11603875 (P.T.A.B. Feb. 26, 2014)

Ex Parte Moon

Patent Trial and Appeal BoardFeb 26, 2014

11603875 (P.T.A.B. Feb. 26, 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. 11/603,875 11/22/2006 Byoung-Seoup Moon 1235-161 2507 66547 7590 02/27/2014 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER BODDIE, WILLIAM ART UNIT PAPER NUMBER 2625 MAIL DATE DELIVERY MODE 02/27/2014 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 BYOUNG-SEOUP MOON ________________________ Appeal 2012-008576 Application 11/603,875 Technology Center 2600 ____________________ Before CARLA M. KRIVAK, JASON V. MORGAN, and MICHAEL J. STRAUSS, Administrative Patent Judges. KRIVAK, Administrative Patent Judge DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-9, 19, 20, and 23. Claims 10-18 have been cancelled. Claims 21 and 22 are allowed. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. Appeal 2012-008576 Application 11/603,875 2 STATEMENT OF THE CASE Appellant’s claimed invention is directed to a method and apparatus for inputting characters in a mobile communication terminal. Independent Claim 1 is reproduced below: 1. A method for inputting characters in a mobile communication terminal having a plurality of keys, in which at least one character is mapped to each key, the method comprising the steps of: selecting, by a user, an input key including a desired character; selecting, by the user, a sequence key corresponding to a sequence of the desired character among characters included in the input key; selecting, by a controller, a character designated by the sequence key among characters included in the input key; and displaying, by a display unit of the mobile communication terminal, the selected character. REFERENCE and REJECTION The Examiner rejected claims 1-9, 19, 20, and 23 under 35 U.S.C. § 102(b) based upon the teachings of Kato (US 6,356,258 B1, Mar. 12, 2002). ANALYSIS The Examiner finds Kato teaches inputting characters in a mobile communication terminal as recited in Appellant’s claimed invention (Ans. 4-7). Appellant contends Kato discloses mode switching means rather than a controller selecting “a character designated by the sequence key among Appeal 2012-008576 Application 11/603,875 3 characters included in the input key” as claimed (App. Br. 5). Further, Appellant contends the Examiner has failed to map the claim limitations with Kato, and thus, has failed to show how Kato discloses each element of claim 1 (App. Br. 4, 6). We agree. Appellant’s claims require selecting a desired character by selecting a first key containing, among a group of characters, the desired character, then, selecting the desired character using a second key (sequence key) corresponding to the position of the desired character on the first selected key. The Examiner has not shown Kato discloses this limitation. Thus, because the Examiner has not shown Kato discloses each and every element of Appellant’s invention, Kato does not anticipate independent claims 1 and 8, and claims 2-7, 9, 19, 20, and 23 dependent therefrom. NEW GROUNDS OF REJECTION Under 37 C.F.R. § 41.50(b) Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection. Claims 1 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rackman (US 3,778,553, Dec. 11, 1973) in view of Kato. Rackman discloses a procedure for identifying a particular character on a key (for a telephone) by selecting a key including a desired character and selecting a sequence key/controller corresponding to the desired character, as claimed (col. 2, ll. 14-24). That is, Rackman discloses two buttons operated in sequence for transmitting any number or letter. Rackman provides an example using button (6,M,N,O). If a user wishes to transmit an M, the user operates button 6 followed by button 2; if the user Appeal 2012-008576 Application 11/603,875 4 wishes to transmit an N, the user operates button 6 followed by button 3, etc. (col. 2, ll. 16-23). Rackman, however, fails to teach or suggest displaying, by a display unit of a mobile communication terminal, the selected character, as recited in claim 1. However, Kato discloses a mobile communication device 1 (Figure 1) having a display unit 5 (Figure 3) for displaying a selected character (col. 17, ll. 45-47). Thus, it would have been obvious to an ordinarily skilled artisan at the time of Appellant’s invention to use the display taught by Kato in the system taught by Rackman. Although we have rejected claims 1 and 8 under 37 C.F.R. § 41.50(b), we have not reviewed the remaining claims to the extent necessary to determine whether these claims are also unpatentable under 35 U.S.C. § 103. We leave it to the Examiner to determine the appropriateness of any further rejections based thereon. DECISION The Examiner’s rejection of claims 1-9, 19, 20, and 23 under 35 U.S.C § 102(b) is reversed. A new ground of rejection is entered for claims 1 and 8 under 35 U.S.C § 103(a). TIME PERIOD This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides Appellant, WITHIN TWO MONTHS FROM DATE OF THE DECISION, must exercise one of the Appeal 2012-008576 Application 11/603,875 5 following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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)(v). REVERSED 37 C.F.R. § 41.50(b) msc Notice of References Cited Application/Control No. 11/603,875 Applicant(s)/Patent Under Reexamination BYOUNG-SEOUP MOON Examiner BODDIE WILLIAM Art Unit 2625 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification * A US-3,778,553 12-1973 Rackman B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.