SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Dec 9, 2020

2019003899 (P.T.A.B. Dec. 9, 2020)

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.
14/452,170 08/05/2014 Hue-yin KIM Q208035 3615
23373 7590 12/09/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
RILEY, MARCUS T
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
12/09/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HUE-YIN KIM, SANG-IL LEE, SUNG-KYU LEE,
SEONG-SEOL HONG, JUNG-HOON SHIN, and YEON-WOO LEE
____________________

Appeal 2019-003899
Application 14/452,170
Technology Center 2600
____________________

Before JOHN A. EVANS, JUSTIN BUSCH, and JOHN P. PINKERTON,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 8, 12, 19, 38–42, 45–49, and 51–53.1
Appellant previously canceled claims 2–7, 9–11, 13–18, 20–37, 43, and 44.
Claim 50 is objected to as being dependent upon a rejected base claim, but
otherwise allowable if rewritten in independent form. Final Act. 12. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
SAMSUNG ELECTRONICS CO., LTD. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
The invention generally relates to providing useful information to
mobile phone users to help them during a phone conversation. Spec. ¶¶ 4, 6.
More specifically, the claimed subject matter describes an apparatus and
method for performing the following functions: (1) storing text messages
from a network; (2) converting voice data of a phone conversation into text;
(3) determining a keyword from the text; (4) determining one of the text
messages that includes the keyword as information of interest; and
(5) displaying the information of interest to the user. Spec. ¶¶ 33, 41–43, 52,
62, 78.
Figure 11 is reproduced below.

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Figure 11 depicts a diagram according to one embodiment of Appellant’s
invention. Spec. ¶ 138. As shown in Figure 11, an apparatus detects the
interrogative sentence “where did we go [last] weekend?” from a user
conversation 1110. Spec. ¶ 140. The apparatus may then extract the place
(“where”) or time (“last weekend”) from the interrogative sentence as a
keyword. Spec. ¶ 140. For example, the apparatus may calculate that the
date of “last weekend” included “July 9.” Spec. ¶¶ 142, 143. The apparatus
may then search a user’s text messages for a text message that was received
on “July 9” and indicates a place. Spec. ¶¶ 142–144. The apparatus may
find matching text message 1120 that includes a card payment detail from
July 9 about a place the user visited called “Everland.” See Spec. ¶¶ 142–
144, Fig. 11 (item 1120). The apparatus may then display text message
1120 or just the card payment detail to the user. Spec. ¶¶ 142, 143.
Alternatively, the apparatus may extract and display to the user the place
included in the card payment detail—“Everland.” Spec. ¶¶ 143, 144.
Claims 1 and 12 are independent claims. Claim 12 is reproduced
below:
12. A device comprising:
a display;
a network connector;
a memory configured to store at least one text message
received via the network connector from a network; and
at least one processor configured to convert voice data, of
a conversation of a user who is on a phone, into text, determine
a keyword from the text, determine a text message including the
keyword from among the at least one text message as information
of interest with the respect to the keyword, from the memory, and
control the display to display the information of interest with
respect to the keyword with the keyword while the user is on the
phone.
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Application 14/452,170

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The Pending Rejections
Claims 1, 8, 12, 19, 38, 39, 41, 42, 45, 46, 48, 49, and 51 stand
rejected under 35 U.S.C. § 103 as obvious over Holtel (US 2011/0125501
A1; May 26, 2011) and Chu Chi (EP 1457862 A1; Sept. 15, 2004).2 Final
Act. 6–11.
Claims 40, 47, 52, and 53 stand rejected under 35 U.S.C. § 103 as
obvious over Holtel, Chu Chi, and Shuster (US 2008/0147514 A1; June 19,
2008). Final Act. 11–12.
ANALYSIS
The Examiner finds the combination of Holtel and Chu Chi renders
obvious independent claims 1 and 12. Final Act. 6–7, 9. Of particular
relevance to this Appeal, the Examiner finds Holtel discloses a processor
configured to “determine a text message including the keyword from among
the at least one text message as information of interest with . . . respect to the
keyword, from the memory.” Final Act. 6. In addressing this limitation, the
Examiner cites the following disclosures of Holtel:
Within comparator unit 41, said text data 51 are continuously
compared during said talk with said given keywords and/or terms
26 with regard to the occurrence of said given keywords and/or
terms 26 within said voice data 25. Matching keywords and/or
terms 26 are extracted into a data file of comparison results 45.
In addition comparator unit 41 counts the frequency how often
those given keywords and/or terms 26 occur within said text data
51, and therefore, within said voice data 25. A “keyword” can be

2 The Final Office Action does not list claim 51 in the statement of rejection,
but finds Holtel and Chu Chi teach every element recited in claim 51
(including the elements recited in its parent claim, claim 1). See Final Act.
6–7, 9, 10–11. The Final Office Action inadvertently includes claims 36, 37,
43, and 44 in the statement of rejection, Final Act. 6, but, as discussed
above, Appellant previously canceled these claims, see Final Act. 2.
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a significant word in particular, and a “term” can particularly be
a word or expression that has a precise meaning in some uses or
is peculiar to a subject or topic.
Final Act. 6 (quoting Holtel ¶¶ 10, 45); see also id. (additionally citing
Holtel ¶ 34, Abstract). The Examiner also finds that “Holtel . . . does not
expressly disclose a memory configured to store the at least one text
message received via the network connector from a network,” but that Chu
Chi discloses this feature. Final Act. 7 (citing Chu Chi, Fig. 4 (item 8),
Abstract). The Examiner reasons that “it would have been obvious . . . to
modify the speech system as taught by Holtel . . . by adding a memory
configured to store the at least one text message received via the network
connector from a network as taught by Chu Chi” because it “would have
been advantageous to maintain an updated database of text messages for
future use.” Final Act. 7 (citing Chu Chi, Abstract).
Holtel describes a device that converts voice data of a talk between
participants into plain machine-readable text data, which is compared with
keywords predefined by a third-party or by a participant in advance of the
talk. E.g., Holtel ¶¶ 18, 19, 45. Matching keywords may be extracted into a
data file of comparison results and displayed as part of a visualized
representation on a participant’s mobile phone. E.g., Holtel ¶¶ 26–27, 34,
44, 46–47. Chu Chi describes a handheld unit for composing or displaying a
text message including a controller with memory for receiving and storing a
text message from a telephone network. Chu Chi ¶¶ 6–9, 12, Fig. 4 (item 8).
Appellant contends claim 12 (and claim 1) would not have been
obvious over the combination of Holtel and Chu Chi. Appeal Br. 6–11;
Reply Br. 4–8. Among other arguments, Appellant contends the
combination of Holtel and Chu Chi would not have rendered it obvious to
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“determine a text message including the keyword from among the at least
one text message as information of interest with the respect to the keyword,
from the memory,” as recited in claim 12 (and similarly recited in claim 1).
Appeal Br. 6–10; see Reply Br. 4–8. In particular, Appellant asserts that
“the Examiner does not even appear to assert that the proposed combination
of Holtel and Chu Chi discloses the above feature,” but instead “the
Examiner acknowledges that Holtel fails to disclose the very thing which
Holtel is relied on to allegedly teach”—“the claimed ‘at least one text
message,’” and that “although Chu Chi clearly discloses receiving and
storing at least one text message, this . . . fails to remedy the deficiencies of
Holtel or render claim 12 obvious.” Appeal Br. 8–9 (emphasis omitted).
Appellant argues that the claim does not merely describe converting voice to
text (as described by Holtel) and storing a text message (as described by Chu
Chi). See id. at 7. Rather, according to Appellant, “[t]he claim is able to
relate the converted text (and keyword) from the user voice conversion to
the stored text message,” whereas Chu Chi’s storage of text messages “bears
no relation to the converted text (from voice) which established the
keyword.” Id.
We agree with Appellant that the Examiner erred. The Examiner’s
finding that Holtel teaches “determine a text message including the keyword
from among the at least one text message” is not supported by the cited
disclosures of Holtel, which describe a method that matches keywords to
“text,” not “text messages.” Moreover, the keywords used in Holtel are
predefined by a third-party or participant in advance of the talk—they are
not determined by text converted from voice data of the talk between
participants. And, while Chu Chi generally describes storing text messages
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in memory, the Examiner does not identify any persuasive evidence that
Chu Chi suggests determining that one of the stored text messages includes a
keyword, let alone a keyword that was determined by text data converted
from voice data of a conversation. Nor do the Examiner’s proposed
rationale to combine Holtel with Chu Chi (Final Act. 7) or explanations
provided in the Answer (Ans. 12–17) cure these deficiencies or otherwise
fill the gaps in the rejection.
Because the Examiner has not adequately shown that Holtel or
Chu Chi, alone or in combination, teaches or suggests “determin[ing] a text
message including the keyword from among the at least one text message as
information of interest with the respect to the keyword, from the memory,”
we are constrained by this record to reverse the rejection of independent
claims 1 and 12 as obvious under 35 U.S.C. § 103 over Holtel and Chu Chi.
Each of the dependent claims include the same limitation via their ultimate
dependency from one of claims 1 and 12, and the Examiner does not make
any other finding (for example, from Shuster) that cures the above
deficiencies. See Final Act. 11–12 (citing Shuster ¶¶ 2–6, Abstract); Ans.
17–18. Accordingly, we also reverse the rejection of dependent claims 8,
19, 38–42, 45–49, and 51–53 as obvious under 35 U.S.C. § 103 over the
cited prior art for the same reasons.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 8, 12, 19,
38, 39, 41,
42, 45, 46,
48, 49, 51
103 Holtel, Chu Chi 1, 8, 12, 19,
38, 39, 41, 42,
45, 46, 48, 49,
51
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Claims
Rejected
35 U.S.C. § References Affirmed Reversed
40, 47, 52,
53
103 Holtel, Chu Chi,
Shuster
40, 47, 52, 53
Overall
Outcome
1, 8, 12, 19,
38–42, 45–49,
51–53

REVERSED