Ex Parte Hymel

Board of Patent Appeals and Interferences

Sep 11, 2007

10144916 (B.P.A.I. Sep. 11, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES HYMEL
____________

Appeal 2007-1841
Application 10/144,916
Technology Center 2100
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Decided: September 11, 2007
____________

Before JAMES D. THOMAS, LEE E. BARRETT
and MAHSHID D. SAADAT, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1 through 21. We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).
As best representative of the disclosed and claimed invention,
independent claim 1 is reproduced below:
1. A method of providing an efficient user interface for a messaging
device, the method including:
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Application 10/144,916

detecting activation of an alphanumeric key from a set of keys;

comparing a status of the messaging device to a predetermined status
to provide a comparison;

when said comparison is unfavorable and responsive to said
activation, presenting a first interface procedure for the messaging device;
and

when said comparison is favorable and responsive to said activation,
presenting a second interface procedure for the messaging device, said
second interface procedure foregoing one or more key activations
corresponding to said first interface procedure.

The following references are relied on by the Examiner:
Will US 5,825,353 Oct. 20, 1998
Palatsi US 5,892,475 Apr. 6, 1999
Siedlikowski US 6,741,232 B1 May 25, 2004
(Filed January 23, 2002)
Claims 1 through 4, 6, 7, 11 through 14, 16, 17, and 21 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Palatsi. This reference is
used to reject claims 5, 8 through 10, 15, and 18 through 20, as being
obvious over Palatsi alone. Lastly, claims 1 through 21 stand rejected under
35 U.S.C. § 103 as being obvious over Siedlikowski in view of Will.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the principal Brief and Reply Brief for Appellant’s
positions, and to the Answer for the Examiner’s positions.
OPINION
For the reasons set forth by the Examiner in the Answer, as amplified
here, we sustain each of the rejections of the argued claims on appeal.
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Independent claim 1 recites in part “said second interface procedure
foregoing one or more key activations corresponding to said first interface
procedure.” In contrast to this recitation, independent claim 11 merely
requires “foregoing activation of one or more keys.” The activation in this
claim does not necessarily have to correspond to the first procedure as in
claim 1 and appears to recite the requirement that any key, including keys
other than alphanumeric, may meet the limitation. Similar observations are
made with respect to independent claim 21. This claim also does not require
that the comparing step, the step relating to a situation when the comparison
in unfavorable and the step of when the comparison is favourable have any
stated relevance to the initially recited step of detecting activation of an
alphanumeric key.
Turning to the first stated rejection of independent claim 1 that is
rejected under 35 U.S.C. § 102(b), Appellant’s arguments at pages 6 and 8
of the Brief indicating that the Examiner’s use of hindsight is improper is in
itself an improper argument to make within a rejection under 35 U.S.C. §
102 as the Examiner notes in the responsive arguments at page 30 of the
Answer. The argument is not pursued in the Reply Brief.
Page 3 of the Answer makes clear that the Examiner’s correlation of
comparing a status of the claims is based upon Palatsi’s comparison of a
period of time set into the device. As the abstract and the first paragraph of
the Summary of The Invention of Palatsi at column 1 appears to identically
indicate, his invention determines whether a period of time of a
predetermined duration has elapsed from first operation and another
operation. In a third paragraph in the summary of the invention beginning at
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line 42 of column 3, Palatsi indicates that an input means may comprise a
first input device, apparently soft key 11, and a second input device,
apparently soft key 12. It is stated that the first operation may be considered
the actuation of either of these input keys but the second actuation can only
be an actuation of a first input device. Therefore, Palatsi’s telephone
appears to forego the actuation of the second input device meeting the
limitations at the end representative independent claim 1 on appeal.
Also, as briefly indicated at column 1, lines 55 and 56, the
predetermined time duration may be fixed, definable by a user or
automatically determined by the user interface. Relevant teachings are also
noted at column 3, lines 2 through 4, and column 3, lines 48 through 67, the
latter lines of which indicate that the pressing of another key or plainly any
key, may also trigger the function of key 11 to switch. Further, similar
considerations are discussed at column 4, lines 1 through 13. It goes without
saying that traditionally, the numeric keys on a phone, element 1 in figures 1
and 2 of Palatsi, have alphabetic characters as well as numeric characters
thereon and may therefore be rightly considered as alphanumeric keys. The
bottom of page 2 of the Reply Brief agrees that Palatsi teaches alphanumeric
keys. The timer 29 in figure 1 of Palatsi relates to the setting of a time lapse
or duration in the CPU 5 and this element performs the necessary
comparisons noted earlier.
With respect to the unfavorable and favorable recitations of the
comparisons of claim 1 on appeal, the claim does not recite any meaning to
be attributed to what may be considered to be favorable or unfavorable. The
Examiner has expanded upon what may be considered to be an unfavorable
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comparison such as a time lapse less than the interval and, correspondingly,
the favourable comparison would be a time lapse greater than the interval.
Generally, the Examiner’s remarks at pages 31 and 32 are persuasive of the
anticipation of claim 1. What the Examiner says appears to be consistent
with Palatsi, notwithstanding Appellant’s arguments to the contrary as to this
claim in the Reply Brief.
Appellant’s separate argument with respect to claim 2 at page 5 of the
Reply Brief is misplaced. Appellant’s arguments in the principal Brief on
appeal group claim 2 with claim 1 and present no separate arguments with
respect to that claim in the principal Brief. As to this claim, the Reply Brief
is not responsive to any argument made by the Examiner with respect to this
claim in the responsive arguments portion of the Answer. Therefore, it is
presented in an untimely manner. The same may be said of the Argument
with respect to claim 6 at page 6 of the Reply Brief. Likewise, the same
may be said of dependent claim 12 argued at page 8 of the Reply Brief. It
was grouped with its parent independent claim 11 at page 10 of the principal
Brief and no separate argument was presented as to it there. Lastly, the
same may also be said with respect to the argument at page 9 of the Reply
Brief as to claim 16.
Page 9 of the principal Brief argues the absence of a message
composure routine associated with dependent claims 3 and 4. We do not
agree with Appellant’s urging that Palatsi does not describe a message
composure routine as broadly recited in claim 3, which appears to be
representative of that claim as well as claim 4. Since figures 3 and 4 of
Palatsi relate to three features as to received phone calls including last calls
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redial, messages, and lights, it appears to us that Palatsi would inherently
require some form of message composure routine in addition to the explicit
showing in figures 3 and 4 of the symbol “OK” which appears to be a
responsive entry by the user of the phone 1 of Palatsi. These remarks also
appear to us to address Appellant’s arguments at page 12 of the Reply Brief
relative to claim 5 which is rejected under 35 U.S.C. § 103. The arguments
at that page of the Brief also make reference to a position set forth with
respect to claims 3 and 4 as the basis of traversing the rejection of claims 8
through 10 and 18 through 20, respectively. The degree of immediacy is not
defined in claim 8.
As to dependent claim 7, the arguments at page 9 of the principal
Brief are misplaced. The claim does not recite a comparison of an
occurrence of a time out in one state to the occurrence of a time out in
another state, but merely a comparison of modes of operation. Nevertheless,
we agree with the Examiner’s interpretations of claim 7 at page 33 of the
Answer as to what a status or mode is particularly in view of the expansive
teachings at column 4, lines 1 through 13.
Pages 10 and 11 of the principal Brief on appeal relates to arguments
as to independent claim 11, dependent claims 13, 14, and 17, which
correspond in limitations and in arguments to those previously presented
with respect to claims 1, 3, 4, and 7. It is noted as well that arguments are
relied upon as to claim 21 that were previously presented in the Brief and
addressed by the Examiner and us. As noted earlier in this opinion
independent claim 21 presents corresponding limitations that are
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substantially broader than those presented in independent claims 1 and 11 on
appeal.
Lastly, we treat the rejection of claims 1 through 21 under 35 U.S.C.
§ 103 as being obvious over Siedlikowski in view Will. Consistent with
Appellant’s arguments presented as to this rejection of independent claim 1,
11, and 21 on appeal beginning at page 13 of the principal Brief on appeal,
Appellant’s basic characterization of the impropriety of the Examiner’s
rejection is simply stated at page 11 of the Reply Brief indicating that the
dispute between the Examiner and the Appellant is whether a thumbwheel
can reasonable be considered as an alphanumeric key as claimed.
Both Siedlikowski and Will relate to PDA devices and cell phones.
Siedlikowski’s figure 1 shows thumbwheel 140 and navigate buttons 150 for
permitting scrolling up and scrolling down operations as well as the
keyboard 130. As to these keys, we make note of and agree with the
Examiner’s discussion of keys at page 35 of the responsive arguments
portion of the Answer, where the buttons of Siedlikowski plainly relate to
the keys of the claims. The Reply Brief does not rebut the Examiner’s views
expressed here. In the context of both Siedlikowski’s and Will’s devices
being considered as telephones, it is well known that any key related to
numeric entry also includes alphabetic information, thus having a dual
purpose. The discussion of the thumbwheel 140 in figure 1 of Siedlikowski
is noted at column 3, lines 10 through 25. Column 4, lines 55 through 65 of
Siedlikowski makes references to short cut key entries, such as those relating
to the “@” symbol which is well known to be a part of a numeric key, the
number 2.
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As to Will, the thumbwheel 15 in figure 2 corresponds to the
thumbwheel 140 in figure 1 of Siedlikowski. The showings in various
portions of figures 7 and 8 of Will make clear that a thumbwheel may be
considered to be a device for alphanumeric key entry information. As noted
by the Examiner in the reasoning in the Answer, the discussion at column 2,
lines 31 through 37 argues for the combinability with the teachings and
showings in Siedlikowski to provide a simple and effective control that can
effectively input small amounts of alphanumeric data. Moreover, the
teachings at column 13, lines 38 through 51 relate to future cell phone and
PDA embodiments that are contemplated. Finally, we generally agree with
the Examiner’s basic positions set forth at pages 36 and 37 relating to
Appellant’s other arguments presented in the Brief as to this rejection.
Lastly, as to Appellant’s arguments at page 14 of the principal Brief
relating to claim 3 and the corresponding argument at pages 15 and 16 of the
principal Brief relating to the arguments of dependent claim 13, Appellant
admits that both references to Siedlikowski and Will have message
composure routines within them. Again, as indicated earlier in this opinion,
the measure of immediacy in entering a message composure routine is not
recited in these claims.
In view of the foregoing, the decision of the Examiner rejecting
various claims on appeal under 35 U.S.C. §§ 102 and 103 is affirmed.

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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

pgc

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