Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Dec 1, 2021

2020005162 (P.T.A.B. Dec. 1, 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.
15/864,690 01/08/2018 Sang-Hoon JIN 0201-0419-2 4260
68103 7590 12/01/2021
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
YI, ALEXANDER J.
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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 SANG-HOON JIN and HAN-SHIL CHOI
________________

Appeal 2020-005162
Application 15/864,690
Technology Center 2600
____________

Before LARRY J. HUME, JUSTIN BUSCH, and MATTHEW J. McNEILL,
Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒12.1 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 15/864,690

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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to outputting video data from a mobile
device to an external display device in order for a user to enjoy concurrent
service. Spec. ¶ 2. Claim 1 is illustrative of the appealed subject matter and
reads as follows:
1. A mobile terminal comprising:
a display;
a communication circuit which transmits data to an
external device; and
a controller configured to:
identify, when the mobile terminal transmits video
data to the external device that is operably connected
with the mobile terminal by the communication circuit,
whether an event occurs, and
based on the identification that the event occurs,
control the display to display an event indicator
generated by the mobile terminal while the video data is
being continuously transmitted to the external device for
displaying the video data on the external device without
displaying the video data on the display.

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The Examiner’s Rejections2
Claims 1‒8, 10, and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Applicant’s Admitted Prior Art (“AAPA”) and Kato (JP
20040159099; June 3, 2004). Final Act. 6‒10.3
Claims 9 and 12 stand rejected under 35 U.S.C. § 103 as unpatentable
over AAPA, Kato, and Christal (US 5,875,403; Feb. 23, 1999). Final
Act. 10‒11.
ANALYSIS
Appellant argues the Examiner errs in rejecting claim 1 because the
combination of AAPA and Kato does not teach or suggest “based on the
identification that the event occurs, control the display to display an event
indicator generated by the mobile terminal while the video data is being
continuously transmitted to the external device for displaying the video data
on the external device without displaying the video data on the display.”
Appeal Br. 4‒7; Reply Br. 3‒7. In particular, Appellant argues AAPA
teaches a mobile terminal having TV-out functionality that outputs all video
content and event information to the external display and displays nothing
on the screen of the mobile terminal. Appeal Br. 6 (citing Spec. ¶ 5, Fig. 1).
Appellant argues Kato teaches a cellular phone outputting its own display to

2 The Examiner previously rejected claims 1‒6 on the grounds of non-
statutory obviousness-type double patenting. See April 9, 2018 Non-Final
Office Action at 2‒13. The Examiner later indicated that these rejections are
being held in abeyance. November 16, 2018 Final Office Action at 3.
Appellant filed a terminal disclaimer on June 29, 2020. See Reply Br. 3. We
do not reach the non-statutory obviousness-type double patenting rejection
because it was not listed in the Final Act. and because Appellant’s filing of a
terminal disclaimer renders the prior rejection moot.
3 Examiner’s Final Office Action (“Final Act.”), mailed October 3, 2019.
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a television such that when an incoming call is received, the cellular phone
and television both display the incoming call information. Appeal Br. 7.
Appellant argues that when taken together, these references do not
reasonably teach the disputed limitation. Id.
Appellant also argues the proposed combination of AAPA and Kato
would change the principle of operation of AAPA. Appeal Br. 7‒9; Reply
Br. 7‒9. In particular, Appellant argues the principle of operation of AAPA
is to display video content and event information on the television rather
than on the display of the mobile terminal. Reply Br. 8. Appellant argues
that modifying AAPA to add Kato’s display of incoming call information on
the screen of the mobile terminal would change AAPA’s principle of
operation by displaying information on both screens simultaneously. Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, AAPA teaches a mobile terminal that outputs video
data, including event information and video content, to an external display
device. Ans. 4 (citing Spec. Fig. 1). The Examiner finds, and we agree, Kato
teaches displaying an event indicator simultaneously on the screen of a
mobile terminal and on an external display device. Id.at 5 (citing Kato
Fig. 4). The Examiner finds an ordinarily skilled artisan would have
combined these teachings to add Kato’s simultaneous display of event
information on both devices to inform a user of a call event and provide
information of a caller to a user. Final Act. 7.
Appellant’s argument that the combination of the references does not
teach the disputed limitations is unpersuasive because Appellant has not
persuasively identified any particular limitation that the combination fails to
teach or any particular flaw in the Examiner’s explanation as to how the
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references would combine to teach the disputed limitations. Instead,
Appellant offers the conclusory assertion that the references do not combine
to teach the disputed limitations. See Appeal Br. 4‒7; Reply Br. 3‒7; see
also Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 (BPAI Aug. 10,
2009) (informative) (“[W]e find that the Examiner has made extensive
specific fact finding . . . with respect to each of the argued claims.
Appellants’ argument . . . repeatedly restates elements of the claim language
and simply argues that the elements are missing from the reference.
However, Appellants do not present any arguments to explain why the
Examiner’s explicit fact finding is in error.”).
Appellant’s argument that the Examiner’s proposed combination
changes the principle of operation of AAPA is unpersuasive because
Appellant’s identification of the principle of operation of AAPA is too
narrow. That is, Appellant argues the principle of operation of AAPA is to
display video content and event information on the television rather than on
the display of the mobile terminal. Reply Br. 8. However, we find the
principle of operation to be broader—specifically, the principle of operation
of AAPA is to output information from a mobile phone, which has a small
screen, to an external device with a larger screen, allowing more users to
watch the content simultaneously on the larger screen. See Spec. ¶ 4. Thus,
modifying AAPA to allow for simultaneous display of certain information
on both screens does not change the principle of operation of AAPA.
For these reasons, we sustain the obviousness rejection of claim 1. We
also sustain the obviousness rejection of independent claim 4, which
Appellant argues is patentable for the same reasons. See Appeal Br. 9‒10.
Appellant also argues the Examiner errs in rejecting claims 2, 3, and 5‒12,
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stating “these claims recite additional features which are not disclosed, or
even suggested, by the cited references taken either alone or in
combination.” Id. at 10. However, as stated by the Federal Circuit, Rule
41.37 “require[s] more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Accordingly, we also sustain the obviousness rejections of
claims 2, 3, and 5‒12.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1‒8, 10, 11 103 AAPA, Kato 1‒8, 10, 11
9, 12 103 AAPA, Kato,
Christal
9, 12
Overall
Outcome
1‒12

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