Ex Parte Kang

Patent Trial and Appeal Board

Sep 4, 2014

11415751 (P.T.A.B. Sep. 4, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/415,751 05/02/2006 Sung-Min Kang 678-2337 6432
66547 7590 09/05/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
MIAH, LITON
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
09/05/2014 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 SUNG-MIN KANG
____________

Appeal 2012-003599
Application 11/415,7511
Technology Center 2600
____________

Before MICHAEL J. STRAUSS, HUNG H. BUI, and TERRENCE W.
MCMILLIN, Administrative Patent Judges.

MCMILLIN, Administrative Patent Judge.

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-9, 11, 23, and 25-36. Claims 10, 12-22, and 24 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is Samsung Electronics
Co., Ltd. (App. Br. 1).

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THE INVENTION
The apparatus claims (claims 1-9 and 11) are directed to a digital
multimedia broadcasting (DMB) terminal for simultaneous DMB viewing
and call functioning. The method claims (claims 23 and 25-36) are directed
to a multi-tasking method in a pocket-size, digital broadcasting capable,
wireless communication terminal.
Independent device claim 1 and method claim 23, reproduced below,
are representative of the claimed subject matter:
1. A digital multimedia broadcasting (DMB) terminal for
enabling simultaneous DMB viewing and a call function, the
DMB terminal having a DMB module for providing a DMB
service and a modem module for providing mobile
communication functionality, and the DMB module and the
modem module being able to operate separately, the terminal
comprising:
a DMB-modem switch unit for switching an image
output path for outputting image information, an audible sound
output path for outputting audible sounds, and a key input path
for receiving a key input signal from a user, to the DMB
module or the modem module;
a DMB-modem switch controller for, upon user selection
of an operation mode, controlling the DMB-modem switch unit
to switch the image output path, the audible sound output path,
and the key input path to one of the DMB module and the
modem module, corresponding to the selected operation mode;
and
a keypad comprising an output switching key for
switching only the image output path and the key input path to
a module other than a currently connected module while
maintaining the audible sound output path during an incoming
call process or an outgoing call process in the modem module.

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23. A multi-tasking method in a pocket-size, digital
broadcasting capable, wireless communication terminal, the
method comprising:
determining whether the execution of an application not
related to the digital broadcasting is requested while displaying
received broadcasting data on a screen;
switching to a display associated with the execution of
the application on the screen from the display of the
broadcasting data on the screen when execution of the
application is requested, while continuing to receive the
broadcasting data; and
switching from the display associated with the execution
of the application to the display of the broadcasting data on the
screen while maintaining audio associated with the execution of
the application, upon an input of a switching request; and
switching from the display of the broadcasting data to the
display associated with the execution of the application on the
screen, while receiving and displaying the broadcasting data on
the screen and maintaining the audio associated with the
execution of the application, upon the input of the switching
request.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal was:
Yang US 6,529,742 B1 March 4, 2003
Goto EP 1 489 818 December 22, 2004
Himeno US 2005/0221771 A1 October 6, 2005

REJECTIONS
The Examiner made the following rejections:
Claims 1-9, 11, 23, 26, and 30-36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yang and Goto. Ans. 17-22.
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Claims 25 and 27-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang, Goto, and Himeno. Ans. 22-24.

APPELLANT’S CONTENTIONS
1. The combination of Yang and Goto fails to teach or suggest the
switching of a key input path. App. Br. 8
2. The combination of Yang and Goto fails to teach or suggest an output
switching key on a keypad for switching only the image output path and
the key input path while maintaining the audible sound output path
during an incoming call process or an outgoing call process in the modem
module. App. Br. 9.
3. The combination of Yang and Goto fails to teach or suggest switching
from a display of the broadcasting data to the display for a call
connection or the execution of an application, while continuing to receive
the broadcasting data. App. Br. 9.
4. The combination of Yang, Goto, and Himeno fails to teach or suggest
switching from a display of the broadcasting data to the display for SMS
(Short Message Service) writing, while continuing to receive the
broadcasting data. App. Br. 11.
ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 7-12)
and the Reply Brief (Reply Br. 2-3), the issues presented on appeal are: (1)
whether the combination of Yang and Goto teaches or suggests the disputed
limitations of claims 1, 23, 30, and 34, and (2) whether the combination of
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Yang, Goto, and Himeno teaches or suggests the disputed limitation of claim
27.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 4-17) and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 17-
24) and concur with the conclusions reached by the Examiner. We highlight
the following for emphasis.

Independent Claim 1
Appellant’s first and second contentions relate to claim 1. Appellant
argues the combination of Yang and Goto fails to teach or suggest the
switching of a key input path or an output switching key. App. Br. 8-9. In
the Examiner’s Answer, paragraphs 66, 67, 80, and 82 and Fig. 6 of Goto are
relied upon as providing the relevant disclosure. Ans. 5 and 18-19. We find
that the cited portions of Goto teach or suggest the disputed limitations of
claim 1. Goto, col. 11, ll. 3-8, teaches sending the key input from call
start/end button 116 to telephone RF unit 113. Goto, col. 11, ll. 10-22,
teaches sending the key input from call start/end button 116 to the program
information processing unit 104.
With regard to the “output switching key,” Goto teaches a call
start/end button 116 that allows a user to switch the image output and the
key input to the broadcast unit while maintaining the sound connection to
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the call. Goto, col. 9, ll. 43-46. Therefore, we agree with the Examiner that
the combination of Yang and Goto teaches or suggests a DMB-modem
switch unit for switching a key input path for receiving a key input signal
from a user to the DMB module or the modem module, a DMB-modem
switch controller for controlling the key input path to one of the DMB
module and the modem module corresponding to a selected operation mode
and an output switching key on a keypad for switching only the image
output path and the key input path while maintaining the audible sound
output path during an incoming call process or an outgoing call process in
the modem module. The rejection of independent claim 1 is affirmed.

Independent Claims 23, 30, and 34
Appellant’s third contention relates to independent claims 23, 30, and
34. Appellant argues the combination of Yang and Goto fails to teach or
suggest the continued reception of broadcasting data when the display is
switched from the broadcasting data. App. Br. 9-10. In the Examiner’s
Answer at 19-20, the same portions of Goto discussed above with regard to
claim 1 are cited as providing the relevant disclosure for the limitation
recited in claims 23, 30, and 34. We find that Goto teaches a device and a
method for continuing to receive broadcasting data when the call unit is
being used. In particular, upon initiating a phone call while receiving
broadcasting data, the combined digital broadcast receiver and mobile phone
as disclosed by Goto switches the display to the caption data of the digital
broadcast. Goto, col. 9, ll. 38-42. The digital broadcast caption data and
image data continue to be displayed during the phone call. Id. When the
phone call terminates, the display of the caption data is terminated and the
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audio data from the digital broadcast is restored. Goto, col. 9, ll. 46-51. We
agree with the Examiner that the combination of Yang and Goto teaches or
suggests switching from a display of the broadcasting data to the display for
a call connection or the execution of an application, while continuing to
receive the broadcasting data. The rejection of claims 23, 30, and 34 is,
therefore, affirmed.

Independent Claim 27
Appellant’s fourth contention relates to independent claim 27. Claim
27 contains a limitation relating to short message service (SMS) writing.
Appellant argues the cited art fails to teach or suggest
switching from a display of the broadcasting data to the display for SMS
writing, while continuing to receive the broadcasting data. App. Br. 11. In
the Examiner’s Answer, the portions of Goto discussed above and
paragraphs 16, 20 and 36 of Himeno, which relates to combination TV
phone and SMS message devices and methods, are relied upon to provide
the relevant disclosure. Ans. 22-23. We find that Himeno teaches
operating the TV unit while switching to the display for SMS writing. See,
e.g., Himeno, ¶ 36. Therefore, we agree with the Examiner that the
combination of Yang, Goto, and Himeno teaches or suggests switching from
a display of the broadcasting data to the display for SMS writing, while
continuing to receive the broadcasting data. The rejection of claim 27 is
affirmed.

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Dependent Claims 3, 4, 7-9, and 11
Appellant argues that dependent claims 3, 4, 7-9, and 11 are
patentable by virtue of their dependency from independent claim 1 and
because they “also recite patentable subject matter in their own right.” App.
Br. at 10. However, the alleged patentable subject matter is the same as was
argued by Appellant with regard to claim 1, “the switching of a key input
path.” Id. Specifically, Appellant argues:
As described above with respect to Claim 1, the
combination of Yang and Goto fails to disclose the switching of
a key input path. Accordingly, the combination of Yang and
Goto fails to disclose: the switching of the key input path to the
DMB module when the selected operation is a DMB reception
mode, as recited in Claim 3; the switching of the key input to
the modem module when the selected operation mode is a
mobile communication mode, as recited in Claim 4; the
switching of the key input path to the modem module upon
receipt of the send key input indication signal, as recited in
Claim 7; the switching of the key input path to the modem
module according to user selection, as recited in Claim 8; a key
input switch for switching the key input path to the modem
module or the DMB module, as recited in Claim 9; and the
switching of the key input path to the DMB module upon input
of the output switching key, as recited in Claim 11. App. Br.
10.

This is not an argument for separate patentability of these claims. See
37 C.F.R. § 41.37 (c)(1)(iv)(last sentence) which reads: “A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.” Accordingly, we affirm the rejection
of dependent claims 3, 4, 7-9, and 11 for the same reasons discussed above
with regard to claim 1.

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Dependent Claims 2, 5, 6, 25, 26, 28, 29, 31-33, 35, and 36
Appellant presents no separate arguments regarding the patentability
of dependent claims 2, 5, 6, 25, 26, 28, 29, 31-33, 35, and 36. Appellant
contends that these claims are patentable by virtue of their dependency from
patentable independent claims. We affirm the rejection of these dependent
claims for the reasons given above with regard to the independent claims
from which they depend.

CONCLUSION
We find the Examiner did not err in rejecting (1) claims 1-9, 11, 23,
26, and 30-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yang and Goto; and (2) claims 25 and 27-29 under 35 U.S.C. § 103(a)
as being unpatentable over Yang, Goto, and Himeno.

DECISION
The rejection of pending claims 1-9, 11, 23, and 25-36 as unpatentable
under 35 U.S.C. § 103(a) is 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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