Fei Su et al.

Patent Trials and Appeals Board

Feb 19, 2020

14618303 - (D) (P.T.A.B. Feb. 19, 2020)

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.
14/618,303 02/10/2015 Fei Su 355654-US-NP 2399
69316 7590 02/19/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
SHREWSBURY, NATHAN K
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
02/19/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FEI SU, ERIC C. BROWN, and XIAO TU
____________

Appeal 2019-001782
Application 14/618,303
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–15 and 17–21. Claim 16 is canceled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
An embodiment of Appellant’s invention relates to “Supporting
Digital Ink in Markup Language Documents.” Title.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Appellant, party: Microsoft Technology Licensing, LLC. See Appeal Br. 3.
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Rejections
A. Claims 1, 2, 13–15, 17, and 21 are rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by Kashi et al. (US 2005/0289,452 A1; pub.
Dec. 29, 2005) (“Kashi”). See Final Act. 2.2, 3
B. Claims 3, 4, 19, and 20 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Kashi in
view of Gear et al. (US 2008/0229186 A1; pub. Sep. 18, 2008)
(“Gear”). See Final Act. 8.
C. Claims 5, 6, 11, and 12 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Kashi in
view of Silverman et al. (US 2005/0041866 A1; pub. Feb. 24, 2005)
(“Silverman”). See Final Act. 10.
D. Claims 7 and 18 are rejected under 35 U.S.C. § 103 as being obvious
over the combined teachings and suggestions of Kashi and Shilman et
al. (U.S. 2006/0050969 A1; pub. Mar. 9, 2006) (“Shilman”). See
Final Act. 13.
E. Claims 8–10 are rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Kashi and Bargeron (U.S.
2007/0022371 A1; pub. Jan. 25, 2007). See Final Act. 15.

2 The Examiner includes canceled claim 16 in the Rejection A heading
(Final Act. 2), but specifically notes that claim 16 is canceled on page 6 of
the Final Action. We have made appropriate correction to the Rejection A
heading above.
3 The Examiner provides a detailed statement of rejection for dependent
claim 21 under Rejection A (Final Act. 7–8), although claim 21 is missing
from the Rejection A heading. See Final Act. 2. We have made appropriate
correction to the Rejection A heading above.
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Illustrative Claim 1
1. A method comprising:
receiving, by an application, digital ink user input for a markup
language document;
generating a digital ink markup language element that includes data
describing the digital ink user input;
embedding the digital ink markup language element in the markup
language document by adding the digital ink markup language element to
the markup language document, the markup language document also
including in one or more additional elements additional data describing
additional content to be displayed when displaying the markup language
document; and
transmitting the markup language document with the digital ink
markup language element to a storage device.
Claims Appendix; Appeal Br. 27 (Emphasis added regarding the disputed
dispositive limitation under 35 U.S.C. § 102(a)(2)).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight infra specific arguments and evidence we find to be
dispositive.
Rejection A of Independent Claim 1 under § 102(a)(2)
Issue: Under 35 U.S.C. § 102(a)(2), we focus our analysis on the
following argued limitations from claim 1 that we find are dispositive
regarding anticipation Rejection A of independent claims 1, 13, and 15.
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We decide the question of whether the Examiner erred by finding that
Kashi expressly or inherently discloses the disputed limitations of
independent claim 1, as shown in emphasis below:
1. A method comprising:
. . .
embedding the digital ink markup language element in the
markup language document by adding the digital ink markup
language element to the markup language document,

within the meaning of independent claim 1? 4
Appellant argues:
simply converting ink points to an HTML annotation element
does not disclose, teach, or otherwise suggest adding the HTML
annotation element to the digital document being annotated, or
adding the HTML annotation element to any other digital
document that includes in one or more additional elements
additional data describing additional content to be displayed
when displaying the digital document. Furthermore, nowhere
in the cited portions or elsewhere in Kashi is there any
discussion or mention of adding the HTML annotation element
to the digital document being annotated, or of adding the
HTML annotation element to any other digital document that
includes in one or more additional elements additional data
describing additional content to be displayed when displaying
the digital document.
Appeal Br. 14.
Appellant further contends:
Nowhere does Kashi discuss or mention that the XML
annotation schema is embedded in or added to the digital

4 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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document being annotated. Further, if the HTML annotation
element were to be added to the digital document being
annotated, there would be no need to include the URL of that
digital document in the XML annotation schema. Accordingly,
it appears that the HTML annotation element referenced in
Kashi at ¶¶ [0110] and [0119]-[0120] refers to an HTML
element of the XML annotation schema, which is separate from
the digital document being annotated and is not added to the
digital document being annotated. Thus, Appellant respectfully
submits that Kashi cannot disclose, teach, or otherwise suggest
“embedding the digital ink markup language element in the
markup language document by adding the digital ink markup
language element to the markup language document, the
markup language document also including in one or more
additional elements additional data describing additional
content to be displayed when displaying the markup language
document” as recited in claim 1.
Appeal Br. 15.
The Examiner finds Kashi’s description of digital ink embedded via
anchors into an HTML document discloses the disputed “embedding”
limitation. See Final Act. 3, citing Kashi, Fig. 8. The Examiner also finds
Kashi’s element, which is converted into HTML and added to a document as
an HTML annotation element, discloses the disputed limitation of “adding
the digital ink markup language element to the markup language document.”
Final Act. 3, Ans. 19, citing Kashi, ¶¶ 110, 119, 120 (emphasis added).
We do not find the Examiner’s findings are supported by a
preponderance of the evidence, because we do not see an express or inherent
description for “embedding the digital ink markup language element in the
markup language document” (claim 1), in the paragraphs and Figures of
Kashi that are cited by the Examiner.
In particular, we note the Examiner’s assertion: “the Board need only
determine that the Kashi reference implies that the annotations are
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concurrently displayed in association with said file.” Ans. 18. (emphasis
added).
The Examiner further finds:
The Kashi reference meets and exceeds the standard of
implying the annotation[s] are added to a document. The
display of the annotation and the underlying document together
teach the limitations of adding and embedding the annotation.
The description in Kashi at [0110] and [0119-0120] both
describe the elements being converted into actual HTML and
added to a document as an “actual HTML annotation element.”
This language minimally implies the limitation of the element
becoming part of the HTML document which it annotates,
describing the elements in question as “fragments” of a
document that are assembled upon download.
Ans. 19. (emphasis added).
However, the Examiner errs because there is no such “standard of
implying” (id.) that is applicable to the law of anticipation. “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987) (emphasis added).
Moreover, “[i]nherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745, (Fed.
Cir. 1999) (internal citations omitted) (emphasis added).
This reasoning is applicable here. Therefore, the Examiner’s findings
that Kashi “implies” and “minimally implies” the disputed limitations of
claim 1 are insufficient to support an anticipation rejection, because such
findings are inconsistent with expressly or inherently describing the
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disputed claim limitations. See Verdegaal Bros. 814 F.2d at 631 (emphasis
added).
Further regarding the Examiner’s findings (Ans. 18–19), and as noted
above, mere probabilities or possibilities are not enough to establish
anticipation. Robertson, 169 F.3d at 745. In reviewing the record, and the
plain language of claim 1, we find a preponderance of the evidence supports
Appellant’s contentions in the Briefs that the Examiner has not established
that Kashi expressly or inherently anticipates the disputed limitations of
independent claim 1.5
Because Appellant has persuaded us the Examiner erred, we are
constrained on this record to reverse Rejection A under § 102(a)(2) of
independent claim 1. For the same reasons, we also reverse Rejection A of
independent claims 13 and 15, which recite similar language of
commensurate scope.
Because we have reversed the rejection of each independent claim on
appeal, we also reverse Rejection A of the associated dependent claims 2,
14, 17, and 21.

5 Because a rejection under § 103 for independent claims 1, 13, and 15 is not
before us on appeal, we do not reach and express no opinion as to whether
these claims might be obvious over the teachings and suggestions of the
Kashi reference, considered alone, or considered in combination with one or
more additional references. In the event of further prosecution of this
application, including any review prior to allowance, we leave such further
consideration to the discretion of the Examiner. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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Rejections B, C, D, and E of the Remaining Dependent Claims
In light of our reversal of Rejection A under §102(a)(2) of
independent claims 1, 13, and 15, supra, we also reverse obviousness
rejections B, C, D, and E of the remaining claims, which variously and
ultimately depend from claims 1, 13, and 15. On this record, the Examiner
has not shown how the additionally cited secondary references overcome the
aforementioned deficiencies of Kashi, as discussed above regarding
independent claim 1.
CONCLUSIONS
The Examiner erred in rejecting claims 1, 2, 13–15, 17, and 21 under
Rejection A, as anticipated by Kashi under 35 U.S.C. § 102(a)(2).
The Examiner erred in rejecting dependent claims 3–12, and 18–20
under Rejections B–E, as obvious under 35 U.S.C. § 103.
DECISION SUMMARY
REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 13–15,
17, 21
102(a)(2) Kashi 1, 2, 13–15,
17, 21
3, 4, 19, 20 § 103 Kashi, Gear 3, 4, 19, 20
5, 6, 11, 12 § 103 Kashi,
Silverman
5, 6, 11, 12
7, 18 § 103 Kashi, Shilman 7, 18
8–10 § 103 Kashi, Bargeron 8–10
Overall
Outcome
1–15, 17–21