Ex Parte Franklin et al

Patent Trial and Appeal Board

Nov 18, 2014

11585626 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GENE R. FRANKLIN, DAVID G. SCHWARTZ,
PETER HENDSBEE, VINAY MOHARIR, and N. BALAKRISHNAN
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Appeal 2012-010722
Application 11/585,626
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–6, 9–14, 16, and 18–20. App. Br. 2. Claims 7, 8, 15,
and 17 are canceled.1 Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Appeal Brief’s claims appendix conversely states that claims 7, 8, 15,
and 17 are withdrawn. App. Br. 14–17.
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PRIOR ART
The Examiner relies upon the following prior art in rejecting the
claims on appeal.
Cahill US 6,181,837 B1 Jan. 30, 2001
Ferlitsch US 2005/0068582 A1 Mar. 31, 2005
Young US 7,082,567 B1 July 25, 2006
Kotovich US 7,168,614 B2 Jan. 30, 2007
REJECTIONS2
The Examiner rejected claims 1–3 and 9–11 under 35 U.S.C. § 103(a)
as unpatentable over Cahill and Ferlitsch. Ans. 2–6.
The Examiner rejected claims 16, 18, and 19 under § 103(a) as
unpatentable over Cahill and Kotovich. Id. at 6–9.
The Examiner rejected claims 4–6 and 12–14 under § 103(a) as
unpatentable over Cahill, Ferlitsch, and Young. Id. at 10–12.
The Examiner rejected claim 20 under § 103(a) as unpatentable over
Cahill, Ferlitsch, and Kotovich. Id. at 12–14.

2 The Appeal Brief’s listings of claim rejections contradictingly states that
only claims 1–6, 9–14, 16, and 18–20 are pending but claims 7, 8, 15, 17,
21, and 22 are rejected. App. Br. 2. Note also, we find no record of a claims
21 and 22 ever pending in this application. See e.g., App. Br. 14–17 (claims
appendix listing claims 1–6, 9–14, 16, and 18–20); Spec. 24–26 (claims
section listing claims 1–19). Thus, we address the claims rejections as set
forth by the Answer; that is, addressing only claims 1–6, 9–14, 16, and 18–
20.
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ANALYSIS
Claims 1–3 and 9–11
Claims 1–3 and 9–11 are collectively addressed by Appellants (App.
Br. 9–10) and rejected as obvious over Cahill and Ferlitsch. We select claim
1 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (addressing grouped and
representative claims).3
Appellants argue that Ferlitsch is nonanalogous art. App. Br. 9. In
support, Appellants contend that “Ferlitsch does not address bank checks
. . . ” and “merely recognizes that multiple images may be combined in a
multi-page format.” Id.
The argument is not persuasive, particularly insofar as failing to
explain why Ferlitsch’s teachings would not be known to a skilled artisan of
bank check imaging. As confirmed by Appellants’ Specification, an artisan
of bank check imaging — the purpose of the claimed invention — is skilled
at implementing the TIFF standard (Spec. 1, ll. 3–7); e.g., skilled at placing
and modifying images within a TIFF file (id. at 1, ll. 3–7). And, as
acknowledged by Appellants’ arguments, Ferlitsch’s teachings are directed
to placing and modifying images within a TIFF file. App. Br. 9 (as quoted
above); see also Ferlitsch ¶¶ 1–11. In light of the above commonality, the
claimed invention and Ferlitsch’s cited teachings are clearly directed to
analogous arts. See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)
(“Two criteria have evolved for determining whether prior art is analogous:
(1) whether the art is from the same field of endeavor, regardless of the

3 Because the Notice of Appeal was filed prior to January 23, 2012, we
apply the 2011 edition of Title 37 (Code of Federal Regulations).
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problem addressed, and (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”).
Appellants also argue that neither Cahill nor Ferlitsch teaches a
post-modification recovery of TIFF files in their pre-modification form (i.e.,
returning modified files to their original form). App. Br. 9–10. As to Cahill,
Appellants state: “It appears that Cahill’s ‘recovery’ must be of the TIFFs
stored in BLOBs which appear to admittedly be unchanged upon
packaging.” Id. at 9. And, as to Ferlitsch, Appellants state: “Using
Ferlitsch’s approach allows one to proceed from one modified individual
TIFF file to another, but not to recover the individual TIFF tile prior to its
modification.” Id. at 10.
The argument is not persuasive, for each of at least two reasons.
First, the argument is not commensurate with the scope of claim 1.
As to the argued “recovery,” claim 1 recites only: “storing auxiliary
information including recovery data in the composite TIFF file allowing
recovery of the individual TIFF files.” Contrary to Appellants’ argument,
there is no requirement therein for a modification to the TIFF files, much
less for a post-modification return of the TIFF files to a pre-modification
form. And, Appellants have not established an unrecited meaning of
“recovery” — e.g., ordinary meaning in the art or Specification definition —
that requires a post-modification return of the TIFF files to a
pre-modification form. In ligtht of the above, claim 1’s “recovery”
limitation can be read on a recovery of unmodified TIFF files (as is alleged
to be taught by Cahill).
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Second, even assuming arguendo that claim 1 requires a
post-modification return of the TIFF files to their pre-modification form,
claim 1 would do so only with respect to the broadly-drafted “auxiliary
information . . . allowing recovery” language. In light of this language, the
information could be read on metadata that is merely stored by a composite
TIFF file and used as part of a process that retrieves a TIFF file returned to
pre-modification form. That is, the metadata need not be directed to
reversing the modification. For example, the metadata may be used to
retrieve a modified TIFF file that is thereafter returned to pre-modification
form or used to retrieve a TIFF file that was previously returned to
pre-modification form. Appellants have not established that the Cahill-
Ferlitsch combination fails to suggest such metadata.
For the foregoing reasons, the rejections of claims 1–3, 9–11, and 20
are sustained.
Claims 16, 18, and 19
Claims 16, 18, and 19 are rejected as obvious over Cahill and
Kotovich. As reflected below, an issue on appeal is whether the Examiner
erringly addresses a digital signature of claims 16, 18, and 19. Claim 16 is
independent and requires in relevant part: “inserting a digital signature into
the file utilized to identify TIFF images asaccurate copies . . . [.]” Claim 18
is independent and requires in relevant part: “interleav[ing] within the TIFF
file . . . [a] digital signature utilized to identify the displayed information as
accurate.” Claim 19 depends from claim 18.
The Examiner reads the above digital signatures on Kotovich’s
digitization of a handwritten signature. Ans. 7–8 and 16. Appellants argue:
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“[I]n the context of the present application ‘digital signature’ is a term of art
which does not include a bitmap digitizing a handwritten signature. This
definition by the specification is clearly a case of the patentee being his own
lexicographer.” Reply Br. 2 (citing Spec. 5, l. 14 – 6, l. 22; Fig. 6); see also
App. Br. 10.
Appellants’ argument is persuasive. As argued, Appellants’
Specification clearly defines “digital signatures” in a manner that does not
encompass a mere digitization of a handwritten signature. Spec. 5, l. 14 – 6,
l. 22 (stating “basic principles of digital signatures”).
For the foregoing reasons, the rejection of claims 16, 18, and 19 is not
sustained.
Claims 4–6 and 12–14
Claims 4–6 and 12–14 are collectively addressed by Appellants (App.
Br. 10–11) and rejected as obvious over Cahill, Ferlitsch, and Young. We
select claim 4 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 4 adds only that “an internal end-of-file marker precedes the
auxiliary data.” The Examiner reads the end-of-file (“EOF”) marker on
Young’s EOF teachings. Ans. 10. Appellants argue that Young’s cited EOF
is not applied to bank checks and “seems to be purely in the context of a
discussion of the TIFF standard.” App. Br. 10.
The argument is not persuasive, particularly insofar as neglecting that:
an artisan of bank check imaging — the purpose of the claimed invention —
is skilled at the TIFF format (see supra 4–5 (discussing the present
invention’s use of TIFF)); and Young’s cited EOF is a standard TIFF feature
(App. Br. 10 (quoted immediately above)). In light of this commonality, the
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claimed invention and Young’s cited teachings are clearly directed to
analogous arts. See supra 3–4 (quoting Clay, 966 F.2d at 658–59
(analogous art criteria)).
Appellants also argue:
[C]laim 4 specifically addresses “an internal end-of-file marker
precedes the auxiliary data” where that data as previously
defined by claim 1 includes “recovery data in the composite
TIFF file allowing recovery of the individual TIFF files”. The
use of an end of file marker more generally does not teach and
does not make obvious this more particular use thereof.
App. Br. 10–11.
The argument is not persuasive, particularly insofar as failing to
address the Examiner’s reliance on Young in combination with Cahill and
Ferlitsch. The Examiner proposes, in view of Young, to place EOFs before
the Cahill-Ferlitsch combination’s IFDs; that is, between the image data and
IFD portions of Ferlitsch’s Figure 4. Ans. 3 (addressing claim 1 with respect
to Ferlitsch Figs. 3–4) and 10 (addressing claim 4 by adding an EOF marker
to “the [Cahill-Ferlitsch] combination as described in claim 1”). The
Examiner explains that the modification would “indicate to the file reader
where the end of the specific file is such that it does not continue reading
into the next image file.” Ans. 16. Neither the above-quoted Appeal Brief
argument nor the Reply Brief, whatsoever, addresses this modification of the
Cahill-Ferlitsch combination. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” (citation omitted)).
For the foregoing reasons, the rejection of claims 4–6 and 12–14 is
sustained.
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Claim 20
Claim 20 depends from claim 1 (rejected as obvious over Cahill and
Ferlitsch) and is rejected as obvious over Cahill, Ferlitsch, and Kotovich.
Appellants do not address claim 20, nor do Appellants present any
arguments drawn to the merits of the combination of Cahill, Ferlitsch, and
Kotovich, in the briefs. The rejection of claim 20 is therefore, pro forma,
sustained. See 37 C.F.R. § 41.37(c)(1)(vii) (requiring appellants to address
each ground of rejection; stating unpresented arguments are waived).

DECISION
The Examiner’s decisions rejecting claims 1–6, 9–14, and 20 are
affirmed.
The Examiner’s decision rejecting claims 16, 18, and 19 is reversed.
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).

AFFIRMED-IN-PART

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