Ex Parte Roman

Board of Patent Appeals and Interferences

Jan 11, 2005

10099605 (B.P.A.I. Jan. 11, 2005)

1 Examiner’s Answer (p. 3) has dropped the rejection of
claim 4, the only claims 1-3 and 5-20 remain on appeal.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDGAR M. ROMAN
____________
Appeal No. 2004-0717
Application No. 10/099,605
____________
ON BRIEF
____________
Before THOMAS, LEVY, and BLANKENSHIP, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-20, which are all of the
claims pending in this application1.

Appeal No. 2004-0717
Application No. 10/099,605
Page 2
BACKGROUND
Appellant’s invention relates to a system and method for
dynamically switching optical character recognition packages. An
understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced as follows:
1. A method for electronically scanning images of text
documents into memory, comprising:
capturing an image of a document via a scanning device;
presenting an interface configured to enable dynamic
application of a select optical character recognition (OCR)
package, wherein the select OCR package is one of a plurality of
OCR packages;
indicating which of the plurality of OCR packages is the
select OCR package; and
analyzing said image with the select OCR package.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kobayashi et al. 4,757,551 Jul. 12, 1988
(Kobayashi)
Pearson et al. 5,627,997 May 6, 1997
(Pearson)
Meier et al. 6,058,393 May 2, 2000
(Meier)
Goldberg 6,219,453 Apr. 17, 2001
Lim et al. 6,272,557 Aug. 7, 2001
(Lim)
Claims 1-3 and 5-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Goldberg.
Appeal No. 2004-0717
Application No. 10/099,605
Page 3
2 From the first two statement of rejection, it is unclear
as to why the examiner lists two different groups of overlapping
claims as being unpatentable under 35 U.S.C. § 103(a) over
Goldberg.
Claims 1-3, 5, 6, 8, 10, 12-16 and 20 stand rejected2 under
35 U.S.C. § 103(a) as being unpatentable over Goldberg.
Claims 1-3, 5, 6, 8, 10, 12-16 and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Goldberg in view of
Kobayashi.
Claims 1-3 and 5-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Goldberg in view of Kobayashi and
further in view of Pearson.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goldberg.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goldberg in view of Kobayashi, Pearson and
Meier.
Appeal No. 2004-0717
Application No. 10/099,605
Page 4
3 We note that in the examiner’s answer (pp. 3-4), claim 19
is no less than 6 times. The examiner separately rejects claim
19 is being over Goldberg alone 3 times. Once rejected a group
of claims 1-3, and 5-20; and twice claim 19 alone is rejected
under 35 U.S.C. § 103(a) as unpatentable over Goldberg. In
addition, claim 19 is rejected 3 times as being unpatentable
over Goldberg, Kobayashi and Pearson; once under 35 U.S.C. §
103(a) as unpatentable over Goldberg, Kobayahsi, Pearson and
Meier, and once under 35 U.S.C. § 103(a) as unpatentable over
Goldberg, Kobayahsi, Pearson and Lim.
Claim 193 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goldberg in view of Kobayashi, Pearson and Lim.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 11, mailed
August 26, 2003) and the final rejection (Paper No. 7, mailed
February 20, 2003) for the examiner's complete reasoning in
support of the rejections, and to appellant's brief (Paper No. 9,
filed June 9, 2003) and reply brief (Paper No. 12, filed
September 29, 2003) for appellant's arguments thereagainst. Only
those arguments actually made by appellant have been considered
in this decision. Arguments which appellant could have made but
chose not to make in the brief have not been considered.
Appeal No. 2004-0717
Application No. 10/099,605
Page 5
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant’s arguments set forth in the briefs along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we affirm-in-
part. We begin with the rejection of claims 1-3 and 5-20 as
being unpatentable over Goldberg.
In rejecting claims under 35 U.S.C. § 103(a), it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
Appeal No. 2004-0717
Application No. 10/099,605
Page 6
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Turning first to claim 1, the examiner's position (final
rejection, page 2) is that presenting an interface enabled to
allow selection of an OCR package is shown by Goldberg. The
examiner further asserts (final rejection, page 2) that
indicating the select package is inherently provided by Goldberg.
Appeal No. 2004-0717
Application No. 10/099,605
Page 7
Appellant asserts (brief, page 14) that Goldberg “merely
mentions that module 15 can be replaced with a different OCR
algorithm.” Appellant further asserts (brief, page 15) that
“[a]ll that is described in the detailed description concerning
the display 30 and the data input device 60 is entering a set of
probabilities through data input device 60 or entering a command
through data input device 60 to activate the corresponding set of
probabilities.”
The examiner responds (answer, page 4) that “Goldberg
recited that a user can enable a new OCR algorithm (i.e.
‘package’) based on user input. Very clearly, there is no
‘fundamental difference’.” The examiner also argues (answer,
page 5) that “Goldberg clearly ‘enables’ an OCR package by
activating probabilities for a specific OCR package.”
Appellant replies (reply brief, page 3) that Goldberg
“recites modification of a single OCR module 15 by applying a set
of probabilities that characters from corresponding sets of
characters are the best characters for representing a
misrepresented word. Modification of an single OCR algorithm . .
. is analogous to applying a different set of N coefficients to
an nth order equation.”
Appeal No. 2004-0717
Application No. 10/099,605
Page 8
From our review of Goldberg, we find that Goldberg discloses
(col. 3, lines 33-35) a system that “includes a document scanning
device 10, which may comprise an optical scanner or a facsimile
machine. Scanning device 10 scans an input original document 5
and generates an image signal.” Goldberg further discloses
regarding the OCR algorithm:
If the module 15 is replaced with another OCR
algorithm, a new set of probabilities tailored to the
new OCR algorithm would have to be used. This new set
of probabilities may be entered into processing device
50 through data input device 60, or instead, a
plurality of sets of probabilities, each corresponding
to a different OCR algorithm, may be pre-stored.
From the teachings of Goldberg we agree with the examiner
that Goldberg’s disclose as a plurality of different OCR
algorithm clearly teaches selecting an OCR position from a
plurality of OCR package, and “analyzing said image with the
select OCR package.”
We agree with the examiner that Goldberg teaches that there
are a plurality of OCR packages available, because Goldberg
discloses that (col. 6, lines 15-17) “instead, a plurality of
sets of probabilities, each corresponding to a different OCR
algorithm, may be pre-stored at the same time.” The fact that
there are a plurality of set of probabilities, and each set
Appeal No. 2004-0717
Application No. 10/099,605
Page 9
corresponds to a different OCR algorithm, means that there are a
plurality of OCR algorithms.
In addition, from the disclosure of Goldberg, (col. 6, l.
17-20) that when a new OCR algorithm is implemented, a user may
simply enter a command through data input device 60 to activate
the corresponding set of probabilities, which meets the claimed
plurality of OCR package.
We further agree with the examiner that Goldberg presents an
interface to “enable dynamic application of a select since the
package is activity by the system through user command optical
character recognition (OCR) package.” The key issue is whether
Goldberg presents an interface to enable dynamic application of a
select OCR package. Goldberg discloses that a plurality of
probabilities, each corresponding to a different OCR algorithm,
can be pre-stored and selected through an input device by the
user. These probabilities are necessary to calculate the
reference word recognition value. Therefore the probabilities
enable dynamic application of the OCR package, because when the
OCR algorithm is switched, a probability set must be selected by
the user in order for the system to operate properly. The input
device provides the interface that allows different OCR
algorithms to be enabled.
Appeal No. 2004-0717
Application No. 10/099,605
Page 10
The next-to-final limitation “indicating which of the
plurality of OCR packages is the select OCR package” is
inherently taught by Goldberg. The claim limitation does not
recite how, onto whom, the indicating occurs. However, there
must be some indication to the CPU of which OCR algorithm to use.
Goldberg teaches that OCR algorithms can be switched, but without
an indication of some kind, the system would continue to use the
old OCR algorithm, rendering the feature of being able to switch
OCR algorithms useless, therefore, because indicator is made to
the system as to which OCR algorithm to switch to, Goldberg meets
this limitation of claim 1. Although we find that Goldberg meets
all of the limitation of claim becomes anticipation is the
epitome of obviousness, In Re Fracoloise, we affirm the
examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Goldberg. Assume claims 2,3, and 5-9 fall with
claim 1 (brief, page 5), the rejection of claims 2,3 and 5-9, 15
is affirmed.
We turn next to the rejection of claims 10-20 under 35
U.S.C. § 103(a) as being unpatentable over Goldberg we begin with
claims 10-13 and 20. At the outset, we make reference to our
findings, supra, with respect to claim 1. In addition, because
the computer system of Goldberg will inherently use logic in
Appeal No. 2004-0717
Application No. 10/099,605
Page 11
carrying out assigned functions, we based that Goldberg insert
the limitation of claims 10. According, the rejection of claim
10 under 35 U.S.C. § 103(a) is affirmed. As claims 11-13 and 20
fell with claim 10, the rejection of claims 11-13 and 20 under 35
U.S.C. § 103(a) is affirmed.
Turning next to claim 14-18 and 20, we began with claim 14.
At the outset, we find Goldberg teaches all the elements of the
claim. The additional limitation of “a computing device . . .
coupled to the scanning device”, is shown as a part of the
overall system in Goldberg (Fig. 1, elements 10 and 20).
Accordingly, the rejection of claim 14 under 35 U.S.C. § 103(a)
as obvious in view of Goldberg is affirmed. As claims 15-18 and
20 fall with claim 14 (brief, page 5) the rejection of claims 15-
18 and 20 under 35 U.S.C. § 103(a) is affirmed.
Turning to reference to our findings, supra, with respect to
claim 1. In addition, next to claim 15, we cannot sustain the
rejection of the examiner. Claim 15 recites “means for modifying
the means for indicating a select OCR package,” although Goldberg
inherently provides for some indication of the new OCR package,
Goldberg does not teach this method of indication can be changed
in any way. Accordingly, the rejection of claim 15 under 35
U.S.C. § 103(a) as obvious in view of Goldberg is reversed.
Appeal No. 2004-0717
Application No. 10/099,605
Page 12
We next turn to the rejection of claims 1-3, 5, 6, 8, 10,
12-16 and 20 under 35 U.S.C. § 103(a) as being unpatentable over
Goldberg in view of Kobayashi. We by affirm the rejection of the
claims under 35 U.S.C. § 103(a) as being unpatentable over
Goldberg in view of Kobayashi, in view of our finding, supra,
with respect to the teachings of Goldberg, and we find Kobayashi
to be cumulative to the teachings of Goldberg.
We turn next to the reaction of claim 19 under 35 U.S.C. §
103(a) as being unpatentable over Goldberg in view of Kobayashi
and Pearson. The examiner position can be found on pages 5, 7, 8
and 9 of the final rejection. Appellants, do not present any
substantive arguments with regard to claim 19. Although
appellants list claim 19 as being in a separate group ( brief,
pages 5 and 7), appellants have the patentability of claim 19 on
the claims dependency from independent claim 14 (brief, pages 31-
33). At the outset, we make reference to our findings, supra,
with respect to claim 14. From the back of any substantive
arguments dispute the teachings and suggestions of Meier or Lim
in combing with the other applied references, and the reasoning
set forth in the examiner’s answer, we are not convinced of any
error on the part of the examiner. According, the rejections of
claim 19 under 35 U.S.C. § 103(a) are affirmed.
Appeal No. 2004-0717
Application No. 10/099,605
Page 13
We next turn to the rejection of claims 1-3 and 5-20 under
35 U.S.C. § 103(a) as being unpatentable over Goldberg in view of
Kobayashi and further in view of Pearson. We affirm the
rejection of claims 1-3, 5-18 and 20 under 35 U.S.C. § 103(a),
because we find the teachings of Kobayashi and Pearson to be
cumulative to the teachings of Goldberg.

CONCLUSION
Claims 1-3 and 5-20 under 35 U.S.C. § 103(a) is affirmed.
Appeal No. 2004-0717
Application No. 10/099,605
Page 14
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136
(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
SSL/kis
Appeal No. 2004-0717
Application No. 10/099,605
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