HAGISAWA, Shoichi et al.

Patent Trials and Appeals Board

Jan 6, 2020

Added 110712 PRPS --> 13842581 - (D) (P.T.A.B. Jan. 6, 2020)

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.
13/842,581 03/15/2013 Shoichi HAGISAWA 091493-0016 3068
20277 7590 01/06/2020
MCDERMOTT WILL & EMERY LLP
THE MCDERMOTT BUILDING
500 NORTH CAPITAL STREET, N.W.
WASHINGTON, DC 20001
EXAMINER
STORK, KYLE R
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
01/06/2020 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHOICHI HAGISAWA, GO DOJO, and
HIDEO SANO
Appeal 2019-001134
Application 13/842,581
Technology Center 2100
Before MICHAEL J. STRAUSS, JEREMY J. CURCURI, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 11, which are all of the
pending claims. Final Act. 2; Appeal Br. 1–2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
applicant, PFU Limited. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
According to Appellant, the application describes and claims a
“document creation system, a document creation device, and a computer
readable medium.” Spec. p. 1, ll. 11–12. In particular, Appellant’s
Specification describes a “form processing device” that includes a “form
definition information conversion unit” so that “relevant form image may be
displayed” based on “form definition information.” Id. According to one
aspect, a “document creation device” includes “functional layer storage that
stores functional layers which are to be superposed on an image . . . and
whose functions are defined in predetermined regions of the layers . . . .” Id.
As illustrated by a flowchart in Figure 4, the system scans an image, selects
image data, then defines functions in a template layer with reference to the
scanned image, and then consolidates the image data and template layer.
Spec. p. 10, l. 23 – p. 12, l. 9, Fig. 4. As part of defining functions in the
template layer, the system adds, inter alia, “input acceptance definition
information.” Id. at p. 11, ll. 19–25.
Claims 1 and 11 are independent. Claim 1, reproduced below with
disputed limitation italicized, is illustrative of the claimed subject matter:
1. A document creation system comprising a document
creation device and a document browsing device,
wherein the document creation device which is a
computer, has a functional layer storage that stores functional
layers which are to be superposed on image data, which are
transparent at least partially, and whose functions are defined in
predetermined regions of the layers,
the document creation device is programmed to perform
as a selection section that selects the functional layer to be
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applied, from among the functional layers stored in the
functional layer storage,
an edit section that edits the functional layer selected by
the selection section, and
a synthesis section that superposes the edited functional
layer selected by the selection section onto the image data to
synthesize a consolidated document file in which the image
data and the functional layer are consolidated,
one of the defined functions of the functional layers is an
input acceptance function which specifies a region in the
functional layer, and a type of an input operation including key
input, handwritten input, selection, or image insertion to be
accepted in this region, or a file control function which
specifies a transfer destination of the file as a whole, an output
destination of the file, or addition of security to the file,
the edit section changes a region in which a function is
defined on the selected functional layer, and
the document browsing device which is a computer
programmed to perform input acceptance processing, or output
processing, on the image data onto which the functional layer is
superposed by the synthesis section in accordance with the
superposed functional layer of the consolidated document file if
the consolidated document is opened by the document browsing
device.

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REFERENCES
The prior art relied upon by the Examiner is:
Tillberg et al. (“Tillberg”) US 2007/0168382 A1 July 19, 2007
Imamoto
Bottomley
US 2009/0089661 A1
WO 2010/141748 A1
April 2, 2009
June 3, 2010
Hatzav et al. (“Hatzav”)
Natarajan
US 2011/0128360 A1
US 2012/0257249 A1
June 2, 2011
Oct. 11, 2012
REJECTIONS2
Claims 1–3, 5, 8, and 11 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Hatzav, Tillberg, and Natarajan. Final
Act. 2–15.
Claims 4 and 6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hatzav, Tillberg, Natarajan, and Bottomley. Final
Act. 15–19.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hatzav, Tillberg, Natarajan, and Imamoto. Final Act. 19–
21.

2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective on March 16, 2013. Because the
present application was filed before March 16, 2013, the Examiner applies
the pre-AIA version of the statutory basis for unpatentability. See Final Act.
2 (applying “pre-AIA 35 U.S.C. 103(a)”).
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OPINION
We have considered Appellant’s arguments and contentions (Appeal
Br. 5–15; Reply Br. 5–7)3 in light of the Examiner’s findings and
explanations (Final Act. 2–21; Ans. 3–5). For the reasons set forth below,
we AFFIRM.4
The Examiner relies on the combined disclosures of Hatzav, Tillberg,
and Natarajan as teaching or suggesting the limitations of claim 1. Final
Act. 2–9. In particular, the Examiner finds Hatzav discloses a “document
creation system” comprising a “document creation device” and a “document
browsing device,” as recited, as well as the recited “functional layer storage”
limitation, and the “selection section,” “edit section,” and “synthesis
section” limitations. Id. at 2–4. The Examiner acknowledges, however, that
Hatzav does not disclose “one of the defined functions of the functional
layers is an input acceptance function or a file control function” or the “edit
section” limitations, but relies on Tillberg in combination with Hatzav as
disclosing those limitations. Id. at 4–8. The Examiner also acknowledges
Hatzav and Tillberg do not explicitly disclose the “consolidated” limitations,
but relies on Natarajan in combination with Hatzav and Tillberg for those
limitations. Id. at 8–9.

3 Only those arguments made by Appellant have been considered in this
decision. Arguments Appellant did not make are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv).
4 Appellant’s argument with regard to independent claim 11 merely repeat
the arguments raised for claim 1. Compare Appeal Br. 10–15 (arguments
for claim 11), with id. at 5–10 (arguments for claim 1). Appellant argues
dependent claims 2–8 collectively with claim 1. See id. at 10. Therefore,
based on Appellant’s arguments, we decide the appeal of claims 1–8 and 11
based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(iv).
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Appellant does not take issue with the Examiner’s findings regarding
Hatzav or Natarajan, or with the Examiner’s findings regarding a motivation
to combine all three references (see Final Act. 9–11). Rather, Appellant
focuses its arguments on appeal on the assertion that
[n]one of the cited references teaches that one of the defined
functions of the functional layers is an input acceptance
function which specifies a region in the functional layer, and a
type of an input operation including key input, handwritten
input, selection, or image insertion to be accepted in this
region, or a file control function which specifies a transfer
destination of the file as a whole, an output destination of the
file, or addition of security to the file, as required by claim 1.
Appeal Br. 5 (emphasis added). The primary basis of Appellant’s argument
is that “Tillberg teaches a document analysis system where information is
electronically extracted from fields within documents by comparison to a
template library, identification of data fields based on size and position,
extraction of data from the fields, and application of recognition.” Id. at 6
(emphasis added). Appellant contends, because “Tillberg is directed to
extracting data from an existing form,” it does not teach “a type of an input
operation including key input, handwritten input, selection, or image
insertion to be accepted in the specified region,” as claimed. Id. at 8
(emphases added). Appellant further contends “persons experienced in the
field of document creation systems know that a method for data extraction
from an existing document differs from an input acceptance function which
specifies a region in the functional layer, and a type of an input operation
including key input, handwritten input, selection, or image insertion to be
accepted in this region.” Id. at 8–9 (emphases added) (citing Evidence
Appendix).
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The Examiner responds, finding
Hatzav teaches overlaying a template (functional layer) on a
scanned document and secondary reference Tillberg teaches
identifying a template (functional layer) for a scanned or input
document and extracting data from the document. In Tillberg
[0074] the template is identified for the scanned image and the
fields within the identified scanned images are mapped.
Ans. 3–4. The Examiner further determines that “[t]he claim specifically
states that the input acceptance function specifies a region and a type of
input operation,” and finds Tillberg “specifies a field and the type of input
operation expected in the field.” Id. at 4 (citing Tillberg ¶ 77). In particular,
the Examiner finds Tillberg discloses “manual, automated, or semi-
automated methods of identifying fields (region) within templates,” wherein
“[t]he user is able to specify a field (region) within the template and a type
of an input operation can be provided as metadata.” Id. The Examiner finds
this discloses a “type of input [] operation” because “[t]he metadata can
specify name of the field [and] the type of data expected within the field,”
such as “a mark (selection), text (key input), handwriting or an image (image
insertion), and, optionally, other information, such as whether or not the
field has specific security or access levels.” Id.
Appellant asserts the Examiner’s findings are premised on an
unreasonable construction of “input operation.” Appeal Br. 8. We find this
argument unpersuasive. It is well settled that the terms of a claim must be
given the broadest reasonable interpretation, consistent with Appellant’s
Specification, as they would be interpreted by one of ordinary skill in this
art. In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997); In re Zletz, 893
F.2d 319, 321–22 (Fed. Cir. 1989). Appellant asserts that, according to the
“broadest reasonable interpretation,” an “input acceptance function” would
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not include “data extraction from an existing document.” Appeal Br. 8–9.
We disagree. The claim refers to a “type of an input operation including key
input, handwritten input, selection, or image insertion to be accepted in this
region.” The Specification further states that the “input acceptance
definition information that causes the input acceptance function to be
performed contains a region in the template layer and the definition
information which specifies a type of the input operation accepted in this
region in response to a user instruction.” Spec. 7. Nothing in the claim or
the Specification excludes data input through a scanning function. Indeed,
the claims do not recite a step of actually inputting the data, and thus are not
restrictive in that regard. Rather, the claims recite specifying “a region in
the functional layer” and “a type of an input operation . . . to be accepted in
this region.”
We agree with the Examiner’s finding that, affording claim 1 its
“broadest reasonable interpretation,” Tillberg teaches or suggests the
disputed limitation, including an “input acceptance function which specifies
a region in the functional layer, and a type of input operation including key
input, handwritten input, selection, or image insertion to be accepted in this
region . . . .” Final Act. 5–7; Ans. 3–5. Tillberg discloses a document
analysis system in which templates are established by, for example, scanning
documents, such as existing blank paper forms. Tillberg ¶¶ 74–75. The
“input scans are then ‘Fingerprinted’, i.e. compared against the dictionary of
templates, in order to identify the type of form 215.” Id. at ¶ 74. The fields
within the identified scans are mapped. Id. In a manual mode, a user may
“draw rectangles around fields in the template using a mouse or keystrokes
or a combination of both.” Id. ¶ 77. “In addition, those identified fields are
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provided with metadata, including, but not limited to the name of the field,
the type of data expected within the field, such as-a mark, text, handwriting
or an image, and, optionally, other information, such as whether or not the
field has specific security or access levels.” Id. (emphases added). Tillberg
further states that once the fields have been defined, “[t]he resulting defined
fields and parent forms are then stored in a database as a defined template.”
Id. ¶ 100.
Thus, as the Examiner finds, and we agree, Tillberg discloses
specifying a “region in the functional layer,” by creating templates that
contain defined fields that are mapped to regions on, e.g., a blank form.
Tillberg ¶¶ 74–77, 100–102. Tillberg also discloses that the “input
acceptance function” specifies “a type of an input operation including key
input, handwritten input, selection, or image insertion to be accepted in this
region,” as claimed here, by describing that the defined fields “are provided
with metadata” that includes “the type of data expected within the field.” Id.
¶ 77. The type of data to be expected includes “a mark, text, handwriting or
an image . . . .” Id. Thus, Tillberg discloses an input acceptance function
that specifies both a “region” (defined field) as well as a “type of input
operation” (type of data to be expected within the field, such as text or
handwriting).
Appellant’s challenge to the rejection appears to be based on the
premise that the claims require prospective user input, and cannot include
extracting data from an existing form. See Appeal Br. 8. As support for this
view of the claims, Appellant relies on a document Appellant provides in an
Evidence Appendix, entitled “Use Smart Documents.” Id. at 9; Evidence
Appendix. Appellant asserts this document is evidence of what the
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ordinarily skilled artisan would understand in differentiating an “input
acceptance function” from a “method for data extraction.” Id. at 8.
Appellant’s argument is not persuasive, however, as Appellant does not
(1) provide any information about the source of this document, such as its
date and manner of publication; or (2) provide clear citations to portions of
the document indicating where and how it describes an “input acceptance
function” (a term that nowhere appears in this document, according to a key
word search). The only portion quoted by Appellant describes “smart
documents” as files that “are programmed to give you help as you work with
them.” Appeal Br. 9 (quoting Evidence Appendix, 1). Appellant does not,
however, explain how such a “smart document” includes an “input
acceptance function.” For these reasons, Appellant’s cited evidence is
entitled to little, if any, weight.
Even assuming that Appellant’s construction of “input acceptance
function” were correct, we would not be persuaded of Examiner error in the
rejection. As noted above, Tillberg discloses a system in which a “defined
template” is created, such as from a blank form, in which fields in the form
are defined by region and by type of input expected. Tillberg ¶¶ 74–77,
100–102. After that defined template is created, it may be used for scanning
in completed forms, in which the defined fields are used to identify the
incoming data from the scanned forms as, e.g., text (typewritten),
handwriting, or an image. Id. ¶ 28. Thus, Tillberg does not disclose merely
scanning documents, as Appellant suggests, but also discloses creating the
defined templates, which may be created from a blank form and which
include fields that use metadata to define the type of data to be expected in
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that field when completed forms are later scanned. As such, Tillberg teaches
or suggests the disputed limitation, as the Examiner finds.
Appellant does not present arguments regarding the other cited
references, but states that “[t]he disclosures of Natarajan, Bottomley and
Imamoto do not remedy the defects of Hatzav and Tillberg.” Appeal Br. 9;
Reply Br. 7. As noted above, Appellant argues only defects in the
Examiner’s findings regarding Tillberg and the disputed limitation. For the
reasons stated above, we are not persuaded that those findings by the
Examiner are defective.
In the event of further prosecution, we additionally point out potential
issues regarding definiteness of the claims, under 35 U.S.C. § 112, second
paragraph. In particular, the disputed limitation contains multiple “or”
clauses, rendering the claim potentially unclear in terms of what recitation is
an alternative to other recitations. We suggest that the claims would benefit
from clarification, such as the use of numbers and corresponding formatting
to indicate the main clauses. Although neither the Examiner nor Appellant
addresses this point, it appears that the disputed limitation recites two
primary alternatives, in which “one of the defined functions” is either (1) “an
input acceptance function” (which specifies “a region in the functional
layer” and “a type of input operation” as recited) or (2) “a file control
function which specifies a transfer destination of the file as a whole, an
output destination of the file,5 or addition of security to the file” (emphasis

5 We also note that this phrase lacks apparent antecedent basis; the previous
reference to “file” in claim 1 is to “a consolidated document file.” It is not
clear if “the file” is intended to refer to “the consolidated document file” or
to a different file. Because of the alternative nature of the recitations in the
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added). The Examiner’s findings regarding the teachings of Tillberg appear
to be based on the first alternative, and the Examiner does not explicitly
make findings that Tillberg discloses “a file control function.” As these are
(apparently) stated in the alternative, the Examiner need make findings on
only one alternative, which (as discussed above), the Examiner has
sufficiently done.
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 1 as unpatentable under 35 U.S.C. § 103(a) over
Hatzav, Tillberg, and Natarajan, and we, therefore, sustain that rejection,
along with the rejection of claims 2–8, argued collectively with claim 1, as
well as the rejection of claim 11, for which Appellant repeats the arguments
presented for claim 1.
CONCLUSION
The Examiner’s decision rejecting claims 1–8 and 11 under 35 U.S.C.
§ 103(a) is AFFIRMED.

Claims
Rejected
35 U.S.C. § Basis/References Affirmed Reversed
1–3, 5, 8, 11 103(a) Hatzav, Tillberg,
Natarajan
1–3, 5, 8,
11

4, 6 103(a) Hatzav, Tillberg,
Natarajan,
Bottomley
4, 6
7 103(a) Hatzav, Tillberg,
Natarajan, Imamoto
7
Overall
Outcome
1–8, 11

claim, any uncertainty in the scope of this (non-argued) alternative does not
affect our decision.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED