Ex Parte Lee

Patent Trial and Appeal Board

Mar 12, 2015

11835673 (P.T.A.B. Mar. 12, 2015)

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.
11/835,673 08/08/2007 Dong-Kook LEE 678-3101 (P14567) 1852
66547 7590 03/13/2015
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
HUR, ECE
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
03/13/2015 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 DONG-KOOK LEE
1

__________

Appeal 2012-009170
Application 11/835,673
Technology Center 2100
__________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

HARLOW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
and mobile communication terminal for changing the configuration of a
screen displaying function items. 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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STATEMENT OF THE CASE
Conventional mobile communication terminals display icons and titles
for function items in a format that can make it difficult to visually
distinguish between different function items. (Spec. ¶ 3.) The Specification
explains,
since specific function items may be conventionally displayed
only in a similar size and shape, it is difficult for users to
differentially display high-preference items. For example,
icons or list items indicating a buddy group and a family group
in a phonebook are very similar to each other in size and shape,
and differentiation between them, other than changing only a
sequence of the icons or lists, is not available.
(Id. ¶ 6.)
The Specification teaches a method and corresponding apparatus for
changing the configuration of a screen displaying function items, including
changing the size or position of a block of function items in order to increase
visibility of and access to those function items on the display screen (id. ¶ 8).
The Specification provides:
In accordance with an aspect of the present invention,
there is provided a method for changing a configuration of a
screen displaying function items of a mobile communication
terminal, including activating a block onto which an indicator is
moved in a screen displaying at least one block in which
detailed items are provided for functions of the mobile
communication terminal; determining whether an edit request is
input from a user in a state in which the block is activated; and
reconfiguring the screen by changing at least one of size and
position of the activated block in response to a user setting
when the edit request is input.
(Id. ¶ 9.) “When the edit function is not selected although a specific work
block is activated as described above, the work block itself is enlarged and
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displayed in response to the zoom-in input, so detailed items of the work
block can be displayed to the user” (Id. ¶ 22).
Claims 1–11 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method for changing a configuration of a screen
displaying function items of a mobile communication terminal,
the method comprising:
displaying a plurality of blocks, each block having
executable detailed items which are displayed within said each
block and correspond to functions of the mobile communication
terminal;
activating a block among the plurality of blocks
according to a user selection;
enlarging the activated block corresponding to the user
selection and displaying enlarged detailed items of a function
mapped to the enlarged block within the enlarged block;
determining whether an edit request is input from the
user in a state in which the block is activated; and
reconfiguring the screen by changing at least one of size
and position of the activated block in response to a user setting
when the edit request is input,
wherein the activated block and the executable detailed
items within the activated block corresponding to the functions
of the mobile communication terminal are simultaneously
enlarged in response to the user selection, such that a size of the
enlarged activated block is larger than a size of each block of
the plurality of blocks that are not activated.

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The claims stand rejected for obviousness as follows:
Claims 1 and 3–11 based on Ito,
2
Anthony,
3
and Anwar;
4
and
Claim 2 based on Ito, Anthony, Anwar, and Kumagai.
5

I.
Issue
The Examiner has rejected claims 1 and 3–11 under § 103(a) as
obvious based on Ito, Anthony, and Anwar. There are two independent
claims in this grouping, claims 1 and 6; however, the Appellant argues the
claims together, analyzing only claim 1. (App. Br. 7–9.) Therefore, we
confine our discussion to representative claim 1. Claims 3–11 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv); see also In re McDaniel, 293 F.3d
1379, 1384 (Fed. Cir. 2002).
The Examiner finds that Ito discloses displaying a plurality of blocks,
each having associated executable detailed items corresponding to functions
of the mobile terminal (Ans. 6). The Examiner further finds that Ito
discloses “activating a block among the plurality of blocks according to a
user selection,” “enlarging the activated block and displaying detailed items
of a function mapped to the enlarged block on the enlarged block when a
zoom-in request is input,” and simultaneously enlarging the activated block
and detailed items such that the size of the activated block is larger that each
block of the plurality of blocks that are not activated. (Id. at 6–7.)

2
Ito et al., US 7,587,683 B2, issued Sept. 8, 2009.
3
Anthony et al., US 2005/0240878 A1, published Oct. 27, 2005.
4
Anwar et al., US 2006/0123360 A1, published June 8, 2006.
5
Kumagai et al, US 7,631,274 B2, issued Dec. 8, 2009.
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The Examiner finds that Ito does not explicitly teach “determining
whether an edit request is input from a user in a state in which the block is
activated; and reconfiguring the screen by changing at least one of size and
position of the activated block in response to a user setting when the edit
request is input” (id. at 7). The Examiner finds, however, that Anthony
discloses these aspects of claim 1, and that it would be obvious “to add the
resizing concept of icons to Ito’s display because this would allow the user
to resize their icons in real time to [a] certain size when performing routine
tasks like accessing [the] phone directory” (id.).
The Examiner finds that “Ito and Anthony do not specifically disclose
the claimed aspect of [executable detailed] items are displayed within said
each block, [but] Anwar discloses the claimed aspect in FIG. 4A-4C,
wherein 460a-460f items are illustrated and item 460b gets enlarge and has
further items 462d-462e in it. (Anwar, Paragraphs 0044-0048).” (Id.) The
Examiner also finds that it would be obvious “to add this feature of items
displayed within each block to Ito’s display and Anthony’s because this
would organize the display more efficiently.” (Id. at 7–8.)
Appellant challenges the Examiner’s rejection on two bases. First,
Appellant argues that Ito and Anthony do not disclose “executable detailed
items which are displayed within said each block,” or “displaying enlarged
detailed items of a function mapped to the enlarged block within the
enlarged block,” because these references depict icons representing a
“higher-level menu of the mobile phone” (App. Br. 6–7), and because the
submenus in Ito are displayed next to the icons (App. Br. 6).
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Second, Appellant argues that Ito and Anthony do not teach
“reconfiguring the screen by changing at least one of size and position of the
activated block.” Appellant contends that Ito does not disclose this aspect
because “the process of enlarging the selected icon of Ito et al. is a temporal
operation,” and Ito “teaches reducing the temporarily enlarged icon when a
different icon is selected.” (App. Br. 6.) Appellant acknowledges that Ito
and Anthony “teach changing the icon in size,” but argues that this
combination fails to “teach or suggest changing at least one of size and
position of the activated block having executable detailed items provided for
functions of the mobile communication terminal.” (App. Br. 7.)
The issues presented are whether Appellant has presented sufficiently
persuasive evidence for us to conclude that the Examiner erred with respect
to Anwar’s disclosure of the “executable detailed items displayed within
said each block” aspect of claim 1, and whether the combination of Ito,
Anthony, and Anwar discloses the reconfiguring the screen by changing at
least one of size and position of the activated block aspect of claim 1.
Findings of Fact
FF 1. Ito discloses
A display method for displaying a plurality of icons in list form
on a display device by a list-form displaying section and for
enlarging and reducing an icon. When a first icon is selected
while second icon previously selected is being enlarged, the
second icon is enlarged to a predetermined size, and then after
the enlargement, the enlarged second icon is reduced so as to
have a size substantially equal to the size of each of icons which
are not selected.
(Ito, Abstract; Ans. 9.)
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FF 2. Ito discloses the control unit 11 can operate as:
1) a list display section 21 that displays icons and menus in list
form on the display unit 5 on the basis of the display program;
2) a cursor display section 22 that displays a cursor for selecting
a desired icon or menu;
3) an enlarging section 23 that enlarges an icon selected by a
user;
4) a reducing section 24 that reduces icons other than the icon
selected by the user;
5) a cursor-operation detecting section 25 that detects a cursor
moving operation performed by the user by detecting an
operating state of the operating unit 6;
6) a display-position adjusting section 26 that adjusts the
display position of each icon so that all the icons can be
displayed on the display unit 5 even if the icon enlargement is
performed.
(Ito 6:56–7:7; Ans. passim.)
FF 3. Ito discloses in Figures 5A–C (not shown) that when “an icon is
selected, the selected icon can be displayed in enlarged form” (Ito 8:43–44;
see also Ans. 9). For example, Figure 5B (not shown) depicts the selected
“INTERNET” icon as enlarged relative to the other icons in the figure (Ito,
Fig. 5B).
FF 4. Ito discloses “illustrations of lower menus corresponding to a
selected icon which are displayed with the icon” (Ito 5:15–16, see also Fig.
8A and 8B). Figure 8A is reproduced below:
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(Ito, Fig. 8A.; Ans. passim.) Figure 8A “shows a case in which an
‘ENTERTAINMENT’ icon is selected” (Ito 14:9–10). The
“ENTERTAINMENT” icon is larger than the other icons displayed in
Figure 8 (Ito Figure 8). “[L]ower menus, such as MY SELECTIONS,
CAMERA, MY PICTURES, MUSIC PANEL, MELODY FOLDER,
EXTERNAL MEMORY, and DEVICE INFORMATION, of a menu group
corresponding to the ‘ENTERTAINMENT’ icon are displayed as lower
menus.” (Ito 14:10–15.)
FF 5. Ito discloses in Figures 12A–12C (not shown) that the selected
“INTERNET” icon is enlarged, and that a lower level menu of associated
functions, such as “MAIL” (Ito, Figs. 12A–12C; Ans. 6).
FF 6. Anwar discloses in Figure 4 “embodiments of menu navigation,
menu item selection, menu item highlighting, and menu item ‘reveal’
techniques” (Anwar, 2 ¶ 19). Figure 4A is reproduced below:
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(Anwar, Fig. 4A; Ans. 7.) The Figure shows:
[S]ix primary menu items 460a-460j, labelled “Contacts”,
“Messages”, “Calendar”, “Camera”, “File Browser”, and
“Settings”, respectively. The menu system 120 assigns each
primary menu item 460a-460f a corresponding visual field
465a-465f in which the primary menu item is displayed. A
visual field 465 is a collection of pixels arranged for example,
in a rectangular or other geometric shape that distinguishes one
primary menu item 460 from another.
In FIG. 4A, each primary menu item 460a-460f is assigned a
generally rectangular visual field 465, one above another in a
vertical column. Each visual field 465a-465f includes an icon
corresponding to its associated primary menu item 460a-460j,
as well as a text label. In addition, visual field 465a
(corresponding to primary menu item 360a in FIG. 3), labelled
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“Contacts”, is larger than the other visual fields 465b-465e.
The visual field 465a also includes three secondary menu item
462a-462c.
(Anwar, 4 ¶¶ 42–43.)
FF 7. Anwar discloses “[t]he larger visual field 465a of primary menu
item 460a indicates the primary menu item 460a is active” (Anwar, 4 ¶ 44).
“The larger visual field 465a is one of a number of visual cues generated by
the highlight process 126 to indicate to a user which menu item or items 460
and 462 is active at a given time” (Anwar, 4 ¶ 44; Ans. 7).
FF 8. Anwar discloses “[a]s with highlighting primary menu items
460, the highlight process 126 can also scale, animate, change the z-order of,
etc. secondary menu items 462 to indicate the active state of a secondary
menu item 462” (Anwar, 4 ¶ 46; Ans. 7).
FF 9. Anwar discloses “[u]sing the reveal technique, it is feasible to
get at least four secondary menu items 462 on screen for an active primary
menu item 460” (Anwar, 4 ¶ 48; Ans. 7).
FF 10. Anwar discloses “a diagrammatic illustration of a further
embodiment of an animated zoom transition” (Anwar, 2 ¶ 21, see also Fig.
8). Figure 8A shows “an initial display screen comprising a column of
primary menu items 860a-860f. The highlighted primary menu item 860c
contains two secondary menu items 862a and 862b.” (Anwar, 7 ¶ 72.) A
“zoom transition sequence expands the display of the adjacent area of the
current menu level 864a along with the selected secondary menu item 862a'”
(Anwar, 7 ¶ 73, see Fig. 8B).
FF 11. Anthony discloses “[a] method and system are provided for
displaying icons in accordance with user preferences. The method includes
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providing a user with a size selection mechanism for selecting an icon size
from a range of sizes.” (Anthony Abstract; Ans. 7.)
FF 12. Anthony discloses icons in various sizes. Figure 3A is
reproduced below:

(Anthony Fig. 3A; Ans. 7.) Figure 3A shows “a sampling of document
icons 302, 304, 306, 308, 310, 312, 314, 316, and 318. The document icons
302, 304, 306, 308, 310, and 312 each include respective document images
302a, 304a, 306a, 308a, 310a, and 312a” (Anthony 3 ¶ 40). “In
embodiments of the invention, the document icons are provided in six sizes
including 16x16, 24x24, 32x32, 48x48, 128x128, and 256x256 pixels. In
alternate embodiments, some of these sizes may be omitted and/or additional
sizes may be included” (Anthony 4 ¶ 40).
FF 13. Anthony discloses “[a]n icon size slider 702” (Anthony 7 ¶ 70,
see Fig. 7; Ans. 8). “A user can move the icon slider 702 to adjust the icon
size” (Anthony 7 ¶ 70; Ans. 8).
FF 14. The Specification discloses “[w]hen the edit function is not
selected although a specific work block is activated as described above, the
work block itself is enlarged and displayed in response to the zoom-in input,
so detailed items of the work block can be displayed to the user” (Spec.
7 ¶ 22), and “[w]hen a user zooms in on a desired formlet, the user can view
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detailed items of a function mapped to the formlet” (Spec. 5 ¶ 15). (See also
Spec. 7 ¶ 21, 8 ¶ 24, 11 ¶ 34).
Principles of Law
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(internal citations omitted). When appealing a rejection to this Board,
Appellant bears the burden of showing error in the Examiner’s holding of
unpatentability. See Ex parte Catan, 83 USPQ2d 1569, 1570 (BPAI 2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Ito discloses a plurality of blocks, each block having associated
executable detailed items that correspond to functions of the mobile
communication terminal (FF 1, FF 4, FF 5). Ito further discloses activating
a block among the plurality of blocks according to user selection, and
enlarging the activated block corresponding to a user selection (FF 2–5).
Anthony discloses determining whether an edit request is input from the user
in a state in which the block is activated and reconfiguring the screen by
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changing at least one of size and position of the active block in response to a
user setting when an edit request is input (FF 11–13). Anwar discloses
executable detail items displayed within blocks (FF 6, FF 9), enlarging an
activated block in response to user selection of that block (FF 7), and
highlighting executable detailed items within blocks by scaling them (FF 8,
FF 10).
The Examiner concludes that it would be obvious to combine
Anthony’s icon resizing process with Ito’s display “because this would
allow the user to resize their icons in real time to [a] certain size when
performing routine tasks like accessing [a] phone directory” (Ans. 7). As
explained above, it would also be obvious to add Anwar’s feature of
displaying executable detailed items within a block to the combination of Ito
and Anthony “because this would organize the display more efficiently”
(Ans. 7–8).
Appellant argues that Ito and Anthony do not disclose the “executable
detailed items displayed within said each block” and “displaying enlarged
detailed items of a function mapped to the enlarged block within the
enlarged block” aspects of claim 1. (App. Br. 6–7.) Appellant does not,
however, address the Examiner’s finding that Anwar discloses detailed items
displayed within blocks. In particular, the Examiner finds:
Ito and Anthony do not specifically disclose the claimed
aspect of items are displayed within said each block, Anwar
discloses the claimed aspect in FIG. 4A-4C, wherein 460a-460f
items are illustrated and item 460b gets enlarged and has further
items 462d-462e in it. (Anwar, Paragraphs 0044-0048). It
would be obvious to one of ordinary skill in the art at the time
of the invention to add this feature of items displayed within
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each block to Ito's display and Anthony’s because this would
organize the display more efficiently.
(Ans. 7–8.)
Indeed, although Appellant acknowledges that the “executable
detailed items” aspect is “allegedly taught in Anwar” (App. Br. 5), Appellant
never substantively addresses Anwar. Instead, Appellant relies only on
unsupported boilerplate statements that “Anthony et al. and Anwar fail to
cure these deficiencies in Ito et al.” sprinkled throughout the briefing. (App.
Br. 5–6; Reply Br. 1–2.)
On this record, we find Appellant has failed to present sufficiently
persuasive argument or evidence for us to conclude that the Examiner erred
with respect to Anwar’s disclosure of the “executable detailed items
displayed within said each block” aspect of claim 1. The Examiner’s finding
that Anwar discloses executable detailed items within a block, identification
of portions of Anwar setting forth this disclosure, and conclusion that a
person of ordinary skill in the field at the time of the invention would have
been motivated to combine Anwar with Ito and Anthony “because this
would organize the display more efficiently” established a prima facie case
of obviousness (Ans. 7–8). See Jung, 637 F.3d at 1362.
Appellant’s explanation of why Ito or Anthony does not disclose a
claim feature, followed by the naked assertion that Anwar fails to cure these
perceived deficiencies does not amount to a separate patentability argument
and is inadequate to overcome the Examiner’s prima facie obviousness case.
See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
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(“[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.”); cf. In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”).
Appellant also contends that Ito and Anthony do not disclose
“reconfiguring the screen by changing at least one of size and position of the
activated block” (App. Br. 6–7). In particular, Appellant argues that Ito does
not satisfy this claim aspect because “the process of enlarging the selected
icon of Ito et al. is a temporal operation,” and Ito “teaches reducing the
temporarily enlarged icon when a different icon is selected.” (App. Br. 6.)
Appellant acknowledges that the combination of Ito and Anthony “teach
changing the icon in size” (App. Br. 7), but nevertheless argues that they
“fail to teach or suggest changing at least one of size and position of the
activated block having executable detailed items” (id.).
Appellant’s argument is unpersuasive because it does not address the
complete combination of Ito, Anthony, and Anwar relied on by the
Examiner, but rather, addresses Ito and Anthony individually. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981).
Appellant’s contention that Ito does not disclose the “reconfiguring”
aspect of claim 1 (App. Br. 6), is immaterial in view of Anthony’s disclosure
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of a method for permanently changing icon size (FF 11–13). Likewise,
Appellant’s assertion that Anthony does not disclose “a block in which
detailed items are provided for functions of the mobile communication
terminal” or “changing at least one of size and position of the activated
block having executable detailed items provided for functions of the mobile
communication terminal” (App. 6–7) is beside the point because Ito and
Anwar supply these disclosures (FF 1–10). We therefore find that the
combination of Ito, Anthony, and Anwar discloses the “reconfiguring”
aspect of claim 1.
Conclusion of Law
Appellant has failed to present substantive arguments and supporting
evidence persuasive of examiner error regarding Anwar’s disclosure of the
“executable detailed items displayed within said each block” aspect of claim
1. In addition, a preponderance of the evidence supports the Examiner’s
conclusion that the “reconfiguring the screen by changing at least one of size
and position of the activated block in response to a user setting when the edit
request is input” element of claim 1would have been obvious based on the
combination of Ito, Anthony, and Anwar.
Appellant does not separately argue the patentability of independent
claim 6, or dependent claims 3–5 and 7–11. (App. Br. 7–9.) Therefore,
these claims fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii); In re Kaslow,
707 F.2d 1366, 1376 (Fed. Cir. 1983).
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II.
The Examiner has rejected claim 2 under § 103(a) as obvious based
on Ito, Anthony, Anwar, and Kumagai. With respect to claim 2, Appellant
presents no additional argument based on the teachings of Kumagai, and
relies on the same arguments addressed above with regard to Ito, Anthony,
and Anwar (see App. Br. 9). For the reasons discussed above, therefore, we
affirm the rejection of claim 2.
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) based on
Ito, Anthony, and Anwar. Claims 3–11 fall with claim 1.
We affirm the rejection of claim 2 under 35 U.S.C. § 103(a) based on
Ito, Anthony, Anwar, and Kumagai.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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