Ex Parte Hwang et al

Patent Trial and Appeal Board

Jul 25, 2013

11503278 (P.T.A.B. Jul. 25, 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.
11/503,278 08/11/2006 Byeong-Cheol Hwang 1235-145 9571
66547 7590 07/26/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
TRAN, PAUL P
ART UNIT PAPER NUMBER
2647
MAIL DATE DELIVERY MODE
07/26/2013 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 BYEONG-CHEOL HWANG and SUN-YOUNG YI
____________

Appeal 2012-002550
Application 11/503,278
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4-7, 9-18, 21, and 22. (App. Br. 2). Claims 3, 8, 19, and 20 were
cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ claimed invention “relates to a method and an apparatus
of displaying a character input in a portable terminal, and in particular, to a
method and an apparatus of displaying multiple character input by providing
a character having a movement effect when the character corresponding to a
key input is displayed in a character input mode.” (Spec. 1).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method of displaying a character in a portable
terminal, the method comprising the steps of:

[L1] previewing individual dynamic input effects on a
plurality of characters in a preview screen corresponding to
user navigation through a list of dynamic input effects and a list
of details for each dynamic input effect;

[L2] setting a dynamic input effect by selecting the
dynamic input effect from the list of dynamic input effects and
selecting a detail for the dynamic input effect;

determining, when entering a character input mode,
whether the dynamic input effect is set; and

displaying a character corresponding to a key input, in a
display for input characters, in accordance with the dynamic
input effect selected from the list of dynamic input effects and
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the selected detail, if it is determined that the dynamic input
effect is set.

(Disputed limitations L1-L2 emphasized).

REJECTIONS

1. The Examiner rejected claims 1, 2, 4, 6, 7, 9-13, and 15-18 under
35 U.S.C. § 103(a) as being unpatentable over the combined
teachings and suggestions of Ni (US 6,822,585 B1, issued Nov. 23,
2004 (filed Sept. 15, 2000)) and Uchijima (US 6,728,935 B1,
issued April 27, 2004 (filed July 9, 1999)). (Ans. 4-15).
2. The Examiner rejected claims 5, 14, 21, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and
suggestions of Ni, Uchijima, and Edmunds (US 5,592,602, issued
Jan. 7, 1997 (filed May 17, 1994)). (Ans. 15-17).

ANALYSIS
Regarding representative claim 1, Appellants contend limitations L1
and L2 are not taught or suggested by the Examiner’s combination of Ni and
Uchijima:
[L1] previewing individual dynamic input effects on a plurality
of characters in a preview screen corresponding to user
navigation through a list of dynamic input effects and a list of
details for each dynamic input effect;

[L2] setting a dynamic input effect by selecting the dynamic input
effect from the list of dynamic input effects and selecting a detail for
the dynamic input effect;
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(Claim 1).1
Appellants particularly contend “Ni fails to disclose that individual
dynamic input effects are previewed on a plurality of characters
corresponding to user navigation through a list of dynamic input effects and
a list of details for each dynamic input effect, as recited in Claim 1.” (App.
Br. 8). Appellants further contend Uchijima:
fails to disclose a user-navigable list of input effects and a
separate user-navigable list of details for each dynamic input
effect, as recited in Claim 1. Uchijima also fails to disclose the
separate steps of selecting the input effect from the user-
navigable list of input effects and selecting a detail for the
selected input effect, as recited in Claim 1. Thus, Uchijima fails
to remedy all of the deficiencies of Ni described above.

(Id.).
The Examiner disagrees. “Ni discloses previewing of the symbols and
characters while user is navigating through the selection of permitted
symbols and characters of the symbols candidate list and the characters
candidate list.” (Ans. 18, citing to Ni at col. 5, ll. 1-6; col. 2, ll. 40-57; col. 3,
ll. 19-28, Figs. 5-6, elements 838-840, 846-847, col. 7, ll. 24-56; col. 8, ll.
16-22). Regarding Uchijima, the Examiner finds, inter alia:
Uchijima (Fig. 2, Col. 2: 1-16, Col. 3: 57-Col. 4: 25)
discloses a text editing method (S2), in which during editing,
user is automatically prompted (S6) on the display with a set of
attribute types (i.e. input effects/skins) and options (i.e. details
of input effects/skins) for selecting and setting the input text
characters attributes based on history previously saved in the
memory (S3). The attribute types and options are dynamically

1 Based on Appellants’ arguments, we decide the appeal of the
rejection of claims 1, 2, 4, 6, 7, 9-13, and 15-18 on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

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changed based on the history of the usage and either
automatically entered by the software program or manually
input by user via selection if there is no history associated with
the entered character or word. Uchijima (Fig. 3A-E, Col. 4: 26-
39) shows a list of attribute types (input effects/skins)
associated with a list of attribute options (i.e. details) for
dynamically setting the input text or characters. The attribute
types and attribute options are dynamically displaying to user
on the computer screen for previewing and selecting while the
user is typing the character.
(Ans. 19).
Notwithstanding Appellants’ contentions that the aforementioned
limitations L1-L2 are not taught or suggested by the cited combination relied
on by the Examiner (App. Br. 6-11; Reply Br. 1-3), we find the appeal of
representative claim 1 turns on claim construction.
Regarding the scope of the disputed claim term “dynamic input
effects,” we turn to Appellants’ Specification for context. The Specification
describes various “fly in” effects (as recited in dependent claim 5, but not
recited in claim 1), and additionally describes that such effects are “not
limited to such. Input characters can also be displayed using various effects
which can depict movement, rotation and/or changes in lighting, shading,
size, color, etc., when the character corresponding to a key input is
displayed.” (Spec. 7:5-8. Emphasis added).
We find Appellants’ aforementioned description in the Specification
is not a limiting definition, but rather is an exemplary list (“not limited to
such . . . , etc.”). (Id.). We agree with the Examiner that “[c]laim 1 as
recited does not specify or clearly define[] the characteristics, dimension or
attributes of the input effects or the details of [the] dynamic input effect.”
(Ans. 20-21).
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We conclude the plain language of claim 1 does not preclude the
Examiner’s broader reading. In light of Appellants’ broad description in the
Specification (Spec. 7:5-8), we are not persuaded that the Examiner’s claim
interpretation of the disputed limitation “dynamic input effects” is overly
broad, unreasonable, or inconsistent with the Specification. Because
“applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted).
Thus, we agree with the Examiner that limitation L1 would have been
taught or at least suggested by Ni’s teaching of previewing symbols (col. 7,
ll. 38-40) and characters while the user is navigating through the selection of
permitted symbols and characters of the symbols candidate list and the
characters candidate list. (See Ni, e.g., Figs. 1-3, 6; col. 7, ll. 10-23; see also
Ans. 17-19). We also agree with the Examiner that Uchijima’s description
of registering (saving) and recalling preferred format or display attributes
from a history store (Fig. 2) would have taught or suggested limitation L2,
when combined with the teachings of Ni. (See Ans. 5-6, 19-20). We note
the Examiner’s ultimate legal conclusion of obviousness is based upon the
combined teachings and suggestions of Ni and Uchijima.
Regarding representative claim 1, on this record, we are not persuaded
that combining the respective familiar elements of the cited references in the
manner proffered by the Examiner would have been “uniquely challenging
or difficult for one of ordinary skill in the art” at the time of Appellants’
invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
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(Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
For essentially the same reasons set forth by the Examiner in the
Answer, as discussed above, we sustain the Examiner’s §103 rejection of
representative claim 1, and of claims 2, 4, 6, 7, 9-13, and 15-18 (not argued
separately), which fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Dependent Claims 9 and 17
Claim 9 recites “[t]he method of claim 6, wherein the dynamic input
skin is configured with a dynamic input effect and a dynamic background,
wherein the dynamic background is correlated to the dynamic input effect.”
Regarding dependent claims 9 and 17, Appellants contend “Uchijima
fails to disclose that the dynamic input skin is configured with a dynamic
input effect and a dynamic background, and the dynamic background is
correlated to the dynamic input effect, as recited in Claims 9 and 17. Thus,
Uchijima fails to remedy this deficiency of Ni.” (App. Br. 10, first
paragraph).
We agree with Appellants the Examiner has not fully developed the
record to show how the claimed dynamic background is correlated to the
dynamic input effect. Therefore, we reverse the Examiner’s rejection of
claim 9, and also of claim 17, which recites commensurate limitations. For
the same reason, we also reverse the rejection of claims 10 and 18, which
depend upon claims 9 and 17, respectively.
Claims 5, 14, 21, and 22
Claim 5 recites “[t]he method of claim 1, wherein the dynamic input
effect includes a predetermined setting selected from at least one of a 'fly
from right', 'fly from top', 'fly from bottom', 'become smaller', 'become
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smaller and wave', '3 dimensional spin and become smaller', 'become larger',
'flat to large', 'large to small to large', 'spin and appear', '3 dimensional spin
and drop' and 'spin and appear'.” Claims 14, 21, and 22 recite commensurate
or similar limitations regarding the dynamic (motion) effect.
Regarding the second-stated rejection of claims 5, 14, 21, and 22, we
agree with Appellants the tertiary Edmunds reference “relates to the motion
of an object that pre-exists on a screen, and fails to relate to characters
displayed corresponding to a key input in accordance with at least one of a
'fly from right', 'fly from top', 'fly from bottom', 'spin and appear', '3
dimensional spin and drop' and 'spin and appear', as recited in Claims 5 and
14.” (App. Br. 11, paragraph two). We reverse the Examiner’s rejection of
claim 5, and claims 14, 21, and 22 which recite commensurate or similar
“dynamic” (motion) functional limitations.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1, 2, 4, 6, 7, 11-13, 15,
and 16 under 35 U.S.C. § 103(a).
The Examiner erred in rejecting claims 5, 9, 10, 14, 17, 18, 21, and 22
under 35 U.S.C. § 103(a).

DECISION
For the above reasons, the Examiner’s §103 rejection of claims 1, 2, 4,
6, 7, 11-13, 15, and 16 is affirmed.
For the above reasons, the Examiner’s § 103 rejections of claims 5, 9,
10, 14, 17, 18, 21, and 22 is reversed.
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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).

ORDER
AFFIRMED-IN-PART

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