Ex Parte Kim et alDownload PDFPatent Trial and Appeal BoardSep 14, 201713303428 (P.T.A.B. Sep. 14, 2017) Copy Citation 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. 13/303,428 11/23/2011 Kyung Min KIM 0203-0444 7273 09/18/201768103 7590 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER ROY, SANCHITA ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 09/18/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): u sdocketing @ j effersonip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYUNG MIN KIM, SUNG HO PARK, SANG HO HONG, SEUNG BAE PYON, and YONG WOOG SHIN Appeal 2016-008511 Application 13/303,42s1 Technology Center 2100 Before ALLEN R MacDONALD, ADAM J. PYONIN, and MICHAEL M. BARRY, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—18, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Samsung Electronics Co., Ltd., is identified as the real party in interest. See App. Br. 2. Appeal 2016-008511 Application 13/303,428 STATEMENT OF THE CASE Introduction The Application is directed to “a portable terminal and a method of performing various functions by using a background image displayed on the portable terminal.” Spec. 12. Claims 1 and 9 are independent. Claim 1 is reproduced below for reference: 1. A method of utilizing a background image of a portable terminal, the method comprising: displaying the background image; determining whether an input event is detected in the displayed background image; identifying an area in which the input event is detected upon detection of the input event; determining whether there exists an application mapped to the identified area; and directly executing the application if the application is mapped to the identified area. References and Rejections The prior art relied upon by the Examiner in rejecting the claims on appeal is: Koskinen US 2008/0005698 A1 Jan. 3, 2008 Huang US 2010/0060655 A1 Mar. 11,2010 Kiiskinen US 2010/0077356 A1 Mar. 25, 2010 Stallings US 2010/0167712 A1 July 1, 2010 Claim 6 stands rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph as failing to comply with the written description requirement. Final Act. 3. 2 Appeal 2016-008511 Application 13/303,428 Claim 18 stands rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph as being indefinite for lacking proper antecedent basis. Final Act. 4-5. Claims 1—6 and 9-15 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Koskinen. Final Act. 5 Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Koskinen, Kiiskinen, and Huang. Final Act. 9. Claims 8, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Koskinen and Stallings. Final Act. 12. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments. We are not persuaded the Examiner’s written description, antecedent basis, or prior art rejections are in error. A. Written Description Appellants argue the Examiner erred in rejecting dependent claim 6 under 35 U.S.C. § 112, first paragraph, because the “specification adequately supports ‘deleting ... the indicator associated with the application mapped to the selected area.’ See, for example, paragraphs [0064] and [0066].” App. Br. 3. We are not persuaded the Examiner erred. Claim 6 includes a method step of deleting an indicator associated with an application. The Examiner is correct in finding the Specification does not describe deleting any indicators. See Ans. 2. The portion of the Specification cited by Appellants refers to deleting a transparent icon, not an indicator. See Spec. ^fl[ 64, 66; see also 3 Appeal 2016-008511 Application 13/303,428 parent claims 3 and 5 (separately reciting a transparent icon). Accordingly, we agree with the Examiner the Specification lacks written description support for the claim limitation “deleting . . . the indicator.” See Final Act. 4. B. Antecedent Basis Appellants argue the Examiner erred in rejecting dependent claim 18 under 35 U.S.C § 112, second paragraph, because “a lack of antecedent basis does not always render the claim indefinite,” and “[t]he Appellants] respectfully submit[] that one of ordinary skill in the art would readily ascertain the metes and bounds of the claim feature of ‘the current location.’” App. Br. 3^4. We are not persuaded the Examiner erred. The only recitations of “current location” in claim 18 are in the phrase “the background image mapped to the current location.” Appellants do not challenge the Examiner’s finding that the term “the current location” lacks antecedent basis. See App. Br. 3^4; Final Act. 5. To the extent Appellants challenge the Examiner’s finding that claim 18 is indefinite, Appellants’ argument comprises a conclusory statement that is not sufficient to persuade us the Examiner erred. See App. Br. 4; cf. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1339 (Fed. Cir. 2016) (“Recognizing that the Board operates under stringent time constraints, we do not hold that it is obliged to explicitly address conclusory and unsupported arguments raised by a litigant.”). We sustain the Examiner’s 35 U.S.C. 112, second paragraph rejection of claim 18. See Final Act. 5; see also In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). 4 Appeal 2016-008511 Application 13/303,428 Additionally, we agree with the Examiner that the rejection would be inapplicable, should claim 18 be amended to depend from claim 17, which provides antecedent basis and description for the term “current location.” See Final Act. 5; see also In re Prater, 415 F.2d 1393, 1404—05 (CCPA 1969) (Appellants always have the opportunity to amend the claims during prosecution). C. Prior Art Appellants argue the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b): Koskinen fails to disclose or even contemplate executing the application when an input associated with the selection of the area linked to the application is detected. Instead, Koskinen requires the detection of two different inputs before the application is executed where the first input is detected on an area of a displayed image which causes an icon to be displayed and the second input is detected by pushing a button which causes the application to be executed. App. Br. 5. Appellants’ arguments are not persuasive for not being commensurate with the scope of the claims. Claim 1 recites “determining whether an input event is detected in the displayed background image; . . . and directly executing the application if the application is mapped to the identified area!' (emphasis added). Koskinen similarly discloses displaying a background image divided into different areas mapped to applications, in which “[t]he area can be chosen by the user by pointing a cursor 408 onto the corresponding area, and in order to select the area some sort of second user input, such as a button press, can be received by the communications device,” which activates the application. Koskinen 1 68; see also 113. 5 Appeal 2016-008511 Application 13/303,428 Claim 1 does not preclude the various steps disclosed by Koskinen, such as choosing an area (i.e., pointing the cursor) prior to the input event (i.e., selecting the area).2 For at least this reason, we are not persuaded the Examiner’s rejection is in error. Moreover, we find the Examiner’s construction to be reasonable in light of Appellants’ Specification, which states that singular forms include plural references unless the context clearly dictates otherwise (Spec. 120); here, the context does not dictate otherwise. Appellants’ Specification also provides that an “input event” can be “generated by a contact or release of the contact,” on an area such as a “transparent icon.” Spec. 40, 23. Such input event, comprising a contact release, is tantamount to Koskinen’s disclosure of activating an application by “pressing a button” on a control device after placing a cursor on the application icon. Koskinen || 9, 68. Accordingly, we are not persuaded the Examiner erred in finding Koskinen discloses the limitations of independent claim 1. See Final Act. 5— 6. We sustain the Examiner’s rejection of claim 1, and claims 2—18, which are not separately argued with particularity. See App. Br. 7—8. DECISION The Examiner’s decision rejecting claims 1—18 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)(l)(iv). AFFIRMED 2 Claim 1 recites “comprising” as the transitional phrase, which is an open- ended term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). 6 Copy with citationCopy as parenthetical citation