Ex Parte Kerr et al

Patent Trial and Appeal Board

Dec 26, 2012

10161514 (P.T.A.B. Dec. 26, 2012)

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.
10/161,514 09/09/2002 Roger S. Kerr 83875RRS 5806
1333 7590 12/27/2012
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
PRENDERGAST, ROBERTA D
ART UNIT PAPER NUMBER
2679
MAIL DATE DELIVERY MODE
12/27/2012 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 ROGER S. KERR, TIMOTHY J. TREDWELL,
and ROLAND R. SCHINDLER
____________

Appeal 2009-013183
Application 10/161,5141
Technology Center 2600
____________

Before JOSEPH L. DIXON, MARC S. HOFF, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Eastman Kodak Company.
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STATEMENT OF THE CASE
Appellants’ invention is a method and system for annotating an
archival medium. In the method, a transponder having a memory is coupled
to each one of the content bearing mediums. Method steps further include
obtaining data representing the content borne on the mediums, storing said
data in the memory of the transponder coupled to the medium, and archiving
the mediums in a storage area. Annotation data for association with the
selected one of the mediums is remotely obtained, and stored in the memory
of the transponder coupled to the selected one of the mediums (Spec. 4).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for annotating comprising the steps of:

receiving a content bearing medium having content bearing elements
recorded on the medium by printing or exposure and further having a
memory on the medium for storing data in an electronic form;

obtaining data representing the content borne on the medium;

storing data representing the content borne on the medium in the
memory of the medium;

conveying the data stored in the memory to a location remote from
the medium;

obtaining annotation data from the remote location; and,

storing the remotely obtained annotation data in the memory.

REFERENCES
Drexler US 4,896,027 Jan. 23, 1990
Cassorla US 5,146,552 Sep. 8, 1992
Morgan US 5,239,466 Aug. 24, 1993
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King US 5,600,775 Feb. 4, 1997
Moskowitz US 5,528,222 Jun. 18, 1996
Wang US 5,828,774 Oct. 27, 1998
Robertz US 6,206,292 B1 Mar. 27, 2001
Chiu US 6,452,615 B1 Sep. 17, 2002
(filed Mar. 24, 1999)
Fitzgerald US 6,758,802 B2 Jul. 6, 2004
(filed Jul. 9, 2001)

REJECTIONS
Claims 1-3 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan and King.
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan and Cassorla.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan, Cassorla, and Wang.
Claims 12, 13, 21, 23-25, 27, 31-36, 38, and 42-44 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Drexler in view of
Morgan, Moskowitz, and Fitzgerald.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan, Fitzgerald, and Robertz.
Claims 14-18, 30, 40, and 41 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Drexler in view of Morgan, Moskowitz,
Fitzgerald, and Cassorla.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan, Moskowitz, Fitzgerald, and
Wang.
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Claims 26 and 37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan, Moskowitz, Fitzgerald, and
King.
Claims 28 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drexler in view of Morgan, Moskowitz, Fitzgerald, and
Chiu.

ISSUES
Appellants contend that Morgan does not teach obtaining annotation
data from the remote location or storing the remotely obtained data in a
memory on the medium (App. Br. 11). Appellants further assert that Morgan
teaches away from Drexler and the claimed invention because Morgan
teaches scanning the original document, then working with the scanned
version and not the original (App. Br. 19-20).
With respect to, e.g., claim 7, Appellants argue that Cassorla does not
teach data representing the position of an annotation relative to the original
recording (App. Br. 22).
With respect to claims 9, 30, and 41, Appellants argue that Cassorla
does not teach designating an area of the original recording to be highlighted
(App. Br. 22).
With respect to, e.g., claim 12, Appellants argue that Moskowitz does
not teach “that information was transmitted remotely or that the information
used as a payment designation was received from a remote source” (App.
Br. 24). The Examiner responds that Moskowitz was only relied upon to
teach a transponder having a memory attached or embedded in a selected
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medium, to store and transmit data through wireless communication (Ans.
38).
Appellants further contend that Fitzgerald does not teach archiving the
mediums in a storage area because “information appears to be written only
when the documents are at one place and at one time” (App. Br. 25).
Appellants’ arguments present us with the following issues:
1. Does the combination of Drexler and Morgan teach or fairly
suggest obtaining annotation data from the remote location, and storing the
remotely obtained data in a memory on the medium?
2. Does Morgan teach away from combination with Drexler, or from
the claimed invention?
3. Does Cassorla teach data representing the position of an annotation
relative to the original recording?
4. Does Cassorla teach designating an area of the original recording to
be highlighted?
5. Does Moskowitz teach storing conveyed data in the memory of a
transponder coupled to a selected one of the mediums?
6. Does Fitzgerald teach archiving the mediums in a storage area?

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
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including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
To teach away, prior art must “criticize, discredit, or otherwise
discourage the solution claimed.” Mere disclosure of alternative
embodiments is not a teaching away. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Nonfunctional descriptive material cannot render nonobvious an
invention that would otherwise have been obvious. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004); Ex parte Curry, 84 USPQ2d 1272, 1274 (Bd.
Pat. App. & Int. 2005); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90
(BPAI 2008) (precedential) (discussing cases pertaining to non-functional
descriptive material).
When descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms of patentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1993).

ANALYSIS
CLAIMS 1-6, 10, AND 11
Appellants’ argument that the Examiner has not established a prima
facie case of obviousness, because Morgan does not teach the steps of
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obtaining annotation data from the remote location and storing the remotely
obtained data in a memory on the medium (App. Br. 11) is not considered
persuasive. We agree with the Examiner that Drexler teaches a content
bearing medium having a memory on the medium (Ans. 34; Drexler col. 2,
ll. 52-55). We further agree with the Examiner that Morgan teaches
conveying data, including annotations, to a location remote from the
medium (Ans. 34). Morgan teaches receiving annotation information at
office server 101 (the claimed “location remote from the medium”),
combining annotation information with original document information as
previously stored, and providing a correctly annotated version of the
document to the appropriate destination (col. 8, ll. 27-33). We thus agree
with the Examiner that Morgan teaches obtaining annotation data with the
remote location, and that the combination of Drexler and Morgan teaches
and fairly suggests storing remotely obtained data in a memory on the
medium.
Appellants’ further argument that Morgan teaches away from Drexler
and from the invention under appeal is also unpersuasive. Appellants assert
that Morgan is improperly combined with Drexler because Morgan teaches
away from any further use of the original document after scanning (App. Br.
19-20). While it is true that Morgan teaches scanning originals and storing
the scans at an office server, including appending annotations to the scanned,
“virtual” documents, Appellants do not point to any teaching that
discourages storing annotations in a memory on a content bearing medium.
As such, Morgan cannot be considered to teach away from Drexler or from
the claimed invention. See Fulton, 391 F.3d at 1201.
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We conclude that the Examiner did not err in rejecting claims 1-3 and
6 as being unpatentable over Drexler in view of Morgan. We further
conclude that the Examiner did not err in rejecting claims 4 and 5 as being
unpatentable over Drexler in view of Morgan and King. We further conclude
that the Examiner did not err in rejecting claims 10 and 11 as being
unpatentable over Drexler in view of Morgan, Cassorla, and Wang. We will
sustain the Examiner’s § 103 rejections.
CLAIMS 7 AND 8
Appellants argue that Cassorla describes annotating an “electronic
book,” and so lacks a teaching of data representing positioning of an
annotation relative to “the original recording” (App. Br. 22).
We are not persuaded by Appellants’ arguments. First, we observe
that there is no antecedent basis in claim 7 or parent claim 1 for the phrase
“the original recording.” Second, we regard the limitation “the annotation
data comprises annotation content data representing the content of the
annotation data and geographic position data indicating the intended
location of the annotation relative to the original recording” as reciting
nonfunctional descriptive material. The claim language expresses no
functional relation between the descriptive material (i.e., what the annotation
data represents) and the substrate (i.e., the memory). As such, it will not
distinguish the claimed invention from the combination of Drexler, Morgan,
and Cassorla. See Gulack, 703 F.2d at 1385.
We conclude that the Examiner did not err in rejecting claims 7 and 8
as being unpatentable over Drexler in view of Morgan and Cassorla. We will
sustain the § 103 rejection.

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CLAIM 9
Appellants’ argument that Cassorla does not teach designating “an
area of the original recording to be highlighted” (App. Br. 22) is not
persuasive of error. First, we note that there is no antecedent basis in claim 9
or parent claim 1 for the phrase “the original recording.” Second, we agree
with the Examiner’s finding that Cassorla teaches that two precise points are
designated to identify/bracket the context to be highlighted (Ans. 37;
Cassorla col. 3, ll. 19-25, col. 4, ll. 30-51, col. 8, ll. 20-26).
We conclude that the Examiner did not err in rejecting claim 9 as
being unpatentable over Drexler in view of Morgan and Cassorla. We will
sustain the § 103 rejection.
CLAIMS 12, 13, 19-21, 23, 25-29, 31-38, 39, AND 42-44
Appellants’ assertion that the Examiner erred because Moskowitz
does not teach “that information was transmitted remotely or that the
information used as a payment designation was received from a remote
source” (App. Br. 24) does not persuade us that the Examiner erred. The
Examiner only relied on Moskowitz to teach a transponder having a memory
that is attached to or embedded in a selected medium, to store and transmit
data through wireless communication (Ans. 15, 38). As discussed supra, the
Examiner relied on Morgan to teach conveying data to a remote location and
generating annotation data to be transmitted to and stored at a remote
location (Ans. 5).
Appellants’ arguments against Fitzgerald are similarly unpersuasive.
Appellants attack Fitzgerald as teaching that “transponders are only
associated with file folders that hold a plurality of different documents,” and
that “information appears to be written only when the documents are at one
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place and at one time” (App. Br. 25). We agree with the Examiner that
Appellants may not show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Further, Appellants’
arguments are not commensurate in scope with the claim. The Examiner
relies on Fitzgerald only for a teaching of “archiving the mediums in a
storage area” (Ans. 15). We agree with the Examiner that Fitzgerald teaches
this limitation (Ans. 15-16).
Appellants’ argument against claim 13, that Fitzgerald “only appears
to provide a structure that is adapted to enable communication with
transponders that are not yet stored or that are in the process of being
removed from storage” (App. Br. 25-26) is similarly unpersuasive as not
commensurate with the scope of claim 13 (Ans. 40). We agree with the
Examiner that Morgan is relied upon to teach providing an output
incorporating the data stored in the memory of a selected one of the
mediums (Ans. 17).
With respect to claims 23, 25, 27, 31-36, and 42-44, Appellants repeat
the arguments made against Morgan with respect to claim 1, and against
Fitzgerald with respect to claim 21 (App. Br. 26-27). We find these
arguments to be unpersuasive, as explained supra.
We conclude that the Examiner did not err in rejecting claims 12, 13,
21, 23-25, 27, 31-36, and 42-44 as being unpatentable over Drexler in view
of Morgan, Moskowitz, and Fitzgerald. We further conclude that the
Examiner did not err in rejecting claims 19 and 20 as being unpatentable
over Drexler in view of Morgan, Moskowitz, Fitzgerald, Cassorla, and
Wang. We further conclude that the Examiner did not err in rejecting claims
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28 and 39 as being unpatentable over Drexler in view of Morgan,
Moskowitz, Fitzgerald, and Chiu. We further conclude that the Examiner did
not err in rejecting claim 29 as being unpatentable over Drexler in view of
Morgan, Moskowitz, Fitzgerald, and Cassorla. We further conclude that the
Examiner did not err in rejecting claims 26 and 37 as being unpatentable
over Drexler in view of Morgan, Moskowitz, Fitzgerald, and King. We will
sustain the Examiner’s § 103 rejections.
CLAIM 24
Appellants’ contentions that Fitzgerald “does not appear to enable
annotation of individual documents,” or “enable any communication with
RFID that is stored” (App. Br. 27) are not persuasive because the arguments
are not commensurate in scope with the limitations of claim 24. We
conclude that the Examiner did not err in rejecting claim 24, and we will
sustain the § 103 rejection.
CLAIM 22
Appellants again argue, as with respect to claim 1, that Morgan
teaches away from the claimed invention because Morgan teaches “no
involvement of an original document after it has been scanned into the
system” (App. Br. 28). Because Morgan contains no teaching discouraging
the skilled artisan from following the path set forth in the claimed invention,
we will sustain the § 103 rejection of claim 22 for the reasons set forth with
respect to claim 1.
CLAIMS 14-18 AND 40
Claims 14 and 40 contain the same limitations concerning the content
of the annotation data as are contained in claim 7. As noted supra, we find
these limitations to constitute nonfunctional descriptive material. As such,
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these limitations cannot distinguish the claimed invention over the
combination of Drexler, Morgan, Moskowitz, Fitzgerald, and Cassorla. We
will sustain the Examiner’s § 103 rejection.
CLAIMS 30 AND 41
Claims 30 and 41, like claim 9, recite “highlighting area
designation data” and that “the output incorporates highlighting in the area
designated.” As explained with reference to claim 9, we agree with the
Examiner’s finding that Cassorla teaches that two precise points are
designated to identify/bracket the context to be highlighted (Ans. 37;
Cassorla col. 3, ll. 19-25, col. 4, ll. 30-51, col. 8, ll. 20-26).
We conclude that the Examiner did not err in rejecting claims 30 and
41 as being unpatentable over Drexler, Morgan, Moskowitz, Fitzgerald, and
Cassorla. We will sustain the § 103 rejection.

CONCLUSIONS
1. The combination of Drexler and Morgan teaches obtaining
annotation data from the remote location, and storing the remotely obtained
data in a memory on the medium.
2. Morgan does not teach away from combination with Drexler, or
from the claimed invention.
3. We need not reach the question whether Cassorla teaches data
representing the position of an annotation relative to the original recording,
because the claims containing this limitation recite nonfunctional descriptive
material.
4. Cassorla teaches designating an area of the original recording to be
highlighted.
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5. Moskowitz teaches storing conveyed data in the memory of a
transponder coupled to a selected one of the mediums.
6. Fitzgerald teaches archiving the mediums in a storage area.
DECISION
The Examiner’s decision rejecting claims 1-44 is affirmed.
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)(2010).

AFFIRMED

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