Ex Parte Deeds

Board of Patent Appeals and Interferences

Dec 17, 2009

10714504 (B.P.A.I. Dec. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS DEEDS
____________

Appeal 2009- 005382
Application 10/714,504
Technology Center 2100
____________

Decided1: December 17, 2009
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

1 On Nov. 13, 2009, Appellant waived the requested oral hearing.
Therefore, we decided the appeal on the Briefs.
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I. STATEMENT OF THE CASE
The patent Examiner rejects claims 1-4, 7, 8, 10, 12-15, and 17-25.
Claims 5, 6, 9, 11 and 16 are cancelled. Appellant appeals therefrom under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-in-part.

A. INVENTION
The invention at issue on appeal relates generally to a manner by
which to facilitate viewing of display indicia displayed upon a user display
of a portable communication device, such as a cellular mobile station.
More particularly, the present invention relates to user
interface apparatus, and an associated method, by which
to display selected indicia characters in enlarged form to
facilitate their viewing by a visually-impaired user.
The display indicia characters are displayed at a
size sufficiently large for the user to be able better to
perceive the character while also noting the position of
the character in a sequence of display indicia characters
in which the enlarged character is positioned. A user
display is divided into portions. At a first portion, the
sequence of display indicia characters is displayed. And,
at a second portion, a single one, or a single set, of the
display indicia characters is displayed in enlarged form.
The user is better able thereby both to view the display
indicia characters and also to recognize its context, i.e.,
its location in a sequence of characters.

(Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
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1. In a portable communication device operable in a
communication system, an improvement of a user interface
apparatus for facilitating viewing display indicia thereat by a
visually-impaired user said user interface apparatus comprising:
receiving circuitry configured to receive the display
indicia in a wireless manner;
a display screen having a first screen portion and at least
a second screen portion, the first screen portion for selectably
displaying a first selected part of the display indicia at a first
display-indicia size and the second screen portion for selectably
displaying a first selected portion of the first selected part of the
display indicia at a second display-indicia size; and
a user display screen manager adapted to receive
indications of the display indicia to be visually displayed, said
user display screen manager for selecting which part of the
display indicia to comprise the first selected part displayed at
the first screen portion of said display screen and which portion
of the first selected part of the display indicia to comprise the
first selected portion displayed at the second screen portion and
to manage display of the first selected part and first selected
portion, respectively, at respective ones of the first and second
screen portions of said screen display, wherein the user display
screen manager is adapted to sequentially display portions of
the part of the received display indicia visually displayed in the
first screen portion of the display in the second screen portion
of the display.

C. REFERENCES
The Examiner relies on the following references as evidence:
Tachibana US 6,288,702 B1 Sept. 11, 2001
Bast US 2005/0114796 A1 May 26, 2005
Iwai US 7,064,858 B2 Jun. 20, 2006
Kelts US 7,139,983 B2 Nov. 21, 2006

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D. REJECTIONS
Claims 1-4, 7, 12-15, 17-22, 24, and 25 stand rejected under
35 U.S.C. 103 § (a) as being unpatentable over Bast in view of
Tachibana
Claims 8 and 10 stand rejected under 35 U.S.C. 103 § (a) as being
unpatentable over Bast in view of Tachibana further in view of Iwai.
Claim 23 stands rejected under 35 U.S.C. 103 § (a) as being
unpatentable over Bast in view of Tachibana in view of Kelts.

II. ISSUE
Has Appellant shown error in the Examiner’s initial showing of
obviousness? Specifically, has Appellant shown that Tachibana does not
teach or suggest sequentially displaying in a second screen area prior entered
characters that are larger in size than a first size?
Has Appellant shown error in the Examiner’s initial showing of
obviousness of dependent claims 12, 24, and 25?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). The Examiner bears the initial burden of presenting a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the opportunity on appeal to the Board of Patent Appeals
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and Interferences (BPAI) to demonstrate error in the Examiner’s position.
See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17-18. See also KSR, 550 U.S. at
407 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”)

IV. ANALYSIS
With respect to independent claim 1, Appellant contends that the
Examiner has not provided an articulated reasoning with a rational
underpinning sufficient to support the combination of Bast and Tachibana
with respect to independent claims 1, 17, and 21. (App. Br. 10-12). We
disagree with Appellant and find that the combination of teachings of Bast
and Tachibana is adequate to teach and fairly suggest the claimed invention
of independent claim 1. While the Examiner starts the statement of the
rejection with the Bast reference, the Examiner relies upon Tachibana for a
majority of the claimed user interface. (Ans. 3-5).
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From our review of the Examiner’s rejection and the teachings of Bast
and Tachibana, we find that the interface of Tachibana teaches and fairly
suggests the claimed user interface but for use in a portable communication
device (merely recited in the preamble) which is not clearly set forth in the
structure of the portable computer of Tachibana. But Bast clearly teaches
the desire/motivation to magnify data for a telephone with an improved man-
machine interface.
Additionally, Bast teaches that the term mobile telephone “should be
expansively construed to cover any kind of mobile device with
communications capabilities and includes radio telephones, smart phones,
communicators, and wireless information devices.” (Bast, ¶ [0001]).
Therefore, we find Appellant's arguments concerning the combination and
lack of motivation to be unpersuasive of error in the Examiner's initial
showing of obviousness of independent claim 1.
Appellant further contends that independent claim 1 recites the feature
“wherein the user display screen manager is adapted to sequentially display
portions of the part of the received display indicia visually displayed in the
first screen portion of the display in the second screen portion of the display”
and this feature is not disclosed by the combination of Bast and Tachibana.
(App. Br. 12-13).
Appellant contends that Tachibana fails to even contemplate
sequentially displaying portions of the part of the received display indicia
visually displayed in the first screen portion of the display in the second
screen portion of the display. (App. Br. 13). Appellant contends there is
nothing in Tachibana that suggests “a screen manager is adapted to
sequentially display portions of that what is displayed in the first screen
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portion and a second screen portion. Instead, Tachibana merely discloses
allowing the user to view the characters that the user is inputting in an
enlarged manner.” Id. We disagree with Appellant’s contentions wherein
Tachibana, column 5, lines 38-44, discloses both the character input function
and also the user operating the cursor to move the caret vertically and
horizontally whereby a skilled artisan would understand that the user may
thereby view previously entered characters. For example, in figure 9 in step
B10 determines the enlargement display area from the entire screen image
information which would not be required if only the input character were to
be limited in the disclosure of Tachibana.
We find the language of independent claim 1 does not preclude the
use of user interaction with the device. Furthermore, the claim language
does not expressly recite that the screen manager “automatically
sequentially” display portions, and we further note that the dependent claim
12 (addressed below) comes closer to setting forth an automatic function by
reciting additional steps performed by the user display screen manager.
We find that Tachibana teaches and fairly suggests an interface for the
user which Appellant has admitted is taught which allows the user to view
inputted characters in a sequential manner in an enlarged manner in a second
portion of the display, and we find the teachings in column 5 and figure 9 to
further teach and fairly suggest that prior entered characters may be viewed
in a sequential manner.
Appellant further argues that the screen manager is “adapted to
sequentially display portions,” and attempts to distinguish that limitation
from the use of user interaction. (App. Br. 13). We find Appellant’s
argument to be attenuated since Appellant’s claim language does not
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necessarily recite that the screen manager actually performs the function
automatically and without any user interaction and thereby allows the
Examiner room for interpretation such as with user interaction as taught by
Tachibana and applied by the Examiner. (Answer 15-17). Therefore, we
find Appellant’s argument to be unpersuasive of error in the Examiner’s
initial showing of obviousness.
Appellant argues “[t]o the extent the Examiner is reading the user
moving the caret as meeting the features of claim 1, plainly such a system
fails to disclose ‘the user display screen manager is adapted to sequentially
to display portions’ because in such a system the screen manager is not so
adapted, the user is the one manually selecting the portion of the display.”
(App. Br. 13-14). We disagree with Appellant’s oversimplification of the
system of Tachibana wherein Tachibana in figures 7 through 9 clearly show
method steps which would be carried out by the system which works with
user inputs and system evaluations to evaluate the totality of the information
and to present the appropriate information to the user in the manner desired
by the user.
Therefore, we disagree with Appellant, and find that Tachibana
teaches a user display screen manager which is adapted to sequentially
display portions as claimed. Therefore, Appellant’s argument does not show
error in the Examiner’s initial showing of obviousness, and we sustain the
rejection of independent claim 1 and dependent claims 2-4, 7, 13-15 which
have not been separately argued.
With respect to independent claim 17, Appellant contends that the
method recites where one or more indicia are displayed in a non-enlarged
manner in a first screen portion of a display prior to being displayed in an
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enlarged manner in the second screen portion. (App. Br. 14). As discussed
above with respect to independent claim 1, we find that Tachibana, in
column 5 and figure 9, teaches and fairly suggests that the caret (selection
display window) may be moved vertically and horizontally and this would
allow prior entered/displayed characters to be displayed in an enlarged
second portion of the display. Therefore, we find Appellant’s argument to
be unpersuasive of error in the Examiner's initial showing of obviousness,
and we sustain the rejection of independent claim 17 and dependent claims
18-20.
With respect to independent claim 21, Appellant argues that the claim
recites “sequentially displaying in a second screen area of the display the
plurality of characters of the text message in the first part, the characters
being displayed at a second size that is larger than the first size.” (App. Br.
16). Appellant contends that Tachibana makes no mention, suggestion or
teaching of doing it two sequential displaying steps. (Id. at 16-17). We
disagree with Appellant, as discussed above. Clearly, the input characters of
Tachibana are information which makes it text and it is a message.
Therefore, it is a “text message” made up of a plurality of characters. As
discussed above, the caret may be moved vertically and horizontally which
would allow sequential viewing/displaying of plural characters of the text
message from the first part in a second part at a second size that is larger
than the first size. Therefore, we find Appellant’s argument unpersuasive of
error in the Examiner’s initial showing of obviousness, and we sustain the
rejection of independent claim 21 and dependent claims 22 and 23 which
have not been separately argued.

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Dependent claims 12, 24, and 25
Appellant argues that the Examiner has not presented a sufficient
initial showing of obviousness for dependent claim 12 wherein the portions
of Bast and Tachibana relied upon by the Examiner do not show “[a] user
display screen manager is adapted to successively reselect at successive
selection intervals . . .” as claimed. (App. Br. 17). We agree with Appellant
that the limited citation by the Examiner in the Answer does not teach or
fairly suggest the claimed feature. Appellant further argues in the Reply
Brief that the Examiner does not respond to Appellants' contentions in the
Answer. We agree with Appellant that the Examiner does not address any
of Appellant’s contentions with respect to dependent claims 12, 24, and 25.
Therefore, Appellant has shown error in the Examiner's initial showing of
obviousness of dependent claims 12, 24, and 25, and we reverse the
Examiner's rejection thereof.

V. CONCLUSION
For the aforementioned reasons, Appellant has not shown that error in
the Examiner's initial showing of obviousness of independent claim 1, 17,
and 21. Appellant has shown that the Examiner erred in rejecting dependent
claims 12, 24, and 25 under obviousness.

VI. ORDER
We affirm the obviousness rejection of claims 1-4, 7, 8, 10, 13-15,
and 17-23, and we reverse the obviousness rejections of claims 12, 24, and
25.
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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)(1)(iv).

AFFIRMED-IN-PART

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