Ex Parte Nordenhake

Patent Trial and Appeal Board

Mar 26, 2013

11428590 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/428,590 07/05/2006 Magnus Nordenhake PS06 0430US2 4251
58342 7590 03/26/2013
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
ZAHR, ASHRAF A
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
03/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MAGNUS NORDENHAKE
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Appeal 2010-003583
Application 11/428,590
Technology Center 2100
________________

Before KARL D. EASTHOM, STEPHEN C. SIU, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003583
Application 11/428,590

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Claims 1-5 and 8-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Microsoft Word 2003 (“Word”)1 in view of Klassen (US
7,218,943 B2; May 15, 2007).2
Claims 6, 7, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
obvious over Word and Klassen and further in view of Moeller (EP 0
923218; June 16, 1999).
STATEMENT OF THE CASE
Appellant’s invention pertains to text messaging content and provides
a way for the user to track the number of text messages that will be needed
to send written text. A break graphic visually portrays to the user the
location of the end of the current text message and how quickly the end of
the message is approaching. Spec. 1, 10.
Independent claim 1illustrative with key disputed limitations
emphasized:
1. A method of displaying written text during the
preparation of a text message to be transmitted by a mobile
radio terminal, comprising:

1 The “Word” reference includes depictions of Microsoft Word 2003
software output (designated by the Examiner as Figures 2 and 3) and a
licensing cover sheet entitled “About Microsoft Office Word” and bearing
the designation “Microsoft® Office Word 2003 (11.6568.6568) SP2, Part of
Microsoft Office Professional Edition 2003)” (designated by the Examiner
as Figure 2).
2 Throughout this opinion, we refer to (1) the Appeal Brief filed April 16,
2009; (2) the Examiner’s Answer mailed July 20, 2009; and (3) the Reply
Brief filed September 11, 2009.
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displaying written text entered by a user; and
displaying a graphical text message break between
characters of the written text that are associated with a first text
message payload that has a predetermined maximum length
measured in number of characters and characters of the written
text that are associated with a second text message payload that
has a predetermined maximum length measured in number of
characters, the first and second text messages used to transmit
the written text as a multipart text message.

The Examiner finds that the combination of Word and Klassen
teaches using a graphical break between characters of the written text in first
and second text messages. Ans. 4-5.
Appellant argues that it would not have been obvious to modify
Klassen with the page break of Word because the page break in Word is not
a character-based break, but rather a page break that is dependent on a
number of different formatting variables. Therefore, Appellant argues, such
a page break is unworkable in a text messaging scheme. Appellant also
argues that the Word/Klassen combination does not teach a graphical text
message break between characters that are associated with a predetermined
length that is measured in the number of characters. App. Br. 5, 11.
ISSUE
Under § 103, has the Examiner erred by finding that the combination
of Word and Klassen teaches displaying a graphic text message break
between characters of first and second text messages where each of text
messages has a predetermined maximum length measured in the number of
characters as recited in claim 1?
ANALYSIS
Claims 1-3, 5, 9, 10, and 12
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The Examiner rejects claim 1 from two different perspectives. First,
rejecting claim 1 as unpatentable over Word in view of Klassen, the
Examiner uses Word as the primary reference and Klassen as the secondary
reference. Ans. 3. Second, the Examiner concludes it would have been
obvious to use a graphical break taught by Word in Klassen’s text messages.
Ans. 4-5. This latter conclusion effectively uses Klassen as the primary
reference and Word as the secondary reference.
Nevertheless, it does not matter which reference is primary and which
reference is secondary. “[W]here the relevant factual inquiries underlying
an obviousness determination are otherwise clear, characterization by the
examiner of prior art as ‘primary’ and ‘secondary’ is merely a matter of
presentation with no legal significance.” In re Mouttet, 686. F.3d 1322,
1333 (Fed. Cir. 2012). Accord, In re Bush, 296 F.2d 491, 496 (CCPA 1961).
In Bush, the Court stated
[W]e deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B
instead of on B in view of A, or to term one reference primary
and the other secondary. It would perhaps have saved much
argument of the kind we have before us if the Patent Office had
stayed with its rejection of the claims as unpatentable over A
and B ‘considered together’ and had merely stated its reasons
for such rejection without formal alinement [sic] of the
references. Fifteen years ago this court pointed out in In re
Cowles, 156 F.2d 551, 554, 33 CCPA 1236, that such differing
forms of expression did not constitute different grounds of
rejection, were of little consequence, and that basing arguments
on them was ‘attempting to make a mountain out of a mole-
hill.’
Appellant recognizes the interchangeability of the references used by
the Examiner. See App. Br. 5:3-4 (“It would not be obvious to one of
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ordinary skill in the art to modify Klassen with the page break of Word.”);
Reply Br. 4:16-19 (“even if one were to start with the disclosure of
Klassen.”)
The Examiner finds that “Klassen show[s] us that the concept of
breaking text message payloads by using a character count is anticipated by
the prior art.” Ans. 8:10-12. More specifically, the Examiner finds that
Klassen’s disclosure teaches “SMS communications that are longer than a
particular limit, for example 160 characters, may be sent as multiple SMS
messages.” Ans. 4:10-12, citing Klassen col. 2, ll. 34-40.
Appellant agrees that that “Klassen teaches displaying a count of the
number of messages that will be sent if an SMS message is too long for a
single SMS message” and that Klassen “disclose[s] first and second text
messages used to transmit written text as part of a multipart text message.”
App. Br. 14:10-13.
The Examiner also finds that Word teaches the use of a graphical
break. Ans. 4:14; 8:5. Appellant agrees that Word teaches breaks, albeit
page breaks. App. Br. 4:24; 5:4.
The Examiner also finds that just as the page break in Word displays
the amount of space left on the page (Ans.9:2-3, 18-20), a break in Klassen
would “indicat[e] a number of allowed characters remaining for [an] SMS
message being edited.” Ans. 4:15-16.
Based upon the combined teachings of Word and Klassen, the
Examiner concludes that it would have been obvious to use a graphical
break, as taught by Word, in the text messages of Klassen. Ans. 4:13-14.
That is, the Examiner concludes, “combining the references to use a
graphical text break would be obvious to one of ordinary skill in the art at
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the time of the invention.” Ans. 8:12-13. Again, “[i]t would be obvious . . .
to use a graphical break [as taught] in Microsoft Word in the text messages
of Klassen.” Ans. 10:20-22.
Appellant does not persuasively dispute the combination presented by
the Examiner and the bases stated by the Examiner for the combination
which the record supports. Instead, Appellant argues Word individually.
For example, Appellant argues:
 The page breaks discussed in Word are dependent on the
amount of space available on a particular page – not the number of
characters that can fit within that space. App. Br. 4:24-26 (emphasis
omitted).
 The page break in Word is not a character-based break, but
rather is a page break that is dependent on a number of different formatting
variables. Such a page break is unworkable in a text messaging scheme.
App. Br. 5:4-6.
 The break in Word cannot and is not controlled by character
limit. App. Br. 5:13.
 Therefore, even if one were to combine the references in the
proposed manner, the claimed subject matter would not result. The result
would be a text message editor (Klassen) with a page break based on space
criteria (Word). App. Br. 6:10-12.
 Word would require extensive and unsupported modification to
arrive at the claimed graphical text message break. App. Br. 14:15-16.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
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1091, 1097 (Fed. Cir. 1986). Appellant’s arguments are not persuasive
because Appellant has attacked the references individually.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 1; (2) claim 8 for similar reasons; and (3) claims 2,
3, 5, 9, 10, and 12 not separately argued with particularity.
Accordingly, we will sustain the Examiner’s rejection of claims 1-3,
5, 8-10, and 12.
Claims 4 and 11
The Examiner does not provide any findings regarding claims 4 and
11. Instead, the Examiner quotes claim 4 and cites Figure 3 of Word
without comment. Ans. 5. For the rejection of claim 11, the Examiner
incorporates by reference the rejection of claim 4. Ans. 6. Appellant
contends that the Word page break is not useful as a graphical text message
break spaced with respect to written text characters to provide an indication
of the number of remaining characters in a text message. App. Br. 16. The
Examiner does not persuasively respond to Appellant’s contentions, instead
incorporating by reference the Examiner’s previous findings and
conclusions. Ans. 11.
On this record, we therefore agree with Appellant and we will not
sustain the rejection of claims 4 and 11.
Claims 6, 7, 13, and 14
The Examiner makes specific findings regarding claims 6, 7, 13, and
14. Ans. 6-7. Appellant’s arguments regarding the inapplicability of
Moeller to claims 1 and 8 are not persuasive because the Examiner did not
reject claims 1 and 8 using Moeller as a reference and because Appellant
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argues Moeller individually, rather than arguing the combination of
references.
Accordingly, we will sustain the Examiner’s rejection of claims 6, 7,
13, and 14.
CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1-3, 5-10,
and 12-14; but the Examiner did err in rejecting claims 4 and 11.

DECISION
The Examiner’s decision rejecting claims 1-3, 5-10, and 12-14 is
affirmed. The Examiner’s decision rejecting claims 4 and 11 is reversed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART