Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Aug 7, 2012

10650904 (B.P.A.I. Aug. 7, 2012)

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.
10/650,904 08/28/2003 Jeffrey Kenneth Wilson AUS920030461US1 8670
45109 7590 08/08/2012
IBM CORP
C/O WINSTEAD P.C.
PO BOX 131851
DALLAS, TX 75313
EXAMINER
GOFMAN, ALEX N
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
08/08/2012 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 JEFFREY KENNETH WILSON and INDRAN NAICK
____________

Appeal 2009-015239
Application 10/650,904
Technology Center 2100
____________

Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and
STANLEY M. WEINBERG, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 31 and 32. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Invention
Appellants’ invention relates to a process for automatically
transcribing information from one form to another form. See Spec. 1:3-5.
Claim 31 is reproduced below with disputed limitations emphasized:
31. A method for performing form transcription comprising:
receiving input to select one of a plurality of input forms to be
transcribed;
receiving said selected one of said plurality of input forms using a
selected input method from a list of a plurality of input methods;
retrieving data and meta data from said selected one of said
plurality of input forms;
correlating said data and meta data, wherein said correlating said
data and meta data comprises:
separating said data and meta data from said selected one of
said plurality of input forms; and
parsing said meta data;
storing said correlated data and meta data;
receiving input to select one of a plurality of target forms;
and
mapping said correlated data and meta data to fields in said
selected one of said plurality of target forms, wherein said
mapping said correlated data and meta data to fields in said
selected one of said plurality of target forms comprises:
retrieving field location information for said selected
one of said plurality of target forms;
retrieving input form data required to complete said
selected one of said plurality of target forms;
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mapping each field from said selected one of said
plurality of input forms to a corresponding field on said
selected one of said plurality of target forms;
generating said selected one of said plurality of target
forms using said input form data;
inserting said meta data in said selected one of said
plurality of target forms, wherein said meta data contains
information to allow for easier processing of said
selected one of said plurality of target forms by including
a form type and all of the data on said selected one of
said plurality of target forms;
encoding said meta data; and
printing said encoded meta data on said selected one
of said plurality of target forms in a bar code format.

The Examiner relies on the following as evidence of unpatentability:
Inui US 5,204,821 Apr. 20, 1993
Murakawa US 6,549,913 B1 Apr. 15, 2003
Rogers US 2003/0084046 A1 May 1, 2003

The Rejection
The Examiner rejected claims 31 and 32 under 35 U.S.C. § 103(a) as
unpatentable over Rogers, Murakawa, and Inui. Ans. 3-6.1

THE CONTENTIONS
Regarding independent claim 31, Appellants argue among other
things that Rogers fails to include language in paragraphs 0044 or 0047
related to mapping the correlated data and meta data to fields in a selected
target form. Br. 7-8. Specifically, Appellants state that Rogers teaches: (1)
a navigation panel that provides a tool for permitting the user to select a

1 Throughout this opinion, we refer to the Appeal Brief filed March 6, 2009,
and the Examiner’s Answer mailed June 11, 2009.
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form for viewing in an application panel; (2) obtaining screen and
application data corresponding to the selected form from a database; and (3)
allowing sub-forms to be modified or created. Br. 7.
In addressing the disputed mapping limitations, the Examiner refers to
paragraph 0046 and states that, once data between a data set and sub-form
are correlated, the data is mapped and stored to the fields in the selected
target forms. Ans. 11. The Examiner further finds that this same discussion
described in paragraph 0046 also discloses mapping each field from a
selected input form to a corresponding field on a selected target form. Id.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 31 by finding
that Rogers, Murakawa, and Inui collectively would have taught or
suggested mapping correlated data and meta data retrieved from the selected
input form to fields in the selected target form, including mapping each field
from the selected input form to a corresponding field on the selected target
form?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
rejection of independent claim 31. Notably, claim 31 requires several steps,
including: (1) receiving input to select an input form and (2) correlating
retrieved data and meta data from the selected input form in part by (a)
receiving input to select a target form; and (b) mapping the retrieved data
and meta data retrieved from the selected input form to fields in the selected
target form, including mapping each field from the selected input form to a
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corresponding field on the selected target form. Rogers must thus disclose
(1) receiving inputs to select both an input form and a target form and (2)
mapping data from fields of the input form to the fields in the target form.
To teach these limitations, the Examiner relies on paragraphs 0044, 0046,
and 0047. See Ans. 4-11.
The Examiner finds that Rogers’ user selection of a specific form for
viewing in application data panel 38 (¶ 0044; Fig. 3) maps to the step of
receiving input to select an input form. Ans. 4, 7. Accordingly, Rogers’
specific form that is viewed in panel 38 is the recited selected input form.
We agree with the Examiner (see Ans. 7) that this reasonably corresponds to
the recited input form. However, claim 31 also recites a separate step of
receiving input to select a target form, which is used to map the correlated
data and meta data to fields in the selected target form. Appellants dispute
that this later mapping step is disclosed in Rogers.
Br. 7-8.
The Examiner responds by pointing to Rogers’ paragraph 0046 and
stating that “once data between a larger data set and a sub-form is correlated,
it is mapped and then stored. As such, Rogers discloses the limitation
‘mapping said correlated data and meta data to fields in said selected one of
said plurality of target forms.’” Ans. 11. The Examiner further states “[i]n
order to insert data into a sub-form from a larger form, information has to be
extracted from a specific field of a form and inserted into a specific form of
a sub-form.” Ans. 9. The Examiner illustrates this point by discussing a W2
tax form having two fields (e.g., a name and social security number) used in
a specific sub-form. See id.
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At the outset, we note that Rogers does not discuss or show a W2
form or extracting any information from a W2 into a sub-form. Rogers does
discuss “the user can select a specific form for viewing in the application
data panel 38” (¶ 0044) and “the application data display panel 38 is used to
display selected fields of application data arranged within a predefined form,
which may be divided into one or more predefined sub-forms 46a-c”
(¶ 0046). Rogers indicates that these sub-forms are part of the selected input
form (e.g., the specific form the user selects for viewing in application data
panel 38) and are not a separate target form for which an input to select this
target form was received. See ¶¶ 0044, 0046; Fig. 3. However, even
assuming that, by receiving an input from the user for a specific form
(¶ 0044), the system’s selection of sub-forms for the selected input form
could be considered a second receiving step that receives input to select a
target form separate from the selected input form as claim 31 requires, the
Examiner has not adequately explained how Rogers discloses mapping the
correlated data and meta data based on data retrieved from an input form to
fields in the target form, including mapping each field from the input form to
a corresponding field on the selected target form.
The Examiner states that the data used to populate sub-form 46 is
obtained from application data in the database or from “a larger data set.”
Ans. 9-10. Rogers explains how both screen data (e.g., meta data) and
application data (e.g., data separate from the screen data) are obtained or
separated from a database 4 and are used to populate the fields within a
sub-form 46. ¶¶ 0044, 0046; Fig. 2. Both the correlated data and the meta
data are, at best, located within fields of a database, and populating the sub-
forms involves, at best, mapping fields from a database to a corresponding
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field on the selected target form. Additionally, Rogers discloses storing
form identifiers – not the forms themselves – within screen data domain 12b.
¶ 0044. Thus, any mapping that occurs is from database fields – not fields
of a selected input form, as claim 31 requires – to target form fields.
The Examiner also attempts to explain the invention and how it relates
to Rogers. Ans. 6. However, this explanation is incomplete, containing
incomplete thoughts. See id. (stating “[t]he Rogers reference deals with
presenting a user with data in specific forms which [sic]”).
Additionally, in cited paragraph 0047 (Ans. 5), Rogers further
discloses the sub-form 46 can be revised or new sub-forms can be created
and saved to the screen data domain 12b of the database 4. ¶ 0047;
Figs. 2-3. Both creating a new sub-form and revising a sub-form in Rogers
would still involve obtaining data from a database – not from a selected
input form – to map to a target form. Id. Lastly, the Examiner has not relied
upon Murakawa or Inui to the cure the above-noted deficiencies in Rogers.
See Ans. 4-6.
In summary and based on the evidence of record, we find that the
Examiner’s rejection has not met the initial burden of setting forth an
adequate basis to support a prima facie case of obviousness. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2009) (precedential). For the foregoing
reasons, Appellants have persuaded us of error in the rejection of
independent claim 31 and dependent claim 32 for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 31 and 32 under § 103.
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DECISION
The Examiner’s decision rejecting claims 31 and 32 is reversed.

REVERSED

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