Goo-Hyun Kim

Patent Trials and Appeals Board

Oct 24, 2019

14950654 - (D) (P.T.A.B. Oct. 24, 2019)

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.
14/950,654 11/24/2015 Goo-Hyun KIM 0201-1513 3204
68103 7590 10/24/2019
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
SCHALLHORN, TYLER J
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte GOO-HYUN KIM

Appeal 2018-009206
Application 14/950,654
Technology Center 2100

Before ERIC S. FRAHM, JASON M. REPKO, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5 and 7–25. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Samsung
Electronics Co, Ltd. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a method of configuring a screen of an
electronic apparatus. Abs. An electronic apparatus may not support the
same font as another apparatus and must use a different font when media is
transferred thereto. Appeal Br. 2. The different font may need to be
adjusted to better approximate the original font. Id. Claim 1 is illustrative:
1. A method of configuring a screen of an electronic
apparatus, the method comprising:
obtaining data that is configured in a first configuration
based on a first font;
configuring the data in a second configuration based on a
second font;
calculating a difference between a first layout attribute of
the first configuration and a second layout attribute of the
second configuration; and
changing, if the difference is greater than a
predetermined critical value, the second configuration into a
third configuration to then be displayed,
wherein a difference between the first layout attribute of
the first configuration and a third layout attribute of the third
configuration is less than the predetermined critical value.
Independent claims 13 and 25 recite a system and method,
respectively, having limitations commensurate in scope with claim 1.
Dependent claims 2–5, 7–12, and 14–24 each incorporate the limitations of
their respective independent claims. Claims 6 and 26–28 have been
canceled. Appeal Br. 9–13 (Claims App’x).
REFERENCES
Name Reference Date
Moore et al. (Moore) US 5,859,648 Issued Jan. 12, 1999
Asada US 5,825,987 Issued Oct. 20, 1998
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REJECTIONS
Claims 1–4, 6–9, 12–16, 18–21, 24, and 25 are rejected under
35 U.S.C. § 102(a)(1) as being anticipated by Moore. Claims 5, 10, 11, 17,
22, and 23 are rejected under 35 U.S.C. § 103 as being obvious over the
combination of Moore and Asada. We turn first to the issue of anticipation.
Anticipation of a claim may be found “only if each and every element as set
forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of
Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
The Examiner has determined that Moore anticipates the invention of
claim 1, by disclosing an application that uses a substitute font if a first font
is unavailable, comparing visually similar fonts with a requested font to
determine if they are within a predetermined tolerance from the requested
font, attempting to select a font that is within the tolerance, and modifying
the selected substitute font until it matches the character widths of the
original font. Final Act. 3–4 (citing Moore 2:1–10, 25–35, 3:35–45, 55–60,
6:55–60, 7:5–15). The Examiner determines that the claimed “data,” which
is configured in a first configuration based on a first font, and then
configured based on a second font, is data that is not limited to a section of
text as described in the Specification, but may include the widths of the
characters. Ans. 3.
Appellant contends that Moore does not disclose the obtaining,
configuring, and calculating limitations of claim 1. Appeal Br. 4–6.
Appellant argues that the Examiner errs in equating Moore’s “requested
font” to the claimed “data that is configured in a first configuration based on
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a first font,” because the “first configuration” is the data configured with the
first font, not the first font itself. Id. at 4. Appellant further argues that
Moore is only evaluating the character width of the font, unlike the
Specification’s disclosure of a layout including all of the font characters,
spaces, and remaining areas; i.e., a portion of text. Id. at 5–6; Reply Br. 2–4.
Appellant contends that interpreting “data” to include font widths would not
be a reasonable interpretation that is consistent with the Specification, and
that even if were so construed, the Examiner has not shown how Moore sets
forth a single element that corresponds to the “data” as set forth in claim 1.
Appeal Br. 6–7, Reply Br. 4.
With respect to Appellant’s proposed construction of “data”, we are
not persuaded by Appellant’s argument that the Specification the claim term
“data” may not include font widths as disclosed by Moore. Our reviewing
court has stated
Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004).
Appellant points to sections of the Specification discussing the use of
text as the claimed “data”. Reply Br. 2–3 (citing Spec. ¶¶ 75, 82). The
Specification describes receiving the data “TOJB” in a first font, which may
include font attributes such as font width. Spec. ¶ 75, Table 1. The font
width “may include information on the horizontal length of the font.” Id.
¶ 76. Fonts “T”, “O”, “J”, and “B” may be created reflecting the reflective
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font widths and heights of those received text letters, and spaces having a
horizontal length may be created based upon the kerning of the font
attributes. Id. ¶¶ 77–78. Such fonts and spaces are the layout attributes that
form the obtained first configuration data. Id. ¶ 79. Accordingly, the “first
configuration data” set forth in claim 1 is composed of font widths, font
heights, and horizontal space lengths. Similarly, the “second configuration
data” is composed of font widths, font heights, and horizontal space lengths.
Id. ¶¶ 81–86. Accordingly, data representing font properties, such as font
width, can reasonably be interpreted as the claimed “data that is configured
in a first configuration based on a first font.” So we are not persuaded of
error in the Examiner’s reliance on Moore’s font widths as data that is
configured in a first configuration based on a first font.
Appellant further argues that if the claimed “data” correspond to
Moore’s character widths, the limitation of “configuring the data in a second
configuration based on a second font” is not met. Appeal Br. 4–5; Reply Br.
2. Appellant first contends that it is not possible for a font width of a first
font to be configured based on a second font in view of the fact that
attributes of a font do not change. Reply Br. 2. Appellant does not point to
authority to support this statement, and we are not persuaded that such an
argument is consistent with claim 1, which requires configuring the data
associated with the first font (e.g., obtained font width, height, spacing) in a
second configuration based on a second font. The claim does not require a
font itself to have changing attributes, only that a manipulation of data
representative of that font be configured based on a second font. Moreover,
Moore directly contradicts this alleged impossibility by disclosing adjusting
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the character widths of one font based on a selected font, through the use of
a “modifiable font.” Moore Abs., Fig. 6 item 609.
However, we are not persuaded that the Examiner has shown that
Moore discloses the claimed configuring the data representative of the first
font in a second configuration based on a second font, as claimed. In
explaining the grounds of rejection, the Examiner provides various theories
of what feature in Moore corresponds to the claimed data, including “using a
font for rendering text” (Final Act. 3 (citing Moore 2:1–10, 25–35)), “any
data derived using the font data” (Adv. Act. 2 (citing Moore 6:25–7:2), and
“the set of widths of the characters [which is] configured based on the fonts
because each font may have a different width for each different character”
(Ans. 3 (citing Moore 8:21–36)). Viewing those sections in context, Moore
performs a comparison of font data, wherein the data is taken from a table
stored in computer’s memory. Moore 6:5–32. Moore’s data for the second
configuration—i.e., the code representing the Arial font in Table 1—is not
configured from the data of the unavailable font that is attempting to be
mimicked, but instead is simply retrieved from the stored table. Id. Nor are
the font widths themselves disclosed to be configured from the data of the
unavailable font, rather than selected from a table. Id. at 8:21–50. At that
section, Moore discloses modifying a second font, a modifiable font, but not
the unavailable font. Id.
Also, the Examiner has not explained how using a font for rendering
text in Moore’s column 2 involves the configurations that are used to
calculate a difference between respective layout attributes of the
configurations in Moore’s column 6. See Final Act. 34 (citing Moore 2:1–
10, 25–35, 6:55–60). Rather, we agree with Appellant that Moore’s column
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2 and column 6 describe different embodiments. Appeal Br. 7. In
particular, Moore’s column 2 describes the ProvideRaster program, which is
indicated as part of a prior art process of returning a raster font. Moore 2:4–
10, Fig. 3. By contrast, Moore’s column 6 and Table 1 describes the Map
program. Id. at 5:54–6:54. Yet the Examiner’s rejection relies on a mix of
features from both embodiments. Final Act. 3–4. Because the programs use
different data, the Examiner has not shown that the relied-upon elements of
Moore are arranged in Moore as in the claim. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1360–70 (Fed. Cir. 2008) (determining that
an anticipatory reference requires “all of the limitations of the claims
arranged or combined in the same way as recited in the claims”).
The Examiner has not explained, nor do we ascertain, how any feature
in Moore corresponds to data that is configured based on a first font, and
then undergoes a step of configuring into a second configuration based on a
second font, where a difference between layout attributes of the first and
second configurations are calculated. In particular, the Examiner has not
shown a step corresponding to configuring the [font widths based on a first
font] in a second configuration based on a second font. Accordingly, we are
persuaded that the Examiner erred in determining that the font width of
Moore discloses the data as set forth in claim 1.
The same limitations are found in each of the claims under appeal.
Because we determine that the Examiner has not shown that Moore discloses
these limitations, we are persuaded that the Examiner erred in determining
that Moore anticipates claims 1–4, 6–9, 12–16, 18–21, 24, and 25. Because
of that deficiency, and further because the Examiner does not explain how
Asada provides the limitations not found in Moore, we are persuaded that
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the Examiner erred in determining that claims 5, 10, 11, 17, 22, and 23 are
obvious over the combination of Moore and Asada.
DECISION
For the above-described reasons, we reverse the Examiner’s rejection
of claims 1–4, 6–9, 12–16, 18–21, 24, and 25 as being anticipated under
35 U.S.C. § 102(a)(1), and reverse the Examiner’s rejection of claims 5, 10,
11, 17, 22, and 23 as being obvious under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4, 6–9,
12–16, 18–
21, 24, 25
102(a)(1) Anticipation 1–4, 6–9,
12–16, 18–
21, 24, 25
5, 10, 11, 17,
22, 23
103 Obviousness 5, 10, 11,
17, 22, 23
Overall
Outcome
1–25

REVERSED