Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Aug 31, 2021

2020004385 (P.T.A.B. Aug. 31, 2021)

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.
15/507,586 02/28/2017 Soo-Jung BAE 0202-1364 3520
68103 7590 08/31/2021
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
EARLES, BRYAN E
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
08/31/2021 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 SOO-JUNG BAE, SANG-HYUK KOH, HA-YOUNG KIM,
HYUNG-MIN KIM, MIN-HEE LEE, SEOUL, HYE-MI LEE,
HO-YOUNG LEE, CHUL-HO JANG, HYE-RYOUNG CHOI,
ANNIE KIM, CHANG-MO YANG
____________________

Appeal 2020-004385
Application 15/507,586
Technology Center 2600
____________________

Before TERRY J. OWENS, MAHSHID D. SAADAT, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1

1 Our Decision refers to Appellants’ Appeal Brief filed February 4, 2020
(“Appeal Br.”); Appellants’ Reply Brief filed May 26, 2020 (“Reply Br.”);
Examiner’s Answer mailed March 26, 2020 (“Ans.”); the Final Rejection
mailed October 10, 2019 (“Final Act.”), and the Specification filed February
28, 2017 (“Spec.”).
Appeal 2020-004385
Application 15/507,586

2
Appellant2 seeks our review3 under 35 U.S.C. § 134(a) from the final
rejection of Claims 1–7, 11–17 and 24–29, all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
INVENTION.
The claims relate to a method for operating an electronic device
including checking context information for controlling a display divided into
a first display and a second display, and controlling at least one of the first
display and the second display based on the context information. See
Abstract. Claims 1, 11, and 24 are independent. An understanding of the
invention can be derived from a reading of Claim 1 which is reproduced
below with some formatting added:
1. An electronic device comprising:
a communication interface;
at least one sensor;
a display including a planar portion and a curved portion
extending from the planar portion;
a memory configured to store instructions; and

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies Samsung Electronics Co.,
Ltd., as the real party in interest. Appeal Br. 2.
3 We have considered in this decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellants could
have made but chose not to make in the Briefs are deemed to be forfeit. See
37 C.F.R. § 41.37(c)(1)(iv).
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3
a processor configured to execute the instructions to:
receive, via the communication interface, an
incoming call from an external electronic device,
while receiving the incoming call, identify that the
planar portion of the display is at least partially covered
by an external object based at least on information
received from the at least one sensor, wherein the
information received from the at least one sensor
includes illuminance data around the electronic device
and posture data of the electronic device, and
based at least on identifying that the planar portion
of the display is at least partially covered by the external
object, display a first visual effect indicating that the
incoming call is being received, in the curved portion
among the planar portion and the curved portion.

Prior Art
Name4 Reference Date
Sirpal US 2012/0327061 A1 Dec. 27, 2012
Oguri US 2014/0221051 A1 Aug. 7, 2014
Lee US 2014/0370938 A1 Dec. 18, 2014
Ahn US 2015/0095826 A1 Apr. 2, 2015

REJECTIONS5 AT ISSUE
1. Claims 1, 2, 4–7, 11, 12, 14–17, 24, 25, and 27–29 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Lee, Ahn, and
Oguri. Final Act. 2–6.

4 All citations herein to the references are by reference to the first named
inventor/author only.
5 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act. 2.
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Application 15/507,586

4
2. Claims 3, 13, and 26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lee, Ahn, Oguri, and Sirpal. Final Act. 6–7.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
argument that the Examiner has erred. We do not find Appellant’s argument
persuasive with respect to the rejections under § 103.
CLAIMS 1, 2, 4–7, 11, 12, 14–17, 24, 25, AND 27–29:
OBVIOUSNESS OVER LEE, AHN, AND OGURI.
Appellant states: “While having different scopes, independent claims
11 and 24 recite similar subject matter” to that of Claim 1. Appeal Br. 4.
Appellant further states: “Claims 2, 4–7, 12, 14–17, 25, and 27–29 variously
depend from independent claims 1, 11, and 24.” Appeal Br. 15. In view of
Appellant’s statements, we decide the appeal of the § 103 rejections on the
basis of Claim 1 and refer to the rejected claims collectively herein as “the
claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325
(Fed. Cir. 1986). See In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002)
(“[T]he Board is free to select a single claim from each group of claims
subject to a common ground of rejection as representative of all claims in
that group and to decide the appeal of that rejection based solely on the
selected representative claim” in the absence of a clear statement asserting
separate patentability of the claims.).
Claim 1 recites, inter alia, “while receiving the incoming call, identify
that the planar portion of the display is at least partially covered by an
external object based at least on information received from the at least one
sensor.”
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5
The Examiner finds: “[t]he primary reference teachings of Lee
expressly disclose ‘while receiving the incoming call, identify that the planar
portion of the display is at least partially covered by an external object based
at least on information received from the at least one sensor.’” Final Act. 9
(citing Lee, ¶¶ 190–191); see Final Act. 3 (citing Lee, ¶ 190; Figs. 15A,
15B).
Appellant contends the Examiner fails to consider whether the action,
i.e., “identify that the planar portion of the display is at least partially
covered by an external object” is performed based on a specific condition,
i.e., “while receiving the incoming call.” Appeal Br. 8. Appellant argues
“had the claim actually been construed as a whole, one of ordinary skill in
the art would never have been motivated to combine Lee and Oguri,” not
because Lee and Oguri individually fail to teach the combination of
elements, but rather, Appellant submits the Examiner fails to determine the
scope of the claim such that it generally requires information from
illuminance and posture sensors which is directly correlated to an operation
or temporal condition, i.e., receiving the incoming call. Appeal Br. 9.
The Examiner states: “[i]n response to applicant’s arguments against
the references individually, one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references.” Ans. 46. The Examiner finds:
[Lee] Paragraphs [0190] - [0191] disclose using a sensing
signal of the sensing unit 140 to identify whether or not the
display unit 151 is covered by the cover 1510. Additionally,

6 Citing In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800
F.2d 1091 (Fed. Cir. 1986).
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Lee, at paragraph [0073], discloses that the sensing unit
provides sensing signal based on various sensors for controlling
operations of the mobile terminal. The sensing unit 140 may
include, gyro sensor, acceleration sensor, geomagnetic sensor.
Lee, at paragraph [0083], discloses the sensing unit including
an electromagnetic field strength or infrared proximity sensor.
Id. The Examiner further finds:
With respect to the Argument section of the Appeal Brief, on
pages 10-11, Appellant argues, “had this feature, as well as the
claim, been properly considered as a whole, one of ordinary
skill in the art would recognize that this feature requires a
condition (e.g., ‘while receiving the incoming call’) that
triggers a decision/action (e.g., ‘identify that the planar portion
of the display is at least partially covered by an external
object’).”
Ans. 5. The Examiner disagrees because:
At paragraphs [0190] - [0191], Lee expressly discloses
determining whether or not a protective cover 1510 covers the
front output unit 151-1 and in response to the determination
event information is displayed on a lateral output unit 151-2
and/or front output unit 151-1. Lee’s determination of a cover
1510 occurs when events are received, see figures 15A-15B.
The combined teachings of Lee as modified by Ahn and Oguri
fully meet the broadest reasonable interpretation of the argued
claim limitations.
Id. at 5–6.
Appellant contends:
the Examiner fails to actually consider whether one
decision/action (e.g., “identify that the planar portion of the
display is at least partially covered by an external object”) is
performed using a combination of variables (e.g., illuminance
data around the electronic device and posture data of the
electronic device) when one specific condition (e.g., “while
receiving the incoming call”) has been met.
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Reply Br. 4.
Appellant contends Lee’s disclosure relating to whether the display is
covered is not conditioned on receiving a call. See Appeal Br. 9; Reply Br.
4. In response, the Examiner directs our attention to Paragraphs 190 and 191
of Lee. See Ans. 5. Immediately prior to this cited disclosure, Lee
discloses:
According to the present invention, the controller 180 can
control a detailed information on an event to be selectively
displayed on either a lateral output unit 151-2 or a front output
unit 151-1 depending on appropriateness for the use of the front
output unit 151-1 or the lateral output unit 151-2. This is
described in detail with reference to FIG. 15A and FIG. 15B as
follows [i.e., the portion cited by the Examiner].
Lee, ¶ 189. A person of ordinary skill in the cellphone arts would
understand when a cellphone receives a call its controller will display
relevant information on an “output unit,” i.e., a screen. On reading Lee’s
disclosure, the person of ordinary skill would understand that upon receiving
a call, Lee’s controller, based upon the cited disclosure of paragraphs 190
and 191, will determine which of the front or lateral screen is appropriate.
Therefore, we find the disputed claim limitation reads on the disclosure of
Lee.
CLAIMS 28 AND 29.
In addition to their dependence from allegedly patentable independent
claims, Appellants separately argue Claims 28 and 29 are patentable for at
least a further reason. Appeal Br. 15. Claims 28 and 29 recite, inter alia,
“wherein the first visual effect is displayed without text in at least one
designated color.”
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The Examiner finds this limitation appears to be merely an aesthetic
design choice equivalent to a requirement that the line be purple. Final Act.
4. We understand this finding to mean the Examiner accords no patentable
weight to the limitation.
Appellant argues for a limitation to be merely an aesthetic design
choice, a person of ordinary skill must consider the feature to have no
utilitarian function. Appeal Br. 16. Appellant argues:
one of ordinary skill in the art would clearly recognize that the
feature required by claims 28 and 29 has more than simply an
ornamental function. For example, it may increase efficiency
of the device by reducing the battery power required for the
display as well as allowing a user to easily perceive a source of
the notification.
Id.
Appellant provides attorney argument, but no evidence, to show that
the limitation will result in either a reduced battery requirement, or an
increased user perception. Arguments of counsel cannot take the place of
factually supported objective evidence. In re Huang, 100 F.3d 135, 139-140
(Fed. Cir. 1996). Attorney argument is not evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Nor can it take the place of evidence
lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977).
Lawyer’s arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
In view of the foregoing, we are not persuaded the Examiner errs in
rejecting rejection of independent Claims 11 and 24, nor Claims 2, 4–7, 12,
14–17, 25, and 27–29, dependent therefrom.
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CLAIMS 3, 13, AND 26: OBVIOUSNESS OVER LEE, AHN, OGURI, AND SIRPAL.
Appellant contends Claims 3, 13, and 26 are patentable in view of
their dependence from the independent claims, as discussed above. Appeal
Br. 17.
In view of the foregoing, we are not persuaded the Examiner errs in
rejecting rejection of independent Claims 3, 13, and 26.

DECISION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
11, 12, 14–
17, 24, 25,
27–29
103 Lee, Ahn, Oguri 1, 2, 4–7,
11, 12, 14–
17, 24, 25,
27–29

3, 13, 26 103 Lee, Ahn, Oguri, Sirpal 3, 13, 26
Overall
Outcome
1–7, 11–
17, 24–29

AFFIRMED