Ex Parte Lee

Patent Trial and Appeal Board

Dec 12, 2014

12816090 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAE KYUNG LEE
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Appeal 2012-009965
Application 12/816,090
Technology Center 2600
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Before ALLEN R. MacDONALD, CAROLYN D. THOMAS and
JOHN P. PINKERTON, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/816,090

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–6, 8–12, and 24–32. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 1, 24, and 27 under appeal read as follows
(emphasis and formatting added):
Claim 1. A mobile communication terminal for controlling a plurality
of electronic apparatuses, the mobile communication terminal comprising:
[(a)] an interface configured for coupling to a transmitter;
[(b)] a communication module including an internet communication
module configured to directly access an internet to communicate with a
server;
[(c)] a display module;
[(d)] an input module; and
[(e)] a controller configured to install a software program received
from the server, wherein the software program is configured to:
[(i)] control the display module to display a first list of the
plurality of electronic apparatuses of which remote controller
information is stored in the server, wherein the first list is received
directly from the server via the internet communication module,
wherein the first list of the plurality of electronic apparatuses includes
different kinds of electronic apparatuses, electronic apparatuses from
different manufacturers or different electronic apparatus models,
[(ii)] select one electronic apparatus from the displayed first list
of the plurality of electronic apparatuses based on a first input
received via the input module,
[(iii)] receive the remote controller information of the selected
one electronic apparatus from the server,
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[(iv)] control the display module to display a second list of
remote controller functions based on the received remote controller
information,
[(v)] select one function from the displayed second list of
remote controller functions based on a second input received from the
input module, and
[(vi)] provide a control signal to the interface relating to the
selected one function, wherein the mobile communication terminal
includes a telephone mode for input of a telephone number and for
telephone communication.
24. The mobile communication terminal of claim 1, wherein the
transmitter to output an operation signal corresponding to the received
control signal, the operation signal for causing the selected one
electronic apparatus to perform an operation.
27. The mobile communication terminal of claim 26, further
comprising an input module configured to receive a mode selection
for activating the remote controller mode.
Rejection
The Examiner rejected claims 1–6, 8–12, and 24–32 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kemink (WO
00/17738; Mar. 30, 2000), King (US 6,721,288 B1; Apr. 13, 2004), and
Pettit (US 6,445,933 B1; Sept. 3, 2002). 1

1 Separate patentability is not argued for claims 2–6, 8–12, 25, 26, and 28–
32.
As to claims 28, 29, and 32, Appellant merely repeats for claim 28 the
arguments directed to claim 1, for claim 29 the arguments directed to claim
24, and for claim 32 the arguments directed to claim 27. While using an
argument for patentability of a first claim as a cut-and-paste argument for a
second claim might outwardly appear to be a separate argument for
patentability of the second claim, such a cut-and-paste argument is not in
fact an argument for “separate patentability.”
As to claims 2–6, 8–12, 25, 26, 30, and 31, Appellant’s following
statement is not an argument for patentability:
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Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Kemink, King and Pettit do not teach or suggest a
communication module including an internet communication
module configured to directly access an internet to
communicate with a server in combination with the first list (of
the plurality of electronic apparatuses) is received directly from
the server via the internet communication module, and/ or
receive the remote controller information of the selected one
electronic apparatus from the server, as recited in independent
claim 1.
App. Br. 9. Appellant further contends that the Examiner erred because:

Dependent claim 2 depends from independent claim 1 and
therefore defines patentable subject matter at least for this
reason. However, dependent claim 2 contains additional
features such that dependent claim 2 does not stand or fall
together with independent claim 1. For example, dependent
claim 2 recites a memory configured to store the remote
controller information of the electronic apparatuses, wherein the
stored information includes at least one of remote controller
code information and remote controller function information.
The applied references do not teach or suggest at least these
features of dependent claim 2 either alone or in combination
with the other features of independent claim 1. Thus, dependent
claim 2 defines patentable subject matter at least for these
additional reasons.
App. Br. 13. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”) Appellant present analogous statements for each of
claims 2–6, 8–12, 25, 26, 30, and 31.
Except for our ultimate decision, claims 2–6, 8–12, 25, 26, and 28–32
are not discussed further herein.
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King does not teach the mobile communication terminal to
directly access an internet to communicate with a server.
Appellant respectfully notes that King’s FIGs. 2A-11 relate to a
different type of communication than King’s FIG. lA.
App. Br. 11. Also, “Appellant respectfully submits that the Patent Office is
picking-and-choosing elements from different references without regard to
how the features are claimed. Further, there is no suggestion to combine
Kemink and King as alleged.” Id.
2. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “[t]he Office Action’s attempt to
modify Kemink’s controller device 100 so as to include alleged means to
directly access the internet would expressly teach away from Kemink’s
intended purpose.” App. Br. 11.
3. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “[t]he Office Action further relies
on impermissible hindsight . . .” App. Br. 12.
4. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “[t]here is no teaching in Kemink
of to display a first list of a plurality of electronic apparatuses on a mobile
communication terminal.” App. Br. 12.
5. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because (a) “Kemink does not teach or
suggest an interface of a mobile communication terminal configured for
coupling to a transmitter,” and (b) “Kemink, King and Pettit also do not
teach to provide a control signal to the interface . . .” App. Br. 13.
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6. Appellant further contends that the Examiner erred in rejecting
claim 24 under 35 U.S.C. § 103(a) because “[t]he Office Action does not
appear to address the features of dependent claim 24.” App. Br. 18.
7. Appellant further contends that the Examiner erred in rejecting
claim 27 under 35 U.S.C. § 103(a) because “[t]he Office Action does not
specifically discuss the features of dependent claim 27.” App. Br. 20.
8. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because “[t]he Examiner's Answer then
appears to state that the downloading of software codes inherently includes
the downloading of control codes from a server.” Reply Br. 4.

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious for the
reasons argued by Appellant?
Did the Examiner err in rejecting claims 24 and 27 as being obvious
because the rejection does not address the limitations of these claims?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellant’s above contention 1, we disagree. We agree with the
Examiner’s rejection and the Examiner’s response in the Answer at page 9,
last paragraph, through page 10, first full paragraph. Further, an artisan
would recognize as correct the Examiner’s statement that “King teaches the
mobile device is directly connected to the Internet (figure 1).” Final
Rejection 4. An artisan would understand that it was reasonable to view
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everything in King’s figure 1A to the left of Mobile Devices 1–n as being
part of the Internet. We find nothing in Appellant’s Disclosure that
contradicts this view. As to Appellant’s concern that “the Patent Office is
picking-and-choosing elements from different references without regard to
how the features are claimed,” Appellant fails to explain what is meant by
“how the features are claimed.” As to Appellant’s argument that a
“suggestion” is required, we disagree. Appellant’s argument fails to
acknowledge the impact of the Court’s explicit rejection in KSR of the rigid
requirement that the art suggest a modification. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 415 (2007)(“We begin by rejecting the rigid approach of
the Court of Appeals.”).
As to Appellant’s above contention 2, we disagree. Appellant’s
“teach away” argument fails to set forth any explanation of how Kemink
teaches away.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. . . . [I]n general, a reference will teach
away if it suggests that the line of development flowing from
the reference's disclosure is unlikely to be productive of the
result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
As to Appellant’s above contention 3, we disagree with Appellant’s
“impermissible hindsight” argument. We find no such hindsight in the
Examiner’s rejection. It must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning. But so long as it takes into account only knowledge which was
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within the level of ordinary skill at the time the claimed invention was made,
and does not include knowledge gleaned only from the appellant’s
disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d
1392, 170 USPQ 209 (CCPA 1971).
As to Appellant’s above contention 4, we disagree. We agree with the
Examiner’s rejection and the Examiner’s response in the Answer at page 12,
first full paragraph. Further, an artisan would recognize that the index
taught by “an icon 142 to switch to an index of controllable devices and
function[s]” (Kemink 2:27–28) is just such a first list.
As to Appellant’s above contention 5, we disagree. We agree with the
Examiner’s rejection and the Examiner’s response in the Answer at page 12,
second full paragraph. Further, an artisan would recognize that Kemink
explicitly teaches a transmitter (Kemink 6:18–20) and that the “effect”
taught by “[t]he user merely touches the icon 131-134 on the LCD touch
screen 110 to effect the desired function” (Kemink 2:25–26) includes just
such providing a control signal to the interface.
As to Appellant’s above contentions 6 and 7, we disagree. We agree
with the Examiner’s response in the Answer at page 14, second full
paragraph. Further, we conclude that an artisan would recognize that the
subject matter of these claims is covered by the Examiner’s Final Rejection
at page 4 (where the Examiner cites to the same lines in Kemink as cited in
the Examiner’s response in the Answer at page 14).
As to Appellant’s above contention 8, we disagree. The Examiner did
not state in the Answer (page 8) that “downloading of software codes
inherently includes the downloading of control codes from a server.” The
Examiner stated that “the downloading of the control code from an Internet
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site inherently include the downloading of control codes from a server
because the internet site serves the request of the clients for the downloading
of the software codes.” Appellant does not challenge that downloading from
an Internet site inherently includes that the downloading is from a server.
Rather, Appellant’s argument is a nonresponsive straw man and as such fails
to demonstrate error in the Examiner’s findings and reasoning. Examiner
error cannot be shown based on incorrect interpretations or misstatements of
the record.

CONCLUSION
(1) The Examiner has not erred in rejecting claims 1–6, 8–12, and
24–32 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1–6, 8–12, and 24–32 are not patentable.

DECISION
The Examiner’s rejection of claims 1–6, 8–12, and 24–32 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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