Ex Parte Hong

Board of Patent Appeals and Interferences

Jun 27, 2011

10038312 (B.P.A.I. Jun. 27, 2011)

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.
10/038,312 11/09/2001 Jun-Il Hong 678-0625 7218
66547 7590 06/28/2011
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
LEE, TING ZHOU
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
06/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JUN-IL HONG
____________________

Appeal 2011-006276
Application 10/038,3121
Technology Center 2100
____________________

Before JAY P. LUCAS, THU A. DANG and CAROLYN D. THOMAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 5 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejections.

1 Application filed November 9, 2001. Appellant claims the benefit under
35 U.S.C. § 119 of Korea application 2000-70022, filed 11/23/00. The real
party in interest is Samsung Electronics Co., Ltd.
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Appellant’s invention relates to a user interface of a portable computer
where clicking a state indicator, such as a battery level indicator, performs a
function. In the words of Appellant:
A method of providing a user interface for
invoking a function related with a state indicator in
a portable terminal where an altered state
representation of the state indicator is displayed
when a predetermined change occurs in the state
representation of the state indicator is disclosed.
According to the method, the related function is
registered for the state indicator when a state
change to be reflected in the representation of the
state indicator occurs and the state representation
of the state indicator is altered. Upon receipt of a
user input for designating the state indicator, the
registered function is invoked.
(Abstract, Spec.14).
The following illustrates the claims on appeal:
Claim 1:
1. A method of providing a user interface
for invoking a plurality of functions registered to a
related individual state indicator in a portable
terminal displaying a plurality of individual state
indicators that indicate a change in a state of a
portable terminal operation, the method
comprising:

registering an initial function to the related
individual state indicator corresponding to an
initial state of the portable terminal operation, by
associating with the state indicator a task operation
module corresponding to the initial function;

registering a different function to the related
individual state indicator corresponding to a
current state change of the portable terminal
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operation, by associating with the state indicator a
task operation module corresponding to the
different function corresponding to the current
state change of the portable terminal operation,
when the change in state of the portable terminal
operation to be reflected in a state representation of
the related individual state indicator occurs;

altering the state representation of the
related individual state indicator corresponding to
the current state change of the portable terminal
operation; and

invoking the associated task operation
module corresponding to the registered different
function upon receipt of a user input selecting the
individual state indicator.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moon US 6,211,858 B1 Apr. 03, 2001
Cox US 6,462,760 B1 Oct. 08, 2002
(filed on May 26, 1999)

REJECTIONS
The Examiner rejects the claims as follows:

Claims 1 to 5 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Cox and Moon.

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether the references teach the selection of a state indicator to perform
functions as claimed.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a user interface in which a plurality of functions
can be performed by selection of state indicators, for example, those
displayed on a screen. (Spec. 1, ll. 14-16). Appellant describes state
indicators as follows: “A portable terminal generally displays
information about an operation state, received information, and the like
on a display such as an LCD (Liquid Crystal Display) panel. Most
commonly, an RSSI (Received Signal Strength Indicator), alarm setting,
arrival of an SMS (Short Message Service) message, a battery state, and
call reservation setting are displayed as unique images. These unique
images are called state indicators.” (Spec. 1, middle).
2. The following is Figure 1, indicating State Indicators:

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3. Reference numeral 108 in Figure 1 denotes setting of a vibration mode in
the portable terminal. (Spec. 1, l. 30).
4. The Cox and Moon references teach user interfaces with several of the
limitations in the claims.
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

But one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references. In re Young, 403 F.2d 754 (CCPA 1968).
Moreover, as set forth above, the test is not
whether a suggestion to use digital timing in a
cardiac pacer is found in Walsh (which was the
test applied by Dr. Cywinski), but rather what
Keller in view of Walsh and what Berkovits in
view of Walsh would have suggested to one of
ordinary skill in the art.
In re Keller, 642 F.2d 413, 426 (CCPA 1981)
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989), that “claims must be interpreted as broadly as their terms reasonably
allow.”
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“[O]ur cases recognize that the specification may reveal a special
definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor’s
lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en banc) (internal citations omitted).
To be his own lexicographer, a patentee must use a
“special definition of the term [that] is clearly
stated in the patent specification or file history.”
… The specification does not clearly convey
the patentee’s intent to appoint a special meaning
to the term . . . . Having concluded that the
patentee did not act as his own lexicographer in
this case by clearly defining a claim term, we must
determine the ordinary meaning of [the term] as
used in these claims to one of skill in the art in
light of the specification and prosecution history.
. . . .
Although there was no dictionary or treatise
definition introduced for [the term], there are . . .
prior art patents also related to [the subject matter]
which use the term. . . . This prior art use of the
term would further inform one of skill in the art as
to the common meaning of the term . . . .
Laryngeal Mask Company Ltd. v. Ambu A/S, 618 F.3d 1367, 1372, 1373
(Fed. Cir. 2010) (internal citations omitted).
ANALYSIS
Arguments with respect to the rejection
of claims 1 to 5
under 35 U.S.C. § 103

The Examiner has rejected the noted claims for being obvious over
Cox and Moon. The Appellant has demurred, raising a number of
contentions.
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In general, we endorse and adopt the responses of the Examiner to the
Appellant’s contentions. (Ans. 16 to 23). In so doing, however, we would
like to emphasize certain points.
Appellant argues that “the Examiner has failed to cite any prior art in
which a selection of a state indicator invokes a function.” (App. Br. 12, top).
Appellant concedes that Moon teaches state indicators. (App. Br. 10,
bottom). However, the Appellant argues that the state indicators in Moon
are not manually activated by a user to perform a function, as required by the
claims. (App. Br. 12, bottom). Though the Examiner has looked to the Cox
reference for the teaching of activating a state indicator. (Ans. 16,
§ A1), Appellant argues that these iconic buttons in Cox are not state
indicators, as “no state changes are used by Cox to change the appearance or
operation of an icon.” (App. Br. 11, second paragraph).
To resolve a proper interpretation of the terms “state indicators” in the
claims, we will consider the Specification, as the claims are to be read in the
light of the Specification. (See Phillips, cited above.) The Specification
dedicates a paragraph to explain what a state indicator is to be considered in
this application. (See FF #1 above.) In elaborating that definition, in the
following paragraph, the Specification points to a number of examples of
state indicators represented by icons, including #108 which “denotes setting
of a vibration mode.” (FF #3; Spec. 1, l. 30). Thus, it is clear that a state
indicator may express a mode of the device which describes what function
will be performed (vibrating or not vibrating) when a certain event occurs (a
call comes to the phone). We find that description directly applicable to the
buttons in Cox, where an icon that looks like a button has been relied upon
by the Examiner to teach a state indicator that is selected by user input.
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These buttons indicate what function will be performed when activated, and
thus the state of the machine.
The buttons in Cox can take on different functions, namely Find,
Replace, or Replace All depending on the mode that the user selects. (Cox,
Figs. 5A, 5B and 5C; Col 2, l. 10; Col 5, ll. 23-42). The iconic button
changes form and function depending on the mode that the user selects,
which also changes the function that the button will activate if it is selected
(clicked).
When viewed under this fair interpretation, which is consistent with
that of the Appellant’s Specification, we do not find Appellant’s argument
convincing. Indeed, we find that Cox does teach the selection of a state
indicator to invoke a function.
Appellant further argues that Moon fails to teach a state indicator
whose function changes on receipt of a user input selecting the state
indicator. (App. Br. 11, second paragraph from bottom). We are not
convinced by this argument, as it is the totality of the teaching of both
references that constitutes the cited prior art. (See In re Keller, cited above.)
As the Examiner mentions, “the primary reference Cox teaches this feature.”
(Ans. 18, bottom).
In summary, we do not find error in the Examiner’s rejection of claim
1.
Concerning the rejections of claims 2 to 5, we adopt and endorse the
responses of the Examiner. (Ans. 21 to 23).

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CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1 to 5.

DECISION
We affirm the Examiner’s rejection of claims 1 to 5.

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

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