Ex Parte Dhaundiyal et al

Patent Trial and Appeal Board

Nov 15, 2018

14660853 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/660,853 03/17/2015
108982 7590 11/19/2018
Wolfe-SBMC
116 W. Pacific A venue
Suite 200
Spokane, WA 99201
FIRST NAMED INVENTOR
Rahul Dhaundiyal
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P4225-US 7207
EXAMINER
MERCADO VARGAS, ARIEL
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RAHUL DHAUNDIYAL and AMIT AGARWAL
Appeal 2018-001518
Application 14/660,853
Technology Center 2100
Before JOHN A. EV ANS, JENNIFER L. McKEOWN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Adobe Systems, Inc.
App. Br. 2.
Appeal 2018-001518
Application 14/660,853
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns "controlling
temporal application of a visual characteristic to a document in a user
interface of a computing device as part of one or more edits made to the
document." Spec. ,r 3. 2 The Specification explains that ( 1) "[ o ]ne or more
inputs are detected by the computing device as associating a visual
characteristic with a portion of the document in the user interface"; (2) the
"level of intensity of the visual characteristic is iteratively reduced ...
without user intervention over a defined amount of time"; and
(3) "application of the visual characteristic to the portion of the document is
removed ... upon expiration of the defined amount of time." Id. Abstract.
The Specification also explains that visual characteristics include markups
and annotations, such as highlighting text, underlining text, bolding text,
italicizing text, and circling an object. Spec. ,r,r 17, 24, 26-28, 30, 35, 38,
43, Figs. 1-3.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method of controlling temporal application of a visual
characteristic to a document in a user interface displayed on at
least one display device of a computing device as part of one or
more edits made to the document, the method comprising:
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed March 1 7, 2015; "Final Act." for the Final Office Action,
mailed November 25, 2016; "App. Br." for the Appeal Brief, filed June 21,
2017; "Ans." for the Examiner's Answer, mailed October 3, 2017; and
"Reply Br." for the Reply Brief, filed November 29, 2017.
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Application 14/660,853
detecting one or more inputs by the computing device
associating a visual characteristic with a portion of the
document in the user interface displayed on the at least one
display device as part of editing the document;
iteratively reducing a level of intensity of the visual
characteristic displayed on the at least one display device by the
computing device automatically and without user intervention
over a defined amount of time; and
automatically removing the application of the visual
characteristic to the portion of the document displayed on the at
least one display device by the computing device upon
expiration of the defined amount of time.
App. Br. 18 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
Hollander et al. ("Hollander") US 2006/0053364 Al
Kun et al. ("Kun") US 2009/0256808 Al
Liu et al. ("Liu") US 2014/0040761 Al
Smits US 8,971,568 Bl
The Rejections on Appeal
Mar. 9, 2006
Oct. 15, 2009
Feb. 6,2014
Mar. 3, 2015
Claims 1-5, 7, 8, 10, 11, 13-16, and 18-20 stand rejected under
35 U.S.C. § 103 as unpatentable over Smits and Kun. Final Act. 3-12.
Claims 6, 12, and 17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Smits, Kun, and Hollander. Final Act. 12-14.
Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over
Smits, Kun, and Liu. Final Act. 14--15.
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Application 14/660,853
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner's conclusions concerning unpatentability under§ 103. We
adopt the Examiner's findings and reasoning in the Final Office Action
(Final Act. 3-18) and Answer (Ans. 3-34). We add the following to address
and emphasize specific findings and arguments.
The§ 103 Rejection of Claims 1-5, 7, 8, 10, 11, 13-16, and 18-20
INDEPENDENT CLAIM 1
Appellants argue that the Examiner erred in rejecting claim 1 because
Smits and Kun do not teach or suggest the following limitations in claim 1:
"iteratively reducing a level of intensity of the visual characteristic displayed
on the at least one display device by the computing device automatically and
without user intervention over a defined amount of time" and "automatically
removing the application of the visual characteristic to the portion of the
document displayed on the at least one display device by the computing
device upon expiration of the defined amount of time." See App. Br. 5-9;
Reply Br. 3-5. Specifically, Appellants assert that (1) "Smits' ink is not
removed upon expiration of a 'defined amount of time"'; (2) "Smits' ink is
not actively removed by a computing device"; and (3) "a graphical trace, as
described in Kun, is not a 'visual characteristic."' App. Br. 6, 8; see Reply
Br. 3, 5. Appellants contend that "[p ]artially removing or fading a graphical
trace, as described in Kun, does not correspond to 'iteratively reducing a
level of intensity of the visual characteristic displayed,' as recited in
claim 1." App. Br. 8; see Reply Br. 5. Appellants urge that "[i]n the
absence of a visual characteristic applied to a portion of a document, Kun
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Application 14/660,853
simply cannot provide a basis for 'iteratively reducing a level of intensity of
the visual characteristic,' as claimed." App. Br. 8.
Appellants' arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
combined disclosures in the references to reject claim 1. See Final Act. 3-5,
16-18; Ans. 3-5, 15-21. Where a rejection rests on the combined
disclosures in the references, an appellant cannot establish nonobviousness
by attacking the references individually. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Here, the combined disclosures in Smits and
Kun teach or suggest the disputed limitations in claim 1. See Final Act. 3-5,
16-18; Ans. 3-5, 15-21.
Specifically, Smits discloses annotating a document displayed on a
screen using invisible ink to annotate an image projected on a surface that
corresponds to the displayed document. Smits 2:62-5:6, 8:41--45, 14:60-
15:38, Abstract, Figs. 1-5; see Final Act. 4--5; Ans. 3--4, 15-16, 18. Smits
instructs that "the term 'invisible ink' refers to ink that is invisible to visible
light-but until the invisible ink vanishes, it is still detectable by some
means other than visible light, such as infrared, ultraviolet, and/or the like."
Smits 3:20-23. "The invisible ink vanishes after some brief period of time,"
and "after vanishing the invisible ink no longer detectable by the alternate
means by which it was previously detectable." Id. at 3:28-36.
Smits' annotation process includes (1) marking an image projected on
a surface with the invisible ink, e.g., using a fine- or broad-tipped stylus/pen,
(2) detecting the invisible ink before it vanishes, (3) storing location
information for the detected invisible ink, and (4) based on the stored
location information, visibly modifying a document displayed on a screen
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that corresponds to the image projected on the surface. Smits 2:63-3:6,
4:26-32, 4:41--45, 4:55-5:6, 14:60-15:13, Abstract, Fig. 3; see Final Act. 4,
16; Ans. 3, 15-17. The visible annotations in the displayed document align
with the vanished ink positions on the surface. Smits 4:41--45, 8:41--45,
14:3-5; see Ans. 20-21. The visible annotations may include highlighting
text, underlining text, and circling an object. Smits 3:11-14, 14:60-67; see
Final Act. 4; Ans. 3, 15-18. Also, the visible annotations may have "any
color, shape, translucency, [or] duration." Id. at 15:4--12. Thus, Smits'
visible annotations in the displayed document satisfy the claim language
about applying "a visual characteristic to a document in a user interface."
Kun discloses a method for gradually fading and then removing
stroke-based character inputs for "a wide variety of devices such as mobile
phones, laptops with graphical user interfaces and Personal Digital
Assistants (PDAs)." Kun ,r,r 1-2, 5, 11-13, 15, 17-19, 35, 63-81, Abstract,
Figs. 4a--4d; see Final Act. 5; Ans. 4. The fading and removal may occur in
several steps. Kun ,r,r 11-13, 18-19, 63, 79, Figs. 4a--4d; see Final Act. 5;
Ans. 4, 19, 21. For instance, "[i]n a first step the trace is only removed
partially to give the user a premonition that it is about to be removed and
providing the user with an opportunity to use the trace for further
(supplementary) input," and "[i]n the second step the trace is removed
completely." Kun ,r 63; see id. ,r,r 11-13, 18-19, 79; Final Act. 5; Ans. 4--5,
21. Fading may occur by decreasing the intensity and/or changing the color
of stroke-based character inputs. Kun ,r,r 19, 79, Figs. 4a--4d; see Final
Act. 5; Ans. 4, 19. Further, fading may occur based on a user-specified
temporal criterion, e.g., character input speed. Id. ,r,r 15, 35, 63, 65, 73-79.
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Thus, Smits teaches or suggests "temporal application of a visual
characteristic to a document in a user interface," and Kun teaches or
suggests "iteratively reducing a level of intensity" for displayed characters
and "automatically removing" displayed characters. See Smits 2: 62-5: 6,
8:41--45, 14:60-15:38, Abstract, Figs. 1-5; Kun ,r,r 1-2, 5, 11-13, 15, 17-19,
3 5, 63-81, Abstract, Figs. 4a--4d. And the combined disclosures in Smits
and Kun teach or suggest the disputed limitations in claim 1. See Final
Act. 3-5, 16-18; Ans. 3-5, 15-21.
Appellants contend that Smits' invisible ink "is not a displayed visual
characteristic," such as highlighting text. App. Br. 7 (citing Spec. ,r 24);
Reply Br. 4. But that contention does not distinguish claim 1 from Smits
because the claimed "visual characteristic" corresponds to Smits' visible
annotations in the displayed document. Smits explains that visible
annotations may include highlighting text, underlining text, and circling an
object. Smits 3:11-14, 14:60-67; see Final Act. 4; Ans. 3, 15-18.
Similarly, the Specification explains that visual characteristics may include
highlighting text, underlining text, and circling an object. Spec. ,r,r 17, 24,
27-28, Figs. 1-3.
INDEPENDENT CLAIM 11
Appellants argue that the Examiner erred in rejecting independent
claim 11 because "neither the cited portions of Smits or Kun, nor elsewhere
in these references, discloses, teaches, or in any way suggests" the following
limitation in claim 11: "respond to detection of one or more inputs that
markup a portion of content in a user interface and iteratively reduce a level
of intensity of the markup displayed on the at least one display device over a
defined amount of time." App. Br. 11. Similar to the arguments for claim 1,
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Application 14/660,853
Appellants assert that (1) "Smits' ink is not reduced over a 'defined amount
of time"' and (2) "a graphical trace, as described in Kun, is not a 'markup of
a portion of content in a user interface."' Id. at 12.
Appellants' arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
combined disclosures in the references to reject claim 11. See Final Act. 3-
5, 10, 16-18; Ans. 3-5, 9, 25-28. As indicated by the discussion of Smits
and Kun for claim 1, the combined disclosures in Smits and Kun teach or
suggest the disputed limitation in claim 11. See Final Act. 3-5, 10, 16-18;
Ans. 3-5, 9, 25-28.
For example, Smits discloses "detection of one or more inputs that
markup a portion of content in a user interface." See Smits 2:62-5:6, 8:41-
45, 14:60-15:38, Abstract, Figs. 1-5. In particular, Smits describes
detecting invisible-ink markings on an image projected on a surface that
corresponds to a document displayed on a screen. Smits 2:63-3:6, 4:41--45,
4:55-5:6, 14:60-15:13, Abstract; see Final Act. 4, 16; Ans. 3, 15-18, 25-28.
Further, Kun discloses reducing a level of intensity in several steps over a
defined amount of time, i.e., "iteratively" reducing a level of intensity. Kun
,r,r 11-13, 18-19, 63, 65, 73-79, Abstract, Figs. 4a--4d; see Final Act. 5;
Ans. 4, 19, 21, 28. Kun also discloses setting a timeout value for fading
based on character input speed, i.e., "a short timeout value for a user who
inputs characters quickly and a longer timeout value for a slower user." Kun
,r 75; see id. ,r,r 15, 35.
INDEPENDENT CLAIM 16
Appellants argue that the Examiner erred in rejecting independent
claim 16 because "neither the cited portions of Smits or Kun, nor elsewhere
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in these references, discloses, teaches, or in any way suggests" the following
limitations in claim 16: "responsive to the detecting, causing application of
color to the defined portion of the content in the user interface displayed on
the at least one display device" and "iteratively reducing a level of intensity
of the application of the color displayed on the at least one display device by
the computing device over a defined amount of time." App. Br. 14. Similar
to the arguments for claims 1 and 11, Appellants assert that (1) "Smits' ink
is not reduced over a 'defined amount of time"' and (2) "a graphical trace, as
described in Kun, is not an 'application of color to [a] defined portion of the
content in the user interface."' Id. at 14--15.
Appellants' arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
combined disclosures in the references to reject claim 16. See Final Act. 3-
5, 11, 16-18; Ans. 3-5, 10, 30-33. As indicated by the discussion of Smits
and Kun for claims 1 and 11, the combined disclosures in Smits and Kun
teach or suggest the disputed limitations in claim 16. See Final Act. 3-5, 11,
16-18; Ans. 3-5, 10, 30-33.
For example, Smits discloses detecting invisible-ink markings on an
image projected on a surface that corresponds to a document displayed on a
screen, including detecting markings corresponding to highlighting. Smits
2:63-3:6, 3:13-14, 4:41--45, 4:55-5:6, 14:60-15:13, Abstract; see Final
Act. 4, 16; Ans. 3, 15-18, 30-32. Smits describes the highlighting as having
"any color." Smits 15:4--12. Further, Kun discloses reducing a level of
intensity in several steps over a defined amount of time, e.g., by decreasing
the intensity and changing the color of stroke-based character inputs. Kun
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Application 14/660,853
,r,r 11-13, 18-19, 63, 65, 73-79, Abstract, Figs. 4a--4d; see Final Act. 5;
Ans.4, 19,21,32-33.
MOTIVATION TO COMBINE SMITS AND KUN
Appellants argue that the Examiner "failed to provide articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." App. Br. 9. Specifically, Appellants assert that "the stated
motivation fails to explain why a person of skill in the art would combine
the writing of Kun with the physical invisible ink of Smits." Id. We
disagree.
The Examiner explains that an ordinarily skilled artisan would have
been motivated to combine Smits and Kun to "gradually reduce the intensity
level of an annotation in order to provide the user with a warning associated
with the annotation." Final Act. 5 (citing Kun ,r,r 18, 79); Ans. 4--5, 20-21
(citing Kun ,r,r 18, 79). Consistent with the Examiner's explanation, Kun
instructs that "[b ]y gradually removing or fading the portion to be removed
before actually removing it completely a user receives a pre-warning that the
portion is to be removed and is thus given an opportunity to supplement or
correct the stroke( s) corresponding to the graphical trace( s) about to be
removed." Kun ,r 18; see id. ,r,r 13, 63, 79, Figs. 4a--4d.
Hence, the Examiner provides articulated reasoning with some
rational underpinning for why an ordinarily skilled artisan would have
combined Smits and Kun, including identifying an advantage achieved with
the combination. Final Act. 5; Ans. 4--5, 21. "[T]he law does not require
that the references be combined for the reasons contemplated by the
inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Outdry
Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017). "[A]ny
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Application 14/660,853
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining" references.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,420 (2007).
SUMMARY FOR INDEPENDENT CLAIMS 1, 11, AND 16
For the reasons discussed above, Appellants' arguments have not
persuaded us that the Examiner erred in rejecting the independent claims
under§ 103. Thus, we sustain the§ 103 rejection of the independent claims.
DEPENDENT CLAIMS 2-5, 7, 8, 10, 13-15, AND 18-20
Appellants do not argue patentability separately for dependent
claims 2-5, 7, 8, 10, 13-15, and 18-20. App. Br. 9, 13, 15. Thus, we
sustain the§ 103 rejection of these dependent claims for the same reasons as
the independent claims. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
The§ 103 Rejection of Claims 6, 12, and 17
Claim 6 depends from claim 1 ; claim 12 depends from claim 11; and
claim 17 depends from claim 16. App. Br. 19-21 (Claims App.). For these
dependent claims, Appellants assert that (1) "Hollander is not cited as
addressing the above-noted deficiencies of Smits and Kun" for the
independent claims and (2) "the combination of Smits, Kun, and Hollander
fails to teach or suggest" the limitations in these dependent claims "for at
least the same reasons previously discussed" for the independent claims.
App. Br. 9-10, 13, 16. Appellants' assertions do not constitute separate
patentability arguments. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ( explaining that the applicable rules "require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art"). Because Appellants do not argue the claims separately, we
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sustain the§ 103 rejection of dependent claims 6, 12, and 17 for the same
reasons as the independent claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
The§ 103 Rejection of Claim 9
Claim 9 depends from claim 1 and requires that "the defined amount
of time is specified by a user through interaction with one or more settings
of the user interface." App. Br. 19 (Claims App.). Appellants assert that the
Examiner erred in rejecting claim 9 because "[ e ]xpiration of a point of
interest, as described in Liu, does not correspond to the 'defined amount of
time' recited in claim 9." Id. at 10. Appellants concede that "Liu describes
that a 'user can set a time period in which the point of interest expires' and
that ' [ a ]n expired point of interest can be removed from the data store of
points of data' or 'archived in the data store."' Id. (quoting Liu ,r 20). But
Appellants contend that "[ s Jetting an amount of time for removal of a point
of interest from a data store simply does not correspond to specification of a
defined amount of time over which 'a level of intensity of [a] visual
characteristic displayed' is reduced." Id. at 10-11. Appellants explain that
"[t]his is in part because a point of interest is not a displayed visual
characteristic." Id. at 11.
Appellants' arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
combined disclosures in the references to reject claim 9. See Final Act. 3-5,
14--18; Ans. 3-5, 13-21. As explained above for claim 1, Smits' visible
annotations in the displayed document satisfy the claim language about
applying "a visual characteristic to a document in a user interface." See,
e.g., Smits 3:7-14, 4:41--45, 8:41--45, 14:3-5, 14:60-15:18, Abstract,
Figs. 1-5; Final Act. 4, 16-17; Ans. 3, 15-18. Liu discloses a user-specified
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expiration time for a displayed feature, i.e., a point of interest. Liu ,r,r 20,
37-38, Fig. 3; see Final Act. 14--15; Ans. 13-14, 24. Further, Kun discloses
a user-specified temporal criterion for fading. Kun ,r,r 15, 35, 63, 65, 73-79.
Accordingly, the combined disclosures in the references teach or suggest
claim 9's subject matter. See Final Act. 3-5, 14--18; Ans. 3-5, 13-21.
Because Appellants' arguments do not persuade us of Examiner error,
we sustain the§ 103 rejection of claim 9.
DECISION
We affirm the Examiner's decision to reject claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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