Claims 26-27.
The Action rejects claims 26 under 35 U.S.C § 103(a) as unpatentable over Friedman in view of Gupta.
Neither Friedman nor Gupta teaches or suggests the claim 26 language:
a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system;
the process, using an interface to the system level service add-in manager, selecting an enumerated media filter; and
the process invoking the selected media filter outside of the process so that an error within the filter will not cause the process to fail during operation;
wherein the selected media filter can receive its input from a different media filter A and provide its output directly to a different filter B as directed by the process, and wherein the selected media filter is not installed within the process.
The Action concedes that neither Friedman nor Gupta disclose the above features of claim 26. [Action, p. 11.] However, the Action states that it would be obvious to add them, with no suggestion or teaching required, to Friedman.
To render claim 26 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Friedman and Gupta must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Rather, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Thus, obviousness requires a suggestion of all limitations in a claim.” In re Wada, citing CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333 (Fed. Cir. 2003, emphasis added).
As the limitations of claim 26, above, are conceded by the Office to neither be taught nor suggested by either the primary or the secondary reference, a prima facie case has not been made against claim 26.
KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” [KSR Opinion at p. 14]. Further, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” [KSR Opinion at p. 15].
The Action has failed provide such articulated reasoning. In determining that it is obvious to add the undisclosed claim feature “a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system,” (emphasis added) the Action states: “It would have been obvious for one of skill in the art at the time the invention was made to implement Friedman’s installation so that the ID of the codecs would have a registry entry based on the well-known practice for incorporating codecs in the OS and registry with regard to Windows installing practices for future access verification or upgrade … to the corresponding Windows media applications.” [Action, page 11, internal cites omitted.] However, the claim language reads “…to enumerate at least one category…” The stated reasons for combination do not discuss categories at all and as such fail to provide “articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” For at least this further reason, claim 26 is in condition for allowance.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 26 and its dependent claim 27 under 35 U.S.C. §103 is respectfully requested. Claim 27 also recites novel and nonobvious features allowable over the Friedman-Gupta combination.
Wednesday, September 17, 2008
Tuesday, September 16, 2008
Conclusory Obviousness Statements
Second, regarding the Examiner’s obviousness argument, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states:
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
Tuesday, September 9, 2008
"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.
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.
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.
Monday, September 8, 2008
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.
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.
Tuesday, August 12, 2008
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).
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.
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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