Claim Rejections under 35 USC § 103
Claims 1, 2 and 5-12 are rejected under 35 U.S.C. § 103(a) as being anticipated by Apple in view of Berry. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Apple and Berry and further in view of Peach.
Applicant respectfully disagrees, and traverses. To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). "All the words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Tuesday, August 12, 2008
Refusal to examine -- claim terms unclear
Refusal to Examine.
The Action declines to perform a prior art rejection on these claims as it is alleged that “it is unclear as to where exactly said transformations/operations are stored.” [Action page 5.] The MPEP states that only “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim” is it proper to not “reject such a claim on the basis of prior art.” [Emphasis added.] Moreover “considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims” is required to properly fail to provide a prior art rejection. [MPEP 2173.06, emphasis added.]
Here, the claim terms at issue are common terms explained and pictured in the Specification and Figures as filed. As only when “considerable speculation” is required about the meaning of claim terms, a rejection under 35 U.S.C. 103 is not proper, and as the claim terms at issue are easily understood, expressly pictured, arguably expressly described, and certainly implicitly described, in no way could “considerable speculation” be required to determine the meaning of the claim terms. Applicant thus respectfully requests that the next application not be made final, and that the next Action properly rejects the claims on the basis of prior art or find the claims allowable.
The Action declines to perform a prior art rejection on these claims as it is alleged that “it is unclear as to where exactly said transformations/operations are stored.” [Action page 5.] The MPEP states that only “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim” is it proper to not “reject such a claim on the basis of prior art.” [Emphasis added.] Moreover “considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims” is required to properly fail to provide a prior art rejection. [MPEP 2173.06, emphasis added.]
Here, the claim terms at issue are common terms explained and pictured in the Specification and Figures as filed. As only when “considerable speculation” is required about the meaning of claim terms, a rejection under 35 U.S.C. 103 is not proper, and as the claim terms at issue are easily understood, expressly pictured, arguably expressly described, and certainly implicitly described, in no way could “considerable speculation” be required to determine the meaning of the claim terms. Applicant thus respectfully requests that the next application not be made final, and that the next Action properly rejects the claims on the basis of prior art or find the claims allowable.
112 Rejection All Language Not rejected
Claims 1-11 and 21-26 are rejected under the first paragraph of 35 U.S.C. § 112, as failing to comply with the written description requirement. Specifically, the Action alleges that the Specification does not describe the limitation "having more characters than the restricted character set" and the limitation is unclear to the Examiner. Applicants respectfully disagree with the Office’s reasoning, and believe that the claims in their original format satisfied 35 U.S.C. § 112, but have amended the claims to expedite prosecution.
When a disclosure describes a claimed invention in a manner that permits one skilled in the art to reasonably conclude that the inventor possessed the claimed invention the written description requirement is satisfied. [MPEP §2163, emphasis added]. This possession may be shown in any number of ways and an Applicant need not describe every claim feature exactly because there is no in haec verba (in the exact language) requirement. [MPEP § 2163.] Rather, to satisfy the written description requirement, all that is required is “reasonable clarity.” [MPEP § 2163.02.] Also, an adequate description may be made in any way through express, implicit, or even inherent disclosures in the application, including words, structures, figures, diagrams, and/or formulae.. [MPEP §§ 2163(I), 2163.02.] Amended claim 1 recites a method to determine and order keyword search terms on a portable electronic device, comprising, e.g.,:
responding to an input sequence associated with a restricted character set having a given number of characters;
mapping the characters of the input sequence to a full character set having more characters than the given number of characters to produce an expanded lookup set; [and]
using the expanded lookup set to search a database of keywords producing keyword results, the keyword results comprising at least one associated keyword;
The amended terms "restricted character set having a given number of characters" and "a full character set having more characters than the given number of characters to produce an expanded lookup set" find support at multiple points through the Application. For example, element 402 of Figure 4 is labeled as "responding to a input sequence using a restricted character set being input" and element 404 is labeled "mapping restricted character set to full character set to produce expanded lookup set." (Emphasis added.) The specification additionally describes a restricted character set being mapped to a fuller character set having more characters than the number of characters in the restricted character set at, for example:
An exemplary embodiment comprises a restricted character set - the numbers 1-0 - mapped onto a full character set, the letters of the alphabet and the original numbers. (Para. 0020)
For example, certain character-based languages such as Chinese have systems where complex characters can be assembled using a series of predefined strokes - this "stroke alphabet" could be the restricted character set. A user may enter the character set using a touch-pad, by pressing a button, by writing on a tablet, by toggling a switch, and so on.
At process block 404 the restricted character set is mapped to a fuller character set. (Paras. 0027, 0028.)
In an alternate embodiment, the transformation maps two roughly equal character sets. In such a case, the English alphabet may be mapped onto the French alphabet, with each English letter (the first character string) transformed into the corresponding set of French letters including those with diacritical marks. So, the "E" would map to "E", "È", "É", and "Ê". (Para. 0055.)
There are also several other points in the specification supporting the above recited language. By way of example, for an embodiment, Para. 0020 describes the restricted character set comprising the numbers 1-0 -- 10 characters; and also describes the full character set as the alphabet, which commonly comprises 26 characters. Those of ordinary skill in the art would understand that such a disclosure clearly discloses mapping the characters of the input sequence to a full character set having more characters than the number of characters (of the restricted set.)
As the above recited amended language is supported by the specification, the §112 rejections of claims 1-11 and 21-26 should be withdrawn. Applicants respectfully request such action.
When a disclosure describes a claimed invention in a manner that permits one skilled in the art to reasonably conclude that the inventor possessed the claimed invention the written description requirement is satisfied. [MPEP §2163, emphasis added]. This possession may be shown in any number of ways and an Applicant need not describe every claim feature exactly because there is no in haec verba (in the exact language) requirement. [MPEP § 2163.] Rather, to satisfy the written description requirement, all that is required is “reasonable clarity.” [MPEP § 2163.02.] Also, an adequate description may be made in any way through express, implicit, or even inherent disclosures in the application, including words, structures, figures, diagrams, and/or formulae.. [MPEP §§ 2163(I), 2163.02.] Amended claim 1 recites a method to determine and order keyword search terms on a portable electronic device, comprising, e.g.,:
responding to an input sequence associated with a restricted character set having a given number of characters;
mapping the characters of the input sequence to a full character set having more characters than the given number of characters to produce an expanded lookup set; [and]
using the expanded lookup set to search a database of keywords producing keyword results, the keyword results comprising at least one associated keyword;
The amended terms "restricted character set having a given number of characters" and "a full character set having more characters than the given number of characters to produce an expanded lookup set" find support at multiple points through the Application. For example, element 402 of Figure 4 is labeled as "responding to a input sequence using a restricted character set being input" and element 404 is labeled "mapping restricted character set to full character set to produce expanded lookup set." (Emphasis added.) The specification additionally describes a restricted character set being mapped to a fuller character set having more characters than the number of characters in the restricted character set at, for example:
An exemplary embodiment comprises a restricted character set - the numbers 1-0 - mapped onto a full character set, the letters of the alphabet and the original numbers. (Para. 0020)
For example, certain character-based languages such as Chinese have systems where complex characters can be assembled using a series of predefined strokes - this "stroke alphabet" could be the restricted character set. A user may enter the character set using a touch-pad, by pressing a button, by writing on a tablet, by toggling a switch, and so on.
At process block 404 the restricted character set is mapped to a fuller character set. (Paras. 0027, 0028.)
In an alternate embodiment, the transformation maps two roughly equal character sets. In such a case, the English alphabet may be mapped onto the French alphabet, with each English letter (the first character string) transformed into the corresponding set of French letters including those with diacritical marks. So, the "E" would map to "E", "È", "É", and "Ê". (Para. 0055.)
There are also several other points in the specification supporting the above recited language. By way of example, for an embodiment, Para. 0020 describes the restricted character set comprising the numbers 1-0 -- 10 characters; and also describes the full character set as the alphabet, which commonly comprises 26 characters. Those of ordinary skill in the art would understand that such a disclosure clearly discloses mapping the characters of the input sequence to a full character set having more characters than the number of characters (of the restricted set.)
As the above recited amended language is supported by the specification, the §112 rejections of claims 1-11 and 21-26 should be withdrawn. Applicants respectfully request such action.
Friday, August 1, 2008
Examiner Interview Language
Telephonic Interview
Applicant wishes to thank the Examiner for extending a telephonic Examiner Interview on September 1, 2006. Claim 11 and Lindstrom were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s description of Lindstrom.
Applicant wishes to thank the Examiner for extending a telephonic Examiner Interview on September 1, 2006. Claim 11 and Lindstrom were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s description of Lindstrom.
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