Ex Parte Homsany

Patent Trial and Appeal Board

Dec 21, 2018

13723734 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/723,734 12/21/2012
78189 7590 12/26/2018
Dropbox
c/o Polsinelli PC
1401 Eye (''I'') Street, N.W., Suite 800
Washington, DC 20005
FIRST NAMED INVENTOR
Ramsey Homsany
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.
085118-523230_P32US1 3175
EXAMINER
JACOBS, EDWARD
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
DropboxMail@Polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMSEY HOMSANY
Appeal2018-005252
Application 13/723, 734 1
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITT A, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7-16, and 18-28, which are all of the claims pending in the
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Dropbox Inc. as the real party in interest. See App.
Br. 2.
2 Claims 6 and 17 have been cancelled.
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STATEMENT OF THE CASE
According to Appellant, the claims are directed to automatically
storing imaged documents in particular file storage locations using a
machine-readable indicia, e.g., a bar code, included within the document.
Abstract. 3 Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method comprising:
receiving, by a processor, an email comprising a
computer-readable image data file comprising at least one
machine-readable indicium;
retrieving, by a processor, information associated with the
at least one machine-readable indicium;
determining, by a processor, a particular file storage
location associated with a user account and user account
information from the retrieved information;
automatically, by a processor, entering login information
using the user account information; and
storing, by a processor, the image in the particular file
storage location.
REFERENCES AND REJECTIONS
Claims 1-5, 7, 8, 16, 18-20, 27, and 28 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Hilbert (US 2008/0116255 Al;
3 This Decision refers to: (1) Appellant's Specification filed December 21,
2012 (Spec.); (2) the Final Office Action (Final Act.) mailed May 17, 2017;
(3) the Appeal Brief (App. Br.) filed October 13, 2017; (4) the Examiner's
Answer (Ans.) mailed February 22, 2018; and (5) the Reply Brief (Reply
Br.) filed April 23, 2018.
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published May 22, 2008) and Rawat (US 7,330,876 Bl; issued Feb. 12,
2008). Final Act. 2-8.
Claims 9, 10, and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hilbert, Rawat, and Goldberg (US 2013/0013560 Al;
published Jan. 10, 2013). Id. at 8-9.
Claims 11-15 and 22 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hilbert, Rawat, and Jiang (US 2007/0076985 Al;
published Apr. 5, 2007). Id. at 9-13.
Claim 23 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hilbert and Holoubek (US 2005/0273356 Al; issued Dec.
8, 2005). Id. at 13-16.
Claim 24 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hilbert, Holoubek, and Goldberg. Id. at 17.
Claims 25 and 26 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hilbert, Holoubek, and Jiang. Id. at 17-19.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ANALYSIS
Independent Claims l, 16, and 2 7
"receiving . .. an email comprising . .. [an] indicium"
Appellant contends the Examiner erred in finding the combination of
Hilbert and Rawat teaches "receiving, by a processor, an email comprising a
computer-readable image data file comprising at least one machine-readable
indicium," as recited in claim 1 and similarly recited in claims 16 and 27.
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App. Br. 8-10; Reply Br. 2--4. Appellant first argues Rawat describes the
"capabilities of ... email programs themselves, but the teachings are not an
explanation of what the programs can receive via email," namely, images
having "machine-readable indicium." App. Br. 9. Second, Appellant argues
"there is no evidence that emails are received by Hilbert's database." App.
Br. 10; Reply Br. 3--4. Third, Appellant argues "neither reference discusses
labeling the 'image' in Rawat using Hilbert's database." App. Br. 10.
Fourth, Appellant argues "any email received [by the combination of Hilbert
and Rawat] cannot contain the 'machine readable indicator' taught by
Hilbert until after it is processed in accordance with the teachings of Hilbert
and stored in Hilbert's database." App. Br. 9; Reply Br. 2.
We are not persuaded of error. The Examiner finds, and we agree,
Hilbert's presentation capturing system and "automatic image filing
method" (Final Act. 2--4 (citing Hilbert ,r,r 7, 17, 25, 38)) teach "receiving,
by a processor ... a computer-readable image data file comprising at least
one machine-readable indicium." In particular, Hilbert discloses a
presentation "capturing system that captures ... content projected on a
projection screen" and "saved in a storage system." Hilbert ,r 25; see id.
,r 17. Hilbert details that when its "capturing system receives a document for
storage," it "reads [an] indicator" from the document, e.g., "a barcode" to
appropriately "fil[e] the documents" in a particular "target folder." Id. ,r 25-
26; see id. ,r 17. The Examiner also finds, and we agree, Rawat's "typical
mail editor" that "receiv[ es] e-mail" (Rawat 1:32-33), which the Examiner
further finds is "known to carry ... graphical image attachments," teaches
"receiving, by a processor, an email comprising a computer-readable
image data file" (Final Act. 3). The Examiner combines Hilbert's teachings
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and Rawat's teachings to "add[] email as another well-known input data
channel to receive image data for Hilbert's automatic image filing method"
(Final Act. 4), i.e., the Examiner's combination extends Hilbert's filing
system to also file received email content.
Appellant's first two arguments do not address the Examiner's
combination of Hilbert and Rawat but instead, inappropriately attack Hilbert
and Rawat individually. In re Keller, 642 F.2d 413,426 (CCPA 1981)
(citation omitted). Appellant's first argument that Rawat does not teach that
its emailed images include a "machine-readable indicium" (App. Br. 9) does
not address the Examiner's reliance on Hilbert to teach that images include a
"machine-readable indicium" (Final Act. 2-3). Appellant's second
argument that Hilbert's "screen capture is not an 'email"' (Reply Br. 3--4;
App. Br. 10) does not address the Examiner's reliance on Rawat to teach
emailed images (Final Act. 3). The Examiner finds the combination of
Hilbert's teachings and Rawat's teachings teach "an email comprising a
computer-readable image data file comprising at least one machine-readable
indicium." Id. at 4.
Appellant's third argument that "neither reference discusses labeling
the 'image' in Rawat using Hilbert's database" (App. Br. 10) is also not
persuasive. As the Examiner correctly finds (Final Act. 3 ( citing Hilbert
,r 9) ), Hilbert teaches that documents are already labeled when received. See
Hilbert ,r 9 ( disclosing that "the labeling application first checks to
determine whether proper labeling is already present on the image and, if so,
the labeling application avoids applying labeling to the image"). As
discussed above, the Examiner relies on Rawat for teaching receiving emails
having images. Final Act. 3. Thus, the Examiner relies on Rawat's teaching
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of receiving emails having images in combination with Hilbert's disclosure
of images that are received that already have labeling ("indicium"). The
Examiner's rejection does not depend on Hilbert's separate disclosure of
applying a label if the document does not already have one. See Hilbert
,r,r 24--25, Fig. 2 (step 240).
Appellant's fourth argument that "any email received [by the
combination of Hilbert and Rawat] cannot contain the 'machine readable
indicator' taught by Hilbert until after it is processed in accordance with the
teachings of Hilbert and stored in Hilbert's database" (id. at 9; Reply Br. 2)
does not address the Examiner's finding that Hilbert teaches receiving
documents that are already labeled with an indicia. See Hilbert ,r 9. As
discussed above, Hilbert's capture system "teaches that an image is
'received with the 'machine readable indicator"' (i.e., machine-readable
indicium). Ans. 4; see also Hilbert ,r,r 17 (the "presentation capture system
interprets the displayed metadata indicator"), 25 ("the capturing system
receives a document for storage [and] it reads the indicator" which was
previously "applied to the document"). Rawat "teaches receiving, by a
processor, an email comprising a computer-readable image data file." Final
Act. 3 (emphasis removed). Accordingly, we are not persuaded the
Examiner erred finding the combination of Hilbert and Rawat teaches
"receiving, by a processor, an email comprising a computer-readable image
data file comprising at least one machine-readable indicium," as recited in
claim 1 and similarly recited in claims 16 and 27.
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"user account information"
Appellant contends the Examiner erred in finding the combination of
Hilbert and Rawat teaches "retrieving ... information associated with the at
least one machine-readable indicium ... determining ... user account
information from the retrieved information; [and] automatically ... entering
login information using the user account information," as recited in claim 1
and similarly recited in claims 16 and 27. App. Br. 10-12; Reply Br. 4--5.
Specifically, Appellant argues "[t]here is no teaching or suggestion that the
automatic login procedure of Rawat can include any information that is
'associated with the at least one machine readable indicium. '" App. Br. 12;
Reply Br. 4--5. Appellant further argues Hilbert's "[a]utomatic storage of a
document need not implicate login information." Reply Br. 4.
We are not persuaded of error. The Examiner finds (Final Act. 3;
Ans. 8), and we agree, Hilbert's "fetche[d] metadata corresponding to [an
image's] indicator," that "metadata includ[ ing] ... access rights (e.g.[,] an
access control list indicating user accounts permitted access)" (Hilbert
,r,r 25-26), teaches "retrieving ... information associated with the at least
one machine-readable indicium" and "determining ... user account
information from the retrieved information." The Examiner further finds
(Final Act. 3--4 ), and we agree, Rawat' s "automatic login procedure ... to
log the user into an account," which "fill[s] the user name and password
fields in the correct portions of the login" (Rawat 15:65-16:30) teaches
"automatically, by a processor, entering login information using the user
account information."
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Appellant's arguments that the "user account information" of Rawat's
"automatic login procedure" is not "determined from the 'retrieved
information,' which is 'associated with the at least one machine-readable
indicium"' (App. Br. 12; Reply Br. 4--5) and that Hilbert's "[a]utomatic
storage of a document need not implicate login information" (Reply Br. 4),
do not address the Examiner's combination of Hilbert and Rawat. The
Examiner relies on Hilbert to teach user account information that is
associated with an indicium (Final Act. 3; Ans. 8) and relies on Rawat to
teach automatically entering login information for a user account when login
is required (Final Act. 3). The Examiner combines Hilbert and Rawat to
teach automatically logging in to a user account that is associated with the
indicium. Id. at 3--4. Further, the Examiner determines that the combination
is supported by Hilbert's "implicit[]" suggestion of "automatic login"
because Hilbert describes user access rights information for remote "storage
in a content management system." Ans. 5 (citing Hilbert ,r 17); see Hilbert
,r,r 25-26. Appellant has not persuasively addressed the Examiner's
combination and, as such, we are not persuaded that the Examiner erred in
finding that the combination of Hilbert's teachings and Rawat's teachings
teaches "retrieving ... information associated with the at least one machine-
readab le indicium ... determining ... user account information from the
retrieved information; [and] automatically ... entering login information
using the user account information," as recited in claim 1 and similarly
recited in claims 16 and 27.
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"an image of a document"
Appellant contends the Examiner erred in finding Hilbert teaches "an
image of a document," as recited in claim 16. App. Br. 17-18. Specifically,
Appellant argues Hilbert's "Word document" does not teach an "image"
because "the [S]pecification specifically contrasts an image with a 'text
document' such as a 'Word document."' Id. (citing Spec. ,r 1).
We are not persuaded of error. The Examiner finds (Ans. 4, 6, 11),
and we agree, Hilbert's "screen capture system," which takes a screenshot of
a projected document (Hilbert ,r 38; see id. ,r 16-17, 25), teaches "an image
of a document." Appellant's argument, directed to the document itself, does
not address the Examiner's finding that Hilbert's screen capture of that
document teaches "an image of a document." Accordingly, we are not
persuaded the Examiner erred in finding Hilbert teaches "an image of a
document," as recited in claim 16.
Improper combination
Appellant contends the Examiner improperly combined Hilbert and
Rawat. App. Br. 12-15; Reply Br. 5---6. Specifically, Appellant argues
"there is no reason to combine the references" (App. Br. 12) because the
Examiner's reasoning for the combination does not "make any sense in light
of the teachings available at the time of the invention" (id. 14) and "the
teachings of Rawat are inapplicable to the teachings of Hilbert" (App.
Br. 15; Reply Br. 5).
We are not persuaded of error. The Examiner combines Hilbert and
Rawat to "add[] email as another well-known input data channel to receive
image data for Hilbert's automatic image filing method" and to "allow faster
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signon." Final Act. 4. We agree with the Examiner that the functionality of
Hilbert's system is improved by adding an additional type of content, i.e.,
emailed images, that is automatically filed by Hilbert's system. Id. Further,
we agree that the convenience and efficiency of Hilbert's system are
improved by "allow[ing] a user to login ... quickly and easily without
having to re-enter a user name and password." Id. (citing Rawat 4:8-10)
( emphasis omitted)). The Examiner's reasons for the combination improve
Hilbert's system and are supported by rational underpinning. KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398, 417--418 (2007) ("if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique").
Appellant's arguments do not persuade us that the improvements
outlined by the Examiner would not have reasonably motivated the skilled
artisan to combine Hilbert and Rawat. Contrary to Appellant's argument
that Hilbert's system is a "closed database system" (App. Br. 14; Reply
Br. 5), as the Examiner points out (Ans. 8), Hilbert's "storage system, e.g.,
server 175" is connected "via a network 170" (Hilbert ,r 25, Fig. 1) "such
as ... the Internet" (id. at ,r 22). Moreover, even if Hilbert's system were a
closed database system, the improvements outlined by the Examiner still
improve Hilbert's system in the manners described by the Examiner, i.e.,
additional types of content are automatically filed and faster login can be
provided.
Further, Appellant's argument that "it is not possible to use improving
Hilbert's storage as a reason to combine the references" (App. Br. 14) is not
persuasive because that argument is premised on Appellant's previous
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unpersuasive argument that "any email received by Rawat cannot contain
any of the features, e.g., labelling, that allow for Hilbert's storage" (id.).
Still further, Appellant's argument that "[a]utomatically signing on to
an email server or website has no applicability in the Hilbert system" is
based on Appellant's allegation that Hilbert's "users are signed-on as part of
the security apparatus at a company." App. Br. 15; Reply Br. 4. But, that
allegation is not supported by evidence found in the record and is, instead,
supported only by attorney argument which "cannot take the place of
evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Accordingly, we are not persuaded the Examiner erred by improperly
combining Hilbert and Rawat. We, therefore, sustain the 35 U.S.C. § 103(a)
rejection of claims 1, 16, and 27 as unpatentable over Hilbert and Rawat.
Dependent Claims 4 and 18
Appellant contends the Examiner erred in finding Hilbert teaches "the
information associated with the at least one machine-readable indicium
comprises a particular file name," as recited in claim 4 and similarly recited
in claim 18. App. Br. 15-16; Reply Br. 6-7. Specifically, Appellant argues
the claimed "'particular file name' is fundamentally different than
[Hilbert's] 'ID that identifies a record in a database."' App. Br. 15; Reply
Br. 6.
We are not persuaded of error. The Examiner finds, and we agree,
Hilbert's metadata information "implicitly" teaches "a 'particular file
name."' Ans. 10. In particular, the Examiner points out (id. 9-10) that
Hilbert's "metadata ... assist[ s] in filing the documents if the capturing
system uses a defined filing scheme" and "include[ s] ... storage
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information, such as target folder in a content management system" (Hilbert
,r,r 25-26). Because a file name is information that assists in filing a
document, particularly a document within a target folder of a filing system,
we agree with the Examiner that Hilbert teaches, or at least suggests,
"information ... compris[ing] a particular file name."
Appellant's arguments that Hilbert's "ID that identifies a record in a
database" does not teach a particular file name (App. Br. 15-16; Reply
Br. 6) and that the "Examiner ... improperly relies on inherency" (Reply
Br. 6-7) do not persuade us that the Examiner erred in finding that Hilbert's
metadata information, which assists in filing documents, at least suggests "a
particular file name."
Accordingly, we are not persuaded the Examiner erred in finding
Hilbert teaches or suggests "the information associated with the at least one
machine-readable indicium comprises a particular file name," as recited in
claim 4 and similarly recited in claim 18. We, therefore, sustain the 35
U.S.C. § 103(a) rejection of claims 4 and 18 as unpatentable over Hilbert
and Rawat.
Dependent Claim 7
Appellant contends the Examiner erred in finding the combination of
Hilbert and Rawat teaches "user account information comprises a usemame
and password," as recited in claim 7. App. Br. 16-17; Reply Br. 7-8.
Specifically, Appellant argues "Rawat is a single sign on reference, that
stores usemames and passwords remotely for easy login via a browser," but
"[t]here is no indication that this is ever associated with user account
information." Reply Br. 7-8.
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We disagree. Contrary to Appellant's argument (id.), the Examiner
points out (Ans. 10) that Rawat expressly describes "a user name and
password may be stored in association with an account" (Rawat 3:9-13).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Hilbert and Rawat teaches "user account information
comprises a usemame and password," as recited in claim 7. We, therefore,
sustain the 35 U.S.C. § 103(a) rejection of claim 7 as unpatentable over
Hilbert and Rawat.
Dependent Claim 8
Appellant contends the Examiner erred in finding Hilbert teaches "the
at least one machine-readable indicium comprises a bar code" as recited in
claim 8. App. Br. 17; Reply Br. 8. Appellant argues "since [the] bar code
has to be received by the system, there is no teaching or suggestion that this
takes place in the system of Hilbert when combined with Rawat." App.
Br. 17; Reply Br. 8.
We disagree with Appellant that Hilbert's system does not receive a
bar code. The Examiner finds (Ans. 11 ), and we agree, Hilbert teaches a
"label applied to the document" may "include[] a unique machine-readable
indicator, e.g., a barcode. When the capturing system receives a document
for storage, it reads the indicator .... " (Hilbert ,r 25). As such, Hilbert's
system captures, i.e., receives, a document that has been labeled with a bar
code indicator.
Accordingly, we are not persuaded the Examiner erred in finding
Hilbert teaches "the at least one machine-readable indicium comprises a bar
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code" as recited in claim 8. We, therefore, sustain the 35 U.S.C. § 103(a)
rejection of claim 8 as unpatentable over Hilbert and Rawat.
Dependent Claims 9, 10, and 21
Appellant contends the Examiner improperly combined Hilbert,
Rawat, and Goldberg. App. Br. 18-19; Reply Br. 9-10. Specifically,
Appellant argues the Examiner does not
explain[] ... how a person of skill in the art can recreate the
system of Hilbert with synchronization while also taking into
account that the labelling application is dynamically sorting and
altering every page of a document, along with the problems
associated with conflicts that take place between users editing the
files and the automatic labelling taking place. This is a complex
issue that is tough to solve, yet is unaddressed within the Office
Action.
App. Br. 18-19; Reply Br. 9-10. Appellant further argues the Examiner's
"alleged motivations are illusory and not supported by the art or the record."
App. Br. 18-19.
We are not persuaded of error. Appellant's argument that the
combination presents "a complex issue that is tough to solve" is premised on
"automatic labelling taking place." Id. However, the Examiner relies on
Hilbert's "storage [that] takes place after labeling dynamics." Ans. 12
( citing Hilbert ,r,r 17, 25-26) ( emphasis added). That is, the alleged labeling
issue that Appellant argues is not required in the Examiner's combination,
and, further, the claims do not recite a process of labeling. Moreover,
Appellant's argument that Goldberg's synchronization cannot be added to
Hilbert (Reply Br. 9-10) is not persuasive. As the Examiner finds, both
Goldberg and Hilbert are directed to networked storage systems (Ans. 12
(citing Hilbert ,r,r 17, 22, 25-26, Fig. 1; Goldberg ,r,r 3, 48)) and so "only
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ordinary skill" in the art would have been necessary to combine the
respective storage systems (id. at 14). As such, we are not persuaded that it
would have been "uniquely challenging or difficult for one of ordinary skill
in the art" to combine the features of Goldberg's storage system with
Hilbert's storage system. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citation omitted).
Furthermore, Appellant's argument that the motivations are "not
supported by the art or the record" (App. Br. 18-19) is not persuasive
because the teaching, suggestion, or motivation standard is not required in
determining obviousness under KSR, and, therefore, the reason to combine
need not be found in the references themselves. KSR, 550 U.S. at 418.
Indeed, the Examiner has articulated reasoning supported by rational
underpinning, namely, "improving retrieval performance and accessibility in
case of temporary network downtime, in addition to the advantages of
having routine off site automatic backups available in case of local storage
failures." Final Act. 9. Appellant has not proffered sufficient evidence or
argument to persuade us of error in the Examiner's reasoning. Accordingly,
we are not persuaded the Examiner erred by improperly combining Hilbert,
Rawat, and Goldberg. We, therefore, sustain the 35 U.S.C. § 103(a)
rejection of claims 9, 10, and 21 as unpatentable over Hilbert, Rawat, and
Goldberg.
Dependent Claim 12
Appellant contends the Examiner erred in finding Jiang teaches
"information associated with the second at least one machine-readable
indicium, the information comprising the particular file designator [and]
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using the particular file designator to determine that the first and second
images should be combined into a single file," as recited in claim 12. App.
Br. 20-22; Reply Br. 10-11. Specifically, Appellant argues the "'particular
file designator' of Jiang is not 'associated with the at least one machine
readable [indicium]. "' App. Br. 21. Appellant further argues Jiang does not
teach that the "batch" Jiang scans images into "is a single file." App. Br. 21;
Reply Br. 11.
We are not persuaded of error. The Examiner finds (Final Act. 12),
and we agree, Jiang's "labels 200 ... properly applied to document pages
300 in the right sequential order" (Jiang ,r 28, Figs. 2-3) teach a "particular
file designator." The Examiner further relies on (Final Act. 11-12; Ans. 14--
15) Jiang' s "image collection process, which merges images scanned
separately into one batch" based on the label's sequence information (Jiang
,I 29-30, 32).
Appellant's argument that the "'particular file designator' of Jiang is
not 'associated with the at least one machine readable [indicium]" (App.
Br. 21) inappropriately attacks Jiang individually when the Examiner's
rejection is based on the combination of Hilbert and Jiang. In re Keller, 642
F.2d 413,426 (CCPA 1981) (citation omitted). As discussed above, the
Examiner finds Hilbert teaches information associated with an indicium
included in an image. The Examiner combines Hilbert's teachings with
Jiang's teachings, that a particular file designator is information included in
an image, to teach "information associated with the second at least one
machine-readable indicium, the information comprising the particular file
designator."
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Furthermore, we are not persuaded by Appellant's argument that Jiang
does not teach or suggest merging images into a single file. App. Br. 21;
Reply Br. 11. Jiang describes "merg[ing] images scanned separately into
one batch." Jiang ,r 29. Although Jiang does not expressly state that a batch
is a single file, Jiang describes "merg[ing]" images; thus, Jiang teaches or at
least suggests merging images into a single file. 4 See Jiang ,r 29.
Accordingly, we are not persuaded the Examiner erred in finding
Jiang teaches, or at least suggests, "information associated with the second at
least one machine-readable indicium, the information comprising the
particular file designator; using the particular file designator to determine
that the first and second images should be combined into a single file," as
recited in claim 12. We, therefore, sustain the 35 U.S.C. § 103(a) rejection
of claim 12 as unpatentable over Hilbert, Rawat, and Jiang.
Independent Claim 23
"combining . .. files into a single file"
Appellant contends the Examiner erred in finding Holoubek teaches
"combining the first and second image files into a single file," as recited in
claim 23. App. Br. 23-26; Reply Br. 11-12. Specifically, Appellant argues
"[ c ]ombining multiple records associated with the envelope and content into
a single record for data entry," as described by Holoubek, "does not teach or
suggest combining the first and second image files into a single file, as the
files themselves are not combined." Reply Br. 12 ( citing Holoubek ,r 3 7);
App. Br. 24.
4 We further note that, as discussed below, Holoubek also teaches "first and
second images ... combined into a single file."
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We are not persuaded of error. The Examiner finds (Final Act. 15;
Ans. 16-17), and we agree, Holoubek discloses "creat[ing] a new database
batch file ... scan[ ning] the documents ( envelopes or contents) ... and
sav[ing] the scanned images to the database batch file" (Holoubek ,r 29) and
so teaches "combining the first and second image files into a single file."
Appellant's argument directed to "batch records" (Reply Br. 12
(citing Holoubek ,r 37); App. Br. 24) does not address the Examiner's
reliance on Holoubek' s batch file (Final Act. 15 ( citing Holoubek ,r 15);
Ans. 16-17). In particular, Holoubek describes saving scanned images to a
single "database batch file" (Holoubek ,r 29).
Accordingly, we are not persuaded the Examiner erred in finding
Holoubek teaches "combining the first and second image files into a single
file," as recited in claim 23.
Improper Combination
Appellant contends the Examiner improperly combined Hilbert and
Holoubek. App. Br. 26-27; Reply Br. 12-13. Specifically, Appellant
argues the combination "would destroy the filing system taught by Hilbert."
App. Br. 26. Appellant further argues "the actual motivation alleged in the
Office Action is speculative and most likely wrong." App. Br. 27; see Reply
Br. 13.
We are not persuaded of error. The Examiner combines Hilbert and
Holoubek to "more usefully store[]" the types of files taught by Holoubek,
i.e., "collating already-digitized multi-page [i]nput document images" such
as a physical envelope and its respective content, by using "Hilbert's
superior filing methods." Final Act. 15-16. As the Examiner points out,
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using Hilbert's filing system to file a single document that collates related
documents provides "improved organization, accessibility, and storage
efficiency" (id.) because all related documents are aggregated into a single
document. Accordingly, the Examiner's reasons for the combination
improve Hilbert's system and are supported by rational underpinning. KSR,
550 U.S. at 417--418.
Appellant's argument that the combination "would destroy the filing
system taught by Hilbert" because "files would no longer be separate files as
intended by the automatic filing system" (App. Br. 26) is not persuasive.
Appellant's argument alleges that Hilbert intends to only store separate files;
however, Appellant does not explain how or show where Hilbert discloses
such a limited intent. Moreover, we are not persuaded that filing a document
that is a collation of multiple images instead of individually filing those
images would "destroy" Hilbert's filing system- documents stored in a file
system can be documents that are individual components, e.g., an individual
slide, or a documents that are aggregations of individual components, e.g., a
slide show.
Further, Appellant's argument that the Examiner's stated motivation
is improper because "the user would ... have to confirm that all files need to
be batched together or combined and would remove the very automation that
is supposed to make it easier for the end user to store the company
documents as taught by Hilbert" (App. Br. 26) is not supported by evidence
in the record. Appellant does not identify where Hilbert or Holoubek require
user confirmation for combining files, nor does Appellant explain why the
combination would require user confirmation for combining files.
Moreover, Holoubek describes "automatically" creating a single batch file
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and scanning images to that file (Holoubek ,r 29), contradicting Appellant's
argument.
Still further, Appellant's arguments that the Examiner's stated
motivation is improper because "storing photos, especially at the time of the
invention, was very costly and a service that would not likely be utilized"
and so "rather than saving time and money, [the combination] would add
additional processing and storage costs" (App. Br. 27) are not persuasive.
Even assuming storing images is "very costly," Hilbert's system itself
describes the processing and storage images, e.g., screenshots of
presentations (Hilbert ,r,r 17, 25, 38), and so Hilbert's system already
contemplates the processing and storage costs for images.
Accordingly, we are not persuaded the Examine erred in combining
Hilbert and Holoubek. We, therefore, sustain the 35 U.S.C. § 103(a)
rejection of claim 23 as unpatentable over Hilbert and Holoubek.
Remaining Claims 2, 3, 5, 11, 13-15, 18-20, 22, 2~26, and 28
Appellant does not argue separate patentability for dependent claims
2, 3, 5, 11, 13-15, 18-20, 22, 24--26, and 28, which depend directly or
indirectly from claims 1, 16, 23, or 27. See App. Br. 8-28. Accordingly, for
the reasons set forth above, we sustain the Examiner's decision to reject
claims 2, 3, 5, 11, 13-15, 18-20, 22, 24--26, and 28.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-5, 7-16, and 18-28.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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