Samsung Electronics Co., Ltd.Download PDFPatent Trials and Appeals BoardDec 1, 20212020005162 (P.T.A.B. Dec. 1, 2021) Copy Citation 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. Appeal 2020-005162 Application 15/864,690 2 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. Appeal 2020-005162 Application 15/864,690 3 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. Appeal 2020-005162 Application 15/864,690 4 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 Appeal 2020-005162 Application 15/864,690 5 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, Appeal 2020-005162 Application 15/864,690 6 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 Copy with citationCopy as parenthetical citation