Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Oct 19, 2020

2019003525 (P.T.A.B. Oct. 19, 2020)

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.
14/090,258 11/26/2013 Yohan LEE 0203-1159 8301
68103 7590 10/19/2020
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
ELNAFIA, SAIFELDIN E
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
10/19/2020 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 YOHAN LEE, JAEHYEON KANG, and DASOM LEE
____________________

Appeal 2019-003525
Application 14/090,258
Technology Center 2600
____________________

Before ST. JOHN COURTENAY, III, JAMES W. DEJMEK, and
JASON M. REPKO, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–22. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Samsung Electronics Co., Ltd. as the real party in interest. Appeal Br. 2.
Appeal 2019-003525
Application 14/090,258

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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to a
touch input method on a mobile device comprising a touch screen with a
front touch panel and a rear touch panel. Spec. ¶¶ 8–9. According to the
Specification, the disclosed embodiment allows for operating the touch
screen of the mobile device with one hand while also addressing concerns of
stability of the device during one-handed operation. Spec. ¶¶ 6, 8.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A touch input method in a mobile terminal having a touch
screen that includes a transparent display panel, a front touch
panel configured to detect a touch input corresponding to a front
of the transparent display panel, and a rear touch panel
configured to detect a touch input corresponding to a rear of the
transparent display panel, the method comprising:
displaying a keypad at a bottom of the touch screen;
detecting a touch gesture from one of the front touch panel
or the rear touch panel;
and
displaying the keypad at a top of the touch screen and
restricting a touch input via the front touch panel in response to
the detected touch gesture moving from the bottom of the touch
screen to the top of the touch screen via the rear touch panel.

The Examiner’s Rejections
1. Claim 1 stands rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 4–5.
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Application 14/090,258

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2. Claims 1–22 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Shimada (US 2014/0045553 A1; Feb. 13, 2014);2
Kim et al. (US 2010/0241985 A1; Sept. 23, 2010) (“Kim ’985”); and Kim
(US 2011/0009169 A1; Jan. 13, 2011) (“Kim ’169”). Final Act. 5–18.

ANALYSIS3
Rejection under 35 U.S.C. § 112(b)
The Examiner had rejected claim 1 under 35 U.S.C. § 112(b) as being
indefinite because there was no antecedent basis for “the top of the touch
screen.” Final Act. 4–5. In an amendment filed July 12, 2018, Appellant
amended claim 1 to address the issue raised by the Examiner. Amdt 2. For
purposes of the appeal, the Examiner entered Appellant’s amendments.
Adv. Act. 1 (mailed August 7, 2018).
Rather than withdrawing the rejection in light of Appellant’s
amendment, the Examiner states that every ground of rejection set forth in
the Final Office Action is being maintained unless it has been expressly
withdrawn. Ans. 3.
As set forth in Manual of Patent Examining Procedure (“MPEP”)
§ 2173.05(e) (9th ed., Rev. 10.2019, June 2020), “[i]nherent components of
elements recited have antecedent basis in the recitation of the components

2 US 2014-0045553 is an English-language translation of JP 2012-230519.
See Final Act. 5.
3 Throughout this Decision, we have considered the Appeal Brief, filed
October 26, 2018 (“Appeal Br.”); the Reply Brief, filed March 26, 2019
(“Reply Br.”); the Examiner’s Answer, mailed February 6, 2019 (“Ans.”);
and the Final Office Action, mailed May 17, 2018 (“Final Act.”), from
which this Appeal is taken.
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Application 14/090,258

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themselves.” See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir.
2001).
As an initial matter, we understand a touch screen to have a number of
inherent properties including a top, bottom, left, and right sides. As such,
we disagree that, as originally written, the claim fails under 35 U.S.C.
§ 112(b) for lack of antecedent basis. Moreover, in light of Appellant’s
amendment addressing the Examiner’s concerns, making express the
antecedent basis for the claimed “top of the touch screen” (see claim 1), we
do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112(b).

Rejection under pre-AIA 35 U.S.C. § 103(a)
In rejecting claim 1 (as well as independent claim 9), the Examiner
relies on the combined teachings of Shimada, Kim ’985, and Kim ’169 to
teach, inter alia, “displaying the keypad at a top of the touch screen and
restricting a touch input via the front touch panel in response to the detected
touch gesture moving from the bottom of the touch screen to the top of the
touch screen via the rear touch panel.” See Final Act. 6–8, 11–14. More
specifically, the Examiner relies on Shimada to teach displaying a keypad,
Kim ’985 to teach displaying the keypad at the top of the touch screen in
response to a detected touch gesture moving from the bottom of the touch
screen to the top of the touch screen via the rear touch panel, and Kim ’169
to teach restricting a touch input via the front panel. See, e.g., Final Act. 6–
8.
Appellant argues the Examiner’s rejection dissects the limitation at
issue and merely finds the individual components (i.e., a keypad, moving a
keypad from the bottom to the top of the touch screen, and restricting input
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Application 14/090,258

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via the front touch panel) but fails to find that both displaying the keypad at
the top of the touch screen and restricting a touch input via the front touch
panel are in response to detecting the claimed touch gesture via the rear
touch panel. Appeal Br. 6–7; Reply Br. 2–4. More particularly, Appellant
asserts Kim ’169 describes independently restricting the touch detection of a
particular touch display screen, but fails to teach that restricting a touch
input via a front panel is in response to detecting a specified touch gesture
via a second (i.e., rear) touch panel. Appeal Br. 7 (citing Kim ’169 ¶¶ 76–
77).
“Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). Our reviewing court has stated the phrase “‘[i]n
response to’ connotes that the second event occur in reaction to the first
event.” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1340
(Fed. Cir. 2011).
As we parse the language of claim 1, the claim requires both
“displaying the keypad at a top of the touch screen and restricting a touch
input via the front touch panel” (i.e., the so-called second event described in
Calcar) occur in reaction to “the detected touch gesture moving from the
bottom of the touch screen to the top of the touch screen via the rear touch
panel” (i.e., the so-called first event described in Calcar). See claim 1
(emphasis added).
Although displaying a keypad originally positioned at the bottom of a
touch screen, as taught by Shimada (see Shimada ¶ 99, Fig. 13), and moving
the keypad in accordance with a detected touch gesture, as taught by Kim
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Application 14/090,258

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’985 (see Kim ’985 ¶ 68, Figs. 5, 10), teaches a second event (i.e.,
displaying a keypad at a top of the touch screen) in response to a first event
(i.e., detecting a touch gesture to move the display of the keypad), the
Examiner has not provided persuasive evidence that restricting a touch input
via the front panel (as described in Kim ’169 ¶¶ 76–77) occurs in response to
the detected touch gesture on the rear touch panel. Thus, the Examiner has
cleanly split the claimed chain of causation (i.e., do B “in response to” A)
between the Kim and Shimada references, without providing a rational
underpinning explaining why an artisan would have done so. We find the
Examiner’s reliance on paragraph 5 of Kim ’985 and paragraph 7 of Kim
’169 in support of the motivation to combine is too general to reasonably
suggest the claimed “in response to” combination to an artisan at the time of
the invention. See Final Act. 7–8.4
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that the cited prior art teaches or reasonably
suggests displaying a keypad at the top of the touch screen and restricting a
touch input via the front touch panel “in response to” detecting a touch
gesture via the rear touch panel as recited in claim 1 (and commensurately
recited in independent claim 9), we do not address other issues raised by

4 The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d
at 988).

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Application 14/090,258

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Appellant’s arguments related to these claims. See Beloit Corp. v. Valmet
Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency
is at liberty to reach a decision based on “a single dispositive issue”).
For the reasons discussed supra, we do not sustain the Examiner’s
rejection of independent claim 1. For similar reasons, we do not sustain the
Examiner’s rejection of independent claim 9, which recites commensurate
limitations. Additionally, we do not sustain the Examiner’s rejection under
pre-AIA 35 U.S.C. § 103(a) of claims 2–8 and 10–22, which depend directly
or indirectly therefrom.

CONCLUSION
We reverse the Examiner’s decision rejecting claim 1 under 35 U.S.C.
§ 112(b).
We reverse the Examiner’s decision rejecting claims 1–22 under pre-
AIA 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 112(b) Indefiniteness 1
1–22 103(a) Shimada, Kim ’985,
Kim ’169
1–22
Overall
Outcome
1–22

REVERSED