Ex Parte Deleeuw

Board of Patent Appeals and Interferences

Mar 15, 2005

09222906 (B.P.A.I. Mar. 15, 2005)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte WILLIAM C. DELEEUW

Appeal No. 2005-0062
Application 09/222,906

ON BRIEF

Before KRASS, BARRY, and MACDONALD, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-19.
Invention
Appellant’s invention relates to a method, system,
apparatus, and set of instructions in a storage medium for
extracting information from a file. First, a file is
Appeal No. 2005-0062
Application 09/222,906
processed with a printer driver to generate a representation of
the file. Information is then extracted from the representation.
Appellant’s specification at page 4, lines 18-21.
Claim 1 is representative of the claimed invention and is
reproduced as follows:
1. A method for extracting information from a file,
comprising:
processing a file with a printer driver module to generate a
representation having a modified format for output by a printer;
and
extracting text information from said representation.
References
The references relied on by the Examiner are as follows:
Yokomizo et al (Yokomizo) 5,907,835 May 25, 1999
(Filed November 17, 1995)
Rejections At Issue
Claims 1-5, 8-12, and 18-19 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Yokomizo.
Claims 6-7 and 13-17 stand rejected under 35 U.S.C. § 103 as
being obvious over Yokomizo.
Appeal No. 2005-0062
Application 09/222,906
1Appellant filed an appeal brief on February 9, 2004. Appellant
filed a reply brief on May 10, 2004. The Examiner mailed an
Examiner’s Answer on March 5, 2004.
Throughout our opinion, we make references to the
Appellant’s briefs, and to the Examiner’s Answer for the
respective details thereof.1
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of the
Appellant and the Examiner, for the reasons stated infra, we
affirm the Examiner’s rejection of claims 1-5, 8-12, and 18-19
under 35 U.S.C. § 102; we reverse the Examiner’s rejection of
claims 6-7 and 13-14 under 35 U.S.C. § 103 and we affirm the
Examiner’s rejection of claims 15-17 under 35 U.S.C. § 103.
Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant could have
made but chose not to make in the brief have not been considered.
We deem such arguments to be waived by Appellant [see
37 CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing
37 CFR § 1.192(a)].
Appellant has indicated that for purposes of this appeal the
claims are grouped as follows:
Appeal No. 2005-0062
Application 09/222,906
Claims 1-5, 8-12, and 18-19, as Group I; and
Claims 6-7, and 13-17, as Group II.
See page 4 of the brief. Furthermore, Appellant argues each
group separately and explains why each group is believed to be
separately patentable. See pages 5-7 of the brief and pages 1-4
of the reply brief. Appellant presents no arguments as to why any
claims within Group I, are separately patentable from the other
claims within that group. However, at page 4 of the reply brief
the Appellant presents arguments as to why claims 6-7 and 13-14
of Group II are separately patentable from the other claims
within that group. Appellant has fully met the requirements of
37 CFR § 1.192 (c)(7) (July 1, 2002) as amended at 62 Fed. Reg.
53169 (October 10, 1997), which was controlling at the time of
Appellant’s filing of the brief. 37 CFR § 1.192 (c)(7) states:
Grouping of claims. For each ground of
rejection which appellant contests and which
applies to a group of two or more claims, the
Board shall select a single claim from the
group and shall decide the appeal as to the
ground of rejection on the basis of that
claim alone unless a statement is included
that the claims of the group do not stand or
fall together and, in the argument under
paragraph (c)(8) of this section, appellant
explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims
cover is not an argument as to why the claims
are separately patentable.
We will, thereby, consider Appellant’s claims as standing or
falling together in three groups, and we will treat:
Appeal No. 2005-0062
Application 09/222,906
Claim 1 as a representative claim of Group I (as
above); and
Claim 6 as a representative claim of Group II (claims
6-7 and 13-14); and
Claim 15 as a representative claim of Group III (claims
15-17).
If the brief fails to meet either requirement, the Board is free
to select a single claim from each group and to decide the appeal
of that rejection based solely on the selected representative
claim. In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465
(Fed. Cir. 2002). See also In re Watts, 354 F.3d 1362, 1368, 69
USPQ2d 1453, 1457 (Fed. Cir. 2004).
I. Whether the Rejection of Claims 1-5, 8-12, and 18-19
Under 35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us,
that the disclosure of Yokomizo does fully meet the invention as
recited in claims 1-5, 8-12, and 18-19. Accordingly, we affirm.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
Appeal No. 2005-0062
Application 09/222,906
With respect to independent claim 1, Appellant argues at
page 6 of the brief, “the representation from which text data is
extracted is not created by the printer driver but by a module
that precedes the printer driver.” We find Appellant’s argument
unpersuasive.
Appellant’s argument is silent as to what module he is
referencing. We have reviewed Yokomizo and fail to find any
module preceding the printer driver (item 6, in figure 1). We do
find a module (item 10-1) following the printer driver and
preceding the key word extractor (item 10-3). However, we find
nothing in Appellant’s claim language that precludes having a
module between the printer driver and the extractor.
At pages 2-3 of the reply brief Appellant further argues
that he has “[eliminated] the need for a new common document
format functionality required by Yokomizo.” We have reviewed
claim 1 and fail to find any such limitation.
Therefore, we will sustain the Examiner’s rejection under
35 U.S.C. § 102.
II. Whether the Rejection of Claims 6-7 and 13-14 Under
35 U.S.C. § 103 is proper?
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of skill
in the particular art would not have suggested to one of ordinary
Appeal No. 2005-0062
Application 09/222,906
skill in the art the invention as set forth in claims 6-7 and
13-14. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellant.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
Appeal No. 2005-0062
Application 09/222,906
With respect to dependent claim 6, Appellant argues at page
4 of the reply brief that the Examiner has failed to establish
that the elements of claims 6-7 and 13-14 are obvious over
Yokomizo. We agree.
The Examiner’s rejection at pages 5-6 of the Final rejection
(Paper No. 16) states that Yokomizo fails to teach the features
of claim 6. The rejection goes on to state that it would be
obvious to modify Yokomizo to include these features, as these
features are well known. We find that Appellant has not
challenged the Examiner’s taking of official notice as to these
features. However, we also find that the Examiner has used
improper hindsight to combine the well-known features with the
system of Yokomizo. Mere existence in the prior art is not
sufficient motivation to combine. The Examiner has not met the
initial burden of establishing a prima facie case of obviousness.
Therefore, we will not sustain the Examiner’s rejection
under 35 U.S.C. § 103.
III. Whether the Rejection of Claims 15-17 Under
35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the invention as set forth in claims 15-17. Accordingly,
we affirm.
Appeal No. 2005-0062
Application 09/222,906
With respect to independent claim 15, Appellant has
presented no arguments as to why the Examiner has failed to
properly establish a prima facie case of obviousness. See
section B of Appellant’s brief at pages 6-7 that is directed to
claims 6-7 and 13-17. Section A of Appellant’s brief is directed
to independent claims 1, 8, and 18. Section B refers back to the
arguments of section A, but lists the independent claims as 1, 8,
and 15. The result is that there are no arguments with respect
to claims 15-17.
Therefore, we will sustain the Examiner’s rejection under
35 U.S.C. § 103.
Conclusion
In view of the foregoing discussion, we have sustained the
rejection under 35 U.S.C. § 102 of claims 1-5, 8-12, and 18-19;
we have not sustained the rejection under 35 U.S.C. § 103 of
claims 6-7 and 13-14; and we have sustained the rejection under
35 U.S.C. § 103 of claims 15-17.
Appeal No. 2005-0062
Application 09/222,906
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
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Appeal No. 2005-0062
Application 09/222,906
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