UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/181,296
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`11/05/2018
`
`Ryan S. Dixon
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`122202-6225
`(P29273USC1)
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`7388
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`Morgan, Lew1s & Boeklus LLP (Apple)
`600 Anton Boulevard
`Suite 1800
`Costa Mesa CA 92626
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`POLO” GUSTAVO D
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`2694
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`PAPERNUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`05/14/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`OCIPDoeketing @ morg anlewis . com
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`PTOL-90A (Rev. 04/07)
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`

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`0,7709 A0170” Summary
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`Application No.
`16/181 ,296
`Examiner
`GUSTAVO POLO
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`Applicant(s)
`Dixon, Ryan 8.
`Art Unit
`2694
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 01/29/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`21—40 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`Claim(s) M is/are allowed.
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`Claim(s) 21—22 and 31 is/are rejected.
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`Claim(s) fl is/are objected to.
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`) ) ) )
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`are subject to restriction and/or election requirement
`E] Claim(s)
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.”smong/patents/init_events/pph/index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
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`Application Papers
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`10)D The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 11/05/2018 is/are: a). accepted or b)[:] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)l:] Some”
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`c)l:I None of the:
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`1.8 Certified copies of the priority documents have been received.
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`2.8 Certified copies of the priority documents have been received in Application No.
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`3.|:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190509
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`

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`Application/Control Number: 16/181,296
`Art Unit: 2694
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale
`or otherwise available to the public before the effective filing date of the claimed invention.
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`Claim(s) 21 and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kienzle et al.
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`Pub. No. US 2015/0169975 A1 [Kienzle].
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`21. Kienzle discloses detecting a touch input [Fig. 1] from both outside [where 170, 180 & 190
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`are located] and inside of a constrained writing region of a touch-sensitive space of a device [where 120
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`is shown on portion of 110]; and generating an input character based on a character recognition of the
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`touch input from both outside and inside of the constrained writing region [where the input is text or
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`drawing as taught in 1] 33 shown in FIG. 1, the user interface of the Stroke Untangler includes buttons
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`(170, 180 and 190) or the like for toggling between text and drawing modes, for instance].
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`22. Kienzle discloses providing multiple touch-sensitive affordances on the touch-sensitive
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`space of the device [Fig. 1, 110], the touch-sensitive affordances comprising the constrained writing
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`region [where it is constrained by the non-touch boundary of 100].
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`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
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`

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`Application/Control Number: 16/181,296
`Art Unit: 2694
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`Page 3
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`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.
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`Claim 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kienzle.
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`The examiner takes official notice that it is notoriously old and well known in the art to correct a
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`lower case and upper case typo as required by this claim. Therefore it would have been obvious to one
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`of ordinary skill in the art before the effective filing date of the claimed invention to modify Kienzle as
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`required by this claim, since such a modification improves the functionality of the device.
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`Allowable Subject Matter
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`Claims 23-30 are objected to as being dependent upon a rejected base claim, but would be
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`allowable if rewritten in independent form including all of the limitations of the base claim and any
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`intervening claims.
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`Claims 32-40 are allowed.
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`The following is a statement of reasons for the indication of allowable subject matter: as per
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`claim 32 Borley et al. Pub. No. US 2016/0155251 A1 [Borley] teaches receive a plurality of touch-input
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`strokes on a touch-sensitive space of the device [Fig. 3]; generate a graph having a plurality of nodes and
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`a plurality of edges between the nodes, each node corresponding to a touch-down event or a touch-up
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`event of at least one of the plurality of touch-input strokes, each edge between a pair of nodes
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`representing one or more characters [310-370]. However Borley does not teach the other limitations
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`and those limitations in combination with the above-cited limitations makes this claim allowable over
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`prior art of record. Claim 39 is also indicated as allowable for the same reasons.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to GUSTAVO POLO whose telephone number is (571)270-7613. The examiner can
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`normally be reached on Mon-Fri 9am-5pm PT.
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`

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`Application/Control Number: 16/181,296
`Art Unit: 2694
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`Page 4
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Patrick Edouard can be reached on (571) 272-7603. The fax phone number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
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`CANADA) or 571-272-1000.
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`/Gustavo Polo/
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`Primary Examiner, Art Unit 2694
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`