Ex Parte Chen et al

Patent Trial and Appeal Board

Dec 19, 2016

12907311 (P.T.A.B. Dec. 19, 2016)

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.
12/907,311 10/19/2010 Feng-Wei Chen RSW920100108US1 1798
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
12/21/2016 EXAMINER
ORR, HENRY W
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
patents @ fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FENG-WEI CHEN, JOSEPH B. HALL, and
SAMUEL R. JR. MCHAN1
Appeal 2014-000047
Application 12/907,311
Technology Center 2100
Before DEBRA K. STEPHENS, DAVID J. CUTITTAII, PHILLIP A.
BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 9 and 11—29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
1 Appellants’ Brief (“App. Br”) identifies the real party in interest as
International Business Machines Corporation (“IBM”).
Appeal 2014-000047
Application 12/907,311
CLAIMED SUBJECT MATTER
The claims are directed to an automatically reconfiguring an input
interface. Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A computing system comprising:
a processor; and
a memory communicatively coupled to said processor;
in which said processor is configured to:
analyze textual input received through an input
interface of a computing device;
determine a context based on said textual input,
wherein said context is a category of document selected
from among a number of predetermined document
categories; and
reconfigure said input interface to comprise an
additional key added to a set of keys, said additional key
having a function related to a domain associated with said
context.
App. Br. 24 (Claims App’x).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hungerford
Christie et al.
Jobs et al.
Jawerth et al.
Park
Wilairat
Chou
US 4,872,112
US 2008/0167858 Al
US 2008/0174570 Al
US 2008/0270897 Al
US 2010/0151913 Al
US 2010/0194690 Al
US 2010/0231523 Al
Oct. 3, 1989
July 10, 2008
July 24, 2008
Oct. 30, 2008
June 17, 2010
Aug. 5, 2010
Sept. 16,2010
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Application 12/907,311
REJECTIONS
Claims 17—19 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2—3.
Claims 9, 12, 13, 15, 17, 19, 21—23, 25, 27, and 29 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Jobs. Final Act. 3—7.
Claims 11 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jobs and Chou. Final Act. 7—9.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jobs and Jawerth. Final Act. 9—10.
Claims 16 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jobs and Wilairat. Final Act. 10-11.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jobs and PARK. Final Act. 11.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jobs and Christie. Final Act. 12.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jobs and Hungerford. Final Act. 13.
ISSUES FOR DECISION
(1) Has the Examiner erred in rejecting claims 17—19 under 35
U.S.C. § 101 as being directed to non-statutory subject matter?
(2) Has he Examiner erred in finding Jobs discloses the limitation
“determine a context based on said textual input, wherein said context is a
category of document selected from among a number of predetermined
document categories,” as recited in independent claims 9 and 17?
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Application 12/907,311
ANALYSIS
First Issue
The Examiner rejects claims 17—19 under 35U.S.C. § 101. Claim 17
is directed to a “computer program product. . . comprising: a computer
readable storage medium . . . App. Br. 25 (Claims Appendix). The
Examiner finds the broadest reasonable interpretation of “computer readable
storage medium” includes a propagating signal, and is thus not within one of
the four statutory categories of a “process, machine, manufacture, or
composition of matter” under 35 U.S.C. § 101. Final Act. 2—3; see also, In
reNuijten, 500 F.3d 1346, 1356—57 (Fed. Cir. 2007). According to the
Examiner, the broadest reasonable interpretation of “computer readable
storage medium” in light of Appellants’ Specification can include a
propagated signal of electromagnetic or optical form, respectively. Final
Act. 3; Ans. 14—15.
Appellants contend the Examiner has erred because “[b]y reciting a
‘computer usable [sic] storage medium,’ claim 17 excludes the transitory
media that the Office Action cites as problematic.” App. Br. 9. More
specifically, Appellants contend the term “storage media” would not include
any embodiment in which the medium is merely a transitory medium, as
opposed to a medium that actually stores data. Appellants cite a routine (i.e.,
non-binding) decision of this Board, Ex Parte Hu, App. No. 2010-000151
(BPAI 2012) in support of their position, and materials pertaining to
Examiner training regarding subject matter eligibility. Id. 9—10. Appellants
also argue paragraph 19 of the Specification draws a clear distinction
between computer readable signal medium and a computer readable storage
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Application 12/907,311
medium. According to Appellants, because paragraph 19 draws this
distinction, claim 17 does not cover transitory signals and the claims are
eligible under 35 U.S.C. § 101.
We are not persuaded the Examiner has erred in rejecting the claims
under 35 U.S.C. § 101. We agree with the Examiner that the broadest
reasonable interpretation of “computer readable storage medium” in light of
Appellants’ Specification does not exclude a propagated signal of
electromagnetic or optical form, respectively. Appellants cite the statement
in paragraph 19 that “[a] computer readable signal medium may be any
computer readable medium that is not a computer readable storage medium
and that can communicate, propagate, or transport a program for use by or in
connection.” But this statement does not explicitly define what a “computer
readable storage medium” is, but instead defines what a “computer readable
signal medium” is not. As a result, the statement in paragraph 19 of the
Specification does not support Appellants’ interpretation.
Paragraphs 18—20 of the Specification describe a computer readable
storage medium as a type of computer readable medium. See, e.g. Spec. 1
18 (“The computer readable medium may be a computer readable signal
medium or a computer readable storage medium.”) In paragraph 20, the
Specification indicates the “[pjrogram code embodied on a computer
readable medium may be transmitted using any appropriate medium.” Spec.
120 (emphasis added). Furthermore, paragraph 18 of the Specification
describes a “computer readable storage medium may be, for example, but not
limited to” various elements (emphases added). Moreover, paragraph 18
discloses “a computer readable storage medium may be any tangible
medium than can contain, or store a program for use by or in connection
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Application 12/907,311
with an instruction execution system, apparatus, or device” (emphases
added).
Because a computer readable storage medium is a type of computer
readable medium; a computer readable medium can transmit code using any
appropriate medium; and Appellants’ Specification does not explicitly
define “computer readable storage medium” to exclude transitory signals, it
is reasonable to interpret, as the Examiner has done here, “computer
readable storage medium” as encompassing transitory signals.
Appellants provide no separate arguments for patent eligibility of
dependent claims 18 and 19. Accordingly, these claims fall along with
claim 17, and we sustain the Examiner’s rejection of claims 17—19.
Second Issue
In rejecting the independent claims as anticipated, the Examiner finds
Jobs discloses all limitations recited in the independent claims, including a
system configured to “determine a context based on said textual input,
wherein said context is a category of document selected from among a
number of predetermined document categories.” The Examiner finds Jobs
discloses a computing system in which the recited textual input is the
alternate keyboard selector (item 618 in Fig. 6B and item 626 in Fig. 6C of
Jobs). Final Act. 4. The Examiner further finds the selection of the alternate
keyboard selector 618/626 causes the Jobs device to “determine a context
based on said textual input.” More specifically, the Examiner finds the
determined context is “the context for entering numbers” when the button
618 is selected, and the determined context is the “context for entering text”
when button 626 is selected. Id. According to the Examiner, the changing
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Application 12/907,311
of the keyboard to a letter-based keyboard (as shown in Fig. 6B) and a
number-based keyboard (as shown in Fig. 6C) discloses the recited
“reconfigur[ing] said input interface to comprise an additional key added to
a set of keys . . . .” Id.
We are persuaded by Appellants’ argument that Jobs does not disclose
a computer system configured to “determine a context based on said textual
input, wherein said context is a category of document selected from among a
number of predetermined document categories.” App. Br. 12; Reply Br. 7—
8. Appellants argues, and we agree, the Examiner has failed to demonstrate
the “context for entering numbers” and the “context for entering text” can
each be properly considered “a category of document selected from among a
number of predetermined categories,” as recited in the independent claims.
Although we agree with the Examiner Jobs discloses determining a context,
we disagree that a “context for entering numbers” and a “context for
entering text” can be considered a “category of document.” The “context for
entering numbers” and “context for entering text” may rightly be considered
categories of character sets, but we are not persuaded that categories of
character sets describe categories of documents, as recited in the
independent claims.
The Examiner did not make any findings as to the scope and content
of the remaining cited references that would cure the deficiency in Jobs
discussed supra. Accordingly, we do not sustain the rejection of
independent claims 9 and 17. Moreover, as we agree with the arguments
advanced by Appellants discussed above, we need not reach the merits of
Appellants’ other arguments.
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Appeal 2014-000047
Application 12/907,311
Summary
We do not find error in the Examiner’s rejections of claims 17—19
under 35 U.S.C. § 101, and we sustain those rejections. We find the
Examiner has erred, and therefore reverse, the rejections of claims 9 and 17
made under 35 U.S.C. § 102(b). Each of the remaining dependent claims
rejected as anticipated or obvious over the prior art incorporates the
limitation discussed above. Accordingly, we do not sustain the rejections of
those claims for the same reasons discussed above.
DECISION
The Examiner’s rejection of claims 17—19 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 9, 12, 13, 15, 17, 19, 21—23, 25,
27, and 29 under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 11, 14, 16, 18, 20, 24, 26, and 28
under 35 U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).2
AFFIRMED-IN-PART
2 Should further prosecution take place in this case, we recommend the
Examiner consider whether a double patenting rejection would be
appropriate over co-pending application 13/422,737, which is a continuation
of this patent application.
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