Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Nov 16, 2021

2020004105 (P.T.A.B. Nov. 16, 2021)

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.
14/548,607 11/20/2014 John Weldon Nicholson RPS920140030USNP(710.353) 7052
58127 7590 11/16/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
WATKO, JULIE ANNE
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
11/16/2021 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 JOHN WELDON NICHOLSON and
SCOTT EDWARDS KELSO
____________________

Appeal 2020-004105
Application 14/548,607
Technology Center 2600
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–5 and 7–21.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.3

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The real party in interest is Lenovo (Singapore) PTE.
LTD. (Appeal Br. 3.)
2 Claim 6 has been cancelled. (See Final Act. 1.)
3 Our Decision refers to Specification (“Spec.”) filed November 20, 2014,
Final Office Action (“Final Act.”) mailed September 13, 2019, Non-Final
Office Action (“Non-Final Act.”) mailed May 28, 2019, Appeal Brief
(“Appeal Br.”) filed February 13, 2020, Examiner’s Answer (“Ans.”) mailed
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Application 14/548,607

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CLAIMED INVENTION
The claims are directed to an information handling device and method
for “modifying content with [a] single modifier key” by detecting a modifier
key input comprising input from a single modifier key location, determining
location of a cursor, and modifying at least one character associated with the
detected location based upon the modifier key input. (Title (capitalization
altered); Spec. ¶¶ 2–3.)
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method, comprising:
receiving, from an input device, user input comprising a
character;
detecting, at an input device, a modifier key input,
wherein the modifier key input comprises input from a modifier
key alone without input from another key in conjunction with
the input of the modifier key, wherein the modifier key
comprises a key of a keyboard that modifies the action of
another keyboard key;
determining a location of a cursor; and
modifying at least one character of the user input
proximate to the location of a cursor based upon the modifier
key input.

(Appeal Br. 25–29 (Claims App.).)

REJECTIONS AND REFERENCES
Claim 21 stands rejected under 35 U.S.C. § 112(b), as indefinite.
(Final Act. 2.)

March 23, 2020, and Reply Brief (“Reply Br.”) filed May 12, 2020.
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Claims 1, 3–5, 8, 10, 12, 14–16, 18, 20, and 21 stand rejected under
35 U.S.C. § 103 based on Woods (US 6,965,372 B1, issued Nov. 15, 2005)
(“Woods”) and Daioku (US 2005/0184999 A1, published Aug. 25, 2005)
(“Daioku”). (Final Act. 3 (citing Non-Final Act.).)
Claims 2, 9, 13, and 19 stand rejected under 35 U.S.C. § 103 based on
Woods, Daioku, and Griffin et al. (US 2014/0149870 A1, published May 29,
2014) (“Griffin”). (Final Act. 3 (citing Non-Final Act.).)
Claims 7, 11, and 17 stand rejected under 35 U.S.C. § 103 based on
Woods, Daioku, and Moon (US 2011/0304483 A1, published Dec. 15, 2011)
(“Moon”). (Final Act. 3 (citing Non-Final Act.).)

ANALYSIS
§ 112(b) Rejection of Claim 21
Page 15 of the Appeal Brief notes, “Applicant does not argue this
rejection on appeal and would be willing to [amend claim 21]” to overcome
the indefiniteness rejection. (See Appeal Br. 15.) An amendment to claim
21, however, has not yet been entered, and the Examiner has not withdrawn
the rejection. As Appellant has not identified an error in the Examiner’s
indefiniteness rejection, we sustain the § 112(b) rejection of claim 21 pro
forma.
§ 103 Rejection of Claims 1–5 and 7–21
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir.
2006). We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
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(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s obviousness rejections for the reasons expressed in the Final
Office Action and the Examiner’s Answer. We add the following primarily
for emphasis.
With respect to the rejection of claim 1, Appellant argues the
Examiner’s combination of Woods and Daioku does not teach or suggest
“detecting, at an input device, a modifier key input, wherein the modifier
key input comprises input from a modifier key alone without input from
another key in conjunction with the input of the modifier key” and “wherein
the modifier key comprises a key of a keyboard that modifies the action of
another keyboard key,” as claimed. (Appeal Br. 18–21; Reply Br. 20–23.)
In particular, Appellant argues Woods’ “single key only performs a single
function (e.g., bolding later typed text in the case of key 21) and does not
function as a traditional modifier key” which “is programmed to modify the
action of another keyboard key, for example, the shift key, control key,
insert key, function key, windows key, and the like.” (Appeal Br. 19–21.)
Appellant further argues Daioku does not teach or suggest “a modifier key
input comprising input from a single modifier key location” or “wherein the
modifier key comprises a key of a keyboard that modifies the action of
another keyboard key.” (Appeal Br. 21; Reply Br. 23.) Appellant also
argues Daioku does not teach or suggest “modifying at least one character of
the user input proximate to the [determined] location of a cursor based upon
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the modifier key input,” as claimed; rather, “Diaoku [sic] modifies a selected
word, but not a word that is ‘proximate to the location of a cursor,’” as
claimed. (Appeal Br. 22; Reply Br. 24.) Appellant explains, “the user [in
Daioku] selects the word very [(the word to be modified)] with a cursor
(e.g., a mouse pointer), and then when the user selects the modification to be
made to the word, the cursor moves to the modification icon” and “does not
‘stay’ with the selected word when a modification is selected.” (Appeal Br.
22 (emphases added).) Appellant further argues the Examiner’s
combination of Woods and Daioku lacks articulated reasoning, as
the Office has failed to show not only why one of ordinary skill
in the art would be motivated to combine Woods and Daioku, but
also how the combination of Woods and Daioku is supposed to
work, and how the combination of Woods and Daioku would
result in the claimed limitations.
(Reply Br. 19–20; see also Appeal Br. 18.)
We are not persuaded by Appellant’s arguments, and agree with the
Examiner that the asserted combination of Woods and Daioku teaches the
steps performed with a modifier key, as recited in claim 1. (See Final Act.
3–6 (citing Non-Final Act.); Non-Final Act. 4–6; Ans. 3–17.) At the outset,
we note Appellant has submitted arguments unsupported by corresponding
language in claim 1. (Ans. 11–14.) For example, claim 1 does not require
the “modifier key” to be a “traditional modifier key that is programmed to
modify the action of another keyboard key, for example, the shift key,
control key, insert key, function key, windows key” (as Appellant argues, see
Appeal Br. 19–20 (emphases added); Reply Br. 21–22.) Rather, claim 1
recites a “modifier key [that] comprises a key of a keyboard that modifies
the action of another keyboard key.” (See Appeal Br. 25 (claim 1).) We
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agree with the Examiner that such a modifier key is taught by (i) Woods’
Bold key 21, which modifies the action of keyboard text keys by causing
“later typed text to appear in a bold font style” (see Woods 5:24–27), and
(ii) Daioku’s palette item “2” (the ITALICS key) which modifies the action
of keyboard text keys by changing a “selected character string, i.e., ‘very’ . . .
into italics” (see Daioku ¶ 105, Fig. 10B). (Ans. 4–5, 8–10, 13, 15–16
(citing Woods 5:9–28, Fig. 2; Daioku ¶¶ 102, 104–105, Figs. 10B–10C).)
Appellant insists that “Diaoku [sic] does not mention . . . ‘wherein the
modifier key comprises a key of a keyboard that modifies the action of
another keyboard key’” and Woods’ Bold key “is not a modifier key that
‘comprises a key of a keyboard that modifies the action of another key’ . . .
[r]ather, the function keys of Woods are intended to act alone without input
from another key.” (Reply Br. 23.) Appellant’s arguments are not
persuasive because the modifier keys of Woods and Daioku (e.g., Woods’
Bold key and Daioku’s ITALICS key) modify text entered by text keys, which
is commensurate with the description of “a key of a keyboard that modifies
the action of another keyboard key” in Appellant’s Specification. (Ans. 9,
14.)
In particular, Appellant’s Specification provides that a modifier key of
a keyboard that modifies the action of another keyboard key (as claimed)
may “modify the user input preceding the cursor by italicizing the user
input,” “cause the character to be capitalized,” or “capitalize the first letter
of the character string.” (See Spec. ¶¶ 18, 36, 40 (emphases added); see also
id. ¶¶ 13, 34, 37–39, 41–42 (providing more examples of modifier keys that
modify a user’s text input).)
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Appellant additionally asserts “Diaoku [sic] does not teach, or even
suggest, ‘a modifier key input comprising input from a single modifier key
location’” and “notes that the Office does not allege that Daioku does teach,
or suggest, such limitations.” (Reply Br. 23.) Appellant’s arguments
overlook the Examiner’s findings that Daioku’s palette item “2” (the
ITALICS key) teaches a “single modifier key” that “functions without
needing to be pushed simultaneously with the pushing of any other key,”
such that when “Diaoku’s [sic] ‘2ITALICS’ key is pressed . . . [the] key
modifies the action of previously typed keyboard keys (such as V, E, R, and
Y) by italicizing text previously typed and selected with a cursor.” (Ans. 5,
10, 15–16 (citing Daioku ¶¶ 102, 104–105, Figs. 10B–10C).) The Examiner
then concludes that Daioku’s description of the operation of its ITALICS key
“falls within the broadest reasonable interpretation, consistent with the
specification, of [the claimed] ‘input from a modifier key alone without
input from another key in conjunction with the input of the modifier key.’”
(Ans. 10.) We agree with the Examiner’s findings and conclusion, and note
that claim 1 is broad and does not preclude additional steps—such as steps
that would select or highlight (as Daioku does) the “user input comprising a
character” before that character is modified “based upon the modifier key
input.” (Ans. 12–13, 15–16.)
Appellant further argues the cited art does not teach or suggest
“modifying at least one character of the user input proximate to the
[determined] location of a cursor based upon the modifier key input,” as
recited in claim 1. (Appeal Br. 20–22; Reply Br. 22–24.) In particular,
Appellant argues “Woods does not modify at least one character associated
with the location of a cursor based upon the modifier key input,” rather,
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“Woods . . . modifies text that is later typed.” (Appeal Br. 20; Reply Br. 22.)
Appellant also argues “Diaoku [sic] modifies a selected word, but not a word
that is ‘proximate to the location of a cursor,’” as required by claim 1.
(Appeal Br. 22; Reply Br. 24.) Appellant explains, “the user [in Daioku]
selects the word very [(the word to be modified)] with a cursor (e.g., a
mouse pointer), and then when the user selects the modification to be made
to the word, the cursor moves to the modification icon” and “does not ‘stay’
with the selected word when [the] modification is selected.” (Appeal Br. 22
(emphases added); Reply Br. 24.)
We remain unpersuaded by Appellant’s arguments for the following
reasons. Although (as noted by Appellant) one cursor of Daioku is at the
modification icon (the ITALICS key) when that key is selected, the Examiner
finds that Daioku provides a second cursor proximate to the location of the
user’s typed input (e.g., the word “VERY” in Daioku’s Figure 10B). (Ans.
16–17.) More particularly, the Examiner finds claim 1 does not preclude the
use of two cursors,4 and
Fig. 10B of Daioku shows two cursors. The appearance of a
cursor around the “2ITALICS” button exists simultaneously (see
Fig. 10B) with the cursor existing at the word “VERY”. The
selected text cursor’s location is the location where modification
occurs. The cursor at the selected word “VERY” persists (see
Fig. 10B) until the action of the earlier-typed keys (V, E, R, and
Y) is successfully modified by italicizing (see Fig. 10C).
. . . This same location [at the selected word “VERY”] is the
location where modification occurs. . . . Four characters

4 Incidentally, we note that claim 1 also does not appear to exclude a
Backspace or Delete key from the claimed “modifier key,” and does not
appear to exclude conventional text deletion (as performed by a Delete key,
such as the one taught in Woods, see Woods 3:14) from the claimed
“modifying.”
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proximate to the location of the cursor in Fig. 10B are the VERY
same four characters modified as shown in Fig. 10C.

(Ans. 16–17.)
We agree with the Examiner’s findings, which Appellant has not
persuasively rebutted in the Reply Brief.5 For example, Appellant does not
explain why Daioku’s graphical selection of a character string (e.g., boxed
selection of “VERY” in Figure 10B) would not disclose a “cursor at the
selected word ‘VERY’ [that] persists . . . until the action of the earlier-typed
keys (V, E, R, and Y) is successfully modified by italicizing” (as asserted by
the Examiner, see Ans. 16).
As to Appellant’s arguments that the Examiner’s combination of
Woods and Daioku is improper (see Appeal Br. 15–18, Reply Br. 17–20),
the Examiner has articulated sufficient reasoning for using Woods’ Bold key
to modify earlier-typed text at a cursor location (as taught by Daioku).
(See Ans. 5–9.) In particular, the Examiner notes:
modification of later-typed text and modification of earlier-typed
text were both known in the art. In fact, some of the
modifications disclosed by Woods (bold, italics) are identical to
modifications appearing in Daioku (bold, italics). Furthermore,
these disclosures are in the same field of endeavor, i.e.,
decorating text. Putting the disclosures together in this way was
within the level of ordinary skill in the art . . . .
. . . .
. . . Woods’s bolding of text and . . . Daioku’s italicizing of text
are quite the same problem, and are within quite the same field
of endeavor. . . .
. . . .
. . . [T]he solutions of Woods and Daioku are usable together
with a reasonable expectation of success. Woods and Daioku

5 It appears the Reply Brief merely restates the “cursor” arguments from the
Appeal Brief. (See Reply Br. 22–24; Appeal Br. 21–22.)
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both disclose modifier keys. Woods’s modifier key modifies (by
bolding or italicizing, for example) the functioning of later-typed
keys. Daioku’s modifier key modifies (by bolding or italicizing,
for example) the functioning of earlier-typed keys. The Examiner
finds that a person of ordinary skill has a reasonable expectation
of success in applying the same modifier key to both earlier-
typed and later-typed text. No expectation of failure appears in
this combination. The combination allows a writer to change her
mind about what words to emphasize and how much emphasis to
use.
(Ans. 5–8 (citing Woods 5:9–28, Fig. 2; Daioku ¶¶ 102, 104–105, Figs.
10B–10C).) We agree with the Examiner’s findings (which are supported
by the disclosures of Woods and Daioku) and reasoned rationale to combine
the references.
Additionally, with respect to Appellant’s argument that “the reason to
combine the references, as stated by the Office . . . is not germane to the
present application” (see Reply Br. 18; Appeal Br. 17), we note a motivation
to combine the references need not come from Appellant’s disclosure.
Rather, “the requisite motivation can come from any number of sources and
need not necessarily be explicit in the art” or coincide with the inventor’s
motivation. See Eisai Co. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1357
(Fed. Cir. 2008); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill [in the art] has good reason to pursue the known options
within his or her technical grasp.”). Here, we find no error in the
Examiner’s rationale that a skilled artisan in this art would have found it
prima facie obvious to configure a modifier key (such as Woods’ Bold key)
to modify earlier-typed text at a cursor location (as taught by Daioku) “to
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alternate between composition and revision throughout the writing process”
and “allow[] a writer to change her mind about what words to emphasize and
how much emphasis to use.” (Ans. 5–8; see also Final Act. 3–4 (citing Non-
Final Act.); Non-Final Act. 5–6; DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)
(“[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient,”
and “[b]ecause the desire to enhance commercial opportunities by improving
a product or process is universal—and even common-sensical—we have
held that there exists in these situations a motivation to combine prior art
references even absent any hint of suggestion in the references themselves.
In such situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining the
prior art references.”).)
As Appellant’s arguments have not persuaded us of error in the
Examiner’s obviousness rejection of claim 1, we sustain the Examiner’s
§ 103 rejection of claim 1, independent claims 12 and 21 argued together
with claim 1, and dependent claims 2–5, 7–11, and 13–20 not separately
argued. (See Appeal Br. 14–15; Reply Br. 16.)

DECISION SUMMARY
The Examiner’s rejection of claim 21 under 35 U.S.C. § 112(b) is
AFFIRMED.
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The Examiner’s rejections of claims 1–5 and 7–21 under
35 U.S.C. § 103 are AFFIRMED.
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
21 112(b) Indefiniteness 21
1, 3–5, 8,
10, 12, 14–
16, 18, 20,
21
103 Woods, Daioku 1, 3–5, 8, 10,
12, 14–16,
18, 20, 21

2, 9, 13, 19 103 Woods, Daioku,
Griffin
2, 9, 13, 19
7, 11, 17 103 Woods, Daioku,
Moon
7, 11, 17
Overall
Outcome
1–5, 7–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED