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Patent Trials and Appeals Board

Dec 2, 2019

14539463 - (D) (P.T.A.B. Dec. 2, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/539,463 11/12/2014 Hwa-Yong KANG 0202-1042 5057
68103 7590 12/02/2019
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
HARRIS, DOROTHY H
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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 HWA-YONG KANG,
MOON-SOO KIM, JIN-HONG JEONG,
YOUNG-KWON YOON, and TAE-HO KIM
____________________

Appeal 2019-001012
Application 14/539,463
Technology Center 2600
____________________

Before LINZY T. MCCARTNEY, BETH Z. SHAW, and
ALEX S. YAP, Administrative Patent Judges.

YAP, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–7, 10–17, and 20–22.1 (Final Act. 1 (Final
Office Action, mailed March 19, 2018, “Final Act.”).) We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Samsung Electronics Co., Ltd. as the real
party in interest. (Appeal Br. 2.)
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Application 14/539,463

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STATEMENT OF THE CASE
Introduction
According to the Specification, Appellant’s invention “relates to a
method for performing of sensor functions and an electronic device thereof.”
(Spec. ¶ 2 (Specification filed November 12, 2014, “Spec.”).) Claim 1 is
illustrative, and is reproduced below (with minor reformatting):
1. A method in an electronic device, the method comprising:
receiving a light from at least one of a subject or a periphery of
the electronic device, using an image sensor formed with one
pixel array which consists of a plurality of pixels;
reading out a pixel value of a preset pixel group of the plurality
of pixels, wherein each of the plurality of preset pixel groups
includes one or more pixels within a portion of the plurality of
pixels and is set to perform a separate function which is
performed using the light received through the image sensor; and
performing the function corresponding to the preset pixel group
using the read out pixel value;
wherein the function includes one of a face recognition function,
an illumination recognition function, a proximity recognition
function, an iris recognition function, or a gesture recognition
function, and;
wherein at least two preset pixel groups of the plurality of preset
pixel groups include at least one common pixel, the at least one
common pixel being set to perform at least two functions which
the at least two preset pixel groups respectively are set to
perform.

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Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Name Reference Date
McKendall  US 6,028,949  February 22, 2000 
Bradski et al.
(“Bradski”)  US 2004/0125222 Al  July 1, 2004 
Hershey et al.
(“Hershey”) US 2006/0066738 A1 March 30, 2006
Rothkopf  US 2007/0156364 Al  July 5, 2007 
Foster  US 2011/0211073 Al  September 1, 2011 
Chang et al. (“Chang”)  US 2014/0231625 Al  August 21, 2014 

Claims 1–7, 10–17, and 20–22 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. (See Final Act. 3–7.)
Claims 1, 2, 10, and 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hershey, Rothkopf, and Chang. (See Final Act. 8–14.)
Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hershey, Rothkopf, Chang, and Bradski. (See Final Act.
16–18.)
Claims 5 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hershey, Rothkopf, Chang, and McKendall. (See Final
Act. 14–15.)
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Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hershey, Rothkopf, Chang, Bradski, and McKendall. (See Final Act.
18–19.)
Claims 11, 12, 20, and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hershey, Rothkopf, Chang, and Foster. (See Final
Act. 19–27.)
Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hershey, Rothkopf, Chang, Foster, and Bradski. (See
Final Act. 29–31.)
Claims 15 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hershey, Rothkopf, Chang, Foster, and McKendall. (See
Final Act. 27–29.)
Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hershey, Rothkopf, Chang, Foster, Bradski, and McKendall. (See Final
Act. 31–32.)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims under 35 U.S.C. § 112, first paragraph, but we
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are not persuaded the Examiner erred in rejecting the claims under 35 U.S.C.
§ 103(a).
Written Description Rejection
The Examiner rejects claims 1–7, 10–17, and 20–22 for failing to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph. (Final Act. 4.) According to the Examiner,
It is not readily apparent from the claim language or
Applicant’s disclosure what functionality, algorithm or method
is to be attributed to “function” wherein the function includes one
of a face recognition function, an illumination recognition
function, a proximity recognition function, an iris recognition
function, and a gesture recognition function. Further, it is not
readily apparent how (i.e. algorithm, steps) object tracking
function based on the read out pixel group is performed.
(Id. at 4–7.) The Examiner explains that “Applicant’s disclosure does not
include any specific descriptions, algorithms or methods for performing the
recited recognition and tracking function.” (Id. at 4–5; Ans. 3–5.) The
Examiner further notes that “the specification fails to provide an algorithm
or necessary steps for one of ordinary skill in the art to conclude that the
Appellant had invented all known and potentially unknown, ‘function’ of
object tracking, a face recognition function, . . . , or a gesture recognition
function.” (Ans. 5.)
Appellant, however, contends that “Computer-implemented
inventions are often disclosed and claimed in terms of their functionality[,]
. . . because writing computer programming code for software to perform
specific functions is normally within the skill of the art once those functions
have been adequately disclosed.” (Appeal Br. 5.) Appellant explains that it
is “not claiming how, for example, face recognition is performed, only that it
is performed in with respect to the read out pixel group.” (Id.)
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The purpose of the written description requirement is to “ensure that
the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.” Reiffin v. Microsoft Corp., 214 F.3d
1342, 1345 (Fed. Cir. 2000). To that end, to satisfy the written description
requirement, the inventor “must also convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64
(Fed. Cir. 1991). “One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations.” Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphases in
original). It is not necessary for the specification to describe the claimed
invention ipsissimis verbis; all that is required is that it reasonably convey to
those skilled in the art that, as of the filing date sought, the inventor was in
possession of the claimed invention. Union Oil Co. of California v. Atlantic
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000); Vas-Cath Inc. v.
Mahurkar, 935 F.2d at 1563–64; In re Gosteli, 872 F.2d 1008, 1012 (Fed.
Cir. 1989); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978).
Here, we agree with Appellant that the Specification provides
sufficient written description support for the limitation at issue. For
example, the Specification notes that “at least one sensor function is . . . one
of a face recognition function, an illumination recognition function, a
proximity recognition function, an iris recognition function, and a gesture
recognition function” and the “sensor function [is performed] based on the
read out pixel group.” (Spec. ¶¶ 7, 83; see also claim 1 of original claims.)
“It is not necessary that the application describe the claim limitations
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exactly, but only so clearly that persons of ordinary skill in the art will
recognize from the disclosure that appellants invented processes including
those limitations.” In re Wertheim, 541 F.2d 257, 262 (CCPA 1976)
(citation omitted); see also Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d
1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.”).2
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1–7, 10–17, and 20–22 for failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
Obviousness Rejections
The Examiner rejects claims 1–7, 10–17, and 20–22 as unpatentable
over different combinations of Chang with Hershey, Rothkopf, Bradski,
Foster, and McKendall. (Final Act. 8–32.) Appellant contends that
“Chang’s switching from one function to another is not the same as the ‘at
least one common pixel being set to perform at least two functions which
the at least two preset pixel groups respectively are set to perform.’”
(Appeal Br. 9.) According to Appellant, Chang does not teach the limitation
at issue because “Chang’s pixel is only set to perform one function and then
reset to perform one other function,” as “switching from one function to
another is not the same as the ‘at least one common pixel being set to
perform at least two functions which the at least two preset pixel groups
respectively are set to perform.’” (Id.; Reply 4.) In other words, Appellant

2 We do not, however, opine on whether the Specification enables one of
ordinary skill in the art to perform the claimed invention.
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appears to suggest that the limitation at issue requires the functions to be
performed simultaneously.
We agree with the Examiner that “the claim language does not require
‘performing’ simultaneous ‘functions[,’ it] . . . merely requires that [at least]
. . . two functions are performed with a common pixel” and Appellant does
not argue persuasively why the Examiner’s construction is overly broad or
unreasonable. (Ans. 7.)
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claim 1, as well as independent claim 11, which contains a
similar limitation at issue. (Appeal Br. 5–12.) We also sustain the
Examiner’s rejections of dependent claims 2–7, 10, and 12–17, and 20–22,
which depend from either claim 1 or 11 and are not argued separately. (Id.)

CONCLUSION

In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 10–17,
and 20–22
112, first
paragraph
Written
Description
1–7, 10–
17, and
20–22
1, 2, 10, and
21 103
Hershey, Rothkopf,
and Chang
1, 2, 10,
and 21
3 and 4  103 
Hershey, Chang,
Rothkopf, and
Bradski 
3 and 4   
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Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5 and 7  103 
Hershey, Rothkopf,
Chang, and
McKendall 
5 and 7   
6  103 
Hershey, Rothkopf,
Chang, Bradski,
and McKendall 
6   
11, 12, 20,
and 22 103 
Hershey, Rothkopf,
Chang, and Foster 
11, 12,
20, and
22 

13 and 14  103 
Hershey, Rothkopf,
Chang, Foster, and
Bradski 
13 and 14   
15 and 17  103 
Hershey, Rothkopf,
Chang, Foster, and
McKendall 
15 and 17   
16  103 
Hershey, Rothkopf,
Chang, Foster,
Bradski, and
McKendall 
16   
Overall
Outcome
1–7, 10–
17, and
20–22

DECISION
We reverse the Examiner’s rejection of claims 1–7, 10–17, and 20–22
under 35 U.S.C. § 112, first paragraph.
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We affirm the Examiner’s rejections of claims 1–7 10–17, and 20–22
under 35 U.S.C. § 103.
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.
§ 1.136(a)(1)(iv) (2017).

AFFIRMED