Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Oct 29, 2021

2020002750 (P.T.A.B. Oct. 29, 2021)

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.
15/651,133 07/17/2017 Andrew D. Wilson 328862-US-CNT 5768
69316 7590 10/29/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
XIAO, DI
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
10/29/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chriochs@microsoft.com
ljohnson@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW D. WILSON

___________

Appeal 2020-002750
Application 15/651,133
Technology Center 2100
____________

Before ALLEN R. MACDONALD, CAROLYN D. THOMAS, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 15/651,133

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40. Claims 1–20 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to an interactive display that includes different
types of user interface elements (e.g., button-type element or scroll bar-type
element), such that a user may use one or more user input objects (e.g.,
finger, hand, or stylus) to simultaneously interact with the interactive
display. (Abstract.)
Claim 21, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
21. A method for interacting with a device, the method
comprising:
receiving a first touch input from at least one finger of a
first user via a first region of a multi-touch user interface
associated with the device and substantially simultaneously
receiving a second touch input from a stylus held by a second
user, different from the first user, via a second region of the
multi-touch user interface associated with the device;
automatically determining by the device, the first touch
input as corresponding to the at least one finger of the first user
and the second touch input as corresponding to the stylus held
by the second user; and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Microsoft Technology Licensing, LLC. (Appeal Br. 4.)
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processing the first touch input using a first processing
method and processing the second touch input using a second
processing method,
wherein the first processing method is tailored to process
inputs corresponding to finger touch events and the second
processing method is tailored to process inputs corresponding
to input events from the stylus,
wherein the first processing method comprises
automatically determining a first value corresponding to an
area of the activated pixels in the first region of the multi-touch
user interface by the first touch input and automatically
modifying the first value corresponding to the area of the
activated pixels in the first region of the multi-touch user
interface to determine a second value corresponding to the area
of the activated pixels in the first region of the multi-touch user
interface, wherein the second value is different from the first
value.

REFERENCES
Name Reference Date
Rainisto US 7,777,728 B2 Aug. 17, 2010
Fox et al. US 7,802,202 B2 Sept. 21, 2010

REJECTIONS
Claims 21–40 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention.
Claims 21–40 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fox and Rainisto.

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OPINION
§ 112(b) Rejection—Indefiniteness
We are persuaded by Appellant’s arguments (Appeal Br. 18; see also
Reply Br. 9) that the limitation “modifying the first value corresponding to
the area of the activated pixels in the first region of the multi-touch user
interface to determine a second value corresponding to the area of the
activated pixels in the first region of the multi-touch user interface,” as
recited in independent claim 21, complies with 35 U.S.C. § 112(b) by
particularly pointing out and distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention.
The Examiner concluded that independent claim 21 is indefinite under
35 U.S.C. § 112(b), as follows:
It is unclear what constitutes modify the first value. It is
unclear what is modified. It is unclear what constitutes a second
value and how it is determined. It is unclear what the first and
second value is for, for specifically what the first and second
value represent, what its’ function is within the premise of the
invention or what goal they are trying accomplish. The claim
language simply states that the second value is modified from the
first value. However there are thousands of way (or infinite
ways) to modify a value to receive another value.
(Final Act. 4.) We do not agree with the Examiner’s conclusion.
Independent claim 21 recites the following: (i) “receiving a first
touch input from at least one finger of a first user via a first region”; (ii) a
first value corresponding to an area of the activated pixels in the first region
of the multi-touch user interface by the first touch input” and (iii) “a second
value corresponding to the area of the activated pixels in the first region of
the multi-touch user interface.” Accordingly, both the “first value” and the
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“second values” are numerical areas of activated pixels from the finger touch
input.
Independent claim 1 further recites “modifying the first value . . . to
determine a second value” (emphasis added). One of ordinary skill in the art
would recognize that the numerical “first value” is modified via
mathematical operations (see Spec. ¶ 46) to determine the numerical
“second value.” To the extent the limitation “modifying the first value . . . to
determine a second value” is considered overly broad, the breath of a claim
does not render it indefinite. See In re Miller, 441 F.2d 689, 693 (CCPA
1971)(“[B]readth is not to be equated with indefiniteness.”); see also In re
Gardner, 427 F.2d 786, 788, (CCPA 1970) (“Breadth is not
indefiniteness.”).
Thus, we are persuaded by Appellant’s arguments, as follows:
As recited in claim 21, the first value corresponds to “an area of
the activated pixels in the first region of the multi-touch user
interface.” As an example . . . the first value may correspond to
the number of activated pixels in an area of activated pixels. As
is clear from the express language of the claims, the first value is
determined in the context of processing a touch input received
from a finger of the user. Thus, as an example, modifying the
first value may include modifying the number of the activated
pixels in an area of the activated pixels in the first region.
(Appeal Br. 18.)
Appellant submits that by equating claim breadth with
indefiniteness, the Examiner commits a reversible error. This is
because the claim scope is limited to the combinations recited
in the claims . . . merely because it is broad does not render the
claims indefinite.
(Reply Br. 9.)
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Therefore, we do not agree with the Examiner that the limitation
“modifying the first value corresponding to the area of the activated pixels in
the first region of the multi-touch user interface to determine a second value
corresponding to the area of the activated pixels in the first region of the
multi-touch user interface” is indefinite.
Accordingly, we do not sustain the rejection of independent claim 21
under 35 U.S.C. § 112(b). Claims 22–27 depend from claim 21. We do not
sustain the rejection of claims 22–27 under 35 U.S.C. § 112(b), for the same
reasons discussed with respect to independent claim 21.
Independent claims 28 and 35 recite limitations similar to those
discussed with respect to claim 21. We do not sustain the rejection of claims
28 and 35, as well as dependent claims 29–34 and 36–40, for the same
reasons discussed with respect to claim 21.

§ 103 Rejection—Fox and Rainisto
We are unpersuaded by Appellant’s arguments (Appeal Br. 27–34; see
also Reply Br. 11–18) that the combination of Fox and Rainisto would not
have rendered obvious independent claim 21, which includes the limitations
“a first value corresponding to an area of the activated pixels in the first
region of the multi-touch user interface by the first touch input” and
“modifying the first value corresponding to the area of the activated pixels in
the first region of the multi-touch user interface to determine a second value
corresponding to the area of the activated pixels in the first region of the
multi-touch user interface.”
The Examiner found that magnified region 67 from the touch-screen
panel of Fox, which appears upon user activation, corresponds to the
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limitation “receiving a first touch input from at least one finger of a first user
via a first region of a multi-touch user interface associated with the device.”
(Final Act. 5.) The Examiner further found that the entire character area
within candidate area 164 of Rainisto, as illustrated in Figure 9a,
corresponds to the limitation “a first value corresponding to an area of the
activated pixels in the first region of the multi-touch user interface by the
first touch input” (Ans. 6) and that the percentage of the character area
within candidate area 164 of Rainisto, as illustrated in Figure 9a,
corresponds to the limitation “modifying the first value corresponding to the
area of the activated pixels in the first region of the multi-touch user
interface to determine a second value corresponding to the area of the
activated pixels in the first region of the multi-touch user interface” (id. at 6–
7). The Examiner also found that both Fox and Rainisto “are related to text
inputs, and the determination of key inputs” (id. at 7) and concluded that
“[i]t would have being obvious . . . to apply Rainisto to Fox so the system
can determine precisely whether the user has control over the button-type
element or not based on a specific criteria” (Final Act. 11), in particular,
“whether the user intend[s] to make the input in a system of touch . . . input
based on a percentage of user input within the key area” (Ans. 7). We agree
with the Examiner’s findings and conclusions.
Fox relates “to computing devices, and more particularly to user
interaction with computing devices.” (Col. 1, ll. 6–8.) Figure 6 of Fox
illustrates a touch screen panel such that “a user can touch an item once,
resulting in a magnified region 670 corresponding to the area” and “[t]he
user thus knows at what location the computer is sensing or has just sensed
the finger.” (Col. 8, ll. 25–29.)
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Rainisto relates to “a text input method for an electronic apparatus
having a user interface with a touch sensitive display” (col. 1, ll. 7–8), in
particular, “intelligent character selection . . . based on a method for
automatically favoring likely characters in an input language when entering
text by means of a virtual keyboard” (col. 7, ll. 4–6). Figure 9a of Rainisto,
reproduced below, illustrates a display screen snapshot featuring the
intelligent character selection functionality (col. 4, ll. 9–11) in which user 9
inputs the text “dove,” including position 161 for the letter “d,” path 162,
and new position 163 (col. 7, ll. 10–17).

Rainisto explains that “[t]he distance and angle between the new
position 163 and the previous position 161 is calculated and a candidate
area 164 is calculated.” (Col. 7, ll. 31–33.) Figure 9a of Rainisto illustrates
that the entire character area for “o” is within candidate area 164. Moreover,
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Rainisto explains “[t]he characters that fall sufficiently inside the candidate
area 164 will be added to a candidate list of characters to be considered” and
“[s]ufficiently inside can for example be . . . a certain percentage of the
character area is within the candidate area 164.” (Col. 7, ll. 34–39.)
Because Figure 9a of Rainisto illustrates an entire character area within
candidate area 164, Rainisto teaches the limitation “a first value
corresponding to an area of the activated pixels in the first region of the
multi-touch user interface by the first touch input.” Moreover, because
Rainisto explains that a character is “sufficiently inside” candidate area 164
if threshold percentage of the character area is within candidate area 164,
Rainisto teaches the limitation “modifying the first value corresponding to
the area of the activated pixels in the first region of the multi-touch user
interface to determine a second value corresponding to the area of the
activated pixels in the first region of the multi-touch user interface.”
A person of ordinary skill in the art would have recognized that
incorporating the intelligent character selection functionality of Rainisto,
including favoring certain characters based upon percentage within
candidate area 164, would improve Fox by providing more user touch
accuracy for the multi-touch user interface. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Alternatively, the combination of Fox and Rainisto is nothing more than
incorporating the known intelligent character selection functionality of
Rainisto, including favoring certain characters based upon percentage within
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candidate area 164, with the known multi-touch user interface of Fox, to
yield predictable results. See id. at 416 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). Thus, we agree with the Examiner
(Ans. 7) that modifying Fox to incorporate the intelligent character selection
functionality of Rainisto would have been obvious.
First, Appellant argues the following:
The [final Office action] does not explain how this detailed six-
step method of ensuring that letter “o” is recognized, instead of
the letter “p,” based on a calculation involving the raw distance
of the stylus from the respective characters and the probability of
each of the letters (o and p) in the candidate list teaches or
suggests “. . . automatically determining a first value
corresponding to an area of the activated pixels in the first region
of the multi touch user interface by the first touch input and
automatically modifying the first value corresponding to the area
of the activated pixels in the first region of the multi touch user
interface to determine a second value corresponding to the area
of the activated pixels in the first region of the multi-touch user
interface, wherein the second value is different from the first
value.”
(Appeal Br. 27; see also Reply Br. 11.) However, the Examiner cited to: (i)
the entire character area within candidate area 164 of Rainisto (e.g.,
character area for “o”, as illustrated in Figure 9a); and (ii) the percentage of
the character area within candidate area 164 of Rainisto, rather than the six-
step method of Rainisto for selecting the letter “o”, for teaching the
limitations “a first value corresponding to an area of the activated pixels in
the first region of the multi-touch user interface by the first touch input” and
“modifying the first value corresponding to the area of the activated pixels in
the first region of the multi-touch user interface to determine a second value
corresponding to the area of the activated pixels in the first region of the
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multi-touch user interface.” (Ans. 6–7.) Appellant has not provided any
persuasive arguments or evidence as to why the Examiner’s findings with
respect to: (i) the entire character area within candidate area 164 of
Rainisto; and (ii) the percentage of the character area within candidate area
164 of Rainisto are erroneous.
Second, Appellant argues the following:
[T]he equation created by the Examiner that states “second value
= first value/candidate area” is not taught by Rainisto. While the
Examiner does not invoke common sense or ordinary creativity,
Appellant submits that the Examiner appears to be implicitly
relying upon these concepts by creating an equation that is not
described in Rainisto and then reasoning that this equation can
be used in a similar manner as in the recited claims.
(Reply Br. 14.) Contrary to Appellant’s arguments, Rainisto expressly states
that “a certain percentage of the character area is within the candidate area
164.” (Col. 7, ll. 38–39.) Thus, the “percentage of the character area is
within the candidate area” can also be expressed a mathematical ratio with
respect to the entire character area within the candidate area 164. Moreover,
even if Appellant is correct that the equation is improper, Appellant has not
provided any persuasive arguments or evidence as to why the Examiner’s
findings with respect to: (i) the entire character area within candidate area
164 of Rainisto; and (ii) the percentage of the character area within
candidate area 164 of Rainisto are erroneous.
Third, Appellant argues that “[t]he Office Action does not provide a
rational basis for modifying Fox based on Rainisto.” (Appeal Br. 30.) In
particular, Appellant argues that “[t]he Examiner concludes that a person of
ordinary skill in the art (POSITA) would apply Rainisto to Fox so the
system can determine precisely whether the user has control over the button-
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type element or not based on specific criteria” (Appeal Br. 32) and “[t]he
Examiner’[s] conclusory statement does not provide sufficient explanation
for why a POSITA would have been motivated to make any modifications to
Fox based on Rainisto” (id. at 33). Contrary to Appellant’s arguments, the
rationale provided by the Examiner for combining Fox and Rainisto was
based upon the improvement of a similar device in the same way as in the
prior art. In particular, the Examiner articulated that such improvement to
Fox is based upon “whether the user intend[s] to make the input in a system
of touch . . . based on a percentage of user input within the key area.”
(Ans. 7.)
Last, Appellant argues the following:
The Examiner provides no evidence that a skilled artisan
would have a reasonable expectation of success at arriving the
claimed subject matter. As an example, the Examiner does not
provide any evidence that there are only a finite number of ways
‘so [that] the system can determine precisely whether the user
has control over the button-type element or not based on []
specific criteria,” such that a person of ordinary skill in the art
would have a reasonable expectation of success to arrive at the
claimed subject matter.
(Appeal Br. 34; see also Reply Br. 17–18.) Contrary to Appellant’s
arguments, the Examiner found that both Fox and Rainisto “are related to
text inputs, and the determination of key inputs.” (Ans. 7.) Thus, because
the Examiner’s modification of Fox’s touch screen panel, as illustrated in
Figure 6, is based upon incorporating the intelligent character selection
functionality from Rainisto’s display screen, as illustrated in Figure 9a, one
of ordinary skill would expect the modification of Fox to result in a
reasonable expectation of success.
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Thus, we agree with the Examiner that the combination of Fox and
Rainisto would have rendered obvious independent claim 21, which includes
the limitations “a first value corresponding to an area of the activated pixels
in the first region of the multi-touch user interface by the first touch input”
and “modifying the first value corresponding to the area of the activated
pixels in the first region of the multi-touch user interface to determine a
second value corresponding to the area of the activated pixels in the first
region of the multi-touch user interface.”
Accordingly, we sustain the rejection of independent claim 21 under
35 U.S.C. § 103. Claims 22–27 depend from claim 21, and Appellant has
not presented any additional substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 22–27 under 35 U.S.C.
§ 103 for the same reasons discussed with respect to independent claim 21.
Independent claims 28 and 35 recite limitations similar to those
discussed with respect to independent claim 21, and Appellant has not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 28 and 35, as well as dependent claims
29–34 and 36–40, for the same reasons discussed with respect to claim 21.

CONCLUSION
The Examiner’s decision rejecting claims 21–40 under 35 U.S.C.
§ 112(b) is reversed.
The Examiner’s decision rejecting claims 21–40 under 35 U.S.C.
§103 is affirmed.
Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
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DECISION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40 112(b) Indefiniteness 21–40
21–40 103 Fox, Rainisto 21–40
Overall
Outcome
21–40

TIME PERIOD FOR RESPONSE
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