Ex Parte Kim et al

Board of Patent Appeals and Interferences

Jun 19, 2012

11333509 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EUN-HUI KIM, JOUNG-HOON CHOO,
YONG-DEOK KIM, JAE-WOO KO, BYUNG-SEOG BAEK,
HEE-SEOK HEO, JAE-SUNG PARK, KI-WON KWAK, and
MIN-WOO JUNG
____________________

Appeal 2010-003160
Application 11/333,509
Technology Center 2100
____________________

Before: ROBERT E. NAPPI, MICHAEL R. ZECHER, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Introduction
The claims are directed to method and apparatus for controlling
operation of a screen saver during reproduction of content. (Spec. 1: ¶ 2.)
Claims 1 and 20 are reproduced below, with a disputed limitation shown in
italics, and are illustrative of the claimed subject matter:
1. A method of controlling operation of a screen saver
during reproduction of content, the method comprising:
receiving an instruction to reproduce content;
determining whether the operation of the screen saver
can be controlled;
calculating a reproduction time of the content if the
operation of the screen saver is controllable; and
changing a set time of the screen saver so that the screen
saver is not operated during the reproduction time.

20. An apparatus for controlling operation of a screen saver
during reproduction of content, the apparatus comprising:
a user input unit which receives an instruction to
reproduce content;
a content reproduction unit which reproduces the content;
and
a screen saver control unit which operates a screen saver
after there has been no input for a predetermined time;
wherein the user input unit generates a virtual input
signal at intervals of less than that of a set time of the screen
saver so that the screen saver is not operated while the content
is reproduced.

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References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Skarbo
Shaffer
US 6,108,028
US 6,384,853 B1
Aug. 22, 2000
May 7, 2002
Zoest
Way
US 2005/0207442 A1
US 2007/0078769 A1
Sept. 22, 2005
Apr. 5, 2007

Rejections
The Examiner made the following rejections:
Claims 1, 2, 5-9, and 24 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Skarbo and Way. (Ans. 3).
Claims 3, 4, and 14-19 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Skarbo, Way, and Zoest. (Ans. 8).
Claims 10-13 and 20-23 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Skarbo, Way, and Shaffer. (Ans. 9).

Issues
Did the Examiner err in finding that Skarbo and Way teach or suggest
the determination of whether the operation of the screen save can be
controlled, calculating a reproduction time of the content if the operation of
the screen saver is controllable, and changing the set time of the screen saver
as claimed? (App. Br. 12, 17).

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OPINION

ANALYSIS
With respect to independent claims 1, 14 and 24 we have reviewed the
Examiner’s rejections in light of Appellants’ contentions that the Examiner
erred in finding that Skarbo teaches “calculating a reproduction time of the
content.” We agree with Appellants.
Claim 1 requires “calculating a reproduction time of the content if the
operation of the screen saver is controllable.” Independent claims 14 and 24
include similar limitations. The Examiner found that “Skarbo and Way do
not teach the claimed aspect of calculating a reproduction time of the content
and changing the set time accordingly.” (Ans. 4). Instead, the Examiner
found that it would have been obvious for one of ordinary skill in the art “to
configure the processor to extract information from a header in the
multimedia file to obtain the play time length and update the time for screen
saver accordingly, because this would allow [time] to postpone screen saver
activity.” (Ans. 4). The Examiner adds that Skarbo teaches that a screen
saver is suspended during the time a human presence is detected by the
operating system for the disclosed video-conferencing screen saver system,
(Ans. 12), and Way discloses “the claimed aspect of changing the set time of
the screen saver so that the screen saver is not operated during reproduction
time.” (Ans. 13).
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
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obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be 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 Int’l,
550 U.S. at 418.
We find that the limitation of calculating a reproduction time of the
content and changing the set time, is not taught or suggested in the art and
not obvious given the teachings in the reference. The portions of Way and
Skarbo cited by the Examiner only pertain to changing the set time of the
screen saver. (Ans. 12, 13). Controlling the activation of a screen saver
based on physical presence or incoming activity is not the same as
Appellants’ disclosure of calculating the time required to reproduce
particular content. (Spec. 10: ¶ 34, 12: ¶ [40]). As such, neither reference
teaches or suggests a calculation of a reproduction time.
The Examiner’s assertion that a person of ordinary skill in the art
could configure a processor to extract information necessary to calculate a
reproduction time (Ans. 4) appears to be based on the skill of the person of
ordinary skill in the art to configure the processor to perform the necessary
calculation. The Examiner’s statements fail to provide a rationale leading
from the processors of the cited references to the level of skill in the art
needed to perform the calculation. See KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)(stating that a “[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
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some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”) We find that the Examiner’s rejection is
conclusory and fails to rationally connect the teachings or suggestions of
Skarbo and Way to the knowledge and needs of the ordinarily skilled artisan.
We find that Examiner erred in finding the calculating of a
reproduction time limitation in claims 1, 14 and 24as obvious. As claims 2-
13, and 15-19 dependent upon claims 1 and 14, the Examiner erred in
rejecting these claims as well. Accordingly, we need not reach the issues
raised by Appellants other arguments for those claims. Claims 20-23,
however, do not contain the “calculating” limitation in claim 1. Thus, we
address each of Appellants’ arguments regarding the Examiner’s rejections
for claims 20-23 separately.
Claims 20 - 23
Appellants contend that claim 20 and its dependent claims 21-23 are
patentable for the reasons set forth for claims 1 and 10-13. (App. Br. 25).
Appellants’ argument for the patentability of claim 1 does not apply because
the disputed limitations are not found in the claims 20-23. See App. Br. 12-
18 (discussing limitations of claim 1 that are not contained in claims 20-23);
see In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing
in the claims cannot be relied upon for patentability). Indeed, there are also
no limitations in claim 20 or its dependent claims for “determining whether
the operation of the screen saver can be controlled,” (App. Br. 12),
“calculating a reproduction time of the content if the operation of the screen
saver is controllable,” (App, Br. 14), or “changing a set time of the screen
saver so that the screen saver is not operated during the reproduction time,”
(App. Br. 16). Appellants argument with respect to claim 10 rely on a
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limitation that is also not found in claims 20-23, namely, the determination
of whether “the operation of the screen saver cannot be controlled.” (App.
Br. 22-23).
Appellants only argument that is applicable to claims 20-23 is that the
Shaffer reference fails to disclose “the virtual input signal is generated by an
input device” and “the input device compris[ing] a remote controller, a
mouse or a keyboard.” (App. Br. 24, providing arguments applied to claim
11). The Examiner found that Shaffer disclosed the virtual signals generated
to interrupt the screen saver. (Ans. 13-14). We agree with the Examiner’s
findings. Contrary to Appellants’ argument (App. Br. 13) Shaffer plainly
discloses virtual input signals that are generated by input devices (Ans. 14).
Shaffer states that “the signal might be representative of a keystroke” or
“indicative of a mouse cursor movement.” Shaffer, col. 9, ll. 49-50 and 52-
53. We sustain the Examiners’ rejection of claims 20-23.

CONCLUSIONS OF LAW
We conclude that the Examiner erred in finding that Skarbo and Way
disclosed the “calculating the reproduction time of content” limitation of
claim 1. The Examiner did not err in finding that the Skarbo, Way, and
Shaffer disclosed the limitations of claims 20-23.

DECISION
For the above reasons, the Examiner’s rejection of claims 20-23 is
affirmed and rejection of claims 1-19 and 24 is reversed.
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) (2010).
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AFFIRMED-IN-PART

ELD