Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Dec 9, 2021

2020006298 (P.T.A.B. Dec. 9, 2021)

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.
15/252,895 08/31/2016 HanKook BAE 0203-0688-1 2219
68103 7590 12/09/2021
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
GYAWALI, BIPIN
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
12/09/2021 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 HANKOOK BAE
________________

Appeal 2020-006298
Application 15/252,895
Technology Center 2600
________________

Before MARC S. HOFF, JOHNNY A. KUMAR, and
JASON J. CHUNG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the final rejection
of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The claimed invention relates to an apparatus and method of a
portable terminal using a touch pad. Spec. ¶ 2. Claim 1 is illustrative of the
invention and is reproduced below:
1. A portable terminal apparatus, the apparatus comprising:

a touch display configured to receive a touch input and display data;

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Samsung Electronics Co., Ltd., is
the real party in interest. Appeal Br. 2.
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a memory configured to store a plurality of user defined characters
with associated operations and instructions for execution; and

at least one processor executing the instructions stored in the memory,
the at least one processor configured to:

receive, via the touch display, an input of a drawing of a character of a
plurality of characters each of a different shape in a case that the touch
display is in a state where receiving of a touch input is enabled and
displaying is disabled,

determine an operation associated with the character, and

execute the determined operation.

Appeal Br. 10 (Claims App.).

REJECTION
Claims 1–19 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Muylkens (US 2008/0225013 Al, published Sept. 18,
2008) in view of Westerman (US 2008/0036743 Al, published Feb. 14,
2008) and Zotov (US 2007/0180400 Al, published Aug. 2, 2007).

ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant 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)(iv) (2018).
We agree with the Examiner and 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 Examiner’s
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Answer in response to Appellant’s Appeal Brief (see Ans. 3–4). We have
considered Appellant’s Reply Brief, but find it unpersuasive to rebut the
Examiner’s responses. We highlight and address specific findings and
arguments for emphasis as follows.
The Examiner finds that Muykens teaches all of the limitations of
claim 1, except user defined characters, and the characters having a different
shape. Final Act. 3–4. The Examiner finds that Westerman teaches the user
defined characters limitation of claim 1. Final Act. 4 (citing Westerman
¶ 179; Fig. 31). The Examiner also finds Zotov teaches that each of the
characters have a different shape. Id. (citing Zotov, ¶ 41, Fig. 3).
Appellant contends Zotov is non-analogous art (“does not belong in
the same category as the claims”) because “Zotov fails to disclose a situation
in which a user input occurs with a screen being turned off.” Appeal Br. 4.
Our reviewing court has recently discussed analogous art. See
Donner Technology, LLC v. Pro-Stage Gear, LLC, 979 F.3d 1353, 1359
(Fed. Cir. 2020) (“The scope of the prior art includes all analogous art.”).
Donner held the following:
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). Whether a reference is analogous art is an issue of fact. In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir.
2007).

Donner, 979 F.3d at 1359. Further, “[a]lthough the dividing line between
reasonable pertinence and less-than-reasonable pertinence is context
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dependent, it ultimately rests on the extent to which the reference of interest
and the claimed invention relate to a similar problem or purpose.” Id.
The Examiner finds:
Although the Office acknowledges that Zotov’s display has to be turned
on to find an unused area on the display to draw a gesture (“draw a
character”) on the unused area, but the question is whether the similar
gestures (characters) can be drawn on the Muylkens’s display when it
is turned off. The writing of “emAil” inside the rectangle is just an
example gesture in Zotov to open the email application inside the
rectangle (Zotov; Fig. 3B; Para. 0041). By this token, Zotov suggests
the use of characters as the gesture inputs to execute various
applications. Since a user of Muylkens can draw swipes or drags, by
similar token the user should be able to draw character gestures
anywhere on the screen to perform various functions when the display
is turned off.

Ans. 4.
In our view, Zotov is broadly in the same field of endeavor as the
apparatus recited in claim 1. The Examiner’s findings are supported by the
record, and we find that the citations show how Zotov falls broadly in the
same field of endeavor. We, therefore, need not determine whether Zotov is
reasonably pertinent to the problem being solved. Thus, we are persuaded
that Zotov is analogous art.
Appellant further contends that Muylkens, Westerman, Zotov are not
properly combinable. In particular, Appellant argues that Muylkens and
Zotov are not combinable because “the display is turned off in Muylkens
and is required to be on in Zotov, when defining an area 307 and entering
application name 309 as in FIG. 3A of Zotov, the having the display in the
on-state as in Zotov, would leave Muylkens unsatisfactory for its intended
purpose.” (Appeal Br. 8); and “in order for Zotov to work, the display in
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Muylken[s] must be in the ON state, thereby rendering Muylken[s]
unsatisfactory for its intended purpose or changing Muylken[s]’s principle of
operation.” (Reply Br. 3).
“[R]ejections 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 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Applying the guidance above, we agree with the Examiner that a
person having ordinary skill in the art at the time of Appellant’s invention
would have found it obvious to combine the teachings of Muylkens,
Westerman, and Zotov, for the purpose of providing flexibility to define
gestures and add more gestures in the touch input device. Final Act. 4.
Appellant’s argument that combining the teachings of Muylkens and
Zotov would render Muylkens unsatisfactory for its intended purpose
(Appeal Br. 4–8; Reply Br. 3, 4) is unavailing because:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Here, the Examiner concludes, and we agree that:
Zotov suggests the use of characters as the gesture inputs to
execute various applications. Since a user of Muylkens can draw
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swipes or drags, by similar token the user should be able to draw
character gestures anywhere on the screen to perform various
functions when the display is turned off. For this reason, it would
have been obvious to one of ordinary skill in the art, at the time
of invention, to combine the teaching of Muylkens and Zotov.
The combination would have added the character gestures in
addition to the drags or swipe gestures to the combined system.

Ans. 4.

We also disagree with Appellant’s contention that the Examiner’s
rationale amounts to hindsight assertions. Reply Br. 4. We are cognizant
that our reviewing courts have not established a bright-line test for hindsight.
In KSR, the Supreme Court guides that “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)).
Nevertheless, the Supreme Court qualified the issue of hindsight by stating,
“[r]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
Id.
In reviewing the record, we find Appellant has not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Moreover, Appellant has not provided persuasive evidence that
combining the respective teachings of the references would have been
“uniquely challenging or difficult for one of ordinary skill in the art,” or that
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such a combination would have “represented an unobvious step over the
prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007). Nor has the Appellant provided any objective evidence of
secondary considerations, which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
As discussed above, the Examiner has instead proffered an articulated
reasoning with rational underpinnings, particularly in the case to provide
flexibility to define gestures and add more gestures in the touch input device.
Final Act. 4.
Based on the foregoing and by a preponderance of the evidence, we
sustain the Examiner’s obviousness rejection of independent claims 1, 7, and
13 and their respective dependent claims not argued separately.
Accordingly, we affirm the Examiner’s obviousness rejections of
claims 1–19.
CONCLUSION
The Examiner did not err in rejecting claims 1–19 as being obvious
under pre-AIA 35 U.S.C. § 103(a) over the cited combinations of references.

DECISION SUMMARY
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–19 103(a) Muylkens,
Westerman, Zotov
1–19
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FINALITY AND RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED