Samsung Electronics Co., Ltd.

Patent Trials and Appeals BoardMar 10, 2021

2019006899 (P.T.A.B. Mar. 10, 2021)

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. 14/595,501 01/13/2015 Hyun Mi PARK 5004-1-372CON 3008 33942 7590 03/10/2021 Cha & Reiter, LLC 17 Arcadian Avenue Suite 208 Paramus, NJ 07652 EXAMINER HUYNH, CONG LAC T ART UNIT PAPER NUMBER 2178 MAIL DATE DELIVERY MODE 03/10/2021 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 HYUN MI PARK, TAE WON UM, and SEOK HYUN JEONG ____________________ Appeal 2019-006899 Application 14/595,501 Technology Center 2100 ____________________ Before JOHHNY A. KUMAR, CARL L. SILVERMAN, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–27. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Samsung Industrial Electronics Co., Ltd. as the real party in interest. Appeal Br. 3. Appeal 2019-006899 Application 14/595,501 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to “integrally managing various types of messages in a portable [(device)].” Spec. 1:14–15. In the Specification, Appellant describes that various types of messages and messaging schemes may be present across various applications installed on a portable device. See Spec. 1:18–3:3. For example, different messaging schemes may be required for a Short Message Service (SMS), Multimedia Message Service (MMS), e-mail, instant message, or Social Network Service (SNS). Spec. 15:3–9. Appellant describes “transmitting and receiving an integrated message using a portable device that includes a user interface for integrally displaying various types of messages in a portable device, and for writing and sending a message irrespective of the type of a message.” Spec. 4:2–6. Figure 3[a] is illustrative and is reproduced below. Appeal 2019-006899 Application 14/595,501 3 Figure 3[a] illustrates a user interface displaying various channel icons corresponding to different respective channels. Spec. 11:12–15. Appellant describes a channel supports a particular messaging scheme. See Spec. 4:10–11. As shown, after a user selects a channel selection button, the various channel icons (300) for selection. Spec. 21:14–23. Thus, the user is able to change the messaging scheme to be used for a message. Spec. 21:21–23. In addition, Appellant describes that if a failure is generated during the transmission of a message when using a selected channel, the portable device may send the message via a different channel. See Spec. 6:6–11, 29:13–20. Claims 1, 10, and 19 are independent. Claim 1 is representative (see Appeal Br. 16; see also 37 C.F.R. § 41.37(c)(1)(iv)) of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 1. A method for sending a message to a recipient device by using a portable device, the method comprising: executing, by a control unit, a single integrated messaging application supporting a plurality of channels including a first channel and a second channel, wherein the first channel and the second channel are used for different types of messaging services; displaying, on a display unit, a first Graphical User Interface (GUI) element to receive a touch input for activating a messaging service associated with the second channel; in response to the messaging service associated with the second channel being activated via the touch input to the first GUI element, transmitting, by a wireless communication unit, the message via the first channel when the messaging service Appeal 2019-006899 Application 14/595,501 4 associated with the second channel is deactivated on the recipient device; and in response to the messaging service associated with the second channel being deactivated via the touch input to the first GUI element, transmitting, by the wireless communication unit, the message via the first channel regardless of whether the messaging service associated with the second channel is activated on the recipient device. The Examiner’s Rejection2 Claims 1–27 stand rejected under pre-AIA 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement. Final Act. 4–6. ANALYSIS3 With respect to the claim limitations of transmitting the message via a first channel (i) “when the messaging service associated with the second channel is deactivated on the recipient device;” and (ii) “regardless of whether the messaging service associated with the second channel is activated on the recipient device,” the Examiner finds the Specification fails to provide the requisite written description support. Final Act. 4–6. In particular, the Examiner explains the Specification fails to support that 2 The Examiner had also rejected claims 1–27 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–4. The Examiner has since withdrawn this rejection. See Ans. 5. 3 Throughout this Decision, we have considered the Appeal Brief, filed May 9, 2019 (“Appeal Br.”); the Reply Brief, filed September 23, 2019 (“Reply Br.”); the Examiner’s Answer, mailed August 2, 2019 (“Ans.”); and the Final Office Action, mailed December 17, 2018 (“Final Act.”), from which this Appeal is taken. Appeal 2019-006899 Application 14/595,501 5 transmission of a message on a first channel is based on the state of a second channel (i.e., activated or deactivated) of a recipient device. Final Act. 6. In both the Appeal Brief and Reply Brief, Appellant identifies various paragraphs from the Specification alleging they provide the necessary written description support for the disputed limitations. See Appeal Br. 12– 14 (citing Spec. 6:6–11, 22:25–26:8, 29:13–20); Reply Br. 7–8 (citing Spec. 6:20–21, 16:22–17:8, 25:7–19, 29:13–20, 34:8–21).4 More particularly, Appellant characterizes the disputed limitations as describing “features [that] generally relate to how the claimed invention handles transmission failures.” Appeal Br. 14; see also Reply Br. 9 (arguing the Specification explicitly discloses a “fail-over” feature in which a message is transmitted on another channel if the intended channel is deactivated on the recipient device). Appellant argues that one skilled in the art would recognize that “transmission failure may occur when a transmission channel is deactivated.” Appeal Br. 15. As such, Appellant asserts it need not be explicitly disclosed. Appeal Br. 15. Further, Appellant argues “any time messages cannot be transmitted, the corresponding channel may be deactivated.” Reply Br. 9. Additionally, Appellant notes that because a portable device may be either a transmission device or a reception device, the disclosures in the Specification related to the portable device operating as a transmission device “may apply with equal force” when the device is operating as a reception device. Appeal Br. 15. 4 Although Appellant cites to paragraph numbers of the published application, we refer to the page and lines of the Specification of record (filed January 13, 2015). Appeal 2019-006899 Application 14/595,501 6 To satisfy the written description requirement, the disclosure must reasonably convey to ordinarily skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Ariad Pharms., 598 F.3d at 1351 (quotations and citations omitted). However, it is not enough to satisfy the written description requirement that the claimed subject matter would have been obvious to a person of ordinary skill in view of the written description. See ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009); see also Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997) (explaining that “an applicant complies with the written description requirement by describing the invention, with all its claimed limitations, not that which makes it obvious” (quotations omitted)). Appellant’s arguments do not persuade us of Examiner error. Contrary to Appellant’s arguments, the Specification does not describe using the channel status of a recipient device to determine a channel for transmitting a message. Rather, the cited portions of the Specification describe, inter alia, the presentation of available channels and selection thereof by the user of the transmitting device. See, e.g., Spec. 25:7–19, 34:8–21, Fig. 3[a]. The other portions of the Specification cited by Appellant also fail to provide the requisite written description support for Appeal 2019-006899 Application 14/595,501 7 using the channel status of a recipient device to determine a channel for transmitting a message from the transmission device. We also disagree with Appellant’s argument that the Specification provides a fail-over feature that accounts for when a channel of a recipient device is deactivated and, therefore, transmits on a different (i.e., first) channel. Although the Specification does mention a scenario of using another channel (i.e., a first channel) if transmission of the message on the selected channel (i.e., second channel) fails (see, e.g., Spec. 6:6–11, 29:13– 20), the recited features of claim 1 do not recite a transmission failure, are narrower than the general discussion of a failure being generated, and are not set forth in the Specification. Moreover, based on our review of the Specification, there is no disclosure of considering the channel activation status of a recipient device when the transmission device is transmitting a message. For the reasons discussed supra, we sustain the Examiner’s rejection of claim 1 for failing to comply with the written description requirement of pre-AIA 35 U.S.C. § 112, first paragraph. For similar reasons, we also sustain the Examiner’s rejection of independent claims 10 and 19, which recite similar limitations and were not argued separately. See Appeal Br. 16; see also 37 C.F.R. § 41.37(c)(1)(iv). In addition, we sustain the Examiner’s rejection of claims 2–9, 11–18, and 20–27, which depend directly or indirectly from the independent claims and were not argued separately. See Appeal Br. 16; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-006899 Application 14/595,501 8 CONCLUSION We affirm the Examiner’s decision rejecting claims 1–27 under pre- AIA 35 U.S.C. § 112, first paragraph. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–27 112, first paragraph Written description 1–27 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED