Ex Parte Blair et al

Board of Patent Appeals and Interferences

Jul 23, 2012

11170676 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte COLIN BLAIR, KEVIN CHAN, CHRISTOPHER R. GENTLE,
NEIL HEPWORTH, and ANDREW W. LANG
____________________

Appeal 2009-011884
Application 11/170,676
Technology Center 2100
____________________

Before ERIC S. FRAHM, DAVID M. KOHUT, and
TREVOR JEFFERSON, Administrative Patent Judges.

Opinion for the Board filed by FRAHM, Administrative Patent Judge.

Opinion Dissenting filed by KOHUT, Administrative Patent Judge.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 4-7, and 9-20, all of the pending claims in the application. Claims
2, 3, and 3 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
Appellant’s Invention
Appellants have invented a method and apparatus for completing
composite characters (e.g., Chinese characters) for use in text messaging
with cellular telephones (Title; Spec. 1:1-14). Characters in language that
use complex written symbols (e.g., Chinese) can use up to nine strokes, and
are thus difficult to enter into communications and computer devices (Spec.
2:1-2). As a result, “there is a predefined order in which the strokes
comprising different word shapes, and the different word shapes comprising
different characters, are to be written” (Spec. 2:8-10), and “automated lists
that may be available to facilitate the entry of Chinese characters will not
contain the desired character if the first stroke or word shape entered by the
user is not the first stroke or word shape that is traditionally written in
forming that character” (Spec. 2:14-17). Appellants’ invention allows
autocompletion of complex characters “without requiring that the
components of such words or characters be entered in a predefined order”
(Spec. 3:17-18). Appellants’ invention does so by allowing a user to make
an entry indicating a letter, stroke or word shape that is not part of the
desired word or character in order to subtract a selected letter, stroke or word
shape and thus narrow a list of candidate word or characters (Spec. 3:26 to
4:2). Appellants disclose and claim a method for autocompleting written
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characters by (1) identifying characters having a first shape, and then (2)
subtracting a selected second shape from the characters having the first
shape (claim 1; Spec. 3:26-4:2).
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis and
bracketed numbering added, reads as follows:

1. A method for specifying a written character, comprising:

receiving a selection of a first character shape;

identifying a first plurality of characters containing said first character
shape;

displaying at least one of said first plurality of identified characters;

receiving a selection of a subtraction mode;

[1] receiving a selection of a second character shape;

[2] in response to said selection of a second character shape,
modifying said first plurality of characters to obtain a second plurality of
characters, wherein said second plurality of characters includes only
characters containing said first selected shape but not said second selected
shape; and

[3] displaying at least one of said second plurality of identified
characters.

Rejection
The Examiner rejected claims 1, 4-7, and 9-20 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Lakritz (US 5,586,198)
and Comer (US RE39,326 E). Ans. 3-7.

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Examiner’s Findings and Determinations
The Examiner determines that “Lakritz fails to teach receiving a
selection of a subtraction mode” (Ans. 4), and relies upon Comer’s filtering
mechanism described at column 19, lines 10-26 as teaching the recited
subtraction mode (Ans. 4-5 and 8-10). Comer discloses that several
different filtering mechanisms can be used, including:
(i) a first filtering mechanism that limits data to alphabetical or alpha-
numeric entries and excludes numeric entries;
(ii) a second filtering mechanism to eliminate duplicate items from the
data list;
(iii) limiting data items to those entered multiple times;
(iv) limiting data items to those that conform to certain formatting
restrictions; and
(v) limiting data items to those that exceed a certain number of
characters. Comer, col. 19, ll. 10-26.
Specifically, the Examiner points to Comer’s “first filtering
mechanism” which “includes limiting the data items to alphabetical or
alpha-numeric entries, and hence, excluding numeric entries” (col. 19, ll. 12-
15), as teaching or suggesting the modification and selection of characters
based on shape set forth in claims 1, 14, and 19 (see, e.g., claim 1, “wherein
said second plurality of characters includes only characters containing said
first selected shape but not said second selected shape”). Ans. 9-10.
“[T]he Examiner contends that Comer does teach filtering based on
shape” (Ans. 10) by limiting data items to alphabetical or alpha-numeric
entries and excluding numeric entries. The Examiner also determines that
Appellants’ subtraction mode is similar to Comer’s “concept of filtering
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information” (Ans. 9), but does not articulate which of the five listed
filtering mechanisms (see supra Comer’s filtering mechanisms (i)-(v))
corresponds to the subtraction mode recited in claims 1 and 19.
However, nowhere in the Answer does the Examiner articulate how
the limitation “receiving a selection of a subtraction mode” (claims 1 and
19) is met by Comer (see generally Ans. 3-10).
Appellants’ Contentions1
Appellants contend (Br. 9 and 10-12), inter alia, that the Examiner
erred in rejecting claims 1, 4-7, and 9-20 under 35 U.S.C. § 103(a) over the
combination of Lakritz and Comer because neither Lakritz nor Comer teach
or suggest the selection of a subtraction mode recited in claims 1, 14, and 19.
Issue on Appeal
Did the Examiner err in rejecting claims 1, 4-7, and 9-20 as being
obvious because Comer fails to teach or suggest the limitations of (i)
“receiving a selection of a subtraction mode,” as recited in independent
claims 1 and 19, and (ii) performing certain actions “in response to a
selection of a subtraction mode by a user,” as recited in claim 14?

ANALYSIS
Claims 1 and 19 recite “receiving a selection of a subtraction mode.”
Reading claims 1 and 19 each as a whole, and in light of the Specification
(see supra, inter alia, Appellants’ Invention), it is evident that the
subtraction mode that is selected includes the steps of limitations [1], [2],

1 We recognize that Appellants’ arguments present additional issues. App.
Br. 6-12. We do not reach the additional issues as this issue is dispositive of
the appeal.

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and/or [3] being performed (see, e.g., exemplary claim 1). The subtraction
of a second character shape from characters having a first shape is a critical
element of the solution to the autocompletion problem for complex written
characters identified by Appellants. Thus, we do not agree with the
Examiner’s attempt to read these “selection of a subtraction mode”
limitations out of the claims based on there being no connection to other
claim limitations (see Ans. 8, first full paragraph).
Claim 14 similarly recites performing certain actions “in response to a
selection of a subtraction mode by a user.”
We agree with Appellants’ contention specifically addressed supra.
The Examiner has failed to show where or how the combination of Lakritz
and Comer teaches or suggests the selection of a subtraction mode. Lakritz
and Comer fail to teach or suggest the limitations of (i) “receiving a
selection of a subtraction mode,” as recited in independent claims 1 and 19,
and (ii) performing certain actions “in response to a selection of a
subtraction mode by a user,” as recited in claim 14. Comer’s column 19,
lines 10-26 does not teach or suggest the selection of a subtraction mode, as
recited in each of independent claims 1, 14, and 19.
In view of the foregoing, we will not sustain the Examiner’s
obviousness rejection of claims 1, 4-7, and 9-20.

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CONCLUSIONS2
(1) Lakritz and Comer fail to teach or suggest the limitations of (i)
“receiving a selection of a subtraction mode,” as recited in independent
claims 1 and 19, and (ii) performing certain actions “in response to a
selection of a subtraction mode by a user,” as recited in claim 14.
(2) Appellants have established that the Examiner erred in rejecting
claims 1, 4-7, and 9-20 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 4-7, and 9-20 have not been shown to be unpatentable.

2 In the event of further prosecution of claims 1, 4-7, and 9-13, the
Examiner’s attention is directed to 35 U.S.C. § 101 and U.S. Patent
&Trademark Office, Interim Guidance for Determining Subject Matter
Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg.
43,922 (July 27, 2010); David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010);
and U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009,
available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf; and the recent decision from the U.S.
Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S.Ct. 1289 (2012).
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DECISION
The Examiner’s decision to reject claims 1, 4-7, and 9-20 is reversed.

REVERSED

KOHUT, Administrative Patent Judge, DISSENTING:
I respectfully dissent from the Majority’s reversal of the Examiner’s
rejection of claims 1, 4-7, and 9-20. The Majority reverses the rejection of
claims 1, 4-7, and 9-20 because the Examiner reads the limitation “selection
of a subtraction mode” out of the claim since there is no connection to the
other claim limitations. Ans. 8; see also Opinion 5. Even though I agree
that the Examiner makes this assertion, the Examiner also finds that the
references teach this limitation. Ans. 8-10. Specifically, the Examiner finds
that Comer teaches a filtering mode where specific shapes are excluded.
Ans. 10. I agree with the Examiner (Ans. 4-5) that this is performing the
same function as the claimed “subtraction mode.” Additionally, the
Examiner finds that the combination of Lakritz’s inclusion of specific
characters with Comer’s exclusion of specific characters would have been
obvious in order to access desired characters in a faster way. Ans. 5. I agree
with the Examiner as this is a simple substitution of known elements
according to known methods which produces nothing more than predictable
results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, (2007).
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For these reasons, I would affirm the Examiner’s rejection of claims
1, 4-7, and 9-20.

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