Ex parte Yianilos

Board of Patent Appeals and Interferences

Oct 10, 2001

08767220 (B.P.A.I. Oct. 10, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 52
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PETER N. YIANILOS
____________
Appeal No. 1999-2257
Application No. 08/767,220
____________
ON BRIEF
____________
Before FLEMING, RUGGIERO, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
an examiner’s rejection of claims 25, 28-33, and 36-40. We
reverse.
BACKGROUND
The appellant’s invention relates to electronic books.
Because texts of the Holy Bible are stored in a memory of the
appellant’s electronic book, his invention could be called an
Appeal No. 1999-2257 Page 2
Application No. 08/767,220
“electronic Good Book.” More specifically, the stored text is
divided into the books of the Bible (e.g., Matthew, Mark,
Luke, and John); each book is separated into chapters and
verses. When a user enters the name of a book, a read mode
request is executed whereby the beginning of the book is
displayed. When he enters a term or phrase that is not the
name of a book, a search mode request is executed whereby all
the books are searched for occurrence of the term or phrase.
A list of those books containing the entered word or phrase is
displayed for selection by the user. When he selects a book
from the list, that portion of the selected book that includes
the entered term or phrase is displayed. Accordingly, only a
single user entry need be made to display the beginning of a
desired section of the Bible, and only two entries need be
made if the first entry does not readily identify the desired
section.
Claim 25, which is representative for present purposes,
follows:
25. A method of providing user access to stored
textual information in an electronic book having a
digital memory, entry keys, a display screen and a
Appeal No. 1999-2257 Page 3
Application No. 08/767,220
microprocessor for implementing the method, said
stored textual information being comprised of
sections of textual information, each of said
sections being identified by a respective section
identifier, said method comprising the steps of:
receiving a user entry from a user of said
electronic book;
parsing said user entry by recognizing said user
entry as a read mode request if said user entry
corresponds to any one of said section identifiers,
and by recognizing said user entry as a search mode
request if said user entry does not correspond to
any one of said section identifiers,
displaying, when said user entry is recognized
as a read mode request, at least a portion of said
section of textual information having said section
identifier to which the user entry corresponds; and
searching, when said user entry is recognized as
a search mode request, through each of said sections
of textual information for at least one occurrence
of said user entry, displaying on said display
screen of said electronic book a list of the section
identifiers of those sections of textual information
in which said at least one occurrence of said user
entry is found, receiving a second user entry from
said user, and displaying a portion containing the
first user entry of the section of textual
information having said section identifier to which
the second user entry corresponds.
The prior art applied by the examiner in rejecting the
claims follows:
Appeal No. 1999-2257 Page 4
Application No. 08/767,220
Cassorla et al. (“Cassorla”) 5,146,552 Sep.
8, 1992
(filed Feb. 28, 1990)
Cochran et al. (“Cochran”) 4,879,648 Nov. 7,
1989
Claims 25, 28-33, and 36-40 stand rejected under 35 U.S.C.
§ 103 as being obvious over Cassorla in view of Cochran.
Rather than reiterate the arguments of the appellant or
examiner in toto, we
refer the reader to the brief and answer for the respective
details thereof.
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 25, 28-33, and 36-40.
Accordingly, we reverse. We begin by summarizing the
examiner's rejection and the appellant's argument.
The examiner asserts, "a state or airport code may be
entered into the location field. Depending on the code
entered, the processing for a state or airport is performed."
Appeal No. 1999-2257 Page 5
Application No. 08/767,220
(Examiner's Answer at 10.) He adds, “when the entry is a
state code or correlates to a state identifier it is processed
as a read request or static list.” (Id. at 7.) The appellant
argues, "neither Cassorla, et al. nor Cochran, et al.
discloses or suggests parsing a user entry by recognizing the
entry as a read mode request or as a search mode request
depending upon whether that user entry corresponds to any of
the section identifiers of the stored textual information."
(Appeal Br. at 10.)
Claims 25 and 29-31 specify in pertinent part the
following limitations: "parsing said user entry by recognizing
said user entry as a read mode request if said user entry
corresponds to any one of said section identifiers, and by
recognizing said user entry as a search mode request if said
user entry does not correspond to any one of said section
identifiers, displaying, when said user entry is recognized as
a read mode request, at least a portion of said section of
textual information having said section identifier to which
the user entry corresponds ....” Similarly, claim 28
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Application No. 08/767,220
specifies in pertinent part the following limitations:
"parsing said user entry by recognizing said user entry as a
read mode request if said user entry corresponds to any one of
said section identifiers and said user entry is not included
within any of said sections of textual information, by
recognizing said user entry as a search mode request if said
user entry does not correspond to any one of said section
identifiers, and prompting said user to indicate whether the
user entry is a read mode request or a search mode request
when said user entry corresponds to one of said section
identifiers and said user entry is included within at least
one of said sections of textual information; displaying, when
said user entry is recognized as a read mode request, at least
a portion of said section of textual information having said
section identifier to which the user entry corresponds ....”
Also similarly, claims 33 and 37-40 specify in pertinent part
the following limitations: “parsing means for parsing said
user entry by recognizing said user entry as a read mode
request if said user entry corresponds to any one of said
section identifiers, and by recognizing said user entry as a
search mode request if said user entry does not correspond to
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Application No. 08/767,220
any one of said section identifiers; and display means for
displaying, when said user entry is recognized as a read mode
request, at least a portion of said section of textual
information having said section identifier to which the user
entry corresponds ....” Similarly, claim 36 specifies in
pertinent part the following limitations: “parsing means for
parsing said user entry by recognizing said user entry as a
read mode request if said user entry corresponds to any one of
said section identifiers and said user entry is not included
within any of said sections of textual information, and by
recognizing said user entry as a search mode request if said
user entry does not correspond to any one of said section
identifiers, said parsing means including means for prompting
said user to indicate whether the user entry is a read mode
request or a search mode request when said user entry
corresponds to one of said section identifiers and said user
entry is included within at least one of said sections of
textual information; display means for displaying, when said
user entry is recognized as a read mode request, at least a
portion of said section of textual information having said
section identifier to which the user entry corresponds ....”
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Application No. 08/767,220
Accordingly, claims 25, 28-33, and 36-40 require inter alia
recognizing a user entry as a read mode request if it
corresponds to a section identifier and responsively
displaying at least some of a section of textual information
having the section identifier to which the user entry
corresponds.
The examiner fails to show a teaching or suggestion of
the limitations in the applied prior art. "’A prima facie
case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art.’" In
re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ
143, 147 (CCPA 1976)).
Here, the examiner admits, “Cassorla does not show read
mode ... requests.” (Examiner’s Answer at 3.) Furthermore,
Cochran’s state code, to which the examiner refers, is not a
read request. To the contrary, it is processed as a search
request whereby a database is searched for occurrence of the
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Application No. 08/767,220
code. Specifically “all the state codes or airport codes are
linked with logical
connectors ‘and’ and in step 116 a search through the data
base (shown as Data Base ) is conducted to obtain Data Base as0 1
a subset of Data Base .” Col. 16, ll. 29-33. 0
Because Cochran’s state code is processed as a search
request, we are not persuaded that the teachings from the
applied prior art would have suggested the limitations of
“"parsing said user entry by recognizing said user entry as a
read mode request if said user entry corresponds to any one of
said section identifiers, and by recognizing said user entry
as a search mode request if said user entry does not
correspond to any one of said section identifiers, displaying,
when said user entry is recognized as a read mode request, at
least a portion of said section of textual information having
said section identifier to which the user entry corresponds;”
"parsing said user entry by recognizing said user entry as a
read mode request if said user entry corresponds to any one of
said section identifiers and said user entry is not included
within any of said sections of textual information, by
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Application No. 08/767,220
recognizing said user entry as a search mode request if said
user entry does not correspond to any one of said section
identifiers, and prompting said user to indicate whether the
user entry is a read mode request or a search mode request
when said user entry corresponds to one of said section
identifiers and said user entry is included within at least
one of said sections of textual information; displaying, when
said user entry is recognized as a read mode request, at least
a portion of said section of textual information having said
section identifier to which the user entry corresponds;”
“parsing means for parsing said user entry by recognizing said
user entry as a read mode request if said user entry
corresponds to any one of said section identifiers, and by
recognizing said user entry as a search mode request if said
user entry does not correspond to any one of said section
identifiers; and display means for displaying, when said user
entry is recognized as a read mode request, at least a portion
of said section of textual information having said section
identifier to which the user entry corresponds;” and “parsing
means for parsing said user entry by recognizing said user
entry as a read mode request if said user entry corresponds to
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Application No. 08/767,220
any one of said section identifiers and said user entry is not
included within any of said sections of textual information,
and by recognizing said user entry as a search mode request if
said user entry does not correspond to any one of said section
identifiers, said parsing means including means for prompting
said user to indicate whether the user entry is a read mode
request or a search mode request when said user entry
corresponds to one of said section identifiers and said user
entry is included within at least one of said sections of
textual information; display means for displaying, when said
user entry is recognized as a read mode request, at least a
portion of said section of textual information having said
section identifier to which the user entry corresponds ....”
Therefore, we reverse the rejection of claims 25, 28-33, and
36-40 as being obvious over Cassorla in view of Cochran.

CONCLUSION
In summary, the rejection of claims 25, 28-33, and 36-40
under § 103 is reversed.
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Application No. 08/767,220
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
LLB/gjh
Appeal No. 1999-2257 Page 13
Application No. 08/767,220
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Once signed, forward to Team 3 for mailing.
APPEAL NO. 1999-2257 - JUDGE BARRY
APPLICATION NO. 08/767,220
APJ BARRY - 2 copies
APJ FLEMING
APJ RUGGIERO
Prepared By: APJ BARRY (GJH)
DRAFT SUBMITTED: 17 Jul 02
FINAL TYPED:
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