Ex Parte McCoy et al

Board of Patent Appeals and Interferences

Jan 23, 2009

10190587 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CRAIG G. MCCOY and CINDY DENG
____________________

Appeal 2008-1585
Application 10/190,587
Technology Center 2100
____________________

Decided: January 23, 2009
____________________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-38. We have jurisdiction under 35 U.S.C. § 6(b).

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A. INVENTION
According to Appellants, the invention relates generally to email
systems, and more particularly, to the emailing of scanned documents (Spec.
1, ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for placing a scanned document in an email,
comprising:

obtaining scanned data of a document at a single multi-function
device capable of at least scanning and e-mailing, the scanned data
including at least one of text from the document and a non-text image
from the document;

processing the scanned data with the single multi-function
device and adding the scanned data including the at least one of the
text from the document and the non-text image from the document to
a body of an email not as an attached file; and

sending the email with the single multi-function device.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lo US 6,425,001 B2 Jul. 23, 2002
James US 6,742,161 B1 May 25, 2004

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Posting of Clyde Hollinger, Embedding an Image Within Email Text,
to http://www.ptg.org/pipermail/pianotech/2001-
March/083333.html (Mar. 29, 2001) (hereinafter “Hollinger”).

Jay Milne, HP ScanJet 4si Simplifies Scanner Sharing On The
Network, Network Computing (December 1995) available at
http://www.networkcomputing.com/616/616rev5.html (hereinafter “Milne”).

Posting of Eddie Shipman, Embedded Images in HTML Mail, to
www.experts-
exchange.com/Applications/MS_Office/Outlook/Q_20009282.html (Dec.
20, 2000, 12:03 PST) (hereinafter “Shipman”).

Claims 1-7, 10-16, 19-25, and 28-32 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Lo in view of Hollinger and Shipman.
Claims 8, 9, 17, 18, 26, 27, 33, and 34 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Lo in view of Hollinger, Shipman and James.
Claims 35-38 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Lo in view of Hollinger, Shipman and Milne.
We affirm.
II. ISSUES
Have Appellants shown that the Examiner erred in finding that claims
1-7, 10-16, 19-25, and 28-32 are unpatentable under 35 U.S.C. § 103(a) over
the teachings of Lo, Hollinger and Shipman? In particular, the issues turn on
whether the combination of Lo, Hollinger and Shipman discloses “obtaining
scanned data of a document at a single multi-function device capable of at
least scanning and e-mailing” (claim 1).
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Lo
1. Lo discloses a network scanning system which allows the transfer of
image information from a scanner to a client computer over a
computer network (col. 2, ll. 7-10).
2. The network scanning system includes a client computer 102, a
scanner server computer 130, and a file server computer 122, each
connected by a computer network 120 (col. 5, ll. 49-52; Fig. 2).
3. Scanning operations are performed using the scanner connected to the
server computer and acquired images are transmitted from the scanner
server to the client computer, wherein images files are transmitted to
the client computer using a scan-to-file operation (Abstract).
Hollinger
4. Hollinger discloses, in Outlook Express, switching to HTML mode
and inserting picture for embedding an image within email text (p. 1).
Shipman
5. Shipman discloses embedded images in HTML mail without
providing a link to the image with an anchor href to avoid having to
store the image on the web server (p. 1).

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IV. PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and discussed circumstances in which a patent might be determined to
be obvious. Id. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
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obvious when it does no more than yield predictable results." Id. The Court
noted that “[c]ommon sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 1742. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was "uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 127 S. Ct. at
1741).
To address obviousness questions involving combinations of known
elements, the Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007).

V. ANALYSIS
Claims 1-7, 10-16, 19-25, and 28-32
Appellants do not provide separate arguments with respect to the
rejection of claims 1-7, 10-16, 19-25, and 28-32. Therefore, we select
independent claim 1 as being representative of the cited claims. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants contend that Lo “discloses three distinct components for
acquiring images and processing the image data (i.e., a scanner (144), a
scanner server computer (130), and a client computer (102))” and “does not
disclose any email functions or operations” (App. Br. 9-10), and thus, “does
not teach or suggest obtaining scanned data of a document at a single multi-
function device capable of at least scanning and emailing” (Id. at 10).
Appellants also contend that Hollinger “does not teach or suggest obtaining
scanned data of a document at a single multi-function device, and does not
teach or suggest processing the scanned data with the single multi-function
device and adding the scanned data to a body of an email not as an attached
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file” (id.). Furthermore, Appellants contend that Shipman “does not teach or
suggest sending an email with a single multi-function device” (id.).
However, the Examiner finds that Lo, Hollinger and Shipman
combined teach such limitations (Ans. 4-6). Thus, the issue we address on
appeal is whether the combination of Lo, Hollinger and Shipman teaches or
suggests “obtaining scanned data of a document at a single multi-function
device capable of at least scanning and e-mailing” (claim 1).
We give the claims their broadest reasonable interpretation. See In re
Bigio, 381 F.3d at 1324. Furthermore, our analysis will not read limitations
into the claims from the specification. See In re Van Geuns, 988 F.2d at
1184.
Appellants’ claims simply do not place any limitation on what the
term “single multi-function device” is to be, is to represent, or is to mean,
other than that the device is “capable of at least scanning and e-mailing”
and that the method comprises “processing the scanned data with the single
multi-function device” (claim 1). Thus, the term “single multi-function
device” cannot be confined to a specific embodiment when the claims do not
recite a specific embodiment.
The language of claim 1 does not distinguish the “single multi-
function device” from a device comprising a scanner capable of scanning
that is attached to a computer that is capable of emailing. In fact, the
processing the scanned data step is no more than the scanning operation by
the scanner itself. Although the method includes an “adding the scanned
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data… to a body of an email” step, claim 1 does not specify what performs
such adding step, and does not distinguish over a human being using a
computer to add the scanned data to an email body.
Lo discloses performing scanning operations using a scanner
connected to the server computer and acquired images are transmitted from
the scanner server to the client computer, wherein images files are
transmitted to the client computer using a scan-to-file operation (FF 1-3).
We find the system comprising the scanner, server computer and client
computer of Lo to be a single multi-function device. Furthermore, Hollinger
discloses embedding an image within email text in Outlook Express (FF 4),
and Shipman discloses embedded images in HTML mail without providing a
link to the image (FF 5). We find the system of the combined teachings of
Lo, Hollinger and Shipman to be a single multi-function device that is
capable of scanning and emailing consistent with the requirements of instant
claim 1.
Furthermore, as discussed above, Hollinger discloses embedding an
image within email text in Outlook Express (FF 4), and Shipman discloses
embedded images in HTML mail without providing a link to the image (FF
5). One of ordinary skill in the art would have found it obvious to add the
scanned data into the body of an email not as an attached file in the single,
multi-function device, from the combined teachings of Lo, Hollinger and
Shipman.
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Although Appellants also argue that Lo “does not disclose any email
functions or operations” (App. Br. 9-10), and Hollinger “does not teach or
suggest obtaining scanned data of a document” or “processing the scanned
data” (id. at 10), the Appellants appear to be arguing that Lo and Hollinger
alone fail to disclose the claim limitations. However, the Examiner has
rejected the claims based on the combination of Lo, Hollinger, and Shipman,
and nonobviousness cannot be shown by attacking the references
individually. See In re Merck, 800 F.2d at 1097. As discussed above,
Hollinger and Shipman disclose embedding image data in emails (FF 4-5),
while Lo discloses obtaining scanned data and processing the scanned data
(FF 1-3).
Although Appellants admit in the Reply Brief that “the Hollinger
reference discusses inserting an image within email text” (Reply Br. 4).
Appellants contend that “the Hollinger reference simply teaches manually
adding an image to email text” (Reply Br. 4-5). However, nothing in claim
1 distinguishes over such “manual” entry of the image.
Moreover, we find that claim 1 is rendered obvious by the teachings
of the references because claim 1 requires no more than a person sitting at a
workstation having an attached scanner, the person adding data scanned
from a document to the body of an email, and sending the email. A person
having ordinary skill in the art uses known elements for their intended
purpose. See Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396
U.S. 57.
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Further, even if claim 1 were to require that the “device” be contained
in a single housing, putting scanner and workstation hardware in the same
box appears to be a simple arrangement of old elements, with each
performing the same function it had been known to perform, yielding no
more than one would expect from such an arrangement, and thus prima facie
obvious. See KSR, 127 S. Ct. at 1740. In addition, Appellants have not
shown that providing the multiple functions in a single housing would be
uniquely challenging or difficult for one of ordinary skill in the art. See
Leapfrog Enters., Inc., 485 F.3d at 1162 (citing KSR, 127 S. Ct. at 1741).
Accordingly, we conclude that the subject matter as a whole of claim
1 would have been prima facie obvious over the teachings of Lo, Hollinger
and Shipman. Thus, we conclude that the Appellants have not shown that
the Examiner erred in rejecting claim 1, and claims 2-7, 10-16, 19-25, and
28-32 falling with claim 1, under 35 U.S.C. § 103(a).
Claims 8, 9, 17, 18, 26, 27, 33, and 34
As to claims 8, 9, 17, 18, 26, 27, 33, and 34, Appellants repeat the
argument that “Lo in view of Hollinger and Shipman . . . does not teach or
suggest obtaining scanned data of a document at a single multi-function
device” (App. Br. 12), and that “modifying Lo in view of Hollinger and
James, in the manner suggested by the Examiner, does not overcome the
shortcomings of Lo and Hollinger” (Id. at 11). As discussed above, we find
no shortcomings with respect to the combined teachings of Lo and
Hollinger. Accordingly, we find that the Appellants have not shown that the
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Examiner erred in rejecting claims 8, 9, 17, 18, 26, 27, 33, and 34, as
unpatentable over Lo, Hollinger and James under 35 U.S.C. § 103(a).
Claims 35-38
As to claims 35-38, Appellants repeat the argument that “Lo in view
of Hollinger and Shipman . . . does not teach or suggest obtaining scanned
data of a document at a single multi-function device” (App. Br. 13), and that
“the Examiner has not established a prima facie case of obviousness of
independent claims 1, 10, 19, and 28 and therefore, has not established a
prima facie case of obviousness of dependent claims 35-38” (Id.). As
discussed above, we conclude that the Examiner that established a prima
facie case of obviousness of independent claims 1, 10, 19, and 28 over the
combined teachings of Lo, Hollinger, and Shipman. Accordingly, we find
that the Appellants have not shown that the Examiner erred in rejecting
claims 35-38 depending therefrom, as unpatentable over Lo, Hollinger,
Shipman and Milne under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
(1) Appellants have not shown that the Examiner erred in concluding
that claims 1-7, 10-16, 19-25, and 28-32 are unpatentable under 35 U.S.C.
§ 103(a) over the teachings of Lo, Hollinger, and Shipman.
(2) Appellants have not shown that the Examiner erred in concluding
that claims 8, 9, 17, 18, 26, 27, 33, and 34 are unpatentable under 35 U.S.C.
§ 103(a) over the teachings of Lo, Hollinger, Shipman, and James.
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(3) Appellants have not shown that the Examiner erred in concluding
that claims 35-38 are unpatentable under 35 U.S.C. § 103(a) over the
teachings of Lo, Hollinger, Shipman, and Milne.
(4) Claims 1-38 are not patentable.

DECISION
We affirm the Examiner’s rejection of claims 1-38 under 35 U.S.C. §
103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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