Ex Parte WU et al

Board of Patent Appeals and Interferences

Jun 29, 2004

09108716 (B.P.A.I. Jun. 29, 2004)

The opinion in support of the decision being entered today
was not written for publication in a law journal and
is not binding precedent of the Board.

Paper No. 19

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte HUI WU, STEWART B. KELLAND and NEIL P. BOYD
_____________

Appeal No. 2003-0493
Application No. 09/108,716
______________

ON BRIEF
_______________

Before BARRETT, FLEMING and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
rejection of claims 31 to 50.
Appeal No. 2003-0493
Application No. 09/108,716

2
The Invention

The invention relates to an image-based document processing system which
associates data from two types of documents, see page 2 of appellants’ specification.
The documents are categorized as proof and non-proof items, where proof items
include documents such as checks or deposit slips and non-proof items include
documents such as an adding machine tape, see page 5 of appellants’ specification.
These documents are scanned, recognition software determines information, such as
the amount identified on the check, which is stored along with the image. The data is
organized into two lists, the primary list contains data such as debit or credit amounts
from checks or deposit slips and the second list contains distinct elements that
correspond to amounts obtained from deposit slips or adding machine tape, see page 7
of appellants’ specification. The system to correlate data from the two lists uses a
window for each list to frame a number of discrete elements, see page 8 of appellants’
specification. The system then compares values in the window of each list to determine
if there are any matches.
Claim 31 is representative of the appellants’ invention and a copy of this claim is

appended to this decision.

References

Thompson U.S. Patent 5,530,773 June 25, 1996

Elischer et al. (Elischer) U.S. Patent 5,040,226 August 13, 1991

Appeal No. 2003-0493
Application No. 09/108,716

3
Rejections at Issue

Claims 31, 35, 36, 40, 41, 45, 46, and 50 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Thompson in view of Applicants’ disclosure of well-
known art.
Claims 32 through 34, 37 through 39, 42 through 44 and 47 through 49 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Thompson in view of
Applicants’ disclosure of well-known art and Elischer.
Opinion
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’ arguments set forth in the brief 1
along with the examiner’s rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellants and examiner, for the reasons
stated infra we reverse the examiner’s rejections of claims 31 through 50 under
35 U.S.C. § 103. Appellants argue on page 5 of the brief, that: “the mere fact that the

1This decision is based upon the Appeal Brief received August 23, 2001 (certified as being filed
on August 21, 2001, in accordance with 37 C.F.R. § 1.8(a)).
Appeal No. 2003-0493
Application No. 09/108,716

4
use of a window to frame elements is well known is insufficient to support a legal
conclusion of obviousness under 35 U.S.C. section 103(a)” and that the examiner
needs to explain why a person of ordinary skill in the art would be motivated to make
the combination of Thompson and the well known art. Before we consider the art used
in the rejection we must first determine the scope of the claim. Claims will be given
their broadest reasonable interpretation consistent with the specification, limitations
appearing in the specification will not be read into the claims. In re Etter 756 F.2d 852,
858, 225 USPQ 1, 5 (Fed. Cir. 1985). In analyzing the scope of the claim, office
personnel must rely on the appellant’s disclosure to properly determine the meaning of
the terms used in the claims. Markman v Westview Instruments, 52 F3d 967, 980,
34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a
claim ‘is not to be confused with adding an extraneous limitation appearing in the
specification, which is improper.’” (emphasis original) In re Cruciferous Sprout
Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed. Cir. 2002) (citing
Intervet America Inc v. Kee-Vet Laboratories Inc. 12 USPQ2d 1474, 1476 (Fed. Cir.
1989)).
Appellants identify on page 4 of the brief that:
Each of the claims 31-50 recites, inter alia, “… placing a first window of a
first predetermined size over the first set of global elements from the primary list
to define a first set of local elements which is a subset of the first set of global
elements …” and “ … placing a second window of a second predetermined size
over the second set of global elements from the secondary list to define a
second set of local elements which is a subset of the second set of global
elements…”

Appeal No. 2003-0493
Application No. 09/108,716

5
We concur, and find that each of independent claims 31, 36, 41 and 46, contains this
limitation. The term “window” used in this limitation is however not defined in the
specification. Page 8 of the appellants’ specification contains a description of a window
stating “[t]he use of a window to frame and thereby select particular elements for further
consideration thereof is well known…” Thus, we construe the term window to be a
device to select a number of elements for further consideration. We note that
appellants’ specification makes no mention of the window being a visual display type of
window, according we hold that the scope of the window limitation does not include a
visual type window. 2 In the context of the claims these windows are to select a number
of elements in a list, the elements selected are titled “local elements.” Further, we note
that the claim language that the window “defines a first set of local elements”
necessarily requires that the window contain more than one element.
The examiner responds to the appellants’ argument concerning the lack of
motivation, on page 11 of the answer, by providing the rationale that “[u]sing a window
to frame the individual values makes it easier for a user to control or view the individual
chosen items.” On page 11 of the answer, the examiner argues that Thompson’s items
18 or 20 meet the claimed “local elements.”

2 Though figure 2 of appellants’ specification shows windows items 51 and 52, Figure 2 is
described, on page 4 of appellants’ specification, as a “diagrammatic illustration” and not as a
sample of a display produced by the device.
Appeal No. 2003-0493
Application No. 09/108,716

6
We do not find the examiner’s reasoning to be convincing. An obviousness
analysis commences with a review and consideration of all the pertinent evidence and
arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and arguments.” In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “[T]he Board must not only assure that
the requisite findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the agency’s conclusion.” In re
Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). When
determining obviousness, “[t]he factual inquiry whether to combine references must be
thorough and searching.” Lee, 277 F.3d at 1343, 61 USPQ2d at 1433, citing
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008
(Fed. Cir. 2001). “It must be based on objective evidence of record.” Id. “Broad
conclusory statements regarding the teaching of multiple references, standing alone,
are not ‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617.
“Mere denials and conclusory statements, however, are not sufficient to establish a
genuine issue of material fact.” Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617,
citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993). The Federal Circuit states that, “[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the modification.”
Appeal No. 2003-0493
Application No. 09/108,716

7
In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In addition, our reviewing court stated in Lee, 277 F.3d at 1343, 61 USPQ2d at 1433,
that when making an obviousness rejection based on combination, “there must be
some motivation, suggestion or teaching of the desirability of making the specific
combination that was made by Applicant” (quoting In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
As stated supra we find that the scope of the independent claims includes that
the window select a number, more than one, of elements in a list to be considered. We
note that the examiner has not relied upon evidence of record to provide the motivation,
to modify Thompson to make use of a window. We find that the motivation asserted by
the examiner is not related to the claimed invention. As stated supra we do not find that
the scope of the limitation of a first and second window to include a visual component.
As such, we find that the motivation “using a window… makes it easer for a user to
control or view the individual chosen items” is not logically related to the claimed
invention.
Additionally, we find that Thompson neither teaches a window nor provides
suggestion to use a window. We find that Thompson teaches a method to correlate
entries on an adding machine tape with the amount on a check (Thompson, Column 4,
lines 11-14). The adding machine tape and check entries are on two lists (Thompson,
Appeal No. 2003-0493
Application No. 09/108,716

8
Column 4, lines 55-61). Thompson’s method sequentially goes through the entire list to
determine matches (see e.g. Thompson, Column 5, lines 19-44). Thompson does not
teach that a subset, a selected number of elements, of either of the lists is used in the
process of determining matches. Accordingly, we will not sustain the rejection of claims
31, 35, 36, 40, 41, 45, 46, and 50 under 35 U.S.C. § 103 as being unpatentable over
Thompson in view of Applicants’ disclosure of well-known art.
Finally, we turn to the rejection of Claims 32 through 34, 37 through 39, 42
through 44 and 47 through 49 under 35 U.S.C. § 103 as being unpatentable over
Thompson in view of Applicants’ disclosure of well-known art and Elischer. These
claims are ultimately dependent upon claims 31, 36, 41 or 46 and as such include the
limitation of a “window” as described supra. On page 10 of the answer, the examiner,
states that Elischer is relied upon to teach modifying Thompson to “calculate a value
based upon the recognition results from the primary and secondary lists when an exact
match fails to occur and compare the value with a predetermined value to allow a
determination to be made as to whether there is an approximate match between
recognition results from the primary and secondary lists.” The examiner has not shown
that Elischer teaches or suggests the limitation of a “window” as described supra.
Accordingly, we will not sustain the rejection of claims 32 through 34, 37 through 39, 42
through 44 and 47 through 49 under 35 U.S.C § 103, as it contains the same
deficiencies as noted in the rejection of claims 31, 35, 36, 40, 41, 45, 46, and 50 under
35 U.S.C § 103.
Appeal No. 2003-0493
Application No. 09/108,716

9
In view of the forgoing we will not sustain the rejection of claims 31 through 50
under 35 U.S.C. § 103. Therefore the decision of the examiner rejecting claims 31
through 50 is reversed.
REVERSED

LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh

Appeal No. 2003-0493
Application No. 09/108,716

10
MICHAEL CHAN
NCR CORP LAW DEPT
I P SECTION ECD-2
101 WEST SCHANTZ AVENUE
DAYTON, OH 454790001

Appeal No. 2003-0493
Application No. 09/108,716

11
APPENDIX
Claim 31

31. A method of processing documents in an image-based
document processing system to associate recognition results from
a primary source results list with corresponding recognition results
from a secondary source results list to improve assistance to an
operator of the image-based document processing system during
operation of the image-based document processing system, the
method comprising the steps of :

(a) scanning a first type of document to obtain scanned
data representative thereof,

(b) scanning a second type of document to obtain
scanned data representative thereof,

(c) processing scanned data representative of the first
type of document to provide recognition results associated with the
first type of document;

(d) processing scanned data representative of the second
type of document to provide recognition results associated with the
second document;

(e) storing recognition results associated with the first type
of document in a primary list, wherein the recognition results
associated with the first type of document comprise a first set of
global elements;

(f) storing recognition results associated with the second
type of document in a secondary list, wherein the recognition
results associated with the second type of document comprise a
second set of global elements;

(g) placing a first window of a first predetermined size
over the first set of global elements from the primary list to define a
first set of local elements which is a subset of the first set of global
elements;

Appeal No. 2003-0493
Application No. 09/108,716

12
(h) placing a second window of a second predetermined
size over the second set of global elements from the secondary list
to define a second set of local elements which is a subset of the
second set of global elements;

(i) comparing an element of the first set of global elements
from the primary list with an element of the second set of global
elements from the secondary list to determine if there is an exact
global match therebetween; and

(j) comparing an element of the first set of local elements
from the primary list with an element of the second set of local
elements from the secondary list to determine if there is an
approximate local match therebetween when an exact global match
fails to occur in step (i).