Ex Parte Kim et al

Patent Trial and Appeal Board

Feb 21, 2013

11377288 (P.T.A.B. Feb. 21, 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.
11/377,288 03/17/2006 Eun-Sun Kim 50627 5601
1609 7590 02/21/2013
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
MIAH, LITON
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
02/21/2013 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 EUN-SUN KIM, WI-HYUN YOO,
and SEUNG-CHUL CHOI
___________

Appeal 2010-008193
Application 11/377,288
Technology Center 2600
____________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2010-008193
Application 11/377,288

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This is an appeal1 under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-3, 5-7, and 9-11.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to a call origination method using a short
key in a mobile communication terminal for performing call origination
conveniently. (Abstract.)

Exemplary Claim
Claims 1, 7, and 11 are the pending independent claims. Claim 1 is
exemplary, and is reproduced below with disputed limitations in italics:
1. A call origination method using a short key in a mobile
communication terminal, the method comprising:

receiving a short key setup menu;

receiving at least one number corresponding to a short key
implemented in the short key setup menu;

receiving at least one phone number of a phone book
corresponding to the received number;

setting the number as the short key;

originating a call to a phone number corresponding to the
number, when the number set as the short key is input; and

1 The Real Party in Interest is Samsung Electronics, Co., Ltd.
2 Claims 4 and 8 were cancelled and are not on appeal.
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if the phone number corresponding to the short key input does
not exist, originating a call to a phone number previously
registered in an address of the phone book corresponding to the
number.

Examiner’s Rejections
1. Claims 1-3, 5-7, and 9-11 are 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. (Ans. 3.)
2. Claims 1, 2, 6, 7, 9, and 11 are rejected under 35 U.S.C. § 102(b) as
being clearly anticipated by Lim (US 2002/0169007). (Ans. 3.)
3. Claims 3, 5, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lim in view of Frederiksen (US 6,185,295). (Ans.
5.)

ISSUE 1
§ 112, Second Paragraph, Rejection of Claims: 1-3, 5-7, and 9-11
Appellants contend that independent claim 1 is definite and claim
element “the number” in line 13 of independent claim 1 has support in line 4
of independent claim 1. (App. Br. 10.)

Issue 1: Has the Examiner erred in concluding that claims 1-3, 5-7,
and 9-11 are indefinite under § 112, second paragraph? In particular, the
issue turns on whether an ordinarily skilled artisan, having read Appellants’
Specification, would be apprised of the scope of the following claim
limitation recited in independent claim 1:
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“originating a call to a phone number previously registered in an
address of the phone book corresponding to the number.”

ANALYSIS
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).3 If the language
of the claim is such that a person of ordinary skill in the art could not
interpret the metes and bounds of the claims so as to understand how to
avoid infringement, a rejection of the claim under 35 U.S.C. § 112, second
paragraph is deemed appropriate. Morton Int’l, Inc. v. Cardinal Chemical
Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). We note that it is the Appellants’
burden to precisely define the invention, not the USPTO’s. In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997).
We review the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. Appellants submit that “the
number” in line 13 of independent claim 1 has support in line 4 of
independent claim 1. (App. Br. 10.) However, the Examiner finds that the
claim element “the number” in line 13 of claim 1 lacks sufficient antecedent

3 “The legal standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361
(Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharmaceutical Co. Ltd.,
927 F.2d 1200, 1217 (Fed. Cir.1991)). The “inquiry therefore is merely to
determine whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and particularity.” In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).
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basis and is, therefore, indefinite. (Ans. 3.) We agree with the Examiner.
Although, line 4 of claim 1 recites “receiving at least one number
corresponding to a short key implemented in the short key setup menu,”
there is no indication in the language of claim 1 whether “the number”
recited at line 13 is (i) one of the at least one phone number corresponding to
a short key, (ii) one of the at least one phone number, (iii) the number set as
the short key, (iv) a phone number corresponding to the number, (v) a phone
number previously registered in an address of the phone book, or (v) a
number of an address in a phone book.
The Appellants further contend that
“the number” in line 13 of independent claim 1 refers to the
number on the key pad of the mobile terminal set as the short
key of a phone number. If the phone number does not exist
when a call is originated to the phone number corresponding to
the short key, a call is made to the phone number previously
registered as the phone number corresponding to the number on
the key pad of the mobile terminal set as the short key of said
phone number (paragraphs [0015] - [0025]).

(App. Br. 10.)

We are unpersuaded by Appellants’ contention, because (a) the
language of the claims as currently written, does not reflect the language of
Appellants’ argument, and (b) as shown below, Appellants’ Specification
discloses multiple interpretations for the term “the number”:
[W]hen the user presses a short key, that is a number key, the
controller 100 shown [in Figure 1,] determines if a phone number
corresponding to the short key exists, or if a phone number exists
in an address corresponding to the number previously set in the
phone book.
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(Spec. [0015], emphasis added.)

[W]hen the short key setup menu is received from the user, the
display unit 110 displays the arrangement screen of number keys
in the key input unit 130. Accordingly, when the user sets a short
key, the display unit 110 displays whether the short key has been
set so that existence or absence of a phone number previously set
in a number to be set by the user can be determined.

(Spec. [0016], emphasis added.)

[I]f the user presses a number key, when there exist both the
phone number of a short key corresponding to the number of the
number key and a phone number corresponding to an address of
the phone book, the display unit 110 displays all of the existing
phone numbers. If the display unit 110 receives the short key
setup menu from the user and displays the arrangement screen of
the number keys, when a number key of a number which a short
key has been set is received from the user, the display unit 110
displays both the phone number set as the short key and various
information.

(Spec. [0016], emphasis added.)

The phone book database sequentially stores phone numbers
input by the user. Accordingly, when the order of the phone
numbers stored in the phone book database is not randomly set
by the user, addresses are set and stored according to an input
order. The short key database receives the short key setup menu
from the user, receives a number of a number key to be
designated as the short key, and stores short keys set separately
from the order of the phone book.

(Spec. [0017], emphasis added.)

The key input unit 130 is used when the user inputs both various
data stored in the mobile communication terminal and signals
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used for performing various functions in the mobile
communication terminal. For example, the key input unit 130
according to an exemplary embodiment of the present invention
is used when the numbers of the number keys of the key input
unit 130 are set as short keys by the user and phone numbers are
received so as to correspond to the numbers of the number keys.

(Spec. [0018], emphasis added.)

Consequently, we find that an ordinarily skilled artisan, having read
Appellants’ Specification, would not have been apprised of the scope of
independent claim 1. Further, we decline to engage in speculative
assumptions concerning the meaning of Appellants’ claim language. See In
re Steele, 305 F.2d 859, 862-863 (CCPA 1962). Thus, Appellants have not
persuaded us the Examiner erred in concluding that independent claim 1 is
indefinite under 35 U.S.C. §112, second paragraph.
Appellants have not presented any substantially different arguments
for independent claims 7 and 11, which require the same disputed claim
limitation as claim 1. Accordingly, we sustain the rejection of independent
claims 7 and 11 under 35 U.S.C. § 112, second paragraph. Similarly,
Appellants have not presented any substantive arguments with respect to
dependent claims 2-3, 5-6, and 9-10, and thus, these claims fall with their
respective independent claims. See 37 C.F.R. § 41.37(c)(1)(vii) (stating that
“the failure of Appellant to separately argue claims which Appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately”).
Therefore, we sustain the rejection of claims 1-3, 5-7, and 9-11 under 35
U.S.C. § 112, second paragraph.

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ISSUE 2
§ 102(b) Rejection of Claims 1, 2, 6, 7, 9, and 11
As a consequence of our analysis regarding the indefiniteness of
claims 1-3, 5-7, and 9-11 discussed supra, we pro forma reverse the
Examiner’s rejections of claims 1, 2, 6, 7, 9, and 11 under 35 U.S.C.
§ 102(b). The subject matter encompassed by these claims must be
reasonably understood without resort to speculation. Presently, speculation
and conjecture must be utilized inasmuch as the cited claims do not
adequately reflect what the disclosed invention is. In re Steele, 305 F.2d
859, 862 (CCPA 1962) (a prior art rejection cannot be sustained if the
hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language); see
also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejections.

ISSUE 3
§ 103(a) Rejection of Claims 3, 5, and 10
For the reasons discussed above, we pro forma reverse the Examiner’s
rejections of claims 3, 5, and 10 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1-3, 5-7, and 9-11 under 35
U.S.C. § 112, second paragraph is affirmed. The Examiner’s decision to
reject claims 1, 2, 6, 7, 9, and 11 under 35 U.S.C. § 102(b) is pro forma
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Application 11/377,288

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reversed on the basis that these claims are indefinite. The Examiner’s
decision to reject claims 3, 5, and 10 under 35 U.S.C. § 103(a) is pro forma
reversed on the basis that these claims are indefinite. Since we have
affirmed at least one ground of rejection with respect to each claim on
appeal, the Examiner's decision is affirmed. See 37 C.F.R. § 41.50(a)(1).
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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