Ex Parte Jeon

Patent Trial and Appeal Board

Oct 29, 2013

11322555 (P.T.A.B. Oct. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEUNG-HUN JEON
____________________

Appeal 2011-003007
Application 11/322,555
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, MICHAEL J. STRAUSS, and
KERRY BEGLEY, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). Claims 8-23 have
been withdrawn.
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).

Introduction
According to Appellant, the claims are directed to a method for
authenticating and transmitting personal contents, thus sharing the contents
with other parties, by using a display apparatus capable of being connected
to a network having a server (Spec. 1, [02]).

Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of transmitting personal contents to be shared
with at least one acquaintance, by using a display apparatus that
accesses a server through a network, wherein the display
apparatus comprises a transmission and reception unit, a storage
unit, an input unit, a control unit and a display unit, the method
comprising:

receiving at least one personal content of the at least one
acquaintance from the server through the network and the
transmission and reception unit when the at least one personal
content of the at least one acquaintance is to be updated;

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updating personal contents of the at least one
acquaintance stored in the storage unit based on the received at
least one personal content by using the control unit; and

if the personal contents of the at least one acquaintance
are requested by a user of the display apparatus using the input
unit, reading the personal contents of the at least one
acquaintance among the personal contents stored in the storage
unit by the control unit and displaying the read personal
contents on the display unit by using the control unit.

REFERENCES
Abrams US 7,069,308 B2 Jun. 27, 2006

REJECTIONS
The Examiner made the following rejections:
(1) Claims 2 and 6 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention (Final Rej. 5).
(2) Claims 1-7 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Abrams (Ans. 4-9).

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) (2011).

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ISSUE 1
35 U.S.C. § 112, second paragraph: Claims 2 and 6
Appellant has not presented any arguments to persuade us of error in
the Examiner’s rejection of claims 2 and 6 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Accordingly, we affirm the Examiner’s rejection of claims 2 and 6 under
35 U.S.C. § 112, second paragraph.

ISSUE 2
35 U.S.C. § 102(e): Claims 1-7
Appellant argues the invention is not anticipated by Abrams (App. Br.
9-14). This presents us with the following issue:

Issue 2: Has the Examiner erred in finding Abrams discloses
“updating personal contents of the at least one acquaintance stored in the
storage unit” and “reading the personal contents of the at least one
acquaintance among the personal contents stored in the storage unit by the
control unit and displaying the read personal contents on the display unit by
using the control unit” as recited in claim 1?

ANALYSIS
Appellant initially argues that in contrast to the claimed invention,
Abrams stores all data in the remote apparatus 110 (server) and not in the
graphical user interfaces 102 and 104/user devices 106 and 108 (App. Br. 10
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and 11). Therefore, Appellant contends, Abrams does not disclose the
obtained descriptive data is stored in a storage unit in the user’s device (id.).
We agree with the Examiner that Abrams discloses personal contents
and the receiving, updating, and reading of the personal contents (Ans. 11-
14). However, we are constrained to find Abrams does not disclose the
personal content or the at least one acquaintance is stored in the storage unit.
Although Abrams discloses the user interface means obtains descriptive data
and relationship data for users of the system (col. 4, ll. 65-67 and col. 7,
ll. 43-45), and the user interface may be any device capable of presenting
data, including but not limited to, cellular telephones, television sets, or
hand-held “personal digital assistants” (col. 8, ll. 6-12), Abrams does not
disclose “updating personal contents of the at least one acquaintance stored
in the storage unit” and “reading the personal contents of the at least one
acquaintance among the personal contents stored in the storage unit by the
control unit and displaying the read personal contents on the display unit by
using the control unit,” as recited in claim 1 (emphases added).
However, we do determine storing “the personal contents of the at
least one acquaintance” in the user interface device/graphical user interface
would have been obvious to an ordinarily skilled artisan at the time of the
invention.
Accordingly, we pro forma reverse the Examiner’s anticipation
rejection of claims 1-7 in light of the new grounds of rejection set forth
infra.

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NEW GROUND OF REJECTION OF CLAIMS 1-7
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 1-7
under 35 U.S.C. § 103(a) as being unpatentable over Abrams. While we
have found supra that Abrams does not anticipate claims 1-7, we
nevertheless find that Abrams would have at least suggested the invention as
recited to one of ordinary skill in the art at the time of Appellant’s invention.
We adopt the Examiner’s findings that Abrams discloses personal
contents and the receiving, updating, and reading of the personal contents
(Ans. 11-14). As to the recitation that the “personal contents of the at least
one acquaintance [is ]stored in the storage unit,” we find Abrams renders
this limitation obvious. Specifically, Abrams teaches a user that wishes to
invite friends or acquaintances may import e-mail addresses from a standard
computerized address book such as Microsoft™ Outlook™ (col. 14,
ll. 18-32). As the address book stores acquaintances and personal content,
and is resident on the user interface device, Abrams teaches or at least
suggests at least one acquaintance and personal content is stored on the user
interface device. Additionally, as Abrams teaches “receiving at least one
personal content of the at least one acquaintance from the server” (see e.g.,
col. 7, ll. 43-45; Ans. 4, 5, 10-11), we find it would have been obvious to an
ordinarily skilled artisan to update the address book with the received
personal content, such as an updated telephone number, address, or other
fields available in a computerized address book, or to update personal
content stored in the address book.
We also find it would have been obvious to an ordinarily skilled
artisan that if a user requested the personal contents of an acquaintance
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stored in their computerized address book stored on their cellular telephone
as taught by Abrams, the personal contents of the acquaintance would be
read from among the personal contents stored in the storage unit (memory of
the cellular telephone) and the read personal contents would be displayed on
the cellular telephone display (see Ans. 5-6).
Accordingly, we conclude Abrams renders obvious the limitations
recited in independent claims 1 and 5. Appellant did not present separate
arguments for dependent claims 2-4, 6, and 7, relying instead on the
dependency from their respective independent claims; therefore, we
conclude Abrams also renders obvious the limitations recited in claims 2-4,
6, and 7.

DECISION
The Examiner’s rejection of claims 2 and 6 under 35 U.S.C. § 112,
second paragraph is affirmed.
The Examiner’s rejection of claims 1-7 under 35 U.S.C. § 102(e) as
being anticipated by Abrams is reversed.
In a new ground of rejection, we reject claims 1-7 under 35 U.S.C.
§ 103 as being unpatentable over Abrams.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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-IN-PART
37 C.F.R. § 41.50(b)

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