Ex Parte Fux et al

Patent Trial and Appeal Board

Aug 11, 2017

12574234 (P.T.A.B. Aug. 11, 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.
12/574,234 10/06/2009 Vadim Fux 29717-0384002 7755
94149 7590 08/15/2017
Fish & Richardson P.C. (Blackberry)
P.O.Box 1022
Minneapolis, MN 55440
EXAMINER
DESIR, PIERRE LOUIS
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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):
patdoctc@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VADIM FUX and JASON T. GRIFFIN
Appeal 2015-000007
Application 12/574,234
Technology Center 2600
Before JUSTIN BUSCH, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-000007
Application 12/574,234
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent claims. The claims relate generally
to adding “language objects” to a list in order to expedite text input on a
handheld electronic device. Spec. Abstract, 12. Claim 1 is reproduced
below:
1. A method of entering text into a handheld electronic
device having at least one application for receiving text from
sources external to the handheld electronic device, and a text
input process that accesses one or more lists of stored language
objects to facilitate generation of text, the method comprising:
receiving, by the handheld device, a wireless
transmission from an external source, the wireless
transmission comprising text;
processing the text, by the handheld device, said
processing comprising:
parsing the text into language objects;
scanning the language objects to identify a
new language object not in the one or more lists of
stored language objects;
determining a language corresponding to the new
language object based on an analysis of the one or more
lists of stored language objects;
determining that the language of the new language
object corresponds to a language associated with the text
input process; and
adding the new language object to the one or more
lists of stored language objects for use by the text input
process in generating text based on the determination that
the language of the new language object corresponds to
the language of the text input process.
2
Appeal 2015-000007
Application 12/574,234
REJECTIONS1
Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder (US 5,797,098; Aug. 18, 1998), Levin (US
2004/0102957 Al; May 27, 2004), andKoponen (US 7,155,517 Bl;
Dec. 26, 2006). Final Act. 3—11.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroeder, Levin, Koponen, and Bhargava (US
2003/0204568 Al; Oct. 30, 2003). Final Act. 11-12.
Claims 8—10 and 13—15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schroeder, Levin, Koponen, and King (US
6,286,064 Bl; Sep. 4, 2001). Final Act. 12-20.
Claims 11, 12, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schroeder, Levin, Koponen, King, and Bhargava.
Final Act. 20—25.
OPINION
The Examiner rejects independent claim 1 in view of the combined
teachings of Schroeder, Levin, and Koponen. Final Act. 4—8. Specifically,
the Examiner finds Schroeder teaches or suggests the processing the text
step, which includes the steps of parsing the text and scanning the language
objects to identify a new language object. Id. at 4—5. The Examiner relies
on Koponen merely for teaching the receiving a wireless transmission step.
Id. at 7.
1 Claims 1, 5, 8, 9, and 13 were rejected for obviousness-type double
patenting as being unpatentable over claims 1,5,6, 7, and 11 of U.S. Patent
No. 7,620,540. Final Act. 26—27. In response to Appellants filing a terminal
disclaimer, the Examiner withdrew those rejections in the Answer. Ans. 2.
3
Appeal 2015-000007
Application 12/574,234
Appellants contend Levin fails to teach or suggest the adding the new
language object step because Levin discloses using a maintenance utility to
add new language objects, whereas the claim recites “adding the new
language object. . . based on the determination that the language of the new
language object corresponds to the language of the text input process.” App.
Br. 12. Appellants also argue the Examiner’s rejection relies on improper
hindsight because the Examiner relies on Levin’s general disclosure of some
type of input other than manual input as a basis for asserting that “Levin can
be ‘understood as providing the argued functionality of the claim
limitation.’” Id. at 13 (citing Adv. Act. 5). Appellants contend the
Examiner’s finding is based only on the fact that Levin does not preclude the
addition of entries as recited and, therefore, the finding relies on
impermissible hindsight. Id.
The Examiner responds that “in order to add or update entries in the
system of Levin, [the recited] steps must be followed for a proper
implementation therein.” Ans. 7—8. The Examiner paraphrases the two
recited determining steps and the adding step and states that “Levin is
directed to all of these steps, as it explicitly recites that the ‘dictionary
maintenance utility allows creation and modification of lexical entries,
including source entries ... in the dictionary.’” Id. at 7. The Examiner then
finds Levin teaches or suggests the two determining steps because “Levin
must find a valid language associated with the source entries.” Id. at 7. The
Examiner finds Levin then creates entries in a particular dictionary that is
part of a “core language word pair,” such that there “must also be an
assessment that the existing core language word pairs of a particular
4
Appeal 2015-000007
Application 12/574,234
dictionary is lacking the appropriate entries to address the new language
objects.” Id. at 8.
Appellants counter that the Examiner summarizes the two determining
steps and the adding step, “and then vaguely maps the disclosure of Levin to
the paraphrased claim limitations.” Reply. Br. 3. Appellants argue Levin
merely teaches manual addition or modification of entries and, therefore,
Levin does not teach or suggest “adding the new language object. . . based
on the” second determining step. Id. at 3^4. Appellants assert the
Examiner’s paraphrasing and general conclusion that “it is unclear how the
teachings [of Levin] would not be applicable to the claim limitations in
question” is an improper conclusory generalization and fails to provide
sufficient explanation. Id. at 4—5.
Based on this record, we agree with Appellants that the Examiner has
not established that Levin teaches the recited adding step. In particular, the
Examiner has not explained sufficiently how the cited portions of Levin
teach or suggest adding a new language object “based on the determination
that the language of the new language object corresponds to the language of
the text input process.” Rather, we agree with Appellants that Levin merely
discloses a manual input and modification process using the disclosed
dictionary maintenance utility. With respect to the Examiner’s findings that
Levin teaches “encountered” words are added to Levin’s dictionaries, Ans.
6, and that Levin teaches adding entries to a particular dictionary, which
must include an assessment that the particular dictionary is lacking the entry,
id. at 7—8, these general statements are insufficient to demonstrate that Levin
teaches the specific language recited in claim 1.
5
Appeal 2015-000007
Application 12/574,234
Although the recitation that the addition of the entry is “based on” the
second determining step is broad, we do not find the cited portions of Levin
teach or suggest entry of a new language object that is related to a
determination of that the new object’s language corresponds to the text input
process language. Even to the extent that the “encountered” words in Levin
may be added through some means other than manual input, there is no
suggestion that such an addition would be based on determining any
language correspondence. Similarly, to the extent Levin must identify a
language of a dictionary pair to which the new language object should be
added, that is insufficient to demonstrate that Levin teaches or suggests
adding the new language object “based on” any determination of a language
correspondence between the new language object and the text input process
(e.g., the language correspondence may be irrelevant or assumed). There is
no legally recognizable essential gist or heart of the invention. W.L. Gore &
Assocs., Inc. v. Garlock, Inc., Ill L.2d 1540, 1548 (Led.Cir.1983), cert,
denied, 469 U.S. 851 (1984). All words in a claim must be considered in
judging the obviousness of the claimed subject matter. See In re Wilson, 424
L.2d 1382, 1385.
Moreover, the Examiner has not sufficiently explained why a person
having ordinary skill in the art would add the new language object “based
on” the second determining step in light of the identified teachings of
Schroeder and Levin. Essentially, the Examiner dissects the claim language
and finds Schroeder and Levin each teach a portion of the limitations, but
fails to explain how the combination would teach the recited limitations,
including the claimed dependencies.
6
Appeal 2015-000007
Application 12/574,234
Independent claim 13 recites limitations similar in scope to the two
determining steps and the adding step. Appellants argue claim 13 is
patentable for the same reasons asserted with respect to claim 1. Appellants
present no separate substantive arguments for claims 2—12, which ultimately
depend from claim 1, or claims 14—17, which ultimately depend from claim
13. The additional references cited by the Examiner in the rejection of
claims 7—17 are not relied upon to cure the above-identified deficiency in
claim 1. Therefore, on this record, we are persuaded the Examiner erred in
rejecting: claims 1—6 under 35 U.S.C. § 103(a) as obvious in view of the
combined teachings of Schroeder, Levin, and Koponen; claim 7 under
35 U.S.C. § 103(a) as obvious in view of the combined teachings of
Schroeder, Levin, Koponen, and Bhargava; claims 8—10 and 13—15 under
35 U.S.C. § 103(a) as obvious in view of the combined teachings of
Schroeder, Levin, Koponen, and King; and claims 11, 12, 16, and 17 under
35 U.S.C. § 103(a) as obvious in view of the combined teachings of
Schroeder, Levin, Koponen, King, and Bhargava.
DECISION
We reverse the Examiner’s decision to reject claims 1—17 under 35
U.S.C. § 103(a).
REVERSED
7