Adobe Inc.

Patent Trials and Appeals Board

May 17, 2021

2020001403 (P.T.A.B. May. 17, 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.
13/710,347 12/10/2012 Benjamin D. Follis 2713US01 1697
108982 7590 05/17/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
LAMB, CHRISTOPHER RAY
ART UNIT PAPER NUMBER
2694
NOTIFICATION DATE DELIVERY MODE
05/17/2021 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):
Fig1Docket@fig1patents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN D. FOLLIS and DENNIS E. GRIFFIN
____________

Appeal 2020-001403
Application 13/710,347
Technology Center 2600
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 12, 24–32, 34–37, and 39–44, i.e., all pending claims.
We have jurisdiction 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 (2019). Appellant identifies the real party in interest
as Adobe Inc. Appeal Br. 2.
Appeal 2020-001403
Application 13/710,347

2
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns accelerometer-
based biometric data providing input to “a device in a 2-dimensional (2D)
manner (such as by entering the data using a stylus or finger to apply
pressure to a touchscreen) or in a 3-dimensional (3D) manner (such as by
moving the device in 3D space).” Spec. ¶ 16.2 As an example, “a user may
be informed (e.g., verbally or via another communication channel) to trace a
particular shape (e.g., a square) in 3D space with the user device in order to
access a document.” Id. ¶ 60. As another example, “a user may be informed
(e.g., verbally or via another communication channel) to trace a particular
shape (e.g., a pyramid) in 3D space with the user device in order to indicate
acceptance to a contract or agreement.” Id. After the user traces a shape in
3D space with the user device, a verification system may determine whether
the traced 3D shape corresponds sufficiently to the previously specified
“particular shape.” Id. Moreover, accelerometer data representing the
traced 3D shape may be “embedded in a document,” e.g., “included in
metadata associated with a document” or “included as hidden or otherwise
non-visible data in the document.” Id. ¶ 57; see id. ¶ 58.

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed December 10, 2012; “Final Act.” for the Final Office
Action, mailed March 4, 2019; “Appeal Br.” for the Appeal Brief, filed
August 13, 2019; “Ans.” for the Examiner’s Answer, mailed November 13,
2019; and “Reply Br.” for the Reply Brief, filed December 12, 2019.
Appeal 2020-001403
Application 13/710,347

3
Exemplary Claim
Independent claim 12 exemplifies the claims at issue and reads
as follows:
12. A method comprising:
outputting, by a device, information identifying a
particular shape to be traced in three-dimensional space
through movement of the device as a whole;
receiving, by the device, user input data describing user
input of a user signature within an electronic document using
a touchscreen;
generating, by the device, accelerometer data from an
accelerometer, the accelerometer data describing the movement
of the device in three dimensional space;
embedding, by the device, the user input data and the
accelerometer data within the electronic document; and
outputting, by the device, the electronic document as
including the embedded user input data and the embedded
accelerometer data as configured to verify the user signature
based at least in part on a comparison of having the particular
shape identified by the information output by the device.
Appeal Br. 25 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103(a),3 the
Examiner relies on the following prior art:
Name Reference Date
Bayram et al. (“Bayram”) US 2010/0225443 A1 Sept. 9, 2010

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013.
Because the filing date for Application 13/710,347 predates the AIA’s
amendment to § 103, this decision refers to the pre-AIA version of § 103.
Appeal 2020-001403
Application 13/710,347

4
Name Reference Date
Guenther US 2011/0179289 A1 July 21, 2011
Agevik at al. (“Agevik”) US 2011/0223974 A1 Sept. 15, 2011
Nasiri et al. (“Nasiri”) US 2012/0007713 A1 Jan. 12, 2012
The Rejections on Appeal
Claims 12, 24, 25, 29–32, 34, 36, 37, 41, 43, and 44 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Bayram, Nasiri, and
Guenther. Final Act. 5–10.
Claims 26, 27, 39, and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bayram, Nasiri, Guenther, and applicant’s admitted prior
art. Final Act. 10–11.
Claims 28, 35, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bayram, Nasiri, Guenther, and Agevik. Final Act. 11.
ANALYSIS
We have reviewed the § 103(a) rejections in light of Appellant’s
arguments that the Examiner erred. Based on the record before us and for
the reasons explained below, we agree with Appellant’s arguments that the
Examiner erred in finding that the cited portions of the references teach or
suggest the claimed subject matter. We add the following to address and
emphasize specific findings and arguments.
The § 103(a) Rejection of Claims
12, 24, 25, 29–32, 34, 36, 37, 41, 43, and 44
INDEPENDENT CLAIM 12
As noted above, the § 103(a) rejection of claim 12 rests on Bayram,
Nasiri, and Guenther. See Final Act. 5–7. Appellant argues that the
Examiner erred in rejecting claim 12 because the references fail to teach or
Appeal 2020-001403
Application 13/710,347

5
suggest the following limitation in claim 12: “outputting, by a device,
information identifying a particular shape to be traced in three-dimensional
space through movement of the device as a whole.” See Appeal Br. 17–19;
Reply Br. 3–5. The Examiner cites the combined disclosures in Bayram,
Nasiri, and Guenther as teaching or suggesting the disputed limitation in
claim 12. See Final Act. 6, 12–13; Ans. 11.
Appellant concedes that “Nasiri describes receiving a trajectory drawn
by a user and matching it with ‘the user’s predetermined air signature.’”
Appeal Br. 17 (quoting Nasiri ¶ 54). But Appellant asserts that “Nasiri is
limited to receiving a trajectory drawn by a user for verification with an
authorized user’s predetermined air signature.” Id. at 18. Appellant further
asserts that “the express purpose of Nasiri would be defeated if Nasiri was
permitted to output an air signature that is used to control access, as it would
expose the actual ‘secret’ of the air signature and would be easily
compromised by a malicious party.” Id. In addition, Appellant disputes that
Bayram and Guenther disclose “outputting . . . a particular shape to be traced
in three-dimensional space.” See Appeal Br. 17–19; Reply Br. 3–5.
The Examiner explains that “Nasiri is only relied upon to teach what
an air signature is” and that “[e]ven if Nasiri did not disclose outputting the
signature, the combination of references does.” Ans. 11; see Final Act. 6,
12–13. Further, the Examiner makes the following findings: First, Bayram
“discloses that the user signature can be used locally or in a remote
application or service.” Ans. 11 (citing Bayram ¶ 26). Second, Guenther
“is directed to embedding a signature in a document that is shared in, e.g.,
an office environment or over the Internet.” Id. (citing Guenther ¶ 142).
Appeal 2020-001403
Application 13/710,347

6
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Bayram,
Nasiri, and Guenther teach or suggest the disputed limitation in claim 12.
Nasiri discloses authentication using “an air signature,” e.g., “an abstract set
of shapes and curves” or “a real signature drawn in the air.” Nasiri ¶ 54. To
authenticate a user and unlock a device, Nasiri compares a “trajectory drawn
by the user” with “the user’s predetermined air signature.” Id. In contrast to
inputting data representing a “trajectory drawn by the user,” the disputed
limitation in claim 12 requires “outputting . . . information identifying a
particular shape to be traced in three-dimensional space.” Appeal Br. 25.
Additionally, the disclosures in Bayram and Guenther about “outputting the
signature” after a user traces a signature do not correspond to “outputting . . .
information identifying a particular shape to be traced in three-dimensional
space.” See, e.g., Ans. 11; Bayram ¶ 26; Guenther ¶ 142.
Because the Examiner has not adequately explained how the cited
portions of Bayram, Nasiri, and Guenther teach or suggest the disputed
limitation in claim 12, we do not sustain the § 103(a) rejection of claim 12.
INDEPENDENT CLAIMS 30 AND 37 AND
DEPENDENT CLAIMS 24, 25, 29, 31, 32, 34, 36, 41, 43, AND 44
Independent claim 30 includes a limitation similar to the disputed
limitation in claim 12, i.e., “receiving . . . accelerometer data describing
movement of the device in three-dimensional space and is collected
responsive to information output to trace a particular shape in three-
dimensional space.” Appeal Br. 21, 27. Independent claim 37 also includes
a limitation similar to the disputed limitation in claim 12, i.e., “means for
outputting information identifying a particular shape to be traced in three
Appeal 2020-001403
Application 13/710,347

7
dimensional space by a device.” Id. at 21, 28. For the reasons discussed for
claim 12, we do not sustain the § 103(a) rejection of claims 30 and 37.
Claims 24, 25, 29, and 43 depend from claim 12; claims 31, 32, 34,
and 36 depend from claim 30; and claims 41 and 44 depend from claim 37.
For the reasons discussed for claims 12, 30, and 37, we do not sustain the
§ 103(a) rejection of claims 24, 25, 29, 31, 32, 34, 36, 41, 43, and 44.
The § 103(a) Rejections of Claims 26–28, 35, 39, 40, and 42
Claims 26–28 depend from claim 12; claim 35 depends from
claim 30; and claims 39, 40, and 42 depend from claim 37. On this record,
the Examiner has not shown how Agevik and applicant’s admitted prior art
overcome the deficiency in Bayram, Nasiri, and Guenther discussed above
for claims 12, 30, and 37. Hence, for the reasons discussed for claims 12,
30, and 37, we do not sustain the § 103(a) rejections of claims 26–28, 35,
39, 40, and 42.
Because the preceding determinations resolve the § 103(a) rejections
for all pending claims, we need not address Appellant’s other arguments
regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may
render a decision based on “a single dispositive issue”).
CONCLUSION
We reverse the Examiner’s decision to reject claims 12, 24–32,
34–37, and 39–44.
Appeal 2020-001403
Application 13/710,347

8
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12, 24, 25,
29–32, 34,
36, 37, 41,
43, 44
103(a) Bayram, Nasiri, Guenther
12, 24, 25,
29–32, 34,
36, 37, 41,
43, 44
26, 27, 39,
40 103(a)
Bayram, Nasiri,
Guenther,
applicant’s admitted
prior art
26, 27, 39, 40
28, 35, 42 103(a) Bayram, Nasiri, Guenther, Agevik 28, 35, 42
Overall
Outcome
12, 24–32,
34–37, 39–
44
REVERSED