Apple Inc.

Patent Trials and Appeals Board

Mar 18, 2020

14719163 - (D) (P.T.A.B. Mar. 18, 2020)

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.
14/719,163 05/21/2015 Lawrence Y. YANG P22980US1/77770000365101 2222
150004 7590 03/18/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
WAN, QI
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
03/18/2020 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE Y. YANG, GIULIA PAGALLO,
LINDEN B. SIAHAAN, JUSTIN WOOD, ROBERTO GARCIA,
JEROME RENE BELLEGARDA, and TIFFANY S. JON
Appeal 2018-007525
Application 14/719,163
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 6–26. We have jurisdiction
under 35 U.S.C. § 6(b). We conducted an oral hearing on March 9, 2020. A
transcript of the proceeding will be entered into the record in due course.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 5.
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CLAIMED SUBJECT MATTER
The claims relate generally to messaging, and more specifically to
techniques for suggesting predictive answers that a user can select to
respond to an incoming message. See Spec. ¶ 3. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A non-transitory computer readable storage medium
storing one or more programs, the one or more programs
comprising instructions, which when executed by one or more
processors of an electronic device with a touch-sensitive
display, cause the electronic device to:
display a message transcript, the message transcript
including at least one message from at least a first user;
determine, based at least in-part on the at least one
message, a plurality of suggested one or more characters,
wherein determining the plurality of suggested one or more
characters comprises:
determining whether the word “or” is used in the at
least one message, and
in accordance with a determination that the word
“or” is used in the at least one message:
identifying a preceding word that appears
immediately before the word “or”, and
identifying a subsequent word that appears
immediately after the word “or”;
display, on the touch-sensitive display, the plurality of
suggested one or more characters, wherein the displayed
plurality of suggested one or more characters includes at least
the preceding word and the subsequent word;
detect an input on the touch-sensitive display;
determine whether the input represents user selection of
one of the plurality of suggested one or more characters; and
in accordance with a determination that the input
represents user selection of one of the plurality of suggested
one or more characters, display the selected one of the plurality
of suggested one or more characters in the message transcript.
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REFERENCES
The prior art relied upon by the Examiner includes:
Agarwal US 8,832,584 B1 Sept. 9, 2014
Archer US 2013/0253906 A1 Sept. 26, 2013
Block US 2010/0088302 A1 Apr. 8, 2010
Chauhan US 7,890,996 B1 Feb. 15, 2011
Coccaro US 2014/0278379 A1 Sept. 18, 2014
Cranfill US 8,502,856 B2 Aug. 6, 2013
Esplin US 2015/0188861 A1 Jul. 2, 2015
Grieves US 2013/0339283 A1 Dec. 19, 2013
Kuwahara US 2012/0278765 A1 Nov. 1, 2012
Lee US 2013/0297317 A1 Nov. 7, 2013
Lyon US 2010/0312838 A1 Dec. 9, 2010
Orr US 2011/0302249 A1 Dec. 8, 2011
Rubin US 7,127,432 B2 Oct. 24, 2006
Swanburg US 2010/0287241 A1 Nov. 11, 2010
Perry US 2009/0106695 A1 Apr. 23, 2009

REJECTIONS
Claims 1, 2, 4, 6, 8–10, 15, 21–23, 25, and 26 stand rejected under 35
U.S.C. § 103 as unpatentable over Esplin, Agarwal, and Block. Final Act. 2.
Claims 3, 7, 11–14, 16–20, and 24 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Esplin, Agarwal, Block, and various other
references listed above. See Final Act. 14–33.
ANALYSIS
Independent Claims 1, 25, and 26
Issue 1: Did the Examiner err in finding the combination of Esplin,
Agarwal, and Block teach or suggest “determining whether the word ‘or’ is
used in the at least one message,” as recited in claim 1? See Appeal Br. 17–
23.
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Agarwal describes a user interface that outputs an example literary
passage, “It is the east, and Juliet is the sun!” Agarwal, 10:50–55, Figs. 4, 5.
From the user interface, a user adds a question for other users to answer
based on the passage, such as, “Is Juliet said to be the sun or the moon?” Id.
at 11:9–19 (emphasis added), Fig. 5. Agarwal’s system can use a
programmatic technique or a manual technique to discover the answer to this
question. Id. at 5:61–6:43. A second user interface presents the user-created
question to a different user with “two possible discrete answers,” which in
the above example are “sun and moon,” as selectable buttons beneath the
question. Id. at 11:49–55, Fig. 6.
Block discloses a messaging system that can determine whether
messages are queries. Block, Abstr., ¶ 81. Block teaches that “a
determination can be made as to whether alternatives are provided in a
message that requires an answer,” for example, alternatives in a phrase like
“please select A, B or C.” Id. ¶ 81.
With respect to Agarwal, the Examiner finds that “[d]etermining the
use of the word ‘or’ is hinted by the canned answer presenting process, since
the two presented answers ‘Moon’ and ‘Sun’ are connected by the
conjunction word ‘or’.” Ans. 37 (emphasis added); see also Final Act. 5.
The Examiner also finds that Block provides “further evidence” that one of
ordinary skill in the art would have determined whether the word “or” is
used. Final Act. 6–7 (citing Block ¶ 81). Specifically, regarding Block’s
phrase “please select A, B or C,” the Examiner finds “[t]he word ‘or’ has to
be determined in order for the alternatives to be identified one after another.”
Ans. 37–38.
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Appellant asserts that neither Agarwal nor Block discloses this
limitation. Appeal Br. 17–23. With respect to Agarwal, Appellant contends
that Agarwal does not explicitly describe how the possible answers “Sun”
and “Moon” are determined. Appeal Br. 20. In addition, Appellant
contends, “Agarwal does not describe that any of [Agarwal’s] techniques for
discovering possible answers to a question involve determining whether the
word ‘or’ is used in the question.” Id. According to Appellant, Agarwal’s
“parsing technique . . . only generally describes ‘parsing the question’ and
‘searching’ and ‘identify[ing]’ keywords, but does not specifically describe
how the keywords are identified.” Id. (citing Agarwal 2:61–63, 5:61–6:2,
10:13–15). Appellant also disagrees with the Examiner’s finding that
Agarwal’s system “has to extract every single word in the message which
includes scanning [the] word ‘or’ in order to obtain candidate answer
words.” Id. at 20–21 (citing Final Act. 5) (emphasis omitted). Finally,
Appellant contends, “even if Agarwal does scan every single word, . . .
scanning a word also does not require an active determination of what the
scanned word is.” Id. at 21.
With respect to Block, Appellant contends that determining whether
alternatives are provided in Block’s message “does not necessarily require
determining whether the word ‘or’ is used” because Block describes other
techniques, such as detecting punctuation. Appeal Br. 22.
We find Appellant’s arguments unpersuasive. “[A] reference must be
considered not only for what it expressly teaches, but also for what it fairly
suggests.” In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). With respect
to Agarwal, we agree with the Examiner’s finding that “[d]etermining the
use of the word ‘or’ is hinted by [Agarwal’s] canned answer presenting
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process, since the two presented answers ‘Moon’ and ‘Sun’ are connected by
the conjunction word ‘or’.” Ans. 37 (emphasis added); see also Final Act. 5.
In other words, we find one of ordinary skill in the art would view
Agarwal’s question in Figure 5 (“Is Juliet said to be the sun or the moon?”)
and subsequent answers in Figure 6 (“Sun” and “Moon”) as suggesting
“determining whether the word ‘or’ is used in the at least one message,” as
recited in claim 1. Certainly such a question “posted for consideration by a
community of users” would have caused one of Agarwal’s users to identify
the word “or” as indicating alternatives. See Agarwal 6:28–61.
However, even if Agarwal’s programmatic or manual (e.g.,
community of users) techniques did not detect the word “or,” Block further
suggests that one of ordinary skill in the art would have done so.
Specifically, we agree with the Examiner that in Block’s phrase, “please
select A, B or C,” “[t]he word ‘or’ has to be determined in order for the
alternatives to be identified one after another.” Ans. 37–38. One of
ordinary skill in the art would have understood that Block at least suggests
determining whether alternatives are provided by identifying the term “or”
in order to identify that A, B, and C are alternatives of one another.
Appellant’s contention that Block’s punctuation would suffice to detect
alternatives is unpersuasive. See Appeal Br. 22. Although Block relies on
punctuation to detect alternatives in the phrase “yes/no” (i.e., detecting the
slash, “/”), one of ordinary skill in the art would have known that detecting
the commas in the phrase “please select A, B, or C” would be insufficient to
determine whether alternatives are provided. See Block ¶ 81. For example,
if the message had instead stated “please select A, B, and C,” detecting
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commas would have returned a false positive, as the phrase “A, B, and C”
does not include alternatives.
Accordingly, Appellant does not persuade us of Examiner error with
respect to this limitation.
Issue 2: Did the Examiner err in finding the combination of Esplin,
Agarwal, and Block teach or suggest “in accordance with a determination
that the word ‘or’ is used in the at least one message: identifying a preceding
word that appears immediately before the word ‘or’, and ‘identifying a
subsequent word that appears immediately after the word ‘or’,” as recited in
claim 1? See Appeal Br. 23–25.
Appellant contends that in Agarwal’s question, “Is Juliet said to be the
sun or the moon,” the word “the” immediately follows “or,” but Agarwal
displays the word “moon” as an answer instead of “the.” Id. at 24.
According to Appellant, this shows that Agarwal “is not ‘identifying a
subsequent word that appears immediately after the word ‘or.’” Id. The
Examiner finds, “[t]he claim limitation recites the element ‘a subsequent
word that appears immediately after the word ‘or’[,] wherein the feature
‘immediately after’ could refer to the word which is next to the word ‘or’, or
even the word which is secondly next to the word ‘or’.” Ans. 38; Final Act.
5–6.
We need not decide the claim construction issue posed by the
Examiner because Appellant’s hypertechnical argument ignores what
Agarwal fairly suggests to one of ordinary skill in the art. Agarwal teaches
that a user can “enter a new question” and gives the “example” question, “Is
Juliet said to be the sun or the moon?” Agarwal 11:15–19 (emphasis added).
Agarwal’s teachings are not limited to this one example question. Because
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Agarwal teaches that a user can enter any question, one of ordinary skill in
the art would have understood that the user could have just as easily asked,
“Is Juliet said to be the sun or moon?” See id. In this latter question, the
word “moon” immediately follows the word “or,” and one of ordinary skill
in the art would have understood that the word “moon” would still have been
selected as one of the possible answers, thereby meeting the broadly-worded
“identifying” limitations. Accordingly, Appellant also does not persuade us
of Examiner error with respect to this limitation.
Issue 3: Did the Examiner err in finding the combination of Esplin,
Agarwal, and Block teach or suggest “wherein the displayed plurality of
suggested one or more characters includes at least the preceding word and
the subsequent word,” as recited in claim 1? See Appeal Br. 25–26.
Similar to Appellant’s previous argument, Appellant contends that
“the word ‘the’ appears immediately after the word ‘or,’” but that “the word
‘the’ is not displayed as a possible answer to the question; instead, the word
‘moon’ is displayed.” Id. at 26. For similar reasons as the previous
argument, this argument is also unpersuasive. One of ordinary skill in the
art would have understood that in the modified question posed above (“Is
Juliet said to be the sun or moon”), “moon” would have been selected as a
possible answer.
Issue 4: Did the Examiner err in finding that one of ordinary skill in
the art would have combined Esplin and Block? See Appeal Br. 26–29.
Appellant initially contends that the Examiner’s rationale, “the prior
arts are from the same application field of user interface display,” is
deficient because “the field of user interface display is far too broad and
diverse to support a rationale” to combine. Id. at 27 (citing Final Act. 7). In
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focusing on this statement by the Examiner, Appellant overlooks the
Examiner’s follow-up statement, which states, “[t]his allows to assist with
the selection of words that are likely to be unique, and this word used as the
keyword for context correlation.” Final Act. 7 (emphasis omitted). Thus,
the Examiner did not merely rely on the similar fields of Esplin and Block to
support their combination.
Appellant further contends that modifying Esplin with Block would
change the principle of operation in Block and render Esplin unsatisfactory
for its intended purpose. Appeal Br. 27–29. For instance, Appellant
contends, “the techniques described in Block are focused on solving the
problem of context correlation and correctly associating an answer with a
query” whereas “Esplin is primarily concerned with providing relevant
responses.” Id. at 27 (emphasis omitted). Appellant further contends,
contrary to the Examiner’s articulated rationale, “Esplin does not raise or
suggest the issue of context correlation.” Id. at 28. Appellant concludes that
modifying Esplin as “proposed by the Examiner would change the operation
of Esplin from one that selects a response based primarily on relevance to
one that selects a response based primarily on the likelihood that the
response is unique.” Id.
We disagree. The Federal Circuit has consistently held,
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.
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MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir.
2015) (citation omitted). We do not view the Examiner’s proposed
combination as bodily incorporating “context correlation” from Block with
“relevant responses” in Esplin. Rather, the Examiner proposes combining
Block’s teachings about identifying alternatives with Esplin. Final Act. 6–7;
Ans. 37–38.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant’s arguments regarding the rejections of independent claims 25 and
26 rely on the same arguments as for claim 1. See Appeal Br. 14. We,
therefore, also sustain the Examiner’s rejection of independent claims 25 and
26. See 37 C.F.R. § 41.37(c)(1)(iv).

Dependent Claims
Dependent claim 3 recites, in part, “displaying a virtual keyboard.”
For this claim, Appellant contends that Grieves teaches away from Esplin,
Agarwal, and Block. Appeal Br. 30. Appellant contends that Esplin teaches
away from Grieves’ virtual keyboard because Esplin states that “these
conventional techniques are not only inefficient and time-consuming, but
also, often, not available on smaller computing devices that are too small to
display a keyboard.” Id. (citing Esplin ¶ 3) (emphasis omitted). For similar
reasons, Appellant contends that modifying Esplin with Grieves would
render Esplin unsatisfactory for its intended purpose. Id. at 31.
“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). “[A]ll of the
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relevant teachings of the cited references must be considered in determining
what they fairly teach to one having ordinary skill in the art.” In re Mercier,
515 F.2d 1161, 1165 (CCPA 1975).
Appellant’s argument is unpersuasive because it does not take into
account all the teachings of Esplin. Elsewhere, Esplin teaches that its
computing device may, in fact, include “virtual or regular keyboards.”
Esplin ¶ 16. Because Esplin teaches including virtual keyboard as an
alternative embodiment, Esplin does not teach away from virtual keyboards.
Nor would combining Grieves’ virtual keyboard with Esplin render Esplin
unsatisfactory for its intended purpose because one of Esplin’s purposes is to
have a virtual keyboard. Accordingly, we sustain the Examiner’s rejection
of claim 3.
Dependent claim 7 recites, in part, “determining whether the at least
one message contains an interrogatory sentence; and in accordance with a
determination that the at least one message contains an interrogatory
sentence, displaying at least ‘yes’ and ‘no’ as part of the plurality of
suggested one or more characters.” For this claim, the Examiner finds the
combination of Esplin, Agarwal, Block, and Swanburg “allows a response
message based upon the selected response option and the response message
can be sent to the first device.” Final Act. 18 (emphasis omitted). Appellant
contends the “Examiner has not provided a valid rationale to support the
legal conclusion of obviousness.” Appeal Br. 32. Specifically, Appellant
argues the combination of Swanburg with Esplin, Agarwal, and Block is
improper because “Esplin already allows canned message[s] to be selected
and transmitted as a reply.” Appeal Br. 32 (citing Esplin ¶ 36, Fig. 2B).
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This argument is conclusory and, in any event, unpersuasive.
Appellant does not point to any evidence of record that the combination
would be “uniquely challenging or difficult for one of ordinary skill in the
art” or “represent[] an unobvious step over the prior art.” Leapfrog Enters.
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)). Nor has Appellant
provided objective evidence of secondary considerations, which our
reviewing court states “operates as a beneficial check on hindsight.” Cheese
Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed.
Cir. 2013). The Examiner’s findings are reasonable because 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. We are persuaded
the claimed subject matter exemplifies the principle that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 416. We,
therefore, sustain the Examiner’s rejection of claim 7.
For dependent claims 11–14, 16–20, and 24, Appellant contends the
Examiner fails to provide reasons for combining the functionality of the
various references. Appeal Br. 33–39. Appellant’s arguments are
conclusory and contradicted by the record, as the Examiner did, in fact,
articulate rationales for combining the various references. See Final
Act. 19–34. We, therefore, also sustain the Examiner’s rejection of claims
11–14, 16–20, and 24.
CONCLUSION
In summary:
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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6, 8–
10, 15, 21–
23, 25, 26
103 Esplin, Agarwal, Block 1, 2, 4, 6,
8–10, 15,
21–23,
25, 26

3, 7, 11–14,
16–20, 24
103 Esplin, Agarwal, Block,
various other references
(listed above)
3, 7, 11–
14, 16–
20, 24

Overall
Outcome
1–4, 6–26
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED