Ex Parte Hard

Patent Trial and Appeal Board

Jun 8, 2016

11270819 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111270,819 11/10/2005
72165 7590 06/10/2016
BANNER & WITCOFF, LTD
ATTORNEYS FOR CLIENT 004770
1100 13TH STREET
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
John Hard
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.
004770.00633 6538
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
06/10/2016 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):
PTO-72165@bannerwitcoff.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN HARD
Appeal 2014-007117
Application 11/270,819
Technology Center 2600
Before JOHN F. HORVATH, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1---6, 8-11, 14, 18, 22-25, and 27-30. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Nokia Corporation.
App. Br. 2.
Appeal 2014-007117
Application 11/270,819
THE INVENTION
Appellant's invention generally relates to predictive text input in
mobile communication terminals. Spec. i-f 1.
Exemplary independent claim 1 is reproduced below.
1. A method comprising:
receiving, at a computing device, a first input sequence for
a first word;
displaying, on a display of the computing device,
candidate words based on a dictionary and the first input
sequence;
prior to receiving a second input sequence for a second
word, receiving a command to switch to a dictionary input mode
that activates adding of unknown words to the dictionary;
switching to the dictionary input mode and opening an
editor window on the display;
during the dictionary input mode:
receiving the second input sequence,
displaying the second \x1ord in the editor \x1indo\x1,
and
upon receiving an accept, storing the second word
in the dictionary; and
closing the editor window and displaying the second word
on the display.
REFERENCES and REJECTIONS
1. Claims 2--4 and 29 stand rejected under 35 U.S.C. § 112, first
paragraph.
2. Claims 1, 5, 6, 8, 9, 11, 14, 18, 23, 27, 28, and 30 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Haestrup (US 6,223,059 Bl, Apr.
24, 2001).
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3. Claim 29 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Koivuniemi (US 2004/0177179 Al, Sept. 9, 2004).
4. Claims 2, 3, 4, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Haestrup and Koivuniemi.
5. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Haestrup.
6. Claims 22 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Haestrup and Reponen (US 2003/0197740 Al, Oct. 23,
2003).
ANALYSIS
I. Section 112 Rejection of Claims 2--4 and 29
Claim 2 recites "wherein the only manner in which the adding of
unknown words to the dictionary can be performed is by switching to said
dictionary input mode." App. Br. 19 (emphasis added). Ciaim 29 recites
"during a first input mode wherein unknown words cannot be added to a
dictionary." App. Br. 23 (emphasis added). The Examiner rejects claims 2
and 29 for failing the written description requirement because, according to
the Examiner, the aforementioned claim limitations are not positively recited
by Appellant's Specification. Non-Final Act. 7-8 (citing MPEP
§ 2173.05(i)).
Appellant argues "[i]nitially, Appellant notes that the Office has
incorrectly set forth the requirements for 35 U.S.C. § 112, first paragraph,
and has incorrectly classified the features of claim 2 as a negative
limitation." App. Br. 8. Further, Appellant points to paragraphs 31-34 of
the Specification as describing an embodiment where "a user has to change
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Application 11/270,819
input modes in order to add unknown words to the dictionary and can only
inform that an unknown word should be saved by switching to or activating
the dictionary input mode." App. Br. 9; see also Reply Br. 3.
A written "description must 'clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed."' Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (quoting Vas-Cath v. Mahurkar, 935 F.2d 1555, 1563) (Fed. Cir.
1991). "In other words, the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date." Id. (citing Vas-Cath, 935 F.2d at 1563). "Although [the applicant]
does not have to describe exactly the subject matter claimed ... the
description must clearly allow persons of ordinary skill in the art to
recognize that [he or she] invented what is claimed." Vas-Cath, 935 F.2d at
1563 (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). Any
negative limitation or exclusionary proviso must have basis in the original
disclosure. If alternative elements are positively recited in the specification,
they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d
1008, 1019 ( CCP A 1977) ("[The] specification, having described the whole,
necessarily described the part remaining."). "Negative claim limitations are
adequately supported when the specification describes a reason to exclude
the relevant limitation. Such written description support need not rise to the
level of disclaimer. In fact, it is possible for the patentee to support both the
inclusion and exclusion of the same material." Santarus, Inc. v. Par Pharm.,
Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
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Appellant's Specification describes switching from predictive mode to
a dictionary input mode before being able to add a word to the dictionary.
Spec. i-fi-1 31-34. Once the word is added to the dictionary, the mode is
switched back from the dictionary mode to the predictive mode. Id. We
conclude this description sufficiently conveys to those skilled in the art that
the inventor had possession of the subject matter of the disputed claims
where the only manner in which words can be added to the dictionary is by
switching to a dictionary mode, and where during a first mode unknown
words cannot be added to the dictionary, as required by claims 2 and 29
respectively.
Accordingly, we do not sustain the Examiner's rejection of claims 2--4
and 29.
II. Section 102(b) Rejection of Claim 1
The Examiner finds Haestrup discloses a "dictionary input mode that
activates adding of unknown words to the dictionary" by describing that
when no matching word is found in predictive mode the user can switch to
the SPELL/multi-tap mode to manually enter a word and then press the OK
softkey to add the word to the user dictionary. Non-Final Act. 9; Ans. 26
(citing Haestrup 7:34--48, 8:34--37).
Appellant argues "the multitap editor of Haestrup fails to anticipate 'a
dictionary input mode that activates adding of unknown words to the
dictionary,' as recited in claim 1." App. Br. 12-13. According to Appellant,
"[i]n Haestrup, unknown words can be added to a dictionary in both the
predictive editor and the multitap editor." App. Br. 13. Appellant further
contends "[ s ]witching from the predictive editor to the multi tap editor in
Haestrup is not going to the recited 'dictionary input mode' because doing
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so fails to activate the adding of new words in view of Haestrup describing
that new words occurs automatically in both modes." Id.
We are unpersuaded of Examiner error. We agree with the Examiner
that Haestrup discloses switching from the predictive editor program to the
multi tap editor and that words can be added to the dictionary in this mode.
Appellant's argument that words can be added in other modes as well, such
as the predictive editor mode, even if true, is not commensurate with the
scope of the claim which does not preclude words from being added in
modes other than the dictionary mode.
Accordingly, we sustain the Examiner's rejection of independent
claim 1. We also sustain the Examiner's rejection of independent claims 14
and 27, and dependent claims 5, 6, 8, 9, 11, 18, 23, 28, and 30, which were
argued together with claim 1 as a group. See App. Br. 12-15.
III. Section 102(b) Rejection ofClaim 29
The Examiner finds Koivuniemi discloses "a first input mode wherein
unknown words cannot be added to a dictionary." Non-Final Act. 20-21
(citing Koivuniemi Fig. 5, i-fi-136, 61). In particular, Koivuniemi discloses
that when a user enters a word that was not correctly predicted in the
predictive text mode, the system switches from predictive text mode to
multi-tap mode in which the user can manually type the word, then press the
SA VE key to add the word to the dictionary. Koivuniemi i-fi-153---61. Once
the word is added, the system switches back to the predictive text mode.
Koivuniemi Fig. 5, i161.
Appellant argues "Koivuniemi fails to describe an embodiment where
the 'SA VE key' is disabled in a particular mode or where the normal
function of the 'SA VE key' is not performed .... " App. Br. 16 (citing
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Koivuniemi i167). According to the Appellant, "a user would be able to
press the 'SA VE key' during any input mode" to add a word to the
dictionary and, therefore, Koivuniemi does not disclose "a first input mode
where unknown words cannot be added to a dictionary." Id.
We are unpersuaded of Examiner error. Instead, we agree with the
Examiner's findings and conclusions as set forth in the action from which
this appeal was taken (Non-Final Act. 20-22), and in the Examiner's
Answer (Ans. 28). In particular, we agree that words are not added in the
predictive text mode. As the Examiner points out, Koivuniemi discloses the
"SA VE key" being pressed only in multi-tap mode. See Koivuniemi Fig. 5
(inactivating the predictive text engine and activating multi-tap mode before
the "SA VE key" is pressed). 2 Contrary to Appellant's assertion, paragraphs
28 and 67 of Koivuniemi do not disclose the "SA VE key" being used in
modes other than multi-tap mode. Still further, we note Koivuniemi's
disclosure of switching to multi-tap mode before allowing the user to save a
word to the dictionary is similar to the description of paragraphs 31-34 of
Appellant's Specification, which Appellant argues teaches "a first input
mode wherein unknown words cannot be added to a dictionary." See App.
Br. 8-9; Spec. i-fi-1 31-34.
2 Although we do not rely on the following in our Decision, we note
Koivuniemi explicitly states that a word "missing from the mobile dictionary
... must be added using the multi-tap mode." Koivuniemi i-f 19 (emphasis
added). Further, Koivuniemi discloses that"[ w ]hen the multi-tap mode is
set as active (ON), the T9 mode is simultaneously set as inactive
(OFF) .... " Koivuniemi i120. This would further support the Examiner's
finding that words cannot be added in predictive text mode.
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IV. Section 103(a) Rejection of Claim 2
The Examiner rejects claim 2 for substantially the same reasons as
claim 29, largely over the teachings of Koivuniemi (see Non-Final Act. 23),
and Appellant makes the same arguments with respect to claim 2 as for
claim 29. See App. Br. 16-17. Accordingly, we sustain the Examiner's
rejection of claim 2 for the same reasons described above in our analysis of
claim 29. Similarly, we sustain the Examiner's rejection of claims 3, 4, and
24, for which no arguments for separate patentability are presented. See
App. Br. 16-17.
V. Claims 10, 22, and 25
Appellants do not present arguments for patentability of claims 10, 22,
and 25. We therefore summarily sustain the Examiner's rejection of these
claims.
DECISION
The Examiner's rejection of claims 2--4 and 29 under 35 U.S.C. § 112
is reversed.
The Examiner's rejection of claims 1, 5, 6, 8, 9, 11, 14, 18, 23, 27, 28,
29, and 30 under 35 U.S.C. § 102(b) is affirmed.
The Examiner's rejection of claims 2, 3, 4, 10, 22, 24, and 25 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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