WATANABE, Masato et al.

Patent Trials and Appeals Board

Jun 1, 2020

12881277 - (D) (P.T.A.B. Jun. 1, 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.
12/881,277 09/14/2010 Masato WATANABE 5004-1-319 1785
33942 7590 06/01/2020
Cha & Reiter, LLC
17 Arcadian Avenue
Suite 208
Paramus, NJ 07652
EXAMINER
WAN, QI
ART UNIT PAPER NUMBER
2143
MAIL DATE DELIVERY MODE
06/01/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MASATO WATANABE and JONG SEONG LEE
____________________

Appeal 2019-002002
Application 12/881,277
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MacDONALD, 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 21, 23–29, and 31–41. Appeal Br. 3.
Claims 1–20, 22, and 30 have been cancelled. Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Samsung Electronics Co., Ltd. as the real party in
interest. Appeal Br. 3.
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Application 12/881,277

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CLAIMED SUBJECT MATTER
Claims 21 and 39 are is illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):
21. An electronic device comprising:
[A.] a touch screen having a display; and
[B.] a controller configured to:
[i.] detect a reception of a first touch input, received
through the touch screen, for releasing an off-state
of the display of the touch screen while the
display of the touch screen is in the off-state,
[ii.] control the touch screen to display a preset first
screen in response to the first touch input,
[iii.] while the first screen is displayed, detect a
reception of a second touch input received
through the touch screen to display at least part of
a second screen, and
[iv.] control the touch screen to dynamically replace at
least part of the first screen with at least part of
the second screen in response to the second touch
input while the first screen is being displayed,
[v.] wherein the second screen is a screen displayed
before the touch screen transitioned to the off-
state, and
[vi.] wherein while the at least part of the first screen is
dynamically replaced with the at least part of the
second screen, the first screen and the at least part
of the second screen are displayed
conterminously.
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39. An electronic device comprising:
[A.] a touch screen having a display; and
[B.] a controller configured to:
[i.] detect a reception of a first touch input, received
through the touch screen, for releasing an off-state
of the display of the touch screen while the
display is in the off-state,
[ii.] control the touch screen to display a preset first
screen in response to the first touch input,
[iii.] while the first screen is displayed, detect a
reception of a touch and drag input received
through the touch screen, and
[iv.] responsive to the touch and drag input, control the
touch screen to dynamically replace a first part of
the first screen with a first part of a second
screen while the first screen is being displayed,
wherein a remaining part of the first screen and
the first part of the second screen are displayed
contiguously during the dynamic replacement,
and
[v.] wherein while the at least part of the first screen is
dynamically replaced with the at least part of the
second screen, the first screen and the at least part
of the second screen are displayed
conterminously.

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Application 12/881,277

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REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Shiraishi US 6,597,378 B1 July 22, 2003
Linjama US 2008/0229255 A1 Sept. 18, 2008
Nakaoka US 2009/0141948 A1 June 4, 2009
Li US 2009/0222756 A1 Sept. 3, 2009
Teng US 2010/0248689 A1 Sept. 30, 2010
Gossweiler US 8,136,167 B1 Mar. 13, 2012

REJECTIONS
A.
The Examiner rejects claims 21, 26, 29, and 34, under 35 U.S.C.
§ 103 as being unpatentable over the combination of Gossweiler, Li, and
Shiraishi. Final Act. 2–9.
Appellant argues separate patentability for claim 21. Appellant does
not present separate arguments for claims 26, 29, and 34. We select claim
21 as the representative claim for this rejection. Except for our ultimate
decision, we do not address claims 26, 29, and 34 further herein.
B.
The Examiner rejects claim 39 under 35 U.S.C. § 103 as being
unpatentable over the combination of Gossweiler, Teng, and Li. Final Act.
16–20. Appellant argues separate patentability for claim 39.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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C.
The Examiner rejects claims 23–25, 27, 28, 31–33, 35–38, 40, and 41
under 35 U.S.C. § 103 as being unpatentable over various combinations of
Gossweiler, Li, and numerous other references. Final Act. 9–16 and 20–23.
Appellant does not present separate arguments for claims 23–25, 27,
28, 31–33, 35–38, 40, and 41. Thus, the rejection of these claims turns on
our decisions as to claims 21 and 39. Except for our ultimate decision, we
do not address the merits of the § 103 rejections of claims 23–25, 27, 28,
31–33, 35–38, 40, and 41 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
Applicant respectfully submits that the combination of
Gossweiler, Li and Shirashi fail to show the limitation recited in
claims 21, 29 and 39:
“. . . wherein while the at least part of the first screen is
dynamically replaced with the at least part of the second screen,
the first screen and the at least part of the second screen are
displayed conterminously.”
Applicant notes the limitation in question is rejected based
on a citation from Li, citing to FIG. 3C.
Appeal Br. 10.
Contrary to the assertions of the Final Office Action,
applicant respectfully submits Li fails to remedy the defect in
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Gossweiler and Shiraishi with respect to the amended limitation
because Li interposes an upturned page effect between a
current page and a next page to be displayed. As seen in FIGS.
3B–3E of Li, the upturned page effect occupies a blank display
space disposed between the current page and the next page, of
which FIG. 3C is . . . an example . . .
As indicated by the [claim] word “conterminously,” the
two screens share a common boundary and do not have a third
element interposed between them, as seen for example in 710C
of [Appellant’s] FIG. 7.
Appeal Br. 11.
We are unpersuaded by Appellant’s argument. First, we construe the
critical term “conterminously” of claim 21. Reviewing the Specification, we
find no use of the term “conterminous” or similar terms (i.e., “contiguous,”
“coterminous”) discussed infra. Rather, Appellant discloses:
[A] first screen typically refers to a screen covering a second
screen. User can approach the second screen at last after skinning
the first screen.
Spec. 4:25–5:2. Appellant then discloses:
The first screen is a screen which covers the second screen by the
zipper 320, the button or the like instead of displaying the second
screen like a fourth drawing 310d of FIG. 3.
Spec. 8:9–12. Appellant further discloses:
Referring again to FIG. 2, the touch screen 110 displaying
the first screen receives a screen change input. The screen change
input is an input for changing the first screen into the second
screen. When the screen change input is sufficient, all of the first
screen is changed to the second screen, whereas a part of the
screen is changed when only a part of screen change input is
inputted. For example, when user drags a handle 321 of the
zipper 320 such that the center of the handle 321 of the zipper
320 reaches the distance within 20 pixels (preset distance) from
the downside of screen, the screen change input can be
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considered sufficient and the first screen can be changed into the
second screen. On the other hand, when the center of the handle
321 of the zipper 320 is positioned in the distance further than 20
pixels (preset distance) from the downside of screen,
accordingly, only a part of screen is changed from the first screen
to the second screen. However, this partial change may cause the
user to desire to see the whole second image, and thus move the
zipper image the rest of the way.
Spec. 8:21–9:11. Appellant’s use of the term “conterminous” is consistent
with Dictionary.com3, which states that the term “conterminous” means:
adjective
1) having a common boundary; bordering; contiguous
2) meeting at the ends; without an intervening gap: In our
calendar system, the close of one year is conterminous with the
beginning of the next.
3) coterminous.
In turn, the term “coterminous” means:
adjective
1) having the same border or covering the same area
2) being the same in extent; coextensive in range or scope
In addition, the term “contiguous” means:
adjective
1) touching along the side or boundary; in contact
2) physically adjacent; neighboring
We conclude that an artisan would understand the term “conterminous” to
require a common boundary.

3 Collins English Dictionary – Complete & Unabridged 2012 Digital Edition
© William Collins Sons & Co. Ltd. 1979, 1986 © HarperCollins Publishers
1998, 2000, 2003, 2005, 2006, 2007, 2009, 2012 (Accessed May 26, 2020).
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Second, we construe the various uses of the term “screen” in claim 21.
Claim 21 recites “a touch screen having a display,” “the touch screen to
display a preset first screen,” and “the touch screen to display at least part of
a second screen.” Consistent with Appellant’s Specification, we determine
an artisan would understand the “touch screen” to be a physical screen upon
which “information” (i.e., an image) is displayed. Spec. 5:17–21, 8:14–15.
Further consistent with Appellant’s Specification, we determine an artisan
would understand the “preset first screen” and “second screen” to be such
information that is displayed on the physical touch screen.
Third, the Examiner reasons:
[A]s taught by Fig. 3C of Li, the top page is 7/100 which is also
the first screen, and the bottom page is 8/100 which is also the
second screen, with part of page 7/100 displayed with an
upturned corner. The boundary between the two pages is only
one side of the upturned triangle corner area, because the
upturned corner is still considered as part of the page 7/100. The
word “conterminously” is defined as “sharing a common
boundary”. So in Fig. 3C, page 7/100 and page 8/100 does share
one common boundary which is one side of the upturned triangle
area.
Ans. 26. We agree. As we conclude each of the first and second screens are
images of information, we further conclude an artisan would understand that
in Li’s figure 3c, that a user would view the image of the top of page 7/100
(“First part”) and the image of the bottom of page 7/100 (“Second part”) as a
single image of page 7/100. Thus, the Examiner correctly determines that
figure 3c of Li describes the claimed “the first screen [page 7/100] and the at
least part of the second screen [page 8/100] are displayed conterminously.”
Id.
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A.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
[T]he present invention, as indicated by the totality of the
limitations, contemplates a specific 5-step display order for the
screens, as seen below:
1. 2nd Screen
2. Off State (e.g., upon entering into a lock mode, etc.)
3. 1st Screen (e.g., upon detecting a wake up command,
display a lock screen)
4. 1st Screen transitioning to 2nd Screen (e.g., upon
detecting a sliding unlock gesture)
5. 2nd Screen (e.g., when the unlock gesture is com-
plete)
Appeal Br. 16.
The apparent contention in the Final Office Action then
appears to be that Shiraishi can execute:
1. Displaying a second screen (e.g., the schedule function
screen);
2. Entering an off-state (e.g., the sleep mode);
3. Releasing the off-state to redisplay the second screen
(e.g., the schedule function screen).
However, applicant respectfully submits that Shiraishi is
insufficient as a cited reference for obviating the feature of the
present invention, even in combination with Li, as the
combination is far from the intended modification of Li (i.e., Li
also fails to show reversion to an earlier display), because the
references fail to produce the specific 5-step display order for the
screens indicated previously above. Accordingly, applicant
respectfully submits Shiraishi fails to remedy the defect in the
combination pertaining to the limitation “wherein the second
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screen is a screen displayed before the touch screen transitioned
to the off-state.”
Appeal Br. 20–21.
The Examiner determined:
As for the element “the second screen is a screen displayed
before the touch screen transitioned to the off-state”, the claim
language does not exactly point out the operation sequence
between the 2nd screen to the off screen. Shiraishi teaches by
Fig. 38 a transition from the a screen, which is the user operation
screen before transition to “eyelid” screen to, off state which is
the dark screen when no operation input is detected, and
transition from off state which is the dark screen back to the
screen which is the user operation screen at detecting user input
in the dark screen display mode. The “eyelid” screen could be
interpreted as the 1st screen during the transition from the 2nd
screen to the off screen. The 2nd screen which is the user
operation screen is displayed before the dark screen gets
displayed when no operation input is detected.
Ans. 28.
We are unpersuaded by Appellant’s argument. First, we agree with
the Examiner that portions of this argument are not commensurate with the
scope of the claim language that does not explicitly recite the argued specific
5-step display order for the screens.
Second, to the extent that the argument is commensurate we also
agree with the Examiner’s above reasoning that Shiraishi teaches the
transition process from a second screen to an off screen, then to a first
screen, and then to the second screen.
Therefore, we are unpersuaded by Appellant’s argument.

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B.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 39 under 35 U.S.C. § 103.
Applicant respectfully submits that Teng, like Li, also
indicates upturned page effect disposed between a present
page and a next page to be displayed, occupying a blank
space disposed between the two pages, as seen above.
Therefore, the first screen and second screen of Teng cannot be
said to be “continguous” as recited in the claims.
Appeal Br. 15.
We are unpersuaded by Appellant’s argument for the reasons
discussed in section A.1. supra. As with Li (discussed supra), the Examiner
reasons for Teng:
[A]s taught by Fig. 1 of Teng, the top page is 120 which is also
the first screen, and the bottom page is the second screen, with
part of page 120 displayed with an upturned corner. The
boundary between the two pages is only the longest side of the
upturned triangle corner area, because the upturned corner is still
considered as part of the page 120.
Ans. 29. We agree. Figure 1 of Teng describes an unlock screen 120
covering a user interface screen 122. As we did with Li, we conclude an
artisan would understand that in Teng’s figure 1, that a user would view the
image of the top of the unlock screen and the image of the underneath of the
unlock screen (the triangle) as a single image of the unlock screen. Thus,
the Examiner correctly determines that figure 1 of Teng describes the
claimed “are displayed contiguously.”

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CONCLUSION
The Examiner has not erred in rejecting claims 21, 23–29, and 31–41
as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 21, 23–29, and 31–41 as being
unpatentable under 35 U.S.C. § 103 are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References  Affirmed Reversed
21, 26, 29,
34
103 Gossweiler, Li,
Shiraishi
21, 26, 29,
34

23, 24, 27,
28, 31, 32,
35, 36
103 Gossweiler, Li,
Shiraishi, Teng
23, 24, 27,
28, 31, 32,
35, 36

25, 33 103 Gossweiler, Li, Teng,
Shiraishi, Linjama
25, 33
37, 38 103 Gossweiler, Li,
Shiraishi, Nakaoka
37, 38
39 103 Gossweiler, Teng, Li 39
40 103 Gossweiler, Teng, Li,
Nakaoka
40
41 103 Gossweiler, Teng, Li,
Shiraishi
41
Overall
Outcome

21, 23–29,
31–41

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