11377365 (P.T.A.B. Sep. 26, 2013)

Ex Parte Cho et al

Patent Trial and Appeal BoardSep 26, 2013

11377365 (P.T.A.B. Sep. 26, 2013)

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. 11/377,365 03/17/2006 Hee-Jeong Cho 50520 5902 1609 7590 09/26/2013 ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P. 1300 19TH STREET, N.W. SUITE 600 WASHINGTON,, DC 20036 EXAMINER MIAH, LITON ART UNIT PAPER NUMBER 2642 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 HEE-JEONG CHO, KYOUNG-AE LIM, and SEUNG-CHUL CHOI 1 ____________________ Appeal 2011-003170 Application 11/377,365 Technology Center 2600 ____________________ Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-5, 8, 10, and 12-16. Appellants have previously canceled claims 6, 7, 9, and 11. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the rejection of claims 1-5, 8, 10, and 12-16, and enter a new ground of rejection of claims 1 and 10 under 37 C.F.R. § 41.50(b). 1 The Real Party in Interest is Samsung Electronics Co., Ltd. App. Br. 2. Appeal 2011-003170 Application 11/377,365 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention relates to a mobile communication terminal method and apparatus and, more particularly, to a method and apparatus for displaying call information in a mobile communication terminal. Spec. ¶ [0002] (“Field of the Invention”). Exemplary Claim Claim 1 is an exemplary claim representing an aspect of the invention which we reproduce below (emphasis added): 1. A method of displaying call information in a mobile communication terminal, the method comprising: when a call occurs, updating and storing the call information according to a type of the occurred call; when a user requests a call information, generating a list of all types of the stored call information and displaying the list; and displaying detailed lists of the call information included in the list according to a key input by the user. 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed June 18, 2010); Examiner’s Answer (“Ans.,” mailed Aug. 30, 2010); Final Office Action (“FOA,” mailed Dec. 31, 2009); and the original Specification (“Spec.,” filed Mar. 17, 2006). Appeal 2011-003170 Application 11/377,365 3 Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal: Maguire U.S. 2005/0130631 A1 Jun. 16, 2005 Hamanaga U.S. 2006/0025112 A1 Feb. 2, 2006 Rejections on Appeal 3 1. Claims 1-4, 8, 10, and 12-16 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Hamanaga. Ans. 3. 2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hamanaga and Maguire. Ans. 6. ISSUE Appellants argue (App. Br. 9-13) that the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by Hamanaga is in error. These contentions present us with the following issue: Did the Examiner err in finding that Hamanaga discloses the limitation of “when a user requests a call information, generating a list of all types of the stored call information and displaying the list,” as recited in claim 1? 3 We note that Appellants only present arguments directed to the anticipation rejection of independent claims 1 and 10. App. Br. 8. Appeal 2011-003170 Application 11/377,365 4 ANALYSIS We agree with Appellants’ conclusions with respect to claim 1, and we disagree with (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellants contend Hamanaga teaches “[t]he user wishing to make a phone call presses the incoming/outgoing call history button 153 to cause the incoming call history list as shown in FIG. 12 to be displayed on the screen 12.” App. Br. 10 (quoting Hamanaga ¶ [0052]). “Clearly, as taught by Hamanaga, only an incoming call history list is displayed upon a user pressing the incoming/outgoing call history button.” App. Br. 10. In response, the Examiner concludes that Hamanaga implicitly discloses that “incoming/outgoing call history button will display a list of incoming/outgoing call[s] . . . [and that] it is implicit that the . . . call history is to be displayed . . . upon request[] for the call history information.” Ans. 7 (citing Hamanaga ¶ [0035] and Fig. 3 (emphasis omitted)). We disagree with the Examiner’s conclusions regarding any implicit disclosure in Hamanaga and find that, while Hamanaga discloses storing incoming and outgoing call history (see Hamanaga ¶¶ [0035] and [0041]; Fig. 3), Hamanaga does not explicitly disclose displaying the history of both (i.e., “all”) incoming and outgoing calls. Appeal 2011-003170 Application 11/377,365 5 Accordingly, Appellants have provided sufficient evidence or argument to persuade us of reversible error in the Examiner’s characterization of the cited art and related claim construction. Therefore, we cannot sustain the Examiner’s anticipation rejection of independent claim 1. For similar reasons, we cannot sustain the Examiner’s anticipation rejection of independent claim 10 and dependent claims 2-4, 8, and 12-16, all rejected on the same basis as independent claim 1. § 103(a) Rejection of Claim 5 For the same reason as discussed above with respect to independent claim 1, we cannot sustain the unpatentability rejection of dependent claim 5 over the combination of Hamanaga and Maguire. NEW GROUND OF REJECTION 35 U.S.C. § 103(a) – Unpatentability Rejection: Claims 1 and 10 We enter a new ground of rejection for claims 1 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Hamanaga. Claim 1 recites, in pertinent part, “when a user requests a call information, generating a list of all types of the stored call information and displaying the list . . . .” We interpret the recitation in independent claim 1 of “all types of the stored call information” to include dialed calls and received calls. 4 Claim 10 recites this limitation in commensurate form. 4 We find that “received calls” included both missed calls and completed incoming calls, with missed calls being interpreted as a subset of received calls. See Spec. ¶ [0029]. Appeal 2011-003170 Application 11/377,365 6 We agree with the Examiner’s analysis of Hamanaga (Ans. 3 and 7), except as noted below with respect to “displaying the list [of all types of the stored call information].” We find that, since Hamanaga teaches storing call information for both dialed calls and received calls, it would have been obvious to a person of ordinary skill in the art at the time of the invention to display a list of all types of stored call information. We find that such display of both received calls and dialed calls (i.e., “all types”) would have only involved routine skill in the art. Further in this regard, we note that Hamanaga Fig. 3 teaches incoming/outgoing call history storing and notification functions and, while outgoing calls are not explicitly disclosed as being displayed in Hamanaga, Hamanaga clearly teaches [t]he history storing section is operable to store the history information generated by the history generation section. The history notification section is operable to notify to a user of the mobile terminal the related information contained in the history information, in response to an incoming or outgoing call from or to the telephone number contained in the history information stored in the history storing section. Hamanaga ¶ [0007]. Thus, we find that Hamanaga provides the technical means to store all types of call information. Accordingly, a person with skill in the art would be motivated to display more than just incoming calls in Hamanaga in order Appeal 2011-003170 Application 11/377,365 7 to provide more information to the user, information which is already stored and readily available, according to the teachings of Hamanaga cited above. 5 Since the Patent Trial and Appeal Board is a review body, rather than a place of initial examination, we have not reviewed claims 2-5, 8, and 12- 16 to the extent necessary to determine whether Hamanaga, either alone or in combination with any other prior art reference, renders any of these claims obvious. We leave it to the Examiner to determine the appropriateness of any further rejections of dependent claims 2-5, 8, and 12- 16 under 35 U.S.C. § 103(a). CONCLUSIONS (1) The Examiner erred with respect to the anticipation rejection of claims 1-4, 8, 10, and 12-16 under 35 U.S.C. § 102(e) over Hamanaga and the rejection is not sustained. (2) The Examiner erred with respect to the unpatentability rejection of claim 5 under 35 U.S.C. § 103(a) over the combination of Hamanaga and Maguire, and the rejection is not sustained. (3) Claims 1 and 10 are newly-rejected under 35 U.S.C. § 103(a) as being unpatentable over Hamanaga. 5 Although not dispositive to the new ground of rejection, we also note that Maguire teaches or suggests displaying communications event history, including both sent and received telephone calls. See Maguire Abstract; and ¶¶ [0004], [0014] and [0028]. Appeal 2011-003170 Application 11/377,365 8 DECISION The decision of the Examiner to reject claims 1-4, 8, 10, and 12-16 is reversed. This decision contains a new ground of rejection of independent claims 1 and 10 under 35 U.S.C. § 103(a) entered pursuant to our authority under 37 C.F.R. § 41.50(b) which provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2011-003170 Application 11/377,365 9 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) (2011). REVERSED 37 C.F.R. § 41.50(b) ELD