Ex Parte Kim et alDownload PDFPatent Trial and Appeal BoardMay 13, 201411100635 (P.T.A.B. May. 13, 2014) Copy Citation 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. 11/100,635 04/07/2005 Hyun-Soo Kim 48707 1945 1609 7590 05/14/2014 ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P. 1300 19TH STREET, N.W. SUITE 600 WASHINGTON,, DC 20036 EXAMINER ORR, HENRY W ART UNIT PAPER NUMBER 2175 MAIL DATE DELIVERY MODE 05/14/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte HYUN-SOO KIM, EUN-CHUL RA, IN-GU BAE, JAE-HYOUNG BAE, and BYOUNG-HO CHO1 __________ Appeal 2011-011068 Application 11/100,635 Technology Center 2100 __________ Before DEMETRA J. MILLS, ERIC B. GRIMES, and LORA M. GREEN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims related to setting menus for display in a portable terminal (e.g., a mobile phone), which have been rejected as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify the Real Party in Interest as Samsung Electronics Co., Ltd. (App. Br. 2). Appeal 2011-011068 Application 11/100,635 2 STATEMENT OF THE CASE A portable terminal, such as a mobile phone (Spec. 7:1-2), “typically provides additional services in addition to wireless communication” and needs menus for performing these other functions (id. at 1:19-24). “At present, a page type, a scroll type, a grid type, and a ring type are available as menu types for the portable terminal” (id. at 1:25-26). “In general, menus are preset for the portable terminal at the factory, and users are not allowed to change the menu data” (id. at 1:28-29). The Specification discloses a system in which “a user sets menus in a desired menu type and invokes a function of a portable terminal by selecting such a menu” (id. at 6:21-22). The Specification describes a portable terminal in which “the data memory stores information about menus that have been set and information about menu images corresponding to the menus,” including select images and unselect images (id. at 7:30 to 8:1). The Specification states that “[s]elect images are defined as images for the grid menus when the grid menus are selected, and unselect images are defined as images for the grid menus when the grid menus are not selected. In other words, unselect images are set for menu positions other than a menu position for a selected menu.” (Id. at 14:3-6.) Claims 1-18 are on appeal. Claims 1, 8, and 10 are illustrative and read as follows: 1. A method for displaying a grid menu in a portable terminal having a select image buffer for storing select images and an unselect image buffer for storing unselect images, comprising the steps of: determining a selected menu in a menu displaying mode; Appeal 2011-011068 Application 11/100,635 3 reading a select image for the selected menu from the select image buffer, displaying the select image at a predetermined position in a menu region, and displaying a title text of the selected menu in a title region; and reading unselect menu images for unselected menus from the unselect image buffer and displaying the unselect menu images at predetermined positions in the menu region. 8. A method for displaying a scroll menu in a portable terminal having a select image buffer for storing select images and an unselect image buffer for storing unselect images, comprising the steps of: determining a selected menu in a menu displaying mode; reading a select image for the selected menu from the select image buffer, and displaying the select image together with a title text of the selected menu at a predetermined position in a menu region; and reading unselect menu images for unselected menus from the unselect image buffer and displaying the unselect menu images together with title texts of the unselected menus at predetermined positions in the menu region. 10. A method of setting grid menus in a portable terminal, comprising the steps of: determining the number of menus to be displayed on a display in a grid menu setting mode; prompting to set a background image and registering an image selected during background image setting as the background image; guiding to set a title image and registering an image selected during title image setting as the title image; and prompting to set select and unselect images, repeatedly registering a user-selected image as a select image at a focused menu position when a select image setting mode is selected, and repeatedly registering a user- selected image as an unselect image at a focused menu position when an unselect image setting mode is selected. Appeal 2011-011068 Application 11/100,635 4 The claims stand rejected as follows: • Claims 1-7, 10, 13-16, and 18 under 35 U.S.C. § 102(e) as anticipated by Battles2 (Ans. 4) and • Claims 8, 9, 11, 12, and 17 under 35 U.S.C. § 103(a) as obvious based on Battles and the Specification’s admitted prior art (Ans. 9). I. Issue The Examiner has rejected claims 1-7, 10, 13-16, and 18 as anticipated by Battles. The Examiner finds that Battles discloses the method of claim 1 in its paragraphs 31 and 33 and its Figures 3 and 4 (Ans. 4), and discloses the method of claim 10 in its paragraphs 32-36 and 51 and its Figures 6 and 7 (Ans. 7). With regard to claim 1, Appellants contend that “Battles discloses a general purpose memory 1407 that stores image data for display on the LCD of a digital camera 101, and fails to disclose or suggest features relating to a select image buffer and an unselect image buffer, and reading images from the respective buffers as recited in claims 1 [sic]” (App. Br. 11-12). Appellants also contend that “Battles fails to disclose or suggest Appellants’ claimed features relating to determining a selected menu in a menu display mode” and “does not disclose or suggest Appellant’s [sic] claimed features relating to displaying select and unselect images at pre-determined positions in a menu region” (id. at 12). 2 Battles et al., US 2003/0210331 A1, Nov. 13, 2003. Appeal 2011-011068 Application 11/100,635 5 Finally, with respect to claim 1, Appellants contend that Battles’ Figure 4 shows unselected icons only as “passive icons for display,” not unselect menu images as required by the claims, “because the claimed unselect menu images have functionality related to the menu as they are displayed at predetermined positions in the menu region” while “there is no menu functionality associated with” the unselected icons in Battles’ Figure 4 (id.). With regard to claim 10, Appellants contend that the claim “recites features . . . to set select and un-select images [but] Battles fails to disclose anything related to at least these claimed features” (id. at 13). Appellants contend that “the cited paragraphs and figures of Battles are unrelated to a grid menu setting mode, and thus does not disclose or suggest ‘determining the number of menus to be displayed . . .’, as recited in claim 10” and that Battles also fails to teach or suggest prompting to set select and unselect images, as claimed (Reply Br. 10). The issue with respect to this rejection is whether claims 1 and 10 encompass a method disclosed by Battles. Findings of Fact 1. Battles states that its invention relates to “personalizing portable devices including a consumer customized user interface” and is applicable to digital cameras and cellular telephones (Battles 1, ¶ 1; 2, ¶ 25). 2. Battles’ Figure 3 is reproduced below: Appeal 2011-011068 Application 11/100,635 6 Figure 3 shows a digital camera’s display screen “displaying a captured image and a set of icons comprising a menu” (id. at 1, ¶ 12). 3. Battles’ Figure 4 is reproduced below: Figure 4 shows a view of the digital camera’s display screen “illustrating selection of one of the icons” (id. at 1, ¶ 13). 4. Battles states that menu 203 “may be part of a hierarchical menu tree providing for various operations” (id. at 2, ¶ 29). 5. Battles states that “menu 203 may include one or more displayable icons such as print icon[ ] 301, print ‘two copies’ icon 302, print to album page icon 303, e-mail icon 304 and post image to website icon 305” (id.). 6. Battles states that because of “the desirability of personalizing a selection (e.g., designating the specific recipients and their e-mail addresses, Appeal 2011-011068 Application 11/100,635 7 . . . etc.), one embodiment of the invention provides for user customization of the menus and/or other features and functionalities forming the user interface” (id. at 2, ¶ 31). 7. Battles states that “[c]ustomization of the user interface may be performed by downloading appropriate software to a memory of the digital camera . . . , the ‘customization’ file being read by the program code so as to implement a personalized user interface” (id. at 3, ¶ 31). 8. Battles states that “[s]election of a particular icon and its associated function (e.g., designating an email recipient of an image in the case of share menu 203) may be accomplished by use of 4-way processor with ‘okay’ button assembly” (id. at 3, ¶ 32). 9. Battles states that “[s]election of a particular icon, such as activated e-mail icon 401, may result in additional information being displayed such as tag 402 displaying a designation of a recipient” (id.). 10. Battles states that each of the icons “may call appropriate sub menus to provide for further user selection and control” (id.). 11. Battles states that its portable device can include “a ‘wizard’, i.e., a step-by-step set of instructions or screens that direct the user through the procedures of customizing menus and the user interface” (id. at 3, ¶ 35). 12. Battles states that where additional information is required to add a particular function, the user is guided through the required steps to provide additional information. . . . For example, in the case of e-mail, the user may be requested to enter . . . a label or title to be associated with and displayed on the digital camera designating a particular destination. (Id. at 3, ¶ 36.) Appeal 2011-011068 Application 11/100,635 8 Principles of Law “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Analysis We agree with the Examiner that Battles describes a method meeting all of the limitations of claim 1. Battles describes displaying a grid menu (element 203, FFs 2 and 3) in a portable terminal (FF 1) having a memory (FF 7). Although Battles does not refer to the parts in the memory that store its images for selected and unselected images as a “select image buffer” and an “unselect image buffer,” the images are necessarily stored in the memory, and Appellants have not provided evidence showing that the image buffers recited in claim 1 differ structurally from Battles’ memory. Battles describes a method that comprises determining a selected menu (FF 8) and displaying a select image – necessarily read from memory – at a predetermined position in the menu region (element 401 in FF 3), together with a title text (element 402 in FF 3), and displaying unselect menu images – also necessarily read from memory – for the unselected menus (elements 301, 302, 303, and 305 in FF 3) at predetermined positions in the menu region. Appellants argue that Battles discloses a general purpose memory 1407 that stores image data for display on the LCD of a digital camera 101, and fails to disclose or suggest features relating to a select image buffer and an unselect image buffer, and reading images from the respective buffers as recited in claims [sic] 1 among other features Appeal 2011-011068 Application 11/100,635 9 (App. Br. 11-12). Appellants do not, however, provide any reason to think that a structural difference results from calling an image-storing portion of a memory an “image buffer” instead of generally referring to is as “memory.” This argument is therefore unpersuasive. Appellants also argue that “Battles fails to disclose or suggest Appellants’ claimed features relating to determining a selected menu in a menu display mode” (id. at 12). Battles, however, expressly discloses determining a selected icon (FF 8), in a mode in which menus are displayed (FF 2), where the icon can have sub menus (FFs 4 and 10). We agree with the Examiner that Battles discloses the disputed limitation. Finally, Appellants argue that Battles does not display unselect menu images, as recited in claim 1, but only passive icons for display because there is no menu functionality associated with the icons 301-303 and 305. Battles’ passive icons do not disclose or suggest Applicants[’] claimed unselect menu images, at least because the claimed unselect menu images have functionality related to the menu as they are displayed at predetermined positions in the menu region. (App. Br. 12.) This argument is also unpersuasive. Appellants’ Specification states that “unselect images are defined as images for the grid menus when the grid menus are not selected. In other words, unselect images are set for menu positions other than a menu position for a selected menu.” (Spec. 14:4-6.) Battles discloses displaying a set of menu images (elements 301-305 in FF 2) for possible selection and changing the image of the selected menu (element 401 in FF 3) while not changing the images of the unselected menus. Thus, the images displayed before a selection is made, which are the Appeal 2011-011068 Application 11/100,635 10 same as the images displayed for unselected menu items, are reasonably interpreted as being “unselect menu images,” as recited in claim 1. With regard to claim 10, Appellants argue that “claim 10 recites features for setting menus in a portable terminal to set select and un-select images. Battles fails to disclose anything related to at least these claimed features.” (App. Br. 13.) More specifically, Appellants argue that the paragraphs and figures cited by the Examiner do not disclose either the “determining” step of claim 10, or the step of “prompting to set select and unselect images” and registering the selected images (Reply Br. 10). In this case, we agree with Appellants that the Examiner has not made a prima facie case that Battles discloses a method meeting all of the limitations of claim 10. The Examiner points to Battles’ paragraphs 32-36, paragraph 51, and Figures 6 and 7 (Ans. 7). However, while those passages and figures describe a method of customizing the user interface, they do not describe prompting a user to select particular images for selected and unselected menu items and registering them at specified menu positions. The Examiner therefore has not shown that Battles discloses the last step of claim 10: “prompting to set select and unselect images” and registering the selected images. Conclusion of Law Claim 1 encompasses a method disclosed by Battles. Claim 10 does not encompass a method disclosed by Battles. Appeal 2011-011068 Application 11/100,635 11 Claims 2-7, 13-16, and 18 have not been argued separately and therefore fall with claim 1.3 37 C.F.R. § 41.37(c)(1)(vii). II. The Examiner has rejected claims 8, 9, 11, 12, and 17 as obvious based on Battles and what is admitted to be prior art in Appellants’ Specification (Ans. 9). The Examiner finds that Battles’ disclosure is limited to grid menus rather than a scroll menu, as recited in claim 8 (id.), but the Specification admits that “[a]t present, a page type, a scroll type, a grid type, and a ring type are available as menu types for the portable terminal” (id. at 10, quoting Spec. 1:25-26). The Examiner concludes that it would have been obvious “to modify the grid menu as taught by Battles with the conventional menu styles as taught by Application’s specification to provide the benefit of customizing a user menu interface” (id.). We agree with the Examiner’s reasoning and conclusion and adopt his position as our own. Appellants argue that the Alleged Admission fails to make up for the deficiencies of Battles at least because Applicants’ Specification, on page 1, lines 25-26 discloses a scroll type, however, Alleged Admission, alone or in any combination with Battles, fails to 3 The limitations of claims 2-7, 14-16, and 18 are recited in the Appeal Brief (pages 14-16) but no substantive arguments are presented with regard to these claims. Merely reciting claim limitations and stating that they are not found in the prior art is not a substantive argument. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board [has] reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Appeal 2011-011068 Application 11/100,635 12 disclose or suggest the combination of features for a method for displaying a scroll menu in the combination of features recited in claim 8. (App. Br. 17.) This argument is unpersuasive. Claim 8 differs from claim 1, discussed in detail above, in that it is directed to a “method for displaying a scroll menu,” rather than a grid menu as in claim 1. We have found that claim 1 is fully disclosed in Battles, and Appellants’ Specification states that grid menus and scroll menus were available menu types at the time the present application was filed (Spec. 1:25-26). Thus, the combination of features recited in claim 8 would have been obvious to a person of ordinary skill in the art based on Battles and the background knowledge of those skilled in the art. With regard to claims 11 and 12, Appellants argue that they include limitations similar to claim 10 and that, as with claim 10, Battles does not disclose the claimed methods and the Specification’s admitted prior art does not make up for Battles’ deficiencies (Reply Br. 10-11). We agree with Appellants’ position with regard to claims 11 and 12, both of which include a step of “prompting to set select and unselect images.” As discussed above with respect to claim 10, Battles does not disclose a step of prompting a user to select particular images for selected and unselected menu items, and the Specification does not admit that such a step was otherwise known in the art. Claims 9 and 17 have not been argued separately and therefore fall with claim 8. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-011068 Application 11/100,635 13 SUMMARY We affirm the rejection of claims 1-7, 13-16, and 18 as anticipated by Battles. We affirm the rejection of claims 8, 9, and 17 as obvious based on Battles and the admitted prior art. We reverse the rejection of claim 10 as anticipated by Battles. We reverse the rejection of claims 11 and 12 as obvious based on Battles and the admitted prior art. 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). AFFIRMED-IN-PART cdc Copy with citationCopy as parenthetical citation