Soohyun Lee et al.

Patent Trials and Appeals Board

Sep 5, 2019

14683790 - (D) (P.T.A.B. Sep. 5, 2019)

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.
14/683,790 04/10/2015 Soohyun LEE 1398-808
(YPF201402-0029)
1563
66547 7590 09/05/2019
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
PILLAI, NAMITHA
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
09/05/2019 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):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SOOHYUN LEE, SEOKHEE NA, SANGKI LEE, and
SUKJAE LEE1
____________________

Appeal 2018-006786
Application 14/683,790
Technology Center 2100
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Samsung Electronics Co.,
Ltd. Appeal Br. 1.
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BACKGROUND2
Appellants’ disclosed embodiments and claimed invention relate to
“easily controlling a home screen.” Spec. 1:10–15. Claims 1 and 14,
reproduced below, are illustrative of the subject matter on appeal:
1. A method of setting a home screen in an electronic
device equipped with a touch screen, the method comprising:
displaying a home screen setting screen including at least
one template related with each user mode in response to
detecting a touch input for setting the home screen; and
setting the home screen based on at least one template
included in a user mode selected in the home screen
setting screen.
App. Br. 13 (Claims App’x).
14. An electronic device, comprising:
a touch screen configured to detect a touch input and
display a home screen setting screen including at least
one template related with each user mode in response to
detect a touch; and
a control mode configured to control a setting the home
screen based on at least one template included in an user
mode selected in the home screen setting screen.
App. Br. 15 (Claims App’x).

2 Throughout this Decision we have considered the Specification filed April
10, 2015 (“Spec.”), the Final Rejection mailed September 25, 2017 (“Final
Act.”), the Appeal Brief filed February 28, 2018 (“App. Br.”), the
Examiner’s Answer mailed April 19, 2018 (“Ans.”), and the Reply Brief
filed June 19, 2018 (“Reply Br.”)
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REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–3.
Claims 1–20 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by US 2006/0288371 A1, published December 21, 2006 (“Jun”).
Final Act. 3–7.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have 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 have considered all of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 1–20 Under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
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excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
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For purposes of the § 101 rejection, Appellants argue claims 1–20
together as a group. See App. Br. 5–6; Reply Br. 2–3. Therefore, consistent
with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to
independent claim 1. Independent claim 14 and dependent claims 2–13 and
15–20 stand or fall with independent claim 1.
The Examiner determined the claims are directed to “user selection of
a mode and retrieval of data associated with this [selection] for adjusting the
display.” Final Act. 2. According to the Examiner, “[t]he claims disclose
features associated with collecting and retrieving data associated with
display formats which the courts have determined to be abstract.” Id. (citing
Intellectual Ventures I LLC v. Capital One Financial Corp., 792 F.3d 1363
(Fed. Cir. 2015)).
We do not agree with the Examiner’s characterization of the claims as
an abstract idea. First, we do not agree with the Examiner that the claims
here are similar to those at issue in Intellectual Ventures. The claimed
invention at issue in Intellectual Ventures involved “tracking financial
transactions to determine whether they exceed a pre-set spending limit (i.e.,
budgeting).” Intellectual Ventures, 792 F.3d at 1367. Here, the claims are
not related to financial transactions, but instead to providing touch-device
home screens configured for different user modes. See Spec. 1:10–15. This
subject matter is, instead, similar to the claims at issue in Core Wireless—
“an improved user interface for computing devices”—which were found not
to be abstract because they are “directed to an improvement in the
functioning of computers, particularly those with small screens.” Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed.
Cir. 2018) (analyzing claims directed to “improved display interfaces” that
“allow a user to more quickly access desired data stored in, and function of
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applications included in, the electronic devices” by “launch[ing] a main
view” and then “launch[ing] the appropriate summary window”). Like the
claims in Core Wireless, the Specification here asserts that the prior art
interfaces had deficits, including user inconvenience created by the necessity
of making multiple selections and the difficulty in finding a desired home
page. Spec. 3:23–4:7. In addition, and similar to Core Wireless (880 F.3d at
1363), the Specification declares that it improves the efficiency of using the
touch screen interface by improving a user’s efficiency in navigating (Spec.
2:10–13).
Second, under the Revised Guidance, we must determine whether the
claims recite one of several groupings of abstract ideas: mathematical
concepts, certain methods of organizing human activity, and mental
processes. See Revised Guidance, 84 Fed. Reg. at 52. We conclude that the
claims are not directed to a judicial exception because the claimed invention
is not directed to any of these enumerated categories. Id.
Having determined that the claimed invention does not recite an
abstract idea, we need not reach the question of whether any claimed idea is
integrated into a practical application. We conclude that the claims are
directed to patent-eligible subject matter, and we do not sustain the
Examiner’s 35 U.S.C. § 101 rejection of claims 1–20.
Rejection of Claims 1–20 Under 35 U.S.C. § 102
For the anticipation rejection, Appellants argue claims 1–20 together
as a group. See App. Br. 11. Therefore, consistent with the provisions of 37
C.F.R. § 41.37(c)(l)(iv), we limit our discussion to independent claim 1.
Independent claim 14 and dependent claims 2–13 and 15–20 stand or fall
with claim 1.
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The Examiner rejects claim 1 under 35 U.S.C. § 102 as anticipated by
Jun. Final Act. 3–4. Specifically, for “a home screen setting screen
including at least one template related with each user mode” (the “setting
screen limitation”),3 the Examiner relies on Jun’s teaching of, for example, a
news page as a “user template mode.” Id. (citing Jun ¶¶ 4, 12). The
Examiner explains “[t]he template of Jun is similar to the template as
described by the current application specification in which a template is a
filled in home screen customized screen that is user selectable.” Ans. 6.
According to the Examiner “[b]y allowing the user to set at least one default
template as the home screen, the user [in Jun] does select at least one
template that is associated with a default user mode.” Id. (citing Jun
¶¶ 35, 50).
Appellants argue Jun does not teach the setting screen limitation
because “Jun merely discloses designating as a home screen of a terminal an
initial screen of a home screen application.” App. Br. 9. Appellants
concede that Jun “discloses the feature of customizing, by a user, a home
screen,” but argue that Jun does not disclose “anything regarding the feature
of at least one template (e.g., a layout wherein contents may be inserted)
associated with each user mode.” Id. at 10; see also Reply Br. 7 (stating that
Jun “does not disclose displaying at least one template for each user mode,
selecting a user mode, or setting a home screen based on a selected user
mode.”).

3 In the event of further prosecution, we leave it to the Examiner to
determine whether claims 1 and 14 are sufficiently definite under 35 U.S.C.
§ 112(b), with respect to the recitation of “each user mode,” which lacks
antecedent basis. Similarly, we leave it to the Examiner to determine
whether claim 14 is sufficiently definite under 35 U.S.C. § 112(b), with
respect to the recitation of “in response to detect a touch input.”
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The dispute, thus, centers on the meaning of “template” as used in the
claim. Although they do not explicitly propose a construction for the term,
Appellants assert that the recited template is “for example, a layout wherein
contents may be inserted.” Id. The Examiner, on the other hand, construes
the term more broadly as including any screen with a default layout. See
Ans. 5 (“Jun discloses that a plurality of human screen applications with
default template layouts are associated with each terminal with the user
having the ability to choose one amongst them.”) (citing Jun ¶ 50).
We agree with the Examiner that the claim language is broad and is
not limited to any particular content or layout. Appellants have not directed
us to, nor do we see, any language in the Specification defining the term
“template.” See, e.g., App. Br. 7–10 (discussing various non-limiting
embodiments described in the Specification).4 Moreover, nothing in the
claim language clarifies or narrows the term “template” other than to specify
that “at least one template related with each user mode” is included in the
home screen setting screen. Finally, the plain and ordinary meaning of the
word “template” is very broad. See Merriam-Webster’s Online Dictionary,
http://www.merriam-webster.com/dictionary/template (last visited
August 29, 2019) (“something that establishes or serves as a pattern”).
Jun discloses a configurable home screen for a mobile terminal. Jun
¶¶ 5 (“the home screen of the mobile terminal is configurable” and “it is
possible for a user to change the data for modifying an image of the home
screen”); 35 (“the home screen is configured by an application driven

4 “Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.” SuperGuide
Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
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method”), 50 (“each terminal can include a plurality of home screen
applications and the user can designate each home screen application to be
executed.”). Moreover, Jun discloses “selecting an initial screen of the
home screen application as a home screen of the mobile terminal; and
displaying a home screen in a foreground and the terminal application in a
background by the home screen application.” Id. ¶ 12. Given the broad
construction of the term “template,” we are not persuaded that the Examiner
erred in finding that Jun discloses the setting screen limitation.
CONCLUSION
We reverse the rejection of claims 1–20 under 35 U.S.C. § 101.
We affirm the rejection of claims 1–20 under 35 U.S.C. § 102(a)(1).
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s rejection of claims 1–20.
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