Ex Parte Colley

Patent Trial and Appeal Board

Jan 18, 2017

12767344 (P.T.A.B. Jan. 18, 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.
12/767,344 04/26/2010 Ashley Colley 042933/388562 3469
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
LEIBY, CHRISTOPHER E
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
01/20/2017 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 sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHLEY COLLEY
Appeal 2016-004903
Application 12/767,3441
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4—16, 20, 31, 32, and 38-40. Appellant has previously
canceled claims 2, 3, 17—19, 21—30, and 33—37. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Nokia Technologies
Oy. App. Br. 2.
Appeal 2016-004903
Application 12/767,344
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate to an apparatus,
method, computer program and user interface with a tactile indication.
Abstract.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code;
wherein the at least one memory and the computer
program code are configured to, with the at least one processor,
enable the apparatus to:
receive input from a user selecting a user interface item
and selecting a tactile indication wherein the apparatus is
configured to enable the user interface item to be selected
before or after the tactile indication; and
store information indicating that the user interface item
is associated with the user selected tactile indication in a
database so that the user selected tactile indication is provided
whenever the user interface item is displayed.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Oct. 20, 2015); Reply Brief ("Reply Br.," filed Apr. 5, 2016); Examiner's
Answer ("Ans.," mailed Feb. 5, 2016); Final Office Action ("Final Act.,"
mailed Feb. 6, 2015); and the original Specification ("Spec.," filed
Apr. 26, 2010).
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Appeal 2016-004903
Application 12/767,344
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Vartanian et al. ("Vartanian") US 2010/0238114 A1 Sept. 23, 2010
Rejection on Appeal
Claims 1, 4—16, 20, 31, 32, and 38-40 stand rejected under 35 U. S. C.
§ 102(e) as being anticipated by Vartanian. Ans. 3.
ISSUE
Appellant argues (App. Br. 6—11; Reply Br. 1 4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by
Vartanian is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses an
apparatus enabled to carry out the limitations of:
receive input from a user selecting a user interface item and
selecting a tactile indication wherein the apparatus is
configured to enable the user interface item to be selected
before or after the tactile indication; and
store information indicating that the user interface item is
associated with the user selected tactile indication in a
database so that the user selected tactile indication is provided
whenever the user interface item is displayed,
as recited in claim 1? (Emphasis added).
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Appeal 2016-004903
Application 12/767,344
ANALYSIS
We agree with particular arguments advanced by Appellant with
respect to claim 1 for the specific reasons discussed below. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellant contends, inter alia:
[T]he claims require "storing information indicating that
the user interface item is associated with a selected tactile
indication in a database." This feature is not disclosed in
Vartanian. The Office Action argues this feature is disclosed in
paragraph 34. However, paragraph 34 only discloses that
software instructions can be used to predict or anticipate
keystrokes. There is no mention of storing or databases.
Furthermore, the program instructions do not relate to user
selected tactile indications.
App. Br. 9.
Additionally, "[f]rom the wording of this claim alone, it is clear that
the association between the tactile indication and the user interface item is
information that is stored in the database." Reply Br. 1.
We have reviewed Appellant's arguments, supra, the cited prior art
(see Vartanian Figs. 1, 4, || 31—32, 34, 37), the Examiner's Rejection (Final
Act. 2—3) and "Response to Arguments" (see Ans. 12—15), and are
persuaded the Examiner erred in finding Vartanian anticipates claim 1.
The Examiner finds “the tactile indication may be preprogrammed
initialized by the system. Such as depicted in figure 4 and described in
paragraph [0034] wherein the keyboard selects instructions in software 108
stored in memory 106 shown in figure 1. The tactile indication may also be
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Appeal 2016-004903
Application 12/767,344
programmed as also described above in reference to the braille programming
of paragraph [0032].” Ans. 15.
We do not find disclosure in Vartanian of a database that stores
information where "the user selected tactile indication is provided whenever
the user interface item is displayed," as recited in claim 1. See Final Act. 3,
citing Vartanian 137, Ans. 14—15, citing Vartanian || 32, 34. None of these
cited sections disclose a database that is used to store the specific user
selected tactile indication associated with the particular user interface item.
Based on this evidence, we find the Examiner has not developed the record
sufficient to establish a prima facie case of anticipation.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
the cited prior art to disclose the disputed limitations of claim 1, such that we
find error in the Examiner's resulting finding of anticipation. Therefore, we
cannot sustain the Examiner's anticipation rejection of independent claim l.3
In light of our reversal of the rejection of independent claim 1, supra,
we also reverse the anticipation rejection of independent claims 16 and 31,
which recite the contested limitations in commensurate form. For the same
3 Because a rejection under § 103 is not before us on appeal, we do not
reach and express no opinion as to whether at least claim 1 might be obvious
over additional teachings and suggestions of the Vartanian reference,
considered alone, or in combination with one or more additional references.
In the event of further prosecution of this appl ication , we leave such
consideration to the Examiner. Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
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Appeal 2016-004903
Application 12/767,344
reasons, we cannot sustain this anticipation rejection of dependent claims 4—
15, 20, 32, and 38—40 that depend from independent claims 1,16, and 31.
CONCLUSION
The Examiner erred with respect to the anticipation rejection of
claims 1, 4—16, 20, 31, 32, and 38—40 under 35 U.S.C. § 102(e) over the
cited prior art of record, and we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1, 4—16, 20, 31,
32, and 38—40.
REVERSED
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