Adobe Inc.

Patent Trials and Appeals Board

Jul 21, 2021

2020002764 (P.T.A.B. Jul. 21, 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.
14/698,220 04/28/2015 Shannon Hickey 20030.29 8894
119741 7590 07/21/2021
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
EXAMINER
TANK, ANDREW L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
07/21/2021 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHANNON HICKEY
____________

Appeal 2020-0027641
Application 14/698,220
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.

Opinion for the Board filed by BEAMER, Administrative Patent Judge.
Opinion Dissenting filed by MANTIS MERCADER, Administrative Patent
Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20, which constitute all the claims pending in this
application. See Claims Appendix. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Adobe, Inc. as the real party in
interest. (Appeal Br. 2.)
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THE INVENTION
Appellant’s disclosed and claimed invention is directed to receiving
an electronic signature in an electronic document utilizing an interface area
which includes a signature overlay for capturing the signature. (Abstract.)
Claims 1, 13, and 18 are independent.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. In a digital medium environment, a method of capturing
signatures to include within a digital document, comprising:
providing an electronic document for display via a user
interface of a computing device, the user interface comprising a
bounded area component of the electronic document;
in response to identifying a user interaction with the
bounded area component, collecting user input of a first portion
of an electronic signature via the bounded area component in a
first coordinate scheme having a first origin point defined
relative to the bounded area component;
generating a digital overlay having a first size exceeding
a size of the bounded area;
receiving, by at least one processor, user input of a
second portion of the electronic signature via the digital overlay
in a second coordinate scheme having a second origin point
defined relative to the digital overlay;
transferring at least one of the first portion of the
electronic signature or the second portion of the electronic
signature to a common coordinate scheme to generate, by the at
least one processor, an original signature in the common
coordinate scheme based on the first portion of the electronic
signature and the second portion of the electronic signature;
modifying, by the at least one processor, the original
signature to generate an adjusted signature; and
providing the adjusted signature for display within the
bounded area component via the computing device.
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(Appeal Br. 20 (Claims Appendix).)

REJECTIONS
The Examiner rejected claims 1–3, 5–13, and 15–18 under 35 U.S.C.
§ 102(a)(2) as being anticipated by VanBlon et al. (US 2016/0180160 A1,
pub. June 23, 2016) (hereinafter “VanBlon”). (Final Act. 4.)
The Examiner rejected claims 4, 14, 19, and 20 under 35 U.S.C. § 103
as being unpatentable over VanBlon and Park et al. (US 2015/0153893 A1,
pub. June 4, 2015) (hereinafter “Park”). (Final Act. 9.)
ISSUE ON APPEAL
Appellant’s arguments in the Appeal and Reply Briefs present the
following issue:2
Whether the Examiner erred in finding VanBlon discloses the
limitations of
in response to identifying a user interaction with the
bounded area component, collecting user input of a first portion
of an electronic signature via the bounded area component in a
first coordinate scheme having a first origin point defined
relative to the bounded area component,

receiving, by at least one processor, user input of a second
portion of the electronic signature via the digital overlay in a
second coordinate scheme having a second origin point defined
relative to the digital overlay,

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Sept. 12, 2019, hereinafter
“Appeal Br.”); the Reply Brief (filed Feb. 27, 2020, hereinafter “Reply
Br.”); the Final Office Action (mailed Apr. 18, 2019, hereinafter “Final
Act.”);; and the Examiner’s Answer (mailed Dec. 30, 2019, hereinafter
“Ans.”) for the respective details.
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[and]
transferring at least one of the first portion of the electronic
signature or the second portion of the electronic signature to a
common coordinate scheme to generate, by the at least one
processor, an original signature in the common coordinate
scheme based on the first portion of the electronic signature and
the second portion of the electronic signature,

as recited in independent claim 1, and the commensurate limitations recited
in independent claims 13 and 18. (Appeal Br. 6–16; Reply Br. 2–4.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments.
In finding that VanBlon discloses the limitations at issue, the
Examiner relies on VanBlon as disclosing a buffer or buffers (illustrated as
areas 304b and 304c to input field overlay 304a in Figure 3) and permitting
the user to provide handwriting input strokes to additional areas (304b,
304c) of the input and display device 301, improving the accuracy of
recognition of the handwriting input strokes. VanBlon further discloses an
embodiment accepting handwriting input strokes in these extended areas,
which may include the entirety of the input and display device area 301,
such that handwriting input strokes are mapped or collapsed into the
underlying input field, e.g., the “To” field of the example email application
illustrated. (Final Act. 4–5; Ans. 3–7; VanBlon Fig. 3, ¶¶ 30, 33–37, 40.)
Appellant argues that “VanBlon, in its entirety, fails to expressly
discuss coordinate schemes or collecting a portion of an electronic signature
in a coordinate scheme” (Appeal Br. 9, citing VanBlon paras. 33–35, Fig. 3),
and thus “fails to expressly describe at least three of the elements recited in
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independent claim 1 and similarly recited in independent claims 13 and 18.”
(Appeal Br. 8.) Appellant contends the rejection of claim 1 “appears to
assert that the use of the initial input field overlay and/or the buffer areas
described by VanBlon is inherently the same as using a coordinate scheme
or inherently requires the use of a coordinate scheme” (Appeal Br. 12, citing
Final Act. 3), but that
an area defined by boundaries is not the same as a coordinate
scheme inasmuch as an element defined by boundaries can be
associated with no coordinate scheme. Moreover, an area
defined by boundaries can be associated with a coordinate
scheme completely divorced from the boundaries of the element
itself (e.g., a single coordinate scheme defined by a corner of
the entire user interface).

(Appeal Br. 12–13.)
We agree with Appellant. The Examiner finds that
[t]he use of the first overlay boundaries of input overlay 304a to
capture discrete user inputs in the form of the strokes in
VanBlon is the use of [a] coordinate scheme [ ] defined by the
boundaries of the first input overlay 304a. A first origin point,
defined to be relative to the bounded input overlay 304a, can be
defined as any starting point in 304a, as [for] example the upper
left corner 304a.

(Ans. 4, citing VanBlon paras. 33–35, Fig. 3, ¶ 24 (emphasis added).) While
the Examiner’s reasoning appears logical, VanBlon does not expressly or
implicitly define such a first origin point relative to the overlay; here, the
Examiner makes the definition, which is extrinsic to the reference. The cited
portions of VanBlon are devoid of disclosure of coordinate schemes used by
field overlay 304a and areas 304b and 304c. Further, the Examiner provides
no reasoning why such the Examiner’s definition “necessarily flows” from
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VanBlon. See Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). For
example, Appellant’s argument that VanBlon could be read as disclosing “a
single coordinate scheme defined by a corner of the entire user interface”
(Appeal Br. 13) appears supported by VanBlon’s disclosure of “accept[ing]
handwriting input strokes” which “may include the entirety of the input and
display device area 301.” VanBlon ¶ 40.
Accordingly, we are constrained by the record to reverse the
Examiner’s anticipation rejection of independent claim 1, as well as
independent claims 13 and 18 commensurate in scope, and all dependent
claims.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–13,
15–18
102(a)(2) VanBlon 1–3, 5–13,
15–18
4, 14, 19, 20 103 VanBlon, Park 4, 14, 19,
20
OVERALL
OUTCOME
1–20

REVERSED

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MANTIS MERCADER, Administrative Patent Judge, dissenting opinion.

I respectfully dissent from the Majority’s decision in reversing the
Examiner’s rejection of claims 1–3, 5–13, and 15–18 under 35 U.S.C. § 102
and claims 4, 14, 19, and 20 under 35 U.S.C. § 103.
The Majority states that
[w]hile the Examiner’s reasoning appears logical, VanBlon
does not expressly or implicitly define such a first origin point
relative to the overlay; here, the Examiner makes the definition,
which is extrinsic to the reference. The cited portions of
VanBlon are devoid of disclosure of coordinate schemes used
by field overlay 304a and areas 304b and 304c.

See supra. I respectfully disagree because giving claims their broadest
reasonable interpretation must take into account any definitions given in the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
“During examination, ‘claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (citations omitted). When the specification
states the meaning that a term in the claim is intended to have, the claim is
examined using that meaning, in order to achieve a complete exploration of
the applicant's invention and its relation to the prior art. In re Zletz, 893 F.2d
319, 321–22 (Fed. Cir. 1989).
Appellant’s own Specification states that “[b]y way of example,
bounded area 208 can have a coordinate scheme having a defined origin
with coordinates (0,0) located at the bottom left hand comer of the bounded
area 208.” Spec. para. 124 (emphasis added). Appellant’s own
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Specification further states that “the origin of the coordinate scheme for the
signature overlay 214 may occur at the bottom left hand comer of the
signature overlay 214.” Spec. para. 125 (emphasis added).
The Examiner consistent with Appellant’s Specification finds that
“[a] first origin point, defined to be relative to the bounded input overlay
304a, can be defined as any starting point in 304a, as example the upper left
corner 304a” (emphasis added). Ans. 4 (citing VanBlon Fig. 3, 304a).
Thus, I would agree with the Examiner’s finding that “the input overlay
304a having discrete points, including an origin point, such as an upper left
corner point of the input overlay, does anticipate the broadly claimed ‘first
coordinate scheme having a first origin point defined relate to the bounded
area component’.” Ans. 4.
Similarly, the Examiner interprets that in VanBlon a second capture
scheme for the larger digital overlay is disclosed by the addition of 304b to
the 304a input overlay, yielding a second input capture scheme of
304a+304b. Ans. 4 (citing VanBlon Fig. 3, paras. 36–37). The Examiner
finds, and I agree, that a second origin point, is defined relative to the larger
digital overlay by a point in the 304a+304b scheme, for example the lower
right corner of the 304a+304b enlarged digital overlay. Ans. 4 (citing
VanBlon on Fig. 3).
Accordingly, I would agree with the Examiner’s finding that the
combined input overlay 304a+304b having discrete input points, includes its
own origin point such as a lower right corner of the 304a+304b overlay,
anticipates the broadly claimed “second coordinate scheme having a second
origin point defined relative to the digital overlay.” Ans. 3–4.
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I also agree with the Examiner’s finding that the claimed common
coordinate scheme of the claim is broad as it only requires that a first portion
and second portion is transferred to it and the original signature is then
generated in the common coordinate scheme. Ans. 5. The Examiner finds,
and I agree, that in VanBlon, the first coordinate scheme 304a and the
second coordinate scheme 304a+304b each have portions of the total
signature. Ans. 5 (citing VanBlon, paras. 36–37). The Examiner finds that
the first and second portions are combined and translated into the completed
signature which is presented in the common coordinate scheme of
304a+304b which is then mapped or shrunk into the underlying input field.
Ans. 5 (citing VanBlon, para. 40).
Moreover, there is no ipsissimis verbis test for determining whether a
reference discloses a claim element, i.e., identity of terminology is not
required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, just
because VanBlon does not mention the term “coordinate” that does not mean
that the claim limitation does not read on something disclosed in VanBlon as
explained, supra.
Under 35 U.S.C. § 102, it is necessary for claims to “‘read on’
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or ‘fully met’ by it.” Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). Both explicit and inherent
reference teachings, which are questions of fact, may be relied upon for
claim rejections under §§ 102 or 103. In re Napier, 55 F.3d 610, 613 (Fed.
Cir. 1995). “In relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
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from the teachings of the applied prior art.” Ex Parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990).
The Examiner did provide a technical reasoning to support the
interpretation of the disputed limitations of claim 1 consistent with
Appellant’s own Specification as explained above.
Accordingly, I would have affirmed the Examiner’s rejection of claim
1 and for the same reasons the Examiner’s rejections of claims 2–3, 5–13,
and 15–18 under 35 U.S.C. § 102 and claims 4, 14, 19, and 20 under
35 U.S.C. § 103 as Appellant repeats the same argument with respect to the
additional claims. See Appeal Br. 18.
Accordingly, I respectfully dissent.