Ex Parte Russell et al

Board of Patent Appeals and Interferences

Nov 17, 2010

09665846 (B.P.A.I. Nov. 17, 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.
09/665,846 09/20/2000 Graham Russell 9112.00 6406
26884 7590 11/17/2010
PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2nd FLOOR
DULUTH, GA 30096
EXAMINER
KARMIS, STEFANOS
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
11/17/2010 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 GRAHAM RUSSELL, JOHN D. CAIN, and
LIANNE C. FRANKLIN
____________

Appeal 2009-000811
Application 09/665,846
Technology Center 3600
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, 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 2009-000811
Application 09/665,846

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STATEMENT OF THE CASE
Graham Russell et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claim 27 under 35 U.S.C. § 102(e) as
anticipated by Garner (US 6,863,214 B2, issued Mar. 8, 2005) and claim 25
under 35 U.S.C. § 103(a) as unpatentable over Garner and Foley (US
6,381,342 B2, issued Apr. 30, 2002). We have jurisdiction over this appeal
under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a method of operating an image-based
item processing system having a central processing site 20 and a number of
branches 30A … 30N connected via a network 40 with the central
processing site 20. The method includes capturing images of items at a
branch without using physical tracer items, transferring the images captured
to the central processing site 20, and processing the images at the central
processing site using logical tracer items. Spec. 3, ll. 19-24 and fig. 1.
Claim 25 is representative of the claimed invention and reads as
follows:
25. A method of operating a distributed image capture proof-of-
deposit system having a central processing site and a number of
branches connected via a network with the central processing site, the
method comprising:

capturing at a branch images of physical document items
without use of a group of physical tracer document items;

transferring the captured images of physical document items
from the branch via the network to the central processing site;

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receiving at the central processing site the images transferred
from the branch;

assigning a unique entry number to all batches of document
items received from the branch during a predetermined period of time;

creating a group of non-physical, logical tracer document items
based upon the assigned unique entry number; and

associating the group of non-physical, logical tracer document
items with the batches of document items received from the branch
during the predetermined period of time; and

processing the batches of document items received from the
branch during the predetermined period of time by using the group of
non-physical, logical tracer document items which has been
associated with the batches of document items received from the
branch during the predetermined period of time.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claim 25 is drawn to a method of operating a distributed
image capture proof-of-deposit system that includes “capturing at a branch
images of physical document items without use of a group of physical tracer
document items.” Br., Claims Appendix. Similarly, claim 27 is drawn to a
method of operating an encoding workstation “without using a group of
physical tracer document items.” Id. Specifically, claim 27 requires a first
step of “determining whether a group of physical tracer document items is
included in a tray of physical document items,” and when not included, a
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Application 09/665,846

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second step of “associating a unique group of non-physical, logical tracer
document items with the tray of physical document items.” Id.
Appellants argue that, in contrast to the claimed invention, “Garner
uses physical tracer document items in the document trays.” Br. 5.
According to Appellants, “the tracer group slips being processed are actual
physical document items.” Id. In response, the Examiner takes the position
that the system of Garner “merely takes a digitized image of the document
and stores the image,” and hence, “the image is captured without the use of a
group of physical tracer document items.” Ans. 9. The Examiner further
posits that in Garner “there are times when the document is processed
directly to system reject pockets or [an] alternate reject pocket without a
group of physical tracer documents based on any entry such as the prime
pass entry.” Ans. 7.
We disagree with the Examiner’s position because Garner specifically
teaches that “[t]he first documents that enter the document processor 14 are
the tracer slips”2 and that individual financial documents 12 follow the tracer
slips. Garner, col. 3, ll. 16-17 and 60-61. We agree with Appellants that,
“the tracer group slips being processed are actual physical document items.”
Br. 5. We further find that Garner teaches a document processor 14 that
“captures data encoded on the financial documents and an image of the
financial documents during a prime pass, and assigns a prime pass sequence
number to each financial document.” Garner, col. 1, ll. 49-53 and fig.

2 The tracer-group slips are placed in front of the documents that form a
tracer group, and serve to separate and identify the tracer group within the
pockets. Garner, col. 2, ll. 54-57 and col. 3, ll. 19-21.
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Although we appreciate the Examiner’s position that when the image
of a financial document is recaptured (because it needs to be repaired) tracer
slips are not needed, nonetheless, Garner teaches that the repaired image is
stored in a computer in association with its corresponding prime pass
sequence number. Id., col. 1, l. 59 through col. 2, l. 3. See also, Garner, col.
6, ll. 1-56. As such, since Garner’s system (1) processes each financial
document based upon its unique prime pass sequence number, (2) each
prime pass sequence number is assigned to each document after it has passed
through processor 14 and, (3) the first documents that enter the processor 14
are the tracer slips, we agree with Appellants that Garner does not teach,
“capturing at a branch images of physical document items without use of a
group of physical tracer document items,” as called for by claim 25.
Emphasis added. The addition of Foley does not remedy the deficiencies of
Garner discussed above. Accordingly, the rejection of claim 25 under 35
U.S.C.
§ 103(a) as unpatentable over Garner and Foley cannot be sustained.
With respect to claim 27, since the system of Garner processes the
tracer slips before processing any financial document so as to associate a
unique prime pass sequence number with each document, the limitation of
“associating a unique group of non-physical, logical tracer document items
with the tray of physical document items” when a group of physical tracer
document items (tracer slips) are not included cannot be satisfied by the
system of Garner because a physical tracer document, namely, a tracer slip,
is always present in the system of Garner. Accordingly, the rejection of
claim 27 under 35 U.S.C. § 102(e) as anticipated by Garner likewise cannot
be sustained.
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SUMMARY
The decision of the Examiner to reject claims 25 and 27 is reversed.

REVERSED

mls

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