Ex Parte Angrick

Patent Trial and Appeal Board

Jul 12, 2018

11039057 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/039,057 01/20/2005
22242 7590 07/13/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
George A. Angrick
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. CONFIRMATION NO.
8079-83883-US 4150
EXAMINER
CHEN, HUO LONG
ART UNIT PAPER NUMBER
2676
MAIL DATE DELIVERY MODE
07/13/2018 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
Appeal2016-007025 1
Application 11/039,0572
Technology Center 2600
Before ERIC B. GRIMES, JEFFREY N. FRED MAN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-3, 5-19, and 21-25, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Dec. 16,
2015), the Reply Brief ("Reply Br.," filed July 6, 2016), the Examiner's
Answer ("Ans.," mailed May 24, 2016), and the Final Office Action ("Final
Act.," mailed June 9, 2015).
2 According to Appellant, the real party in interest is Medidal Corporation.
Appeal Br. 3.
Appeal 2016-007025
Application 11/039,057
BACKGROUND
According to Appellant, "[the] invention relates generally to
document processing and more particularly to image capture and related
processing." Spec. ,r 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 housing
and which apparatus is preprovisioned 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;
- a flatbed scanner as comprises one of the
components;
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
alternatives by using the pre-provisioned single
transmission target address.
Appeal Br. 13.
2
Appeal 2016-007025
Application 11/039,057
REJECTIONS
1. The Examiner rejects claims 14, 1 7, 21, and 22 under 3 5 U.S. C. § 102 ( e)
as anticipated by Mooney. 3
2. The Examiner rejects claims 1-3, 5, 7, 8, 12, 13, 15, 16, 19, and 23 under
35 U.S.C. § I03(a) as unpatentable over Mooney in view of Chen4 and
Picoult. 5
3. The Examiner rejects claim 6 under 35 U.S.C. § I03(a) as unpatentable
over Mooney in view of Chen, Picoult, and Matsueda. 6
4. The Examiner rejects claims 9 and 10 under 35 U.S.C. § I03(a) as
unpatentable over Mooney in view of Chen, Picoult, and Fujii. 7
5. The Examiner rejects claim 11 under 35 U.S.C. § I03(a) as unpatentable
over Mooney in view of Chen, Picoult, and Shibata. 8
6. The Examiner rejects claim 18 under 35 U.S.C. § I03(a) as unpatentable
over Mooney in view of Shibata.
7. The Examiner rejects claims 24 and 25 under 35 U.S.C. § I03(a) as
unpatentable over Mooney in view of Fukui. 9
DISCUSSION
Anticipation
The Examiner finds that Mooney discloses each limitation of
independent claim 14. Final Act. 4--5. More specifically, in pertinent part,
3 Mooney et al., US 6,980,331 Bl, iss. Dec. 27, 2005.
4 Chen, US 7,019,869 B2, iss. Mar. 28, 2006.
5 Picoult et al., US 2002/0065042 Al, pub. May 30, 2002.
6 Matsueda et al., US 6,301,016 B2, iss. Oct. 9, 2001.
7 Fujii et al., US 2002/0167690 Al, pub. Nov. 14, 2002.
8 Shibata et al., US 5,535,277, iss. July 9, 1996.
9 Fukui et al., US 5,455,687, iss. Oct. 3, 1995.
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Appeal 2016-007025
Application 11/039,057
the Examiner finds that Mooney discloses a fax machine that faxes a
scanned document to a recipient's address, which may be extracted from the
scanned page, and the Examiner finds that storing the recipient's address in
this manner discloses a memory having "address information [for] only a
single intended (predetermined) recipient's address (a single predetermined
processing center stored therein) when only a single intended
(predetermined) recipient[] is designated to receive the scanned document."
Id. at 5. The Examiner also finds that the claim does not preclude the
memory from including content other than the address of the single
predetermined processing center. Id.
As discussed below, we are not persuaded of reversible error in the
rejection of claim 14.
Appellant argues that Mooney only discloses that the scanned page is
stored in memory without any indication whether that content is the only
content in memory. Appeal Br. 9. Appellant argues that without an
averment in Mooney that the address content from the scanned page is the
only address content in the memory, "it is only merely possible that
Mooney's memory includes address information for only a single
predetermined processing center." Id. Thus, Appellant argues that Mooney
lacks a specific teaching to show that Mooney inherently discloses a
memory having address information for only a single predetermined
processing center, as required by claim 14. Id. at 10.
We agree with the Examiner that the memory may be considered to
have only a single predetermined processing center "when only a single
intended (predetermined) recipient's destination address is designated to
receive the scanned document." Ans. 5 (citing Mooney col. 8, 11. 22-30; col.
4
Appeal 2016-007025
Application 11/039,057
9, 11. 14--18). Mooney discloses an apparatus with which an image of a
document is automatically sent to a desired destination and in which the
destination information is obtained from the image itself via optical
character recognition. See Mooney col. 2, 11. 57---63. Mooney discloses that
"[t]he document is automatically sent to a unique destination identified by
the textual data." Id. at col. 3, 11. 1-3. Thus, with respect to the document
scanned, the address for the predetermined processing center is within the
document itself. Where a document contains only one such address, when
scanned, the memory would necessarily include address information for only
a single predetermined processing center with respect to that particular
document. Although the memory may have other information stored
therein, including other address information, the only address information
for the scanned document would be with respect to the single predetermined
processing center included with the document. Therefore, we agree with the
Examiner that Mooney discloses a memory as claimed within the broadest
reasonable interpretation of the claim.
Further, to the extent Appellant argues that Mooney does not include a
memory as claimed because Mooney's memory might include other address
information, we find that when Mooney's device and memory are used for
the first time, the memory would necessarily not have any such information
therein. Thus, we also find that when a document with a single
predetermined processing center address listed thereon is scanned in a
device with a memory being used for the first time, Mooney's device would
necessarily include address information for only a single predetermined
processing center once the document is scanned and stored in that memory.
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Application 11/039,057
Finally, we note that the claim does not require a specific
configuration for the memory. Where claim language requires that a
specific element is "configured to" or "adapted to" perform some function,
the claim necessarily requires something more than an element with the
mere capability to perform that function. See Aspex Eyewear, Inc. v.
Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (noting that
claim language "configured to" is construed more narrowly than "capable
of' and holding that where claim language including the phrase "adapted to"
is to be construed consistent with "configured to" language it requires that
the structure must be "designed or configured to accomplish the specified
objective, not simply that [it] can be made to serve that purpose.") The
claim here recites no such language that provides a limitation on the
configuration of the device's memory, and the memory may be broadly
construed as any memory that is capable of having address information for
only a single predetermined processing center stored therein. We find that
Mooney's device would necessarily have this capability. As discussed
above, when a document with a single predetermined processing center
address listed thereon is scanned in a device with a memory being used for
the first time, Mooney's device would necessarily include address
information for only a single predetermined processing center once the
document is scanned and stored in that memory. Therefore, Mooney's
device and memory are capable of having address information for only a
single predetermined processing center stored therein.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 14. Accordingly, we sustain the rejection.
Appellant does not present arguments with respect to the rejection of
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Appeal 2016-007025
Application 11/039,057
dependent claims 17, 21, and 22, and thus, we also sustain the rejection of
those claims for the same reasons.
Obviousness
Claim 1
With respect to claim 1, the Examiner finds that Mooney discloses a
method as claimed except that Mooney does not explicitly disclose the use
of an automatic document feed scanner or a flatbed scanner and that Mooney
does not disclose that the apparatus is pre-provisioned with only a single
transmission target address and using that address to perform automatic
forwarding of an image. Final Act. 8-9. With respect to the feed scanner or
flatbed scanner, the Examiner finds that the use of such would have been
obvious in view of Chen. Id. at 9. Regarding the pre-provisioned target
address, the Examiner relies on Picoult. Id. at 9-10.
With respect to Picoult, the Examiner finds that Picoult discloses an
apparatus that is pre-provisioned with a single target address because Picoult
discloses an input device that automatically forwards data from the input
device to a single data center, which the Examiner considers the single pre-
provisioned transmission target. Id. at 10. The Examiner concludes that it
would have been obvious to use such a pre-provisioned data center in the
combination of Mooney and Chen in order to more effectively distribute a
scanned document. Id.
As discussed below, we are not persuaded of error in this rejection by
Appellant's arguments.
We note that Appellant discusses the Examiner reliance on Picoult
only in the Reply Brief. Appellant argues that "[ a ]t most, ... Picoult teaches
sending a message using an address. From where that address hails,
7
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Application 11/039,057
however, is beyond the scope of Picoult's teachings." Reply Br. 4. Because
the origin of that address is not disclosed in Picoult, Appellant asserts that
the Examiner erred in finding that Picoult teaches an apparatus that is pre-
provisioned with a single target address. Id. We disagree and find that
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 ,r 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 ,r 30. Sending a message in this manner 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.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 1. Accordingly, we sustain the rejection of
claim 1.
Claims 2, 3, 5-13, 15, 16, 18, 19, and 23-25
Appellant does not raise any arguments with respect to the remaining
claims on appeal beyond relying on their dependency from the independent
claims addressed above. Accordingly, for the reasons discussed above, we
also sustain the rejections of claims 2, 3, 5-13, 15, 16, 18, 19, and23-25.
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Appeal 2016-007025
Application 11/039,057
CONCLUSION
We AFFIRM the rejections of claims 1-3, 5-19, and 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)(l )(iv).
AFFIRMED
9