Ex Parte MillerDownload PDFPatent Trial and Appeal BoardJan 30, 201712849421 (P.T.A.B. Jan. 30, 2017) 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. 12/849,421 08/03/2010 Adam Paul Miller 042933/424311 7806 10949 7590 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER LU, WILLIAM ART UNIT PAPER NUMBER 2624 NOTIFICATION DATE DELIVERY MODE 02/01/2017 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): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM PAUL MILLER1 Appeal 2016-003862 Application 12/849,421 Technology Center 2600 Before BRUCE R. WINSOR, KARA L. SZPONDOWSKI, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant’s Brief (App. Br.) identifies the real party in interest as Nokia Technologies Oy. App. Br. 2. Appeal 2016-003862 Application 12/849,421 STATEMENT OF THE CASE Claimed Subject Matter The claims are directed to reversing actions inputted into a computing device. Spec. 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving an indication of a first user input action performed on a user interface element; performing an action associated with the user interface element, in response to receiving said first user input action; monitoring for a satisfaction of a criterion; receiving an indication of a second user input action on the user interface element, wherein the second input action has a substantially different duration than a duration of the first input action; in an instance the criterion is not satisfied, reversing the action, with a processor, in response to receiving the second user input action, wherein reversing the action results in returning a user interface to its state prior to the performance of the action; and in an instance the criterion is satisfied, preventing reversal of the action, even in response to receiving the second user input action. Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: King et al. US Kushler et al. US Ng et al. US Jiang et al. US 6,011,554 6,646,573 B1 2003/0193478 A1 2005/0102635 A1 Rejections Jan. 4, 2000 Nov. 11,2003 Oct. 16, 2003 May 12, 2005 Claims 1—5, 7—13, and 15—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ng, Kushler, and Jiang. Final Act. 2—8 2 Appeal 2016-003862 Application 12/849,421 Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ng, Kushler, Jiang, and King. Final Act. 8. Arguments Rather than repeat the arguments here, we refer to the Appeal Brief (filed July 21, 2015) and the Reply Brief (“Reply Br.” filed Mar. 7, 2016) for the positions of Appellant. We refer to the Final Office Action (“Final Act.” issued November 21, 2014) and Examiner’s Answer (“Ans.” mailed Jan. 5, 2016) for the reasoning, filings, and conclusions of the Examiner. Only those arguments made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). ISSUES FOR DECISION (1) Did the Examiner err in finding Ng, Kushler, and Jiang are properly combinable under 35 U.S.C. § 103(a)? (2) Did the Examiner err in finding the cited prior art teaches: (a) monitoring for a satisfaction of a criterion; (b) in an instance the criterion is not satisfied, reversing the action, with a processor, in response to receiving the second user input action, wherein reversing the action results in returning a user interface to its state prior to the performance of the action as recited in each independent claim? (3) Did the Examiner err in finding King is properly combinable with the other cited references under 35 U.S.C. § 103(a)? 3 Appeal 2016-003862 Application 12/849,421 ANALYSIS We have reviewed Appellant’s arguments and contentions (Br. 8—15, Reply Br. 1—3) in light of the Examiner’s findings, conclusions, and explanations (Final Act. 2—9; Ans. 8—11) regarding the claims. We agree with the Examiner’s findings, conclusions, and explanations, and we adopt them as our own. The following discussion, findings, and conclusions are made for emphasis. First Issue Appellant contends the combination of references relied upon to reject claim 1 is improper. More specifically, Appellant argues the combination of Ng and Kushler is improper because the Examiner’s rationale for the combination does not identify what the field of endeavor is, and that it “has no relation to any recognized problem, deficiency, or purpose of Ng and Kushler, and certainly not to the pending claims.” App. Br. 9—10. In the Examiner’s Answer, the Examiner explains: The Ng reference and the Kushler reference are both involved in the reduction of keys on a keyboard and the mapping of additional functions to the keys in order to accomplish the reduction in the total number of necessary keys placed on the reduced keyboard. Ans. 8—9. The Examiner further explains: While Ng teaches the individual elements of the claim, Ng does not explicitly teach the mapping of the press and hold function to the backward cycling of object. The mapping of different key strokes to different functions is well understood in the art of creating reduced keyboards. Kushler teaches the specific mapping in col 15 lines 51-67 where Kushler discusses pressing select in order to cycle forward in the key sequence and pressing- 4 Appeal 2016-003862 Application 12/849,421 and-holding the Select key past a predetermined time in order to cycle backwards in the sequence. Thus, the Examiner arrives at the conclusion that a simple substitution in the methods of mapping would result in teaching a majority of the claimed invention, and the resulting substitution would minimize the number of keys present on the keyboard (replacing shift+backwards with a simple press and hold). Ans. 9. We agree with the Examiner’s explanation.2 Both Ng and Kushler are directed to keyboard input, and more specifically to implementing reduced keyboard systems in computing devices. As noted by the Examiner, Ng teaches the use of a press and hold for purposes of mode changing as one way to reduce the number of keys needed to provide functionality. See Ng 1 85. Thus, Ng recognizes that various benefits can be achieved by utilizing input actions having different durations. Kushler teaches improving keyboard input techniques by using press and hold actions to reverse previous input actions. Kushler col. 16,11. 34—53. A person of ordinary skill in the art would have recognized the improvement made to Kushler would improve Ng in a similar manner. As a result, we agree with the Examiner that a person of ordinary skill in the art would have thought to substitute the press and hold functionality of Kushler into Ng. Appellant also contends the Examiner fails to provide a sufficient rationale for adding Jiang. Appellant contends Jiang and Ng are directed to dissimilar fields of endeavor, App. Br. 11, and that “no known problem would lead to the result of combining Ng and/or Kushler (both of which discuss reduced sized keyboards) and Jiang (that discusses navigation 2 We note that Appellant does not comment on the Examiner’s additional explanation in the Reply Brief. 5 Appeal 2016-003862 Application 12/849,421 within a directory structure that is a tree-shaped hierarchy of nodes) in such a way as to arrive at the features of the claims.” App. Br. 12. In the Examiner’s Answer, the Examiner finds, and we agree, that “□Just like Ng and Kushler, the Jiang reference is also concerned with using a reduced set of keys in order to navigate through an interface.” Ans. 10. Appellant responds by arguing the Examiner fails to show how Jiang offers a reduced set of keys, and that Jiang and Ng are directed to dissimilar fields of endeavor. Reply Br. 1—2. We are not persuaded by this argument because the front page of Jiang shows a mobile device with a reduced set of keys (i.e., a numeric touchpad along with navigational keys and not a QWERTY keypad), and its teachings are directed to improving navigation in devices having limited user interface capability. See, e.g., Jiang 14. Although the specific type of navigation addressed in Jiang is directory tree navigation, we do not see, and Appellant does not explain, why Jiang’s efforts to improve navigation are not, at least, “reasonably pertinent to the particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).3 Accordingly, we are not persuaded the Examiner erred in combining Ng, Kushler, and Jiang. Second Issue Appellant argues that even if the references are properly combined, they do not teach the limitations: monitoring for a satisfaction of a criterion; 3 We also are not persuaded by Appellant’s argument that “no reasoning whatsoever for combining Jiang with Kushler” is provided by the Examiner. See Reply Br. 1—2. Because the Examiner has shown Ng and Kushler are properly combined, and Ng and Jiang are properly combined, it is not necessary for a specific rationale to be stated for Kushler and Jiang. 6 Appeal 2016-003862 Application 12/849,421 . . . and in an instance the criterion is not satisfied, reversing the action, with a processor, in response to receiving the second user input action, wherein reversing the action results in returning a user interface to its state prior to the performance of the action. Appellant asserts “Jiang is cited for allegedly teaching this feature,” App. Br. 13, and argues Jiang is deficient. We are not persuaded by this argument because it does not address the rejection made by the Examiner. Although the Examiner relies on Jiang for “monitoring for a satisfaction of a criterion,” the Examiner does not rely on Jiang in connection with “reversing the action, . . ., in response to receiving the second user input action, wherein reversing the action results in returning a user interface to its state prior to the performance of the action.” Instead, the Examiner cites Ng as teaching this limitation.4 See Final Act. 3,11. 4—8. Moreover, we agree with the Examiner’s finding Jiang teaches the step of “monitoring for a satisfaction of a criterion.” The Examiner finds, and we agree, Jiang teaches this limitation by monitoring whether a top level of a directory tree (i.e., a criterion) has been reached (i.e., satisfied). Final Act. 3^4. Appellant’s arguments do not apprise us of error in this finding. Third Issue Claims 6 and 14 are rejected as obvious over Ng, Kushler, and Jiang as applied to claim 1, and further in view of King. Appellant contends the Examiner has failed to sufficiently articulate a rationale for the addition of King to the combination. App. Br. 14—15. In rejecting claims 6 and 14, the 4 The Examiner relies on Jiang for teaching “in an instance where the criterion is satisfied, preventing the reversal of the action, even in response to receiving the second user input action.” Appellant does not challenge this finding. 7 Appeal 2016-003862 Application 12/849,421 Examiner states that it would have been obvious to combine King with Ng “for the advantage of/benefit of incorporating existing methods.” Final Act. 8. Appellant argues this reasoning is insufficient. However, in proposing the combination, the Examiner cites, inter alia, Ng paragraph 179 which expressly suggests incorporating the teachings of King: Prior art methods for unambiguous text input, using multi character keys, uses multi-tap, two-stroke or multiple-stroke interpretation, like in U.S. Pat. Nos. 6,011,554 [King]; 6,307,549, or auxiliary multi-tap (an auxiliary key is used with multi-tap), as described in U.S. Pat. No. 6,219,731. The reduced keyboard system is easily compatible with any of these methods, but the preferred embodiment is with the tap-and-cycle method as cycling (namely the cycle key) is already used for intuitive text input as well as for symbols and punctuations input, and numerals input. Ng 1179 (emphasis added). Thus, Ng provides an explicit suggestion to incorporate the teachings of King. Therefore, we are not persuaded the Examiner erred in adding King in rejecting claims 6 and 14. Summary For the reasons discussed above, we sustain the rejection of independent claims 1, 9, and 18, as well as dependent claims 6 and 14 for which patentability was separately argued. Appellant advances no specific arguments for the remaining dependent claims 2—5, 7, 8, 10-13, 15—17, 19 and 20. Accordingly, these claims fall with their respective independent claims, and we sustain their rejections. DECISION The Examiner’s rejections of claims 1—20 are affirmed. 8 Appeal 2016-003862 Application 12/849,421 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)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation