George Angrick

Patent Trials and Appeals BoardOct 29, 2021

2020005933 (P.T.A.B. Oct. 29, 2021)

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 10/29/2021 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 2100 CHICAGO, IL 60603-3406 EXAMINER CHEN, HUO LONG ART UNIT PAPER NUMBER 2674 MAIL DATE DELIVERY MODE 10/29/2021 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 2020-005933 Application 11/039,057 Technology Center 2600 ____________ Before JEFFREY N. FREDMAN, MINN CHUNG, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–19, and 21–25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as George A. Angrick. Appeal Br. 3. Appeal 2020-005933 Application 11/039,057 2 BACKGROUND The Specification discloses that the “invention relates generally to document processing and more particularly to image capture and related processing.” Spec. ¶ 1. CLAIMS Claims 1 and 14 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A method comprising: at an apparatus whose components share a single briefcase-style housing and which apparatus is pre-provisioned with only a single transmission target address: - 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 and that is mounted to an inside surface of the briefcase-style housing; - a flatbed scanner as comprises one of the components and that is mounted to an inside surface of the briefcase-style housing; to provide a captured document image; - automatically compressing the captured document image to provide a compressed image; - automatically forwarding the compressed image to a predetermined processing center without the end user having selected the processing center from amongst Appeal 2020-005933 Application 11/039,057 3 alternatives by using the pre-provisioned single transmission target address. Appeal Br. 15. REJECTIONS 1. The Examiner rejects claims 1 and 12 under 35 U.S.C. § 103 as unpatentable over Mooney2 in view of Al-Khayyat3 and Picoult.4 2. The Examiner rejects claims 2, 3, 5, 7, 8, and 13 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Al-Khayyat, Picoult, and Chen.5 3. The Examiner rejects claim 6 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Al-Khayyat, Picoult, Chen, and Matsueda.6 4. The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Al-Khayyat, Picoult, and Fujii.7 5. The Examiner rejects claim 11 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Al-Khayyat, Picoult, and Shibata.8 6. The Examiner rejects claims 14, 17, 21, and 22 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Lee.9 7. The Examiner rejects claim 18 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Lee and Shibata. 8. The Examiner rejects claims 15, 16, 19, and 23 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Lee and Chen. 2 Mooney et al., US 6,980,331 B1, iss. Dec. 27, 2005. 3 Al-Khayyat, US 8,804,327 B2, iss. Aug. 12, 2014. 4 Picoult et al., US 2002/0065042 A1, pub. May 30, 2002. 5 Chen, US 7,019,869 B2, iss. Mar. 28, 2006. 6 Matsueda et al., US 6,301,016 B1, iss. Oct. 9, 2001. 7 Fujii et al., US 2002/0167690 A1, pub. Nov. 14, 2002. 8 Shibata et al., US 5,535,277, iss. July 9, 1996. 9 Lee, US 7,158,246 B1, iss. Jan. 2, 2007. Appeal 2020-005933 Application 11/039,057 4 9. The Examiner rejects claims 24 and 25 under 35 U.S.C. § 103 as unpatentable over Mooney in view of Lee and Fukui.10 DISCUSSION Claim 1 With respect to claim 1, the Examiner finds that Mooney discloses a method as claimed except for the claim requirements related to using the method with an apparatus in a “briefcase-style housing” that is “pre- provisioned with only a single transmission target address.” Final Act. 5–6. The Examiner relies on Al-khayyat with respect to placing scanning components in a briefcase-style housing, and the Examiner relies on Picoult regarding the apparatus being “pre-provisioned with only a single transmission target address.” Id. at 6–7. Specifically regarding Picoult, the Examiner finds: as shown in Fig.1, the input device 110 which can be a scanner or facsimile (paragraph 25) transmits the data to the data center 120 and then the data center 120 forwards the data received from the input device 110 to the mobile device 130 and/or destination device 140. The data center 120 is considered as the target device which forwards the data from the input device 110 to the mobile device 130 and/or destination device 140. Since only one data center 120 is being used in the system, the input device 120 is inherent pre-provisioned with only the address of the data center as the target address. In order for the input device 110 to transmit the data to the data center 120, the input device 110 needs to be pre-provisioned with the address of the data center 120 before the device 110 is able to transmit the data to the data center 120 since without knowing the address of the data center 120, the input device would not know where to transmit the data. In addition, according to the broadest reasonable interpretation, the limitation “which apparatus is pre-provisioned with only a single 10 Fukui et al., US 5,455,687, iss. Oct. 3, 1995. Appeal 2020-005933 Application 11/039,057 5 transmission target address” does not exclude to store other information beside only the single transmission target address which is the address of the data center 120. Therefore, the input device 110 is inherent to pre-provision with only a single transmission target address in the system shown in Fig.1 [.] Final Act. 7. Appellant raises only one argument regarding the Examiner’s reliance on Picoult. See Appeal Br. 9–11. Specifically, Appellant argues: The ordinarily-skilled person will find no suggestion that either the aforementioned input devices (110) or data centers (120) should be pre-provisioned with only a single transmission target address nor would that make any sense in context as those devices are described as belonging to users who are using those devices in ordinary course, such that the ordinarily-skilled person would expect those devices to be used to contact various and different recipients during usage. Appeal Br. 10. We are not persuaded of error by Appellant’s argument. An appeal was previously filed in this application and a decision was rendered, which addressed the same issue with respect to Picoult. See Decision on Appeal, mailed July 13, 2018 (“Decision”).11 The Decision states: Picoult at least suggests that the input device is pre-provisioned with a single target address. Picoult discloses a method in which a message is sent from an input device to a data center, which then identifies the intended recipient and forwards the message to the recipient via a mobile device. See Picoult ¶ 25. Picoult further discloses that the recipient destination may be determined based upon “an itinerary” sent to the data center or “it may be a default device.” Id. at ¶ 30. Sending a message in this manner 11 Although the claims were amended after the Decision was rendered, the claim language requiring an apparatus that “is preprovisioned with only a single transmission target address” is found in both the claim here and the claim before the Board in the previous appeal. See Decision 2. Appeal 2020-005933 Application 11/039,057 6 to “a default device” suggests that the recipient destination is pre- determined and pre-provisioned either at the input device or at the data center. Even though Picoult may not expressly disclose an apparatus that “is preprovisioned with only a single transmission target address,” we agree with the Examiner that one of ordinary skill in the art would have found pre-provisioning a device with a single target address obvious in light of Picoult’s disclosure of transmitting a message to a default device. Decision 8. Appellant does not address this prior Decision and we see no reason to deviate from the findings presented therein. Further, the Examiner findings here are consistent with the reasoning provided in the Decision. Based on the foregoing, we are not persuaded of error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1. Claim 14 With respect to claim 14, the Examiner finds that Mooney teaches an apparatus as claimed, except that Mooney does not teach “address information [that] is provisioned other than from a document that is scanned by the image scanner.” Final Act. 16. Regarding this claim requirement, the Examiner relies on Lee. Specifically, the Examiner finds that Lee teaches “[t]he telephone number of the destination is being entered using the operation panel of the fax machines.” Id. The Examiner determines that it would have been obvious to modify Mooney in view of Lee “to enter the destination number via the operation panel of the fax machine and then save the entered destination number because this will allow the destination number to be retrieved for fax more effectively.” Id. Appellant argues “that avoiding the manual inputting of a fax number is a principle of Mooney’s invention.” Appeal Br. 12 (citing Mooney col. 1, ll. 19–46; col. 3, ll. 16–23) (emphasis omitted). Appellant asserts that because “modifying Mooney to incorporate Lee’s manual-entry approach Appeal 2020-005933 Application 11/039,057 7 would clearly run exactly contrary to Mooney's primarily-espoused principle of operation to avoid such a manual-entry mechanism, such a modification is not a proper one to consider when determining obviousness.” Id. at 13. We are not persuaded of error. A review of Mooney makes clear that, even though Mooney seeks to provide functionality that avoids manual-entry errors, e.g., by scanning a document for a recipient’s fax number, this functionality is nonetheless being added in addition to traditional fax machine capabilities including the use of manual entry input devices. For example, Mooney discloses that “the present invention adds the capability to a fax machine to scan the first page of the outgoing fax . . . for detection and recognition . . . of the recipient’s fax number and automatically dials it if found.” Mooney col. 4, ll. 4–9. This indicates that the functionality is being added to a fax machine and suggests that the machine is still capable of sending a fax if the recipient’s fax number is not found on the outgoing fax. This understanding is supported by the fact that Mooney specifically discloses that “the fax machine 190 determines whether or not the fax number was manually entered or speed dialed. In this way otherwise conventional operation of the fax machine 190 is permitted.” Id. col. 5, ll. 4–7. Given this disclosure, we agree with the Examiner that Mooney merely discloses the scanning capability as an alternative means of inputting a recipient’s fax number. See Ans. 7–8. Our position finds substantial support in the underlying facts of the KSR decision itself, where the Supreme Court was not persuaded by the Federal Circuit’s reliance upon a statement from an “expert that claim 4 was nonobvious because, unlike in Rixon, the sensor was mounted on the support bracket rather than the pedal itself.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. Appeal 2020-005933 Application 11/039,057 8 398, 415 (2007). That is, like the current case, some reconstruction of the prior art elements would have been required to arrive at the claimed invention. The Court, however, found that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. Based on the foregoing, we are not persuaded of error in the rejection of claim 14. Accordingly, we sustain the rejection of claim 14. Remaining Claims Appellant does not raise separate arguments regarding the rejections of any of the dependent claims, and thus, the dependent claims fall with the independent claims. Accordingly, we also sustain the rejections of the dependent claims for the reasons discussed above. CONCLUSION We AFFIRM the rejections of claims 1–3, 5–19, and 21–25. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 12 103 Mooney, Al- Khayyat, Picoult 1, 12 2, 3, 5, 7, 8, 13 103 Mooney, Al- Khayyat, Picoult, Chen 2, 3, 5, 7, 8, 13 6 103 Mooney, Al- Khayyat, Picoult, Matsueda 6 9, 10 103 Mooney, Al- Khayyat, Picoult, Fujii 9, 10 Appeal 2020-005933 Application 11/039,057 9 Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 11 103 Mooney, Al- Khayyat, Picoult, Shibata 11 14, 17, 21, 22 103 Mooney, Lee 14, 17, 21, 22 18 103 Mooney, Lee, Shibata 18 15, 16, 19, 23 103 Mooney, Lee, Chen 15, 16, 19, 23 24, 25 103 Mooney, Lee, Fukui 24, 25 Overall Outcome 1–3, 5–19, 21–25 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R. § 1.136 (a)(l)(iv). AFFIRMED