NOKIA CORPORATION OY

Patent Trials and Appeals Board

Apr 1, 2021

2019003748 (P.T.A.B. Apr. 1, 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.
14/655,278 06/24/2015 Hongrui SHEN 1004289.897US 3093
10928 7590 04/01/2021
Locke Lord LLP
IP Docket Department
P.O. BOX 55874
Boston, MA 02205
EXAMINER
BARRETT, RYAN S
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HONGRUI SHEN, BING LIN, JING WU,
NAICHEN CUI, BIN GAO, and ZHUOYUAN LIAO
____________

Appeal 2019-003748
Application 14/655,278
Technology Center 2100
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 4–15, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies NOKIA TECHNOLOGIES OY as
the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to text entry in portable electronic
devices. Spec. 1:5–10. According to Appellant’s invention, as shown below
in Figure 4a of the Specification, a user in the process of entering text into
message field 432 is able to see in recipient field 433 the already-entered
email address, as well as the sender address in sender field 434 and subject
in subject field 435. Id. at 11:4–12, 11:19–24.

When the user is in the process of entering text, for example in
message field 432, based on the text string being entered, some or all of the
already-displayed text will then be made selectable as candidate text strings
in order to allow a user to adapt the entered text string using a candidate text
string. Id. 11:34–13:9. For example, as shown below in Figure 4b of the
Specification, when text string 441a (“Pa”) is entered, two candidate text
strings 442b (“Paul”) and 442a (“Paul.Hines@pullarius.com”) are
highlighted with a border displayed around them. Id. at 12:27–12:35.
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The user may select a candidate text string, for example by tapping
the area within the highlighted border, and in response, entered text string
441a is adapted by replacing entered text string 441a with the selected
candidate text string 442a or 442b. Id. at 13:1–9.
Claims 1, 13, and 14 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal (emphasis added):
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code,
the at least one memory and the computer program code
configured, with the at least one processor, to cause the apparatus to
perform at least the following:
based on an entered text string, enable selection of at least a part
of a presented full text string as an adaptation for the entered text string
by a user interaction with the presented full text string itself, the
presented full text string being presented to the user prior to initiation
of entry of the entered text string; and
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highlight the presented full text string as a candidate to allow for
selection of the presented full text string.
Appeal Br. 20 (Claims App.).
REJECTIONS
The Examiner rejects claims 1, 2, 4, 6, and 8–15 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Karlsson2 and Yamada.3
Final Act. 4–12.
The Examiner rejects claims 5 and 7 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Karlsson, Yamada, and Wassingbo.4
Final Act. 12–13.
OPINION
Appellant argues that the combination of Karlsson and Yamada fails
to teach or suggest that the “presented full text string [is] presented to the
user prior to initiation of entry of the entered text string” as recited in
independent claims 1, 13, and 14. Appeal Br. 17–18; Reply Br. 3–4.
Specifically, Appellant argues that Karlsson’s “predicted additional words or
phrases (or, in the case of Yamada, the predicted e-mail address) displayed
to the user from which a user selection may be made are displayed only after
initiation of entry of an entered text string by the user.” Appeal Br. 17
(emphases omitted) (citing Karlsson Figs. 4–5, ¶¶ 57, 72); see Yamada
Figs. 9A–C.

2 Karlsson, US 2010/0245261 A1 (pub. Sept. 30, 2010).
3 Yamada et al., US 2012/0084075 A1 (pub. Apr. 5, 2012).
4 Wässingbo, US 2011/0289406 A1 (pub. Nov. 24, 2011).
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We agree with Appellant. The Examiner finds that Karlsson teaches
presenting a presented full text string to the user prior to initiation of entry of
an entered text string. Final Act. 5 (citing Karlsson Fig. 4, ¶ 56). The
claims further require that “selection of at least a part of [the] presented full
text string” is enabled “based on [the] entered text string.” For that further
limitation, the Examiner relies on Yamada’s teaching of an auto-complete
function which enables selection of a full e-mail address (e.g.,
“andrew@abc.com”) based on a string of leading characters (e.g., “an”)
entered by the user. Final Act. 5 (citing Yamada Figs. 9A–C). However, as
Appellant points out, the full e-mail address (“andrew@abc.com”) is not
presented to the user prior to initiation of entry of the character string (“an”),
but rather after the user has entered the character string. Yamada
¶¶ 105–110; see Appeal Br. 17; Reply Br. 3. And, while Karlsson teaches
enabling selection of a full text string (“Good morning! How’s it going?”)
based on an entered text string (“Good morning”), that full text string
(“Good morning! How’s it going?”) is also only presented to the user as a
result of the user’s entered text string (“Good morning”). Karlsson Fig. 5,
¶ 57; see Appeal Br. 17–18; Reply Br. 3.
The Examiner reasons that
Karlsson discloses [in Figure 4] an apparatus capable of
highlighting a text string that is presented to the user before the
user has started to enter text. . . . The difference is that Karlsson
highlights based on pointing input while the instant Application
highlights based on text input. Yamada highlights predicted text
based on text input. Using this teaching to modify Karlsson
allows Karlsson to perform the same highlighting of a text string
that is presented to the user before the user has started to enter
text, but instead based on text input. This may be advantageous
when there are many text strings presented to the user before the
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user has started to enter text and can help the user focus on a
small subset of them.
Ans. 5; see Final Act. 5 (citing Karlsson Fig. 4).
However, we agree with Appellant that modifying Figure 4 of
Karlsson in view of Yamada’s auto-complete function at best would have
resulted in “present[ing] and highlight[ing] a candidate for user selection
directly in the input field 66 of the electronic device of Karlsson,” or
“present[ing] in a new display candidates for user selection (as in the
predictive text functionality of Karlsson shown in the transition from Fig. 4
to Fig. 5 of Karlsson . . . in response to a user’s input of text in the input
field 66.” Reply Br. 3. The combination of Karlsson and Yamada fails to
teach or suggest enabling selection of at least a part of a presented full text
string based on an entered text string, “the presented full text string being
presented to the user prior to initiation of entry of the entered text string,” as
claimed.
Accordingly, we do not sustain the Examiner’s § 103 rejections of
claims 1, 2, and 4–15.
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CONCLUSION
The Examiner’s rejections of claims 1, 2, and 4–15 under 35 U.S.C.
§ 103 are reversed.
DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6,
8–15
103 Karlsson, Yamada 1, 2, 4, 6,
8–15
5, 7 103 Karlsson, Yamada,
Wassingbo
5, 7
Overall
Outcome
1, 2, 4–15