Ex Parte WOO et al

Patent Trial and Appeal Board

Oct 31, 2018

14584321 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/584,321 12/29/2014
68103 7590 11/02/2018
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Kwang Taek WOO
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.
0203-1066-3 1036
EXAMINER
SOROWAR, GOLAM
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KWANG TAEK WOO and CHANG TAEKKANG
Appeal2018-003000
Application 14/5 84,321
Technology Center 2600
Before JOSEPH L. DIXON, JENNIFER S. BISK, and JUSTIN BUSCH,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-003000
Application 14/584,321
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § I34(a) from a rejection of claims
1-19. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a network-adaptive function control method
for dual-mode mobile terminal. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method comprising:
presenting, via a display operatively coupled with an
electronic device, a list of one or more user interfaces, each of
the one or more user interfaces being associated with a
respective function supporting communication, and at least one
user interface of the one or more user interfaces indicating a
state of the respective function,
the state comprising one of:
a first state to perform the communication using
any of a first network or a second network, or
a second state to perform the communication using
only the first network; and
changing the state based on a user input received in
relation with the at least one user interface.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chun
Zehavi et al.
Litwin
US 2004/0054650 Al
US 2006/0045069 Al
US 2007/0133665 Al
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Mar. 18, 2004
Mar. 2, 2006
June 14, 2007
Appeal2018-003000
Application 14/584,321
REJECTIONS
The Examiner made the following rejections:
Claims 1-19 stand rejected on the ground of non-statutory double
patenting as being unpatentable over claims 1-26 of U.S. Patent No.
8,805,436 B2.
Claims 1-19 stand provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1-18 of
copending Application No. 14/253,262 (reference application). 1
Claims 1-7, 11-16, and 19 stand rejected underpre-AIA 35 U.S.C.
§ 102( e) as being anticipated by Litwin.
Claims 8, 10, 17, and 18 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Litwin in view of Zehavi.
Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Litwin and Zehavi further in view of Chun.
ANALYSIS
Non-Statutory Obviousness-Type Double Patenting
In the After-Final Amendment, filed June 9, 2017, Appellants
requested that the two separate non-statutory obviousness-type double
patenting rejections "be held in abeyance until all other substantive issues of
the present application have been resolved." (Amendment 7; see also App.
Br. 4.) The Examiner does not expressly state that the obviousness-type
double patenting rejections are withdrawn in the Examiner's Answer. As a
result, these rejections are still before us and Appellants have provided no
1 Note this Application issued as US patent 10,045,258 B2 on August 7,
2018.
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Application 14/584,321
argument nor have Appellants attempted to file a terminal disclaimer to
obviate the rejections. As a result, we proforma sustain the Examiner's two
separate obviousness-type double patenting rejections.
Anticipation
Appellants argue the claims based upon the same line of reasoning
and do not set forth separate arguments for patentability. (App. Br. 4, 7-8.)
As a result, we select independent claim 1 as the representative claim for the
group and will address Appellants' arguments thereto. See 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv). We do not consider arguments that Appellants could have
made but chose not to make in the Brief so we deem any such arguments as
waived. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants present three arguments for patentability. (App. Br. 5-7.)
First, Appellants contend:
the method as recited in independent claim 1 describe [ s]
operations for each interface (See, for example, FIG. 3 of
instant application), such that a same group of operations,
shown for each interface, are illustrated with associated "check
marks" or other indications to show a state (perform or not
perform) for each interface (e.g., IP Network).
(App. Br. 5.) Second, Appellants contend that:
Litwin is still totally silent with regard to the claimed feature of
"changing the state based on a user input received in relation
with the at least one user interface," as recited in independent
claim 1. That is, at most, Litwin may allow removal or addition
to the Table 1 via some process, but not using the Table display
as an alleged "user interface" to make such changes.
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Application 14/584,321
(App. Br. 7.) Third, Appellants contend "a user of the claimed invention can
change operation states (to perform or to not perform) for a list of operations
for each interface (e.g., IP Network) directly using the 'user interface'
illustrated in FIG. 3 of the instant application" (App. Br. 7).
The Examiner disagrees with Appellants' first and third arguments
because the Examiner finds the arguments are not commensurate in scope
with the express claim language and maintains that limitations from the
Specification are not read into the claims. (Ans. 3-5, 6-7.) We agree with
the Examiner that Appellants' arguments go beyond the express scope
recited the language of independent claim 1 and do not show error in the
Examiner's finding the Litwin reference discloses the claimed limitations.
With regard to Appellants' second argument that the Litwin reference
is totally silent with regard to the claimed "changing the state based on a
user input received in relation with the at least one user interface," the
Examiner finds the Litwin reference at paragraphs 15 and 1 7 discloses the
user can configure the network setting and it is:
clear from the above citations, the user can configure the
network setting (such as WLAN, cellular) for the different
operations (such as Email, internet access, telephone call) using
the interface 40, that is equated as "changing the state based on
a user input received in relation with the at least one user
interface", as recited in claim 1.
(Ans. 6-7.)
We agree with the Examiner that the Litwin reference discloses a user
interface 40 with the user of the mobile unit configuring the network aware
operations settings 3 8 for different operations. Additionally, Appellants did
not file a Reply Brief to address the Examiner's further clarifications and
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findings. Consequently, we find Appellants' arguments do not show error in
the Examiner's factual findings and the finding of anticipation of
representative independent claim 1.
With respect to independent claim 12 and dependent claims 2-11 and
13-19, Appellants rely on the arguments advanced with respect to
representative independent claim 1. (App. Br. 7-8.)
Therefore, we sustain the anticipation rejection of claims 2-7, 11-16,
and 19 for the same reasons set forth above.
Obviousness
Appellants do not set forth separate arguments for patentability based
upon obviousness. Therefore, we sustain the obviousness rejections for the
same reasons set forth above.
CONCLUSIONS
The Examiner did not err in rejecting claims 1-19 based upon
obviousness-type double patenting and the Examiner did not err in rejecting
claims 1-19 based upon anticipation and obviousness.
DECISION
For the above reasons, we sustain the Examiner's obviousness-type
double patenting rejections of claims 1-19; we sustain the Examiner's
anticipation rejection of claims 1-7, 11-16, and 19; and we sustain the
Examiner's obviousness rejection of claims 8-10, 17, and 18.
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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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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