Ex Parte Rubanovich et al

Patent Trial and Appeal Board

Jun 2, 2014

11848850 (P.T.A.B. Jun. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAN RUBANOVICH, VADIM FUX, and
ALEXANDER KORNILOVSKY

__________

Appeal 2012-001406
Application 11/848,850
Technology Center 2100
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
for disambiguation of an ambiguous input and that selectively provides
prediction of future characters. The Examiner rejected the claims on the
ground of anticipation. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 Appellants identify the Real Party in Interest as Research in
Motion Limited (see App. Br. 3).
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Statement of the Case
Background
“[S]ome handheld electronic devices have been provided with
keypads wherein at least some of the keys each have a plurality of characters
such as Latin letters assigned thereto” (Spec. 1 ¶ 0003). “During . . .
operation using such a keypad, an actuation of a key having a plurality of
characters assigned thereto will be ambiguous. Such devices are usually
configured with some type of disambiguation routine . . . that resolves the
ambiguity of the input” (Spec. 1 ¶ 0003).
The Claims
Claims 1-6 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of enabling input on a handheld electronic
device that comprises an output apparatus, an input
apparatus comprising a plurality of input members, and a
processor apparatus comprising a memory having stored
therein a number of routines, one of the routines being a
prediction routine that is executable on the processor
apparatus and is structured, responsive to an input, to output
a number of proposed completions of the input, each
proposed completion comprising a number of data elements
additional to the input, the method comprising:
responsive to an ambiguous text input comprising a
plurality of input member actuations, outputting a list
comprising a number of disambiguated interpretations and a
number of proposed completions of the ambiguous text
input; and
responsive to a deletion input, outputting another list
comprising a number of disambiguated interpretations of the
ambiguous text input as modified by the deletion input, the
another list being free of proposed completions.

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The issue
The Examiner rejected claims 1-6 under 35 U.S.C. § 103(a) as
obvious over Will2 and Pathiyal3 (Ans. 5-11).
The Examiner finds that Will teaches “receiving an ambiguous text
input computer a plurality of input member actuations. Will also teaches a
conventional method of displaying words that are consistent only with the
given input and also a method of displaying proposed completions of the
ambiguous text input” (Ans. 5). The Examiner finds that Will teaches
a method for having rapid access of words consistent with a
particular sequence of character group inputs that have been
entered. Will teaches with every letter added or removed
from the group, there exist[s] a list of words consistent with
the input and this method combined with the conventional
method of only displaying the disambiguated interpretations
of the text input leaves the second list free of proposed
completions.

(Ans. 5-6). The Examiner finds that Will does not teach “responsive to a
deletion input, the another list being free of proposed completions” (Ans. 6).
The Examiner finds that Pathiyal teaches “deleting an input because it
was incorrect. Pathiyal also teaches outputting a list free of proposed
completions” (Ans. 6). The Examiner finds it obvious to “modify the
method disclosed by Will to include: responsive to a deletion input, the
another list being free of proposed completions; for the purpose correcting
errors with the input, as taught by Pathiyal” (Ans. 6).

2 Will, C., US 6,734,881 B1, issued May 11, 2004.
3 Pathiyal et al., US 2006/0206815 A1, published Sep. 14, 2006.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Will and Pathiyal suggest
“responsive to a deletion input, outputting another list” as required by claim
1?
Findings of Fact
1. The Specification teaches an example where when a
user is seeking to enter the word “Pretoria”, the user would
be looking for a disambiguation 52 comprising the
characters “PRETO”, after which the user could actuate the
keys 28 in order to complete the entry of
“Pretoria”. However, the lookup component 48 of Fig. 3
depicts no such string of characters. At this point, the user
can provide scrolling inputs with the track ball 32 in a
downward direction to see if the desired string of characters
is available. This may require considerable time, attention,
and effort by the user.

(Spec 7 ¶ 0041).
2. Figure 3 of the Specification is reproduced below:

“Fig. 3 depicts an output during an exemplary text input operation”
(Spec. 2 ¶0009).
3. The Specification teaches that “[a]lternatively, the user may
simply press a or other appropriate key to delete the most
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recent character keystroke , which advantageously will result in the
exemplary output depicted in Fig. 4” (Spec 7 ¶ 0041).
4. The Specification teaches that “it can be seen that the lookup
component 48 of Fig. 4 advantageously includes only disambiguated
interpretations 52 of the input without any proposed completions thereof 56”
(Spec 7 ¶ 0041).
5. Figure 4 of the Specification is reproduced below:
.
“Fig. 4 depicts another output during the exemplary text input operation”
(Spec. 2 ¶ 0010).
6. Will teaches a “dictionary and software that allows input of a
sequence of ambiguous keys and then displays those words that are
consistent with the given input, allowing a user to select the desired word
from a menu” (Will, col. 1, ll. 49-53).
7. Will teaches that:
a list, or database, of words, that has indexes that have been
precompiled to allow very rapid access of words consistent
with a particular sequence of character group inputs that
have been entered. The structure has a tree structure, with a
particular path through the tree corresponding with a
particular sequence of character group inputs. For clarity,
only those parts of the tree structure necessary to input the
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example word “brain” are shown. Note, however, that, for
example, each field in each data structure that represents a
particular context and associated character group will have
(with only a very few exceptions) pointers to a list of words
and to a further part of the structure.

(Will, col. 7, ll. 28-39).
8. Figure 3A of Will is reproduced below:

“FIG. 3A shows the overall organization of the data structure for one
example word input case” (Will, col. 7, ll. 26-27).
9. Pathiyal teaches that:
[T]he replacement of the word “us” with the word “is”
would . . . require the following steps: (1) returning the
cursor . . . to the end of the word “us,” (2) deleting the word
“us” through the use of a backspace key, (3) reentry of the
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word “is” using the disambiguation software (i.e.,
depression of the keys that include “i” and “s”), and (4)
selection of the word “is” from the displayed output
component that lists the possible intended inputs as
determined by the disambiguation software. This sequence
may require as many as six or more keystrokes and/or other
input apparatus actuations and, as a result, is time
consuming and inconvenient to the user.

(Pathiyal 2 ¶ 0010).
10. Figures 5-7 of Pathiyal are reproduced below:

Figures 5-7 are “exemplary outputs provided on a display of the
handheld electronic device” (Pathiyal 2 ¶ 0019).
11. Pathiyal teaches
receiving an identification of the first word in the text
component, such as by placing a cursor in proximity to the
first word, displaying the previously generated list of
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proposed words on the electronic device, receiving an
indication of a selected one of the proposed words, and
replacing the first word with the selected one of the
proposed words in the text component.

(Pathiyal 2 ¶ 0013).
Principles of Law
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”).
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima face case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). Moreover, a prima facie case for “obviousness requires a suggestion
of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d
1333, 1342 (Fed. Cir. 2003).
Analysis
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. The limitation in
dispute is the phrase “responsive to a deletion input, outputting another list”
in claim 1. The Specification explains that when the user presses a key
“delete the most recent character stroke” (FF 3) this will result in
“disambiguated interpretations 52 of the input without any proposed
completions thereof 56” (FF 4). The Specification does not include any
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additional data entry step prior to providing the new output, exemplified in
figure 4 (FF 4-5).
Consistent with the Specification, we therefore, interpret the phrase
“responsive to a deletion input, outputting another list” as not being
permissive of an intervening data entry step, since the Specification does not
contemplate such an intervening data entry step, and the claim is reasonably
understood as excluding such a step.
Appellants contend that “even if Pathiyal were to teach a deletion
input and displaying a new list of proposed words, as asserted by the
Examiner, Pathiyal still requires a ‘reentry’ step before displaying a new list.
In Pathiyal, the deletion of input does not cause the display of a new list.
Without the ‘reentry’ step, no new list will be displayed in Pathiyal” (App.
Br. 11).
The Examiner responds that:
Pathiyal teaches how to correct an incorrect inserted into the
text by the disambiguation software during the entry of text.
In figure 3, the user has mistakenly selected the word “us”
instead of “is”. The user has to return the cursor to the end
of the word “us” and delete the word “us” through the use of
backspace key. Clearly, this teaching comprises a deletion
input. Pathiyal teaches the user then reenters the word “is”
by depression of the keys that include “I” and “s”.
Responsive to the . . . user’s deletion input and reentry of the
word “is,” a list comprising disambiguated interpretations of
the two entered letters is outputted to the user

(Ans. 12).
We find that Appellants have the better position. We agree with the
Examiner that Pathiyal teaches both a step of “deletion input” and a step of
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“outputting a list” (FF 9). However, in Pathiyal the “outputting a list” step is
not responsive to the “deletion input” step as required by claim 1, but rather
occurs after “reentry of the word ‘is’ using the disambiguation software (i.e.,
depression of the keys that include ‘i’ and ‘s’” (Pathiyal 2 ¶ 0010; FF 9).
That is, the “outputting a list” step is responsive to the entry of additional
letters “i” and “s”, not to the “deletion input” as required by claim 1. As
discussed above, the Specification and claim 1 are reasonably interpreted as
not permissive for an intervening “data entry” step between the “deletion
input” and “outputting a list” step.
The Examiner has not established that it would have been obvious,
based on the teachings of Will and Pathiyal, to omit the “reentry” step of
Pathiyal in performance of the disambiguation method. Claim 1 requires a
list to be outputted which is responsive to the deletion input itself, not to
some other input such as Pathiyal’s reentry of additional text.
Therefore, the “reentry” step of Pathiyal is omitted in the claim 1
method, but the function of outputting a list is retained by claim 1. “While it
may often be true that the mere omission of an element together with its
function does not produce a patentable invention, it may also be unobvious
to omit an element while retaining its function.” In re Edge, 359 F.2d 896,
899 (CCPA 1966). We are therefore, constrained to reverse this rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Will and Pathiyal suggest “responsive to a deletion input, outputting
another list” as required by claim 1.
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SUMMARY
In summary, we reverse the rejection of claims 1-6 under 35 U.S.C.
§ 103(a) as obvious over Will and Pathiyal.

REVERSED
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