mobile
`
`Active 38004014.]
`
`9
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`MAXELL_APPLE0002047
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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 6 of 14 PageID #: 12227
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 6 of 14 PageID #: 12227
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`Attorney Docket No. 0723880418
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`terminal communicates (transmits and receives information) with the another mobile terminal
`
`
`before the status of the another mobile terminal changes from “lock” to “unlock” by receiving
`
`information from the mobile terminal. Further, the amendments to claims 1, 8, and 15 specify
`
`the particular order of processing, which is not taught or suggested by Chin.
`
`Chin discloses a method for unlocking a device in which the user first enters a password
`
`into a first computing device. See Chin [0026]. Specifically, Chin discloses unlocking the
`
`“locked” status of a PC (the another
`
`terminal) when combining a PDA with the PC.
`
`Subsequently, the user couples the first computing device to a second computing device. See
`
`Chin [0027] and step 330 of Pig. 3. In Chin, the subsequent act of coupling the first computing
`
`device (which has already been unlocked) to the second computing device results in the
`
`unlocking of the second computing device. See Chin [0014] (“A password locked computing
`
`device may be unlocked by coupling the locked device to a password unlocked computing
`
`
`device”). However, the locked device (PDA) of Chin cannot communicate (transmit and receive
`
`information) with the unlocked computing device (PC) because communication between the
`
`
`PDA and the PC is NOT established before the combining, as required by the present disclosure.
`
`As such, Chin fails to teach or suggest, “... wherein the conditions include: first, the mobile
`
`terminal is in a locked state, the another mobile terminal is in a locked state, and the another
`
`mobile terminal is within communication range of the short—range wireless communications of
`
`the transceiver while in the locked state; second, after the mobile terminal is in the locked state,
`
`the another mobile terminal is in the locked state, and the another mobile terminal is within
`
`communication range of the short-range wireless communications of the transceiver while in the
`
`locked state, performing, via the transceiver, the short—range wireless communications with the
`
`another mobile terminal; and third, after the performing, receiving, by the controller,
`
`the
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`Active 38004014.]
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`'10
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`MAXELL_APPLE0002048
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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 7 of 14 PageID #: 12228
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 7 of 14 PageID #: 12228
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`Attorney Docket No. 0723880418
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`authentication input For switching the mobile terminal from the locked state to the unlocked
`
`state...” as recited in claims 1, 8, and 15.
`
`Moreover,
`
`the present disclosure teaches that the state of both devices (the mobile
`
`terminal and the another mobile terminal) are altered (changed from a locked state to an
`
`unlocked state) only once the two devices are in range of each other. On the other hand, Chin
`
`only teaches altering the state of the second device once the second device is within range of the
`
`first device. The first device of Chin is already unlocked before being coupled with the second
`
`device, as shown in Chin Figure 3. Additionally,
`
`in Figure 3 of Chin, at 310, Chin states
`
`“associate computing devices with password.” “Associate” can not and does not mean “couple.”
`
`As taught by Chin, “associate” means “recognizable,” (See, Chin at [0020] and [0030]) and not
`
`“paired,” “connected,” or “coupled.”
`
`Furthermore, Chin fails to teach or suggest changing the status of the another mobile
`
`terminal by the mobile terminal when the another mobile terminal
`
`is
`
`in a wireless
`
`communication area of the mobile terminal. Specifically, claims 1, 8, and 15 include, “the
`
`mobile terminal is in a locked state” and “the another mobile terminal is in a locked state” as
`
`conditions for when the controller is to transmit information to the another mobile terminal. That
`
`is, a status of the another mobile terminal
`
`is “lock” when the mobile terminal
`
`transmits
`
`information to the another mobile terminal. Chin fails to disclose such limitations. Chin requires
`
`that a status of the PDA is “unlock” when combining the PDA with the PC in order to unlock a
`
`status of the PC. In other words, there is absolutely no disclosure by Chin that any status of the
`
`another mobile terminal is changed by the mobile terminal when the another mobile terminal is
`
`in a wireless communication area of the mobile terminal.
`
`Furthermore, another feature of the present disclosure is that
`
`the mobile terminal
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`Active 38004014.]
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`'1 1
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`MAXELL_APPLE0002049
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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 8 of 14 PageID #: 12229
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 8 of 14 PageID #: 12229
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`Attorney Docket No. 0723880418
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`transmits information for changing a status from Lock to Unlock to the another mobile terminal
`
`once specified conditions are met in the order specified. In other words, the meeting of specified
`
`conditions is a trigger for the transmission of information. This is clear from the amended claim
`
`language shown in claims 1, 8, and 15. Chin fails to disclose any such conditions.
`
`As such, Applicant submits claims 1, 8,
`
`l5, and the claims dependent thereon are
`
`allowable over Chin for at least these reasons.
`
`Accordingly, Applicant submits that this rejection of claims 1, 8, and 15 under 35 U.S.C.
`
`§ 102(b) should be withdrawn.
`
`Rejection of Claims under 35 U.S.C. § 103(a)
`
`Claims 4, 5, 12—14, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
`
`over Chin in View of Smith (US 2013/0183936).
`
`Claims 3 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
`
`Chin and Smith and in View of Gerhardt (US 20l2/0280790).
`
`Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chin in
`
`view of Friedlaender (US 201 1/0195665).
`
`Claims 20—25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chin in
`
`view of Gerhardt.
`
`Applicant respectfully traverses the rejection(s).
`
`Independent claim 1
`
`recites, “A mobile terminal configured to switch between an
`
`unlocked and a locked state in which a predetermined operation is limited, comprising: a
`
`transceiver which performs short—range wireless communications; a memory which previously
`
`stores information about an another mobile terminal; and a controller which switches the mobile
`
`Active 38004014.]
`
`'12
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`MAXELL_APPLE0002050
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`

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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 9 of 14 PageID #: 12230
`Page 9 of 14 PageID #: 12230
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`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COIVIIVIISSIONER FOR PATENTS
`I’D. Box 1450
`Alexandria Virginia 223 J 34450
`wwwusplogov
`
`APPLICATION NO.
`FILING DATE
`FIRST NAMED INVENTOR
`ATTORNEY DOCKET NO.
`CONFIRMATION NO.
`
`15/874 555
`05/0/2015
`Masayuki HIRARAYASI—H
`0723880418
`9744
`
`BAKERBOTTSLLP. m
`30 ROCKEFELLER PLAZA
`SHIUE, DONG-CHANG
`44TH FLOOR
`NYORK,NY10112-4498
`
`2648
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/27/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated ”Notification Date" to the
`following e—mail address(es):
`DLNYDOCKET@BAKERBOTTS .COM
`
`PTOL-90A (Rev. 04/07)
`
`MAXELL_APPLE0002073
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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 10 of 14 PagelD #: 12231
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 10 of 14 PageID #: 12231
`Application No.
`Applicant(s)
`
`_
`_
`_
`_
`Applicant-Initiated Interwew Summary
`
`13/874,535
`HIRABAYASHI ET AL.
`
`_
`_
`Examiner
`Art Unit
`
`
`
`DONG-CHANG SHiUE
`
`2648
`
`All participants (applicant, applicant’s representative, PTO personnel):
`
`(1) DONG-CHANG SHIUE.
`
`(3)Jonathan D. Cocks .
`
`(2) Wes/ez Kim.
`
`(4)
`
`.
`
`Date of interview: 23 April 2018.
`
`Type:
`
`Ci Video Conference
`IXI Telephonic
`I:| Personal [copy given to: El applicant
`
`|:I applicant’s representative]
`
`Exhibit shown or demonstration conducted:
`
`if Yes, brief description:
`
`I:| Yes
`
`IXI No.
`
`[3101 [3112 .102 [3103 [:lOthers
`issues Discussed
`(For each of the checked box(es) above, please describe below the issue and detailed description of the discussion)
`
`Claim (s) discussed: 1.
`
`identification of prior art discussed: Chin (US 200602248822.
`
`Substance of interview
`(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics may include: identification or clarification of a
`reference or a portion thereof, Claim interpretation. proposed amendments, arguments of any applied references etc...)
`
`The applicant’s representative went over the invention and described the elements that would distinguish this invention
`from others. The predetermined conditions recited in amended claim 1 were particularly; described and discussed.
`Examiners introduced Chin reference (US 200602248822 and indicated that Chin's Figure 3 along with paragraphs
`[0031-00321 read on the predetermined conditions recited in claim 1. No other agreement was reached.
`
`Applicant recordation instructions: 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 a non-extendabie period of the longer of one month or
`thirty days 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
`
`Examiner recordation instructions: Examiners must summarize the substance of any interview of record. A complete and proper recordation of the
`substance of an interview should include the items listed in MPEP 713.04 for complete and proper recordation including the identification of the
`general thrust of each argument or issue discussed, a general indication of any other pertinent matters discussed regarding patentabiiity and the
`general results or outcome of the interview, to include an indication as to whether or not agreement was reached on the issues raised.
`
`Attachment
`
`iDONG—CHANG SHIUE/
`Examiner, Art Unit 2648
`
` US. Patent and Trademark Office
`
`PTOL-413 (Rev. 8/11/2010)
`
`interview Summary
`
`Paper No. 20180423
`
`
`
`MAXELL_APPLE0002074
`
`

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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 11 of 14 PageID #: 12232
`Case 5:19-cv-00036-RWS Igocument §e4c§fi§ 0fIfIilltegvDES/I’t8/20 Page 11 of 14 PageID #: 12232
`ummary 0
`19W equlremen
`
`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 bythe applicant. An interview does not remove the necess:ty for replyto 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 patentability.
`
`Examiners must complete an interview Summary Form 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 otherwise 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 Form 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 paiticipant(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 normally 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 concerning 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 Form 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 Form 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 extendabie 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.
`
`MAXELL_APPLE0002075
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`

`

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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 12 of 14 PageID #: 12233
`—eases:—t9-ev.ceeee-Rws Decemem
`AP 'ca ofigcfitze Page
`Attfpitaat
` 13/874,535 HIRABAYASHI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2648DONG-CHANG SHIUE fig“
`
`-- 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 a MONTHS 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
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date ot 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 bythe 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 1.704jb).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`HIE Responsive to communication(s) filed on 3/29/2018.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b). This action is non-final.
`a)l:j This action is FINAL.
`3)|:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`4)|:l 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 Quay/e, 1935 CD. 11, 453 QC. 213.
`
`Disposition of Claims"
`
`5). Claim(s) 13-58 10 and 12-25is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:I Claim(s)_ is/are allowed.
`
`7)- Claim(s) 1 358 10 and 1225is/are rejected.
`8)|:I Claim(s)__ is/are objected to.
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`9)[] Claim((3)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`
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`htt z/z’tmwmscto. cv/ atertts/init events/
`h/index.‘s orsend an inquiry to PPt-ifeedbackfibuspto.oov.
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`Application Papers
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`10)l:| The specification is objected to by the Examiner.
`11)I:I The drawing(s) filed on __ is/are: a)I:I accepted or b)I:I 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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`Certified copies:
`a)|:| All
`b)l:l Some” c)|:| None of the:
`11:] Certified copies of the priority documents have been received.
`2C) Certified copies of the priority documents have been received in Application No.
`SI] 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 fora list of the certified copies not received.
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` Attachment(s)
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`
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`1)
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`Notice of References Cited (PTO-892)
`_
`_
`2) D lnformatIon DIsclosure Statement(s) (PTO/SB/OSa and/or PTO/SB/OSb)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`3) IX jmerview Summary (PTO—413)
`Paper No(s)/Mai| Date.
`4 I:I O h
`>
`)
`t er.
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`Office Action Summary
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`Part of Paper No./Mail Date 20180423
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`MAXELL_APPLE0002076
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`

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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 13 of 14 PageID #: 12234
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 13 of 14 PagelD #: 12234
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`Application/Control Number: 13/874,535
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`Page 2
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`Art Unit: 2648
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`DETAILED ACTION
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`The present application is being examined under the pre-AIA first to invent provisions.
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`Continued Examination Under 37 CFR 1. 114
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`3/29/2018 has been entered.
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`Response to Arguments
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`Reiection of Claims under 35 U.S.C. § 103(a)
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`On pages 10-11 of Remarks filed on 03/29/2018, Applicant submits that (1) the
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`mobile terminal communicates (transmits and receives information) with the another
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`mobile terminal before the status of the another mobile terminal changes from "lock" to
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`"unlock" by receiving information from the mobile terminal. However, the locked device
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`(PDA) of Chin cannot communicate (transmit and receive information) with the unlocked
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`computing device (PC) because communication between the PDA and the PC is NOT
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`established before the combining, as required by the present disclosure. (2) Claims 1, 8,
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`and 15 have been amended to include, "a Lock status of the mobile terminal" and "a
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`Lock status of the another mobile terminal" as conditions for when the controller is to
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`MAXELL_APPLE0002077
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`

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`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 14 of 14 PageID #: 12235
`Case 5:19-cv-00036-RWS Document 348-2 Filed 06/18/20 Page 14 of 14 PagelD #: 12235
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`Application/Control Number: 13/874,535
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`Page 3
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`Art Unit: 2648
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`transmit information to the another mobile terminal. That is, a status of the another
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`mobile terminal is "lock" when the mobile terminal transmits information to the another
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`mobile terminal. Chin fails to disclose such limitations. Chin requires that a status of the
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`PDA is "unlock" when combining the PDA with the PC in order to unlock a status of the
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`PC. In other words, there is absolutely no disclosure by Chin that any status of the
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`another mobile terminal is changed by the mobile terminal when the another mobile
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`terminal is in a wireless communication area of the mobile terminal.
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`Examiner respectfully disagrees. in response to (1), in the first three limitations
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`recited in Claim 1 (and similarly in Claim 8 and 15), the limitations merely state that a
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`transceiver performing short—range communication, a memory previously storing
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`information, and a controller switching the mobile terminal between an unlocked and a
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`locked state, which are interpreted as the capabilities of the mobile terminal. Chin
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`disclose these capabilities in at least Fig. 1, Abstract, and paragraphs [0016] & [0018].
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`See citation in 102 Rejections below.
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`In response to (2), the predetermined conditions are clearly disclosed by Chin in
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`at least Fig. 3 and paragraphs [0031—0032] because the predetermined conditions do
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`not specify a particular order of existence or as a function of time line. Each condition is
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`disclosed in Fig. 3, for instance, both computing devices (or mobile terminals) are
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`locked before unlocking the first computing device in Block 320. Further, in [0032] and
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`Block 350 of Fig. 3, the second computing device is unlocked by the first computing
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`device when the second computing device is in a wireless communication area of the
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`first computing device. See citation in 102 Rejections below.
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`MAXELL_APPLE0002078
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