Andres Lucero et al.

Patent Trials and Appeals Board

Jul 25, 2019

14105992 - (D) (P.T.A.B. Jul. 25, 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.
14/105,992 12/13/2013 Andres Lucero 042933/440505 9034
10949 7590 07/25/2019
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
TRAN, TUYETLIEN T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
07/25/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDRES LUCERO, PETRI PIIPPO,
JUHA ARRASVUORI, and MARION BOBERG1
____________________

Appeal 2019-004294
Application 14/105,992
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
SCOTT RAEVSKY, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the real party in interest is Nokia Technologies
Oy. See App. Br. 2.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–4, 8–12, 14, and 16–22. Claims 5–7, 13, and 15 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.2
THE INVENTION
The claims are directed to adaptation of the display of items. Spec.,
Title. Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method performed by at least one apparatus, the method
comprising:
receiving information about at least one item displayed on
a display and singled out by a user via a user interface, wherein
the at least one singled out item is a part of a first group of items,
each item of the first group respectively representing a unique
character, and displayed on the display on a par with each other;
determining items, which are displayable on a display and
which are related according to a given criterion to the at least one
singled out item; and
causing a replacement of displayed items of the first group
of items that are not related according to the given criterion to
the at least one singled out item by items determined to be related
to the at least one singled out item such that the at least one
singled out item is displayed as a part of a second group of items
displayed on the display on a par with each other and comprising
the determined items but comprising at least two items
representing a same character, wherein the second group of items
represents fewer characters than the unique characters
represented by the first group of items.

2 We refer to the Specification, filed December 13, 2013 (“Spec.”); the Final
Office Action, mailed September 11, 2018 (“Final Act.”); Appeal Brief,
filed January 30, 2019 (“App. Br.”); Examiner’s Answer, mailed March 22,
2019 (“Ans.”) and Reply Brief, filed May 10, 2019 (“Reply Br.”).
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REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Niemeier US 5,574,482 Nov. 12, 1996
Alton et al.
Tiwari et al.
Berglund
US 2010/0175031 A1
US 2012/0227002 A1
US 2013/0097566 A1
July. 8, 2010
Sept. 6, 2012
Apr. 18, 2013

REJECTIONS
The Examiner made the following rejections3:
Claims 1–4, 9–12, 14, 17, and 18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Niemeier and Tiwari. Final Act. 5–9.
Claims 8 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Niemeier, Tiwari, and Alton. Final Act. 9–10.
Claims 19–22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Niemeier, Tiwari, and Berglund. Final Act. 10–12.

ANALYSIS
Appellants’ contentions are unpersuasive of reversible Examiner error.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 5–15) and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 4–10) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.

3 The rejection of claims 1–4, 8–12, 14, and 16–22 under 35 U.S.C. § 101
has been withdrawn. Ans. 3.
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Propriety of the Combination of Niemeier and Tiwari
Appellants contend the combination of references is improper because
(1) the Examiner failed to explain why the combination would result in
predictable results, arguing an insufficient explanation of “[h]ow would one
identify the characters in Niemeier to be replaced based on e-publications in
Tiwari” (App. Br. 13); and (2) contrary to the Examiner’s basis for making
the combination, “[Niemeier does not] disclose the ability to identify related
items to the selected item” much less to items that are not related as claimed
(id.). Appellants further contend the combination would not result in the
claimed invention because Niemeier’s teaching of a single temporary
supplementary keypad located proximate to a prior selected key would not
accommodate Tiwari’s prioritization of positioning of replacement items.
Id. at 13–14. In particular, Appellants argue “[b]oth prioritizations could not
be applied nor the two objectives (proximity in Niemeier, and the
replacement of unrelated items as claimed) achieved in instances in which
unrelated characters are positioned on a keypad away from a previously
selected character and/or in scattered or separate positions on the keypad.”
Id. at 14. According to Appellants “in addition to the results of the alleged
combination not being predictable, the proposed modification would render
the modified Niemeier unsatisfactory for its intended purpose. Therefore, the
requisite motivation to make the proposed modification is lacking.” Id.
Appellants further argue a finding that a feature of one reference can be
incorporated into the design of another is insufficient to render the
combination obvious. Id.
The Examiner responds, finding Appellants’ arguments emphasizing
the arrangement of keys as a keypad are not commensurate in scope with the
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claims. Ans. 5. The Examiner further disagrees combining Niemeier and
Tiwari would not achieve a predictable result. Id. at 5. The Examiner
explains Niemeier’s algorithm replaces displayed keys of a keyboard with
related temporary keys resulting in the same character being displayed twice.
Id. The Examiner further explains Tiwari’s replacement of unrelated items
provides a specific replacement algorithm such that, in combination with
Niemeier’s replacement of keys, teaches or suggests the disputed limitation
including causing a replacement of displayed items of the first group of
items that are not related according to the given criterion. Id. at 6. The
Examiner finds that incorporating Tiwari’s replacement method into
Niemeier’s keyboard display does not change the functioning of the separate
elements and that “[o]ne of ordinary skill in the art would have combined the
elements as claimed by known method[s] with no change in their respective
functions, and the combination yielded nothing more than predictable results
to one of ordinary skill in the art.” Id. at 7. According to the Examiner, “it
would have been obvious to one of ordinary skill in the art, at the time the
invention was made, to have combined the elements from different
references to achieve features as claimed in view of Tiwari’s suggestion to
provide an interface that is intuitive and appealing for users.” Id. (citing
Tiwari ¶ 2).
The Examiner further disagrees modifying Niemeier would teach
against the goal and focus of the reference. Id. “[The] Examiner finds
neither discredit of the combination, nor destruction of the references. Both
references teach displaying selectable items on a display on a par with each
other.” Id. (citations omitted). According to the Examiner, Niemeier and
Tiwari both teach items of the first group representing characters and a
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replacement algorithm, Tiwari further disclosing replacing unrelated items
with related items based on a given criterion to the singled out graphical
object. Id. at 8. “[T]he [E]xaminer concludes that modifying Niemeier
would NOT teach against the goal and focus of Niemeier.” Id.
Appellants reply, arguing “the Examiner has not shown how one
would substitute features of Niemeier (relating to a keypad) with the features
of Tiwari describing relations between e-publications (having a common
author, a common publisher, a common photographer, a common topic, a
common theme, a common genre, and/or a common rating).” Reply Br. 4.
Appellants further contend the arguments presented in their Appeal Brief
support an argument “that the alleged combination of Tiwari and Niemeier
teaches away from [Niemeier’s] primary objective of providing a
supplementary temporary keypad proximate to the previously selected key.”
Id. at 6 (citing App. Br. 13–14).
We are unpersuaded of reversible Examiner error in combining the
teachings of Niemeier and Tiwari. Appellants’ argument that the
combination would not result in predictable results is based on insufficient
evidence. Mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Attorney argument is not evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument take
the place of evidence lacking in the record. Accordingly, in the absence of
sufficient reasoning in support of such assertions, Appellants’ naked
contentions are insufficient to persuade us of reversible Examiner error.
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Such argument is further unpersuasive because it relies on wholesale
incorporation/combination of structures rather than what the combination of
Niemeier and Tiwari fairly teaches or suggests.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Furthermore, the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21. Here, Appellants
have not demonstrated that the Examiner’s proffered combination in support
of the conclusion of obviousness would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
420).
To the extent Appellants consider their reasoning against the
combinability of Niemeier and Tiwari to constitute an argument that the
references teach away from the combination, we are also unpersuaded for
lack of supporting evidence. To teach away, the prior art must “criticize,
discredit, or otherwise discourage the solution claimed.” In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Teaching an alternative method does not
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teach away from the use of a claimed method. See In re Dunn, 349 F.2d
433, 438 (CCPA 1965); see also Ex parte Shuping, No. 2008-0394, 2008 WL
336222, at *2 (BPAI 2008) (unpublished) (“[T]eaching a way is not teaching
away.”) (citation omitted); Geisler, 116 F.3d at 1471 (holding that merely
“express[ing] a preference” falls short of discouraging one of ordinary skill
in the art from following a particular path). Although Niemeier discloses
replacement of nearby keys with temporary letter keys in close proximity to
a touched key (Niemeier col. 4, ll. 54–56) using various key layouts (id. at
col. 5, 18–20), we find no disclosure that discourages the replacement of
keys that are not related to the touched key.4 In contrast to Appellants’
contentions, we find the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness. Final
Act. 7, 9; Ans. 7.

Replacement of Characters Determined as Unrelated
Appellants contend, although teaching replacement of unrelated
objects, Tiwari’s substitution of related items fails to teach or suggest
duplicative items in the second group as claimed. App. Br. 17. The
Examiner responds, explaining that the disputed limitation is taught by
Niemeier (i.e., as detailed in the Final Action). Ans. 9. Appellants reply,
reasserting the combination is improper and that “no combination of the

4 We note in passing, to the extent Niemeier does not express a preference,
the reference includes replacing both related and nonrelated items, thereby
teaching or suggesting the argued limitation (i.e., replacement of unrelated
items) which does not require only causing the replacement of displayed
items of the first group of items that are not related according to the given
criterion and not replacing items that are related.
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references teaches or suggests the claimed features” without providing
further explanation. Reply Br. 7.
Appellants’ contention is unpersuasive of Examiner error because it
does not address the Examiner’s findings that Niemeier teaches or suggests
the disputed limitation. Thus, Appellants’ argument is an improper attack on
the references individually where the rejection is based on the combination
of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For the reasons discussed above, Appellants’ contentions are
unpersuasive of reversible Examiner error. Accordingly, we sustain the
rejection of independent claim 1 and, for the same reasons, the rejection of
independent claims 9 and 18 under 35 U.S.C. § 103 together with the
rejections of dependent claims 2–4, 8, 10–12, 14, and 16, 17, and 19–22,
which are not argued separately with particularity.

DECISION
We affirm the Examiner’s decision to reject claims 1–4, 8–12, 14, and
16–22 under 35 U.S.C. § 103(a).
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). See
37 C.F.R. § 41.50(f).

AFFIRMED