DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed with respect to the 112(f) interpretation have been fully considered but they are not persuasive.
On page 8 of the response filed 17 June 2026, the applicant argues that the claimed “discriminator” does not invoke 112(f) because paragraph [0045] connotes sufficient structure. However, this is not how interpretation under 112(f) works. Simply disclosing structure in the specification does not mean that 112(f) is not invoked. Please read MPEP § 2181. Thus, the interpretation under 112(f) is maintained.
Applicant’s arguments with respect to the 103 rejections of claims 1-4, 6-14 and 16-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
The drawings were received on 17 June 2026. These drawings are acceptable.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“discriminator is configured to…” in claim 9 (Paragraph [0045] of the specification says the discriminator is a neural network.).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 2020/0302163) in view of Mikutel et al. (US 2018/0300301).
Regarding claim 1, Shi et al. disclose a computer (Figure 10), comprising:
a display (Figure 10, display 1016 and paragraphs [0075] and [0078].); and
a processor (Figure 10, processor 1014 and paragraphs [0075] and [0078].) configured to:
generate strokes according to an input made by an electronic pen on the display (Figure 8, step 802 and paragraph [0054].);
control the display to display the strokes in groups, wherein each group includes one or more strokes forming a unit (Figure 8, step 804 and paragraph [0055].);
obtain semantic attributes of the groups of strokes using a discriminator subjected to machine learning to infer a semantic attribute of each of the groups, wherein the semantic attribute of each group includes a value of the group, wherein the value represents semantic content of the group including at least one of a handwritten character string represented by the group or a name of a hand-drawn object represented by the group (Figure 8, steps 806-810 and paragraphs [0056]-[0057].); and
for each of the groups, acquire an output (Figure 8, step 812 and paragraph [0058].).
Shi et al. fail to teach, for each of the groups, acquire content corresponding to the semantic attribute of the group by searching content using at least the value of the semantic attribute, and display the content on the display.
Mikutel et al. disclose of acquiring content corresponding to the semantic attribute of a group by searching content using at least a value of the semantic attribute, and display the content on the display (Figure 4C, 426 to Figure 4D, and see paragraphs [0052]-[0053]. The inked words “composite volcano” 426 are written and selected, then an inked drawing data resource is searched based on the value of the semantic attribute [written words], and the content 440-1, 440-2, etc. is displayed).
Hence the prior art includes each element claimed although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of the actual combination of the elements in a single prior art reference. In combination Shi et al. performs the same function as it does separately of providing determining a user handwritten object as a character string [word] or a hand-drawn object, and Mikutel et al. performs the same function as it does separately of searching a content database based on a handwritten character string [word(s)] and displaying content.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention could have combined the elements as claimed by known methods, and that in combination, each element merely performed the same function as it does separately. The results of the combination would have been predictable and resulted in determining a user handwritten object as a character string [word] or a hand-drawn object and also of searching a content database based on a handwritten character string [word(s)] and displaying content.
Therefore, the claimed subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 2, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the processor is configured to analyze the strokes to form the groups based on at least one of an order of the strokes; positions of the strokes; shapes of the strokes; or a pen pressure of the electronic pen (Shi et al.: Figure 2 at 208 and Figure 3, and paragraph [0026], word detection is performed, as explained, to determine position 304, thus the analysis is “based on” positions of the strokes.).
Regarding claim 3, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the semantic attribute includes a type of the group (As explained above, the semantic attribute is either a word [text] or a drawing, which are types of a group.).
Regarding claim 4, Shi et al. and Mikutel et al. disclose the computer according to claim 3, wherein the type is at least one of a text, a drawing, a mathematical equation, a chemical formula, a list, or a table (As explained above, the type is a text or drawing.).
Regarding claim 6, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the value represents a handwritten character (Shi et al.: Figure 8, steps 806-810 and paragraphs [0056].).
Regarding claim 7, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the processor is configured to obtain the semantic attributes which are output from a digital ink server that analyzes the groups of strokes using the discriminator subjected to machine learning (Shi et al.: Figure 2 at 208 and Figures 3-4, and paragraph [0026]-[0028]).
Regarding claim 8, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the discriminator is a neural network (Shi et al.: Figure 4.).
Regarding claim 9, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the discriminator is configured to receive input of feature amounts of the strokes and to output labels of semantic attributes (Shi et al.: Figures 3-4 and paragraph [0028].), wherein the feature amounts include at least one of coordinates of starting points of the strokes, coordinates of intermediate points of the strokes, coordinates of ending points of the strokes, or curvatures of the strokes (Shi et al.: Paragraph [0057], lines and shapes are “curvatures of the strokes.”).
Regarding claim 10, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the processor is configured to acquire the content corresponding to the semantic attribute by searching in a content server that stores multiple pieces of content (Mikutel et al.: See the explanation in claim 1, and Figure 4C, 426 to Figure 4D, and see paragraphs [0052]-[0053].).
Regarding claim 11, Shi et al. and Mikutel et al. disclose the computer according to claim 1, wherein the semantic attributes are stored in association with the groups in a digital ink data structure (Mikutel et al.: Figure 1, 112 is an inked drawing data resource, and paragraph [0026].).
Regarding claim 12, this claim is rejected under the same rationale as claim 1.
Regarding claim 13, this claim is rejected under the same rationale as claim 3.
Regarding claim 14, this claim is rejected under the same rationale as claim 4.
Regarding claim 16, this claim is rejected under the same rationale as claim 6.
Regarding claim 17, this claim is rejected under the same rationale as claim 7.
Regarding claim 18, this claim is rejected under the same rationale as claim 8.
Regarding claim 19, this claim is rejected under the same rationale as claim 10.
Regarding claim 20, this claim is rejected under the same rationale as claim 11.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN G SHERMAN whose telephone number is (571)272-2941. The examiner can normally be reached Monday - Friday, 8:00am - 4pm ET.
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/STEPHEN G SHERMAN/Primary Examiner, Art Unit 2621
14 July 2026
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