Ex Parte Jeon et al

Patent Trial and Appeal Board

Aug 19, 2016

11942475 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111942,475 11/19/2007
66547 7590 08/19/2016
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
FIRST NAMED INVENTOR
Jin Young Jeon
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1398-166
(YPF2006 l l -0024)
1666
EXAMINER
WANG, JIN CHENG
ART UNIT PAPER NUMBER
2618
MAILDATE DELIVERY MODE
08/19/2016 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 JIN YOUNG JEON, NHO KYUNG HONG, IN WON JONG,
MIN HWA JUNG, and MIN KYUNG LEE
Appeal2015-005185
Application 11/942,475
Technology Center 2600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005185
Application 11/942,475
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 5-8, 10-13, and 22-26. Final Act. 1. Claims 4, 9, and 14--21 have
been cancelled. App. Br. 10-12. We have jurisdiction under 35 U.S.C.
§ 6(b ).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
bracketing added):
1. A method for processing an image in a mobile
communication terminal including a display unit, the method
compnsmg:
[A.] displaying an image on a screen of the display unit;
[B.] displaying, when a location on the image is selected as a
beginning point by a pointer, the beginning point at the selected
location on the image, the beginning point being displayed on the
screen in a preset format including a first symbol for guiding a
zoom-out and a second symbol for guiding a zoom-in;
[C.] calculating a distance and a direction corresponding to
locations of the beginning point and an end point, the end point being
moved to starting from the beginning point;
[D.] centering the image by using the beginning point as a
center of the image;
[E.] zooming the centered image; and
[F.] terminating the zooming of the image by selecting the end
point,
[ G.] wherein a zooming scale is based on the distance and the
direction, and
[H.] wherein the zooming scale is proportional to the distance
between the beginning point and the end point.
2
Appeal2015-005185
Application 11/942,475
Rejection
The Examiner rejected claims 1-3, 5-8, 10-13, and 22-26 under
35 U.S.C. § 103(a) as being unpatentable over Montague (US 2005/0168488
Al; published Aug. 4, 2005). 1
Appellants' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
A claim may be found to be obvious if it is first shown that all
of the recitations of a claim are taught in the prior art or are
suggested by the prior art. In re Royka, 490 F.2d 981, 985, 180
U.S.P.Q. 580, 583 (C.C.P.A. 1974).
App. Br. 7.
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[I]n each of Claims 1 and 23 the centering occurs prior to the
zooming operations. Montague fails to teach or suggest
centering the image by using the beginning point as a center of
the image, before zooming, as recited in Claims 1 and 23.
In response, the Examiner asserts that "the centering
occurs prior to the zooming operations" is not actually recited
in the claims. Appellants disagree.
Each of independent Claims 1, 22, and 23 clearly recites
centering the image by using the beginning point as a center of
the image, and then zooming the centered image. Accordingly,
the centering around the beginning point occurs prior to the
zooming, which is not taught or suggested in Montague.
Further, the Examiner cites paragraph [O 102] of
Montague, stating that "the claim limitation of centering the
image by using the beginning point as a center of the image is
an obvious feature of Montague since Montague teaches at
1 Separate patentability is not argued for claims 2, 3, 5-8, 10-13, and 22-26.
Except for our ultimate decision, these claims are not discussed further
herein.
3
Appeal2015-005185
Application 11/942,475
Paragraph 0102 that the graphics in the display window 20
dynamically pan such that the original pixel of data under the
reference-point 30 progressively moves to the center of the
display window 20 with each increase in zoom level."
However, as is even noted by the Examiner, the reference-point
30 progressively moves to the center of the display window 20
with each increase in zoom level, i.e., after each zoom, not prior
to zooming.
App. Br. 5-6, emphasis omitted.
[I]n the Advisory Action, the Examiner appears to assert that
because the dynamic zooming does not stop, a subsequent
zoom, after centering after a first zoom, could read on centering
the image by using the beginning point as a center of the image,
and then zooming the centered image, as recited in the claims.
However, this cited centering in Montague does not use the
beginning point as a center of the image.
App. Br. 6, Appellants' emphasis omitted.
Issue on Appeal
Did the Examiner err in rejecting claim l as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants' above contention 1, we disagree. Appellants cite to
the venerable Royka decision by the Court of Appeals without
acknowledging that this holding was modified by the Supreme Court's
holding in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellants'
argument fails because it does not account for the impact of the Court's KSR
decision, in which the Court repudiated any requirement for such a teaching
or suggestion to show obviousness. KSR, 550 U.S. at 415 ("We begin by
4
Appeal2015-005185
Application 11/942,475
rejecting the rigid approach of the Court of Appeals," i.e., the teaching,
suggestion, or motivation (TSM) test). Rather, the requirement is only that
the Examiner show "the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains." KSR, 550 U.S. at 406 (quoting
35 U.S.C. § 103) (emphasis added); id. at 418 ("[T]he analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ."). We conclude that the
Examiner articulates just such a showing in the rejection from which this
appeal is taken. See Final Act. 11-19 and Ans. 12.
As to Appellants' above contention 2, Appellants argue that
"Montague fails to teach or suggest centering the image by using the
beginning point as a center of the image, before zooming." App. Br. 5. We
disagree. We agree with the Examiner that "Montague at least teaches
centering the image by using the reference point 30 as the center of the
display window 20 at the previous zoom level and zooming the centered
image at the next zoom level. Thus, centering occurs prior to the zooming
operation for the next zoom level." Final Act. 13 (emphasis omitted). That
is, there is taught a sequential set of zooming and centering, for example
zooml +center!, then zoom2+center2, then zoom3+center3 functions such
that center 1 precedes zoom2, and center2 precedes zoom3. See Montague ,-r
102.
We agree with Appellants that this "moves to the center of the display
window 20 with each increase in zoom level, i.e., after each zoom, not prior
to zooming." App. Br. 6 (emphasis omitted). That is, center! follows
5
Appeal2015-005185
Application 11/942,475
zooml. Further, we agree with Appellants that claim 1 "clearly recites
centering the image by using the beginning point as a center of the image,
and then zooming the centered image. Accordingly, the centering around
the beginning point occurs prior to the zooming." App. Br. 6. However, in
Appellants' claimed method "comprising" centering andzooming , there is
no restriction in the claims against doing additional unrecited zooming and
centering. Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793
F.2d 1279, 1282-83 (Fed. Cir. 1986) ("The presence of additional elements
is irrelevant if all the claimed elements are present"). Therefore, we agree
with the Examiner (Final Act. 17; Ans. 12) that an artisan would recognize
the sequential set of progressive (Montague i-f 102) zooml +center!, then
zoom2+center2, then zoom3+center3 functions operate as a continuous
process that results in a centering (center 1) to a previous selection point
prior to zooming (zoom2) from that selection point (which is now the new
beginning point). Thus, we disagree with Appellants' overall contention that
the claimed "centering around the beginning point occurs prior to the
zooming" is not rendered obvious by Montague. We agree with the
Examiner that the prior art process of continuous repeated zooming and
panning (e.g., zoom+center, then zoom+center) is sufficient to render the
claim obvious.2
2 We do not reach the Examiner's alternative reasoning for concluding that
the claimed invention would have been obvious. ("Montague's system
enables the user to place the reference point in any arbitrary location on the
display screen. This arbitrary location includes the center of the image
object displayed on the display screen .... ") Final Act. 13-14 (emphasis
omitted).
6
Appeal2015-005185
Application 11/942,475
Separately, even if we were to adopt Appellants' position that
Montague's earlier centering (e.g., center!) cannot serve as the prior
centering for a later zooming (e.g., zoom2), we would conclude that
centering then zooming as claimed would have been obvious to one skilled
in the art given the teachings in Montague. Montague teaches zooming,
centering, and to "slowly pan to the center of the display window 20 while
enlarging as the user zooms in." Montague i-f 111. It is not disputed that
Montague shows the desirability of combining the zoom and centering
(panning) functions, and there are a finite number of possibilities for the
sequencing of the zoom and centering where either (i) zooming is first,
(ii) centering is first, or (iii) zooming and centering are simultaneous.
Therefore, we conclude it would have been obvious to pursue the known
options with predictable results. As the Court in KSR states:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinaf'J skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR, 550 U.S. at 421 (emphasis added). Additionally, we find Appellants
have not persuasively shown the recited center and zoom steps will produce
results different from Montague's zoom and center steps. See In re Hampel,
162 F.2d 483, 485-6 (CCPA 1947)("There is nothing in the instant record
which indicates that the particular order of steps produces results differing in
any way from those which would be brought about if another order of steps
were followed"); see also In re Burhans, 154 F .2d 690 ( CCP A 1946).
7
Appeal2015-005185
Application 11/942,475
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-3, 5-8, 10-13,
and 22-26 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-3, 5-8, 10-13, and 22-26 are not patentable.
DECISION
The Examiner's rejection of claims 1-3, 5-8, 10-13, and 22-26 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)(l )(iv).
AFFIRMED
8