Ex Parte YuanDownload PDFPatent Trial and Appeal BoardApr 15, 201411478710 (P.T.A.B. Apr. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SHIJUN YUAN ____________________ Appeal 2011-012022 Application 11/478,710 Technology Center 2600 ____________________ Before JOSEPH F. RUGGIERO, STANLEY M. WEINBERG, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012022 Application 11/478,710 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-37. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection. THE INVENTION The claims are directed to providing a text copy capability with touch input display. Abstract. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method, comprising: selecting displayed text from a first display location using a pen in combination with a touch sensitive surface; in response to a first signal generated using the pen, copying the selected displayed text to a buffer associated with a text window and displaying the copied text in the text window; selecting a second display location using the pen; and in response to a second signal, copying the displayed text from the buffer to the second display location. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Andrade US 2006/0218492 A1 Sep. 28, 2006 Scott EP 1 840 707 A1 Oct. 3, 2007 Appeal 2011-012022 Application 11/478,710 3 REJECTIONS1 The Examiner made the following rejections: Claims 1-3, 5, 7, 8, 11-13, 15, 17, 18, 21-23, 25, 27, 28, 31-33, 35, and 37 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Andrade. Ans. 3-5. Claims 4, 9, 10, 14, 19, 20, 24, 29, 30, and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Andrade and Scott. Id. at 5-7. Claims 6, 16, 26, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Andrade and Official Notice. Id. at 7-8. APPELLANT’S CONTENTIONS 1. Andrade does not display text until a location for the text is selected in a destination document via a paste command, not when the text is first copied, and therefore fails to disclose a first signal that results in the dual responses of copying the selected displayed text to a buffer associated with a text window and displaying the copied text in the text window, as required by claim 1. App. Br. 19-25. 2. “Andrade has no disclosure concerning a handwriting recognition application [as required by claim 5.]” Id. at 26. 1 Appellant collectively argues the rejection of (A) claims 1, 11, 21, and 31; (B) claims 5, 15, 25, and 35; (C) claims 7, 17, and 27; and (D) claims 10, 20, and 30. Separate patentability is not argued for claims 2-4, 6, 8, 9, 12-14, 16, 18, 19, 22-24, 26, 28, 29, 32-34, 36, and 37. Therefore, based on Appellant’s arguments and consistent with the Appeal Brief (App. Br. 18), we decide the appeal of claims 1-4, 6, 8, 9, 11-14, 16, 18, 19, 21-24, 26, 28, 29, 31-34, 36, and 37 based on claim 1 alone, the appeal of claims 5, 15, 25, and 35 based on claim 5 alone, the appeal of claims 7, 17, and 27 based on claim 7 alone, and the appeal of claims 10, 20, and 30 based on claim 10 alone. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-012022 Application 11/478,710 4 3. “There is no opportunity to change the text lying within Andrade’s copy buffer 302 [as required by claim 7], since . . . the contents of Andrade’s copy buffer is not [displayed] until pasted, and then is displayed not as the copy buffer itself but as pasted within Andrade’s destination document.” Id. at 27-28. 4. While Scott teaches a handheld wireless communication device, the Examiner fails to address and Scott fails to teach automatically generating a first signal when the pen is lifted from the touch sensitive surface after the display text is selected, as required by claim 10. Id. at 30. ISSUES ON APPEAL Based on Appellant’s arguments in the Appeal Brief (App. Br. 19-30) and Reply Brief (Reply Br. 5-11), the issues presented on appeal are: 1. Whether the Examiner erred in finding Andrade’s step 408 of displaying copied text pasted into a text window is responsive to a first signal. 2. Whether the Examiner erred in finding Andrade discloses a handwriting recognition application, as required by claim 5. 3. Whether the Examiner erred in finding Andrade discloses changing text display in the text window prior to copying the displayed text from the buffer to the second display location, as required by claim 7. 4. Whether the Examiner erred in finding Scott teaches the first signal is generated automatically when the pen is lifted from the touch sensitive surface after the display text is selected, as required by claim 10. Appeal 2011-012022 Application 11/478,710 5 ANALYSIS Claim 1 We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred in rejecting claim 1 under 35 U.S.C. § 102(e) as being anticipated by Andrade. In connection with this rejection, we disagree with Appellant’s conclusions, adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 3-4) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 8-9) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. In support of contention 1, Appellant argues: Andrade uses two commands, the copy command received at block 402 and the paste command received at block 406, to achieve one single display of the text at block 416. Absent the paste command, there is no destination for Andrade to display the text since the clipboard is the copy buffer. If one were to truncate Andrade’s Figure 4 at block 406 so the copied text is in the buffer but the paste command is not yet received, there is nowhere at which the copied text may be yet displayed according to Andrade. App. Br. 20. Appellant further argues, “Andrade’s copied text is displayed at block 416, which occurs only in response to the paste command received at block 408.” Reply Br. 6. Appellant concludes, “[t]he rejection cannot sustain [sic] because the contents of Andrade’s copy buffer/clipboard memory is not displayed until pasted to the destination document in response to the separate paste command.” App. Br. 22. Appeal 2011-012022 Application 11/478,710 6 We disagree. Contrary to Appellant’s argument, Andrade’s copied text is not displayed only in response to the paste command but also in response to the preceding copy command. See Reply Br. 6. In particular, claim 1 requires, in response to a first signal generated using the pen, (i) copying the selected displayed text to a buffer associated with a text window and (ii) displaying the copied text in the text window, the latter displaying operation being in dispute. While Andrade’s display of the selected text is responsive to a separate paste command, it is necessarily also dependent upon and therefore responsive to an earlier copy command. That is, although Andrade’s displaying is dependent upon an intermediate pasting operation, there is a sufficient causal relationship to the earlier copy operation so that displaying the copied text is also responsive to the copy operation (i.e., both the copy and pasting operations), absent which there would be nothing to display. Therefore, a broad but reasonable interpretation of the disputed limitation of “in response to a first signal . . . , displaying the copied text in the text window” includes, in response to a copy command, copied text is displayed by pasting into a document. Appellant’s argument is further unpersuasive because it is premised on a particular temporal ordering of the steps of claim 1, i.e., wherein the copied text is displayed prior copying the displayed text from the buffer to the second display location. In particular, Appellant argues “Andrade unequivocally discloses at ¶0038 there is no display of the copied text until a location for it is selected in the destination document via the paste command.” App. Br. 21. However, during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d Appeal 2011-012022 Application 11/478,710 7 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing Am. Acad., 367 F.3d at 1364). Furthermore, “although a method claim necessarily recites the steps of the method in a particular order, as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001)). Because claim 1 does not specify a particular order of steps, the disputed “displaying the copied text in the text window” is disclosed by Andrade even though it occurs after copying of the displayed text to the selected second display. In so construing claim 1, we note that the term displayed text finds antecedent basis in the first selecting step. Because claim 1 does not require copying the displayed text from the buffer to the second display only after the copied text is first displayed in the text window, Appellant’s arguments are not commensurate in scope with claim 1 and are therefore not persuasive of Examiner error. For the reasons supra we find Appellant’s arguments unpersuasive of Examiner error in connection with the rejection of claim 1. Therefore, we sustain the rejection of independent claim 1 and, for similar reasons, the rejection of independent claims 11, 21, and 31 under 35 U.S.C. § 102(e) as being anticipated by Andrade together with the rejection of dependent claims 2, 3, 8, 12, 13, 18, 22, 23, 28, 32, 33, and 37, not separately argued. For similar reasons we sustain the rejections of dependent claims 4, 9, 14, Appeal 2011-012022 Application 11/478,710 8 19, 24, 29, and 34 under 35 U.S.C. § 103(a) over Andrade and Scott and claims 6, 16, 26, and 36 over Andrade and Official Notice, these dependent claims not separately argued. Claim 5 The Examiner rejects claim 5, finding Andrade’s test applications disclose a handwriting application. Ans. 4. Appellant contends, “Andrade has no disclosure concerning a handwriting recognition application.” App. Br. 26. We disagree with the Examiner that Andrade’s text applications disclose a handwriting application and instead agree with Appellant, finding no disclosure of a handwriting recognition application in the portions of Andrade cited by the Examiner. Therefore, we reverse the rejection of claim 5 and, for similar reasons, the rejection of claims 15, 25 and 35 under 35 U.S.C. § 102(e) as being anticipated by Andrade. Claim 7 The Examiner finds Andrade’s displayed text without visible citations changes the text, thereby disclosing the disputed claim language of claim 7. Ans. 5. Appellant contends: Since the rejection of claim 1 relies on Andrade’s copy buffer 302 as reading on the claimed text window, a logical rejection of claim 7 would have the text as present in Andrade’s copy buffer 302 as being changed prior to being pasted to the text window (notably, which the rejection considers Andrade’s copy buffer 302 to also read on). There is no opportunity to change the text lying within Andrade’s copy buffer 302, since as detailed above for claim 1 the contents of Andrade’s copy buffer is not until pasted, and then is displayed not as the copy Appeal 2011-012022 Application 11/478,710 9 buffer itself but as pasted within Andrade’s destination document. App. Br. 27-28. Because claim 7 requires changing the text displayed in the text window to occur prior to the second copy operation, i.e., copying the displayed text from the buffer to the second display location, it also requires the text be displayed prior to the second copy operation. While we find that claim 1 does not recite such a temporal ordering of operations, claim 7 does so specify. Because Andrade does not display the copied text until it has been pasted into the document at step 416, it fails to disclose changing the text displayed in the text window prior to copying text from the buffer to the second display as require by claim 7. Therefore, we reverse the rejection of claim 7 and, for similar reasons, the rejection of claims 17 and 27 under 35 U.S.C. § 102(e) as being anticipated by Andrade. Claim 10 The Examiner finds “Scott discloses a handheld wireless communication device (Scott paragraph 0017).” Ans. 7. Appellant contends the Examiner fails to address, and neither Andrade nor Scott teaches, the disputed language of claim 10, including “in which the first signal is generated automatically when the pen is lifted from the touch sensitive surface after the displayed text is selected.” We agree with Appellant, finding no teaching of the disputed limitation in the cited portions of Andrade and Scott. Therefore, we reverse the rejection of claim 10 and, for similar reasons, the rejection of claims 20 and 30 under 35 U.S.C. § 103(a) over Andrade and Scott. Appeal 2011-012022 Application 11/478,710 10 NEW GROUND OF REJECTION The following new grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b). Claims 11-20 are rejected under 35 U.S.C. § 101 as being directed towards non-statutory subject matter. Claims 11-20 recite a computer readable memory. Appellant’s Specification describes, “[f]or the purposes of this invention the memory 14 may be considered to be a computer readable medium.” Spec. 5. There is no specific definition of what is meant by computer readable medium. Absent any such definition, we find Appellant’s invention encompasses transitory propagating signals, which are unpatentable under 35 U.S.C.§ 101. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (Transitory embodiments are not directed to statutory subject matter.); Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential); Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, p. 2 (Aug. 24, 2009), available at http://www.uspto.gov/patents/law/comments/2009-08- 25_interim_101_instructions.pdf; see also David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010). CONCLUSIONS 1. The Examiner did not err in finding Andrade’s step 408 of displaying copied text pasted into a text window is responsive to a first signal. 2. The Examiner erred in finding Andre discloses a handwriting recognition application, as required by claim 5. Appeal 2011-012022 Application 11/478,710 11 3. The Examiner erred in finding Andre discloses changing text display in the text window prior to copying the displayed text from the buffer to the second display location, as required by claim 7. 4. The Examiner erred in finding Scott teaches the first signal is generated automatically when the pen is lifted from the touch sensitive surface after the display text is selected, as required by claim 10. 5. The Examiner erred in rejecting claims 5, 7, 15, 17, 25, 27, and 35 under 35 U.S.C. § 102(e) as being anticipated by Andrade. 6. The Examiner did not err in rejecting claims 1-3, 8, 11-13, 18, 21-23, 28, 31-33, and 37 under 35 U.S.C. § 102(e) as being anticipated by Andrade. 7. The Examiner erred in rejecting claims 10, 20, and 30 under 35 U.S.C. § 103(a) over Andrade and Scott. 8. The Examiner did not err in rejecting claims 4, 9, 14, 19, 24, 29, and 34 under 35 U.S.C. § 103(a) over Andrade and Scott. 9. The Examiner did not err in rejecting claims 6, 16, 26, and 36 under 35 U.S.C. § 103(a) over Andrade and Official Notice. 10. A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b), and claims 11-20 are rejected under 35 U.S.C. § 101 as being directed towards non-statutory subject matter. DECISION The decision of the Examiner to reject claims 5, 7, 10, 15, 17, 20, 25, 27, 30, and 35 is reversed. The decision of the Examiner to reject claims 1-4, Appeal 2011-012022 Application 11/478,710 12 6, 8, 9, 11-14, 16, 18, 19, 21-24, 26, 28, 29, 31-34, 36, and 37 is affirmed. We enter a new ground of rejection of claims 11-20. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50 (b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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-IN-PART 37 C.F.R. § 41.50(b) bab Copy with citationCopy as parenthetical citation