Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardDec 19, 201613422737 (P.T.A.B. Dec. 19, 2016) 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. 13/422,737 03/16/2012 Feng-wei Chen RSW920100108US2 1363 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 2016-002286 Application 13/422,737 Technology Center 2100 Before DEBRA K. STEPHENS, DAVID J. CUTITTAII, and 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 a Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as International Business Machines Corporation (“IBM”). App. Br. 2. Appeal 2016-002286 Application 13/422,737 CLAIMED SUBJECT MATTER The claims are directed to an automatically reconfiguring an input interface. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for automatically reconfiguring an input interface, the method comprising: with a physical computing device, analyzing a string of textual characters input through an input interface of said computing device; with said physical computing device, determining a context based on said input, wherein said context is a category of document selected from among a number of predetermined document categories; and with said physical computing device, reconfiguring 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. 23 (Claims App’x). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Shapiro US 4,100,602 July 11, 1978 Jobs et al. US 2008/0174570 Al July 24, 2008 Spetalnick US 2010/0131900 Al May 27, 2010 Wilairat US 2010/0194690 Al Aug. 5, 2010 Chou US 2010/0231523 Al Sept. 16,2010 REJECTIONS Claims 1, 2, 5, 7, 9—12, 14, and 16—20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Jobs. Final Act. 2—7. 2 Appeal 2016-002286 Application 13/422,737 Claims 3, 4, 6, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jobs and Chou. Final Act. 8—10. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jobs and Spetalnick. Final Act. 10—11. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jobs and Wilairat. Final Act. 11. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jobs and Shapiro. Final Act. 12. IDENTIFICATION OF RELATED APPEALS Initially, we note Appellants have stated “[tjhere are no appeals or interferences related to the present application of which the Appellants are] aware.” App. Br. 3. However, we determine Appellants have not met the disclosure required by 37 C.F.R. § 41.37 because a parent application, 12/907,311 (hereinafter “parent application”) is pending and furthermore, has a currently pending appeal filed Feb. 4, 2013 (hereinafter, “Parent Appeal”) by the same attorney. 37 C.F.R. § 41.37(c)(1)(h) states: A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, “related cases”) which satisfy all of the following conditions: involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal, except that such statement is not required if there are no such related cases. Here, in both the instant application and the parent application, the real party in interest is listed as IBM. App. Br. 2; Parent Appeal, App. Br. 2. As the 3 Appeal 2016-002286 Application 13/422,737 parent application is the parent of this application, includes claims very similar to the claims in this application, and is rejected based on overlapping prior art, we determine the parent application is related to, directly affects or is directly affected by and has a bearing on the Board’s decision in the pending appeal. We further find as both appeals list the same real party in interest, list the same inventors, and were filed by the same attorney, the Parent Appeal was known to Appellants, Appellants’ legal representative, and Assignee. We remind Appellants of this requirement which was not met in this Appeal. ISSUE FOR DECISION Does Jobs disclose “determining a context based on said input, wherein said context is a category of document selected from among a number of predetermined document categories” as recited in independent claims 1 and 17? ANALYSIS In rejecting the independent claims as anticipated by Jobs, the Examiner finds Jobs discloses “analyzing a string of textual characters input through an input interface” at Figures 6B and 6C, and also at paragraph 247. Ans. 3 (emphasis omitted). More specifically, the Examiner finds the word fragment being typed by the user in box 612 describes the string of characters being analyzed, as evidenced by the word suggestion area 622 that provides a list of possible words to complete the fragment inputted into box 612. Ans. 3. 4 Appeal 2016-002286 Application 13/422,737 The Examiner also finds the step of “determining a context based on said input, wherein said context is a category of document selected from among a number of predetermined document categories” is disclosed in Jobs. Ans. 3—4, 13—14. Citing Jobs’ paragraph 326, the Examiner finds this limitation is met by Jobs’ disclosure of an “application context.” Ans. 14. More specifically, the Examiner finds Jobs’ application context is determined when a user places the cursor within an inputted string of characters. Id. For example, when the user places the cursor within an inputted string of letters, the computing device determines the application context is a letters context, and when the user places the cursor within an inputted string of numbers, the computing device determines a numbers context. Id. According to the Examiner, each of these determined contexts is “a category of document selected from among a number of predetermined document categories” because they “may be referring to the textual category of the document being created.” Ans. 15—16. Appellants argue Jobs does not disclose the recited “determining” step because the “application context” described by Jobs merely uses the designation of field into which data is entered to characterize data. Reply Br. 5. Appellants further contend Jobs does not disclose that context determined from the textual input is a category selected from among any predetermined document categories. App. Br. 11—13; Reply Br. 4. We agree with Appellants’ assertions. Although we find Jobs describes determining an application context based on the input string of textual characters, the application context described in Jobs is not a “category of document,” nor is it “selected from among a number of predetermined document categories.” The Examiner finds “entering letters 5 Appeal 2016-002286 Application 13/422,737 of text or numbers of text or a combination of both (i.e., alphanumeric) are textual categories of a document. . . Ans. 16. These categories may rightly be considered categories of character sets, but we determine these categories are not categories of documents because they merely reflect the kind of characters present in the vicinity of the cursor. 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 1 and 17. Moreover, as we agree with the arguments advanced by Appellants discussed above, we need not reach the merits of Appellants’ other arguments. Summary 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 1—20 is reversed.2 REVERSED 2 Although we reverse the rejections made in the Final Office Action, we recommend the Examiner consider whether a double patenting rejection would be appropriate over co-pending parent application 12/907,311. 6 Copy with citationCopy as parenthetical citation