Ex Parte BROWN et al

Board of Patent Appeals and Interferences

Mar 8, 2002

08661440 (B.P.A.I. Mar. 8, 2002)

1 Application filed June 10, 1996.
1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAN BROWN, KRISTINA MALINIAK,
KIM ALTHOFF, and TIM A. WILLIAMS
_____________
Appeal No. 2000-0150
Application No. 08/661,4401
______________
ON BRIEF
_______________
Before MARTIN, LALL, and GROSS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner's
final rejection of claims 1-13 under 35 U.S.C. § 103. We
reverse.
Appeal No. 2000-0150
Application 08/661,440
2
A. The invention
The invention relates to two-way paging device, of which the
front panel of such a device is shown in Appellants' Figure 2,
described in the specification at 6-7:
Data entry device 201 includes tabs 202-205 comprising down,
left, up, and right tabs, which can be used to move a selection
(not shown) on display screen 207. The center portion 206 of
data entry device 201 comprises an enter or select button.
Figure 5, described in the specification at 15-16, shows the data
entry screen displayed when the user desires to compose and send
a message:
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Application 08/661,440
3
The screen includes a text area 511 for displaying entered text,
a three-line alphanumeric character selection area 503, of which
only two lines are displayed at a time (the currently undisplayed
line being shown in the dashed-line box), and a line of functions
including “shift,” “caps,” and “DONE.” The left side of
alphanumeric character selection area 503 includes four “cursor
tokens” 502, which are selected by manipulation of tabs 202-205.
Specification at 16, 11. 2-3. Area 503 also contains tokens
which are “selected to provide various frequently used functions”
(Specification at 16, 11. 5-7) and includes “space tokens 505"
(empty boxes) represnting insertion of a space and “delete token
506" (boxes containing X’s) representing deletion of a character.
Id. at 16, 11, 9-12.
The user can select a prestored message for transmission,
Appeal No. 2000-0150
Application 08/661,440
2 We note that while the term "token" appears in the
specification (at 15-application, the phrase "data manipulation
token" does not.
4
edit a prestored message, or compose a completely new message,
Specification at 10, 1. 14 to p. 11, 1. 22.
B. The claims
Claim 7, which is representative, reads as follows:
7. An apparatus for composing alphanumeric
messages comprising a display screen having displayed
thereon alphanumeric characters and data manipulation
tokens and a data entry device for selecting said
alphanumeric characters and said data manipulation
tokens.
Appellant treats claims 1-13 as standing or falling
together. Brief at 4.
Because the terms "token" and "data manipulation token" are
not defined in Appellants' specification,2 they will be given
their broadest reasonable constructions consistent with
Appellants' disclosure. In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997). Appellants argument that
"[d]ata manipulation tokens, as that term is used by the
Applicant[s], are tokens or icons providing for the function of
allowing editing of data on the display" (Brief at 9) is
persuasive because it is consistent with the fact that "token" is
broadly defined as a symbol. See The American Heritage
Appeal No. 2000-0150
Application 08/661,440
3 Although the statements of this ground of rejection in
the final Office action (Paper No. 13, at 3) and the Answer
(Paper No. 18, at 4) fail to include Kirk, it is apparent from
the discussion of the rejection that this is an oversight.
5
Dictionary of the English Language 1351 (New College Edition,
1975), which defines "token" in pertinent part as follows:
"1. Something that serves as an indication or representation of
some fact, event, emotion, or the like; a sign; symbol."
C. The references and rejection
The references relied on by the examiner are:
Kasparian et al. (Kasparian) 4,896,370 Jan. 23, 1990
Shiff 5,088,070 Feb. 11, 1992
Hosack et al. (Hosack) 5,418,528 May 23, 1995
Fennell 5,430,436 Jul. 4, 1995
Kirk et al. (Kirk) 5,768,578 June 16, 1998
(Filed Feb. 27, 1995)
Claims 1, 7, and 9-11 stand rejected under 35 U.S.C. § 103
as unpatentable for obviousness over Fennell in view of Kirk.
Claims 2-6, 8, 12, and 13 stand rejected under 35 U.S.C.
§ 103 as unpatentable for obviousness over Fennell in view of
Kirk, Hosack, Kasparian, and Shiff.3
Fennel discloses a pager which allows a received message to
be modified by addition or deletion of alphanumeric characters
prior to being stored and also allows the generation and storage
Appeal No. 2000-0150
Application 08/661,440
6
of information when a message has not been received. The pager
includes two display areas 68 and 70, directional keys 52, ENTER
key 54, MODIFY key 56, SCROLL key 58, DELETE key 60, and SELECT
key 62:
Referring to the flowchart shown in Figure 2, Fennell explains
that
[t]he preferred key pad arrangement 42 [in flowchart]
comprises a plurality of characters (e.g., the entire
English alphabet and/or numerical digits 0-9) displayed
by selecting the ENTER function key 54 (adding new
information) or the MODIFY function key 56 (modifying
the received message). The characters of a variety of
languages (e.g., French, Spanish, "kana", etc.) may be
displayed on the key pad arrangement 42 without
deviating from the intent of the invention.
Fennel, col. 3, ll. 4-12. As no other symbols are described as
being displayed in the key pad display area, the examiner was
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Application 08/661,440
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correct to hold that Fennell "does not disclose a display
containing data manipulation tokens." Answer at 3.
For this teaching, the examiner relies on Kirk, which
discloses a user interface for an information retrieval system
which retrieves information from a number of sources, including
the Internet, and organizes the information in accordance with a
knowledge base. A preferred embodiment of the information
retrieval apparatus is implemented using a digital computer
(col. 3, ll. 43-45). Figure 6, reproduced below, shows a first
screen of the user interface 103, which consists of a hypertext
browser 602 (including text 604, graphics 606, and a hypertext
link 608), a knowledge base browser/editor 610, and a command
window 622 containing a knowledge base object editor 616 (col.
29, l. 9 to col. 30, l. 16). The upper left-hand corner of
hypertext browser 602 also shows blocks representing various
browser functions, including "Forward Link" and "Page Forward."
As indicated in Figure 7 (not reproduced below), which shows
second screen of the user interface, the knowledge base object
editor 616 of Figure 6 has been replaced by a concept editor 708.
As noted by Appellant (Brief at 8), Figure 7 includes a second
reference numeral 708, which refers to a hypertext link (col. 32,
l. 67 to col. 33, l. 1), identified in Figure 6 as 608.
Appeal No. 2000-0150
Application 08/661,440
8
The examiner describes Kirk as "disclos[ing], in Figs. 6-7,
col. 26, lines 36-64, col. 28, lines 31-64, and col. 9 [sic,
29?], lines 9-19, a messaging unit for composing alphanumeric
characters which displays alphanumeric characters along with data
manipulation tokens which can be selected with a mouse (see Figs.
6-7), elements 608 [hypertext link], 708 [hypertext link or
concept editor], 610 [knowledge base browser/editor], 616
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Application 08/661,440
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[knowledge base object editor], along with tokens such as PAGE
FORWARD, FORWARD LINK, etc.)." The examiner then states the case
for obviousness as follows:
[i]t would have been obvious to one of ordinary skill
in the art at the time the invention was made to
display alphanumeric characters along with data
manipulation tokens, as taught by Kirk et al., in the
device of Fennell because in this way the user has the
ability to view an overall organization of the
information which more accurately describes the
contents of the information sources and makes editing
easier.
Answer at 4.
We agree with Appellants that the rejection is improper.
Assuming for the sake of argument that one or more of Kirk's
elements 608, 708, 610, 616, PAGE FORWARD, and FORWARD LINK can
accurately described as a "data manipulation token" in the sense
of Appellants' claims, the examiner's above-quoted proposed
motivation for adding one or more of these elements to the
information displayed by Fennell's pager is unconvincing because
Fennell's pager is not used to receive and store information of
the type received by Kirk's computerized information retrieval
system. Nor is there any apparent need to organize the
information received by Fennell's pager in the complex manner
disclosed by Kirk, i.e., in accordance with a knowledge base.
Finally, the examiner has not explained, and it is not otherwise
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Application 08/661,440
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apparent, exactly how the examiner proposes to modify Fennell's
display to incorporate Kirk's "tokens."
For the foregoing reasons, we cannot sustain the rejection
of claim 7 and its dependent claims 9-11 over Fennell in view of
Kirk. For the same reasons, we cannot sustain the rejection over
these references of claim 1, which is narrower than claim 7 in
that it is limited to a "wireless messaging unit." Because the
above deficiencies are not cured by Hosack, Kasparian, and Shiff,
we cannot sustain the rejection of dependent claims 2-6, 8, 12,
Appeal No. 2000-0150
Application 08/661,440
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and 13 over Fennel in view of Kirk and these additional
references.
REVERSED
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JCM/sld
Appeal No. 2000-0150
Application 08/661,440
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Enclosure: Page 1351 of The American Heritage Dictionary of the
English Language.