Ex Parte KWAK

Patent Trial and Appeal Board

Nov 2, 2018

13473698 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/473,698 05/17/2012
105857 7590 11/06/2018
NOVICK, KIM & LEE, PLLC
3251 Old Lee Highway, Suite 404
Fairfax, VA 22030
FIRST NAMED INVENTOR
Y oung-H wan KW AK
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.
PK002200201 1666
EXAMINER
ELKASSABGI, ZAHRA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/06/2018 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@nkllaw.com
skim@nkllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG-HWAN KWAK
Appeal2017-009750
Application 13/473,698 1
Technology Center 3600
Before ROBERT E. NAPPI, CATHERINE SHIANG, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 4, and 5. Appellant has canceled claims 2 and 3. See Br. 15. We
have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Bixolon Co., Ltd. as the real party in interest. Br. 3.
Appeal2017-009750
Application 13/473,698
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention generally relates to "a
point-of-sale (POS) system using a portable computer." Spec. ,r 2.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A point-of-sale system comprising:
a portable computer,
wherein the portable computer comprises:
a main processor to which a host central processing
unit and a software graphics application program interface
are mounted;
a memory interface to which a memory chipset and
a bus-to-device component are mounted;
a graphics system to which a graphics accelerator, a
bus arbiter peripheral component interconnect, a direct
memory access, a random access memory digital-to-
analog converter, a queue and a block write are mounted;
an internal monitor as a first monitor; and
a wireless module, which wirelessly transmits
graphics data; and
an external monitor, which displays graphics data that is
received wirelessly or via wires from the portable computer,
wherein the portable computer supports the external
monitor with a copy mode, an expansion mode, and an extension
mode,
wherein the portable computer allows an application
program to be installed therein, so that an operator of the portable
computer sets values of a resolution, colors and a refresh rate in
the external monitor, the set values being changeable via the
application program at any time, and
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wherein data that is simultaneously displayed on the
internal monitor and the external monitor is set to be output at a
same time.
The Examiner's Rejections
1. Claim 1 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over EIZO, Making Full Use of the "External" LCD
with Laptop Computers, http://www.eizoglobal.com/library/basics/
external_led_with_laptop_computers (last visited Apr. 20, 2015) ("EIZO");
Avkarogullari et al. (US 2011/0164184 Al; July 7, 2011) ("Avkarogullari");
Falzone et al. (US 2012/0066079 Al; Mar. 15, 2012) ("Falzone"); and Owen
et al. (US 7,321,368 B2; Jan. 22, 2008) ("Owen"). Final Act. 4---6.
2. Claims 4 and 5 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over EIZO, Avkarogullari, Falzone, Owen,
and Sender et al. (US 2003/0149618 Al; Aug. 7, 2003) ("Sender"). Final
Act. 7-8.
ANALYSIS 2
Claim 1
Appellant asserts the Examiner's rejection of independent claim 1 is
in error because: (i) EIZO is non-analogous art to the claimed invention;
(ii) the Examiner failed to give patentable weight to the preamble (i.e., a
point-of-sale system); and (iii) the laptop computer of EIZO is not a portable
2 Throughout this Decision, we have considered the Appeal Brief, filed
November 10, 2016 ("Br."); the Examiner's Answer, mailed March 9, 2017
("Ans."); and the Final Office Action, mailed February 11, 2016 ("Final
Act."), from which this Appeal is taken. Appellant did not file a Reply
Brief.
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Application 13/473,698
computer, as recited in the claims and as defined in the Specification. Br. 7-
10. We address Appellant's arguments seriatim.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention ( even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor ( even if it is not in the same
field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In order for a reference to be "reasonably pertinent"
to the problem, it must "logically would have commended itself to an
inventor's attention in considering his problem." In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay,
966 F.2d 656, 658 (Fed. Cir. 1992).
Appellant asserts EIZO is not analogous to the claimed invention.
Br. 7-10. In particular, Appellant asserts EIZO (nor any other reference)
teaches or relates to a portable point-of-sale system. Br. 7-8. Rather,
Appellant asserts EIZO discloses "the well-known teaching" of connecting
an external monitor to a laptop and, thus, is not from the same field of
endeavor as Appellant's claimed point-of-sale system. Br. 8. Additionally,
Appellant asserts EIZO is not reasonably pertinent to the problem addressed
by Appellant because EIZO does not address the challenges of a portable
point-of-sale system (i.e., one that may be used "while moving"). Br. 8
( citing Spec. ,r 8).
We do not find Appellant's arguments persuasive of Examiner error.
As the Examiner explains, a problem with which the inventor was faced
"was a methodology having two monitors able to communicate with one
another." Ans. 2. This is consistent with Appellant's Specification
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Application 13/473,698
describing a goal of the claimed invention was to provide a point-of-sale
system "in which at least two screen display devices provide a copy mode,
an expansion mode and an extension mode." Spec. ,r 12. EIZO describes
providing an additional monitor to a laptop computer and the additional
monitor having capabilities such as "clone view" (i.e., copy mode); a greater
area for document display and editing (i.e., expansion mode); and using
different display resolutions between the laptop display and the external
monitor (i.e., extension mode). Compare EIZO 2-7, with Spec. ,r,r 29-31.
Thus, we agree with the Examiner that EIZO is reasonably pertinent to the
problem addressed by Appellant and is, therefore, analogous art.
Appellant also argues that the Examiner fails to give the preamble
patentable weight and that "the claimed invention is all directed to the point-
of-sale system." Br. 9. Appellant argues the preamble is not merely an
intended use, but rather a "fundamental characteristic of the claimed
invention." Br. 9. We disagree.
"Whether a preamble stating the purpose and context of the invention
constitutes a limitation of the claimed process is determined on the facts of
each case in light of the overall form of the claim, and the invention as
described in the specification and illuminated in the prosecution history."
Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98
F.3d 1563, 1572-73 (Fed. Cir. 1996). Generally, if the preamble is
"necessary to give life, meaning, and vitality" to the claim, or otherwise
recites essential steps or structure, the preamble is determined to limit the
invention. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999). Conversely, if the body of the claim defines a structurally
complete invention and the preamble is used to state an intended use or
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Application 13/473,698
purpose, the preamble is not limiting. Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997).
Here, the point-of-sale system that appears only in the preamble is not
positively recited in the body of claim 1. Rather, the claim describes a
structurally complete invention including a portable computer comprising a
processor, memory interface, graphics system, internal monitor and a
wireless module. The claim further recites the portable computer interfaces
with an external monitor. See also Fig. 1 (illustrating a point-of-sale system
comprising a portable computer and external monitor). Because the
preamble is not necessary to breathe life into the body of the claim, the
Examiner did not err in concluding the preamble is not entitled to patentable
weight. Moreover, to the extent Appellant contends none of the cited
references is directed to a point-of-sale system (see Br. 7), we also disagree.
We note that the Falzone reference is entitled "Point of Sale System" and is
generally directed to "facilitating point of sale transactions and payment
transactions." Falzone, Abstract.
Appellant also argues the Examiner erred in interpreting the claimed
portable computer as including a laptop. Br. 9-10. Appellant asserts the
Specification defines and limits a portable computer as "a tablet PC, a smart-
phone, or a slate PC." Br. 9 ( quoting Spec. ,r 2).
Any special meaning assigned to a term "must be sufficiently clear in
the specification that any departure from common usage would be so
understood by a person of experience in the field of the invention."
Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir.
1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer
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Application 13/473,698
and assign to a term a unique definition that is different from its ordinary
and customary meaning; however, a patentee must clearly express that intent
in the written description.").
Contrary to Appellant's contention, rather than providing a limiting
definition of a portable computer, the Specification merely sets forth a non-
exhaustive list of examples of portable computers "such as a tablet PC, a
smart-phone, or a slate PC." Spec. ,r 2 (emphasis added). Thus, we
determine that Appellant did not act as his own lexicographer and that a
"portable computer" is given its broadest reasonable interpretation consistent
with the Specification to mean a computer that is easily carried and movable.
We agree with the Examiner that EIZO' s laptop computer teaches the
claimed portable computer. See Ans. 3.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 1.
Claims 4 and 5
Claim 4 depends from claim 1 and recites "an advertising time is set
such that an advertisement is exposed on a partial region of a screen of one
of the internal and external monitors while the payment information is
displayed on a remaining region of the screen."3
Claim 5 depends from claim 1 and recites "an advertising time is set
such that an advertisement is exposed at a time when payment information is
not exposed."
3 In the event of further prosecution, we leave it to the Examiner to
determine whether there is sufficient antecedent basis for "the payment
information."
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The Examiner relies on Sender to teach the limitations recited in
claims 4 and 5. Final Act. 7-8 (citing Sender ,r,r 63, 65, 70-72, 93, 105,
Figs. 4a--4c); see also Ans. 4--5 (citing Sender, Fig. 2b).
Appellant asserts that Sender does not teach an advertisement being
exposed on a partial region of the screen while payment information is
displayed on the remaining part, as required by claim 4. Br. 11.
Additionally, Appellant argues Sender teaches displaying an advertisement
while content is displayed, "which does not teach the concept of displaying
the advertisement only," as required by claim 5. Br. 12.
Sender is generally directed to "allow[ing] advertising content in
products to be more flexible and dynamic." Sender, Abstract. In a disclosed
embodiment, Sender describes allowing a product purchaser to control or
influence the amount or type of advertising received along with a purchase.
Sender ,r 37. For example, by paying less for a product, a purchaser may be
required to receive advertising content, however, for a "premium" purchase,
the product may not include any advertisements. Sender ,r 37. Figure 2b of
Sender is illustrative and is reproduced below:
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Appeal2017-009750
Application 13/473,698
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