Ex Parte Pathiyal et alDownload PDFPatent Trial and Appeal BoardJan 29, 201511075386 (P.T.A.B. Jan. 29, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte KRISHNA K. PATHIYAL and JASON T. GRIFFIN _____________ Appeal 2012-008767 Application 11/075,386 Technology Center 2600 ______________ Before MARC S. HOFF, DAVID M. KOHUT, and BRETT C. MARTIN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 15, 8, 9, 1114, 17, 18, 20, and 21.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. INVENTION The invention is directed to a device and method of replacing a word that was created by a particular key depression sequence on the text display 1 Claims 6, 7, 10, 15, 16, and 19 were previously cancelled. App. Br. 6. Appeal 2012-008767 Application 11/075,386 2 of an electronic device with a proposed word. Spec. 14, Abstract. Claim 1 is illustrative of the invention and is reproduced below: 1. A method of replacing a first word in a text component displayed by an electronic device, said first word having being [sic] resulted from a key depression sequence previously input into said electronic device, said electronic device having a text disambiguation function, said text disambiguation function having caused said electronic device to generate and display a list of proposed words based on said key depression sequence when said key depression sequence was input into said electronic device, the method comprising: receiving an identification of said first word in said text component; responsive to said receiving an identification, determining whether or not said list of proposed words is stored in a memory of said electronic device; determining that a cursor is positioned in proximity to said first word in said text component for at least a predetermined amount of time; displaying, if it is determined that said list of proposed words is stored in said memory, said list of proposed words that is stored in said memory on said electronic device; receiving an indication of a selected one of said proposed words; and replacing said first word with said selected one of said proposed words in said text component. App. Br. 19. REFERENCES Grover US 5,818,437 Oct. 6, 1998 Bollman US 7,081,837 B2 July 25, 2006 Kupka US 7,164,410 B2 Jan. 16, 2007 Kushler US 7,453,439 B1 Nov. 18, 2008 Appeal 2012-008767 Application 11/075,386 3 REJECTIONS AT ISSUE Claims 1–4, 8, 9, 11–13, 17, 18, 20, and 21 are rejected under 35 U.S.C. § 103(a) as obvious over the combination of Bollman, Kushler, and Kupka. Ans. 5–18. Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as obvious over the combination of Bollman, Kushler, Kupka, and Grover. Ans. 19–20. ISSUES Did the Examiner err in finding that the combination of Bollman, Kushler, and Kupka teaches or suggests: (a) “determining whether or not said list of proposed words is stored in a memory of said electronic device;” or (b) “determining that a cursor is positioned in proximity to said first word in said text component for at least a predetermined amount of time” as recited in claim 1 and similarly required by claims 11, 20, and 21? ANALYSIS Rejection of claim 1 over Bollman, Kushler, and Kupka Appellants contend that the Examiner erred in finding that the combination of Bollman, Kushler, and Kupka teaches or suggests the determination step from claim 1 that requires the cursor to be positioned in proximity to a word for a predetermined amount of time. App. Br. 14. Specifically, Appellants contend that Bollman teaches moving the cursor to a particular location and Kupka teaches hovering the cursor over a zone. App. Br. 14. Therefore, Appellants contend that these two references differ as to what the cursor is placed in proximity to. App. Br. 14. Appeal 2012-008767 Application 11/075,386 4 We do not find Appellants’ arguments to be persuasive as they amount to attacking the references individually. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references”. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted). Here, the Examiner finds that the combination of the references is utilized to teach the claim elements, whereby the Examiner finds that it would have been obvious to a person of ordinary skill in the art at the time of the invention to select a word as taught by Bollman by hovering a cursor over the particular location as taught by Kupka.2 Ans. 7. The Examiner finds that one of ordinary skill in the art would have made this combination “in order to reduce the number of keystrokes a user has to enter in order to correct [a] word, and reduce the number of instances of menus being displayed erroneously.” Ans. 7. Additionally, we find that the combination merely constitutes a predictable use of prior art elements according to their established functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants also argue that the Examiner erred in finding that the combination of references teaches or suggests “determining whether or not said list of proposed words is stored in a memory by said electronic device,” as recited in claim 1. App. Br. 15. Instead, Appellants contend that Kushler 2 We note that the Examiner finds that display of the list of words in Bollman is instant and not a predetermined amount of time. Ans. 21. Appellants do not make any significant arguments toward this limitation of the claim. Even so, the Examiner indicates that this is nothing more than a delay feature and would have been known by one skilled in the art. Ans. 21. However, we find that instantly is a predetermined amount of time. Appeal 2012-008767 Application 11/075,386 5 only teaches a list of likely matching words using a record of a predetermined number of recently outputted words. App. Br. 15. Again, we do not find Appellants’ arguments persuasive. The Examiner finds that Kushler teaches displaying a list of candidate words for previously entered words. Ans. 21. As such, we agree with the Examiner (Ans. 21–22) that Kushler’s system inherently must have determined whether a list of proposed words was stored in order to display a list of proposed words. Otherwise, a list would not be displayed. Therefore, for all the reasons stated supra we sustain the Examiner’s rejection of claim 1. Rejection of claims 2–4, 8, 9, 11–13, 17, 18, 20, and 21 over Bollman, Kushler, and Kupka Appellants argue that claims 11, 20, and 21 contain similar limitations and are allowable for the same reasons as indicated supra with respect to claim 1. App. Br. 16. Additionally, Appellants contend that dependent claims 2–4, 8, 9, 12, 13, 17, and 18 are also allowable for the same reasons as indicated supra with respect to claim 1. App. Br. 16. As a result, we sustain the Examiner’s rejection of claims 2–4, 8, 9, 11–13, 17, 18, 20, and 21 for the same reasons as indicated supra with respect to claim 1. Rejection of claims 5 and 14 over Bollman, Kushler, Kupka, and Grover Appellants make the same arguments with respect to claims 5 and 14 as with respect to claims 1 and 11. App. Br. 16–17. Thus, we sustain the Examiner’s rejection of claims 5 and 14 for the reasons stated supra with respect to claims 1 and 11. Appeal 2012-008767 Application 11/075,386 6 CONCLUSION The Examiner did not err in finding that the combination of Bollman, Kushler, and Kupka teaches or suggests: (a) “determining whether or not said list of proposed words is stored in a memory of said electronic device;” or (b) “determining that a cursor is positioned in proximity to said first word in said text component for at least a predetermined amount of time” as recited in claim 1 and similarly required by claims 11, 20, and 21. SUMMARY The Examiner’s decision to reject claims 1–5, 8, 9, 11–14, 17, 18, 20, and 21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation