Ex Parte Griffin

Patent Trial and Appeal Board

Jun 27, 2016

13034152 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/034, 152 02/24/2011
93377 7590 06/29/2016
BlackBerry Limited (Finnegan)
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
Jason Tyler Griffin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
11298.0039-01 1238
EXAMINER
TRAN, TUYETLIEN T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
patdoctc@fr.com
portfolioprosecution@blackberry.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON TYLER GRIFFIN
Appeal2014-006829
Application 13/034,152
Technology Center 2100
Before MAHSHID D. SAADAT, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 21-53, which are all the claims pending in this application. Claims
1-20 have been cancelled. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is BlackBerry Limited
(App. Br. 4).
Appeal2014-006829
Application 13/034,152
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to automatically adding interrogative
punctuation to a sequence of words (Abstract). Claim 21 is illustrative of
the invention and reads as follows.
21. A method of inputting punctuation in text generated by a
mobile communications device having a processor coupled to a
memory, the memory including stored words, a subset of the
stored words being indicative of an interrogative expression, the
method comprising:
receiving signals reflecting a sequence of character
inputs;
generating text based on-the sequence of character
inputs;
identifying, by the processor, a combination of two non-
consecutive words in the text, wherein the non-
consecutive words are indicative of an interrogative
expression; and
upon receipt of a signal reflecting a termination input,
automatically displaying an interrogative punctuation
character to the text.
The Examiner's Rejections
Claims 21-53 stand rejected on the ground ofnonstatutory double
patenting (Final Act. 2-3; Ans. 2-3).2
2 With respect to the Examiner's rejection based upon the judicially created
doctrine of obviousness-type double patenting over US 7 ,921,3 7 4 B2 (Apr.
5, 2011), Appellant has not contested or identified an error in the Examiner's
rejection (see App. Br. 10-17; see also Reply Br. 2---6). "When the appellant
fails to contest a ground of rejection to the Board, ... the Board may treat
any argument with respect to that ground of rejection as waived. In the
event of such a waiver, the PTO may affirm the rejection of the group of
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Application 13/034,152
Claims 21-26, 30-37, 41--48, 52, and 53 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Griffin et al. (US 6,396,482
Bl; May 28, 2002), Suess (US 2005/0187754 Al; Aug. 25, 2005), and
Schabes et al. (US 2004/0117352 Al; June 17, 2004). (Final Act. 4--8; Ans.
3-8.)
Claims 27-29, 38--40, and 49-51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable under Griffin, Suess, Schabes, and Chen (US
6,067,514; May 23, 2000). (Final Act. 8-10; Ans. 8-9.)
Issues on Appeal
Appellant's arguments present us with the following issues.
1. Did the Examiner err in finding the combination of Griffin,
Suess, and Schabes teaches "identifying, by the processor, a combination of
two non-consecutive words in the text, wherein the non-consecutive words
are indicative of an interrogative expression," as recited in independent
claim 21 ? 3
2. Did the Examiner err in finding the combination of Griffin,
Suess, Schabes, and Chen teaches "the combination of two non-consecutive
words follows a punctuation in the text," as recited in dependent claim 28?
claims that the examiner rejected on that ground without considering the
merits of those rejections." Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir.
2008). Accordingly, we summarily sustain the Examiner's nonstatutory
double patenting rejection of claims 21-5 3.
3 Separate patentability is not argued for claims 22-27 and 30-53 (App. Br.
10-17; Reply Br. 2-5). Except for our ultimate decision, these claims are
not discussed further herein.
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Application 13/034,152
3. Did the Examiner err in finding the combination of Gritlin,
Suess, Schabes, and Chen teaches "the punctuation in the text is one of a
comma and a semi-colon," as recited in dependent claim 29?
ANALYSIS
Claim 21
Claim 21 recites "identifying, by the processor, a combination of two
non-consecutive words in the text, wherein the non-consecutive words are
indicative of an interrogative expression." The Examiner finds Griffin and
Suess teach identifying a combination of words indicative of an interrogative
expression (Final Act. 4---6; Ans. 3-5, 11). The Examiner additionally finds
Schabes teaches identifying three-word phrases indicative of a question that
can be answered yes or no (Yes/No question) (Final Act. 6-7; Ans. 5---6, 11 ).
Accordingly, the Examiner finds the combination of Griffin, Suess, and
Schabes teaches the disputed limitation (Final Act. 4--7; Ans. 3---6, 11).
Appellant argues, although Schabes' three word phrases may include
a combination of two nonconsecutive words, it does not mean that the
combinations are used to identify Schabes' templates of yes/no questions
(see App. Br. 12). We are not persuaded by Appellant's argument. The
Examiner finds, and we agree, that in order to determine if a three-word
phrase is indicative of Yes/No question, all three words are needed,
including the two nonconsecutive words (see Ans. 11-12). Thus, the two
nonconsecutive words of the three-word phrase are used for identification
purposes (see id.).
Appellant further argues that analyzing words in text, as taught in
Schabes, does not mean that one identifies a combination of two
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Application 13/034,152
nonconsecutive words in the text because "[i]dentifying a combination of
two non-consecutive words indicative of an interrogative expression requires
some prior information, e.g., a list of the non-consecutive words for
reference. On the other hand, analyzing the words in a sentence does not
require any prior information." (Reply Br. 3--4). Appellant's argument is
not commensurate with the scope of the claims. Claim 21 neither recites nor
requires a nexus between identifying nonconsecutive words and stored
information.
Appellant additionally argues that because Schabes teaches specific
examples in which a phrase containing a question word does not identify a
sentence as a Yes/No question, Schabes does not teach "identifying ... a
combination of two nonconsecutive words in the text, wherein the non-
consecutive words are indicative of an interrogative expression," as recited
in claim 21 (App. Br. 13-14). We are not persuaded. Schabes' above cited
examples do not negate Schabes' other teachings, found by the Examiner, in
which nonconsecutive words are used to identify a Yes/No question (see
Ans. 12; see also Schabes i-fi-f 185, 188-196, 207, 209). Furthermore,
Appellant attacks Schabes for lacking a teaching that the Examiner relies
upon Suess to show. The Examiner relies upon Suess for its teaching of
identifying a combination of words in text to determine if the words are
indicative of an interrogative expression (Ans. 11-12). The Examiner relies
upon Schabes for its teaching that the combination of words comprises
nonconsecutive words (id.).
For the reasons discussed supra, we are not persuaded of Examiner
error and sustain the rejection of claim 21.
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Application 13/034,152
Claim 28
Dependent claim 28 recites "the combination of two non-consecutive
words follows a punctuation in the text." Appellant argues Chen, which is
relied upon by the Examiner to teach the limitation of claim 28, does not
teach identifying a combination of two nonconsecutive words that follow a
punctuation in the text because Chen predicts the need for a starting question
mark by considering words of the sentence (App. Br. 15-16). Thus,
Appellant argues the nonconsecutive words must be identified prior to
existence of the punctuation (see id.).
We find no such temporal relationship between independent claim 21
and its dependent claim 28. Claim 28 recites a relative position between the
nonconsecutive words and punctuation. Claim 28 neither further limits a
particular step in claim 21 nor indicates a relative temporal relationship with
any step in claim 21. Additionally, the Examiner finds this disputed
limitation is taught by Chen's insertion of a question mark at the beginning
of Spanish text containing the nonconsecutive word combination, and that
punctuation automatically can be inserted for different languages, including
English (Final Act. 9; Ans. 13-14).
We understand the Examiner's rejection, in view of Chen, to be based
on considering it plausible that the text, as recited in claim 21, could include
multiple sentences and that text could include various types of punctuation
(see Final Act. 9; see also Ans. 13-14). As such, the nonconsecutive words
that are being identified could follow any punctuation of a previous
sentence. We find the Examiner's findings and explanation reasonable. The
skilled artisan would recognize that the text recited in claim 21 could
comprise multiple sentences and that text in the English language could
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Application 13/034,152
include various types of punctuation. This understanding is further
supported by Appellant's statements that Chen addresses sentences (see
App. Br. 15-16), and Chen's disclosure that "a punctuation mark ... often
occurs before [the words] THE, A, and WE." (Chen, col. 13, 11. 5-8). Thus,
we sustain the rejection of claim 28.
Claim 29
Dependent claim 29, which depends from claim 28, recites "the
punctuation in the text is one of a comma and a semi-colon." Appellant
contends the Examiner erred because the Examiner did not establish a prima
facie case of obviousness (App. Br. 16). Appellant's contention does not
persuade of Examiner error for the reasons discussed supra regarding our
understanding of the Examiner rejection of claim 28.
DECISION
We affirm the decision of the Examiner to reject claims 21-53.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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