Ex Parte Moon

Patent Trial and Appeal Board

Apr 26, 2016

12652860 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/652,860
33942 7590
Cha & Reiter, LLC
17 Arcadian A venue
Suite 208
Paramus, NJ 07652
FILING DATE FIRST NAMED INVENTOR
01/06/2010 Jin Seok Moon
04/26/2016
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. CONFIRMATION NO.
5004-1-211 1948
EXAMINER
ABEBE, SOSINA
ART UNIT PAPER NUMBER
2627
MAILDATE DELIVERY MODE
04/26/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIN SEOK MOON
Appeal2014-006711
Application 12/652,860
Technology Center 2600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
TERRENCE W. MCMILLIN Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-13 and 15-23, which are all the claims pending in the
application. Claim 14 was canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Invention
The claimed invention on appeal relates to "[a]n apparatus and
method for controlling a display unit [that] controls a turning on/off
Appeal2014-006711
Application 12/652,860
operation of a display unit in a portable terminal having a touch screen."
(Abstract).
Representative Claim
1. A method for controlling a display unit of a portable
terminal, comprising:
detecting a touch on an area of a touch screen in a call
mode of the portable terminal;
determining whether a range of the touched area is equal
to or greater than a preset threshold;
turning off the display unit if a range of the touched area
is equal to or greater than said preset threshold; and
turning on the display unit when a release of the detected
touch from the touch screen is detected while the display unit is
being turned-off
(Emphasis added to highlight the contested limitation).
Rejections
A. Claims 1, 2, 4--13, and 15-23 are rejected under 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
Krah (US Pub. 2008/0162996 Al; pub. July 3, 2008), in view of Westerman
(US Pub. 2008/0158146 Al; pub. July 3, 2008).
B. Claim 3 is rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Krah, in view of
Westerman, and in further view of Cross (US Pub. 2003/0234769 Al; pub.
Dec. 25, 2003).
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of claims 1, 2,
4--13, and 15-23, rejected under rejection A, on the basis of representative
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Application 12/652,860
claim 1. We address claim 3 rejected under rejection B separately, infra.
See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejection A of Representative Claim 1 under§ 103
Issue: Under§ 103, did the Examiner err in finding the combination
of Krah and Westerman would have taught or suggested "turning on the
display unit when a release of the detected touch from the touch screen is
detected while the display unit is being turned-off," within the meaning of
claim 1? 1
Regarding the contested limitation, Appellant contends "the
references in combination are completely silent about a detected release of
touch while the device is being powered down (i.e.[,] while being turned
off) because of a detected release of touch as presently claimed)." (App. Br.
8).
1 In the event of further prosecution, we direct the Examiner's attention to
the question of whether at least claim 1 is indefinite under 35 U.S.C. § 112,
second paragraph, based on the recitation of "turning on the display
unit ... while [i.e., at the same time] the display unit is being turned-off."
(Emphasis added). Regarding the recited phrase "being turned-off',
compare with the corresponding description in the Specification: "in a state
where the LCD 441 is turned-off." (Spec. 20: 19-23) (Emphasis added).
"[I]f a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim ...
indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008)
(precedential). Although the Board is authorized to reject claims under 37
C.F.R. § 4L50(b), no inference should be drawn when the Board elects not
to do so. See Afanual (~/Patent Examining Procedure (MPEP) § 1213.02.
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Application 12/652,860
According to the Examiner, paragraph 55 of Westerman teaches an
embodiment in which a "release [of] the object (e.g., cheeks and palms) has
been detected and used to transition the touch-surface device into specified
mode (on to oft) or (off to on)) from the touch screen." (Ans. 2). We
reproduce the pertinent portion of paragraph 55 below:
[W]hen far-field measurements are taken into account during
contact discrimination operations, a FAR-FIELD value greater
than a specified threshold (e.g., zero) indicates a large "near
by" object has been detected. As previously noted, this
information may be used to transition the touch-surface device
into a specified mode (e.g., on, off or low power).
(Westerman i-f 55) (emphasis added).
Although Westerman does not explicitly use the word "release" to
describe the event causing the device to transition into a specified mode, we
are of the view that Appellant fails to fully appreciate Westerman's
descriptions in light of the combined teachings and suggestions of Krah (i-f
80, Figs. 1, 7), as proffered by the Examiner. (Final Act. 2--4). Under
§ 103, we consider whether the claimed invention is "rendered obvious by
the teachings of the prior art as a whole." In re Etter, 756 F.2d 852, 859
(Fed. Cir. 1985) (emphasis added).
This reasoning is applicable here. The primary Krah reference
teaches powering-down a touch screen "if a user's cheek or ear is detected
by one or more multi-touch panel sensors." (Krah i-f 80, Fig. 7). The
secondary Westerman reference teaches detecting if a large object (such as a
cheek) is "'near by."' (Westerman i-f 55). We find detecting whether a
cheek is nearby the touch-surface, after previously detecting the user's cheek
was touching the touch-surface, would have at least implied that the
expected eventual release of the user's cheek from the touch-surface
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Appeal2014-006711
Application 12/652,860
occurred. We find using this information "to transition the touch-surface
device into a specified mode (e.g., on, off or low power)," (id.) merely
requires transitioning the "turned-off' device to one of the two other modes
(i.e., "on" or "low power").
Our reviewing court guides that where "the problem is known, the
possible approaches to solving the problem are known and finite, and the
solution is predictable through use of a known option," a solution that is
obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544
F.3d 1341, 1351 (Fed. Cir. 2008), citing KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007). See also Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1364 (stating the number of options must be "small or
easily traversed").
Here, because there are only a finite set of options (contact and
release) having associated predictable results, we find any required
modification of the teachings and suggestions of the references proffered by
the Examiner (Final Act. 2--4), would have been "obvious to try" to an
artisan at the time of Appellant's invention. 2
Moreover, Appellant has provided no evidence that modifying the
teachings in the references relied on by the Examiner would have been
"uniquely challenging or difficult for one of ordinary skill in the art,"
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2 To the extent one of ordinary skill in the art needed to choose between the
"on" and "low power" options, the Supreme Court has held that "[ w ]hen
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her technical
grasp." KSR Int'! Co. v. Teleflex Inc, 550 U.S. 398, 421 (2007).
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Appeal2014-006711
Application 12/652,860
2007), nor have Appellant presented evidence the claimed combination of
familiar prior art features would have yielded more than expected results.
Therefore, on this record, and by a preponderance of the evidence, we
are not persuaded the Examiner erred by concluding the contested claim
limitation of "turning on the display unit when a release of the detected
touch from the touch screen is detected while the display unit is being turned
off' would have been obvious to an artisan possessing an ordinary level of
skill in the art. (Claim 1 ).
Accordingly, we sustain the Examiner's rejection A of representative
claim 1. The remaining claims also rejected under rejection A fall with
representative claim 1. See "Grouping of Claims" supra.
Rejection B of Claim 3 under§ 103
Pursuant to the provisions of37 C.F.R. § 41.31(c), rejection B of
pending claim 3 under§ 103 is also before us on appeal. However,
Appellant's principal brief is silent regarding rejection B. Arguments not
made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we
sustain the Examiner's rejection B of claim 3 under§ 103.
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
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Application 12/652,860
Conclusion
For at least these reasons, on this record, we are not persuaded the
Examiner erred. We find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for all claims on appeal.
DECISION
We affirm the Examiner's decision rejecting claims 1-13 and 15-23
under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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