Ex Parte Pathiyal

Board of Patent Appeals and Interferences

Sep 14, 2010

11074571 (B.P.A.I. Sep. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KRISHNA K. PATHIYAL
____________

Appeal 2009-009968
Application 11/074,571
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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The Appellant appeals under 35 U.S.C. § 134(a) from a Final rejection
of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and device for
displaying and selecting the character combination choices generated by a
text disambiguation function (Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method of entering information into an electronic device
having a character entry mode and a character combination
choice selection mode, said electronic device having a text
disambiguation function, a keyboard having a plurality
of keys provided thereon, each key having at least one character
disposed thereon, and a display, the method comprising:

generating a plurality of character combination choices using
said text disambiguation function based on a selection of one or
more of said keys when said electronic device is in said
character entry mode;

displaying said character combination choices in a first spatial
arrangement on said display, said first spatial arrangement
substantially corresponding to a second spatial arrangement of a
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number of said keys, wherein each one of said character
combination choices corresponds to a particular one of said
number of said keys; and

upon termination of said character entry mode, switching to
said character combination choice selection mode and inputting
a particular one of said character combination choices when the
particular one of the number of said keys that corresponds to
said particular one of said character combination choices is
selected based on the second spatial arrangement.

The References
The Examiner relies on the following references as evidence:
Lun Pun US 2004/0164951 A1 Aug. 26, 2004
(filed Feb. 24, 2003)
Herigstad US 2004/0174400 A1 Sep. 9, 2004
(filed Mar. 15, 2004)

The Rejection
The following rejection is before us for review:
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lun Pun and Herigstad.
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments which the Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).

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II. ISSUE
Has the Examiner erred in finding that the combination of Lun Pun
and Herigstad teaches or fairly suggests “displaying said character
combination choices in a first spatial arrangement on said display, said first
spatial arrangement substantially corresponding to a second spatial
arrangement of a number of said keys, wherein each one of said character
combination choices corresponds to a particular one of said number of said
keys” and “upon termination of said character entry mode, switching to said
character combination choice selection mode and inputting a particular one
of said character combination choices when the particular one of the number
of said keys that corresponds to said particular one of said character
combination choices is selected based on the second spatial arrangement,” as
recited in claim 1?

III. PRINCIPLES OF LAW
Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).
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IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Lun Pun
1. Lun Pun discloses a method and system for efficiently inputting
and displaying Asian character text and the character combination choices
using a disambiguating process by selecting the combination character
choices:
As an example of use of the system, we refer now to FIGS. 9A-
9D, which illustrate the keystrokes needed to input Hangul
character 830. (FIG. 9D) Specifically, the user enters, via a
"short" press of numeric keys 4, 1, and 1, each press of which
has the effect of both selecting a keycap jamo and presenting a
list of new candidates. First, the user presses the numeric key 4
(805) to select jamo 807 which results in a display of the
number "4" 801 and a display of candidates 803, of which the
center character is highlighted because it is the most likely
character.
Now that the user has the first portion of the intended character,
the user now added the next aspect by pressing numeric key 1
(815) to select jamo 817, which results in display 811 and
candidates 813, again with the center candidate highlighted.
After making that choice, the user presses key 1 (826) again and
thus adds "1" to display 820 and presents list of candidates 822,
with candidate 824, the desired character, highlighted.
([0054]-[0055]; figs. 9A-9C).

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2. Lun Pun further discloses a process of utilizing a
disambiguation key to select a combination character choice among the
combination character choices:
To select the desired character 824 from the list of candidates,
numeric key "4" (834) is pressed and held. The result is that
candidate 824 is displayed in user choice area 106 as character
830, and previous jamo selection numerics [sic] are erased. A
new list of candidates 832 is displayed with the center
candidate highlighted.
([0055]; fig. 9D).
Herigstad
3. Herigstad discloses that a numbered keypad with keys can
trigger an event in response to the selection of one of the keys associated
with the sections (graphical or textual) on the display ([0007]).

V. ANALYSIS
The Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
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to the Appellant’s Brief to show error in the proffered reasoned conclusion.
Id.
Grouping of Claims

The Appellant has elected to argue claims 1-12 together as a group
(App. Br. 3). Therefore, we select independent claim 1 as the
representative claim for this group, and we will address the Appellant’s
arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 103(a) rejections

With respect to claim 1, the Appellant contends that neither Lun Pun
nor Herigstad teaches the disputed claim limitations (App. Br. 4). In
particular, the Appellant contends that:
Lun Pun already has its own particular method of facilitating
the selection of one of the displayed candidates. As a result,
there is no reason that one would be prompted upon reading
Lun Pun to consider the applicability of the Hergistad [sic,
Herigstad] method of display and selection. In fact, the
Hergistad [sic, Herigstad] method of display and selection
would not be possible in the Lun Pun system that is described
and shown because the candidate selection area only has room
for a single line of candidates.
(App. Br. 6).
We disagree with the Appellant’s contentions. We find Lun Pun
teaches that when a user enters jamo characters (highlighted 807, 817, and
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826, see figs. 9A-9C respectively) by using a key pad combination of
numeric and Korean characters, and the partial character combination
choices are displayed on the screen (FF 1), which is in the character entry
mode. We also find Lun Pun teaches that the user uses the key pad with
numeric numbers 1-9 and 0 (there is no highlighted area in the key pad that
is the character combination choice selection mode) to enter the choice of
combination characters among the candidates of the combination characters
(FF 2). What a reference teaches is a question of fact. In re Baird, 16 F.3d
380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir.
1992). Thus, we find that Lun Pun, taken alone, teaches all limitations as
required by the independent claim 1.
Because Lun Pun, taken alone, teaches all limitations of the
independent claim 1, we find that the combination of Lun Pun and Herigstad
also teaches all the limitations set forth in independent claim 1. We find the
teachings of Herigstad to be cumulative of those discussed above with
respect to Lun Pun.
The Appellant further contends that “there is no reason that one would
be prompted upon reading Lun Pun to consider the applicability of the
Herigstad method of display and selection. In fact, the Herigstad method of
display and selection would not be possible in the Lun Pun system . . .” (App.
Br. 6). The Examiner’s rejection is in “[r]eliance on hindsight in such a
manner” (Id.) that is improper.
We disagree with the Appellant’s contentions. To determine whether
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there was an apparent reason to combine the known elements in this way,
[o]ften it will be necessary . . . to look to interrelated teachings of
multiple patents; the effects of demands known to the design com-
munity or present in the marketplace; and to the background
knowledge possessed by a person having ordinary skill in the art . . . .
To facilitate review, this analysis should be made explicit. . . . [But it]
need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can [consider] the
inferences and creative steps that a person of ordinary skill in the art
would employ.

KSR, 550 U.S. at 418 (citation omitted).
Here, utilizing a numbered keypad with keys to select a section on
display was well known and widely used at the time of the invention, as
taught by Herigstad. Therefore, we find that a person of ordinary skill in the
art seeking to simplify the selecting process on the display would have
employed the known Herigstad technology. In addition, we find that the
Examiner’s obviousness rejection was not based on impermissible hindsight,
rather based on “the inferences and creative steps a person of ordinary skill
in the art would employ.” (Id.) Accordingly, we conclude that the combined
teachings of the two references render the claimed invention obvious.
Therefore, based on the record before us, we find the Appellant has
not shown the Examiner erred in determining that the cited prior art
discloses the disputed claim limitations as required by claim 1.
Accordingly, we sustain the Examiner’s rejection of representative
claim 1 as being unpatentable over the combination of Lun Pun and
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Herigstad under 35 U.S.C. § 103. Independent claim 7 contains similar
limitations, and the Appellant presents similar arguments thereto. Therefore,
we also sustain the Examiner’s obviousness rejection of independent claim 7.
We also sustain the Examiner’s obviousness rejection of its
dependent claims 2-6, and 8-12, which have not been separately argued,
and fall with its base claims. 37 C.F.R. § 41.37 (c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
VII. CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings the applied references with Appellant’s countervailing
evidence and arguments for nonobviousness. On this record, we conclude
that the claimed invention encompassed by appealed claims 1-12 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).

VII. ORDER
We affirm the obviousness rejections of claim 1-12 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED

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