Ex Parte Pilu et al

Board of Patent Appeals and Interferences

Jun 30, 2010

10460675 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAURIZIO PILU,
STEPHEN BERNARD POLLARD,
and DAVID MARK FROHLICH
____________

Appeal 2009-005125
Application 10/460,675
Technology Center 2100
____________

Decided: June 30, 2010
____________

Before JOHN A. JEFFERY, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 6, 8-11, 13, 15-18, 20, and 33-40, which are all of
the remaining claims in this application. We have jurisdiction under 35
U.S.C. § 6(b).
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We affirm-in-part, and enter a new ground of rejection as permitted by
37 C.F.R. § 41.50(b).

Invention
Appellants’ invention relates to a printed document that is an interface
with a computer. A camera generates a video signal representing an image
of the printed document. A processor linked to the camera processes an
image of the printed document and processes a finger or pointing implement
pointing to a region of the printed document. The processor determines the
region on the page that is pointed to by the finger or pointing implement.
The processor also determines the identity of a user interface element that
corresponds to the region of the printed page. An operation represented by
that graphical user interface element is then triggered. Abstract.

Representative Claim
1. A method of processing information associated with
content on a document, the document also including at least one
graphical user interface element for controlling a function of a
processor, different graphical user interface elements being associated
with controlling different functions of the processor, the at least one of
the graphical user interface elements associated with controlling
different functions of the processor being printed on the document in
an area outside margins associated with the other content of the
document, the method comprising:
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converting an optical image of the document into a signal
representing the graphical user interface element and other content on
the document; and
processing at least some information associated with the other
content of the document as included in the signal based on a selected
graphical user interface element on the document, as included in the
signal, the processing being performed by the processor in response to
the signal;
the graphical user interface elements only in the portion of the
signal associated with regions outside the margin being processed.

Examiner’s Rejections
Claims 1-4, 6, 8-11, 13, 15-18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Reber (US 5,903,729) and Carro (US
6,771,283 B2).
Claims 33-40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reber, Carro, and Iida (US 5,950,213).

Grouping of Claims
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 2, 6, 9, 33, 34, and 35. See 37 C.F.R.
§ 41.37(c)(1)(vii).

PRINCIPAL ISSUES
(1) Have Appellants shown that the Examiner erred in finding that
the combination of Reber and Carro teaches “the graphical user interface
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elements only in the portion of the signal associated with regions outside the
margin being processed” as recited in claim 1?
(2) Have Appellants shown that the Examiner erred in finding that
the combination of Reber, Carro, and Iida teaches computing “a
transformation between viewed image coordinates and document page
coordinates” as recited in claim 35?
(3) Does the combination of Reber, Carro, and Iida teach “position
indicating visual indicia” as recited in claim 6?

FINDINGS OF FACT
Reber
1. Reber teaches a system and method of navigating an electronic
network. The method includes reading a list of at least one resource in an
electronic network, displaying at least a portion of the list, receiving a user-
initiated selection of a resource from the list, linking to the resource upon
receiving the user-initiated selection, and removing the resource from the
list. Abstract.
2. Figure 1 shows a block diagram of a system for linking to
resources in an electronic network 10. The system includes a network
navigation device 12 for navigating to the resources. The network navigation
device 12 comprises a substrate 14 such as paper, cardboard, or plastic. Col.
3, ll. 36-48.
3. The substrate includes data items 16 and 18 that can include an
electronic address to identify a corresponding resource such as a URL or IP
address. Col. 4, ll. 13-23.
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4. The substrate also includes images 26 and 28 that are indicative
of corresponding resources. Col. 5, ll. 7-38.
5. The substrate 14 supports a first indication 32 and a second
indication 34. The first indication 32 indicates whether or not the end user
15 has tagged the first resource for subsequent browsing. The second
indication 34 indicates whether or not the end user 15 has tagged the second
resource for subsequent browsing. To tag a resource for subsequent
browsing, the end user 15 can mark or puncture a portion of the substrate 14
proximate to the image and/or the data for the resource. A resource is
tagged by filling a portion of the substrate 14 using a writing instrument
such as a pen or a pencil. Col. 5, ll. 39-49.
6. The data items (16, 18), the images (26, 28), and the indications
(32, 34) are communicated to the network access apparatus 20 by a data
reader 36. The data reader 36 includes an optical imaging reader such as a
page scanner, a photograph reader, a business card reader, a scanning wand,
a reader in a fax machine, or a CCD (charge coupled device) reader. The
optical imaging reader generates an electronic image of printed information,
namely, the data items, the images, and the indications, from the network
navigation device 12. Col. 5, ll. 50-64.
7. A display device 40, such as a monitor or a television, is
coupled to the network access apparatus 20 to display a list of at least one of
the resources generated from the network navigation device 12. The
network access apparatus 20 generates the list based upon the electronic
image formed by the optical imaging reader. The list can include the image
and/or the data associated with both the first resource and the second
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resource, or can include information only for resources which are tagged.
Col. 5, l. 65 to col. 6, l. 7.
8. The network access apparatus 20 receives a user-initiated
selection of a resource from the list. In response to receiving the user-
initiated selection, the network access apparatus 20 links to the resource.
The network access apparatus 20 receives content from the resource, and
displays at least a portion of the content on the display device 40. To
reinforce an association between the network navigation device 12 and the
resource, an image 42 viewable on the display device 40 upon linking to the
resource is similar to (or can be equivalent to) at least a portion of its
associated image. Col. 6, ll. 8-18.
9. Figure 2 illustrates an embodiment of a network navigation
device. The network navigation device includes a substrate 50 such as a
sheet of paper, cardboard, or plastic. The substrate 50 supports printed data,
a printed image, and an indication for each of a plurality of resources
available on the Internet. An indication 52, a printed image 54 comprised of
the word “Netscape,” and printed data 56 comprising the URL
“home.netscape.com” are associated with a resource at Netscape’s Web site.
Col. 6, ll. 31-65; Fig. 2.
10. Each indication is contained within a corresponding border,
such as a corresponding circular border as illustrated in Figure 2. An end
user tags a resource for subsequent browsing by marking or filling within the
border using a writing instrument such as a pencil or a pen. For example,
the filled borders for the indications 62, 82, 92, and 102 indicate that the end
user has tagged the Yahoo Web site, CNET’s Web site, Motorola’s Web
site, and Infoseek’s Web site for subsequent browsing. The absence of a
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mark within borders for the indications 52, 72, 112, 122, and 132 indicates
that the end user is not presently interested in browsing Netscape’s Web site,
Microsoft’s Web site, AltaVista’s Web site, MSN’s Web site, or MSNBC’s
Web site. Col. 7, ll. 4-17; Fig. 2.
Carro
11. Carro teaches a method and system for selecting and accessing
multimedia information/services located on a user workstation or on a server
by touching finger items that are electronically illuminated over the surface
of a hard-copy document or any other physical surface. The system includes
an opto-touch foil placed over a portion of the document that highlights
hyperlinked items over the surface of the physical document, and reads
coordinates of these hyperlinked items. The system also includes a user
workstation for accessing the information/service associated with the
hyperlinked items. Hyperlinked items are illuminated by the luminous
signal for identifying and selecting hyperlinked items. When a user selects
an item, the workstation receives a signal indicating the position of this
selected item. The user workstation identifies, locates and accesses the
information/service associated with the position of the selected item.
Abstract.
Iida
12. Iida teaches an input sheet system for reading an input sheet on
which an instruction from a user is described, acquiring the instruction from
the user on the basis of the read result, and performing information
processing according to the instruction. When a form creator creates the
appearance of a form by arranging symbols of software components
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registered on a component library on a form image, a form editor
automatically creates a form document describing the location relationship
of the symbols. When an input sheet with a user’s instructions filled in is
read into the system, the system determines the processing order of the
software components corresponding to the symbols on the basis of the
location relationship of the symbols described on the form document and
carries out the processing in this order. Abstract.
13. A form is created on a display screen 30 of a computer by a
form creator. First, the form creator actuates a form editor to open a form
creating window 32. Then, within the window 32, a form image 110 of a
blank sheet of paper with only a logo 120 and registration marks 121-1 and
121-2 (the mark at the lower right corner is not shown) displayed at four
corners is displayed. Col. 3, ll. 45-55.
14. As shown in Figure 4, the scan image acquired by the scan
server 54 is read into the work area of a memory (S21), and it is decided
whether the image data represents a form (i.e. the input sheet has been read)
(S22). Namely, the form decision section 52 visually recognizes the four
corners of the scan image to examine whether a logo or registration mark
(see Figure 1) is s present at each corner. When the logo or registration mark
is present at each corner, it is decided that the scan image at issue represents
a form. Col. 6, ll. 43-53.
15. When it is decided that the scan image represents a form, the
numeral recognition processing for a form ID area is executed to extract the
value of a form ID (S23). The form decision section 52 informs an FID
server 56 of the extracted form ID value to require that the FID server 56
acquires the form document data corresponding to the form ID (S24). The
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FID server 56 retrieves the form DB 20 to take out the form document data
corresponding to the form ID and loads it onto the work area of the memory
(S25). Col. 6, ll. 56-65; Fig. 14.

PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citations omitted).

Obviousness
“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.,
550 U.S. 398, 419 (2007). “The 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.

ANALYSIS
Section 103 rejection of claims 1, 8, and 15
Appellants contend that the combination of Reber and Carro does not
teach “the graphical user interface elements only in the portion of the signal
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associated with regions outside the margin being processed” as recited in
claim 1. Br. 6
Reber shows an indication printed on a piece of paper that is
contained within a circular border. When the border is marked or filled, the
filled border indicates that a user has tagged a corresponding Web site for
subsequent browsing. The absence of a mark with the border indicates that
the user is not interested in browsing the Web site. FF 9-10. The indication
of Reber therefore teaches “at least one graphical user interface element for
controlling a function of a processor.”
Reber shows that the indications form a vertical column on the paper,
where each indication is located to the left of the corresponding Web site
description. FF 9-10. Therefore, Reber teaches that each indication is
“printed on the document in an area outside margins associated with the
other content of the document” within the meaning of claim 1.
Reber discusses a device that recognizes a marked indication, then
stores the Web site corresponding to the marked indication. FF 1-8.
Therefore, Reber teaches “the graphical user interface elements only in the
portion of the signal associated with regions outside the margin being
processed” within the meaning of claim 1.
We therefore sustain the § 103(a) rejection of claims 1, 8, and 15.

Section 103 rejection of claims 2-4
Appellants contend that claim 2 indicates that the document includes a
plurality of the graphical user interface elements. Appellants further contend
that neither Reber nor Carro discloses plural graphical user interface
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elements in an area outside margins associated with the other content of the
document. Br. 8.
Reber discloses plural graphical user interface elements in an area
outside margins associated with the other content of the document. FF 9-10.
We sustain the § 103(a) rejection of claim 2. Appellants have not
presented separate arguments for claims 3 and 4, which depend from claim
2. Therefore, we sustain the § 103(a) rejection of claims 3 and 4.

Section 103 rejection of claims 9-11 and 16-18
Appellants contend there is no optical image converter signal derived
by Carro. Br. 10. However, Reber teaches an optical image converter
signal. The rejection of claim 9 relies on the combined teachings of Reber
and Carro. Reber teaches an electronic representation of a substrate that
includes graphical user interface elements (FF 5-6), and Carro teaches an
electronic signal that indicates the position of an item selected by pointing
(see FF 11). Appellants have not shown that the proffered combination fails
to teach “one of the graphical elements being adapted to be selected by
pointing” within the meaning of claim 9.
We sustain the § 103(a) rejection of claims 9 and 16. Appellants have
not presented separate arguments for claims 10, 11, 17, and 18, each of
which depends from claim 9 or claim 16. Therefore, we sustain the § 103(a)
rejection of claims 10, 11, 17, and 18.

Section 103 rejection of claims 33 and 37
Appellants contend that Iida visually recognizes four corners of a
scanned image to determine whether a registration mark is present at each
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corner, but Iida only uses the registration marks to determine whether the
scanned image represents a form. Br. 10-11. We find that a person of
ordinary skill in the art at the time of invention would have recognized that
the registration marks of Iida provide a preprinted indication of the relative
position of the paper document. FF 13-14. The fact that the registration
marks have an additional use of indicating a form does not preclude the
registration marks from being used to register the relative location of the
document. In other words, the registration marks of Iida are also used as
registration marks.
We sustain the § 103(a) rejection of claims 33 and 37.

Section 103 rejection of claims 34 and 38
Appellants contend that Figure 14 of Iida does not teach a page
identifier. Br. 11. However, Figure 14 shows a form ID area (FF 15), which
is a page identifier within the meaning of claim 34.
We sustain the § 103(a) rejection of claims 34 and 38.

Section 103 rejection of claims 35, 36, 39, and 40
The Examiner finds that Reber and Carro transform a physical
document into a display. Ans. 21-22, 26. However, claim 35 recites
“compute a transformation between viewed image coordinates and
document page coordinates.” An example of the transformation is shown on
page 10 of Appellants’ Specification. The Examiner has not explained how
Reber and Carro compute the transformation between viewed image
coordinates and document page coordinates as recited in claim 35.
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We do not sustain the § 103(a) rejection of claims 35 and 39, which
recite commensurate limitations. Claims 36 and 40 depend from claims 35
and 39, respectively. Therefore, we do not sustain the § 103(a) rejection of
claims 36 and 40.

Section 103 rejection of claims 6, 13, and 20
The Examiner finds that the page numbers and document reference
numbers described by Carro teach a plurality of position indicating visual
indicia. Ans. 14. However, the Examiner has not explained how page
numbers teach a plurality of position indicating visual indicia as recited in
claim 6.
We therefore do not sustain the Examiner’s rejection of claim 6.
Claims 13 and 20 each contain a limitation similar to that of claim 6 for
which the rejection fails.

New Ground of Rejection -- 37 C.F.R. § 41.50(b) -- Section 103(a)
rejection of claims 6, 13, and 20
Appellants contend that Carro does not teach a plurality of distinct
position indicating visual indicia that are included in the signal and
determining the location of the area outside the location of the margin where
at least one graphical user interface is located as recited in representative
claim 6. Br. 8-9. “[P]osition indicating visual indicia” may be embodied as
calibration marks located in each corner of a document (Spec. 7:25-29; Fig.
1 elements 8a-8d). Iida teaches registration marks located in each corner of
a document that is read by a system. FF 13-14. We find that the registration
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marks of Iida are “position indicating visual indicia” within the meaning of
claim 6.

CONCLUSIONS OF LAW
(1) Appellants have not shown that the Examiner erred in finding
that the combination of Reber and Carro teaches “the graphical user
interface elements only in the portion of the signal associated with regions
outside the margin being processed” as recited in claim 1.
(2) Appellants have shown that the Examiner erred in finding that
the combination of Reber, Carro, and Iida teaches computing “a
transformation between viewed image coordinates and document page
coordinates” as recited in claim 35.
(3) The combination of Reber, Carro, and Iida teaches “position
indicating visual indicia” as recited in claim 6.

DECISION
The rejection of claims 1-4, 6, 8-11, 13, 15-18, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Reber and Carro is affirmed with
respect to claims 1-4, 8-11, and 15-18 but reversed with respect to claims 6,
13, and 20.
The rejection of claims 33, 34, 37, and 38 under 35 U.S.C. § 103(a) as
being unpatentable over Reber, Carro, and Iida is affirmed.
The rejection of claims 35, 36, 39, and 40 under 35 U.S.C. § 103(a) as
being unpatentable over Reber, Carro, and Iida is reversed.
In a new ground of rejection, we reject claims 6, 13, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Reber, Carro, and Iida.
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This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART -- 37 C.F.R. § 41.50(b)

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msc

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