Ex Parte Csicsatka et al

Patent Trial and Appeal Board

Feb 27, 2013

10555497 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIBOR GEORGE CSICSATKA, KAM KEUNG FUNG,
and CAI XIA QIU

Appeal 2010-010474
Application 10/555,497
Technology Center 2100
____________

Before CARL W.WHITEHEAD, JR, ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-7, 9-12, and 14-22. Claims 3, 8, and 13 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2010-010474
Application 10/555,497
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STATEMENT OF THE CASE
Appellants’ invention is directed to a method and system for
improving the speed of searching for a specific text item in an alphabetized
text list. See Abstract of the Disclosure.

Claim 1 is illustrative, with key disputed limitations emphasized:
1. A method of navigating through an alphabetized list of
text items using an electronic device, the method comprising
the steps of:

advancing and displaying the alphabetized list of text
items, in a first scroll mode, by one text item in response to
pressing a key for a first duration;

advancing and displaying the alphabetized list of text
items, in a second scroll mode, by one page at a time in
response to pressing the key for a second duration that is longer
than the first duration, wherein one page corresponds to a
maximum number of text items capable of being displayed at
one time on a display associated with the electronic device; and

changing from the second scroll mode to a third scroll
mode in response to scrolling in the second scroll mode
reaching a text item having a starting letter in a first position of
the text item that is a next letter in a sequence of starting
letters, wherein the third scroll mode includes advancing and
displaying the alphabetized list of text items by text items
having a starting letter that is next in the alphabet relative to a
starting letter of a text item currently being displayed and the
third scroll mode continues in response to a continued pressing
of the key until an end of the alphabetized list of text
items is reached.

The Examiner relies on the following as evidence of unpatentability:
Davis US 6,972,776 B2 Dec. 6, 2005
(filed Mar. 20, 2001)
Appeal 2010-010474
Application 10/555,497
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Chung US 6,753,892 B2 Jun. 22, 2004
Tsuk US 2003/0076301 A1 Apr. 24, 2003
Horsley US 6,480,188 Bl Nov. 12, 2002
Weiser US 5,786,819 Jul. 28, 1998

Appellants’ Admitted Prior Art

THE REJECTIONS
1. The Examiner rejected claims 1, 2, 4, 5, 7, 9, 10, and 18-21 under
35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted
Prior Art, Davis and Weiser. Ans. 4-10.1
2. The Examiner rejected claims 6, 11, 12, 14-17, and 22 under 35
U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior
Art, Davis, Weiser and Tsuk. Ans. 10-14.
3. The Examiner has rejected claims 20-22 under 35 U.S.C. §112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellants
regard as the invention. Ans. 3-4.2

ISSUE
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issue to
be dispositive of the claims on appeal:
Under § 103, has the Examiner erred by finding that the cited prior art
discloses a scrolling method which changes “from the second scroll mode to

1 Throughout this opinion, we refer to the Appeal Brief filed March 17, 2010
and the Examiner’s Answer mailed April 28, 2010.
2 Appellants do not dispute this rejection and, accordingly, the Examiner’s
rejection of claims 20-22 is summarily affirmed.
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Application 10/555,497
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a third scroll mode in response to scrolling in the second scroll mode
reaching a text item having a starting letter in a first position of the text item
that is a next letter in a sequence of starting letters” as set forth within
independent claim 1, with commensurate limitations within independent
claims 7 and 12?
ANALYSIS
Appellants argue that the Examiner erred by finding that claim 1 is
shown or suggested by the cited combination of references in view of the
failure of Weiser to show or suggest a change from a “second scroll mode”
to a “third scroll mode” occurring “in response to scrolling in the second
scroll mode reaching a text item having a starting letter in a first position of
the text item that is a next letter in a sequence of starting letters” in view of
the express teaching within Weiser that the change in scroll mode disclosed
therein occurs in response to reaching “the last alphabetical letter in the
second position of a name (the second letter in a name, e.g., the ‘z’ in
‘Aza’).” Weiser, col. 4, ll. 59-61; App. Br. 7.
Appellants argue that this scheme utilizes a completely different
threshold condition for switching from the “second scroll mode” to the
“third scroll mode” and consequently Weiser fails to address this deficiency
in the Examiner’s proposed combination of Appellants’ Admitted Prior Art
and Davis. Id. at 7-8.
Finally, Appellants argue that any attempt to modify Weiser to change
the threshold condition described therein would necessarily “increase the
overall duration of a search procedure” which would be contrary to one of
Weiser’s primary objectives. Id. at 8-9.
The Examiner finds that Appellants’ Admitted Prior Art teaches that it
was known to transition from a first scroll mode (one item at a time),
Appeal 2010-010474
Application 10/555,497
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initiated by depression of a key, to a second scroll mode (a predetermined
number of items at a time) in response to selection of that key for a longer
duration. Ans. 5
The Examiner also finds that Davis teaches a variety of scroll modes,
including page by page. Id. at 5.
Further, the Examiner finds that Weiser teaches advancing from a
second scroll mode to a third scroll mode when detection of a particular
letter (the second letter in a name) occurs. Id. at 6.
Thereafter, the Examiner finds that a scroll mode taught by Weiser
clearly teaches scrolling in response to a change in text and that Weiser
implicitly teaches recognition of a letter in a first position is necessary in
order to determine the letter in the second position. Ans. 15.
We find the Examiner’s arguments persuasive. We note that the
Examiner does not propose to modify Weiser in a manner that would “be
contrary to one of Weiser’s primary objectives” (Supra at 4) but rather
proposes modifying Appellants’ Admitted Prior Art by incorporating the
teachings of Davis and Weiser into Appellants’ Admitted Prior Art.
Further, we find that changing scroll modes in response to detection of
a particular letter is suggested by the teaching of Weiser, notwithstanding
the different locations of the letters to be detected.
Finally, we find the Appellants have not challenged the Examiner’s
rejection of claims 20-22 under 35 U.S.C. §112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention. Consequently, that
rejection is summarily affirmed.
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Application 10/555,497
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We, therefore, find the Examiner did not err in rejecting independent
claims 1, 7, and 12, as well as claims 2, 4- 6, 9-11, and 14-22 which were
not separately argued.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4-7, 9-12, and 14-22
under § 103.

ORDER
The Examiner’s decision rejecting claims 1, 2, 4-7, 9-12, and 14-22 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

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