Eftekhari, Amir et al.

Patent Trials and Appeals Board

Apr 23, 2020

13195298 - (D) (P.T.A.B. Apr. 23, 2020)

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.
13/195,298 08/01/2011 Amir Eftekhari INTU-115839 1680
138886 7590 04/23/2020
Patterson + Sheridan, LLP - Intuit Inc.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
NGUYEN, MAIKHANH
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
Pair_Eofficeaction@pattersonsheridan.com
psdocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIR EFTEKHARI and ALAN TIFFORD

Appeal 2018-008930
Application 13/195,298
Technology Center 2100

Before JOHN P. PINKERTON, NABEEL U. KHAN, and
JOYCE CRAIG, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–10, 12, 13, 16, 22, 26, 32, and
33. An oral hearing was held on April 14, 2020. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

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 Intuit Inc. Appeal
Br. 3.

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CLAIMED SUBJECT MATTER
Appellant describes the invention as follows:
In a collection technique, a user (such as a taxpayer) provides
information (such as income-tax information) by submitting an
image of a document, such as an income-tax summary or form.
In particular, the user may provide a description of the document.
In response, the user is prompted for the information associated
with the field in the document. Then, the user provides the image
of a region in the document that includes the field. Based on the
image, the information is extracted, and the field in the form is
populated using the extracted information. The prompting,
receiving, extracting and populating operations may be repeated
for one or more additional fields in the document.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for populating a field in a form performed by a
computer, comprising:
receiving a fillable form based on a description of a
physical document, wherein the physical document comprises a
set of fields, and wherein the fillable form comprises a fillable
field for each field in the set of fields;
sending a template of the set of fields to be displayed to a
user on a portable electronic device that is remotely located from
the computer;
sending a unique prompt, for each field in the set of fields,
to be displayed to the user at the portable electronic device,
wherein each unique prompt displayed to the user requests the
user to capture an image, based on the displayed template, of a
region of the physical document that includes the field and data
that appears in the field corresponding to that unique prompt;
receiving, for each of the one or more fields, the image of
the region of the physical document that includes the field and
data that appears in the field;
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extracting, for each received image, the data that appears
in the field from the image of the region; and
populating the extracted data into the fillable field in the
fillable form that corresponds to the field from the image of the
region of the physical document.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Munte US 6,991,158 B2 Jan. 31, 2006
Wyle US 2006/0155618 A1 July 13, 2006
Borgaonkar US 2009/0183064 A1 July 16, 2009
Ye US 2011/0197119 A1 Aug. 11, 2011
Ballard US 8,024,269 B1 Sept. 20, 2011

Linda McCauley, “Android App – CamScanner,” March 6, 2011
(hereinafter, “McCauley”) available at:
http://lfmccauley.blogspot.com/2011/03/android-app-camscanner.html
REJECTIONS2
1. Claims 1–3, 5, 9, 12, 13, 22, 26, 32, and 33 stand rejected under
35 U.S.C. § 103 as unpatentable over Borgaonkar, Ballard, McCauley, and
Ye. Final Act. 2–11.
2. Claims 6, 7, 10, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Borgaonkar, Ballard, McCauley, Ye, and Wyle. Final
Act. 11–16.

2 In the event of further prosecution, we leave it to the Examiner to
determine whether the claims are directed to a judicial exception to
patentable subject matter, without significantly more, under 35 U.S.C. § 101.
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3 Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable
over Borgaonkar, Ballard, McCauley, Ye, and Munte. Final Act. 16–17.
OPINION
REJECTIONS UNDER 35 U.S.C. § 103
Claim 1 recites “sending a unique prompt, for each field in the set of
fields, to be displayed to the user at the portable electronic device, wherein
each unique prompt displayed to the user requests the user to capture an
image, based on the displayed template, of a region of the physical
document that includes the field and data that appears in the field
corresponding to that unique prompt.” The Examiner finds that Borgaonkar
and Ye teach this limitation. Ans. 26. Specifically, the Examiner finds
Borgaonkar discloses that
[t]he electronic image of the part of the paper form 36 under the
PDA 10 is displayed on screen 12 (step 54) using the identified
form and the position data. This is illustrated in FIG. 5. Thus,
referring to this Figure, the words ‘Sex’ and ‘Nationality’ are
displayed on the screen 12 over the corresponding words on
paper form 36. Thus, the screen simply displays the content
under the PDA 10.
Ans. 26 (citing Borgaonkar ¶ 28). The Examiner finds Borgaonkar teaches a
“PDA used to capture form areas” and that “[s]ince the associated form
fields are displayed for data entry, they are a prompt or request for the
respective data fields.” Ans. 26. Ye discloses “[i]n the event a derived
association is selected, the mapping engine is configured to prompt for
information that is needed for deriving a value to be filled into one or more
field(s) of the form, based on corresponding information in the object
model.” Ye ¶ 58. The Examiner finds that the Ye’s aforementioned
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disclosure, in combination with Borgaonkar’s disclosure, teaches the
disputed claim limitation.
Appellant argues Borgaonkar does not teach the disputed limitation
“because unlike the claimed subject matter where a unique prompt . . .
‘requests the user to capture an image, based on the displayed template’ . . .
in Borgaonkar, data is entered under the control of the user moving the PDA
at their discretion over the paper form.” Reply Br. 7. With regard to Ye,
Appellant argues the prompt in Ye is conditional and provided “‘in the event
a derived association is selected’ which is distinct from the claimed subject
matter where the ‘unique prompt’ is ‘for each field in the set of fields.’”
Reply Br. 7–8.
We are persuaded by Appellant’s arguments. We agree with
Appellant that Borgaonkar’s disclosure of displaying the image of the field
currently under the PDA does not teach a “unique prompt . . . wherein each
unique prompt displayed to the user requests the user to capture an image
. . . of a region of the physical document.” In particular, we agree that in
Borgaonkar the data is entered under the control of the user moving the PDA
at their discretion. Borgaonkar teaches that “the user can easily enter data in
any order simply by moving the PDA over the correct region for the new
data. Thus, data presented by a data subject who presents the data not in the
order given on the form can more readily be entered.” Borgaonkar ¶ 33.
Borgaonkar, therefore, makes clear that the regions displayed on the user’s
PDA are not a request for that particular region to be captured.
Ye, which teaches a mapping engine that is “configured to prompt for
information that is needed for deriving a value to be filled into one or more
field(s) of the form, based on corresponding information in the object
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model” (Ye ¶ 58) does not cure Borgaonkar’s deficiency. Ye teaches that
the mapping engine will prompt for information for deriving a value to be
filled into one or more fields, in the event that the field has a derived
association. Ye ¶ 58. This information is used to construct an object model.
Ye ¶ 58. Ye does not teach that the prompt requests a user to capture an
image of a field.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 and independent claims 12 and 22, which were rejected
on the same basis. See Final Act. 9. For the same reasons, we do not sustain
the rejection of the pending dependent claims, which depend from one of
claims 1, 12, or 22.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 9,
12, 13, 22,
26, 32, 33
103 Borgaonkar,
Ballard,
McCauley, Ye
1–3, 5, 9,
12, 13, 22,
26, 32, 33
6, 7, 10, 16 103 Borgaonkar,
Ballard,
McCauley, Ye,
Wyle
6, 7, 10, 16
8 103 Borgaonkar,
Ballard,
McCauley, Ye,
Munte
8
Overall
Outcome
1–3, 5–10,
12, 13, 16,
22, 26, 32,
33

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REVERSED