Xin Feng et al.Download PDFPatent Trials and Appeals BoardDec 12, 201914076494 - (D) (P.T.A.B. Dec. 12, 2019) Copy Citation 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. 14/076,494 11/11/2013 Xin Feng RPS920130108USNP(710.266) 3457 58127 7590 12/12/2019 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 EXAMINER MILLS, FRANK D ART UNIT PAPER NUMBER 2176 MAIL DATE DELIVERY MODE 12/12/2019 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 XIN FENG, MEI-WEN SUN, JAMES ANTHONY HUNT, and HENG ZHENG ____________________ Appeal 2018–0070421 Application 14/076,494 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, JASON V. MORGAN and PHILLIP A. BENNETT, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant indicates Lenovo (Singapore) PTE, LTD as the real party in interest. Appeal Br. 3. Appeal 2018-007042 Application 14/076,494 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 1. A method, comprising: [A.] providing, within an underlying application, a user handwriting input interface comprising a plurality of handwriting format selection option sub-areas; [B.] receiving handwriting input, for input directly to the underlying application, at a user input interface; [C.] rendering the handwriting input on a display device, wherein rendering comprises converting the handwriting input to machine text input; [D.] after rendering the handwriting input, determining a user selection of a format for entering the handwriting input into the underlying application; and [E.] entering the handwriting input into the underlying application in the format selected. REFERENCES2 The prior art relied upon by the Examiner is: Name Reference Date Madan US 2005/0091578 A1 Apr. 28, 2005 Yu US 2009/0052777 A1 Feb. 26, 2009 Goldsmith US 2009/0226091 A1 Sept. 10, 2009 Yun US 2012/0302167 A1 Nov. 29, 2012 Schwartz US 2014/0254941 A1 Sept. 11, 2014 2 All citations herein to patent and pre-grant publication references are by reference to the first named inventor only. Appeal 2018-007042 Application 14/076,494 3 REJECTIONS A. The Examiner rejects claims 1–3, 6, 10–13, 16, and 20 under 35 U.S.C. § 103 as being unpatentable over the combination of Yun and Yu. Final Act. 2–7. We select claim 1 as the representative claim for this rejection. Appellant does not argue separate patentability for claims 2, 3, 6, 10–13, 16, and 20. Except for our ultimate decision, we do not address claims 2, 3, 6, 10–13, 16, and 20 further herein. B. The Examiner rejects claims 4, 5, 14, and 15 under 35 U.S.C. § 103 as being unpatentable over the combination of Yun, Yu, and Goldsmith. Final Act. 7–9. Appellant does not present arguments for claims 4, 5, 14, and 15. Thus, the rejections of these claims turn on our decision as to claim 1. Except for our ultimate decision, we do not address the 35 U.S.C. § 103 rejections of claims 4, 5, 14, and 15 further herein. C. The Examiner rejects claims 7 and 17 under 35 U.S.C. § 103 as being unpatentable over the combination of Yun, Yun, and Madan. Final Act. 9– 10. Appellant does not present arguments for claims 7 and 17. Thus, the rejections of these claims turn on our decision as to claim 1. Except for our ultimate decision, we do not address the § 103 rejections of claims 7 and 17 further herein. Appeal 2018-007042 Application 14/076,494 4 D. The Examiner rejects claims 8, 9, 18, and 19 under 35 U.S.C. § 103 as being unpatentable over the combination of Yun, Yu, and Schwartz. Final Act. 10–12. Appellant does not present arguments for claims 8, 9, 18, and 19. Thus, the rejections of these claims turn on our decision as to claim 1. Except for our ultimate decision, we do not address the 35 U.S.C. § 103 rejections of claims 8, 9, 18, and 19 further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s Appeal Brief and Reply Brief arguments. A. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. [T]he Office has merely supplied a conclusory statement claiming that the combination of references would be obvious to one of ordinary skill in the art “to obtain the benefit of increasing the speed of user input of mathematical expressions.” Office Action at p. 6. First, Applicant respectfully submits that the present application is not just directed to user input of mathematical expressions, which are the teachings of Yu. Specifically, Yu is directed to a system for using handwriting recognition is computer algebra, specifically by providing candidate recognition results that are based upon mathematical expressions. See Yu at [0013] – [0016]. Additionally, Applicant respectfully submits that such a conclusory statement is inadequate for a finding of a motivation to combine. Appeal Br. 12 (emphasis added). Appeal 2018-007042 Application 14/076,494 5 Applicant respectfully submits that there is nothing in either Yun or Yu that supports the conclusion that “[i]t would have been obvious to one having ordinary skill in the art at the time of the effective filing date to modify the method disclosed in Yun to include wherein rendering comprises converting the handwriting input to machine text input, to obtain the benefit of increasing the speed of user input of mathematical expressions.” Office Action at pp. 5 – 6. Applicant respectfully submits that the Examiner has provided no evidentiary support or reasoning for the conclusory statement that combining the features of Yun and Yu would “increase[e] the speed of user input of mathematical expressions.” Office Action at p. 6. Applicant respectfully submits that the Office has not provided evidentiary support or reasoning a person skilled in the art would combine the teachings of Yun and Yu to address problems related to provision of drawing input and text input in a handwriting application. Specification at [0001]. Appeal Br. 13–14 (emphasis added). The Examiner responds to Appellant’s argument and expands his reasoning as follows: Yu is relied upon by Examiner primarily to show that a user can provide a handwriting input to a device, and the device can generate a plurality of candidate machine text inputs converted from the handwriting input (Yu, ¶¶ 10-12). Providing possible candidate machine inputs corresponding to a handwritten input improves input speed and accuracy by predicting the user's intended input and enabling the user to select the correct interpretation. One of ordinary skill in the art would recognize that the concept of presenting multiple candidate machine inputs converted from handwriting input could apply to all types of handwritten inputs, not just mathematical expressions. Enabling a user to select from candidate handwriting interpretations would provide accuracy benefits when the handwriting input includes misspelled words, illegible letters, and complex expressions (e.g. algebraic expressions, computer coding). Appeal 2018-007042 Application 14/076,494 6 Second, the reason articulated by Examiner for combining the references is to increase the speed of inputting algebraic expressions using handwriting, as suggested by the Yu reference (Yu, ¶ 2). Ans. 13–14 (emphasis added). Appellant’s Reply Brief does not dispute the Examiner’s expanded reasoning as to improved accuracy. Therefore, as to Appellant’s assertion, we are unpersuaded. Further, Appellant is contending that the Examiner’s combination must address the same problem as Appellant’s disclosed invention. Appellant’s argument is contrary to the Supreme Court’s explicit guidance. “[A]ny 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 the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). B. Also, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Applicant respectfully submits that Yun in view of Yu fail to teach, or even suggest, “providing, within an underlying application, a user handwriting input interface comprising a plurality of handwriting format selection option sub-areas.” Claim 1. The Office points to FIG. 10 and the supporting disclosure of Yun to allegedly teach the limitation “a user handwriting input interface comprising a plurality of handwriting format selection option sub-areas,” Claim 1, See Office Action at p. 3. Applicant respectfully disagrees. Yun specifically teaches that “if the handwriting input 151G can be converted to text, the controller 180 of the mobile terminal 100 displays a pop- up window 151J for choosing a conversion scheme of the handwriting input on the screen 151.” Yun at [0169]. Applicant Appeal 2018-007042 Application 14/076,494 7 respectfully submits this is not what is claimed. What is claimed is “a user handwriting input interface comprising a plurality of handwriting format selection option sub-areas.” Claim 1. Appeal Br. 14–15 (emphasis added). The Examiner responds to Appellant’s argument as follows: The present specification never expressly defines what a “sub-area” is. The only guidance the [S]pecification provides in interpreting the term “sub-area” are the sub-areas 302 depicted in FIGS. 3A and 3B. The claim reads that the “user handwriting input interface” comprises “a plurality of . . . sub-areas.” Thus, a “plurality of sub-areas” is reasonably interpreted as separate areas within a user interface. There is no claim recitation that the sub-areas are within the same window, only that the areas are within the same interface. Ans. 15. We are unpersuaded by Appellant’s argument. We disagree with Appellant’s assertions and we agree with the Examiner’s response. C. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Applicant respectfully submits that Yun in view of Yu fails to teach, or even suggest, “after rendering the handwriting input, determining a user selection of a format for entering the handwriting input into the underlying application; and entering the handwriting input into the underlying application in the format selected.” Claim 1 (as previously presented). Applicant respectfully submits that Yun does not “[enter] the handwriting input into the underlying application.” Claim 1. As explicitly stated, Yun either generates a memo file that “is stored in the storage space associated with the memo application,” Yun at [0163], or “store[s] temporarily the converted handwriting input into a clipboard instead of storing the handwriting input in a memo file.” Yun at [0170]. In order to enter the handwriting Appeal 2018-007042 Application 14/076,494 8 input into a running or even underlying application, the user has to perform additional actions (i.e., select the file for pasting or copying into the desired application.) See Yun at [0159] and [0172]. . . . . The Office even states “[o]ne of ordinary skill in the art recognizes that clipboard storage is a temporary storage location controlled by an operating system to facilitate sharing information between multiple applications.” Office Action at p. 13. Applicant agrees. However, Applicant submits that in order to share the information (i.e., move the information to a desired location) the user has to provide additional input (i.e., select the file for pasting or copying into the desired application.) See Yun at [0159] and [0172]. Thus, Applicant respectfully submits that the handwritten input is not provided directly to the underlying application, as contended by the Office. See Office Action at p. 13. Appeal Br. 15–16 (emphasis added). As to Appellant’s assertion, we are unpersuaded. An artisan would understand that “input” is Information entered into a computer for processing, as from a keyboard or from a file stored on a disk drive. Microsoft Press Computer Dictionary 1991. Here there are a finite number of solutions (direct input, indirect input) and both are known to artisans. We conclude it would be “obvious to try” each form of input given the acknowledged “pasting or copying” teaching of Yun. See KSR, 550 U.S. at 421. CONCLUSION The Examiner has not erred in rejecting claims 1–20 as being unpatentable under 35 U.S.C. § 103. Appeal 2018-007042 Application 14/076,494 9 The Examiner’s rejections of claims 1–20 as being unpatentable under 35 U.S.C. § 103 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6, 10– 13, 16, 20 103 Yun, Yu 1–3, 6, 10– 13, 16, 20 4, 5, 14, 15 103 Yun, Yu, Goldsmith 4, 5, 14, 15 7, 17 103 Yun, Yu, Madan 7, 17 8, 9, 18, 19 103 Yun, Yu, Schwartz 8, 9, 18, 19 Overall Outcome 1–20 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation