Ex Parte NHO

Patent Trial and Appeal Board

Nov 2, 2018

14247890 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/247,890 04/08/2014
66547 7590 11/06/2018
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 2IOE
Melville, NY 11747
FIRST NAMED INVENTOR
Kyoung-Min NHO
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.
1398-67 CON 9545
EXAMINER
FAHNERT, FRIEDRICH
ART UNIT PAPER NUMBER
2654
NOTIFICATION DATE DELIVERY MODE
11/06/2018 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):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYOUNG-MIN NHO
Appeal2018-004943
Application 14/247,890
Technology Center 2600
Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 is appealing the final rejection of claims 1-3, 5-13, 15-21,
and 23-25 under 35 U.S.C. § 134(a). Appeal Brief 5. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We reverse.
Introduction
The invention is directed to "an apparatus, e.g., a headset, having a
remote control for an electronic device, e.g., a multimedia playback
device." Specification 1.
1 The real party in interest is Samsung Electronics Co., Ltd. Appeal Brief 1.
Appeal2018-004943
Application 14/247,890
Illustrative Claim
1. An apparatus comprising:
a connector to be biased at a first voltage supplied from an
electronic device external to the apparatus; and
at least one voltage divider to divide the first voltage into a
second voltage based at least in part on a user input to the apparatus,
the second voltage to be used to establish or end a call and control
multimedia via the electronic device.
Rejection on Appeal
Claims 1-3, 5-13, 15-21, and 23-25 stand rejected under 35 U.S.C.
§ 102 ( e) as being anticipated by Kim (US Patent Application Publication
2007 /0178947 Al; published August 2, 2007). Final Action 2-10; Answer
2-9.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed November 3, 2017), the Reply Brief (filed
April 9, 2018), the Answer (mailed February 7, 2018) and the Final Action
(mailed May 2, 2017) for the respective details.
The Examiner finds that Kim teaches "when the mute/hold function
circuit as shown in [Fig.] 5 is used in a cellular telephone device, the
mute/hold function is used to mute or hold a telephone call which is
equivalent to temporarily ending a call" and because Appellant's "claim
language is very broad, the broad claim language only requires that the
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intended use of the voltage divider is for ending a call, hence the voltage
divider and the mute/hold circuit (element 10) as shown in [Fig.] 5 of Kim
meets the claim limitation." Answer 11 (citing Kim, paragraphs 27, 33).
The Examiner further finds:
[I]n reference to Claim 1, Kim Fig. 5, this figure has to be
interpreted based on paragraph [0033] of Kim, which refers to
cellular telephones, if one compares the electrical circuit of
instant application Fig. 3, with Fig. 5 of Kim, they are electrically
equivalent, just need to change the names cited by Kim (Play,
Stop, Skip, Rewind) to read FF, REW, PLAY/STOP,
SEND/END and adjust the respective resistances accordingly,
for SEND/END replace the resistance to O n, with the
microphone connected in parallel to the switches or buttons, and
the second voltage (Kim, Fig. 5, Ring2) is a function of the
switch or button operated, one with ordinary skill in the art will
recognize that both circuits are equivalent and can perform the
same functions, of establishing a call and end a call, based on this
disclosure, as show in Fig. 5, all the claim 1 functionalities are
provided.
Answer 11.
Appellant contends, "Kim merely describes a mute control being used
for other functionality, but fails to teach or suggest, inherently or explicitly,
that the second voltage can be used to establish or end a call and control
multimedia via the electronic device, as recited in independent Claims 1, 11,
18, and 25." Reply Brief 1-2. Appellant further argues, "The Examiner's
assertion that placing a call on hold could be interpreted as 'temporarily
ending a phone call' is unfounded. Ending a call clearly means to terminate
a call. Contrary to the Examiner's assertion, this cannot be performed
temporarily. Reestablishing an ended call would be establishing a new call."
Reply Brief 2.
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Application 14/247,890
We do not question the Examiner's determination that the claims are
broad and should be interpreted as such. See Answer 3. "The Patent and
Trademark Office ("PTO") determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction 'in light of the specification as
it would be interpreted by one of ordinary skill in the art."' Phillips v. A WH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re American
Academy of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
Nevertheless, the alleged broadness of the claims does not lessen the
requirements of anticipation. "Because the hallmark of anticipation is prior
invention, the prior art reference-in order to anticipate under 35 U.S.C.
§ 102-must not only disclose all elements of the claim within the four
comers of the document, but must also disclose those elements arranged as
in the claim." Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008) ( emphasis added; citation and internal quotation marks
omitted); see also id. at 1371 ("Thus, it is not enough that the prior art
reference discloses part of the claimed invention, which an ordinary artisan
might supplement to make the whole, or that it includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention.").
However, it is noted that Appellant cites the "Specification at page 8,
line 28 to page 7, line 11; and FIG. 3, first voltage divider 360" as providing
support for the "at least one voltage divider to divide the first voltage into a
second voltage ... to establish or end a call and control multimedia via the
electronic device" claim limitation. See Appeal Brief 3. Although the
Appellant cites to page 8, we believe that it was meant to be page 6. Also,
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Application 14/247,890
there does not appear to be a line 28 on either page 6 or page 8 of the
Specification. Upon reviewing the cited portion of the Specification we did
not find any disclosure pertaining to establishing or ending a call. However,
upon further review of the Specification, we found:
The MSM generates a code corresponding to the voltage value
received from the remote control circuit 350 such that the mobile
phone operates according to the code.
For example, a voltage value generated by the first voltage
divider 360 is designated for a "send/end" key of a keypad of the
mobile phone, a voltage value generated by the second voltage
divider 370 is designated for a 'play/stop' key, a voltage value
generated by the third voltage divider 380 is designated for a
'rewind' key, and a voltage value generated by the fourth voltage
divider 390 is designated for 'fast forward' key. Accordingly,
the headset also can control the audio playback function of the
mobile phone by the keypad or touch pad.
Specification 7.
It is still not evident that there is support for "the second voltage to be
used to establish or end a call and control multimedia via the electronic
device" claim limitation. Nevertheless, we are constrained by the record,
accordingly, we find Appellant's arguments persuasive. The Examiner's
interpretation of the "establish or end a call" limitation is not reasonable
because placing a call on hold is not the same as establishing or ending a
call. See Answer 11. Further, the Examiner's finding that Kim's Figure 5 is
equivalent to and can perform the same functions as the claimed invention
such as establishing or ending a call is not sufficient to support a rejection
based on anticipation. See Answer 11. We reverse the Examiner's
anticipation rejection of claims 1-3, 5-13, 15-21 and 23-25.
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DECISION
The Examiner's 35 U.S.C. § 102 rejection of claims 1-3, 5-13, 15-21
and 23-25 is reversed.
REVERSED
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