Yong Ho. You

Patent Trials and Appeals Board

Aug 2, 2019

13331122 - (D) (P.T.A.B. Aug. 2, 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.
13/331,122 12/20/2011 Yong Ho YOU 0203-0530 1085
68103 7590 08/02/2019
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
VILLENA, MARK
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YONG HO YOU1
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Appeal 2018-008220
Application 13/331,122
Technology Center 2600
____________

Before ROBERT E. NAPPI, JAMES R. HUGHES, and
MICHAEL T. CYGAN, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–3, 5–9, 11–14, and 16–20. Claims 4,
10, and 15 have been canceled. Final Act. 1; Appeal Br. 3.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Samsung Electronics Co., Ltd. (“Appellant”) is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”) filed Dec. 20, 2011;
Appeal Brief (“Appeal Br.”) filed Apr. 24, 2017; and Reply Brief (“Reply
Br.”) filed Aug. 9, 2018. We also refer to the Examiner’s Final Office
Action (“Final Act.”) mailed Sept. 8, 2016; and Answer (“Ans.”) mailed
June 14, 2018.
Appeal 2018-008220
Application 13/331,122

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We reverse.
Appellant’s Invention
The invention at issue on appeal relates generally to “a method of
providing information during a call and a mobile communication terminal
thereof” (Spec. ¶ 2) and, more specifically, communication terminals and
methods for converting a voice signal into text (alphanumeric characters)
when a search command is generated, matching the text in a memory,
sending the matching text to a counterpart communication terminal, and
during the sending of the data through a wireless communication unit—
“informing, in response to a predetermined triggering event occurrence,
status information of a data transfer of data,” which indicates the “progress
of the data transfer of the data during the transfer of the data,” and “the
predetermined triggering event occurs after the call is connected” (claim 1
(Claim App.)). See Spec. ¶¶ 6–8, 42–45.
Illustrative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A method of providing information of a mobile
communication terminal, the method comprising:
determining whether a search command event has been
generated during a call with a counterpart terminal;
converting a voice signal received from the mobile
communication terminal or received from the counterpart
terminal into text when the search command event is determined
to have been generated;
identifying information matching the text in a memory;
sending the information to the counterpart terminal; and
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informing, in response to a predetermined triggering event
occurrence, status information of a data transfer of data when
sending the data through a wireless communication unit, the
status information indicating a progress of the data transfer of
the data during the transfer of the data,
wherein the predetermined triggering event occurs after
the call is connected.
Rejections on Appeal3
1. The Examiner rejects claims 1, 2, 12, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Thomas et al. (US 2012/0108221 A1,
published May 3, 2012 (filed Oct. 28, 2010)) (“Thomas”) and Lee et al. (US
2011/0117897 A1, published May 19, 2011) (“Lee”). See Final Act. 2–7.
2. The Examiner rejects claims 5, 6, 11, and 16 under 35 U.S.C.
§ 103 as being unpatentable over Thomas, Lee, and Usher et al.
(US 2009/0240497 A1, published Sept. 24, 2009) (“Usher”). See Final Act.
7–9.
3. The Examiner rejects claims 3 and 14 under 35 U.S.C. § 103 as
being unpatentable over Thomas, Lee, and Opaluch (US 2011/0035220 A1,
published Feb. 10, 2011). See Final Act. 10–11.
4. The Examiner rejects claims 7–9 and 17–19 under 35 U.S.C.
§ 103 as being unpatentable over Thomas, Lee, and Evermann et al.
(US 2008/0154612 A1, published June 26, 2008) (“Evermann”). See Final
Act. 11–15.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103, e.g., to rename § 103’s
subsections. Because the instant Application has an effective filing date
earlier than the AIA’s effective date for applications, this Decision refers to
the pre AIA version of § 103 (i.e., § 103(a)).
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5. The Examiner rejects claim 20 under 35 U.S.C. § 103 as being
unpatentable over Thomas, Lee, and Ronning et al. (US 2003/0195974 A1,
published Oct. 16, 2003) (“Ronning”). See Final Act. 15–16.
ISSUE
Based upon our review of the record, Appellant’s contentions, and
the Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in concluding that the combination of Thomas
and Lee collectively would have taught or suggested
informing, in response to a predetermined triggering
event occurrence, status information of a data transfer of data
when sending the data through a wireless communication unit,
the status information indicating a progress of the data transfer
of the data during the transfer of the data,
wherein the predetermined triggering event occurs after
the call is connected
within the meaning of Appellant’s claim 1 and the commensurate limitations
of claim 12?
ANALYSIS
Claims 1, 2, 12, and 13
The Examiner rejects independent claim 1 as being obvious in view of
Thomas and Lee. See Final Act. 2–7; Ans. 16–21. Appellant contends that
Thomas and Lee do not teach the disputed limitations of claim 1. See
Appeal Br. 4–7; Reply Br. 2–7. Specifically, Appellant contends, inter alia,
that the Examiner-cited portions of Lee do not describe “that the mobile
communication terminal informs, in response to a predetermined triggering
event occurrence, status information of a data transfer of data when the
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mobile communication terminal sends the data through a wireless
communicator” and “the status information indicating a progress of the data
transfer of the data during the transfer of the data” (Appeal Br. 6). See
Appeal Br. 5–7; Reply Br. 2–7.4
We agree with Appellant that the Examiner-cited portions of Lee (Lee
¶¶ 35, 153, 161–162, 171—see Final Act. 2–7; Ans. 16–21) do not describe
the sending mobile communication terminal informing the status of the data
transfer during the data transfer. See Appeal Br. 5–7; Reply Br. 2–7. At
best, the cited portions of Lee describe a receiving mobile terminal
displaying the progress of data being downloaded or sending an alert when
the download is complete. See Lee ¶¶ 153, 161–162. Lee does not describe
the sender doing the informing (either informing the sender or informing the
sender and the receiver of the data transfer). See Spec. ¶¶ 42–44.
Consequently, we are constrained by the record before us and
determine that the Examiner erred in concluding that Thomas and Lee render
obvious Appellant’s claim 1. Independent claim 12 includes limitations of
commensurate scope. Dependent claims 2 and 13 depend from and stand
with claims 1 and 12. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claims 1, 2, 12, and 13.
Claims 3, 5–9, 11, 14, and 16–20
The Examiner rejects claims 5, 6, 11, and 16, which depend from
claims 1 and 12 (respectively), as obvious in view of Thomas, Lee, and

4 Appellant’s claims do not explicitly recite the sending mobile terminal
informing the status. After reviewing Appellant’s arguments and the
relevant portions of the Specification, we concur with Appellant’s
interpretation of the claim language—that the sending mobile terminal does
the informing.
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Usher. See Final Act. 7–9. The Examiner rejects claims 3 and 14, which
depend from claims 1 and 12 (respectively), as obvious in view of Thomas,
Lee, and Opaluch. See Final Act. 10–11. The Examiner rejects claims 7–9
and 17–19, which depend from claims 1 and 12 (respectively), as obvious in
view of Thomas, Lee, and Evermann. See Final Act. 11–15. The Examiner
rejects claim 20, which depends from claim 1, as obvious in view of
Thomas, Lee, and Ronning. See Final Act. 15–16. The Examiner does not
suggest, and we do not find, that the additional cited references (Usher,
Opaluch, Evermann, or Ronning) cure the deficiencies of Thomas and Lee
(supra). Therefore, we reverse the Examiner’s obviousness rejections of
dependent claims 3, 5–9, 11, 14, and 16–20 for the same reasons set forth as
their respective base claims (supra).
CONCLUSIONS
Appellant has shown the Examiner erred in rejecting claims 1–3, 5–9,
11–14, and 16–20 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1–3, 5–9, 11–14, and
16–20.

REVERSED