Ex Parte Jung et al

Patent Trial and Appeal Board

Jan 31, 2014

10974476 (P.T.A.B. Jan. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
MARK A. MALAMUD, and JOHN D. RINALDO JR.
____________

Appeal 2011-009666
Application 10/974,476
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24, 28, 30-36, 40-42, 46, 47, 50, 52-57, 59, 61-65, and 67-69.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Claims 25-27, 29, 37-39, 43-45, 48, 49, 51, 58, 60, and 66 are canceled.
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STATEMENT OF THE CASE
Appellants’ claimed invention is directed to a method including
“receiving a query related to an electronic device through a first interface
associated with the electronic device, and providing an assistance
corresponding to the query through a second interface associated with the
electronic device.” (Abstract, Spec. 41:1-5).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method comprising:

(a)receiving a query related to a hardware aspect of an
electronic device through a first physical interface associated
with the hardware aspect of the electronic device; and

(b) providing an assistance corresponding to the query
through a second physical interface associated with the
electronic device.

REFERENCES and REJECTIONS
Claims 1-11, 14, 15, 18, 19, 23, 24, 30, 33-36, 40-42, 46, 47, 50,
52-57, 59, 62-65, and 67-69 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by US 5,388,251 to Makino (“Makino” hereinafter).
Claims 12, 13, 19, 21, 22, 28, and 32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Makino in view of US 5,825,355 to
Palmer (“Palmer” hereinafter).
Claims 16, 17, 20, 31, and 61 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Makino in view of US 6,920,612 to Makinen
(“Makinen” hereinafter).
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ANALYSIS
We note this appeal is related to an appeal in a related filing in appeal
Appeal 2011-001929 (Application 11/037,828). While different prior art
references are applied in both appeals, Appellants’ generalized arguments
concerning “no evidence” and not the “same” are presented in both
applications. We refer to our prior decision in Appeal 2011-001929 with
respect to these generalized arguments.
With respect to independent claim 1, Appellants contend:
issues in this Appeal relate to whether the Patent Office has
presented sufficient objective evidence to establish a prima
facie case of the unpatentability of Appellant’s Claims 1-24, 28,
30-42, 46, 47, 50, 52-57, 59, 61-65, and 67-69 under either
35 U.S.C. 102(b) or 35 U.S.C. 103(a). For reasons set forth
elsewhere herein, Appellant respectfully asserts that: Patent
Office has not presented sufficient objective evidence to
establish a prima facie case of the unpatentability of Claims
1-24, 28, 30-42, 46, 47, 50, 52-57, 59, 61-65, and 67-69.

(App. Br. 13).
Appellants set forth eight (8) sets of claims being appealed.
Appellants set forth the second group being independent claim 36. We find
Appellants present no separate headings and arguments for the patentability
of independent claim 36. Therefore, we group independent claim 36 as
falling with representative independent claim 1.

ANTICIPATION
With respect to independent claim 1 (and independent claim 36) and
independent claims 40, 53, 54, 55, 63, and 65 separately argued, we agree
with the Examiner’s prior art rejection and responsive arguments as set forth
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in the Examiner’s Answer and incorporate them as our own. With respect to
independent claim 1, we will restate the Examiner’s prior art rejection as we
understand it being applied to the claimed invention.
The Examiner states the rejection as follows:
Makino teaches: a method comprising: (a) receiving a query
related to a hardware aspect of an electronic device through a
first physical interface associated with the hardware aspect of
the electronic device (taught as the depression of a help key and
a related function key of a device to send out a related help
signal, at col. 5, lines 35-46); and (b) providing an assistance
corresponding to the query through a second physical interface
associated with the electronic device (taught as the display of a
help message related to a depressed function key, at col. 6, lines
8-12).

(Ans. 4-5).
Appellants’ representative claim 1 recites “receiving a query related to
a hardware aspect of an electronic device through a first physical interface
associated with the hardware aspect of the electronic device.” We agree
with the Examiner that the Makino reference describes a method of
receiving a help query related to a help key and function keys (which is a
hardware aspect of the electronic device) through a physical interface
associated with the hardware aspect of the electronic device, which is the
key(s).
Appellants further claim “providing an assistance corresponding to the
query through a second physical interface associated with the electronic
device.” We agree with the Examiner that the Makino reference describes a
method of providing assistance corresponding to the query through a second
physical interface associated with the electronic device, which is the display
on the display screen of the help message related to the depressed function
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key. Therefore, the Examiner has shown each element of the claim in issue
is found in the Makino reference and we find no difference in the described
prior art and the claimed invention.
With respect to independent claim 1, Appellants contend, “The Patent
Office Has Failed to Present Objective Evidence Demonstrating that Makino
Teaches Clause [a] of Claim 1.” (App. Br. 24) (boldface omitted).
Appellants further present these additional contentions (boldface omitted):
“The Portions of Makino Cited by the Patent Office do not
Expressly Recite the Text of Clause [a] of Claim 1.” (App. Br.
25) (footnote omitted).

“The Patent Office’s Interpretations of Makino Fails to Bridge
the Gap Between the Text of Makino and the Text of Clause [a]
of Claim 1.” (App. Br. 26).

“The Patent Office’s Interpretations of Clause [a] of Claim 1
Fails to Bridge the Gap Between the Text of Clause [a] of
Claim 1 and the Text of Makino.” (App. Br. 29).

“The Patent Office Has Failed to Present Objective Evidence
Demonstrating that Makino Teaches Clause [b] of Claim 1.”
(App. Br. 30).

“The Portions of Makino Cited by the Patent Office do not
Expressly Recite the Text of Clause [b] of Claim 1.” (App. Br.
31) (footnote omitted).

“The Patent Office’s Interpretations of Makino Fails to Bridge
the Gap Between the Text of Makino and the Text of Clause [b]
of Claim 1.” (App. Br. 32).

“The Patent Office’s Interpretations of Clause [b] of Claim 1
Fails to Bridge the Gap Between the Text of Clause [b] of
Claim 1 and the Text of Makino.” (App. Br. 34).

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“The Patent Office’s Interpretation of Makino Appears to Be
Based on Inadvertent Impermissible Hindsight, Personal
Knowledge, or Official Notice.” (App. Br. 35).

We find each of Appellants’ contentions to be a generalized argument
which is unpersuasive of error in the Examiner’s finding of anticipation of
independent claim 1.
A party asserting that a patent claim is anticipated under
35 U.S.C. § 102 must demonstrate, among other things, identity
of invention. . . . [I]ndentity of invention is a question of fact
and one who seeks such a finding must show that each element
of the claim in issue is found, either expressly described or
under principles of inherency, in a single prior art reference, or
that the claimed invention was previously known or embodied
in a single prior art device or practice.

Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed. Cir. 1983)
(citation omitted), cert. denied, 465 U.S. 1026 (1984), overruled on other
gds., SRI Intern'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1125 (Fed. Cir.
1985). To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001); Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d
1565, 1576 (Fed. Cir. 1991). Of course, anticipation “is not an ‘ipsissimis
verbis’ test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citing Akzo
N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 & n.11 (Fed.
Cir. 1986)). “An anticipatory reference . . . need not duplicate word for
word what is in the claims.” Standard Havens Prods., Inc. v. Gencor Indus.,
Inc. 953 F.2d 1360, 1369 (Fed. Cir. 1991).
We note anticipation is not an “ipsissimis verbis” test and the mere
fact that there is a “textual difference” does not negate anticipation.
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Therefore, Appellants’ argument does not show error in the Examiner’s
finding of anticipation of independent claim 1 based upon the Makino
reference. Moreover,
all that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself
instructs, the examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.

In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Here, we find the
Examiner has met the requisite burden of production.
Merely reciting the language of the claim is insufficient. See
37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”). Merely alleging that the references fail to support an
anticipation rejection, or that the claim has a textual distinctions over the
cited portions of the reference, is insufficient to persuade us of Examiner
error. Attorney arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8
(BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf .
Here, we find Appellants’ arguments are conclusory in nature and fail
to address the thrust of the Examiner’s anticipation rejections. “Argument in
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the brief does not take the place of evidence in the record.” In re Schulze,
346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773
(CCPA 1964)). This reasoning is applicable here.
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error. Cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Appellants present similar headings and contentions with respect to
each of dependent claims 2, 3, independent claims 40, 53, 54, 55, 63, 65, and
dependent claims 28, 31, and 32, respectively. We find Appellants’
arguments to merely restate the language of the claim and present a
generalized argument that the Patent Office has failed to present objective
evidence and failed to expressly take into account Appellants’ Specification,
thus bridging the gap between the actual recitations of the Makino reference
and the actual recitation of Appellants’ claims.
We further note Appellants do not expressly recite any portion of the
Specification identifying what “gap” is present. As discussed above, we find
the prior art anticipates independent claim 1. Appellants additionally
contend there are “textual distinctions” in the Makino reference (App. Br.
27). We disagree with Appellants and find anticipation “is not an ‘ipsissimis
verbis’ test.” Appellants assert the Patent Office has failed to specify “by
direct quotation” where the Makino reference expressly teaches the claimed
limitations. (App. Br. 31). Again, we disagree with Appellants and find
anticipation is not an “ipsissimis verbis” test. Appellants further contend the
Patent Office has failed to provide “objective evidence” explaining why, in
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spite of the significant “textual distinctions” in the prior art Makino may be
properly interpreted as the claimed invention. (App. Br. 32-33). We
disagree with Appellants.
Appellants further contend the Patent Office has used Appellants’
Specification in the mapping of the prior art rejection and has relied upon
hindsight in the anticipation rejection. (App. Br. 34-35). We disagree with
Appellants since reliance on Appellants’ Specification in mapping and
hindsight are irrelevant to an anticipation rejection. Therefore, Appellants
have not shown error in the Examiner’s finding of anticipation of
representative independent claim 1.
We sustain the rejection of independent claims 36, 40, 53, 54, 55, 63,
and 65, and their respective dependent claims for the same reasons.

Claims 2 and 3
With respect to dependent claims 2 and 3, Appellants submit
the Patent Office has failed to provide objective evidence that
Makino expressly teaches “the first user interface [through
which the query is received] includes an element of the
electronic device in a first state and the second user interface
[through which the assistance is provided] includes the element
of the electronic device in a second state.”

(App. Br. 38; (emphasis omitted) (alteration in original); see generally App.
Br. 36-50).
We disagree with Appellants’ argument. We evaluate Appellants’
argument in light of the broadest reasonable construction. For dependent
claims 2 and 3, we look to Appellants’ Summary of the Claimed Subject
Matter. Appellants identify dependent claims 2 and 3 in the Summary of
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Claimed Subject Matter as corresponding to pages 18 and 19 of the
Specification, respectively. (App. Br. 14). For dependent claim 2, the
Specification states:
The first interface and the second interface may be at
least substantially similar, and the second user interface may
include the first user interface. In an embodiment, the first
interface and the second interface may comprise a same
physical or virtual element of the electronic device. The first
interface and the second interface may share a same physical or
virtual element, but be separately activated when the physical or
virtual element is in different activate modes or states. For
example, an interface having a physical structure and in a first
state may function as the first interface, and in a second state
may function as the second interface. In this example, a single
physical button interface may have a plurality of interface
states. Continuing with these examples, a physical button
associated with an electronic device may have normal operating
function related to the electronic device. Upon activation of an
assistance manager and entry into an assistance mode, the same
physical button transitions to a first state and functions as the
first interface that receives a query, such as at the query
operation 220. Upon occurrence of an event, such as receipt of
the query at the query operation 220, or finding an assistance
corresponding to the query at the search operation 230, the
same physical button transitions to a second state. In the second
state, the physical button functions as the second interface that
provides assistance corresponding to the query, such as at the
provide operation 240.

(Spec. 18:13-30). For dependent claim 3, the Specification states:
In another example, an interface, such as a physical
button, may function as a first interface when operated in a first
mode and function as a second interface when operated in a
second mode. In this example, a single physical button may
function as a first interface when pressed quickly once and as a
second interface when pressed slowly once. Continuing with
this example, the single physical button may function as a first
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interface when pressed once and as a second interface when
pressed twice in quick succession.

(Spec. 19:1-7). We find the wide range of interpretations encompass the
embodiment where the same interface includes the first and second
interfaces.2 Therefore, Appellants’ claimed “element” may be the same or
different in the same or different interfaces. Therefore, Appellants’
generalized argument does not show error in the Examiner’s reliance upon
the help button 13 in association with the function keys and the display as
stated in the Examiner’s Answer. (Ans. 23). Here, the help button 13
functions to provide the request and the specific function key provides the
assistance information. The keyboard or physical keys interface may be
considered the “element” in the physical interface and change operational
states as indicated by the Examiner. Therefore, Appellants’ generalized
argument does not show error in the Examiner’s finding of anticipation, and
we sustain the rejection of dependent claims 2 and 3.
Appellants’ Reply Brief presents only generalized arguments which
do not show error in the Examiner’s finding of anticipation.

OBVIOUSNESS
Claims 28, 31, and 32
Appellants set forth separate arguments for patentability of dependent
claims 28, 31, and 32 based upon obviousness. We note Appellants’
arguments with respect to dependent claims 28, 31, and 32 are replete with
the term “Error . . .” where quotations are intended to be. (App. Br. 127-

2 We note the two interfaces recited in the Specification appear to be for the
query rather than providing assistance through the second interface.
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167). The Examiner noted this problem at pages 23-25 of the Answer, and
Appellants did not remedy the deficiency or provide clarification in the
Reply Brief. (Reply Br. 1-8). The Reply Brief contains no headings
directed to obviousness. We will not speculate as to the intended thrust of
Appellants’ arguments. We find these errors to evidence the repetitive
nature of Appellants’ arguments which are not specific arguments for
patentability with respect to the prior art as applied by the Examiner.
Therefore, we will sustain the rejection of claims 28, 31, and 32, and we
group the other dependent claims not separately argued with representative
dependent claim 28.

CONCLUSION
The Examiner did not err in rejecting claims 1-11, 14, 15, 18, 19, 23,
24, 30, 33-36, 40-42, 46, 47, 50, 52-57, 59, 62-65, and 67-69 under
35 U.S.C. § 102. The Examiner did not err in rejecting claims 12, 13, 16,
17, 19, 20-22, 28, 31, 32, and 61 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-24, 28, 30-36, 40-42, 46,
47, 50, 52-57, 59, 61-65, and 67-69 is affirmed.
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

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