Ex Parte Kryka et al

Board of Patent Appeals and Interferences

Sep 24, 2009

10714122 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTON JOSEPH KRYKA and DAVID ANDREW LAPORTE
____________

Appeal 2008-003654
Application 10/714,122
Technology Center 2100
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Decided: September 24, 2009
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-15, 17, and 18. The Appellants
appeal therefrom under 35 U.S.C. § 134(a) (2006). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
The invention at issue on appeal relates to an improved system and
method for storing and retrieving images in a document processing system,
wherein the system “utilizes an indexing scheme for an image file, wherein
the image file stores a plurality of captured document images for subsequent
retrieval on an individual basis, and wherein the indexing scheme uses a
self-describing index document having tags that described indexing data for
the captured document images.” (Spec. 8.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows:
1. A document processing system having at least one
computer running system software that interfaces with transport
hardware to provide document control and capture document
images and document data in various formats, wherein an
image file stores a plurality of captured document images for
subsequent retrieval on an individual basis, the system
including a computer readable storage medium storing the
system software, the system software on the medium further
comprising:
instructions for indexing the image file by creating an
index file containing indexing data for the captured document
images, the index file being in the form of a self- describing
document wherein elements describe the indexing data for the

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captured document images to allow subsequent retrieval of the
captured document images on an individual basis.

C. REFERENCES
The Examiner relied on the following references as evidence:
Anderson US 2004/0015566 A1 Jan. 22, 2004
Lal US 6,684,204 B1 Jan. 27, 2004

D. REJECTIONS

Claims 1 and 5 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claim 49 of co-pending patent application No. 10/714,121. Although the
conflicting claims are not identical, they are not patentably distinct from
each other for the following reasons:

Claim 49 of Patent Application No. 10/714,121
contain(s) every element of claims 1 and 5 of the instant
application and thus anticipate the claim(s) of the instant
application. Claims of the instant application therefore are not
patently distinct from the earlier patent claims and as such are
unpatentable over obvious-type double patenting. A later
patent/application claim is not patentably distinct from an
earlier claim if the later claim is anticipated by the earlier claim.

(Ans. 4.)
Claims 1-15, 17, and 18 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Anderson in view of Lal.

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II. ISSUES
Have the Appellants shown error in the Examiner’s initial showing of
obvious-type double patenting?
Have the Appellants shown error in the Examiner’s initial showing of
obviousness in the combination of Anderson and Lal? Specifically, have the
Appellants shown that Anderson does not teach or would not have suggested
to one of ordinary skill in the art capturing a plurality of images for later
retrieval on an individual basis using an index in a self-describing
document?
III. PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (hereinafter “KSR”).

In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art”, id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. Id. at 415-16 (citing Graham v. John Deere Co.,
383 U.S. 1, 12 (1966)). The Court reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416. The operative question in this “functional approach” is
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thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 417.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162 (citing KSR, 550 U.S. at 418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

IV. ANALYSIS
OBVIOUS-TYPE DOUBLE PATENTING
The Appellants note the provisional rejection, and “will
consider filing an appropriate terminal disclaimer in the event that the
conflicting claim is patented.” (App. Br. 5.) We therefore pro forma
affirm the obvious-type double patenting rejection of independent
claims 1 and 5 which have not been specifically argued.
35 U.S.C. § 103(a)
From our review of the Appellants’ arguments in the Appeal Brief, the
Appellants’ contentions are phrased in terms of it “appears” rather than
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making affirmative statements to specifically address the Examiner's
position. (App. Br. 6-8; Reply Br 3.) The Examiner further supports the
stated rejection from the Final Rejection in the Answer to address the
Appellants’ concerns for the plural images to individual retrieval.
The Examiner maintains at page 6 of the Answer that:

[D]atabase and cycle are manipulated, such as deleting and
migrating, by the file management, (sections 308-320) for
subsequent retrieval on an individual basis (i.e., capturing any
object into any database on either a collective basis or an
individual object basis (section 120) and searching the system
indexes on the basis of an individual object attribute or
combination of object attributes (section 130), wherein the
object teaches an image . . . .

The Examiner identifies that an image database storing images and
associated information obtained from each check in a database for
manipulation by a file management for subsequent retrieval on an individual
basis is taught and suggested by section/paragraph [0120] of Anderson. We
agree with the Examiner that Anderson teaches this well-known use of
image acquisition of individual images or image acquisition on a “collective
basis.” Clearly, Anderson foresees that the image data would be retrievable
from the database for later usage and/or manipulation as discussed by the
Examiner respect to independent claim 49. (Ans. 6.)
In responsive arguments at pages 10-11 of the Answer, the Examiner
maintains that Anderson teaches an index file for the captured items index in
paragraph [0131] and teaches the database indexed in paragraph [0787] and
[0788] for indexing and teaches image file that stores a plurality of captured
document images. Additionally, the Examiner further emphasized that
paragraph [0120] of Anderson teaches that a file management system is used
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for a database of plural items for subsequent retrieval on an individual basis.
The Examiner maintained that capturing of an object into any database on
either a collective basis or an individual object basis is taught in paragraph
[0120] and searching the system indices on the basis of an individual object
attribute or combination of object attributes is taught in paragraph [0130].
Anderson further teaches that an object may be image in Table 1A and
teaches an index is for query in retrieval in paragraph [0131]. (Ans. 10-11).
In response to the Examiner’s further clarification of the teachings of
Anderson regarding paragraphs [0131] and [0120], the Appellants merely
state that:
Section 131 mentions a captured items Index. There
does not appear to be any discussion of an index file indexing
and image file that stores a plurality of captured document
images for subsequent retrieval on an individual basis as
claimed.
. . . .

Section 120 describes a front-end routine for routing
different objects to different databases. Again, Andersons still
as shortcomings.

(Reply Br. 2.) The Appellants, however, do not identify what the
shortcomings are.

We find the Appellants’ mere restatement of the claim language is not
a specific argument for patentability to distinguish the claimed invention and
further does not show error in the Examiner’s line of reasoning as set forth
in page 7 of the Answer.
Clearly, Anderson teaches an image file stores a plurality of images
and the Examiner relied upon portions in paragraphs [0120] and [0131] to
teach or suggest either an individual capture or collective capture basis and
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subsequent routing individual objects to different databases based upon
accompanying index data.
Hence, to capture and then subsequently route individual objects
Anderson would have needed to process and index the data in a manner to
carry out the recited function.
The Appellants argue that Anderson’s shortcomings are more
significant than what is acknowledged by the Examiner. “In particular,
Anderson does not appear to describe an index file for an image file that
stores captured document images for subsequent retrieval on an individual
basis, let alone describe an index file in the form of a self-describing
document.” (App. Br. 7.) As acknowledged by the Examiner, Anderson
does not teach or suggest a self-describing document, and the Appellants
argued the totality of the limitations for the individual reference rather than
the limited teachings as relied upon by the Examiner in the rejection.
Therefore, the Appellants do not address the Examiner's rejection.
The Appellants further argue that “Anderson does not appear to
describe an index file for an image file that stores captured document images
for subsequent retrieval on an individual basis, let alone describe an index
file in the form of a self-describing document.” (App. Br. 7.)
Again, the Appellants reiterate claim language which sets forth a
desired outcome of a system with no structure or claimed process to achieve
the desired functional end result. Furthermore, reiterating the claim
language and the Appellants’ belief that the reference appears not to teach
this does not show error in the Examiner's proffered showing of
obviousness. Therefore, the Appellants' argument is not persuasive of error.
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With respect to the teachings of Lal, the Appellants argue the totality
of the claim language while the Examiner has relied upon Lal for a limited
teaching concerning the self-describing document. (App. Br. 8-9.) The
Appellants argue that Lal is about indexing an XML document collection,
and conducting a search on a network which includes documents having a
plurality of tags. (App. Br. 8.) The Appellants argue that “there is clearly no
suggestion of an index file in the form of a self-describing document.” (Id.)
The Appellants identify no specific interpretation for “self-describing
document” in the art or in the Appellants’ Specification to show error in the
Examiner's reliance upon the teachings of Lal.
The Appellants further argue that the hash table index does contain
the names of tags that occur in the XML documents; however, the hash table
is only a table of names and pointers (that is, an object or data structure
containing pointers), and is “certainly not a document let alone the fact that
the claims specifically require a self-describing document.” (App. Br. 9.)
The Appellants further argue that the tree index does contain the names of
tags that occur in the XML document, and does reflect the basic structure of
the XML document in the document type definition associated with the
XML document. Nevertheless, the tree index is simply a treatment acts
containing pointers (that is, an object or data structure containing pointers).
(Id.) “The tree index is certainly not a document let alone the fact that the
claims specifically require a self-describing document.” (Id.)
The Examiner relies upon the teachings of Lal that discloses the use of
documents with XML tags and document type definitions (DTDs) (Lal. Fig.
5; Cols 2, 4 and 5; Ans. 12-14.) The Examiner maintains that the XML tags
in Lal are self-describing. (Id. 13.) We agree with the Examiner's rationale
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and find no express limitations in the language of independent claim 1 which
persuades us otherwise, and the Appellants have identified no special
interpretations in light of the Appellants’ Specification with which to
interpret the language of claim 1. Therefore, the Appellants’ argument is not
persuasive of the error in the Examiner's initial showing of obviousness.
The Appellants argue that while the hash table index and the tree
index do function as indices for XML documents, they are not a
“document”, let alone the fact the claims specifically require a “self-
describing document.” (App. Br. 9; Reply Br. 4.) Again, claim 1 does not
set forth any express limitations of the “document”, nor have the Appellants
identified any express definition in the Specification with which to interpret
the claim language to show error in the Examiner's interpretation and
application of the prior teachings. Therefore, the Appellants have not shown
error in the Examiner's initial showing of obviousness.
The Appellants argue that the hash table index and the tree index do
not suggest an index file in the form of self-describing documents. (App.
Br. 9; Reply Br. 4.) Again the the Appellants’ argument does not distinguish
why the hash table index or tree index may not be considered a “document”,
nor does it address any specific interpretation of the claim language to show
error in the Examiner's interpretation. The Appellants argue that the hash
table index and the tree index, as illustrated, are in the form of object to or
data structures-not documents, and clearly not self-describing documents,
and even if there were “a suggestion to serialize the hash table index, or the
tree index, to create a byte stream for a file, there is no suggestion that the
resulting byte stream (file) would represent the index file in the form of a
self-describing document or even in the form of a document at all.” (App.
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Br. 9-10.) The Appellants’ argument regarding serializing the data goes
beyond the express language of independent claim 1. Furthermore, claim 1
does not set forth any express limitations of the “document”, nor have the
Appellants identified any express definition in the Specification with which
to interpret the claim language to show error in the Examiner's interpretation
and application of the prior teachings. Therefore, the Appellants have not
shown error in the Examiner's initial showing of obviousness.
With respect to the Examiner’s motivation for the combination, the
Appellants state that the Appellants believe that there is no motivation took
upon the references to achieve the claimed invention. (App. Br. 10; Reply
Br. 5.) The Appellants’ belief, however, does not show error in the
Examiner's statement for the combination. Therefore, the Appellants’
argument is unpersuasive of error in the Examiner's initial showing of
obviousness of independent claim 1, and we sustain the rejection thereof.
With respect to claims 2-15, 17, and 18, the Appellants have set forth
no separate arguments for patentability of claims 2-15, 17, and 18.
Therefore, we will group these claims with independent claim 1, and sustain
rejection thereof.

V. CONCLUSION
For the aforementioned reasons, the Appellants have set forth no
argument with respect to the Examiner's obvious-type double patenting
rejection and have not shown error therein. The Appellants have not shown
error in the Examiner's initial showing of obviousness of independent claim
1; and the Appellants have not shown that Anderson does not teach or would
not have suggested to one of ordinary skill in the art capturing a plurality of
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images for later retrieval on an individual basis using an index in a self-
describing document.
VI. ORDER
We affirm the obvious-type double patenting rejection of claims 1 and
5, and affirm the obviousness rejection of claims 1-15, 17, and 18.

AFFIRMED

llw

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