Ex Parte Carro

Board of Patent Appeals and Interferences

Mar 17, 2008

09892399 (B.P.A.I. Mar. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FERNANDO INCERTIS CARRO
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Appeal 2007-2759
Application 09/892,399
Technology Center 2100
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Decided: March 17, 2008
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Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
JAY P. LUCAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-10, 18-25, and 31-38. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
Appeal 2007-2759
Application 09/892,399

Representative claim 1 reads as follows:

1. A method of creating a geographic link from an electronic document
to a physical document for locating, on the physical document, an item
referenced in the electronic document, comprising the steps of:

defining the referenced item in the electronic document, said
electronic document not being derived from the physical document;

determining geographic coordinates of the referenced item;

defining the geographic link to the physical document; and

encoding the geographic coordinates in the geographic link.

The Examiner relies on the following references as evidence of
unpatentability.
Thompson 5,986,401 Nov. 16, 1999
Musk 6,148,260 Nov. 14, 2000
Robinson “A Framework for Interacting with Paper”, Eurographics (1997),
Volume 16, Number 3, available at
http://www.cl.cam.ac.uk/Research/Origami/Origami1997c/index.html, pages
1-9.

Claims 1-4, 7, 8, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Robinson and Musk.
Claims 5, 6, 9, 18-25, and 31-38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Robinson, Musk, and Thompson.
Claims 1, 18, and 31 are independent.
Claims 11-17 and 26-30 have been canceled.
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Appeal 2007-2759
Application 09/892,399

Instant claim 1 recites a method of creating a “geographic link” from
an electronic document to a physical document for locating, on the physical
document, an item referenced in the electronic document. The steps include
defining the referenced item in the electronic document, with the electronic
document “not being derived” from the physical document, determining
geographic coordinates of the referenced item, and defining “the geographic
link” to the physical document.
A “geographic link” from an electronic to a physical document has, in
essence, no meaning when the claim is read in isolation. The Specification
indicates, however, that “geographic links” are a form of hyperlink that
comprise encoded geographic or cartographic coordinates of the locations
referenced in the electronic document. The geographic links are defined in
the form of an extension of HTML (Hyper-Text Markup Language), with a
syntax that includes a URL (Uniform Resource Locator) hyperlink, Latitude,
Longitude, and Location Name. (See Spec. 23: 1-11.)
In response to the § 103(a) rejection of claim 1 over Robinson and
Musk, Appellant submits that Robinson fails to show the negative limitation
of the “electronic document not being derived from the physical document.”
The statement of the rejection relies (Ans. 4) on § 4.1 of Robinson for the
teaching, with the Examiner providing further explanation at pages 20
through 22 of the Answer.
Even assuming that Robinson teaches that the electronic document
(e.g., image of an active document stored in the registry; § 3) is not derived
from the physical document (e.g., printed document described in §§ 4.2 and
4.3), we would still be constrained to agree with Appellant that the rejection
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Appeal 2007-2759
Application 09/892,399

fails to show prima facie obviousness of the subject matter of instant claim
1.
The rejection does not provide a convincing rationale in support of
why combining the “DigitalDesk” system described by Robinson with a user
interface having an electronic map (Musk Fig. 2) would result in the
invention of claim 1. Musk does describe geographic coordinates that relate
to an electronically displayed item (e.g., columns 3 and 4). However, there
is no persuasive explanation as to why the artisan would have used a
hyperlink comprising encoded geographic coordinates of the locations
referenced in the electronic document for linking an electronic and a
physical document (e.g., a map) in the DigitalDesk system.
The rejection suggests that Robinson teaches using absolute
coordinates to link electronic and physical versions of a document. (Ans. 4.)
See also Robinson § 4.2, describing registration marks on a printed
document. The rejection then goes on, however, to suggest that Musk’s
teachings that relate to geographic coordinates in an electronic version of a
map would apply to Robinson’s system in defining a link between an
electronic and a physical document. Musk’s teachings, however, appear to
relate to the claim 1 step of “determining geographic coordinates of the
referenced item” -- an item referenced in an electronic document -- but not
to defining a link between an electronic and a physical document, which
Robinson already does.
We thus agree with Appellant that the rejection of claim 1 fails to
account for, at the least, “defining the geographic link to the physical
document” and “encoding the geographic coordinates in the geographic
link” as required by the claim.
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Appeal 2007-2759
Application 09/892,399

Each of independent claims 18 and 31 is drawn to locating items on a
physical document by calibrating an opto-touch foil aligned on a physical
document, and which, inter alia, relates geographical coordinates in an
electronic document to corresponding coordinates in a physical document.
Thompson, applied in further combination with Robinson and Musk, teaches
an organic light emitting device (OLED) but does not remedy the above-
noted deficiencies we find in Robinson and Musk.
The decision of the Examiner is reversed.

REVERSED

ce

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