Ex Parte Sengupta et al

Patent Trial and Appeal Board

Sep 28, 2016

13080603 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/080,603 04/05/2011
758 7590 09/30/2016
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
FIRST NAMED INVENTOR
Arijit Sengupta
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
27265-18624 us 2112
EXAMINER
ALAM, SHAHID AL
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
09/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARIJIT SENGUPTA and BRAD A. STRONGER
Appeal2015-006900
Application 13/080,603
Technology Center 2100
Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and
JUSTIN T. ARBES, Administrative Patent Judges.
DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-006900
Application 13/080,603
STATEMENT OF CASE 1
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1-30. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b ).
We REVERSE.
INVENTION
Appellants' invention is directed to analyzing documents that are
processed by service providers. Spec. i-f 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. In a situation wherein at least one client has client
processes to be implemented by at least one business process
provider, each client process including documents to be
processed and each client process defined by a client format in
which the client receives data processed from the documents,
each client format defined by client format fields, a method for
facilitating the client processes, the method comprising a
computer system performing the steps of:
analyzing the client format fields instantiated in the
documents; and
automatically grouping the client processes into
process platforms based on analysis of the instantiated
client format fields.
Malaney et al.
Matthews et al.
REFERENCES
US 2007/0118391 Al
US 2008/0177643 Al
May 24, 2007
July 24, 2008
1 Our decision makes reference to Appellants' Reply Brief ("Reply Br.,"
filed July 14, 2015), and Appeal Brief ("App. Br.," filed December 8, 2014),
and the Examiner's Answer ("Ans.," mailed May 14, 2015) and Final Office
Action ("Final Act.," mailed January 8, 2014).
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Appeal2015-006900
Application 13/080,603
REJECTIONS 2' 3
Claims 1, 2, 12-20, and 23 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Matthews. Final Act. 5-8; Ans. 2-5.
Claims 6-11, 21, 22, and 27-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Matthews. Final Act. 8-11; Ans. 6-8.
Claims 3-5 and 24--26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matthews and Malaney. Final Act. 11-12; Ans. 9-
10.
ISSUE
The issue of whether the Examiner erred in rejecting claims 1-30
turns on whether Matthews discloses "analyzing the client format fields
instantiated in the documents," as recited in independent claims 1, 19, and
23.
2 In the event of further prosecution of this application (including any review
for allo\x;ance ), \x1e suggest that the Examiner revie\x; claims 1-30 for
compliance with 35 U.S.C. § 101 in light of the Supreme Court decision in
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014), and the U.S.
Patent and Trademark Office guidance on § 101 found in "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74,618 (Dec.
16, 2014), "July 2015 Update on Subject Matter Eligibility," 80 Fed. Reg.
45,429 (July 30, 2015), and "May 2016 Subject Matter Eligibility Update,"
81 Fed. Reg. 27,381(May6, 2016), which supplement the "Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al." Memorandum to the
Examining Corps, June 25, 2014.
3 We note that independent claim 1 recites "automatically grouping the client
processes into process platforms." The Specification, however, does not
appear to disclose how the client processes are "automatically group[ed]."
As such, we leave it to the Examiner to determine whether Appellants have
sufficient written description support of the feature of "automatically
grouping the client processes" for claims 1-18 under 35 U.S.C. § 112, first
paragraph, the written description requirement.
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Appeal2015-006900
Application 13/080,603
ANALYSIS
Claims 1, 2, 12-20, and 23 rejected under 35 USC§ 102(b)
as anticipated by Matthews
Independent claims 1, 19, and 23 each recite "analyzing the client
format fields instantiated in the documents." Appellants argue that
Matthews discloses digitization and extraction of data from documents, but
fails to disclose "analyzing ... client format fields instantiated in the
documents." App. Br. 4--5 (citing Matthews i-fi-14, 22-24); see Reply Br. 4--
5, 8. We agree with Appellants.
Matthews discloses a process for digitizing paper documents (i.e.,
invoices) that involves scanning the documents, extracting data from the
scanned documents, and analyzing the extracted data from the scanned
documents to generate digital documents. Matthews i-fi-14, 19, 22-24. The
Examiner finds that Matthews' analysis of the extracted data discloses
"analyzing the client format fields instantiated in the documents." Final Act.
5---6 (citing Matthews iii! 4, 22--'24); Ans. 14--15. However, the Examiner has
not explained sufficiently how Matthews' analysis of extracted data
discloses the limitation. One of ordinary skill in the art at the time of
Appellants' invention would have recognized that a document's "format
fields" are materially different from the fields' data.
Appellants argue, and we agree, that analyzing the format fields
involves analyzing which fields' formats or types are instantiated in the
documents, rather than analyzing the fields' populating data. See App. Br. 4.
Matthews only discloses analyzing extracted data of the digitized
documents, whereas the claims require analyzing the fields. See Matthews
i-fi-f 19, 22-24. Thus, we agree with Appellants that Matthews fails to
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Appeal2015-006900
Application 13/080,603
disclose "analyzing the client format fields instantiated in the documents," as
recited in claims 1, 19, and 23.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 19, and 23. Appellants argue that dependent claims 2,
12-18 and 20, which depend from claims 1and19, respectively, are
patentable for the same reason as independent claims 1 and 19. App. Br. 6.
Accordingly, we do not sustain the Examiner's rejection of these claims for
the reasons discussed above in our analysis of claim 1, 19, and 23. This
issue is dispositive with respect to the rejection of these claims, and,
therefore, we need not reach the remaining arguments presented by
Appellants.
Claims 6-11, 21, 22, and 27-30 rejected under 35 USC§ 103(a)
as unpatentable over Matthews
Appellants argue that claims 6-11, 21, 22, and 27-30 are patentable
for the same reason as claims 1, 19, and 23. App. Br. 6. We are persuaded
by Appellants' arguments regarding independent claims 1, 19, and 23, and
are persuaded by these arguments here for the same reasons. Accordingly,
we do not sustain the Examiner's rejection of these claims for the reasons
discussed above in our analysis of claim 1, 19, and 23. This issue is
dispositive with respect to the rejection of these claims, and, therefore, we
need not reach the remaining arguments presented by Appellants.
Claims 3-5 and 24-26 rejected under 35 USC§ 103(a)
as unpatentable over Matthews and Malaney
The Examiner concludes that dependent claims 3-5 and 24--26 would
have been obvious over the combination of Matthews and Malaney. Final
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Appeal2015-006900
Application 13/080,603
Act. 11-12; Ans. 9-10. Appellants argue that claims 3-5 and 24--26 are
patentable for the same reason as claims 1 and 23. App. Br. 6. We are
persuaded by Appellants' arguments regarding independent claims 1 and 23,
and are persuaded by these arguments here for the same reasons.
Accordingly, we do not sustain the Examiner's rejection of these claims for
the reasons discussed above in our analysis of claim 1 and 23. This issue is
dispositive with respect to the rejection of these claims, and, therefore, we
need not reach the remaining arguments presented by Appellants.
CONCLUSION
The Examiner erred in rejecting claims 1, 2, 12-20, and 23 under 35
U.S.C. § 102(b) as being anticipated by Matthews.
The Examiner erred in rejecting claims 6-11, 21, 22, and 27-30 under
35 U.S.C. § 103(a) as being unpatentable over Matthews.
The Examiner erred in rejecting claims 3-5 and 24--26 under 35
U.S.C. § 103(a) as being unpatentable over Matthews and Malaney.
DECISION
To summarize, the rejection of claims 1-30 is reversed.
REVERSED
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