Ex Parte Kuhl et al

Board of Patent Appeals and Interferences

Feb 14, 2012

10935620 (B.P.A.I. Feb. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAWRENCE EDWARD KUHL, and
GERHARD DIETRICH KLASSEN
____________

Appeal 2010-001141
Application 10/935,620
Technology Center 2100
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s non
final rejection of claims 1-10, 19, 21-30, 39, and 41-43, which are the
remaining claims in the application. Claims 11-18, 20, 31-38, and 40 were
cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Invention
Appellants’ invention relates generally to graphic object insertion
methods. More particularly, the present invention is directed to a system
and method for selecting graphic objects to insert in a text message when
composed on a wireless device, each of the graphic objects representing a set
of individual alphanumeric characters. (Spec. 2, ll. 7-10).

Illustrative Claim

1. A system for selecting graphic objects to insert in a text
message when composed on a wireless device, the system
comprising:
a symbol table for display on a user interface of the
wireless device in response to a first input event, the symbol
table comprising a plurality of individual alphanumeric
character selections;
an object table for display on the user interface of the
wireless device in response to a second input event, the object
table comprising a plurality of graphic objects and a plurality of
predefined inputs, each of the predefined inputs associated with
one of the plurality of graphic objects;
a first input event component executing the first input
event and the second input event; and
a second input event component executing a third input
event, the third input event component mapped to one of the
plurality of predefined inputs;
wherein the third input event selects a graphic object
associated with the predefined input from the plurality of
graphic objects and inserts the selected graphic object in the
text message.
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(disputed limitation emphasized).

Examiner’s Rejection
Claims 1-10, 19, 21-30, 39, and 41-43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dahan (US Pat. Pub.
2006/0009243 ), Baker (US 5,748,177), and Cunningham (US Pat. Pub.
2006/0015812 A1).

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive of this appeal:

Did the Examiner err in finding that the cited combination of
Dahan, Baker, and Cunningham would have taught or
suggested “a first input event component executing the first
input event and the second input event,” within the meaning of
claim 1, and the commensurate language of independent claims
21 and 41?

ANALYSIS
Appellants contend that the Examiner failed to designate as nearly as
practicable the particular portions of Baker relied upon to teach or suggest
the limitation at issue. (App. Br. 6-7). We agree. As pointed out by
Appellants (App. Br. 6):
When a reference is complex or shows or describes inventions
other than that claimed by the applicant, the particular part
relied on must be designated as nearly as practicable. The
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Application 10/935,620

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pertinence of each reference, if not apparent, must be clearly
explained and each rejected claim specified.

See 37 C.F.R. § 1.104(c)(2) (emphasis added).

In reviewing the record before us, we are in agreement with
Appellants that speculation is required to ascertain exactly how the
Examiner is reading the limitation at issue on the eighteen (18) columns of
text in the Baker reference, cited on page 4 of the Answer.
We note that the allocation of burdens requires that the USPTO
produce the factual basis for its rejection of an application under 35 U.S.C.
§§ 102 and 103. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)
(citing In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). The one who
bears the initial burden of presenting a prima facie case of unpatentability is
the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima
facie case is established when the party with the burden of proof points to
evidence that is sufficient, if uncontroverted, to entitle it to prevail as a
matter of law. See Saab Cars USA, Inc. v. United States, 434 F.3d 1359,
1369 (Fed. Cir. 2006).
In an ex parte appeal, the Board “is basically a board of review — we
review . . . rejections made by patent examiners.” Ex parte Gambogi,
62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C.
Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard
to examine the application and resolve patentability in the first instance.” Ex
parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999).
Because the Board is “basically a board of review,” Gambogi,
62 USPQ2d at 1211, and not a place of initial examination, we will not
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engage in the de novo examination required to precisely map the limitation
at issue to eighteen columns of text in the Baker reference. To affirm the
Examiner on this record would require considerable speculation on our part.
We decline to engage in speculation.
For essentially the same reasons argued by Appellants in the Brief (as
further discussed above), on this record we cannot affirm the Examiner’s
obviousness rejection of independent claims 1, 21, and 41. Therefore, we
reverse the obviousness rejection for each independent claim before us on
appeal, and for the same reasons we also reverse the Examiner’s
obviousness rejection of each dependent claim.

DECISION
We reverse the §103 rejection of claims 1-10, 19, 21-30, 39, and 41-
43.

ORDER
REVERSED

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