Ex Parte LEE et al

Patent Trials and Appeals Board

Dec 18, 2014

12117258 - (D) (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HAE-JEONG LEE and HEE-SEOK JUNG
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Appeal 2012-010604
Application 12/117,258
Technology Center 2600
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Before: JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-010604
Application 12/117,258
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to method for setting touch sensitivity in
portable terminal. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for setting touch sensitivity in a portable
terminal, the method comprising:

activating a touch screen function of a touch pad when a
display unit is activated in a standby mode of the portable
terminal;

displaying a menu screen for conducting a current mode
on the display unit;

switching the menu screen to a touch sensitivity mode
and displaying touch sensitivity levels when the touch
sensitivity mode is selected as the current mode;

setting sensitivity of the touch pad according to one of
the touch sensitivity levels selected by the user; and

storing the set sensitivity of the touch pad.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Katsandres US 6,119,941 Sep.19, 2000
Ricks US 6,421,234 B1 Jul. 16, 2002
Eliasson US 2005/0162398 Al Jul. 28, 2005
Appeal 2012-010604
Application 12/117,258
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Park US 2006/0187212 Al Aug. 24, 2006
Kang US 2007/0049358 Al Mar. 1, 2007

REJECTIONS
The Examiner made the following rejections:
Claims 1 and 3–5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kang in view of Park and Katsandres.
Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kang in view of Park and Katsandres as applied to Claim 1 above,
further in view of Eliasson, and Ricks.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kang in view of, Eliasson and Katsandres.

ANALYSIS
With respect to independent claim 1, Appellants elected to argue the
claims together. Therefore, we select independent claim 1 as the
representative claim for the grouping and will address Appellants' arguments
thereto.
With respect to representative independent claim 1, Appellants
present the argument that there is a "lack of motivation to combine
Katsandres with Park and Kang." (App. Br. 5). We find Appellants do not
present specific arguments to the Examiner's combination and motivation
beyond the heading. Therefore, we do not address this issue.
Appellants present individual discussions of each of the three
references and maintain that each reference does not teach a portion of the
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Application 12/117,258
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claimed invention. While we agree with Appellants that each of the
references used in the rejection individually have deficiencies, the Examiner
has presented a convincing line of reasoning and motivation for the
combination. We find Appellants' individual arguments do not show error in
the combined teachings of the three references suggesting the claimed
invention.
Appellants have not demonstrated error in the rejection applied
against claim 1, but have instead alleged deficiencies in the references, taken
one at a time, as if the rejection were for lack of novelty. However,
nonobviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing
In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
In KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
Appeal 2012-010604
Application 12/117,258
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either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
Moreover, Appellants have provided no evidence tending to show
that the claimed invention was “uniquely challenging or difficult for one of
ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1740-41).
Additionally, Appellants address the Katsandres reference at length.
(App. Br. 6-7). Appellants contend that the Katsandres reference does not
remedy the deficiency in the combination of the Kang and Park references
and that the Katsandres reference does not teach or suggest discrete levels.
(App. Br. 7). The Examiner maintains that Appellants' argument is not
commensurate in scope since the claims do not require "discrete" levels. We
agree with the Examiner. The Examiner further details the teachings of the
three references and the motivation for the combination in the response to
arguments section. (Ans. 15-17). We agree with the Examiner's findings
and conclusions as to representative independent claim 1 and adopt them as
our own. Appellants have not filed a Reply Brief to respond to the
Examiner's further clarifications and details. Therefore, Appellants have not
shown error in the Examiner's reasoned conclusion of obviousness of
representative independent claim 1.
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Therefore, we sustain the rejection of representative independent
claim 1, and we group independent claim 5 and dependent claims 2–4 and 6
as falling with claim 1.

CONCLUSION
The Examiner did not err in in rejecting claims 1–6 based upon
obviousness.

DECISION
For the above reasons, the Examiner’s rejections of claims 1–6 are
sustained.

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) (2011).

AFFIRMED

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