Ex Parte KIM et al

Patent Trials and Appeals Board

Mar 26, 2019

11771866 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/771,866 06/29/2007
66547 7590 03/28/2019
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 2IOE
Melville, NY 11747
FIRST NAMED INVENTOR
Jong Ryu! KIM
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.
1398-156 8623
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONG RYUL KIM, WOO SOON PARK,
and
JONG JIN CHOI 1
Appeal 2018-007460
Application 11/771,866
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 20, 21, 23, 25, 26, 28, and 30-33. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention is directed to "storing data stored in a mobile
terminal into a web storage using a wireless LAN service when the mobile
terminal enters a wireless LAN service area, and to a mobile terminal using
the method." Spec. 1: 15-17.
1 Appellants identify the real party in interest as Samsung Electronics Co.,
Ltd. Br. 1
Appeal 2018-007 460
Application 11/771,866
Independent claim 20, reproduced below, is exemplary of the subject
matter on appeal.
20. A method for a mobile terminal to transmit still
images to a web server, comprising:
storing setting information, based on a user input,
indicating that still images stored in the mobile terminal are to
be automatically transmitted to a web server if the mobile
terminal enters a wireless Local Area Network (LAN) service
area;
if the mobile terminal has entered into the wireless LAN
service area, automatically transmitting, via the wireless LAN,
based on the stored setting information, the still images stored
in the mobile terminal to the web server and displaying a
notification of a status of the transmission if the still images are
completely transmitted to the web server;
if the mobile terminal exits the wireless LAN service area
during the transmission of the still images, stopping
transmission of the still images; and
if the mobile terminal re-enters the wireless LAN service
area, restarting transmission of the still images.
REJECTIONS and REFERENCES
The Examiner rejected claims 20, 23, 25, 28, 32, and 33 under 35
U.S.C. § I03(a) based upon the teachings of Dacosta (US 2006/0069769 Al;
published Mar. 30, 2006), Jayaraman (US 7,158,797 Bl; issued Jan. 2,
2007), and Yamaguchi (US 2003/0179531 Al; published Sept. 25, 2003).
The Examiner rejected claims 21 and 26 under 35 U.S.C. § I03(a)
based upon the teachings of Dacosta, J ayaraman, Yamaguchi, and Serl et (US
6,842,770 Bl; issued Jan. 11, 2005).
The Examiner rejected claims 30 and 31 under 35 U.S.C. § I03(a)
based upon the teachings of Dacosta, Jayaraman, Yamaguchi, and Simons
(US 2006/0129931 Al; published June 15, 2006).
2
Appeal 2018-007 460
Application 11/771,866
ANALYSIS
Appellants' only contention is that the Examiner erred in finding
Dacosta teaches or suggests the claim limitation that a "process is initiated
when the electronic device enters a wireless LAN service area." Br. 6. In
support, Appellants contend Dacosta is "awakened by 'time and/or event'
from the sleep mode in order to transmit data" ( emphasis removed). Id. We
do not agree.
We agree with and adopt the Examiner's findings as our own. Final
Act. 4--13; Ans. 2-3. Particularly, we agree with the Examiner that Dacosta
does indeed teach initiating a process ( transmitting, via a wireless LAN)
when an electronic device enters a wireless LAN service area. See, e.g.,
Dacosta ,r,r 15, 22, 45, 50, 55, 62, 66. Ans. 2--4. The Examiner provides
sufficient articulated reasoning with a rational underpinning to support the
legal conclusion of obviousness. Final Act. 4--13; Ans. 2-3. See KSR Int 'l
Co. v. Teleflex, Inc., 550 U.S. 398, 416-18 (2007). Appellants do not
persuasively address the Examiner's specific findings regarding Dacosta;
they merely provide attorney arguments and conclusory statements, reciting
the claim language and asserting the cited prior art reference does not teach
or suggest each claim limitation, which are unsupported by factual evidence
and are entitled to little probative value. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984. See 37 C.F .R. § 41.37 ( c )(vii) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
3
Appeal 2018-007 460
Application 11/771,866
were not found in the prior art."); cf In re Baxter Travenol Labs., 952 F.2d
388,391 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.").
Appellants do not file a Reply Brief in response to the Examiner's
additional findings and explanations in the Answer (2--4).
For these reasons, we are not persuaded of Examiner error. On this
record, we find a preponderance of the evidence supports the Examiner's
underlying factual findings and ultimate legal conclusion of obviousness,
and thus, we sustain the Examiner's rejection of independent claims 20 and
25 and dependent claims 21, 23, 26, 28, and 30-33, argued for their
dependency on claims 20 and 25. Br. 7.
DECISION
The Examiner's decision rejecting claims 20, 21, 23, 25, 26, 28, and
30-33 is affirmed. 2
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
2 In the event of any further prosecution, the Examiner may wish to address
the conditional "if' limitations. We note the claims recite three conditional
"if' statements where an action is taken "if' the mobile terminal enters,
exits, or re-enters a wireless LAN service area, and if so, the action occurs.
These steps are only performed when the conditional limitation is met.
When the conditional limitation is not met, no action occurs and all that
remains is the storing step and the remaining method steps need not be
peiformed. See Ex parte Schulhauser, No. 2013-007847, 2016 WL
6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (discussing
construction of conditional limitations in method claims).
4