Ex Parte CHOI et alDownload PDFPatent Trial and Appeal BoardOct 31, 201612976306 (P.T.A.B. Oct. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/976,306 12/22/2010 66547 7590 11/02/2016 THE FARRELL LAW FIRM, P,C 290 Broadhollow Road Suite 210E Melville, NY 11747 FIRST NAMED INVENTOR Ko-eunCHOI 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 ATTORNEY DOCKET NO. 784-103 (SH-37973-US-DMC) CONFIRMATION NO. 7205 EXAMINER JUNG, SEUNG WOON ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 11/02/2016 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 KO-EUN CHOI, RYUAN CHOI, and JUNG-KI KWAK1 Appeal2016-002251 Application 12/976,306 Technology Center 2100 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 2, and 4--20. Claim 3 has been cancelled. App. Br. 11. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Samsung Electronics Co., Ltd. as the real party in interest. App. Br. 1. Appeal2016-002251 Application 12/976,306 THE INVENTION Appellants' invention is directed to transmitting open document information upon sensing a specific touch or click input on the open document. Abstract. Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 1. A document information transmission method comprising: displaying a document and a target object on a screen; switching an event mode from a normal mode to a transmission mode; and while in transmission mode: sensing a touch input on the document at a first location on the screen; recognizing the sensed input as an information transmission command for the document; and upon sensing a release of the touch input on the target object at a second location on the screen. transmitting information about the document to the target object, wherein, when the event mode is the normal mode, any sensed touch input on the document at a location on the screen would not be recognized as an information transmission command. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Okamoto Amadio et al. ("Amadio") Reisgies Chaudhri et al. ("Chaudhri") US 6,572,660 Bl US 2007 /0043839 Al US 7 ,426,398 B2 US 2009/0058821 Al 2 June 3, 2003 Feb.22,2007 Sept. 16, 2008 Mar. 5, 2009 Appeal2016-002251 Application 12/976,306 Jones Hunt et al. ("Hunt") Bajohr et al. ("Bajohr") US 2009/0063552 Al US 2010/0070899 Al US 2010/0088590 Al Mar. 5, 2009 Mar. 18, 2010 (filed Sept. 11, 2009) Apr. 8, 2010 (filed Oct. 7, 2008) THE EXAMINER'S REJECTIONS Claims 1, 12, 13, and 15 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Chaudhri. Final Act. 2-5. Claims 2, 5-7, 14, and 17-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chaudhri and Hunt. Final Act. 6-10. Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chaudhri and Amadio. Final Act. 10-11. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chaudhri and Jones. Final Act. 11-12. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chaudhri and Bajohr. Final 1A .. ct. 12-13. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chaudhri and Okamoto. Final Act. 13-14. Claims 11 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chaudhri and Reisgies. Final Act. 14--16. ISSUES ON APPEAL Based on Appellants' arguments in the Appeal Brief (App. Br. 5-9), the issues presented on appeal are: 1. Whether the Examiner erred in finding Chaudhri discloses "switching an event mode from a normal mode to a transmission mode," 3 Appeal2016-002251 Application 12/976,306 (hereinafter the "switching limitation") as recited in independent claim 1. 2. Whether the Examiner erred in finding Chaudhri discloses "upon sensing a release of the touch input on the target object at a second location on the screen, transmitting information about the document to the target object," (hereinafter the "transmitting limitation") as recited in independent claim 1. ANALYSIS2 We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner has erred. App. Br. 5-9. We disagree with Appellants' conclusions. We adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 2-16), and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants' Appeal Brief (Ans. 2- 5). We highlight and address specific findings and arguments below. Appellants contend the Examiner erred in finding paragraphs 21 and 27 of Chaudhri disclose the switching limitation as recited in independent claim 1. App. Br. 5---6 (citing Chaudhri i-fi-121, 27); Reply Br. 5. Appellants further contend the Examiner erred in finding Figure 2C, Figure 2D, and paragraphs 34 of Chaudhri disclose the transmitting limitation as recited in independent claim 1. App. Br. 7-8 (citing Chaudhri Figures 2C, 2D; i134); Reply Br. 2-5. 2 In this Opinion, we refer to Appellants' Appeal Brief ("App. Br.," filed July 27, 2015); Appellants' Reply Brief ("Reply Br.," filed December 15, 2015); the Final Office Action ("Final Act.," mailed January 26, 2015); and the Examiner's Answer ("Ans.," mailed on October 15, 2015). 4 Appeal2016-002251 Application 12/976,306 We are unpersuaded of Examiner error. It is well established that for anticipation under 35 U.S.C. § 102, "the reference need not satisfy an ipsissimis verbis test." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)). Furthermore, 37 C.F.R. § 41.37(c)(l)(iv) requires more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). For the reasons infra, and in the absence of sufficient evidence or technical reasoning in rebuttal to the Examiner's findings, Appellants' arguments are unpersuasive of Examiner error. The Examiner finds Chaudhri discloses the switching limitation. Final Act. 3 (citing Chaudhri i-fi-121, 27); Ans. 2-3 (citing Chaudhri i-fi-122, 23). As the Examiner explains and we agree, Chaudhri discloses a portable device that switches an event mode from a normal mode to an interface reconfiguration mode upon a user "'making a predefined gesture on the [portable device's] touch screen display surface'" thereby teaching or suggesting the disputed switching limitation. Final Act. 3. Further, the Examiner finds Chaudhri discloses the transmitting limitation. Final Act. 3--4 (citing Chaudhri Figures 2C, 2D; i134); Ans. 3--4 ( citing Chaudhri i129). As the Examiner explains, and we agree, Chaudhri discloses, upon sensing a user's release of a touch input on a game icon at a tray (214) location on the portable device's screen, information is transmitted about the game icon to the tray (214 ), thereby disclosing the disputed transmitting limitation. Final Act. 3--4. 5 Appeal2016-002251 Application 12/976,306 Appellants' contentions fail to provide sutlicient, persuasive argument or evidence regarding any specific deficiency or error in the Examiner's findings with respect to the switching and transmitting limitations of claim 1. Although Appellants cite to and characterize portions of Chaudhri' s disclosure, Appellants' argument provides little more than a general denial the disputed claim limitations are absent from the prior art without sufficient explanation or evidence in rebuttal to the Examiner's findings to persuade us of error. By way of contrast, the Examiner's explanation mapping Chaudhri' s disclosure to the disputed claim language is reasonable and supported by the evidence of record. Thus, based on a preponderance of the evidence, we agree with the Examiner's findings that Chaudhri discloses the switching and transmitting limitations of claim 1, and find no error in the Examiner's rejection of claim 1. In the Reply Brief, Appellants for the first time direct attention to Figure 8 of Appellants' Specification that allegedly teaches characteristics of the disputed transmitting limitation. Reply Br. 3--4 (citing Spec. Figure 8). This contention is untimely and waived. See 37 C.F.R. § 41.41(b)(2) (2013). Furthermore, even if timely presented, we remain unpersuaded of Examiner error. Limitations not explicit or inherent in the language of a claim cannot be imported from the specification. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). As discussed supra, the Examiner finds, and we agree, Chaudhri discloses the disputed transmitting limitation. See Final Act. 3--4; Ans. 3--4. 6 Appeal2016-002251 Application 12/976,306 Accordingly, we are not persuaded by Appellants' additional argument as presented in the Reply Brief. Accordingly, we sustain the Examiner's rejection of independent claim 1under35 U.S.C. § 102(a) and, for similar reasons, the rejection of independent claims 12 and 13 and dependent claim 15, which recite similar limitations and were not argued separately. See App. Br. 9. For the same reasons, we sustain the Examiner's rejections of dependent claims 2, 4--11, and 14, and 16-20 under 35 U.S.C. § 103(a) not argued separately. See id. DECISION We affirm the Examiner's decision to reject claims 1, 2, and 4--20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±). AFFIRMED 7 Copy with citationCopy as parenthetical citation