Bo-Kun Choi et al.

Patent Trials and Appeals Board

Oct 29, 2019

14246367 - (D) (P.T.A.B. Oct. 29, 2019)

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.
14/246,367 04/07/2014 Bo-Kun CHOI 4500-1-283 3931
33942 7590 10/29/2019
Cha & Reiter, LLC
17 Arcadian Avenue
Suite 208
Paramus, NJ 07652
EXAMINER
MOTSINGER, SEAN T
ART UNIT PAPER NUMBER
2669
MAIL DATE DELIVERY MODE
10/29/2019 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 BO-KUN CHOI, HAN-JIB KIM, PIL-JOO YOON,
and SOO-JI HWANG1
________________

Appeal 2018-008319
Application 14/246,367
Technology Center 2600
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–4, 6–13, and 15–19. Appeal Br. 6. These
claims stand rejected under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter and also under § 103(a) as being unpatentable.
Final Action mailed November 1, 2017 (“Final Act.”) 4–19. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use the label “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Samsung Electronics
Co., Ltd. Appeal Brief filed February 27, 2018, as supplemented by the
Response To Notification of Non-Compliant Brief filed March 12, 2018
(“Appeal Br.”) 3.
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THE CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows: “A system
processes an image in an electronic device, by determining whether a text
character is included in an image and extracting the determined text
character from the image. The extracted text character is stored in
association with the image.” Abstract.

THE § 101 REJECTION
Independent claim 1 illustrates the subject matter of the appealed
claims. It is reproduced below with formatting modified for clarity and
emphasis added to indicate the claim language that recites an abstract idea:
1. A method of processing an image in an electronic device,
comprising:
[i] determining whether a text character is included in an
image;
[ii] extracting the text character from the image in response
to determining that the text character is included in the image;
and
[iii] storing the extracted text character in association with the
image,
[iv] wherein storing the extracted text character comprises
storing a first indicator flag indicating whether it has been
identified that the text character exists within the image and a
second indicator flag indicating whether the image currently
includes the text character in association with the image.2

2 We understand that the first flag indicates whether a text-detection
operation has been performed and that the second flag indicates whether the
image includes text. See Applicant-Initiated Interview Summary mailed
Sept. 1, 2016 (wherein the Examiner explains how the functionality of the
claimed first flag is being interpreted: “The amended claim includes an
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Grounds of Rejection
The Examiner determines that claim 1 is directed to the abstract idea
of data recognition and storage. Final Act. 5.3 The Examiner further
determines that “[the claims do] not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the only additional elements are a vague reference to performing the
method with an ‘electronic device.’” Id. According to the Examiner, the
reference to the “electronic device” “is just generic implementation on an
electronic device and is not significantly more” than an abstract idea. Id.
Principles of Law
A. SECTION 101:
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66

additional indicator used to indicate if the text detection has been
performed.”).
3 Appellant generally argues all of the claims together as a group in relation
to the § 101 rejection. See Appeal Br. 7–9 (wherein Appellant only argues
the subject matter of dependent claims 2 and 11 separately). To the extent
that the other claims are not argued separately, we select independent
claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
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(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
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abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019
Guidance, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
84 Fed. Reg. at 56.
Analysis
CLAIMS 1, 3, 4, 6–10, 12, 13, AND 15–19:
STEP 2A, PRONG 1:
The Examiner determines that claim 1 is directed to the abstract idea
of data recognition and storage. Final Act. 5. Under step 2A, prong 1, of the
2019 Guidance, we first look to whether the claim recites any judicial
exceptions, including certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human activities such as a
fundamental economic practice, or mental processes). 84 Fed. Reg. at 52–
55.
Limitation [i] of claim 1 recites “determining whether a text character
is included in an image.” This step of determining whether an image
includes a text character reasonably can be characterized as a mental process
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including observations, evaluations, judgments, and opinions. For example,
this step, as claimed, can be performed by having a human examine an
image (such as a physical photograph or image on paper) and determine
whether a text character is included in it. The 2019 Guidance expressly
recognizes mental processes as constituting a patent-ineligible abstract idea.
84 Fed. Reg. at 52. Accordingly, limitation [i] reasonably can be
characterized as reciting a patent-ineligible abstract idea.
Limitation [ii] recites “extracting the text character from the image in
response to determining that the text character is included in the image.”
Appellant’s Specification expressly defines “[t]he term ‘extract’ as used
herein in ‘extracting’ a determined text character, comprises replicating a
text character in an image for storage, for example.” Spec. 5:1–3.
Replicating (or copying) a text character also reasonably can be
characterized as a mental process—a concept that can be performed in the
human mind or with the help of paper and pencil. For example, this step, as
claimed, can be performed by having a human identify a text character in an
image and either remember that image in their mind or write it down on a
piece of paper. Accordingly, limitation [ii] reasonably can be characterized
as reciting a patent-ineligible abstract idea.
Limitations [iii] and [iv] recite
storing the extracted text character in association with the
image,
wherein storing the extracted text character comprises
storing a first indicator flag indicating whether it has been
identified that the text character exists within the image and a
second indicator flag indicating whether the image currently
includes the text character in association with the image.
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Storing copied data reasonably can be characterized as reciting mental
processes including observations, evaluations, judgments, and opinions.
Likewise, flagging, tabbing, or marking stored information reasonably can
be characterized as reciting mental processes that can be performed in the
mind or with the aid of pencil and paper. For example, a human can write
down the text character on a piece of paper, append that piece of paper to the
image (such as using a paper clip, staple, or adhesive), and place indicator
flags on the image (such as by using colored tape flags, highlighting, or
other indicators) that signify whether a text character exists within the image
and whether the text character is stored with the image. See 84 Fed. Reg.
at 52; see also Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding ineligible
claims “drawn to the abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data
in a memory” and stating, “[t]he concept of data collection, recognition, and
storage is undisputedly well-known. Indeed, humans have always performed
these functions.”). Accordingly, limitations [iii] and [iv] together reasonably
can be characterized as reciting a patent-ineligible abstract idea.
For these reasons, each of claim 1’s limitations [i]–[iv] reasonably can
be characterized as reciting patent-ineligible subject matter under step 2A,
prong 1, of the 2019 Guidance.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that integrate the judicial
exception into a practical application. 84 Fed. Reg. at 52–55.
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Appellant argues that its claims are directed to patent-eligible subject
matter because the claims do not involve merely “classifying and storing
images in an organized manner.” Appeal Br. 7–8. According to Appellant,
the present claims instead include limitations that precisely describe how to
append indicators to images. Id. at 8. Appellant points to the language of
claim 1 that recites “storing a first indicator flag indicating whether it has
been identified that the text character exists within the image.”4
We understand Appellant to be arguing essentially that providing a
flag that indicates whether text characters exist within an image constitutes
an improvement to the functioning of a computer or to the technological
field of data storage (MPEP § 2106.05(a)), and as such, claim 1 recites
additional elements beyond the above-noted abstract ideas—additional
elements that integrate the abstract idea into a practical application within
the meaning of the 2019 Guidance. 84 Fed. Reg. at 52–55.
This argument is unpersuasive. Contrary to Appellant’s assertion
(Appeal Br. 8) (underlining omitted), claim 1 does not “include[] limitations
that precisely describe how to append indicators to images.” Claim 1 merely
requires that two flags be included in the file, but the claim does not recite
how, precisely, the flags are appended to the file or where, precisely, the
flags are located within the file. As such, Appellant’s arguments are not
commensurate in scope with the language of claim 1.
Furthermore, the particular information that the two flags of claim 1
denote pertains to underlying abstract ideas—i.e., that a text-detection

4 Appellant also presents arguments relating to dependent claim 2. Appeal
Br. 8. However, the language of claim 2 does not limit the scope of claim 1.
We address claim 2 separately, below.
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operation has been carried out and that text characters have been identified.
Claim 1 does not recite limitations setting forth specific computer
technology for carrying out these limitations; rather, it simply states that
“indicator flags” are “stored.” Thus, these limitations do not improve the
technology of appending indicators to images, as Appellant contends. See
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(wherein our reviewing court explained, “[i]t has been clear since Alice that
a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract
idea is still an abstract idea.”) (emphasis omitted); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an
inventive concept in the non-abstract application realm.”).
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor has Appellant
persuasively demonstrated that claim 1 directed to a particular machine or
transformation (MPEP § 2106.05(b), (c)), or that claim 1 adds any other
meaningful limitations (MPEP § 2106.05(e)). Accordingly, Appellant has
not persuaded us that claim 1 integrates the recited abstract ideas into a
practical application within the meaning of the 2019 Guidance. 84 Fed.
Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitation beyond the judicial exception that is not
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“well-understood, routine, [and] conventional” in the field. 84 Fed. Reg.
at 56; MPEP § 2106.05(d).
Appellant does not dispute that the steps of storing data files or using
flags, per se, as recited in method claim 1, was well-understood, routine, and
conventional. Reply Brief filed Aug. 21, 2018 (“Reply Br.”) 7. Appellant
only argues that the Examiner has not established that “a processor,” “a
touch sensitive display,” and “a memory,” as recited in independent
claim 10, was well-understood, routine, and conventional. Id.5, 6
Appellant’s Specification, however, provides sufficient evidence that
processors, touch sensitive displays, and memories were all well-understood,
routine, and conventional computing devices:
As would be understood in the art, the computer, the processor,
microprocessor controller or the programmable hardware
include memory components, e.g., RAM, ROM, Flash, etc. that
may store or receive software or computer code that when
accessed and executed by the computer, processor or hardware
implement the processing methods described herein. In addition,
it would be recognized that when a general purpose computer
accesses code for implementing the processing shown herein, the
execution of the code transforms the general purpose computer
into a special purpose computer for executing the processing
shown herein.
Spec. 15:9–17.
The touchscreen 130 may use various display devices, such as an
LCD (liquid crystal display), an LED (Light Emitting Diode), an
LPD (light emitting polymer display), an OLED (Organic Light

5 Independent claim 10 is a device-claim analog to method claim 1.
6 Appellant additionally argues that the Examiner does not provide the
requisite evidence to establish that “a camera,” as recited in dependent
claims 2 and 11, was well-understood, routine, and conventional. We
address that argument separately below in relation to the analysis of claims 2
and 11.
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Emitting Diode), an AMOLED (Active Matrix Organic Light
Emitting Diode), or an FLED (Flexible LED). The touchscreen
130 is not limited to touchscreens using these display devices. In
addition, the touchscreen 130 may detect the start, movement,
stop or end of a contact on a touch sensitive surface by using
different touch detection (or sensing) methods such as capacitive
detection, resistive detection, infrared detection, and surface
acoustic wave (SAW) detection.
Spec. 9:12–20.
The memory 110 may comprise a plurality of memory devices
and the processor 120 may comprise a plurality of processors.
The memory 110 includes a data storage unit 111, an operating
system (OS) program 112, an application program 113, a graphic
user interface (GUI) program 114, an image management
program 115, and a character recognition program 116. . . . The
data storage unit 111 stores data generated during the
performance of a function corresponding to the program stored
in the memory 110 and may store an image received from a
server or another electronic device and an image captured
through a camera (not illustrated). In addition, the data storage
unit 111 may store EXchangeable Image File format (EXIF)
information respectively for stored images.
Spec. 5:12–24.
For these reasons, Appellant has not demonstrated that claim 1 recites
additional elements that amount to significantly more than the judicial
exception within the meaning of the 2019 Guidance. We instead agree with
the Examiner’s determination that the challenged elements were well-
understood, routine, and conventional. 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We,
likewise, sustain the § 101 rejection of independent claim 10, and also the
rejection of dependent claims 3, 4, 6–9, 12, 13, and 15–19, which Appellant
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does not argue separately in relation to the subject-matter-eligibility
rejection. Appeal Br. 9.
DEPENDENT CLAIMS 2 AND 11:
In order to further support Appellant’s assertion that the
invention recites significantly more than an abstract idea, Appellant also
points to the language of claim 2. Id. at 8. Claim 2 further recites “wherein
the first indicator flag and the second indicator flag are stored immediately
behind an end of image marker.” Appellant argues that this language further
describes how indicators are appended to images. We again understand
Appellant to be arguing that claim 2 recites additional elements beyond the
above-noted abstract ideas—additional elements that integrate the abstract
idea into a practical application within the meaning of the 2019 Guidance.
84 Fed. Reg. at 52–55.
Appellant does not set forth sufficient reasoning, though, for why
positioning a conventional indicator flag in this specific location would
constitute an improvement to the functioning of a computer or an
improvement to computer-file-storage technology. Id. at 8–9. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement [that] merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”).
Accordingly, Appellant has not demonstrated that positioning flags after an
image marker, specifically as claimed, either integrates the abstract idea into
a practical application or adds significantly more than well-understood,
routine, and conventional activity.
Appellant also argues that the Examiner has not established that “a
camera,” as recited in dependent claims 2 and 11, was well-understood,
routine, and conventional under step 2B of the Alice framework and
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2019 Guidance. Reply Br. 7. Appellant’s Specification explains, though,
that “[t]he data storage unit 111 stores data generated during the
performance of a function corresponding to the program stored in the
memory 110 and may store an image received from a server or another
electronic device and an image captured through a camera (not illustrated).”
Spec. 5:20–24; see also id. at 7:7–9 (“The image management program 115
includes a character recognition program 116 and program 115 may acquire
an image received from a server or another electronic device and an image
captured through a camera (not illustrated).”).
The Specification’s repeated omission of any details of the camera
from which the image is received reasonably indicates that any conventional
camera may be used to take and transmit a picture in a normal manner.
Accordingly, Appellant has not persuaded us that claim 2 or 11 recites
significantly more than an abstract idea under step 2B of the Alice
framework, as implemented by the 2019 Guidance.

THE § 103(a) REJECTION
Grounds of Rejection
Claims 1, 3, 7, 10, 12, 16, and 19 stand rejected under 35 U.S.C. § 103
as unpatentable over Mountain (US 2013/0182182 A1; published July 18,
2013), Hori (US 5,739,850; issued Apr. 14, 1998), and Yamashita
(US 2007/0188623 A1; published Aug. 16, 2007). Final Act. 9–13.
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Claims 9 and 18 stand rejected under 35 U.S.C. § 103 as unpatentable
over Mountain, Yamashita, Hori, and Meier (US 2002/0083079 A1;
published June 27, 2002). Final Act. 13–15.7
Claims 4 and 13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Mountain, Yamashita, Hori, and Wakebe (US 2012/0054052 A1;
published Mar. 1, 2012). Final Act. 15–16.
Claims 8 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable
over Mountain, Yamashita, Hori, and Yamada (US 2008/0079999 A1;
published Apr. 3, 2008). Final Act. 17–18.
Claims 6 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable
over Mountain, Yamashita, Hori, and Palmer (US 6,002,798; issued Dec. 14,
1999). Final Act. 18–19.
Rejection and Contentions
The Examiner finds that Mountain discloses a method of processing
an image that comprises determining whether a text character is included in
an image, extracting the text character from the image, and storing the
extracted text character in association with the image. Final Act. 9 (citing
Mountain ¶¶ 29, 63, 64). The Examiner finds that Mountain does not
disclose first or second indicator flags, as claimed. Id. at 9–10.
The Examiner finds that Yamashita teaches the use of a first flag
indicating that the image has been processed. Id. See also Applicant-
Initiated Interview Summary mailed Oct. 25, 2016, cited in Appeal Br. 11

7 The heading of this rejection states that claims 9 and 18 are rejected as
anticipated by these four references. Final Act. 13. However, the body of
the rejection renders it reasonably clear that the heading’s characterization
includes a clerical error and that the claims, in fact, are rejected as obvious
over the cited references.
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(wherein the Examiner further clarifies in relation to the rejection of claim 1
that “Yamashita discloses [a first flag, as claimed] in paragraph 1444[,]
describing a[n] indicator flag is used to indicate[] that the image has been
processed.”). The Examiner concludes that motivation existed to combine
this feature of Yamashita with the teachings of Mountain. Final Act. 10.
The Examiner finds that Hori teaches the second flag, as claimed. Id.
(citing Hori, col. 9, ll. 10–15). The Examiner further determines that
motivation existed to combine Hori’s flag into the disclosure of Mountain.
Id.
Appellant argues, inter alia, that Hori does not teach a flag that
indicates whether an image currently includes extracted text characters, as
claimed. Appeal Br. 13–14. According to Appellant, the cited passage of
Hori, instead, merely teaches indicating whether the character pickup mode
was activated during image capture. Id. at 13 (citing Hori, col. 9, ll. 10–17).
Appellant contends that “so long as character mode is activated during [the]
pressing of button 17, the file will include the same flag values, regardless of
whether the picture includes characters or not.” Id. at 14.
Analysis
Appellant’s arguments are persuasive. Claim 1 requires a second flag
that indicates whether the image includes an extracted text character. But
the relied upon portion of Hori only teaches that the files include flags for
indicating the presence of the character mode. Hori, col. 9, ll. 10–12 (“files
are stored under distinguishable file names and flags indicative of the
existence of the character mode in the files are inserted in the file”).
Accordingly, the Examiner has not established that the cited combination of
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Mountain, Yamashita, and Hori teaches all of the elements, as recited in
claim 1.
We therefore do not sustain the obviousness rejection of claim 1, of
independent claim 10, which recites similar language, or of claims 3, 7, 12,
16, and 19, which depend from claims 1 and 10.
With respect to the remaining rejections of dependent claims 4, 6, 8,
9, 13, 15, 17, and 18, the Examiner does not rely on the additionally cited
references of Wakebe, Meier, Yamada, and Palmer to cure the deficiency
noted above in relation to the rejection of independent claims 1 and 10.
Final Act. 13–19. Accordingly, we, likewise, do not sustain the obviousness
rejections of these claims for the reasons set forth above in relation to
independent claims 1 and 10.

CONCLUSIONS8

8 Upon any further prosecution on the merits, the Examiner should consider
whether the metes and bounds of claim protection being sought are
reasonably ascertainable within the meaning of 35 U.S.C. §§ 112(a) (or pre-
AIA §112, ¶ 1) and/or 112(b) (or pre-AIA §112, ¶ 2).
For example, claim 1 recites that “storing the extracted text character
comprises storing . . . a second indicator flag indicating whether the image
currently includes the text character in association with the image”
(emphasis added). In contrast, Appellant’s Specification discloses
“storing an indicator flag indicating that the text character is included in the
image or a specific region of the image in association with the image.”
Spec. 3:8–10 (emphasis added). That is, Appellant’s Specification appears
to indicate that the language “in association with the image” modifies “a
specific region of the image.” As such, the Examiner should consider
whether it is reasonably clear if claim 1 intends to recite a step of
determining whether a text character is included anywhere within an entire
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In summary:

image (in which case, (1) the claim language “in association with the image”
appears to be redundant and (2) the Examiner should further consider
whether the determining step is adequately supported by the originally filed
Specification) or whether claim 1 intends to limit that determining step to a
specific region of the entire image (which is not claimed).
Furthermore, claim 1 recites that “storing the extracted text character
comprises storing a first indicator flag whether it has been identified that the
text character exists within the image and a second indicator flag indicating
whether the image currently includes the text character in association with
the image” (emphasis added). Appellant’s Specification alternatively
discloses “when the character included in the image is extracted by the
character recognition program 116, program 115 may store the extracted
character information and the indicator flag indicating that the extracted
character is stored along with the corresponding image along with the
corresponding image.” Spec. 8:1–5 (emphasis added). As such, the
Examiner should consider whether it is reasonably clear why claim 1 recites
the term “whether” instead of “that” because “whether” additionally implies
that the flag could indicate that no text is included or extracted. But claim 1
additionally recites a precursive step of “extracting the text character from
the image in response to determining that the text character is included in the
image.”
And finally, the Examiner should consider whether it is reasonably
clear why claim 1 recites “a second indicator flag indicating whether the
image currently includes the text character.” The term “currently” connotes
the possibility that a character’s presence in an image may change over time,
but Appellant does not point to support in the Specification for the
processing of such dynamic images. See Appeal Br. 4 (wherein Appellant
only cites to Figure 4, elements 403 and 405 as providing support for the
first and second flags).
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 6–13, 15–
19
101 Eligibility 1–4, 6–13,
15–19

1, 3, 7, 10, 12, 103 Mountain, 1, 3, 7, 10,
Appeal 2018-008319
Application 14/246,367

19

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

16, 19 Yamashita,
Hori
12, 16, 19
4, 13 103 Mountain,
Yamashita,
Hori, Wakebe
4, 13
9, 18 103 Mountain,
Yamashita,
Hori, Meier
9, 18
8, 17 103 Mountain,
Yamashita,
Hori, Yamada
8, 17
6, 15 103 Mountain,
Yamashita,
Hori, Palmer
6, 15

Overall
Outcome
1–4, 6–13,
15–19