Ex Parte Latimer et al

Board of Patent Appeals and Interferences

Nov 24, 2010

10638607 (B.P.A.I. Nov. 24, 2010)

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.
10/638,607 08/11/2003 Paul J. Latimer 11111.00 7035
26884 7590 11/24/2010
PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2nd FLOOR
DULUTH, GA 30096
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
11/24/2010 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)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL J. LATIMER, MICHAEL ANCELL, DAVID ELWIN,
JOSEPH L. SHANNON, and KEVIN S. SHAMANSKI
____________

Appeal 2010-004232
Application 10/638,607
Technology Center 3600
____________

Before, ANTON W. FETTING, JOSEPH A. FISCHETTI and
BIBHU R. MOHANTY Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 16-20. Claims 1-12 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM (37 C.F.R. § 41.50(b).

THE INVENTION
Appellants claim a system and method for consolidating remotely-
captured cheque image data. (Specification 1: 6-8).
Claim 16, reproduced below, is representative of the subject matter on
appeal.

16. A method of operating a consolidation server to consolidate
cheque image data from a first self-service terminal and cheque
image data from a second self-service terminal which is
different from the first self-service terminal, the method
comprising:
receiving first cheque image data from the first self-service
terminal which is located remotely from the consolidation
server;
receiving second cheque image data from the second self-
service terminal which is located remotely from the
consolidation server and remotely from the first self- service
terminal;
storing the first cheque image data received from the first self-
service terminal in a data storage medium located at the
consolidation server;
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storing the second cheque image data received from the second
self-service terminal in the data storage medium located at the
consolidation server;
consolidating the first and second cheque image data stored in
the data storage medium when a trigger event occurs;
creating at least one ghost document when the trigger event
occurs; and sending the consolidated first and second cheque
image data and the at least one created ghost document to an
image-based cheque processing system for further processing.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Jones US 2002/0001393 A1 Jan. 3, 2002
Dutta US 2002/0152170 A1 Oct. 17 2002
Slater EP 0984410 A1 Jul. 7, 1999

The following rejection is before us for review.
The Examiner rejected claims 16-20 as unpatentable under 35 U.S.C.
§ 103(a) over Dutta in view of Jones and further in view of Slater.
ISSUE
Did the Examiner err in rejecting claims 16-20 on appeal as being
unpatentable under 35 U.S.C. § 103(a) over Dutta in view of Jones and
further in view of Slater on the grounds that a person with ordinary skill in
the art would understand that since Jones discloses consolidated processing
from plural ATMs at the single image processing system 16, the
combination meets the consolidating requirements of claim 16?
Did the Examiner err in rejecting claims 18-20 on appeal as being
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unpatentable under 35 U.S.C. § 103(a) over Dutta in view of Jones and
further in view of Slater on the grounds that a person with ordinary skill in
the art would understand that since Dutta discloses a header in a message
containing a check image, Dutta meets the claim requirements because the
content in the header, standing alone, is nonfunctional descriptive material?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that:
…Jones discloses a method of operating a
consolidation server to consolidate cheque image
data from a first self-service terminal and cheque
image data from a second self-service terminal
which is different from the first self- service
terminal, the method comprising: consolidating the
first and second cheque image data stored in the
data storage medium when a trigger event occurs
(Jones, [0384]) with further clarification at (Jones,
fig. la and lb, [0115]- a plurality of remote image
capture units (12) reads on first self- service
terminal and a second self-service terminal).
(Answer 5).
2. Jones discloses that the plural image capturing units 12 may be
included in automated teller machines (ATMs) (¶ [0124]).
3. Jones discloses that once the images are scanned at the ATMs the:
…[I]mages are forwarded to a central location
where proof-of-deposit processing occurs.
Additionally, the financial institution could choose
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to process the image immediately at the central
location or the financial institution could store the
images for a period of time in some kind of
electronic reservoir for proof of depositing at a
later time. Processing the images at a central
location has the advantage of not slowing down
service at the remote location.
(¶ [0129]).
4. Jones discloses that:
The remote image capture unit 12 provides either
"raw" image data or an image file to the image
processing system 16. Raw image data is
unformatted data that is sent as a series a binary
digits. Raw image data is transmitted from remote
image capture units which lack the capability to
process the raw data into an image file. The raw
data is sent to the image processing system 16
where processing is accomplished, as described
below.
(¶ [0140]).
5. Dutta discloses a message 1000 is sent from an ATM to a financial
institution which includes an electronic check within message the 1000.
(¶ [0053]).
6. Dutta discloses that the message 1000 includes a header 1002
which may include information, such as an identification of attachments and
a delivery route for the message. (¶ [0054]).

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ANALYSIS
We affirm the rejection of claims 16-20.
Appellants argue that “[t]here is no disclosure at all in Slater that a
consolidation server is producing the facsimile deposit slip and then sending
it to a processing center.” (Appeal Br. 3)
While we agree with Appellants that the cited portion of Slater fails to
support the Examiner’s assertion that Slater discloses consolidating cheque
image data from first and second different self-service terminals
(Answer 5-6), we nevertheless find that Jones discloses this feature.
That is, we find that that Jones discloses consolidating and receiving
at a central image processing system 16 cheque image data from different
self-service terminals. (FF 2, 3). According to Jones, the image processing
system 16 receives check images from plural image capturing units 12 which
may be included in automated teller machines ATMs. (FF 2-4). Moreover,
Jones discloses storing for a period of time the images received from the
plural ATMs in some kind of electronic reservoir. (FF 3). Jones further
discloses the desirability of processing captured images remotely of the self-
service terminals stating that “processing the images at a central location has
the advantage of not slowing down service at the remote location.” (FF 3)
Thus, we find that Jones discloses the consolidated processing of images at
the single image processing system 16 sent from plural ATMs because the
operations at the central image processing system 16 consolidates what
otherwise would have had to be done separately at individual self–service
terminals.
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Appellants argue that “…the "header 1002" shown in Figure 10 of
Dutta is not a "batch header" which can be used for the purpose of managing
workflow at a keying and balancing workstation.” (Appeal Br. 4)
Claim 18 recites in pertinent part at least one ghost document
comprises a ghost batch header.
The Examiner found that Dutta at ¶ [0054] discloses that a “…header
1002 may include information such as an identification of attachments”.
(Answer. 7)
Appellants seek a meaning of the term “batch header” based on what
Appellants assert is a precise meaning in the art. (Appeal Br. 4). In so doing,
they seek to impute the function of managing workflow at a keying and
balancing workstation into the term. Id.
We are not persuaded by this argument and will not impute function
to a term based on the content it displays. That is, we find that Dutta
discloses that a message 1000 is sent from an ATM to a financial institution
which includes an electronic check within message the 1000. (FF 5). We
further find that Dutta discloses that the message 1000 includes a header
1002 which may include information, such as an identification of the
electronic check and a delivery route for the message. (FF 6). We find that
since Dutta discloses a message, analogous to Appellants’ “ghost
document”, which contains a header 1002, it meets the claim requirement
because the content in the header, standing alone, is nonfunctional
descriptive material and cannot render nonobvious an invention that would
have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
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2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
Similarly, the term “tray header” as recited in claims 19 and 20 cannot
distinguish in accordance with our analysis above since Dutta discloses a
header, the content of which in the header, standing alone, is nonfunctional
descriptive material and cannot be given patentable weight.
CONCLUSION OF LAW
We conclude the Examiner did not err in rejecting claims 16-20 under
35 U.S.C. Section 103(a) over Dutta in view of Jones and further in view of
Slater.

DECISION
The decision of the Examiner to reject claims 16-20 is AFFIRMED.
The decision of the Examiner to reject claims 16-20 is affirmed but,
because our rationale is substantially different from that used by the
Examiner, we denominate this as new grounds of rejection under 37 C.F.R.
§ 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED; 37 C.F.R. § 41.50(b)

MP

PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2nd FLOOR
DULUTH GA 30096