Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Feb 22, 2022

2020005349 (P.T.A.B. Feb. 22, 2022)

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. 15/043,874 02/15/2016 Danielle Lauren Ellbogen 358896-US-NP 1004 181403 7590 02/22/2022 Lewis Roca Rothgerber Christie LLP-Microsoft PO Box 29001 Glendale, CA 91209-9001 EXAMINER BEARD, CHARLES LLOYD ART UNIT PAPER NUMBER 2616 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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): PLPrivatePair@lrrc.com pto@lewisroca.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIELLE LAUREN ELLBOGEN, KELLY ROSE MCARTHUR, SEAN GARY NORDBERG, ALEXANDER BAIN, AARON MICHAEL GETZ, and FRANCIS ZHOU ________________ Appeal 2020-005349 Application 15/043,874 Technology Center 2600 ____________ Before MICHAEL R. ZECHER, JEREMY J. CURCURI, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-9, 11, 13-18, and 20-23.1 Claims 10, 12, and 19 were canceled. Appeal Br. 2, A4, A6 (Claims App.).2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies Microsoft Technology Licensing, LLC as the real party in interest. Appeal Br. 3. 2 All references to the Appeal Brief are to the Appeal Brief filed on December 17, 2019. Appeal 2020-005349 Application 15/043,874 2 STATEMENT OF THE CASE Introduction The claimed subject matter relates to animating digital ink input on a touch screen. Spec. ¶ 13. In particular, a touch-sensing device receives digital ink input provided in various ways, including a pen, a stylus, or a finger. Id. The device collects ink stroke data for the various input strokes and also receives an animation type selection for the input. Id. ¶ 14. The device dynamically displays the input with the selected animation and stores this information in a digital ink store for later retrieval. Id. ¶¶ 14-15. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A method comprising: receiving digital ink input made up of one or more digital ink strokes; receiving an input animation type selection for the digital ink input, the animation type describing a manner in which the one or more digital ink strokes and an area around the one or more digital ink strokes are dynamically displayed; collecting ink stroke data for each of the one or more digital ink strokes; dynamically displaying, using the input animation type, the one or more digital ink strokes of the digital ink input and the area around the one or more digital ink strokes by causing a visual appearance of the one or more digital ink strokes and the area around the one or more digital ink strokes to be continually changing during the dynamic display; adding, to a digital ink container, the ink stroke data and an indication of the input animation type; and communicating the digital ink container to a digital ink store. App. Br. A1 (Claims App.). Appeal 2020-005349 Application 15/043,874 3 The Examiner’s Rejections Claims 1, 2, and 5 stand rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy (US 2013/0120436 A1; May 16, 2013), Noris (US 2013/0335426 A1; Dec. 19, 2013), and Nyman (Nyman -codepen - Animated Fire Text-Shadow (2013)). Final Act. 52-63.3 Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Nyman, and DiVerdi (US 2013/0127898 A1; May 23, 2013). Final Act. 63-65. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Nyman, and Kwon (US 2011/0183691 A1; July 28, 2011). Final Act. 65. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Nyman, and Zou (US 2012/0299701 A1; Nov. 29, 2012). Final Act. 65. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Nyman, Zou, and Banerjee (US 2017/0221253 A1; Aug. 3, 2017). Final Act. 66-68. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Nyman, Banerjee, and Zou. Final Act. 69. Claims 9, 11, 13-16, and 21-23 stand rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Banerjee, and Nyman. Final Act. 12-43. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Banerjee, Nyman, and Kwon. Final Act. 41-43. 3 All references to the Final Rejection are to the Final Rejection entered on May 23, 2019. Appeal 2020-005349 Application 15/043,874 4 Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Banerjee, Nyman, and Zou. Final Act. 43-48. Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Banerjee, Nyman, and Zou. Final Act. 48-52. ANALYSIS Appellant argues the Examiner errs in rejecting claim 1 because the combination of cited references does not teach or suggest the following limitations: dynamically displaying, using the input animation type, the one or more digital ink strokes of the digital ink input and the area around the one or more digital ink strokes by causing a visual appearance of the one or more digital ink strokes and the area around the one or more digital ink strokes to be continually changing during the dynamic display. See Appeal Br. 11-17; Reply Br. 3-8. In particular, Appellant argues Nyman does not teach or suggest these limitations because Nyman teaches techniques for altering a graphical display of text presented in a browser, not digital ink strokes or an area around digital ink strokes. Appeal Br. 11-12. Appellant argues Nyman makes no mention of digital ink strokes and text-based characters embedded in a web page are not the same as digital ink strokes. Id. at 13. Appellant argues Nyman’s techniques would not be applicable to digital ink strokes because Nyman requires web page text to be known beforehand, not dynamically entered by a user. Id. at 14. Appellant also argues that, even if the references were combined as proposed by the Examiner, doing so would improperly change the principle of operation of Krishnaswamy. Appeal Br. 16-17. Appellant argues Krishnaswamy is directed to more accurately simulating real world painting Appeal 2020-005349 Application 15/043,874 5 techniques. Id. at 16 (citing Krishnaswamy ¶ 13). Appellant argues Nyman’s teachings would fundamentally disturb this stated purpose. Id. Appellant argues Krishnaswamy cautions against such a combination. Id. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Krishnaswamy teaches digital ink strokes whose visual appearance changes according to drying rate, canvas wetness, and pickup mix ratio configurations. Ans. 76 (citing Krishnaswamy ¶¶ 81-83, 90-93, Figs. 9-12). The Examiner finds Krishnaswamy teaches a brush stroke that corresponds to a relatively narrow input area and a relatively wider area for which a water effect takes place. Id. (citing Krishnaswamy ¶¶ 62-64, 72-74, 78, 79, 81-83, Figs. 2 and 9). The Examiner finds these disclosures teach or suggest dynamically displaying one or more digital ink strokes. Id. The Examiner further finds, and we agree, Noris teaches animations corresponding to digital ink strokes entered by a user. Ans. 77 (citing Noris ¶¶ 23, 41, 50, 51, 57, 60-63, Fig. 8). The Examiner finds an ordinarily skilled artisan would have combined Krishnaswamy’s inputted stroke and water effects with the continual animation sequence taught by Noris. Id. The Examiner further finds, and we agree, Nyman teaches animation effects that dynamically display text and an area around the text to be continually changing during the dynamic display, such as a fire effect. Ans. 73-75 (citing Nyman Fig. 1). The Examiner finds an ordinarily skilled artisan would have combined Krishnaswamy’s water effects with Noris’s continual animation sequence and Nyman’s fire animations to achieve a looping, continuous animation of the digital ink strokes and the area around the digital ink strokes. Id. at 77. Appeal 2020-005349 Application 15/043,874 6 Appellant’s argument that Nyman teaches animating text-based characters and not digital ink strokes is unpersuasive of Examiner error. Appellant’s argument focuses only on the disclosure of Nyman, without considering the cited teachings of Krishnaswamy and Noris, which teach animating digital ink strokes. See Appeal Br. 11-15. Thus, Appellant’s argument is not responsive to the particular combination of teachings articulated by the Examiner because one cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant’s argument that the proposed combination would change the principle of operation of Krishnaswamy, frustrate its intended purpose, and that Krishnaswamy cautions against the proposed combination (see Appeal Br. 16-17) is also unpersuasive. If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). In Gordon, the prior art reference taught a gas strainer where both the inlet and outlet for the water to be strained were located at the bottom end and a gas vent was located at the top end. Id. The proposed modification would have turned the assembly upside down, putting the gas vent on the bottom end of the assembly. Id. The court held that the proposed modification would render the prior art device inoperable for its intended purpose because, if the device were turned upside down, gas to be filtered would be trapped at the top and the water sought to be separated would flow out of the outlet instead of Appeal 2020-005349 Application 15/043,874 7 purified gas. Id. The court held that the prior art reference therefore taught away from the proposed modification. Id. In this case, Appellant has not persuasively argued that modifying Krishnaswamy in view of Noris and Nyman would render Krishnaswamy unable to simulate real-world painting. To the contrary, the proposed modification would add features that the Examiner finds would further this goal. See Ans. 91. Appellant has not disputed this finding. See Reply Br. 3- 8. Notably, these additional features would not replace existing features or render any existing functionality inoperable. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (holding that modifying a primary reference to achieve different benefits than sought by the primary reference does not teach away where nothing in the prior art suggested that the modification would have resulted in an inoperable process and the claims at issue did not require the benefit that is arguably lost in the combination). For these reasons, we sustain the Examiner’s obviousness rejection of claim 1. We also sustain the Examiner’s obviousness rejection of independent claims 9 and 15, which Appellant argues are patentable for the same reasons. See Appeal Br. 21-25. We also sustain the Examiner’s obviousness rejections of dependent claims 2 and 5, which Appellant argues are patentable for the same reasons. See id. at 17. Claims 3, 4, 6-8, 11, 13, 14, 16-18, and 20-23 stand rejected under 35 U.S.C. § 103 as unpatentable over Krishnaswamy, Noris, Nyman, and one or more of several other references. See Final Act. 12-68. Appellant argues these claims are patentable for the same reasons as claim 1. See Appeal Br. 17-26. Accordingly, we sustain the Examiner’s obviousness Appeal 2020-005349 Application 15/043,874 8 rejections of dependent claims 3, 4, 6-8, 11, 13, 14, 16-18, and 20-23 for the same reasons discussed above. Appeal 2020-005349 Application 15/043,874 9 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5 103 Krishnaswamy, Noris, Nyman 1, 2, 5 3 103 Krishnaswamy, Noris, Nyman, DiVerdi 3 4 103 Krishnaswamy, Noris, Nyman, Kwon 4 6 103 Krishnaswamy, Noris, Nyman, Zou 6 7 103 Krishnaswamy, Noris, Nyman, Zou, Banerjee 7 8 103 Krishnaswamy, Noris, Nyman, Banerjee, Zou 8 9, 11, 13- 16, 21-23 103 Krishnaswamy, Noris, Banerjee, Nyman 9, 11, 13- 16, 21-23 17 103 Krishnaswamy, Noris, Banerjee, Nyman, Kwon 17 18 103 Krishnaswamy, Noris, Banerjee, Nyman, Zou 18 20 103 Krishnaswamy, Noris, Banerjee, Nyman, Zou 20 Overall Outcome 1-9, 11, 13-18, 20- 23 Appeal 2020-005349 Application 15/043,874 10 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) (2013). See 37 C.F.R. § 41.50(f) (2019). AFFIRMED