Ex parte Rodite

Board of Patent Appeals and Interferences

Nov 29, 1999

08076504 (B.P.A.I. Nov. 29, 1999)

Application for patent filed June, 14, 1993. According to appellant, this application is a1
continuation-in-part of serial number 07/732,014, filed July 18, 1991.
The oral hearing was waived in a letter filed October 11, 1999.2
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publication in a law journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT R. R. RODITE
____________
Appeal No. 1996-3639
Application No. 08/076,5041
____________
ON BRIEF2
____________
Before THOMAS, HAIRSTON, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner's final rejection of claims 1-9, which
are all of the claims pending in this application.
We REVERSE.
Appeal No. 1996-3639
Application No. 08/076,504
2
BACKGROUND
The appellant's invention relates to a two-pass document image processing method
and system using repeatable unique image signatures to identify the documents. During
the second pass through the document processing system, completed stored information
is used in place of the incomplete imaged/scanned data to process the document. An
understanding of the invention can be derived from a reading of exemplary claim 9, which
is reproduced below.
9. A method of processing documents comprising the steps of:
reading an image signature from each document during a pass of the
document through a document processor;
attempting to match uniquely the image signature from each
document during the pass with a previously stored image signature;
recalling a stored record corresponding to the matched image
signature for the document when the image signature from the pass matches
the previously stored image signature; and
printing information from the stored record on the document.
The prior art reference of record relied upon by the Examiner in rejecting the
appealed claims is:
Cain 4,523,330 Jun. 11, 1985
Claims 1-9 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Cain.
Appeal No. 1996-3639
Application No. 08/076,504
3
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
the appellant regarding the above-noted rejections, we make reference to the Examiner's
answer (Paper No. 19, mailed May 30, 1996) for the Examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 17, filed September . 1, 1995) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the Examiner. As a consequence of
our review, we make the determinations which follow.
Appellant argues that Cain does not teach a second pass through the document
processor and for associating an image signature read from that document with an image
signature previously stored in the record storage. (See Brief at pages 6-7.) We agree
with appellant. While not all the independent claims recite the second pass through the
document processing system, claims 1, 3, 8 and 9 include limitations that
an image signature is compared to a previously stored image signature, recalling data and
using data associated with the stored image signature to perform some processing.
Clearly, Cain does not teach this comparison. The Examiner argues at length that the use
of the MICR reader would be the second pass and that the data read therefrom
Appeal No. 1996-3639
Application No. 08/076,504
We make no finding whether the claimed invention would have been obvious over Cain since this3
issue is not before the Board.
4
would have been a unique identifier to identify the document and used to compare. We
disagree. The Examiner has not identified a clear teaching within the four corners of the
reference that show the limitation pertaining to “attempting to match uniquely the image
signature from each document during the pass with a previously stored image signature;
recalling a stored record corresponding to the matched image signature for the document
when the image signature from the pass matches the previously stored image signature.”
Therefore, we will not sustain the rejection of claims 1-9 under 35 U.S.C. § 102 .3
REJECTION UNDER 37 CFR 1.196(b)
An obviousness type double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
unjustified or improper timewise extension of the "right to exclude" granted by a patent
and the possible harassment by multiple assignees. In re Goodman, 11 F.3d 1046, 29
USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
1985) ; In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
USPQ 644 (CCPA 1969).
Appeal No. 1996-3639
Application No. 08/076,504
5
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) may be
used to overcome an actual or provisional rejection based on an obviousness type double
patenting ground provided the conflicting application or patent is shown to be commonly
owned with this application. See 37 CFR 1.78(d).
Effective January 1, 1994, a registered attorney or agent of record may sign a
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37
CFR 3.73(b)
Claims 1-9 are provisionally rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-9 of copending
Application No. 08/478,172 (which is a divisional application of the present application).
Although the conflicting claims are not identical, they are not patentably distinct from
each other because the additional claim limitation “wherein said image signature is
created from at least some portion of said image” in the claims of the noted copending
application would have been an obvious variation of the image signature of the present
claim, which would also encompass the scope of claim language in the divisional
application.
This is a provisional obviousness-type double patenting rejection because the
conflicting claims have not in fact been patented.
Appeal No. 1996-3639
Application No. 08/076,504
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CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-9 under 35 U.S.C. §
102 is reversed.
In addition to reversing the Examiner’s rejection of all of the claims, this decision
contains a new ground of rejection pursuant to 37 CFR § 1.196(b)(amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b)
provides, “A new ground of rejection shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(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 proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the Examiner, in which event the application will be
remanded to the Examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
Appeal No. 1996-3639
Application No. 08/076,504
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No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
REVERSED - 37 CFR 1.196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
vsh
Appeal No. 1996-3639
Application No. 08/076,504
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