GRAVIC, INC.

Patent Trials and Appeals Board

Oct 16, 2020

2020001684 (P.T.A.B. Oct. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/727,055 12/26/2012 Steven P. JOSLIN 9203-77US 7223
570 7590 10/16/2020
PANITCH SCHWARZE BELISARIO & NADEL LLP
TWO COMMERCE SQUARE
2001 MARKET STREET, SUITE 2800
PHILADELPHIA, PA 19103
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/16/2020 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):
usptomail@panitchlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN P. JOSLIN, OWEN C. DAVIDSON,
VICTOR F. BERUTTI, and BRUCE D. HOLENSTEIN
____________

Appeal 2020-001684
Application 13/727,055
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
MATTHEW J. McNEILL, and Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–4, 7–20, 22–24, and 27–57. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 1, 5, 6, 21, 25, and 26 have been
cancelled. Oral arguments were presented on October 6, 2020 by telephone.

SUMMARY OF THE DECISION
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as GRAVIC, INC.
Appeal Br. 4.
Appeal 2020-001684
Application 13/727,055

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a method and article for
detecting message impressions from a document (Spec., page 2, lines 9, 10).
Claim 11, reproduced below, is representative of the subject matter on
appeal.

11. A method of analyzing a document and selectively further
processing any input made in a data collection area of the document
using a document processing system that includes a document
processing engine and a message representation library, the document
including one or more data collection areas which are located in and
are part of the document, and which are capable of receiving input, the
method comprising:
(a) storing in a memory of the message representation library
representations of static human identifiable and human understandable
messages;
(b) receiving the document at the document processing engine,
wherein the document processing engine accesses the memory to
obtain the representations of static human identifiable and human
understandable messages;
(c) analyzing the document in the document processing engine
to determine whether:
(i) there is relevant input in the one or more data
collection areas which are located in and are part of the
document, and
(ii) the document includes one or more message areas,
each message area having a static human identifiable and
human understandable message, wherein the message
area does not receive input, and wherein the analyzing in
step (c)(ii) determines if the library of representations of
static human identifiable and human understandable
messages includes the static human identifiable and
human understandable message in each of the one or
more message areas;
(d) detecting message impressions from the document in the
document processing engine when:
Appeal 2020-001684
Application 13/727,055

3

(i) there is relevant input in the one or more data
collection areas which are located in and are part of the
document, and
(ii) the document includes one or more of the static
human identifiable and human understandable messages;
and
(e) accepting the document for further processing of any input
in the one or more data collection areas by the document processing
engine when the document includes one or more of the static
human identifiable and human understandable messages, and rejecting
the document for further processing of any input in the one or more
data collection areas by the document processing engine when the
document does not include one or more of the static human
identifiable and human understandable messages.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 2, 3, 8, 10–14, 16, 18, 20, 22, 23, 28, 30–34, 36, 38, 40–
43, 46, 48–51, 53, 55, and 57 are rejected under 35 U.S.C. § 103 as
unpatentable over Lin (US 2012/0072280 A1, Mar. 22, 2012), Maggio (US
2003/0195807 A1, Oct. 16, 2003), and Norman (US 8,121,944 B2, Feb. 21,
2012).
2. Claims 4, 9, 15, 24, 29, 35, 44, 47, and 52 are rejected under
35 U.S.C. § 103 as unpatentable over Lin, Maggio, Norman, and Schena
(US 6,448,979 B1, Sept. 10, 2002).
3. Claims 7, 27, and 45 are rejected under 35 U.S.C. § 103 as
unpatentable over Lin, Maggio, Norman, Schena, All In Learning (Bubble
Sheet for Scan It-All in Learning: http://www.allinlearning.com/assist-
app/bubble-sheet-for-scan-it/, Jul. 7, 2011, obtained web.archive.org
4/17/2015), and Radtke (US 2008/0264701 A1, Oct. 30, 2008).
Appeal 2020-001684
Application 13/727,055

4

4. Claims 17, 37, and 54 are rejected under 35 U.S.C. § 103 as
unpatentable over Lin, Maggio, Norman, and Porter (US 8,336,779 B1,
Dec. 25, 2012).
5. Claims 19, 39, and 56 are rejected under 35 U.S.C. § 103 as
unpatentable over Lin, Maggio, Norman, Porter, and Wallace (US
2002/0046095 A1, Apr. 18, 2002).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
The Appellant argues first that the rejection of claim 11 is improper
because the cited references fail to disclose several specific claim limitations
(App. Br. 10–16, Reply Br. 2–4). The Appellant also argues that there is no
proper motivation to modify the references to meet the limitations of claim
11 (App. Br. 17–21, Reply Br. 4–8).
In contrast, the Examiner has determined that the cited rejection is
proper (Final Act. 2–11, 32, Ans. 10, 11).
We agree with the Appellant. Even taking the cited references to
disclose the argued claim limitations in claim 11, here we determine that the
rejection under 35 U.S.C. § 103 over Lin, Maggio, and Norman as being
improper in lacking articulated reasoning with rational underpinnings to

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2020-001684
Application 13/727,055

5

sustain the rejection. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
the Supreme Court noted that in an obviousness analysis that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418.
In context with the other elements of claim 11, the claim also requires
the steps of:
(d) detecting message impressions from the document in the
document processing engine when:
(i) there is relevant input in the one or more data
collection areas which are located in and are part of the
document, and
(ii) the document includes one or more of the static
human identifiable and human understandable messages;
and
(e) accepting the document for further processing of any input
in the one or more data collection areas by the document processing
engine when the document includes one or more of the static human
identifiable and human understandable messages, and rejecting the
document for further processing of any input in the one or more data
collection areas by the document processing engine when the
document does not include one or more of the static human
identifiable and human understandable messages.

(Claim 11, emphasis added). Lin discloses optical character recognition of
receipt templates and determining if the receipt content is associated with an
ad presentation (paras. 68, 74, 88, 92). Maggio discloses an offer reward
presented to recipients to review advertisements and submit the response to a
query (Abstract). Norman discloses a method for facilitating network
transaction processing (Title). Norman, at column 8, lines 60–67, discloses
that the system includes a “Reject Image Capture 324” in the system.
Appeal 2020-001684
Application 13/727,055

6

Although Lin, Maggio, and Norman do individually each disclose steps that
are used in the claimed method, there is no articulated reasoning with
rational underpinnings to combine them in the specific manner required to
meet the claimed limitations and sequence of steps “(d)” and “(e)” above
without impermissible hindsight. For example, although Norman does
generically disclose that images may be rejected at step 324, here steps “(d)”
and “(e)” in the claim specifically require “detecting message impressions . .
. when . . . there is relevant input in the one or more data collection areas
which are located in and part of the document” and the specific acceptance
or rejection of further processing of “any input in the one or more data
collection areas” based on whether the document includes “one or more of
the static human identifiable and human understandable messages.” Here,
the cited rejection over Lin, Maggio, and Norman simply lacks articulated
reasoning with rational underpinnings to be combined in the specific manner
required to meet the limitations of claim 11 without impermissible hindsight.
Accordingly, the rejection of claim 11 and its dependent claims under
35 U.S.C. § 103 in view of Lin, Maggio, and Norman is not sustained.
Independent claims 31 and 41 contain similar limitations to claim 11
discussed above; the rejection of these claims and their dependent claims
under this rejection is not sustained as well for the same reasons given
above.
With regard to the remaining rejections under 35 U.S.C. § 103, the
cited combinations using the references of Schena, All In Learning, Radtke,
Porter, and Wallace, each fails to remedy the deficiency in the base rejection
and these rejections are not sustained as well.
Appeal 2020-001684
Application 13/727,055

7

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2, 3, 8, 10–
14, 16, 18
20, 22, 23,
28, 30–34,
36, 38, 40–
43, 46, 48–
51, 53, 55,
57
103 Lin, Maggio,
Norman
2, 3, 8, 10–
14, 16, 18
20, 22, 23,
28, 30–34,
36, 38, 40–
43, 46, 48–
51, 53, 55,
57
4, 9, 15, 24,
29, 35, 44,
47, 52
103 Lin, Maggio,
Norman, Schena
4, 9, 15, 24,
29, 35, 44,
47, 52
7, 27, 45 103 Lin, Maggio,
Norman, Schena,
All In Learning,
Radtke
7, 27, 45
17, 37, 54 103 Lin, Maggio,
Norman, Porter
17, 37, 54
19, 39, 56 103 Lin, Maggio,
Norman, Porter,
Wallace
19, 39, 56
Overall
Outcome
2–4, 7–20,
22–24, 27–
57

REVERSED