Ex Parte Homiller

Board of Patent Appeals and Interferences

Feb 7, 2008

10160600 (B.P.A.I. Feb. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL P. HOMILLER
____________________

Appeal 2007-2145
Application 10/160,6001
Technology Center 2600
____________________

Decided: February 7, 2008
____________________

Before JOHN MARTIN, HOWARD B. BLANKENSHIP, and MARC S.
HOFF, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HOFF.

Opinon concurring filed by Administrative Patent Judge BLANKENSHIP.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-4, 8, 11-19, and 24-35. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Application filed May 31, 2002. The real party in interest is Sony Ericsson
Mobile Communications AB.
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We affirm.
Appellant’s invention relates to method and apparatus for handwriting
recognition, and editing of handwritten symbols (Specification 1). A symbol
provided by a user is sensed and compared to a set of known symbols. A
first one of the known symbols which may correspond to the sensed symbol
is selected and displayed to the user. In response to receiving an indication
from the user that the displayed first known symbol does not correspond to
the provided symbol, a second one of the known symbols which may
correspond to the sensed symbol is selected and displayed to the user
(Specification 1-2).
Claim 1 is exemplary:
1. A method of operating a symbol recognition system for a set
of known symbols, the method comprising:

sensing an indication of a desired symbol;

selecting a first one of the known symbols which may
correspond to the desired symbol based on developing a score
indicative of the closeness of a comparison of the desired
symbol to each of the set of known symbols;

storing a plurality of the scores from the comparisons of the desired
symbol to each of the set of known symbols;

displaying the first one of the known symbols;

receiving an indication that the displayed first one of the known
symbols does not correspond to the desired symbol;

selecting a second one of the known symbols which may correspond
to the desired symbol based upon the stored scores from the
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comparisons and the received indication that the displayed first one of
the known symbols does not correspond to the desired symbol; and

displaying the second one of the known symbols.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yamakawa US 4,672,677 Jun. 9, 1987
Seybold US 6,005,973 Dec. 21, 1999
Takasu US 6,671,403 B1 Dec. 30, 2003

Claims 1, 2, 11, 12, 14-17, 25-29, and 31-35 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Yamakawa in view of Takasu.
Claims 3, 4, 8, 13, 18, 19, 24, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yamakawa in view of Takasu and
Seybold.
Appellant contends that the Examiner erred in his rejections because
the asserted combination of Yamakawa and Takasu (and Seybold) does not
teach storing a plurality of scores of comparisons of the closeness of a
sensed desired symbol to a set of known symbols, or selecting a second one
of the known symbols which may correspond to the desired symbol based
upon the stored scores from the comparisons and the received indication that
the displayed first one of the known symbols does not correspond to the
desired symbol (Br. 7:10-15). The Examiner contends the claims are
properly rejected because Yamakawa teaches the great majority of the claim
limitations; Takasu is relied upon only to teach “storing a plurality of the
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scores from the comparisons of the desired symbol to each of the set of
known symbols” (Ans. 16).
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.

ISSUE
The principal issue in the appeal before us is whether the Examiner
erred in holding that it would have been obvious to modify Yamakawa to
include storing a plurality of scores from comparisons of a desired symbol to
each of a set of known symbols, as taught by Takasu.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, he has invented method and apparatus
for handwriting recognition, and editing of handwritten symbols
(Specification 1).
2. A symbol provided by a user is sensed and compared to a set of
known symbols. A first one of the known symbols which may correspond to
the sensed symbol is selected and displayed to the user. In response to
receiving an indication from the user that the displayed first known symbol
does not correspond to the provided symbol, a second one of the known
symbols which may correspond to the sensed symbol is selected and
displayed to the user (Specification 1-2).
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Yamakawa
3. Yamakawa teaches character and figure processing for the
recognition of on-line handwritten characters (col. 1, ll. 49-64; col.2 , ll. 45-
49).
4. Yamakawa’s character recognition process determines a
number of proposed characters (col. 5, ll. 30-40.
5. Yamakawa teaches displaying a first set of proposed characters
(e.g., three at a time) to a user, who may either select one of the proposed
characters as matching his input character, or may select the Else button to
be presented with the next set of proposed characters (see Figs. 6(A)-1 to
6(A)-3 and Figs. 7(A) to 7(E), and col. 5, l. 38 to col. 6, l. 14).
6. In Yamakawa, the recognition process is completed (Fig. 6(A)-
1, step S2) before any proposed characters are presented to a user (Fig. 6(A)-
2, steps S9 to S11 and S13 to S15).
Takasu
7. Takasu teaches pattern (e.g. handwriting) recognition including
a plurality of different recognition processing operations for the pattern to be
recognized, acquiring recognition candidates and similarity amounts in each
recognition processing operation, and converting the similarity amounts into
a scale common to the different recognition processing operations (col. 2, ll.
8-19).
8. Takasu teaches sorting characters in ascending order of
recognition scores, thus generating a recognition candidate sequence (col. 5,
ll. 57-62; col. 6, ll. 30-32).
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9. A recognition result is obtained as a sequence of pairs of
character codes and recognition scores in the order of candidates (col. 5, ll.
57-62).
10. The recognition result is stored in a memory buffer (col. 5, ll.
61-62; col. 6, ll. 32-33).
Seybold
11. Seybold teaches a handwriting recognition process in which
candidate words are developed both through dictionary entry comparisons
and most likely string of characters analysis techniques (col. 2, ll. 31-35).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Examiner can satisfy
this burden by showing some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR Int’l. v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellant. Piasecki,
745 F.2d at 1472. Thus, the Examiner must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the Examiner’s
conclusion.
The motivation for combining reference teachings is not limited to the
problem the patentee was trying to solve: “any need or problem known in
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the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” In re
Icon Health and Fitness Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (quoting
KSR, 127 S. Ct. at 1742). See also Leapfrog, 485 F.3d at 1162 (holding it
“obvious to combine the Bevan device with the SSR to update it using
modern electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability,
simplified operation, and reduced cost”); Dystar, 464 F.3d at 1368 (“[A]n
implicit motivation to combine exists not only when a suggestion may be
gleaned from the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”).
Furthermore, a reference may be understood by the artisan to be
suggesting a solution to a problem that the reference does not discuss. See
KSR, 127 S. Ct. at 1742 (“The second error of the Court of Appeals lay in its
assumption that a person of ordinary skill attempting to solve a problem will
be led only to those elements of prior art designed to solve the same
problem. . . . Common sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle. . . . A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).

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ANALYSIS2
Appellant argues3 that the asserted combination of Yamakawa and
Takasu (and Seybold) does not teach storing a plurality of scores of
comparisons of the closeness of a sensed desired symbol to a set of known
symbols, nor selecting a second one of the known symbols which may
correspond to the desired symbol based upon the stored scores from the
comparisons and the received indication that the displayed first one of the
known symbols does not correspond to the desired symbol (Br. 7).
Appellant further argues that Takasu teaches storing “only the result” of the
recognition comparison process, rather than a plurality of scores of
comparisons of the closeness of a sensed desired signal to a set of known
symbols (Br. 9). Finally, Appellant argues that Takasu does not teach
storing recognition scores for later reuse (Reply Br. 2).
The Examiner admits that Yamakawa does not teach the storage of a
plurality of scores of comparisons of the closeness of a sensed desired signal
to a set of known symbols (Ans. 4). The Examiner looks to Takasu to
supply the missing teaching. Takasu teaches a character recognition system,
including sorting characters in ascending order of recognition scores, thus
generating a recognition candidate sequence (FF 8). A recognition result is

2 Appellant presents a single common argument for all claims. We therefore
select claim 1 as representative of the appealed claims.
3 Appellant’s discussion of claims 1, 17, and 28 makes reference to elements
allegedly not taught or suggested by the Seybold reference. As the
Examiner has explained that his mention of Seybold in the Final Rejection
of these claims was unintentional, we will treat these claims as standing
rejected over Yamakawa in view of Takasu, as the Examiner has done in the
Answer.
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obtained as a sequence of pairs of character codes and recognition stores
(sic, scores) in the order of candidates (FF 9). The recognition result (i.e.,
the aforementioned plurality of characters and their recognition scores) is
stored in a memory buffer (FF 10). The Examiner concludes that the
modification would have been obvious in order to enable the user to “save
time and quickly move on to inserting the next symbol in the sentence”
(Ans. 17).
We agree with the Examiner that the references collectively teach
storing a plurality of the scores” which are “indicative of the closeness of a
comparison of the desired symbol to each of the set of known symbols,” as
required by claim 1. Yamakawa’s recognition process determines a number
of proposed characters (FF 4). Yamakawa does not explicitly teach
presenting proposed characters in the order of their closeness to the input
character. Claim 1, however, does not require such ordering, but merely
presentation of a first possible symbol based on a score indicative of the
closeness of comparison. We infer that Yamakawa selects proposed
characters if their closeness to the input character is greater than some
unspecified minimum threshold.
Yamakawa further teaches displaying a first set of proposed
characters (e.g., three at a time) to the user, who may either select one of the
proposed characters, or may select the “Else” button to be presented with the
next set of characters (FF 5). We construe any one of the proposed
characters displayed by Yamakawa as meeting the limitation of “selecting a
first one of the known symbols which may correspond to the desired
symbol.” Because Yamakawa discloses that the recognition process is
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completed before any proposed characters are presented to a user (FF 6),
Yamakawa necessarily teaches storage, in some form, of information
indicating which characters are close enough to the input characters to merit
presentation to the user. We therefore find that Yamakawa inherently
teaches storage of information indicative of the closeness of a comparison of
the desired symbol to each of the set of known symbols (i.e., information
identifying the set of characters to be displayed).
Yamakawa therefore teaches all of the elements of the claimed
invention, except for storing (numerical) scores indicative of the closeness of
comparison of the desired symbol to the symbols to be displayed, and
“selecting a second one of the known symbols which may correspond to the
desired symbol based upon the stored scores from the comparisons.”
The Examiner found, and we agree, that Takasu teaches developing
scores indicative of closeness of comparison, and storing those scores in
memory (FF 7, 8, 10). With regard to selecting the second symbol based
upon the stored scores from the comparisons, as noted supra, Yamakawa
determines, before presenting any proposed character to the user, the full set
of characters which may correspond to the input character (FF 6).
Yamakawa teaches that, upon selection of the Else button, the system shall
present the next set of three (or less) proposed characters for the user’s
review (FF 5). We construe any one of the proposed characters displayed by
Yamakawa in that circumstance as corresponding to the “second one the
known symbols” required by the claim. We therefore find that Yamakawa
teaches selecting a second one of the known symbols which may correspond
to a desired symbol based upon stored information regarding the (previously
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performed) comparisons. Takasu is relied upon, again, to teach numerical
scores indicative of the closeness of comparison, and storage of such scores.
As noted supra, we agree with the Examiner’s conclusion that it would have
been obvious to modify Yamakawa include the teachings of Takasu into
Yamakawa, because prioritizing the most desired symbols so the ones which
are most likely the desired symbol are displayed first would have saved the
user time, enabling the user to quickly move on to inserting the next symbol
in the sentence. If there were no scoring, the system would just be
suggesting random characters, which would be unworkable (Ans. 17).
We disagree with Appellant’s general argument that there is no clear
and particular evidence of motivation or suggestion to combine these
references (Br. 10). Appellant characterizes Takasu as merely teaching
converting results from two different pattern recognition methods into a
common scale (id.). While Takasu does teach such conversion, Takasu also
teaches pattern (i.e., character) recognition in the first instance, before the
conversion to a common scale takes place (FF 7). Because Yamakawa and
Takasu are commonly directed to analyzing input characters or symbols and
attempting to determine known characters or symbols matching the input,
the person having ordinary skill in the art would have had ample motivation
to combine them in order to achieve the instant invention.
We therefore affirm the rejection of claim 1, and independent claims
17 and 28 grouped therewith, as well as claims 2-4, 8, 11-16, 18, 19, 24-27,
and 29-35, dependent therefrom and not separately argued.
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CONCLUSION OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-4, 8, 11-19, and 24-35. Claims 1-4, 8, 11-19, and 24-35
are unpatentable.

DECISION
The Examiner’s rejection of claims 1-4, 8, 11-19, and 24-35 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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1
BLANKENSHIP, Administrative Patent Judge, Concurring.
I write separately because, in my view, there is a substantial question
with respect to whether claims 1-16 meet the threshold requirements for
statutory subject matter under 35 U.S.C. § 101.
Representative claim 1 is nominally drawn to a process. However,
there is no physical transformation of anything to another state or thing. “A
process is . . . an act, or series of acts, performed upon the subject matter to
be transformed and reduced to a different state or thing.” Cochrane v.
Deener, 94 U.S. 780, 788 (1877). “‘Transformation and reduction of an
article “to a different state or thing” is the clue to the patentability of a
process claim that does not include particular machines.’” Diamond v.
Diehr, 450 U.S. 175, 184 (1981) (quoting Gottschalk v. Benson, 409 U.S.
63, 70 (1972)).4
Although there are cases suggesting that the lack of transformation is
not determinative with respect to whether a claimed process is statutory,
those cases involved inventions that at least used machines to transform
data. For example, our reviewing court in AT&T Corp. v. Excel
Communications, Inc., 172 F.3d 1352, 1357 (Fed. Cir. 1999), set forth
(citing In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc)) that a §

4 The statutory requirements for a "process" were recently re-affirmed by our
reviewing court in In re Comiskey, 499 F.3d 1365, 1376-77 (Fed. Cir. 2007).
The invention in Comiskey could be characterized as a "business method";
however, the underlying requirements for a statutory "process" are the same
regardless of how the claimed method might be characterized.
"[P]atentability does not turn on whether the claimed subject matter does
'business' instead of something else.'" Id. at 1374 (quoting State Street Bank
& Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1377 (Fed. Cir.
1998)).
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101 inquiry is directed to the determination of whether the claimed subject
matter as a whole is a disembodied mathematical concept representing
nothing more than a “law of nature” or an “abstract idea,” or if the
mathematical concept has been reduced to some practical application
rendering it “useful.” A claimed process that produces a useful, concrete,
tangible result without pre-empting other uses of the mathematical principle
falls within the scope of § 101. AT&T Corp. at 1358. The process held to
be statutory in AT&T Corp., however, required the use of switches and
computers. See, e.g., id. at 1358 (AT&T’s claimed process used “switching
and recording mechanisms” to create a “signal” useful for billing purposes).
In this case, Appellant’s disclosure provides embodiments in which a
machine is used for implementing the steps of claim 1. However, our
reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). Moreover, the Board must
give claims their broadest reasonable construction. In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000).
Appellant’s disclosure does not re-define or otherwise limit the broad
claim terms such as “sensing,” “selecting,” “storing,” or “displaying,” all of
which may be performed without the use of a machine. While a court might
read the terms in such a way to preserve patent validity, during prosecution
in the USPTO an applicant can amend the claims to remove any ambiguity
with respect to what the claims actually require. “An essential purpose of
patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
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removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
While claim 1 reads on statutory subject matter, the claim is so broad
as to read on nonstatutory subject matter. In my estimation, such a claim
should be rejected when in the USPTO and subject to amendment.
In any event, while the presumed result of “displaying the second one
of the known symbols” might be considered “useful” in a general sense,
such a “result” is not of the type of predictable, repeatable results that have
been held useful, concrete, and tangible. Claim 1 seems to represent mere
abstraction.5 As the Supreme Court has made clear, “[a]n idea of itself is not
patentable.” In re Warmerdam, 33 F.3d 1354, 1360 (1994) (quoting Rubber-
Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507, 22 L.Ed. 410
(1874)).

KIS

MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P. O. BOX 37428
RALEIGH, NC 27627

5 Compare, for example, instant claim 17 -- which includes specific circuits
and a memory -- limited to a practical application of the abstract idea.