SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Nov 19, 2021

2020005173 (P.T.A.B. Nov. 19, 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.
14/546,362 11/18/2014 Myung-jae KIM Q210099 2037
23373 7590 11/19/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
PHAM, THIERRY L
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
11/19/2021 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):
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 MYUNG-JAE KIM, HEE-SEOB RYU, and KWANG-IL HWANG
Appeal 2020-005173
Application 14/546,362
Technology Center 2600
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–4, 6–12, and 14–20, which are all
claims pending in the application. Appellant has canceled claims 5 and 13.
See generally Appeal Br. 26 et seq. (Claims App.). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers 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. 3.
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STATEMENT OF THE CASE2
The claimed subject matter is directed to “Display Apparatus and
Control Method Thereof.” See Spec. (Title). Appellant’s disclosed
embodiments and claimed invention “generally relate to providing a display
apparatus and a control method thereof, and more particularly, to providing a
display apparatus that recognizes an uttered voice of a user and a control
method thereof.” Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases, formatting, and labeling added to contested prior-art
limitations):
1. An electronic apparatus comprising:
a communicator;
an input unit; and
a processor configured to,
based on the electronic apparatus being
turned on,
[(a)] control the communicator to transmit
connection request information for automatically
connecting with an external apparatus for
performing a voice recognition of an uttered voice
of a user, to the external apparatus, and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Mar. 23, 2020); Reply Brief (“Reply Br.,” filed July 1, 2020); Examiner’s
Answer (“Ans.,” mailed May 5, 2020); Final Office Action (“Final Act.,”
mailed Nov. 22, 2019); and the original Specification (“Spec.,” filed
Nov. 18, 2014).
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based on any uttered voice of the user not
being input through the input unit for a first
threshold amount of time while a voice recognition
mode is activated,
[(b)] control the communicator to transmit
dummy data to the external apparatus for
maintaining connection with the external
apparatus.
Appeal Br. 26 (Claims App.).
REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Maekawa et al. (“Maekawa”) US 5,884,257 Mar. 16, 1999
Ikeda US 2010/0029315 A1 Feb. 4, 2010
Ouchi et al. (“Ouchi”) US 2012/0245932 A1 Sept. 27, 2012
REJECTIONS
R1. Claims 1–4, 6–12, 14–18, and 20 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combination of Ouchi and
Ikeda. Final Act. 2.
R2. Claim 19 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Ouchi, Ikeda, and Maekawa. Final
Act. 5.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 8–25) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R1 of claims 1–4, 6–12, 14–18, and 20 on the basis of
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representative claims 1, 9 and 17 Remaining claim 19 in Rejection R2, not
argued separately, stands or falls with independent claim 1 from which it
depends.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 103 Rejection R1 of Claims 1–4, 6–12, 14–18, and 20
Issue 1
Appellant argues (Appeal Br. 8–15; Reply Br. 4–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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combination of Ouchi and Ikeda is in error. Appellant repeat these
arguments in asserting the rejection of independent claims 9 and 17 is in
error. Appeal Br. 15–24. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a]n electronic apparatus” that includes “a communicator”
wherein, “based on the electronic apparatus being turned on,” the apparatus
controls the communicator (a) “to transmit connection request information
for automatically connecting with an external apparatus,” and “based on any
uttered voice of the user not being input through the input unit for a first
threshold amount of time while a voice recognition mode is activated,” the
apparatus controls the communicator (b) “to transmit dummy data to the
external apparatus for maintaining connection with the external apparatus,”
as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
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than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
Ouchi’s communicator inherently transmits connection request information
Appellant contends “Ouchi fails to disclose, teach or reasonably
suggest controlling a communicator to transmit connection request
information to the voice recognition apparatus 10. . . . The secondary
reference to Ikeda is cited only for dummy data, and also fails to disclose,
teach or reasonably suggest controlling a communicator to transmit
connection request information.” Appeal Br. 8. With reference to Figures 1,
8, and 9 of Ouchi, Appellant argues, “[t]he claim requires a communicator,
which is controlled by a processor to transmit information.” Appeal Br. 10.
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Even assuming 1) that the components of FIGS. 1, 8, and 9 of
Ouchi could be considered as corresponding to components of
the display apparatus 20, and 2) a broad interpretation of the
claimed communicator that would be consistent with
paragraphs 68–69, there is no structure in FIGS. 1, 8, and 9 that
would correspond to the claimed communicator. For example,
as discussed in paragraph 33 of Ouchi, the machine control unit
17 provides the electronic device as a control target with an
instruction corresponding to the voice recognized by the voice
recognition unit 16. The machine control unit 17 thus does not
communicate any information.
Appeal Br. 10–11.
Appellant further argues, “Ouchi fails to teach or reasonably suggest
any transmission of connection request information for connecting with an
external apparatus, as claimed. The Office has cited to no portion of Ouchi
as teaching this feature and has provided no factual findings about what one
of ordinary skill would understand from Ouchi that would suggest this
feature. Moreover, the Office has not taken the position that Ikeda teaches
this feature.” Appeal Br. 11.
In response, the Examiner reiterates the findings relating to the
claimed communicator:
Regarding claim 1, Ouchi discloses an electronic
apparatus (display apparatus 20 such as television with built-in
speech recognition apparatus 10, figs. l-2), comprising: a
communicator (figs. 1, 8, 9); an input unit (figs. 1, 8, 9); and a
processor (figs. 1, 8, 9) configured to, based on the electronic
apparatus being turned on, control the communicator to
transmit connection request information for automatically
connecting (voice recognition apparatus connected via wire
with display apparatus (TV) and when TV is powered on, voice
recognition apparatus is automatically powered on and
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connected to the display apparatus and ready to receive voice
inputs) with an external apparatus.
Ans. 3 (emphasis omitted); see also Final Act. 2–3.
The Examiner further responds, “The cited prior of record [Ouchi et al
(US 20120245932)] is no different from the claimed invention. Ochi [sic]
discloses a display apparatus 10 (figs. 1, 2, 8, 9) is connected to a voice
recognition apparatus/unit 16 (fig. 1, 8, 9). Ouchi clearly teaches Fig. 1
shows a voice recognition apparatus 10 that is can be built-in or external [to
an] electronic device (control target). See par. 35. Fig. 2 shows an
example of a television (TV) with a built-in voice recognition apparatus 10.”
Ans. 8.
In the Answer, the Examiner clarifies Ouchi’s teaching of the claimed
“transmit[ting] connection request information for automatically connecting
with an external apparatus” in claim 1 is inherent by finding:
Ouchi clearly discloses the communication between the display
apparatus 10 and voice recognition apparatus 16 are
established prior to send/receive communication signals
between said devices. The connection requests to connect two
devices are inherently part of the process in order to connect
said devices in order to establish the connections (e.g. two
devices must be connected before exchanging any data). How
else can they communicate if the devices are not connected and
communications are not established and/or communication
protocols are not compatible?
Id.
In response to the Examiner’s clarification of the rejection as relying
upon inherency, Appellant asserts “[e]ven if the devices are wired together
as maintained by the Office, mere enabling communication fails to teach
specifically transmitting connection request information to the external
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apparatus, as required by the independent claims.” Reply Br. 4. “However,
the point is that Ouchi fails to disclose how the connection is established.
This is not inherent because there are many ways to do so, e.g., the voice
recognition apparatus could send a beacon signal when it powers on, or a
built-in device may be available via interrupt, etc. Appellant’s claim
requires transmitting connection request information to establish the
connection.” Reply Br. 5 (emphasis added).
We are not persuaded by Appellant’s argument because Appellant
does not squarely address the Examiner’s finding of inherency, i.e., that it is
inherent that communication between devices are established prior to the
transmission and/or reception of signals, even assuming “there are many
ways to do so,” as alleged by Appellant. “[A]fter the PTO establishes a
prima facie case . . . based on inherency, the burden shifts to appellant to
‘prove that the subject matter shown to be in the prior art does not possess
the characteristic relied on.”’ In re King, 801 F.2d 1324, 1327 (Fed. Cir.
1986) (quoting In re Swinehart, 439 F.2d 210, 212-13, (CCPA 1971)).
There is no requirement that a person of ordinary skill in the art would have
recognized the inherent disclosure at the time of invention, but only that the
subject matter is in fact inherent in the prior art reference. Schering Corp. v.
Geneva Pharm. Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).4

4 “The inherent teaching of a prior art reference, a question of fact, arises
both in the context of anticipation and obviousness.” In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103 rejection based in part
on inherent disclosure in one of the references). The question of obviousness
is “based on underlying factual determinations including . . . what th[e] prior
art teaches explicitly and inherently.” In re Zurko, 258 F.3d 1379, 1383
(Fed. Cir. 2001)(citations omitted). See also PAR Pharmaceutical, Inc. v.
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Moreover, attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
Ikeda is Analogous Art and is Properly Combinable
The Examiner finds “Ikeda, in the same field of endeavor for a display
apparatus, teaches in response to the uttered voice of the user being not input
within a first threshold time while a voice recognition mode is activated, the
processor transmits the dummy data for maintaining access to the voice
recognition apparatus.” Final Act. 3. The Examiner further finds it would
have been obvious to modify the display apparatus of Ouchi to include
dummy data to maintain the connection while in standby mode to reduce
processing time by avoiding having to re-establish the connection between
devices. Id.
In response to the Examiner’s reliance upon the teachings of Ikeda,
Appellant argues that, because Ikeda “is directed to a communication
method for a service controlling apparatus that provides a service to
terminals,” and because Ikeda is allegedly not directed to the same problem
as Applicant’s application, Ikeda is non-analogous art. Appeal Br. 14.
However, Appellant goes on to assert “even if the Examiner could establish

TWI Pharmaceuticals, Inc. 773 F.3d 1186, 1195 (Fed. Cir. 2014) (“[t]he
mere fact that a certain thing may result from a given set of circumstances is
not sufficient. If, however, the disclosure is sufficient to show that the
natural result flowing from the operation as taught would result in the
performance of the questioned function, it seems to be well settled that the
disclosure should be regarded as sufficient.”).
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Ikeda as analogous art, the Examiner has failed to provide any factual
findings to establish how or why one of ordinary skill in the art would
modify Ouchi with the dummy data of Ikeda.” Id.
We disagree with Appellant’s arguments because, as the Examiner
further explains:
Dummy data is known as benign information that does not
contain any useful data, but serves to reserve space where real
data is nominally present. Ikeda teaches a communication
system that includes a transmitter/receiver for transmitting
dummy data. Ikeda discloses methods/steps of transmitting/
receiving dummy data (figs. 1, 4, 5, 6). It would have been
obvious to anyone ordinary in the art (e.g. communication) to
use dummy data to maintain established communication (see
standby state of Ikeda, fig. 6) between two devices such as
display apparatus 10 and voice recognition apparatus 16 as
taught by Ouchi. See cited portions from Ikeda below for
details in regards to transmitting/receiving dummy data. Using
dummy data to maintain connection is one of the intended use
of the dummy data.
Ans. 10 (citing Ikeda ¶¶ 15, 35) (emphasis added).
Paragraph 35 of Ikeda discloses, in pertinent part, “[t]he transmitter 14
outputs, to the data transmitter 15, dummy data to be output to the terminals
50 to 70 that satisfy a condition. The ‘dummy data’ in the present
embodiment may be, for example, data such as silence data or a ping for
reserving a communication path without interfering with various services
provided by the PoC server 10. Ikeda ¶ 35 (emphasis added).
In the Reply Brief, Appellant argues “[c]ontrary to the position of the
Office, Ikeda thus does not teach transmitting dummy data to maintain
communication, but rather teaches transmitting dummy data to cause a
transmission channel change. Thus, one of ordinary skill in the art would
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understand from Ikeda to transmit dummy data to change a channel to a
different terminal rather than to keep a channel open.” Reply Br. 6.
We disagree with Appellant’s argument because it is not
commensurate with the scope of the claim, which does not require “to keep a
channel open,” as argued by Appellant, but instead requires transmitting
dummy data to the external apparatus “for maintaining connection with the
external apparatus.” Claim 1. Under a broad but reasonable interpretation,
we find maintaining a connection between devices can be carried out in
more than one way, i.e., by preventing communication channel timeout by
transmitting dummy data, or by using the transmission of dummy data to
change a transmission channel to maintain the connection between devices.
We note Ikeda discloses reducing data buffering which would compromise
the connection by establishing a new channel.
As described above, in response to the speech request
transmitted (in step S11) from the terminal 50, the PoC server
10 transmits dummy data in step S17. This arrangement may
avoid user-data buffering involved in processing for
establishing the individual channel in the wireless network B.
Thus, the terminal 60 may receive a service in real time.
Ikeda ¶ 54 (emphasis added).
Accordingly, we find a preponderance of the evidence supports the
Examiner’s finding that Ikeda teaches or at least suggests that the
communicator “transmit[s] dummy data to the external apparatus for
maintaining connection with the external apparatus,” as recited in claim 1.
Final Act. 3; Ans. 10.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
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or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claims 1, 9 and 17 and
grouped claims 2–4, 6–8, 10 –12, 14–16, 18, and 20 which fall therewith.
See Claim Grouping, supra.
2. § 103 Rejection R2 of Claim 19
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claim 19 under § 103 (see Appeal
Br. 24–25), we sustain the Examiner’s rejection of this claim. Arguments
not made are waived.5
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 4–6) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.

5 Appellant merely argues, “Maekawa has been cited solely for its teachings
related to threshold times. Maekawa has not been cited as teaching any of
the limitations of independent claim 17, and provides no additional
information that would suggest a modification of Ouchi and Ikeda to arrive
at the claimed feature. Thus, the rejection of claim 19 over Ouchi, Ikeda, and
Maekawa is clear error for the reasons discussed above with respect to
independent claim 17, and should be reversed.” Appeal Br. 24–25.
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CONCLUSION
We AFFIRM the Examiner’s rejections. More specifically, Appellant
has not persuasively argued that the Examiner erred with respect to
obviousness Rejections R1 and R2 of claims 1–4, 6–12, and 14–20 under 35
U.S.C. § 103 over the cited prior art combinations of record, and we sustain
the rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1–4, 6–12,
14–18, 20 103 Ouchi, Ikeda
1–4, 6–12,
14–18, 20
19 103
Ouchi, Ikeda,
Maekawa 19
Overall
Outcome
1–4, 6–12,
14–20
TIME PERIOD FOR RESPONSE
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)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED