Ex Parte Thorn

Patent Trial and Appeal Board

Sep 19, 2014

11928162 (P.T.A.B. Sep. 19, 2014)

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.
11/928,162 10/30/2007 Karl Ola THORN PS07 0817US1 6971
58342 7590 09/22/2014
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
09/22/2014 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 KARL OLA THORN
____________
Appeal 2012-005994
Application 11/928,162
1

Technology Center 2600
____________

Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER,
and KEVIN C. TROCK, Administrative Patent Judges.

TROCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1–3, 8–14, and 16–25. Claims 4–7 and 15 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s invention relates to the input of text to an application
operating on a device, and more particularly, the selection, marking, and

1
According to Appellant, the real party in interest is Sony Ericsson Mobile
Communications AB. Appeal Br. 2.

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Application 11/928,162

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pasting of a depiction of text rendered on a display screen to an application
operating on the device. Spec. para. 1.
The present appeal involves claims 1–3, 8–14, and 16–25.
Independent claim 1 reads as follows:
1. A device comprising:

a digital camera for capturing an image including a depiction of
text;

a display screen;

an audio circuit for generating an audio signal representing
spoken words uttered by a user; and

a processor executing a first application, a second application,
and a text mark-up object;

the first application rendering the depiction of text on the
display screen;

the text mark-up object:

receiving at least a portion of the audio signal representing
spoken words uttered by the user;

performing speech recognition to generate a text representation
of the spoken words uttered by the user;

performing character recognition on the depiction of text to
generate a character string;

determining a selected text segment by correlating the text
representation of the spoken words to the character string and
applying a disambiguation rule to resolve a difference between the
text representation of the spoken words and the character string,

Appeal 2012-005994
Application 11/928,162

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the selected text segment being text which corresponds to both
a portion of the character string and the text representation of the
spoken words; and

performing an input function to input the selected text segment
to the second application.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims.
Garside US 2003/0233237 A1 Dec. 18, 2003
Yurick US 2007/0011012 A1 Jan. 11, 2007

Grounds of Rejection
Claims 1–3, 8–14, and 16–25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Garside and Yurick.

ISSUE
Whether the Examiner erred in rejecting claims 1–3, 8–14, and 16–25
under 35 U.S.C. § 103(a) as being unpatentable over Garside and Yurick
because the combination does not teach or suggest all of the claim
limitations.

ANALYSIS
Appellant argues that Garside does not disclose a comparison of
converted spoken text and text input via a stylus and there is no reasonable
basis to modify Garside with the teachings of Yurick to perform such a
comparison. App. Br. 8. Appellant further argues that the proposed
Appeal 2012-005994
Application 11/928,162

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combination of Garside and Yurick would eliminate the main feature of
Garside and impermissibly change Garside’s principle of operation. App.
Br. 10.
The Examiner explains, however, that claim 1 does not claim a
comparison of converted spoken text and text input via a stylus, but rather
determining a selected text segment, the selected text segment being text
which corresponds to both a portion of the depiction of text on the display
screen and the text representation of the spoken words uttered by the user.
Ans. 23. Here, the Examiner uses Yurick, not Garside, to teach and/or
suggest correlating a text representation of spoken words to a character
string. Ans. 6–7.
The Examiner further explains that one of ordinary skill in the art
would have been motivated to modify the teachings of Garside with the
teachings of Yurick because of the suggestions in Yurick to determine the
correct representation of spoken or written words; to provide for an
improved system where the user can observe words that require correction or
replacement; and to improve upon Garside with a technique of utilizing a
disambiguation rule to point out input errors to the user. Ans. 25, 26. The
Examiner explains that Yurick provides an added advantage to the user by
having errors corrected automatically while preserving Garside’s human
correction of errors without eliminating the functionality of either the stylus
or the voice inputs, thus preserving the original principle of Garside while
resulting in an improved system. Ans. 27.
We agree with the Examiner’s aforementioned reasoning why
one of ordinary skill in the art would be motivated to combine the
teachings of Garside and Yurick. These improvements comport with
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Application 11/928,162

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one of the express goals of Garside which is to provide “data input
techniques that will allow a user to accurately input data to a computer
with both relatively high-speed and accuracy.” Garside para. 8.
Independent claim 12 is a method claim implemented by the device
presented in claim 1. We find that the recited steps of claim 12 are also
taught by the combination of Garside and Yurick, for the reasons discussed
above.
Claims 2 and 9 depend from claim 1, and add the limitations of the
text mark-up object drives rendering of a marking of the portion of the
depiction of text on the display screen which corresponds to the selected text
segment and performs the input function only upon detection of an input
command. The Examiner points out that Garside teaches these additional
limitations in at least paragraphs 3, 5, 6, 39, 43, 55, 58–60 and 63. Ans. 28,
29.
The Appellant argues that the selection of text identified by the
Examiner in Garside cannot be the same marking contemplated by claim 2
because the selected word in Garside does not correspond to the selected text
segment of claim 2. Reply Br. 10. We disagree. Here, Garside is used for
its disclosure of allowing the user to modify text entered by the stylus with
text that corresponds to the text representation of spoken word, i.e., an input
command. Garside para. 58-60. As noted supra, Yurick teaches the
selected text segment by a correlating feature. Accordingly, we agree with
the Examiner’s findings that the limitations added by dependent claims 2
and 9 are taught by Garside.
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Claims 3 and 10 also depend from claim 1, and add the limitations of
wherein the input command is an audio command uttered by the user and the
text mark-up object detects the command within the audio signal by speech
recognition. The Examiner points out that Garside teaches these additional
limitations in at least paragraphs 39, 55, and 63. Ans. 30.
The Appellant argues that Garside does not disclose that the input
function is performed only upon detection of an audio command while
rendering the marking of the portion of the depiction of text. Reply Br. 11,
12. We disagree. Garside teaches allowing the user to correct text that is
displayed before the text is input/pasted into another application, and
performing the input/pasting of the selected text in response to receiving
spoken speech commands. Garside paras. 39, 55, and 63. Accordingly, we
agree with the Examiner’s findings that the limitations added by dependent
claims 3 and 10 are taught by Garside.
Claims 13 and 14 depend from method claim 12, and add limitations
similar to those set forth in dependent claims 2 and 3. For the reasons
discussed above, we find that the limitations added by dependent claims 13
and 14 are also taught by Garside.
The Appellant does not separately address the rejection of dependent
claims 8, 11, 16–18, and 21–25, therefore these claims fall with the claims
from which they depend. We note that arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of
claims 1-3, 8–14, and 16–25.

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Application 11/928,162

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DECISION
The Examiner’s decision rejecting claims 1–3, 8–14, and 16–25 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).

AFFIRMED

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