Ex Parte Bala et al

Patent Trial and Appeal Board

Apr 28, 2017

13664810 (P.T.A.B. Apr. 28, 2017)

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.
13/664,810 10/31/2012 Raja Bala 20120613US01/16655238801 2558
145893 7590 05/02/2017
FOX ROTHSCHILD LLP / CONDUENT
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
EAWRENCEVTT.TE, NJ 08648
EXAMINER
SPINKS, ANTOINETTE T
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJA BALA, LINA FU, and HENGZHOU DING
Appeal 2017-0025481
Application 13/664,810
Technology Center 2600
Before JUSTIN BUSCH, CATHERINE SHIANG, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—24, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is Xerox Corporation.
(App. Br. 3.)
Appeal 2017-002548
Application 13/664,810
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to “aligning an image of a printed
substrate using a mobile device.” (Oct. 31, 2012 Specification (“Spec.”)
14.) Claim 1 is illustrative, and is reproduced below (with minor
reformatting):
1. A method of aligning an image of a printed substrate using
a mobile device, the method comprising:
receiving, by an image capturing device, an image
stream of a printed substrate;
determining, by a processing device operably
connected to the image capturing device, a location and a
geometry of the printed substrate from the image stream;
displaying, on a display operably connected to the
processing device, the image stream;
overlaying, by the processing device, at least a first
visual marker onto the printed substrate as displayed in the
image stream using the location and geometry;
determining, by the processing device, an
acceptable alignment tolerance based on at least one of the
following: a quality of the image capturing device or a
capability of available post image capture processing
software;
determining, by the processing device, if the mobile
device and the printed substrate are within the acceptable
alignment tolerance; and
if the mobile device and the printed substrate are not
within the acceptable alignment tolerance instructing, by
the processing device, a user of the mobile device to move
the mobile device to align the mobile device and the
printed substrate.
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Application 13/664,810
Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Kondo et al.
(“Kondo”)
Roach et al.
(“Roach”)
US 2006/0244749 Al Nov. 2, 2006
US 2013/0155474 Al June 20, 2013
Claims 1—4, 6, 7, 10—14, 16, 17, and 20-222 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Roach. (See Final Office Action
(mailed Oct. 16, 2015) (“Final Act.”) 3-7.)
Claims 5, 8, 9, 15, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Roach in view of the Examiner’s Official Notice.
(See Final Act. 7—9.)
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roach. (See Final Act. 9—10.)
ANAFYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
Claim 1 recites “determining ... an acceptable alignment tolerance
based on at least one of the following: a quality of the image capturing
device or a capability of available post image capture processing software.'1'’
2 Even though the Office Action does not list claim 21 under this rejection
(Final Act. 3), the Examiner addressed claim 21 in this rejection (Final Act.
7).
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Appeal 2017-002548
Application 13/664,810
(Emphases added.) The Examiner finds that Roach, in paragraphs 126
through 131 and 327, discloses this limitation. (Final Act. 4.) Appellants
contend that “[t]he system of Roach does not determine an acceptable
alignment tolerance based on a quality of the device or a capability of the
software (before capturing the image) as claim 1 requires; instead, it simply
determines whether or not the document is fully inside the box.” (App. Br.
9.) The Examiner responds that:
The MDIPE unit 2100 can receive a mobile document image
captured by a mobile device, or multiple mobile images for some
tests; perform preprocessing on the mobile document image;
select tests to be performed on the mobile document image; and
execute the selected tests to determine whether the quality of the
image of a high enough quality for a particular mobile
application (fig. 25; 1327). If the document and device are not
properly aligned or within the acceptable parameters of the
device/application, the user is informed via feedback on screen
(177—82). Roach explicitly discloses determining whether the
quality of an image is enough for a particular application (post
image capture processing software). This reads directly on
“determining an acceptable alignment tolerance based on . . . .”
(Ans. 10, emphasis in original omitted, italics added.)
We agree with Appellants that the determination of “an acceptable
alignment tolerance” is not based on “at least one of the following: a quality
of the image capturing device or a capability of available post image capture
processing software.” (Emphasis added.) Paragraph 327 of Roach, at most,
discloses “quality assurance testing [to make sure that] the quality of the
image [is] of a high enough quality for a particular mobile application”
rather than “determining ... an acceptable alignment tolerance based on
... a quality of the image capturing device or a capability of available post
image capture processing software.” We also agree with Appellants that
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Appeal 2017-002548
Application 13/664,810
paragraphs 77 through 82 of “Roach describe[] the steps of capturing an
image using a frame and guiding a user by providing feedback regarding
certain parameters relating to image quality.'1'’ (Reply 5, emphasis added;
see also Roach || 126-131 (discussing bounding box and image capture).)
Although it might be possible to base an alignment tolerance (e.g., 5 percent
of the document need not be within the boundary or the angles of the comers
of the document must be within 5 degrees of 90 degree angles) on the
quality of the image capturing device or the capability of available post
image capture processing software, we see no such disclosure. Therefore,
we agree with Appellants that the limitation at issue is not disclosed in
Roach.3
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 102 rejection of claim
l.4 Independent claim 11 contains a similar limitation at issue and the
Examiner cites to the same passages of Roach for this limitation. (Final Act.
7 (“Claims 1—4, 6—7, 10 and 21 are rejected as applied to claims 11—14, 16—
17, 20 and 22 above. The method steps as claimed would have been implied
by the apparatus of Roach et al.”).) Thus, for the same reason, we do not
sustain the 35 U.S.C. § 102 rejection of independent claim 11, and of claims
3 In case of further prosecution, the Examiner should consider whether the
term “an acceptable alignment tolerance” (emphasis added) is vague and
ambiguous under 35 U.S.C. § 112, paragraph 2. Furthermore, the Examiner
should also consider whether the claims are unpatentable under 35 U.S.C.
§ 103(a) over Roach.
4 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellants’ further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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Application 13/664,810
2—4, 6, 7, 10, 12—14, 16, 17, and 20—22, which depend from either
independent claim 1 or 11.
We also do not sustain the 35 U.S.C. § 103 rejections of dependent
claims 5, 8, 9, 15, 18, 19, 23, and 24, which depend from either independent
claim 1 or 11. The Examiner relies on Roach in the same manner discussed
above in the context of claim 1, and does not rely on any additional
reference or teaching in any manner that remedies the deficiencies of the
underlying anticipation rejection. (See Final Act. 7—10.)
DECISION
The decision of the Examiner to reject claims 1—24 is reversed.
REVERSED
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