Ex Parte Ramani et al

Patent Trial and Appeal Board

Jun 23, 2016

12349311 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/349,311 0110612009
22879 7590 06/27/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Srinivasan RAMAN!
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.
82241909 4768
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIVASAN RAMAN!,
BADRI NARA YANAN RANGANATHAN, SRINIVASU GODA VARI,
ANJANEYULU SEETHA RAMA KUCHIBHOTLA, and
NAGABHUSHANA AYYANAHALLI MATAD
Appeal2013-002467 1
Application 12/349,311 2
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
July 9, 2012) and Reply Brief ("Reply Br.," filed Nov. 19, 2012), and the
Examiner's Final Office Action ("Final Act.," mailed Feb. 29, 2012) and
Answer ("Ans.," mailed Sept. 17, 2012).
2 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP (Appeal Br. 3).
Appeal2013-002467
Application 12/349,311
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1 and 3-20. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b ).
We AFFIRM-IN-PART.
Introduction
Appellants' disclosure relates to verification of electronic documents
(Spec. 1, 11. 10-22).
Claims 1, 10, and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method of verifying a document, comprising:
generating document information from the document;
generating verification information for the document from the
document information;
reading authentic document information stored in a machine-
readable portion of the document;
• t... t. "-I':: • • ~ • • t. comparmg, uy a processor, tue ven11catlon m1ormatlon w1t11
authentic verification information generated from the authentic
document information; and
identifying differences between the document and an authentic
document.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
I. Claims 1, 3-5, 7-12, and 14--20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ellis (US 2007/0220614 Al, pub.
Sept. 20, 2007).
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Application 12/349,311
II. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellis and Karito (US 2004/0174569 Al, pub. Sept.
9, 2004).
ANALYSIS
Rejection I
Independent claims 1 and 16 and dependent claims 3-5, 7-9, and 17-20
We are persuaded by Appellants' argument that Ellis fails to disclose
"comparing, by a processor, the verification information with authentic
verification information generated from the authentic document
information," as recited by independent claim 1 (Appeal Br. 12; Reply Br.
6-7). The antecedent for "authentic document information" is "reading
authentic document information stored in a machine-readable portion of the
document" (Claims App.). Thus, while the "authentic verification
information" is used for comparison and verification purposes, it is the
precursor "authentic document information" which is stored in a machine-
readable format. The Examiner relies on Ellis' s "digest hash" for both
storage and verification (see Ans. 3 (discussing Ellis i-f 98) ). However, the
"authentic verification information" is "generated" from the "authentic
document information." As such, this is not a situation where one
component (e.g., a digest hash) can meet both claim elements (i.e.,
"authentic document information" and "authentic verification information").
The Examiner (Final Act. 5) also relies on the use of additional
information such as a watermark or other digital signatures, disclosed in
Ellis (Abstract and i-fi-1 44, 98, 129), to meet the limitation at issue. The
Examiner (Ans. 7-8) further refers to a separate embodiment in Ellis (i-fi-1 92,
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96, 98-104), in which a barcode is added to a document. However, even for
these additional embodiments, Ellis does not disclose the derivation of
verification information ("authentic verification information") from other
stored information ("authentic document information"). Ellis (i-fi-f l 02-103)
describes verification information revealed after scanning a barcode, but
there are two problems with the Examiner's reliance on Ellis's use of a
barcode to supply "authentic verification information": (a) the verification
information in Ellis is not necessarily generated from information in the
barcode itself and (b) the barcode in question is on the document to be
compared with the authentic document rather than on the authentic
document.
We, therefore, do not sustain the Examiner's rejection under 35
U.S.C. § 102(b) of independent claim 1. For the same reasons, we do not
sustain the Examiner's rejection under 35 U.S.C. § 102(b) of claims 3-5 and
7-9, which depend from claim 1.
Independent claim 16 contains similar language and requirements as
independent claim 1. We do not sustain the Examiner's rejection under 35
U.S.C. § 102(b) of independent claim 16, for similar reasons as for
independent claim 1. We do not sustain the Examiner's rejections under 35
U.S.C. § 102(b) of claims 17-20, which depend therefrom, for the same
reasons as independent claim 16.
Independent claim 10
Appellants argue that Ellis fails to disclose "generat[ing] the authentic
document," as recited by independent claim 10, i.e., "applying the machine-
readable portion to the document to generate the authentic document"
(Appeal Br. 15). Appellants assert that none of the information applied to
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Application 12/349,311
the document by Ellis, such as a digital signature code or watermark, is used
to generate the authentic document (Appeal Br. 16-17).
However, we agree with the Examiner that claim 10 corresponds to
the embodiment described in the Specification, in which a barcode,
identifier, or other signature in a machine-readable portion is "appl[ied]" to
an electronic representation of the authentic document followed by
"printing" of the authentic document (Spec. 6, 1. 28 - 7, 1. 1 (discussed in
Ans. 7); see also Spec. 11, 11. 12- 16).
To meet the argued limitation of independent claim 10, the Examiner
refers back to the Examiner's findings with respect to independent claim 1,
and further relies on paragraphs 87, 92, 96, 98-102, 104, and 129 of
Ellis. (Ans. 8; Final Act. 7). Ellis (i-f 129) discloses that additional pieces of
information can be inserted automatically and stored together with the
document as metadata. Ellis (i-f 130) proceeds to disclose that the document
content and metadata are encrypted and uploaded as a unit. In our view, the
addition of metadata to the submitted document is similar to the manner in
which the Specification applies data to "generate" an authentic document.
We are unpersuaded by Appellants' argument that storing the
metadata with the document does not meet the limitation of "generat[ing]"
the authentic document (see Reply Br. 12). There is nothing which limits
the meaning of "generate" to be a physical copy of a document. For similar
reasons, we are unpersuaded by Appellants' arguments, made with respect to
independent claim 1, that metadata does not meet the "machine-readable"
requirement. Thus, we agree with the Examiner that Ellis' s teaching of
inserting metadata and storing metadata meets "applying the machine-
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readable portion to the document to generate the authentic document," as
required by independent claim 10.
We, therefore, sustain the Examiner's rejection under 35 U.S.C.
§ 102(b) of independent claim 10.
Dependent claims 11, 12, 14, and 15
Appellants do not argue the patentability of claims 11, 12, 14, and 15,
separately from independent claim 10, from which they each depend. We
sustain Examiner's rejection under 35 U.S.C. § 102(b) of claims 11, 12, 14,
and 15, for similar reasons as for independent claim 10.
Rejection II
Dependent claim 6
Claim 6 depends from claim 1 and stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ellis and Karito. The Examiner does
not rely on Karito to remedy the deficiency in the Examiner's rejection
under 35 U.S.C. § 102(b) of claim 1 anticipated by Ellis. We, therefore, do
not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claim 6.
Dependent claim 13
Claim 13 depends from claim 10, and stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ellis and Karito. Appellants argue that
Karito fails to remedy the argued deficiency in the Examiner's rejection
under 35 U.S.C. § 102(b) of claim 10 as anticipated by Ellis. Having found
no deficiency therein, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of claim 13, for similar reasons as for independent claim 10.
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DECISION
The decision of the Examiner to reject claims 10-15 is affirmed.
The decision of the Examiner to reject claims 1, 3-9, and 16-20 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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