Ex Parte AhnDownload PDFPatent Trial and Appeal BoardSep 25, 201311856535 (P.T.A.B. Sep. 25, 2013) 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. 11/856,535 09/17/2007 Jun-Sik Ahn 1235-402 9191 66547 7590 09/26/2013 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER TILAHUN, ALAZAR ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 09/26/2013 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 JUN-SIK AHN ____________________ Appeal 2011-010394 Application 11/856,535 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2011-010394 Application 11/856,535 2 STATEMENT OF THE CASE Appellant’s claimed invention is directed to a mobile terminal for storing relation information on stored contents in channel information when receiving and storing Digital Multimedia Broadcasting (DMB) (Spec.1:14- 17). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for storing Digital Multimedia Broadcasting (DMB) in a mobile terminal, the method comprising: searching, upon receipt of a request for storing contents, received channel information for contents relation information that is related to the contents; and storing the contents and the searched contents relation information. REFERENCE and REJECTION The Examiner rejected claims 1-16 under 35 U.S.C. § 102(e) as anticipated by Mueller (US Pat. App. Pub. 2007/0111717 A1). ANALYSIS The Examiner finds Mueller teaches all of Appellant’s claimed steps (Ans.3-5). We agree with and adopt the Examiner’s findings as our own. Particularly, claim 1 requires two steps: searching and storing. The remainder of the claim recites non-functional descriptive material. That is. Appellant’s claims merely recite searching for data, albeit a specific type of data (contents relation information), which does not change or affect the way the steps are performed. The mere capability of searching, without further Appeal 2011-010394 Application 11/856,535 3 limitation, does not recite using the information searched to perform any specific function, and the step of storing does not further define the claimed method as nothing is done with the data after storing. Therefore, the claimed method steps include non-functional descriptive material. The informational content of such nonfunctional descriptive material is not entitled to weight in the patentability analysis. Because claim 1 does not recite using the searched information to perform any specific function, the searching step recited in claim 1 is not given patentable weight, and Appellant’s arguments directed to this feature are unavailing (see App. Br. 5-8). Even, assuming arguendo the limitations may be given weight, we agree with the Examiner claim 1 is broad as written and Mueller teaches searching upon receipt of a request and then storing contents (allows a user recording options) (Ans. 12, 16). Given Appellant has not provided a definition of “contents relation information” in the Specification other than “contents relation information” relates to “contents,” we agree with the Examiner’s reasonable and not overly broad interpretation. Therefore, we conclude the Examiner did not err in finding independent claims 1, 5, 9, and 13, and claims 2, 3, 6-8, 10-12, 15, and 16, dependent therefrom and not separately argued, anticipated by Mueller. With respect to separately argued claim 4, the Examiner has not provided a one-to-one mapping of the claimed steps. We, therefore, must resort to speculation, as the mapping is unclear with respect to claim 4’s recited sequence of steps, which we decline to do. Thus, we reverse the Examiner’s anticipation rejection of claim 4. Appeal 2011-010394 Application 11/856,535 4 DECISION The Examiner’s decision rejecting claims 1-3 and 5-16 under 35 U.S.C. § 102(e) is affirmed. The Examiner’s decision rejecting claim 4 under 35 U.S.C. § 102(e) is reversed. 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). AFFIRMED-IN-PART Vsh Copy with citationCopy as parenthetical citation