Ex Parte Blair et alDownload PDFBoard of Patent Appeals and InterferencesJul 23, 201211170676 (B.P.A.I. Jul. 23, 2012) Copy Citation 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 Appeal 2009-011884 Application 11/170,676 2 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 Appeal 2009-011884 Application 11/170,676 3 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. Appeal 2009-011884 Application 11/170,676 4 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 Appeal 2009-011884 Application 11/170,676 5 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. Appeal 2009-011884 Application 11/170,676 6 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. Appeal 2009-011884 Application 11/170,676 7 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). Appeal 2009-011884 Application 11/170,676 8 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). Appeal 2009-011884 Application 11/170,676 9 For these reasons, I would affirm the Examiner’s rejection of claims 1, 4-7, and 9-20. dw Copy with citationCopy as parenthetical citation