Ex Parte Kim

Patent Trial and Appeal Board

Nov 29, 2016

13667597 (P.T.A.B. Nov. 29, 2016)

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.
13/667,597 11/02/2012 Soon Do KIM 0203-0174-1 1213
12/01/201668103 7590
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
LEE, CHUN KUAN
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
u sdocketing @ j effersonip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOON DO KIM
Appeal 2015-007041
Application 13/667,597
Technology Center 2100
Before THU A. DANG, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, and 6—20. Claim 5 has been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-007041
Application 13/667,597
A. INVENTION
According to Appellant, the invention relates to “controlling a mobile
terminal on an external device basis” (Spec. 12).
B. REPRESENTATIVE CLAIM
Claims 1 is exemplary:
1. A method of controlling a mobile terminal on an external
device basis, the method comprising:
detecting a type of a connected external device if the external
device is connected to the mobile terminal; and
operating different data transmission methods according to the
type of the connected external device,
wherein the operating of the different data transmission
methods comprises:
connecting a transceiver to the external device if the
connected external device requires a high speed data
transmission; and
connecting a Universal Serial Bus (USB) controller to
the external device if the connected external device does not
require the high speed data transmission.
C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ritter US 2007/0052672 A1 Mar. 8, 2007
Shih US 2008/0270647 A1 Oct. 30, 2008
Lee US 2009/0064202 A1 Mar. 5, 2009
Li US 2009/0109639 A1 Apr. 30, 2009
Wang US 7,849,238 B2 Dec. 7, 2010
Claims 1, 6—12, and 17—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Wang and Li.
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Application 13/667,597
Claims 2-4, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Wang, Li and Ritter.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Wang, Li and Shih.
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding that Li discloses or suggests “connecting a transceiver to the external
device if the connected external device requires a high speed data
transmission;” and “connecting a Universal Serial Bus (USB) controller to
the external device if the connected external device does not require the high
speed data transmission” (claim 1) (emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Li
Li discloses a portable device, wherein Figure 1 is reproduced below:
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Application 13/667,597
FIG, I
Figure 1 discloses a portable electronic device 1 including an interface
10 configured to connect to different accessories; an accessory identifying
unit 100; and a circuit board 200 electronically connected thereto (113).
The circuit board 200 includes a USB controlling circuit 21, a power
controlling circuit 22, a header controlling circuit 23 and a universal
asynchronous receiver/transceiver (UART) controlling circuit 24 that are
respectively configured for controlling their corresponding accessories
(116).
IV. ANALYSIS
We have considered all of Appellant’s arguments, but we are
unpersuaded by Appellant’s contentions regarding the Examiner’s rejections
of the claims. Based on the record before us, we find no error with the
Examiner’s finding that the combination of cited references teaches and
suggests the claimed invention.
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Application 13/667,597
As to claim 1, Appellant contends “Li does not teach or suggest
connecting the USB controlling circuit 21 to an external device if the
connected external device does not require high speed data transmission’''
(App. Br. 4). Moreover, Appellant asserts “Li does not teach or suggest
connecting a transceiver to the external device when the connected external
device requires a high speed data transmission” (id.). In particular,
Appellant contends, what Li teaches “is the exact opposite of the limitations
recited” (id.)}
Appellant further argues that Li does not teach or suggest that “each
connection is made depending on whether the connected external device
requires a high speed data transmission” (id. at 6, emphasis omitted). In
particular, Appellant repeats “Li does not teach or suggest connecting a
transceiver to the external device if the connected external device requires a
high speed data transmission,” and “connecting a Universal Serial Bus
1 Although Appellant contends, in Li, “the USB controlling circuit 21 is
connected to the external device not when a high speed data transmission is
required” but rather “when a high speed data transmission is not required,”
as recited (App. Br. 5), we believe this to be a typographical error on part of
Appellant. In particular, earlier in the Brief, Appellant contends that Li
teaches the opposite (id. at 4). Thus, we believe Appellant intended to argue
that in Li, the USB controlling circuit 21 is connected to the external device
when a high speed transmission is required, not when the high speed data
transmission is not required. Similarly, although Appellant contends “the
controlling component 22 or 24 is connected to the external device not
when a high speed data transmission is not required” but rather “when a high
speed data transmission is requiredr (id. at 5), we believe Appellant
intended to argue that in Li, the controlling component 22 or 24 is connected
to the external device when a high speed transmission is not required, not
when the high speed data transmission is required.
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Application 13/667,597
(USB) controller to the external device if the connected external device does
not require the high speed data transmission,” as recited (id.).
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). While we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See
Phillips v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Although Appellant contends Li does not teach or suggest
“connecting the USB controlling circuit 21 to an external device if the
connected external device does not require high speed data transmission”
(App. Br. 4, emphasis omitted), we note that claim 1 does not require that
“USB controlling circuit 21” be connected when a high speed data
transmission is not required. Instead, claim 1 merely requires “a” USB
“controller” be connected when a high speed data transmission is not
required (claim 1). Similarly, claim 1 merely requires “a transceiver” be
connected when a high speed data transmission is required (claim l).2
2 We note claim 1 does not positively require either “connecting” to a
transceiver or “connecting” to a USB (claim 1). Instead, the “connecting”
steps are claimed as depending on whether a condition is satisfied, i.e., “if’
the connected external device “requires” (or “does not require”) a high speed
data transmission (id.). In particular, claim 1 merely recites “wherein”
“connecting a transceiver ... if .. . requires a high speed data
transmission;” and “connecting a Universal Serial Bus ... if.. . does not
require the high speed data transmission” (emphasis added). Because the
claim specifically recites that connecting is performed “if’ a condition is
satisfied, the transceiver or USB may never be connected. That is, the
recited “requires [or does not require] a high speed data transmission” may
never happen, and thus, the connecting steps may never be performed. See
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As the Examiner explains, in rejecting the claims as obvious over the
cited references, the “claimed ‘transceiver’ is equated to Li’s USB
controlling circuit (Figure 1, reference 21) for transmitting/receiving USB
data” (Ans. 17). Similarly, the Examiner explains, the “claimed ‘Universal
Serial Bus (USB) controller’ is equated to Li’s controlling circuit 22/24 of
Figure 1, as controller circuit 22/24 [is a] controller that conforms to USB
standard in order to [be] connected to the corresponding accessory on the
portable electronic device via the USB interface . . . (id.) We note
Appellant does not contest the Examiner’s interpretation of the claim terms
“transceiver” and “USB controller” of claim 1 as explained. Based on the
record before us, we are unpersuaded that the Examiner’s claim
interpretation is overly broad or unreasonable.
For these reasons, we are not persuaded the Examiner erred in finding
that “Li teaches/suggest[s] . . . requiring high speed data transmission . . .
[when] the USB controlling circuit (Figure 1, reference 21) is selected to be
connected to the connected USB accessory for controlling the transmitting
Ex parte Schulhauser, Appeal No. 2013-007847, at *9 (PTAB, April 28,
2016) (precedential) (holding:
The Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are
not required to be performed under a broadest reasonable
interpretation of the claim (e.g., instances in which the
electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the
determining step and the remaining steps of claim 1 has not
been met).
Here, because claim 1 does not positively require either “connecting”
to a transceiver or “connecting” to a USB, the Examiner did not need
to present evidence of the obviousness of the “connecting” steps.
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Application 13/667,597
and receiving ...” (Ans. 17; FF). In view of the Examiner’s broadest,
reasonable interpretation of “transceiver” discussed above (Ans. 5), we agree
with the Examiner’s finding that Li discloses and suggests “connecting a
transceiver to the external device if the connected external device requires a
high speed data transmission” (claim 1).
Similarly, we are not persuaded the Examiner erred in finding that “Li
teaches/suggest[s]. . . not requiring high speed data transmission” when “the
power controlling circuit (Figure 1, reference 22) is selected to be connected
to the connected charger for controlling the charging of the portable
electronic device . . .” or when “the UART controlling circuit (Figure 1,
reference 24) is selected to be connected to the connected UART accessory
for controlling the data transferring between the UART accessory and the
portable electronic device . . .” (Ans. 17—18; FF). In view of the Examiner’s
broadest, reasonable interpretation of “USB controller” discussed above
(Ans. 5), we agree with the Examiner’s finding that Li discloses and
suggests “connecting a Universal Serial Bus (USB) controller to the external
device if the connected external device does not require the high speed data
transmission” (claim 1).
With regard to Appellant’s argument that Li does not teach or suggest
that each connection is made “depending on whether the connected external
device requires a high speed data transmission” (App. Br. 6, emphasis
omitted), we note that “depending on whether the connected external device
requires a high speed data transmission” is not recited in the claims.
Nevertheless, although Appellant clarifies such contention by repeating
“[t]hat is, Li does not teach or suggest connecting a transceiver to the
external device if the connected external device requires a high speed data
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transmission,” and “connecting a Universal Serial Bus (USB) controller to
the external device if the connected external device does not require the high
speed data transmission” {id.), as discussed above, we agree with the
Examiner’s finding that Li discloses and suggests the contested limitations.
Accordingly we affirm the rejection of claim 1, and claims 6—10
depending therefrom and falling therewith (App. Br. 6), over Lee, Wang and
Li. Lor similar reasons, we also affirm the rejection of claim 11, which
recites similar limitations and was not argued separately, as well as claims
12, and 17—20 depending therefrom, over Lee, Wang and Li. Id.
Appellant does not provide substantive arguments for claims 2—4, and
13—16 separate from claim 1 (App. Br. 7), and thus, we also affirm the
rejection of claims 2-4, 13, and 16 over Lee, Wang, and Li in further view
of Ritter; and claims 14 and 15 over Lee, Wang, and Li in further view of
Shih.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1—4, and 6—20 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.L.R. § 1.136(a)(l)(iv).
ALLIRMED
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