Ex Parte Lusen et al

Board of Patent Appeals and Interferences

Mar 28, 2008

10237487 (B.P.A.I. Mar. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte, WILLIAM LUSEN, BRUCE M. FLAMMA, and
FRANK W. RACIS
__________

Appeal 2007-3923
Application 10/237,487
Technology Center 2100
__________

Decided: March 28, 2008
__________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-25. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
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THE INVENTION
The disclosed invention relates generally to a computerized method
and apparatus for managing data objects within a document-imaging system.
More particularly, Appellants’ invention is related to managing a document-
imaging system using a document viewer capable of indexing and
annotating documents and combining text with an image overlay (Spec. 1).
Independent claim 1 is illustrative:
1. A user interface system for processing documents for
display, comprising:

a user command interface for receiving one or more user
commands;

a source of a plurality of template image overlays of a
plurality of corresponding different document types;

a document processor for retrieving a text portion of a
document and document type information for said document
from storage and for adaptively selecting a template image
overlay from said plurality of template image overlays of said
plurality of corresponding different document types in response
to said document type information; and

a display processor for processing said document text
portion to align with said selected image overlay in response to
said document type information to produce data representing an
aligned text image.
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THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejection:
Graf US 5,631,984 May 20, 1997
Engelmann US 5,987,345 Nov. 16, 1999

THE REJECTION
Claims 1-25 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Graf in view of Engelmann.

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellants have the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to
Appellants’ Brief to show error in the proffered prima facie case.

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ANALYSIS
Combinability under 35 U.S.C. § 103
We consider first the combinability of the Graf and Engelmann
references under 35 U.S.C. § 103, as applicable to all claims on appeal.
Appellants contend that the Examiner has provided insufficient evidence of
motivation to combine the Graf method and apparatus for separating static
and dynamic portions of document images with the user interface of the
Engelmann method and system for displaying medical images (see App. Br.
15, 22, 26, 30, 31, and 35).
In view of the Supreme Court’s recent opinion in KSR Int'l Co. v.
Teleflex Inc., our analysis here does not turn upon whether the Examiner has
provided an adequate teaching, suggestion, or motivation to combine the
references. Instead, we view the question before us to be whether sufficient
difference exists between the prior art and Appellants’ claims to render the
claims nonobvious. In KSR, the Supreme Court reaffirmed that “[w]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” KSR,
127 S. Ct. at 1740 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
This reasoning is applicable here. After considering the evidence
before us, it is our view that the image processing and user interface
teachings of Graf and Engelmann are familiar concepts that are well
established in the document processing art. Although Graf discloses an
exemplary embodiment directed to processing checks (financial
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instruments), we nevertheless find that Graf teaches image processing
techniques that are broadly directed to improvements in document storage,
retrieval, and transmission, as follows:

The present invention relates generally to improvements in
document storage, retrieval and transmission. More
particularly, the present invention relates to improvements in
compressing electronic images of documents.

(Graf, col. 1, ll. 10-13).
Moreover, we find Graf expressly teaches that its image processing
techniques are applicable to a broad spectrum of different document types,
as follows:

Many variations may be made in the arrangements shown,
including the type of document, the number and type of static
and dynamic fields within the document, and the particular
techniques used for identifying and isolating various dynamic
fields [emphasis added].

(Graf, col. 15, ll. 2-6).

From the above discussion, it is our view that an artisan possessing
ordinary skill and creativity would have been capable of combining familiar
elements such as the document image processing system taught by Graf with
the user interface of Engelmann’s image processing system to arrive at the
claimed invention. Thus, we conclude that Appellants’ claims are directed
to familiar elements that would have been readily combinable by an artisan
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possessing ordinary skill, creativity,1 and common sense using known
methods in a manner that would have yielded predictable results.
Our reviewing court has reaffirmed 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.” Leapfrog Enter., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 127 S. Ct. at
1739). Here, we note that Appellants have not rebutted the Examiner’s legal
conclusion of obviousness by showing that the claimed combination of
familiar elements produces any new function. Moreover, Appellants have
not provided any factual evidence of secondary considerations, such as
unexpected or unpredictable results, commercial success, or long felt but
unmet need. Accordingly, we find Appellants’ arguments unpersuasive that
the cited references have been improperly combined by the Examiner.

Elements
Claims 1, 4, 6, 7, and 8
We consider the Examiner’s rejection of claims 1, 4, 6, 7, and 8 as
being unpatentable over Graf in view of Engelmann. Since Appellants’
arguments with respect to this rejection have treated these claims as a single
group which stand or fall together, we select independent claim 1 as the
representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).

1 Courts should “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741.
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Appellants contend that the Examiner’s cited combination of Graf and
Engelmann does not disclose the following limitations of representative
claim 1 that, for convenience, we label here as limitations L1, L2, and L3
(see representative claim 1; see also App. Br. 8-16).

Limitation L1
L1. a source of a plurality of template image overlays of a plurality
of corresponding different document types;
(see representative claim 1).
The Examiner, as finder of fact, has determined that Graf teaches, in
column 6, lines 51-54, varieties of different generic check forms, and in
column 15, lines 2-6, varying types of documents, and also in column 12,
lines 38-43, processing other types of documents. The Examiner also points
to the Abstract where Graf discusses providing a method and apparatus for
compressing images of financial instruments and other documents (Ans.
20-21).
When we look to Appellants’ Specification for context, we find
Appellants broadly disclose that “[t]emplates are preferably specified by a
document type and file format” (Spec. 7, l. 18). Appellants also disclose that
“[t]emplates provide structure and meaning to a document, and they also
provide the ability to format a document for multiple languages” (Spec. 7, ll.
23-24). However, we note that the limitations argued by Appellants of using
a template to format a document for multiple languages are not claimed (see

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App. Br. 9). We decline to read these limitations into the claim. See E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003)
(Limitations appearing in the specification but not recited in the claim are
not read into the claim.).
We broadly but reasonably construe a “template” as corresponding to
a particular document type or format. Thus, we agree with the Examiner
that at least Graf’s teaching of using varieties of different generic check
forms (i.e., static templates) meets the language recited in limitation L1
above (See Graf, col. 6, ll. 51-54). We find that Graf’s first database 45
(Fig. 1) is an image database containing both the static check form and the
MICR text (further discussed infra) that is “a source of a plurality of
template image overlays of a plurality of corresponding different document
types,” as claimed (claim 1). Therefore, we conclude that Appellants have
not shown error in the Examiner’s findings of fact regarding limitation L1.

Limitation L2
L2. a document processor for retrieving a text portion of a
document and document type information for said document
from storage and for adaptively selecting a template image
overlay from said plurality of template image overlays of said
plurality of corresponding different document types in response
to said document type information; and

(see representative claim 1).
The Examiner finds that Graf teaches, in column 6, lines 22 through
column 7, line 16, and in column 4, lines 25-49, a system for processing
documents where static portions of documents (i.e., a check form or
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template) are stored in database 45 and the dynamic portions of documents
(added text) are stored in a second database 50 (Graf, Fig. 1). Both portions
of documents are stored in their corresponding database with an associated
document identifier, such as a magnetic ink character recognition line
(MICR, col. 4, ll. 13-14; see also ll. 43-48), i.e., a string defining the type of
document and linking it to the corresponding static check forms, or some
other document identifier (see Graf, col. 12, lines 40-44). The Examiner
further finds Graf teaches that when it is desired that the image be
reconstructed, the system accesses the corresponding static portions pointed
to by the MICR, and overlays the dynamic portion (handwritten text) on the
static portion (see column 6, lines 41-64) (Ans. 20).
After considering the record before us, we find Appellants have not
persuasively rebutted the Examiner’s findings of fact regarding limitation
L2. Appellants state that the “[t]he user interface system of claim 1 further
includes a document processor for retrieving a text portion of the document
from storage, which is separately stored along with document type
information” (App. Br. 10, ¶2). This is exactly what the Examiner has
pointed out in Graf where the static portions of documents (i.e., a check
form or template) are stored in a first database 45 and the dynamic portions
of documents (i.e., added text) are stored in a second database 50 (see Graf,
Fig. 1). We also disagree with Appellants’ contention that the static portion
of Graf’s check documents (i.e., the static generic check forms, col. 6, ll.
51-54) is not equivalent to the templates of the claimed invention, as
discussed supra (see App. Br. 11, ¶3). In particular, we note that Graf
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expressly teaches that the MICR code indicates which of a number of
different check forms should be used when reconstructing an original image
from a stored dynamic image, as follows:
The MICR code, as noted above, will indicate which of a
number of different check forms should be used when
reconstructing an original image from a stored dynamic image.
The MICR code and the dynamic portion are stored for each
check, while an image of the static portion is stored only once.
The present invention provides advantages in identifying and
isolating dynamic portions, usually containing handwritten text,
such that the total amount of image information which must be
stored for each check is considerably reduced.

(Graf, col. 4, ll. 44-53).
Therefore, we conclude that Appellants have not shown error in the
Examiner’s findings of fact regarding limitation L2.

Limitation L3
L3. a display processor for processing said document text portion to
align with said selected image overlay in response to said
document type information to produce data representing an
aligned text image.
(see representative claim 1).
The Examiner finds that Graf teaches, in column 2, line 41 through
column 3, line 3, and column 9, lines 36-40, and in Figure 1, a display
processor that uses the MICR stored with the dynamic portion (i.e.,
handwritten text) to find the correct static portion (i.e., check form template)
to align with the dynamic portion (i.e., added text) for display of the
complete composite image (Ans. 4, see the rejection of claim 1).
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We begin our analysis by noting that Graf expressly teaches an image
processor 37 at column 9, lines 39-40 (see also Fig. 1, image processor 37).
We note again that Graf expressly teaches that “[t]he MICR code . . . will
indicate which of a number of different check forms should be used when
reconstructing an original image from a stored dynamic image” (col. 4, ll.
44-46). We find Graf’s system of Figure 1 teaches “a display processor
[image processor 37] for processing said document text portion [handwritten
text on check] to align with said selected image overlay [static check form
image data] in response to said document type information [i.e., MICR code
that links the customer account number to the type of check form] to
produce data representing an aligned text image,” as claimed. We dismiss
Appellants’ argument that Graf merely describes one type of document – a
check (see App. Br. 14, ¶2, ll. 7-10). To the contrary, we agree with the
Examiner that the scope of “different document types” (as recited in claim 1)
broadly but reasonably encompasses different types of check forms.
Therefore, we conclude that Appellants have not shown error in the
Examiner’s findings of fact regarding limitation L3.
For at least the aforementioned reasons, we conclude that Appellants
have not shown that the Examiner has erred in rejecting representative claim
1 as being unpatentable over Graf in view of Engelmann. Accordingly, we
sustain the Examiner's rejection of representative claim 1 and associated
claims 4, 6, 7, and 8 (which fall therewith) as being unpatentable over Graf
in view of Engelmann.

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Claim 2
We consider the Examiner’s rejection of claim 2 as being
unpatentable over Graf in view of Engelmann.
Appellants argue that Graf and Engelmann neither disclose nor
suggest a system involving a display processor that “automatically processes
said document text portion to align with said selected image overlay using
text registration information”, as claimed (App. Br. 16). In particular,
Appellants distinguish the claimed alignment with what Appellants
characterize as an “association” that is taught by Graf. For convenience, we
reproduce Appellants’ arguments below:
However, the MICR information, as used in Graf, is not used
for purposes of alignment. Instead, the MICR information is
used to associate the dynamic portion of the document with the
static portion of the document, as acknowledged in the
Rejection. Graf discloses at Col. 4, lines 44-46 - The MICR
code, as noted above, will indicate which of a number of
different check forms should be used when reconstructing an
original image from a stored dynamic image.

Applicant further respectfully disagrees with the
contention in the Response to Arguments section of the
Rejection on page 19 that an association between the dynamic
portion and the static portion necessarily indicates which
sections should be aligned. Rather, the association merely
indicates that those two pieces of the document belong together.
There is absolutely no reason to infer that the MICR number
should be used to determine alignment with one another.

(App. Br. 17, ¶¶1-2).

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The Examiner disagrees. The Examiner notes that Appellants admit
the MICR information “is used to associate the dynamic portion of the
document with the static portion of the document” (see App. Br. 17, ¶1).
The Examiner contends that this shows an association between two
documents with respect to how they should overlap one another (i.e.,
alignment). The Examiner finds that Graf teaches, in column 5, lines 35-52,
and column 11, lines 35-45, where the display processor uses the MICR (i.e.,
type information) stored with the dynamic portion to identify the correct
static portion (i.e., template) to align with, and further recognizes text using
optical character recognition (OCR) techniques (i.e., corresponding to the
claimed “text registration information” that specifically mentions the text
font and size). The Examiner further finds that Graf teaches (at column 2,
lines 63 through column 3, line 3, column 9, lines 36-40, and in Figure 1)
that the display processor generates and displays a composite image (without
user interaction) by overlaying a dynamic portion (i.e., added handwritten
text) and a corresponding static portion (i.e., a check form template) (Ans.
26-27).
After considering the record before us, we find Appellants have not
persuasively rebutted the Examiner’s findings of fact regarding claim 2. We
agree with the Examiner that an association between two documents (image
and text) with respect to how (or whether) they should overlap one another
reasonably teaches an “alignment” between the two documents. Regarding
the claimed use of “text registration information,” we further agree with the
Examiner that this limitation is met by Graf’s OCR technique that is used to
recognize a “limited number of fonts” (i.e., font type) (Graf, col. 5, l. 42-43).
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We note that the pertinent portion of claim 2 recites “text registration
information comprising at least one of, (a) font type . . . .” See Graf’s
description of using OCR to read (i.e., recognize) “a limited number of
fonts,” as follows:
If the account name and address cannot be conveniently
determined using the account number from the MICR line, the
original image may be segmented to determine this information.
The account name and address can be located within the image
by, for example, analyzing a portion of the image where this
information is usually found, such as the upper left hand corner.
Because the account name and address are typically printed in
one of a limited number of fonts, this information may be read
using well-known OCR techniques [emphasis added].

(Graf, col. 5, ll. 35-44).

For at least the aforementioned reasons, we conclude that Appellants
have not shown that the Examiner has erred in rejecting dependent claim 2
as being unpatentable over Graf in view of Engelmann. Accordingly, we
sustain the Examiner's rejection of claim 2 as being unpatentable over Graf
in view of Engelmann.
Claim 3
We consider the Examiner’s rejection of claim 3 as being
unpatentable over Graf in view of Engelmann.
Appellants argue that Graf and Engelmann neither disclose nor
suggest a display processor that “automatically processes said document text

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portion of a document of a particular document type to align with said
selected image overlay using text registration information associated with a
particular document type,” as claimed (App. Br. 18).
The Examiner disagrees. The Examiner essentially restates the
response to claim 2 stated above (see also Ans. 27-28).
We have fully addressed the issues of alignment and “text registration
information” with respect to claim 2, supra. Thus, we find Appellants’
arguments unavailing regarding claim 3. We conclude that Appellants have
not shown that the Examiner has erred in rejecting dependent claim 3 as
being unpatentable over Graf in view of Engelmann. Accordingly, we
sustain the Examiner's rejection of claim 3 as being unpatentable over Graf
in view of Engelmann.
Claim 5
We consider the Examiner’s rejection of claim 5 as being
unpatentable over Graf in view of Engelmann.
Appellants argue that Graf and Engelmann neither disclose nor
suggest a system involving a display processor that “aligns said document
text portion with said selected image overlay in response to a user command
received via said user command interface,” as claimed (App. Br. 19).
The Examiner disagrees. The Examiner finds that Graf teaches a
display processor that generates and displays a composite image by
overlaying (i.e., aligning) a dynamic portion (i.e., added text) with a
corresponding static portion (i.e., template) (Graf, col. 2, l. 63 through col. 3,
l. 3; see also col. 9, ll. 36-40, and Fig. 1). The Examiner further finds that
Engelmann teaches that images can be selectively superimposed over one
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another in response to user input through a user interface (see Graf col. 3, ll.
24-65 and col. 7, l. 49 through col. 8, l. 3) (Ans. 28-29).
We have fully addressed the recited “display processor” and the issue
of “alignment,” supra. Moreover, we find Appellants’ arguments are
essentially directed to the teachings of Graf rather than to the combination of
Graf and Engelmann considered as a whole. The Examiner relies upon
Engelmann for teaching and/or suggesting the claimed “user command
received via said user command interface” (claim 5). Our reviewing court
has determined that one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Thus, we find Appellants’ arguments unavailing regarding claim 5.
We conclude that Appellants have not shown that the Examiner has erred in
rejecting dependent claim 5 as being unpatentable over Graf in view of
Engelmann. Accordingly, we sustain the Examiner's rejection of claim 5 as
being unpatentable over Graf in view of Engelmann.

Claims 9 and 10
We consider the Examiner’s rejection of claims 9 and 10 as being
unpatentable over Graf in view of Engelmann. Since Appellants’ arguments
with respect to this rejection have treated these claims as a single group
which stand or fall together, we select independent claim 9 as the
representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).
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Appellants contend that Graf and Engelmann neither disclose nor
suggest a method including “retrieving a text portion of a document and
document type information for said document and associated document
registration information from storage: . . . and automatically processing
said document text portion to align with said selected image overlay in
response to said document type information to produce data representing an
aligned text image using said text registration information associated with
said document type,” as claimed (App. Br. 20).
Appellants note that the Specification supports the use of a plurality of
document types and what is meant by “registration information,” as follows:
The type of a document determines the template that will be
used when displaying the document (if any) and the registration
of the text. Registration defines the font used for the text, as
well as the character size and position.

(Spec. 8).
Appellants contend that Graf does not teach a plurality of document
types; therefore, Appellants conclude that Graf neither discloses nor
suggests text registration information associated with a plurality of different
document types, as claimed (App. Br. 21).
The Examiner disagrees. The Examiner restates that Graf teaches
various types of documents (Ans. 31). The Examiner further contends that
Graf’s system is not one dimensional, only working with one type of
document. The Examiner points to Graf at column 6, lines 45-54 and
column 12, lines 37-44. The Examiner notes that Graf expressly teaches that
“other documents could include a different type of document identifier” (see
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col. 12, ll. 40-44) (Ans. 31). The Examiner again points to Appellants’
admission that MICR information “is used to associate the dynamic portion
of the document with the static portion of the document” (see App. Br. 17,
¶1). The Examiner contends that this shows an association between two
documents with respect to how they should overlap one another (i.e.,
alignment), as previously argued by the Examiner (Ans. 32).
We have fully addressed the issues of alignment and “text registration
information” with respect to claim 2, supra. Thus, we find Appellants’
arguments unavailing regarding representative claim 9. We conclude that
Appellants have not shown that the Examiner has erred in rejecting
dependent claim 9 as being unpatentable over Graf in view of Engelmann.
Accordingly, we sustain the Examiner's rejection of claim 9 and associated
dependent claim 10 (which falls therewith) as being unpatentable over Graf
in view of Engelmann.
Claims 11-13
We consider the Examiner’s rejection of claims 11-13 as being
unpatentable over Graf in view of Engelmann. Since Appellants’ arguments
with respect to this rejection have treated these claims as a single group
which stand or fall together, we select independent claim 11 as the
representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).
Appellants restate their argument that Graf does not disclose or
suggest “a source of a plurality of template image overlays of a plurality of
corresponding different documents types,” as claimed [emphasis in original]
(App. Br. 24).
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In response, we have found supra that Graf teaches and/or suggests “a
source of a plurality of template image overlays of a plurality of
corresponding different document types,” as claimed (see discussion of
claim 1).
Appellants further contend that neither Graf nor Engelmann teaches or
suggests “a source of annotations separate from document text and image
overlays,” as claimed (App. Br. 27).
Regarding the claimed “source of annotations,” the Examiner
contends that Graf teaches separation of storage for base documents and
overlays/annotations, at column 6, lines 22 through column 7, line 16
(Ans. 34).
We agree with the Examiner that the claimed “source of annotations
separate from document text and image overlays” broadly but reasonably
encompasses Graf’s alternative embodiment where the name and address
field (i.e., an annotation to the check form) is segmented from the rest of the
original image (check form), as follows:
Alternatively, the name and address field may be segmented
from the rest of the original image, converted to ASCII code
using standard printed-character recognition techniques, stored
in database 45 by a document identifier such as the issuing bank
MICR code, and subsequently printed over each of the forms on
statement 55.

(Graf, col. 6, ll. 30-35).

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Lastly, Appellants contend that neither Graf nor Engelmann teaches or
suggests the document and display processors, as claimed (App. Br. 27).
In response, we have fully addressed supra the issues of the document
and display processors (see discussion of claim 1). Thus, we find
Appellants’ arguments unavailing regarding representative claim 11. We
conclude that Appellants have not shown that the Examiner has erred in
rejecting claim 11 as being unpatentable over Graf in view of Engelmann.
Accordingly, we sustain the Examiner's rejection of representative claim 11
and associated dependent claims 12 and 13 (which fall therewith) as being
unpatentable over Graf in view of Engelmann.

Claims 14-17 and 19
We consider the Examiner’s rejection of claims 14-17 and 19 as being
unpatentable over Graf in view of Engelmann. Since Appellants’ arguments
with respect to this rejection have treated these claims as a single group
which stand or fall together, we select independent claim 14 as the
representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).
Appellants restate their argument that Graf does not teach “a source of
a plurality of template images overlays of a plurality of corresponding
different document types,” as claimed (App. Br. 28).
In response, we have found supra that Graf teaches and/or suggests “a
source of a plurality of template image overlays of a plurality of
corresponding different document types,” as claimed (see discussion of
claim 1).
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Appellants acknowledge that “MICR information, as taught in Graf, is
utilized for purposes of alignment . . .” (i.e., to associated the dynamic
portion of the document with the static portion of the document), albeit in a
different context (App. Br. 29, ¶). Nevertheless, Appellants contend that
“alignment,” in the context of the instant invention, and as recited in
independent claim 14, refers to a physical process of alignment, i.e.,
adjusting the registration so that text aligns correctly with the underlying
template (App. Br. 30).
We have fully addressed the issue of “alignment” with respect to
claim 2, supra. Moreover, we find Appellants’ allegation of Examiner error
(regarding the issue of “alignment”) is vitiated by Appellants’ own
admission that “MICR information, as taught in Graf, is utilized for purposes
of alignment . . .” (see App. Br. 29, ¶2).
Therefore, we conclude that Appellants have not shown that the
Examiner has erred in rejecting claim 14 as being unpatentable over Graf in
view of Engelmann. Accordingly, we sustain the Examiner's rejection of
representative claim 14 and associated dependent claims 15-17 and 19
(which fall therewith) as being unpatentable over Graf in view of
Engelmann.

Claim 18
We consider the Examiner’s rejection of claim 18 as being
unpatentable over Graf in view of Engelmann.
Appellants aver that column 6, lines 39-45 of Graf merely describes
including reconstructed images of a plurality of cancelled or processed
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checks on customer statements (App. Br. 32). Thus, Appellants conclude
that Graf and Engelmann neither disclose nor suggest a system in which an
“object processor is further programmed for one or more functions selected
from the group consisting of zooming of a document, rotating of a
document, reading text files that have been compressed using the GZIP
algorithm, progressive loading of text documents; searching said portion of
text of a particular document, copying said portion of text of a particular
document, printing said portion of text of a particular document, and printing
said information for text of a particular document,” as claimed (App. Br.
32).
To the contrary, we find Graf’s express teaching of printing portions
of text and information associated with a particular check document squarely
meets the language of dependent claim 18, as follows:

The cancelled checks are reconstructed by printing, utilizing a printer
38, an appropriate static image, or check form, retrieved from
database 45, on the statement 55. The check forms in database 45 are
identified by a stored MICR line, and therefore each printed form will
include the MICR line and check number for one of the checks
processed during the statement period. The printed form may also
include, as noted above, the account name and address. Alternatively,
the name and address field may be segmented from the rest of the
original image, converted to ASCII code using standard printed-
character recognition techniques, stored in database 45 by a document
identifier such as the issuing bank MICR code, and subsequently
printed over each of the forms on statement 55. The MICR code, or
more particularly the check numbers, may be used to identify which
checks have been processed for a given account during the period, and
the dynamic images therefore may be stored in database 50 by check
and account number. The handwritten portion of each of the
processed checks is then printed by the printer 38 over the
Appeal 2007-3923
Application 10/237,487

23
appropriate check form on the statement 55, as identified by check
number. The customer statement 55 may thus include reconstructed
images 57 of a plurality of cancelled or otherwise processed checks
[emphasis added].

(Graf, col. 6, ll. 22-44).
Therefore, we conclude that Appellants have not shown that the
Examiner has erred in rejecting dependent claim 18 as being unpatentable
over Graf in view of Engelmann. Accordingly, we sustain the Examiner's
rejection of claim 18 as being unpatentable over Graf in view of Engelmann.

Claims 20-25
We consider the Examiner’s rejection of claims 20-25 as being
unpatentable over Graf in view of Engelmann. Since Appellants’ arguments
with respect to this rejection have treated these claims as a single group
which stand or fall together, we select independent claim 20 as the
representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).
Appellants restate their previous argument that neither Graf nor
Engelmann teaches or suggests “storing a plurality of template image
overlays of a plurality of corresponding different document types.”
In response, we have found supra that Graf teaches and/or suggests “a
source of a plurality of template image overlays of a plurality of
corresponding different document types,” as claimed (see discussion of
claim 1).
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Application 10/237,487

24
Appellants further contend that neither Graf nor Engelmann teaches or
suggests “retrieving at least a portion of text of a particular document [from]
said document imaging system; rendering said portion of text for viewing on
a user interface by processing said document text portion to align with an
image overlay selected from said plurality of template image overlays in
response to document type information of said particular document; and
receiving and storing said document text portion aligned with said image
overlay in response to user command,” as claimed (App. Br.
32-33). Appellants further essentially restate arguments made previously
regarding independent claims 1 and 11 that we have addressed above (see
App. Br. 33-36). Moreover, we find Graf clearly teaches retrieving at least a
portion of text of a particular document from said document imaging system,
as shown in Figure 1.
We have fully addressed the issue of “alignment,” supra. Regarding
the limitations that the Examiner has found taught by Engelmann (i.e., a user
interface and associated user commands), we find Appellants’ arguments are
essentially directed to the teachings of Graf rather than to the combination of
Graf and Engelmann considered as a whole. See In re Merck & Co., 800
F.2d at 1097.
For at least the aforementioned reasons, we conclude that Appellants
have not shown that the Examiner has erred in rejecting claim 20 as being
unpatentable over Graf in view of Engelmann. Accordingly, we sustain the
Examiner's rejection of representative claim 20 and associated dependent
claims 21-25 (which fall therewith) as being unpatentable over Graf in view
of Engelmann.
Appeal 2007-3923
Application 10/237,487

25
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown the Examiner erred in rejecting claims 1-25
under 35 U.S.C. § 103(a) for obviousness.

DECISION
We affirm the Examiner’s decision rejecting claims 1-25.
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

pgc

Siemens Corporation
Intellectual Property Department
186 Wood Avenue South
Iselin NJ 08830