Ex Parte Park et al

Patent Trial and Appeal Board

Feb 9, 2016

11393799 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111393,799 03/31/2006
68103 7590 02/11/2016
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Seung-Kwon Park
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0201-1456 7329
EXAMINER
FLEMING-HALL, ERICA L
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
02/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEUNG-KWON PARK, JI-WON SUK, and
SEUNG-CHUL CHOI1
Appeal2014-002470
Application 11/393,799
Technology Center 2600
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Samsung Electronics Co., Ltd., as the real party in
interest. (App. Br. 2.)
Appeal2014-002470
Application 11/393,799
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of rejection of claims 17-26.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Introduction
According to Appellants, "[t]he present invention relates generally to
a device and method for displaying files during Bluetooth communication in
a wireless terminal. More particularly, the present invention relates to a
device and method for transmitting and displaying only shared files during
Bluetooth communication." (Spec. 1.)
Exemplary Claim
Claim 17, reproduced below, is exemplary of the claimed subject
matter:
17. A device in a wireless terminal for displaying files during
Bluetooth communication between the wireless terminal and
another wireless terminal, the device comprising:
a controller for setting at least one file selected from files
stored in the wireless terminal as a shared file, and transmitting
each file set as a shared file to the another wireless terminal and
not transmitting any of the files that are not set as shared files
upon receipt of a file request from the another wireless terminal;
and
a display unit for displaying at least one file received from
the another wireless terminal and the at least one file transmitted
to the another wireless terminal as shared files.
2 Claims 1-16 were canceled in an amendment mailed April 5, 2011.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wachi
Wilkinson
Singer et al.
US 2003/0061115 Al
US 6,907,225 Bl
US 2006/0041943 Al
REJECTION
Mar. 27, 2003
June 14, 2005
Feb.23,2006
Claims 17-26 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Wilkinson, Singer, and Wachi. (Final Act. 2-9.)
ISSUE3
Whether the combination of Wilkinson, Singer, and Wachi teaches or
suggests the limitations of claim 17.
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: ( 1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2-
10); and (2) the reasons set forth by the Examiner in the Examiner's Answer
3 Appellants collectively argue the rejection of all claims with regard to the
Examiner's obviousness rejections of claim 17 under 35 U.S.C. § 103(a).
(App. Br. 6, 11.) Separate patentability is not argued for independent claim
22 or any of the dependent claims. (Id.) Therefore, based on Appellants'
arguments, we decide the appeal of claims 17-26 based on claim 17 alone.
See 37 C.F.R. § 41.37(c)(l)(iv). Other than in our ultimate decision, claims
18-26 are not referenced further herein.
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Application 11/393,799
in response to Appellants' Appeal Brief (Ans. 2-12.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis. 4
A. Preamble
With regard to the preamble, Appellants argue "[n]one of the
references cited by the Examiner disclose or suggest Bluetooth
communications between wireless terminals, as claimed." (Reply Br. 7.)
Although we note in passing the Examiner's statement that the preamble has
not been afforded "patentable weight" during examination (Adv. Act. 3), and
the Appellants' assignment of error to that statement (Reply Br. 5---6), we
conclude this issue is not necessary to decide because the Examiner's
findings of record confirm the recitations of the preamble are taught or
suggested by the prior art. (See Final Act. 2 (finding Wilkinson "discloses a
device in a wireless terminal for displaying files during Bluetooth
communication between the wireless terminal and another wireless
terminal"); Wilkinson at col. 2, 11. 43--45: "In various embodiments of the
invention, the mobile unit and content server communicate using low power
radio, including Bluetooth, or infrared light."); Final Act. 3--4 (citing Singer
as disclosing file sharing between wireless terminals using Bluetooth);
Singer i1i1 48--49.)
In challenging the Examiner's findings regarding Wilkinson,
Appellants argue Wilkinson does not teach or suggest communications
4 Only those arguments actually made by Appellants have been considered
in this decision. Arguments that Appellants did not make in the briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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between "wireless terminals" because "[t]he files that are retrieved in
Wilkinson are from the content server to the mobile terminal, and between
the mobile terminal and its destination computer." (App. Br. 7 (emphases
added).) In other words, Appellants' argument is premised on an overly
narrow reading of the term "wireless terminal" as limited to a mobile or
handheld device, thus excluding the "content server" and "destination
computer" taught by Wilkinson. Appellants' argument is, however, not
commensurate with the scope of the claims, and is thus inherently
unpersuasive. See In re Self, 671F.2d1344, 1348(CCPA1982). Claim 17
does not specify whether either of the claimed "wireless terminal[ s ]" is a
mobile or handheld device. Nor do Appellants cite to any definition or
usage appearing in the Specification that constrains the construction of a
"wireless terminal" to exclude Wilkinson's teachings of a "content server"
or "destination computer" capable of wireless communication. Appellants
also fail to address the Examiner's findings regarding Singer, which
discloses file sharing between wireless devices using Bluetooth
communication, and the Examiner's combination of Wilkinson and Singer.
(Final Act. 3--4; see also Singer i-fi-1 48--49).)
B. "Controller" Limitation
With regard to the "controller" limitation, the Examiner relies on a
combination of Wilkinson, Singer, and Wachi. (Final Act. 2--4.) Appellants
raise several challenges, in piecemeal and conclusory fashion, to the
Examiner's reliance on each of these references. (App. Br. 7-1 O; Reply Br.
7-10.) As an initial matter, we note that such piecemeal challenge is
inherently flawed. The test for obviousness is not whether the claimed
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invention must be expressly suggested in any one or all of the references.
"Rather, the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d
413, 425 (CCP A 1981) (citations omitted) (emphasis added). Thus, where,
as here, the rejection is based upon the teachings of a combination of
references, "[ n ]on-obviousness cannot be established by attacking references
individually." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing Keller, 642 F.2d at 425). In addition, a reference "must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole." Id.
In addition, Appellants' individual challenges are conclusory and/or
not well-founded factually, and hence are not persuasive of Examiner error.
Appellants argue Singer's teachings are inapposite because "in Singer, after
the connection between neighboring nodes is established, a determination is
then made as to what file can be shared." (App. Br. 8.) In other words,
according to Appellants, claim 1 7 requires "a specific time sequence" that is
not taught or suggested by Singer. (Reply Br. 8.) We disagree. As the
Examiner correctly finds, in claim 17 "the sequence and timing of the
selection and transmission process are not expressly stated." (Ans. 11.)
Thus, claim 1 7 does not exclude selecting a file for transfer after a
connection is made between wireless terminals, as Appellants incorrectly
contend. Appellants' attempt to distinguish the teachings of Singer is,
therefore, unpersuasive of Examiner error.
Appellants also argue W achi fails to disclose "not transmitting any of
the files that are not set as shared files upon receipt of a file request from the
another wireless terminal." (App. Br. 8.) In particular, Appellants contend
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Wachi is inapposite because it teaches that "a user selects a particular jUe in
the shared folder and receives it via a file request transmission for that
particular file." (Id. (emphasis added).) Further, according to Appellants,
"the file request in claim 17 is not required to identifY each file that has been
set as a shared file." (Reply Br. 9.) Appellants' argument is premised on a
limitation not appearing in claim 17-that is, a limitation excluding selection
of each file for transfer, as taught by Wachi. The plain language of claim 17
encompasses selecting only a single file: "setting at least one file selected
from files stored in the wireless terminal as a shared file, and transmitting
each file set as a shared file to the another wireless terminal .... " (Claims
App. (emphases added).) Appellants' attempt to distinguish the teachings of
Wachi is, therefore, unpersuasive of Examiner error. Indeed, Appellants'
argument further supports the Examiner's reliance on Wachi, in combination
with Wilkinson, to teach or suggest "not transmitting any of the files that are
not set as shared filed .... " (Ans. 4.) Transmitting only specifically
selected files, as taught by Wachi (e.g., Wachi i-f 105), also includes teaching
not transmitting files that are not specifically selected. These concepts are
two sides of the same coin.
We have considered Appellants' additional arguments, but find they
are conclusory and fail to address the Examiner's findings regarding the
combined teachings of the cited references. (App. Br. 9-10; Reply Br. 8-
10.) As such, they are not persuasive of Examiner error.
C. "Display Unit" Limitation
With regard to the "display unit" limitation of claim 17, Appellants
argue "Wilkinson does not disclose a display unit for displaying at least one
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file received from [the] another wireless terminal and the at least one file
transmitted to the another wireless terminal as shared files." (App. Br. 9.)
In so doing, Appellants are relying on their arguments as presented regarding
the "controller" limitation and the sharing of files. We, therefore, find this
argument unpersuasive for the same reasons as stated above.
In addition, we note Appellants have not rebutted the Examiner's
findings that each of the three cited references teaches a "display for
displaying received file content." (Adv. Act. 4; see also, e.g., Ans. 3 (citing
Wilkinson, col. 11, 11. 8-17); Ans. 4 (citing Wachi i-f 10); Singer i-fi-178, 118.)
Nor have Appellants otherwise rebutted the Examiner's findings that the
cited combination of references teaches or suggests the "display unit"
limitation of claim 17. (Final Act. 3; Adv. Act. 3--4; Ans. 3, 11-12.) We,
therefore, are unpersuaded of Examiner error.
DECISION
For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejection of
claims 17-26 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)(l )(iv).
AFFIRMED
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