Ex Parte Baard

Patent Trial and Appeal Board

Feb 20, 2014

11557220 (P.T.A.B. Feb. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/557,220 11/07/2006 Henrik Baard 9342-382 1109
54414 7590 02/21/2014
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
MATHARU, MANPREET S
ART UNIT PAPER NUMBER
2646
MAIL DATE DELIVERY MODE
02/21/2014 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 HENRIK BAARD
____________

Appeal 2011-007434
Application 11/557,220
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of all of the pending claims 1, 2, 4-15, and 17-26. Claims 3 and 16 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse, and enter a new ground of rejection in accordance with
37 C.F.R. § 41.50(b).
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed Aug. 11, 2010) and the Answer (mailed
Oct. 28, 2010) for the respective details.
Appeal 2011-007434
Application 11/557,220

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Appellant’s Invention
Appellant’s invention relates to the selection of stored bookmarks in
an electronic device. A selection list display of bookmarks which at least
partially match a user input string is provided. If there are no bookmarks
which exactly match the user input string, the bookmarks that most closely
match the user input string are displayed. See generally Spec. ¶ [0060].

Claim 14 is illustrative of the claimed invention and reads as follows:

14. A method of operating an electronic device including
a user input device and a display, the method comprising:

receiving an input string of characters from the user input
device;

retrieving a bookmark list containing content identifiers that
have been pre-stored by a user of the portable electronic device;

comparing the input string to the content identifiers in the
bookmark list;

displaying a selection list on the display including a subset of
the content identifiers in the bookmark list that match the input string;

generating, in response to the input string not being in any of
the content identifiers in the bookmark list, a correlation metric
indicative of how closely the input string matches each content
identifier in the bookmark list; and

displaying the content identifiers that most closely match the
input string in the selection list.

Appeal 2011-007434
Application 11/557,220

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The Examiner’s Rejection

The Examiner’s Answer relies on the following prior art references:
Rydbeck US 2002/0198027 A1 Dec. 26, 2002
Shimamura US 2004/0204202 A1 Oct. 14, 2004

Claims 1, 2, 4-15, and 17-26, all of the appealed claims, stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Shimamura and Rydbeck.

ANALYSIS
Appellant contends, with respect to the obviousness rejection of
independent claims 1, 14, and 26, that Rydbeck does not overcome what the
Examiner (Ans. 4-5) has identified as the deficiencies in Shimamura. These
deficiencies include the failure to teach or suggest comparing of a user input
string to content identifiers in a bookmark list and generation of a correlation
metric in response to the input string not being matched to any of the content
identifiers. In particular, according to Appellant, Rydbeck has no teaching
or suggestion of generating a correlation metric “indicative of how closely
the input string matches each content identifier in the bookmark list,” a
feature present in each of the appealed independent claims 1, 14, and 26.
App. Br. 5-7; Reply Br. 2-5.
We agree with Appellant as our interpretation of the disclosure of
Rydbeck coincides with that of Appellant. Initially, we find that the
Examiner has not adequately explained how Rydbeck’s fc value, i.e., the
frequency with which a user calls a number stored in the database,
corresponds to the claimed “correlation metric.” As argued by Appellant,
while Rydbeck’s fc value (¶¶ [0021] and [0028]) may provide an indication
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Application 11/557,220

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of how often certain numbers stored in a database are called, there is no
relationship between the frequency of calls and whether the numbers match
a user input string. App. Br. 6. Further, we agree with Appellant that even
assuming, arguendo, that Rydbeck’s fc value could be interpreted as being a
“correlation metric,” there is no teaching or suggestion that such fc value
indicates how closely a user input string matches the content identifiers in a
bookmark list as specifically claimed. App. Br. 6; Reply Br. 2.
We recognize that the Examiner, in the “Response to Argument”
portion of the Answer, suggests that the language of the appealed claims can
be interpreted to encompass a condition in which there is a partial match of a
user input string. Ans. 24. We find, however, that, regardless of the merits
of the Examiner’s claim interpretation, there is no generation of a
“correlation metric” in Rydbeck which provides an indication of how closely
a user input string matches the content identifiers in a bookmark list as
claimed.
In view of the above discussion, we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection. We, accordingly, do not sustain the
rejection of independent claims 1, 14, and 26, or the rejection of claims 2, 4-
13, 15, and 17-25, which are dependent thereon.

NEW GROUND OF REJECTION
We reject independent claim 26 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Independent claim 26 recites “[a] computer program product . . .
comprising: a computer readable storage medium having computer readable
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program code embodied in said medium . . .” (emphasis added). The
broadest reasonable interpretation of the “computer-readable medium”
language of independent claim 26, when read in light of Appellant’s
Specification (¶ [0026]), is inclusive of transitory propagating signals. See
Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).
“A transitory, propagating signal [however] . . . is not a ‘process,
machine, manufacture, or composition of matter.’ [These] four categories
define the explicit scope and reach of subject matter patentable under
35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” In
re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Specifically, signals are
unpatentable “as failing a tangibility requirement to be ‘manufactures’”
because they are not tangible media. Nuijten 500 F.3d at 1366 (emphasis
added).
We direct Appellant’s attention to 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010); Subject Matter Eligibility of Computer Readable Media.
We also conclude that independent claim 26 can be rendered statutory under
35 U.S.C. § 101 by following the guidance provided in this OG Notice.

DECISION
The rejection of claims 1, 2, 4-15, and 17-26 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Shimamura and Rydbeck is
reversed.
In the new ground of rejection, we have rejected claim 26 under
35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

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.
§ 41.50(f).

REVERSED
37 C.F.R. § 41.50(b)

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