Ex Parte Poulos et al

Patent Trial and Appeal BoardMay 23, 2016

13525208 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/525,208 06/15/2012 26582 7590 05/25/2016 HOLLAND & HART, LLP 222 South Main Street, Suite 2200 P.O. Box 11583 SALT LAKE CITY, UT 84147 FIRST NAMED INVENTOR John Poulos 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. P005CA.US.03 (79967 .0010) CONFIRMATION NO. 9299 EXAMINER ZELASKIEWICZ, CHRYSTINAE ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): patentdocket@hollandhart.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN POULOS, JAMES HOOVER, NICK IKONOMAKIS, and GORAN OBRADOVIC Appeal2014-003066 Application 13/525,208 Technology Center 3600 Before ANTON W. PETTING, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 27-50 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). Oral arguments were presented on May 5, 2016. SUMMARY OF THE DECISION We AFFIRM-IN-PART. Appeal2014-003066 Application 13/525,208 THE INVENTION The Appellants' claimed invention is directed to tabulating votes in an election (Spec. 1:6-7). Claim 27, reproduced below, is representative of the subject matter on appeal. 27. A method for recording votes for voter-marked paper ballots, compnsmg: receiving, at a ballot processing computer, optical image data comprising an optical image of a voter-marked paper ballot; identifying a selected candidate based on processing of the optical image data to determine one or more votes recorded on the voter-marked paper ballot; generating vote stamp image data comprising a visual representation of a name of the selected candidate; and appending the vote stamp image data to the optical image data to create a single image comprising the optical image of the voter- marked paper ballot and the vote stamp image data. THE REJECTIONS The following rejections are before us for review: 1. Claims 27--40 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. 2. Claims 27-33, 39--45, 49, and 50 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Chung (US 2007/0170253 Al, pub. July 26, 2007) and Seibel (US 7,406,408 B2, iss. July 29, 2008). 3. Claims 34--38 and 46--48 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Chung, Seibel, and Kakarala (US 2003/0052981 Al, pub. Mar. 20, 2003). 2 Appeal2014-003066 Application 13/525,208 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. 1 ANALYSIS Re} ection under 3 5 U.S. C. Â§ 101 The rejection of record made in the Final Action and Answer applies essentially only the machine-or-transformation test. The Answer was mailed October 31, 2013. However, the Supreme Court had already modified the analysis of non-statutory subject matter and the use of the machine-or-transformation test on June 28, 2010. The Supreme Court made clear in Bilski v. Kappos, 561 U.S. 593, 604 (2010) that a patent claim's failure to satisfy the machine- or-transformation test is not dispositive of the Â§ 101 inquiry. As the Examiner's analysis is incomplete as it essentially only applies the rnachine-or-transfmmation test we wi11 not sustain this rejection as a prima facie case has not been established. For this reason this rejection is not sustained. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2014-003066 Application 13/525,208 Rejections under 35 U.S.C. Â§ 103(a) The Appellants argue that the rejection of claim 27 is improper because the prior art fails to disclose the claim limitations for: generating vote stamp image data comprising a visual representation of a name of the selected candidate; and appending the vote stamp image data to the optical image data to create a single image. (App. Br. 4---6; Reply Br. 2, 3). In contrast, the Examiner has determined that the cited claim limitation is found in Seibel at column 6, lines 31--47 (Final Act. 4--5; Ans. 2-3). \Ve agree with the Examiner. Here, the cited claim Iirnitation requires "generating vote stamp irnage data" and "appending the vote stamp image data to the optical image data to create a single image." Here, the contents of the vote stamp image data (comprising a visual representation of a name of the selected candidate) is non-functional descriptive material that does not change how the underlying computer substrate functions. Seibel at column 6, lines 31--4 7 discloses that the system couples images of each ballot to the data extracted from the ballot. Seibel also discloses that the data may be displayed as annotations on top of the ballot image which would be a single image when viewed, meeting the argued claim limitations. Regardless, having the data displayed in a single image would have been an obvious modification readily inferred by one of ordinary skill in the art to reduce the number of files stored and viewed. For this reason the rejection of claim 27 is sustained. 4 Appeal2014-003066 Application 13/525,208 The Appellants have also argued that the rejections of claim 28 is improper (App. Br. 7). Claim 28 is directed to storing the image of the voter-marked paper ballot and vote stamp image data in memory. Here, Chung in the cited combination at paras. 113 and 114 discloses storing ballot images in memory, meeting the storage of images in the cited combination and for this reason, the rejection of claim 28 is sustained. The Appellants have also argued that the rejection of claim 29 is improper (App. Br. 8). Claim 29 is directed to storing the image of the voter-marked paper ballot and vote stamp image data in a single data file. Here, in the cited combination, Chung at paras. 113 and 114 has disclosed storing ballot images in memory and storing them in a single file for better organization would readily have been obvious and inferred in the cited combination by one of ordinary skill in the art. Here, there are finite solutions, either the data could be stored in a single file or multiple files, each with advantages readily inferred by one of ordinary skill in the art. For this reason, the rejection of claim 29 is sustained. The Appellants have made the same arguments presented above for claims 30-33, 39--45, 49, and 50, and the rejection of these claims is sustained for the same reasons given above. The Appellants argue that the rejection of claim 34 is improper because the cited prior art fails to disclose the claim limitation for "a predefined first threshold value for determining a specific voter selection area has been selected" and determining at least one "ambiguous mark when markings in one or more voter selection areas fall between the predefined first threshold value and a predefined second threshold" value (App. Br. 9, 5 Appeal2014-003066 Application 13/525,208 10). The Appellants also argue that the cited references are non-analogous art (App. Br. 11-12). In contrast, the Examiner has determined that the argued claim limitations are found in Kakarala at paras. 71 and 7 4-7 6 in the combination and that the rejection of record is proper (Final Act. 9; Ans. 5). We agree with the Appellants. Here, Kakarala is directed to an adaptive demosaicing method (Abstract). In Kakarala each color plane "votes" on a comparison of the vertical and horizontal components of the degree of change in that plane (Abstract). The citations to Kakarala at paras. 71, and 7 4-7 6 are directed to the demosaicing method and the "voting" in these portions is color plane voting not traditional ballot voting. Further, Kakarala is directed to color plane voting (Abstract) and not to single color edge marking. Kakarala at para. 7 5 does disclose determining three ranges using three thresholds but this is in relation to color plane "voting'' and not ballot voting with ambiguous marks or single color edge determination. For these reasons, the rejection of claim 34 is not sustained. Claims 35-38 and 46-48 contain the same or a similar limitation and the rejection of these claims is not sustained for these same reasons. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. Â§ 101; and claims 34-38 and 46-48 under 35 U.S.C. Â§ 103(a) as unpatentable over Chung, Seibel, and Kakarala. We conclude that Appellants have not shown that the Examiner erred in rejecting claims 27-33, 39--45, 49, and 50 under 35 U.S.C. Â§ 103(a) as unpatentable over Chung and Seibel. 6 Appeal2014-003066 Application 13/525,208 DECISION The Examiner's rejection of claims 27-33, 39--45, 49, and 50 is sustained. The Examiner's rejection of claims 34--38 and 46--48 is not sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 7