Ex Parte Monro

Patent Trial and Appeal Board

Apr 23, 2013

11332777 (P.T.A.B. Apr. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/332,777 01/13/2006 Donald Martin Monro 2222.5100000 4340
26111 7590 04/24/2013
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
WILLIAMS, HOWARD L
ART UNIT PAPER NUMBER
2819
MAIL DATE DELIVERY MODE
04/24/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONALD MARTIN MONRO
____________________

Appeal 2010-011649
Application 11/332,777
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE and
JUSTIN BUSCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011649
Application 11/332,777

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 16-52. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 16 and 17 under appeal read as follows (emphasis
added):
16. A method for determining whether portions of text have
been copied during electronic copying, photocopying, or scanning of a
document, comprising:
generating, using a processing device, a target code from a
target passage of the text;
determining, using the processing device, whether a sample
passage of text includes the target code; and
upon successful determination, initiating, using the processing
device, an action if the sample passage of text includes the target
code.

17. The method of claim 16, wherein the generating a target
code comprises:
identifying, using the processing device, a key symbol string
from the target passage of the text;
identifying, using the processing device, positions at which the
key symbol string occurs within the target passage of the text;
determining, using the processing device, distances between
respective adjacent positions of the key symbol string within the target
passage of the text; and
generating, using the processing device, the target code based
on the key symbol string and the distances.

Appeal 2010-011649
Application 11/332,777

3
Rejections on Appeal
1. The Examiner rejected claims 16-45 and 47-52 under
35 U.S.C. § 102(b) as being anticipated by Evans (US 6,029,167, Feb. 22,
2000).
1

2. The Examiner rejected dependent claim 46 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Evans and
Barr (US 5,873,076, Feb. 16, 1999).
2

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim
16 because “[t]he Examiner has improperly stated through the prosecution
that a single feature in Evans, ‘display of results,’ allegedly anticipates two
recited features, ‘successful determination’ and ‘initiating an action.’” (App.
Br. 16).
Further, Appellant contends that the Examiner erred because “Evans
does not teach the recited ‘initiating an action’ feature.” (App. Br. 16).
Lastly, Appellant contends that the Examiner erred because:
Evans discloses a three-part determination process in which all
three steps are required for the determination, such that no
action is initiated after the determination. The three-step
required Evans process includes: (1) determining a "possible
match"; (2) determining a "probable match"; and (3) displaying
of results "for further review." Evans, Abstract. Because that
third step is required for the Evans process to result in the

1
Separate patentability is not argued for claims 18-45 and 47-52. Except for
our ultimate decision, claims 18-45 and 47-52 are not discussed further
herein.
2
Separate patentability is not argued for claim 46. Rather, this rejection
turns on our decision as to the underlying § 102 rejection, and is not further
addressed herein.
Appeal 2010-011649
Application 11/332,777

4
claimed determination, the third step is ineligible to also
correspond to the claimed "initiating an action." Nothing is
done after the required three steps are performed, so nothing is
"initiated" by the Evans process.
(Reply Br. 2).
2. Appellant contends that the Examiner erred in rejecting claim
17 because:
Appellant notes that nowhere in the Evans' specification, either
in the example cited by the Examiner or elsewhere, is there a
disclosure of the recited distances (plural). In each and every
case, Evans discloses either a single distance, or no distance at
all.
(App. Br. 19).
Further, Appellant contends that the Examiner erred because:
[N]owhere in the Examiner's Answer, or previously anywhere
in prosecution, does the Examiner point to a specific disclosure
where such instances of "distances" (plural) are taught or
suggested by Evans. In fact, such a citation from Evans cannot
be provided since none of Evans' examples indicate multiple
distances between the key symbol strings. In particular, every
single example in column 10 of Evans shows that each distance
exists in isolation, i.e., as a single distance.
(Reply Br. 4).

Issue on Appeal
Did the Examiner err in rejecting claim 16 because Evans fails to
describe “initiating an action” as claimed?
Did the Examiner err in rejecting claim 17 because Evans fails to
describe “distances” as claimed?

Appeal 2010-011649
Application 11/332,777

5
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contention (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s conclusion.
Except as noted below, we adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. Except as noted below, we
concur with the findings of the Examiner.
As to Appellant’s above contention 2, we disagree with the
Examiner’s analysis only in that the phrase “is seen as similar to”
(Ans. 7:17) should read “is the same as” given the teachings of Evans
cited by the Examiner.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 16-45 and 47-52
as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claim 46 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 16-52 are not patentable.
Appeal 2010-011649
Application 11/332,777

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DECISION
The Examiner’s rejections of claims 16-52 are 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

ELD