NOKIA TECHNOLOGIES OY

Patent Trials and Appeals BoardMar 12, 2021

2019006867 (P.T.A.B. Mar. 12, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/899,814 12/18/2015 Xiaoping Li 042933/500637 7421 10949 7590 03/12/2021 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP One South at The Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER HARRIS, DOROTHY H ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 03/12/2021 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte XIAOPING LI, BIN GAO, LI LUO, and YUYANG LIANG ____________________ Appeal 2019-006867 Application 14/899,814 Technology Center 2600 ____________________ Before JOHNNY A. KUMAR, CARL L. SILVERMAN, and JAMES W. DEJMEK, Administrative Patent Judges KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 22, 24–28, 30–32, 34–37, and 39–41. Claims 1–21, 23, 29, 33, and 38 have been canceled. Final Act. 3. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Nokia Technologies Oy as the real party in interest. Appeal Br. 2. Appeal 2019-006867 Application 14/899,814 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to “an electronic device for electronically-scribing input, for example by writing with a stylus on an electronic surface to enter handwritten text.” Spec. page 1, ll. 23-24. Claim 22 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: An apparatus comprising: at least one processor; and at least one memory including computer program code, the at least one memory and the computer program code configured to, with the at least one processor, cause the apparatus to perform at least the following: receive a user electronic-scribed handwritten input; determine one or more input manner characteristics of the user electronic-scribed handwritten input, wherein the one or more input manner characteristics describe a manner in which the electronic-scribed handwritten input was provided; convert the user electronic-scribed handwritten input into electronic information; and based on the one or more determined input manner characteristics of the user electronic-scribed input, associate the user electronic-scribed input with a function to be performed using the user electronic-scribed input, wherein the function comprises at least one of causing transmission of the electronic information to a device identified based on the one or more determined input manner characteristics, or associating the electronic information with an application identified based on the one or more determined input manner characteristics. Appeal 2019-006867 Application 14/899,814 3 The Examiner’s Rejections 1. Claim 25 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.2 2. Claim 22, 24, 26–28, 30–32, 34–37, and 39–41 are rejected under 35 U.S.C. § 103 as being unpatentable over Dupraz et al. (U.S. Patent Publication No. 2005/0024346 A1; Feb. 3, 2005) in view of Muto et al. (U.S. Patent Publication No. 2013/0321352 A1; Dec. 5, 2013). 3. Claim 25 is rejected under 35 U.S.C. § 103 as being unpatentable over Dupraz and Muto in view of Sekiguchi et al. (U.S. Patent Publication No. 2002/0060665 A1; May 23, 2002). ANALYSIS3 Claims 22, 24, 26-28, 30-32, 34-37, 39- 41 In rejecting claim 22, inter alia, the Examiner relies on the combined teachings of Dupraz and Muto. Final Act. 5–19. Appellant asserts that the combination of Dupraz and Muto fails to teach: determine one or more input manner characteristics of the user electronic-scribed handwritten input, wherein the one or more input manner characteristics describe a manner in which the electronic-scribed handwritten input was provided,” and “based on the one or more determined input manner characteristics of the user electronic-scribed input, associate the user electronic-scribed input 2 The Examiner has withdrawn the § 112(b) rejection of claim 25 in the Advisory Action mailed on April 5, 2019. 3 Throughout this Decision, we have considered the Appeal Brief, filed May 23, 2019 (“Appeal Br.”); the Reply Brief, filed September 23, 2019 (“Reply Br.”); the Examiner’s Answer, mailed July 25, 2019 (“Ans.”); the Advisory Action mailed April 5, 2019 (“Advisory Act.”); and the Final Office Action, mailed December 31, 2018 (“Final Act.”), from which this Appeal is taken. Appeal 2019-006867 Application 14/899,814 4 with a function to be performed using the user electronic-scribed input, wherein the function comprises at least one of causing transmission of the electronic information to a device identified based on the one or more determined input manner characteristics, or associating the electronic information with an application identified based on the one or more determined input manner characteristics. Appeal Br. 8–15 (hereinafter disputed limitations). In particular, Appellant argues (1) the “checkbox [in Dupraz] does not constitute a manner in which the input is provided” (Appeal Br. 10), and (2) in Dupraz, the transmitted handwritten input is not the checkbox itself or the page number itself (which the Office argues is an input manner characteristic) but rather some other information, such as the information located on the indicated page number, or the handwritten information provided in the designated area of the user interface (Appeal Br. 12). We disagree with Appellant’s arguments. To the extent consistent with our analysis below, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. Ans. 9–15. We concur with the conclusions reached by the Examiner. We begin our analysis with a brief review of Dupraz. Dupraz generally relates to “digital writing input devices for computer systems.” Dupraz ¶ 1. Dupraz describes that digital pen and tablet combinations are known, but have certain drawbacks including bulkiness and needing to be paired with each other. Dupraz ¶¶ 2–3. In addition, Dupraz describes that existing digital pens have limited operational capability and are restricted in that they require specially designed paper Appeal 2019-006867 Application 14/899,814 5 including a custom pattern and a special transfer box (also referred to as a magic box). Dupraz ¶ 4. Dupraz further notes that although existing digital pens may capture handwriting strokes, they “lack functional buttons or displays to capture additional handwritten gestures, such as highlighting, bolding, or color change.” Dupraz ¶ 5. Moreover, the special paper (including the so-called magic boxes) are not reusable. Dupraz ¶ 8. Accordingly, Dupraz describes a digital writing system that, inter alia, is able to capture additional handwritten gestures and does not have the existing limitations regarding special paper. Dupraz ¶ 9. Dupraz teaches various approaches to capture handwritten gestures that apply a desired formatting (e.g., highlighting, bolding, and underlining) to the user’s handwriting. See, e.g., Dupraz ¶¶ 29–32. For example, Dupraz teaches “the pressure applied by the user can be sensed using a Force Sensitive Resistor (“FSR”) located at the tip of the digital pen.” Dupraz ¶ 32. Based on the detected pressure, the subsequent handwriting may be highlighted, bolded, or have its color changed. Dupraz ¶ 32. Dupraz further describes a writing system including “special paper such that ink does not adhere to the paper” thereby resulting in increased reusability. Dupraz ¶ 44. Dupraz teaches the special paper may be a credit card sized card including a magic box to initiate performance of a particular function based on what is written in the magic box. Dupraz ¶¶ 44–45. For example, Dupraz teaches a “speed-mail” scenario in which a particular number may be written in the magic box that sends an email of the handwritten input on the special paper to a desired recipient. Dupraz ¶ 46. Thus, based on our review of Dupraz, we agree with the Examiner that Dupraz teaches, inter alia, determining one or more characteristics of Appeal 2019-006867 Application 14/899,814 6 the electronic-scribed handwritten input (e.g., the pressure with which the input is applied), converting the input into electronic information, and associating the electronic-scribed input with a function to be performed comprising the transmission of the electronic information (i.e., Dupraz’s sending of an email message of the input). Regarding Appellant’s comments in the Reply Brief that Dupraz requires “a separate input to a magic box to indicate a device to which the separate handwritten input is provided, or to indicate with which application the separate handwritten input is associated,” (Reply Br. 3), we do not find Appellant’s arguments persuasive of error because independent claim 22 does not preclude such a reading. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claim 27 depends from independent claim 22 and recites, in relevant part, “wherein the one or more input manner characteristics comprise at least one of . . . a pressure applied when using the electronic stylus during the scribing of the user electronic-scribed input.” As discussed, the Examiner finds (and we agree), Dupraz teaches using a Force Sensitive Resistor in the tip of the digital pen to determine the amount of pressure being applied during the scribing of the electronic- scribed input so as to determine a particular formatting (e.g., highlighting or bolding). See Dupraz ¶ 32. Accordingly, we are not persuaded of Examiner error. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 22, and independent claims 40, and 41 not argued separately. Additionally, we sustain the Examiner’s rejections of claims 24, 26–28, 30– Appeal 2019-006867 Application 14/899,814 7 32, 34–37, and 39, which depend directly or indirectly therefrom and were not argued separately. See Appeal Br. 47; see also 37 C.F.R. § 41.37(c)(1)(iv). Dependent Claim 25 Appellant contends “the cited combination relies upon Dupraz and Muto for disclosing the same features as described above with respect to the rejection of the independent claims.” Appeal Br. 17. For similar reasons to those discussed with respect to claim 22, we are not persuaded of Examiner error. CONCLUSION We affirm the Examiner’s decision rejecting claims 22, 24–28, 30–32, 34–37, and 39–41 under 35 U.S.C. § 103. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 22, 24, 26– 28, 30–32, 34–37, 39– 41 103 Dupraz, Muto 22, 24, 26–28, 30–32, 34–37, 39– 41 25 103 Dupraz, Muto, Sekiguchi 25 Overall Outcome 22, 24–28, 30–32, 34–37, 39–41 Appeal 2019-006867 Application 14/899,814 8 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED