Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jul 8, 2021

2020001975 (P.T.A.B. Jul. 8, 2021)

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.
14/665,413 03/23/2015 William H. Vong 355121-US-NP 7785
69316 7590 07/08/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
BUKOWSKI, KENNETH
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
07/08/2021 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
jkarr@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 WILLIAM H. VONG

Appeal 2020-001975
Application 14/665,413
Technology Center 2600

Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and
DAVID M. KOHUT, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 25–36. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (“The
word ‘applicant’ when used in this title refers to the inventor or all of the
joint inventors, or to the person applying for a patent as provided in
§§ 1.43, 1.45, or 1.46.”). Appellant identifies the real party in interest as
“Microsoft Technology Licensing, LLC.” Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “ink and touch input [that] may be
combined to provide diverse input scenarios.” Spec., Abstr. Claims 1 and
25, reproduced below, are illustrative of argued subject matter.
1. A system comprising:
one or more processors; and
one or more computer-readable storage media storing
computer-executable instructions that, responsive to execution
by the one or more processors, cause the system to perform
operations including:
detecting that freehand ink content is in process of being
applied via a pen to a display that is displaying primary content;
identifying a touch gesture that is applied to a portion of the
freehand ink content while the freehand ink content is in the
process of being applied;
interpreting the touch gesture as a command to modify the
freehand ink content; and
modifying the freehand ink content while it is in the process of
being applied based on the touch gesture by converting the
freehand ink content to a machine-generated shape that
modifies the freehand ink content.
25. A system comprising:
one or more processors; and
one or more computer-readable storage media storing
computer-executable instructions that, responsive to execution
by the one or more processors, cause the system to perform
operations including:
detecting that freehand ink content is in process of being
applied via a pen to a display that is displaying primary content;
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identifying a touch gesture that is applied to a portion of the
freehand ink content at a location on the display while the
freehand ink content is in the process of being applied;
anchoring the freehand ink content in the location;
modifying the freehand ink content while it is in the process of
being applied based on the touch gesture by converting the
freehand ink content to a machine-generated shape that
modifies the freehand ink content;
detecting a movement associated with the pen while the
freehand ink content continues to be applied after conversion
into the machine-generated shape; and
visually moving the machine-generated shape in a direction that
corresponds with the movement associated with the pen.
Appeal Br. 23–25 (Claims App.).
Rejections
Claims 1–3, 8, 25, 30, and 31 stand rejected under 35 U.S.C. § 103
as being unpatentable over Choi (US 2014/0191983 A1; published
July 10, 2014) and Meridian (US 8,004,498 B1; issued Aug. 23, 2011).
Final Act. 3–5.
Claims 4, 5, and 32 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Choi, Meridian, and Hinckley (US 2011/0185300 A1;
published July 28, 2011). Final Act. 5–6.
Claim 5–7, 25–29, and 33–36 stand rejected under 35 U.S.C. § 103
as being unpatentable over Choi, Meridian, and Adobe (Adobe® Illustrator:
Help and tutorials, Jan. 2014). Final Act. 6–9.
OPINION
Choi-Meridian Combination
All claims are rejected as obvious over Choi and Meridian.
Final Act. 3–9. Before addressing Appellant’s specific contentions, we
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explain the Examiner’s proposed combination of Choi’s and Meridian’s
teachings for claims 1 and 25.
Choi’s applied teachings are shown by Figure 9, which is
partially-reproduced below and illustrates a “thickness adjustment editing
function” (Choi ¶ 134) responsive to a “first touch gesture by a touch pen
and a second touch gesture by a user’s hand (e.g., finger, palm, etc.) to a
touchscreen” (id. ¶ 95).
Choi’s Figure 9 illustrates a “thickness adjustment editing
function” (Choi ¶ 134) responsive to a “first touch gesture
by a touch pen and a second touch gesture by a user’s
hand (e.g., finger, palm, etc.) to a touchscreen” (id. ¶ 95).

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Meridian’s applied teachings are shown by Figure 6, which is
partially-reproduced below and illustrates a “method 300 for multipoint
temporary anchoring” (Meridian col. 7, ll. 53–54) that “select[s] a first area
of a graphical object to lock” (id. at ll. 58–59) and “selects a second area of
the graphical object to manipulate” (id. at col. 8, ll. 1–2).
The Choi-Meridian combination stands on two principle teachings.
In Choi’s touch-display, a stylus (310) inputs freehand-ink content (311) and
a fingertip-touch gesture (motion 322 or 323 of fingertip 320) manipulates
the freehand-ink content (311) while the content is being input.
Final Act. 3–4; Ans. 3, 5. In Meridian, a fingertip-touch gesture touches a
portion (torso 601) of a graphic object (fish object) to select the object for a
manipulation. Final Act. 4; Ans. 3, 5. These teachings are combined to
“Meridian’s Figure 6 illustrates a “method 300 for multipoint
temporary anchoring” (Meridian col. 7, ll. 53–54) that “select[s]
a first area of a graphical object to lock” (id. at col. 7, ll. 58–59)
and “selects a second area of the graphical object to manipulate”
(id. at col. 8, ll. 1-2).

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produce a touch-display whereon a stylus is drawing freehand-ink content
(Choi), a fingertip-touch gesture touches a portion of the content to select the
content for manipulation (Meridian), and the content is then manipulated
while being input (Choi). Id.
In a specific manipulation underpinning the rejection of claim 1, a
fingertip-gesture manipulates the freehand-ink content by causing a “size
adjustment, color change, thickness change, cutting, copy, delete, move,
rotation, and the like.” Ans. 4 (quoting Choi ¶ 130); see also Final Act. 4.
In a specific manipulation underpinning the rejection of claim 25, a
fingertip-gesture and stylus collectively manipulate the freehand-ink content
by respectively anchoring and dragging opposite ends of the content. Ans. 4
(citing Meridian col. 4, ll. 21–34); see also Final Act. 5.
Claims 1–8 and 30–36
In contesting the rejections of claims 1–8 and 30–36, Appellant
addresses only the rejection of claim 1 with particularity (see Appeal Br. 12–
18), summarily contends the rejection of independent claim 30 is similarly
erred (id. at 21), and does not specifically address the rejections of claims 2–
8 and 31–36. We are unpersuaded by Appellant’s assertions of error for
the rejection of claim 1. We are therefore also unpersuaded of error in the
Examiner’s decision to reject claims 1–8 and 30–36, not argued separately.
See id. at 18, 21.
Appellant contends:
Choi’s pen input (e.g., pattern 311) is drawn on a blank display.
As such, Choi cannot reasonably be construed as teaching or
rendering obvious: “detecting that freehand ink content is in
process of being applied via a pen to a display that is displaying
primary content,” as required by claim 1.
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Appeal Br. 16 (original emphasis). We are unpersuaded of Examiner error
for the following reasons.
The Examiner finds prior art touch-displays typically permitted
drawing of freehand-ink content over other content (e.g., on an image) and
Choi’s touch-display would have been thus understood as also doing so.
Ans. 3–4. Appellant does not address the Examiner’s findings or reasoning.
See Appeal Br. 16;see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984) (“After a prima facie case . . . has been established, the burden of . . .
[r]ebuttal is . . . a showing of facts supporting the opposite conclusion.”
(internal quotation marks and citation omitted)).
Appellant also contends:
Choi simply teaches that a characteristic of a shape (e.g., the
width of a line that makes up the shape) may be modified (e.g.,
increased or decreased) based on a hand gesture. Choi does not
teach that the shape is converted into a machine-generated
shape, as provided by claim 1.
Appeal Br. 16 (original emphasis). We are unpersuaded of Examiner error
for the following reasons.
The Choi-Meridian combination implements a fingertip-touch gesture
that manipulates freehand-ink content by causing a “size adjustment, color
change, thickness change, cutting, copy, delete, move, rotation, and the
like.” Ans. 4 (quoting Choi ¶ 130); see also Final Act. 4; supra 6
(describing the combination). Appellant does not show this feature fails to
manipulate (i.e., convert) a freehanded shape into a machine-generated
shape. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (affirming
because appellant “merely argued that the claims differed from [the prior
art], and chose not to proffer a serious explanation of this difference.”).
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Appellant also contends:
Meridian . . . does not describe application of freehand ink
content at all, let alone modification of such content while it is
being applied. As such, Meridian cannot reasonably be
construed as teaching or rendering obvious “modifying
freehand ink content while it is in the process of being applied
based on the touch gesture by converting the freehand ink
content to a machine-generated shape that modifies the
freehand ink content,” as required by claim 1.
Appeal Br. 18 (original emphasis). We are unpersuaded of Examiner error
for the following reasons.
As stated supra, the Examiner finds the Choi-Meridian combination
discloses that a stylus draws freehand-ink content (Choi), a fingertip-touch
gesture selects a portion of the content for manipulation (Meridian), and the
content is then manipulated while being input (Choi). Final Act. 4; Ans. 3,
5. Appellant does not specifically address this combination, much less do so
with sufficient evidence or reasoning to show that the Examiner has erred.
For the foregoing reasons, we are unpersuaded of error in the
rejections of claims 1–8 and 30–36 under 35 U.S.C. § 103. We therefore
sustain the Examiner’s decision to reject: claims 1–3, 8, 25, 30, and 31 as
obvious over Choi and Meridian; claims 4, 5, and 32 as obvious over Choi,
Meridian, and Hinckley; and claims 5–7 and 33–36 as obvious over Choi,
Meridian, and Adobe.
Claims 25–29
In contesting the rejections of claims 25–29, Appellant addresses only
the rejection of independent claim 25 (Appeal Br. 18–21) and does not
address the rejections of claims 26–29. We are unpersuaded by Appellant’s
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assertions of error for the rejection of claim 25. We are therefore also
unpersuaded of error in the Examiner’s decision to reject claims 25–29.
Appellant contends claim 25 recites “elements that are substantially
similar to those discussed above with regard to claim 1” (Appeal Br. 18) and
“is allowable for substantially the same reasons” (id. at 19). For the reasons
discussed above with respect to claim 1, we are unpersuaded of Examiner
error.
Appellant also contends: “[I]n contrast to [the claimed] ‘anchoring
the freehand ink content in the location’ . . . , Meridian describes locking a
portion of a graphical object (e.g., the head and torso of the fish object
discussed above).” Id. at 20 (original emphasis). We are unpersuaded of
Examiner error for the following reasons.
The Examiner finds Meridian’s manipulation of a graphics object
(anchoring and dragging of opposite ends) suggests the same manipulation
of Choi’s freehand-ink content. Ans. 4; Final Act. 5; see also supra 6
(describing the combination). Appellant does not address this manipulation
proposed for claim 25’s rejection.
Appellant also contends:
[R]ather than teaching [the claimed] “detecting a movement
associated with the pen while the freehand ink content
continues to be applied after conversion into the
machine-generated shape” . . . , Meridian simply describes that
a user may move the non-locked portion of the graphical object
with her hand or a different input device.
Appeal Br. 20. We are unpersuaded of Examiner error for the following
reasons.
The Examiner finds the Choi-Meridian combination includes a stylus
that draws freehand-ink content and then, to extend the content, opposite
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ends are respectively anchored and dragged via placement of a
fingertip-touch gesture (anchoring) and movement of the stylus (dragging).2
Ans. 4; Final Act. 5; see also supra 6 (describing the combination).
Appellant does not address the combination with sufficient evidence or
reasoning to show that the Examiner has erred.
For the foregoing reasons, we are unpersuaded of error in the
rejections of claims 25–29 under 35 U.S.C. § 103. We therefore sustain the
Examiner’s decision to reject claims 25–29 as obvious over Choi, Meridian,
and Adobe.
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–8 and 25–36.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–3, 8, 25,
30, 31 103 Choi, Meridian
1–3, 8, 25,
30, 31
4, 5, 32 103 Choi, Meridian, Hinckley 4, 5, 32
5–7, 25–29,
33–36 103
Choi, Meridian,
Adobe
5–7, 25–29,
33–36
Overall
Outcome 1–8, 25–36

2 A helpful visual, i.e., hypothetical example, of the combination is as
follows: Meridian’s graphic object is instead a freehand-ink line drawn by
the stylus (from nose to tail); a portion of the line is then anchored by a
finger-touch gesture; and the end of the line is then moved about the
anchored portion by respective further movement of the stylus. Meridian 2,
ll. 21–50; 4, ll. 25–34.
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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