Ex Parte Bae et al

Patent Trial and Appeal Board

Dec 12, 2013

11249571 (P.T.A.B. Dec. 12, 2013)

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.
11/249,571 10/14/2005 Seung-Gyun Bae 678-4799 DIV
1(P10545-US-
2610
66547 7590 12/13/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
MENDOZA, JUNIOR O
ART UNIT PAPER NUMBER
2423
MAIL DATE DELIVERY MODE
12/13/2013 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 SEUNG-GYUN BAE, YONG-MIN KIM, and
HWAN-GEE JANG
____________

Appeal 2011-003396
Application 11/249,571
1

Technology Center 2400
____________

Before CAROLYN D. THOMAS, DAVID M. KOHUT, and
JOHN A. EVANS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Samsung Electronics Co., Ltd.
Appeal 2011-003396
Application 11/249,571

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-16, which are all the claims
pending in the application. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to “receiving and displaying a
television video signal and data in a mobile terminal which provides a
television mode and a communication mode of operation.” See Spec., 1:17-
18.
Claim 1 is illustrative:
1. A method for communication by a mobile terminal
having a television picture display function, the method comprising:
receiving and processing a television signal;
displaying a television picture corresponding to the
received television signal;
displaying generated data together with the television
picture when data transmission is requested during the displaying of
the television picture; and
transmitting the data when data transmission is requested.

Appellants appeal the following rejections:

R1. Claims 1, 2, 4, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jang (UK Patent GB 2 347 588 A, published
Sept. 6, 2000) and DeWeese (U.S. Patent Pub. 2005/0262542 A1, Nov. 24,
2005);
R2. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
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Application 11/249,571

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unpatentable over Jang and Kim (Korean Patent App. 2001-0059645 A,
published July 6, 2001);
R3. Claims 9, 10, 12, and 14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jang, DeWeese, and Kim;
R4. Claims 3, 5, 6, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jang, DeWeese, and Yamaguchi (U.S. Patent Pub.
2007/0206518 A1, published Sept. 6, 2007); and
R5. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jang, DeWeese, Kim, and Yamaguchi.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Claims 1, 2, 4, 15, and 16
Issue 1: Did the Examiner err in combining the teachings in Jang
with the teachings in DeWeese?
Appellants contend:
The modification of Jang according to DeWeese et al., in the manner
suggested by the Examiner is improper and it will teach away from
the base reference to Jang . . . would destroy the mobility of the
mobile phone of Jang and in addition, unnecessarily increase the
weight, volume[,] and complexity of the mobile phone device of
Jang . . .
(App. Br. 10).
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The Examiner found that “DeWeese clearly teaches other
embodiments, where the user chat system may be implemented using other
types of distribution methods such as a wireless satellite distribution scheme
or a microwave wireless link, where a coaxial connection to the user is not
necessary” (Ans. 18). The Examiner further found that DeWeese
“incorporated by reference herein in its entirety” U.S. provisional patent
application 60/138,686, filed June 11, 1999, which discloses using
interactive television with hand-held devices (see id.). We agree with the
Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
Appellants emphasize that the modification of Jang according to
DeWeese in the manner suggested by the Examiner is improper and teaches
away from the base reference Jang because of Deweese’s use of coaxial
cabling. App. Br. 10. However, we find that the Examiner has sufficiently
shown that DeWeese’s embodiments are not limited to a coaxial cabling
configuration (see DeWeese, ¶¶ [0051] and [0152]), but can also be
implemented via a wireless communication link, i.e., using microwave and
satellite links for example. As for Appellants’ argument regarding “teaching
away,” we note that “[a] reference may be said to teach away when a person
of ordinary skill, upon reading the reference, . . .would be led in a direction
divergent from the path that was taken by the applicant.” In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001, citation omitted). We do not find this to be
the situation before this Board as DeWeese incorporates by reference a
hand-held television implementation that is similar to Jang’s configuration.
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As such, we find that modifying Jang using the “displaying generated data
together with the television picture” of DeWeese would not teach away from
the mobility of Jang for the aforementioned reasons.
Furthermore, we note that the claimed invention is not necessarily
limited to a “mobile terminal.” For example, as highlighted by the Examiner
(see Ans.16-17), the recitation of a “mobile terminal” may not be given
patentable weight because the recitation only occurs in the preamble of the
claims (see claim 1). An intended use of a claimed device does not limit the
scope of the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(product claim’s intended use recitations not given patentable weight); see
also Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will
not limit the scope of a patent claim because such statements usually do no
more than define a context in which the invention operates.”). Here, claim 1
merely defines an intended mode of communication, i.e., by a mobile
terminal, as opposed to positively claiming the mobile terminal. As such,
we agree with the Examiner that “the claimed limitations do not require
mobility, since the features in the body could also be executed by a
conventional home television receiver . . .” (see Ans. 17).

Claim 13
Issue 2: Did the Examiner err in combining the teachings in Jang
with the teachings in Kim?
Appellants contend that “[t]he modification of Jang according to Kim,
in the manner suggested by the Examiner is improper and teaches away from
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the main purpose of the device of Jang, as stated above, since the device of
Kim would automatically switch off the television mode . . .” (App. Br. 12).
The Examiner found that “Jang discloses an incoming call or message
mode embodiment which mutes the audio and turns off the output of the
television image . . . [and] Kim explicitly discloses the feature of
interrupting reception. . .” (see Ans. 19). We agree with the Examiner.
Specifically, Jang discloses various incoming call modes including . . .
“‘on/off’ switching output of an image of the TV phone . . .” (page 10, lines
4-5). Similarly, Kim discloses that the “DTV reception part 113 and DTV
data processing part 112 block power supply to save battery and prevent
interference with the voice call” (page 9, lines 13-15). In other words,
contrary to Appellants’ contentions, Jang’s various modes includes
interrupting the viewing of the television and Kim emphasizes that it was
known to interrupt television reception when call data comes in. For at least
the aforementioned reasons, we find unpersuasive Appellants’ contentions
that Kim’s teaching relating to “TV reception interruption” teaches away
from Jang’s incoming call modes.

Claims 9, 10, 12, and 14
Here, Appellants merely repeat the arguments made above for claims
1 and 13, which we found unpersuasive. Therefore, for at least the reasons
noted supra, we affirm the rejection of claims 9, 10, 12, and 14.

Claims 3 and 5-8
Here, Appellants merely argue that “Yamaguchi does not cure the
deficiencies of Jang as modified by DeWeese . . . (see App. Br. 13). As we
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have found no such deficiencies, we affirm the rejection of claims 3 and 5-8,
for at least the reasons noted supra.

Claim 11
Here, Appellants merely argue that “Yamaguchi does not cure the
deficiencies of Jang, in view of DeWeese et al. and Kim . . .” (see App. Br.
14). As we have found no such deficiencies, we affirm the rejection of
claim 11, for at least the reasons noted supra.

In view of the above discussions, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Jang, DeWeese, Kim, and Yamaguchi, the Examiner’s
35 U.S.C. § 103(a) rejections of the claims is sustained.

DECISION
We affirm the Examiner’s § 103(a) rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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