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.
Showing posts with label 112. Show all posts
Showing posts with label 112. Show all posts
Tuesday, August 12, 2008
Thursday, July 31, 2008
112 computer readable medium not mentioned in spec
Claims 17-20 have been rejected under the first paragraph of 35 U.S.C. § 112 for allegedly failing to comply with the written description requirement. Specifically, the Action contends that Applicant’s disclosure does not sufficiently describe the limitation of a “computer-readable medium” of amended claims 17-20. This contention is respectfully traversed. Video arrays, various types of ….etc.
As the Office Action notes, independent claim 17 recites a computer readable medium. Applicant submits that one of ordinary skill in the art would reasonably conclude that Applicant’s disclosure adequately described the claimed invention at the time of filing at least because:
(1) the feature of a computer readable medium is at least impliedly taught by the present application as it was originally filed; and
(2) art to which the disputed limitation belongs (basic computer configurations) is mature and the predictable nature of the art mandates a generally lower showing of possession.
A review of the present application reveals that Applicant describes a user interface for use with a video on demand system. [See Specification, e.g., page 5, line 25 to page 6, line 3, Fig. 3 at 56.] This interface is stored as instructions within RAM memory. [Id. Also see Specification, e.g., page 4, lines 23-28 for further discussion of the RAM memory.] Other computer readable media are also mentioned; e.g., non-volatile memory [e.g., block 42 in Fig. 2] including ROM, EPROM, flash memory, and magnetic disk storage [Specification, page 4 lines 25-28].
Those of ordinary skill in the art would understand that such a disclosure at least implies (and arguably expressly describes) that such a RAM memory is a computer-readable medium. Further, one of ordinary skill in the art would recognize that such computer instructions would be stored internally in non-volatile memory, and can also be stored on other computer-readable media, such as removable disks, CD-ROMs, or any other medium which can be used to store information.
In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would reasonably conclude that Applicant possessed the claimed language on the basis of the aforementioned at least implicit descriptions. Applicant further submits that this conclusion is buttressed by the maturity and predictability of the art and because an adequate disclosure need not be express or even implied. Thus, the present application adequately describes the claimed invention.
Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.
In the event that the Office maintains this rejection, Applicant respectfully requests, in the interest of its policy of compact prosecution, that the Office explain how the aforementioned portions of the present application fail to communicate to a skilled artisan that Applicant possessed the claimed invention.
As the Office Action notes, independent claim 17 recites a computer readable medium. Applicant submits that one of ordinary skill in the art would reasonably conclude that Applicant’s disclosure adequately described the claimed invention at the time of filing at least because:
(1) the feature of a computer readable medium is at least impliedly taught by the present application as it was originally filed; and
(2) art to which the disputed limitation belongs (basic computer configurations) is mature and the predictable nature of the art mandates a generally lower showing of possession.
A review of the present application reveals that Applicant describes a user interface for use with a video on demand system. [See Specification, e.g., page 5, line 25 to page 6, line 3, Fig. 3 at 56.] This interface is stored as instructions within RAM memory. [Id. Also see Specification, e.g., page 4, lines 23-28 for further discussion of the RAM memory.] Other computer readable media are also mentioned; e.g., non-volatile memory [e.g., block 42 in Fig. 2] including ROM, EPROM, flash memory, and magnetic disk storage [Specification, page 4 lines 25-28].
Those of ordinary skill in the art would understand that such a disclosure at least implies (and arguably expressly describes) that such a RAM memory is a computer-readable medium. Further, one of ordinary skill in the art would recognize that such computer instructions would be stored internally in non-volatile memory, and can also be stored on other computer-readable media, such as removable disks, CD-ROMs, or any other medium which can be used to store information.
In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would reasonably conclude that Applicant possessed the claimed language on the basis of the aforementioned at least implicit descriptions. Applicant further submits that this conclusion is buttressed by the maturity and predictability of the art and because an adequate disclosure need not be express or even implied. Thus, the present application adequately describes the claimed invention.
Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.
In the event that the Office maintains this rejection, Applicant respectfully requests, in the interest of its policy of compact prosecution, that the Office explain how the aforementioned portions of the present application fail to communicate to a skilled artisan that Applicant possessed the claimed invention.
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