Joseph Robert. Parker

Patent Trials and Appeals Board

Dec 23, 2019

14178405 - (D) (P.T.A.B. Dec. 23, 2019)

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.
14/178,405 02/12/2014 Joseph Robert Parker RPS920130227USNP(710.319) 1091
58127 7590 12/23/2019
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
XIAO, DI
ART UNIT PAPER NUMBER
2141
MAIL DATE DELIVERY MODE
12/23/2019 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 JOSEPH ROBERT PARKER

____________

Appeal 2019-000084
Application 14/178,405
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-000084
Application 14/178,405
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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1–19, which are all pending claims. Appeal Br. 11.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
A. The Invention
Appellant’s invention is directed to operating a “keyboard displayed
on a touch screen device” in which “[t]he soft keys of the keyboard may be
pressed to enter character inputs such as letters, numbers and symbols.”
Spec. ¶ 1. Independent claims 1 and 15 are representative and reproduced
below, with emphasis added to disputed elements:
1. A method, comprising:
detecting, at a touch sensitive surface of an
information handling device, a multi-touch input to a soft
keyboard; and
rendering an alternative input mapped to the multi-
touch input;
said multi-touch input comprising two or more
substantially simultaneous touch inputs to one or more
character soft keys.

15. A method, comprising:
detecting, at a touch sensitive surface of an
information handling device, a multi-touch input to a soft
keyboard; and
rendering an alternative input mapped to the multi-
touch input;
said multi-touch input being a sequential multi-
touch input comprising a first touch input provided to a

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Lenovo (Singapore) PTE. LTD. as the
real party in interest. Appeal Br. 3.
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control soft key and a second touch input to a character
soft key during a continuation of said first touch input;
wherein said rendering an alternative input mapped
to the multi-touch input comprises rending alternative
inputs for a duration of time during which the first touch
input is detected at the control soft key.
Appeal Br. 19, 21 (Claims Appendix).

B. The Rejections on Appeal
The Examiner newly rejects claims 1–14 under 35 U.S.C. § 112(b) as
being indefinite. Ans. 3.
The Examiner newly rejects claims 1, 3, 7, 9, 14, and 15 under 35
U.S.C. § 101 because the claimed invention is not directed to patent eligible
subject matter. Ans. 4.
The Examiner rejects claims 1, 3, 7, 9, 13, and 14 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Shi (US 8,949,731 B1; Feb. 2, 2015).
Final Act. 3.
The Examiner rejects claims 2, 4, 5, 8, 10, and 11 under 35 U.S.C.
§ 103 as being unpatentable over Shi and Glazkova (US 2006/0267805 A1;
Nov. 30, 2006). Final Act. 9.
The Examiner rejects claim 6 under 35 U.S.C. § 103 as being
unpatentable over Shi and Griffin (US 2013/0120266 A1; May 16, 2013).
Final Act. 15.
The Examiner rejects claim 12 under 35 U.S.C. § 103 as being
unpatentable over Shi, Glazkova, and Griffin. Final Act. 16.
The Examiner rejects claims 15, 16, 18, and 19 under 35 U.S.C. § 103
as being unpatentable over Berenger (US 2012/0200503 A1; Aug. 9, 2012)
and Olsen (US 2003/0189551 A1; Oct. 9, 2003). Final Act. 16.
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The Examiner rejects claim 17 under 35 U.S.C. § 103 as being
unpatentable over Berenger, Olsen, and Griffin. Final Act. 22.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Except where noted, we adopt
the Examiner’s findings and conclusions as our own, and add the following
primarily for emphasis.

A. Indefiniteness Rejection of Claims 1–14
The Examiner finds that “[i]t is unclear what constitutes ‘substantially
simultaneous touch inputs’” (Ans. 3) because “[i]t is unclear what is ‘a
predetermined time less than an average time used to provide sequential
inputs’. It is unclear what constitutes this average time number and how to
arrive at this number.” Ans. 4 (citing Spec. ¶ 17).
Appellant argues that “the term substantially simultaneously is
intended to capture those inputs that are provided at the ‘same’ time as
referenced by the processing of a typical computer system.” Reply Br. 15
(noting that “the specification states ‘such as detected at the same time’”
(emphasis in original)).
We agree with Appellant. One skilled in the art, having read the
Appellant’s disclosure, would understand the term “substantially
simultaneous touch input” as meaning “detected at the same time or within a
predetermined time less than an average time used to provide sequential
inputs.” Spec. ¶ 17.

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B. Ineligible Subject Matter Rejection of Claims 1, 3, 7, 9, 14, and 15
The Examiner determines that “[independent claims] 1, 7, 14 are directed to
a method, a system, and a product respectively that are directed to the
abstract idea of ‘rendering’ (i.e., displaying) an ‘alternative input’ based on
received inputs (i.e., the ‘multi touch input’).” Ans. 4–5. The Examiner
determines that independent claim 15 is also directed to the abstract idea of
rendering an alternative input based on received inputs. Ans. 7. The
Examiner further finds that
[t]he claimed subject matter is not meaningfully different from
collecting information (detecting input to a soft keyboard),
analyzing it, (based on the input, determining an alternative
input rendering), and displaying certain results of the collection
and analysis (rendering the alternative display) as in [Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)] or generating a second menu (the alternative display)
from a first menu (the initial display) as in [Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016)].
Ans. 5; see also Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014)
(describing the two-step framework “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts”).
After the docketing of this appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Memorandum”). Pursuant to the Guidance “Step 2A,” the office
first looks to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) Prong Two: additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then (pursuant to the
Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum Section III.
As outlined below, we disagree with the Examiner.
1. Step 2A
Appellant argues that “the Office fails to specifically point out the
factors that are relied upon in making the determination that the claims are
directed to an abstract idea” and the Office has made “a broad
overgeneralization of the claims.” Reply Br. 16.
Prong One
Pursuant to Step 2A, Prong One of the Guidance, we do not conclude
independent claims 1, 7, 14, and 15 recite an abstract idea. See
Memorandum Section III(A)(1) (Prong One: Evaluate Whether the Claim
Recites a Judicial Exception), 84 Fed. Reg. at 54. Independent claim 1
recites
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1. A method, comprising:
detecting, at a touch sensitive surface of an information
handling device, a multi-touch input to a soft keyboard; and
rendering an alternative input mapped to the multi-touch
input;
said multi-touch input comprising two or more
substantially simultaneous touch inputs to one or more
character soft keys.

The claim does not recite “mathematical concepts,” “certain methods of
organizing human activity,” or “mental processes” as recognized by the
Guidance. See Memorandum, 84 Fed. Reg. at 52.
We additionally find the claim recites features that distinguish the
claim from both the Electric Power Group and Ameranth cases cited by the
Examiner. The claimed “rendering an alternative mapped to the multi-touch
input” is used to allow the user to easily input non-standard characters for
further processing, and is not merely information display, or “an ancillary
part of such collection and analysis,” as in Electric Power Group. See
Electric Power Group, 830 F.3d at 1354. The claimed “detecting, at a touch
sensitive surface of an information handling device, a multi-touch input to a
soft keyboard” provides the method step that triggers the alternative
mapping for accepting input, and thus claims a method for achieving the
result, unlike Ameranth, in which “the claims are directed to certain
functionality—here, the ability to generate menus with certain features.”
See Ameranth, 842 F.3d at 1241. We arrive at the same result for
independent claims 7, 14, and 15.
Because claim 1 “does not recite a judicial exception,” “the claim is
eligible at Prong One of revised Step 2A.” Memorandum, 84 Fed. Reg. at
54. Accordingly, we do not sustain the Examiner’s patent eligibility
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rejection of independent claims 1, 7, 14, and 15, and dependent claims 3 and
9.

C. Anticipation Rejection of Claims 1, 3, 7, 9, 13, and 14
Appellant argues that “Shi teaches a system that can distinguish
between either a single touch input or a double touch input, which it appears
that the Office is equating to the multi-touch input of the claimed
limitations.” Reply Br. 25.
We do not find this argument persuasive. The Examiner finds that Shi
discloses “substantially simultaneous input is within milliseconds.” Ans. 10
(citing Shi ¶ 39). The Examiner further finds that because “the claim
language states that wherein ‘said multi-touch input comprising two or more
substantially simultaneous touch inputs to one or more character soft keys,’”
it follows that “the substantially simultaneous touch inputs in one of the
claimed [scenarios] is on one key,” and “it will then have to be a double-
tap.” Ans. 10 (emphasis in original).
We agree with the Examiner that a fast double tap on a single
character soft key, occurring in “less than an average time used to provide
sequential inputs” in Appellant’s claimed method would meet the definition
of ‘touch input comprising two or more substantially simultaneous touch
inputs to one character soft key’ and thus trigger the “rendering [of] an
alternative input” and produce the same result as a double-tap gesture in Shi.
Accordingly, the claim’s scope encompasses Shi’s method, and we
sustain the Examiner’s anticipation rejection of independent claims 1, 7, 14,
as well as dependent claims 3, 9, 13, and 14, and dependent claims 2, 4, 5, 6,
8, and 10–12 not argued separately. See Appeal Br. 12–17.

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D. Obviousness Rejection of Claim 15
Appellant first argues that the Office “has not provided a satisfactory
explanation for the motivation finding that includes an express and rational
connection with the evidence presented” (Reply Br. 27 (citing In re
NuVasive, 842 F.3d 1376 (Fed. Cir. 2016))) and “the references do not
suggest some motivation to be combined with another reference.” Reply Br.
28.
We do find this argument persuasive. The Examiner finds, and we
agree, that
[i]t would have [been] obvious to one of ordinary skill in the
art, at the time the filing was made to apply Olsen to Berenger
so the user would be able to control how long the alternative
keys are displayed without having to reenter the display mode
when the time expires.

Final Act. 19. Further, there is no requirement that a reference must suggest
the motivation to combine expressly, as the Supreme Court has rejected a
“rigid” application of the “teaching, suggestion, or motivation” test. See
KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007). Here, the
Examiner’s findings are reasonable—a skilled artisan would “be able to fit
the teachings of multiple patents together like pieces of a puzzle” because
they are “a person of ordinary creativity, not an automaton.” KSR, 550 U.S.
at 420–21. Appellant has not shown error in the Examiner’s finding.
Appellant further contends “the Office has ignored the phrase ‘multi-
touch input’” (Reply Br. 28) because claim 15 states “a second touch input
to a character soft key during a continuation of said first touch input” (Reply
Br. 28 (emphasis in original)), whereas
Berenger teaches that “if the user has actuated the secondary
character key 440 prior to long-pressing a virtual character key
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such that all of the virtual character keys are displayed as
capitalized characters, and then the user long-presses one of the
virtual character keys, the breakout box will display the
additional characters as capitalized additional characters.”
Reply Br. 29 (quoting Berenger ¶ 68).
We do not find this argument persuasive. The Examiner finds, and we
agree, that “Olsen [teaches] the aspect of a first touch input provided to a
control soft key and a second touch input to a function key during a
continuation of said first touch” (Final Act. 18 (citing Olsen ¶ 43)) and thus
“rending alternative icons for a duration of time during which the first input
is detected at the control key.” Final Act. 19 (citing Olsen ¶ 43). Appellant
attacks Berenger individually. “[O]ne cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 15, as well as dependent claims 16–19 not argued separately. See
Appeal Br. 14–17.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14 112(b) indefiniteness 1–14
1, 3, 7, 9,
14, 15
101 patent ineligible 1, 3, 7, 9,
14, 15
1, 3, 7, 9,
13, 14
102(a)(2) Shi 1, 3, 7, 9,
13, 14

2, 4, 5, 8,
10, 11
103 Shi, Glazkova 2, 4, 5, 8,
10, 11

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In summary:
The Examiner’s decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

6 103 Shi, Griffin 6
12 103 Shi, Glazkova,
Griffin
12
15, 16,
18, 19
103 Berenger, Olsen 15, 16,
18, 19

17 103 Berenger, Olsen,
Griffin
17
Overall
Outcome
1–19