Ex Parte Kim

Patent Trials and Appeals Board

Mar 28, 2014

11140073 - (D) (P.T.A.B. Mar. 28, 2014)

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.
11/140,073 05/31/2005 Bum-Soo Kim 48929 2761
1609 7590 03/28/2014
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
TSAI, TSUNG YIN
ART UNIT PAPER NUMBER
2668
MAIL DATE DELIVERY MODE
03/28/2014 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 BUM-SOO KIM
____________________

Appeal 2011-010762
Application 11/140,073
Technology Center 2600
____________________

Before JOESPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010762
Application 11/140,073

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12. Claim 13 has been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

Claim
Exemplary independent claim 1 under appeal, with emphases added,
reads as follows:
1. A method for searching for a phone number in a
wireless terminal, comprising the steps of:

entering image search mode using the wireless terminal
when an image search is selected in phone book search mode;

searching via the wireless terminal for the phone number
stored in the wireless terminal using a selected one of the
plurality of images stored in a phone book;

displaying, on a first display area of a display device,
entire image data corresponding to at least a subset of the
plurality of images stored in the phone book in the image search
mode;

displaying, on a second display area of the display
device, phone book information about selected image data when
image data corresponding to the selected one of plurality of
images is selected from the displayed image data; and

performing corresponding operations according to user’s
input operation while the displayed image data are displayed,
said corresponding operations including at least one of linking
the phone book information, performing operation related to
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Application 11/140,073

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calling and displaying a phone number stored in the phone
book, and viewing a selected image.

Examiner’s Rejections
(1) The Examiner rejected claims 1-3 and 5-7 under 35 U.S.C.
§ 102(b) as being unpatentable over Rosecrans (U.S. 5,889,852; Mar. 30,
1999). Ans. 4-8.
(2) The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rosecrans in view of Smethers
(U.S. 6,560,640 B2; May 6, 2003). Ans. 9-10.
(3) The Examiner rejected claims 4 and 9-12 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Rosecrans in view of
Uemura (U.S. 2002/0054164 A1; May 9, 2002). Ans. 11-15.

Appellant’s Contentions1
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) over Rosecrans because Rosecrans fails to disclose (i)

1 Aside from asserting that dependent claims 2-4 and 6-12 are allowable for
the same reason as independent claim 1, Appellant’s Brief fails to present
any arguments with regard to the rejections of (i) claims 2, 3, 6, and 7 under
35 U.S.C. § 102(b) over Rosecrans, (ii) claim 8 under 35 U.S.C. § 103(a)
over Rosecrans in view of Smethers, and (iii) claims 4 and 9-12 under
35 U.S.C. § 103(a) over Rosecrans in view of Uemura (see Br. 8, 12).
Therefore, Appellant has not disputed the Examiner’s rejections set forth in
the Answer (see Ans. 9-15), and Appellant has not shown the Examiner
erred in rejecting claims 2-4 and 6-12. Appellant presents arguments as to
sole independent claim 1 and dependent claim 5. We select claim 1 as
representative of the group of claims rejected under 35 U.S.C. § 102(b)
(claims 1-3 and 5-7). See 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, our
analysis in the decision that follows will only address the merits of claims 1
and 5.
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displaying, on a first display area of a display device, entire image data
corresponding to at least a subset of the plurality of images stored in the
phone book in the image search mode; and (ii) displaying, on a second
display area of the display device, phone book information about selected
image data when image data corresponding to the selected one of plurality of
images is selected from the displayed image data (Br. 9-11).
Appellant further contends that the Examiner erred in rejecting claim
5 under 35 U.S.C. § 102(b) over Rosecrans because Rosecrans fails to
disclose displaying information about image data on which a cursor is placed
while the displayed image data are displayed (Br. 11).
Notably, Appellant has not filed a Reply Brief or otherwise responded
to the Examiner’s response to Appellant’s arguments in the Appeal Brief
(see Ans. 16-17), including the Examiner’s new reliance upon Rosecrans’s
column 5, lines 5-15 (id.).

Issues on Appeal
Based on Appellant’s arguments in the Brief (Br. 9-12), the following
issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1-3, 6, and 7 as being
anticipated by Rosecrans because Rosecrans fails to disclose (i) “displaying,
on a first display area of a display device, entire image data corresponding to
at least a subset of the plurality of images stored in the phone book in the
image search mode;” and (ii) “displaying, on a second display area of the
display device, phone book information about selected image data when
image data corresponding to the selected one of plurality of images is
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selected from the displayed image data,” as recited in representative
claim 1?
(2) Did the Examiner err in rejecting claim 5 as being anticipated by
Rosecrans because Rosecrans fails to disclose “displaying information about
image data on which a cursor is placed while the displayed image data are
displayed,” as recited in claim 5?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (Br. 9-11) that the Examiner has erred, as
well as the Examiner’s response to Appellant’s arguments (Ans. 16-17). We
disagree with Appellant’s conclusions and sustain the Examiner’s rejections.
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 4-15), and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellant’s Appeal Brief (see Ans. 16-17). We concur with the
conclusions reached by the Examiner.
We agree with the Examiner’s findings concerning representative
claim 1 with respect to Rosecrans. Rosecrans discloses (i) displaying, on a
first display area of a display device, entire image data corresponding to at
least a subset of the plurality of images stored in the phone book in the
image search mode (col. 5, ll. 15-21 (Icons representing phone numbers are
displayed on a first area.); and (ii) displaying, on a second display area of the
display device, phone book information about selected image data when
image data corresponding to the selected one of plurality of images is
selected from the displayed image data (id. (The map displays phone book
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information including location and directions on how to reach the location.).
We, therefore, sustain the Examiner’s rejection of representative claim 1, as
well as claims 2, 3, 6, and 7 grouped therewith, because Rosecrans discloses
the disputed claim limitations.
We further agree with the Examiner’s findings concerning claim 5
with respect to Rosecrans. Rosecrans discloses displaying information about
image data on which a cursor is placed while the displayed image data is
displayed because Rosecrans discloses scrolling through a list of images or
logos followed by selection of a desired image or logo with the press of a
button (see col. 3, ll. 9-37). The ability to select a single image or logo from
a list while scrolling inherently requires the use of a cursor so the user
knows which single image or logo is being selected. We, therefore, sustain
the Examiner’s rejection of claim 5 because Rosecrans discloses the
disputed claim limitation.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-3 and 5-7 under
35 U.S.C. § 102(b) over Rosecrans because Rosecrans discloses the
limitations of claims 1 and 5 at issue.
(2) Appellant has not presented any separate arguments with respect
to the rejection of (i) claim 8 under 35 U.S.C. § 103(a) over Rosecrans in
view of Smethers, and (ii) claims 4 and 9-12 under 35 U.S.C. § 103(a) over
Rosecrans in view of Uemura. As such, Appellant has not argued that the
Examiner erred in rejecting claims 4 and 8-12, or otherwise shown these
rejections to be in error. Accordingly, we group these claims as falling with
representative claim 1 and sustain these rejections.
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DECISION
The Examiner’s rejections of claims 1-12 are 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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