Ex Parte Jones et al

Board of Patent Appeals and Interferences

Jan 27, 2012

10202027 (B.P.A.I. Jan. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte RACHEL JONES, ALLAN MacLEAN, RICHARD BENTLEY,
GRAHAM BUTTON, JON O’BRIEN, KEVIN PALFREYMAN, and
JAMES E. PYCOCK
_____________

Appeal 2009-011230
Application 10/202,027
Technology Center 2100
______________

Before, ALLEN R. MacDONALD, JEFFREY S. SMITH, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
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2

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims and enter new
grounds of rejection.

INVENTION
The invention is directed to a method and system for filing electronic
documents using scan-placeholders. See Spec. 3-6. Claim 1 is
representative of the invention and is reproduced below:
1. An electronic document processing system for processing
electronic representations of documents, comprising:
an image acquisition device for acquiring a digital image of a
material document in an image acquisition operation;
an electronic filing system for organizing electronic
document files as file objects within a structure of filing system
objects;
a placeholder object generator for generating a scan-
placeholder class of filing system object; each scan-placeholder
object: (a) being distinct from a document file object; (b)
representing a document file of the digital image of the material
document which is not recognized as being present but which is
explicitly expected to be acquired using the image acquisition
device; and (c) being associated with control information for
controlling at least partly the image acquisition operation; and
a placeholder controller for initiating the image acquisition
operation in accordance with the control information, in
response to a user command to redeem the scan-placeholder
object;
wherein control information comprises an identifier for the
electronic document, post-scanning properties and notification
properties.
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REFERENCES
Blickenstaff US 5,537,585 Jul. 16, 1996

Constantin US 2003/0002068 A1 Jan. 2, 2003
(filed Jun. 27, 2001)

Cheo US 2004/0024778 A1 Feb. 5, 2004
(filed Sep. 24, 2001)
REJECTIONS AT ISSUE
Claims 1, 6-9, 11, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cheo and Constantin. Ans. 4-7
Claims 2-5, 10, 12-15, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cheo, Constantin, and Blickenstaff.
Ans. 8-9.
ISSUE
Did the Examiner err in rejecting claims 11-15 as being unpatentable
over the cited references because the references fail to teach or suggest a
scan-placeholder object that represents a document file that is recognized as
not being present but is explicitly expected to be acquired using the image
acquisition device?
1

ANALYSIS
Claim 11 requires the scan-placeholder object to be a document file
that is not recognized as being present but is expected to be acquired using
the image acquisition device. Claims 12-15 depend upon claim 11. The
Examiner finds that Cheo, in Figure 4, discloses “Target Files” which are

1
Appellants make additional arguments with respect to claims 11-15. App.
Br. 11-17. However, we do not reach these additional arguments as this
issue is dispositive of claims 11-15.
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images that are not present but are expected to become present when they
are located. Ans. 5. Appellants argue that Cheo does not reference, have
pointers to, or represent any target files, as claimed. App. Br. 12. We agree.
Paragraph [0034] of Cheo specifically defines the term “target file” as
“a computer file or record that can be indexed.” The Examiner does not
point to anywhere in the evidence nor do we find anything in the reference
that indicates that the “target files” are expected to be acquired. Instead, we
find that the reference implies that “target files” are already acquired and are
files which are waiting to be indexed. Therefore, we cannot sustain the
Examiner’s rejection of claims 11-15.
NEW GROUNDS OF REJECTION
We enter a new ground of rejection of claims 1-10 under 35 U.S.C.
§ 112, 1
st
paragraph because the written description does not enable the full
scope of the claims. Claim 1 recites the following:
a placeholder object generator for generating a scan-
placeholder class of filing system object; each scan-placeholder
object: (a) being distinct from a document file object; (b)
representing a document file of the digital image of the material
document which is not recognized as being present but which is
explicitly expected to be acquired using the image acquisition
device; and (c) being associated with control information for
controlling at least partly the image acquisition operation; and
a placeholder controller for initiating the image acquisition
operation in accordance with the control information, in
response to a user command to redeem the scan-placeholder
object.

Since the aforementioned “placeholder object generator” and
“placeholder controller” limitations are purely functional (i.e., generating,
initiating, etc.), any and all means of performing the function may be
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encompassed by the claim. See Miyazaki, 89 USPQ2d 1207, 1215-1217
(Bd. Pat. App. & Int. 2008); Supplementary Examination Guidelines for
Determining Compliance with 35 U.S.C 112 and for Treatment of Related
Issues in Patent Applications, 76 F.R. 7162 (Feb. 9, 2011). Appellants’
Specification does not provide sufficient description under 35 U.S.C. § 112,
1
st
paragraph to enable any and all means for performing the functions of
generating a scan-placeholder class of filing system object or initiating the
image acquisition operation.
We also enter a new ground of rejection of claims 16-20 under 35
U.S.C. § 112, 2
nd
paragraph because the claims are rendered indefinite by the
claim recitations of:
means for generating a scan-placeholder class of filing
system object in the electronic filing system, each scan-
placeholder object being distinct from a document file object,
and representing a document file which is not recognized as
being present but which is explicitly expected to be acquired
using the image acquisition device; [and]
means for associating control information with each scan-
placeholder object for controlling at least partly the image
acquisition process, wherein the control information comprises
an identifier for the electronic document, post-scanning
properties and notification properties.

The aforementioned claim recitations are presumed to invoke 35 U.S.C.
§ 112, 6
th
paragraph since they explicitly use the phrase “means for.” see,
U.S. Patent & Trademark Office, Supplementary Examination Guidelines for
Determining Compliance With 35 U.S.C. 112 and for Treatment of Related
Issues in Patent Applications, Part 1, § III.C.3, 76 Fed. Reg. 7162, 7167
(Feb. 9, 2011). Thus, in order to satisfy the definiteness requirement under
35 U.S.C. § 112, 2
nd
paragraph, the written description must link or associate
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structure, material, or acts to the claimed function. Id. However, here, the
“means for” recited in claim 16 are set forth in purely functional terms (i.e.,
generating, associating, etc.) and do not describe structure. The scope of
claim 16 is indefinite because one with ordinary skill in the art would not be
able to ascertain the structure that is intended to be encompassed by the
claim. See Ex parte Miyazaki, 89 USPQ2d 1207, 1212-13 (2008)
(precedential); Halliburton Energy Services v. M-ILLC, 514 F.3d 1244, 1255
(Fed. Cir. 2008); Supplementary Examination Guidelines for Determining
Compliance with 35 U.S.C 112 and for Treatment of Related Issues in
Patent Applications, 76 F.R. 7162 (Feb. 9, 2011). For example, it is unclear
from the claim language whether the “means for” corresponds to a software
program embedded on a computer readable medium and operable on a
general purpose computer, or whether it corresponds to a special purpose
processor. We further note that Appellants’ Specification does not offer any
meaningful enlightenment about the corresponding structure that performs
the functions of claim 16. Appellants direct attention to the object generator
6 and placeholder controller 4 described in paragraphs [055] and [066] –
[067] for written description support for the claimed means for generating
and means for associating. Response to Non-Compliant Appeal Brief 4
(October 22, 2008). The remainder of Appellants’ Specification does not set
forth a particular structure for the means for generating or associating with
the exception of depicting boxes 6 and 4 as part of the network-based
document repository system 10 in Figure 1.
We do not reach the Examiner’s rejections of claims 1-10 and 16-20
over the prior art. In light of the new grounds of rejection of claims 1-10 and
16-20 under 35 U.S.C. § 112, 1
st
paragraph and 2
nd
paragraph (respectively),
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and the positions taken by the Examiner and Appellants with respect to that
rejection, we exercise our discretion to not address the rejections over the
prior art. In re Steele, 305 F.2d 859, 862 (CCPA 1962).

CONCLUSION
The Examiner erred in rejecting claims 11-15 as being unpatentable
over the cited references because the references fail to teach or suggest a
scan-placeholder object that represents a document file that is recognized as
not being present but is explicitly expected to be acquired using the image
acquisition device.
SUMMARY
The Examiner’s decision to reject claims 11-15 is reversed.
We enter a new grounds of rejection of claims 1-10 under
35 U.S.C. § 112, first paragraph.
We enter a new grounds of rejection of claims 16-20 under
35 U.S.C. § 112, second paragraph.
TIME PERIOD
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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).
REVERSED
37 C.F.R. § 41.50(b)

ELD