Ex Parte Moon et al

Patent Trial and Appeal Board

Nov 15, 2013

11284310 (P.T.A.B. Nov. 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.
11/284,310 11/21/2005 Eul-Ji Moon 678-2164 6100
66547 7590 11/15/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
ZHEN, WEI Y
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
11/15/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EUL-JI MOON and HYUK OH1
____________________

Appeal 2011-005316
Application 11/284,310
Technology Center 2100
____________________

Before JOSEPH F. RUGGIERO, JASON V. MORGAN, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-21, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Samsung Electronics Co, Ltd. App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention “relates to an apparatus and a method for
installing software in a mobile communication terminal, and more
particularly to an apparatus and method to upgrade or restore software to a
mobile communication terminal using an external memory.” Spec. 1:13-16.
Exemplary Claims
Claims 1 and 8 are exemplary claims representing aspects of the
invention which we reproduce below (emphases added):
1. An apparatus for installing software in a mobile
communication terminal, the apparatus comprising:
an external memory having software to be installed;
a detector of the mobile communication terminal for, if
an external memory is plugged in to the mobile communication
terminal, detecting a plugging state of the external memory;
a memory being embedded in the mobile communication
terminal; and
a controller of the mobile communication terminal for
determining a current mode as a restoring mode when the
software is found in the external memory, and storing the
software in the memory in the restoring mode.

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 25, 2010); Reply Brief (“Reply Br.,” filed Dec. 27, 2010); Examiner’s
Answer (“Ans.,” mailed Oct. 27, 2010); Final Office Action (“FOA,” mailed
Mar. 25, 2010); and the original Specification (“Spec.,” filed
Nov. 21, 2005).
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8. A method for installing software in a mobile
communication terminal using an external memory having the
software, the method comprising the steps of:
determining if the external memory is plugged in the
mobile communication terminal;
determining if software is found in the external memory;
determining a current mode as a restoring mode when
the software is found in the external memory and storing the
software in a memory embedded in the mobile communication
terminal in the restoring mode; and
if the current mode is the restoring mode, data is read
from the external memory by a predetermined size and stored in
a corresponding block of the memory until all data stored in the
external memory are read and stored in the memory.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Bi US 6,279,153 B1 Aug. 21, 2001
Duncan US 2003/0181956 A1 Sep. 25, 2003
Schultz US 2004/0107328 Al June 3, 2004
Qumei US 2004/0194081 A1 Sep. 30, 2004
Lu US 7,376,943 B2 May 20, 2008
Rejections on Appeal
1. Claims 1-3, 5-10, 12, 17, 19, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Schultz
and Lu. Ans. 4.
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2. Claims 4, 11, 13, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Schultz, Lu, and
Qumei. Ans. 18.
3. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Schultz, Lu, Bi, and Qumei.
Ans. 25.
4. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Schultz, Lu, and Duncan. Ans. 29.
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this Decision. Arguments which Appellants could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants state that claims 2-7 stand or fall with independent claim 1,
and claims 9-21 stand or fall together with independent claim 8. App. Br. 2.
1. Unpatentability Rejection of Claims 1-7
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 1, and 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 and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Arguments. However,
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we highlight and address specific findings and arguments regarding claim 1
for emphasis as follows.
Issue 1
Appellants argue (App. Br. 5-8; Reply Br. 1-3) that the Examiner’s
unpatentability rejection of claim 1 under 35 U.S.C. § 103(a) over the
combination of Schultz and Lu is in error. These contentions present us with
the following issue:
Did the Examiner err in finding that the combination of Schultz and
Lu teaches or suggests the limitation in dispute, i.e., “a controller of the
mobile communication terminal for determining a current mode as a
restoring mode when the software is found in the external memory, and
storing the software in the memory in the restoring mode,” as recited in
claim 1?
Analysis
Appellants contend Lu teaches receipt of a restore command is
required to enter into boot disk mode whereas, in contrast, claim 1 requires
determining that a current mode is a restoring mode based on whether
software is found in the external memory. According to Appellants, entering
into a boot disk mode based on receipt of Lu’s restore command does not
teach or suggest “determining a current mode as a restoring mode when the
software is found in the external memory and storing the software in the
memory in the restoring mode,” as recited in claim 1. App. Br. 6-7.
Appellants further contend that a user can press a reset button of the front
panel of Lu’s optical disk product to activate the restoration process, and
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thereby, Lu merely describes the prior art of entering a restoring mode by
pressing a reset button. App. Br. 7.
In response, the Examiner finds that Appellants are arguing
limitations not found in the claims, i.e., “entering into the restoring mode by
only inserting the external memory stored in which the software is stored,
into a mobile terminal, without pressing a button like the reset button.” Ans.
31. The Examiner goes on to assert that the limitations in claim 1 do not
define how and when the restoring mode is entered. Ans. 32.
In support of this position, the Examiner finds the limitation of
“detecting a plugging state of the external memory” is not inherently equal
to “entering a restoring mode,” since merely connecting an external memory
does not necessarily trigger a restoring mode. Id. (internal quotation marks
omitted). The Examiner also finds that the limitation of “determining a
current mode as a restoring mode when the software is found in the external
memory” also does not establish how or when the restoring mode is entered,
since “determining” the current mode as a restoring mode does not equate to
“entering into” the restoring mode. Id. (emphasis omitted) (internal
quotation marks omitted).
In the Reply, and contrary to the Examiner’s assertions, Appellants
contend the current mode is determined to be a restoring mode when
software to be restored is found in the external memory, and storing the
software in a device memory when in the restoring mode, i.e., the current
mode is determined to be a restoring mode when software is found in the
external memory, such that claim 1 does define how and when the restoring
mode is entered. Reply Br. 2.
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We disagree with Appellants’ contentions in this regard. We agree
with the Examiner because merely determining that the current mode is a
restoring mode is not equivalent to initially entering into the restoring mode.
Appellants also contend Lu does not teach a method of restoring
software in which the controller determines a current mode as a restoring
mode when software is found in the external memory because Lu merely
teaches determining a restoring mode when a restore command has been
received. App. Br. 3.
In response, the Examiner finds Lu teaches two methods of software
restoration, one of which includes receipt of a restore command as alleged
by Appellants, and another method which checks whether a valid application
program exists for restoration before loading the application from, for
example, an external memory. Ans. 33-34 (citing Lu col. 5:36-46); and see
Lu Fig. 2 steps 230, 235, and 240.
The Examiner concludes that the combination of Schultz and Lu
teaches or suggests the limitations of claim 1, and especially that Lu teaches
or suggests the limitation in dispute, particularly in light of Appellants’
disclosure, i.e., Lu teaches “determining a current mode as a restoring mode
when the software is found in the external memory, and storing the software
in the memory in the restoring mode,” as recited in claim 1. Id. (citing
Spec. 8:3-10).
We note that Fig. 2 of Lu illustrates the portion of Lu cited by the
Examiner. Whether or not the process illustrated in Fig. 2 as cited above
represents two different techniques for determining a restoring mode is not
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dispositive to our Decision, as we find that the claim limitation in dispute
does not preclude use of a restore command in addition to determining
whether software that is to be restored is found in an external memory, as
illustrated by Lu in Fig. 2. Thus, we find that Appellants’ arguments are not
commensurate with the scope of the claim.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 1. As
Appellants have not provided separate arguments with respect to dependent
claims 2-7, we similarly sustain the Examiner’s rejection of these claims
under 35 U.S.C. § 103(a).
2. Unpatentability Rejection of Claims 8-21
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 8, and 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 and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Arguments. However,
we highlight and address specific findings and arguments regarding claim 8
for emphasis as follows.
Issue 2
Appellants argue (App. Br. 8-9; Reply Br. 3) that the Examiner’s
unpatentability rejection of claim 8 under 35 U.S.C. § 103(a) over the
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combination of Schultz and Lu is in error. These contentions present us with
the following issue:
Whether the Examiner erred in finding that the combination of
Schultz and Lu teaches or suggests the limitations in dispute, i.e.,
determining if software is found in the external memory;
determining a current mode as a restoring mode when the
software is found in the external memory and storing the
software in a memory embedded in the mobile communication
terminal in the restoring mode; and
if the current mode is the restoring mode, data is read
from the external memory by a predetermined size and stored in
a corresponding block of the memory until all data stored in the
external memory are read and stored in the memory.
Claim 8.
Analysis
Appellants state that claims 9-21 stand or fall together with claim 8
(App. Br. 2), and appear to provide separate arguments for patentability of
claim 8. App. Br. 8-9. However, Appellants go on to state, “the recitations
at issue in Claim 8 are very similar to those previously discussed as to
Claim 1 . . . [and f]or at least the same reasons as those directed to Claim 1,
Appellants respectfully assert that [the combination of] Schultz . . . [and] Lu
fails to teach or fairly suggest [the limitations in dispute].” App. Br. 9.
While using an argument for patentability of a first claim as a cut-and-
paste argument for a second claim might outwardly appear to be a separate
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argument for patentability of the second claim, such a cut-and-paste
argument is not in fact an argument for “separate patentability.”
Accordingly, we find that the rejection of claims 8-21 also turns on
Issue 1, discussed supra with respect to independent claim 1.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 8 and
dependent claims 9-21 depending therefrom, and we sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 103(a).
§ 103(a) Rejections of Claims 4, 11, 13-16, 18, and 20
Appellants do not separately argue the unpatentability of claims 4, 11,
13-16, 18, and 20 over various combinations of Schultz, Lu, Qumei, Bi, and
Duncan, but instead merely assert that these claims are patentable by virtue
of their dependence on their respective independent claims 1 and 8. App.
Br. 10-11.
Accordingly, we sustain the unpatentability rejections of claims 4, 11,
13-16, 18, and 20.
CONCLUSION
The Examiner did not err with respect to the unpatentability rejections
of claims 1-21 under 35 U.S.C. § 103(a) over the various combinations of
the prior art of record, and the rejection is sustained.
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DECISION
The decision of the Examiner to reject claims 1-21 is 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) (2011).
AFFIRMED

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