Ex Parte Saund et al

Patent Trial and Appeal Board

May 29, 2014

11550233 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/550,233 10/17/2006 Eric Saund A1318QUSCNT-XER0460US03 8337
62095 7590 05/29/2014
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
HUYNH, THU V
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
05/29/2014 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 ERIC SAUND, THOMAS P. MORAN, DANIEL LARNER,
JAMES V. MAHONEY, and TODD A. CASS
__________

Appeal 2012-003742
Application 11/550,233
Technology Center 2100
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an image
analysis and conversion method and a system used for the same. The
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the Real Party in Interest as Xerox Corporation (see
App. Br. 1).
Appeal 2012-003742
Application 11/550,233

2
STATEMENT OF THE CASE
Background
The invention described in the Specification “relates to a method and
apparatus for processing images, and more particularly to an image analysis
system that takes as an input, bitmapped and/or digital ink images, and
outputs structured object representations which can be used within a
structured text/graphics editor” (Spec. 1, ¶ [0002]). As noted in the
Specification, “existing text/graphics editors are not able to meet the
demands of workers employing different modes of work, such as working
with physical documents, i.e., generating sketches by paper and pen” (id. at
¶ [0005]). “While text and graphic recognition systems exist, these systems
do not consider the text and/or graphics in such a way that a structured
text/graphics editor may employ its full range of operations to the
recognized text/graphics” (id. at ¶ [0009]).
The Claims
Claims 1-8 and 14-24 are on appeal. Independent claims 1 and 8 are
illustrative, and read as follows:
1. An image analysis and conversion method
comprising:
receiving a digital ink image having defined perceptually
salient structures by an electronic device configured to perform
the receiving;
converting the digital ink image into multiple structured
object representations of the digital ink image by the electronic
device the multiple structured object representations correlating
to ones of the defined perceptually salient structures of the
digital ink image; and
Appeal 2012-003742
Application 11/550,233

3
altering at least one of the structured object
representations into multiple simultaneously existing structured
alternative interpretations of the at least one structured object
representations of the digital ink image by the electronic device,
each of the alternative interpretations being viewable by a user
and being plausible intended outputs of the user.
8. An image analysis and conversion system comprising:
an image receiving input portion of an electronic device
designed to receive a digital ink image; and
a converter portion of the electronic device configured to
convert the digital ink image into structured object
representations of the digital ink image, each of the structured
object representations correlating to a perceptually salient
structure of the digital ink image defined by the converter,
wherein each of the structured object representations is editable
by a structured text/graphics editor and the converter is further
configured to alter the digital ink image into multiple
simultaneously existing structured alternative interpretations of
the digital ink image, each of the alternative interpretations
being viewable by a user and being plausible intended outputs
of the user.
Claim 18, the only other independent claim, is also directed to an
image analysis and conversion method that requires “converting the digital
ink image into multiple structured object representations” and “altering at
least one of the multiple structured object representations into multiple
simultaneously structured alternative interpretations.”
Appeal 2012-003742
Application 11/550,233

4
The Issues
The Examiner has rejected the claims as follows:
I. claims 1, 2, 5, 6, 8, 14, 16, 18, 20, 22, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Saund2 and
Igarashi;3
II. claim 3 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Saund and Igarashi as further combined with
Appellants’ Admitted Prior Art (AAPA);
III. claims 4, 7, and 19 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Saund and Igarashi as further
combined with Wilcox;4
IV. claims 15, 17, and 21 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Saund and Igarashi as further
combined with Moran;5
V. claim 23 under under 35 U.S.C. § 103(a) as unpatentable over
the combination of Saund and Igarashi as further combined
with Sezgin.6

2 Saund et al., US 5,553,224, issued Sept. 3, 1996.
3 Takeo Igarashi et al., Interactive Beautification: A Technique for Rapid
Geometric Design, 1997 PROC. 10TH ANNUAL ACM SYMP. ON USER
INTERFACE SOFTWARE & TECH. 105-114.
4 Wilcox et al., US 5,889,523, issued Mar. 30, 1999.
5 Thomas P. Moran et al., Implicit Structure for Pen-based Systems Within a
Freeform Interaction Paradigm, 1995 PROC. SIGCHI CONF. ON HUMAN
FACTORS COMPUTING SYS. 487-494
6 Tevfik Metin Sezgin, et al., Sketch Based Interfaces: Early Processing for
Sketch Understanding, 15 PROC. 2001 WORKSHOP ON PERCEPTIVE USER
INTERFACES 1-8 (2001).
Appeal 2012-003742
Application 11/550,233

5
FINDINGS OF FACT
FF1. Saund discloses “[a] graphical input and display system for
creating and manipulating an abstract graphical image by decomposing it
into abstract elemental objects and organizing the elemental objects into a
set of perceptually coherent composite objects” (Saund, Abstract).
FF2. Figures 1A and 1B of Saund are reproduced below:

Figures 1A and 1B of Saund illustrate an object analysis of a displayed
image using the functionality described therein (id. at col. 2 ll. 55-56).
Appeal 2012-003742
Application 11/550,233

6
FF3. Saund discloses the following:
Referring to FIG. 1a, using a pointing device in DRAW
mode, the user draws an “L”-shaped curve 10 which appears on
an imaging surface 12. Running in the background, the
computer program creates an abstract object 14 corresponding
to the “L”-shaped curve. It also detects the presence of a salient
sharp corner 16 in this curve; consequently, it creates abstract
objects 18 and 20 corresponding to the vertical and horizontal
segments of this curve. At any time the user may press a button
on the pointing device or type keystrokes to toggle into a
COMMAND mode. A gesture made on the imaging surface in
COMMAND mode serves to identify one or more of the
abstract objects that the program has created. . . . The user may
now issue further instructions using the pointing device and/or
the keyboard in order to delete, move, copy-move, rotate,
change thickness, scale in size, or otherwise modify the
object(s) selected.
(Id. at col. 3 ll. 28-49)
FF4. Saund further discloses the following:
Referring to FIG. 1b, using the pointing device in DRAW
mode, the user elects to draw an inverted “L” 24. The program
detects the corner in this stroke, as well as additional significant
spatial structures emergent from the proximity of this stroke
and the previous one. These structures include the corner
formed at the bottom right of the figure, and the crossing
junction at the upper left. The program creates abstract objects
corresponding to (i) each of individual short relatively straight
segments 26; (ii) curve segments bounded by crossing or T-
junctions 28; (iii) curve segments bounded by corners 30; (iv)
curve segments that continue through junctions and corners 32;
(v) curve segments created by tracing certain salient convex
paths 34.
(Id. at col. 3 ll. 50-62)
Appeal 2012-003742
Application 11/550,233

7
FF5. Igarashi is directed to “Interactive Beatification: A Technique
for Rapid Geometric Design” (Igarashi, Title).
FF6. Igarashi discloses that:
[t]he Interactive beautification system receives the user’s free
stroke and beautifies it by considering geometric constraints
among segments. A single stroke is beautified one after
another, preventing accumulation of recognition errors or
catastrophic deformation. Supported geometric constraints
include perpendicularity, congruence, symmetry, etc., which
were not seen in existing free stroke recognition systems. In
addition, the system generates multiple candidates as a result of
beautification to solve the problem of ambiguity. Using this
technique, the user can draw precise diagrams rapidly satisfying
geometric relations without using any editing commands.
(Id. at Abstract)
FF7. Igarashi discloses that interactive beautification is achieved by
three sequential processes: “1) inferring underlining geometric constraints
based on the spatial relationships among the input stroke and the existing
segments, 2) generating multiple candidates by combining inferred
constraints appropriately, and 3) evaluating the candidates to find the most
plausible candidate and remove the inappropriate candidates” (id. at 105).
FF8. Igarashi further discloses that “[i]nteractive beautification is
characterized by the following three features: 1) stroke by stroke
beautification, 2) automatic inference and satisfaction of higher level
geometric constraints, and 3) generation and selection of multiple candidates
as a result of beautification” (id. at 106).
FF9. Igarashi discloses that other “beautification systems” are
“basically batch-based, which can lead to unwanted results because of
ambiguity in the user’s input,” and that “[i]nteractive beautification prevents
Appeal 2012-003742
Application 11/550,233

8
such results by interactively presenting multiple candidates and requesting
the user’s confirmation” (id.).
FF10. Igarashi states that “Saund et al.’s work [21] shares our
motivation, to support natural human perception of underlying spatial
structures, but does not support the construction of precise diagrams” (id.).
The reference [21] identified in Igarashi is: “Saund, E., Moran, T.P., ‘A
Perceptually Supported Sketch Editor,’ Proc. Of UIST’94, pp. 175-184,
1994” (id. at 114).
FF11. Moran discloses “a scheme for extending an informal, pen-
based whiteboard system . . . to provide a structured editing capability
without violating its free expression and ease of use” (Moran, Abstract).
FF12. Figures 2a and 2b of Moran are reproduced below:

Figures 2a and 2b show an example of a “freeform move” in Moran.
FF13. Moran discloses:
Figure 2 shows a freeform move. First, a segment of material is
selected by drawing a loop around it (Figure 2a); then it is dragged
dynamically to a new location (Figure 2b). Because it is a freeform
move, the dragged material stays where it is dropped, and none of the
material around is adjusted. This is not satisfactory if the material is
regarded as a list.
(Id. at 3).
Appeal 2012-003742
Application 11/550,233

9
FF14. Figures 3a and 3b of Moran are reproduced below:

Figures 3a and 3b show an example of a “structured list move” in Moran.
FF15. Moran discloses:
To deal with the material as a list (Figure 3a), the user
first indicates the intent by using a structural selection gesture:
a bracket (“[”) gesture at the left of the list item. The system
projects the legs of the bracket to the right to enclose the whole
list item. The resulting rectangular selection enclosure signals
that the system regards this as a structural selection. Then the
user makes a wedge (“>”) gesture to tell the system where to
insert the selected item. After the wedge gesture is made, the
system opens up space for the item, moves the item, and closes
the space where the item used to be (Figure 3b). The system
animates all of the movement, so that the user, and the other
people the user is working with, can easily track and understand
the move.
(Id.)
FF16. Figures 4a and 4b of Moran are reproduced below:

Appeal 2012-003742
Application 11/550,233

10
Figures 4a and 4b show an example of a “text move” in Moran.
FF17. Moran discloses: “To move a phrase, left and right bracket
gestures are made to select the phrase (Figure 4a). Then a caret (“^”)
gesture is made to indicate a textual insertion. The system animates the
moving of the phrase as well as the closing and opening up of spaces (Figure
4b)” (id.).
FF18. Figures 5a and 5b of Moran are reproduced below:

Figures 5a and 5b show an example of a “column move” in Moran.
FF19. Moran discloses:
To move a column, the material must be treated as a
table. A top bracket indicates a column, the legs of the bracket
projecting downward to select it (Figure 5a). A caret gesture
shows where to move the column. Again, the system animates
the move. All of the material to the right of the selected
column is regarded as a column and moves left to close up the
vacated space (Figure 5b).
(Id. at 3)
PRINCIPLES OF LAW
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art. . . . [I]t can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
Appeal 2012-003742
Application 11/550,233

11
combine the elements in the way the claimed new invention does.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
ANALYSIS
Claims 1 and 18
The Examiner finds that Saund discloses an image analysis and
conversion method that comprises the steps of “receiving a digital ink
image . . .” and “converting the digital ink image into multiple structured
object representations . . .” in the manner required by the claims (Ans. 6). In
particular, Saund teaches “manipulating an abstract graphical image by
decomposing it into abstract elemental objects and organizing the elemental
objects into a set of perceptually coherent composite objects” (FF1). As
shown in FIG. 1a, for example, Saund discloses “creat[ing] an abstract
object 14 corresponding to [an] ‘L’-shaped curve” that is drawn using a
pointing device, “detect[ing] the presence of a salient sharp corner 16 in this
curve,” and “creat[ing] abstract objects 18 and 20 corresponding to the
vertical and horizontal segments of this curve” (FF2-4). Appellants do not
dispute the Examiner’s finding that the “abstract elemental objects”
identified by Saund correlate to the claimed “structured object
representations.”
The Examiner acknowledges that Saund fails to disclose “altering at
least one of the structured object representations into multiple
simultaneously existing structured alternative interpretations of the at least
one structured object representations of the digital ink image by the
electronic device, each of the alternative interpretations being viewable by
the user and being plausible intended outputs of the user,” as required by the
Appeal 2012-003742
Application 11/550,233

12
claims (Ans. 6). The Examiner, however, asserts that this limitation is
taught by Igarashi’s disclosure of an interactive beautification process that
involves the generation and selection of multiple candidates in order to solve
the problem of ambiguity in a freestroke recognition system (id.; see also
FF5-6).
Appellants argue that “Igarashi does not remedy the deficiency of
Saund because Igarashi does not suggest altering of a multiple structured
object representation,” and that “[o]ne of ordinary skill in the art would not
be motivated to modify the abstract elemental objects of Saund with
beautified stroke selections of Igarashi” (App. Br. 9-16 (emphasis omitted)).
We agree that the Examiner has not made a prima facie showing of
obviousness of independent claims 1 and 18 based on the combination of
Saund and Igarashi. However, as separately discussed further below, we
conclude that the combination renders independent claim 8 obvious.
Although Igarashi discloses the generation of “multiple candidates,”
which could be considered alternative interpretations of a single free stroke,
there is no disclosure or suggestion that this technique could be applied to a
system in which an existing digital image has been converted to multiple
structural representations. To the contrary, Igarashi emphasizes that “[a]
single stroke is beautified one after another [to] prevent[] accumulation of
recognition errors or catastrophic deformation,” and that the multiple
candidates are only generated by “inferring underlining geometric
constraints based on the spatial relationships among the input stroke and the
existing segments” (FF6-8 (emphasis added)). We therefore find the
“stroke-by-stroke” beautification disclosed by Igarashi to be inapplicable to
Appeal 2012-003742
Application 11/550,233

13
a process in which a digital image has been converted to multiple structured
representations as required by claims 1 and 18.
The Examiner asserts that it would have been obvious to “modify the
freehand display editor of Saund to include the beautified stroke selection of
Igarashi,” and “[t]he motivation to do so would be to allow the user to
rapidly create precise diagrams with satisfying geometric relations” (Ans. 7
(emphasis omitted)). The Examiner also notes that “Igarashi’s concept of
altering a single stroke into multiple beautified candidates [can be] applied
to Saund’s single abstract object, such as stroke 18 or 20,” and “[t]he
combination would have allowed the user to edit/modify/manipulate each of
the abstract objects to a desired beautified candidate from among [ ]
beautified candidates, resulting of creating precise diagrams or
drawings/freehand drawn object” (id. at 20 (emphasis omitted)).
The Examiner has not provided a sufficient rationale to implement the
interactive beautification technique of Igarashi to the graphics system
disclosed by Saund in order to arrive at “the claimed invention as a whole.”
See 35 U.S.C. § 103(a); see also In re Thrift, 298 F.3d 1357, 1366 (Fed. Cir.
2002) (prima facie case of obviousness requires that the cited references
“support all of the limitations” of the rejected claim). To be sure, we
recognize that Igarashi shares a common motivation with Saund’s work “to
support natural human perception of underlying spatial structures” (FF10).7

7 Although the Saund et al. reference [21] identified in Igarashi is a different
publication than the Saund patent relied upon by the Examiner as prior art to
reject the claims, we understand this statement in Igarashi as more generally
referring to the work of Saund in this area. Saund is also a named inventor
in the present Application.
Appeal 2012-003742
Application 11/550,233

14
Igarashi also notes, however, that Saund’s work “does support the
construction of precise diagrams” (id.). At most, the Examiner establishes
motivation to apply Igarashi’s beautification technique after each individual
stroke is drawn by freehand using Saund’s system, but that does not lead to
the invention of claims 1 and 18.
While the Examiner emphasizes that the claim language only requires
“altering at least one of the structured object representations into multiple
simultaneously existing structured alternative interpretations of the at least
one structured object representations” (Ans. 19), the Examiner does not
account for the additional requirement of “converting the digital ink image
into multiple structured object representations” that is also recited in claims
1 and 18 (Cl. 1 (emphasis added)). Claims 1 and 18 require that the
alteration of at least one structured object representation must be done to a
digital image that has already been converted into multiple structured object
representations. The Examiner does not articulate a reason why one of
ordinary skill in the art would have modified the stroke-by-stroke
beautification technique disclosed by Igarashi in such a manner. Indeed, to
do so would be antithetical to Igarashi’s warning that “batch-based”
beautification systems “can lead to unwanted results because of ambiguity in
the user’s input” (FF9).
The Examiner nonetheless asserts that “[t]he combination of Igarashi
and Saund would have provided many options for the user to manipulate
each stroke, such as right after the user draws a single stroke as well as a
single stroke from plurality strokes which are drawn by a user” (Ans. 25).
The Examiner further asserts that “[t]he combination would have allowed a
Appeal 2012-003742
Application 11/550,233

15
user to go back to change a beautified candidate for any previous stroke, for
example second stroke, when the user is drawing a tenth stroke, to a desired
or appropriate stroke” (id.). However, that type of beautification process is
not taught or suggested by either Igarashi or Saund, and the Examiner does
not explain why one of ordinary skill in the art would have modified the
stroke-by-stroke beautification disclosed by Igarashi so that multiple
candidates can be generated for any prior stroke rather than only the most
recently drawn stroke. To do so would appear to change the fundamental
principle of operation of the interactive beautification process disclosed by
Igarashi. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (reversing
obviousness rejection where the “suggested combination of references
would require a substantial reconstruction and redesign of the elements
shown in [the prior art reference] as well as a change in the basic principles
under which the [prior art] construction was designed to operate”); see also
MPEP § 2143.01(VI) (“If the proposed modification or combination of the
prior art would change the principle of operation of the prior art invention
being modified, then the teachings of the references are not sufficient to
render the claims prima facie obvious.”).
Accordingly, we reverse the obviousness rejection of independent
claims 1 and 18.
Claims 2-7, 14-15, and 19-24
Claims 2-7, 14-15, and 24 depend upon claim 1. Claims 19-23
depend upon claim 18. We also reverse the obviousness rejection of these
dependent claims, which further relies upon the combination of Igarashi and
Saund. The Examiner has not relied upon any of the additional prior art
Appeal 2012-003742
Application 11/550,233

16
used to reject these dependent claims to provide the necessary rationale that
is missing from the primary rejection. See In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”).
Claim 8
Unlike claims 1 and 18 discussed above, independent claim 8 does not
explicitly require the conversion of a digital ink image into “multiple
structured object representations.” Rather, the claim only recites “a
converter portion of the electronic device configured to convert the digital
ink image into structured object representations of the digital ink image,
each of the structured object representations correlating to a perceptually
salient structure of the digital ink image defined by the converter” (Cl. 8
(emphasis added)).
In determining patentability, we give claims their broadest reasonable
interpretation consistent with the Specification. See In re Zietz, 893 F.2d
319, 321 (Fed. Cir. 1989). Under that approach, we broadly interpret claim
8 to encompass an image analysis and conversion system that is configured
to convert a digital ink image to one or more “structured object
representations,” and “further configured to alter the digital ink image into
multiple simultaneously existing structured alternative interpretations” of the
one or more structured object representations. Although claim 8 recites
“structured object representations” in the plural form, the Federal Circuit has
stated that “in context, the plural can describe a universe ranging from one to
some higher number, rather than requiring more than one item.” Versa
Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (stating
Appeal 2012-003742
Application 11/550,233

17
that “the use of ‘channels’ in the plural does not imply that multiple channels
are required by the claim.”); see also Dayco Prods., Inc. v. Total
Containment, Inc., 258 F.3d 1317, 1328 (Fed. Cir. 2001) (holding that claim
term “recesses” can be understood to mean a single recess or more than one
recess). We do not find anything in the Specification to indicate that a
digital ink image must necessarily be converted to more than one structured
object representation. Moreover, Appellants could have chosen to explicitly
recite “multiple structured object representations,” as they did for claims 1
and 18, but they chose not to use the same language for claim 8.
In light of our broader interpretation of claim 8, we believe that the
Examiner has presented a prima facie case of obviousness of that claim
based on the combination of Saund and Igarashi. In particular, for the
reasons discussed above, the Examiner established that one of ordinary skill
in the art would have found motivation to apply Igarashi’s beautification
technique after each individual stroke is drawn by freehand using Saund’s
system in order to allow the user to rapidly create precise diagrams with
satisfying geometric relations (Ans. 7). We determine this is sufficient to
render claim 8 obvious. In contrast to claims 1 and 18, we find that
Igarashi’s stroke-by-stroke beautification process, as applied to the system
disclosed by Saund, would read on the system recited in claim 8 wherein a
digital ink image is converted into only a single structured object
representation (i.e., a single free stroke decomposed to an abstract elemental
object as taught by Saund) and thereafter altered into multiple
simultaneously existing structured alternative interpretations (i.e., the
multiple candidates as taught by Igarashi).
Appeal 2012-003742
Application 11/550,233

18
Appellants’ arguments are only premised upon their interpretation that
claim 8 also requires multiple structured object representations in the same
manner as claims 1 and 18. See, e.g., App. Br. 11 (arguing that Igarashi’s
beautification process is not the same feature as altering of a multiple
structured object representation, as provided in claims 1, 8 and 18). While
we agree with Appellants’ non-obviousness arguments as they apply to the
claims that explicitly recite “multiple structured object representations,” we
do not draw the same conclusion with respect to claim 8, which only
requires a system configured to alter a digital ink image with a single
structured object representation. Accordingly, we affirm the obviousness
rejection of claim 8.
Claim 16
Claim 16 depends upon claim 8. Appellants have not made any
separate arguments concerning the non-obviousness of this dependent claim
other than those presented with respect to the independent claim.
Accordingly, we find that claim 16 falls with claim 8. 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 17
Claim 17 also depends upon claim 8, and recites: “The system of
claim 8, wherein the converter is configured to permit transfer of formal
interpretations and informal interpretations of the structured alternative
interpretations of the digital ink image from one representative presentation
to another representative presentation of an alternate formality, at will”
(Cl. 17). The Examiner rejected this claim based on the combination of
Igarashi and Saund, as further combined with Moran (Ans. 15-16). In
Appeal 2012-003742
Application 11/550,233

19
particular, the Examiner acknowledges that the combination of Saund and
Igarashi does not explicitly teach the “transfer of formal interpretations,” but
asserts that this limitation is taught by Moran, and that it would have been
obvious “to modify the freeform editing of Saund and Igarashi to include the
freeform and structured editing of Moran,” and “[t]he motivation to do so
would be to allow for handling user intended structure for freeform shapes”
(Ans. 16 (emphasis omitted)). Appellants dispute the Examiner’s conclusion
that the combined teachings of Saund, Igarashi, and Moran render claim 17
obvious (App. Br. 16-17).
We do not believe the Examiner has established a prima facie case of
obviousness of dependent claim 17. In particular, the Examiner has only
pointed to figures in Moran showing both structured (i.e., typed) and
freeform (i.e., handwritten) items in a list, but has not articulated any
rationale to transfer either a formal or informal representation “from one
representative presentation to another representative presentation of an
alternate formality, at will.”
For example, Moran teaches the same view or presentation of the
freeform and structured interpretations in each of FIGs. 2a-2b, 3a-3b, 4a-4b,
and 5a-5b (FF11-19). Each presentation has the same list, and although the
list has been rearranged, nothing has been transferred to a different list or
presentation. Consequently, we find that Moran only teaches the same
representative presentation of the freeform and structured interpretations
without transfer among different presentations, and thus, does not provide
evidence that the additional limitation of this dependent claim would have
been obvious.
Appeal 2012-003742
Application 11/550,233

20
The Examiner nonetheless asserts that the combination of Igarashi and
Saund teaches that “altering permits transfer of informal interpretations of
the structured alternative interpretations of the digital ink image from one
representative presentation to another representative presentation of an
alternate formality, at will” (Ans. 26). However, as discussed above, the
Examiner has only established motivation to present alternative
interpretations for each individual abstract elemental object disclosed by
Saund using the stroke-by-stroke beautification technique disclosed by
Igarashi. The Examiner has not identified any disclosure or suggestion to
transfer the beautification candidates disclosed by Igarashi (i.e., the claimed
structured alternative interpretations) to another representative presentation
of an alternative formality. We do not believe this dependent claim is also
rendered obvious based merely on the same motivation to combine Saund
and Igarashi in the manner that renders independent claim 8 obvious. Nor
has the Examiner identified a reason to further modify Igarashi or Saund in
such a manner based on the teachings of Moran.
We therefore reverse the Examiner’s rejection of claim 17.
SUMMARY
We reverse the rejection of claims 1, 2, 5, 6, 14 18, 20, 22, and 24
under 35 U.S.C. § 103(a) as unpatentable over the combination of Saund and
Igarashi.
We reverse the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Saund and Igarashi as further
combined with Appellants’ Admitted Prior Art (AAPA).
Appeal 2012-003742
Application 11/550,233

21
We reverse the rejection of claims 4, 7, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Saund and Igarashi as
further combined with Wilcox.
We reverse the rejection of claims 15, 17, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Saund and Igarashi as
further combined with Moran.
We reverse the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Saund and Igarashi as further
combined with Sezgin.
We affirm the rejection of claims 8 and 16 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Saund and Igarashi.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
bar