Ex Parte RomanDownload PDFBoard of Patent Appeals and InterferencesJan 11, 200510099605 (B.P.A.I. Jan. 11, 2005) Copy Citation 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 The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 Page 15 HEWLETT-PACKARD COMPANY INTELLECTUAL PROPERTY ADMINISTRATION P. O. BOX 272400 FORT COLLINS, CO 80527-2400 Copy with citationCopy as parenthetical citation