Ex Parte YIM et al

Patent Trial and Appeal Board

Sep 26, 2016

13658175 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/658, 175 10/23/2012
68103 7590 09/28/2016
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Seung Won YIM
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.
0203-0009-1 7185
EXAMINER
OKEBATO, SAHLU
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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 WON YIM, JAMI RHEE,
SU JUNG YOUN, and KYOUNG TAEK KIM 1
Appeal2015-002458
Application 13/658, 175
Technology Center 2600
Before: DANIEL N. FISHMAN, ADAM J. PYONIN, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Samsung Electronics Co., Ltd., as the real party in
interest. (App. Br. 2.)
Appeal2015-002458
Application 13/658, 175
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-7 and 9-19, which constitute all pending claims. Final Act. 1;
App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
The claimed invention is directed to a method of processing
information inputted while a mobile communication terminal is in an active
communications state. Spec. i-f 2. Claim 1, reproduced below with disputed
limitations italicized, is representative of the claimed subject matter:
1. A method of processing information in a mobile terminal,
the method comprising:
receiving information inputted while the mobile terminal
is in an active communications state;
displaying at least one of the inputted information and
one or more selectable functions to process the inputted
information;
receiving a selection of the one or more selectable
functions; and
parsing and processing the inputted information
according to the selected function,
wherein the active communications state is a state m
which the mobile terminal is engaged in communication with
another mobile terminal, and
wherein, if the active communication state is terminated
before the inputted information has been processed, a
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Appeal2015-002458
Application 13/658, 175
notification indicating that there is unprocessed inputted
information is displayed and the unprocessed inputted
information is processed.
Bodnar
Lim
REFERENCES
US 2004/0097264 Al
US 2006/0246957 Al
REJECTIONS
May 20, 2004
Nov. 2, 2006
Claims 1-3, 6, 7, 11-13, and 16-18 stand rejected under 35 U.S.C.
§ 102( e) as being anticipated by Lim. Final Act. 2.
Claims 4, 5, 9, 10, 14, 15, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Lim and Bodnar.
Final Act. 7.
ANALYSIS
Claims 1-3, 6, 7, 11-13, and 16--18
The Examiner finds that Lim discloses every recited element of
representative claim 1. Final Act. 2-3. Lim is directed to a mobile
communication terminal that has an adaptive memo function. Lim, i-fi-12 and
17, Title. When Lim is in a communication state, it displays a memo
contents input screen. Lim, i-fi-1 2 and 1 7.
Appellants argue that Lim does not disclose two limitations of claim
1. First, Appellants address the notification limitation of claim 1: "if the
active communication state is terminated before the inputted information has
been processed, a notification indicating that there is unprocessed inputted
information is displayed and the unprocessed inputted information is
processed." App. Br. 3-5, 9; Reply Br. 2-3 (the "notification limitation").
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Application 13/658, 175
Appellants argue that in Lim, when a call ends, Lim never displays a
notification of unprocessed inputted information. App. Br. 5; Reply Br. 2-3.
Appellants contend that instead Lim automatically stores the memo being
prepared. App. Br. 5; Reply Br. 2-3.
The Examiner finds: when a call ends in Lim; the controller displays
stored memo contents for a set duration to notify a user that there are
unprocessed memo contents; the controller converts the stored memo
contents into a text message format; the user is prompted to enter the
recipient's phone number; and the text message is sent. Ans. 3--4; Lim
iTiT 55-57.
We agree with the Examiner that Lim satisfies the notification
limitation. As the Examiner finds, Lim discloses the option of automatically
sending memo contents in a text message format. Final Act. 3; Ans. 3--4;
Lim iTiT 49, 57, Fig. 2. When that option is selected and a call
communication ends (i.e., the active communication state is terminated),
controller 108 converts Lim's stored memo contents into text message
format and displays a text message sending screen (i.e., a display that
information that was input to the mobile communication device has not yet
been processed into a completed text message.) Final Act. 3; Ans. 3--4; Lim
iTiT 49, 57. The user inputs a telephone number for the message recipient,
and the text message is processed and sent. Final Act. 3; Ans. 3--4; Lim iT
57. This meets the notification limitation of claim 1.
Appellants also argue that Lim does not disclose the parsing limitation
of claim 1 : "parsing and processing the inputted information according to the
selected function." App. Br. 5-6, Reply Br. 4. The Examiner finds that Lim
meets this limitation when it converts memo format into text format. Ans. 4.
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Appeal2015-002458
Application 13/658, 175
Appellants argue that this conversion is not performed according to a
selected function and therefore it does not satisfy the limitation. App. Br. 5-
6, Reply Br. 4.
We agree with the Examiner. The conversion is preformed because
the user selects the option of automatic sending of a text message. Final Act.
3; Lim i-fi-149, 57. The automatic sending of a text message is the selected
function.
Accordingly, we sustain the rejection of claim 1, as well as
independent claim 7 and dependent claims 2, 3, 6, 11-13, and 16-18, not
separately argued. App. Br. 3-8.
Claim 12
Appellants argue that Lim does not disclose the limitation "the
controller controls the display unit to display a pop-up window requesting
whether the inputted information is to be processed" as recited in claim 12.
App. Br. 6-8. The Examiner finds the recited pop-up window reads on the
environment setup screen of Lim Figure 2. Final Act. 6; Ans. 4. Appellants
argue that the environment setup screen is not the recited pop-up window
because the environment setup window is not overlaid on another window-
it is a full sized window, whereas the recited pop-up window is a display of
a window overlaid on a first window. App. Br. 6-8; Reply Br. 4---6. The
Examiner responds that the term "pop-up window" does not require a
window that is less than the size of the screen (i.e., the pop-up window does
not have to be overlaid on another window.) Ans. 4.
We agree with the Examiner. We do not construe the term "pop-up
window" as requiring a window that is overlaid on another window.
Although, as Appellants note, the pop-up window (26) in Figure 4 of the
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Application 13/658, 175
Specification is a window overlaid on another window, we decline to read
limitations from the Specification into the claims. App. Br. 6-8; see In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, the Specification
does not define the term "pop-up window" as being limited to a window
overlaid on another window, and the term's ordinary meaning is not so
limited. Microsoft Computer Dictionary (5th ed. 2002), p. 519 ("pop-up
window n. A window that appears when an option is selected. Typically,
the window remains visible until the mouse button is released.")
Accordingly, we sustain the rejection of claim 12.
Claims 4, 5, 9, 10, 14, 15, and 19
Appellants argue that claims 4, 5, 9, 10, 14, 15, and 19 are patentable
for the same reasons as claims 1 and 7. App. Br. 8. Accordingly, for the
same reasons as claims 1 and 7 discussed supra, we sustain the rejections of
claims 4, 5, 9, 10, 14, 15, and 19.
In the event of further prosecution, we note the notification limitation
of claim 1 is a conditional step in a method claim that does not need to be
found in the prior art. 2 During prosecution, the USTPO gives claims their
"broadest reasonable interpretation consistent with the specification." See In
re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000). Conditional steps in a
method claim need not be found in the prior art if, under the broadest
scenario, the method need not invoke the steps. See Ex parte Katz, 2010-
006083, 2011 WL 514314, at *4 (BP AI 2011) (non-precedential) (citing In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
2 This affirmance does not rest on this principle because, as discussed above,
the Examiner found the notification limitations of claim 1 and claim 7 in the
prior art. In the event that the limitations are amended, however, this
principle could become more relevant.
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Application 13/658, 175
Claim 1 does not need to invoke the notification step because nothing in the
claim requires that the active communication step be terminated. Although
claim 7 is directed to "a device for processing information," we note its
notification limitation appears to lack any structural limitation. See Ex parte
Boss, 2011-005114, 2014 WL 789174, at *5 (PTAB 2014)(non-
precedential).
DECISION
We affirm the rejections of claims 1-7 and 9-19.
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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