Ex Parte Davis et al

Board of Patent Appeals and Interferences

Feb 6, 2012

11504473 (B.P.A.I. Feb. 6, 2012)

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.
11/504,473 08/14/2006 Steven Davis 20114/00401 2996
30636 7590 02/06/2012
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
DASS, HARISH T
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
02/06/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte STEVEN DAVIS AND STEPHEN A. SCHUTZE 8
___________ 9
10
Appeal 2011-011671 11
Application 11/504,473 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, BIBHU R. MOHANTY, and 17
MICHAEL W. KIM, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 4, 2011) and Reply Brief (“Reply Br.,” filed July 5, 2011),
and the Examiner’s Answer (“Ans.,” mailed May 5, 2011).
Steven Davis and Stephen A. Schutze (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-10 and 16-28, the 3
only claims pending in the application on appeal. We have jurisdiction over 4
the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a remote deposit system (Specification ¶ 0002). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 1, which is reproduced below [bracketed matter and some 8
paragraphing added]. 9
1. A method, comprising: 10
[1] receiving facsimile data 11
corresponding to 12
a facsimile of at least one of a plurality of checks 13
and 14
a facsimile of a carrier 15
into which the at least one of the plurality of 16
checks has been inserted, 17
the facsimile data including 18
indicia on the carrier 19
for identifying 20
a depositor of the at least one of the 21
plurality of checks; 22
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[2] generating digitized images 1
of the checks 2
as a function of the facsimile data; 3
[3] obtaining check data 4
from each of the digitized images; 5
[4] sorting each of the checks 6
into one of 7
a consumer check category 8
and 9
a non-consumer check category 10
by processing information 11
in an electronic record 12
associated with the checks, 13
the information in the electronic record including 14
the indicia for identifying the depositor; 15
and 16
[5] processing the check data 17
according to a check processing procedure 18
to settle transactions referenced by each of the checks, 19
wherein the carrier physically encloses 20
the at least one of the plurality of checks. 21
The Examiner relies upon the following prior art: 22
Bellinger US 5,870,725 Feb. 9, 1999
Shell US 6,103,985 Aug. 15, 2000
DeWitt US 2002/0104782 A1 Aug. 8, 2002
Simonoff US 6,697,512 B2 Feb. 24, 2004
Orcutt US 2005/0097050 A1 May 5, 2005
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Application 11/504,473

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Piersol US 2005/0174593 A1 Aug. 11, 2005
Popadic US 2007/0156438 A1 Jul. 5, 2007
Claims 1-2, 5-7, 16, 17, 19-20, and 25-28 stand rejected under 35 U.S.C. 1
§ 103(a) as unpatentable over Shell, Popadic, Orcutt, and Piersol.2 2
Claims 9-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Shell, Popadic, Orcutt, Piersol, and Simonoff. 4
Claims 21-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable 5
over Shell, Popadic, Orcutt, Piersol, and DeWitt. 6
Claims 3-4, 8, and 18 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Shell, Popadic, Orcutt, Piersol, and Bellinger. 8
ISSUES 9
The issues of obviousness turn primarily on whether the art describes 10
using digital data from facsimile data to generate check data. 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14

2 Although claims 17, 19, and 20 are not included in the statement of
rejection, they are included in the analysis. This is taken as a typographic
error in the statement.
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Facts Related to the Prior Art 1
Shell 2
01. Shell is directed to a Teller Scanner business machine that 3
transports bank checks along a path within the machine to perform 4
various functional operations on these checks. Shell 1:12-15. 5
02. Shell uses a machine that will scan the front and back sides of 6
checks etc. and will generate digital images of each side, as well 7
as read magnetic or optical characters encoded on the checks. 8
Shell 1:20-24. 9
03. For each cycle, each check will be taken automatically to each 10
successive process station: i.e. first to Front Endorser, then to 11
MICR-read, then to Front-imaging. The check is imaged and the 12
image is digitized. Its rear face is presented up to Rear Endorser 13
for comparable rear side treatment. Shell 6:19-30. 14
04. Shell describes using digitally captured check data for check 15
settlement. Shell 7:1-20. 16
Popadic 17
05. Popadic is directed to Remote check image capture. Popadic ¶ 18
0003. 19
06. Popadic describes using and digitally reading a check carrier for 20
deposits. Popadic ¶ 0007. 21
07. Popadic describes using optical character recognition on 22
facsimile data to capture check facsimile data and identify the 23
depositor. Popadic ¶ 0030. 24
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Orcutt 1
08. Orcutt is directed to automatically converting checks to ACH 2
debits. Orcutt ¶ 0002. 3
09. Orcutt has a claim that sorts checks and the sort includes 4
business versus non-business criteria. Orcutt Claim 43. 5
Piersol 6
10. Piersol is directed to capturing facsimile data in an electronic 7
document management system. Piersol ¶ 0002. 8
DeWitt 9
11. DeWitt is directed to extracting, reordering, reorienting, 10
imaging and sorting documents, and particularly remittance 11
transactions in the form of an invoice and an accompanying check. 12
DeWitt ¶ 0002. 13
12. DeWitt describes using plural concurrent sorts of such 14
documents based on the information captured from the documents. 15
DeWitt ¶ 0116-0117. 16
ANALYSIS 17
Claims 1-2, 5-7, 16, 17, 19-20, and 25-28 rejected under 35 U.S.C. § 103(a) 18
as unpatentable over Shell, Popadic, Orcutt, and Piersol. 19
Claim 1 is a five step process that processes check data for settlement. 20
The check image is captured along with a carrier in step [1]; the image is 21
digitized in step [2]; check data is obtained from the digitized image in step 22
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[3]; the checks are sorted by electronic information identifying the depositor 1
in step [4]; and settled in step [5]. 2
The Examiner found that Shell described the basic image capture and 3
digitization and check settlement of steps [1], [2], and [5]. The Examiner 4
applied Popadic for adding the deposit carrier in step [1] and OCR 5
recognition from the image data for step [3] and the identification data in 6
step [4]. The Examiner applied Piersol for the technology underlying 7
Popadic’s OCR capture and Orcutt for the sorting and identification in step 8
[4]. Ans. 4-8 and 13-16. See FF 01-10. 9
We are not persuaded by the Appellants’ argument that the art fails to 10
describe the claimed specific conversion technology that allows check data 11
to be extracted from the image file generated from the facsimile data. App. 12
Br. 4-9; Reply Br. 2-4. Popadic describes using optical character 13
recognition on digital facsimile data to capture check facsimile data and 14
identify the depositor. FF 07. The digital facsimile data inherently comes 15
from analog facsimile data by the nature of the scanning process. 16
We also find Appellants’ arguments are not commensurate with the 17
scope of the claim. Step [5] does not narrow the manner of processing. It is 18
sufficient such processing be related in some manner to settlement. 19
Transmitting the check images would be within the scope of this step. Step 20
[3] does not narrow what data is obtained. It is unnecessary that the data be 21
textual to be within the scope of step [3]. On the other hand, step [4] does 22
not specify that any of its data comes from step [3]. MICR data would be 23
within the scope of step [4]. Thus, even without Popadic’s description of 24
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using OCR to capture textual data for settlement, the art would still be 1
within the scope of claim 1. 2
Claims 9-10 rejected under 35 U.S.C. § 103(a) as unpatentable over Shell, 3
Popadic, Orcutt, Piersol, and Simonoff. 4
Argument relies on claim 1 patentability. 5
Claims 21-24 rejected under 35 U.S.C. § 103(a) as unpatentable over Shell, 6
Popadic, Orcutt, Piersol, and DeWitt. 7
Only claim 22 is argued separately. Claim 22 recites performing at least 8
two sorts based on enumerated sort criteria. We are not persuaded by the 9
Appellants’ argument that DeWitt fails to describe using two of the 10
enumerated criteria. App. Br.9. DeWitt describes using plural concurrent 11
sorts of such documents based on the information captured from the 12
documents. 13
Sorting criteria such as those enumerated in the claim of MICR line 14
format, special characters surrounding an MICR line, account use history, 15
and an amount of the check are at least predictable criteria, and in any event, 16
because the results from these sorts are not functionally used in the claim, 17
the sorting criteria is non-functional descriptive material that cannot 18
distinguish the claim over the art. 19
Claims 3-4, 8, and 18 rejected under 35 U.S.C. § 103(a) as unpatentable 20
over Shell, Popadic, Orcutt, Piersol, and Bellinger. 21
Argument relies on claim 1 patentability. 22
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CONCLUSIONS OF LAW 1
The rejection of claims 1-2, 5-7, 16, 17, 19-20, and 25-28 under 35 2
U.S.C. § 103(a) as unpatentable over Shell, Popadic, Orcutt, and Piersol is 3
proper. 4
The rejection of claims 9-10 under 35 U.S.C. § 103(a) as unpatentable 5
over Shell, Popadic, Orcutt, Piersol, and Simonoff is proper. 6
The rejection of claims 21-24 under 35 U.S.C. § 103(a) as unpatentable 7
over Shell, Popadic, Orcutt, Piersol, and DeWitt is proper. 8
The rejection of claims 3-4, 8, and 18 under 35 U.S.C. § 103(a) as 9
unpatentable over Shell, Popadic, Orcutt, Piersol, and Bellinger is proper. 10
DECISION 11
The rejection of claims 1-10 and 16-28 is affirmed. 12
No time period for taking any subsequent action in connection with this 13
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 14
§ 1.136(a)(1)(iv) (2007). 15
16
AFFIRMED 17
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mls 21