Ex Parte Griffin et al

Board of Patent Appeals and Interferences

Aug 31, 2012

10894540 (B.P.A.I. Aug. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JASON T. GRIFFIN, MIHAL LAZARIDIS, JULIAN PAAS, JAY
D. STEELE, and CRAIG E. RANTA
____________________

Appeal 2010-000422
Application 10/894,540
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, and DAVID M.
KOHUT, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000422
Application 10/894,540

2
STATEMENT OF CASE1
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 6-17, 19, and 20, all the claims pending in the application.
Claims 2, 4, 5, and 18 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.
Appellants’ Invention
Appellants’ invention relates to a method and apparatus (e.g., a
handheld electronic device) for dialing with audible sound tags (e.g., spoken
words representing numbers). Title; Figs. 1, 4, and 5; Spec. 1:29-2:27; Abs.;
claims 1, 3, 7, and 12. Appellants disclose and claim an input apparatus or
dial 32 for generating navigational inputs (Fig. 1; Spec. 4:15-6:9; claims 1,
3, and 12).
Exemplary Claims
Exemplary claims 1 and 3 under appeal read as follows:
1. A method of enabling input into a handheld electronic
device, the handheld electronic device including an input
apparatus having at least one input member that is movable in a
first direction and in a second direction to generate a plurality
of navigational inputs, the input apparatus being adapted to
generate at least one selecting input to said handheld electronic
device, said method comprising:

detecting a plurality of said navigational inputs from said
at least one input member;

1 Our decision will make reference to Appellants’ Appeal Brief filed April
20, 2009 (“App. Br.”), Appellants’ Reply Brief filed September 10, 2009
(“Reply Br.”), and the Examiner’s Answer mailed July 3, 2009 (“Ans.”).
Appeal 2010-000422
Application 10/894,540

3
detecting which of movement of said at least one input
member in said first direction and movement of said at least one
input member in said second direction generated each of said
navigational inputs;

outputting for each of at least some of the navigational
inputs an audible sound tag representing a spoken word that
corresponds with the navigational input;

with respect to each of a plurality of the navigational
inputs for which an audible sound tag was output:

detecting a selecting input, and

storing a value represented by the audible sound
tag; and

responsive to a predetermined input, processing
the stored values.

3. A method of enabling input into a handheld electronic
device, the handheld electronic device including an input
apparatus having at least one input member that is movable to
generate a plurality of navigational inputs, said method
comprising:
detecting a plurality of said navigational inputs from said
at least one input member, the plurality of navigational inputs
comprising a number of intermediate navigational inputs and a
final navigational input;
detecting the final navigational input within a
predetermined period of time after detection of at least one of
the number of intermediate navigational inputs, and
outputting an audible sound tag representing a spoken
word that corresponds with said final navigational input without
outputting an audible sound tag corresponding with the at least
one of the number of intermediate navigational inputs.
Appeal 2010-000422
Application 10/894,540

4
The Examiner’s Rejection
The Examiner rejected claims 1, 3, 6-17, 19, and 20 as being
unpatentable under 35 U.S.C. § 103(a) over D’Agosto, III (US 6,697,827
B1) and Kato (US 6,687,604 B2).2 Ans. 3-10.
Appellants’ Contentions
With regard to the obviousness rejection of claims 1, 3, 6-17, 19, and
20 over the combination of D’Agosto, III and Kato, Appellants contend
(App. Br. 3-11; Reply Br. 1-3) that the Examiner erred for numerous
reasons, including:
(1) Kato discloses audible outputs resulting from a selection input,
and not from a navigational input as set forth in claims 1 and 12 (App. Br.
3-7 and 9; Reply Br. 1-2);
(2) Kato’s Figure 4 and accompanying text discloses an audible output
at S7 in response to each and every key input detected at S2, thus the
combination of D’Agosto, III and Kato fails to disclose “detecting the final

2 Separate patentability under § 103(a) is not argued for claims 6, 8, and 10
rejected under § 103(a), and Appellants rely on the arguments made for
claim 1 from which claims 6, 8, and 10 depend (App. Br. 8). Similarly,
separate patentability under § 103(a) is not argued for claims 13, 15-17, and
19 rejected under § 103(a), and Appellants rely on the arguments made for
claim 12 from which claims 13, 15-17, and 19 depend (App. Br. 9).
Appellants only present arguments in the briefs as to the rejection of
claims 1, 9, 12, 14, and 16-19 (see App. Br. 3-11; Reply Br.1-3). Because
Appellants’ arguments for claim 12 present issues similar to the issues
presented in claim 1 (claims 1 and 12 each include the limitation of
providing audible outputs in response to “navigational inputs”), and pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii), we consider claim 1 to
be representative of claims 1, 6, 8, 10, 12, 13, 15-17, and 19.
In summary, our decision will provide an analysis of claims 1, 3, 7, 9,
11, 14, and 20.
Appeal 2010-000422
Application 10/894,540

5
navigational input within a predetermined period of time after detection of at
least one of the number of intermediate navigational inputs,” as set forth in
claim 3 (App. Br. 7-8; Reply Br. 3);
(3) D’Agosto, III fails to disclose any telephone number or dialing of
a telephone number, thus the combination of D’Agosto, III and Kato fails to
disclose “performing an enter operation dialing a telephone number that
corresponds to said stored values,” as recited in claims 7 and 20 (App. Br.
8-10; Reply Br. 3);
(4) Kato discloses the opposite concept from claim 9, i.e., Kato
outputs an audible output after a predetermined time period during which
time something is not occurring, as opposed to during which time something
(e.g., a navigational input) is occurring, thus Kato, III fails to disclose
“outputting an audible sound tag after expiration of a predetermined period
of time during which neither a navigational input nor a selecting input is
detected,” as recited in claim 9 (App. Br. 8; Reply Br. 3); and
(5) the combination of D’Agosto, III and Kato fails to disclose, teach,
or suggest incrementing or decrementing a timer or counter, as recited in
claims 11 and 14 (App. Br. 8-9; Reply Br. 3).
With regard to the obviousness rejection of claims 3, 7, 9, 11, 14, and
20 over the combination of D’Agosto, III and Kato, Appellants point out
(Reply Br. 3) that the Examiner has failed to respond to Appellants’
arguments as to these claims.
Appeal 2010-000422
Application 10/894,540

6
Issues on Appeal
Based on Appellants’ arguments, the following issues are presented
on appeal:
(1) Did the Examiner err in rejecting claims 1, 6, 8, 10, 12, 13, 15-17,
and 19 as being obvious because the combination of D’Agosto III and Kato
fails to teach or suggest providing audible outputs in response to
“navigational inputs” as recited in representative claim 1?
(2) Did the Examiner err in rejecting independent claims 3 as being
obvious because the combination of D’Agosto, III and Kato fails to teach or
suggest “detecting the final navigational input within a predetermined period
of time after detection of at least one of the number of intermediate
navigational inputs,” as set forth in claim 3?
(3) Did the Examiner err in rejecting claims 7 and 20 as being obvious
because the combination of D’Agosto, III and Kato fails to teach or suggest
“performing an enter operation dialing a telephone number that corresponds
to said stored values,” as set forth in claim 7, and similarly set forth in claim
20?
(4) Did the Examiner err in rejecting claims 9 as being obvious
because the combination of D’Agosto, III and Kato fails to teach or suggest
“outputting an audible sound tag after expiration of a predetermined period
of time during which neither a navigational input nor a selecting input is
detected,” as recited in claim 9?
(5) Did the Examiner err in rejecting claims 11 and 14 as being
obvious because the combination of D’Agosto, III and Kato fails to teach or
suggest incrementing and decrementing a counter based on the navigational
inputs as recited in claim 11, and similarly recited in claim 14?
Appeal 2010-000422
Application 10/894,540

7

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (App. Br. 3-11) and Reply Brief (Reply Br.
1-3) that the Examiner has erred. We agree with Appellants’ conclusions as
to issues (2)-(5) specifically listed above (see Appellants’ Contentions
(2)-(5) relating to the obviousness rejection of claims 3, 7, 9, 11, 14, and 20).
Appellants are correct (Reply Br. 3) that the Examiner did not respond to
Appellants’ arguments regarding the obviousness rejection of claims 3, 7, 9,
11, 14, and 20. In fact, the Examiner relies upon the findings and
conclusions regarding claims 1, 3, and 12 as supporting the rejection of
claims 3, 7, 9, 11, 14, and 20 (Ans. 14).
Regarding issue (1), we disagree with Appellants’ Contention (1), and
instead we agree with the Examiner that the combination of D’Agosto, III
and Kato teaches or suggests the navigational input and audible output
limitations as set forth in independent claims 1 and 12. With regard to
representative claim 1, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (Ans. 3-4 and 7-14). We highlight and address
certain arguments and findings, infra, regarding issues (1)-(5) as follows.
Issue 1: Claim 1
The combination of D’Agosto III and Kato discloses providing
audible outputs in response to “navigational inputs” as recited in
representative claim 1 because D’Agosto, III discloses an input selector 20
used “to navigate among files stored in the computing device and/or among
Appeal 2010-000422
Application 10/894,540

8
functions that may be selectable by a user” (Abs.; Figs. 1 and 2); and Kato
discloses an in-vehicle navigation system for producing audible outputs in
response to user input selections (Abs.) and navigational control (col. 3, l.
22) is performed by the system in response to inputs from a user (i.e.,
navigational inputs).
We also agree with the Examiner (Ans. 4 and 13), that Kato discloses
an audible sound tag representing a spoken word (see e.g., audio
manipulation phrase in audio manipulation phrase data memory 30 described
at col. 2, ll. 66 to col. 3, l. 3 and col. 3, ll. 10-53). “[A]s a key input
manipulation is performed, the CPU 50 controls to display and audibly
present an audio manipulation phrase which should be spoken when the key
input manipulation is performed through an audio manipulation” (col. 3, ll.
49-53 (emphasis added)).
In view of the foregoing, we will sustain the Examiner’s § 103(a)
rejection of representative claim 1. For the same reasons, we will sustain the
rejection of claims 6, 8, 10, 12, 13, 15-17, and 19.
Issue 2: Claim 3
We agree with Appellants’ arguments (App. Br. 7-8; Reply Br. 2) that
Kato’s Figure 4 discloses an audible output at step S7 in response to each
and every key input manipulation detected at step S2. Thus, at step S6 the
CPU 50 supplies the audio/visual output control circuit 4 with an audio
manipulation phrase from the audio manipulation phrase data memory 30 for
audible output (col. 3, l. 39 to col. 4, l. 57; col. 5, ll. 9-17). In this manner,
“each time the user performs a key input manipulation, an audio
manipulation phrase corresponding to this key input manipulation is
Appeal 2010-000422
Application 10/894,540

9
displayed or audibly presented to the user” (col. 5, ll. 19-24; see generally
col. 3, l. 54 to col. 5, l. 18)).
Therefore, we also agree with Appellants (Reply Br. 2-3) that the
combination of D’Agosto, III and Kato fails to disclose “detecting the final
navigational input within a predetermined period of time after detection of at
least one of the number of intermediate navigational inputs,” as set forth in
claim 3, because Kato fails to disclose an audible output for a final
navigational input with no corresponding audible output for an intermediate
navigational input.
In view of the foregoing, we will not sustain the Examiner’s § 103(a)
rejection of claim 3.
Issue 3: Claim 7 and 20
We agree with Appellants’ contention (App. Br. 8-10) that D’Agosto,
III fails to disclose any telephone number or dialing of a telephone number,
and thus the combination of D’Agosto, III and Kato fails to disclose
“performing an enter operation dialing a telephone number that corresponds
to said stored values,” as recited in claims 7 and 20. Although a memory
component 44 is present in D’Agosto, III, there is no indication that the palm
top computing device shown in Figures 1 and 2 is connected to a wireless
telephone network, any dialing occurs, or telephone numbers are stored in
memory 44 (see e.g., col. 3, ll. 22-33). D’Agosto, relied upon by the
Examiner as disclosing dialing a phone number, is silent as to performing
any operation for dialing a telephone number that corresponds to values
stored in memory 44.
In view of the foregoing, we will not sustain the Examiner’s § 103(a)
rejection of claims 7 and 20.
Appeal 2010-000422
Application 10/894,540

10

Issue 4: Claim 9
We also agree with Appellants’ contention (App. Br. 8) that Kato
discloses the opposite concept from claim 9, i.e., Kato outputs an audible
output after a predetermined time period during which time something is not
occurring, as opposed to during which time something (e.g., a navigational
input) is occurring. Column 1, line 61 through column 2, line 4 of Kato
(cited by the Examiner as disclosing the features of claim 9) is silent as to
any time period, or performing an operation within any time period. Our
close review of Kato reveals that at decision block 138 (Fig. 3C) if the
period of actuation of the rocker switch 20 in the down position is greater
than a brief period of time such as one second (i.e., a predetermined period),
playback begins (i.e., audible sound tag is output) at block 140 (col. 4, ll.
42-49). Stated another way, Kato discloses outputting an audible output
after the expiration of a period of time (one second) during which time a
navigational and/or selection input is occurring. Kato, and thus the
combination of D’Agosto, III and Kato, fails to teach or suggest “outputting
an audible sound tag after expiration of a predetermined period of time
during which neither a navigational input nor a selecting input is detected,”
as recited in claim 9.
In view of the foregoing, we will not sustain the Examiner’s § 103(a)
rejection of claim 9.
Appeal 2010-000422
Application 10/894,540

11
Issue 5: Claim 11 and 14
We agree with Appellants’ contention (App. Br. 8-9) that the
combination of D’Agosto, III and Kato fails to disclose, teach, or suggest
incrementing or decrementing a timer or counter, as recited in claims 11 and
14. The Examiner has not articulated how or why the combination of
D’Agosto, III and Kato teaches or suggests incrementing and decrementing a
counter based on the navigational inputs as recited in claim 11, and similarly
recited in claim 14, other than to refer to microprocessor 40 and column 3,
line 63 through column 4, line 3 of D’Agosto, III (see Ans. 7). This portion
of D’Agosto, III discloses a dictation mode and an idle condition (Fig. 3A,
block 102), but is silent as to any timer, counter, or the incrementing or
decrementing of any counter or timer.
In view of the foregoing, we will not sustain the Examiner’s § 103(a)
rejection of claims 11 and 14.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 6, 8, 10, 12, 13,
15-17, and 19 as being obvious because the combination of D’Agosto, III
and Kato teaches or suggests the audible output and navigational input
limitations as set forth in representative claim 1, and as similarly set forth in
independent claim 12 and corresponding dependent claims 6, 8, 10, 13,
15-17, and 19.
(2) Appellants have demonstrated that the Examiner erred in rejecting
claim 3 as being obvious because the combination of D’Agosto, III and Kato
fails to teach or suggest “detecting the final navigational input within a
Appeal 2010-000422
Application 10/894,540

12
predetermined period of time after detection of at least one of the number of
intermediate navigational inputs.”
(3) Appellants have demonstrated that the Examiner erred in rejecting
claims 7 and 20 as being obvious because the combination of D’Agosto, III
and Kato fails to teach or suggest “performing an enter operation dialing a
telephone number that corresponds to said stored values.”
(4) Appellants have demonstrated that the Examiner erred in rejecting
claim 9 as being obvious because the combination of D’Agosto, III and Kato
fails to teach or suggest “outputting an audible sound tag after expiration of
a predetermined period of time during which neither a navigational input nor
a selecting input is detected.”
(5) Appellants have demonstrated that the Examiner erred in rejecting
claims 11 and 14 as being obvious because the combination of D’Agosto, III
and Kato fails to teach or suggest incrementing and decrementing a counter
based on the navigational inputs.

DECISION
The Examiner’s decision to reject claims 3, 7, 9, 11, 14, and 20 as
being unpatentable under 35 U.S.C. § 103(a) over D’Agosto, III and Kato is
reversed.
The Examiner’s decision to reject claims 1, 6, 8, 10, 12, 13, 15-17,
and 19 as being unpatentable under 35 U.S.C. § 103(a) over D’Agosto, III
and Kato is affirmed.

Appeal 2010-000422
Application 10/894,540

13
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

msc