Ex Parte Bae

Patent Trial and Appeal Board

May 30, 2014

11676628 (P.T.A.B. May. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEOK-HYUNG BAE
____________________

Appeal 2011-012481
Application 11/676,628
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant’s invention is directed to a system that provides for both
sketching and editing two dimensional (2D) vector curves while in the same
drawing mode and determines whether a stroke made by a pen stylus is a
drawing stroke or an edit stroke based on the trajectory of the pen stylus
(Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A drawing system, comprising:

a computer system having a display and a pen input device having a
pen stylus;

the computer system having curve model generation software running
thereon;

the curve model generation software responsive, when in a drawing
mode, to drawing strokes made with strokes of the pen stylus and generating
two-dimensional (2D) vector curves therefrom;

the curve model generation software responsive in the drawing mode
to at least one edit gesture made with a stroke of the pen stylus to any one of
the 2D vector curves to edit the 2D vector curve;

the curve model generation software responsive when in the drawing
mode only to a pen trajectory with which the stroke is made to determine
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whether the stroke made with the pen stylus is the drawing stroke from
which to generate the vector curve or the edit gesture, the curve model
generation software determining that the stroke made with the pen stylus is
the drawing stroke when the trajectory of the pen stylus is that of a smooth
stroke and determining that the pen stroke is the edit gesture when the
trajectory of the pen stylus is not that of a smooth stroke.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Takeuchi US 2002/0082081 A1 June 27, 2002
Igarashi US 6,549,201 B1 Apr. 15, 2003
McDaniel US 2006/0082571 A1 Apr. 20, 2006
Elchuri US 2006/0227130 A1 Oct. 12, 2006

Bae et al., Digital Styling for Designers: Sketch Emulation in Computer
Environment, Lecture Notes in Computer Science (Proceedings of
International Conference on Computation Science and Its Applications) 690-
700, (2003).

Tsang et al., A Suggestive Interface for Image Guided 3D Sketching, CHI
‘04, Vienna, Austria, vol. 6, Number 1, 591-598 (2004).

Zeleznik et al., Fluid Inking: Augmenting the Medium of Free-Form Inking
with Gestures, ACM, 155-162 (2006).

Claims 1-9 and 14-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tsang in view of Igarashi.
Claims 10-13 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsang in view of Igarashi and Zeleznik.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsang in view of Igarashi and McDaniel.
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Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsang in view of Igarashi and Elchuri.
Claims 24-33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsang in view of Igarashi and Bae.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsang in view of Igarashi and Takeuchi.
Claims 1, 10, 14, and 18 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 4, 8, and 13 of copending Application No. 11/676,7061 in view of
Igarashi.
Claims 1, 7-13, and 34 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 4, 5, 9-12, 19, and 21-23 of copending Application No.
11/676,6942 in view of Igarashi.
Claims 1, 7-9, and 14 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1 and 7-10 of copending Application No. 11/676,6563 in view of
Igarashi.

II. ISSUE
The dispositive issue before us is whether the Examiner erred in
finding the combination of Tsang and Igarashi teaches or would have
suggested “the curve model generation software determining that the stroke
made with the pen stylus is the drawing stroke when the trajectory of the pen

1 Patent Number 7,701,457 B2, issued April 20, 2010.
2 Patent Number 7,696,998 B2, issued April 13, 2010.
3 Patent Number 7,750,911 B2, issued July 6, 2010.
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stylus is that of a smooth stroke and determining that the pen stroke is the
edit gesture when the trajectory of the pen stylus is not that of a smooth
stroke” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Tsang
1. Tsang discloses a three dimensional (3D) sketching system
where all stylus stroke input to the system represents either curve and line
drawings (section “Gestures,” p. 593). When the user presses hard on the
stylus tip beyond a predetermined threshold of pressure, the system enters a
gesturing mode where the user can enter three gestures: stroke, cut, and
delete (id.).
2. The system enables the user to use a pinning technique where a
point on the image represents where a drawn curve passes therethrough (Fig.
8; section “Pinning,” p. 594). In particular, the user first selects a drawn
curve and specifies a pin point by pressing the pen down (id.). Dragging the
tip away from the pin point adjusts the area of influence (a circle centered at
the pin point with radius equal to the distance from the cursor to the pin
point (id.).
Igarashi
3. Igarashi discloses a computer-aided sketching system for 2D
freeform strokes that are converted into 3D polygonal surfaces, which
enables the user to draw a 2D line in a drawing mode and draw a closed
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stroke to indicate that the user desires to enter the “extrusion mode” for
editing the sketch (Figs. 3E, 3F, and 3G; col. 5, ll. 44-49).
4. In the extrusion mode, when a user draws a stroke, the 3D
surface (n-o) is cut as indicated by a red cut section (p) and when the user
makes a scribbling on the surface to erase a line segments on the surface (u-
w), the system smoothes the area surrounded by the closed red line (z-z')
(Figs. 3E, 3F, 3G, and 3U-W; col. 5, ll. 51-58 and col. 6, ll. 21-25).
McDaniel
5. McDaniel discloses a computer-aided sketching system which
enables the user to group line segments 914 together and to merge spine
lines at intersections and corners (Figs. 6B and 9; ¶ [0126]).

IV. ANALYSIS
Claims 1-9 and 14-17
Appellant contends “Tsang does not determine whether a stroke is a
drawing stroke or an edit gesture based on pen trajectory,” “[r]ather, Tsang
uses pressure sensing to make this determination” (App. Br. 8). Appellant
asserts “using pressure sensing . . . is fundamentally different from a
drawing flow process perspective . . . responsive to a trajectory of a pen
stroke” (id.). Appellant argues in either the drawing or the editing mode,
“Igarashi recognizes the stroke made with the pen stylus as a drawing stroke
regardless of whether the trajectory of the pen stylus is smooth or abrupt”
(App. Br. 9).
However, the Examiner finds “Igarashi clearly discloses that once a
model has been created, the model may be modified, using various
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operations” including “drawing a line . . . and scribbling on a surface to
erase line segments” (Ans. 42).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Neither claim 1 nor the Specification define “smooth stroke” (claim
1). Thus, giving the claim its broadest reasonable interpretation consistent
with the Specification, we conclude “smooth stroke” merely requires a
stroke that is linear. 4
Additionally, we note that claim 1 is merely directed to a system (i.e.,
apparatus) that comprises “curve model generation software” wherein the
software performs a function of “determining that the stroke made with the
pen stylus is the drawing stroke when the trajectory of the pen stylus is that
of a smooth stroke and determining that the pen stroke is the edit gesture
when the trajectory of the pen stylus is not that of a smooth stroke” (claim 1,
emphases added). However, the “determining” by the software is directed to

4 In the event of further prosecution, we leave it to the Examiner to consider
whether the claim term “smooth stroke” should be rejected under §112,
second paragraph. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
1342, 1350 (Fed. Cir. 2005): The scope of claim language cannot depend
solely on the unrestrained, subjective opinion of a particular individual
purportedly practicing the invention. See Application of Musgrave, 431
F.2d 882, 893 (1970) (noting that “[a] step requiring the exercise of
subjective judgment without restriction might be objectionable as rendering
a claim indefinite”). (emphasis added). Some objective standard must be
provided in order to allow the public to reasonably determine the scope of
the claimed invention to avoid infringement. See also Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim . . . indefinite.”).

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functional language that does not further limit the structure of the claimed
system.
Our reviewing court guides that the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002); see also Superior Industries, Inc. v. Masaba, Inc.,
2013-1302, 2014 WL 163046 at *5 (Fed. Cir. 2014) (Rader, J., concurring)
(“[A] system claim generally covers what the system is, not what the system
does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 . . . (1875) (‘The
inventor of a machine is entitled to the benefit of all the uses to which it can
be put, no matter whether he had conceived the idea of the use or not’) and
In re Schreiber, 128 F.3d 1473, 1431-32 (Fed. Cir. 1997). Thus, it is usually
improper to construe non-structural claim terms in apparatus/device claims
in a way that makes infringement or validity turn on their function. Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)”).5
Nevertheless, we find no error with the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness.
Tsang is directed to a 3D sketching system that enables the user to
switch between a drawing mode and a gesturing (editing) mode (FF 1). We
agree with the Examiner’s finding that Tsang teaches a “computer system
having curve model generation software” (Ans. 23). That is, we find that

5 Superior Industries, Inc. v. Masaba, Inc., 2013-1302, 2014 WL 163046
(Fed. Cir. 2014) is a non-precedential opinion of the Court of Appeals for
the Federal Circuit. However, we consider the concurring opinion by Chief
Judge Rader as guiding because it cites precedential authority in support.
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Tsang at least suggests a system which comprises “curve model generation
software” (claim 1).
In addition, Igarashi is directed to a computer-aided sketching system
that enables a user to draw a curve or straight 2D line in a drawing mode and
switch to an “extrusion mode” for editing the sketch when the user draws a
closed stroke (FF 3). While in the extrusion mode, the user may draw a line
to cut the 3D surface or draw a scribble to erase a line segment (FF 4). We
agree with the Examiner’s finding “Igarashi clearly discloses that once a
model has been created, the model may be modified, using various
operations” including “drawing a line . . . and scribbling on a surface to
erase line segments” (Ans. 42). That is, we find Igarashi at the least
suggests a system which comprises “curve model generation software” that
uses the pen trajectory to determine whether the user desires a “drawing”
(smooth) stroke or an “editing” gesture that is not a drawing stroke (claim
1).
Accordingly, we find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) over Tsang in view of Igarashi. Further, claims 2 -
9 and 14-17 (depending from claim 1) which have not been argued
separately, fall with claim 1.
Claim 18
Appellant contends “‘[p]inning’ as described in Tsang selects the area
of influence on a curve of a subsequent attractor algorithm” and “does not
result in a different aspect of a model being edited based on where the dot
gesture is applied” (App. Br. 11). Appellant asserts “‘pinning’ does not
result in editing the model such as to tie curves, create common
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intersections, create a comer fillet, or end-point snapping two or more curves
depending on where it is applied to a drawn curve” (App. Br. 11-12).
However, the Examiner finds “Tsang teaches a user specifying a point
on an image that a drawn curve should pass through;” while “Igarashi
teaches adjusting the area of influence of the subsequent attractor algorithm,
wherein parts of the curve that lie within the influence area are pulled to the
pin point” (Ans. 42-43).
At the outset, we note that the contested limitation “editing a plurality
of different aspects of a model” of dependent claim 18 is directed to
functional language that does not further limit the structure of the claimed
device. That is, “editing” is the function performed by the claimed “curve
model generation software” of the claimed system.
We note further claim 18 does not define “dot gesture,” and although
the Specification defines it as “a small and (almost) solid mark whose outer
shape is circular,” it does not specify that it automatically results in “tying
curves, creating common intersections, creating a corner fillet, or end-point
snapping two or more curves” as Appellant contends (App. Br. 11-12; Spec.
¶ [0075]). Thus, we give “dot gesture” its broadest reasonable interpretation
as any circular mark, as consistent with the Specification and claim 18.
Tsang discloses a system which enables the user to use a pinning
technique where a point on the image represents where a drawn curve passes
therethrough (FF 2). We agree with the Examiner’s finding “Tsang teaches
a user specifying a point on an image that a drawn curve should pass
through” (Ans. 42). That is, we find Tsang’s system at the least suggests an
editing gesture that includes the use of a circular mark (FF 2).
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Accordingly, we find no error in the Examiner’s rejection of claim 18
under 35 U.S.C. § 103(a) over Tsang in view of Igarashi.
Claim 19
Appellant contends McDaniel “do[es] not however teach that the
curve model generation software edits different aspects of a model based on
where a dot gesture is applied” (App. Br. 13). Appellant asserts that
[w]hile it states that corners and/or intersections may be identified
and/or analyzed to determine how the spine lines should be
completed, the only example it gives of how this is done is that the
sketching tool may interpolate the spine lines to determine how they
should be extended and/or completed to form corners

and “[i]t does not discuss the use of a dot gesture” (App. Br. 12-13).
However, the Examiner finds since “claim 19 does not explicitly
recite the inclusion of” the contended features, he “interpret[s] the additional
plurality of operations included in claim 19 to be applied in response to a
specified area being the area where a previous dot gesture has been applied
to, not in response to the dot gesture itself” (Ans. 43).
As noted above with respect to claim 18 from which claim 19
depends, the “editing” argued by Appellant (App. Br. 11) is the function
performed by the claimed “curve model generation software” of the claimed
system, but does not further limit the structure of the claimed system.
Nevertheless, Tsang discloses a system which enables the user to use
a pinning technique where a point on the image represents where a drawn
curve passes therethrough (FF 2). We find Tsang’s system comprises
software having editing gestures which includes the user of a circular mark
(id.).
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Further, McDaniel discloses a system that enables a user to merge
lines at an intersection and corners (FF 5). We agree with the Examiner’s
finding that McDaniel’s system at the least suggests the editing gesture of
tying two vector curves of the model.
Accordingly, we find no error in the Examiner’s rejection of claim 19
under 35 U.S.C. § 103(a) over Tsang in view of Igarashi and McDaniel.
Further, claim 20 (depending from claim 1) which have not been argued
separately, fall with claim 19.
Claims 10-13 and 21-34
Appellant argues that claims 10-13 and 21-34 are patentable over the
cited prior art for the same reasons asserted with respect to claim 1 (App. Br.
12-14).
As noted supra, however, we find that the combination of Tsang and
Igarashi at least suggests all the features of claim 1. We, therefore, affirm
the Examiner’s rejection of claims 10-13 and 21 under 35 U.S.C. § 103 over
Tsang in view of Igarashi and Zeleznik; claims 22 and 23 under 35 U.S.C.
§ 103 over Tsang in view of Igarashi and Elchuri; claims 24-33 under
35 U.S.C. § 103 over Tsang in view of Igarashi and Bae; and claim 34 under
35 U.S.C. § 103 over Tsang in view of Igarashi and Takeuchi.
Nonstatutory Obviousness-Type Double Patenting Rejections
As for the obviousness-type double patenting rejections, Appellant
merely repeats the claimed language and then contends “Igarashi does not
disclose these limitations” (App. Br. 14-15). However, a statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(vii).
Moreover, mere conclusory statements that are unsupported by factual
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evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); and Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, slip
op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
Accordingly, Appellant has shown no error with the Examiner’s
provisional rejection 1) of claims 1, 10, 14, and 18 over claims 1, 4, 8 and
13 of copending Application No. 11/676,706 (Patent Number 7,701,457 B2,
issued April 20, 2010) in view of Igarashi; 2) of claims 1, 7-13, and 34 over
claims 1, 4, 5, 9-12, 19, and 21-23 of copending Application No. 11/676,694
(Patent Number 7,696,998 B2, issued April 13, 2010) over Igarashi; and 3)
of claims 1, 7-9, and 14 over claims 1 and 7-10 of copending Application
No. 11/676,656 (Patent Number 7,750,911 B2, issued July 6, 2010) over
Igarashi.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-34 under 35 U.S.C. § 103(a) and
of claims 1, 7-14, 18, and 34 on the ground of nonstatutory obviousness-type
double patenting 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)(1)(iv).

AFFIRMED

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