Ex Parte Chen et al

Board of Patent Appeals and Interferences

Sep 5, 2012

10617526 (B.P.A.I. Sep. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YEN-FU CHEN and JOHN W. DUNSMOIR
____________

Appeal 2010-005590
Application 10/617,526
Technology Center 2600
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/617,526

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-7, 9-15, 17-22, 24-28, 30-36, 38-44, 46-51, and 53-57. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to translating between Simplified Chinese
characters, Traditional Chinese characters, Pin Yin, and English. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer implemented method comprising:

using a computer having a display and connected to the
Internet, copying a Simplified Chinese character into an input
field of a graphical user interface;

using Unicode to determine a Traditional Chinese
character equivalent of the Simplified Chinese character;

using Unicode to translate the Simplified Chinese
character into an accented Pin Yin word and an English word;
and

responsive to a user activation of a single control on the
graphical user interface, simultaneously displaying the
Simplified Chinese character as a Traditional Chinese character,
an unaccented Pin Yin word, a hybrid Pin Yin word, and an
English word.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hughes, 1ICT3 Computer Science Sample Paper I 1-6 (University of
Dublin, 1998)

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Chinese-English Dictionary, http://web.archive.org/web/20000301054545/
www.mandarintools.com/worddict.html (“Dictionary”)

Chinese-English Lookup, http://web.archive.org/web/20010309104519/
http://home.iprimus.com.au/richwarm/cel/cel.htm (“Lookup”)

The Fool’s Workshop, http://web.archive.org/web/20021206035901/
http://www.foolsworkshop.com/ptou/ (“Fool’s Workshop”)

REJECTIONS1
Claims 1-3, 9-11, 17, 24, 30-32, 38-40, 46, and 53 stand provisionally
rejected on the ground of non-statutory obviousness-type double patenting as
being unpatentable over claims 1, 5-7, 26, and 30-32 of Application
10/631,070 (“the ‘070 Application”).
Claims 1-4, 6, 7, 9-12, 14, 15, 17-20, 22, 24-26, 28, 30-33, 35, 36, 38-
41, 43, 44, 46-49, 51, 53-55, and 57 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dictionary, Lookup, and Fool’s Workshop.
Claims 5, 13, 21, 27, 34, 42, 50, and 56 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dictionary, Lookup, Fool’s Workshop,
and Hughes.

ANALYSIS
Non-Statutory Obviousness-Type Double Patenting Rejection
Appellants contend that the Examiner improperly bases the double
patenting rejection on anticipation (App. Br. 13).2 Appellants also contend

1 The Examiner has withdrawn the non-statutory obviousness-type double
patenting rejection over Application 10/617,530 in view of Dictionary (Ans.
3).
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that the present claim 1 limitation “displaying . . . an unaccented Pin Yin
word, [and] a hybrid Pin Yin word” is not recited in the reference claims of
the ‘070 Application (App. Br. 13). Appellants further contend that the
reference claim 1 limitations “determining if the user input is an entire
desired word, a beginning of the entire word, or whether the user input
appears anywhere in the desired word” and “searching a dictionary for an
entry containing a Simplified Chinese word” are not recited in present claim
1 (App. Br. 13-14).
Appellants’ argument regarding the Examiner’s use of anticipation as
a rationale for the obviousness-type double patenting rejection (App. Br. 13)
is not persuasive. The obviousness-type double patenting analysis is similar
to the § 103 obviousness analysis, In re Braat, 937 F.2d 589, 592-593 (Fed.
Cir. 1991), and “anticipation is the epitome of obviousness.” Connell v.
Sears, Roebuck & Co., 722, F.2d 1542, 1548 (Fed. Cir. 1983) (citing In re
Fracalossi, 681 F.2d 792 (CCPA 1982)). Moreover, in In re Berg the
Federal Circuit affirmed an obviousness-type double patenting rejection
where the reference claim anticipated the applicants’ claim. 140 F.3d 1428
(Fed. Cir. 1998). Nevertheless, the Examiner changed the rejection in the
Answer to include an obviousness rationale for rejecting present claim 1
over the reference claims: “It would have been obvious to one with ordinary
skill in the art to have displayed different forms of Pin Yin corresponding to
the Chinese character specially using the claimed Unicode which is an
international standard encoding scheme for all the major languages in the
world.” (Ans. 11-12). While Appellants argue that the reference claims do

2 The amended Appeal Brief filed April 2, 2008, is referenced throughout
the opinion.
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not anticipate “displaying . . . an unaccented Pin Yin word, [and] a hybrid
Pin Yin word” (App. Br. 13), Appellants do not contest the Examiner’s new
conclusion that it would have been obvious to display various Pin Yin forms
(see Reply Br. 2-4). Rather, Appellants’ Reply Brief focuses on the
reference claims’ recitation of Chinese words, as opposed to Chinese
characters as recited in present claim 1 (Reply Br. 2-4).
Regarding Appellants’ argument that the reference claims recite
limitations not recited in present claim 1 (App. Br. 13-14), the mere fact that
the reference claims recite additional limitations in relation to present claim
1 does not show nonobviousness (see Ans. 12-13). However, to the extent
that Appellants argue that translating a Chinese word, as recited in the
reference claims, does not render obvious translating a Chinese character, as
recited in claim 1 (see Reply Br. 2-4), we disagree. Claim 1 indicates that
Appellants’ use of the term “Chinese character” does not preclude characters
that can represent whole words. For example, claim 1 recites “using
Unicode to translate the Simplified Chinese character into an accented Pin
Yin word and an English word.” Appellants’ Specification as well as
present Figure 4 supports this interpretation of “Chinese character.” For
example, Figure 4 shows that a single “Simplified Chinese” character input
to the “Chinese Character Translator” is equivalent to the English words
“Country, State, Nation.” Thus, Appellants’ presently claimed Chinese
characters are within the scope of the reference claims’ Chinese words.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1 and claims 2, 3, 9-11, 17, 24, 30-32, 38-40, 46, and 53, not
separately argued, on the ground of non-statutory obviousness-type double
patenting.
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§ 103 Rejections
The Rejection over Dictionary, Lookup, and Fool’s Workshop
Appellants contend, with respect to representative independent claim
1, that the Examiner’s combination fails to disclose all the claimed
limitations because Lookup fails to disclose the limitation “into an input
field” (App. Br. 16). Appellants also contend that Lookup fails to disclose
“simultaneously displaying the Simplified Chinese character as a Traditional
Chinese character, an unaccented Pin Yin word, a hybrid Pin Yin word, and
an English word” (App. Br. 16-17). Appellants further contend that Lookup
fails to disclose “user activation of a single control” (App. Br. 17-18). We
disagree.
Regarding Appellants’ first argument (App. Br. 16), the Examiner
relies on Dictionary, not Lookup, to disclose copying a Chinese character
into an input field (Ans. 7, 13). Appellants’ argument is not persuasive
because it does not explain why the argued limitations would not have been
obvious over the collective teachings of Dictionary and Lookup (see App.
Br. 16).
Regarding Appellants’ second argument (App. Br. 16-17), the
Examiner relies on Dictionary, not Lookup, for disclosing translating from
Simple Chinese characters to Traditional Chinese characters, in addition to
Pin Yin and English (Ans. 7-8). Further, the Examiner finds that Dictionary
discloses inputting either unaccented Pin Yin or hybrid Pin Yin for
translation and concludes that it would have been obvious to output both
unaccented Pin Yin and hybrid Pin Yin as part of a translation (see Ans. 14).
Appellants do not contest this finding and conclusion (see Reply Br. 6-8).
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The Examiner relies on Lookup for displaying multiple translations
simultaneously, including input Chinese characters, the Pin Yin
representation, and an English translation (Ans. 8). Further, the Pin Yin
version that Lookup displays — for example, “fu3 tou2” (see Lookup, p. 1)
— is “hybrid Pin Yin,” based on Appellants’ definition of “hybrid Pin Yin”
as “the Pin Yin phonetic version of the Chinese language without proper
accents over the appropriate Roman letters, but instead with numbers in or at
the end of the word to represent the accent marks.” (Spec. 7:12-14). Thus,
based on the collective teachings of the cited references, the Examiner
concludes that it would have been obvious to simultaneously display the
various prior art translations for an input Chinese character (see Ans. 8-9).
Appellants’ argument does not explain why the argued limitations would not
have been obvious over the collective teachings of the cited references (see
App. Br. 16-17) and is therefore not persuasive of error in the Examiner's
showing of obviousness.
Finally, regarding Appellants’ third argument (App. Br. 17-18),
Lookup discloses automatically translating from Chinese text to Pin Yin and
English after a user copies Chinese text to the Windows Clipboard (Lookup,
p. 1, ¶ 2). We agree with the Examiner and find that copying Chinese text to
the Windows Clipboard meets the limitation of “user activation of a single
control” (see Ans. 8, 14-15). Even though the translation occurs
automatically, no translation can occur unless the user copies the text.
Absent more specific language in claim 1 defining the “single control,” the
act of copying text in Lookup is a control function because it triggers the
translation process.
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We are also not persuaded by Appellants’ Reply Brief arguments
(Reply Br. 4-9). Initially, we note that “[t]he reply brief is not an
opportunity to make arguments that could have been made during
prosecution, but were not. Nor is the reply brief an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (“Informative”). Nevertheless, we
address the arguments as follows.
Appellants argue that neither Dictionary nor Lookup disclose
providing a translation for Chinese characters, as opposed to Chinese words
(Reply Br. 4-5). This argument is not persuasive because, as discussed
above regarding the double patenting rejection, Appellants’ claim 1 does not
preclude translating Chinese characters that are themselves whole words.
Appellants also argue that it would not have been obvious to eliminate
certain elements of Dictionary’s graphical user interface because it would
require “setting up an entirely different graphical user interface with entirely
different functionality” (Reply Br. 5). However, this is exactly the
Examiner’s position — that it would have been obvious to modify
Dictionary with Lookup so that the translation of either a Simple or
Traditional Chinese character would occur through the use of a single
control (see Ans. 8, 14-15), in which case elements of Dictionary’s interface
would be unnecessary. Appellants have not explained why modifying
Dictionary in this manner would not have been obvious. The fact that the
Examiner suggests modifying Dictionary is not, in itself, persuasive of
nonobviousness.
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Appellants also argue that the cited art fails to disclose simultaneously
displaying three translations of a Chinese character in addition to the original
input Chinese character (Reply Br. 6-8). While Lookup only simultaneously
displays two translations (see Lookup, p. 1), the Examiner finds that
Dictionary discloses outputting the equivalent Chinese character — either
Traditional Chinese or Simplified Chinese — Pin Yin, and English (Ans. 7-
8; Dictionary, p. 1, ¶ 1). The Examiner concludes that, based on the
collective teachings of the cited references, it would have been obvious to
simultaneously display all the translations disclosed in the cited art, as this
would “help Chinese language learners to read Chinese electronic texts”
(Ans. 8; Lookup, p. 1, ¶ 1). Appellants do not specifically explain why this
motivation to combine the references is improper or why it would have been
beyond the ordinary skill in the art to simply display additional translations.
Appellants’ final Reply Brief argument that Lookup does not provide
the technical details of how a lookup is triggered, either automatically or
manually (Reply Br. 8-9), is also not persuasive. Lookup discloses that “[i]n
the illustration, the user has selected and copied a word in Notepad. CEL,
having detected the word on the Windows Clipboard, has popped up to
display the corresponding dictionary entry” (Lookup, p. 1, ¶ 2). This meets
the claim 1 limitation of “responsive to a user activation of a single control
. . . displaying” as discussed above.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1 and claims 2-4, 6, and 7 not separately argued.
Appellants separately group claims 9-12, 14, and 15; claims 17-20 and 22;
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claims 24-26 and 283; claims 30-33, 35, and 36; claims 38-41, 43, and 44;
claims 46-49 and 51; and claims 53-55 and 57 (see App. Br. 18-27).
However, the arguments presented, therefore, are similar to the arguments
for representative claim 1. Accordingly, for the reasons discussed above, the
rejection of claims 9-12, 14, 15, 17-20, 22, 24-26, 28, 30-33, 35, 36, 38-41,
43, 44, 46-49, 51, 53-55, and 57 is also sustained.

The Rejection over Dictionary, Lookup, Fool’s Workshop, and Hughes
Appellants provide no new arguments for dependent claims 5, 13, 21,
27, 34, 42, 50, and 56; rather, Appellants rely on the same arguments
presented for the respective independent claims 1, 9, 17, 24, 30, 38, 46, and
53 (see App. Br. 27-28). These arguments are not persuasive for the reasons
discussed above, and we therefore sustain the Examiner’s rejection of claims
5, 13, 21, 27, 34, 42, 50, and 56.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-3, 9-11, 17, 24, 30-32,
38-40, 46, and 53 on the ground of non-statutory obviousness-type double
patenting and claims 1-7, 9-15, 17-22, 24-28, 30-36, 38-44, 46-51, and 53-
57 under 35 U.S.C. § 103(a).

3 Although Appellants group claims 24-26 and 30 together, stating that
“Claims 25-26 and 30 each depend from . . . claim 24” (App. Br. 26), we
assume this is a mistake and that Appellants intended to group claims 24-26
and 28 together, as claim 28 depends from claim 24 and is not included in
any other argued group of claims.
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DECISION
For the above reasons, we affirm the rejections of claims 1-7, 9-15,
17-22, 24-28, 30-36, 38-44, 46-51, and 53-57.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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