Ex Parte Park

Board of Patent Appeals and Interferences

May 20, 2009

10314773 (B.P.A.I. May. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HONG-JU PARK
____________________

Appeal 2008-004502
Application 10/314,773
Technology Center 2400
____________________

Decided:1 May 21, 2009
____________________

Before LEE E. BARRETT, JOSEPH L. DIXON, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals the Examiner’s final rejection of claims 1-2 under
35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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I. STATEMENT OF THE CASE
A. INVENTION
According to Appellant, the invention relates to a method for
inputting a password in a mobile communication terminal. (App. Br. 6).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A method for inputting a password in a mobile
communication terminal, comprising the steps of:

a) configuring a password character table including a
plurality of special characters corresponding respectively to a
number of inputs of a key;

b) enabling a user to identify a currently input
character when inputting a password;

c) if a character key assigned at least one character
has been input in a password input mode, counting a number of
inputs of the character key; and

d) searching the password character table for a
special character corresponding to the counted number of inputs
of the character key and displaying the searched special
character on a display screen instead of a character
corresponding to input of the character key.

C. REJECTIONS
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
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Mager U.S. 6,643,371 B2 Nov. 4, 2003
Ouyang U.S. 6,674,372 B1 Jan. 6, 2004
Otsubo U.S. 2004/0178881 A1 Sep. 16, 2004

Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ouyang and Otsubo.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ouyang, Otsubo, and Mager.

II. ISSUES
1) Has Appellant shown that the Examiner erred in
citing Otsubo as prior art?
2) Has Appellant shown that the Examiner erred in
finding that Otsubo, when combined with Ouyang, teaches or
would have suggested the step of “enabling a user to identify a
currently input character when inputting a password” (claim 1)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Otsubo
1) Otsubo’s corresponding international application,
PCT/JP01/04186 published as WO 01/90857 (hereinafter
“International Application”), was filed under the Patent
Cooperation Treaty (hereinafter “PCT”) on May 18, 2001.
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(International Application, cover page).
2) The filing date of Appellant’s application is
December 9, 2002. (U.S. Pub. No. 2003/0110402, cover page).
3) The International Application lists the United
States as one of the “Designated States (national)” in which
patent protection is desired. (International Application, cover
page).
4) The International Application has a priority date of
May 22, 2000. (International Application, cover page).
5) The International Application was published in
English, on November 29, 2001, under the PCT. (International
Application, cover page).
6) The International Application and its PCT filing
date are listed on the face of Otsubo. (Otsubo, cover page).
7) Otsubo discloses a display means that allows an
operator to recognize the acceptance of an inputting operation
(Fig. 5). When “the operator sequentially pushes the numeral
keys” corresponding to a password, “the operator can recognize
that the inputting operations were surely accepted by viewing
the displayed symbols ‘*’.” (Otsubo, ¶ [0033]).

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IV. PRINCIPLES OF LAW
Claim Interpretation
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). “[L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Our
reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005). It is the Appellant’s burden to
precisely define the invention. See In re Morris 127 F.3d 1048, 1056 (Fed.
Cir. 1997).
35 U.S.C. § 103 – Obviousness
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
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discussed circumstances in which a patent might be determined to be
obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.

V. ANALYSIS
Otsubo’s Prior Art Status
In the Appeal Brief, Appellant argues that Otsubo is not prior art
(App. Br. 9) and that the International Application, PCT/JP01/04186
published as WO 01/90857, fails to cure this alleged defect (App. Br. 10).
The Examiner responds that Otsubo is prior art, under 35 U.S.C. § 102(e),
having the International Application’s PCT filing date as its U.S. filing date.
The Examiner states:
The prior art date of a reference under 35 U.S.C. 102(e) may be
the international filing date if the international filing date was
on or after November 29, 2000, the international application
designated the United States, and the international application
was published by the World Intellectual Property Organization
(WIPO) under the Patent Cooperation Treaty (PCT) Article
21(2) in the English language. Therefore, the Examiner
considers the prior art by Ostubo et al. as a whole, meets the
filing date of the pending application . . . .

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(Ex. Ans. 8-9; citation omitted to MPEP § 706.02(f)(1)). Thus, an issue we
address in this Appeal is whether Otsubo is prior art under 35 U.S.C.
§ 102(e).
We agree with the Examiner’s finding that Otsubo is prior art under
35 U.S.C. § 102(e) because, as indicated by the Examiner, the International
Application meets the three conditions for Otsubo to take the PCT filing date
as its U.S. filing date. Those three conditions are:
(a) an international filing date on or after November 29, 2000;
(b) designated the United States; and
(c) published under PCT Article 21(2) in English.
(MPEP § 706.02(f)(1)).
The International Application has a PCT filing date of May 18, 2001
(FF 1), which is after the above cut-off date of November 29, 2000 and
before Appellant’s filing date of December 9, 2002 (FF 2). The
International Application also designates the U.S. (FF 3) and was published
in English on November 29, 2001 (FF 5), which in accordance with PCT
Article 21(2) was promptly after the expiration of 18 months from the
International Application’s priority date of May 22, 2000 (FF 4). For the
above reasons, the International Application meets the three conditions for
Otsubo to take the PCT filing date as its U.S. filing date. Thus, because
these conditions are met and the PCT filing date predates the filing date of
Appellant’s application, Otsubo qualifies as prior art under 35 U.S.C.
§ 102(e).
Appellant also argues that the Examiner improperly introduced the
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International Application after the close of prosecution (App. Br. 9-10).
However, neither 35 U.S.C. § 102(e) nor the MPEP requires citation of the
International Application, which is listed on the face of Otsubo along with
the PCT filing date (FF 6). Further, even assuming arguendo that the
Examiner prematurely closed prosecution, such an argument must be raised
by petition. See e.g., MPEP § 706.07(c) (“Any question as to prematureness
of a final rejection should be raised, if at all, while the application is still
pending before the primary examiner. . . . It is reviewable by petition under
37 CFR 1.181.”). “[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.
These formal matters should not be combined in appeals to the Board.”
MPEP § 706.01.
In view of the above, Appellant fails to show that Otsubo is not prior
art.

35 U.S.C. § 103
In the Appeal Brief, Appellant argues that Otsubo does not disclose
the step of “enabling a user to identify a currently input character when
inputting a password,” as recited in claim 1, but rather “merely discloses a
cumulative display of one or more star (‘*’) symbols, with the number of
star symbols corresponding to the number of times that any one of the keys
is pushed” (App. Br. 11). The Examiner finds, however, that Otsubo
discloses this limitation by way of “displaying the inputting operation on the
display so that operator can recognize the inputting operation” (Ex. Ans. 6;
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citing Otsubo, ¶ [0033]). Thus, an issue we address in this Appeal is
whether Otsubo, when combined with Ouyang, teaches or would have
suggested the step of “enabling a user to identify a currently input character
when inputting a password” (claim 1). No further limitations are addressed
by the Appeal Brief. Arguments not made are considered waived. See 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 nonobvious distinctions over the prior art.”); In re
Wiseman, 596 F.2d 1019, 1022 (CCPA 1979) (arguments must first be
presented to the Board before they can be argued on appeal).
The Appeal Brief fails to provide any evidence of the scope of the
claim language. Rather, the Appeal Brief summarizes the cited portions of
Otsubo and asserts, in a general allegation, that those portions do not
disclose the limitations of claim 1 (App. Br. 11). For example, the Appeal
Brief asserts that Otsubo does not display “which one of the keys is input”
(App. Br. 11), but fails to explain how this feature is required by the step of
“enabling a user to identify a currently input character when inputting a
password” (claim 1). In view of these deficiencies, we find Appellant’s
arguments are not commensurate with the claim language, and thus, are
unpersuasive.
As noted above, we give claims their broadest reasonable
interpretation. See Bigio, 381 F.3d at 1324. Initially, we note that the claim
language “enabling a user to identify a currently input character when
inputting a password” appears to be inconsistent with the Specification’s
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description of multi-tap key entry systems. According to the Specification,
when an ordinary character is being input, the user “can identify” the input
character (i.e., “recognizing the type”) as being J, K, or L by viewing the
displayed character of J, K or L (Spec. 1, l. 23 – 2, l. 5). However, when a
password is being input, the user “cannot identify” the character actually
being input because any input character is displayed as a special character *
or # on the screen in order to maintain security (Spec. 2, ll. 6-11). The
above usage of “identify” suggests that Appellant’s disclosed system, which
displays a symbol in lieu of the actual password character being input, does
not enable a user to “identify a currently input character when inputting a
password” consistent with the Specification. Thus, the limitation at issue is
confusing. We interpret “enabling a user to identify a currently input
character when inputting a password,” consistent with the Specification, to
mean that some symbol is displayed to indicate that a character has been
input and accepted.
Contrary to Appellant’s arguments, the language of claim 1 does not
require that a display, itself, “identify a currently input character.” In
Otsubo, as “the operator sequentially pushes the numeral keys”
corresponding to a password, “the operator can recognize that the inputting
operations were surely accepted by viewing the displayed symbols ‘*’” (FF
7). Thus, though Appellant contends that “the same star symbol ‘*’ is
displayed, regardless of which one of the keys is input” (App. Br. 11), the
displayed confirmation of Otsubo nonetheless enables “a user to identify a
currently input character” (claim 1) as corresponding to the last-pressed or
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contemporaneously-pressed key. We therefore find an artisan would
interpret the step of “enabling a user to identify a currently input character
when inputting a password” (claim 1) as reading on Otsubo’s displayed
confirmation of input operations.
Lastly, we address the following argument of the Reply Brief:
[T]he Examiner’s Answer does not contest that the display of
Otsubo of the same star symbol “*”, regardless of which one of
the keys is input, fails to disclose or suggest enabling a user to
identify a currently input character when inputting a password.
Rather, the Examiner’s Answer alleges, at pages 9-10, that
Ouyang discloses the recitation of enabling a user to identify a
currently input character when inputting a password of each of
Claims 1 and 2.

. . . Like Otsubo, Ouyang fails to identify an input
character to the user, as that character is currently being input.
Rather, Ouyang stores the key input for later output, depending
on various conversion criteria.

(Reply Br. 3; footnote omitted).
We disagree with Appellant’s contention that “the Examiner’s Answer
does not contest that the display of Otsubo of the same star symbol ‘*’ . . .
fails to disclose or suggest enabling a user to identify a currently input
character when inputting a password,” because the Examiner’s Answer
explicitly states that both Ouyang (see Ex. Ans. 3; citing Ouyang, col. 7, ll.
11-29 and Fig. 1) and Otsubo (see Ex. Ans. 4; citing Otsubo, ¶ [0033])
disclose this limitation; and explicitly states that “the combination of
Ouyang and Otsubo teaches the claim limitation” (Ex. Ans. 10).
Further, we find Appellant’s argument unpersuasive. Appellant
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cannot show nonobviousness by attacking Ouyang individually where, as in
this instance, the rejection is based on a combination of Ouyang and Otsubo.
See In re Merck & Co., Inc., 800 F.2d at 1097. By that token, even
assuming arguendo that “Ouyang fails to identify an input character to the
user, as that character is currently being input,” that deficiency would be
addressed by Otsubo’s teaching to confirm each key press such that an
“operator can recognize that the inputting operations were surely accepted”
(FF 7). Finally, as stated above, we find that Otsubo’s displayed
confirmation of input operations teaches and would have suggested the step
of “enabling a user to identify a currently input character when inputting a
password” of claim 1.
In view of the above, Appellant fails to show that Otsubo, when
combined with Ouyang, does not teach or would not have suggested the step
of “enabling a user to identify a currently input character when inputting a
password” (claim 1). Accordingly, Appellant fails to show that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Ouyang and Otsubo.
Appellant does not provide separate arguments for claim 2, but rather
provides the same arguments for claims 1 and 2. Therefore, Appellant fails
to show that the Examiner erred in rejecting claim 2 under 35 U.S.C. §
103(a) as unpatentable over Ouyang, Otsubo, and Mager.

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CONCLUSIONS OF LAW
(1) Otsubo is prior art, against Appellant’s application, under 35
U.S.C. § 102(e).
(2) Appellant has not shown that the Examiner erred in finding that
claim 1 is unpatentable over Ouyang and Otsubo.
(3) Appellant has not shown that the Examiner erred in finding that
claim 2 is unpatentable over Ouyang, Otsubo, and Mager.
(4) Claims 1 and 2 are not patentable.

DECISION
We affirm the Examiner’s decision rejecting claims 1 and 2 under
35 U.S.C. § 103(a).
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

msc

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