Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Jan 14, 2022

2020005473 (P.T.A.B. Jan. 14, 2022)

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. 14/635,494 03/02/2015 Jeom-jin CHANG 0505-0019-2 3285 68103 7590 01/14/2022 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER BROWN, ANTHONY D ART UNIT PAPER NUMBER 2433 NOTIFICATION DATE DELIVERY MODE 01/14/2022 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 JEOM-JIN CHANG Appeal 2020-005473 Application 14/635,494 Technology Center 2400 Before JOSEPH L. DIXON, MARC S. HOFF, and JOYCE CRAIG, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-4 and 7-22. Claims 5 and 6 are canceled. The Examiner has indicated claim 22 as objected to and has withdrawn the rejection of the claim. 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(a) (2019). Appellant identifies the real party in interest as Samsung Electronics Co., Ltd. Appeal Br. 2. Appeal 2020-005473 Application 14/635,494 2 CLAIMED SUBJECT MATTER The claims are directed to providing a client computer connected to a corresponding host computer by a network, which can prevent a corresponding client system from being abused by a hacked or disclosed password by limiting operation of the client system as necessary, to thereby prevent information and data from being leaked. Spec. ¶ 7. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus comprising: communication circuitry; a memory; and a processor operatively coupled with the communication circuitry, the processor configured to: receive, via the communication circuitry, an instruction corresponding to a locking of the apparatus and a password associated with the locking from an electronic device external to the apparatus while the apparatus is turned on, display a user interface (UI) on a display of the apparatus to inform a user of the apparatus that the instruction corresponding to the locking has been received, set the password associated with the locking as at least one portion of authentication information, the setting including storing the received password in the memory, and change an operation state related to the apparatus from an unlocked state to a locked state based at least in part on the receiving of the instruction, the locked state associated with the password. Appeal Br. 10 (Claims App.). Appeal 2020-005473 Application 14/635,494 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Stevens et al. US 2003/0048174 A1 Mar. 13, 2003 Chiu et al. US 2003/0088633 A1 May 8, 2003 Kang US 2005/0003799 A1 Jan. 6, 2005 REJECTIONS Claims 1-4, 7, 8, 11-14, and 16-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stevens and in view of Chiu. Claims 9, 10, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stevens in view of Chiu and Kang. OPINION 35 U.S.C. § 103(a) Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In reviewing the record here, we are not persuaded that the Examiner’s rejections are based on improper hindsight because Appellant does not point to any evidence of record that shows combining the teachings of the cited references in the manner suggested by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” or Appeal 2020-005473 Application 14/635,494 4 would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). We are bound by the controlling guidance of our reviewing court: “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“[T]he name of the game is the claim.”) (emphasis added). “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We note claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability context, claims are to be given their broadest reasonable interpretations[,] . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). “It is well-established that the Board is free to affirm an examiner’s rejection so long as appellants have had a fair opportunity to react to the thrust of the rejection.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) Appeal 2020-005473 Application 14/635,494 5 (quotations marks and citations omitted). We find that the Examiner has addressed all the issues involved in this appeal, particularly in light of the fact that Appellant has failed to specifically identify errors in the Examiner’s rejections. Accordingly, we adopt the Examiner’s factual findings, reasoning, and conclusions (Final Act. 6-16; Ans. 3-16) as our own. See, e.g., In re Paulsen, 30 F.3d 1475, 1478 n.6 (Fed. Cir. 1994). With respect to independent claims 1, 11, 14, and 21, Appellant does not set forth separate arguments for patentability. Appeal Br. 7. As a result, we exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv) and group independent claims and select independent claim 1 as the representative claim for the group and will address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv). Arguments which Appellant could have made but did not make in the Brief are deemed to be waived/forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). With regard to independent claim 1, we agree with the Examiner and find Appellant’s arguments do not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. Appellant argues that the Examiner’s combination of Stevens and Chiu does not disclose all of the limitations of claims 1, 11, 14, and 21 where, the combination does not disclose a processor configured to “display a user interface (UI) on a display to inform a user that the instruction corresponding to the locking has been received.” Appeal Br. 4. Appellant argues that Stevens describes the locking operation in paragraph 18 that discloses the process to lock the password-protected electronic device where the user activates the function on the electronic device. Appeal Br. 5-6. Appellant argues that the electronic device Appeal 2020-005473 Application 14/635,494 6 transmits the password to the password-protected electronic device and after confirming that the password is correct, the password protected electronic device enters the locked state, but Stevens fails to disclose or even suggest that the operator interface indicates to the user that the locking instruction has been received. Appeal Br. 5-6. Appellant argues that the Examiner fails to explain the broadest reasonable interpretation of the claim limitation as it applies to the Stevens reference. Appeal Br. 6. Appellant also argues that a person of ordinary skill looking to improve upon Stevens’s invention would have had no reason to consider Chiu’s disclosure. It is not obvious to combine references where the references are directed toward different fields of endeavor and the references are directed toward different problems. In this case, Stevens is directed toward a small electronic device such as a smartwatch. In contrast, Chiu is directed toward an enterprise environment having dozens of devices. Thus, while Stevens is directed toward a home environment and communication between two devices, Chiu is directed toward an enterprise environment in which one server controls multiple clients. The references are thus directed toward different fields of endeavor. A person of ordinary skill looking to improve upon a small device such as a smartwatch would have had no reason to review a disclosure relating to managing an enterprise system. Moreover, Stevens and Chiu address different problems. Stevens addresses a problem of a user forgetting the password to a password protected electronic device. In contrast, Chiu addresses a problem occurring in the enterprise context, where certain operations can only be performed by a network operator, instead of by a corporate IT department (Chiu, paragraph 6). The problems of managing a network involving numerous devices and users would not apply to a smartwatch, which generally only has one user. The person of ordinary skill looking to improve Appeal 2020-005473 Application 14/635,494 7 upon Stevens’s design thus would not have had a reason to consider Chiu’s disclosure. Appeal Br. 6-7. The Examiner responds to Appellant’s arguments and attempts to further buttress the showing of obviousness in the Final Action. Ans. 15-16. The Examiner finds that Stevens and Chiu discloses display a user interface (UI) on a display to inform a user of the apparatus that the instruction corresponding to the locking has been received. Examiner points out that Stevens discloses if there is a match (between passwords), then the password protected electronic device 104 locks itself so that the user is not able to use the password protected electronic device 104. Otherwise, if there is not a match, then the password protected electronic device 104 does not lock itself and the user is still able to use the password protected electronic device 104. It should be understood that the first password 106 and the second password 120 can be the same such that if the password protected electronic device 104 receives the first password 106 its state can change from locked-to- unlocked or unlocked-to-locked (Paragraph 18). Even if Stevens does not specifically disclose displaying a user interface (UI) on a display to inform a user of the apparatus that the instruction corresponding to the locking has been received, Chiu further covers the limitation. Moreover, Chiu discloses a remote device disable control messages, password set, password reset and device lock remote control messages may also cause predetermined information or information included in the control message to be displayed on a device display screen (Paragraph 109). Therefore, Examiner asserts that the “device lock remote control messages” taught in Chiu correlates to the “informing a user of the apparatus that the instruction corresponding to the locking has been received” in Appellant[’]s invention. Ans. 15-16. Appeal 2020-005473 Application 14/635,494 8 In the Reply Brief, Appellant argues paragraph 109 of the Chiu reference does not disclose or suggest any particular message should be displayed, and “Chiu provides no guidance to the person of ordinary skill as to a message to be displayed, for example, in response to receiving the instruction corresponding to the locking.” Reply Br. 2 (emphasis added). Appellant also argues that the mere fact that references can be combined is insufficient to show obviousness. Reply Br. 2. We note that Appellant’s argument is not commensurate with the language of independent claim 1 which does not recite “in response to.” Appellant further argues that the Examiner provides no reason why the person of ordinary skill would modify Stevens as the Examiner proposes because the person of ordinary skill would not have considered Chiu’s disclosure when looking to improve upon Stevens’ invention because the references are related only on a superficial level. Reply Br. 3. Appellant also argues that the references are not analogous art to each other because the references are directed toward different fields of endeavor and the references are directed toward different problems. Reply Br. 3. Appellant argues that it is clear that the problems to be solved by Stevens is entirely unrelated to the problem to be solved by Chiu where Stevens is directed toward a problem arising in the context of a user’s personal devices, while Chiu is directed toward a problem arising in a network context involving users, network operators, and corporate IT departments. Reply Br. 3. Appellant also argues that Stevens and Chiu are directed toward different fields of endeavor from each other involving different problems and different solutions, and the Examiner did not respond to these arguments Appeal 2020-005473 Application 14/635,494 9 in the Examiner’s Answer. Reply Br. 3. Appellant further argues that the Examiner did not present any rebuttal evidence or argument in the Examiner’s Answer where the Examiner had the opportunity to present additional evidence. Reply Br. 3-4. We disagree with Appellant and find that the Examiner has made appropriate factual findings and set forth rational underpinning to support the conclusion of obviousness. We find that Appellant has not specifically addressed the Examiner’s stated motivation for the combination of the Stevens and Chiu references. As a result, Appellant has not shown error in the Examiner’s factual findings or conclusion of obviousness. In the absence of sufficient persuasive evidence or argument to the contrary, we find the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness and are unpersuaded by Appellant’s contention that the Examiner’s combination of references is inadequate or improper. Accordingly, Appellant has not shown error in the Examiner’s factual findings or conclusion of obviousness, and we sustain the rejection of claim 1. Based upon the totality of the teachings and the broad scope of the claims, we determine that the Examiner has provided sufficient factual findings and some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. As a result, we find Appellant’s arguments to be unpersuasive of error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. Appellant’s argument is just that the prior art does “display a user interface (UI) on a display of the apparatus to inform a user of the apparatus that the instruction corresponding to the locking has been received.” See Appeal 2020-005473 Application 14/635,494 10 generally Appeal Br. 4-7; Reply Br. 2-4. We disagree with Appellant’s argument and find that the prior art references each teach and suggest conveying locking conditions of computers and presenting graphical user interfaces thereto. Moreover, we find that Appellant’s claim language does not distinguish the way that the claimed invention receives or specifically conveys the step of receiving data or displaying received data is different than in the prior art. We disagree with Appellant’s general argument, and we agree with the Examiner that the Stevens reference discloses an indication that the device has been locked which indicates that a lock instruction has been received by the user device. Although the graphical user interface is not specific to the reception or the trigger for the display of the message, under the broadest reasonable interpretation of the claim language, we agree with the Examiner that the Stevens reference teaches or fairly suggests the claimed “display a user interface (UI) on a display of the apparatus to inform a user of the apparatus that the instruction corresponding to the locking has been received.” The Examiner further finds that even if the Stevens reference does not specifically disclose displaying a user interface on a display to inform a user of the apparatus that the instruction corresponding to the locking has been received, the Chiu reference further teaches or suggests the claim limitation. Ans 16. The Examiner finds that the Chiu reference discloses a remote device disable control messages, password set, password reset and device lock remote control messages may also cause predetermined information or information included in the control message to be displayed on a device display screen. Ans 16; see Chiu ¶ 109. The Examiner finds that the Appeal 2020-005473 Application 14/635,494 11 “device lock remote control messages” taught in the Chiu reference correlates to “informing a user of the apparatus that the instruction corresponding to the locking has been received.” Ans 16. We further agree with the Examiner that the Chiu reference discloses or suggests “informing a user of the apparatus that the instruction corresponding to the locking has been received.” We further agree with the Examiner that paragraph 109 of the Chiu reference discloses “[a]s described above for remote device disable control messages, . . . device lock remote control messages may also cause predetermined information . . . to be displayed on a device display screen.” We agree with the Examiner that the display of predetermined information would “inform a user of the apparatus that the instruction corresponding to the locking has been received,” as claimed. We agree with the Examiner that the Chiu reference suggests disable control messages because information is displayed which informs users that messages were received and processed. As a result, we agree with the Examiner that the Chiu reference teaches or fairly suggests the claim limitation. Additionally, we find that paragraphs 105-107 further disclose that device functions can be remotely disabled, and “an appropriate message may be displayed on the device,” and may include password resets and lock conditions. See generally Final Act. 5. With regards to Appellant’s arguments directed to analogous art, we find Appellant generally opines as to the broad field of endeavor for each of the Stevens and Chiu references, but Appellant does not address the Examiner’s line of reasoning for the combination of teachings. See Final Act. 5. Appeal 2020-005473 Application 14/635,494 12 More specifically, prior art is analogous art to the claimed invention if either (1) the art is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the art is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (emphasis added); see also Bigio, 381 F.3d at 1325 (explaining that the first test “requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.”). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quotation marks and citation omitted). We find that Appellant provides no detailed analysis of the prior art references as it applies to the claimed invention. We note that the claimed invention is directed to a broad field of endeavor of an “apparatus” comprising limited structural limitations of “communication circuitry; a memory; and a processor operatively coupled with the communication circuitry” and “a display.” We find Appellant’s general argument regarding the combination and a comparison of the two general fields of endeavor of the two prior art references does not show a lack of analogous art or problem addressed in the claimed invention or the field of the inventor’s endeavor. Appeal 2020-005473 Application 14/635,494 13 As a result, we find Appellant’s arguments to be unpersuasive of error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1, and we sustain the rejection of independent claim 1. Appellant has not set forth separate arguments for patentability of independent claims 11, 14, and 21 and has not set forth separate arguments for patentability of dependent claims 2-4, 7-10, 12, 13, and 15-20. Appeal Br. 7. As a result, we group these claims as falling with representative independent claim 1. Dependent claim 22 In response to Appellant’s argument (Appeal Br. 8), the Examiner has withdrawn the rejection of dependent 22 and as indicated that claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Ans. 17. Therefore, this issue is moot. CONCLUSION We sustain the Examiner’s obviousness rejections of claims 1-4 and 7-21. Appeal 2020-005473 Application 14/635,494 14 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7, 8, 11-14, 16- 21 103(a) Stevens, Chiu 1-4, 7, 8, 11-14, 16- 21 9, 10, 15 103(a) Stevens, Chiu, Kang 9, 10, 15 Overall Outcome 1-4, 7-21 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). See 37 C.F.R. § 41.50(f). AFFIRMED