Ex parte Rhee

Board of Patent Appeals and Interferences

May 30, 2000

08269156 (B.P.A.I. May. 30, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUNG S. RHEE
____________
Appeal No. 1998-1386
Application No. 08/269,156
____________
ON BRIEF
____________
Before THOMAS, LALL, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1, 6-9, 12, 14-17, and 21.
We reverse.
BACKGROUND
The invention at issue in this appeal relates to
handwriting recognition. Computer-implemented recognition
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Application No. 08/269,156
systems seek to determine the most likely alphanumeric
characters written by a user. Such writing is done on a
digitizing tablet, which transforms movement of the user’s
stylus into “ink data.” Segmentation processing and context
processing have both been used for handwriting recognition.
Segmentation processing relates to the shape of a character.
Context processing relates to whether a character is
meaningful in the literal context of other likely characters.
Speed and accuracy are the primary design considerations
for handwriting recognition systems. Speed is affected by how
a computer’s processing time is allocated to a recognition
task. Prior recognition systems postponed the processing of
ink data until all of the ink data were provided by a user.
Such an approach, however, failed to efficiently use
processing time that was available when the computer was
collecting ink data.
Speed and accuracy are both affected by the order in
which the ink data are processed. Prior recognition systems
performed segmentation processing first, followed by context
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Application No. 08/269,156
processing. In such sequential processing, however, the
segmentation processing took place with limited information,
without reference to context information that could help in
determining the most likely characters. Commencing with
characters determined by a segmentation process based on
limited information, moreover, correspondingly hindered the
accuracy of the context processing.
The invention at issue in this appeal integrates
segmentation and context processing into a two-pass searching
process. First, a dynamic programming path search performs
all the segmentation processing and most of the context
processing while the user is still writing. Accordingly, the
context processing is not delayed until after all ink data are
collected. Second, a stack-based path search completes the
context processing after all the ink data are received.
Claim 1, which is representative for our purposes,
follows:
1. A method of processing data that represents strokes
of handwritten information, thereby to identify characters
represented by the data, the method comprising the steps of:
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Application No. 08/269,156
receiving the data provided by a user, the data having a
beginning part and an end part that define therebetween a
complete amount of handwritten information to be processed;
assembling portions of the data into a sequence of
packages; and
determining for the sequence of packages a probable
result set of characters represented by the sequence, the
determining step occurring before the end part of the data is
received and comprising the steps of simultaneously
considering information pertaining to the character shapes
represented by the packages and information pertaining to the
literal context of the characters represented by the packages;
wherein the determining step includes searching for the
result set of characters from among a plurality of character
candidates using a first search technique; and
wherein the first of two search techniques
comprises the steps of:
developing for each package at least one path
representing a string of character candidates, each
path having a respective beginning and a respective
end; and
generating for each path a first cost value that
reflects the probability that the path includes the
result set of characters, the first cost value being
based upon information pertaining to the character
shapes represented by the packages and information
pertaining to the literal context of the characters
represented by the packages and
wherein the second of the two search techniques assigns a
second cost value to a considered path based upon the literal
context of the considered path, and wherein the second search
technique conducts a reverse search towards the respective
beginning of at least some of the paths developed by the first
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search technique to identify the result set as a path having
the lowest of the combined first and second cost values.
The references relied on in rejecting the claims follow:
Guyon et al. (Guyon) 5,105,468 Apr. 14,
1992
Hullender 5,151,950
Sept. 29, 1992
Fujisaki et al. (Fujisaki) 5,392,363 Feb. 21,
1995
(filed Nov. 13,
1992).
Appeal No. 1998-1386 Page 6
Application No. 08/269,156
Claims 1, 6-9, 12, 14, 15, 17, and 21 stand rejected
under 35 U.S.C. § 112, ¶ 1, as lacking a written description
and as non-enabled. Claims 1, 6, 8, 12, 14-17, and 21 stand
rejected under 35 U.S.C. § 102(e) as anticipated by Fujisaki.
Claim 9 also stands rejected under 35 U.S.C. § 103 as obvious
over Fujisaki in view of Guyon. Claims 1, 6, and 9 also stand
rejected under 35 U.S.C. § 102(b) as anticipated by Hullender.
Rather than repeat the arguments of the appellant or examiner
in toto, we refer the reader to the briefs and answers for the
respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellant and examiner. After considering
the totality of the record, we are persuaded that the examiner
erred in rejecting claims 1, 6-9, 12, 14-17, and 21.
Accordingly, we reverse. Our opinion addresses the following
issues:
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• written description and enablement of claims 1, 6-9,
12, 14, 15, 17, and 21
• anticipation of claims 1, 6, 8, 12, 14-17, and 21 by
Fujisaki
• obviousness of claim 9 over Fujisaki in view of
Guyon
• anticipation of claims 1, 6, and 9 by Hullender.
Written Description and Enablement of Claims 1,
6-9, 12, 14, 15, 17, and 21
The examiner’s explanation of an arguments about the
rejection of claims 1, 6-9, 12, 14, 15, 17, and 21 under
35 U.S.C. § 112 confuses the written description and
enablement requirements of the statute. By way of
clarification, we note the following principles from Vas-Cath,
Inc. v. Mahurkar,
935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
35 U.S.C. § 112, first paragraph, requires a
"written description of the invention" which is
separate and distinct from the enablement
requirement. The purpose of the "written
description" requirement is broader than to merely
explain how to "make and use"; the applicant must
also convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or
she was in possession of the invention.
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With these principles in mind, we separately and distinctly
address the written description and enablement of the claims.
Written Description of the Claims
Regarding the written description of claims 1, 6-9, 12,
14, 15, 17, and 21, the examiner asserts, “Appellant does not
have adequate support in the disclosure for a second search
technique performed subsequent to a first search techniques
wherein both search techniques consider information pertaining
to both character shapes and literal context of the
characters.” (Supplemental Examiner’s Answer at 4.) The
appellant’s reply follows.
The First Search
As depicted in Fig. 7 and explained, for
example, on page 13, lines 23-28, the first search
considers character least-cost values for symbols
corresponding to the node (i.e., character) under
consideration. This is character shape information.
In the next steps of the search, the first search
considers, for example, trigram least-cost values
for the node. This is literal context information.
The Second Search
Inasmuch as the second search (the SBP search,
see Fig. 8) considers the path cost established by
the first search (see, for example, page 14, lines
24-28), it inherently considers character shape,
which made up part of the first search. The
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dictionary values added by the second search (see
page 14, line 28, through page 15, line 10) provides
literal context, in addition to the literal context
of the first search (such as the trigram).
(Substitute Reply Br. at 2-3.)
“To fulfill the written description requirement, the
patent specification ‘must clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented
what is
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claimed.’" Gentry Gallery, Inc. v. Berkline Corp.,
134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)
(quoting In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614,
1618 (Fed. Cir. 1989)). Fulfillment of the requirement is
adjudged “as of the filing date” of the associated patent
application. Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1566, 19
USPQ2d at 1119. “‘[T]he PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims.’" Gosteli, 872 F.2d at 1012,
10 USPQ2d at 1618 (quoting In re Wertheim, 541 F.2d 257, 263,
191 USPQ 90, 97 (CCPA 1976)).
Here, the examiner fails to show that the original
specification, which includes the original claims, does not
describe “a second search technique performed subsequent to a
first search techniques wherein both search techniques
consider information pertaining to both character shapes and
literal context of the characters.” (Supplemental Examiner’s
Answer at 4.) To the contrary, the specification discloses
two search techniques: “one of the two search techniques,
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designated DPP,” (Spec. at 4), and “the second of the two
search techniques, designated SBP ....” (Id.) Figure 6 of
the specification shows that the SBP search (234) is performed
after the DPP
search (200).
The specification also reveals that the DPP search
considers information pertaining to both character shape and
literal context. Specifically, the “DPP retrieves for the
node under consideration the character least-cost value " ...
for the symbol that now comprises the node under
consideration.” (Spec. at 13.) The least-cost value pertains
to character shape. The DPP search also retrieves “the cost
value, $, representing the trigram least-cost value ... for
the path node under consideration.” (Id.) The trigram least-
cost value pertains to literal context.
Furthermore, the specification reveals that the SBP
search considers information pertaining to both character
shape and literal context. Specifically, “the SBP search
first retrieves the nodes that occur at each end of the DPP
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paths (that is, the dynamic programming search paths
established by the DPP object as mentioned above).” (Spec. at
14.) By retrieving the path cost established by the DPP
search, the SBP search inherently considers character shape,
which constituted part of the DPP search. “The SBP object ...
consults the system dictionary and any application-supplied
wordlist for determining whether the transition from one node
to another yields a character string from the end node that is
valid ....” (Id. at 14-15.) The dictionary values pertain to
literal context.
In view of these disclosures, we are not persuaded that
persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the
claims. The examiner has not met his initial burden.
Therefore, we reverse the rejection of claims 1, 6-9, 12, 14,
15, 17, and 21 as lacking a written description. Next, we
address the enablement of the claims.
Enablement of the Claims
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Regarding the enablement of claims 1, 6-9, 12, 14, 15,
17, and 21, the examiner asserts, “there is no support for any
search technique, other than in the ‘Summary of the
Invention’, that adequately teaches and supports ‘a’ search
technique that uses both or either of the two, information
pertaining to character
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shapes and literal context. No details are provided and their
implementation would require excessive experimentation or
delay ....” (Supplemental Examiner’s Answer at 5.) The
appellant’s reply follows.
[T]he specification, beginning on page 17, line 1
explains that the present invention can be
implemented using a variety of different computer
systems, such as a personal computer using an Intel
66 MHZ 80486 microprocessor, running on Microsoft
Windows 3.1 operating system. Also provided in the
specification is a list of exemplary data structures
and functions that may be employed in programming in
C language a digital computer to perform the
functions described in the specification and
diagrammed in step-by-step detail in Figs. 3 through
9. (Appeal Br. at 26-27.)
To fulfill the enablement requirement, a specification
must contain a description that enables one skilled in the art
to make and use the claimed invention. That some
experimentation is necessary does not preclude enablement.
All that is required is that experimentation not be unduly
extensive. Atlas Powder Co. v. E. I. Du Pont de Nemours &
Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984). “[T]he PTO bears an
initial burden of setting forth a reasonable explanation as to
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why it believes that the scope of protection provided by that
claim is
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not adequately enabled by the description of the invention
provided in the specification of the application ....” In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24, 169
USPQ 367, 369-70 (CCPA 1971)).
Here, the examiner fails to set forth a reasonable
explanation why the scope of protection provided by the claims
is not adequately enabled by the specification. Even before
the invention, computer-implementations of segmentation
processing and context processing were known in the art of
handwriting recognition. (Spec. at 1-2.) Turning to the
invention, the specification explains that the invention can
be implemented on a platform comprising “a personal computer
using an Intel 66 MHZ 80486 microprocessor, running the
Microsoft Windows 3.1 operating system.” (Id. at 17.)
Figures 3-9 of the specification show detailed flow charts of
the functions described to be performed by such a computer.
The specification also lists “exemplary data structures and
functions that may be employed in programming in C language”
the computer to perform the functions. (Id.)
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In view of the prior implementations and the appellant’s
flow charts, data structures and functions, and platform
explanation, we are not persuaded that the specification would
not enable one skilled in the art to make and use the claimed
invention without undue experimentation. The examiner has not
met his initial burden. Therefore, we reverse the rejection
of claims 1, 6-9, 12, 14, 15, 17, and 21 as non-enabled.
Next, we address the anticipation of claims 1, 6, 8, 12, 14-
17, and 21 by Fujisaki.
Anticipation of Claims 1, 6, 8, 12, 14-17, and 21 by Fujisaki
We begin by noting the following principles from Rowe v.
Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir.
1997).
A prior art reference anticipates a claim only if
the reference discloses, either expressly or
inherently, every limitation of the claim. See
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
"[A]bsence from the reference of any claimed element
negates anticipation." Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84
(Fed. Cir. 1986).
With these in mind, we address the appellant’s argument that
“Fujisaki ... cannot be fairly considered as simultaneously
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considering character shape and context information ....”
(Appeal Br. at 8.)
Claims 1, 6, and 8, each specify in pertinent part the
following limitations: “the determining step ... comprising
the steps of simultaneously considering information pertaining
to the character shapes represented by the packages and
information pertaining to the literal context of the
characters represented by the packages.” Similarly, claims 16
and 17 each specify in pertinent part the following
limitations: “search means for selecting the result by
substantially simultaneously considering the shape and literal
content of the character hypotheses ....” In summary, claims
1, 6, 8, 16, and 17 each recite simultaneously or
substantially simultaneously considering character shape and
context information.
The examiner fails to show a teaching of the claimed
limitations. “The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not ...
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resort to speculation, unfounded assumptions[,] or hindsight
reconstruction to supply deficiencies in its factual basis.”
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967).
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Application No. 08/269,156
Fujisaki does teach considering both character shape and
context information. Regarding the former, the reference
mentions, “a Frame Shape Recognizer, associates conditional
probabilities to each frame ....” Col. 13, ll. 67-68.
Regarding the latter, the reference states, “The language
model block 26 provides language model probabilities which may
be used to determine what characters are most likely to occur
in a given context, or what words are most likely to occur in
a given context.” Col. 9, ll. 23-27.
The examiner does not show, however, that the Frame Shape
Recognizer and the language model block operate substantially
simultaneously, let alone simultaneously. To the contrary,
Fujisaki suggests that the components operate sequentially.
Specifically, the reference characterizes the Frame Shape
Recognizer as one of the “pre-processing components ....”
Col. 13, ll. 63-66. Such a characterization implies that the
Frame Shape Recognizer operates before the processing of the
language model block.
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In view of this characterization, we are not persuaded
that the reference discloses the claimed limitation of
simultaneously or substantially simultaneously considering
character shape and context information. The absence of this
disclosure negates anticipation.
Regarding claims 1, 6, 8, 12, 14, 15, and 21, the
appellant argues, “traversal of the vocabulary trie from the
leaves back towards the root pertains to construction of the
vocabulary trie and not with reverse searching of paths that
comprise character hypotheses corresponding to received ink
data.” (Appeal Br. at 14.) The examiner replies, “Fujisaki
et al clearly teach the paths are reversed-searched
(traversed) in a direction opposite to the direction the data
was received (from the leaves back to the root) in column 19,
line 67-column 20, line 1.” (Examiner’s Answer at 15.)
Claims 1, 6, and 8, each specify in pertinent part the
following limitations: “the second search technique conducts a
reverse search towards the respective beginnings of at least
some of the paths developed by the first search technique
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....” Similarly, claims 12, 15, 15, and 21 each specify in
pertinent part the following limitations: “reverse-searching
the constructed paths in a direction opposite to the direction
the data was received.” In summary, claims 1, 6, 8, 12, 14,
15, and 21 each recite reverse-searching paths that comprise
character hypotheses corresponding to received data.
The examiner fails to show an unambiguous teaching of the
claimed limitations. The passage of Fujisaki relied on by the
examiner merely states, “Next, the trie is traversed from the
leaves back towards the root, summing the frequencies at each
d-node.” Col. 19, l. 67, - col. 20, l. 1. The passage is
ambiguous at best. The passage possibly could be interpreted
as teaching reverse-searching paths that comprise character
hypotheses corresponding to received data. It also could be
interpreted, however, as teaching building a vocabulary trie.
In view of the ambiguity, the examiner’s interpretation
amounts to speculation or an unfounded assumption.
Accordingly, we are not persuaded that the reference discloses
the claimed limitation of reverse-searching paths that
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comprise character hypotheses corresponding to received data.
The absence of the disclosure negates anticipation. Therefore,
we reverse the rejection of claims 1, 6, 8, 12, 14-17, and 21
as anticipated by Fujisaki. Next, we address the obviousness
of claim 9 over Fujisaki in view of Guyon.
Obviousness of Claim 9 over Fujisaki in view of Guyon
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. § 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).

Like claims 1, 6, and 8, claim 9 recites simultaneously
considering character shape and context information and also
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reverse-searching paths that comprise character hypotheses
corresponding to received data.
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The examiner fails to show a teaching or suggestion of
the claimed limitation. As mentioned regarding the
anticipation by Fujisaki, the examiner has not shown that
Fujisaki teaches the claimed limitations. He likewise has not
shown that the reference would have suggested the limitations.
The examiner also fails to allege, let alone show, that Guyon
remedies the defects of Fujisaki.
Accordingly, we are not persuaded that teachings from the
prior art would appear to have suggested the claimed
limitation of simultaneously considering character shape and
context information and also reverse-searching paths that
comprise character hypotheses corresponding to received data.
Therefore, we reverse the rejection of claim 9 over Fujisaki
in view of Guyon. Next, and last, we address the anticipation
of claims 1, 6, and 9 by Hullender.
Anticipation of Claims 1, 6, and 9 by Hullender
Regarding the anticipation of claims 1, 6, and 9 by
Hullender, the appellant argues, “In Hullender, there is no
searching in reverse (relative to another search) ....”
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(Substitute Reply Br. at 6.) The examiner replies, “in col.
7, lines 20-21, Hullender teaches comparing two character
hypotheses by probability in reverse order ....”
(Supplemental Examiner’s Answer at 3.)
As mentioned regarding the anticipation by Fujisaki and
the obviousness over Fujisaki in view of Guyon, claims 1, 6,
and 9 each recite reverse-searching paths that comprise
character hypotheses corresponding to received data. The
examiner fails to show an unambiguous teaching of the claimed
limitations. The passage of Hullender relied on by is a
comment in a program listing that merely states, “/* Routine
to compare two hypotheses by probability for qsort in reverse
order (most probable first)[.] */” Col. 7, ll. 20-21. The
passage is ambiguous at best. The passage possibly could be
interpreted as teaching reverse-searching paths that comprise
character hypotheses corresponding to received data. It also
could be interpreted, however, as teaching sorting hypotheses
probabilities, i.e., most probable first.
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In view of the ambiguity, the examiner’s interpretation
amounts to speculation or an unfounded assumption.
Accordingly, we are not persuaded that the reference discloses
the claimed limitation of reverse-searching paths that
comprise character hypotheses corresponding to received data.
The absence of the disclosure negates anticipation.
Therefore, we reverse the rejection of claims 1, 6, and 9 as
anticipated by Hullender.

CONCLUSION
To summarize, the rejection of claims 1, 6-9, 12, 14, 15,
17, and 21 under 35 U.S.C. § 112, ¶ 1, as lacking a written
description is reversed. The rejection of claims 1, 6-9, 12,
14, 15, 17, and 21 under 35 U.S.C. § 112, ¶ 1, as non-enabled
is reversed. The rejection of claims 1, 6, 8, 12, 14-17, and
21 under 35 U.S.C. § 102(e) as anticipated by Fujisaki is
reversed. The rejection of claim 9 under 35 U.S.C. § 103 as
obvious over Fujisaki in view of Guyon is reversed. The
rejection of claims 1, 6, and 9 under 35 U.S.C. § 102(b) as
anticipated by Hullender is reversed.
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Application No. 08/269,156

REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1998-1386 Page 29
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KLARQUIST, SPARKMAN, CAMPBELL,
LEIGH & WHINSTON
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