Ex Parte Scott

Board of Patent Appeals and Interferences

Oct 26, 2011

10946413 (B.P.A.I. Oct. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHERRYL LEE LORRAINE SCOTT
___________

Appeal 2009-014621
Application 10/946,413
Technology Center 2600
____________

Before ERIC B. CHEN, MICHAEL R. ZECHER and
JULIE K. BROCKETTI, Administrative Patent Judges.

BROCKETTI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A mobile wireless communications device comprising:

a portable, handheld housing;

a display carried by said portable, handheld housing;

a keypad carried by said portable, handheld housing and
comprising a plurality of multi-symbol keys each having indicia
of a plurality of respective symbols thereon, a predetermined
multi-symbol key having a comma/apostrophe symbol and at
least one other symbol thereon; and

a controller carried by said portable, handheld housing
and connected to said display and said keypad for generating a
menu of possible desired words based upon activation of said
predetermined multi-symbol key having the comma/apostrophe
symbol and at least one other symbol thereon, said menu
including: at least one word with a comma, at least one word
having an apostrophe, and at least one additional character
predictive of a future keystroke.

Rejections on Appeal
1) Claims 1, 11, and 19 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
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2) Claims 1-3, 5, 6, 11, 12, 14, and 19-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Flinchem (US 6,307,548 B1) in
view of Ng (US 2003/0193478 A1).
3) Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flinchem and Ng in view of Will (US 6,392,640
B1).
4) Claims 8-10 and 16-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Flinchem and Ng in view of Klarlund et al. (US
7,129,932 B1).
5) Claims 7, 15, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flinchem and Ng in view of Harries et al. (US
2004/0119685 A1).

Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claims 1, 11,
and 19 under 35 U.S.C § 112 first paragraph, because:
Contrary to the Examiner's assertions, the element “at least one
additional character predictive of [sic] future keystroke,” which
is included in Appellant’s claims 1, 11 and 19, is described in
Appellant’s original specification in such a way as to enable
one skilled in the art to which it pertains to make and/or use the
invention.

(App. Br. 9). Appellant also contends that “a character predictive of a future
keystroke included in the menu would be provided as part of a word as used
in the context of the specification.” (Reply Br. 3).
Appellant contends that the Examiner erred in rejecting the claims
under 35 U.S.C. § 103(a) because:
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(1) The cited references fail to disclose or suggest a
comma/apostrophe symbol. (App. Br. 12). “[T]he art of record does not
teach or suggest providing such a single ambiguous comma/apostrophe
symbol, but instead merely teaches providing a single non-ambiguous
comma, a single non-ambiguous apostrophe, or providing both a non-
ambiguous comma and a non-ambiguous apostrophe as two separate
symbols.” (Reply Br. 4).
(2) The cited references fail to disclose or suggest a menu
including: at least one word with a comma, at least one word having an
apostrophe, and at least one additional character predictive of a future
keystroke. (App. Br. 14).
(3) There is no reason supported by the record for combining
Flinchem and Ng. (App. Br. 17).

Issues on Appeal1
1) Did the Examiner err in rejecting claims 1, 11, and 19 under 35
U.S.C. § 112 for failing to comply with the written description requirement
because the claimed limitation “at least one additional character predictive
of future keystroke” was not described in the Specification in such a way as
to reasonably convey to one skilled in the art that the inventor, at the time
the application was filed, had possession of the claimed invention?
2) Did the Examiner err in rejecting the claims 1, 11, and 19 under
35 U.S.C. § 103(a) because neither Flinchem nor Ng teaches or suggests the
disputed claim limitations?

1 Appellant’s arguments for the § 103(a) rejections concerning claims 4, 7-
10, 13, 15-18, and 24 do not present any additional issues for us to decide.
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3) Did the Examiner err in rejecting the claims 1, 11, and 19 under
35 U.S.C. § 103(a) because there is no reason supported by the record to
combine the references Flinchem and Ng?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
We agree with Appellant that the Examiner has erred with respect to
the 35 U.S.C. § 112 first paragraph written description rejection. We find
that the Specification describes the claimed subject matter of “at least one
additional character predictive of future keystroke” in such a way as to
reasonably convey to one skilled in the art that the inventor, at the time the
application was filed, had possession of the claimed invention. After
pressing the comma/apostrophe key 35 in Appellant’s invention, at least one
word having an apostrophe and at least one additional character predictive of
a future keystroke is displayed. For example in Fig. 3 of Appellant’s
invention, after a user presses the comma/apostrophe key, the words “her’s”
and “hers’” are both displayed where the “s” corresponds to an additional
keystroke (App. Br. 9-10). Words inherently encompass characters, i.e.
letters, and therefore, we find that the Appellant’s Specification discloses
that the additional character “s” which is displayed in conjunction with the
rest of the word “her’” is predictive of a future keystroke as claimed by
Appellant.
With respect to the 35 U.S.C. 103(a) rejections, we concur with the
conclusions reached by the Examiner. Appellant argues that the cited
references fail to disclose a comma/apostrophe symbol (App. Br. 12).
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Appellant further contends that the comma/apostrophe symbol claimed is a
single ambiguous symbol while the prior art teaches a single non-ambiguous
comma, a single non-ambiguous apostrophe, or providing both a non-
ambiguous comma and a non-ambiguous apostrophe as two separate
symbols. We disagree that the prior art fails to disclose a comma/apostrophe
symbol as claimed. We note that the common definition of a diagonal mark
“/”, called a virgule2, is a mark used to separate alternatives as in and/or.
We therefore, construe Appellant’s claim language of “comma/apostrophe”
to mean either “a comma and an apostrophe” or “a comma or an
apostrophe.” Furthermore, nothing in the claim language states that the
symbol needs to be ambiguous. As pointed out by the Examiner, Flinchem
teaches a punctuation key with a period, hyphen and apostrophe on it (Ans.
17). Furthermore, Flinchem states that the period can be replaced by a
comma (see Flinchem col. 30, ll. 46-49). Therefore, the key can have a
comma, hyphen and apostrophe on it. Consequently, we find that the
punctuation key of Flinchem (Fig. 1, item 63) is equivalent to Appellant’s
multi-symbol key having a comma/apostrophe symbol and at least one other
symbol as claimed.
Appellant also argues that the cited references fail to disclose a menu
including: at least one word with a comma, at least one word having an

2 Virgule Definition, TheFreeDictionary.com,
http://www.thefreedictionary.com/virgule (last visited Sept. 7, 2011).
A diagonal mark ( / ) used especially to separate alternatives, as in and/or, to
represent the word per, as in miles/hour, and to indicate the ends of verse
lines printed continuously, as in Old King Cole/Was a merry old soul.

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apostrophe, and at least one additional character predictive of a future
keystroke (App. Br. 14). Appellant concedes that “Flinchem teaches a
method, that upon pressing the punctuation key 63, generates a menu of
possible words which include the three punctuation symbols shown on the
punctuation key 63” (App. Br. 15). Therefore, Appellant acknowledges that
Flinchem discloses that the menu includes at least one word with an
apostrophe and at least one word with a comma (based on Flinchem’s
teaching that the period can be replaced with a comma). Therefore, we must
only consider if the prior art teaches or suggests a menu with “at least one
additional character predictive of a future keystroke, ” as recited in
independent claim 1.
We find, as the Examiner did, that Ng teaches a menu which includes
at least one additional character predictive of a future keystroke (Ans. 4-5).
In particular, Ng teaches displaying to a user words containing possible
“future” keystrokes for the user to select from based off of a number of
keystrokes already entered (see Ng ¶¶ 0127-0128, 0136-0144). For
example, the user selects Key 1 of Ng, which is associated with the letter “t”.
The database engine will then search for the next possible future keystroke
sequence and the word “tree” is displayed to the user to select. Therefore,
the menu of words a user may select from includes characters of a future
keystroke, the characters “ree”.
Appellant further argues that there is no reason supported by the
record for combining Flinchem and Ng (App. Br. 17). We disagree. “What
matters is the objective reach of the claim. If the claim extends to what is
obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007). “The combination of familiar elements according to
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known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416. As pointed out by the Examiner, both Ng
and Flinchem teach all of Appellant’s claim elements. The combination of
these familiar elements is obvious in that the combination would do no more
than yield predictable results. When one skilled in the art combines the
menu including at least one additional character predictive of a future
keystroke of Ng with the device of Flinchem, it is predictable that the menu
of Flinchem would be adjusted to include at least one additional character
predictive of a future keystroke, in addition to the at least one word with a
comma and at least one word with an apostrophe. Consequently, we find
that the claims are obvious.

CONCLUSIONS
1) Appellant has established that the Examiner has erred in rejecting
claims 1, 11, and 19 under 35 U.S.C. § 112 first paragraph as failing to
comply with the written description requirement.
2) The Examiner has not erred in rejecting claims 1-24 under 35
U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1-24 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)(1)(iv).

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AFFIRMED

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