Ex Parte MADownload PDFPatent Trial and Appeal BoardMay 20, 201511840906 (P.T.A.B. May. 20, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/840,906 08/17/2007 Dong-Chul MA 1235-395 1143 66547 7590 05/20/2015 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 EXAMINER YANG, KWANG-SU ART UNIT PAPER NUMBER 2691 MAIL DATE DELIVERY MODE 05/20/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONG-CHUL MA ____________ Appeal 2013-002945 Application 11/840,9061 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, JASON V. MORGAN, and KAMRAN JIVANI, Administrative Patent Judges. JIVANI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner finally rejecting claims 17–28, all the claims pending in the application. Claims 1–16 and 29–30 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the real party in interest is Samsung Electronics Co., Ltd. App. Br. 1. Appeal 2013-002945 Application 11/840,906 2 STATEMENT OF THE CASE Appellant’s patent application relates generally to changing the input mode of a portable terminal during a character input operation using a tool such as a stylus pen. Spec. 1, ll. 14–17. Claim 17 is illustrative: 17. A portable terminal capable of changing an input mode, comprising: a touch sensor for detecting an input; and a controller for receiving the input from the touch sensor, identifying a text based character written in the input, storing the text based character, and determining whether an application capable of receiving character input is currently running in the portable terminal, wherein when the application capable of receiving character input is currently running in the portable terminal, the controller determines whether the application is operating in a direct input mode, switches the application to operate in the direct input mode, when the application is not operating in the direct input mode, reads the stored text based character, and displays the read stored text based character in an input area of the application, and wherein when there is no application capable of receiving character input currently running in the portable terminal, the controller executes a default application capable of receiving character input, in the direct input mode, reads the stored text based character, and displays the read stored text based character in an input area of the default application. Claims 17–28 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appeal 2013-002945 Application 11/840,906 3 Claims 26–28 further stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agulnick (US 5,347,295 Sept. 13, 1994) and Clough (US Pub. 2003/0006974 A1, Jan. 9, 2003). Claims 17–19, 21–23, and 25 further stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agulnick, Clough, and Jakobsen (US Pub. 2006/0142997 Al, June 29, 2006). Claims 20 and 24 further stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agulnick, Clough, Jakobsen, and Nojima (US Pub. 2002/0007382 A1, Jan. 17, 2002). In addition to the foregoing rejections, Appellant’s December 21, 2010 Amendment to the Specification and Figure 3 stands objected to by the Examiner for introducing new matter in contravention of 35 U.S.C. § 132(a) and 37 C.F.R. § 1.83(a). ISSUES The pivotal issues before us are: 1. whether independent claims 17, 21, 25, and 26 satisfy the written description requirement of 35 U.S.C. § 112; and 2. whether Clough teaches or suggests switching an application not operating in a direct input mode to operate in such mode, as recited in independent claims 17, 21, 25, and 26. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Appeal Brief and Reply Brief that the Examiner has erred, and the Examiner’s Answer to Appellant’s arguments. Appeal 2013-002945 Application 11/840,906 4 Issue 1: Written description rejection under 35 U.S.C. § 112 and related objections under 35 U.S.C. § 132(a) and 37 C.F.R. § 1.83(a) Independent claims 17, 21, 25, and 26 each recite inter alia (i) determining whether an application is operating in a direct input mode, (ii) switching the application to operate in the direct input mode if not already so operating, (iii) reading a text character, and (iv) displaying the character in an input area of the application. According to Appellant, this claim limitation requires that when an application is not operating in a direct input mode, the controller switches the application to so operate, and then proceeds to the reading and displaying steps. December 21, 2010 Amendment, 9–10. When an application already is operating in a direct input mode, the controller skips the switching step and proceeds to the reading and displaying steps. Id. The Examiner finds the recited limitation lacks adequate disclosure in the Specification, as well as Figure 3, and fails to meet the written description requirement of 35 U.S.C. § 112. Appellant seeks to amend the Specification and Figure 3 in support of the limitation. December 21, 2010 Amendment, 9–10. Pursuant to 35 U.S.C. § 132(a) and 37 C.F.R. § 1.83(a), the Examiner objects to this Amendment as introducing new matter. Final Act. ¶¶ 2 and 3. Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal Board. When, as here, the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. MPEP § 2163.06(II) (9th ed., Mar. 2014); see also id. § 608.04(c) (“[W]here the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this Appeal 2013-002945 Application 11/840,906 5 ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also.”). Our decision below with respect to the 35 U.S.C. § 112, first paragraph rejection is dispositive of the new matter objection because the objection and rejection turn on the same issue. The Examiner finds that the original Specification and Figure 3 do not support the limitation that when an application already is operating in a direct input mode, the controller skips the switching step and proceeds to the reading and displaying steps. Ans. 15. Rather, the Examiner finds that the original Specification teaches, “if the input mode of the character input application is the direct input mode, the controller 100 ends the process.” Id. (citing Spec. 10, ll. 17–18). The Examiner notes that original Figure 3 is consistent with this teaching. Id. at 15–16. Appellant argues that the above disclosure is sufficient to reasonably convey to one of ordinary skill in the art that the inventor, at the time of the invention, had possession of the claimed invention. App. Br. 6–8; Reply Br. 1–2. More specifically, Appellant asserts that an ordinarily skilled artisan would read the Specification and Figure 3 as reciting that the reading and displaying steps can be performed in the direct input mode. App. Br. 7; Reply Br. 2. We agree with Appellant. Original Figure 3 is reproduced in relevant part below. Appeal 2013-002945 Application 11/840,906 6 Figure 3 depicts a flowchart illustrating the process for changing an input mode according to the current state of a portable terminal. Spec. 8, ll. 17–19. In relevant part, the process proceeds as follows. When the terminal is not idle (first mode 309), the terminal is executing an application capable of receiving character input. Id. at 9, ll. 23–27. If the application is not accepting handwritten characters using the stylus (direct input mode 319)—that is, the application is accepting characters via a displayed keyboard—then the controller switches the application’s mode to accept handwritten characters. Id. at 10, ll. 11–15 and 21–23. The controller then proceeds to the steps of reading and displaying the input character (steps 313 and 315).2 Id. at 10, ll. 25–27. 2 Steps 313 and 315 as originally depicted in Figure 3 do not conform with the Specification, but subsequent Amendments correct those errors. The Examiner does not object to those Amendments. App. Br. 7. Appeal 2013-002945 Application 11/840,906 7 The Examiner relies on the Specification and Figure 3 teaching that when the application is accepting handwritten characters using the stylus (direct input mode 319), the controller ends the process. See Ans. 15–16; Spec. 10, l. 18. The Examiner’s literal reading of Specification and Figure 3 is correct. However, such a reading overlooks another salient teaching. The Specification and Figure 3 also teach that when the application is accepting handwritten characters using the stylus (having switched to direct input mode 321), the controller performs the steps of reading and displaying the input character (steps 313 and 315). Spec. 10, ll. 25–27. Thus the Specification and Figure 3 recite two alternative actions proceeding from direct input mode. When placed in the context of the preceding step 309, the relevant disclosure recites the controller, when not idle (first mode 309) and accepting the handwritten characters using the stylus (direct input mode 319 or 321), either: (i) reads and displays the input character (steps 313 and 315) or (ii) ends the process, effectively ignoring the user’s input. In light of these findings, we are persuaded by Appellant’s arguments that a skilled artisan would believe reasonably that Appellant, at the time of the invention, had possession of the claimed accepting, reading, and displaying of the input character. Indeed, we find express disclosure of this claimed process. Thus we do not sustain the Examiner’s rejection based on the written description requirement of 35 U.S.C. § 112, first paragraph, of independent claims 17, 21, 25, and 26, nor of their dependent claims 18–20, 22–24, 27, and 28. Turning to the Examiner’s objection, Appellant’s Amendment seeks to clarify that steps 313 and 315 can be performed in direct input mode. App. Br. 8. As set forth above, we find that Appellant recited sufficiently Appeal 2013-002945 Application 11/840,906 8 such performance in the original Specification and Figure 3. We, therefore, do not sustain the Examiner’s objection to Appellant’s Amendment as introducing impermissible new matter under 35 U.S.C. § 132(a) and 37 C.F.R. § 1.83(a). Issue 2: Rejection under 35 U.S.C. § 103(a) based on Clough Independent claim 26 recites in relevant part, “when an application of receiving character input is not operating in a direct input mode in the portable terminal, the controller switches the application to operate in the direct input mode.”3 Independent claims 17, 21, and 25 recite commensurate limitations. Thus, the scope of each independent claim includes the controller switching the application to operate in the direct input mode if not already so operating. The Examiner rejects this limitation relying on Clough’s teaching of a personal digital assistant that allows a user to input characters either by handwriting with a stylus or typing on a pop-up keyboard display. Ans. 17 (citing Clough ¶ 7, ll. 2–4). This teaching, the Examiner argues, suggests the claimed switching between direct and indirect input modes. Id. at 17–18. Appellant concedes that Clough’s teaching of character input by handwriting with a stylus or typing on a pop-up keyboard display reads on the claimed direct and indirect input modes, and contends that Clough fails to teach or suggest switching between the two modes during operation. App. Br. 9–10; Reply Br. 3. We agree with Appellant. The Examiner has not identified 3 Should prosecution of Claim 26 continue, we note that the word “capable” appears to have been omitted inadvertently from the phrase “application [capable] of receiving character input.” Appeal 2013-002945 Application 11/840,906 9 sufficient disclosure in the cited portion of Clough to teach or suggest switching between the claimed direct and indirect input modes. Further, the Examiner has not identified in the record before us sufficient evidence to establish that a skilled artisan would understand the disclosure of Clough’s two modes as teaching or suggesting switching between them during operation. We, therefore, do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection based on Clough of independent claims 17, 21, 25, and 26, nor of their dependent claims 18–20, 22–24, 27, and 28 not separately argued. DECISION We reverse the Examiner’s § 112, first paragraph rejection of claims 17–28 and the Examiner’s related 35 U.S.C. § 132(a) and 37 C.F.R. § 1.83(a) objection to Appellant’s Amendment. We reverse the Examiner’s § 103(a) rejections of claims 17–28. REVERSE bar Copy with citationCopy as parenthetical citation