Ex Parte Sarnoff

Patent Trial and Appeal Board

Apr 24, 2017

12907851 (P.T.A.B. Apr. 24, 2017)

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.
12/907,851 10/19/2010 Matthew Sarnoff P10090US2/ APPL:0454B 2737
73576 7590
APPLE INC. - Fletcher
c/o Fletcher Yoder, PC
P.O. Box 692289
Houston, TX 77269-2289
04/26/2017 EXAMINER
NGUYEN, ANH TUAN V
ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW SARNOFF
Appeal 2014-008509
Application 12/907,851
Technology Center 2600
Before DAVID M. KOHUT, KAMRAN JIVANI, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
According to Appellant, the claims are directed to systems, methods,
and computer-readable media for placing a representation of the captured
signature in a document. Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for placing a representation of a signature in a
document, comprising:
Appeal 2014-008509
Application 12/907,851
detecting a position of an input with respect to a displayed
document;
rendering an initial portion of the document, wherein the
initial portion is adjacent to the detected position; and
determining whether a horizontal line extends through the
rendered initial portion;
if the horizontal line extends through the rendered
initial portion:
rendering an expanded portion that includes the
determined horizontal line;
identifying at least one boundary for the horizontal
line from the rendered expanded portion; and
placing a representation of a signature on the
horizontal line and with respect to the at least one
identified boundary.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wang
Veluchamy
Sarkar
Burian
Yokoi
US 7,293,712 B2
US 2008/0235577 A1
US 2011/0007366 A1
US 2007/0025625 A1
US 2009/0175493 A1
Nov. 13, 2007
Sept. 25, 2008
Jan. 13,2011
Feb. 1,2007
July 9, 2009
REJECTIONS
Claims 1, 5, 6, 9-12, 15, and 20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Veluchamy, Sarkar, and Wang. Final Act.
2-9.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Veluchamy, Sarkar, Wang, and Burian. Final Act. 9—10.
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Appeal 2014-008509
Application 12/907,851
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Veluchamy, Sarkar, Wang, Burian, and Yokoi. Final Act.
10-11.
Claims 7, 8, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Veluchamy, Sarkar, and Wang, as applied to claims
5 and 12 above, and further in view of and Yokoi. Final Act. 11—13.
Claims 16—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Veluchamy and Sarkar. Final Act. 13—17.
ANALYSIS
The Examiner finds Veluchamy teaches the claim limitations recited
in independent claims 1, 10, 16, and 20, except for “determining whether a
horizontal line extends through the rendered initial portion” and “identifying
at least one boundary for the horizontal line from the rendered expanded
portion.” Final Act. 3. The Examiner cites Sarkar to teach the
“determining” limitation and Wang to teach the “identifying” limitation. Id.
(citing Sarkar | 57; Wang 7:26—50). The Examiner concludes
[Ojne of skilled [sic] in the art would readily
recognize that if a horizontal line below a
handwritten text could be determined, albeit for a
different reason, it would have been obvious that a
horizontal line could also be determined in order to
place the hand written signature above it as shown
in Fig. 4d of Veluchamy and Fig. 5 of Sarkar. The
suggestion/motivation to combine would have been
in order to save the user time from doing so
manually. As the result, the user would only need to
place the signature somewhere near the signature
line.
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Appeal 2014-008509
Application 12/907,851
Ans. 5. We have reviewed the references and the portions cited by the
Examiner and we agree with and adopt the Examiner’s findings and
conclusions as our own. Final Act. 2—17; Ans. 2—7.
Appellant contends that “[n]one of the cited references teaches or
suggests determining whether a horizontal line extends through a rendered
initial portion,” as generally recited in claims 1,10, and 20. App. Br. 13
(emphasis omitted). Appellant further contends that “[n]one of the cited
references teaches or suggests placing a representation of a signature that has
been determined to extend through a rendered initial portion,” as generally
recited in claims 1 and 20. Id. at 18 (emphasis omitted).
With respect to Appellant’s first contention, Appellant argues that
“[a]t best, the figures of Veluchamy appear to teach that manually inserted
electronic signature tags, signature capturing displays, and captured
signatures may incidentally have lines.” Id. at 14. Second, also with respect
to Appellant’s first contention, Appellant argues “Sarkar merely appears to
teach removal of noise marks from scanned documents when horizontal or
vertical lines are present in a document” and “appears to be completely
silent regarding a rendered initial portion.” Id. at 16 (citing Sarkar 13).
Third, with respect to Appellant’s second contention, Appellant argues that
“Veluchamy cannot teach placing a signature on a line because the
horizontal line of the signature tag of Veluchamy is removed when the
signature tag is removed.” Id. at 19. Fourth, Appellant argues “[tjhere is no
reason to combine Veluchamy and Sarkar other than impermissible
hindsight analysis” because “Veluchamy disregards the presence of
horizontal lines, it is not obvious to combine Sarkar with Veluchamy to
determine whether horizontal lines exist.” Id. at 20 (emphasis omitted).
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Appeal 2014-008509
Application 12/907,851
Appellant’s first and second arguments fail to persuade us because
they are not responsive to the Examiner’s specific findings. The Examiner
cites paragraph 57 of Sarkar for teaching detecting a horizontal line. Final
Act. 3; Ans. 3. Paragraph 57 of Sarkar discloses that “[i]n FIG. 5B, the long
horizontal line runs have been detected and extracted.” The Examiner finds
that, “[i]n Sarkar, the ‘rendered initial portion’ is the portion of the
document being searched for a horizontal line.” Ans. 6. We have reviewed
the cited portion of Sarkar and concur in the Examiner’s findings.
Appellant’s third argument constitutes an individual attack on the
references which is not persuasive to show nonobviousness. See In re
Keller, 642 F.2d 413, 426 (CCPA1981); see In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Appellant’s third argument does not
persuasively rebut the Examiner’s findings because none of the arguments
address what the combined teachings of Veluchamy and Sarkar would have
suggested to one of ordinary skill in the art. Combining Sarkar’s teaching of
detecting and extracting a horizontal line run with Veluchamy’s teaching of
signature placement constitutes a “combination of familiar elements
according to known methods” that yields the predictable result of placing a
signature on a detected horizontal line. See KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). None of the arguments present sufficient
evidence to persuade us the combination set forth by the Examiner was
“uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
With regard to Appellant’s fourth argument, we are not persuaded the
Examiner’s conclusion is based on improper hindsight reasoning, because
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Appeal 2014-008509
Application 12/907,851
Appellant does not present evidence sufficient to show that the conclusion is
based on knowledge beyond the level of ordinary skill in the art or
knowledge gleaned only from Appellant’s disclosure. See App. Br. 20.
Rather, Appellant’s fourth argument constitutes attorney argument that is
unsupported by sufficient evidence to persuade us that the disputed
limitations recited in claims 1,10, and 20 would have been unobvious to one
of ordinary skill in the art for reasons similar to reasons discussed supra with
respect to Appellant’s first and second arguments. See Leapfrog Enters.,
Inc., 485 F.3d at 1162.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Veluchamy, Sarkar, and Wang teaches or
suggests the limitations as recited in independent claims 1,10, and 20 and
dependent claims 5, 6, 9, 11, 12, and 15, not separately argued. Therefore,
we sustain the rejection of claims 1, 5, 6, 9-12, 15, and 20 under
35 U.S.C. § 103(a) for obviousness Veluchamy, Sarkar, and Wang.
With regard to independent claim 16, Appellant presents substantially
the same arguments set forth above with respect to independent claims 1,10,
and 20. App. Br. 21—22. Accordingly, for the reasons discussed above, we
sustain the rejection of claims 16—19 under 35 U.S.C. § 103(a) for
obviousness Veluchamy and Sarkar.
With regard to dependent claims 2—4, 7, 8, 13, and 14, Appellant does
not address the Examiner’s rejections with specificity. Id. at 23.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejections of claims 2-4, 7,
8, 13, and 14 over various combinations of Veluchamy, Sarkar, Wang,
Burian, and Yokoi.
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Application 12/907,851
DECISION
The decision of the Examiner to reject claims 1—20 is affirmed.
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).
AFFIRMED
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