Ex Parte RYU et al

Patent Trials and Appeals Board

Mar 25, 2019

14536821 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/536,821 11/10/2014
68103 7590 03/27/2019
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Dong Won RYU
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.
0203-0091-3 3913
EXAMINER
WELLS, KENNETH B
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG WON RYU and EUY BEOM LEE
Appeal2018-005512
Application 14/536,821
Technology Center 2800
Before BRADLEY R. GARRIS, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 41-56. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE2
Appellant describes the invention as relating to "a method and
apparatus for attempting to reconnect a call when a call drop occurs in a
1 Appellant is the Applicant, Samsung Electronics Co., which, according to
the Appeal Brief, is also the real party in interest. Appeal Br. 2.
2 In this Decision, we refer to the Non-Final Office Action dated September
13, 2017 ("Non-Final Act."), the Appeal Brief filed February 1, 2018
Appeal 2018-005512
Application 14/536,821
portable terminal that can support different communication modes."
Spec. ,r 2. Claim 41, reproduced below with emphases added to certain key
recitations and formatting modified for readability, is the sole independent
claim on appeal and is illustrative of the claimed subject matter:
41. A terminal for communicating with multiple networks, the
terminal comprising:
a display screen;
a transceiver configured to transmit and receive a signal;
and
at least one processor configured to:
control the transceiver to connect to a first wireless
network associated with a wireless local area network,
perform a service over the first wireless network,
detect whether a signal received from the first
wireless network satisfies a predetermined condition,
identify whether a function setting associated
with a handover control is activated or inactivated,
if the function setting is activated and if the
signal received from the first wireless network
satisfies the predetermined condition, establish a
connection with the second wireless network, and
if the function setting is inactivated and if
the signal received from the first wireless
network satisfies the predetermined condition,
control the display screen to display a message
regarding a network status.
Appeal Br. 9 (Claims App.).
("Appeal Br."), the Examiner's Answer dated March 9, 2018 ("Ans."), and
the Reply Brief filed May 4, 2018 ("Reply Br.").
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Application 14/536,821
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Aron et al. us 5,341,410 Aug. 23, 1994
("Aron")
Mukerj ee et al. us 5,479,484 Dec. 26, 1995
Durig et al. US 7,702,329 Bl Apr. 20, 2010
("Durig")
Laux et al. US 7,907,564 B2 Mar. 15, 2011
("Laux")
Forstall US 8,265,709 B2 Sep. 11, 2012
Feng et al. US 8,432,868 B2 Apr. 30, 2013
("Feng")
Pirila et al. US 2005/0180338 Al Aug. 18, 2005
("Pirila")
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 41-56 under 35 U.S.C. § 112 as failing to
comply with the written description requirement. Ans. 3.
Rejection 2. Claims 41-56 under 35 U.S.C. § I03(a) as unpatentable
over Pirila in view of any one of Laux, Durig, Aron, or Mukerjee and further
in view of Feng or Forstall. Id. at 4.
ANALYSIS
Rejection 1. The Examiner rejects claims 41-56 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Ans. 3. In particular, the Examiner states that the Specification
does not support independent claim 41 's recitations concerning identifying
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Application 14/536,821
activation of handover control and performing actions based on activation
status and a predetermined condition:
identify whether a function setting associated with a handover
control is activated or inactivated, if the function setting is
activated and if the signal received from the first wireless
network satisfies the predetermined condition, establish a
connection with the second wireless network, and if the function
setting is inactivated and if the signal received from the first
wireless network satisfies the predetermined condition, control
the display screen to display a message regarding a network
status.
Ans. 3--4.
To determine whether the written description requirement is met, we
consider "whether the disclosure of the [earlier] application relied upon
reasonable conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Hologic, Inc.
v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018) (bracketed
material in original quote) ( quotes and citation omitted). While no particular
form of disclosure is required, "a description that merely renders the
invention obvious does not satisfy the [ written description] requirement."
Ariad Pharm. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
bane).
Appellant argues that support for the recitation now at issue can be
found in paragraphs 35, 37, 42, 49, and 51 of the Specification. Appeal
Br. 4. We have carefully reviewed each of these paragraphs as well as
Appellant's arguments, and the preponderance of the evidence presented
does not support that a person having ordinary skill in the art would have
understood that the inventor possessed a terminal with a processor
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Application 14/536,821
configured to "identify whether a function setting associated with a
handover control is activated or inactivated" and "if the function setting is
inactivated and if the signal received from the first wireless network satisfies
the predetermined condition, control the display screen to display a message
regarding network status." Appeal Br. 9 (Claims App.) (emphasis added).
In particular, none of the cited Specification paragraphs-whether
read individually or collectively with the remainder of the Specification-
indicate the inventor's possession of displaying a message if both the
function setting is inactivated and the signal satisfies a predetermined
condition (for example, any handoff option is inactivated and if the signal
from the first wireless network deteriorates). Paragraph 35, for example,
discloses popping a message up if a signal deteriorates and paragraph 37
generically refers to providing screen data "generated by the user's key
operation states," but these two paragraphs do not address providing a
message based on the function setting being inactivated. Paragraph 40 (not
cited by Appellant) discloses being able to activate or deactivate a control
algorithm (which we understand as being the handoff control algorithm), but
the later discussion does not disclose providing a message based on both
deactivation and satisfaction of a predetermined condition. Rather, for
example, paragraph 42 discusses connecting to a new service in the event of
disconnection, paragraph 49 discusses call disconnection due to "network
problems" (not mentioning disconnect due to deactivation of the control
algorithm), and paragraph 51 discusses providing a popup when connection
to a voice call occurs.
Because Appellant fails to identify error in the Examiner's rejection,
we sustain the Examiner's written description rejection of claim 41.
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Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections."). Appellant does not separately argue
any dependent claim. We therefore also sustain the Examiner's written
description rejection of claims 42-56. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
Rejection 2. The Examiner rejects claims 41-56 under 35 U.S.C.
§ 103 as unpatentable over Pirila in view of any one of Laux, Durig, Aron,
or Mukerjee and further in view of Feng or Forstall. Ans. 4. The Examiner
has the initial burden of establishing a prima facie case of obviousness based
on an inherent or explicit disclosure of the claimed subject matter under 35
U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a primafacie case ofunpatentability."). To establish a
prima facie case of obviousness, the Examiner must show that each and
every limitation of the claim is described or suggested by the prior art or
would have been obvious based on the knowledge of those of ordinary skill
in the art or the inferences and creative steps a person of ordinary skill in the
art would have employed. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417
(2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Our analysis of the Examiner's rejection focuses on the sole
independent claim, claim 41. The Examiner finds that Pirella teaches, for
example, the terminal, display screen, transceiver, and processer of claim 41.
With respect to the last eight lines of claim 41 (i.e., the "identify ...
regarding a network status" recitations we analyze above with respect to
written description), the Examiner states that "the limitations are not
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supported by the originally filed specification, drawings and claims, and
therefore cannot be relied upon to distinguish over Pirila et al." Ans. 5; see
also id. at 9-10.
We disagree with the Examiner's statement of the law in this regard.
An obviousness analysis must consider all claim recitations even if the
recitations fail to meet the requirements of 35 U.S.C. § 112. Manual of
Patent Examining Procedure§ 2143.03(II) (stating that limitations which do
not find support in the original specification must be considered).
The Examiner also finds that "it was old and well-known" to tum off
a handover function and display messages regarding network status. Ans. 6.
The Examiner determines that it would have been obvious to indicate when
a handover function is deselected by the user. Id. The Examiner cites Laux,
Durig, Aron, Mukerjee, and Pirela, but the Examiner does not find that any
of these references teach, for example, claim 41 's recitation of "if the
function setting is inactivated and if the signal received from the first
wireless network satisfies the predetermined condition, control the display
screen to display a message regarding a network status." Id. at 6-7. The
Examiner also does not state a rationale as to why it would have been
obvious to modify the Pirella device by incorporating a processor configured
to perform this recitation.
The Examiner provides column and line citations to Durig, Laux, and
Pirella, but the text from those citations do not appear relate to claim 41 's
recitation concerning message display "if the function setting is inactivated
and if the signal received ... satisfies the predetermined condition."
Moreover, the Appellant provides argument as to why none of the cited
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references render this recitation obvious (Appeal Br. 5-7), and the Examiner
does not substantively respond to Appellant's argument (Ans. 9-10).
Because the Examiner has not adequately explained the basis for the
obviousness rejection of claim 41, we cannot sustain the rejection. Because
the Examiner's treatment of dependent claims does not cure the error
explained above, we also do not sustain the Examiner's rejection of
claims 42-56.
DECISION
For the above reasons, we affirm the Examiner's rejection of
claims 41-56 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. We reverse the Examiner's
rejection of claims 41-56 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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