Ex Parte Angrick

Patent Trial and Appeal BoardSep 10, 2014

11039057 (P.T.A.B. Sep. 10, 2014)

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. 11/039,057 01/20/2005 George A. Angrick 8079-83883-US 4150 22242 7590 09/11/2014 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER ZIMMERMAN, MARK K ART UNIT PAPER NUMBER 2673 MAIL DATE DELIVERY MODE 09/11/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEORGE A. ANGRICK ____________ Appeal 2012-005831 Application 11/039,0571 Technology Center 2600 ____________ Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving method and apparatus claims related to document image capture and processing. The Examiner rejected claims 1–3, 5–19, and 21–25 as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellant, the real party in interest is MediDal Corporation. App. Br. 3. Appeal 2012-005831 Application 11/039,057 2 STATEMENT OF THE CASE Background The present application “relates generally to document processing and more particularly to image capture and related processing.” Spec. ¶ 0001. The Specification describes methods and devices whereby “upon detecting a need to effect an image capture and forward process, a given platform can automatically capture a document (or documents) as an image, automatically compress that captured document image to provide a compressed image, and automatically forward that compressed image to a predetermined processing center.” Id. at ¶ 0013. The Claims Claims 1–3, 5–19, and 21–25 are on appeal. Independent claim 1 is representative and reads as follows. A method comprising: at an apparatus whose components share a single housing: detecting a need to effect an image capture and forward process wherein the need is initiated by no more than two end user actions as taken by an end user of the apparatus wherein none of the end user actions comprise selecting a particular target destination; automatically capturing a document as an image using at least one of: an automatic document feed scanner as comprises one of the components; a flatbed scanner as comprises one of the components; to provide a captured document image; automatically compressing the captured document image to provide a compressed image; Appeal 2012-005831 Application 11/039,057 3 automatically forwarding the compressed image to a predetermined processing center without the end user having selected the processing center from amongst alternatives. App. Br. 17 (Claims App’x) (emphasis added). Claim 14, the only other independent claim, also requires “without the end user having selected the processing center from amongst alternatives.” Id. at 19–20. The Rejections 1. The Examiner maintains that claims 1–3, 14–17, 21, and 24 are unpatentable under 35 U.S.C. § 103(a) over Otsuka2 in view of Hosoi,3 McElveen,4 and Ferlitsch.5 2. The Examiner maintains that claims 5–8, 11–13, 18, 22, 23, and 25 are unpatentable under 35 U.S.C. § 103(a) over Otsuka in view of Ferlitsch, Hosoi, and Ballard.6 3. The Examiner maintains that claims 9, 10, 19, 21, and 24 are unpatentable under 35 U.S.C. § 103(a) over Otsuka in view of Hosoi, Ferlitsch, and Munte.7 DISCUSSION 1. Otsuka in view of Hosoi, McElveen, and Ferlitsch The Examiner finds that Otsuka discloses a method for use in a multifunction peripheral device with components in a single housing including the following steps: detecting a need to effect an image capture 2 Otsuka, US 2003/0203744 A1, published Oct. 30, 2003. 3 Hosoi et al., US 7,013,098 B2, issued Mar. 14, 2006. 4 McElveen, US 2004/0185900 A1, published Sept. 23, 2004. 5 Ferlitsch, US 2006/0109498 A1, published May 25, 2006. 6 Ballard, US 6,032,137, issued Feb. 29, 2000. 7 Munte, US 6,991,158 B2, issued Jan. 31, 2006. Appeal 2012-005831 Application 11/039,057 4 and forward process; automatically capturing a document as an image to provide a captured document image; and automatically forwarding a compressed image to a predetermined processing center. Ans. 5. The Examiner acknowledges that Otsuka does not teach several of the limitations required by claim 1. The Examiner relies on Hosoi regarding the limitations that the need is initiated by no more than two end user actions and automatically compressing the captured document image to provide a compressed image. Id. at 5–6. Next, the Examiner acknowledges that Otsuka and Hosoi do not disclose the requirement that none of the end user actions comprise selecting a particular target destination or the limitation “without the end user having selected the processing center from amongst alternatives.” Id. at 6–7. The Examiner asserts that McElveen discloses these limitations, and the Examiner argues that it would have been obvious to include these modifications in the method of Otsuka and Hosoi “for the purpose of allowing a secure transfer of the pictures from the camera to the preset location as disclosed in McElveen.” Id. at 7. Finally, the Examiner relies on Ferlitsch for the claim requirement that the apparatus used in the method includes an automatic feed scanner or a flatbed scanner. Id. The issue presented with respect to this rejection is whether the Examiner has established a prima facie case of obviousness. Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. Appeal 2012-005831 Application 11/039,057 5 1. Otsuka discloses a communication system including a multifunction peripheral device and a cellular phone. Otsuka ¶ 0027. 2. Otsuka discloses that the multifunction peripheral has a telephone function, a fax function, an internet fax function, and a communication module, and “is capable of transmitting and receiving data to and from peripheral devices such as the cellular phone 3 through the communication module.” Otsuka ¶ 0028. 3. Otsuka discloses that the multifunction peripheral includes “a handset 7, a document feeder 6 for placing a document thereon, an image reading unit for scanning image on the document . . . , and an image storage for storing image data being transmitted . . .” Otsuka ¶ 0029. 4. Figure 3 of Otsuka is reproduced below. App App eal 2012-0 lication 11 Figu com peri tran 5. Hos data docu 05831 /039,057 re 3 “is a municatio pheral may smitted by oi disclose from a so ment ima flowchart n system” send an i the cellul s an “ima urce or ori ge on reco 6 showing a of Otsuka nternet fax ar phone. ge forming ginal docu rding pape n access tr whereby to an em Otsuka ¶¶ apparatu ment, and r . . . .” H ansfer pro the multifu ail address 0021, 007 s for readin printing t osoi col. cess in the nction 1. g image he 1, ll. 6–9. Appeal 2012-005831 Application 11/039,057 7 6. McElveen discloses: The present invention provides a cell phone including a digital camera and either at least one voice activated capture and send command or function or at least one hot button that activates a capture and send command or function when depressed, where the command or function automatically sends audio, visual, identification and optionally global positioning data to a preset telephone number. McElveen ¶ 0007. 7. McElveen discloses: When a hot button 112 is depressed, the button 112 activates the command execution software 164, which turns on the camera 110, calls a pre-programmed phone number associated with a monitoring site and transmits camera data to the monitoring site. Along with the visual data, the software can send cell phone identification data and optionally sends audio data and positional data if the phone includes GPS hardware or the cell location if the cell network is equipped with cell location utilities. McElveen ¶ 0020. Principles of Law “An examiner bears the initial burden of presenting a prima facie case of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed . . . .” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Federal Circuit has stated 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 Appeal 2012-005831 Application 11/039,057 8 obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Analysis In support of the proposed combination of Otsuka and Hosoi with McElveen, the Examiner asserts that it would have been obvious “to include the modifications of McElveen for the purpose of allowing a secure transfer of the pictures from the camera to the preset location as disclosed in McElveen.” Ans. 7. The Examiner also contends that the “addition of McElveen would clearly allow for a secure transfer of data within an emergency setting thusly improving upon the invention of [Otsuka] and Hosoi.” Id. at 21. With respect to this conclusion, Appellant argues that McElveen does not disclose the “secure” transfer of data and “it cannot be fairly inferred that a person of ordinary skill in the art would, upon reading the whole of McElveen, find it obvious to extract and utilize selected teachings from McElveen in order to ‘allow for a secure transfer of data.’” Reply Br. 6. For the reasons stated below, we disagree with the Examiner’s conclusion. Otsuka discloses a communication system including a cellular phone and a multifunction peripheral device that includes a telephone function, a fax function, an internet fax function, and a communication module and “is capable of transmitting and receiving data to and from peripheral devices such as the cellular phone 3 through the communication module.” FF 1; FF 2. Otsuka also discloses that the multifunction peripheral includes “a handset 7, a document feeder 6 for placing a document thereon, an image reading unit for scanning image on the document . . . , and an image storage Appeal 2012-005831 Application 11/039,057 9 for storing image data being transmitted . . . .” FF 3. Figure 3 of Otsuka “is a flowchart showing an access transfer process in the communication system” whereby the multifunction peripheral may send an internet fax to an email address transmitted by the cellular phone. FF 4. Hosoi discloses an “image forming apparatus for reading image data from a source or original document, and printing the document image on recording paper . . . .” FF 5. McElveen discloses: a cell phone including a digital camera and either at least one voice activated capture and send command or function or at least one hot button that activates a capture and send command or function when depressed, where the command or function automatically sends audio, visual, identification and optionally global positioning data to a preset telephone number. FF 6. McElveen also teaches the following. When a hot button 112 is depressed, the button 112 activates the command execution software 164, which turns on the camera 110, calls a pre-programmed phone number associated with a monitoring site and transmits camera data to the monitoring site. Along with the visual data, the software can send cell phone identification data and optionally sends audio data and positional data if the phone includes GPS hardware or the cell location if the cell network is equipped with cell location utilities. FF 7. Here, we find the Examiner erred by failing to articulate a sufficient reason for combining the devices of Otsuka and Hosoi with the cell phone of McElveen to achieve the claimed method. First, we note that the portions of McElveen cited by the Examiner do not provide any disclosure related to the “secure transfer” of data. See Ans. 7 (citing McElveen ¶¶ 0007–0011, 0020). Second, the Examiner has provided no support for the conclusion that a person of ordinary skill in the art would have been motivated to allow Appeal 2012-005831 Application 11/039,057 10 for the “transfer of data within an emergency setting” in the device of Otsuka and Hosoi or why such a modification would be desirable. Given that the goals of Otsuka and Hosoi are to provide copies or transmission of original documents to an end user, the Examiner has not sufficiently explained why a person of ordinary skill in the art would see a need or benefit to include modifications for the transfer of data in an emergency setting and why that transfer would necessarily occur without end user selection of the processing center. Accordingly, we find that the Examiner, on the record before us, has failed to establish why one of ordinary skill in the art would have modified the structure of Otsuka and Hosoi to include functionality from McElveen. Based on the foregoing, we find that the Examiner has not established a prima facie case of obviousness, and thus, we reverse the rejection of claims 1–3, 14–17, 21, and 24. 2. Otsuka in view of Ferlitsch, Hosoi, and Ballard We find that the Examiner erred in rejecting claims 5–8, 11–13, 18, 22, 23, and 25 for the same reasons articulated with respect to the rejection of claims 1 and 14, as described above. The Examiner has not identified anything in Ferlitsch or Ballard that would rectify the Examiner’s error in combining Otsuka and Hosoi with McElveen. 8 Accordingly, we reverse this rejection. 8 We note that the Examiner fails to discuss McElveen in the context of this rejection. However, these claims depend from independent claims 1 and 14, which were rejected over Otsuka in view of Hosoi, McElveen, and Ferlitsch. Appeal 2012-005831 Application 11/039,057 11 3. Otsuka in view of Hosoi, Ferlitsch, and Munte We find that the Examiner erred in rejecting claims 9, 10, 19, 21, and 24 for the same reasons articulated with respect to the rejection of claims 1 and 14, as described above. The Examiner has not identified anything in Munte that would rectify the Examiner’s error in combining Otsuka and Hosoi with McElveen.9 Accordingly, we reverse this rejection. CONCLUSION For the reasons set forth above, we reverse the rejections of claims 1– 3, 5–19, and 21–25. REVERSE kme 9 We note that the Examiner fails to discuss McElveen in the context of this rejection. However, these claims depend from independent claims 1 and 14, which were rejected over Otsuka in view of Hosoi, McElveen, and Ferlitsch.