Ex Parte Ronca

Patent Trial and Appeal Board

Jan 29, 2013

11554617 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES G. RONCA

___________

Appeal 2010-008254
Application 11/554,617
Technology Center 2100
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Before DAVID M. KOHUT, ERIC B. CHEN, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-28, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a document indexing and delivery
system. The system provides an agent-based delivery platform to supply
financial document images in a variety of formats to fulfill requests from
various clients at a financial institution. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A computer-implemented method of providing images of
indexed documents using at least one of a plurality of software agents,
the method comprising:
receiving a request for the images;
creating a workflow designed for bulk processing of the images
to direct the at least one of the plurality of software agents to fulfill
the request, the workflow comprising a translation of the request into
a bulk processing format;
searching an index for the indexed documents according to the
workflow;
retrieving the images for delivery according to the workflow in
response to the request; and
delivering the images in bulk according to the workflow.

REJECTIONS AT ISSUE
Claims 9-17 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claim 1-28 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Cantral (U.S. Patent Application Publication No. 2006/0039610 A1;
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Feb. 23, 2006), Cox (U.S. Patent Application Publication No. 2004/0225865
A1; Nov. 11, 2004), and Supra, Jr. (U.S. Patent Application Publication No.
2006/0039023 A1; Feb. 23, 2006).

ANALYSIS
§ 101 Rejection
With respect to independent claim 9, we are unpersuaded by
Appellant’s arguments (Br. 6) that this claim complies with 35 U.S.C. § 101
as statutory subject matter.
The Examiner found that “the ‘medium,’ in accordance with
appellant’s specification (paragraph [0019]), may be [a] data signal” and
accordingly, “[t]his subject matter is not limited to that which falls within a
statutory category of invention because it is not limited to a process,
machine, manufacture, or a composition of matter.” (Ans. 3, 19.) We agree
with the Examiner.
Claim 9 recites a “computer program product including a storage
medium having computer program code embodied thereon” (emphasis
added). Appellant’s Specification states that “a computer usable or
computer readable medium may be any medium that can contain, store,
communicate, propagate, or transport the program for use by or in
connection with the instruction execution system, apparatus, or device.”
(Spec. ¶ [0019] (emphases added).) Appellant’s Specification further states
that “[t]he computer usable medium may include a propagated data signal
with the computer-usable program code embodied therewith . . . .” (Id.
(emphasis added).)
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Thus, under the broadest reasonable interpretation, the “storage
medium” of claim 9 encompasses transitory signals. Accordingly,
independent claim 9 is directed to non-statutory subject matter. See In re
Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (“A transitory,
propagating signal like Nuitjen’s is not a ‘process, machine, manufacture, or
composition of matter.’ . . . [T]hus, such a signal cannot be patentable
subject matter.”); see also MPEP § 2106 (I) (“Non-limiting examples of
claims that are not directed to one of the statutory categories . . . [include]
transitory forms of signal transmission (for example, a propagating electrical
or electromagnetic signal per se.”).
Appellant argues that “claim 9 is not directed to the all-encompassing
‘computer readable medium’ but instead to ‘a computer readable storage
medium’” and “[s]ince the ‘computer readable storage medium’ is a tangible
medium, claim 9 recites patentable subject matter under Section 101.”
(Br. 6 (emphasis in original).) However, as discussed previously,
Appellant’s Specification does not distinguish between a computer readable
medium and a computer readable storage medium. (See Spec. ¶ [0019].) As
such, a reasonable interpretation of “computer readable storage medium”
would encompass transitory signals.
Thus, we agree with the Examiner that independent claim 9 is not
directed to one of the four patent-eligible subject matter categories.
Accordingly, we sustain the rejection of independent claim 9 under 35
U.S.C. § 101. Claims 10-17 depend from claim 9, and Appellant has not
presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 10-17 under 35 U.S.C. § 101
for the same reasons discussed with respect to independent claim 9.
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§ 103 Rejection
We are unpersuaded by Appellant’s arguments (Br. 7) that the
combination of Cantral, Cox, and Supra would not have rendered obvious
independent claim 1, which includes the first disputed limitation “creating a
workflow designed for bulk processing of the images to direct the at least
one of the plurality of software agents to fulfill the request, the workflow
comprising a translation of the request into a bulk processing format.”
The Examiner found that receiving customer requests and sending
such requests to a data provider of Cantral corresponds to the limitation
“creating a workflow designed for . . . processing of the images to direct the
at least one of the plurality of software agents to fulfill the request, the
workflow comprising a translation of the request into a . . . format.” (Ans. 5,
20; Cantral, ¶¶ [0010], [0055].) The Examiner acknowledged that Cantral
does not disclose “bulk processing” and thus, relied upon Supra for teaching
bulk processing digital image files. (Ans. 6; Supra, Abstract.) The
Examiner concluded that “[i]t would have been obvious . . . to incorporate
the teachings of Supra into Cantral as modified by Cox . . . .” (Ans. 6.) We
agree with the Examiner.
Cantral relates to computing systems for processing digital documents
(¶ [0003]), for example, searching and compiling documents for a title
search when purchasing a house (¶ [0004]). Cantral explains that processing
a customer request includes “receiving a request; sending the requests to a
data provider; [and] receiving a document image from the data provider.”
(¶ [0010].) Cantral further explains that “[a] confirmation email indicating
that the order has been successfully received is sent to members identified in
the workflow designated for a customer operation” and that the “[c]ustomer
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or other specific requirements can define individual workflow recipients.
(¶ [0055].) Furthermore, such an email can include “other specific
information related to its expected processing including for example, the title
officer name and other elements” as required by the customer (i.e., the
claimed “format”). (Id.) Therefore, Cantral teaches the limitation “creating
a workflow designed for . . . processing of the images to direct the at least
one of the plurality of software agents to fulfill the request, the workflow
comprising a translation of the request into a . . . format.”
Supra relates to a “method for bulk processing digital image files . . .
[that] utilizes a management control system that divides and distributes the
processing of media files to two or more processing computers and then
recombines the processed media files for use.” (Abstract.) Therefore, Supra
teaches “bulk processing of images.”
The combination of Cantral and Cox with Supra is nothing more than
incorporating the known method of Supra for bulk processing of digital
image files with the known modified computing system of Cantral for
processing digital documents, to yield predictable results. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we agree with the
Examiner (Ans. 6) that modifying Cantral and Cox to include the method of
Supra for bulk processing digital image files would have been obvious.
First, Appellant argues that “paragraph [0055] of Cantral . . . merely
discloses that a confirmation email is sent to members identified in a
workflow designated for customer operation” but “Cantral does not disclose
any workflow being created” because “Cantral does not perform any
processing of the images.” (Br. 7 (emphasis in original).) However, the
claim language “processing of the images” is broad enough to encompass
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the method of processing a request, as taught by Cantral, which includes
receiving a request, sending the requests to a data provider, and receiving a
document image from the data provider. (¶ [0010].) Additionally, the claim
language “creating a workflow” is broad enough to encompass the
“[c]ustomer or other specific requirements [that] can define individual
workflow recipients” of Cantral. (¶ [0055].)
Second, Appellant argues that “[n]owhere in cited paragraph [0055]
. . . does Cantral discuss or even mention bulk processing of images or a
translation of any kind . . . because Cantral is only directed to processing of
images one-by-one and does not even contemplate bulk processing.”
(Br. 7.) However, the Examiner cited Supra, rather than Cantral for teaching
the bulk processing digital image files. (Ans. 6.)
Third, Appellant argues that “Supra merely mentions the phrase ‘bulk
processing of images’ and has nothing to do with ‘creating a workflow
designed for bulk processing of images . . . .’” (Br. 7.) However, the
Examiner cited Cantral, rather than Supra, for teaching the claim limitation
“creating a workflow designed for . . . processing of the images to direct the
at least one of the plurality of software agents to fulfill the request . . . .”
(Ans. 5, 20.)
Thus, we agree with the Examiner that the combination of Cantral,
Cox, and Supra would have rendered obvious independent claim 1, which
includes the limitation “creating a workflow designed for bulk processing of
the images to direct the at least one of the plurality of software agents to
fulfill the request, the workflow comprising a translation of the request into a
bulk processing format.”
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We are also unpersuaded by Appellant’s arguments (Br. 7) that the
combination of Cantral, Cox, and Supra would not have rendered obvious
independent claim 1, which includes the second disputed limitation
“retrieving the images for delivery according to the workflow in response to
the request.”
The Examiner found that the retrieval of images and information of
Cantral corresponds to the limitation “retrieving the images for delivery
according to the workflow in response to the request.” (Ans. 5, 20; Cantral,
¶ [0070].) We agree with the Examiner.
Cantral explains that “[t]he process . . . includes a hyperlink
associated with each document to allow remote retrieval of images by the
customer” and “[t]he remote retrieval of document images is subject to the
document image providers available for each customer.” (¶ [0070].)
Therefore, Cantral teaches the limitation “retrieving the images for delivery
according to the workflow in response to the request.”
Appellant argues that “[p]aragraph [0070] of Cantral only discusses
remote retrieval of images by the customer” but “there is no teaching or
suggestion in Cantral of the claimed workflow . . . and there is certainly no
discussion in Cantral of retrieving the images in accordance with such
workflow.” (Br. 7.) Contrary to Appellant’s arguments, in addition to
“remote retrieval of images by the customer” (¶ [0070]) Cantral also
explains that the “[c]ustomer or other specific requirements can define
individual workflow recipients” (¶ [0055]).
Thus, we agree with the Examiner that the combination of Cantral,
Cox, and Supra would have rendered obvious independent claim 1, which
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includes the limitation “retrieving the images for delivery according to the
workflow in response to the request.”
We are further unpersuaded by Appellant’s arguments (Br. 8) that the
combination of Cantral, Cox, and Supra would not have rendered obvious
independent claim 1, which includes the third disputed limitation “delivering
the images in bulk according to the workflow.”
The Examiner found that presenting information to the customer of
Cantral corresponds to the limitation “delivering the images . . . according to
the workflow.” (Ans. 5, 20; Cantral, ¶ [0070].)
Cantral explains that “[i]n order to present the information to the
customer, the data is formatted into separate sheets for each owner/borrower
with each selected document highlighted.” (¶ [0070].) Accordingly, Cantral
teaches the limitation “delivering the images . . . according to the
workflow.”
Appellant argues that “Cantral does not disclose delivering images in
bulk according to the above-discussed workflow.” (Br. 8.) However, the
Examiner cited Supra, rather than Cantral, for teaching the claim limitation
“delivering the images . . . according to the workflow.” (Ans. 5, 20.)
Furthermore, as discussed previously, Supra teaches “bulk processing of
images.”
Thus, we agree with the Examiner that the combination of Cantral,
Cox, and Supra would have rendered obvious independent claim 1, which
includes the limitation “delivering the images in bulk according to the
workflow.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2, 3, and 5-8 depend from claim 1, and Appellant
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has not presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 2, 3, and 5-8 under 35 U.S.C.
§ 103(a), for the same reasons discussed with respect to independent
claim 1.
Independent claims 9, 18, and 22 recite limitations similar to those
discussed with respect to independent claim 1, and Appellant has not
presented any substantive arguments with respect to these claims. We
sustain the rejection of claims 9, 18, and 22, as well as dependent claims 10-
17, 19-21, and 23-28, for the same reasons discussed with respect to claim 1.
Although Appellant nominally argues the rejection of dependent
claim 4 separately (Br. 8-9), the arguments presented do not point out with
particularity or explain why the limitations of this dependent claim are
separately patentable. Instead, Appellant summarily alleges that “[t]here is
absolutely no disclosure in Cantral of a drop zone or delivery of images to
the drop zone”, “nowhere does Cantral teach or suggest validating a request
and there is certainly no disclosure of validating the request against business
rules” and “neither Cox, Cantral or Supra disclose ‘formatting the images to
any file format.’” (Br. 8.) We are not persuaded by these arguments for the
reasons discussed with respect to claim 1, from which claim 4 depends.
Accordingly, we sustain this rejection.

DECISION
The Examiner’s decision to reject claims 1-28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

ELD