Ex Parte Brostrom

Patent Trial and Appeal Board

Mar 27, 2013

11456517 (P.T.A.B. Mar. 27, 2013)

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.
11/456,517 07/10/2006 Sofia BROSTROM PS05 0769US1.789 5687
54494 7590 03/27/2013
MOORE AND VAN ALLEN PLLC FOR SEMC
P.O. BOX 13706
430 DAVIS DRIVE, SUITE 500
RESEARCH TRIANGLE PARK, NC 27709
EXAMINER
KAZEMINEZHAD, FARZAD
ART UNIT PAPER NUMBER
2657
MAIL DATE DELIVERY MODE
03/27/2013 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 SOFIA BROSTROM
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Appeal 2010-010064
Application 11/456,517
Technology Center 2600
____________

Before SCOTT R. BOALICK, DENISE M. POTHIER,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-21, which constitute all the claims pending in this application. See
App. Br. 11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Appellant’s invention relates to inputting text into communication
devices such as cellular telephones. See Spec. ¶¶ 0001-02. Claim 1, which
is illustrative of the invention, reads as follows:
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1. A method performed by a device, the
method comprising:
receiving, at a processor of the device, a word;
providing, by the processor, a first next word
candidate list based on the received word;
receiving, at the processor, an input from a user,
the input including a portion of a next word; and
providing, by the processor, a second next word
candidate list to the user based on the received input, at
least one word in the second next word candidate list
being selected from a predetermined list of words that is
associated with the received word.

THE REJECTIONS
Claims 1-12, 15-17, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaminuma (US 2005/0004798 A1; published Jan. 6,
2005) and Babst (US 7,194,404 B1; issued Mar. 20, 2007). See Ans. 3-16.
Claims 13, 14, 18, 20, and 21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Kaminuma, Babst, and Kay (US 2005/0017954 A1;
published Jan. 27, 2005). See Ans. 16-20.

ISSUES
Regarding claims 1-12, 15-17 and 19, the dispositive issue raised by
Appellant’s contentions is whether Kaminuma and Babst teach providing a
second next word candidate list to a user based on input received from the
user, at least one word in the second next word candidate list being selected
from a predetermined list of words that is associated with the received word,
as recited in claim 1. See App. Br. 12-30. Regarding claims 13, 14, and 21,
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the issue is whether similar limitations are taught by Kaminuma, Babst, and
Kay. See App. Br. 30, 33-35.
Regarding claims 18 and 20, the dispositive issue raised by
Appellant’s contentions is whether Kaminuma, Babst, and Kay teach “where
providing the second next word candidate list includes displaying at least
one character sequence provided via the first technique as a higher ranking
choice than at least one character sequence provided via the second
technique,” as recited in claim 18. See App. Br. 30-32.

ANALYSIS
REJECTION OF CLAIMS 1-12, 15-17, AND 19 UNDER 35 U.S.C. § 103(a)
Regarding independent claim 1, the Examiner finds that Kaminuma
teaches receiving a word, providing a first next word candidate list based on
the received word, and providing a second next word candidate list to a user
based on input received from the user, wherein at least one word in the
second next word candidate list is selected from a predetermined list of
words that is associated with the received word. See Ans. 3-4. The
Examiner concedes that Kaminuma does not teach that the input received
from the user includes a portion of a next word. See Ans. 4. However, the
Examiner finds that Babst discloses receiving an input including a portion of
a next word from a user and concludes that a person of ordinary skill in the
art would have combined the teachings of Kaminuma and Babst to “enable
[Kaminuma] to speed up its word prediction and thereby eliminate the need
of specifying too many characters or words for the purpose of creating a next
word prediction list.” Ans. 5.
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Appellant contends that Kaminuma does not disclose providing a
second next word candidate list based on a received input that includes a
portion of a next word. See App. Br. 13-16. Instead, Kaminuma discloses
“providing predicted words in response to a change in speech.” App. Br. 14-
16; see also Reply Br. 5 (“KAMINUMA et al. does not disclose or suggest
calculating a probability of a word pair, associated with the received word,
based on a received input, let alone based on a received input that includes a
portion of a next word. Rather, as noted above, the probabilities are based
solely on the received word.”). Appellant further contends that Babst does
not teach providing a next word candidate list “based on at least one word
and an input that includes a portion of a next word.” App. Br. 16 (emphasis
omitted). Appellant admits that Babst “discloses predicting a word based on
a first and second letter combination,” but argues that Babst’s prediction “is
based on two letters in the same word.” Id.; see also Reply Br. 4-5 (“[T]he
words and word chunks of BABST et al. are displayed without taking into
account a previously entered word.”).
In response, the Examiner explains that Kaminuma is not relied upon
to show providing a second next word candidate list based on received input
that includes a portion of a next word. See Ans. 21, 23. Rather, the
Examiner relies on Babst to show providing a next word candidate list based
on a portion of a next word. See Ans. 21-22. The Examiner finds that the
combined teachings of Kaminuma and Babst result in a processor that
provides a second next word candidate list based on received input
(Kaminuma) wherein that input includes a portion of a next word (Babst).
See id. Likewise, the Examiner explains that Babst is not cited to show
providing a next word candidate list wherein at least one of the words in the
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second list is based on a received word. See Ans. 24. Rather, the Examiner
finds that Kaminuma discloses this. See Ans. 4, 25. In other words, the
Examiner finds that Kaminuma teaches the entire final limitation of claim 1
except for the “received input” including “a portion of a next word,” which
the Examiner finds in Babst. See id.
In each of these instances, Appellant attempts to find deficiencies with
the individual references without adequately addressing the Examiner’s
findings regarding the combined teachings of those references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”). For instance,
Appellant has not adequately explained why a person of ordinary skill in the
art would have failed to appreciate that Babst’s teaching (providing a list of
candidate words based on a portion of a word) could have been applied in a
predictable manner to Kaminuma’s providing a second next word candidate
list based on input received from a user. Therefore, we are not persuaded
that the Examiner erred in concluding that claim 1 would have been obvious.
For independent claims 6, 11, 16, and 19, Appellant reiterates similar
arguments made in connection with claim 1. See App. Br. 17-20, 24-30.
We are not persuaded by these arguments, however, for the reasons
previously discussed. Appellant only nominally argues claims 2-5, 7-10, 12,
15, and 17 separately. See App. Br. 17, 20, 24, 27.
Accordingly, we sustain the rejection of: (1) independent claim 1; (2)
independent claims 6, 11, 16, and 19, which recite commensurate
limitations; (3) claims 2-5, which depend on claim 1; (4) claims 7-10, which
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depend on claim 6; (5) claims 12 and 15, which depend on claim 11; and (6)
claim 17, which depends on claim 16.

REJECTION OF CLAIMS 13, 14, 18, 20, AND 21 UNDER 35 U.S.C. § 103(a)
Claims 18 and 20
Claim 18 depends on claims 16 and 17. For the reasons given above,
we are not persuaded by Appellant’s arguments that claim 18 is patentable
for the same reasons as claims 16 and 17, see App. Br. 30. We do, however,
agree with Appellant’s contention that Kaminuma, Babst, and Kay fail to
teach that “providing the second next word candidate list includes displaying
at least one character sequence provided via the first technique as a higher
ranking choice than at least one character sequence provided via the second
technique.” See App. Br. 30-32.
The Examiner finds that Kaminuma’s predicting words based on an
input word is a “first technique,” see Ans. 14, and Babst’s providing a list of
words based on a portion of a word is a “second technique,” see Ans. 15.
The Examiner concedes that Kaminuma and Babst do not teach displaying a
character sequence provided by the first sequence as a higher-ranked choice
than a character sequence provided by the second technique. See Ans. 18.
However, the Examiner finds that Kay discloses ordering words in a
database in the order that they are input and retrieving the words from the
database in order of recency. See id. According to the Examiner, because
Kaminuma’s technique is applied before Babst’s, words provided by
Kaminuma’s technique would appear in a list before words provided by
Babst’s technique. See Ans. 28-29. Thus, if they are added to a database
(per Kay) in that order, words provided by Kaminuma’s technique would
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appear first and be higher ranked than words provided by Babst’s technique.
See Ans. 18, 29.
Appellant contests the Examiner’s conclusion, arguing that Kay has
“nothing to do with ranking character sequences based on techniques.” App.
Br. 31-32. In response to Appellant’s argument, the Examiner concludes
that, because Appellant’s Specification describes the prediction of words in
sentences for applications involving cellular phones, Kaminuma’s technique
is “more appropriate and designated as the first technique.” Ans. 28. Even
assuming that Kay’s arrangement of data can be considered “ranking,” the
Examiner does not adequately explain why Kaminuma’s technique is “more
appropriate” than Babst’s for predicting words in sentences. For example,
Babst’s technique may take into account a word’s part of speech in a
sentence (e.g., whether it is a verb or a noun). See Babst, Fig. 6; col. 11, l.
50–col. 12, l. 49. Thus, the Examiner erred in concluding that claim 18
would have been obvious.
Claim 20 depends on claim 19. Although not specifically argued by
Appellant, see App. Br. 32-33, claim 20 recites a limitation substantially the
same as the limitation of claim 18 that we find not taught in Kaminuma,
Babst, and Kay. Thus, the also Examiner erred in concluding that claim 20
would have been obvious.
Accordingly, we do not sustain the rejection of claims 18 and 20.

Claims 13, 14, and 21
Claims 13 and 14 depend on claim 11. Appellant only nominally
argues claims 13 and 14 separately. See App. Br. 30, 32-33. For
independent claim 21, Appellant reiterates similar arguments made in
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connection with claim 1. See App. Br. 33-35. Accordingly, we sustain the
rejection of claims 13, 14, and 21 for reasons previously discussed.

ORDER
The decision of the Examiner to reject claims 1-17, 19, and 21 is
affirmed. The decision of the Examiner to reject claims 18 and 20 is
reversed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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