Ex Parte Zlotnick

Board of Patent Appeals and Interferences

May 11, 2010

09616977 (B.P.A.I. May. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AVIAD ZLOTNICK
____________

Appeal 2009-014141
Application 09/616,977
Technology Center 2100
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Decided: May 11, 2010
____________

Before JOHN A. JEFFERY, LEE E. BARRETT, and JEAN R. HOMERE,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4-19, and 22-37. We have jurisdiction under 35 U.S.C.
§ 6(b).1 We affirm-in-part.

1 Appellant waived attendance at an oral hearing scheduled for May 4, 2010.
See Confirmation Waiving Oral Hearing Attendance, filed Mar. 18, 2010.
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STATEMENT OF THE CASE
Appellant’s invention uses a network-based system to extract data
from filled-in form documents. Specifically, a network-based “directory
service” receives images from a client, codes the information, and verifies
whether the information is coded correctly. The checked, coded information
is then returned to the client over the network and payment received based
on various terms, including the number of fields processed. See generally
Spec. 3-8; Figs. 1, 3. Claim 1 is illustrative with key disputed limitations
emphasized:
1. A method for processing documents including information in a
predefined domain the method comprising:

defining a directory of data relating to the predefined domain;

receiving from a client via a computer network images of a number of
fields containing respective information;

processing the images to code the information;

looking up the coded information in the directory so as to check
whether the information coded correctly;

returning the checked, coded information over the network to the
client; and

receiving payment from the client in exchange for coding and
checking the information according to the number of the fields processed,
based upon a price per field processed.

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The Examiner relies on the following as evidence of unpatentability:
Lorie US 5,933,531 Aug. 3, 1999
DiPiazza US 6,028,970 Feb. 22, 2000
Jansen US 6,243,450 B1 June 5, 2001
(filed Dec. 28, 1998)

THE REJECTIONS
1. The Examiner rejected claims 1, 5-11, 19, 23-29, 35, and 36 under
35 U.S.C. § 103(a) as unpatentable over Lorie and Jansen. Ans. 3-6.2
2. The Examiner rejected claims 4 and 22 under 35 U.S.C. § 103(a) as
unpatentable over Lorie, Jansen, and DiPiazza. Ans. 6-7.
3. The Examiner rejected claims 12-16, 18, 30-34, and 37 under
35 U.S.C. § 103(a) as unpatentable over Lorie and DiPiazza.
Ans. 7-9.
4. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Lorie, DiPiazza, and Jansen. Ans. 10.

CLAIM GROUPING
Regarding the obviousness rejection over Lorie and DiPiazza,
Appellant argues the following groups separately: (1) independent claims
12, 30, and 37 (App. Br. 11-14); and (2) claims 15 and 32 (App. Br. 15-16).
We therefore treat these groups separately (and include claims 13, 14, 16,
18, 31, 33, and 34 not separately argued in group (1)), and select claims 12
and 15 as representative of each group. See 37 C.F.R. § 41.37(c)(1)(vii).

2 Throughout this opinion, we refer to (1) the Appeal Brief filed August 17,
2007; (2) the Examiner’s Answer mailed October 30, 2007; and (3) the
Reply Brief filed December 6, 2007.
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THE OBVIOUSNESS REJECTION OVER LORIE AND JANSEN
Regarding independent claim 1, the Examiner finds that Lorie’s
document processing method discloses all recited steps except for receiving
payment based on a price per unit service. Ans. 3-4. The Examiner,
however, cites Jansen for teaching this feature in concluding that the claim
would have been obvious. Ans. 4.
In reaching this conclusion, the Examiner acknowledges that Jansen is
based on a time-based payment scheme, but nonetheless asserts that “many
different units of service” were purportedly “notoriously well known in the
art” at the time of Appellant’s invention, including the amount of bandwidth
used. Ans. 10-11. The Examiner reasons that since paying a price based on
a unit of service was well known, there is ostensibly a “minimal” difference
between charging a price based on (1) a number of fields processed, and (2)
an amount of services rendered (e.g., bandwidth access). This “minimal”
difference, the Examiner contends, would have been obvious to ordinarily
skilled artisans. Ans. 11.
Appellant challenges this reasoning as unsupported by any
documentary evidence, and argues that Jansen’s time-based charging scheme
is completely different than charging by the number of processed fields.
App. Br. 8; Reply Br. 2. Appellant adds that there is no teaching or
suggestion to transform Lorie’s integrated document-processing system into
a network-based service (i.e., involving sending images and coded
information over a network) as claimed. App. Br. 9-10; Reply Br. 3.

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The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Lorie and Jansen collectively would have taught or suggested:
(1)(a) receiving images of a number of fields from a client, and (b)
returning checked and coded information via a computer network?
(2) receiving payment from the client in exchange for coding and
checking the information according to the number of fields processed, based
on a price per field processed?

FINDINGS OF FACT (FF)
1. Lorie pertains to optical character recognition (OCR) verification
and correction, and discusses various conventional techniques to (1) isolate;
(2) segment; and (3) recognize images within small fields in forms (e.g.,
handwritten information filled in the form’s fields). Moreover, using
context information in conjunction with OCR improves accuracy. Lorie,
col. 1, l – col. 2, l. 9.
2. Lorie’s Figure 4 shows a typical system 4 for realizing the
invention, including a user interface 14, CPU 8 and I/O 16 interconnected
via bus 6. Lorie, col. 4, ll. 33-47; Fig. 4.
3. Lorie’s invention can be implemented using standard programming
techniques. Any such program(s) may be embodied or provided within
computer-readable or -usable media, such as disks, memories, or “any
transmitting/receiving medium such as the Internet or other communications
network or link . . . .” Lorie, col. 8, ll. 51-68.
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4. An apparatus for making, using, or selling Lorie’s invention may
be one or more processing systems including a CPU, memory, storage
devices, communication links, communication devices, servers, and I/O
devices. Lorie, col. 9, ll. 1-9.
5. Jansen discloses a kiosk for vending public multimedia services
that determines usage cost based on (1) time of use, and (2) cost per unit
time. Jansen, Abstract; col. 12, ll. 32-65; Figs. 1, 2, 9-14.

PRINCIPLES OF LAW
An Examiner's use of Official Notice unsupported by documentary
evidence should only be taken when the facts so noticed are “capable of such
instant and unquestionable demonstration as to defy dispute.” See In re
Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citations omitted). Moreover, if
the Examiner's assertion of Official Notice is adequately traversed, the
Examiner must provide documentary evidence in the next Office Action to
maintain the rejection. Manual of Patent Examining Procedure §
2144.03(C), 8th ed., Rev. 6, Sept. 2007 (“MPEP”).
To be patentable under § 103, an improvement must be more than the
predictable use of prior art elements according to their established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 1 which calls for receiving
payment from the client according to the number of fields processed, based
on a price per field processed.
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We begin by noting that it is undisputed that Jansen fails to disclose
any pricing scheme whatsoever based on processed fields, let alone charging
by the number of fields. Rather, Jansen charges for time of use—not fields
processed. FF 5.
The Examiner concedes as much, but nonetheless maintains that
paying a price based on different “units of service” (which are said to
include not only usage time as in Jansen, but also bandwidth usage) was well
known at the time of the invention. Ans. 10-11. As such, the Examiner
reasons, there is ostensibly only a “minimal”—and therefore obvious—
difference between charging a price based on (1) a number of fields
processed as claimed, and (2) an amount of services rendered (e.g.,
bandwidth access). Ans. 11.
This contention is unavailing for it not only fails to provide any
evidentiary basis for the Examiner’s underlying assertions (which are
tantamount to officially noticing these facts), but its reasoning is problematic
even if we were to accept these officially-noticed facts as true.
In short, even assuming that it was known at the time of the invention
to charge customers for particular “units of service” including bandwidth
access as the Examiner asserts, that hardly means that it would have been
obvious to charge based on other types of “service units,” including the
recited number of processed fields.
To allege that there is only a “minimal”—and purportedly obvious—
difference between two diverse pricing schemes (bandwidth usage and
number of processed fields) is simply unsupported by any evidence on this
record and is therefore untenable. That this speculative line of reasoning
was raised for the first time in the Examiner’s Answer as Appellant indicates
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(Reply Br. 2) only further taints the Examiner’s problematic position.
Moreover, the Examiner did not respond to Appellant’s challenge to the lack
of evidentiary basis for these newly-raised assertions (Reply Br. 2)—a
crucial error on this record. See MPEP 2144.03(C) (requiring Examiners to
provide documentary evidence responsive to traversals of officially-noticed
assertions).
Although this error is dispositive of reversal of claim 1, we
nonetheless disagree with Appellant’s contention (App. Br. 9-10; Reply Br.
3) that there is allegedly no teaching or suggestion to transform Lorie’s
integrated document-processing system into a network-based service. That
said, we agree with Appellant (Reply Br. 3) that the Examiner’s reliance on
Lorie’s statement that the inventive program can be embodied on computer
readable media including a network-based medium (Ans. 12; FF 3) is
problematic in this regard.
But Lorie nonetheless teaches in the very next paragraph that an
apparatus for “making, using, or selling” Lorie’s invention can include a
CPU, memory, storage devices, communication links, communication
devices, servers, and I/O devices. FF 4; emphasis added. Based on these
network-capable options, we see no reason why at least some components of
Lorie’s “integrated” OCR system in Figure 4 (FF 2) could not have been
implemented via a network (e.g., obtaining and sending images from a client
to a remote checking and coding device via the network). That the system in
Lorie’s Figure 2 includes some of the very components referred to in the
passage noted above (FF 4) only bolsters this conclusion. In short, we find

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that not only does Lorie itself suggest such a network-based enhancement
(see FF 4), such an enhancement is also tantamount to the predictable use of
prior art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417.
That said, we cannot sustain the Examiner’s obviousness rejection for
the reasons noted above regarding the lack of any teaching or suggestion of
receiving payment from the client in exchange for coding and checking the
information according to the number of fields processed based on a price per
field as claimed. Accordingly, we reverse the Examiner’s rejection of
independent claim 1 and independent claims 19 and 35 which recite
commensurate limitations. We also reverse the Examiner’s rejection of
dependent claims 5-11, 23-29, and 36 for similar reasons.3

THE OBVIOUSNESS REJECTION OF CLAIMS 4 AND 22
Since the Examiner has not shown that the cited secondary reference
to DiPiazza cures the above-noted deficiencies, we will also not sustain the
Examiner’s rejection of claims 4 and 22 over Lorie, Jansen, and DiPiazza.

THE OBVIOUSNESS REJECTION OVER LORIE AND DIPIAZZA
Regarding representative claim 12, the Examiner finds that Lorie’s
form processing method includes every recited step except for defining the
directory by selecting data specific to the predefined domain from one or

3 Since our decision in this regard is dispositive of reversal of these claims,
we therefore need not reach Appellant’s separate arguments regarding
claims 6 and 24 (App. Br. 14-15; Reply Br 4-5).

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more general databases. Ans. 7-8. The Examiner, however, cites DiPiazza’s
rule-based error detection functionality as teaching this feature in concluding
the claim would have been obvious. Ans. 8, 12.
Appellant argues that the cited prior art does not teach or suggest
defining the directory for a predefined domain by selecting data specific to
the domain from one or more general databases as claimed. Although
Appellant acknowledges that DiPiazza’s rule bases (which the Examiner
equates to the recited directory) are context-specific, Appellant nonetheless
maintains that the rules bases are not used for information lookup. App. Br.
11-13; Reply Br. 4. Appellant also reiterates a similar argument made in
connection with claim 1, namely that there is allegedly no teaching or
suggestion to transform Lorie’s integrated system to a network-based
system. App. Br. 13.
Regarding claim 15, Appellant argues that Lorie does not teach or
suggest transmitting images from a client over a network for coding and
checking.
The issues before us, then, are as follows:

ISSUES
Under § 103, has the Examiner erred by finding that Lorie and
DiPiazza collectively would have taught or suggested:
(1) receiving information filled into form fields from a client via a
computer network as recited in claim 12?
(2) defining, in advance of reading out form contents for processing, a
directory of data relating to a predefined domain by selecting data specific to
the domain from one or more general databases as recited in claim 12?
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(3) receiving a form field image from the client via a computer
network for coding and checking as recited in claim 15?

ADDITIONAL FINDINGS OF FACT
6. DiPiazza’s system enhances OCR by applying a “rule base”
comprising a set of rules or combinations of rules that may be associated
with received electronic bit-map data (i.e., an incoming fax). To this end,
after applying OCR to the received bitmap data, the system (1) determines
the bitmap’s associated context type, and (2) generates or selects
predetermined rule bases according to the recognized context type; and (3)
applies the rule bases to the received data. DiPiazza, Abstract, col. 5, ll. 3-8;
col. 5, l. 54 – col. 6, l. 12; col. 7, ll. 6-30; col. 10, ll. 17-35; Figs. 1B-1D, 2A.
7. Different types of business forms, for example, or other document
types may be recognized by context type, and corresponding rule base(s) are
determined for that context type. For example, a rule base or set of rule
bases for a business order form (e.g., a context type) may be assembled in
real time and/or selected separately from a rule base for other context types
(e.g., magazine pages or fax cover sheet). DiPiazza, col. 5, ll. 9-17; Fig. 5.
8. DiPiazza discusses various types of known data rules for correcting
erroneous data including various exemplary rules associated with business
order forms, such as (1) an instance verifier; (2) type verifier; (3) position
verifier; (4) functional verifier; (5) comparative verifier; (6) mathematical
verifier. DiPiazza, col. 2, ll. 7-67; Fig. 5.

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9. Rules are stored in memory tables of memory 156 from which an
appropriate rule base is generated according to the determined context type.
Memory 156 also comprises preassembled rule bases which are selectable
according to context type. DiPiazza, col. 6, ll. 7-12; Figs. 1B, 1D.
10. There may not, however, be sufficient memory 156 or resources
locally to assemble appropriate rule bases for various context types.
Therefore, it may be necessary to go beyond the boundaries of the computer
or device (via data transmitter 158) to assemble a rule base for a context
type. For example, a postal zipcode directory table may be stored as a
shared resource for application by many OCR devices either locally or
remotely via Internet or other data transmission services. Other examples
include credit card number validation services, banking data services,
telephone number/area code verification services, etc. DiPiazza, col. 6, l. 50
– col. 7, l. 5; Fig. 1C.
11. DiPiazza’s “database enhancement module” enables both real-
time and long-term learning with respect to rules and corresponding rule
bases. DiPiazza, col. 8, ll. 51-65; col. 12, l. 15 – col. 13, l. 40; Figs. 3-4.

ANALYSIS
Claims 12-14, 16, 18, 30, 31, 33, 34, and 37
We will sustain the Examiner’s rejection of representative claim 12.
First, we find unavailing Appellant’s argument (App. Br. 13) that there is
allegedly no teaching or suggestion to transform Lorie’s integrated system to
a network-based system. As we indicated previously regarding claim 1, we
find that Lorie amply teaches such a network-based enhancement. See FF 4.

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Second, we see no error in the Examiner’s reliance on DiPiazza’s
rule-based functionality for teaching the recited data selection limitations of
claim 12. DiPiazza’s “rule bases” are essentially collections (i.e.,
directories) of rules that are generated according to a certain “context” (i.e.,
“domain”), such as that associated with a business form, magazine page, or
fax cover sheet. See FF 6-7. And these rule bases are defined by selecting
data (i.e., rules) that are stored in various databases, namely tables in the
OCR device’s memory, or in remote databases (e.g., a zipcode directory
table stored as a shared resource, credit card number validation service,
banking data services, telephone number/area code verification services,
etc.). FF 9-10. In short, nothing in the claim precludes these databases from
meeting the recited “general” databases given its scope and breadth.
Although Appellant argues that DiPiazza’s rule bases are not used for
information lookup (App. Br. 11-13; Reply Br. 4), we note that the rule
bases are for verification (FF 8, 10) which, by its very nature, would have at
least suggested a data lookup and comparison to conduct the verification.
And even assuming that DiPiazza’s “database enhancement module” and its
corresponding learning features (FF 11) is separate from the rule bases as
Appellant argues (App. Br. 12; Reply Br. 4), that is a distinction without a
difference here, for DiPiazza’s rule base functionality amply suggests the
recited data selection limitations as noted above.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 12, and claims 13, 14, 16, 18, 30, 31, 33, 34, and 37
which fall with claim 12.

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Claims 15 and 32
We will also sustain the Examiner’s rejection of representative claim
15 essentially for the reasons indicated previously regarding claim 1, namely
the suggestion of implementing at least some components of Lorie’s
“integrated” OCR system (FF 2) via a network (e.g., obtaining and sending
images from a client to a remote checking and coding device via the
network). We are therefore not persuaded that the Examiner erred in
rejecting representative claim 15, and claim 32 which falls with claim 15.

THE OBVIOUSNESS REJECTION OVER LORIE, DIPIAZZA, AND JANSEN
We will not, however, sustain the Examiner’s rejection of claim 17
which calls for receiving payment according to the number of forms for
which information in the field was checked for correctness. Although this is
a different basis for payment than that recited in claim 1 (i.e., the number of
fields), the Examiner nonetheless relies again on Jansen’s time-based
charging scheme as allegedly teaching the recited form-based payment
system. See Ans. 10. But as we indicated regarding claim 1, we find this
reliance on Jansen problematic at best.
As Appellant indicates (App. Br. 16), the Examiner has simply failed
to show any logical connection between Jansen’s time-based charging and
charging by the number of forms checked as claimed. While we can see a
correlation between (1) the number of forms that information is checked,
and (2) the time it takes to do so (i.e., it takes longer to check more forms),
the Examiner has not articulated the relevance, if any, of such a correlation
to the recited payment method. Nor will we engage in such an inquiry here
in the first instance on appeal.
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We are therefore persuaded that the Examiner erred in rejecting claim
17.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 12-15, 18,
30-34, and 37, but erred in rejecting claims 1, 4-11, 17, 19, 22-29, 35, and
36.

ORDER
The Examiner’s decision rejecting claims 1, 4-19, and 22-37 is
affirmed-in-part.
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).

AFFIRMED-IN-PART

pgc

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