Ex Parte CANDELA et al

Patent Trial and Appeal Board

Dec 21, 2018

14176758 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/176,758 02/10/2014 PIERRE C. CANDELA
79230 7590 12/26/2018
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GB920120178US 1 1973
EXAMINER
COHEN, YARON
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE C. CANDELA, STEPHANE HILLION,
THIERRY KORMANN, and FRANK WAGNER1
Appeal2018-004954
Application 14/176,758
Technology Center 2600
Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10 and 16-22, which are all the pending claims (see Final Act. 1
and App. Br. 21-26 (Claims App'x)). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies the Applicant, International Business Machines
Corp., as the real party in interest (i.e., the Appellant). App. Br. 2.
Appeal2018-004954
Application 14/176,758
Introduction
According to Appellant, the "invention relates to a method of
operating a touch-screen device and to a touchscreen device. The invention
provides a system, method and user interface for capturing diacritics on
multi-touch devices." Spec. ,r 2.
Claims 1, 6, and 21 are independent. Claim 1 is illustrative of the
claims on appeal:
1. A method of operating a touch-screen device
including a touch-screen, the method comprising:
detecting, by one or more processors, a first touch at a
first location on the touch-screen;
responsive to detection of the first touch, selecting a
selected character displayed on the touch-screen at a location
corresponding to the first location;
detecting, by one or more processors, a second touch at a
second location on the touchscreen;
responsive to detection of the second touch, selecting a
selected diacritic that is associated with the detected second
touch on the touch-screen;
selecting a selected diacritic location for display of the
selected diacritic corresponding to the second location, wherein
the second location is a location relative to the selected
character at which any diacritic is displayed regardless of which
diacritic is being displayed; and
generating, by one or more processors, a display on the
touch screen of the selected character and the selected diacritic,
wherein the selected diacritic is selectively positioned with
respect to the selected character according to the selected
diacritic location.
App. Br. 21 (Claims App'x).
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Rejections and References
Claims 1 and 3-5 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Katayama (US 2004/0012571 Al; Jan. 22, 2004) and Kun
(US 2009/0256808 Al; Oct 15, 2009). Final Act. 3---6.
Claim 2 stands rejected under§ I03(a) as unpatentable over
Katayama, Kun, and Hwang (US 2012/0274573 Al; Nov. 1, 2012). Final
Act. 7.
Claims 6 and 8-10 stand rejected under§ I03(a) as unpatentable over
Katayama and Colley (US 2012/0254786 Al; Oct. 4, 2012). Final Act. 8-
11.
Claim 7 stands rejected under§ I03(a) as unpatentable over
Katayama, Colley, and Hwang. Final Act. 11.
Claims 16-18 stand rejected under§ I03(a) as unpatentable over
Katayama, Kun, and Griffin (US 2010/0180235 Al; July 15, 2010). Final
Act. 11-14.
Claims 19 and 20 stand rejected under§ I03(a) as unpatentable over
Katayama, Colley, and Griffin. Final Act. 14.
Claims 21 and 22 stand rejected under§ I03(a) as unpatentable over
Colley and Hwang. Final Act. 14--15.
ISSUES
Based on Appellant's arguments, 2 the issues are whether the Examiner
errs in the rejections of:
(1) claims 16 and 17 (App. Br. 9-12);
(2) claim 18 (id. at 12-13);
2 Arguments not made are waived. 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
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(3) claims 19 and 20 (id. at 13-15);
(4) claims 1-5 (id. at 15-17);
(5) claims 6-10 (id. at 17-19); and
( 6) claims 21 and 22 (id. at 19-20).
ANALYSIS
Claims 1-5
Appellant argues claims 1-5 together as a group based on claim 1.
App. Br. 15-17. Claim 1 is, thus, representative of the group. 37 C.F.R.
§ 4I.37(c)(l)(iv) (2017).
Appellant contends the Examiner errs in finding Katayama teaches
"generating ... a specific touch-screen output of a selected character and a
selected diacritic, wherein the selected diacritic is located on the selected
character according to a selected diacritic location," as recited. App. Br. 15-
16 (citing Katayama ,r 51, Fig. 3). This argument is unpersuasive.
One cannot show nonobviousness by attacking references individually
when a rejection is based on a combination of references. In re Keller, 642
F.2d 413,425 (CCPA 1981). The Examiner explained that the combination
of Katayama and Kun, not Kun alone, discloses this limitation. See Final
Act. 4--5. Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. In re Keller, 642 at 425.
Appellant also contends the Examiner errs in finding Kun teaches or
suggests "responsive to detection of the second touch, selecting a selected
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diacritic that is associated with the detected second touch on the touch-
screen," as recited. App. Br. 17 (arguing that "[p]hysically drawing a
diacritic (Kun) is not 'selecting a ... diacritic', and then placing that selected
diacritic in a particular location around the letter based on the 'second
location'," as recited). This argument is also unpersuasive. The Examiner's
rejection specifically finds Katayama teaches "responsive to detection of the
second touch, selecting a selected diacritic that is associated with the
detected second touch on the touch-screen," as recited. Final Act. 4 ( citing
Katayama ,r 51, Fig. 3). Thus, Appellant does not persuade us of Examiner
error. In re Merck & Co., Inc., 800 F.2d at 1097; In re Keller, 642 at 425.
Accordingly, we sustain the§ 103 rejections of claims 1-5. In doing
so, we adopt as our own the findings and reasoning of the Examiner for their
rejection as set forth in the Final Rejection and in the Answer.
Claims 16 and 17
Appellant argues dependent claims 16 and 17 together, and because
the argued merits of the two claims do not substantively differ (see App.
Br. 9-12), we select claim 16 as representative (37 C.F.R. § 4I.37(c)(l)(iv)
(2017)). Claim 16 recites:
16. The method of claim 1, further comprising:
partitioning, by one or more processors, the touch-screen
into a first section and a second section, wherein the first
section detects the first touch on a touch-screen keyboard, and
wherein the second section detects the second touch on the
touch screen;
splitting, by one or more processors, the second section
of the touch-screen into a top section and a bottom section;
displaying, by one or more processors, a visual indicator
on the touch-screen, wherein the visual indicator provides a
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visual indication of positionings of the top section and the
bottom section of the second section of the touch-screen; and
in response to receiving the second touch from the top
section of the second section of the touch-screen, displaying, by
one or more processors, the selected diacritic above the selected
character on the specific touch-screen outputPJ
App. Br. 23 (Claims App'x).
Appellant argues the Examiner errs because:
the cited art does not teach or suggest the feature supported by
paragraph [0021] of the present specification of "splitting ...
the second section of the touch-screen into a top section and a
bottom section . . . and in response to receiving the second
touch from the top section of the second section of the touch-
screen, displaying ... the selected diacritic above the selected
character on the specific touch-screen output."
App. Br. 10.
Appellant contends Griffin "shows modified letters (e.g., a), not
diacritics (e.g., the umlaut·· itself) in the different partitions of the screen."
App. Br. 11. Appellant contends claim 16 specifically requires displaying a
selected diacritic above a selected character "in response to receiving the
second touch from the top section of the second section of the touch-screen,"
so that "the decision as to where to place the diacritic on the letter is based
on whether the user input the diacritic in the top section." App. Br. 11; see
also id. at 12 ("Griffin never teaches or suggests these features.").
Appellant's argument is unpersuasive. As the Examiner finds, and we
agree, the cited disclosure of Griffin teaches splitting a (second) portion of
the display into top and bottom sections, as recited. See Final Act 12-13
3 There appears to be no antecedent basis for "the specific touch-screen
output" recited in claim 16. In the event of continued prosecution, the
Examiner should consider if a 35 U.S.C. § 112 rejection is appropriate.
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(citing Griffin ,r 60, Figs. 4C-D); see also Ans. 20-22. As illustrated in
Griffin Figure 4C, after a user selects a letter (i.e., c ), an upper diacritic (i.e.,
the breve in c) is displayed in an upper section above the initially selected
letter, and a lower diacritic (i.e., the cedilla in<;) is displayed in a lower
section below. See Griffin ,r 60. Griffin further teaches that, after the user
initially selects the letter c, a second touch may select c for display. See
Griffin ,r,r 51, 66-68 (teaching that if a user selects a diacritic, it then is
displayed (i.e., over the letter) selection by touch on a touch-screen). Thus,
the Examiner does not err in finding that Griffin teaches "in response to
receiving the second touch from the top section of the second section of the
touch-screen, displaying, by one or more processors, the selected diacritic
above the selected character," as recited.
Appellant's contention that claim 16 requires basing where to place a
diacritic on a letter "on whether the user input the diacritic in the top
section" (App. Br. 11) is not commensurate with the scope of the claim. See
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). A claim under
examination is given its broadest reasonable interpretation consistent with
the underlying specification. In re American Acad. of Science Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of an express
definition in the Specification or a clear disclaimer of scope, claim terms are
interpreted as broadly as the ordinary usage by one of ordinary skill in the
art would permit. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Care
should be taken to avoid reading limitations of the Specification into the
claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003).
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Here, Appellant identifies no express definition in the Specification or
clear disclaimer of scope to support the argument that requires determining
"whether the user input the diacritic in the top section." App. Br. 11. In
view of the Specification, ordinarily skilled artisans understood the terms of
claim 16 to encompass their broadest relevant dictionary meanings.
Claim 16 requires, in relevant part, "in response to receiving the [user's]
second touch from the top section of the second section of the touch-screen,
displaying ... the selected diacritic above the selected character." We agree
with the Examiner's response, which is that the claim 16 does not require
"the user [to] input the diacritic in the top section," but instead essentially
"only states that the user touches a top section," a teaching which, as
discussed above, we agree that "Griffin clearly provides." Ans. 20-21.
Appellant's contention that Griffin "shows modified letters (e.g., a),
not diacritics ( e.g., the umlaut ·· itself)" (App. Br. 11) also is unpersuasive.
The "modified letters" of Griffin show both a diacritic and the initially
selected letter, such as c or c; for an initially selected letter c. See Griffin
Figs. 4C-D. Thus, display of a "modified letter" constitutes display of both
the initially selected letter and a diacritic. As discussed above, in Griffin,
after (i.e., in response to) selection of a displayed "modified letter" by a
second input, the selected character with the diacritic is displayed after the
second input (i.e., the selected letter is displayed with the selected diacritic
(in the correct relative location). Griffin ,r 51.
Appellant contends in reply that "such a reading ignores the elements
found in base Claim 1, upon which Claim 16 depends." Reply Br. 2.
Specifically, Appellant argues that
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while Griffin shows the marked character above or below the
unmarked character, there is no teaching or suggestion of
placing the selected diacritic over the character based on the
user drawing the diacritic in a section of the display that is
above the character ("in response to receiving the second touch
from the top section ... of the touch-screen, displaying ... the
selected diacritic above the selected character on the specific
touch-screen output").
Reply Br. 3 ( emphasis added).
Appellant's reply argument is not commensurate with the scope of
claim 16 because there is no requirement for "the user drawing the diacritic."
In re Clemens, 622 F.2d at 1035; see also claim 1 (reciting, in relevant part,
"responsive to detection of the second touch, selecting a selected diacritic
that is associated with the detected second touch on the touch-screen").
Thus, Appellant does not persuade us the Examiner errs in finding
Griffin, in view of the disclosures of Katayama and Kun, teaches or suggests
the additionally recited limitations of claim 16. Accordingly, we sustain the
§ 103 rejection of claims 16 and 17 and, in doing so, as consistent with our
discussion, adopt as our own the findings and reasoning of the Examiner for
their rejection as set forth in the Final Rejection and in the Answer.
Claim 18
Claim 18 depends from claim 1 and recites, inter alia, "splitting ...
the second section of the touch-screen into a top section, a middle section,
and a bottom section." App. Br. 24 (Claims App'x). Appellant argues the
Examiner errs in the rejection of claim 18 because the cited art does not
teach or suggest the recited requirements for a "middle section" for
diacritics. App. Br. 12 (contending the Examiner appears to use official
notice improperly in determining that "[i]t would be obvious to split the
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second input section into a top, middle, and bottom section ( as well as
perhaps more sections) if there were also potential diacritics whose proper
location were in the middle section of the associated character" ( quoting
Final Act. 14)). The Examiner answers that the determination that Griffin's
teaching of top and bottom sections also teaches a middle section is an
obviousness determination, not official notice. Ans. 21-22.
Appellant's argument is unpersuasive of Examiner error. "A reference
must be considered for everything it teaches ... and is not limited to the
particular invention it is describing and attempting to protect." EWP Corp.
v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis
omitted). Further, the ordinarily skilled artisan is "a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). Simply put, we agree with the Examiner that ordinarily skilled
artisans, given Griffin's teaching of upper and lower diacritics displayed in
respective upper and lower sections, would find it obvious to display a
middle diacritic in a middle section, as recited. Final Act. 13-14; Ans. 21-
22. Accordingly, we sustain the rejection of claim 18.
Claims 6-10, 19, and 20
Independent claim 6 recites, inter alia, "detect[ing] a second touch on
the touch-screen, wherein the second touch is from a movement of an input
device across a surface of the touch-screen, and wherein the movement is in
a shape of a specific diacritic," and "select[ing] the specific diacritic
according to a detected second touch on the touch-screen."
Appellant contends the Examiner errs in finding Colley teaches or
suggests "select[ing] a location for the specific diacritic upon the character
according to a determined location of the second touch on the touch-screen,"
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as recited in claim 6. App. Br. 18. The Examiner responds by finding in
Colley, "when the user draws the diacritic 222 in user interface 212, the user
selects the location for that diacritic to be above the letter a since that is the
only location that particular diacritic belongs." Ans. 24 ( citing Colley
Fig. 3b) ( also finding "the location for the diacritic 222 is determined
according to a location of the second touch on the touch-screen - the user
interface 212 ").
Appellant's argument is persuasive. As Appellant replies, and we
agree, because Colley discloses only automatically placing a diacritic at a
predetermined location, the Examiner errs in finding Colley teaches or
suggests "select[ing] a location for the specific diacritic upon the character
according to a determined location of the second touch on the touch-screen,"
as recited in claim 6. The Examiner does not explain how or why Colley's
automatic placement of a diacritic at a single location teaches or suggests
selecting the location "according to a determined location of the second
touch," as recited.
Accordingly, we do not sustain the § 103 rejection of claim 6. We
likewise do not sustain the§ 103 rejections of 7-10, 19, and 20, which
depend from claim 6.
Claims 21 and 22
Appellant argues independent claim 21 and its dependent claim 22
together as a group; claim 21 is, therefore, representative. App. Br. 19-20;
37 C.F.R. § 4I.37(c)(l)(iv) (2017). Claim 21 recites a method comprising:
receiving . . . a first user input in a form of holding down
a key ... , wherein the key corresponds to a specific letter of an
alphabet;
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during the holding down of the key, rece1vmg,
through a touchscreen portion of the user interface, a second
user input in a form of a gesture;
determining ... that a shape of the gesture corresponds to
a shape of a predetermined diacritical mark;
receiving ... a third user input in a form of a releasing of
the key; and
responsive to the first, second, and third user inputs and
further responsive to a determination that the shape of the
gesture corresponds to the shape of a predetermined diacritical
mark, displaying, on a human readable display, the letter as
modified by the predetermined diacritical mark.
App. Br. 24--25 (Claims App'x) (disputed limitations emphasized).
Appellant argues the Examiner errs in relying on Colley. App.
Br. 19--20. Appellant contends that while Colley "does show that a hand
drawn diacritic can be affixed to a keyboard-selected letter," it "does not
teach or suggest making this joining conditional upon the user releasing the
keyboard key, as claimed." App. Br. 20 (citing Colley Figs. 3a---c). The
Examiner responds that the rejection does not rely solely on Colley, but
instead relies on Hwang's multi-touch input teachings in combination with
the diacritic input teachings of Colley. Ans. 24--25 ( citing Hwang ,r 40; In re
Keller, 642 F.2d 413). The Examiner explains:
When this feature of Hwang is combined with Colley, the user
touches and holds the letter key (fig 3a of Colley), then with the
other hand draws a diacritic in user interface 212. When the
user releases the letter key on the keyboard, the processor
knows that the user has completed drawing the diacritic and
may then attempt to identify the drawn diacritic.
Ans. 25.
Appellant replies that "[ n ]either Colley nor Hwang teach[ es] or
suggest[ s] that the trigger for adding the diacritic to the letter is the release
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of the key on the keyboard as presently claimed." Reply Br. 6. Instead,
Appellant contends, Colley and Hwang teach "a traditional input device
causes the character/mark to be displayed upon pressing the key, not upon
releasing the key, as claimed." Reply Br. 6.
Attorney arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Here, Appellant does not provide any evidentiary
support for the key issue-i.e., whether a keyboard key release in Hwang
triggers an event.
Hwang discloses multi-touch input of characters using a first touch of
a keyboard key (e.g., "a consonant input key") and a second "gesture" touch
input while the first touch is maintained. See, e.g., Hwang ,r,r 15-17, 40. In
view of the record before us, and by a preponderance of the evidence, we
agree with the Examiner that artisans would have understood that Hwang, in
view of the teachings of Colley, teaches or at least suggests entry of a
character after the multi-touch inputs terminate. Ans. 25; KSR, 550 U.S. at
421 ( explaining an ordinarily skilled artisan is "a person of ordinary
creativity, not an automaton").
Further in support of the Examiner's determination, we note Hwang
discloses that release of the first touch causes two displayed symbols to be
linked together (i.e., a Korean consonant entered by a keyboard key and a
vowel entered by gesture input are linked together as part of a single Korean
syllable in response to release of the keyboard key). See Hwang ,r,r 43-
45, Fig. Id. In other words, in Hwang, the two Korean characters (a
keyboard-entered consonant and a gesture-entered vowel) are not tied
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together until after the recited "third user input in a form of a releasing of the
key" occurs. Thus, ordinarily skilled artisans would have understood
Hwang teaches an action of tying two characters together in response to the
recited third user input of a keyboard key release.
As discussed above, Colley teaches combining a keyboard-entered
letter and a gesture-entered diacritical mark. Final Act. 14--15; Ans. 24--25.
In a combination of the foregoing teachings of Hwang and Colley, the
recited "third user input" (keyboard key release) creates the recited "letter as
modified" (i.e., a letter plus a linked diacritical mark). Thus, Appellant does
not persuade us that "[ n ]either Colley nor Hwang teach[ es] or suggest[ s] that
the trigger for adding the diacritic to the letter is the release of the key on the
keyboard" (Reply Br. 6).
Accordingly, we sustain the § 103 rejection of claims 21 and 22. In
doing so, we adopt as our own the findings and reasoning of the Examiner as
set forth in the Final Rejection and in the Answer.
DECISION
We affirm the Examiner's 35 U.S.C. § 103(a) rejections of claims 1-
5, 16-18, 21, and 22. We reverse the Examiner's 35 U.S.C. § 103(a)
rejections of claims 6-10, 19, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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