Colley, Ashley

Patent Trials and Appeals Board

Jun 16, 2020

2019002239 (P.T.A.B. Jun. 16, 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.
13/567,554 08/06/2012 Ashley Colley 042933/423611 7299
10949 7590 06/16/2020
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
NGUYEN, CHAU T
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
06/16/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ASHLEY COLLEY
____________

Appeal 2019-002239
Application 13/567,554
Technology Center 2100
____________

Before JAMES B. ARPIN, ADAM J. PYONIN, and SCOTT RAEVSKY,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a), the Examiner’s final
rejections of claims 1–8, 10–13, and 16–33. Final Act. 2.2 Claims 9, 14,
and 15 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Nokia Technologies Oy.
Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
July 23, 2018); the Final Office Action (“Final Act.,” mailed June 28, 2017)
and the Examiner’s Answer (“Ans.,” mailed November 19, 2018); and the
Specification (“Spec.,” filed August 6, 2012). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed methods, apparatus, and computer-readable
memory media “relate[] to responding to selection of a displayed character
string.” Spec., 1:4. In particular,
The method may comprise, subsequent to predicting the location
for modification, positioning a cursor within the selected
character string based on the predicted location.
The displayed character string may be a correctly spelled word.
In a second aspect, this specification describes apparatus
comprising at least one processor and at least one memory
including computer program code, the at least one memory and
the computer program code configured to, with the at least one
processor, cause the apparatus to cause a character string to be
displayed on a display, to receive a signal indicative of user input
for selecting the displayed character string and to respond to the
signal by using a language engine to predict a location within
the selected character string for modification of the selected
character string.
Id. at 2:26–32 (emphases added).
As noted above, claims 1–8, 10–13, and 16–33 stand rejected.
Claims 1, 16, and 33 are independent. Appeal Br. 11 (claim 1), 16 (claim
13), 15 (claim 30) (Claims App.). Claims 2–8, 10–13, and 31–33 depend
directly or indirectly from claim 1; and claims 17–29 depend directly or
indirectly from claim 16. Id. at 11–16.
Claim 1 recites “[a] method”; claim 12 recites an “[a]pparatus
comprising at least one processor and at least one non-transitory memory
including computer program code, the at least one memory and the computer
program code configured to, with the at least one processor, cause the
apparatus” to perform the steps of claim 1; and claim 30 recites “[a]t least
one non-transitory computer readable memory medium having computer
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readable instructions stored thereon, the computer readable instructions,
when executed by at least one processor, causing the at least one processor”
to perform the steps of claim 1. Id. at 11, 13, 15. The Examiner relies on
the same references and substantially similar arguments in rejecting claims
1, 16, and 30 (Final Act. 2–5, 7); and, with the exception of claims 32 and
33, Appellant does not contest the rejections of claims 2–8, 10–13, 17–29,
and 31 separately from claim 1 (see Appeal Br. 8).
Claim 1, reproduced below with disputed limitations emphasized, is
representative.
1. A method comprising:
causing a character string to be displayed on a display, the
character string being a word recognized as being spelled
correctly;
receiving a signal indicative of user input for selecting and
allowing for modifying of the displayed character string;
responding to the signal by using a language engine to
predict a most probable location of an error within the selected
character string; and
positioning a cursor within the selected character string
based on the predicted most probable location of an error to
allow for modification of the selected character string.
Id. at 11 (emphasis added).

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REFERENCES AND REJECTION
The Examiner relies upon the following references in rejecting the
claims:
Name3 Number Publ’d/Issued Filed
Williams US 7,155,683 B1 Dec. 26, 2006 Feb. 22, 2000
Nordenhake US 2006/0206816 A1 Sept. 14, 2006 Mar. 11, 2005
Huang US 2010/0292984 A1 Nov. 18, 2010 Sept. 22, 2008
Specifically, claims 1–8, 10–13, and 16–33 are rejected as unpatentable
under 35 U.S.C. § 103 over the combined teachings of Nordenhake, Huang,
and Williams. Final Act. 2–8.
Appellant contests the obviousness rejection of independent claim 1
(Appeal Br. 6–8) and relies on the alleged deficiencies in that rejection to
overcome the rejection of the independent claims 16 and 30 and of the
dependent claims (id. at 8). Because we determine that reversal of the
rejection of independent claim 1 is dispositive, except for our ultimate
decision, we do not discuss the merits of the rejections of claims 2–8, 10–13,
and 16–33 further herein. We review the appealed rejection of independent
claim 1 for error based upon the issues identified by Appellant, and in light
of the contentions and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential). We address the rejection
of claim 1 below.
ANALYSIS
1. Obviousness of Claim 1 Over Nordenhake, Huang, and Williams
As noted above, the Examiner rejects independent claim 1 as obvious

3 All reference citations are to the first named inventor only.
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over the combined teachings of Nordenhake, Huang, and Williams. Final
Act. 3–4. The Examiner finds that Nordenhake and Huang teach or suggest
the majority of the limitations of claim 1. Id. at 2–4. Nevertheless, the
Examiner finds, “Nordenhake and Huang . . . do not disclose ‘predict a most
probable location of an error within the selected character string; and
positioning the selected character string based on the predicted most
probable location of an error to allow for modification of the selected
character string.’” Id. at 4 (emphasis in original); see Ans. 10–11.
As noted above, claim 1 recites,
responding to the signal by using a language engine to
predict a most probable location of an error within the selected
character string; and
positioning a cursor within the selected character string
based on the predicted most probable location of an error to
allow for modification of the selected character string.
Appeal Br. 11 (Claims App.) (emphases added). The Examiner finds,
because “the character string being a word recognized as being spelled
correctly” (id. (emphasis added)), there is no “error” in the displayed
character string (Ans. 10). Consequently, the Examiner interprets the term
“location of error” as a “desired location.” Id.
Given the Examiner’s interpretation of the term “location of an error,”
the Examiner finds:
In the same field of endeavor, Williams further discloses
if the user wants to add a new word to the end or beginning of an
existing word by using the predictive editor program, this is
simply done by first moving the cursor to the end or beginning
(location or position) of the existing word, and from here the
user simply starts typing the new word (col. 9, lines 5-9).
William further discloses the editor application open[s] the
already written word for editing with the predictive editor
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program by placing the cursor in the desired position (most
probable location of an error), then the editor application
regenerates the sequence of key strokes based on the presently
displayed matching word, and when the editor application adds
new key strokes to the regenerated sequence of key strokes in
dependence of the position of the cursor and the key pressed, this
new string is used by the predictive editor program to find new
matched (col. 9, lines 10-31).
Ans. 11 (emphasis in original); see Final Act. 4. The Examiner concludes
that a person of ordinary skill in the art would have had reason to combine
the teachings of Williams with those of Nordenhake and Huang to achieve
the method of claim 1. Final Act. 5; Ans. 11.
Initially, we determine the Examiner erred in interpreting the term
“location of an error” as “desired location” in claim 1 for two reasons. First,
the Examiner’s interpretation improperly reads the word “error” out of
Appellant’s claim and results in an unreasonably broad interpretation of this
term. The Examiner may not ignore the words chosen by Appellant in
interpreting the claim terms. See Merck & Co. v. Teva Pharms. USA, Inc.,
395 F.3d 1364, 1372 (Fed. Circ. 2005) (“A claim construction that gives
meaning to all the terms of the claim is preferred over one that does not do
so.”) Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed.
Cir. 2004) (stating that interpretations of claims rendering claim terms
superfluous is generally disfavored).
Second, the Examiner’s interpretation is not consistent with the
Specification’s disclosure. In re Morris, 127 F.3d 1048, 1053 (Fed. Cir.
1997) (“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
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afforded by the written description contained in the applicant’s
specification.”). In Figures 2A–2C of the application, a series of character
strings reading, “The jail stones were falling,” is displayed in the text display
region of a mobile device. Spec., 7:15–18, Figs. 2A-2C. The Specification
explains:
The series of words 200 displayed in the text display region
20-1 says “The jail stones were falling”. This is the result of an
error by the user who intended to type “hail” instead of “jail”.
However, the mistake was easy to make because the “h” and “j”
keys are located beside one another on the virtual keyboard
20-2. Also, because “jail” is a real word, the language engine 16
did not recognise it as a mistake and so did not correct it
automatically.
Id. at 7:34–8:3. Although the user spelled “jail” correctly, the word contains
an error. The user intended to type “hail,” but incorrectly typed “j,” instead
of “h.” Thus, the “location of an error” in the correctly spelled word “jail” is
the letter “j” in the word “jail.” See also id., Figs. 4A–4C (“fat” typed,
instead of “cat”), 6A–6C (“car” typed, instead of “cab”), 9A–9B (“fame”
typed, instead of “game”). In most of the depicted instances, the key for the
correct letter is located adjacent to the key for the incorrect letter. Moreover,
Figure 9C depicts the positioning of cursor 96 at the location of an error, i.e.,
adjacent to the letter “f” in “fame.” Id. at 18:6–13, Fig. 9C. Consequently,
we interpret the term “location of an error” to encompass the location of a
mistyped letter in an otherwise correctly spelled word.
As noted above, the Examiner finds Williams teaches or suggests
“predict[ing] a most probable location of an error within the selected
character string and positioning the selected character string based on the
predicted most probable location of an error to allow for modification of
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the selected character string.” Ans. 10–11 (citing Williams, 9:5–31); see
Final Act. 4. We disagree.
Williams discloses:
If the user moves the cursor 70 through several
consecutive spaces, the cursor 70 will be moved one space at a
time. Also, when moving through symbols, numbers, etc., the
cursor is moved one character at a time.
If the user wants to add a new word to the end or beginning
of an existing word by using the predictive editor program, this
is simply done by first moving the cursor to the end or beginning
of the existing word, respectively. From here, the user simply
starts typing the new word.
The editor application opens the already written word for
editing with the predictive editor program by placing the cursor
in the desired position. Then the editor application regenerates
the sequence of key strokes based on the presently displayed
matching word. When the editor application adds new key
strokes to the regenerated sequence of key stokes in dependence
of the position of the cursor and the key pressed. [T]his new
string is used by the predictive editor program to find new
matches.
If the user wants to edit an existing word by using the
predictive editor program, this is done first by moving the cursor
just after the word (activating the word in question causing it to
be underlined). Then the user can directly add e.g. an ending to
the word or if desired, can delete characters by pressing the clear
key 9.
Williams, 9:1–24 (emphasis added). Thus, Williams discloses that the user
chooses where to begin typing, and the predictive editor merely places the
cursor at the position desired by the user.
Appellant contends,
the Examiner suggests that “Williams further discloses the editor
application open[s] the already written word for editing with the
predictive editor program by placing the cursor in the desired
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position (most probable location of an error), then the editor
application regenerates the sequence of key strokes based on the
presently displayed matching word . . .’ This assertion is
incorrect. The Examiner’s added wording “(most probably
location of an error)” to the words “desired position” when
referring to Williams is presumably done because there is no
passage in Williams that can [explicitly] or implicitly achieve
“responding to the signal by using a language engine to predict a
most probable location of an error within the selected character
string and positioning a cursor within the selected character
string based on the predicted most probable location of an error
to allow for modification of the selected character string,” as
recited by independent Claim 1.
. . .
While Williams’s predictive editor program is evolving a match
during the inputting of a word, such prediction methodology does
not “predict a most probable location of an error within the
selected character string,” as is recited in one form or another
by the independent claims. As such, there is no way to “position
a cursor within the selected character string based on the
predicted most probable location of an error to allow for
modification of the selected character string” from Williams’s
predictive editor. Accordingly, Williams does not disclose or
suggest this same feature recited in the independent claims for
which the other cited references are admittedly deficient.
Appeal Br. 7–8 (emphases added; quoting Final Act. 4). Given William’s
disclosure and our interpretation of the term “location of an error,”
Appellant persuades us that the Examiner erred in the application of the
teachings of Williams to those of Nordenhake and Huang.
The Examiner has not relied on any of the other cited references to
teach this limitation. Consequently, we are persuaded that the Examiner
erred in rejecting claim 1, and we do not sustain the obviousness rejection of
claim 1.
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2. The Remaining Claims
As noted above, claims 16 and 30 recite limitations corresponding to
the disputed limitations of claim 1, and Appellant challenges the rejection of
independent claims 16 and 30 for the same reason as claim 1. Appeal Br. 8;
see Final Act. 7. Each of claims 2–8, 10–13, 17–29, 32, and 33 depends
directly or indirectly from independent claim 1 or 16. Id. at 11–16 (Claims
App.). Because we are persuaded the Examiner erred with respect to the
obviousness rejection of claim 1, we also are persuaded the Examiner erred
with respect to the obviousness rejections of claims 16 and 30, as well as to
the pending claims dependent therefrom. For this reason, we do not sustain
the rejection of those claims.
DECISIONS
1. The Examiner erred in rejecting claims 1–8, 10–13, and 16–33 under
35 U.S.C. § 103 as rendered obvious over the combined teachings of
Nordenhake, Huang, and Williams.
2. Thus, on this record, claims 1–8, 10–13, and 16–33 are not
unpatentable.
CONCLUSION
For the above reasons, we reverse the Examiner’s decision rejecting
claims 1–8, 10–13, and 16–33.
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–8, 10–13,
16–33
103 Nordenhake,
Huang, Williams

1–8, 10–13,
16–33
Overall
Outcome
1–8, 10–13,
16–33
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REVERSED