Ex Parte Fernandez et al

Board of Patent Appeals and Interferences

Jan 30, 2012

10437230 (B.P.A.I. Jan. 30, 2012)

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.
10/437,230 05/14/2003 Roland Fernandez 303367.01/MFCP.155699 3961
45809 7590 01/31/2012
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
VU, KIEU D
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
01/31/2012 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 ROLAND FERNANDEZ, IAIN HACKETT,
WISTAR D. RINEARSON, MICHAEL WILLIAMS,
and SUSAN D. WOOLF
____________

Appeal 2009-013550
Application 10/437,230
Technology Center 2100
____________

Before MAHSHID D. SAADAT, DENISE M. POTHIER,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013550
Application 10/437,230

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2-5, 8-9, 16-22, and 25-26 (App. Br. 4, 10).1 Claims 1, 6, 7, and 10 -
15 are cancelled (App. Br. 3). Claims 23 and 24 are withdrawn from
consideration (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Claim 16, which is illustrative of the invention, reads as follows:
16. A user interface comprising:
a first region receiving electronic ink input by a first user;
a second region including a history of an instant
messaging conversation;
wherein the electronic ink of the first region is sent to a
second user using both a native ink format and a graphical
image format.
The Examiner relies on the following prior art in rejecting the claims:
Shiigi US 6,564,249 B2 May 13, 2003
Hendriks US 2003/0163525 A1 Aug. 28, 2003
Komatsu US 6,999,622 B2 Feb. 14, 2006
Fuoss US 7,003,308 B1 Feb 21, 2006
Sakurai JP 2001-111708 A Apr. 20, 2001
Claims 2-5, 8-9, and 26 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.

1 Although Appellants state that only claims 16 and 26 are appealed (App.
Br. 4), we find that, considering the Appellants’ Briefs in their entirety (see
e.g., App. Br. 10), Appellants’ intention was to appeal the rejections of
claims 2-5, 8-9, 16-22, and 25-26. However, Appellants have presented
arguments only for claims 16 and 26.
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Claims 16, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hendriks and Shiigi.
Claims 2-3, 5, 9, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hendriks, Shiigi, and Sakurai.
Claims 4, 8, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hendriks, Shiigi, and Fuoss.
Claims 17, 18, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hendriks, Shiigi, Fuoss, and Komatsu
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.

ISSUES
The issues presented by Appellants’ contentions are as follows:
Did the Examiner err in rejecting claim 26 for failing to comply with
the written description requirement of 35 U.S.C. § 112, first paragraph?
More particularly, would one of ordinary skill in the art understand the
Appellants’ Specification to describe the limitation “while the first region is
still receiving electronic ink from the first user,” as recited in claim 26?
Did the Examiner err in rejecting claim 16 as unpatentable under
35 U.S.C. § 103(a)? More particularly, does Shiigi teach or suggest “the
electronic ink of the first region is sent to a second user using both a native
ink format and a graphical image format,” as recited in claim 16?

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ANALYSIS
Rejection under 35 U.S.C. § 112
The Examiner has found that claim 26 does not comply with the
written description requirement of 35 U.S.C. § 112, first paragraph, because
“the limitation ‘while the first region is still receiving electronic ink from the
first user’ (lines 3-4) is not described in the specification.” (Ans. 4; see also
Ans. 12-13.) Appellants contend “that the originally filed disclosure clearly
conveys to one skilled in the art the claimed concepts.” (App. Br. 6).
We agree with Appellants for the reasons set forth by Appellants
(App. Br. 5-6; Reply Br. 3-5). Accordingly, we will not sustain the rejection
under 35 U.S.C. § 112, first paragraph, of claim 26, or claims 2-5 and 8-9,
which depend from claim 26.
Rejections under 35 U.S.C. § 103
Appellants contend “that not only does Shiigi not disclose sending
electronic ink to a second user using both a native ink format and a graphical
image format, the ‘pixel data’ disclosed by Shiigi is (a) not a native ink
format, (b) is itself a graphical image format, and (c) is in fact not sent to the
second user.” (Reply Br. 8). We disagree because Appellants’ contention is
not commensurate with the scope of claim 16 as properly construed.
Claims are not to be read in a vacuum, but must be given their
broadest reasonable interpretation in light of the Specification as it would be
interpreted by ordinary artisans. Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc). “Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not part of the
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claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004); see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.1993).
Appellants urge a construction of “native ink format” that
incorporates features described in the Specification at Paragraphs [40] and
[41] (App. Br. 8). We note that many of the features the Appellants contend
are integral to a “native ink format” are identified in the Specification as
optional by being preceded by the word “may.” For example, “the native
format for ink may include an ink object or other form for displaying ink
with its related properties.” (Spec. ¶ [40]) (emphasis added). We agree with
the Examiner (Ans. 15) that such limitations from the Specification may not
be imported into the claim. See SuperGuide, 358 F.3d at 875.
Appellants’ Specification describes the disputed term as follows:
Electronic ink (or ink) relates to the capture and display of
electronic information captured when a user uses a stylus-based
input device. Electronic ink refers to a sequence of strokes,
where each stroke is comprised of a sequence of points. The
points may be represented using a variety of known techniques
including Cartesian coordinates (X, Y), polar coordinates (r, Τ),
and other techniques as known in the art.
(Spec. ¶ [18]) (emphasis added). Giving “native ink format” its broadest
reasonable interpretation in light of the Specification, Phillips, 415 F.3d at
1316, we construe “native ink format” to encompass the format used by the
region of the user interface (i.e., “native” to the user interface) to receive the
electronic ink input. We further find, as did the Examiner (Ans. 5, 14), that
Shiigi’s disclosure that “[w]hile the user is drawing, the pixel data
representing the drawing is captured in the input data area and stored in local
memory” (Shiigi, col. 7, ll. 59-61) teaches a “native ink format.” Contrary
to Appellants’ positions (see generally Reply Br. 7-8), claim 1 does not
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preclude the “native ink format” from also being a type of “graphical image
format.”
Turning to the construction to be given to the term “using” in the
phrase “sent to a second user using both a native ink format and a graphical
image format” (emphasis added), we also agree with the Examiner’s position
(Ans. 14). The Examiner clarified (id.) that, as properly construed, the term
“using” requires that both the “native ink format” and the “graphical image
format” play a role in sending the electronic ink to the recipient.2 However,
the term does not require that both formats be sent to the recipient or that
these formats are sent simultaneously. We find, as did the Examiner (Ans.
5, 14), that Shiigi discloses sending the electronic ink to the recipient using
both the native ink format and a graphical image format ( i.e., Shiigi’s GIF
file disclosed at Shiigi, col. 8, ll. 1-2).
Accordingly, we will sustain the rejections under 35 U.S.C. § 103(a)
of claim 16, and of dependent claims 2-5, 8-9, 17-22, and 25-26, which were
not separately argued.

DECISION
The decision of the Examiner to reject claims 2-5, 8-9, 16-22, and 25-
26 under 35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner to reject claims 2-5, 8-9, and 26 under
35 U.S.C. § 112, first paragraph, is reversed.

2 With regard to Appellants’ comments (Reply Br. 6) asserting that the
Examiner’s Answer included a new ground of rejection, we direct
Appellants’ attention to MPEP § 1207.03 IV.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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