Ex Parte Smith et al

Patent Trial and Appeal Board

May 4, 2018

13350366 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/350,366 01/13/2012 Taylor Smith
108134 7590 05/08/2018
HONEYWELL/ ADDITON
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
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.
H0029480 2864
EXAMINER
ENTEZARI, MICHELLE M
ART UNIT PAPER NUMBER
2665
NOTIFICATION DATE DELIVERY MODE
05/08/2018 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):
patentservices-us@honeywell.com
docket@ahpapatent.com
SPSIP@honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAYLOR SMITH and GEOFFREY GELA Y
Appeal2018-000356
Application 13/350,366
Technology Center 2600
Before THU A. DANG, JOHNNY A. KUMAR, and
LINZY T. McCARTNEY, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8-
13, 15-20, 25, and 28-34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2018-000356
Application 13/350,366
BACKGROUND
The present patent application concerns "a system and method for
retrieving and delivering an electronic document as an automatic response to
scanning an image of decodable indicia, such as a bar code." Spec. i-f 1.
Claims 8, 15, and 28 are independent. Claim 15 illustrates the claimed subject
matter:
15. A computer program product for locating an electronic
document, the computer program product comprising:
one or more computer-readable tangible storage devices;
program instructions, stored on at least one of the one or
more storage devices, to receive an image of decodable indicia
from a component configured to output said image of decodable
indicia;
program instructions, stored on at least one of the one or
more storage devices, to, responsive to receiving said image of
decodable indicia from said component, locate said decodable
indicia within said image;
program instructions, stored on at least one of the one or
more storage devices, to, responsive to locating said decodable
indicia within said image, decode said decodable indicia into a
decoded message;
wherein said decoded message comprises: an identifier for
an electronic document, the location of said electronic document,
and a delivery instruction;
program instructions, stored on at least one of the one or
more storage devices to, responsive to decoding said image of
decodable indicia, interpret said identifier to identify said
electronic document; and
program instructions, stored on at least one of the one or
more storage devices, to, responsive to receiving said delivery
instruction, automatically execute said delivery instruction of the
decoded message;
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Application 13/350,366
wherein said delivery instruction is one or more of:
emailing said electronic document to an email address, saving
said document to a storage resource in non-volatile memory,
creating a hyperlink to said location on a web site.
App. Br. 22.
8, 10, 12, 13, 15, 17,
19,20,28,29,31,33,
34
9, 16,30
11, 18, 32
25
REJECTIONS
§ 103(a)
§ 103 a
§ 103(a)
§ 103(a)
ANALYSIS
Barrus 1 Wei 2
'
Barrus, Wei, Qu 3
Barrus, Wei, Van
Me chelen4
Barrus, Wei, Glass 5
Regarding independent claims 8, 15, and 28, Appellants argue the
Examiner has not established the combination of Barrus and Wei teaches or
suggests "decode a decodable indicia into a decoded message comprising a
delivery instruction (for an electronic combination)," "receive the delivery
instruction contained in the decoded message," and "automatically execute
the delivery instruction contained in the decoded message." App. Br. 11. In
particular, Appellants argue the Examiner made inconsistent findings about
whether Barrus teaches or suggests a decoded message comprising a
1 Barrus et al. (US 2004/0194026 Al; Sept. 30, 2004).
2 Wei et al. (US 2011/0255113 Al; Oct. 20, 2011).
3 Qu et al. (US 2013/0140355 Al; June 6, 2013).
4 Van Megchelen (US 2013/0283231 Al; Oct. 24, 2013).
5 Glass (US 6,947,965 B2; Sept. 20, 2005).
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Application 13/350,366
delivery instruction. See App. Br. 11-13. Appellants also argue the
Examiner erroneously found Wei teaches or suggests a decoded message
comprising a delivery instruction because Wei allegedly teaches using
external instructions to route documents. See App. Br. 13-16.
We find these arguments unpersuasive. As explained in the Answer,
the Examiner did not find Barrus teaches or suggests a decoded message
comprising a delivery instruction. See Ans. 8. Instead, Examiner found Wei
teaches or suggests a decoded message comprising a delivery instruction and
concluded a combination of Barrus and Wei teaches the subject matter
recited in claims 8, 15, and 28. See Ans. 8; Final Act. 3-8; see also Reply
Br. 2 (acknowledging "the Examiner assert[ed] that decoding the decodable
indicia into a decoded message comprising a delivery instruction is taught by
Wei"). Accordingly, we find unpersuasive Appellants' argument that the
Examiner was inconsistent about whether Barrus teaches or suggests a
decoded message comprising a delivery instruction.
With respect to Appellants' argument that Wei does not teach or
suggest a decoded message comprising a delivery instruction, Wei provides
adequate support for the Examiner's finding that Wei's document tags teach
or suggest the recited decoded message. See, e.g., Ans. 9-10. For example,
Wei discloses scanning a document for document tags (e.g., barcodes) and
"if the document tags identify a series of locations to which to store the
electronic documents in the repository . . . . The documents are then all
uploaded to the repository as directed by the tags." Wei i-f 96 (reference
number omitted, emphasis added); see also Wei i-fi-173, 82-83. One of
ordinary skill in the art would understand Wei's disclosure that electronic
documents are uploaded "as directed by the tags" to teach, or at the very
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least suggest, that Wei's tags include instructions about uploading the
electronic documents.
Moreover, even if Wei uses external instructions to route documents
as argued by Appellants, we understand the Examiner to have also
concluded it would have been obvious to include Wei's routing instructions
in Barrus's barcode. See Final Act. 3-8; Ans. 8-11. We see no error in this
conclusion. As concluded by the Examiner, it would have been obvious to
incorporate Wei's routing instructions into Barrus's barcode because doing
so simply combines known elements in a known manner to accomplish the
predictable result of routing electronic documents. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results."). 6
Barrus also teaches or suggests decoding decodable indicia into a
decoded message that includes a delivery instruction. For example, Barrus
discloses extracting and analyzing machine-readable indicia such as bar
codes and action annotations on a document. See Barrus i-fi-173, 79-82, 101,
140-141, 205-214, Fig. 10 (item 1002), Figs. 15A-15C. The bar codes
include a distributed resource indicator or DRI that points to a collection of
media. See Bums i-fi-179-80. The action annotations includes marks that
"represent actions that can be taken on one or more documents or media in a
6 One of skill in the art would have also been motivated to include Wei's
routing instructions in Wei's document tags because this modification ( 1)
combines known elements in a known manner to accomplish the predictable
result of routing electronic documents and (2) reduces the number of
separate elements in Wei's system. Indeed, Wei explicitly notes "it should
be understood ... [the disclosed] elements may be combined in other ways
to accomplish the same objectives." Wei ,-r 89.
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Application 13/350,366
collection," including faxing, emailing, printing, and grouping the
documents or media. Barrus i-f 207. Barrus discloses that the action
annotations "are extracted ... [and] analyzed to find action requests" and
may "require additional information like a fax number or email address."
Barrus i-f 210. Thus, Barrus teaches or suggests decoding decodable indicia
(extracting and analyzing the bar code and action annotations) into a
decodable message (the DRI, actions requests, and additional information
such as a fax number and email address), the decodable message including a
delivery instruction (delivery actions such as fax, e-mail, print, and group
and delivery information such as a fax number and an e-mail address).
Appellants next contend the Examiner's combination of Barrus and
Wei renders the references unsatisfactory for their intended purposes and
change their respective principles of operation. See App. Br. 16-17. In
Appellants' view, the Examiner's combination renders Barrus's and Wei's
systems "meaningless and unsatisfactory in the context of the respective
disclosures given that Barrus' [ s] document collection is already stored on
the [multi-function printer] system." App. Br. 17. Appellants also argue that
in light of this issue and the Examiner's allegedly inconsistent findings
concerning Barrus, the Examiner's combination relies on impermissible
hindsight. See App. Br. 17-18.
We find Appellants' arguments unpersuasive. As an initial matter,
Barrus' s document collections are not always "already stored" as argued by
Appellants. Barrus explicitly discloses creating new collections, see, e.g.,
Barrus i-f 100, Fig. 8, and in any event, one of skill the art would have
understood that the delivery instructions could include a new location for an
already stored document collection. Moreover, we see no reason why the
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delivery instructions in the Barrus-Wei combination are limited to storing or
relocating documents. Barrus explicitly discloses annotations that "represent
actions that can be taken on or more documents or media in a collection"
such as fax, email, print, and group. Barrus i-f 207. One of ordinary skill in
the art would have appreciated that the "delivery instructions" incorporated
into Barrus's barcode could include these actions. See KSR, 550 U.S. at 418
(explaining that an obviousness analysis "can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ);
see also KSR, 550 U.S. at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton.").
As for Appellants' contention that the Examiner impermissibly relied
on hindsight, this argument rests on Appellants' arguments that the
Examiner made inconsistent findings about what Barrus teaches and the
Examiner's combination renders the references unsatisfactory for their
intended purpose and changes their respective principles of operation. See
App. Br. 17-18. For the reasons discussed above, we find these contentions
unpersuasive.
Finally, Appellants contend the Examiner improperly relied on
"common sense" or "common practice." See App. Br. 18-19. Specifically,
Appellants argue "the Examiner's application of common knowledge does
not properly support the conclusion of obviousness relating to the missing
'automatically executing said delivery instruction of the decoded message'
limitations." App. Br. 18-19.
We find Appellants' argument unpersuasive. The Examiner did not
improperly rely on common sense or common practice to conclude the
"automatically executing" limitation would have been obvious. The
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Examiner found Wei teaches or suggests automatically executing delivery
instructions to route documents. See Ans. 12; Final Act. 6-8. The Examiner
also found that automatic document routing was well known and would have
been obvious to try because several prior art references disclose automatic
document routing. See Ans. 12 (discussing, among other things, U.S. Patent
No. 6,411,947 and U.S Patent Application Publication No. 2005/005722).
The Examiner found these references additionally "indicate why
[automatically executing] would be obvious to add to the Barrus reference."
Ans. 12. Accordingly, we find unpersuasive Appellants' argument that the
Examiner improperly relied on common sense or common knowledge.
For the above reasons, we sustain the Examiner's rejection of
independent claims 8, 15, and 28. Because Appellants have not presented
separate, persuasive patentability arguments for the 7-13, 16-20, 25, and
29-34, we also sustain the Examiner's rejections of these claims.
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Application 13/350,366
8, 10, 12, 13, § 103(a)
15, 17, 19,
20, 28, 29,
31,33,34
9, 16,30 § 103(a)
11, 18, 32 § 103(a)
25 § 103(a)
Summary
CONCLUSION
Barrus, Wei
Barrus, Wei,
Qu
Barrus, Wei,
Van
Me chelen
Barrus, Wei,
Glass
8, 10, 12,
13, 15, 17,
19, 20, 28,
29, 31, 33,
34
9, 16,30
11, 18, 32
25
8-13 15-
'
20,25,and
28-34
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
9