Ex parte OHTA

Board of Patent Appeals and Interferences

May 8, 2000

08507194 (B.P.A.I. May. 8, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JUNICHI OHTA
____________
Appeal No. 1998-0669
Application No. 08/507,194
____________
HEARD: April 17, 2000
____________
Before THOMAS, JERRY SMITH, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-29. We reverse.
Appeal No. 1998-0669 Page 2
Application No. 08/507,194
BACKGROUND
The invention at issue in this appeal relates to optical
character recognition (OCR) of an image of a document.
Although OCR software can differentiate areas of a document as
containing character data, figure data, and table data, the
software stores the different types of recognized data in a
single file. Storage in the same file impedes the use of the
different software needed to process each type of data.
Furthermore, articles from a newspaper or magazine often
comprise blocks of data extending over multiple columns and
having a complex shape. Storing optically recognized data in
such a format wastes space.
The invention at issue recognizes character data, figure
data, and table data in an image of a document and stores the
recognized data in separate files. Such a storage arrangement
simplifies retrieval of the data by different types of
software. The invention also rearranges data recognized from
an image of a document into a simpler shape, thereby
conserving storage space.
Appeal No. 1998-0669 Page 3
Application No. 08/507,194
Claims 1 and 13, which are representative for our
purposes, follow:
1. A computer implemented method of processing
a document, comprising the steps of:
inputting an image of the document, the image
including character images and at least one figure;
dividing the image of the document into
different areas including at least one character
area containing the character images and at least
one figure area containing the at least one figure;
processing the at least one character area to
obtain character codes representing the character
images;
writing the character codes representing the
character images into a first file; and
writing the at least one figure into a second
file which is different from the first file.
13. A computer implemented method of processing
a document, comprising the steps of:
inputting an image of the document including a
plurality of columns;
recognizing, using image processing, empty space
next to one of said columns; and
moving a portion of another of said columns to
said empty space which was recognized using image
processing.
The reference relied on in rejecting the claims follows:
Watanabe et al. 5,018,083 May 21, 1991.
Appeal No. 1998-0669 Page 4
Application No. 08/507,194
We rely on and refer to the amended appeal brief, (Paper1
No. 11), in lieu of the original appeal brief, (Paper No. 8),
because the latter was defective. (Paper No. 10.)
Claims 1-29 stand rejected under 35 U.S.C. § 103 as
obvious over Watanabe. Rather than repeat the arguments of
the appellant or examiner in toto, we refer the reader to the
briefs and answers for the respective details thereof.1
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellant and examiner. After considering
the totality of the record, we are persuaded that the examiner
erred in rejecting claims 1-29. Accordingly, we reverse.
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. § 103, the
examiner bears the initial burden of presenting a
Appeal No. 1998-0669 Page 5
Application No. 08/507,194
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Only if that burden is met, does the burden
of coming forward with evidence or argument shift to
the applicant. Id. "A prima facie case of
obviousness is established when the teachings from
the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).

With these in mind, we address the following issues:
• obviousness of claims 1-12 and 15-27
• obviousness of claims 13, 14, 28, and 29.
Obviousness of Claims 1-12 and 15-27
Regarding claims 1-12 and 15-27, the appellant argues,
“the dividing step of the image of the document is not
disclosed or suggested by Watanabe et al.” (Reply Br. at 4.)
He adds, “as Watanabe et al do not indicate whether the
insertion, deletion, replacement, etc. operates on character
codes or character images which have been input, it is
improper to jump to the conclusion that the editing means
operates on character images which have been input.” (Id. at
Appeal No. 1998-0669 Page 6
Application No. 08/507,194
3.) The examiner replies, “Cutting/ replacing/moving both
information data [sic] refers to dividing the image of the
document into different areas including at least one character
area containing the character images and at least one figure
area containing the at least one figure, as seen in figures
21C and 23.” (Examiner’s Answer at 5.)
Claims 1-12 each specify in pertinent part the following
limitations:
inputting an image of the document, the image
including character images and at least one figure;
dividing the image of the document into
different areas including at least one character
area containing the character images and at least
one figure area containing the at least one figure
....
Similarly, claim 15 specifies in pertinent part the following
limitations:
means for inputting an image of the document,
the image including character images and at least
one figure;
means for dividing the image of the document
into different areas including at least one
character area containing the character images and
at least one figure area containing the at least one
figure ....
Appeal No. 1998-0669 Page 7
Application No. 08/507,194
Also similarly, claims 16-27 each specify in pertinent part
the following limitations:
An apparatus for processing an image of a
document including character images and at least one
figure, comprising:
means for dividing the image of the document
into different areas including at least one
character area containing the character images and
at least one figure area containing the at least one
figure ....
In summary, claims 1-12 and 15-27 each recite dividing the
image of a document into different areas.
The examiner fails to show a teaching or suggestion of
the claimed limitation in the prior art. “A rejection based
on section 103 clearly must rest on a factual basis ....” In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not ... resort to
speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis.” Id., 154 USPQ
at 178.
Appeal No. 1998-0669 Page 8
Application No. 08/507,194
Here, the figures cited by the examiner are ambiguous at
best. Figure 21C of Watanabe shows a display of a document
“to which line counters were added.” Col. 15, ll. 53-54. The
examiner does not allege, let alone show, that the document
was generated by dividing an image into different areas.
Figure 23 of the reference “shows an example of display
on the CRT 38 in the case where the cutting and inserting
function was executed.” Col. 17, ll. 24-26. By itself, the
figure possibly could be interpreted as teaching the cutting
and pasting of an image of a document. The examiner, however,
has not shown any evidence to support such an interpretation.
To the contrary, he does not deny the appellant’s assertion
that “known word processing programs have their cut and paste
operations operate
on characters which are represented by character codes, not
images.” (Reply Br. at 3.) Accordingly, it is possible, if
not probable, that Watanabe’s cutting and inserting function
also operates on character codes rather than on an image.
Appeal No. 1998-0669 Page 9
Application No. 08/507,194
In view of the ambiguity of the reference’s disclosure
and the operation of known word processing programs, we are
not persuaded that teachings from the prior art would appear
to have suggested the claimed limitation of dividing the image
of a document into different areas. The examiner’s
interpretation amounts to speculation or an unfounded
assumption; he has not established a prima facie case of
obviousness. Therefore, we reverse the rejections of claims
1-12 and 15-27 under 35 U.S.C. § 103. We next address the
obviousness of claims 13, 14, 28, and 29.
Obviousness of Claims 13, 14, 28, and 29
Regarding claims 13, 14, 28, and 29, the appellant
argues, “Watanabe et al clearly does not disclose nor [sic]
suggest the inputting of an image of the document including a
plurality of columns and recognizing empty space next to one
of said columns.”
(Reply Br. at 6.) The examiner replies, “The reference also
teaches ‘the column alignment means that the bottom columns
are aligned in the column work’ (column 9, lines 25-28).”
(Examiner’s Answer at 7-8).
Appeal No. 1998-0669 Page 10
Application No. 08/507,194
Claims 13 and 14 each specify in pertinent part the
following limitations: “inputting an image of the document
including a plurality of columns; recognizing, using image
processing, empty space next to one of said columns ....”
Similarly, claims 28 and 29 each specify in pertinent part the
following limitations: “apparatus for processing an image of a
document including a plurality of columns, comprising: means
for recognizing, using image processing, empty space next to
one of said columns ....” In summary, claims 13, 14, 28, and
29 each recite using image processing to recognize empty space
next to a column in an image of a document.
The examiner fails to show a teaching or suggestion of
the claimed limitation. Here, the passage of Watanabe on
which the examiner relies does teach column alignment. He
does not allege, let alone show, however, that the column
alignment uses image
processing. It is possible, if not probable, that the
reference’s column alignment operates on character codes
rather than on an image.

Appeal No. 1998-0669 Page 11
Application No. 08/507,194
In view of the ambiguity of the reference’s disclosure
and the operation of known word processing programs, we are
not persuaded that teachings from the prior art would appear
to have suggested the claimed limitation of using image
processing to recognize empty space next to a column in an
image of a document. The examiner’s interpretation amounts to
speculation or an unfounded assumption; he has not established
a prima facie case of obviousness. Therefore, we reverse the
rejections of claims 13, 14, 28, and 29 under 35 U.S.C. § 103.
CONCLUSION
Appeal No. 1998-0669 Page 12
Application No. 08/507,194
To summarize, the rejection of claims 1-29 under 35
U.S.C. § 103 is reversed.

REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1998-0669 Page 13
Application No. 08/507,194
LLB/kis
OBLON, SPIVAK, MCCLELLAND
MAIER & NEUSTADT
1755 JEFFERSON DAVIS HIGHWAY
FOURTH FLOOR
ARLINGTON, VA 22202