2019001633 (P.T.A.B. May. 14, 2020)

Matichuk, Bruce et al.

Patent Trials and Appeals BoardMay 14, 2020

2019001633 (P.T.A.B. May. 14, 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. 11/544,685 10/06/2006 Bruce Matichuk 062A.0001.U1(US) 8327 29683 7590 05/14/2020 Harrington & Smith, Attorneys At Law, LLC 4 RESEARCH DRIVE, Suite 202 SHELTON, CT 06484-6212 EXAMINER STORK, KYLE R ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 05/14/2020 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): USPTO@HSPATENT.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRUCE MATICHUK, JOHN REBSTOCK, and MICHAEL KRAFT ____________________ Appeal 2019–001633 Application 11/544,685 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4–14, 17–29, and 31–41, which constitute all the claims pending in this application. Claims 2, 3, 15, 16, and 30 have been canceled (see Appeal Br. 2; see also Appeal Br. 69, 70, 72 (Claims Appendix)). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Teradact Solutions, Inc. (Appeal Br. 1). Appeal 2019-001633 Application 11/544,685 2 STATEMENT OF THE CASE Disclosed Invention and Exemplary Claim Appellant’s disclosed invention “relates to a system, method and computer program product for creating redacted documents and, more particularly, to an automated redaction system, method and computer program product” (Spec. ¶ 2). Appellant’s invention “automatically remov[es] sensitive information from documents” (Spec. ¶ 4), and “can work with different document types” (id.). Accordingly, Appellant discloses and claims a redaction system for scanning hard copy paper documents (see claim 1) that uses redaction rules for different documents types, along with identified document type, to redact portions of the electronic documents created by scanning the hard copy documents so as to automatically exclude certain information (see Spec. ¶¶ 33–62; Figs. 3, 9, 18–22). Exemplary claim 1, under appeal, with bracketed lettering and emphases added to key portions of the claim at issue, reads as follows: 1. A redaction system comprising: a scanner configured to scan a hard copy paper document and form an electronic document from the scanned hard copy paper document; at least one processor; and at least one non-transitory memory including computer program code, the at least one memory and the computer program code configured to, with the at least one processor, cause the apparatus to: [A] identify a document type of the scanned hard copy paper document, where the document type is identified as one of a plurality of hard copy paper document types based at least partially upon Appeal 2019-001633 Application 11/544,685 3 at least one piece of information scanned on the hard copy paper document; a source of redaction rules stored in the at least one non- transitory memory; and where the at least one memory and the computer program code are configured to, with the at least one processor, form a redaction engine connected to the source of redaction rules, where the redaction engine is configured to redact the electronic document in accordance with at least one of the redaction rules contained in the source of redaction rules to thereby generate a redacted version of the electronic document containing at least one redaction, where the redaction engine is configured to redact a plurality of different document file formats of electronic documents, where the redaction engine is configured to identify the electronic document by document type of the scanned hard copy paper document and redact the electronic document in accordance with the redaction rules specific for that identified document type of the scanned hard copy paper document, wherein the source of redaction rules comprises at least one rule for automatically excluding information. Appeal Br. 68–69, Claims Appendix (emphases and bracketed lettering added). Remaining independent claims 37 and 40 recite a method and computer program product having limitations commensurate in scope with the limitations of system claim 1. Prosecution History In the instant application on appeal, the Board affirmed an appeal of the Examiner’s obviousness rejections of claims 1, 4–14, 16–29, and 31–40 over the base combination of Torres (US 2004/0088313 A1; published May 6, 2004) and Schneck et al. (US 2003/0172034 A1; published Sept. 11, 2003) (hereinafter, “Schneck”) (Decision mailed Sept. 13, 2016). During the prosecution following our Decision, claim 41 was added, claim 16 was Appeal 2019-001633 Application 11/544,685 4 canceled, and claims 1, 37, and 40 were amended to add the subject matter including, for example, limitation A recited in claim 1. The Examiner now adds Segal (US 2003/0160095 A1; published Aug. 28, 2003) as teaching or suggesting the newly added subject matter, including limitation A recited in claim 1, and the commensurate limitations in remaining independent claims 37 and 40. The Examiner’s Rejections (1) The Examiner rejected claims 1, 4–14, 17–29, and 31–41 under 35 U.S.C. § 112, first paragraph, as failing to provide adequate written description of the claimed invention so as to reasonably convey to one skilled in the relevant art that the inventors had possession of the claimed invention at the time the application was effectively filed (Final Act. 2–3; Ans. 3–6). (2) The Examiner rejected claims 1, 4–14, 17–29, and 31–41 under 35 U.S.C. § 112, first paragraph, as based on a disclosure which is not enabling (Final Act. 3–4; Ans. 6–11). (3) The Examiner rejected claims 1, 4–14, 17–29, and 31–41 under 35 U.S.C. § 101 as being directed to non-statutory subject matter, without significantly more (see Final Act. 4–6). Because the Examiner has withdrawn this rejection in the Answer (see Ans. 3; see also Reply Br. 1), we do not reach the merits or otherwise review this rejection in our decision, and we will not address Appellant’s arguments (see Appeal Br. 15–41) directed thereto. (4) Claims 1, 4–14, 17–29, and 31–41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Torres, Schneck, and Segal (Final Act. 7–22). Appeal 2019-001633 Application 11/544,685 5 Appellant’s Contentions Regarding the rejections under 35 U.S.C. § 112, Appellant’s contend the Specification, especially paragraph 38, provides adequate written description support and enables the recited invention (see Appeal Br. 7–15; Reply Br. 2–9). Regarding the obviousness rejections over the base combination of Torres, Schneck, and Segal, inter alia, Appellant contends that the Examiner erred in rejecting claims 1, 4–14, 17–29, and 31–41 under 35 U.S.C. § 103(a) based on the failure of the Examiner to set out a sufficient motivation for combining the applied references to teach or suggest redacting hard copy scanned documents using redaction rules and detected document type, as recited in claim 1 (see Appeal Br. 41–65; Reply Br. 9– 12). Principal Issues on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 10– 12) and Reply Brief (Reply Br. 4–6), the following dispositive issues are presented on appeal: Written Description (1) Did the Examiner err in rejecting, under 35 U.S.C. § 112, first paragraph, claims 1, 4–14, 17–29, and 31–41 as lacking written description support for limitation A in claim 1, and the commensurate limitations set forth in remaining independent claims 37 and 40, on the basis that the Specification as originally filed did not reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention at the time the application was effectively filed? Appeal 2019-001633 Application 11/544,685 6 Enablement (2) Did the Examiner err in rejecting claims 1, 4–14, 17–29, and 31– 41 because the Specification fails to enable one of ordinary skill in the art at the time of Appellant’s invention to make and/or use the identification process recited in limitation A of claim 1, and commensurate limitations of claims 37 and 40, by failing to describe identifying a document type of a scanned hard copy paper document based upon at least one piece of information scanned on the hard copy paper document? Obviousness (3) Did the Examiner err in rejecting claims 1, 4–14, 17–29, and 31– 41 under 35 U.S.C. § 103(a) over the base combination of Torres, Schneck, and Segal, because it would not have been obvious to combine Segal with Torres-Schneck, when Segal does not teach or suggest redaction, or does not suggest applying redaction rules based on identified documents types of hard copy paper documents? ANALYSIS Issue (1): Written Description Independent claim 1, limitation A, recites: identify a document type of the scanned hard copy paper document, where the document type is identified as one of a plurality of hard copy paper document types based at least partially upon at least one piece of information scanned on the hard copy paper document Claim 1, limitation A (emphasis added). Remaining independent claims 37 and 40 recite commensurate limitations. The Examiner determines that because paragraph 38 of the Specification discloses identifying a document type “via manual entry or a Appeal 2019-001633 Application 11/544,685 7 code on the document automatically recognized by the recognition system” (Final Act. 3), the Specification only supports operating on an electronic document, and not a hard copy paper document as claimed. As a result, the Examiner determines “the [S]pecification does not appear to disclose identifying a document type based at least partially upon at least one piece of information scanned on the hard copy paper document, and such limitations constitute new matter” (Final Act. 3). Appellant argues (see Appeal Br. 8–12; Reply Br. 4–8) the Specification describes operating on different documents, including both hard copy documents and electronic documents, and cites paragraphs 35, 38, 39, and 56 for support. Appellant asserts paragraph 38 of the Specification, cited by the Examiner, “describes that the identifying of the type of document could be identification via a code on a hard copy document or identification via a code on an electronic document” (Appeal Br. 9), and that “[t]here is nothing limiting the description in paragraph [0038] to only identifying of the type of document by automatic recognition of an electronic document type by the redaction system” (Appeal Br. 10). Further, Appellant points out that paragraph 39 of the Specification describes identifying cells in original document 12 (see Appeal Br. 10 citing Spec. ¶ 39), and paragraph 56 of the Specification describes converting hard copy documents with a scanning system (see Appeal Br. 10 citing Spec. ¶ 56). Finally, Appellant concludes, and we agree, that: The application, at the time the application was filed, clearly describes in the specification, in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s) had possession of the claimed invention, that the document type may be identified as one of a plurality of hard copy paper document types based at least partially upon at least Appeal 2019-001633 Application 11/544,685 8 one piece of information scanned on the hard copy paper document. Appeal Br. 11. Based on our review of paragraphs 35, 38, 39, and 56 of the Specification, we agree with Appellant’s conclusions that the Examiner erred in rejecting claims 1, 4–14, 17–29, and 31–41 under 35 U.S.C. § 112(a) as failing to provide an adequate written description of the invention recited in independent claims 1, 37, and 40, and as a result in each of the dependent claims. Accordingly, we do not sustain the Examiner’s written description rejection of claims 1, 4–14, 17–29, and 31–41. Issue (2): Enablement Rejection Based on similar reasons regarding limitation A in claim 1 discussed above, the Examiner also determines claims 1, 37, and 40 fail to comply with the enablement requirement, and contain subject matter which was not described in the Specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention (see Final Act. 3–4; Ans. 6–11). The Examiner determines that the Specification fails to define exactly how the limitation is to be implemented, and thus requires undue experimentation by a skilled artisan (see Ans. 11). “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (citations omitted). See also In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991) (the specification must teach those of ordinary skill “how to make Appeal 2019-001633 Application 11/544,685 9 and how to use the invention as broadly as it is claimed”). Based on the record before us, Appellant’s Specification (see Spec. ¶¶ 35, 38, 39, 56) would reasonably convey to one of ordinary skill in the art at the time of Appellant’s invention the ability to understand, make, and/or use the redaction system recited in independent claim 1, including the identification of a document type of a scanned hard copy paper document set forth in limitation A. Therefore, we agree with Appellant’s arguments (see Appeal Br. 12– 15; Reply Br. 8–9) that the Specification as filed enables a person skilled in the art to make or use the invention, coupled with information known in the art, without undue experimentation. Further, we agree with Appellant that the Examiner’s ‘“position that prior art about the nature of identifying a document type from an electronic document and a scanned hard copy document are predictable’” contradicts the Examiner’s statement that undue experimentation is necessary (see Reply Br. 8 citing Ans. 10) (emphasis added). In view of the foregoing, and based on our discussion above as to paragraphs 35, 38, 39, and 56 of the Specification above with regard to the written description rejection, we also agree with Appellant’s contention that the Examiner erred in rejecting claims 1, 4–14, 17–29, and 31–41 under 35 U.S.C. § 112(a) as failing to provide enablement to make and/or use the invention recited in these claims. Accordingly, we do not sustain the Examiner’s enablement rejection of claims 1, 4–14, 17–29, and 31–41. Appeal 2019-001633 Application 11/544,685 10 Issue (3): Obviousness Rejection We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 41–65; Reply Br. 9–12), the Examiner’s rejections (Final Act. 7–22), and the Examiner’s response (Ans. 11–20) to Appellant’s arguments in the Appeal Brief. We are persuaded by Appellant’s contentions (see Appeal Br. 45–51; Reply Br. 10–12) that the Examiner has not sufficiently shown that it would have been obvious to modify the Torres-Schneck combination with Segal. Our reasoning follows. Often, every element of a claimed invention can be found in the prior art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). However, when considering whether a claim would have been obvious in light of a combination of multiple references, the Board “consider[s] whether a [person of ordinary skill in the art] would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success in doing so.” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (internal quotation marks and citation omitted); see also id. at 1381–82 (internal quotation marks and citation omitted) (“The factual inquiry whether to combine references must be thorough and searching and the need for specificity pervades our authority on the findings on motivation to combine.”). The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” In re Nuvasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016) (quoting Motor Vehicle Mfrs. Assoc. v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted)); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Appeal 2019-001633 Application 11/544,685 11 Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). ‘“[C]onclusory statements’ alone are insufficient and, instead, the finding must be supported by a ‘reasoned explanation.”’ Nuvasive, 842 F.3d at 1383. In other words, “the Board [must] find that a person of ordinary skill in the art would have been motivated to combine the prior art in the way claimed.” Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). In this light, and in view of the Examiner’s findings of fact and reasoning for the rejection of claim 1 (see Final Act. 7–10; Ans. 13–15),2 we are persuaded that the Examiner erred in rejecting claims 1, 4–14, 17–29, and 31–41 over the base combination of Torres, Schneck, and Segal. Although we agree with the Examiner that Segal teaches or suggests a scanner, processor, and memory capable of identifying documents as in limitation A (see Final Act. 9–10; Ans. 13), and that sometimes motivation may come from the knowledge generally available to one or ordinary skill in the art, and not the references themselves (see Ans. 14), we do not agree with the Examiner that it would have been obvious to combine Segal with Torres- Schneck “since it would have allowed for storage and management of digital documents, corresponding to hard copy documents” (Final Act. 10; see also Ans. 13). Segal merely identifies a problem (identifying a document using information scanned on the hard copy paper document) that neither Torres nor Schneck, and only Appellant, sought to solve. 2 Claims 37 and 40 recite similar, commensurate limitations as are at issue in claim 1, and the Examiner made similar findings and reasoning with regard to claims 37 and 40 (see Final Act. 17–20). Appeal 2019-001633 Application 11/544,685 12 However, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008). We agree with Appellant that Segal provides no explanation or reasoning for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. See KSR, 550 U.S. at 421. And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. See KSR, 550 U.S. at 419, 421. In this light, we are persuaded by Appellant’s arguments (see Appeal Br. 45–51; Reply Br. 10–12) that Segal does not teach or suggest redaction, and does not envisage applying redaction rules based on identified documents types of hard copy paper documents. As a result, based on the record before us, Appellant has shown the Examiner erred in rejecting independent claims 1, 37, and 40, and thus claims 4–14, 17–29, 31–36, 38, and 39 depending respectively therefrom, under 35 U.S.C. § 103(a), and we cannot sustain the Examiner’s obviousness rejection of claims 1, 4–14, 17–29, and 31–41 over the base combination of Torres, Schneck, and Segal.3 3 We recognize that Appellant’s arguments concerning the obviousness rejection present additional issues regarding the propriety of combining Appeal 2019-001633 Application 11/544,685 13 CONCLUSIONS Appellant has shown the Examiner erred in rejecting (i) claims 1, 4– 14, 17–29, and 31–41 for lack of written description and enablement under 35 U.S.C. § 112, first paragraph. Appellant has also shown the Examiner erred in rejecting claims 1, 4–14, 17–29, and 31–41 under 35 U.S.C. § 103(a) as being obvious over the base combination of Torres, Schneck, and Segal. For all of the reasons above, we hold as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–14, 17– 29, 31–41 112, first paragraph Written Description 1, 4–14, 17– 29, 31–41 1, 4–14, 17– 29, 31–41 112, first paragraph Enablement 1, 4–14, 17– 29, 31–41 1, 4–8, 10, 11, 13, 14, 17–28, 31– 34, 36–38, 40, 41 103(a) Torres, Schneck, Segal 1, 4–8, 10, 11, 13, 14, 17–28, 31– 34, 36–38, 40, 41 9, 29 103(a) Torres, Schneck, Segal, Sperry4 9, 29 12 103(a) Torres, Schneck, Segal, Kobayashi5 12 Torres with Schneck (see, e.g., Appeal Br. 41–55). Because we were persuaded of error by the issue regarding combining Segal with Torres- Schneck, we do not reach the additional issues, as the issue as to Segal is dispositive of the obviousness rejections on appeal. 4 US 2006/0259983 A1; published Nov. 16, 2006. 5 US 2004/0220919 A1; published Nov. 4, 2004. Appeal 2019-001633 Application 11/544,685 14 35, 39 103(a) Torres, Schneck, Segal, Patton6 35, 39 Total Outcome 1, 4–14, 17– 29, 31–41 REVERSED 6 US 2003/0145017 A1; published July 31, 2003.