Ex Parte Wine

Patent Trial and Appeal Board

Jul 26, 2016

13462015 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/462,015 05/02/2012
32968 7590 07/28/2016
KYOCERA INTERNATIONAL INC
INTELLECTUAL PROPERTY DEPARTMENT
8611 Balboa Ave
SAN DIEGO, CA 92123
FIRST NAMED INVENTOR
Jonathan Wine
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
UTL 01073 1719
EXAMINER
NICHOLS, JENNIFER ELIZABETH-JO
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
KII-USPatents@kyocera.com
Kathleen.Connell@kyocera.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN WINE
Appeal2015-003658
Application 13/462,015
Technology Center 2100
Before JOSEPH L. DIXON, JOHN D. HAMANN, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of Claims 1-20, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claimed invention relates to text entry on a mobile device. Spec.
1. Claims 1, 10, and 19 are independent. Claim 1, which is illustrative of
the claimed invention, reads as follows:
1 Appellant identifies Kyocera Corporation as the real party in interest. App.
Br. 3.
Appeal2015-003658
Application 13/462,015
1. A method for providing data entry on a mobile device,
the method comprising, by at least one hardware processor of a
mobile device:
in response to a selection of an input field of a user
interface, generating a partially transparent virtual overlay on a
display area of the mobile device, such that at least a portion of
the user interface is visible through the partially transparent
virtual overlay;
receiving a drawing on the partially transparent virtual
overlay, wherein the drawing is indicative of at least one
character;
converting the drawing into the at least one character;
and
causing the at least one character to be displayed in the
input field, such that the at least one character is visible
through the partially transparent virtual overlay.
App. Br. 15 (emphasis added).
THE REJECTIONS
The claims stand rejected as follows:
Claims 1---6, 10-15, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Partanen et al. (US 2003/0001899 Al; pub. Jan. 2,
2003) ("Partanen"). Final Act. 3-15.
Claims 7-9 and 16-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Partanen and Roth et al. (US 2004/0267528 A9; pub. Dec.
30, 2004) ("Roth"). Final Act. 16-22.
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Application 13/462,015
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments presented in this appeal. Any other arguments which Appellant
could have made but did not make in the Briefs are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv). On this record, we are not persuaded the
Examiner erred. We adopt as our own the findings and reasons set forth in
the rejections from which this appeal is taken and in the Examiner's Answer,
and highlight the following for emphasis.
Claim 1
Appellant argues the Examiner erred in finding Partanen discloses
"causing the at least one character to be displayed in the input field, such
that the at least one character is visible through the partially transparent
virtual overlay." App. Br. 8-10 (emphasis omitted); Reply Br. 2--4.
According to Appellant, Partanen only discloses displaying the (inputted)
character adjacent to the partially transparent virtual overlay; rather than
through the partially transparent virtual overlay. Id. We disagree.
We begin by referring to Appellant's drawings 2A, 2B, 3B, and 3C,
which illustrate an embodiment of the invention, including the disputed
claim limitation. Appellant's Figure 2A is reproduced below:
202
204
206
208
FIG. 2A
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Appeal2015-003658
Application 13/462,015
Figure 2A shows a user interface on a mobile device. The user interface of
Figure 2A includes data input fields 202, 204, and 206, and image 208 (all
blank). Spec. ,-r 16.
Appellant's Figure 2B is reproduced below:
202
204
206
210 208
FIG. 2B
Figure 2B illustrates a user interface on a mobile device with a partially
transparent virtual overlay 210. The virtual overlay 210 covers nearly the
entire display, and covers data input fields 202, 204, and 206, as well as
image 208, all of which can partially be seen through the virtual overlay.
Spec. ,-r 17.
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Appeal2015-003658
Application 13/462,015
Appellant's Figure 3B is reproduced below:
FIG. 3B
\
\
--..,:__..~
""~ ... }
Figure 3B shows the user interface and virtual overlay 210 with the user's
finger drawing the letter "L" on the virtual overlay 210. Spec. i-f 18.
Finally, Appellant's Figure 3C is reproduced below:
.-.~·· .:~~:~~'. .. ~~: ... :: .·· ·;···· .. .:">.·. - . ~
, ____ -----------------------·--~,, ___ ..._,_,.~ .. ~----............. _
204
106
210 208
FIG. 3C
Figure 3C shows the user interface and virtual overlay with the letter "L,"
which had been drawn by the user on the virtual overlay (Fig. 3B), now
displayed in "Input Field 2" (204). Figure 3C, therefore, illustrates an
embodiment of the disputed claim limitation: the character "L," converted
from the user's drawing, is "displayed in the input field, such that the ...
character is visible through the partially transparent virtual overlay."
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Appeal2015-003658
Application 13/462,015
The Examiner cites Partanen as disclosing the disputed limitation. As
explained by the Examiner, Ans. 3--4, Partanen is directed to a partially
transparent virtual overlay for a mobile device or other small-screen device.
Partanen Figure 1 is shown below:
Figure 1 depicts a video display of an email message being composed.
Partanen ,-r 22. The display includes a "semi-transparent window 12
overlying a video display screen 14." Id. The semi-transparent window 12
is defined by boundaries 16. Id. A user has inputted in the semi-transparent
window the manuscript character "I" ( 18), and that same character "I" (20)
is displayed in the display screen 14. Id.
As can be seen from Figure 1, some text in the display (and in
particular, the subject line of the email message) is visible "through the
partially transparent virtual overlay." Appellant, therefore, concedes
Partanen discloses at least a partially transparent virtual overlay. App. Br. 9.
Appellant argues, however, the claim requires the character visible through
the overlay to be "the at least one character" that had been converted from a
drawing (input) by the user. Id. In other words, character "I" of Partanen's
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Appeal2015-003658
Application 13/462,015
Figure 1 (shown as element 20) must be visible "through" the partially
transparent overlay. Id. Strictly speaking, Appellant argues, Partanen
Figure 1 only illustrates the "at least one character ['I']" visible adjacent to
the partially transparent overlay. Id.
The relevant disclosure of Partanen, however, is not limited to Figure
1. As the Examiner finds, Partanen further discloses the "semi-transparent
window [overlay] ... may be moved and sized depending upon the
particular needs and preferences of the user." Partanen i-f 15 (emphasis
added). Further, the "semi-transparent window [overlay] ... may be
automatically sizable in response to the placement of the user's manuscript
input on the touch-activated screen." Id. at i-f 16 (emphasis added).
Whatever the size or position of the semi-transparent window, Partanen
discloses that "the features of the underlying video display screen ... are
still visible, thereby permitting the user to see what lies beneath semi-
transparent window 12 yet still permitting the user also to see the contents of
the overlying semi-transparent window." Id. at i-f 22.
Appellant, in the Reply, does not address the Examiner's finding, Ans.
4, that Partanen discloses a movable, resizable, semi-transparent window.
Rather, Appellant argues that the disclosure of the disputed claim limitation
is not "inherent. App. Br. 10; Reply Br. 3-5. Contrary to Appellant's
argument, however, this is not a question of inherency, nor did the
Examiner's Answer characterize it as such. Ans. 5. Rather, Partanen
affirmatively discloses a resizable, movable semi-transparent window, and
does not specify any limits on such movement or resizing within the
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Application 13/462,015
display.2 See supra. We, therefore, are not persuaded the Examiner erred in
finding Partanen discloses the disputed claim limitation. Cf In re Preda,
401 F .2d 825, 826 (CCP A 1968) ("it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.").
For the foregoing reasons, we sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 102 as anticipated by Partanen.
Remaining Claims
Independent claims 10 and 19 each include the disputed limitation
discussed above. Appellant repeats the same argument with respect to these
claims, namely, that Partanen discloses a character displayed adjacent to a
semi-transparent window rather than through the window. App. Br. 12-13.
For the reasons discussed above, we are not persuaded the Examiner erred.
Accordingly, we sustain the rejection of claims 10 and 19 under 35 U.S.C.
§ 102 as anticipated by Partanen. We also sustain the rejection of dependent
claims 2---6, 11-15, and 20 on the same grounds, as those claims were not
argued separately from their base claims 1, 10, and 19, respectively.
Appellant also does not argue separately the rejection of dependent
claims 7-9 and 16-18 under 35 U.S.C. § 103(a) as unpatentable over
Partanen and Roth. Accordingly, we sustain the rejection. See Hyatt v.
Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to
2 Further, both Partanen and Appellant's invention are directed to mobile
devices with limited screen size. Spec. i-f 1; Partanen Abstract. Thus, we find
unpersuasive Appellant's implicit position that Partanen' s disclosure of
moving or resizing the semi-transparent window excludes any portion of the
display showing user-inputted (drawn and converted) characters.
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Application 13/462,015
contest a ground of rejection to the Board, ... the Board may treat any
argument with respect to that ground of rejection as waived.").
DECISION
The Examiner's rejections of claims 1-20 are 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)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED
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