Ex Parte 6996561 et al

Board of Patent Appeals and Interferences

Jun 7, 2011

95001060 (B.P.A.I. Jun. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

TALEO CORPORATION
Respondent, Cross-Appellant
v.

KENEXA BRASSRING, INC.
Patent Owner, Appellant
____

Appeal 2011-003761
Inter partes Reexamination Control No. 95/001,060
United States Patent 6,996,561 B2
Technology Center 3900
____________

Before SALLY C. MEDLEY, ALLEN R. MacDONALD, and STEPHEN C.
SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-003761
Reexamination Control 95/001,060
Patent 6,996,561 B2

Appellant, patent owner Kenexa BrassRing, Inc., appeals under 35
U.S.C. §§ 134(b) and 306 from a Right of Appeal Notice rejecting claims 1,
4-6, 15-21, and 24-34 (App. Br. 7-8).1 We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.

STATEMENT OF THE CASE
This proceeding arose from a request by Taleo Corporation for an
inter partes reexamination of U. S. Patent 6,996,561 B2, titled “System and
Method for Interactively Entering Data into a Database,” and issued to
David S. de Hilster, Alan G. Porter, and John Reese (February 7, 2006). An
oral hearing of this appeal transpired before the BPAI on April 6, 2011.
The ‘561 patent describes transferring information from a source data
stream to a database. Claim 1 on appeal reads as follows:
1. A method for facilitating the accurate transfer of information to a
structured database, said method comprising the steps of:
receiving digital data from one or more users representing one or
more nonuniformly formatted source data streams, each said source data
stream containing digital data corresponding to one or more discernible
source data strings, wherein said digital data includes first digital data that is
personal information about a first user;
extracting selected ones of said source data strings from said source
data streams and generating related target data strings;

1 This opinion employs the following abbreviations: Examiner’s Answer
(“Ans.”), Examiner’s Right of Appeal Notice (mailed Jan. 15, 2010)
(“RAN”), Examiner’s Action Closing Prosecution (mailed June 4, 2009)
(“ACP”), Appellant’s Appeal Brief (“App. Br.”), Appellant’s Respondent
Brief (“App. Resp. Br.), Appellant’s Rebuttal Brief (“App. Reb. Brief”),
Respondent’s Appeal Brief (“Resp. App. Br.), Respondent’s Respondent
Brief (“Resp. Resp. Br.”), and Respondent’s Rebuttal Brief (“Resp. Reb.
Br.”)
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sending a structured form to said first user comprised of multiple
fields, each field being capable of accommodating a data string and wherein
any said generated target data strings are inserted;
enabling said first user to modify and/or accept said target data strings
inserted within said structured form;
receiving digital data from said first user corresponding to said target
data strings from said structured form fields; and
storing said digital data corresponding to said target data strings from
said structured form fields in said database.

The Examiner relied upon the following prior art references:

Lech U.S. Patent 5,258,855 Nov. 2, 1993
Johnson U.S. Patent 5,664,109 Sept. 2, 1997
Onda U.S. Patent 5,860,067 Jan. 12, 1999
Horvitz U.S. Patent 5,864,848 Jan. 26, 1999

Samuel Greengard, “HR’s ‘Great Enabler’,” Industry Week, p. 63
(September 15, 1997).

Claims 1, 4-6, and 29-34 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Horvitz and under 35 U.S.C. § 103(a) as being
unpatentable over Lech.
Claims 15-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Johnson.
Claims 21 and 24-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lech and Greengard.
Claims 2-3, 7-14, 22, 23, 35, and 36 stand confirmed as being
patentable over each of Horvitz, Lech, and Johnson.

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ISSUES
Based on arguments presented in Briefs, we identify the following
issues:
1) Did the Examiner err in finding that claims 1, 4-6, and 29-34
are anticipated by Horvitz?
2) Did the Examiner err in finding that claims 15-20 are
unpatentable over Johnson and Onda?
3) Did the Examiner err in finding that claims 21 and 24-38 are
unpatentable over Lech and Greengard?

ANALYSIS
Claims 1, 5, 6, and 29-34 – Horvitz
Appellant argues that Horvitz fails to disclose “nonuniformly
formatted source data streams” because such data streams, according to
Appellant, “would be limited to a collection of unstructured information,
such as free text” (App. Br. 9). We disagree with Appellant for at least the
reasons set forth by Respondent (Resp. Resp. Br. 4).
While Horvitz discloses an e-mail message that “includes a structured
area and an unstructured area” (col. 3, ll. 4-6), the “structured area”
including “fields for ‘to,’ ‘from,’ ‘cc,’ ‘subject,’ and ‘date’” (col. 3, l. 9) and
the “unstructured area” including “free-text information written in prose”
(col. 3, l. 11), Appellant has not cited sufficient evidence that Horvitz
discloses that all of the information in the “structured” or “unstructured”
areas are not “nonuniformly formatted” (i.e., are uniformly formatted).
Appellant argues that because the “structured area” of the e-mail of
Horvitz “is comprised of fields containing specific pre-defined information”
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(App. Br. 9), the “structured area” of Horvitz “cannot provide a
‘nonuniformly formatted source data stream,’ as claimed in the ‘561 patent”
(App. Br. 9-10). We disagree since the information provided in the
structured fields of Horvitz is not disclosed by Horvitz to be provided in a
uniform format. Rather, as Respondent/Cross-Appellant points out, any data
in a structured section of an e-mail may be presented in a variety of formats,
such as a recipient’s name being presented in various forms (Resp. Resp. Br.
4).
Appellant also argues that “the free text area of the email application
window of Horvitz also could not meet the requirements of the
‘nonuniformly formatted source data stream’ . . . because the free text area
of Horvitz’s email application window does not contain ‘personal
information’” (App. Br. 10). However, “personal information,” under a
broad but reasonable interpretation, includes any data that relates to or is
intended for a particular person (i.e., of a “personal” nature). Since the “free
text area” of Horvitz contains information that is relevant and specific for
the recipient of the e-mail such as “schedule-related information . . .
pertaining to a meeting that the user would like to attend” (col. 8, ll. 4-6) and
is related, for example, specifically to the user as an attendee of the meeting,
we agree with the Examiner and Respondent that such information
constitutes “personal information.”
In any event, even assuming that Horvitz fails to disclose data that is
“personal information,” as Appellant asserts, we also agree with Respondent
that the “personal information” constitutes non-functional descriptive
material (Resp. App. Br. 13) and that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
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anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
Claim 1 recites receiving digital data that represents personal
information, sending a form, receiving data, and storing digital data – none
of which has been demonstrated to be affected by the specific content of the
“personal information.” As Respondent points out, the “function [of the
claimed invention is] the same regardless of whether the data to be
processed is personal information or any other type of information” (Resp.
App. Br. 14). Given the lack of a functional relationship between the system
and the claimed “personal information,” the personal information constitutes
non-functional descriptive material that is not entitled to weight in the
patentability analysis.
Appellant also argues that Horvitz fails to disclose extracting selected
data strings from data streams (App. Br. 10) because Horvitz supposedly
fails to disclose extracting information from the “TO” field of the e-mail
(id.). However, as Respondent points out, Horvitz discloses a program that
“extracts schedule-related information” from both the structured area and
free-text area (Fig. 6A; col. 17, 14-15; Resp. Resp. Br. 5). Since Horvitz
discloses extracting data from the “structured area” and the “structured area”
includes the “TO” field of the e-mail, we agree that Horvitz discloses
extracting data from the “TO” field.
We also disagree with Appellant’s argument that in Horvitz, “Figure 6
explicitly shows that information in the “TO” field is not extracted” (App.
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Reb. Br. 5) because, as Respondent points out, not only is this information
“extracted” from the e-mail as described above (Fig. 6A) but also this
information is then included in a target field of the autoscheduler window
(Fig. 6B).
In addition, we note that claim 1 does not require extracting
information from a “TO” field of an e-mail or extracting personal
information as Appellant implies. Rather, claim 1 merely requires extracting
selected data strings from data streams without requiring that the “data
strings” are “personal information.” Instead, “first digital data” (and not
“data strings”) is recited as being “personal information.”
Appellant does not provide additional arguments in support of
independent claim 29 or dependent claims 5, 6, and 30-34.

Claim 4 – Horvitz
Appellant argues that Horvitz fails to disclose the features recited in
claim 4 (App. Br. 13-14). Claim 4 recites enabling a user “to copy selected
portions of said source data stream into selected fields of said structured
form.”
As the Examiner points out, Horvitz discloses a “user’s goal – to
extract a particular type of data from one or more source objects and store
the extracted data in one or more target objects” (col. 9, ll. 43-44) in which a
“user gesture” (col. 9, l. 58) includes a “‘drag and drop’ gesture” (col. 9, l.
60). Thus, Horvitz discloses a user “dragging” data from a source object to
extract the data from the source object and “dropping” the extracted data
into a target object to store the data in the target object. We find no
difference between this disclosure of Horvitz and the feature recited in claim
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4 of copying data from a source data stream (i.e., “source object”) into fields
of a structured form (i.e., a “target object”). Nor has Appellant indicated any
specific differences.
Appellant also argues that “[t]he Examiner did not describe how any
alleged ‘structure form’ of Horvitz additionally comprises the claimed
‘source data stream’” (App. Br. 14). However, as pointed out by the
Examiner and described above, since Horvitz discloses a user dragging data
from a source data stream and dropping the data into a target object, the
target object (or “structured form”) includes the data from the source data
stream after the data is taken from the source data stream and “dropped” into
the target object or structured form. Appellant fails to provide sufficient
evidence of any significant difference between the target object of Horvitz
and the claimed “structured form.”

Claims 1, 5, 6, and 31-34 – Lech
Appellant argues that while Lech discloses “hard copy documents in a
diversity of formats,” Lech fails to disclose or suggest “information that is
‘nonuniformly formatted’” (App. Br. 15). We disagree with Appellant for at
least the reasons set forth by Respondent (Resp. Resp. Br. 6-7).
The data in Lech is received in the form of “hard copy documents”
that is explicitly disclosed as being in a “diversity of formats,” thus
indicating that the data received is formatted in a variety of ways. Appellant
has not provided a sufficient showing that received data in a diversity of
formats (Lech) is different in any way from received data that is
“nonuniformly formatted.” While Appellant argues that Lech discloses
extracting data in three modes (App. Br. 16) in which an operator may
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identify desired data in a document for extraction, Appellant does not
sufficiently demonstrate that the received data in any of the three modes of
Lech is anything other than “nonuniformly formatted.” This is particularly
true in view of Lech’s explicit disclosure of data in a diversity of formats.
Appellant also argues that Lech fails to disclose “personal
information” as recited in claim 1 and it would not have been obvious to one
of ordinary skill in the art to have incorporated “personal information” in the
Lech disclosure. However, as Respondent points out, Lech discloses a wide
variety of other forms of information, many of which would have been
construed by those of ordinary skill in the art to have included some form of
“personal information.” For example, Lech discloses information pertaining
to “letters, checks, forms, pictures, reports, accounts payable/receivable
accounting, inventory control, . . . survey and questionnaire processing,
statistical data analysis, . . .” (col. 15, lines 46-57; Resp. Resp. Br. 7). As
described above, “personal information” may include any data that is of a
personal nature, i.e., data that pertains to a specific entity. As an example, at
least letters, checks, or pictures include data that pertains to a specific person
or entity and constitutes “personal information.” Even assuming that such
letters, checks or pictures do not pertain to any entity or person, we agree
with the Examiner and Respondent that it would have been obvious to one of
ordinary skill in the art to have included such “personal information,” given
the wide and broadly inclusive list of different types of data disclosed by
Lech.
In addition, as set forth above and by Respondent (Respondent Br. 8),
“personal information” as recited in claim 1 constitutes non-functional
descriptive material and is not afforded patentable weight.
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Appellant further argues that “Lech requires the maintenance of
centralized control over hard copy documents” (App. Br. 17). We do not
find Appellant’s argument persuasive. First, we disagree that Lech’s system
requires “centralized control over hard copy documents” as Appellant
asserts. As set forth above, the received information in Lech includes a wide
range of information including, for example, letters, checks, forms, pictures,
reports, music scores, film, etc. Appellant has not provided a sufficient
showing that all of the different forms of information requires “centralized
control.” Second, even assuming Lech’s system requires “centralized
control,” Appellant has not sufficiently demonstrated that Lech differs from
claim 1. Notably, claim 1 does not recite “centralized control” (or lack
thereof) or any requirement that relates to centralized control.
Appellant provides the same arguments in support of claim 29 and
provides no additional arguments in support of claims 5, 6, and 31-34.

Claim 4 – Lech
Appellant argues that Lech fails to disclose or suggest enabling a user
to copy “‘selected portions’ of the ‘source data stream’ into ‘selected fields
of said structured form’” (App. Br. 20). However, as Respondent points out
(Resp. Resp. Br. 10), Lech discloses a user copying portions of a data stream
into selected fields of a structured form (see, e.g., col. 6, ll. 49-59; Fig. 3B),
which Appellant has failed to sufficiently demonstrate to be different from
the claimed feature of a user copying data from a data stream to a selected
field of a form.
Lech discloses both extracting information from a hard copy
document using “standard character recognition software” (col. 5, l. 66 – col.
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6, l. 7) in a first operational mode and also a user copying data into a
structured form, as recited in claim 4, in a second operational mode. We
find no difference between Lech and claim 4, nor does Appellant indicate
any significant differences.

Claim 30 – Lech
Appellant argues that Lech fails to disclose or suggest representing a
target data string in a structured form. As Respondent points out and as
described above, Lech discloses a user selecting data from a hard copy and
representing the selected data as a target data string in a structured form (col.
6, lines 53-63; Resp. Resp. Br. 11). We find no difference, and Appellant
has not adequately demonstrated any differences, between Lech and the
claimed feature of a target data string represented in a structured form.

Claim 6 – Lech
Appellant argues that Lech fails to disclose or suggest receiving a
supplemental data string in response to a supplemental inquiry form (App.
Br. 21). However, as Respondent points out, Lech discloses a system that
receives “the location of account number information” (col. 6, l. 24), then
receives from the user “the location of other information on the hard copy
document” (col. 6, ll. 40-41). Since Lech discloses receiving information,
then receiving “other” information and since “other” information is
“supplemental” to the initially received information, we agree with the
Examiner and Respondent that Lech discloses receiving supplemental data.

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Claims 21 and 24-38 – Lech and Greengard
Appellant argues that the combination of Lech and Greengard fails to
disclose or suggest resume information or receiving a resume from a job
applicant (App. Br. 22-24) because Greengard discloses an intranet, that
“[c]orporate intranets . . . are a . . . . way to transfer information within an
organization” (App. Br. 23), and that “there would be no reason to utilize a
corporate intranet to carry out the resume submission . . . method” (App. Br.
24).
However, assuming that an employee in a corporation is applying for
a different job with the corporation as proposed by Appellant, we agree with
Respondent that the employee in this circumstance would be submitting a
resume for the job being sought. This is because, at least, submitting a
resume is typically how one applies for a job. At the very least, as described
by Respondent, the employee would update a resume that was already on
file and was utilized by human resources.
Appellant argues that the combination of Lech and Greengard fails to
disclose or suggest a “structured form” as recited in claims 24-27 (App. Br.
24-25). We disagree with Appellant for at least the reasons set forth above
for claim 30 and for reasons set forth by Respondent (Resp. Resp. Br. 13-
14).

Claim 15 – Johnson and Onda
Appellant argues that the combination of Johnson and Onda fails to
disclose or suggest a user who is “enabled to edit data extracted from a
‘source data stream,’ wherein it is the ‘user’ who generated the ‘respective
source data stream’” (App. Br. 26). As Respondent indicates, Johnson
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discloses that “medical reports are sent by mail . . . and are scanned . . . to
create a file containing the optical image of the document” (col. 6, ll. 46-49)
and that a “human interpreter views the document and interacts with the . . .
process” (col. 8, ll. 24-25). Hence, Johnson discloses an interpreter (or
“user”) receiving a report and scanning the received report to generate an
image of the document (i.e., the “user” generates source data), then returning
target data strings to the “user” (i.e., the interpreter of Johnson) to engage in
an “interactive extraction process,” for example (col. 10, ll. 55-56).
In addition, Johnson discloses that after data is extracted from the
source data, “[i]f there are any significant differences . . . [between the
extracted data and corresponding stored data] they are reported . . . for
review by a person functioning in a quality assurance capacity who may then
update the patient’s current demographics” (col. 12, ll. 36-39). Hence,
Johnson discloses a “user” (i.e., “interpreter”) who generates source data
(from scanned medical reports) and the user receiving data extracted from
the source data in a structured form to review and update the data (i.e.,
“alter” the data in the fields as recited in claim 15). Appellant has not
provided a sufficient showing of any differences between Johnson and the
disputed claim features of a user generating source data and altering fields of
a structured form corresponding to the data stream from the user.
Appellant argues that the “interpreter” of Johnson “does not create the
source data” (App. Br. 27) but does not sufficiently demonstrate that
generating a scanned image file (i.e., “source data”) of the data by the
interpreter in Johnson differs from creating source data as recited in claim
15. Nor does Appellant sufficiently demonstrate that the “user” of Johnson
does not alter the corresponding structured data since Johnson discloses that
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the user “updates” the source data and updating data includes “altering” the
data (i.e., in order to bring the data up-to-date).

Claim 16 – Johnson and Onda
Appellant argues that the combination of Johnson and Onda fails to
disclose or suggest the Internet because Johnson discloses “client systems”
rather than the Internet (App. Br. 28-29). Respondent argues that Johnson
discloses data that is “electronically transmitted to a server computer . . .
from an off-site computer to a server computer” (Resp. Resp. Br. 16). We
agree with Respondent for at least the reasons set forth by Respondent (id.).
Since Johnson discloses transmitting data between computers at
different locations (one off-site), which at least suggests transmitting data
between computers in a network environment, we agree with Respondent
that it would at least have been obvious to one of ordinary skill in the art,
given the known process of transmitting data over a network from one
computer to another computer (Johnson) to utilize a network (such as the
Internet) to accomplish the data transmission since doing so would have
involved no more than the common sense combination of known features
(such as transmitting data and transmitting data between computers) and
would have resulted in the predictable result of transmitting data from one
computer to another.

Claim 17 – Johnson and Onda
Appellant argues that the combination of Johnson and Onda fails to
disclose or suggest a user that copies portions of a source data stream (App.
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Br. 29). We disagree with Appellant for at least the reasons set forth by
Respondent (Resp. Resp. Br. 17).
In addition, Johnson discloses extracting data from source data (e.g.,
“a new record is created for the document in database 216 and the fields of
the record populated with the corresponding values that were extracted from
the document” – col. 10, ll. 21-24). Johnson also discloses that the system
may “guide an operator . . . through the same steps as the batch extraction
process of FIG. 4” (col. 10, ll. 57-59). Since the “batch extraction process of
FIG. 4” includes extracting values and populating a document with the
extracted values (Fig. 4, elements 412, 416) which satisfies “copying” the
data and since the process is performed by the user (i.e., an “operator”), we
agree with the Examiner and Respondent that Johnson at least suggests a
user copying data from source data to fields in a structured form as recited in
claim 17.

Claim 18 – Johnson and Onda
Appellant argues that Johnson fails to disclose or suggest returning a
source data stream to the user who generated the source data stream. We
disagree with Appellant for at least the reasons set forth by Respondent
(Resp. Resp. Br. 30).
As the Examiner and Respondent indicate and as described above,
Johnson discloses source data that is generated by the user (i.e.,
“interpreter”) by scanning data to generate an image file and presenting the
source data to the “interpreter” (i.e., user) who “views the document” and
processes the data (see, e.g., col. 8, ll. 24-26). Since the source data
generated by the user is later viewed (and processed) by the user, we agree
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that the source data is returned to the user since the user would not be able to
view or process the data if the data is not returned to the user.

Claim 19 – Johnson and Onda
Appellant argues that Johnson fails to disclose or suggest target data
strings that “are essentially equivalent” to extracted source data strings (App.
Br. 30). We disagree with Appellant for at least the reasons set forth by
Respondent (Resp. Resp. Br. 17-18).
Johnson discloses receiving “data elements containing data values to
be extracted” (col. 8, l. 2-3), extracting data from the data elements or
document using a “batch extraction process” (col. 8, l. 33), and creating a
“new record . . . for the document . . . [with] the fields of the record
populated with the corresponding values that were extracted from the
document” (col. 10, ll. 21-24). We find no substantial difference between
Johnson’s extraction of data from source data and creating “target data
strings.” Also, since the data extracted from the source data is used to
populate the fields in the target document, we agree with the Examiner and
Respondent that the data in the target document is to the same as the
corresponding data in the source document (data) since the data is disclosed
in Johnson as being the same.

Claim 20 – Johnson and Onda
Appellant argues that the combination of Johnson and Onda fails to
disclose or suggest a supplemental inquiry form (App. Br. 31). Respondent
argues that Onda discloses a user interface that allows a user to update a
chart (Resp. Resp. Br. 18). Since the interface of Onda permits a user to
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update data and updating data includes providing “supplemental”
information (i.e., “updated” information), we agree with the Respondent that
Onda at least suggests a “form” (i.e., an interface) for “supplemental”
information (i.e., “updated” information). Appellant does not provide
sufficient arguments indicating a difference between Onda’s interface and
the claimed “supplemental inquiry form.”
Appellant also argues that the Examiner provides no reason “why
anything in Onda might be combined with Johnson” while Respondent
argues that one of ordinary skill in the art would have combined Onda and
Johnson “to provide a method of extracting medical records that allows the
extracted records to be easily viewable for modification and/or acceptance”
(Resp. Resp. Br. 18). Appellant does not provide an adequate showing of
any insufficiency of this rationale for one of ordinary skill in the art to have
combined the cited references.

New Grounds of Rejection
Claims 2, 3, 7-14, 35, and 36 – New Ground of Rejection - Horvitz
We reject claims 2, 3, 7-14, 35, and 36 under 35 U.S.C. § 102(e) as
being anticipated by Horvitz for reasons set forth at pages 10-11 and Exhibit
C of the Requester’s Request for Inter Partes Reexamination Under 37
C.F.R. § 1.913 filed June 30, 2008 and Respondent’s Appeal Brief dated
May 24, 2010 (Resp. App. Br. 27).
Horvitz discloses receiving a “source file . . . including untagged
information, such as free-text information” (col. 7, ll. 57-59), “extracting . . .
information from [the] source object . . . and storing the extracted
information in a target object” (col. 7, ll. 50-53). The target object is sent to
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the user via a “pop-up user window . . . utilized to query the user to provide
additional information” (col. 10, ll. 27-29) presented on a computer system
(Fig. 2) that includes a “network connection port 28 . . . to interconnect . . .
with other computers . . . via that network 9” (col. 7, ll. 1-3).
Regarding claims 2, 3, 35, and 36, the Examiner finds that the Horvitz
system would not “send the extracted . . . information to a remote interface”
(ACP 17) because a user would “immediately modify the extracted
information on the computer that received the email” (id.). Claims 8 and 9
also recite a “remote interface.”
However, Horvitz discloses that a user receives information in an
interface via an I/O Port (Fig. 1, element 22) that contains a network
connection (Fig. 1, element 28) that connects via a network (Fig. 1, element
9) to “other computers and peripheral devices” (col. 7, ll. 2-3). Even
assuming the Examiner’s implication to be true that the user in Horvitz
modifies data on a same computer that receives the data, Horvitz still
discloses that the data is accessed by the user via an interface (via an I/O
port) that provides access to a user via a network (e.g., Fig. 1, element 28
and 9) and separates (i.e., renders “remote”) a user from the computer from
which the user receives the information (i.e., separated by an I/O interface),
and hence discloses that access is “remote.”
Regarding claims 7-14, Appellant argues that claims 7-14 recite
“means” and “necessarily ties its claim scope to the “corresponding
structure, material, or acts described in the specification and equivalents
thereof’” (App. Resp. Br. 13) but does not specify any specific structure in
the Specification corresponding to the claimed “means.” We note that the
Specification illustrates a computer system (Fig. 4) and further discloses a
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general description of the operation of the computer system (see, e.g., col. 4,
l. 47 – col. 5, l. 9) and computer components therein. Appellant has not
indicated any specific structure disclosed in the Specification corresponding
to any specific component recited as a “means” in claims 7-14, nor do we
find any specific structural disclosure.
Since the Specification does not disclose any specific structure of the
components of the computer structure and merely illustrates each of the
components as geometric shapes in figures (see, e.g., Fig. 4 or Fig. 8), we
agree with the Respondent and Examiner that each of the recited “means” in
claims 7-14 corresponds to general computer component structures that may
be depicted as geometric shapes in an illustration. We also agree with
Respondent that Horvitz discloses these “structures” (see, e.g., Horvitz, Figs.
1, 2, 4, and 5) as geometric shapes in figures.

Claims 2, 3, 7-14, 22, 23, 35, and 36 – New Ground of Rejection - Lech
We reject claims 2, 3, 7-14, 35, and 36 under 35 U.S.C. § 103(a) as
being unpatentable over Lech and claims 22 and 23 under 35 U.S.C. §
103(a) as being unpatentable over Lech and Greengard for at least the
reasons set forth at pages 11 and 13 and Exhibit E of the Requester’s
Request for Inter Partes Reexamination Under 37 C.F.R. § 1.913 filed June
30, 2008.
Regarding claims 2, 3, 35, and 36, the Examiner finds that the Lech
system fails to disclose or suggest a “remote interface” as recited in claims
2, 3, 35, and 36 because the recited method is “practiced within the same
computer” (ACP 32). Claims 8, 9, 22, and 23, also recite a “remote
interface.”
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20
As described above, Lech discloses a system in which a document
containing data is received, portions of the data are extracted from the
document that includes interaction with a user, and stored in a memory or
transmitted (see, in general, Lech, cols. 5-6, for example). Lech also
discloses that the data is processed by a module that may “transmit to and
receive information from a remote external device” (col. 7, ll. 41-44). Given
Lech’s explicit disclosure of transmitting data to “remote” devices, we find
that it would at least have been obvious to one of ordinary skill in the art to
have utilized a remote interface to transmit data to or from such a remote
device since doing so would have involved no more than the common sense
application of a “remote interface” to utilize “remote devices” to achieve the
predictable result of transmitting data to remote devices via an interface
tailored for such an activity. Thus, even assuming the Examiner’s
implication to be correct that Lech performs actions on a “same computer,”
we cannot agree that Lech fails to at least suggest utilizing a remote interface
given that Lech transmits data to and from “remote” devices.
Regarding claims 7-14, the Examiner finds that Lech fails to disclose
or suggest a “means for ‘sending said structure form to said user’ . . . and the
means for ‘receiving digital data corresponding to said target data strings
from said structure fields’” (ACP 39) because, according to the Examiner,
the recited “means” “is presumed to be the remote interface” (id.). Even
assuming that the Examiner’s presumption is correct, we still do not agree
that Lech fails to at least suggest a remote interface for at least the reasons
set forth above.
Also, as described above regarding the disclosed corresponding
structures of the recited “means,” the instant Specification discloses each of
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21
the components of the system as general computer components performing
associated functions, the structure of such components being portrayed as
geometric shapes in corresponding figures. The Lech reference, like the
Horvitz reference as described above, discloses such computer components
with structures that are portrayed as geometric shapes in figures (see, e.g.,
Figs. 1 and 4-10). Therefore, we find Lech at least suggests claims 2, 3, 7-
14, 22, 23, 35, and 36.

CONCLUSION
Based on the evidence and arguments of record, we conclude that the
Examiner did not err in finding that claims 1, 4-6, and 29-34 are anticipated
by Horvitz; that claims 15-20 are unpatentable over Johnson and Onda; and
that claims 21 and 24-38 are unpatentable over Lech and Greengard.

DECISION
The Examiner’s decision to reject claims 1, 4-6, 15-21, and 24-34 is
affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b). 37 C.F.R. § 41.77(b) provides that “a new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
In the new grounds of rejection, we have rejected claims 2, 3, 7-14, 35, and
36 under 35 U.S.C. § 102(e) as being anticipated by Horvitz; claims 2, 3, 7-
14, 35, and 36 under 35 U.S.C. § 103(a) as being unpatentable over Lech;
and claims 22 and 23 under 35 U.S.C. § 103(a) as being unpatentable over
Lech and Greengard.
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22
37 C.F.R. § 41.77(b) also provides that Appellant, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner of the patent may
file a response requesting reopening of prosecution before the
examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.79 by the Board upon the same record. . . .

AFFIRMED
37 C.F.R. § 41.77(b)

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