Ex Parte ColleyDownload PDFPatent Trial and Appeal BoardJan 18, 201712767344 (P.T.A.B. Jan. 18, 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. 12/767,344 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). 2 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). 3 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 4 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. 5 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 6 Copy with citationCopy as parenthetical citation