Ex Parte Jang et al

Patent Trial and Appeal Board

Jun 14, 2013

11340617 (P.T.A.B. Jun. 14, 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.
11/340,617 01/27/2006 Woo-Seok Jang 50031 9034
1609 7590 06/17/2013
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
LIANG, REGINA
ART UNIT PAPER NUMBER
2699
MAIL DATE DELIVERY MODE
06/17/2013 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 WOO-SEOK JANG, JIN-SUNG PARK, HYONG-SOG OH, and
JI-HWA KIM
____________________

Appeal 2010-009971
Application 11/340,617
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

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STATEMENT OF CASE1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-8, 10-13, and 15-18. Claims 4, 9, 14, and 19 were cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Disclosed Invention
Appellants disclose a method for controlling the backlight of a
portable terminal. The method includes the steps of (i) storing brightness
values that correspond to a selected number of backlight steps, (ii) retrieving
a stored backlight brightness value corresponding to the backlight step
requested by the user, and (iii) regulating the backlight brightness according
to the retrieved backlight brightness value (See generally Abs.; Spec. 2).
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added to
the disputed portions of the claim, reads as follows:
1. A method for controlling a backlight of a portable terminal, the
method comprises:
storing preset backlight brightness values that correspond to a selected
number of backlight steps, the backlight steps corresponding to incremental
levels of brightness;
retrieving a stored backlight brightness value corresponding to one of
the backlight steps requested by a user;

1 Throughout our decision we refer to the Specification of the Instant
Application (“Spec.”), Appellant’s Appeal Brief (“App. Br.”) filed February
22, 2010, the Examiner’s Answer (“Ans.”) mailed April 28, 2010, and the
Reply Brief (“Reply Br.”) filed June 25, 2010.
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regulating the backlight brightness of the portable terminal according
to the retrieved backlight brightness value; and
displaying at least one of the currently regulated backlight step and
the backlight brightness value on the display unit.
Examiner’s Rejections
1. The Examiner rejected claims 1-3, 5, 6, 8, 10-13, 15 and 16 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Yong
(US 2004/0012556 A1) and Ogoro (US 6,891,525 B2). Ans. 3-11.
2. The Examiner rejected claims 7, 17, and 18 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Yong and Ogoro, further
in view of Hama (US 7,280,850 B2). Ans. 11-13.
Appellants’ Contentions2
1. Appellants contend (App. Br. 6-8) that the Examiner erred in
rejecting representative claim 1 under 35 U.S.C. § 103(a) over the
combination of Yong and Ogoro for numerous reasons including:
(a) The operation of the device of Yong as modified by Ogoro does
not correspond to Appellants’ claimed invention (App. Br. 8, Reply Br. 5-6);

2Appellants argue patentability for claims 1-3, 5, 6, 8, 10-13, 15 and 16 as a
group. Claims 1, 5, 10, and 15 are independent and each present the feature
of displaying at least one of the currently regulated backlight step and the
backlight brightness value. Appellants present arguments with regard to
claim 1, and contend that the arguments made with respect to claim 1 are
applicable to claims 5, 10, and 15. Separate patentability is not argued for
claims 2, 3, 6, 8, 11-13, and 16 which depend from respective ones of
independent claims 1, 5, 10, or 15. We select claim 1 as representative of
the group of claims rejected under 35 USC § 103(a) over Yong and Ogoro
(claims 1-3, 5, 6, 8, 10-13, 15 and 16) pursuant to our authority under 37
C.F.R. § 41.37(c)(1)(iv). Accordingly, our analysis regarding this group
(claims 1-3, 5, 6, 8, 10-13, 15 and 16) will only address claim 1.

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(b) Ogoro does not teach displaying at least one of the currently
regulated backlight step and the backlight brightness value on the display
unit, as recited in representative claim 1 (App. Br. 8, Reply Br. 6); and
(c) The modification of Yong by Ogoro would be unnecessary, absent
Appellants’ disclosure, because, the currently regulated backlight brightness
would already be visible to the user as per Yong (Reply Br. 7-8).
2. With regard to claims 7, 17, and 18, Appellants contend that Hama
does not cure the deficiencies of Yong and Ogoro with regard to
independent claims 5 and 15 from which claims 7, 17, and 18 respectively
depend (App. Br. 9; Reply Br. 6-7).
Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-9)
and the Reply Brief (Reply Br. 4-8), the following issues are presented on
appeal:
(1) Did the Examiner err in rejecting claims 1-3, 5, 6, 8, 10-13, 15,
and 16 because over the combination of Yong and Ogoro is improper and/or
fails to disclose the backlight brightness regulating and displaying steps set
forth in representative claim 1?
(2) Did the Examiner err in rejecting claims 1-3, 5, 6, 8, 10-13, 15,
and 16 because Ogoro does not teach displaying at least one of the currently
regulated backlight step and the backlight brightness value on the display
unit, as recited in representative claim 1?
(3) Have Appellants shown that the Examiner erred in rejecting claims
7, 17, and 18 because Hama fails to cure the deficiencies of Yong and Ogoro
with regard to the backlight brightness regulating and displaying limitations
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of representative claim 1, and as similarly recited in independent claims 5
and 15 from which claims 7, 17, and 18 respectively depend?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 6-10) and the Reply Brief (Reply
Br. 4-9) 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 (see Ans. 3-13), and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 13-14). We concur with the
conclusions reached by the Examiner.
Representative Claim 1
With regard to representative claim 1, we agree with the Examiner’s
findings with respect to the individual references, and with the Examiner’s
determination that it would have been obvious to combine the references
based on the rationale set forth by the Examiner (Ans. 3-4 and 13-14),
including using Ogoro’s on-screen display feature (such as “power saving
mode” or “illumination adjustment mode”) with the backlight control on the
display unit of Yong to provide the user an on-screen visual feedback, in
order to inform the user about the current mode of operation so that the user
can easily recognize the currently regulated backlight brightness (see Ans. 3
and 13).

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Appellants’ contention (see Appellants’ Contention (1)(a) supra) that
the operation of the device of Yong as modified by Ogoro does not
correspond to Appellants’ claimed invention and that the Examiner erred in
rejecting claims 1-3, 5, 6, 8, 10-13, 15, and 16 because over the combination
of Yong and Ogoro fails to disclose the backlight brightness regulating and
displaying steps set forth in representative claim 1 is unpersuasive in view of
the obviousness rationale set forth by the Examiner regarding claim 1 (Ans.
3-4 and 13-14).
Appellants’ contention (see Appellants’ Contention (1)(b) supra) that
Ogoro does not teach displaying at least one of the currently regulated
backlight step and the backlight brightness value on the display unit is
unpersuasive. The Examiner relied (Ans. 4 and 13) upon Ogoro to teach
displaying menu items like “power saving mode” and “illumination
adjustment mode” to perform functions of user selections (Ogoro, col. 7, ll.
19-25).
Further, it is noted that any citations to specific, pages, columns, lines,
or figures in the prior art references and any interpretation of the reference
should not be considered to be limiting in any way. A reference is relevant
for all it contains and may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. See MPEP
2123. The “power-saving mode” cited by the Examiner (Ans. 13; col. 7, ll.
19-25) is explained with respect to Figure 6 in Ogoro at steps S12-18
wherein the display 70 displays a selection instruction menu to prompt the
user to determine whether the brightness of the backlighting LED should be
changed to set the power saving mode or not (Ogoro, col. 6, ll. 32-36). We
agree with the Examiner’s reliance upon Ogoro to teach displaying at least
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one of the currently regulated backlight step and the backlight brightness
value on the display unit, because Ogoro teaches displaying the menu items
like “power saving mode” and “illumination adjustment mode” to perform
functions of user selections, wherein “power saving mode” corresponds to a
lower brightness value of the backlight. We also agree with the Examiner’s
reason (Ans. 13-14) to display the setting, i.e., to provide user a feedback of
the selected option.
Appellants’ contention (see Appellants’ Contention (1)(c) supra) that
the modification of Yong by Ogoro would be unnecessary absent
Appellants’ disclosure, because the currently regulated backlight brightness
would already be visible to the user as per Yong (when the Examiner
combined Yong and Ogoro to teach the currently regulated backlight
brightness value being visible to the user) as required by representative
claim 1 is also unpersuasive. The Examiner modified (Ans. 4 and 13-14)
Yong’s portable device to include the display feature taught by Ogoro to
display at least one of the currently regulated backlight step and the
backlight brightness value on the display unit. We agree with the
Examiner’s reason to modify Yong according to Ogoro (Ans. 13-14) since
this modification would provide Yong with an onscreen visual feedback or
indication to the user in order to acknowledge or inform the user about the
current mode of operation, such that the user can easily recognize the
currently regulated backlight brightness step/value.
In view of the foregoing, Appellants have not sufficiently shown that
the combination of Yong and Ogoro fail to teach or suggest displaying at
least one of the currently regulated backlight step and the backlight
brightness value on the display unit, as required by representative claim 1.
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Accordingly, we sustain the rejection of representative claim 1, and claims
2, 3, 5, 6, 8, 10-13, 15, and 16 grouped therewith.
Claims 7, 17, and 18
With regard to claims 7, 17, and 18, Appellants contend (see
Appellants’ Contention (2) supra) that Hama does not cure the deficiencies
of Yong and Ogoro with regard to independent claims 5 and 15 from which
claims 7, 17, and 18 respectively depend, when Examiner relied upon Yong
and Ogoro to teach the limitations of claims 5 and 15.
Because we agree with the Examiner that the combination of Yong
and Ogoro teaches or suggests the salient features of representative claim 1
(e.g., the regulating and displaying of backlight brightness), and as similarly
recited in independent claims 5 and 15 from which claims 7, 17, and 18
respectively depend, we also sustain the rejection of claims 7, 17, and 18.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-3, 5, 6, 8, 10-13,
15, and 16, because the combination of Yong and Ogoro is proper, and
teaches or suggests the backlight brightness regulating and displaying steps
set forth in representative claim 1.
(2) The Examiner has not erred in rejecting claims 1-3, 5, 6, 8, 10-13,
15, and 16 because Ogoro teaches displaying at least one of the currently
regulated backlight step and the backlight brightness value on the display
unit, as recited in representative claim 1.
(3) Appellants have not shown that the Examiner erred in rejecting
claims 7, 17, and 18 because the combination of Yong and Ogoro teach or
suggest the backlight brightness regulating and displaying limitations of
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representative claim 1, and as similarly recited in independent claims 5 and
15 from which claims 7, 17, and 18 respectively depend.

DECISION
The Examiner’s rejections of claims 1-3, 5-8, 10-13, and 15-18 are
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

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