Ex Parte Jung et al

Patent Trial and Appeal Board

Feb 28, 2014

11069893 (P.T.A.B. Feb. 28, 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.
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Appeal 2011-009673
Application 11/069,893
Technology Center 2100
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Before ELENI MANTIS MERCADER, JEFFREY S. SMITH, and
BRUCE R. WINSOR, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009673
Application 11/069,893

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-29 and 32-34, which are the only claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
Claim 1. A method comprising:

a) electronically monitoring a condition associated with a physical
state of an item; and

b) obtaining a user assistance corresponding to the condition
associated with the physical state of an item.

Prior Art
Makino US 5,388,251 Feb. 7, 1995
Baldwin US 5,877,757 Mar. 2, 1999
Zellweger US 6,230,170 B1 May 8, 2001
Polidi US 6,542,814 B2 Apr. 1, 2003

Examiner’s Rejections
Claims 1-4, 6-18, 20, 21, 23-29, and 32-34 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Makino.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Makino and Zellweger.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Makino and Polidi.
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Application 11/069,893

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Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Makino and Baldwin.

ANALYSIS
Section 102 rejection of claims 1-4 and 6-9
Appellants contend Makino does not describe “obtaining a user
assistance corresponding to the condition associated with the physical state
of an item” as recited in claim 1. App. Br. 19-25. The Examiner finds
receiving an explanation message in response to pressing a function key
teaches this limitation. Ans. 16-17.
Makino describes putting a computer in function mode by pressing a
function key. Col. 5, ll. 30-33. When the help key is also pressed during
function mode, an explanation message corresponding to the depressed
function key is displayed. Col. 5, ll. 38-48. The function key describes the
item, pressing the function key describes the physical state of the item, the
function mode describes the condition associated with physically pressing
the function key, and the explanation message describes a user assistance
corresponding to the associated condition. Therefore, pressing the function
key to switch to function mode then pressing the help key to display the
explanation message, as disclosed by Makino, describes “obtaining a user
assistance corresponding to the condition associated with the physical state
of an item” within the meaning of claim 1.
Appellants contend the Examiner has not established a prima facie
case. Reply Br. 2-8. We find that the Examiner has established a prima
facie case. “[A]ll that is required of the [Patent] [O]ffice to meet its prima
facie burden of production is to set forth the statutory basis of the rejection
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Application 11/069,893

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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.”
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We find that the
Examiner has met this burden. The Examiner explains how the cited
portions of Makino describe the limitations of claim 1. See Ans. 6, 16-17.
Appellants have not provided persuasive evidence or argument to rebut the
Examiner’s prima facie case. See Jung, 637 F.3d at 1365-66 (citing
Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)).
We sustain the rejection of claim 1 under 35 U.S.C. § 102. Appellants
do not present arguments for separate patentability of claims 2-4 and 6-9
which fall with claim 1.

Section 102 rejection of claims 10-12
Claim 10 recites “obtaining an operational information corresponding
to the condition associated with the physical state of an item.” The
operational information does not affect any steps or structural limitations of
the method of claim 10. The operational information is non-functional
descriptive material that does not distinguish claim 10 over the messages
described by Makino. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte
Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential).
Claims 11 and 12 recite “obtaining an instruction,” and “obtaining an
education,” respectively. The instruction and education are non-functional
descriptive material that do not distinguish claims 11 and 12 over the
messages described by Makino.
We sustain the rejection of claims 10-12 under 35 U.S.C. § 102.
Appeal 2011-009673
Application 11/069,893

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Section 102 rejection of claims 13 and 14
Appellants contend Makino does not describe “obtaining a user
assistance corresponding to both the first condition associated with the first
physical state of an item and the second condition associated with the second
physical state associated with the item,” as recited in claim 13. App. Br. 49-
56. The Examiner finds pressing the help key of a keyboard item describes a
first condition of help mode, associated with the physical state of pressing
the help key on the keyboard. The Examiner finds pressing the function key
of the keyboard item describes a second condition of function mode,
associated with the physical state of pressing the function key on the
keyboard. Ans. 19-20. Displaying a help message corresponding to the help
mode condition associated with pressing the keyboard’s help key and the
function mode condition associated with pressing the keyboard’s function
key (see Makino col. 5, ll. 30-58; col. 6, ll. 8-12) describes “obtaining a user
assistance corresponding to both the first condition associated with the first
physical state of an item and the second condition associated with the second
physical state associated with the item.”
We sustain the rejection of claim 13 under 35 U.S.C. § 102.
Appellants do not present arguments for separate patentability for claim 14
which falls with claim 1.

Section 102 rejection of claims 15-18, 20, 21, and 23-26
Appellants contend Makino does not describe “obtaining a user
assistance corresponding to the derivative state.” App. Br. 57-62. The term
“derivative state,” when read in light of Appellants’ Specification,
encompasses at least one of a successful or unsuccessful user execution of a
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user action. Spec. 38:21-22. The Examiner finds Makino describes
detecting when an input error has occurred twice, and displaying a
corresponding error message. Ans. 20-21; see also Makino, col. 6, ll. 35-44.
We agree with the Examiner that pressing a key describes “detecting a
physical state of an electronic device,” detecting input errors when pressing
the key describes “monitoring a derivative state associated with the physical
state,” and displaying an error message describes “obtaining a user
assistance corresponding to the derivative state.”
We sustain the rejection of claim 15 under 35 U.S.C. § 102.
Appellants do not present arguments for separate patentability for claims
16-18 and 20-26 which fall with claim 15.

Section 102 rejection of claims 27-29
Appellants contend Makino does not describe “enabling a user to
request a user assistance corresponding to the derivative state,” as recited in
claim 271. App. Br. 63-69. Makino describes detecting an error, displaying
“error” on a display, judging that the help key is depressed, and displaying
the reason for the error. Fig. 3D; col. 7, ll. 12-28. Appellants have not
provided persuasive evidence or explanation to distinguish enabling a user to
request a user assistance corresponding to the derivative state from enabling
a user to press a help key after an error occurs to view the reason for the
error as described by Makino.
We sustain the rejection of claim 27 under 35 U.S.C. § 102.
Appellants do not present arguments for separate patentability for claims 28
and 29 which fall with claim 27.

1 Claim 27 as listed on page 4 of the Examiner’s Answer.
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Section 102 rejection of claim 32
Appellants contend Makino does not describe “obtain a user
assistance corresponding to the derivative state,” as recited in claim 32.
App. Br. 70-76. We find Appellants’ contention unpersuasive for the
reasons given in our analysis of claim 15.
We sustain the rejection of claim 32 under 35 U.S.C. § 102.

Section 102 rejection of claims 33 and 34
Appellants contend Makino does not describe “enable a user to
request a user assistance corresponding to the condition associated with the
physical state of the first physical aspect of the item.” App. Br. 77-83. We
find Appellants’ contention unpersuasive for the reasons given in our
analysis of claim 27.
We sustain the rejection of claim 33 under 35 U.S.C. § 102.
Appellants do not present arguments for separate patentability for claim 34
which falls with claim 33.

Section 103 rejection of claim 5
Appellants contend the Examiner has failed to provide an adequate
reason to combine the teachings of Makino and Zellweger (App. Br. 26-32),
combining the teachings of Zellweger with Makino would change the
principle of operation of providing a help message when pressing the help
key (App. Br. 33-34), and would render Makino unsatisfactory for its
intended purpose of displaying help messages when pressing the help key
(App. Br. 34-36).
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Application 11/069,893

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We agree with the Examiner (Ans. 18) that displaying a help message
in response to pressing a key as taught by Makino, by holding the key for a
duration of time as suggested by Zellweger, represents the combination of
familiar elements according to known methods that does no more than yield
predictable results.
Further, we find Makino teaches moving a cursor to a portion of a
display, such as the “explanation of help key” text shown in Figure 7.
Selecting this text by operating the cursor shift key causes the system to
display the help message of Figure 8A. When the cursor shift key is pressed
successively, the messages of Figures 8B and 8C are displayed successively.
Col. 7, ll. 50-67. Zellweger teaches displaying supporting information when
a user focuses on primary information. The system can determine user focus
in response to holding a cursor still for a duration of time. Col. 2, ll. 16-28;
col. 6, ll. 36-49; col. 7, ll. 55-65. Displaying the help information of Figure
8A of Makino in response to leaving the cursor over the “explanation of help
region” shown in Figure 7 for the duration of time taught by Zellweger
represents the combination of familiar elements according to known
methods that does no more than yield predictable results.
Appellants have not provided persuasive evidence or argument to
show that displaying the help message of Figure 8A of Makino in response
to leaving a cursor over a region of a display for a duration of time as taught
by Zellweger would change the principle of displaying help messages, or
would render Makino unsatisfactory for its intended purpose of displaying
help messages.
We sustain the rejection of claim 5 under 35 U.S.C. § 103.

Appeal 2011-009673
Application 11/069,893

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Section 103 rejection of claim 19
Appellants do not present arguments for separate patentability of
claim 19, which falls with claim 15.

Section 103 rejection of claim 22
Appellants do not present arguments for separate patentability of
claim 22, which falls with claim 15.

DECISION
The rejection of claims 1-4, 6-18, 20, 21, 23-29, and 32-34 under 35
U.S.C. § 102(b) as being anticipated by Makino is affirmed.
The rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Makino and Zellweger is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) as being
unpatentable over Makino and Polidi is affirmed.
The rejection of claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Makino and Baldwin 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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