Ex Parte Comair

Board of Patent Appeals and Interferences

May 14, 2012

11244165 (B.P.A.I. May. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLAUDE COMAIR
____________

Appeal 2010-005386
Application 11/244,165
Technology Center 3700
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Claude Comair (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claim 3 under 35 U.S.C. § 102(e) as
anticipated by Shiigi (US 6,304,898 B1, issued Oct. 16, 2001) and claims 1
and 2 under 35 U.S.C. § 103(a) as unpatentable over Perlman (US
5,558,339, issued Sep. 24, 1996) and The Ultimate Chatlist (hereafter “the
Chatlist”) (http://www.chatlist.com/faces.html, Apr. 1999). We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to systems and methods for encoding
communications using pictorial characters. Spec. 1, ll. 11-12.
Claim 3 is illustrative of the claimed invention and reads as follows:
3. A hand-held communication device, comprising:
a memory;
an operating system for enabling user-generated pictorial
characters to be stored in the memory;
a user-interface comprising a touch-sensitive screen for
enabling the user to compose a message comprising one or more
selected ones of the user-generated pictorial characters stored in the
memory, the pictorial characters being selected by touching images of
the pictorial characters displayed on the touch-sensitive screen; and
wireless communication circuitry for communicating the
message over a wireless communication network.

SUMMARY OF DECISION
We REVERSE.

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ANALYSIS
The anticipation rejection
Independent claim 3 requires a hand-held communication device
including a user-interface having a touch-sensitive screen for selecting user-
generated pictorial characters “by touching images of the pictorial characters
displayed on the touch-sensitive screen.” App. Br., Claims Appendix.
The Examiner found that Shiigi teaches a hand-held communication
device including a touch screen for selecting pictorial characters. Ans. 4.
According to the Examiner, “a user generated text of any form can be
considered as a pictorial character.” Ans. 7 (citing to Shiigi, col. 4, ll. 14-
42).
Appellant argues that although Shiigi appears to teach using a touch-
screen device as an input device, Shiigi fails to teach “storing user-generated
pictorial characters in a memory or of selecting displayed images of user
generated pictorial characters” as called for by independent claim 3. App.
Br. 10.
Although we appreciate the Examiner’s position that handwritten text
can be considered a pictorial character and the touchscreen of Shiigi can be
used to input a handwritten text in a graphical data capture area, nonetheless,
we agree with Appellant that the handwritten or hand drawn message of
Shiigi is not composed “by selecting one or more user-generated pictorial
characters stored in a memory by touching images of displayed pictorial
characters.” Reply Br. 3. Rather, in Shiigi, the user merely uses a
touchscreen to handwrite or hand draw the message. Shiigi, col. 2, ll. 34-39
and col 4, ll. 13-14.
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Thus, Shiigi fails to teach a user-interface having a touch-sensitive
screen for selecting user-generated pictorial characters “by touching images
of the pictorial characters displayed on the touch-sensitive screen,” as called
for by independent claim 3. Accordingly, we cannot sustain the rejection of
claim 3 under 35 U.S.C. § 102(e) as anticipated by Shiigi.

The obviousness rejection
In independent claim 1, execution of a video game program generates
identifiers of pictorial characters that are used by processing circuitry to
access a remotely located database of pictorial characters “to retrieve from
the remotely located database for storage in the memory pictorial characters
corresponding to the identifiers.” App. Br., Claims Appendix.
The Examiner found that although the hand-held video game system
of Perlman downloads game information from a remote server (see Ans. 5
and 8), Perlman fails to disclose a video game program (data) “downloading
information from a remote database for the corresponding pictorial
character.” Ans. 5. The Examiner further found that:
It is very well known and understood in a chat
server user must login with a unique ID; then in
the chat space user can input character, which gets
decoded in the chat server that is remotely located
and corresponds in the chat space or displays for
the user.
Id.
Pointing to the Chatlist, the Examiner found that in chat space, when various
pictorial character identifiers are typed by a user on a chat interface, pictorial
characters, such as a happy face (☺), are generated. Ans. 8. Thus, the
Examiner concluded that:
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[I]t would have been obvious for one having
ordinary skill in the art at the time the invention
was made to modify Perlman’s game program to
include a chat server with meaningful chat
character to communicate with other players.
Ans. 5.
According to the Examiner, it would have been obvious “to use Perlman’s
hand-held device to connect to the chat server of ‘The Ultimate chatlist’ as
an additional medium of communication with other players using the game
device and usage of pictorial characters as a short form of chatting.” Ans. 8.
Appellant argues that the Examiner’s proposed combination does not
disclose “generating identifiers during execution of [a] video game program
and using those identifiers to retrieve pictorial characters from a remotely
located database.” Reply Br. 5. We agree.
As far as we understand, in the Examiner’s proposed combination of
the teachings of Perlman and the Chatlist, a pictorial character identifier
from the Chatlist, e.g., :-), is typed by a user on a chat interface of Perlman’s
device and a chat server retrieves a pictorial character, e.g.,☺, that
corresponds to the pictorial character identifier. See Ans. 8. However, in
contrast, in independent claim 1, pictorial character identifiers are generated
by the execution of a video game program for the video game. See App. Br.,
Claims Appendix. The Examiner has not provided any reason with rational
underpinning to further modify the device of Perlman and the Chatlist such
that execution of Perlman’s video game program generates identifiers of
pictorial characters. As noted above, in the Examiner’s proposed
combination, the user generates identifiers of pictorial characters by typing
on a chat interface of Perlman’s hand-held device. See Ans. 8. Rejections
on obviousness grounds must be supported by “some articulated reasoning
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with some rational underpinning” to combine the known elements in the
manner required in the claim at issue. KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Absent hindsight, we fail to see why one having
ordinary skill in the art would have been led to modify the teachings of
Perlman and the Chatlist in the manner claimed.
Accordingly, we cannot sustain the rejection of independent claim 1
and dependent claim 2 under 35 U.S.C. § 103(a) as unpatentable over
Perlman and the Chatlist. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (If an independent claim is nonobvious under 35 U.S.C. § 103, then
any claim dependent therefrom is nonobvious).

SUMMARY
The decision of the Examiner to reject claims 1-3 is reversed.

REVERSED

mls