Ex Parte Byun

Board of Patent Appeals and Interferences

Nov 18, 2010

11071543 (B.P.A.I. Nov. 18, 2010)

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.
11/071,543 03/03/2005 Joon-Ho Byun 678-1812 5346
66547 7590 11/19/2010
THE FARRELL LAW FIRM, LLP
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
CHU, DAVID H
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
11/19/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOON-HO BYUN
____________________

Appeal 2009-008174
Application 11/071,543
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008174
Application 11/071,543

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-3, 5-31, 33, 34, and 36-41. Claim 4 has been canceled, and claims
32 and 35 have been objected to by the Examiner as being allowable if
rewritten in independent form including all of the limitations of the
corresponding base claims and any intervening claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART. We also enter new grounds of rejection
under 37 C.F.R. § 41.50(b).

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A device for inputting characters or drawings on a mobile
terminal, the device comprising:
a user input means for transmitting input signals;
a virtual screen generator for generating a virtual screen including a
preview window and a user input window;
a position detector for detecting originating positions of the
transmitted input signals on the virtual screen; and
a control section for detecting trails corresponding to consecutive
originating positions of the input signals by movement of the user input
means to display the detected trails in the preview window, and recognizing
the detected trails as characters or symbols to display the recognized
characters or symbols in the user input window.
Appeal 2009-008174
Application 11/071,543

3
Rejections
1. The Examiner rejected claims 1, 2, 5-8, 11, 14-17, 19, 25-27,
29, 30, and 34 as being unpatentable under 35 U.S.C. § 103(a) over the
combination of U.S. Pat. No. 7,006,236 B2 to Tomasi et al. (“Tomasi”);
U.S. Patent Appl. Pub. No. 2002/0075240 A1 to Lieberman et al.
(“Lieberman”); and U.S. Pat. No. 6,212,297 B1 to Sklarew. Although the
Examiner fails to list claim 30 in the heading of the rejection at page 4 of the
Answer (Ans. 4, para. 2), we consider claim 30 rejected as per (i) the
Examiner’s discussion of the merits of claim 30 at page 14 of the Answer,
and (ii) Appellant’s acceptance of the rejection of claim 30 (see App. Br. 2
and 6).
2. The Examiner rejected dependent claims 3, 9, 10, 12, and 13 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of
Tomasi, Lieberman, Sklarew, and U.S. Pat. Appl. Publ. No. 2004/0032399
A1 to Sekiguchi et al. (“Sekiguchi”). Although the Examiner fails to list
Lieberman in the heading of the rejection at page 15 of the Answer (Ans. 15,
para. 39), we consider Lieberman part of the rejection as per the Examiner’s
discussion of merits of Lieberman at page 16 of the Answer, as well as
Appellant’s acceptance of the application of Lieberman to claims 3, 9, 10,
12, and 13 (see App. Br. 6 and 13-20).
3. The Examiner rejected claims 22-24 and 36-41 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Tomasi,
Lieberman, Sklarew, and U.S. Patent Appl. Pub. No. 2003/0195976 A1 to
Shiigi.
4. The Examiner rejected dependent claims 18, 20, 21, 28, 31, and
33 as being unpatentable under 35 U.S.C. § 103(a) over the combination of
Appeal 2009-008174
Application 11/071,543

4
Tomasi, Lieberman, Sklarew, and Special Edition Using Microsoft Word
2002, pp. 58, 58 (Jun. 2001) (“Camarda”).

Appellant’s Contention
1. Appellant contends that “Tomasi nowhere teaches, suggests or
reasonably predicts a user input means for transmitting input signals” (App.
Br. 9 and 11 (emphasis deleted)), and that Tomasi, Lieberman, Sklarew,
Camarda, Shiigi, or any combination thereof fail to teach, suggest, or
reasonably predict such an input means transmission feature (App. Br. 12,
26, and 34; Reply Br. 4).
2. Appellant contends that “Sekiguchi nowhere teaches, suggests,
or reasonably predicts transmitting input signals corresponding to characters
or drawings” (App. Br. 17), and that “the input pen described by Sekiguchi
does not teach, suggest, or reasonably predict an input means for
transmitting input signals corresponding to characters or drawings” (App.
Br. 18).

Issues on Appeal
1. Whether the Examiner has erred in rejecting claims 1, 2, 5-8,
11, 14-31, 33, 34, and 36-41 as being unpatentable under 35 U.S.C. § 103(a)
because Tomasi fails to disclose or suggest a user input means for
transmitting input signals.
2. Whether the Examiner has erred in rejecting claims 3, 9, 10, 12,
and 13 as being unpatentable under 35 U.S.C. § 103(a) because Sekiguchi
fails to disclose or suggest a user input means for transmitting input signals.

Appeal 2009-008174
Application 11/071,543

5
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred.
We disagree with the Examiner’s determination that Tomasi teaches a
user input means for transmitting input signals. Appellant’s’ Specification
explicitly states that electronic pen 108 has a signal transmitter 250 for
transmitting infrared or ultrasonic signals to a user input sensor 104 (Spec.
5:9-26 and 8:12-16), thus pen 108 serves as a user input means for
transmitting input signals. Tomasi’s input means (e.g., a stylus or a finger;
see col. 5, ll. 13-14) does not transmit signals. Instead Tomasi’s device 505
has a user input sensor 516 for detecting motion (Figs. 10 and 11; col. 3, ll.
36-38; col. 8, ll. 2-7; col. 13, ll. 46-51; col. 15, ll. 29-30 and 55-57; col. 16,
ll. 5-8, 15-21, and 41-49; col. 17, ll. 32-36). Thus, we agree with
Appellant’s arguments that Tomasi’s input means in the form of a finger or
stylus fails to satisfy the input means for transmitting input signals recited in
the claims and as described in the Specification (e.g., an electronic pen with
a signal transmitter for transmitting an infrared or ultrasonic signal) (see
Reply Br. 2-4).
Accordingly, we will not sustain the Examiner’s rejections numbered
as 1, 3, and 4 supra since these rejections rely on Tomasi as teaching input
means that transmits an input signal.
However, we disagree with Appellant’s conclusions with regard to
claims 3, 9, 10, 12, and 13. First, Appellant’s contention that Sekiguchi fails
to teach transmitting input signals corresponding to characters or drawings is
not commensurate in scope with the language of claim 1, from which claims
3, 9, 10, 12, and 13 ultimately depend. Claim 1 simply calls for “a user
Appeal 2009-008174
Application 11/071,543

6
input means for transmitting input signals,” and does not explicitly recite
that the input signals correspond to characters or drawings.
Second, Sekiguchi teaches an input means for transmitting input
signals in the form of an input pen 1 with a signal transmitter 5 for
transmitting an ultrasonic signal and a transmitter 6 for transmitting an
infrared signal (Figs. 1, 2A, and 2B; ¶¶ [0042] and [0051]). Sekiguchi also
teaches the details of claims 10, 12, and 13 of a switch comprising a contact
sensor (i.e., touch switch 15; ¶ [0053]). Thus, we disagree with Appellant’s
argument that Sekiguchi fails to teach the input means for transmitting input
signals recited in claims 3, 9, 10, 12, and 13.
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief, with the one exception being that Sekiguchi
teaches a user input means for transmitting input signals, not Tomasi. We
concur with the conclusion reached by the Examiner as to claims 3, 9, 12,
and 13.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103(a) for claims 1 and 25.
Rejection of Claims 1 and 25 under 35 U.S.C. § 103(a) over Tomasi,
Lieberman, Sklarew, and Sekiguchi
Claims 1 and 25 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tomasi, Lieberman, Sklarew, and Sekiguchi.
Appeal 2009-008174
Application 11/071,543

7
As to the teachings and suggestions of Lieberman, Sklarew, and
Sekiguchi and the motivation to combine these references with Tomasi, we
refer to the Examiner’s discussion in the Answer (Ans. 4-6 and 15-16), as
well as our findings above as to Tomasi and Sekiguchi. We agree with the
Examiner (Ans. 15) that Sekiguchi teaches transmitting input signals in
either infrared or ultrasonic form.
Tomasi does not teach a user input means for transmitting input
signals. However, Sekiguchi teaches a user input means (e.g., input pen 1)
for transmitting input signals using transmitters 5 and 6 (Abs.; Figs. 1, 2A,
and 2B; ¶¶ [0042], [0051], and [0053]).
It would have been obvious to one of ordinary skill in the art looking
at the teachings and suggestions of Sekiguchi to provide an improved user
input means having a transmitter to the device of Tomasi as modified by
Lieberman and Sklarew for the reasons set forth by the Examiner in the
Answer (Ans. 4-6 and 15-16).
Remaining Claims
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made a rejection of
claims 1 and 25 above under 37 C.F.R. § 41.50(b). However, we have not
reviewed the remaining claims to the extent necessary to determine whether
these claims are unpatentable under 35 U.S.C. § 103(a). We leave it to the
instant Examiner to determine the appropriateness of any further rejections
based thereon.

Appeal 2009-008174
Application 11/071,543

8
CONCLUSIONS
(1) The Examiner has erred in rejecting claims 1, 2, 5-8, 11, 14-31,
33, 34, and 36-41 as being unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner has not erred in rejecting claims 3, 9, 10, 12, and
13 as being unpatentable under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner rejecting claims 1, 2, 5-8, 11, 14-31, 33,
34, and 36-41 is reversed. The decision of the Examiner rejecting claims 3,
9, 10, 12, and 13 is affirmed. Accordingly, the decision of the Examiner is
affirmed-in-part. We have also entered new grounds of rejection under 37
C.F.R. § 41.50(b) for claims 1 and 25.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
[…] shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that
the proceeding be reheard under
Appeal 2009-008174
Application 11/071,543

9
§ 41.52 by the Board upon the same
record. . . .

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)(v).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

KIS

THE FARRELL LAW FIRM, P.C.
290 BROADHOLLOW ROAD
SUITE 210E
MELVILLE, NY 11747