Ex Parte Bae et al

Patent Trial and Appeal BoardMar 29, 2017

10658545 (P.T.A.B. Mar. 29, 2017)

United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/658,545 09/10/2003 Seung-Gyun Bae 678-4799 (P10545-US/DMC) 3251 66547 7590 03/31/2017 THF FARRFT T T AWFTRM PC EXAMINER 290 Broadhollow Road Suite 210E MENDOZA, JUNIOR O Melville, NY 11747 ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): pto @ farrelliplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEUNG-GYUN BAE, YONG-MIN KIM, and HWAN-GEE JANG Appeal 2016-000541 Application 10/658,545 Technology Center 2400 Before MARC S. HOFF, JAMES R. HUGHES, and JOHN P. PINKERTON, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 20-26, 29, 32, and 35. Claims 1—19, 27, 28, 30, 31, 33, 34, and 36—39 have been canceled. Final Act. 1; App. Br. 2} We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We refer to Appellants’ Specification (“Spec.”) filed Sept. 10, 2003 (claiming benefit of Republic of Korea Patent Application No. 2002-56639, filed Sept. 17, 2002); Appeal Brief (“App. Br.”) filed May 28, 2015; and Reply Brief (“Reply. Br.”) filed Oct. 5, 2015. We also refer to the Examiner’s Answer (“Ans.”) mailed Aug. 4, 2015, and Non-Final Office Action (Non-Final Rejection) (“Non-Final Act.”) mailed Sept. 30, 2014. Appeal 2016-000541 Application 10/658,545 Appellants ’ Invention The invention at issue on appeal concerns display apparatuses and methods for displaying data on a display of a mobile terminal, including displaying both video image data and text message data while the video image data is displayed. Spec. 1:12—15; 2:12—3:8; Abstract. Illustrative Claim Independent claims 23 and 21, reproduced below, with the key disputed limitations emphasized, further illustrates the invention: 23. A video data display method for a mobile terminal, the video display method comprising: setting, by a user of the mobile terminal, a mode for displaying a text message receivedfrom a mobile communication network while the mobile terminal is displaying a video image on a display unit; upon receiving a text message when displaying the video image on the display unit: if the user set a first mode, displaying the text message in a first area of the display unit while displaying the video image; and if the user set a second mode, displaying the text message in a second area of the display unit while displaying the video image. Rejections on Appeal 1. The Examiner rejects claims 20-26, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Kwon et al. (GB 2,347,051 A, published Aug. 23, 2000) (“Kwon”) and Ellis et al. (US 2010/0175084 Al, published 2 Appeal 2016-000541 Application 10/658,545 Jul. 8, 2010 (filed Mar. 15, 2010 (claiming benefit of US 60/305,084 filed July 12, 2001))) (“Ellis”). 2. The Examiner rejects claims 32 and 35 under 35 U.S.C. § 103(a) as being unpatentable over Kwon, Ellis, and Kahn (US 2003/0169369 Al, published Sept. 11, 2003 (filed Mar. 5, 2002)). ISSUE Based upon our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in concluding that the combination of Kwon and Ellis collectively would have taught or suggested “setting ... a mode for displaying a text message received from a mobile communication network while the mobile terminal is displaying a video image on a display unit” and “if the user set a first mode, displaying the text message in a first area of the display unit while displaying the video image” or “if the user set a second mode, displaying the text message in a second area of the display unit while displaying the video image” within the meaning of Appellants’ claim 23 and the commensurate limitations of claim 20? ANALYSIS The Examiner rejects independent claim 23 in view of Kwon and Ellis.2 See Final Act. 3—6; Ans. 3—5. Appellants contend that Kwon and 2 The Examiner discusses claim 20 in the Non-Final Office Action and states that claim 23 is rejected for the same reasons. Non-Final Act. 3—6. Appellants argue independent claims 20 and 23 together. App. Br. 5—12. We find claim 23 most clearly illustrates the subject matter at issue and 3 Appeal 2016-000541 Application 10/658,545 Ellis do not teach the disputed features of claim 23. App. Br. 5—12; Reply Br. 2—5. Specifically, Appellants contend that the message (graphic data) displayed on Kwon’s display “is not ‘a text message received from a mobile communication network’ as recited by both independent Claims 20 and 23” (App. Br. 9) and that Kwon does not describe a “user selecting where on the screen an incoming text message will be displayed when a video/image is playing, as recited in independent Claims 20 and 23 of the present application” (App. Br. 5). See App. Br. 5—6, 8—9. Appellants further contend that Ellis describes a program guide displayed on a television display, that Ellis does not display text messages from a mobile network, and that Ellis “neither teaches nor suggests a user selecting one of two areas on the display of a mobile terminal where an incoming text message will be displayed if it arrives while a video is being shown” (App. Br. 7). See App. Br. 6-7, 10-12. We agree with Appellants that the Examiner-cited portions of Kwon and Ellis do not describe receiving a text message from a mobile network and displaying the data in the text message on a mobile device display in one of two user determined locations while a video is also being displayed. Kwon instead describes displaying a predetermined graphic image covering (obscuring) a video (Non-Final Act 4; Kwon 21:11—25; Fig. 3B), or displaying a bar containing a character message at the bottom of a mobile display when a video is also displayed (Non-Final Act 4; Kwon 17:3—13; 19:10-16; 21:11—25; Fig. 3A). Kwon does not describe that the character (text) messages displayed in the bar at the bottom of its display actually choose claim 23 as representative of claims 20 and 23. Our analysis equally applies to claim 20. 4 Appeal 2016-000541 Application 10/658,545 convey text information (e.g., from an SMS message) received from a mobile communication network. Consequently, we are constrained by the record before us to find that the Examiner erred in concluding that Kwon and Ellis teach the disputed limitations of Appellants’ claim 20 and claim 23. Dependent claims 21 and 22, and 24—26, depend on claims 20 and 23, respectively.3 We are also constrained by the record before us to find that the Examiner erred in concluding that Kwon, Ellis, and Khan teach the disputed limitations of Appellants’ claims 32 and 35 for the same reasons as claim 23 {supra). Dependent claims 32 and 35 depend on claims 20 and 23, respectively. Accordingly, we reverse the Examiner’s obviousness rejections of claims 20-26, 29, 32, and 35. CONCLUSION Appellants have shown that the Examiner erred in rejecting claims 20—26, 29, 32, and 35 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 20—26, 29, 32, and 35. 3 We note that both claims 20 and 23 include conditional language —“if the user set a first mode” and “if the user set a first mode” (claim 23). Claim 23 includes the step of a user “setting” a mode; claim 21, however, does not include an equivalent requirement. See claim 20 and 23. In the event of further prosecution, we leave it to the Examiner to determine whether these conditions need be satisfied to meet the disputed limitations of claims 20 and 23. See Ex parte Schulhauser, No. 2013-007847, slip op. at 9—10 (PTAB Apr. 28, 2016) (precedential), available at https://www.uspto.gov/patents- application-process/appealing-patent-decisions/decisions-and- opinions/precedential. 5 Appeal 2016-000541 Application 10/658,545 REVERSED 6