Perrin, Steven Richard. et al.

Patent Trials and Appeals Board

Dec 23, 2019

14580798 - (D) (P.T.A.B. Dec. 23, 2019)

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.
14/580,798 12/23/2014 Steven Richard Perrin RPS920140108USNP(710.371) 3197
58127 7590 12/23/2019
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
KHAN, SHAHID K
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
12/23/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN RICHARD PERRIN, JIANBANG ZHANG, JOHN
WELDON NICHOLSON, SCOTT EDWARDS KELSO,
BRADLEY PARK STRAZISAR, and MATTHEW LLOYD HAGENBUCH
____________

Appeal 2019-001016
Application 14/580,798
Technology Center 2100
____________

Before KRISTIN L. DROESCH, JENNIFER L. McKEOWN, and
ALEX S. YAP, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Lenovo Singapore PTE. LTD. (“Appellant”) is the applicant as provided
in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal
Br. 1.
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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention relates to “a method,
including: accepting, in an input overlay application, handwriting ink
strokes; determining handwriting units for the handwriting ink strokes;
accepting editing input of the handwriting ink strokes; and reflowing
handwriting ink strokes based on the editing input.” Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method, comprising:
accepting, in an input overlay application, handwriting ink
strokes;
determining handwriting units for the handwriting ink
strokes;
accepting editing input for at least one of the handwriting
units, wherein the editing input comprises at least one of a
handwriting ink stroke insertion gesture and a handwriting ink
stroke deletion gesture; and
automatically reflowing unedited handwriting units based
on the editing input.

REJECTIONS
The Examiner rejected claims 1–7, 11–17, and 202 under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter. Final Act. 2–3.
The Examiner rejected claims 1–9 and 11–20 under 35 U.S.C. § 103
as unpatentable over Geidl (US 2003/0053084 A1; pub. Mar. 20, 2003), and
Simmons (US 7,259,752 B1; iss. Aug. 21, 2007). Final Act. 3–12.
The Examiner rejected claim 10 under 35 U.S.C. § 103 as
unpatentable over Geidl, Simmons, and Capps (US 5,596,350; iss. Jan. 21,
1997). Final Act. 12–13.

2 We note that the Examiner withdraws the 35 U.S.C. § 101 rejection of
claims 8, 9, 18, and 19. Ans. 4.
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ANALYSIS
THE 35 U.S.C. § 101 REJECTION
Claims 1–7, 11–17, and 20
Based on the record before us, we are persuaded that the Examiner
erred in concluding that claims 1–7, 11–17, and 20 are directed to patent
ineligible subject matter.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
section 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)-(c), (e)-(h) (9th ed. 2018)).
See Memorandum 52, 55–56. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
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See Memorandum 56.
Appellant argues that the Examiner fails to provide “evidence that
would support a conclusion that the additional elements represent well-
understood, routine, or conventional activity.” Appeal Br. 26 (citing
Berkheimer v. HP.com, 882 F.3d 1367, 1368 (Fed. Cir. 2018)). We agree.
The Examiner finds that “the claims merely recite that which is well known,
routine, and conventional in the art of text editing” and that “[r]emoving text
and repositioning the remaining text and other conventional operations
(apart from claim 10) are functions that have existed in desktop publishing
system software from its inception.” Final Act. 3. Notably, the Examiner
fails to cite any evidentiary support for this finding. See Final Act. 3. The
mere identification of limitations as well known, routine, and convention,
without more, is insufficient to support the Examiner’s factual findings. See
Berkheimer, 882 F.3d at 1368
Accordingly, based on the record before us, we are constrained to
reverse the rejection of claims 1–7, 11–17, and 20 as directed to patent
ineligible subject matter.

THE 35 U.S.C. § 103 REJECTION
Claims 1–9 and 11–20
Based on the record before us, we are persuaded that the Examiner
erred in concluding that claims 1–9 and 11–20 as unpatentable over Geidl
and Simmons.
Appellant argues that Geidl fails to teach “automatically reflowing
unedited handwriting units based on the editing input.” Appeal Br. 30–31.
According to Appellant, “Geidl explicitly discloses rearranging edited
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objects, and not ‘unedited handwriting units,’” as required by claim 1.
Appeal Br. 31. Namely, Geidl describes “three handwriting input words ‘to’
‘get’ and ‘her’ are merged together as part of an editing input to create the
single word ‘together’.” Appeal Br. 31. Thus, Appellant asserts that while
Geidl rearranges handwriting units, these merged units are edited units, not
unedited handwriting units as required by the claims.
The Examiner, on the other hand, finds that the Appellant’s
interpretation is overly restrictive. Ans. 8. The Examiner, in particular,
finds that the editing input is accepted for the handwriting unit for “to” but
the “get” and “her” handwriting units are merely copied into the “to”
handwriting unit and, thus, do not accept an editing input. Ans. 8–9. We
disagree. Each of the “to,” “get,” and “her” handwriting units taught by
Geidl are changed or edited. Namely, the handwriting unit “to” is edited to
include “get” and “her” and the handwriting units for “get” and “her” are
discarded. See Geidl ¶ 64. As such, we are persuaded that Geidl fails to
teach or suggest automatically reflowing unedited handwriting units based
on the editing input as required by the claimed invention. The Examiner
does not rely on the teachings of Simmons to address the disputed limitation.
See Final Act. 5, 8.
Accordingly, based on the record before us, we reverse the rejection
of claims 1–9 and 11–20 as unpatentable over Geidl and Simmons.

THE 35 U.S.C. § 103 REJECTION
Claim 10
As discussed above, we are persuaded that the Examiner erred in
rejecting claim 1, from which claim 10 depends, as unpatentable over Geidl
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and Simmons. The additionally cited prior art reference, Capps, does not
cure the deficiencies of the combination of Geidl and Simmons. As such,
we are similarly persuaded that the Examiner erred in concluding that claim
10 is unpatentable over Geidl, Simmons, and Capps and reverse the
rejection.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 11–
17, and 20
101 1–7, 11–17,
and 20
1–9 and
11–20
103 Geidl, Simmons 1–9 and 11–
20
10 103 Geidl, Simmons,
Capps
10
Overall
Outcome
1–20

REVERSED