Ex Parte Jin et al

Patent Trial and Appeal Board

Jan 31, 2018

13570947 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/570,947 08/09/2012 Young Kyu Jin 1398-478
(YPF201109-0004)
6056
66547 7590 02/02/2018
THF FARRFT T T AWFTRM PC
EXAMINER
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2646
NOTIFICATION DATE DELIVERY MODE
02/02/2018 ELECTRONIC
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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG KYU JIN, YOUNG HO RHEE,
YOUNG SHIL JANG, and IL KU CHANG
Appeal 2017-008711
Application 13/570,947
Technology Center 2600
Before CAROLYN D. THOMAS, JON M. JURGOVAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b) for claims 1-20.
1 According to the Appellants, the real party in interest is the Samsung
Electronics Co., Ltd. App. Br. 1.
Appeal 2017-008711
Application 13/570,947
STATEMENT OF THE CASE
Appellants’ invention is directed to forwarding a communication
service from one portable terminal registered with a vehicle electronic
system, to another portable terminal. Spec. 1,11. 15—20, 3,11. 6—11. Claim
1, reproduced below, is representative of the claimed subject matter:
1. A method of forwarding a communication service based on a
vehicle, the method comprising:
registering a portable terminal located in the vehicle with a
vehicle electronic system;
receiving, by the registered portable terminal, a communication
service request message from a device external to the vehicle; and
forwarding, by the registered terminal, the received
communication service connection request message to another
portable terminal if the registered portable terminal does not respond
to the communication service connection request message.
REJECTIONS
Claims 1—20 stand rejected under pre-AIA 35 U.S.C. § 102(a) as
being anticipated by Tadayon et al. (US 2011/0195699 Al; published Aug.
11,2011).
ANALYSIS
With regard to the limitation “registering a portable terminal located
in the vehicle with a vehicle electronic system,” Appellants argue “the
Specification defines ‘vehicle electronic system’ as an electronic system in
the vehicle.” App. Br. 4, citing Fig. 1, Spec. p. 6,11. 6—7. According to
Appellants, “[njowhere in Tadayon is it disclosed that a mobile device is
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registered, and nowhere in Tadayon is it disclosed that a mobile device is
registered in an electronic system in a vehicle.” App. Br. 4.
We are not persuaded by Appellants’ arguments. Appellants do not
explicitly define the meaning of the term “register” in the Specification.
Appellants’ Specification describes “registration of the portable terminals
101, 102, 103 for generating a communication service-forwarding group”
and “[t]he foregoing IDs of the portable terminals 101, 102, and 103 is
registered as each item of forwarding group information.” Spec. 12,11. 19—
22, 13,11. 15—17. Appellants’ Specification also describes “the vehicle
memory 250 stores forwarding group information 250 configured by
identification information of the portable terminals 101, 102, and 103
registered in the vehicle electronic system 200.” Spec. 14,11. 7—10. In the
Reply Brief, Appellants offer the definition “to enroll formally” from The
Merriam-Webster Dictionary. See Reply Br. 5. The Merriam-Webster
Dictionary provides several definitions for the verb “register,” including “to
make or secure official entry of in a register,” “to enroll formally especially
as a voter or student,” “to record automatically,” and “to make a record of.”
See https://www.merriam-webster.com/dictionary/register. Under the
broadest reasonable interpretation in light of Appellants’ Specification, we
understand “register” to mean “to make a record of.”
The Examiner relies on paragraphs 45, 98, and 103 of Tadayon to
teach or suggest the disputed limitation. Ans. 2—3; Final Act. 3. Tadayon is
generally directed to controlling mobile device functions and features, for
example, to limit or disable the use of some mobile device features which
could cause distraction to the user when the user is engaged in another
activity. Tadayon Abstract. Paragraph 103 of Tadayon describes a first
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mobile device sending a message to flag the first mobile device as having a
feature modified, as well as sending a vehicle/transceiver ID associated with
the first mobile device, and storing this information in a database. In
addition, a second mobile device also sends a message identifying the
second mobile device, the vehicle/transceiver ID, and its availability to
assume another mobile phone fimctionality/feature, and storing this
information in a database. Tadayon 1103. This allows queries to match the
first mobile device with the second mobile device, in order to forward text
messages that were destined to the first mobile device to the second mobile
device. Tadayon 1103. Although paragraph 103 describes this
functionality in terms of, for example, a remote service or server, Tadayon is
clear that the functionality described in the disclosure “can be
implemented/performed by software/hardware/firmware or a combination, in
a local, central, or remote location, partially or fully.” Tadayon 1225; see
also Tadayon 1226. Tadayon explicitly describes a local computer in the
vehicle. See, e.g., Tadayon | 62, Figs. 7(b), 14, 16.
We find the foregoing disclosure, particularly flagging a first mobile
device as having a feature modified and storing that information in a
database, teaches the disputed limitation. Appellants have not persuasively
rebutted the Examiner’s reliance on paragraph 103 of Tadayon.
Accordingly, we are not persuaded the Examiner erred.
With regard to the limitation “receiving, by the registered portable
terminal, a communication service request message from a device external to
the vehicle,” Appellants argue “Tadayon discloses that a feature-modified
mobile device does not receive an incoming call.” App. Br. 5, citing
Tadayon || 10, 103, 219, (emphasis omitted). With respect to the limitation
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“forwarding, by the registered terminal, the received communication service
connection request message to another portable terminal if the registered
portable terminal does not respond to the communication service connection
request message,” Appellants argue “Tadayon discloses forwarding calls
directly, but does not disclose forwarding a call based on the condition ‘if
the registered portable terminal does not respond.’” App. Br. 6.
Because Appellants admit “Tadayon discloses forwarding calls
directly,” we are not persuaded by Appellants’ argument that the feature-
modified mobile device (the first mobile phone) does not receive an
incoming call. Rather, as Appellants acknowledge, Tadayon describes
“forwarding calls and/or messages to the 2nd mobile device, directly, from
the limited mobile device, e.g.[,] via a communication link, such as
Bluetooth.” Tadayon 1221, (emphasis added).
We are also not persuaded by Appellants’ arguments regarding the
forwarding limitation. Tadayon describes use of rules and conditions to
activate or de-activate functions and/or to cause an action or task. See, e.g.,
Tadayon | 53 (“rule-based engine”), 1100 (“disable/limit the feature,”
“forwarding rules,” “logical and conditional rules and statements”), 126—
149 (“to cause an action or task,” “to start, enable, stop, or disable a function
or task,” and describing examples of conditions and rules), 1186 (describing
rule priority and combination logic module), 187—196 (describing
examples of conditional rules). Tadayon states “any kind of condition and
restriction/consequences can be applied in the logic of the operation, as long
as there is a sensor or device to detect that condition, and there is a switch or
controller to disable/enable/control/adjust the outcome, equipment, or
parameters.” Tadayon 1148; see also Tadayon 1204, Fig. 15. Actions or
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tasks may include forwarding the call or text message. E.g., Tadayon
11 100, 102, 103,204, 207,221.
For example, Tadayon describes when functionality is
limited/disabled/modified on a first mobile device, text messages may be
forwarded to a second mobile device. Tadayon 1103. Appellants’ claim
requires forwarding “if the registered portable terminal does not respond to
the communication service connection request message.” If the registered
portable terminal functionality, such as text receiving or voice call receiving,
is disabled or inactive, it will not respond to the communication service
connection request message. Tadayon H 161—169. Rather, the text message
(or voice call) will automatically be forwarded to one of the passengers in
the vehicle. Tadayon || 171, 204, Fig. 18. We find this disclosure in
Tadayon, specifically allowing for conditions to disable or modify
functionality, as well as to cause actions or tasks, such as forwarding, to be
executed, discloses the disputed limitation.
For the reasons set forth above, we affirm the rejection of claims 1,
10, and 17 as anticipated by Tadayon. For the same reasons, we affirm the
rejection of dependent claims 2—9, 11—16, and 18—20, which were not
separately argued (see App, Br, 7). However, we designate our affirmance
of the rejection as a NEW GROUND OF REJECTION so as to provide
Appellants with a full and fair opportunity to respond to the thrust of the
rejection because the reasoning upon which we rely to sustain the rejection
of claims 1—20 under 35 U.S.C. § 102(a) differs somewhat from the
reasoning articulated by the Examiner.
Alternatively, we newly reject claims 1—20 under 35 U.S.C. § 103(a)
as unpatentable over Tadayon because (1) it would have been obvious to one
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of ordinaiy skill in the art to place the registration functionality in the
vehicle in order to locally track the availability of the mobile phones in the
vehicle (see Tadayon fjj 62, 225) and (2) it would have been obvious to one
of ordinary skill in the art to establish a condition, or to provide the
capability to a user to establish a condition (e.g., Tadayon || 100, 126—149,
187—196, 225, Fig. 15), that if the registered portable terminal does not
respond to the communication service connection request message, to
forward the received communication sendee connection request message to
another portable terminal because that indicates that the user of the
registered portable terminal is otherwise occupied by another activity and
cannot answer the phone (see Tadayon Abstract, % 11).
DECISION
For the above reasons, the Examiner’s rejection of claims 1—20 is
affirmed. However, we enter a NEW GROUND OF REJECTION against
claims 1—20 under 35 U.S.C. § 102(a) as anticipated over Tadayon and,
alternatively, under 35 U.S.C. § 103(a) as obvious over Tadayon.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
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by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th
ed., rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
37 C.F.R, $ 41.50(b)
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