Ex Parte Rainisto

Board of Patent Appeals and Interferences

Nov 10, 2011

11135623 (B.P.A.I. Nov. 10, 2011)

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.
11/135,623 05/23/2005 Roope Rainisto 042933/407156 2966
10949 7590 11/10/2011
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
AUGUSTINE, NICHOLAS
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
11/10/2011 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)
1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROOPE RAINISTO
____________________

Appeal 2009-008714
Application 11/135,6231
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, JAY P. LUCAS, and
JAMES R. HUGHES, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1, 3 to 5 and 7 to 20
under authority of 35 U.S.C. § 134(a). Claims 2 and 6 are cancelled. The
Board of Patent Appeals and Interferences (BPAI) has jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

1 Application filed May 23, 2005. The real party in interest is Nokia Corp.
Appeal 2009-008714
Application 11/135,623

2
Appellant’s invention relates to a virtual keyboard with word
completion functionality. In the words of Appellant:
A text input method is described for an electronic
apparatus having a user interface with a touch-
sensitive display screen. A virtual keyboard is
presentable on the display screen so as to facilitate
text input for a user by pointing at different virtual
keys of the virtual keyboard. Word completion
functionality is provided for predicting full word
candidates for partial word inputs made by the user
on the virtual keyboard. The method involves
receiving a partial word input from said user and
deriving a set of full word candidate using the
word completion functional, each of the full word
candidates in said set having a prefix and a suffix,
wherein the prefix corresponds to said partial word
input. The suffices for at least a sub set of the full
word candidates are presented in a predetermined
area on the display screen, wherein each of the
presented suffices is made selectable for the user.
(Abstract, Spec 25).
The following illustrates the claims on appeal:
Claim 1:
1. A text input method for an electronic
apparatus having a user interface with a touch-sensitive
display screen, wherein a virtual keyboard is presentable
on said display screen so as to facilitate text input for a
user by pointing at different virtual keys of said virtual
keyboard, and wherein word completion functionality is
provided for predicting full word candidates for partial
word inputs made by said user on said virtual keyboard,
the method comprising:

receiving a partial word input from said user;
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deriving a set of full word candidates using said word
completion functionality, each of the full word
candidates in said set having a prefix and a suffix,
wherein the prefix corresponds to said partial word input;
and

presenting the suffixes for at least a sub set of the full
word candidates in a predetermined area on said display
screen, wherein the predetermined area is located within
or at the virtual keyboard on the display screen and the
predetermined area is located within, or on top of, a
space bar included in the virtual keyboard wherein each
of the presented suffixes is made selectable for said user.

9. A text input method as defined in claim 8, wherein
said step of detecting selection by said user involves
differentiating between a first type of selection and a
second type of selection, and wherein said step of
replacing a presentation involves adding a space
character after said full word candidate if the detected
selection is of said first type.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Masui US 6,002,390 Dec. 14, 1999
Fukushima US 5,724,457 Mar. 3, 1998
REJECTION
The Examiner rejects the claims as follows:

Claims 1, 3 to 5 and 7, to 20 stand rejected under 35 U.S.C. § 103(a)
for being obvious over Sony in view of NEC.

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Application 11/135,623

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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The main issue specifically
turns on whether Sony teaches a space bar in its disclosed keyboard as
claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a virtual keyboard with word completion
functionality. (Spec 14, top). When the user types in the beginning of a
word, called a prefix (e.g. “re”) a set of candidate completions of the
word (called suffixes) is displayed in a predetermined area, namely on
top of the space bar #130. (Spec 15, middle).
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2. Appellant’s Figure 11 demonstrates his virtual keyboard:

Fig. 11, Specification
3. The Sony reference teaches a computer system with a virtual keyboard,
in which candidate words from a dictionary are presented so the user may
complete words begun on that keyboard. (Col. 1, bottom paragraph). The
list of candidate words may overlap a key, said to be a space bar. (Col.
10, l. 28).

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
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or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Office). You can also use: In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (The examiner determines patentability “on the totality of the record,
by a preponderance of the evidence with due consideration to the
persuasiveness of argument.” “In reviewing the examiner's decision on
appeal, the Board must necessarily weigh all of the evidence and
argument.”).
The analysis begins with an interpretation of the claims: “Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims . . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933
(Fed. Cir. 2003) (internal citations omitted).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).). Furthermore, “‘there must be
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some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS

Arguments with respect to the rejection
of claims 1, 3 to 5 and 7 to 20
under 35 U.S.C. § 103(a) [R3]

The Examiner has rejected the noted claims for being obvious over
Sony in view of NEC. Appellant demurs, presenting a number of
arguments.
With regard to independent claims 1 and 17, Appellant argues that the
main reference, Sony, does not “disclose or suggest that the predetermined
area is located within, or on top of, a space bar included in the virtual
keyboard as recited by Applicant.” (Brief 4, bottom). More specifically,
Appellant argues that the Examiner’s conclusion that the keyboard in Sony
contains a space bar (key) is specious, as there is no explicit disclosure in
Sony that such a key is included in the virtual keyboard. (Brief 5, top).
Appellant agrees that Sony teaches a virtual keyboard containing soft
keys of the letters A to Z, various symbols used in typing (e.g. “,”, “.”, “@”),
and editing commands such as “enter” and “backspace”. (Brief 5, middle).
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Moreover, as the Examiner points out, there is a key in the lower line of the
QWERTY keyboard, by the “.”, that is unmarked. The Examiner finds that
SONY thus teaches or at least suggests that the unmarked key would be a
space key.

Sony, Fig. 11
The standard for fact finding in our tribunal is “preponderance of the
evidence”. (See Ethicon, cited above) Based on the teachings of Sony as a
whole, we find that it is more likely than not that the unmarked key in Sony
is the normal space bar, condensed to fit the geometry of the virtual
keyboard, in the manner expressed by the Examiner. No other space bar key
exists on the keyboard as drawn, and no other facility is discussed in the
Sony patent for providing the normal spaces that break up words in
sentences. As such, we find Appellant’s contention unconvincing, and that
the unmarked key in Sony is suggested to be a space key.
With this understanding, we review the limitation in question, namely
“that ‘the predetermined area is located within, or on top of, a space bar’ as
recited in Applicant's claim 1.” (Brief 5, bottom; claim 1). We consider
Sony, Figure 12:
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Sony, Fig. 12
We find in Sony, Figure 12, a teaching that the suffixes that complete
the partial word “f” are contained in a predetermined area that is partially on
top of the space key, as required by claims 1 and 17. Appellant argues that
this pop up menu containing the candidate words may be in a plurality of
positions. (Brief 5, bottom). Nonetheless, the embodiment taught in Figure
12 above renders the claim limitation obvious.
Appellant argues that the combination of Sony and NEC is based on
hindsight. NEC is cited to supply a more explicit teaching of prefixes and
suffixes to complete words. (Answer 4, middle). As both references are in
the same field of endeavor, the combination is proper. (See Ex parte Clay,
cited above.)
Appellant argues under a separate heading for claims 7 and 15, but
relying on the same logic discussed above. (Brief 7, bottom). We thus find
the argument unconvincing.
With regard to claim 9, however, Appellant argues that there is
absolutely no disclosure at all in the cited Sony patent teaching the
limitation, “differentiating between a first type of selection and a second
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type of selection, and wherein said step of replacing a presentation involves
adding a space character after said full word candidate if the detected
selection is of said first type.”. The Examiner argues that Sony teaches one
type of input is selecting a candidate word, and another type is selecting a
space key. We cannot agree with the Examiner, as, according to parent
claim 8, the selection referenced by the claim 9 limitation is of a presented
suffix, not just of a key. We thus find error in the rejection of claim 9, and
consequently also of claims 10 and 11, which are dependent on claim 9.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1, 3 to
5, 7, 8 and 12 to 20. However, the Appellant has shown error in the
Examiner’s rejection with regard to claims 9 to 11.

DECISION
We reverse the Examiner’s rejection of claims 9, 10 and 11. We
affirm the Examiner’s rejection of claims 1, 3 to 5, 7, 8 and 12 to 20.
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-IN PART

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