Ex Parte Brooks et al

Board of Patent Appeals and Interferences

Jan 24, 2012

10059478 (B.P.A.I. Jan. 24, 2012)

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.
10/059,478 01/29/2002 Ezekiel Brooks 40964/242827 5888
826 7590 01/25/2012
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
TAN, ALVIN H
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
01/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EZEKIEL BROOKS and GREGORY J. CLARY
____________

Appeal 2009-014646
Application 10/059,478
Technology Center 2100
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have filed a Request for Rehearing (hereinafter “Request”)
under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of Oct. 25,
2011 (hereinafter “Decision”).

Appeal 2009-014646
Application 10/059,478

2

The Decision affirmed the Examiner’s rejections of claims 1-27 and
57-101 under 35 U.S.C. § 103(a), as follows:

1. We affirmed the Examiner’s rejection of claims 1, 6, 8-10, 15,
17-19, 24, 26, 27, 57-59, 84, 85, 87-89, 91-93, 95-97, 100, and
101 under 35 U.S.C. §103(a) as being unpatentable over the
combination of Shetye (U.S. Pat. No. 5,627,349), Carini (U.S.
Pat. No. 6,456,740 B1), and Larson (U.S. Pat. No. 5,943,137).
2. We affirmed the Examiner’s rejection of claims 2-5, 11-14, and
20-23 under 35 U.S.C. §103(a) as being unpatentable over the
combination of Shetye, Carini, Larson, and Schneiderman
(“Designing the User Interface,” 1998).
3. We affirmed the Examiner’s rejection of claims 7, 16, 25, 60,
64-68, 72-76, 80-83, 86, 90, 94, 98, and 99 under 35 U.S.C.
§103(a) as being unpatentable over the combination of Shetye,
Carini, Larson, and further in view of Rosenberg (U.S. Pat. No.
6,128,006).
4. We affirmed the Examiner’s rejection of claims 61-63, 69-71,
and 77-79 under 35 U.S.C. §103(a) as being unpatentable over
the combination of Shetye, Carini, Larson, Rosenberg, and
Schneiderman.

In the Request, Appellants seek reconsideration of our Decision
affirming the Examiner’s rejection of claims 1-27 and 57-101 under 35
U.S.C. § 103(a). In particular, Appellants present, inter alia, the following
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Application 10/059,478

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arguments regarding the Examiner’s proffered reason for combining the
Shetye, Carini and Larson references:
Appellants respectfully submit that neither the Examiner nor
the Board has provided any apparent reason to combine
Shetye, Carini and Larson in the fashion of the claimed
invention, even if one assumed that the respective references
individually disclose aspects of the claimed invention. That is,
neither the Examiner nor the Board provided any apparent
reason to combine the references to teach or suggest a singular
manner for determining (by a pen-enabled computing device)
an electronic form associated with the preprinted form that is
both based upon captured position data (indicative of a position
of a writing stylus) and without consideration of characters
represented by any electronic handwriting.
(Request 2-3).
However, as we stated in our Decision:
[W]e also agree with the Examiner’s finding that Carini’s
disclosure of receiving electronic stroke data that identifies a
form (col. 4, ll. 13-17) would have taught or at least suggested
“capturing position data indicative of a position of a writing
stylus” (Claim 1). In particular, Carini describes stroke data that
can be based on “at least one stroke” that may be a symbol,
instead of a character. (Carini, col. 6, l. 22). We find that
entering stroke data necessarily reveals the position of a writing
stylus at the form entry position where the stroke data is
detected.
We also find unpersuasive Appellants’ contention that
Carini “teaches away” from adding a scanning feature to its
handwriting recognition system. (App. Br. 14; Reply Br. 3).
Our reviewing court guides that “[t]he prior art’s mere
disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such dis-
closure does not criticize, discredit, or otherwise discourage the
solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Here, the bar code scanning feature that may be cost
prohibitive or undesirable (as described in the background
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section of Carini referring to other patents, col. 1, ll. 58-67) is
not claimed by Appellants. (See representative claim 1).
Therefore, the description of the bar code scanning
feature found in the background section of Carini (Id.) does not
criticize, discredit, or otherwise discourage the solution claimed
by Appellants, which is more broadly recited in terms of the
negative limitation discussed above: “determining the electronic
form . . . without consideration of characters represented by
any electronic handwriting.” (claim 1, emphasis added).
(Decision 8-9).

In the Request, Appellants further contend:

Even if one modified Carini per Larson to "allow new forms
using such a pattern [machine-readable markings] to be
identified," as alleged, what is the rationale for Carini being
particularly modified to not just interpret a dot pattern on a
form, but to do so using its stylus as opposed to the digital
image interpretation means disclosed by Larson? This rationale
is completely lacking in both the Examiner's and Boards
analysis, which therefore fails to provide a rationale for the
combination in the fashion of the claimed invention.
(Request 4, emphasis added).

In response, we are unaware of any legal requirement that the
Examiner provide a rationale for the combination “in the fashion of the
claimed invention.” (Id.). To the contrary, our reviewing court guides that
“[a]s long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor.” In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
We acknowledge that “‘[r]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
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articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
However, in reviewing the record, we find the Examiner provides an
articulated reasoning with some rational underpinning that sufficiently
supports the legal conclusion of obviousness. (Ans. 6-7, 28-29).
Regarding the Examiner’s proffered reasons to combine the
references, we also observe that Appellants’ previous arguments1 appear
limited to a “teaching away” argument (i.e., Carini teaches away from
adding a scanning feature to its handwriting recognition system) that we
fully addressed in our Decision. (Decision 8-9).
Notwithstanding Appellants’ newly presented arguments,2 we are of
the view that Appellants’ claimed invention merely arranges prior art
elements with each element performing the same function it had been known
to perform and yields no more than one would expect from such an
arrangement. Our reviewing courts guide that such a combination of familiar
elements is obvious. See KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)).

1 See principal Brief at page 14 (para. 1), and Reply Brief at page 3: (“Carini
teaches away from adding a scanning feature to its handwriting recognition
system.”).
2 The Examiner and the Board “fail[ed] to provide a rationale for the
combination in the fashion of the claimed invention.” (Request 4,
emphasis added).

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CONCLUSION
We have considered the arguments raised by Appellants in the
Request, but find none of these arguments persuasive that our original
Decision was in error. It is our view that Appellants have not identified any
points that the Board has misapprehended or overlooked. We are still of the
view that the Examiner did not err in reaching the legal conclusion of
obviousness, based upon the record before us in the original appeal. We
have reconsidered our Decision but decline to grant the relief requested.
This Decision on Appellants’ “Request for Rehearing” is deemed to
incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1).

DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the request with respect to making
any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See also 37
C.F.R. § 41.52(b).
ORDER
REHEARING DENIED

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