Xin Feng et al.

Patent Trials and Appeals Board

Dec 12, 2019

14076494 - (D) (P.T.A.B. Dec. 12, 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.
14/076,494 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.
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Application 14/076,494

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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.
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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).
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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).
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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
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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
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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.
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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