Ex Parte Kane et al

Board of Patent Appeals and Interferences

Jul 9, 2010

10067875 (B.P.A.I. Jul. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY R. KANE and JOHN I. MUNSON
____________

Appeal 2009-007248
Application 10/067,875
Technology Center 2400
____________

Before JOHN A. JEFFERY, LEE E. BARRETT, and THU A. DANG,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants invented a method and system for routing data. See
generally Spec. 1. Claim 1 is reproduced below with the key disputed
limitations emphasized:
1. A method for routing data by a server, comprising the steps of:

providing an application on the server;

providing a table of formats and protocols on the server,
wherein the table is accessible by the application, wherein the table
contains a plurality of formats and protocols;

receiving, on the server, data to be routed from a source to a
destination, the data having the destination and a transaction type
that defines a character of the data included therein;

retrieving, from the table, a format of the plurality of
formats for transforming the data and a protocol of the plurality of
protocols for communicating the data based on the destination, the
transaction type and the source; and

the application transforming the data into the retrieved
format, and routing the transformed data to the destination using
the retrieved communication protocol, wherein the application is
adapted to transform the data which is received in one of a
plurality of formats into the transformed data which is in one of a
plurality of formats.

The Examiner relies on the following as evidence of unpatentability:
Lakshman US 6,078,564 June 20, 2000
Harris, Jr. US 6,144,975 Nov. 7, 2000
Deng US 6,243,394 B1 June 5, 2001
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Olejar US 2003/0037100 A1 Feb. 20, 2003
(filed July 17, 2001)

Endo US 2004/0212841 A1 Oct. 28, 2004
(effectively filed Oct.
26, 1998)

THE REJECTIONS
1. The Examiner rejected claims 1, 3, 10, 12, 16, and 18 under 35
U.S.C. § 102(e) as anticipated by Endo. Ans. 3-5.2
2. The Examiner rejected claims 4, 7, 13, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Endo and Olejar. Ans. 5-7.
3. The Examiner rejected claims 2, 11, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Endo and Deng. Ans. 7-8.
4. The Examiner rejected claims 5, 14, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Endo and Lakshman. Ans. 8.
5. The Examiner rejected claims 6, 15, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Endo and Harris, Jr. Ans. 9.
6. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Endo, Olejar, and Lakshman. Ans. 9.
7. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Endo, Olejar, Lakshman, and Harris, Jr. Ans. 10.

CLAIM GROUPING
Appellants argue the following claim groupings separately: (1) claims
1, 3, 10, 12, 16, and 18; (2) claims 4, 7, 13, and 19; (3) claims 2, 11, and 17;

2 Throughout this opinion, we refer to (1) the Appeal Brief filed May 19,
2008 and (2) the Examiner’s Answer mailed August 5, 2008.
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(4) claims 5, 14, and 20; (5) claims 6, 15, and 21; (6) claim 8; and (7) claim
9. See Br. 6-11. Accordingly, we select claims 1, 4, 2, 5, and 6 as
representative of groups (1)-(5), respectively. See 37 C.F.R.
§ 41.37(c)(1)(vii).

THE ANTICIPATION REJECTION OVER ENDO
Regarding representative independent claim 1, the Examiner finds that
Endo teaches all the limitations, including the information in the
transmission method column of Endo’s Figure 4 is the recited data having a
transaction type that defines the data’s character. Ans. 3, 4, 11.
Appellants argue that Endo’s transmission method information is not
a transaction type since this information pertains to the manner in which to
transmit data and does not define the data’s character as required by claim 1.
Br. 6-7. Appellants additionally assert that Endo does not teach
transforming data having various input formats to a number of different
formats. Id. atBr. 7-9.
The issues before us, then, are as follows:

ISSUES
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Endo discloses:
(1) receiving data having a transaction type that defines a character of
the data and
(2) an application that is adapted to transform the data which is
received in one of a plurality of formats into the transformed data which is
one of a plurality of formats?
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FINDINGS OF FACT (FF)
1. The Specification describes and shows a data transaction type.
These types include invoice and order. Spec. 11:20-22, 12:5-9; Fig. 3.
2. Endo discloses a document transmission apparatus having an
address book 301 containing a table shown in Figure 4 and a destination list
generator 300 that generates a destination list shown in Figure 5 from the
address book’s contents. Document data in the document input unit 305
comes from scanner 210 or a hard disk 205, is converted at the format
converter 308, and can be transmitted with document transmitter 309 using
various protocols (e.g., facsimile transmission protocol, SMTP, salutation
protocol). Endo, ¶¶ 0048-59; Figs. 3-5.
3. The destination list includes: (1) a destination address column
501; (2) a transmission method column 502; (3) a format for text column
503 (“FORMAT1”); (4) a format for monochrome documents column 504
(“FORMAT2”); and (5) a format for color documents column 505
(“FORMAT3”). Various transmission methods (e.g., email, fax, database,
lpr) and data formats (e.g., TIFF-MMR, JPEG, BMP, PCL) are disclosed.
For example, data may have a destination address of “abc@cde.fg.jl.lm,” a
transmission method of “e-mail” and FORMAT1-3 being TIFF-MMR,
JPEG, and JPEG, respectively. Endo, ¶¶ 0057-58; Fig. 5.

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted).

ANALYSIS
We begin by construing a key disputed limitation of claim 1 which
calls for, in pertinent part, the data to have “a transaction type that defines a
character of the data[.]” Appellants contend that Figure 3 of the present
disclosure and its accompanying discussion of invoices and orders explain
what a transaction type that defines a data’s character in claim 1 is. Br. 7.
We agree that Specification provides examples of a transaction type. See FF
1. However, this discussion by no means provides an exclusive list for, or a
definition of, a “transaction that defines a character of the data.” as recited in
claim 1. A data’s character can thus include other data features or attributes.
When giving this phrase its broadest reasonable construction, an ordinarily
skilled artisan would have interpreted “a transaction type that defines the
character of the data” to include any data attribute that defines the nature of
the data. See Am. Acad., 367 F.3d at 1364.
Endo discloses a document transmission apparatus having a
destination list generated from the address book’s contents. FF 2. The
destination list’s information includes a transmission method (e.g., email,
fax, database, lpr) for the document data. FF 3. As transmission method
indicates the nature of the data when sent, the information in the list includes
a transaction type that defines the data’s character. Additionally, even
before the data is transmitted, the data with its transmission method
information (e.g., email) is sent to the format converter 308 and the
document transmitter 309 so as to define the data’s character. See FF 2-3.
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We therefore find that Endo’s transmission method for a given destination
address is data having a transaction type that defines the data’s character as
recited in claim 1.
Moreover, contrary to Appellants’ assertions (Br. 7), Endo discloses
the data’s character is separate or distinct from its format. Endo discloses
multiple columns related to the data. See FF 3. For example, data having
destination address “abc@cde.fg.jl.lm” also has a transaction type “e-mail”
and FORMAT1-3 (i.e., TIFF-MMR, JPEG, JPEG). See id. Endo therefore
teaches the data’s character is distinct and separate from the data’s format.
Furthermore, Endo demonstrates that that the Endo’s system includes one of
many formats as evidenced by the multiple formats in the format columns
(e.g., TIFF-MMR, JPEG, BMP, PCL) depending on the destination address.
See id.
Appellants also argue that the data is not received in one of a plurality
of formats as recited in claim 1. Br. 7. We disagree. Endo’s Figure 3 shows
that the document data’s source can be a scanner 210 or a hard disk 205. FF
2. Appellants concede this point. Br. 7. Nonetheless, Appellants contend
that this does not show the document data may be in different formats
depending on the source and the “many [format] to many [format]
conversion.” Br. 7-9.
We agree with the Examiner (Ans. 12) that the claim does not require
the data to be in a different format depending on the source, and we will not
read this limitation into the claim. In fact, claim 1 recites that the data is
“received in one format of a plurality of formats” (emphasis added). Thus, if
the data is received in one format from the scanner 210, for example, this
format is still one of many possible formats as required by claim 1.
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Nonetheless, a scanner can scan in different formats (e.g., BMP, JPEG).
Additionally, Endo shows different sources for the data, including a stand-
alone hard disk 205 and scanner 210. We therefore find that Endo discloses
the recitation that the data “is received in one of a plurality of formats” as
recited in claim 1.
Finally, Figure 5 demonstrates that the data may be transformed into
one of many formats (e.g., TIFF-MMR, JPEG, BMP, PCL). See FF 3.
Independent claims 10 and 16 are commensurate in scope to claim 1,
and we are likewise unpersuaded by Appellants’ contentions.
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of independent claim 1 based on Endo. We therefore
sustain the rejection of claim 1, and claims 3, 10, 12, 16, and 18 which fall
with claim 1.

THE OBVIOUSNESS REJECTION OVER ENDO AND OLEJAR
Regarding representative claim 4, the Examiner finds that Endo
teaches all the limitations, except for detecting errors in the data based upon
omissions in the data. Ans. 6-7. The Examiner relies on Olejar to cure the
deficiencies. Appellants repeat the argument that Endo fails to teach the
data has a transaction type that defines the data’s character. Br. 9-10. The
issues are therefore the same as those in connection with claim 1, and we are
not persuaded for the above reasons.

THE REMAINING OBVIOUSNESS REJECTIONS
The Examiner rejected: (1) claims 2, 11, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Endo and Deng; (2) claims 5, 14, and 20 under
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35 U.S.C. § 103(a) as unpatentable over Endo and Lakshman; (3) claims 6,
15, and 21 under 35 U.S.C. § 103(a) as unpatentable over Endo and Harris,
Jr.; (4) claim 8 under 35 U.S.C. § 103(a) as unpatentable over Endo, Olejar,
and Lakshman; and (5) claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Endo, Olejar, Lakshman, and Harris, Jr. Ans. 7-10. For these
rejections, Appellants incorporate the previous arguments and additionally
contend that Deng, Lakshman, Harris, Jr., and Olejar do not cure the
purported deficiencies. Br. 10-11.
We are not persuaded by Appellants’ argument for the reasons
disclosed above regarding Endo and claim 1 and need not address whether
Deng, Lakshman, Harris, Jr., and Olejar cures any deficiency. This
argument also fails to persuasively rebut the Examiner’s obviousness
conclusion – a position we find reasonable.

CONCLUSION
The Examiner did not err in rejecting claims 1-21 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

llw
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