Ex Parte Lee

Patent Trial and Appeal Board

Feb 6, 2014

11491681 (P.T.A.B. Feb. 6, 2014)

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.
11/491,681 07/24/2006 Gun-Su Lee 678-2614 5665
66547 7590 02/07/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
YENKE, BRIAN P
ART UNIT PAPER NUMBER
2422
MAIL DATE DELIVERY MODE
02/07/2014 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 GUN-SU LEE
____________

Appeal 2012-009378
Application 11/491,681
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-9, 11, and 12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellant’s claimed invention is directed to a “method for displaying
a wallpaper on a digital broadcasting reception terminal” (Spec. 1:13-15).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for displaying a wallpaper on a digital
broadcasting reception terminal, the method comprising:
(a) setting a broadcast picture display function to display
a specific broadcast picture as a wallpaper in response to a
user’s request;
(b) changing an operation mode of the digital
broadcasting reception terminal from a standby mode to a
digital broadcasting reception mode if the broadcast picture
display function is set;
(c) capturing a picture from a digital broadcast currently
delivered on a specific channel in the digital broadcasting
reception mode, without outputting a digital broadcast program;
(d) terminating the digital broadcasting reception mode
after capturing the picture and changing the operation mode of
the digital broadcasting reception terminal to the standby mode;
and
(e) displaying the captured picture as a wallpaper for the
digital broadcasting reception terminal in the standby mode,
wherein step (b) to step (e) are repeated periodically at
preset time intervals.

REFERENCES and REJECTIONS
The Examiner rejected claims 1, 2, 4-9, 11, and 12 under 35 U.S.C.
§ 103(a) based upon the teachings of Rashkovski (US 7,383,563 B1), Yeo
(US 6,870,573 B2), Rajamaki (US 2003/0038893 A1), and Wendt (US
2002/0171770 A1).
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The Examiner rejected claim 3 under 35 U.S.C. § 103(a) based upon
the teachings of Rashkovski, Yeo, Rajamaki, Wendt, and Matthews (US
5,815,145).
The Examiner rejected claims 1, 3, 11, and 12 under 35 U.S.C.
§ 103(a) based upon the teachings of Cavallerano (US 6,320,623 B1), and
Appellant’s Admitted Prior Art (“AAPA”).

ANALYSIS
The Examiner finds Rashkovski discloses all the limitations of
Appellant’s claimed invention except for explicitly reciting “wallpaper,”
finding Yeo discloses this limitation along with periodically capturing a
picture from a digital broadcast (Ans. 4-5). The Examiner relies on Rajamaki
for disclosing changing/terminating modes from standby to reception
without outputting a digital broadcast program and also displaying a
broadcast signal as background/wallpaper (Ans. 5), and Wendt as evidencing
screen savers may be used when a display is not being use—the screen
savers may be still, moving, or changing (Ans. 5-6). Additionally, the
Examiner finds Cavallerano discloses all the limitations of claim 1 except
for the terminating step, and relies on Appellant’s disclosure for this feature
(Ans. 8-9). The Examiner also finds capturing a picture and storing as
wallpaper is conventional and known in the art as is changing a system from
active mode to standby mode (Ans. 8).
Initially, we address Appellant’s contention that the Examiner’s
reliance on AAPA is an improper taking of official notice (App. Br. 5).
Appellant, however, has not stated why the noticed fact is not considered to
be common knowledge or well-known in the art. See MPEP § 2144.03(C)
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(“To adequately traverse such a finding, an applicant must specifically point
out the supposed errors in the examiner’s action, which would include
stating why the noticed fact is not considered to be common knowledge or
well-known in the art. See 37 CFR 1.111.” (Emphasis added)). An adequate
traverse of the Examiner’s taking of Official Notice must contain sufficient
information or argument to create on its face a reasonable doubt regarding
the circumstances justifying the Examiner’s notice of what is well known to
one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971).
Appellant has merely stated it is not appropriate to rely on common
knowledge without stating why AAPA should not be considered common
knowledge or is not well-known in the art (even though it is in the
background section of Appellant’s Specification).
Appellant also contends, among other things, none of the references,
alone or in combination, disclose the steps of capturing a picture from a
digital broadcast and terminating the digital broadcast after capturing the
picture (App. Br, 6). Appellant appears to disregard the Examiner’s findings
in the Final Office Action (Oct. 11, 2011) listing the Examiner’s
interpretation of Appellant’s claimed steps (Final OA 2-3). The Examiner in
the Final OA (Final OA 5-10) and the Answer (Ans. 4-9) relies on the
combination of references; whereas Appellant appears to be arguing the
references separately and states the Examiner has not provided the necessary
motivation for combining the references (App. Br. 7-8). We do not agree
(see Final OA, 6, 8; Ans. 5, 6, 7-10, and 20-22).
We particularly note Yeo teaches periodically capturing screen shots
(Figs. 1-3 and 5 (captured frames from each channel at a fixed time
interval); col. 7, ll. 34-40; col. 8, ll. 61-64; Ans. 5). Appellant’s claim
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language is broad in that it merely recites “capturing a picture” without
stating how it is captured or what type of information other than the picture
itself is captured. Appellant merely states the claim language, recites the
Examiner’s argument, and concludes the Examiner has failed to explain how
the references can be combined without providing substantial argument or
evidence as to why the Examiner is incorrect in his findings. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot
take the place of evidence.”).
For these reasons, we are not persuaded of Examiner error. We are not
persuaded the Examiner’s reading of the claims on the cited combination of
references is overly broad, unreasonable, or inconsistent with the
Specification. We conclude, in light of the broad terms recited in the claims
and the arguments presented, Appellant has failed to clearly distinguish their
claimed invention over the prior art relied on by the Examiner. We therefore
sustain the Examiner’s rejection of claim 1, and claims 3-9, 11, and 12.
Because 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).

DECISION
The Examiner’s decision rejecting claims 1, 3-9, 11, and 12 under
35 U.S.C. § 103 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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