Ex Parte Martin et alDownload PDFPatent Trial and Appeal BoardMay 13, 201612813584 (P.T.A.B. May. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/813,584 06/11/2010 75931 7590 Basch & Nickerson LLP 1751 Penfield Road Penfield, NY 14526 05/17/2016 FIRST NAMED INVENTOR Nathaniel G. Martin 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 20082039-US-NP 7290 EXAMINER NGUYEN, ANH-VINH THI ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 05/1712016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): usptomail@bnpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NATHANIEL G. MARTIN and PAUL R. AUSTIN Appeal2014-006047 Application 12/813 ,5 84 Technology Center 2600 Before JOHNNY A. KUMAR, MELISSA A. RAAP ALA, and KAMRAN JIV ANI, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2014-006047 Application 12/813 ,5 84 INVENTION The invention is directed to extracting identification information associated with a collection of papers being processed for transfer to an electronic system. (Spec. i-f 11.) Claim 8 is most closely illustrative of the limitations contested by Appellant in the independent claims and is reproduced below with the contested limitations emphasized: 8. A system for extracting identification information from a container, the container containing a plurality of documents comprising: a scanner, the scanner generating a color digital image of objects placed on its input platen; and a processor, operatively connected to said scanner, to receive the color digital image of a document container, the document container including a label and image data, the label including a set of alphanumeric characters and color, the set of alphanumeric data and the color encoding identification information associated with the documents contained in the container; said processor extracting from the color digital image a portion of the image that contains the image of the label; said processor analyzing the color of the image of the label to identifY the color of the image of the label; said processor converting the identified color into an equivalent alphanumeric form; said processor comparing the equivalent alphanumeric form of the converted identified color to the extracted alphanumeric data; said processor verifying that the equivalent alphanumeric form of the converted identified color and the extracted alphanumeric data are the same; said processor identifying, based upon the equivalent alphanumeric form of the converted identified color and the extracted alphanumeric data, index information for the container when the equivalent alphanumeric form of the converted identified color and the extracted alphanumeric data are the same; 2 Appeal2014-006047 Application 12/813 ,5 84 said processor labeling the image data in accordance with the index information for the container; said processor causing the labeled image data to be stored in a data storage device at a location associated with the index information for the container. REFERENCES Barber us 4,204,639 May 27, 1980 Grady US 2004/0002387 Al Jan. 1, 2004 Patterson US 2004/0162831 Al Aug. 19, 2004 Schuetze US 6,941,321 B2 Sept. 6, 2005 REJECTIONS AT ISSUE Claims 1--4, 6-11, and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Barber, Patterson, and Grady. (See Ans. 2, 5, 9, and 20.) Claims 5 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Barber, Patterson, Grady, and Schuetze. (Ans. 6.) ANALYSIS 1 Claim 1 Issue 1 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests "scanning, 1 We note that in the Answer, the Examiner cited to Grady for the first time (See Ans. 5, 6, 9, and 20). Appellants have not disputed the Examiner's citation of Grady and instead have responded to the Examiner's arguments regarding Grady. (See Reply Br. 6.) Accordingly, we have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(vii). 3 Appeal2014-006047 Application 12/813 ,5 84 using a scanner, a portion of the container to generate an electronic image thereof" as recited in claim 1? Claim 1 recites "scanning, using a scanner, a portion of the container to generate an electronic image thereof." Appellants argue that the cited prior art fails to teach generating a color digital image of the objects placed on its input platen, or generating any color digital image. (App. Br. 7.) The Examiner finds, and we agree, that the argued limitations are not in claim 1. (Ans. 8.) Claim 1 does not recite a color image. The Examiner finds, and we agree, that Grady teaches a scanner 50 for scanning color images and converting them to color digital images. (Ans. 9.) Appellants do not dispute that Grady teaches scanning to generate a color image. (See Reply Br. 6.) We further agree with the Examiner that Barber teaches a scanner that generates an electronic image. (See Ans. 9). For the above reasons we are unpersuaded that the Examiner erred in finding the combination of Barber, Patterson, and Grady teaches "scanning, using a scanner, a portion of the container to generate an electronic image thereof' as recited in claim 1. Issue 2 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests "electronically analyzing individual colors and individual characters within a predetermined area of the electronic image to identifY the individual colors within the analyzed predetermined area of the electronic image and to identifY the individual characters within the analyzed predetermined area of the electronic image" as recited in claim 1? Claim 1 recites "electronically analyzing individual colors and individual characters within a predetermined area of the electronic image to 4 Appeal2014-006047 Application 12/813 ,5 84 identify the individual colors within the analyzed predetermined area of the electronic image and to identify the individual characters within the analyzed predetermined area of the electronic image." Appellants argue Barber "fails to teach or suggest electronically analyzing individual colors to identify the individual colors within the analyzed predetermined area of the electronic image, as set forth by independent claim 1." (Reply Br. 6-7; App. Br. 8-9.) Specifically, Appellants argue Barber teaches "that the color is identified by either an observer seeing the colored label or an analysis of the OCR marking (character)." (App. Br. 10; Reply Br. 8 (citing Barber col. 4:36-45).) Appellants argue in Barber "the color is identified by an analysis of the indicia (optical character recognition), not by an analysis of the color and the indicia, as claimed." (App. Br. 10; Reply Br. 8.) The Examiner finds Barber teaches "[e]ach of the above labels would also include an OCR marking, representative of its respective numeral and colour." (Ans. 11 (emphasis omitted); Barber col. 4:37--40.) We agree with the Examiner that analyzing the OCR marking to determine the numeral (character) and color is identifying the individual characters and individual colors as claimed. (See Ans. 13.) We further find that determining the representative color from the OCR marking is within the scope of an analysis of the respective color of the label. Furthermore, analyzing the OCR markings to determine the individual characters and individual color is analyzing the colors and characters. In other words, analyzing the OCR markings is a subset of the claimed "electronically analyzing individual colors and individual characters" and the narrower analyzing characters reads on the more broadly claimed analyzing colors and characters. A 5 Appeal2014-006047 Application 12/813 ,5 84 species will anticipate a genus. See Jn re Slayter, 276 F.2d 408, 411 (CCPA 1960). The Examiner finds that Grady teaches a scanner 50 for scanning color images and converting them to color digital images. (Ans. 9.) Appellants do not dispute that Grady teaches scanning to generate a color image. (See Reply Br. 6.) Thus, scanning to generate a color image is within the scope of analyzing the individual colors to identify the individual colors within the predetermined area. For the above reasons we sustain the Examiner's obviousness rejection of claim 1. Claims 2 and 9 Issue 3 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests ''providing a template that defines the predetermined area of the electronic image that contains the individual colors and individual characters to be analyzed" as recited in claim 2 and similarly in claim 9? Appellants argue Barber "fails to teach or suggest providing a template that defines the predetermined area of the electronic image that contains the individual colors and individual characters to be analyzed" as recited in claim 2. (App. Br. 11-12; Reply Br. 10-11.) Appellants argue similarly regarding claim 9. (App. Br. 19-20; Reply Br. 21-22.) The Examiner finds Barber figure 1 and column 3 lines 21-55 teach an area 15 for the OCR marking with defining of the size, e.g., height and width, in each label. (Ans. 13.) Barber at column 3 lines 25-31 teaches: [T]he overall height of each label is approximately 15/16 of an inch. [Each label] is roughly 1 ~inches in length and divided into 8 6 Appeal2014-006047 Application 12/813 ,5 84 sections of 2 of an inch, 2 of an inch, and ~ of an inch .... [T]he 8 8 8 OCR marking appears on the 2 [inch] non-coloured portion of 8 the label. Therefore, we agree with the Examiner that Barber teaches an area 15 for OCR markings of defined size and dimension. (See Ans. 13.) Appellants argue that while Barber does teach an area for the OCR marking, the OCR marking area does not include the individual colors and individual characters to be analyzed. (Reply Br. 10 and 21.) We find this argument unpersuasive because the clearly articulated dimensions of the label and OCR marking area is a clear definition of an area containing the colors, characters, and OCR markings to be analyzed. (See Barber col. 3:25-31; Ans. 13.) Accordingly, we sustain the Examiner's rejection of claims 2 and 9. Claims 3 and 10 Issue 4 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests "wherein each character on the container is surrounded by a specific color such that the identity of the character can be electronically verified by electronically comparing the identity of the character with the identity of the surrounding color, " as recited in claim 3 and similarly in claim 1 O? Appellants argue Barber "fails to teach or suggest the electronic comparison of the identity of the character with the identity of the surrounding color to verify the identity of the character." (App. Br. 12; Reply Br. 11.) This argument is not commensurate in scope with the claim language. 7 Appeal2014-006047 Application 12/813 ,5 84 Claim 3 recites and claimlO similarly recites "wherein each character on the container is surrounded by a specific color such that the identity of the character can be electronically verified by electronically comparing the identity of the character with the identity of the surrounding color" (emphasis added). The electronic verification by comparing the character with the surrounding color is merely an intended function of the characters surrounded by a specific color. Claim 3 does not specify how the comparison would be performed but merely requires that "the character can be electronically verified." Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See In re Translogic Technology, Inc., 504 F.3d 1249, 1258 (Fed. Cir. 2007); see also MPEP § 2114(IV). Thus, the container must merely be capable of being analyzed as claimed; and any container where each character on the container is surrounded by a specific color is capable of being analyzed in this manner. The Examiner finds Barber's abstract teaches "labels are color-coded and each label bears to one side of its colored field a machine readable marking with a pair of visual readable indicium in the colored field. Each label is identifiable by color." (Ans. 14.) Appellants admit Barber "teaches that the indicia 9 are surrounded by the color 5 of the label." (Reply Br. 13.) Thus, we agree with the Examiner that the indicium surrounded by its respective colored field are within the scope of characters surrounded by a specific color as recited in claim 3. Furthermore, a claimed invention is not patentable if it merely automates a prior art process. Broadly providing an automatic way to replace a manual activity accomplishing the same result is not sufficient to 8 Appeal2014-006047 Application 12/813 ,5 84 distinguish an automated process over the prior art. Jn re Venner, 262 F.2d 91, 95 (CCPA 1958); Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) ("Applying modem electronics to older mechanical devices has been commonplace in recent years."). An improved product in the art is obvious if that "product [is] not [one] of innovation but of ordinary skill and common sense." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Electronically verifying by electronic comparison of the character with the surrounding color is merely the electronic automation of a previously manual activity to accomplish the same result. The Examiner finds Barber's abstract teaches "[e]ach label is identifiable by color." (Ans. 14.) Barber column 5 lines 9-11 teaches "the colour pattern or combination of colours differs from file to file, so that each and every file is discernable from all other files in the system." (emphasis added.) Therefore, Barber clearly teaches humans manually recognizing labels identifiable by color. The Examiner finds Barber column 2 lines 23-24 teaches "the article can then be identified electronically by its machine readable markings." (Ans. 15.) Therefore, Barber clearly teaches scanning the label. The Examiner finds that Grady teaches a scanner 50 for scanning color images and converting them to color digital images. (Ans. 9.) Therefore, Grady clearly teaches that computers are capable of electronically determining color. (See Id.) Thus, the electronic comparison of the character with the surrounding color is merely the electronic automation of the previously manual activity of discerning color patterned labels. For the above reasons we sustain the Examiner's obviousness rejection of claims 3 and 10. 9 Appeal2014-006047 Application 12/813 ,5 84 Claim 4 and 11 Issue 5 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests "wherein each character on the container is printed by a specific color such that the identity of the character can be electronically verified by electronically comparing the identity of the character with the identity of the color used to print the character" as recited in claim 4 and similarly in claim 11? Appellants argue Barber fails to teach the electronic comparison of the identity of the character with the identity of the color used to print the character to verify the identity of the character. (App. Br. 14 and 22; Reply Br. 13-14 and 24--25.) This argument is not commensurate in scope with the claim language. Claim 4 recites, and claim 11 similarly recites, "wherein each character on the container is printed by a specific color such that the identity of the character can be electronically verified by electronically comparing the identity of the character with the identity of the color used to print the character" (emphasis added). The electronic verification by comparing the character with the color is merely an intended function of the characters printed color. Claim 4 does not specify how the comparison would be performed but merely requires that "the character can be electronically verified." Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See In re Translogic Technology, Inc., 504 F.3d 1249, 1258 (Fed. Cir. 2007); see also MPEP § 2114(IV). Thus, the container must merely be capable of being analyzed as claimed; and any container where each 10 Appeal2014-006047 Application 12/813 ,5 84 character the container is printed by a specific color is capable of being analyzed in this manner. The Examiner finds MICR (magnetic ink character recognition) is considered having a specific color. (Ans. 16.) Appellants argue MICR is an ink or toner with specific magnetic properties and MICR has nothing to do with color. (Reply Br. 13.) As a specific ink or toner we agree with the Examiner that MICR will have a specific color, but we note that this color does not correspond with the numeral identification taught by Barber. (See Barber col. 4:25-35.) However, the Examiner finds Barber column 8 teaches the digits (numerals) should be color identified. (Ans. 16.) Appellants admit Barber "teaches that the indicia 9 are surrounded by the color 5 of the label." (Reply Br. 13.) The difference between this teaching of Barber and claims 4 and 11 is that Barber teaches the indicia is surrounded by the color, while with claims 4 and 11 the numeral itself is printed with the color. This difference is obvious as a matter of aesthetic design choice as discussed infra. The Examiner finds characters printed in color is a known technique at the time the invention is made. (Ans. 16.) The Examiner finds "the machine printed color-code markings can use the above known techniques to print characters or bar codes having a specific color for color identification." (Id.) Appellants argue that in so finding the Examiner has mischaracterized the teachings of Barber. (Reply Br. 13.) We are unpersuaded that the Examiner has erred because the Examiner hasn't asserted that Barber explicitly teaches printing characters having a specific color but has instead asserted the obviousness of using known techniques to implement obvious variations. (See Ans. 16.) Appellants do not dispute that printing characters 11 Appeal2014-006047 Application 12/813 ,5 84 having specific colors is within the prior art. Nor does Appellants dispute the Examiner's finding that Barber teaches each label is identifiable by color. (See Ans. 14.) Appellants instead argue that it is "unsupported extrapolation" to combine the known techniques for printing characters in color and Barber's teaching of each label being identifiable by color. (Reply Br. 14.) It is well established that merely aesthetic or ornamental design changes fail to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229 (CCPA 1947). It is an aesthetic design choice to print the characters in color, rather than printing the surrounding in the color of the label. This creates a predictable result of labels which are identifiable by color in a manner not distinctly different from the color identifiable labels taught by Barber. Furthermore, a claimed invention is not patentable if it merely automates a prior art process. Broadly providing an automatic way to replace a manual activity accomplishing the same result is not sufficient to distinguish an automated process over the prior art. In re Venner, 262 F.2d at 95; Leapfrog, 485 F.3d at 1161 ("Applying modem electronics to older mechanical devices has been commonplace in recent years."). An improved product in the art is obvious if that "product [is] not [one] of innovation but of ordinary skill and common sense." KSR, 550 U.S. at 421. Electronically verifying by electronic comparison of the character color is merely the electronic automation of a previously manual activity to accomplish the same result. The Examiner finds Barber abstract teaches "[e]ach label is identifiable by color." (Ans. 14.) Barber column 5 lines 9-11 teaches "the colour pattern or combination of colours differs from file 12 Appeal2014-006047 Application 12/813 ,5 84 to file, so that each and every jUe is discernable from all other JU es in the system" (emphasis added). Therefore, Barber clearly teaches humans manually recognizing labels identifiable by color. The Examiner finds Barber column 2 lines 23-24 teaches "the article can then be identified electronically by its machine readable markings." (Ans. 15.) Therefore, Barber clearly teaches scanning the label. The Examiner finds that Grady teaches a scanner 50 for scanning color images and converting them to color digital images. (Ans. 9.) Therefore, Grady clearly teaches that computers are capable of electronically determining color. (See Id.) Thus, the electronic comparison of the character with the character's color is merely the electronic automation of the previously manual activity of discerning color patterned labels. For the above reasons we sustain the Examiner's obviousness rejection of claims 4 and 11. Claim 7 Issue 6 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests "accepting input from a user interface that defines the location of the label containing the character data and the color data" as recited in claim 7? Appellants argue Barber fails to teach or suggest accepting input from a user interface that defines the location of the label containing the character data and the color data. (App. Br. 14; Reply Br. 15.) The Examiner finds Barber teaches additional markings to initiate and stop wand reading a file code where such additional markings are provided 13 Appeal2014-006047 Application 12/813 ,5 84 on a transparency which is positioned in the window. (Ans. 17; see also Barber col. 7:31-38.) We agree with the Examiner's findings. Appellants argue the start and stop codes do not identify the location of the label containing the character data and the color data. (Reply Br. 15.) However, we are unpersuaded that the user positioning of start and stop codes fails to identify a location. Furthermore, the OCR markings code data of the label. (See Barber col. 7:54--55.) Accordingly, we sustain the Examiner's rejection of claim 7. Claim 8 Issue 7 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests "the scanner generating a color digital image of objects placed on its input platen" as recited in claim 8? Appellants argue Barber fails to teach generating a color digital image. (App. Br. 16; Reply Br. 16-17.) The Examiner finds that Grady teaches a scanner 50 for scanning color images and converting them to color digital images. (Ans. 20.) Appellants do not dispute that Grady teaches scanning to generate a color image. (See Reply Br. 6.) For the above reasons we are unpersuaded that the Examiner erred in finding the combination of Barber, Patterson, and Grady teaches "the scanner generating a color digital image of objects placed on its input platen" as recited in claim 8. Issue 8 - Did the Examiner err in finding that the combination of Barber, Patterson, and Grady teaches or suggests "said processor analyzing the color of the image of the label to identifY the color of the image of the label" as recited in claim 8? 14 Appeal2014-006047 Application 12/813 ,5 84 Appellants argue Barber fails to teach electronically analyzing individual colors within a predetermined area of the electronic image. (App. Br. 16; Reply Br. 17.) Appellants argue Barber teaches that the numerals 9 are used for human recognition, not electronic analysis. (App. Br. 17; Reply Br. 18.) The Examiner finds, and we agree, Barber column 4 lines 16-21 teaches "[t]hese other labels would also be identifiable by their particular colours, by their visual numerals, and by their OCR markings." (Ans. 19.) The Examiner further finds, and we agree, that Grady teaches a scanner 50 for scanning color images and converting them to color digital images. (Ans. 20.) Appellants do not dispute that Grady teaches scanning to generate a color image. (See Reply Br. 6.) Scanning to generate a color image is within the scope of analyzing the individual colors to identify the individual colors within the predetermined area. For the above reasons we sustain the Examiner's obviousness rejection of claim 8. Claims 5, 6, 12, and 13 Appellants do not separately argue dependent claims 5, 6, 12, and 13. (See App. Br. 22-23; Reply Br. 26.) Accordingly, we summarily sustain the Examiner's rejection of dependent claims 5, 6, 12, and 13. DECISION The Examiner's decision to reject claims 1-13 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)(l )(iv). 15 Appeal2014-006047 Application 12/813 ,5 84 AFFIRMED 16 Copy with citationCopy as parenthetical citation