Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Mar 31, 2022

2021000379 (P.T.A.B. Mar. 31, 2022)

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. 15/901,463 02/21/2018 Je-Han YOON 678-4817 CON (P20377-US1) 8951 66547 7590 03/31/2022 THE FARRELL LAW FIRM, P.C. Paul J Farrell 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER HUYNH, LINDA TANG ART UNIT PAPER NUMBER 2145 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): pto@farrelliplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JE-HAN YOON Appeal 2021-000379 Application 15/901,463 Technology Center 2100 Before MARC S. HOFF, ELENI MANTIS MERCADER, and JASON J. CHUNG, Administrative Patent Judges. MANTIS MERCADER, 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, 3, 5-11, 14, 16, 18-24 and 29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Samsung Electronics Co. Appeal Br. 1. Appeal 2021-000379 Application 15/901,463 2 CLAIMED SUBJECT MATTER The claims are directed to screen recording method and apparatus in terminal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A screen recording method in a portable electronic device including a touchscreen display, the screen recording method comprising: displaying, on the touchscreen display, a first screen comprising a plurality of icons, each of the plurality of icons corresponding to a specific application; in response to executing a screen recording function, activating a function for generating image effects to visually represent touch inputs and starting to record the first screen displayed on the touchscreen display, wherein a user interface (UI) for controlling the screen recording function is displayed while recording the first screen, the UI overlapping at least a portion of the first screen; identifying a first touch input on a first icon from among the plurality of icons displayed on the first screen, while recording the first screen; in response to identifying the first touch input on the first icon, generating a first image effect that visually represents a touch input at a first location corresponding to the first touch input on the first screen and executing a first application corresponding to the first icon; displaying a first application executing screen corresponding to the executed first application and recording the displayed first application executing screen; and storing a video file including the recorded first screen combined with the generated first image effect and the recorded first application executing screen. Appeal 2021-000379 Application 15/901,463 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Nickell US 2007/0015118 A1 Jan. 18, 2007 Patton US 2011/0265001 A1 Oct. 27, 2011 Kilpatrick, II US 2010/0085274 A1 Apr. 8, 2010 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 3, 5-11, 14, 16, 18- 24, 29 103(a) Nickell, Patton 11, 24, 29 103(a) Nickell, Patton, Kilpatrick, II OPINION We adopt the Examiner’s findings in the Final Action and the Answer and we add the following for emphasis. 1. Does the Nickell and Patton combination teach or suggest the limitation of “a user interface (UI) for controlling the screen recording function is displayed while recording the first screen, the UI overlapping at least a portion of the first screen” as recited in claim 1? Appellant argues that in Nickell, the final result of displaying the edited image and generated text is displayed in the separate tutorial window in step 270. Appeal Br. 7. Appellant argues that neither paragraph 62 nor any other section of Nickell or Patton teaches or suggests that “a user interface (UI) for controlling the screen recording function is displayed while recording the first screen, the UI overlapping at least a portion of the first screen,” as recited in independent claims 1 and 14. Id. 7-8. Appeal 2021-000379 Application 15/901,463 4 We do not agree with Appellant’s argument. The Examiner finds, and we agree, that Nickell teaches a tutorial window interface that captures a desktop user interface receiving user input to launch an application within the desktop interface on a screen (Figs. 8-9, paras. 58, 73-74), where the displayed tutorial window is overlaid on top of the displayed desktop interface with the running application (para. 62). The Examiner finds, and we agree, that by allowing the user to control recording the desktop interface via a “record” icon in the tutorial window interface (Fig. 6, para. 71), the tutorial window interface of Nickell teaches “wherein a user interface (UI) for controlling the screen recording function is displayed while recording the first screen, the UI overlapping at least a portion of the first screen.” Ans. 3. 2. Does the Nickell and Patton combination teach or suggest the limitation of “image effect that visually represents a touch input” as recited in claim 1? Appellant argues that the “image effects” in Patton are the actual edits to the editable image that is displayed, while the generated image effects in independent Claim 1 visually indicate a touch input by graphically indicating a location and/or movement of the user’s touch input on the screen. Appeal Br. 9. Accordingly, independent Claims 1 and 14 recite generating a first image effect that visually represents a touch input, e.g., as illustrated by the circle in FIG. 2C. Id. Appellant argues that as shown above in FIG. 5 of Patton, an edit 570 of an editable image is generated, e.g., a note or an indication written on the image 530, which is not a first image effect that visually represents a touch input. Appeal Br. 10. As described in paragraph 51 of Patton, and FIG. 5, the edits 570 include circles, lines and text added to an original version of Appeal 2021-000379 Application 15/901,463 5 the editable image. Id. That is, Patton edits a displayed image, but does not generate a first image effect that visually represents a touch input. Id. Appellant argues that Patton merely describes displaying the handwriting input on the screen as an image in a handwriting input mode, but fails to teach or suggest generating a first image effect that visually represents a touch input that executes an application corresponding to a touched icon in response to the touch input. Id. That is, the image effect that visually represents a touch input represents a user’s operation of executing an application, such as selecting a specific icon. Id. Appellant argues that the image effect in independent claims 1 and 14 does not simply mean displaying a representation from a touch input but is a representation of the actual touch input for recording a user’s activities. Id. Appellant argues that for example, a touch operation for executing an application by selecting a specific icon is displayed as an image effect and is recorded. Id. We do not agree with Appellant’s argument. “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “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 [those] references would have suggested to those of ordinary skill in the art.” Id. at 425. The Examiner finds, and we agree, that Appellant’s Specification does not disclose a special definition of “image effect,” merely an example of how one is created, “displaying an image effect for a user’s activity, in particular, the user’s dragging activity.” Ans. 4 (citing Spec. 9: 16-17). Appeal 2021-000379 Application 15/901,463 6 Although claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We agree with the Examiner that the broadest reasonable interpretation of “image effect” includes any displayed phenomenon. Ans. 4. Nickell describes a visual effect of highlighting an item when a user selects the item with a user input device (Fig. 9, para. 74, see input device at para. 56). The Examiner finds, that by launching an application corresponding to the item selected by the user input (Figs. 9, 11, para. 74; i.e., referring to text editor 915 of Fig. 9), Nickell teaches “in response to identifying the first ... input on the first icon, generating a first image effect that visually represents a[n] . . . input at a first location corresponding to the first . . . input on the first screen and executing a first application corresponding to the first icon” as recited in claim 1. Id. The Examiner further finds, and we agree, that Patton teaches receiving user hand touches (i.e., touch input) made directly on the location of the image displayed on a touch screen (Fig. 5, paras. 50-51). Ans. 5. Therefore, by displaying the visual image of the edits reflecting the detected user touches on the screen (the ovals and text notations displayed in Fig. 5, and described in para. 50), Patton teaches “a first image effect that visually represents a touch input at a first location corresponding to the first touch input on the first screen.” Id. The Examiner finds, and we agree, that the combination of teaching modifying the visual effect of highlighting an item selected by a user with an input device when launching an application (Fig. 9, para. 74) as taught by Nickell with the teaching of visually reflecting user touch inputs selecting Appeal 2021-000379 Application 15/901,463 7 locations on a touch screen (Fig. 5, para. 50) as taught by Patton to teach the limitation of “in response to identifying the first touch input on the first icon, generating a first image effect that visually represents a touch input at a first location corresponding to the first touch input on the first screen and executing a first application corresponding to the first icon” as recited in claim 1. Id. “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 [those] references would have suggested to those of ordinary skill in the art.” Keller at 425. See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Rather, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly, we affirm the Examiner’s rejection of claim 1 and for the same reasons the rejections of claims 3, 5-11, 14, 16, 18-24, and 29. CONCLUSION The Examiner’s rejections of claims 1, 3, 5-11, 14, 16, 18-24, and 29 is AFFIRMED. Appeal 2021-000379 Application 15/901,463 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5-11, 14, 16, 18- 24, 29 103(a) Nickell, Patton 1, 3, 5-11, 14, 16, 18- 24, 29 11, 24, 29 103(a) Nickell, Patton, Kilpatrick, II 11, 24, 29 Overall Outcome 1, 3, 5-11, 14, 16, 18- 24, 29 TIME PERIOD FOR 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED