Ex Parte Dresevic et al

Board of Patent Appeals and Interferences

Dec 3, 2010

11075727 (B.P.A.I. Dec. 3, 2010)

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.
11/075,727 03/10/2005 Bodin Dresevic 171943.04/MFCP.151457 4188
45809 7590 12/03/2010
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
CASCHERA, ANTONIO A
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
12/03/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BODIN DRESEVIC and MICHAEL KALLAY
____________________

Appeal 2009-007990
Application 11/075,727
Technology Center 2600
____________________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-10, and 12-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007990
Application 11/075,727

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STATEMENT OF THE CASE
Appellants’ claimed invention relates to dynamically rendering digital
ink strokes (Spec. ¶ [07]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for rendering a digital ink stroke, comprising the
steps of:

receiving a first pen tip instance;

receiving a second pen tip instance;

determining a quadrangle based on the first and second pen tip
instances; and,

displaying a dynamic representation of the first pen tip instance,
the second pen tip instance, and the quadrangle as the digital
ink stroke proceeds from the first pen tip instance to the second
pin tip instance,

wherein the first and second pen instances each are associated
with data representing at least one of a size, shape, or rotation
of the respective pen tip instance.

REFERENCES
Eller US 5,287,417 Feb. 15, 1994
Bi US 6,924,790 B1 Aug. 2, 2005
Silverbrook US 6,965,454 B1 Nov. 15, 2005
Lucas US 6,201,528 B1 Mar. 13, 2001
Dresevic US 6,909,430 B2 June 21, 2005

The Examiner rejected claims 1, 4-9, and 13-17 under 35 U.S.C.
§ 102(b) as anticipated by Eller.
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The Examiner rejected claim 3 under 35 U.S.C. § 103(a) based upon
the teachings of Eller and Bi.
The Examiner rejected claims 10 and 12 under 35 U.S.C. § 103(a)
based upon the teachings of Eller and Silverbrook.
The Examiner rejected claims 18-21 under 35 U.S.C. § 103(a) based
upon the teachings of Eller and Lucas.
The Examiner rejected claim 22 under 35 U.S.C. § 103(a) based upon
the teachings of Eller, Silverbrook, and Lucas.
The Examiner rejected claims 1, 9, 16, and 17 under the judicially
created doctrine of obviousness-type double patenting over claims 2-4 of
Dresevic in view of Eller.
Appellants contend Eller does not disclose displaying a dynamic
representation of a digital ink stroke (App. Br. 9; Reply Br. 6-7).

ANALYSIS
Rejection of claims 1, 4-9, and 13-17 under 35 U.S.C. § 102(b)
Appellants contend Eller fails to disclose displaying a dynamic
representation of a digital ink stroke as the ink stroke proceeds from a first
pen tip instance to a second pen tip instance (App. Br. 9; Reply Br. 6-7).
Appellants argue Eller teaches away from a dynamic representation because
the recognizer in Eller determines “whether the data point is a shaped-
defining data point or an interior-defining data point only after the
recognizer determines in which octant the data point lies” (App. Br. 9).
Appellants also argue the recognizer in Eller does not function dynamically
because “the recognizer maps the data point to a normalized data point, then
transforms the normalized data point into a transform data point, and then
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Application 11/075,727

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determines whether the transform data point is a shape-defining data point or
a [sic] interior-defining data point” (App. Br. 9). Appellants assert Eller
does not offer the dynamic aspect of the claimed invention because Eller
does not disclose a “lack of lag time,” but instead discloses a “temporal
transition” between the steps of drawing an object and the computer
recognizing the object (App. Br. 9).
The Examiner finds Eller meets the claimed limitation of “displaying
a dynamic representation’” because Eller discloses “the computer 115 inks
multiple contact points as the user moves the pen 111 across the tablet 112
to display lines corresponding to the path travelled by the pen 111” (Ans. 18;
Eller col. 3, ll. 15-18).
Contrary to Appellants’ arguments that the recognizer in Eller does
not function dynamically, the Examiner has not relied on the recognizer to
meet the limitation of a dynamic representation. As the Examiner explains,
Eller’s disclosure “showing a drawn shape along with each stroke according
to the movement of the pen across the tablet and representing the path
traveled by the pen” is “equivalent to Applicant’s ‘displaying a dynamic
representation . . .’” (Ans. 18; Fig. 2A).2 Eller’s Figure 2A illustrates an
output display of graphic objects the user has drawn by hand, which occurs
before the computer recognizes and displays perfected versions of the
objects as illustrated by Figure 2B (Eller col. 3, ll. 48-61). The fact that the
computer recognizes and displays perfected objects after the user has drawn
the original objects does not detract from Eller’s disclosure of a dynamic
display of user-drawn objects. That is, in Eller, there is a dynamic display of

2 We understand the Examiner’s intended position to be that Eller’s
disclosure is synonymous to (not equivalent to) Appellants’ claim language.
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the user-drawn objects. In addition, Appellants’ argument that Eller teaches
away from the claimed invention (App. Br. 8-9; Reply Br. 6) has no merit
because “‘teaching away’ is irrelevant to anticipation.” Leggett & Platt, Inc.
v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008) (citation omitted).
With respect to Appellants’ final argument, the Examiner correctly
notes there is no claim limitation relating to a “lack of lag time” or
“temporal transition” (Ans. 19). The claim language “displaying a dynamic
representation” does not require an instantaneous representation. In fact, the
Specification describes a process for rendering digital ink that includes at
least several steps between receiving a new pen tip position and painting a
new region based on the new pen tip position (Spec. ¶¶ [41]-[45]; Fig. 6).
Appellants have not asserted any definition in the Specification of “dynamic
representation” that excludes any intervening steps between receiving a new
pen tip position and painting, or inking, the digital ink stroke created by the
new pen tip position. Further, Appellants’ argument that Eller exhibits a
temporal transition is based on the operation of Eller’s recognizer (App. Br.
9),which the Examiner does not rely, for the dynamic representation feature,
as noted above. Thus, Eller discloses the claimed feature of a “dynamic
representation,” anticipating independent claims 1 and 9.
Claims 4-8 and 13-17 depend from independent claims 1 and 9, and
are not separately argued. Therefore, claims 4-8 and 13-17 fall with claims
1 and 9.
Rejection of claims 3, 10, 12, and 18-22 under 35 U.S.C. § 103(a)
Appellants rely on the same arguments presented above with respect
to the anticipation rejection of claims 1, 4-9, and 13-17 to overcome the
various obviousness rejections. That is, Eller fails to disclose a dynamic
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representation of the first pen tip instance and the second pen tip instance
(App. Br. 10-12). However, as explained above, Eller discloses this feature.
Therefore, the obviousness rejections of claims 3, 10, 12, and 18-22 are
affirmed.
Rejection of claims 1, 9, 16, and 17 under the judicially created doctrine of
obviousness-type double patenting
Appellants argue claims 1, 9, 16, and 17 are not obvious over claims
2-4 of Dresevic in view of Eller because Eller does not disclose displaying a
dynamic representation of the first pen tip instance, the second pen tip
instance, and the quadrangle as the digital ink stroke proceeds from the first
pen tip instance to the second pen tip instance (App. Br. 12). As explained
above with respect to the anticipation rejection, Eller discloses this feature.
Therefore, the double patenting rejection of claims 1, 9, 16, and 17 is
affirmed.

DECISION
The Examiner’s decision rejecting claims 1, 3-10, and 12-22 is
affirmed.

Appeal 2009-007990
Application 11/075,727

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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)(v).

AFFIRMED

KIS

SHOOK, HARDY & BACON L.L.P.
(MICROSOFT CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613