Ex Parte Sini

Patent Trial and Appeal BoardSep 20, 2012

09988155 (P.T.A.B. Sep. 20, 2012)

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. 09/988,155 11/19/2001 Jean Sini 5231-053-US02 8154 68009 7590 09/20/2012 Murphy & King, P.C. 1055 Thomas Jefferson Street, NW Suite 400 WASHINGTON, DC 20007 EXAMINER THAI, HANH B ART UNIT PAPER NUMBER 2163 MAIL DATE DELIVERY MODE 09/20/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JEAN SINI ________________ Appeal 2012-002756 Application 09/988,155 Technology Center 2100 ________________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and ANDREW CALDWELL, Administrative Patent Judges. CALDWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002756 Application 09/988,155 2 SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-3, 5, 10-12, 14, 19-21, 23, and 28-30. Claims 4, 6-9, 13, 15-18, 22, and 24-27 are canceled. We reverse. STATEMENT OF THE CASE Appellant describes the present invention as directed to automated form filling for mobile devices. A server-side approach is used, in which online applications for a mobile device are invoked through a server-side proxy/cache. The proxy scans the content that is generated by the application for transmission to the mobile device to find forms that may be embedded in the content. When a form is encountered, fields of the form are filled with stored information based on automatically generated mapping information. Abstract. Independent claim 1illustrative and is shown below with key disputed limitations emphasized: 1. A method for automatically entering information into form fields comprising the steps of: invoking an application program in response to an indication from a user of a mobile device to do so; scanning content transmitted from the application program to the mobile device to find a form having at least one field into which information is to be entered; retrieving and entering information into the at least one field and transmitting the form including the entered information to the mobile device for display to the user, when at least one mapping for the form exists; Appeal 2012-002756 Application 09/988,155 3 when no mappings for the form exist, transmitting the form to the mobile device, receiving from the user of the mobile device at least one selection of information to be entered into the at least one field of the form into which information is to be entered, creating a mapping for the form that specifies how to fill-in fields in the form into which stored information is to be entered based on the received at least one selection of information from the user of the mobile device, and transmitting the form including the at least one selection of information to the application program. THE REJECTIONS Claims 1-3, 5, 10-12, 14, 19-21, 23, and 28-30 under 35 U.S.C. § 112, second paragraph, as being indefinite. 1 Ans. 3-4 and 6. Claims 1-3, 5, 10-12, 14, 19-21, 23, and 28-30 under 35 U.S.C. § 103(a) as being obvious over Steed (US 2002/0107755 A1; Aug. 8, 2002; filed June 27, 2001) and Chinn (US 2002/0010715 A1; Jan. 24, 2002; filed July 26, 2001). Ans. 4-8. THE INDEFINITENESS REJECTION The Examiner concludes that all of the pending claims are indefinite for various reasons after identifying various alleged problems in the language of the independent claims. Ans. 3-4 and 6. Appellant argues that the claims are not indefinite. Appellant addresses each alleged problem identified by the Examiner and explains why the claims are not indefinite. 1 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: the Appeal Brief (App. Br.) filed June 11, 2008; the Corrected Section for Appeal Brief filed January 28, 2011; the Examiner’s Answer (Ans.) mailed August 30, 2011; and the Reply Brief (Reply Br.) filed on October 31, 2011. Appeal 2012-002756 Application 09/988,155 4 Reply Br. 8-9. We are persuaded by Appellant’s arguments in the Reply Brief that the Examiner erred in rejecting the claims as indefinite and adopt Appellant’s reasoning as our own. THE OBVIOUSNESS REJECTION ARGUMENTS The Examiner concludes that claim 1 is obvious over the combination of Steed and Chinn. Ans. 4-8. The Examiner relies upon Steed for teaching all features of claim 1 except for the step of creating a mapping for a form when no mapping for the form exists. Id. at 5. The Examiner relies upon Chinn for teaching this step. Id. Appellant argues that the combination of Steed and Chinn does not teach the step of “when no mappings for the form exist, … creating a mapping for the form that specifies how to fill-in fields in the form into which stored information is to be entered based on the received at least one selection of information from the user of the mobile device.” App. Br. 10- 12; Reply Br. 9-10. ISSUE Did the Examiner err in concluding that the combination of Steed and Chinn teaches the step of “when no mappings for the form exist, … creating a mapping for the form that specifies how to fill-in fields in the form into which stored information is to be entered based on the received at least one selection of information from the user of the mobile device?” Appeal 2012-002756 Application 09/988,155 5 ANALYSIS Appellant argues that the combination of Steed and Chinn does not teach the step of “when no mappings for the form exist, … creating a mapping for the form that specifies how to fill-in fields in the form into which stored information is to be entered based on the received at least one selection of information from the user of the mobile device.” App. Br. 10- 12; Reply Br. 9-10. Appellant argues that Steed does not disclose creating a mapping for a form if no mappings for a form exist. App. Br. 10-11; Reply Br. 9. The Examiner agrees and relies upon Chinn for teaching this step of claim 1. Ans. 5. Chinn describes a voice browsing system that allows users with limited display devices to browse content using spoken/voice commands. Chinn ¶ 0064. The voice browsing system converts a conventional markup language document into a navigation tree. Id. at ¶ 0006. Navigation trees are semantic representations of web pages that serve as interactive menu dialogs to support voice-based search by users. Id. at ¶ 0065. The most relevant portion of Chinn pointed to by the Examiner describes the creation of a navigation tree and how forms elements are incorporated into the navigation tree. See Ans. 5 (citing Chinn ¶ 0113). Although a navigation tree is, in some sense, a mapping of a form, the mapping is used for creating an interactive menu dialog for interacting with content. We therefore see no probative evidence in Chinn that teaches the step of creating a mapping for a form that specifies how to fill-in fields in the form into which stored information is to be entered based on the received at least one selection of information from the user of a mobile device as in claim 1. Appeal 2012-002756 Application 09/988,155 6 For the foregoing reasons, Appellant has persuaded us of error in the Examiner’s obviousness rejection of claim 1. Since we do not sustain the rejection of independent claim 1, we also do not sustain the rejection of dependent claims 2, 3, 5, and 28, which contain the same limitation. Independent claim 10 directed to a system and independent claim 19 directed to a computer readable medium including substantially the same limitation. We therefore do not sustain the rejection of independent claims 10 and 19 and dependent claims 11, 12, 14, 20, 21, 23, 29, and 30 for the same reason. CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1-3, 5, 10-12, 14, 19-21, 23, and 28-30 under 35 U.S.C. §§ 112 and 103. DECISION The Examiner’s decision rejecting claims 1-3, 5, 10-12, 14, 19-21, 23, and 28-30 under 35 U.S.C. §§ 112 and 103 is reversed. REVERSED kis