Ex Parte Nguyen

Board of Patent Appeals and Interferences

Apr 19, 2010

10764835 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIEN T. NGUYEN
____________

Appeal 2009-005571
Application 10/764,835
Technology Center 2100
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Decided: April 19, 2010
____________

Before JOHN A. JEFFERY, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 61-78. We have jurisdiction under 35 U.S.C. § 6(b), and
we heard the appeal on April 13, 2010. We reverse.

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STATEMENT OF THE CASE
Appellant invented a system for entering and modifying multimedia
elements for communication and presentation. When an operator of a client
station enters sequences of keystrokes and/or mouse actions, a particular
abbreviation is detected and replaced with an associated multimedia object.
See generally Abstract; Spec. 8:5-12; Fig. 1. Claim 61 is illustrative with
the key disputed limitations emphasized:
61. A method, comprising the steps of:

receiving a set of sequences of keystrokes, mouse actions, or
keystrokes and mouse actions;

detecting whether a mnemonic name is present in said sequences of
keystrokes, mouse actions, or keystrokes and mouse actions, said mnemonic
name being associated with one of a set of multimedia objects;

when said mnemonic name is detected in said set of sequences,
replacing said mnemonic name with said one multimedia object in said set
of sequences; and

wherein said set of multimedia objects are associated with an
ensemble, said ensemble having a set of ensemble properties.

The Examiner relies on the following as evidence of unpatentability:
Liles US 5,880,731 Mar. 9, 1999
(filed Dec. 14, 1995)
Skelly US 6,064,383 May 16, 2000
(filed Oct. 4, 1996)
Maurille US 6,484,196 B1 Nov. 19, 2002
(filed Mar. 20, 1998)

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THE REJECTIONS
1. The Examiner rejected claims 61, 62, and 71 under 35 U.S.C. § 103(a)
as unpatentable over Maurille and Skelly. Ans. 3-7.1
2. The Examiner rejected claims 63-70 and 72-78 under 35 U.S.C.
§ 103(a) as unpatentable over Maurille, Skelly, and Liles. Ans. 7-19.

THE OBVIOUSNESS REJECTION OVER MAURILLE AND SKELLY
Regarding the independent claims,2 the Examiner finds that Maurille’s
instant messaging and chat functionality receives a set of sequences of
keystrokes and/or mouse actions, but does not (1) detect if a mnemonic
name is present in the sequence set, and (2) replace the mnemonic name
with a multimedia object in the set of sequences, where the multimedia
object is associated with an ensemble with properties. Ans. 4. The
Examiner, however, cites Skelly as teaching this feature in concluding the
claims would have been obvious. Ans. 5-7.
In reaching this conclusion, the Examiner cites Skelly’s ability to
automatically select a character’s displayed gestures and expressions based
on input text (i.e., a textual “emoticon” or acronym) in a comic chat

1 Throughout this opinion, we refer to (1) the Appeal Brief filed December
19, 2007; (2) the Examiner’s Answer mailed March 20, 2008; and (3) the
Reply Brief filed May 8, 2008.
2 Although the Examiner’s obviousness rejection over Maurille and Skelly
does not include independent claim 70, it nonetheless includes claim 71
which depends from independent claim 70. Accord App. Br. 15 (addressing
the limitations of independent claim 70 in connection with the Examiner’s
rejection of dependent claim 71). We therefore treat the limitations of
independent claim 70 in connection with this rejection for clarity and
consistency.
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environment. Ans. 5-6, 20-21. According to the Examiner, substituting the
appropriate “emoticon” for the corresponding text is purportedly
“established and [] well known in the art” in light of this functionality. Id.
Appellant challenges this assertion as tantamount to an “officially
noticed” fact with no evidentiary basis and, as such, the Examiner’s use of
official notice in this context is improper. Reply Br. 4-6. Appellant adds
that Skelly does not replace any text whatsoever, but rather identifies text to
“assist in decisions regarding the appearance of a comic strip element
associated with the text.” App. Br. 14. As such, Appellant argues, the cited
prior art fails to teach or suggest replacing a mnemonic name with a
multimedia object in the set of sequences of keystrokes and/or mouse actions
as claimed. App. Br. 13-15; Reply Br. 4-6.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting the independent
claims by finding that the cited prior art collectively would have taught or
suggested replacing a mnemonic name with a multimedia object in a set of
sequences of keystrokes and/or mouse actions?
This issue turns on whether the Examiner has shown that replacing
input text with an appropriate “emoticon” would have been well known in
the art at the time of the invention.

FINDINGS OF FACT (FF)
1. The present application is a continuation of Application Serial No.
09/053,098 filed April 1, 1998.
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2. By way of background, Skelly describes a known “comic chat
environment” in which users communicate with each other by inputting text
via a keyboard on their respective computers, this text being visible to all
participants. To this end, the system generates “comic panels” 10 which
include (1) images of characters 18 associated with each user, and (2)
corresponding speech balloons 14 which display text associated with that
character. Skelly, col. 1, ll. 13-42; Fig. 1.
3. This system (1) maintains a set of bitmaps for each character to
reflect different gestures and expressions, and (2) automatically selects a
character’s gestures and expressions based on the input text. Skelly, col. 1,
ll. 45-49; Fig. 1.
4. To this end, the system searches for “emoticons” which are a series
of characters that represent emotions (e.g., the expression “:-)” indicates
happiness, while “:-(” indicates sadness). Upon finding an “emoticon,” the
system modifies the character’s expression to indicate happiness or sadness,
respectively, by assigning an appropriate displayable bitmap to that
character that captures the expression. Skelly, col. 1, ll. 54-58; Fig. 1.
5. This system also searches input text to identify acronyms that may
provide clues regarding a character’s desired appearance (i.e., gesture and
expression). For example, if the system finds the acronym “LOL” in the text
(which stands for “laughing out loud”), the system concludes that the
character should be laughing and generates a laughing appearance for the
character. Skelly, col. 1, ll. 59-65; Fig. 1.

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6. The system performs a similar technique for detected capitalized
text which is interpreted as shouting. In this case, the system likewise makes
the displayed character appear as if they were shouting. Skelly, col. 1, l. 66
– col. 2, l. 4; Fig. 1.
7. Appellant’s Specification notes that “[e]ach abbreviation 115
includes a selected sequence of keystrokes (such as typed characters) and/or
mouse actions (such as left-button clicks, right-button clicks, and double-
clicks). Spec. 7:4-6.
8. Appellant’s Specification notes that multimedia objects include
data elements used with multimedia presentations, such as a text, audio,
graphical, picture, animation, or video elements. Spec. 7:13-16.

PRINCIPLES OF LAW
An Examiner's use of Official Notice unsupported by documentary
evidence should only be taken when the facts so noticed are “capable of such
instant and unquestionable demonstration as to defy dispute.” See In re
Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citations omitted). Moreover, if
the Examiner's assertion of Official Notice is adequately traversed, the
Examiner must provide documentary evidence in the next Office Action to
maintain the rejection. Manual of Patent Examining Procedure
§ 2144.03(C), 8th ed., Rev. 6, Sept. 2007 (“MPEP”).
“The deficiencies of the cited references cannot be remedied by the
Board's general conclusions about what is ‘basic knowledge’ or ‘common
sense’ to one of ordinary skill in the art” absent some concrete evidence in
the record to support these findings. In re Zurko, 258 F.3d 1379, 1385-86
(Fed. Cir. 2001).
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ANALYSIS
Claims 61, 62, and 71
Based on the record before us, we find error in the Examiner’s
obviousness rejection of claims 61, 62, and 71 over Maurille and Skelly.
At the outset, although the Examiner includes claim 71 in this
rejection, it depends from independent claim 70 which was rejected over
Maurille, Skelly, and Liles. Compare Ans. 4 with Ans. 7. Although the
reason for this inconsistency is unclear on this record, we nonetheless deem
this error harmless since the Examiner relies the same rationale for the
dispositive limitation in both independent claims, namely that replacing a
mnemonic name with a multimedia object in a set of sequences of
keystrokes and/or mouse actions is “established and [] well known in the
art” in light of Skelly’s functionality. See Ans. 5, 13.
This reasoning, however, is unsupported on this record and is
therefore problematic at best. As Appellant indicates (Reply Br. 4-6), the
Examiner’s assertion that substituting or replacing an “emoticon” for
inputted text (Ans. 20-21) is purportedly “established” and “well known in
the art” is tantamount to officially noticing this fact without supporting
evidence. And while Examiners can officially notice certain facts without
supporting documentary evidence, such notice should be limited to facts that
are “capable of such instant and unquestionable demonstration as to defy
dispute.” See Ahlert, 424 F.2d at 1091.
That is not the case here. First, even if we assume, without deciding,
that replacing certain inputted text with “emoticons” is known in the art (a
finding that has not been established in any event), the Examiner has not
shown that such a replacement was known at the time of the invention,
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namely April 1, 1998, which is the effective filing date of the present
application. FF 1. This evidentiary showing is particularly crucial where, as
here, Appellant has challenged the Examiner’s basis for this official notice
(Reply Br. 4-6).3 The Examiner, however, did not respond to this challenge
apart from (1) merely reiterating the unsupported position noted above in the
Answer (see Ans. 20-21), and (2) noting that no further action was required
in response to the Reply Brief. See Examiner’s Letter Noting the Reply
Brief, mailed July 1, 2008. The Examiner’s rejection is therefore
problematic for that reason alone.
Second, while Skelly does constitute prior art relative to Appellant’s
filing date, Skelly hardly supports the Examiner’s assertion regarding the
recited mnemonic name replacement. As Appellant indicates (App. Br. 14),
Skelly does not replace text, but merely identifies certain text strings (e.g.,
“emoticons,” acronyms, and capitalized text) that are communicated by
users who are visually represented by images of “characters” in a “comic
chat environment.” See FF 2-6. These strings are then used to automatically
select particular images of a displayed character corresponding to bodily
gestures and expressions indicated by the identified textual strings (e.g.,
happiness, sadness, laughing, etc.). See id. With this system, users can see
the depicted characters’ expressions change as their written chats evoke
different emotional responses. See id.

3 See MPEP § 2144.03(C) (noting that if the Examiner's assertion of Official
Notice is adequately traversed, the Examiner must provide documentary
evidence to maintain the rejection); see also Zurko, 258 F.3d at 1385-86
(noting that deficiencies of cited references cannot be remedied by general
conclusions about what is “basic knowledge” to one of ordinary skill in the
art absent some concrete evidence in the record to support these findings).
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Although the textual strings in Skelly (e.g., “emoticons,” acronyms,
etc.) are mnemonic names that are recognized and associated with
multimedia objects, namely a set of bitmaps that reflect each character’s
different gestures and expressions (FF 3), there is simply no replacement of
these mnemonic names with associated multimedia objects as claimed, let
alone that this replacement occurs in the recited set of sequences (i.e., typed
characters associated with keystrokes and/or mouse actions). See FF 2-7.
That Skelly displays the users’ communicated text in corresponding
speech balloons associated with their displayed characters (FF 2) only
bolsters our conclusion that the mnemonic names in this displayed text (e.g.,
“emoticons”, acronyms, etc.) are not replaced, but rather displayed for
readability. Otherwise, users could not read the textual communications.
While these textual mnemonic names may be used by the system to display
various bodily expressions and gestures, that hardly means that these text
mnemonic names are replaced as the Examiner seems to suggest.
Although the Examiner makes an interesting point regarding the
redundancy that could occur if a textual “emoticon” (“:-)”) were not replaced
with a corresponding multimedia object (☺)4 (Ans. 21), the Examiner
simply does not show that such a replacement was known at the time of the
invention (April 1, 1998), let alone that it would have been obvious at that
time to utilize such a feature in Skelly or Maurille. Nor will we engage in
such an inquiry here in the first instance on appeal.

4 This graphical symbol or “data element” fully comports with Appellant’s
broad definition of “multimedia object” in the Specification. See FF 8.
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We are therefore persuaded that the Examiner erred in rejecting
independent claim 61 and dependent claim 62 for similar reasons. Since
independent claim 70 recites commensurate limitations, we are also
persuaded that the Examiner erred in rejecting independent claim 70 (from
which claim 71 depends) for similar reasons.
While claim 70 recites a system with a detector that is capable of
performing the recited detecting and replacing functions, these functions are
commensurate with the method steps which we found are not taught or
suggested by the cited prior art as noted previously. Nor has the Examiner
shown that functionality of the cited prior art would have been so capable of
performing these functions at the time of the invention for the reasons
indicated previously.
Lastly, since the Examiner has not shown that the additional cited
prior art reference to Liles cures the above-noted deficiencies, we will
likewise not sustain the Examiner’s rejection of the claims based on this
reference. Since these deficiencies are dispositive of the present appeal, we
need not address Appellant’s other arguments directed to claims 63-70 and
72-78 (App. Br. 19-22; Reply Br. 8-11).

CONCLUSION
The Examiner erred in rejecting claims 61-78 under § 103.

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ORDER
The Examiner’s decision rejecting claims 61-78 is reversed.

REVERSED

pgc

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