Ex Parte Furukawa et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201310368635 (P.T.A.B. Feb. 27, 2013) Copy Citation 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. 10/368,635 02/20/2003 Naohiro Furukawa 520.42494X00 6065 86636 7590 02/27/2013 BRUNDIDGE & STANGER, P.C. 2318 MILL ROAD, SUITE 1020 ALEXANDRIA, VA 22314 EXAMINER HOLTON, STEVEN E ART UNIT PAPER NUMBER 2696 MAIL DATE DELIVERY MODE 02/27/2013 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 PATENT TRIAL AND APPEAL BOARD _____________ Ex parte NAOHIRO FURUKAWA, HISASHI IKEDA, HIROSHI SAKO, and NAOKO TAZAWA _____________ Appeal 2010-005199 Application 10/368,635 Technology Center 2600 ______________ Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and JUSTIN BUSCH, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005199 Application 10/368,635 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Non- Final Rejection of claims 1-13. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention is directed to an information input method in an electronic pen and an information processing apparatus having a means for converting handwritten characters and graphics information into electronic data, specifically, the present invention relates to a method and an apparatus for reflecting deletion, addition, replacement, and emphasis of handwritten character information on electronic data. See Spec. 1:5-10. Claim 1 is exemplary of the invention and is reproduced below: 1. A handwritten character input device connected to an electronic pen capable of outputting information about a writing position on a writing surface and information about a time to obtain the information, the handwritten character input device comprising: a control means; a display; and a storage, wherein the storage stores a plurality of control symbols; wherein the control means controls: a step of obtaining writing position information from the electronic pen, a step of dividing the writing position information into a control symbol and handwriting information, a step of determining a type of the control symbol and performing a corresponding and stored process, and a step of using the writing position information after execution of the process and allowing the display to display an entry onto the writing surface at a position on the display based Appeal 2010-005199 Application 10/368,635 3 on the position indicated by the control symbol obtained from writing position information on the writing surface, wherein the stored process includes at least replacement and addition of the writing position information, wherein objects entered newly with said replacement and said addition are specified by a termination symbol, a carriage return or writing time information in the performing process, wherein the writing surface is paper printed with a pattern capable of uniquely representing a pen position on the paper, and the handwritten character input device has a writing pen point and a camera device to capture the pattern on the paper to detect a pen position as the writing pen point is used to write on the paper, and wherein after objects are newly entered onto said writing surface and allowed to be displayed on said display, the newly entered objects are maintained on the writing surface. REFERENCES Agulnick US 5,347,295 Sep. 13, 1994 Wolff US 6,081,261 Jun. 27, 2000 Lapstun US 6,681,045 B1 Jan. 20, 2004 Marc Dymetman and Max Copperman, Intelligent Paper, Lecture Notes in Computer Science, vol. 1375, pp. 392-406, 1998 (Dymetman). REJECTION AT ISSUE Claims 1-13 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Wolff, Lapstun, Dymetman, and Agulnick. Ans. 3- 12. ISSUE 1. Did the Examiner err in combining Wolfe and Lapstun because one of ordinary skill in the art would not be motivated to combine them; Appeal 2010-005199 Application 10/368,635 4 2. Did the Examiner err in finding that Dymetman inherently teaches dividing the writing position information into a control symbol and handwriting information, as required by claim 1; and 3. Did the Examiner err in finding that the cited references teach or suggest “wherein the stored process includes at least replacement and addition of the writing position information” and “wherein objects entered newly with said replacement and said addition are specified by a termination symbol, a carriage return or writing time information in the performing process,” as recited in claim 1. ANALYSIS Appellants argue that although the “Examiner asserts that it would have been a matter of design choice to replace the gyroscopic position system used by Wolff with the special paper and camera system of Lapstun to obtain the claimed features,” the “Examiner has not indicated why one of ordinary skill in the art would be motivated to combine the teachings of Wolff and Lapstun to obtain the present invention.” App. Br. 10. This argument is not persuasive. The Examiner finds that: [a]t the time of invention these various types of stylus input systems would be known to one of ordinary skill in the art and the choice to use one particular position input system versus another would be a matter of design choice regarding decisions of cost, complexity, and intended use of the stylus input system. Ans. 13. We find ample support for the Examiner’s finding. For example, Wolff and Lapstun teach alternative methods to capture positions of the pen relative to the paper. Id. Therefore, we agree with the Examiner’s finding that the combination of Wolff and Lapstun involves the simple substitution Appeal 2010-005199 Application 10/368,635 5 of Wolff’s position capture scheme with another position capture scheme, which is Lapstun’s position capture scheme, to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417. As we have found a sufficient basis for combining the references, we do not reach the issue of whether the combination was a design choice. Appellants argue that Dymetman does not teach a step of dividing the writing position information into a control symbol and handwriting information. App. Br. 11. Specifically, Appellants argue that the Examiner is improperly relying on Official Notice or inherency to support the assertion that Dymetman teaches that limitation. As the Examiner acknowledges that the rejection does not rely on Official Notice, we will focus on the inherency argument. As to inherency Appellants argue that: [a]s described on page 401, Dymetman merely discloses where editor's marks can be handwritten on a draft typescript and interpreted in real-time for producing a corrected version. There is no teaching or suggestion, whatsoever, in Dymetman, as to how these editor's marks are interpreted in real-time for producing a corrected version. App. Br. 14. Appellants further assert “there could be other means of interpreting the editor's marks in Dymetman, such as by not separating the editing marks and handwritten data.” Id. Inherency is a question of fact that arises both in the context of anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirming a 35 U.S.C. § 103(a) rejection based in part on the inherent disclosure in one of the applied prior art references); see also In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983). “In relying upon the theory of inherency, the [E]xaminer must provide a basis in fact and/or technical Appeal 2010-005199 Application 10/368,635 6 reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (emphasis in original). “[A]fter the PTO establishes a prima facie case of [obviousness] based on inherency, the burden shifts to [A]ppellant to ‘prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”’ In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). We note that it has long been the law that “[i]nherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (internal quotation and citation omitted). However, mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art. In re Swinehart, 439 F.2d 210, 212- 13 (CCPA 1971). Dymetman teaches that a system in which “[h]and-written notes taken during a meeting can be captured in real time . . .” and in which hand- writing recognition can be done. Dymetman, p. 401. Dymetman also teaches that “[e]ditor's marks can be hand-written on a draft typescript and interpreted in real-time for producing a corrected version.” Id. As noted by the Examiner, in order to perform both of these functions, “Dymetman must then inherently analyze incoming coordinate information to determine if the coordinate information is merely hand written text or editor's marks.” Ans. 15. In other words, Dymetman must separate, in some sense, the handwriting text from the editor’s marks. We note that the claim does not recite Appeal 2010-005199 Application 10/368,635 7 separating the “handwriting data” as suggested by Appellants, but rather recites dividing “the writing position information into a control symbol and handwriting information.” In the Reply Brief, Appellants argue that “[t]he Examiner appears to be confusing the concept of recognizing marks and handwriting separately, so as to distinguish between the marks and handwriting, with the claimed concept of ‘dividing’ marks and handwriting.” Reply Br. 5. Appellants noted that “[t]he Merriam-Webster defines ‘divide’ as ‘to separate into two or more parts, areas or groups.’” Id. We are not persuaded by these arguments. Even if we accept the Appellants definition of “divide,” in order to recognize and process the data associated with either handwriting or editor’s marks, the system must divide that information in some manner in order to process the handwriting information in a different way than editor mark information is processed. Thus, as suggested by the Examiner, it is in the processing of the information that Dymetman must inherently divide the information. See Ans. 15. Claim 1 recites “wherein the stored process includes at least replacement and addition of the writing position information” and “wherein objects entered newly with said replacement and said addition are specified by a termination symbol, a carriage return or writing time information in the performing process.” Appellants argue that the combination of Wolff, Lapstun, Dymetman and Agulnick fails to teach this limitation. In the Reply brief, Appellants argue “there is no teaching or suggestion in Agulnick of where objects [i.e., text,] entered newly with the replacement and said addition are specified by a termination symbol, a carriage return or writing time information, in the manner claimed.” Reply Br. 7. Finally, Appellants Appeal 2010-005199 Application 10/368,635 8 emphasize that using the invention, unlike the conventional arts, “a user can add or replace in handwriting with the same look and feel of ordinary writing using paper and a pen.” Reply Br. 8. We are not persuaded by these arguments. Agulnick discloses using control signals to represent replacement and addition of text. Agulnick, Fig. 45, elements 651, 800. Agulnick also discloses that using a length of time to determine the end of an interaction is known in the prior art (col. 1, line 65- col. 2, line 5 and col. 2, lines 38-48). Given these textual portions of Agulnick, the Examiner finds that “it would have been obvious to one of ordinary skill in the art to . . . [use] timeouts to determine when additional handwritten information was completed by a user related to the [sic] a specific command process.” Ans. 16. We find ample support for the Examiner’s findings. We also note, regarding Appellants’ argument that the invention is an improvement over conventional arts because the writing can be done using a pen on paper, Lapstun teaches a system of recognizing writing done with a pen on paper. Lapstun, Fig. 1, elements 1-4; 7:52-67. Appellants do not substantively argue the rejection of claims 2-13. Thus, for the reasons stated above, we affirm the Examiner’s decision to reject claims 1-13. DECISION The Examiner’s decision to reject claims 1-13 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). Appeal 2010-005199 Application 10/368,635 9 AFFIRMED ELD Copy with citationCopy as parenthetical citation