Ex Parte Mitchell et al

Board of Patent Appeals and Interferences

Nov 30, 2010

10224840 (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/224,840 08/21/2002 Michael T. Mitchell STD 1107 PA 2051
23368 7590 11/30/2010
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
11/30/2010 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL T. MITCHELL and
DENISE A. DAVIDENKO
____________

Appeal 2009-011218
Application 10/224,840
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 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.
Appeal 2009-011218
Application 10/224,840
2

STATEMENT OF THE CASE
Michael T. Mitchell, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
The invention relates “to the production, design, and maintenance of
business forms within a document management system.” Specification 1:5-
6.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A document audit system comprising:
a digital controller;
a document data entry device in communication with said
digital controller; and
a document report generator in communication with said digital
controller;
wherein said digital controller is programmed to:
cause characteristic document data indicative of the
characteristics of each of a plurality of documents to be received,

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Nov. 24, 2008) and the Examiner’s Answer (“Answer,” mailed Feb. 18,
2009).
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Application 10/224,840
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compare said characteristic document data for each of
said plurality of
documents to migration data metrics which specify the characteristic
document data of documents that can appropriately be assigned to one
of a plurality of migration categories,
save the identities of those documents of said plurality of
documents that have characteristic document data that meet document
data specified by said migration data metrics for said one of said
plurality of migration categories, and
enable said document report generator to generate a
migration report, listing the identities of those documents of said
plurality of documents that have characteristic document data that
meet document data specified by said migration data metrics for said
one of said plurality of migration categories.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Ohlemacher
Chen
US 5,953,702
US 2003/0188036 A1
Sep. 14, 1999
Oct. 2, 2003
The following rejection is before us for review:
1. Claims 1-26 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ohlemacher and Chen.

ISSUE
Do the references disclose the claim limitation “migration data
metrics” (e.g., claim 1)?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
Appeal 2009-011218
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ANALYSIS
The two independent claims, system claim 1 and method claim 16,
provide for a “digital controller programmed to: ... compare [ ] characteristic
document data for each of [ ] plurality of documents to migration data
metrics” and a step of “providing migration data metrics,” respectively.
Claim 1 defines the “migration data metrics” as “characteristic
document data of documents that can appropriately be assigned to one of a
plurality of migration categories.” Claim 16 defines it similarly. According
to the Specification,
The migration data metrics which specify the characteristic
document data of documents that can appropriately be assigned to one
of a plurality of migration categories include document data
specifying document volume. The migration data metrics may also
include document data specifying document type, and document data
specifying document construction. The document construction may
include at least one of the following: (i) the length and width of the
document, (ii) the number of plies included in the document, (iii) the
presence or absence of a carbon ply in the document, (iv) the presence
of back printing in the document, (v) the presence of perforations in
the document, (vi) the presence of file holes in the document, (vii) the
number of ink colors or paper colors utilized in the document, and
(viii) the weight of the paper utilized in the document.
Specification 4:4-12.
Accordingly, “migration data metrics” is reasonably broadly
construed to refer to data that characterizes a document, such as its length
and width.
Referring to claim 1, the Examiner states that
Ohlemacher does not teach migration data metrics. However,
Chen teaches digital controller with a migration program with
capability to convert file-by-file digital files (i.e. documents) to
destination files (newly migrated file). Chen teaches using mapping
Appeal 2009-011218
Application 10/224,840
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database for converting files [Chen Fig. 4 and disclosure associated
with Fig. 4]. In addition, Ohlemacher clearly teaches to produce a new
form portfolio (new list of forms that meet criteria), and also, the
report generator preferably includes a report content selector coupled
to the digital processor, and the digital processor is preferably
programmed to cause generation of a report displaying sorted data
corresponding to at least one, or a plurality, of the preselected data
fields. Alternatively, the digital processor is programmed to cause
generation of a report displaying sorted data corresponding to a
plurality of the preselected data fields and to sort each report by any
field contained on that report. Similarly, the digital processor may be
programmed to cause the report generator to generate a custom field-
selected report (i.e. report based on user defined fields, migration
matrix fields) [Ohlemacher, col. 2, lines 33 - 45].
Answer 3-4. The Examiner takes the same position with respect to claim 16.
In response to the Appellants’ argument that the cited prior art dos not
disclose “migration data metrics,” the Examiner further cites Figs 7, 9, and
10 of Ohlemacher. Answer 12.
We have reviewed the figures and passages cited by the Examiner but
do not find they disclose “migration data metrics” as reasonably broadly
construed.
Fig. 4 of Chen and the associated disclosure (Chen [0043]-[0044])
describe an “extension difference mapper,” which “scans each input file for
proprietary extensions” (Chen, [0044]). Ohlemacher, col. 2, lines 33 - 45,
and Figs 7, 9, and 10, disclose generating reports from data entered in fields
and sorted. As we understand it, the proprietary extensions referred to in
Chen are extensions like .xml or .js. Chen appears to be trying to create
compatibility between different file types by coming up with a compatibility
replacement – see Table 1. The “compatibility replacements ... are
functions, objects, tag extensions ....” [0046]. This differs from “migration
data metrics” as we have reasonably broadly construed it. They concern
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document characteristics – not file types. As reasonably broadly construed
“migration data metrics” are data descriptive of the document, like width
and length. Consequently, the Examiner was incorrect in finding that the
two are the same. The references do not disclose the claim limitation
“migration data metrics” (e.g., claim 1) as the Examiner has argued.
Accordingly, a prima facie case of obviousness for the claimed
subject matter has not been established in the first instance.

DECISION
The decision of the Examiner to reject claims 1-26 is reversed.

REVERSED

mev

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