Ex Parte CHOI et al

Patent Trial and Appeal Board

Oct 31, 2016

12976306 (P.T.A.B. Oct. 31, 2016)

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,"
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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).
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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.
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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.
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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
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