Ex Parte Kim et al

Patent Trial and Appeal Board

Dec 19, 2016

12481978 (P.T.A.B. Dec. 19, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/481,978 06/10/2009 Dae-hyun Kim Q112789 6257
23373 7590 12/21/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
CHOWDHURY, AFROZA Y
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAE-HYUN KIM, SEUNG-DONG YU, WOO-YONG CHANG,
EUN-HEE PARK, and CHANG-HWAN HWANG
Appeal 2016-004728
Application 12/481,97 s1
Technology Center 2600
Before ALLEN R. MACDONALD, BRADLEY W. BAUMEISTER, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 3—9, and 12—22. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 2, 10, and 11 have been
canceled. App. Br. 17, 19.
We affirm and designate our affirmance of the rejection of claim 22
under 35 U.S.C. § 103(a) as a new ground of rejection.2
1 The Appeal Brief identifies Samsung Electronics Co., Ltd. as the real party
in interest. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief, filed August 31, 2015
(“App. Br.”); Appellants’ Reply Brief, filed April 1, 2016 (“Reply Br.”); the
Examiner’s Answer, mailed February 2, 2016 (“Ans.”); and the Final Office
Action, mailed March 27, 2015 (“Final Act.”).
Appeal 2016-004728
Application 12/481,978
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 9, and 17 are independent claims. Claim 1 is reproduced
below:
1. A method of controlling an electronic device by using a
remote control device comprising a touch screen, the method
comprising:
selecting a channel switching function from a plurality of
functions supported by the electronic device via the touch screen;
in response to an input detected by the touch screen,
sequentially displaying each user interface for controlling the
channel switching function of a plurality of user interfaces for
controlling the channel switching function on the touch screen;
and
controlling the electronic device by using one of the
plurality of user interfaces that are sequentially displayed,
wherein the plurality of user interfaces comprise a user
interface for switching channels up and down and a user interface
for inputting channel numbers,
wherein the sequentially displaying each user interface for
controlling the channel switching function of the plurality of user
interfaces for controlling the channel switching function on the
touch screen is performed according to at least one of a first
predetermined sequence if the input detected by the touch screen
is a first sliding gesture performed in a first direction and a
second predetermined sequence if the input detected by the touch
screen is a second sliding gesture performed in a second
direction,
wherein the controlling the electronic device comprises
performing a channel changing operation in response to a touch
input, different from a sliding gesture, being detected by the
touch screen on the one of the plurality of user interfaces, and
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Application 12/481,978
wherein the sequentially displaying of each user interface
is maintained in response to performing the channel changing
operation.
References
Van EE et al. (“Van”) US 2001/0015719 A1 Aug. 23, 2001
Chaudhri et al. (“Chaudhri”) US 2009/0064055 Al Mar. 5, 2009
Examiner’s Rejection
Claims 1, 3—9, and 12—22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Van and Chaudhri. Final Act. 2—7.
ANALYSIS
Claims 1, 3, 5—9, and 13—21
Appellants contend the rejection of claim 1 is in error, arguing that the
Examiner has not provided sufficient articulated reasoning supporting the
combination of Van and Chaudhri and further offering reasons why,
allegedly, it would not have been obvious to combine the teachings of Van
and Chaudhri. See App. Br. 9-12; Reply Br. 4—6. For the reasons explained
below, we disagree with Appellants’ contentions and affirm the rejection of
claim 1.
Appellants argue “the Examiner states it would be obvious to combine
the teachings of Chaudhri with Van to provide a more user friendly
application menu,” but “the Examiner has not provided an objective reason
why this would be the case.” App. Br. 11; see also Reply Br. 5 (“[T]he
Examiner does not provide any evidence of a reason to combine the
individual elements.”).
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Contrary to Appellants’ argument, the Examiner cites Chaudhri to
support this rationale. Final Act. 4 (citing Chaudhri | 7). Chaudhri, which
describes the use of swiping gestures on a touch screen to move between
screens of a user interface (198), explains that advantages of the described
subject matter include “a more user-friendly and/or ergonomic application
menu.” Chaudhri 17. Thus, Chaudhri itself is evidence supporting the
Examiner’s stated rationale, and Appellants do not address this disclosure in
Chaudhri relied upon by the Examiner.
Appellants argue “[mjodifying Van to use a swiping command would
change the principle of operation of Van by not allowing a user to select
menu buttons to display different menus,” and “the buttons of Van would
take up space and become redundant in view of the swiping to change
menus.” App. Br. 11. These arguments do not persuade us that the
Examiner’s proposed combination is improper. Under the Examiner’s
rejection, the device of Van continues to operate as a remote control, but
with added functionality allowing the user to swipe a touch screen to change
the interface page, as taught in Chaudhri.
Appellants further argue that “[t]he device of Van simply does not
allow sufficient area for a gesture or swipe input of Chaudri, which could
result in the activation of numerical keys of the keypad, rather than detection
of the swipe.” Reply Br. 5. Absent from Appellants’ argument is any
reference to a disclosed touch screen size in Van or any explanation of what
minimum touch screen size is necessary to practice the claims, which do not
recite any size requirements for the touch screen. Van discloses that
“[tjouch screen 104 is, for example, a resistive tablet.'” Van 113 (emphasis
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added). Appellants’ arguments do not persuade us that a tablet would be so
size limited as to preclude the combination proposed by the Examiner.
Furthermore, the claims do not recite any size restrictions for the
claimed touch screen remote control. As such, Appellants’ arguments are
not commensurate in scope with the claims.
We are not persuaded the Examiner erred in concluding the subject
matter of claim 1 would have been obvious based on the teachings of Van
and Chaudhri, and, therefore, we sustain the rejection of claim 1 under
35 U.S.C. § 103(a), as well as the rejection of claims 3, 5—9, and 13—21, for
which Appellants offer no additional argument. See App. Br. 12, 15.
Claims 4 and 12
Appellants characterize generally the portions of the references cited
by the Examiner and argue that each of Van and Chaudhri is “silent with
respect to ‘a first user interface, which is either a most frequently used user
interface or a user interface designated by a user in advance, is displayed
first in the sequentially displaying of each of the plurality of user interfaces
on the touch screen,”’ as recited in claim 4. App. Br. 13.
We are not persuaded of error. Claim 4 recites user interfaces in the
alternative, using the word “or,” one of which is “a user interface designated
by a user in advance.” Figures 8A through 8C of Chaudhri, which the
Examiner relies upon in rejecting claim 4, “contain[] block diagrams of the
example mobile device 101 with a horizontally scrolling application menu”
and depict “display objects 106,” which are “are graphic representations of
system objects,” examples of which “include device functions, applications,
windows, files, alerts, events, or other identifiable system objects.”
Chaudhri H 32, 95, Figs. 8A-8C.
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Chaudhri describes that “the display objects 106 can be configured by
a user, e.g., a user may specify which display objects 106 are displayed.”
Chaudhri 139. Similarly, Van describes that “[t]he GUI [(graphical user
interface)] is user-programmable to select the icons that should be present in
the main menu and those that should not.” Van|3. Both references,
therefore, teach user interfaces that are configurable by the user. A user
interface that is configured by the user reasonably may be interpreted as
constituting an interface that is “designated by a user in advance” by virtue
of the user’s configuration.
As such, we are not persuaded the Examiner erred in concluding the
subject matter of dependent claim 4 would have been obvious based on the
teachings of Van and Chaudhri, and, therefore, we sustain the rejection of
claim 4 under 35 U.S.C. § 103(a), as well as the rejection of claim 12, which
recites similar subject matter and which Appellants argue with claim 4.
App. Br. 12-14.
Claim 22
Claim 22 depends from claim 1 and recites that “the plurality of user
interfaces includes a user interface for switching channels up and down, a
user interface for inputting channel numbers, and a user interface for
displaying a list of channels.” Appellants contend Van “shows a user
interface with channel numbers and a user interface with arrow keys” but
does not disclose “a user interface for displaying a list of channels.”
App. Br. 14 (emphasis removed).
We agree with Appellants that the portions of Van relied upon by the
Examiner do not appear to teach or suggest “a user interface for displaying a
list of channels.” This finding does not end our inquiry, though. It is well
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settled that an invention cannot distinguish the prior art based on the
informational content of a claim element unless “the claimed informational
content has a functional or structural relation to the substrate.” In re
DiStefano, 808 F.3d. 845, 850 (Fed. Cir. 2015); see also Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed.
Cir. June 12, 2006) (Rule 36).
Here, there is no dispute that the prior art of record teaches displaying
a plurality of user interfaces. See App. Br. 14 (wherein Appellants
acknowledge that “Van merely shows a user interface with channel numbers
and a user interface with arrow keys.”). Rather, what is allegedly missing
from the cited prior art is merely a teaching of displaying certain
information, i.e., a list of channels, on one of the user interfaces. See In re
DiStefano, 808 F.3d. at 850 (“matter claimed for what it communicates” is
subject to the “printed matter” doctrine).
Neither claim 1 nor claim 22 recites any functionality tied to the
display of that information, such as the changing of a channel by touching a
channel in the list. Rather, the claim encompasses the display of a channel
list for informational purposes only. Displaying content on a screen for
informational purposes was known at the relevant time, as demonstrated by
the teachings of Chaudhri. For example, Chaudri discloses that “FIG. 10B is
a block diagram of an example mobile device displaying an information
dialog regarding an interface element which has a restricted status.”
Chaudhri 126, Fig. 10B (emphasis added).
There is no recited “functional or structural relation” between the list
of channels and the performance of the method of claim 1. We therefore
determine that the claimed subject matter alleged to be lacking in the prior
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art—displaying a list of channels—is not entitled to patentable weight for its
informational content and, therefore, does not distinguish claim 22 from the
prior art of record. To hold otherwise would allow indefinite patenting of
methods for displaying information by simple recitations of different types
of information presented. See King Pharms., Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of cases is
preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.”).
We find the evidence supports the Examiner’s conclusion of
obviousness as to claim 22, and, therefore, we sustain the rejection of
claim 22 under 35 U.S.C. § 103(a), but we designate our affirmance as a
new ground of rejection in light of the discussion above.
DECISION
We affirm the Examiner’s decision to reject claims 1, 3—9, and 12—22
under 35 U.S.C. § 103(a).
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
37 C.F.R, 41.50(b)
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