13604439 (P.T.A.B. Oct. 22, 2018)

Ex Parte WILLMORE et al

Patent Trial and Appeal BoardOct 22, 2018

13604439 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/604,439 09/05/2012 Christopher P. WILLMORE 69753 7590 10/24/2018 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 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 ATTORNEY DOCKET NO. 106842049500 (Pl4394US1) CONFIRMATION NO. 1026 EXAMINER JOSEPH, SHAWN S ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 10/24/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): EOfficeLA@mofo.com PatentDocket@mofo.com pair_mofo@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER P. WILLMORE, NICHOLAS K. JONG, and STEPHEN W. SW ALES Appeal2017-001781 Application 13/604,439 1 Technology Center 2100 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-25, which are all of the claims pending in the application. A hearing was held on October 9, 2018. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. Technology The application relates to "the automatic correction of words input on a touch-sensitive device." Spec. ,r 1. In particular, the application relates to correcting a first typed word, then revisiting that change with a "multi-word automatic correction" given additional context from a subsequently-typed 1 According to Appellants, the real party in interest is Apple Inc. App. Br. 2. Appeal2017-001781 Application 13/604,439 word. Id. ,r 4. For example, the typed characters "nes" might initially be corrected to "new", but if the user subsequently types "york", then the system might correct both the first corrected word ("new") and the second typed word ("york") with a corrected phrase ("New York"). Id. Illustrative Claim Claim 1 is illustrative and reproduced below. 1. A computer-implemented method, comprising: receiving a first set of one or more touch points on a touch- sensitive keyboard; inserting a first typed word into an input string, including, for each touch point of the first set, inserting a corresponding typed character of the touch-sensitive keyboard into the input string; selecting an initial corrected word; replacing the first typed word in the input string with the initial corrected word; receiving a second set of one or more touch points on the touch-sensitive keyboard; inserting a second typed word into the input string, including, for each touch point of the second set, inserting a corresponding typed character of the touch-sensitive keyboard into the input string; selecting one or more additional corrected words; and replacing the initial corrected word and the second typed word in the input string with the one or more additional corrected words. Rejections Claims 1, 2, 4--13, and 15-25 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over the combination of the Admitted Prior Art (Spec. ,r,r 2-3) and Fein et al. (US 5,940,847; Aug. 17, 1999). Final Act. 2. 2 Appeal2017-001781 Application 13/604,439 Claims 3 and 14 stand rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of the Admitted Prior Art, Fein, and Zhai et al. (US 2013/0314352 Al; Nov. 28, 2013). Final Act. 13. ISSUES 1. Did the Examiner err in finding the combination of the Admitted Prior Art and Fein teaches or suggests "replacing the initial corrected word and the second typed word in the input string with the one or more additional corrected words," as recited in claim 1? 2. Did the Examiner err in finding the Admitted Prior Art teaches or suggests "maintaining a correspondence between one or more characters of the input string and each of the first set of touch points," as recited in claim 4? 3. Did the Examiner err in finding the combination of the Admitted Prior Art and Fein teaches or suggests "selecting the one or more additional corrected words consists of selecting an additional corrected word," as recited in claim 1 O? 4. Did the Examiner err in finding the combination of the Admitted Prior Art and Fein teaches or suggests "the additional corrected word is selected based on both the first and second sets of touch points," as recited in claim 11? ANALYSIS Claims 1, 12, and 23 Independent claims 1, 12, and 23 recite "replacing the initial corrected word and the second typed word in the input string with the one or more additional corrected words." 3 Appeal2017-001781 Application 13/604,439 The Examiner finds that the Admitted Prior Art teaches "conventional autocorrect methods, such as to make spelling corrections" of individual words. Ans. 4; Spec. ,r 3. The Examiner next finds that Fein teaches the "correction of a set of words, based on contextual errors," such as correcting the multi-word phrase "gorilla warfare" to "guerilla warfare". Ans. 4; Fein Fig. 2A. The Examiner then combines the two references: [T]aken together, a correction can be made for a spelling error in a first typed word, for example, "grilla" is corrected to "gorilla," using conventional autocorrect methods. Further, if a user then continues to enter the typed word, "warfare," a contextual correction is made, based on Fein [i.e., changing "gorilla warfare" to "guerilla warfare"]. Ans. 4. Appellants argue that "[ n Jone of the references, alone or in combination, even hint at replacing an already-corrected word" and allege the Examiner is relying on hindsight. App. Br. 7. We are not persuaded by Appellants' arguments. We agree with the Examiner that "Fein is an enhancement on conventional editing systems such as [the Admitted Prior Art], ... not a substitute." Ans. 15 (citing Fein 3:20-26); see also Fein 5:35-39 ("[I]t is anticipated that commercial embodiments of the present invention will be implemented as integral parts of 'WORD 97,' ... manufactured by Microsoft Corporation, assignee of the present invention."). Appellants have not persuaded us of any error in the Examiner combining Fein's multi-word autocorrect with a conventional single-word autocorrect (such as in the Admitted Prior Art). For example, it seems unlikely that a person of ordinary skill in the art implementing Fein's multi-word autocorrect in a conventional editing system, such as Microsoft Word, would have simply ignored all single-word typos. Instead, it would 4 Appeal2017-001781 Application 13/604,439 have been obvious to use both single- and multi-word autocorrect in conjunction with each other. Although Appellants argue that this combination would not always yield the optimal result (e.g., if the typo "grilla" was first corrected to "grills", then "grills warfare" might not be corrected to "guerrilla warfare"), see Reply Br. 4--5, such perfection is not commensurate with the scope of the claims as presently written. Appellants also argue that the Admitted Prior Art "never mentions touch points, characters corresponding to touch points, or input strings." App. Br. 6 (emphasis omitted). However, "[t]he prior inventor does not need to .... conceive of its invention using the same words as the patentee would later use to claim it." Teva Pharm. Indus. Ltd. v. AstraZeneca Pharms. LP, 661 F.3d 1378, 1384 (Fed. Cir. 2011); Ans. 7-8. Here, the Admitted Prior Art discloses "touching ... the touch sensor panel using a finger ... at a location often dictated by a user interface (UI) being displayed by the display device" in order to identify "characters input by a user" and "determine a word that a user intended to type based on" that. Spec. ,r,r 2-3; Ans. 7. We agree with the Examiner that this teaches or suggests the claimed touch points (i.e., on the touch sensor panel), typed characters (i.e., dictated by the UI), and input string of the typed word. According! y, we sustain the Examiner's rejection of independent claims 1, 12, and 23, and their dependent claims 2, 3, 5-9, 13, 14, 16-20, and 24, which Appellants do not argue separately. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claims 4, 15, and 25 Dependent claims 4, 15, and 25 recite "maintaining a correspondence between one or more characters of the input string and each of the first set of 5 Appeal2017-001781 Application 13/604,439 touch points"; "retrieving the first set of touch points based on the maintained correspondence"; and "the selection of the one or more additional corrected words is based on the first set of touch points." The Examiner determines that in the Admitted Prior Art, "[t]he correspondence is 'maintained' since the word is created from the 'touch points' and displayed." Ans. 19 (quotation omitted). "For example, the simple fact that a typed letter displays the letter shown on the key used to type it is a 'maintained correspondence"' and "[t]he continued display of that letter is additionally, and alternatively, a 'maintained correspondence."' Id. We agree with Appellants, however, that this is not a reasonable interpretation in light of the entirety of the claim. See App. Br. 8-9; Reply Br. 11-13. These claims require retrieving the touch points "based on the maintained correspondence" and selecting additional corrected words "based on the ... touch points." Reply Br. 12. Displaying the resulting word might maintain a correspondence between the word and the characters, but the Examiner has not sufficiently shown the cited prior art teaches or suggests maintaining a correspondence between the characters and the touch points. For example, after the first typed word is corrected, the Examiner has not identified any teaching or suggestion in the record of a correspondence between the initial corrected word and the touch points. See id. at 13. Accordingly, we do not sustain the Examiner's rejection of claims 4, 15, and 25. Claims 10 and 21 Claims 10 and 21 recite "selecting the one or more additional corrected words consists of selecting an additional corrected word." 6 Appeal2017-001781 Application 13/604,439 Appellants argue that "Claims 10 and 21 require replacing two words [i.e., the 'initial corrected word' and the 'second typed word'] with a single additional corrected word [i.e., 'an additional corrected word']"2 whereas Fein discloses "(1) replacing a single word with a single word or (2) replacing two words with two words." App. Br. 9 (italics added). We agree with the Examiner, however, that Fein discloses correcting the two-word phrase "when ever" to the single word "whenever." Ans. 22- 23. Although Appellants argue there is no discussion of "a first replacement of the word 'when"' (Reply Br. 15), this is already addressed by the Examiner's combination for claim 1 discussed above (i.e., correcting a typo in a first word, then correcting a multi-word phrase). The Examiner's obviousness determination is not limited to one specific example ( e.g., "grilla warfare") and instead applies equally here to a typo in a first word ( e.g., correcting "whn" to "when") followed by correcting the larger phrase (e.g., correcting "when ever" to "whenever"). E.g., Ans. 4. According! y, we sustain the Examiner's rejection of claims 10 and 21. Claims 11 and 22 Claims 11 and 22 recite "the additional corrected word is selected based on both the first and second sets of touch points." Appellants argue that "there is no indication in AAP A or Fein, alone or in combination, that touch points from a first word are retained or considered for selection of an additionally replaced word, once the first word is replaced." Reply Br. 18; see also App. Br. 10-11. 2 Because we affirm the rejection even under Appellants' interpretation, we need not reach whether the claimed "an additional corrected word" is limited to a single word or whether "an" means "one or more." See Ans. 21-22. 7 Appeal2017-001781 Application 13/604,439 We agree with Appellants. Similar to claim 4, the Examiner has not shown that the suggested selection of the additional corrected word is based on touch points rather than characters. Accordingly, we do not sustain the Examiner's rejection of claims 10 and 21. DECISION For the reasons above, we affirm the Examiner's decision rejecting claims 1-3, 5-10, 12-14, 16-21, 23, and 24, but we reverse the Examiner's decision rejecting claims 4, 11, 15, 22, and 25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED-IN-PART 8