11299898 (P.T.A.B. Sep. 11, 2013)

Ex Parte Choe et al

Patent Trial and Appeal BoardSep 11, 2013

11299898 (P.T.A.B. Sep. 11, 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. 11/299,898 12/13/2005 Gwang-Woo Choe 50131 8821 1609 7590 09/11/2013 ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P. 1300 19TH STREET, N.W. SUITE 600 WASHINGTON,, DC 20036 EXAMINER AKINYEMI, AJIBOLA A ART UNIT PAPER NUMBER 2649 MAIL DATE DELIVERY MODE 09/11/2013 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 GWANG-WOO CHOE, JONG-SANG WON, and HO-JIN KIM ____________________ Appeal 2011-004088 Application 11/299,898 Technology Center 2600 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004088 Application 11/299,898 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim An understanding of the invention can be derived from a reading of exemplary method claim 1, which is reproduced below with emphases added: 1. A method of displaying a menu screen in a mobile communication terminal, the method comprising the steps of: dividing a display screen into a predetermined number of areas including a first area and at least two second areas to display a plurality of menu items in response to a user's menu screen display request; generating a plurality of groups of menu items based on the number of divided screen areas; and displaying the menu items of a first group in the first area and the menu items of a second group in at least one of the at least two second areas. The Examiner’s Rejection The Examiner rejected claims 1-20 under 35 U.S.C. § 102(b) as being anticipated by Smith (US 6,333,973 B1). Ans. 3-8. PRINCIPAL ISSUE ON APPEAL Appeal 2011-004088 Application 11/299,898 3 Based on Appellants’ arguments in the briefs, the following principal issue is presented on appeal:1 Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 102(b) as being anticipated by Smith because Smith fails to disclose a method of displaying a menu screen including the steps of dividing a display screen into at least two menu item display areas and “generating a plurality of groups of menu items based on the number of divided screen areas” as recited in independent claim 1, and as similarly recited in remaining independent claims 10 and 19? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 5-7) and the Reply Brief (Reply Br. 4-8) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 3-8), as well as the Advisory Action mailed February 3, 2010, and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellants’ Appeal Brief (Ans. 9). We agree with the Examiner (Ans. 9) that Smith’s Figure 6 is encompassed by claims 1, 10, and 19, especially as supported by the Examiner’s marked up version of Figure 6 found at page 8 of the 1 Appellants only present arguments on the merits with regard to independent claims 1, 10, and 19, and no separate patentability arguments are presented for dependent claims 2-9, 11-18, and 20 (App. Br. 7; Reply Br. 6-7). Accordingly, we will only address independent claims 1, 10, and 19 in our analysis. Appeal 2011-004088 Application 11/299,898 4 Answer. Appellants’ argument (App. Br. 6) that Smith’s Figure 6 fails to generate a plurality of groups of menu items based on a number of divided screen areas is not persuasive, because the broadest reasonable interpretation of claims 1, 10, and 19, in light of Appellants’ Specification, encompasses what is shown in Smith’s Figure 6 for at least the reasons provided by the Examiner (Ans. 8-9). Appellants’ argument (Reply Br. 6) that “menu items” cannot be phone numbers is not persuasive, because (i) the claims as supported by the written description found in the Specification do not support such a negative limitation, and (ii) the term “menu item” can be reasonably understood by one of ordinary skill in the art of displaying information to include numeric data such as telephone numbers, text, and/or icons. Therefore, we sustain the anticipation rejection of claims 1, 10, and 19, as well as claims 2-9, 11-18, and 20 depending respectively therefrom. CONCLUSION The Examiner did not err in rejecting claims 1-20 under 35 U.S.C. § 102(b) as being anticipated by Smith because Smith discloses a method of displaying a menu screen including the steps of dividing a display screen into at least two menu item display areas and “generating a plurality of groups of menu items based on the number of divided screen areas” as recited in independent claim 1, and as similarly recited in remaining independent claims 10 and 19. Appeal 2011-004088 Application 11/299,898 5 DECISION2 The Examiner’s rejection of claims 1-20 is affirmed. 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 Vsh 2 We have decided the appeal before us. However, should there be further prosecution of claims 19 and 20, the Examiner should consider whether or not claims 19 and 20 recite a computer program (i.e., software) per se, or are embodied on a transitory computer-readable medium such as a carrier wave. Notably, claims 19 and 20 recite a computer program embodied on a computer-readable medium. Appellants’ Figure 2 shows a memory 150 that is described in the Specification from page 5, line 28 to page 6, line 7 as containing ROM and RAM to run programs. However, the Specification is silent as to whether the “computer-readable medium” (claim 19) may comprise a carrier wave or signal, or may comprise a hardware element such as a disk drive or memory.