Ex Parte King et alDownload PDFPatent Trial and Appeal BoardJan 30, 201814479145 (P.T.A.B. Jan. 30, 2018) Copy Citation 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. 14/479,145 09/05/2014 Martin T. King 16113-5181004 8070 26192 7590 02/01/2018 FTSH fr RTfTTARnSON P C EXAMINER PO BOX 1022 MARIAM, DANIEL G MINNEAPOLIS, MN 55440-1022 ART UNIT PAPER NUMBER 2665 NOTIFICATION DATE DELIVERY MODE 02/01/2018 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN T. KING, DALE L. GROVER, CLIFFORD A. KUSHLER, and JAMES Q. STAFFORD-FRASER Appeal 2016-005543 Application 14/479,145 Technology Center 2600 Before JUSTIN BUSCH, JAMES W. DEJMEK, and JASON M. REPKO, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner’s decision to reject claims 2—21. Claim 1 was canceled and claims 22—24 are objected to as improperly depending from a canceled claim, namely claim 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER Claims 2, 13, and 21 are independent claims. The claims relate generally to methods and systems for “capturing text from rendered Appeal 2016-005543 Application 14/479,145 documents using supplemental information.” Spec. 112. More specifically, the claims are directed to using captured text and “supplemental information including information relating to the circumstances under which the text capture operation was performed” to determine what action to perform on the captured text. See Spec. 13. Claim 2 is reproduced below with the disputed limitation in italics'. 2. A method performed by a data processing apparatus, the method comprising: receiving, at a computing device, text captured from a rendered document during a text capture operation; receiving, at the computing device, supplemental information including information relating to circumstances under which the text capture operation was performed; determining, by the computing device and based on the supplemental information including the information relating to the circumstances under which the text capture operation was performed, an action to be performed on the captured text', and causing the action to be performed on the captured text. REJECTIONS Claims 3, 10, 14, and 21 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 12, and 16, respectively, ofU.S. Patent No. 8,831,365. Final Act. 5. Claims 2—21 stand rejected under 35 U.S.C. § 102(e) as anticipated by Spero (US 7,069,240 B2; Feb. 3, 2009). Final Act. 6-9. ANALYSIS The Double Patenting Rejection The Examiner rejects claims 3, 10, 14, and 21 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 12 and 16, respectively, ofU.S. Patent No. 8,831,365. Appellants do not challenge the Examiner’s rejection. Arguments not made are considered waived. See 2 Appeal 2016-005543 Application 14/479,145 37 CFR § 41.37(c)(l)(iv)(2015). Accordingly, Appellants have waived appeal of the double patenting rejection of claims 3, 10, 14, and 21, and we summarily sustain the rejection. The Anticipation Rejection The Examiner finds Spero discloses every element of claims 2—21 and, accordingly, rejects claims 2—21 as anticipated by Spero. Final Act. 6— 9. In particular, the Examiner identifies Spero’s ability to scan receipts while traveling discloses “receiving, at the computing device, supplemental information including information relating to circumstances under which the text capture operation was performed,” as recited in the independent claims. Final Act. 6—7; Ans. 8—9 (quoting Spero 2:48—51, 5:27—6:30, Figs. 1, 2). The Examiner emphasizes that traveling includes multiple locations and that Spero discloses the ability to scan receipts while traveling and generating expense reports, wherein the generation is based on the location information. Ans. 9. Appellants argue Spero merely discloses the ability to extract information from a scanned receipt and the relevant data (e.g., date, time, and location) extracted from the receipt are not related to the “circumstances under which the text capture operation was performed,” and are not a basis for determining an action to be performed on the captured text. App. Br. 4. Appellants also contend the Examiner’s finding in the Notice of Panel Decision from Pre-Appeal Brief Review (“Pre-Appeal Decision”), mailed on August 21, 2015, that Spero’s software uses the location where the receipt was scanned to sort the expense report is not supported by the evidence. App. Br. 4; Reply Br. 1—2. Appellants reiterate that the cited portions of Spero describe extracting the location data from a receipt, but Spero does not 3 Appeal 2016-005543 Application 14/479,145 disclose a computer processor receiving information about the location where the receipt was actually scanned or that the user is traveling when the scan occurs. App. Br. 4; Reply Br. 1 (explaining that the ability for a user to scan receipts while traveling “does not mean that ‘the image capture device’ is aware of the location where the ‘image capture device’ was used to scan the receipt”). We agree with Appellants. We also agree with the Examiner that Spero discloses extracting location information and determining to perform an action (i.e., generating, editing, or sorting an expense report) based in part on location information. See Spero 5:27—6:30. However, as Appellants argue, the location information on which the Examiner relies is not “information relating to circumstances under which the text capture operation was performed,” as recited in claim 2. Therefore, constrained by this record, we are persuaded of Examiner error. Accordingly, we reverse the Examiner’s rejection of independent claims 2, as well as claims 13 and 21, which recite commensurate limitations. We also reverse the Examiner’s rejections of claims 3—12 and 14—20, which depend therefrom. New Ground of Rejection We enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). In particular, we newly reject independent claims 2, 13, and 21 under 35 U.S.C. § 103(a) as being unpatentable over Spero. There is no dispute that Spero discloses the receiving captured text step of independent claim 2. Nor does there appear to be a dispute that Spero discloses the recited step of “causing the action to be performed on the captured text.” Appellants’ contend merely that the data the Examiner identified in Spero does not disclose the recited “supplemental information 4 Appeal 2016-005543 Application 14/479,145 including information relating to circumstances under which the text capture operation was performed.” Notably, Appellants responded to a portion of the Examiner’s findings from the Pre-Appeal Decision, but not to all of the findings. In particular, the Examiner found “Spero in Column 8, lines 1-12 teaches that the action of fraud detection is performed based on circumstantial information related to time stamps. In particular, Spero teaches utilizing time stamps and amounts captured of rec[ei]pt as circumstantial information in detecting duplicate rec[ei]pts and fraud detection.” Pre-Appeal Dec. 2. Spero discloses “the input devices also time stamps the date and time which the receipt image was captured[, which] is also of great assistance in preventing fraud.” Spero 4:3—5. Additionally, as noted by the Examiner, Pre-Appeal Dec. 2, Spero explains that Spero “checks for duplicate receipts entered either by mistake or for purposes of fraud[, which] can be done with relatively simple algorithms such as searching for identical amounts from the same vendor on the same day.” Id. at 8:1—5. Spero further discloses “[t]he invention may also include an expense rule checking module which applies rules to expenses.” Id. at 8:13—14. Accordingly, Spero’s disclosure of capturing the time at “which the receipt image was captured,” Spero 4:4—5 (emphasis added), teaches or suggests “receiving, at the computing device, supplemental information including information relating to circumstances under which the text capture operation was performed.” Such information is described in Appellants’ Specification as an example of “information relating to circumstances under which the text capture operation was performed.” See Spec. H 13 (explaining that information about the circumstances under which the 5 Appeal 2016-005543 Application 14/479,145 capture is performed and information about the user are “collectively called ‘context’”), 33 (including “time of scan” as an example of “scanning context information”), 51 (“In addition to the captured text, other factors . . . may form part of the search query, such as the time of the capture.”), 255—256 (describing the “[ujser’s real-world context,” which includes the time and location of the scan, as useful context information), 367—368 (explaining the importance of a timestamps). Furthermore, as discussed above, Spero discloses using rules to check the expense entries. Spero 8:1—14. One explicit example of this is described as “searching for identical amounts from the same vendor on the same day.” Id. at 8:3—5. Spero does not explicitly disclose how it uses the date and time at which the image is captured, but prior art must be evaluated for what the reference would have fairly suggested to one of ordinary skill in the art at the time of the invention. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807-08 (Fed. Cir. 1989); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference “must be evaluated for what they fairly teach one of ordinary skill in the art.”); see also MPEP § 2123 (9th ed. Rev. 08.2017, Jan. 2018). Given Spero’s disclosure of capturing the date and time and using rules to check expense entries, we find Spero at least suggests applying rules that use the time of capture to check the expense entries and determine an action to perform with respect to an expense sheet (e.g., adding an entry, flagging an entry for potential fraud, sorting entries). Accordingly, we conclude independent claim 2 would have been obvious to an ordinarily skilled artisan. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable 6 Appeal 2016-005543 Application 14/479,145 results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417. Independent claims 13 and 21 are directed to a system and computer storage medium, respectively, but recite steps commensurate in scope to the steps in method claim 2. There is no dispute that Spero discloses a system comprising a data processing apparatus and a memory apparatus in data communication with the data processing apparatus or a computer storage medium. Thus, for the reasons discussed regarding claim 2, we find Spero teaches, or reasonably suggests, the limitations of independent claims 13 and 21. For the reasons discussed above, we conclude independent claims 2, 13, and 21 are obvious under 35 U.S.C. § 103(a) in view of the teachings and suggestions of Spero. The Patent Trial and Appeal Board is a review body rather than a place of initial examination. We have made a new rejection regarding independent claims 2, 13, and 21 under 35 U.S.C. § 103(a), pursuant to 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable over Spero, or other prior art, either alone or in combination. We leave it to the Examiner to ascertain the appropriateness of any further rejections based on Spero or other references. Our decision not to enter a new ground of rejection for all claims, however, should not be considered as an indication regarding the appropriateness of further rejection or allowance of the non- rejected claims. See MPEP § 1213.02. 7 Appeal 2016-005543 Application 14/479,145 DECISION We affirm the Examiner’s decision to reject claims 3, 10, 14, and 21 on the ground of nonstatutory double patenting. We reverse the Examiner’s decision to reject claims 2—21 under 35 U.S.C. § 102(e). We newly reject claims 2, 13, and 21 as obvious over Spero pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides: A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 37 C.F.R. § 41.50(b). Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 8 Appeal 2016-005543 Application 14/479,145 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART; 37 C.F.R $ 41.50(b) 9 Copy with citationCopy as parenthetical citation