"Well Known" asserted by Examiner

The Action rejects claim 11 under 35 U.S.C. § 103(a) as allegedly being unpatentable over Cheung in view of what was alleged to be well-known in the networking art. The Action states that “the use of expiration dates for assigned attributes were well-known at the time of the invention.” Applicants disagree, and traverse. Applicants respectfully request that the examiner produce authority for his statement that “the use of expiration dates for assigned attributes were well- known at the time of the invention. “See Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 ("[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings" to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual statements and explanation to support the finding. See 37 CFR 1.104(d)(2).” MPEP 2144.03

New Claims

Support for New Claim
There is support for the subject matter of the new claim throughout the Specification and Figures as originally filed. Additionally, the Applicants provide the following example of support:
Claim 37: 4:6 to 4:8.

Telephonic Interview

Telephonic Interview
Applicant wishes to thank the Examiner for extending a brief telephonic Examiner Interview on September 9, 2008. Priority date problems with the cited art were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s discussion.

Co owned patent Cannot use patent as 103 reference

Lawler, U.S. Patent 5,907,323, Cannot Be Used as a 103 Reference.
35 U.S.C. §103(c)(1) states:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The instant application was assigned to Microsoft (through its parent application, No. 09/870,267, now issued as U.S. Patent 7,383,564), on June 21, 2004, at reel 014754, frames 0553-0565. Lawler, patent 5,907,323 (“Lawler ‘323”) (Application number 08/969,979) also is assigned to Microsoft, as can be seen on the front of the Lawler patent.
Lawler ‘323 qualifies as prior art to the instant application only under subsection (e) of section 102, as Lawler’s first publication date was its issue date of May 25, 1999. The priority date of the instant application is November 30, 1998. Further, Lawler ‘323 and the instant application were, to the knowledge of the undersigned attorney, at the time the claimed invention was made, both owned by Microsoft. Therefore, Lawler ‘323 cannot be used by the Office as a 35 U.S.C. §103 prior art reference. Lawler ‘323 is incorporated into the instant application by reference in the Specification on page 9, lines 24 through 26 as application number 08/969,979.

103 Header

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).

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.

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.

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.

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.

Examiner misses claim elements, whole claims

Finality of the Next Action Is Precluded
Applicants note the Office Action does not specifically reject the core feature of independent claim 1 . Indeed, although the Summary of the Office Action indicates that claim 1 stands rejected, the Detailed Action omits any explanation of how any cited art anticipates the core feature “via application of the one or more subtractive filters, determining intersection of the associated sets of user interface element definitions as a display set of user interface element definitions….” of this claim. Applicants respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicants. Consequently, a next Office action rejecting claim 1 cannot properly be made final since only then would the Applicant be obligated to rebut the rejection, presuming that such an Office action sets forth a prima facie case. (See MPEP § 706.07(a)).