Ex Parte Yasuda et al

Board of Patent Appeals and Interferences

Jun 17, 2009

10799607 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIROSHI YASUDA
and TOMOHIKO BEPPU
____________
Appeal 2009-002092
Application 10/799,6071
Technology Center 2100
____________
Decided:2 June 17, 2009
____________
Before LEE E. BARRETT, JEAN R. HOMERE, and JOHN A. JEFFERY,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed March 15, 2004, titled "System for Processing Handwritten
Document and Method for Processing Handwritten Document," which
claims the foreign filing priority benefit of Japanese applications filed
March 17, 2003.
2 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002092
Application 10/799,607

2
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1, 3, 5-7, and 9-12. We have jurisdiction pursuant to
35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
The invention
The invention relates to a system and method for processing
handwritten documents (Spec. 45; Abstract). In one embodiment, illustrated
in Figures 1-7, a person applying for a government document (e.g., a
resident's card or other form) can go to a receiving terminal in a store in a
store or a government office (multi-function machine 11 in Fig. 1) and
request an appropriate application document. After receipt of a service fee,
the requested document is retrieved from a database server (9 in Fig. 1) and
sent to the receiving terminal, where it is printed. An exemplary document
is shown in Figure 4. To ensure that data entered in the application is
appropriately displayed in the final document, a document identifier is
printed with the document application (mark image 42 in Fig. 4). Then, the
handwriting is scanned and recognized by the receiving terminal (input
part 37 in Fig. 3). The format of the application document is recognized at
the time of reading of the application document (Spec. 18-20). After
certification of the applicant's identity (information from IC card reader 14
in Figs. 1 and 3 is sent to a certification server 8 in Fig. 1), the information is
transmitted via a network to a local government server (10 in Fig. 1). The
Appeal 2009-002092
Application 10/799,607

3
local government server publishes a resident's card as a document, which is
published by the receiving terminal. The document may have certain
security features as shown in Figure 7. The steps are shown in the sequence
diagram of Figure 6.

The claims
Claim 1 is reproduced below:
1. A system for processing a handwritten document,
comprising:
a receiving terminal configured to acquire handwritten
information that is handwritten on a document;
a document receiving terminal configured to receive the
handwritten information that is transmitted from the receiving
terminal; and
a format storage terminal configured to store a format of the
document,
wherein the receiving terminal includes:
a format acquisition part which acquires the format of the
document from the format storage terminal;
a printing part which prints the document based on the format
acquired by the format acquisition part;
a handwritten information acquiring part which acquires the
handwritten information that is handwritten on the document; and
a handwritten information transmitting part which transmits the
handwritten information to the document receiving terminal, wherein
the printing part prints identifier information, by which the
handwritten information acquiring part identifies the format of the
document, with the document.

Appeal 2009-002092
Application 10/799,607

4
The references

Tsuji US 2001/0016856 A1 Aug. 23, 2001
Lerner US 2004/0172595 A1 Sep. 2, 2004
(effective filing date Mar. 7, 2000)

The rejections
Claims 1 and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Tsuji.
Claims 3, 5, 6, and 9-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsuji and Lerner.

DISCUSSION
Claims 1 and 7
Issue
Does Tsuji teach the limitation that "the printing part prints identifier
information, by which the handwritten information acquiring part identifies
the format of the document, with the document"?

Contentions
Appellants argue that Tsuji does not teach the limitation at issue. It is
argued that in Appellants' invention, when the application document is
printed, a visible mark, which functions as an identifier information for
identifying the document, is also printed (Br. 5). It is noted that Tsuji
teaches an original form P into which characters are handwritten and an
electronic form P' reflecting the entries into the original form P. It is noted
Appeal 2009-002092
Application 10/799,607

5
that Tsuji includes a letter Z to serve as a form ID in the original form P. It
is argued:
However, in clear contrast to claims 1 and 7, there is no teaching or
suggestion in Tsuji that Z is subsequently displayed or printed as part
of the electronic form P'. Claims 1 and 7 require that the identifier
information for identifying the format of the document must be
printed with the document. A similar requirement is not taught or
suggested by Tsuji.

Id. at 6. Appellants note that the Examiner states in the Advisory Action
that Tsuji teaches in paragraph 82 printing four crossed lines as a form ID,
but argue that "[t]here is no disclosure in the quoted section of Tsuji that the
identifier information for identifying the format of the document is printed
with the document, as required by claims 1 and 7" (id.). Appellants argue
that these form IDs are merely substitutes for the letter Z, which is not
subsequently displayed or printed in Tsuji's form P' (id.).
The Examiner maintains that the letter Z is identifier information, as
claimed (Ans. 6).
Appellants reply that "because Tsuji does not print electronic form P'
with the identifier information as required by claims 1 and 7, Tsuji cannot
anticipate claims 1 and 7" (Reply Br. 2).
Appellants further argue for the first time in the Reply Brief that the
Examiner erred in finding the coordinate-input device 1 of Tsuji to
correspond to the claimed receiving terminal and the PC 2 of Tsuji to
correspond to the claimed document receiving terminal. It is argued that
"[b]ecause the coordinate-input device 1 of Tsuji ― which the Examiner
Appeal 2009-002092
Application 10/799,607

6
equates with the claimed receiving device ― does not include a format
acquisition part and printing part as claimed, Tsuji fails to disclose all of the
claimed elements, and thus cannot anticipate claim 1 and claims depending
thereon" (Reply Br. 5).

Facts
Tsuji discloses "an electronic-form preparation system which
recognizes characters handwritten into a form having a predetermined
format to prepare a completed electronic form" (¶ [0001]).
Tsuji discloses that "[a]n identifying character may be printed
beforehand in the form to identify a form type of the form" (¶ [0018]).
Tsuji discloses:
The form has a form ID (identification) printed on a
predetermined area thereof to identify its form type. This enables
entering a form ID without requiring the user to confirm a form ID of
the form.

¶ [0043].
Tsuji discloses, in Figure 6, a form P into which characters are written
by an input pen and a form P' which represents an electronic form reflecting
the entries into form P and either displayed or printed (¶ [0068]).
Tsuji discloses that the letter Z preprinted at the upper left hand corner
on form P in Figure 6 serves as an identification ID of the form P (¶ [0069]).
The letter Z is traced by the input pen and recognized by the character
recognition program (¶ [0070]).
Appeal 2009-002092
Application 10/799,607

7
Tsuji discloses that "format data of the electronic form P'
corresponding to the recognized letter Z is read from the form-format
database 2c to specify the format of the electronic form P' by the number
boxes, the size of each box, layout of the boxes, etc. included in this format
data" (¶ [0073]).

Analysis
We interpret the limitation that "the printing part prints identifier
information, by which the handwritten information acquiring part identifies
the format of the document, with the document," consistent with the
Specification, to refer to printing identifier information on the application
form that will be filled in by handwriting and that the identifier is acquired
during the handwriting recognition operation to identify the document for
preparation of the final form. The limitation does not require printing
identifier information on the final document as argued by Appellants. Under
our interpretation of the claims and disclosure, the letter Z on the form P to
be filled out in Tsuji is identifier information by which the handwriting
information acquiring part identifies the format of the document (e.g.,
¶ [0073]); this letter does not have to be on form P' as argued by Appellants.
Our interpretation of the claims is supported by the Specification and
the plain claim language. The Specification describes that the identifier
information is printed on the application document before the document is
filled out (e.g., Spec. 15: 17 through 16: 2, referring to mark image 42 in
Fig. 4; Spec. 16: 15-20). This identifier information corresponds to the letter
Appeal 2009-002092
Application 10/799,607

8
Z identifier in Tsuji on form P, where it is noted that Tsuji acquires the Z
identifier using character recognition (¶ [0070]) and uses that identifier to
identify the format of the document (¶ [0073]). Appellants' identifier does
not appear on the final document in Figure 7, nor would there be any reason
for identifier information, since it is used to format the final document. The
claim limitation, "the printing part prints identifier information, by which the
handwritten information acquiring part identifies the format of the
document, with the document," indicates that the identifier is used to
identify the format by the handwritten information acquiring part and says
nothing about being printed in the final document. Thus, Appellants'
arguments that Tsuji does not teach "the printing part prints identifier
information, by which the handwritten information acquiring part identifies
the format of the document, with the document" because the Z identifier
does not appear on form P' is not supported by the claim language.
Tsuji teaches the limitation that "the printing part prints identifier
information, by which the handwritten information acquiring part identifies
the format of the document, with the document."
We do not find Appellants' argument in the Reply Brief that the
Examiner erred "[b]ecause the coordinate-input device 1 of Tsuji ― which
the Examiner equates with the claimed receiving device ― does not include
a format acquisition part and printing part as claimed, Tsuji fails to disclose
all of the claimed elements, and thus cannot anticipate claim 1 and claims
depending thereon" (Reply Br. 5) in the main brief. It appears that the
Examiner's position in the Examiner's Answer is unchanged from the Final
Appeal 2009-002092
Application 10/799,607

9
Rejection, and thus, Appellants' arguments presented for the first time in the
Reply Brief are untimely. Cf. Kaufman Co., Inc. v. Lantech, Inc., 807 F.2d
970, 973 n.* (Fed. Cir. 1986); McBride v. Merrell Dow and Pharms, Inc.,
800 F.2d 1208, 1210-11 (D.C. Cir. 1986) ("We generally will not entertain
arguments omitted from an appellant's opening brief and raised initially in
his reply brief. . . . Considering an argument advanced for the first time in a
reply brief, then, is not only unfair to an appellee, but also entails the risk of
an improvident or ill-advised opinion on the legal issues tendered.") (internal
citations omitted).
Nevertheless, without waiving our position that Appellants waived
this argument by failing to make it in their main brief, we note that the
Examiner referred to the whole system of Tsuji as teaching the receiving
terminal (Ans. 3), and did not just rely on the coordinate-input device 1.
Furthermore, Appellants apparently do not contest that Tsuji performs the
steps of acquiring a format and printing, because Appellants do not make the
same arguments as to method claim 7. Thus, Appellants implicitly
acknowledge that Tsuji has a format acquisition part and a printing part, just
that it is not in the coordinate-input device 1, as allegedly stated by the
Examiner. Even if the Examiner had mistakenly stated that the receiving
terminal only corresponded to the coordinate-input device 1, the rejection is
over Tsuji as a whole, and Appellants have not shown that Tsuji does not
have a format acquisition part and a printing part.
Accordingly, the rejection of claims 1 and 7 is affirmed.

Appeal 2009-002092
Application 10/799,607

10
Claims 3, 5, 6, and 9-12
Appellants do not argue the separate patentability of the dependent
claims, but argue that the claims should be patentable for the reasons stated
with respect to independent claims 1 and 7 (Br. 7). Therefore, the
patentability of these claims stands or falls with claims 1 and 7. See
37 C.F.R. § 41.37(c)(1)(vii). Because we affirm the rejection of claims 1
and 7, the rejection of claims 3, 5, 6, and 9-12 is affirmed.

CONCLUSION
The rejections of claims 1, 3, 5-7, and 9-12 are affirmed.
Requests for extensions of time are governed by 37 C.F.R. § 1.136(b).
See 37 C.F.R. § 41.50(f).

AFFIRMED

erc

MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE 400
McLEAN, VA 22102