Ex Parte Hong

Board of Patent Appeals and Interferences

Aug 29, 2008

10038312 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUN-IL HONG
____________

Appeal 2008-1049
Application 10/038,312
Technology Center 2100
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Decided: August 29, 2008
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Before JAMES D. THOMAS, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2008-1049
Application 10/038,312

As best representative of the disclosed and claimed invention,
independent claim 1 is reproduced below:
1. A method of providing a user interface for invoking a plurality of
functions related to an individual state indicator in a portable terminal
displaying a plurality of individual state indicators, which indicates a state
change, the method comprising the steps of:

registering one of the plurality of functions related to the individual
state indicator corresponding to a current status change when the stated
change to be reflected in the representation of the individual state indicator,
occurs;

altering the state representation of the individual state indicator; and

invoking the registered function upon receipt of a user input for
designating the individual state indicator.

The following references are relied on by the Examiner:
Horwitz US 5,774,866 June 30, 1998
Pinard US 5,898,432 Apr. 27, 1999
Claims 1 through 5 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the Examiner relies upon Pinard view of Horwitz.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for Appellant’s positions, and
to the Answer for the Examiner’s positions.

OPINION
For the reasons set forth by the Examiner in the Answer, as
embellished upon here, we sustain the rejection of claims 1 through 5 under
35 U.S.C. § 103. The top of page 2 of the Brief indicates that claims 1
through 3 fall as a group. Therefore, we consider independent claim 1 as
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Appeal 2008-1049
Application 10/038,312

representative of all of them. Separate groups apply as to independent
claims 4 and 5. As best represented by the statement at the middle of page 3
of the Reply Brief, Appellant does not argue that Pinard and Horwitz are not
properly combinable within 35 U.S.C. § 103, but only that the combination
does not teach the subject matter of the argued claims on appeal. With this
view, we strongly disagree.
According to Pinard, a single cursor 23 in figure 32 has different
changeable forms or representations as icons 25 in figures 3 through 5 and
correspondingly different functions that may be invoked by the user for each
of them. The Examiner’s best statement of the Examiner’s views with
respect to Pinard appears at page 11 of the Answer.
Because we agree with the Examiner’s Answer analysis of the
teaching value of both references an expressed at page 14 of the Answer, we
reproduce them here:
Although Pinard doesn’t explicitly teach that the user input is
selection of the indicator, Horwitz teaches the subject limitation.
Similar to Pinard, Horwitz also teaches the display of an indicator
upon occurrence of an event, i.e. the display of the alarm status
flashing icon when conflicting search results are found, as recited in
column 21, lines 1-15. Horwitz further teaches that the registered
function of the indicator is invoked upon user selection of the
indicator, i.e. the registered function of displaying selected
information associated with the alarm status flashing icon, i.e. a list of
potential matters which produced the conflicts, is invoked if the user
selects the alarm status flashing icon, as recited in column 21, lines 1-
15 and 26-30. Therefore, since Pinard teaches invoking one of a
plurality of registered functions of an indicator upon receipt of a user
input and Horwitz teaches the invocation of the function of the state
indicator upon designation of the indicator, the combination of Pinard
and Horwitz teaches invoking one of a plurality of registered
functions of an indicator upon user input designating the indicator.
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Appeal 2008-1049
Application 10/038,312

With respect to these remarks, it is significant to note that the artisan
may understand Pinard as teaching a user input is the selection of the
indicator according to the discussion at column 6, lines 6 through 11. Here a
respective user response for each of the showings of the cursor in figures 3
through 5 effectively invokes the change of the cursor back to its original
form as representative as an arrow in figure 2.
We therefore do not agree with Appellant’s continued urging at pages
2 and 3 of the Reply Brief that the combination of Pinard and Horwitz
discloses only a cursor whose form changes but whose function remains
fixed or unchanged. The Appellant’s discussion here also takes a limited
view of the teaching value of Pinard by only looking at its abstract. From
our perspective, the teaching value of the combination of references to an
artisan is best represented by the Examiner’s views and not Appellant’s
limited views as expressed in the Brief and Reply Brief.
The artisan would understand that the generic state indicator of
representative independent claim 1, the specific message state indicator in
independent claim 4 and the specific alarm state indicator of independent
claim 5 are represented among the teachings and illustrations in Pinard and
Horwitz as outlined by the Examiner. These are also indicated in the
discussion of Appellant’s views with respect to the prior art at Specification
page 1, line 19 through the discussion before the Summary of the Invention
at Specification page 3. The actual specific types of indicators are discussed
with respect to prior art figure 1 and the discussion beginning at page 1
through the top of page 2.
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Appeal 2008-1049
Application 10/038,312

Significantly, the discussion of and showing in Appellant’s admitted
prior art figure 2 at pages 2 and 3 of the Specification as filed appear to us to
buttress the Examiner’s positions with respect to Pinard and Horwitz, since
it is known in the art that state changes can occur, and even new state
indicators be produced with respect to stated indicators illustrated in
Appellant’s prior art figure 1. The discussion on these pages indicates that
the user may indirectly invoke a function or directly invoke a function
associated with the changed state indicator, as claimed. The ability of the
user to directly invoke an intended function as expressed in the Summary of
the Invention at page 3, lines 21 through 26, and at Specification page 10,
lines 13 through 19, is not only known in the discussion associated with the
admitted prior art at Specification pages 2 and 3, but it also is not recited in
the claims on appeal.
In view of the foregoing, we have sustained the rejection of claims 1
through 5 under 35 U.S.C. § 103 since Appellant has not presented
persuasive arguments of any errors in the Examiner’s positions. Therefore,
the decision of the Examiner in affirmed.

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Appeal 2008-1049
Application 10/038,312

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.
§ 1.136(a)(1)(iv).
AFFIRMED

pgc

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