Ex Parte CHOI

Patent Trial and Appeal Board

Oct 25, 2017

12960863 (P.T.A.B. Oct. 25, 2017)

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
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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.
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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
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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
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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.
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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
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