Ex Parte Lee et al

Patent Trial and Appeal Board

Mar 29, 2013

11488691 (P.T.A.B. Mar. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SI-HYOUNG LEE, NAM-CHOON PARK, JUNG-WON KANG,
YI-SAK PARK, JI-HOON KIM, and SO-YOUNG SHIN
____________

Appeal 2011-000913
Application 11/488,691
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4-7, 9, 11-15, 18, 20, and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
According to Appellants, prior art cellphones require pressing of a
“cancel” or “menu” key to toggle from a submenu back to the previous
menu, i.e., to reactivate the menu from which the submenu was selected.1
Spec., ¶0008]. Appellants’ cellphone consequently includes a jog dial for
main menu operation and directional keys for submenu operation, such that
the interface back toggles if the jog dial is moved; that is, back toggles
without pressing of another key. Spec., ¶¶0010-12].
Independent claim 1 is illustrative:
1. A method for controlling a user interface, comprising:
navigating, in a menu structure, a main menu in response
to a jog dial and navigating a submenu in response to a
navigation key, respectively, manipulated by a user, said jog
dial and said navigation key being separate from each other;
and
changing from navigating the submenu to navigating the
main menu in response to movement of the jog dial during
navigation of the submenu.

The Examiner relies on the following references as evidence of
unpatentability:
Hama US 7,418,671 B2 Aug. 26, 2008
Duarte US 7,093,201 B2 Aug. 15, 2006

1 For convenience, we refer to this operation as “back toggling.”
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REJECTION
The Examiner rejected claims 1, 4-7, 9, 11-15, 18, 20, and 22 under
35 U.S.C. § 103(a) as unpatentable over Hama and Duarte. Ans., pp. 3-6.2

CLAIM 1
A. Claim Construction
Before addressing the rejection and Appellants’ arguments, we
address the scope of claim 1. See In re Donaldson Co., Inc., 16 F.3d 1189,
1192 (Fed. Cir. 1994) (noting the Board construes claims de novo).
Claim 1 is directed to a method comprising steps of navigating a main
menu in response to a jog dial, navigating a submenu in response to a
navigation key, and changing from the submenu to the main menu in
response to movement of the jog dial during navigation of the submenu.
Notably, claim 1 does not restrict the jog dial to operating only the main
menu, the navigation key to operating only the submenu, or the changing
step to occurring as an immediate response to any input of the jog dial.
Thus, the claim scope encompasses a device that merely allows:
(a) navigation of the main menu via the jog dial;
(b) navigation of the submenu via the navigation key; and
(c) back toggling to the main menu in response to an input of
the jog dial during navigation of the submenu.

2 Throughout this opinion, we refer to the Appeal Brief filed February 1,
2010 (“App. Br.”), Examiner’s Answer mailed May 28, 2010 (“Ans.”), and
Reply Brief filed July 28, 2010.
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B. Examiner’s Application of Hama
The Examiner finds that claim features (a) and (b) are taught by
Hama’s cellphone. Ans., p. 4. We agree in light of the following teachings,
addressed with reference to Hama’s Figures 3A, 3B, and 3C.
Hama’s Figures 3A, 3B, and 3C are reproduced below.

Hama’s Figures 3A, 3B, and 3C show a jog dial 12, directional
keys 11, and menus of Hama’s cellphone.
As shown, Hama’s cellphone includes a jog dial 12 (“rotary dial”),
directional keys 11 (“cross keys”), and a hierarchy of menus including, from
higher to lower, a first menu on the left side of Figures 3A and 3B, a second
menu on the right side of Figures 3A and 3B, and a third menu on Figure
3C. Hama, col. 3, ll. 64-65. The first menu is navigated via the jog dial 12
and the highlighted selection (“NW MODE”) is entered via the right
directional key 11R, thereby toggling the device to the second menu. Id. at
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col. 8, ll. 40-45; col. 10, l. 64 – col. 11, l. 32. The second menu is also
navigated via the jog dial 12 and the highlighted selection (“MAIL”) is also
entered via the right directional key 11R, thereby toggling the device to the
second submenu. Id. The third menu is operated entirely via the directional
keys 11. Id. Back toggling to the previous menu is performed via the left
directional key 11L. Id. at col. 11, l. 56 – col. 12, l. 8.
Consistent with the Examiner’s findings, we hold that: claim feature
(a) is taught by the operation of Hama’s second menu via the jog dial 12;
claim feature (b) is taught by the operation of Hama’s third menu via the
directional keys 11; and claim feature (c) is not taught by Hama because
back toggling is performed via the directional keys 11, not the jog dial 12.
C. Examiner’s Application of Duarte
The Examiner finds that claim feature (c) is taught by Duarte’s
cellphone. Ans., p. 4. The Examiner determined that it would have been
obvious to incorporate Duarte’s menu operations into Hama’s cellphone, and
thus to incorporate claim feature (c), because doing so expectedly adds
“convenience and flexibility during selecting or navigating [of] menu and
submenu structures.” Id. We agree in light of the following teachings,
addressed with reference to Duarte’s Figures 6 and 8.
Duarte’s Figures 6 and 8 are reproduced below.
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Duarte’s Figures 6 and 8 show a jog dial 80, directional keys
85, and menus of Duarte’s cellphone.
As shown, Duarte’s cellphone includes a jog dial 80 (“control knob”),
directional keys 85 (“buttons”), and a hierarchy of menus including, from
higher to lower, a first menu on Figure 8 and a second menu on Figure 6.
All menu operations can be fully performed by either the jog dial 80 or the
directional keys 85. Duarte, col. 7, ll. 33-50. These operations include
toggling between the different levels of menus; e.g., selecting and entering
the central identifier 43 (“subheading 2”) of the second menu so as to back
toggle to the first menu (where the same identifier 43 was previously entered
to activate the second menu). Id. at col. 6, ll. 21-29.
Consistent with the Examiner’s findings, we hold that claim feature
(c) is taught by the above by the above selecting and entering of the central
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identifier 42, which as noted back toggles the device to the first menu.3
Given the similarities of Hama’s and Duarte’s menu displays, we also hold
that the proposed incorporation of Duarte’s menu operations within Hama’s
cellphone is reasonable. Hama’s and Duarte’s menus each have a heading
that corresponds to the selection/entry of the prior menu and, under Duarte’s
teachings, can be selected/entered to back toggle the device. Particularly,
the second menu of Duarte’s Figure 6 has the central identifier 43. Id. at col.
6, ll. 21-23; see also col. 2, l. 44 – col. 3, l. 24. The second menu of Hama’s
Figure 3B has the “NW mode” identifier (earth icon). And, the third menu
of Hama’s Figure 3C has the “mail” identifier (banner). Thus, the proposed
modification constitutes a “mere application of a known technique” (i.e.,
Duarte’s menu operation) “to a piece of prior art ready for the improvement”
(i.e., Hama’s cellphone). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
D. Appellants’ Arguments
Appellants argue that the Examiner’s reliance on Duarte is erred
because:
[T]he control knob 87 is used to move up and down the
displayed curved-listing file hierarchy 19 (i.e., navigating the
same level in the hierarchy), and any selection of a file,
application, or subheading, or to move from one level of the
hierarchy to another, is achieved by pressing one of the buttons
85. Duarte does not teach that the buttons 85 can be used for
navigating the curved-listing file hierarchy 19 and that the
control knob 87 is then used for selection of a file, application,

3 Because all menu operations can be fully performed by either the jog dial
80 or the directional keys 85, claim features (a) and (b) are also taught by
Duarte.
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or subheading and for moving from one level of the hierarchy
to another. . . .
App. Br., pp. 10-11. In addition to being unsupported, the argument is
factually incorrect. As discussed above, each of Duarte’s menus can be fully
operated via either the jog dial 80 or directional keys 85. See supra, p. 6
(citing Duarte, col.7, ll. 33-50). Duarte confirms as much in teaching that
the user can:
(i) navigate the Figure 6 menu “by manipulating the control
knob 80 and/or buttons 85” (Duarte, col. 7, ll. 42-50
(emphasis added));
(ii) enter a selection of the Figure 6 menu by pressing the jog
dial 80 and/or directional keys 85 (Duarte, col. 7, ll. 35-
38 (“Alternatively, or in addition, the control knob 80
may be depressed to make the selection.”)); and
(iii) select and enter the central identifier 43 of the Figure 6
menu to toggle back to the Figure 8 menu (Duarte, col. 6,
ll. 21-29).
Furthermore, Duarte presents the jog dial 80 and directional keys 85 as each
having only up/down and enter inputs. Durte, col. 7, ll. 31-38; Fig. 8 (see
illustration of directional keys 85). Given all of the above, it is clear that the
jog dial 80 and directional keys 85 are interchangeable controls and capable
of performing all menu operations.
Appellants also argue that the Examiner presents a conclusory
rationale for the proposed modification of Hama’s cellphone. App. Br.,
p. 11. We disagree in view of the addressed teachings of Hama and Duarte
and, especially, in view of the addressed similarities of their menu displays
(see supra, p. 7).
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E. Conclusion
For the foregoing reasons, we sustain the obviousness rejection of
claim 1 over Hama and Duarte.

CLAIMS 4-7, 9, 11-15, 18, 20, AND 22
Remaining claims 4-7, 9, 11-15, 18, 20, and 22 also stand rejected as
obvious over Hama and Duarte. Though Appellants present separate
arguments for independent claims 6, 7, 9, 13-15, and 20, Appellants do not
meaningfully present separate bases of patentability. App. Br., pp. 12-15.
Appellants merely state that, in lieu of considering all claim features, the
Examiner cursorily rejected claims 6, 7, 9, 13-15, and 20 for the same
reasons as claim 1. App. Br., p. 12.
The Board reviews Examiner’s rejections for errors pertaining to
patentability, particularly in light of Appellants’ arguments. See Ex parte
Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential). Thus, if
Appellants seek a more thorough examination in general, they should file a
petition listing the many allegedly neglected features.4
On the other hand, if Appellants need a more thorough discussion of
features at issue on appeal, they must meaningfully explain why the Office
Action and Answer is “so uninformative that it prevents the applicant from
recognizing and seeking to counter the rejection.” In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (citation omitted). Otherwise, Appellants fail to
address – and we likewise will not attempt to address for Appellants – “what
gaps, in fact, exist between [the claimed invention and the applied prior art]

4 Appellants list dozens of features. Even worse, many were notoriously
well-known at the time of invention (e.g., the key input sensing unit,
controller, and confirmation key of claim 13).
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that needed filling by examiner explanation.” Id. at 1363(emphasis added).
In the same respect, if Appellants contend that a cited prior art feature fails
to teach a claimed feature, they must meaningfully explain why.
Appellants do not present meaningful arguments for claims 6, 7, 9,
13-15, and 20. For example, as to claims 9, 15, and 20, Appellants merely
state:
If the Examiner asserts that Duarte teaches moving from
one level of the hierarchy to another using the control knob 87,
Duarte would also fail to teach “said jog dial and said
navigation key being separate from each other,” as recited in
Appellants’ claims 9, 15, and 20.
App. Br., p. 14. And as to claim 6, Appellants merely state:
In responding to the above-noted point also raised in
Appellants’ Appeal Brief, the Examiner only responded by
asserting that one of the features (namely, the “confirmation
key” as recited in claim 6) is taught by Hama’s input
determination unit 26 and Return Key. However, Hama is
silent regarding performing “menu navigation according to the
changed reference step when the movement of the jog dial or
the navigation key is sensed” . . . as recited in Appellants’ claim
6. . . .
Reply Br. 10 (emphasis omitted). No further explanation is provided.
Consequently, because Appellants do not even explain what is meant by the
quoted claim language (e.g., the meaning of “separate” and “movement,” as
claimed), the Board lacks a baseline for assessing whether the above claim
features were insufficiently addressed by the Examiner and/or patentably
distinguish over the applied prior art. This is precisely why Appellants must
present meaningful arguments; not just list claim features for the Board to
ponder. See In re Jung, 637 F.3d at 1365 (affirming in part because
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appellant “merely argued that the claims differed from [the prior art], and
chose not to proffer a serious explanation of this difference.”); In re Baxter
Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an
appellant[.]”); 37 C.F.R. 41.37(c)(1)(iv) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”).
We will address, however, Appellants’ tangible argument that
Duarte’s cellphone does not back toggle in response to “rotation” of the jog
dial 80. App. Br., pp. 13-14. The argument is not persuasive. Duarte’s
cellphone clearly back toggles in response to: selection of the menu’s central
identifier via rotation of the jog dial 12; and entry of that selection via
pressing of the jog dial 12. Note Appellants have not asserted that back
toggling must occur as an immediate response to rotation of a jog dial (e.g.,
as Duarte’s cellphone responds to the above pressing, but not rotation, of the
jog dial 12). And to the contrary, Appellants do not dispute the Examiner’s
determination that the “claims are not clearly defined that the main menu
can only be controlled by the jog dial, or [that] anytime/whenever the user
touches/keys/activates the jog dial the main menu is
activated/highlighted/selected.” Ans., p. 8 (emphasis added)(underline and
citations omitted).
For the foregoing reasons, we sustain the obviousness rejection of
claims 4-7, 9, 11-15, 18, 20, and 22 over Hama and Duarte.

ORDER
For the above reasons, the Examiner’s decision rejecting claims 1,
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4-7, 9, 11-15, 18, 20, and 22 is affirmed.
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).

AFFIRMED

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