Ex Parte Lee et al

Patent Trial and Appeal Board

Jul 15, 2013

11486204 (P.T.A.B. Jul. 15, 2013)

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.
11/486,204 07/13/2006 Young-In Lee 1235-124 3166
66547 7590 07/15/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
RAMAKRISHNAIAH, MELUR
ART UNIT PAPER NUMBER
2656
MAIL DATE DELIVERY MODE
07/15/2013 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YOUNG-IN LEE and JAE-BIN KIM
____________________

Appeal 2012-001222
Application 11/486,204
Technology Center 2600
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001222
Application 11/486,204

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims on appeal are directed to method for providing a phone
book using business card recognition in a mobile communication terminal
and a mobile communication terminal using the method. (Spec. 1). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method for providing a phone book using business card
recognition in a mobile communication terminal, comprising
the steps of:

capturing an image of a business card;

searching character fields from the captured image;

selecting a field to be set as a name from the searched
character fields;

setting a name by converting the selected field to text;
and

storing the captured image with the name in a directory.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Carayiannis
Na
US Pat. Appl. Pub. No
2001/0044324 A1
US Pat. Appl. Pub. No
2005/0037806 A1
Nov. 22, 2001

Feb. 17, 2005

Appeal 2012-001222
Application 11/486,204

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REJECTIONS
Claims 1-5, 7-11, and 13-15 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Na.
Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Na and Carayiannis.

ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
anticipation and obviousness rejections of the claims. We adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken; and (2) the reasons set forth by the Examiner in
the Answer in response to arguments made in Appellants’ Appeal Brief.
(Ans. 4-10). We highlight and address specific findings and arguments
below.
Independent claim 1
Issue: Under § 102, did the Examiner err in finding Na discloses
disputed limitations L1-L4:
[L1] searching character fields from the captured image;

[L2] selecting a field to be set as a name from the
searched character fields;

[L3] setting a name by converting the selected field to
text; and

[L4] storing the captured image with the name in a
directory[,]
within the meaning of representative claim 1?

Appeal 2012-001222
Application 11/486,204

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Regarding limitations L1 and L2, Appellants aver that “Na may teach
capturing an image in each embodiment, but fails to teach searching
character fields from the captured image and selecting a field to be set as a
name from the searched character fields, as in Claim 1 and similarly in
Claim 7.” ( App. Br. 6). However, Appellants provide no substantive
argument that traverses the Examiner’s specific findings regarding
limitations L1 and L2. (Ans. 4-5, 7-9). We decline to examine the claims
sua sponte, looking for distinctions over 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.”). Moreover,
paragraph [0039] of Na expressly discloses “[i]n step 221, the control
section 111 classifies [i.e., searches] private information text data according
to the items of the address book table,” e.g., including a “Name” field as
shown in TABLE 1, paragraph [0028]. (See also Na, Fig. 2). Thus, given
this evidence (id.), we are not persuaded of Examiner error regarding
limitations L1 and L2.
Regarding limitations L3 and L4, Appellants acknowledge that
paragraph [0028] of Na “teaches that the memory 114 has a memory area for
registering the text data, for instance, private information read out from a
business card.” (App. Br. 6). However, Appellants contend “[i]n other
words, paragraph [0028] relates to ‘text data’, and clearly does not teach
setting a name by converting the selected field to text, and storing the
captured image with the name, as in Claim 1.” (App. Br. 6).
We disagree. Paragraph [0027] of Na describes text recognition
(OCR) software that scans an image and places the various fields (including
Appeal 2012-001222
Application 11/486,204

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the name) in memory, as shown in TABLE 1 (Na, para. [0028]). Na
expressly discloses “[t]he RAM temporarily stores data” . . . [including]
“image data obtained by converting a text image signal acquired through the
camera section 118 into a digital type, and text data recognized from the
image data.” (Na, para. [0027]).
Therefore, on this record, we are not persuaded of Examiner error.
For essentially the same reasons articulated by the Examiner in the Answer,
as discussed above, we sustain the anticipation rejection of representative
claim 1, and independent claims 7, 13, and 15, which recite commensurate
limitations. Associated dependent claims 2-5, 8-11, and 14 fall therewith.
See 37 C.F.R. § 41.37(c)(1)(iv).

Claims 6 and 12 rejected under §103
Regarding the § 103 rejection, Appellants contend the secondary
Carayiannis reference “fails to cure the stated deficiencies in Na . . . .”
(App. Br. 10). However, we find no deficiencies with Na, as discussed
above. Therefore, we sustain the Examiner’s §103 rejection of dependent
claims 6 and 12 for the same reasons discussed above regarding claim 1.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1-5, 7-11, and 13-15
under 35 U.S.C. § 102(e).
The Examiner did not err in rejecting claims 6 and 12 under 35 U.S.C.
§ 103(a).

Appeal 2012-001222
Application 11/486,204

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DECISION
For the above reasons, the Examiner’s rejections of claims 1-15 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).

ORDER
AFFIRMED

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