Ex Parte 7,411,582 B2 et alDownload PDFPatent Trial and Appeal BoardMay 28, 201595002342 (P.T.A.B. May. 28, 2015) Copy Citation 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. 95/002,342 09/14/2012 7,411,582 B2 098981-2010 5559 26119 7590 05/29/2015 EXAMINER KE, PENG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/29/2015 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 ____________________ MOTOROLA MOBILITY LLC Requester and Respondent v. MICROSOFT CORPORATION Patent Owner and Appellant ____________________ Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. US 7,411,582 B2 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, MARC S. HOFF, and DAVID M. KOHUT, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner Microsoft Corporation appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-8, 10, 11, 13, 15, 16, and 18-30 as set forth in the Right of Appeal Notice (“RAN”) mailed December 11, 2013. Patent Owner filed a brief (“PO App. Br.”) on March Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 2 13, 2014. Respondent Motorola Mobility LLC filed a brief in response (“Resp. Br.”) on April 14, 2014. We have jurisdiction under 35 U.S.C. §§ 134 and 315, and we heard the appeal on May 20, 2015. We affirm. The ’582 Patent issued to Toepke on August 12, 2008, and is assigned to Microsoft Corporation. The ’582 Patent concerns a method and system for receiving user data input into a computer system having a graphical windowing environment. The system may have a touch-sensitive display for displaying images and detecting user contact therewith. A management component creates an input panel window for display on the screen. An input method is selected from among a plurality of input methods and installed, whereby the input method can call functions of the management component. When user data is received via an input panel, the input method calls a function of the management component to pass user data thereto. In response, the management component communicates the user data to the graphical windowing environment. An application program receives a message, such as corresponding to a keystroke, as if the message was generated on a hardware keyboard (col. 2, ll. 24-43). Claim 1 is exemplary of the claims on appeal: 1. In a computing environment, a computer-implemented method comprising: displaying an actuatable icon representative of an input method list that includes one or more selectable input methods for one or more computer programs, wherein each input method is a computer-executable software component distinct from the computer programs; Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 3 in response to actuation of the actuatable icon, displaying the input method list; receiving a selection of an input method from the input method list; installing an input method component that corresponds to the selected input method, the input method component causing an interactive input panel to be displayed; receiving input via the interactive input panel; and providing the input to a computer program of the one or more computer programs as if the information was received via user input received from a hardware input device. The Examiner relies upon the following prior art in rejecting the claims on appeal: Straton US 4,587,630 May 06, 1986 Ulrich US 5,566,248 Oct. 15, 1996 Edberg US 5,682,158 Oct. 28, 1997 Bi US 6,262,719 B1 July 17, 2001 Apple Computer Inc., NEWTON APPLE MESSAGEPAD HANDBOOK (1995) (hereafter “Apple”). The claims stand rejected over various combinations of prior art references (see PO App. Br. 8-9): References Claims Basis (§) Apple, Ulrich, and Bi 1-8, 10, 11, 13, 15, 16, and 19-30 103(a) Apple, Ulrich, Bi, and Edberg 18 103(a) Apple, Ulrich, and Straton 1-4, 6-8, 10, 11, 13, 15, 16, and 19-30 103(a) Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 4 Apple, Ulrich, Straton, and Edberg 18 103(a) ISSUES Patent Owner argues that the invention of the ’582 Patent requires “that, regardless of the input method used, the information provided to a consuming application is the same” (PO App. Br. 11). Patent Owner asserts that the combination of Apple, Ulrich, and Bi fails to disclose input methods that are computer-executable software components distinct from the computer programs (PO App. Br. 13). Patent Owner contends that Apple fails to disclose “an input method list that includes one or more selectable input methods” (App. Br. 16). Patent Owner further asserts that the references fail to disclose installing an input method component after receiving a selection of an input method (PO App. Br. 17-18). Patent Owner argues that Bi fails to disclose the limitation of providing input to a computer program “as if the information was received via user input received from a hardware input device” (PO App. Br. 19). Patent Owner further contends that Apple fails to disclose selection from among a plurality of executable input methods (PO App. Br. 20-21), or that those executable input methods are interchangeable software components (PO App. Br. 21-22). The arguments made by Patent Owner and Requester present us with the following issues: Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 5 1. Does the claimed invention under appeal require that, regardless of the input method used, the information provided to a consuming application is the same? 2. Does the combination of Apple, Ulrich, and Bi disclose input methods that are computer-executable software components distinct from the computer programs? 3. Does Apple disclose “an input method list that includes one or more selectable input methods”? 4. Does the combination of Apple, Ulrich, and Bi disclose installing an input method component after receiving a selection of an input method? 5. Does Bi disclose providing input to a computer program “as if the information was received via user input received from a hardware input device”? 6. Does Apple disclose selection from among a plurality of executable input methods? 7. Does Apple disclose executable input methods that are interchangeable software components? PRINCIPLES OF LAW “During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 6 ANALYSIS REJECTION OVER APPLE, ULRICH, AND BI Patent Owner’s various arguments are not persuasive to establish that the Examiner erred. First, we decline to adopt Patent Owner’s suggestion that the claimed invention requires, “regardless of the input method used, the information provided to a consuming application is the same” (PO App. Br. 11). We agree with the Respondent and Examiner that the claims of the ’582 Patent do not recite any such “multiple input, one output” requirement (Resp. Br. 9). “DISTINCT” We are unpersuaded by Patent Owner’s argument that the combination of Apple, Ulrich, and Bi fails to disclose input methods that are computer-executable software components distinct from the computer programs (PO App. Br. 13). Patent Owner argues that Ulrich does not disclose conversion of different outputs into a single form of input (PO App. Br. 14), but we find that the claims of the ’582 Patent do not require such conversion. We agree with the Examiner’s finding that Ulrich discloses “an interface routine which is independent of the computer’s operating system, any application program, and any of the recognizer routines” (col. 2, ll. 55-57). We agree with Respondent that Figures 3e, 3f, 4a, and 4b of Ulrich illustrate different input resulting in different output, which suggest combinability with Apple’s “recognition” input methods that provide different output based on different input (Resp. Br. 18). Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 7 “INPUT METHOD LIST” We do not agree with Patent Owner that Apple fails to disclose “an input method list that includes one or more selectable input methods.” We disagree with Patent Owner’s characterization of the plurality of keyboards in Apple as “other keyboard layouts” but “not a list of different input methods” (PO App. Br. 17). First, we agree with the Examiner that Apple discloses keyboard layouts that convert contacts on the touch screen into different data depending on the keyboard layout selected by the user (RAN 13; Apple 55-56). This operation parallels the operation of the ’582 Patent, which discloses that its input methods convert contacts on the touchscreen into input data (col. 6, l. 63 – col. 7, l. 5). Second, the ’582 Patent by its own terms states that a plurality of keyboards corresponds to a plurality of input methods: “[i]nput methods 64 may include, for example, various different displayable keyboards, (soft keyboards), a calculator, a formula and/or equation editor,” etc. (col. 5, l. 1-3). This disclosure parallels Apple’s disclosure of “a typewriter keyboard and three types of numeric keyboards” (Apple 55). “INSTALLING” AFTER “RECEIVING A SELECTION” We do not agree with Patent Owner that the references fail to disclose installing an input method component after receiving a selection of an input method (PO App. Br. 17-18). First, we agree with Respondent that there is no definition of “install” provided in the ’582 Patent, and we further agree that its use in the claims suggests the common meaning in the art of “configuring for use” (Resp. Br. 20). Second, we observe that claim 1 recites “installing an input method component that corresponds to the Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 8 selected input method” but does not mandate that this be done “after” receiving a selection. Third, we disagree with Patent Owner’s allegation that the Examiner ignored this limitation (PO App. Br. 18). The Examiner explains that Apple functions just as the ’582 Patent does, installing a soft keyboard or recognition routine on the touch input surface and displaying different soft keyboards or a different recognition routine depending on the layout selected by the user (RAN 14, citing ’582 Patent col. 7, ll. 10-25 and col. 9, ll. 58-65; see Apple pp. 44, 45, 55). We agree with the Examiner’s finding that Apple “installs,” i.e. configures for use, and then displays a keyboard depending on which keyboard is selected by a user (RAN 14), which would necessarily occur after such selection. “AS IF THE INFORMATION WAS RECEIVED VIA USER INPUT RECEIVED FROM A HARDWARE INPUT DEVICE” We do not agree with Patent Owner’s contention that Bi fails to disclose the limitation of providing input to a computer program “as if the information was received via user input received from a hardware input device” (PO App. Br. 19). Patent Owner’s argument is predicated on the idea that Bi does not disclose how to convert different forms of output (as disclosed by Apple) into a single output a program can understand without knowledge of its origin (Id.). As discussed supra, the “multiple input, one output” concept is not recited in the claims of the ’582 Patent, and we do not agree that the claim language requires a single output. Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 9 NO SELECTION FROM AMONG A PLURALITY OF EXECUTABLE INPUT METHODS We disagree with Patent Owner (PO App. Br. 20), and we find, at a minimum, that Apple discloses a plurality of keyboard “input methods.” As discussed supra, we find that the plurality of keyboards constitutes a plurality of input methods in Apple, as they function in parallel fashion to the plurality of keyboards that constitute a plurality of input methods in the ’582 Patent. “INTERCHANGEABLE” Patent Owner’s contention that the input methods of the prior art are not interchangeable software components within the meaning of claim 11, because they do not convert different outputs into a single output form (PO App. Br. 22), is not persuasive to show error. We agree with Respondent’s position that the input methods of the ’582 patent are interchangeable because, from the user’s perspective, they can be swapped in and out by making selections from a list (Resp. Br. 12). Further, even if one assumes arguendo that the various recognition options of Apple are not interchangeable software components, we find that the various keyboards available in Apple constitute a plurality of separate input methods that are interchangeable even within Patent Owner’s unsupported definition of the term as providing a single form of output (see Resp. Br. 22). NO “PLURALITY OF ICONS”, “INVOKING A SELECTED INPUT METHOD”, OR “PRESENTING AN INPUT PANEL WINDOW” (CLAIM 15) Patent Owner here relies on its arguments with respect to claim 1. We consider those arguments to be unpersuasive, as explained supra. Thus, the remarks concerning claim 15 are equally unavailing. Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 10 Because none of Patent Owner’s arguments persuade us that the Examiner erred, we sustain the Examiner’s § 103 rejection of claims 1-8, 10, 11, 13, 15, 16, and 19-30 as being unpatentable over Apple, Ulrich, and Bi. REJECTION OF CLAIM 18 OVER APPLE, ULRICH, BI, AND EDBERG Patent Owner’s arguments for patentability rely on the arguments made for independent claim 15, which in turn rely on the arguments made for independent claim 1. We consider those arguments to be unpersuasive, as explained supra. Thus, the remarks concerning claim 18 are equally unavailing. We sustain the Examiner’s rejection of claim 18 over Apple, Ulrich, Bi, and Edberg. OTHER REJECTIONS Affirmance of the rejection of claims 1-8, 10, 11, 13, 15, 16, and 18- 30 based on Apple, Ulrich, and Bi1 renders it unnecessary to reach the propriety of the Examiner’s decision to reject those claims based on other grounds. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the rejections of the claims over Apple, Ulrich, and Straton. 1 In the case of claim 18, the rejection is based on Apple, Ulrich, Bi, and Edberg. Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 11 CONCLUSIONS 1. The claimed invention under appeal does not require that, regardless of the input method used, the information provided to a consuming application is the same. 2. The combination of Apple, Ulrich, and Bi discloses input methods that are computer-executable software components distinct from the computer programs. 3. Apple discloses “an input method list that includes one or more selectable input methods.” 4. The combination of Apple, Ulrich, and Bi discloses installing an input method component after receiving a selection of an input method. 5. Bi discloses providing input to a computer program “as if the information was received via user input received from a hardware input device.” 6. Apple discloses selection from among a plurality of executable input methods. 7. Apple discloses executable input methods that are interchangeable software components. ORDER The Examiner’s rejection of claims 1-8, 10, 11, 13, 15, 16, and 18-30 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must Appeal 2015-001535 Reexamination Control 95/002,342 Patent No. 7,411,582 B2 12 timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED peb PATENT OWNER: KLARQUIST SPARKMAN LLP 121 S.W. 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