Ex Parte CHOIDownload PDFPatent Trial and Appeal BoardOct 25, 201712960863 (P.T.A.B. Oct. 25, 2017) Copy Citation 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. 12/960,863 12/06/2010 Hyun Bae CHOI 0203-0328 8069 68103 7590 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER CHEN, FRANK S ART UNIT PAPER NUMBER 2611 NOTIFICATION DATE DELIVERY MODE 10/27/2017 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): u sdocketing @ j effersonip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HYUN BAE CHOI Appeal 2017-002978 Application 12/960,8631 Technology Center 2600 Before ERIC S. FRAHM, LARRY J. HUME, and NORMAN H. BEAMER, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 19, 21, 23, 24, 27—29, 31, 33, 35, and 37—41. Claims 1—18, 20, 22, 25, 26, 30, 32, 34, and 36 are cancelled. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Samsung Electronics Co., Ltd., as the Real Party in Interest. (App. Br. 2.) Appeal 2017-002978 Application 12/960,863 THE INVENTION Appellant’s disclosed and claimed invention is directed an optional key map for an electronic device. (Abstract.) Independent claim 19, reproduced below, is illustrative of the subject matter on appeal: 19. A method for operating an electronic device, the method comprising: displaying a first character key map in a first display area and a text input region in a second display area, wherein the first character key map is displayed in the entire first display area; in response to a first touch input, switching the first character key map to a second character key map in the first display area; in response to at least one second touch input to select at least one character key of the second character key map while the second character key map is displayed, displaying an optional key map while continuing to display the second character key map; and in response to a third touch input while displaying the optional key map, switching the second character key map to the first character key map, wherein, while receiving input to the first character key map, the optional key map remains, wherein the optional key map is displayed between the first display area and the second display area, wherein, if the optional key map is displayed, a size of the second display area is reduced corresponding to a size of the optional key map, wherein the optional key map includes a plurality of keys, wherein at least one key of the plurality of keys of the optional key map comprises a single input item comprised of or associated with the selected at least one character key of the second character key map, and 2 Appeal 2017-002978 Application 12/960,863 wherein, in response to a single touch input on the at least one key of the plurality of keys of the optional key map, the single input item is displayed in the text input region of the second display area. REJECTIONS The Examiner rejected claims 19, 21, 28, 29, 31, and 38—41 under 35 U.S.C. § 103(a) as being unpatentable over Kida et al. (US 8,289,283 B2, issued Oct. 16, 2012), Cox et al., Microsoft Office Word 2007 Step by Step (2007), and Moon et al. (US 6,433,801 Bl, issued Aug. 13, 2002). (Final Act. 2-22.) The Examiner rejected claims 23 and 33 under 35 U.S.C. § 103(a) as being unpatentable over Kida, Cox, Moon, and Sylthe et al. (US 7,725,813 B2, issued May 25, 2010). (Final Act. 22—24.) The Examiner rejected claims 24, 27, 35, and 37 under 35 U.S.C. § 103(a) as being unpatentable over Kida, Cox, Moon, and Torres (US 5,384,910, issued Jan. 24, 1995). (Final Act. 24—28.) ISSUE ON APPEAL Appellant’s arguments in the Appeal Brief present the following dispositive issue:2 Whether the Examiner erred in finding the combination of Kida, Cox, and Moon teaches or suggests the independent claim 19 limitations: in response to at least one second touch input to select at least one character key of the second character key map while 2 Rather than reiterate the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed Sept. 9, 2016) (herein, “App. Br.”); the Reply Brief (filed Dec. 13, 2016) (herein, “Reply Br.”); the Final Office Action (mailed Apr. 15, 2015) (herein, “Final Act.”); and the Examiner’s Answer (mailed Oct. 14, 2016) (herein, “Ans.”) for the respective details. 3 Appeal 2017-002978 Application 12/960,863 the second character key map is displayed, displaying an optional key map while continuing to display the second character key map; and . . . wherein the optional key map is displayed between the first display area and the second display area .... and the commensurate limitations recited in independent claim 29. (App. Br. 6-13.) ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments the Examiner erred. We disagree with Appellant’s arguments, and we adopt as our own (1) the pertinent findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 2—28) and (2) the corresponding findings and reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. (Ans. 3—5.) We concur with the applicable conclusions reached by the Examiner, and emphasize the following. In finding the combination of Kida, Cox, and Moon teaches or suggests the claim limitations at issue, the Examiner relies on the disclosure in Kida of a virtual keyboard displayed in one area on a touch sensitive display of a device, with the characters that are input at the keyboard displayed on a separate text input area of the display. (Final Act. 2—3; Kida Abstract, Fig. 3A.) The Examiner also relies on the disclosure in Cox of a symbol dialog box provided in Microsoft Word which contains a “Font/Subset” area displaying various character maps in response to cursor inputs, and a separate “Recently used symbols” area that displays the characters most recently selected from the Font/Subset area — where selecting a character in either area results in that character inserted into the 4 Appeal 2017-002978 Application 12/960,863 document. (Final Act. 3—7; Cox, p. 181.) The Examiner further relies on the disclosure in Moon of a touch screen display which, in response to a touch input, reduces a window displayed on the screen to accommodate the adjacent display of an additional window. (Final Act. 8— 9; Moon Figs. 3, 4.) Appellant argues the combination fails to teach the limitations listed above. (App. Br. 9-13.) In particular, Appellant focuses on the alleged inappropriateness of relying on Moon: In MOON, the purpose of the menu item is to cause the display of the second level of menu when the menu item is selected. However, MOON's menu items do not reasonably correspond to Appellant's second character key map and optional key map, nor do they reasonably correspond to the key maps of KIDA and COX. . . . And because COX’s key maps and MOON’s menu items are fundamentally so different, COX’s key maps and MOON’s menu items could not be combined without changing their principle of operation. . . . The selection of MOON’s s menu items does not correspond to at least one second touch input to select at least one character key of the second character key map. . . . [T]he second level of menu items are displayed adjacent to a text input area but not between the menu item and the text input area. That is, MOON does not teach that the second level of menu items are displayed between the menu items and a text input area. (App. Br. 9—12.) (Emphasis omitted). None of these arguments are persuasive, because Appellant argues Moon individually, whereas the Examiner finds the limitations at issue taught or suggested by the combination of Kida, Cox, and Moon. (Ans. 3—5.) Non-obviousness cannot be established by attacking references 5 Appeal 2017-002978 Application 12/960,863 individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant accurately characterizes Examiner’s reliance on Moon: “[T]he Examiner had to extract an abstract concept of MOON’s menu items to then apply that abstract concept to COX' s key maps.” (App. Br. 10.) It is not error for the Examiner to so rely on Moon: “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 F.2d at 425. Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In reNievelt, 482 F.2d 965, 968 (CCPA 1973). Appellant also argues the “recently used” key map of Cox is “displayed prior to and while the second character key map ... is displayed,” and thus is not subsequently displayed in response to a touch input as required by the claims. (App. Br. 11.) (Emphasis omitted). Again, this argument is unpersuasive as focusing on Cox alone, whereas the Examiner relies on the combination to teach or suggest this aspect of the claims. (Ans. 4—5.) Accordingly, we sustain the Examiner’s rejection of independent claims 19 and 29. 6 Appeal 2017-002978 Application 12/960,863 CONCLUSION For the reasons stated above, we sustain the obviousness rejection of independent claims 19 and 29 over Kida, Cox, and Moon. We also sustain the obviousness rejections of claims 21, 28, 31, and 38-41 over Kida, Cox, and Moon, of claims 23 and 33 over Kida, Cox, Moon, and Sylthe, and of claims 24, 27, 35, and 37 over Kida, Cox, Moon, and Torres, which rejections are not argued separately with particularity. (App. Br. 13—15.) DECISION We affirm the Examiner’s decision rejecting claims 19, 21, 23, 24, 27—29, 31, 33, 35, and 37—41. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED 7 Copy with citationCopy as parenthetical citation