Ex Parte Yang

Board of Patent Appeals and Interferences

Feb 3, 2010

10317813 (B.P.A.I. Feb. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Appeal 2009-003971
Application 10/317,813
Technology Center 2100
____________________

Ex parte MOON-HWAN YANG
____________________

Decided: February 4, 2010

Before LANCE LEONARD BARRY, THU A. DANG, and JAMES R.
HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 1-5 and 7
under 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We affirm.

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A. INVENTION
According to Appellant, the invention relates to a wireless mobile
terminal, and more particularly to a method of inputting characters on a
wireless mobile terminal (Spec. 1, ll. 13-14).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method of inputting characters on a wireless mobile
terminal, the method comprising the steps of:

(a) computing a probability value for each character
which may be entered after a user inputs a particular character
from among characters assigned to each button on a key input
section of the wireless mobile terminal, and storing the
probability value in a memory of the mobile terminal, the
probability value based on a detection frequency of each
character to be detected after a particular character in a preset
number of words;

(b) displaying on a display section, as a first input
character, a character input by the user according to the number
of times a first button has been pressed in a character input
mode, based on a first character arrangement assigned to the
first button;

(c) reading from the database the probability value for
each probable character to be entered after the first input
character, among characters assigned to all buttons of said key
input section;

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(d) determining a second character arrangement in the
order of the probability values for the characters assigned to
each button; and

(e) displaying on a display section, as a second input
character, a character input by the user according to the number
of times a second button is pressed, based on a second character
arrangement preset on the second button.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nowlan US 6,204,848 B1 Mar. 20, 2001

Claims 1-5 and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by the teachings of Nowlan.

II. ISSUE
The issue is whether Appellant has shown that the Examiner erred in
determining that Nowlan discloses “reading from the database the
probability value for each probable character to be entered after the first
input character” and “determining a second character arrangement in the
order of the probability values for the characters assigned to each button”
(claim 1).

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III. FINDINGS OF FACT
Nowlan
1. Nowlan discloses a disambiguation engine 34 which selects, for each
character key, a character most likely to be represented by that
character key based on frequency of use in the given language (col. 3,
ll. 53-56; Fig. 2), wherein a uni-gram database 38 provides uni-gram
information to the disambiguation engine by ranking all of the
characters in a given language based on frequency of use in the given
language (col. 3, ll. 63-67).
2. For an n-gram, such as “test”, the user presses the EIGHT key for the
character “t”, the input and display engine 30 receives the key for the
EIGHT key, and the disambiguation engine 34 is triggered to identify
the set of characters associated with the EIGHT key (t, u, v and 8)
from its memory 36, wherein the input and display engine 30 displays
the characters associated with the EIGHT key in the alternate row
display 26 (col. 4, ll. 34-44; Fig. 4).
3. The user proceeds by pressing the THREE key for the character “e”,
the input and display engine 30 receives the character key for the
THREE key, the disambiguation engine identifies the set of characters
associated with the THREE key (d, e, f, and 3) and performs a look-up
function in the n-gram database 40, wherein the disambiguation
engine 34 identifies alternative n-grams based on the combination of
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the set of characters associated with the EIGHT key and the set of
characters associated with the THREE key (col. 4, ll. 49-57).
4. The alternative n-grams are displayed in the alternate row display 26
in descending order based on a probability of frequency of use in the
given language (col. 4, ll. 61-64).

IV. PRINCIPLES OF LAW
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” Id. (citations omitted).
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[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)). "Moreover, limitations are not to be read into the claims from
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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)).

V. ANALYSIS
Appellant argues that “Nowlan neither suggests nor discloses that the
disambiguation engine 34 reads from the uni-gram database 38 a probability
value for each probable character to be entered after the first input character”
but instead “discloses only that upon pressing the first key, for example the
EIGHT key, that the assigned characters (e.g., t, u, v and 8) can be displayed
in descending order based on a probability of frequency use” (App. Br. 5-6).
Appellant also contends that, in Nowlan, “only after pressing of a second
key, for example, the THREE key for the character ‘e’, does the
disambiguation engine perform a look-up function for identifying alternative
n-grams based on a combination only of the set of characters associated with
the EIGHT key and the set of characters associated with the THREE key”
(App. Br. 6).
The Examiner finds that, in Nowlan, “[a]fter the disambiguation
engine 34 identifies the first character entered by the user, it performs further
look up in the uni-gram database 38 in order to rank each character
identified based on the highest probability of frequency of use in the given
language” (Ans. 7-8), and that Nowlan “clearly” discloses “a second
character arrangement in the order of the probability values… at least in
figure 4, 6, 8” because “the character arrangement in screen 4b is different
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from the character arrangement in screen 4a” (Ans. 8). According to the
Examiner, “[i]t seems that the [A]ppellant argues since the user has pressed
a key to display 4b, it should not be considered a second character
arrangement” whereas “the claim language does not specify any limitation
regard the pressing of the keys” (Id.).
Accordingly, the issue that we address on appeal is whether Appellant
has shown that the Examiner erred in determining that Nowlan discloses
“reading from the database the probability value for each probable character
to be entered after the first input character” and “determining a second
character arrangement in the order of the probability values for the
characters assigned to each button” (claim 1).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184.
Though Appellant argues that Nowlan’s disambiguation engine 34
“does not read from the uni-gram database 38 a probability value for each
probable character to be entered after the first input character” because
Nowlan “discloses only that upon pressing the first key, for example the
EIGHT key, that the assigned characters (e.g., t, u, v and 8) can be displayed
in descending order based on a probability of frequency use” (App. Br. 5-6),
such argument is not commensurate in scope with the language of claim 1.
That is, Appellant appears to be arguing that, since Nowlan discloses
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pressing the first key to display the first input character based on a
probability of frequency use, it cannot also disclose reading the probability
value of each probable character to be entered after the first input character.
However, the language of claim 1 simply does not preclude any such
pressing of the first key to display based on a probability of frequency use in
addition to reading the probability value of each probable character to be
entered thereafter.
Nowlan discloses ranking the frequency of use in the given language
of all of the characters (FF 1, emphasis added). A skilled artisan would have
understood the ranking of the characters based on the frequency of use to be
determining the probability value of each of the characters. Further, the
artisan would have understood that the probability values for all of the
characters would include the probability value for each probable character to
be entered after the first input character. As the Examiner finds, in Nowlan,
“[a]fter the disambiguation engine 34 identifies the first character entered by
the user, it performs further look up in the uni-gram database 38 in order to
rank each character identified based on the highest probability of frequency
of use in the given language” (Ans. 7-8), Thus, we agree with the Examiner
that Nowlan teaches “reading from the database the probability value for
each probably character to be entered after the first input character” (claim
1).
In Nowlan, for n-gram “test”, the user presses the EIGHT key for the
character “t” and proceeds by pressing the THREE key for the character “e”
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(FF 2-3), wherein alternative n-gams are identified based on the combination
of the set of characters associated with the EIGHT key and the set of
characters associated with the THREE key and displayed in descending
order based on a probability of frequency of use in the given language (FF 3-
4). An artisan would have understood the n-grams to comprise the
characters assigned to the buttons, wherein each comprises a probability
value based on the frequency of use as discussed above. Accordingly, the
artisan would have understood the determining of the descending order of
the alternative n-grams based on a probability of frequency of use to be
“determining a second character arrangement in the order of the probability
values for the characters assigned to each button” as required by claim 1.
Though Appellant contends that, in Nowlan, “only after pressing of a
second key, for example, the THREE key for the character ‘e’, does the
disambiguation engine 34 perform a look-up function for identifying
alternative n-grams based on a combination only of the set of characters
associated with the EIGHT key and the set of characters associated with the
THREE key” (App. Br. 6), again such argument is not commensurate in
scope with the language of claim 1. That is, Appellant appears to be arguing
that Nowlan’s alternative n-grams are based on a combination of the set of
characters associated with the EIGHT key and the set of characters
associated with the THREE key; they cannot be “a second character
arrangement” of claim 1. However, the language of claim 1 simply does not
preclude any such alternative n-grams based on a combination of the set of
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characters. As the Examiner finds, “[i]t seems that the [A]ppellant argues
since the user has pressed a key to display screen 4b, it should not be
considered a second character arrangement” whereas “the claim language
does not specify any limitation regard the pressing of the keys” (Ans. 8).
Claim 1 merely recites “determining a second character arrangement
in the order of the probability values for the characters assigned to each
button.” We find claim 1 to read on Nowlan’s determining of the descending
order of the alternative n-grams based on a probability of frequency of use.
Appellant newly argues in the Reply Brief that “[t]he disambiguation
engine 34 [of Nowlan] displays the entire set of characters associated with
each particular key,” and that Nowlan’s user “would make 8 keystrokes to
type out the text ‘test’” while “in the present invention, the user would make
fewer than 7 keystrokes” (Reply Br. 3). However, such arguments is not
commensurate in scope to the language of claim 1 since claim 1 does not
preclude displaying an “entire set” of characters, and does not require that
the user would make “fewer than 7 keystrokes.”
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting independent claim 1 and claims 2-5 depending
therefrom and falling therewith under 35 U.S.C. § 102(b).
Regarding claim 7, Appellant merely repeats the arguments set forth
for claim 1 (App. Br. 6-9). In fact, Appellant does not provide separate
arguments for claim 7 in the Reply Brief (Reply Br. 2). Accordingly, claim
7 falls with claim 1.
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VI. CONCLUSIONS
Appellant has not shown that the Examiner erred in determining that
Nowlan discloses “reading from the database the probability value for each
probable character to be entered after the first input character” and
“determining a second character arrangement in the order of the probability
values for the characters assigned to each button” as set forth in claim 1.

VII. DECISION
We affirm the Examiner's decision rejecting claims 1-5 and 7 under
35 U.S.C. § 102(b).
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

peb

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