Appeal No. 2005-0052
Application No. 09/192,014
adding disclosed limitations which have no basis in the claim.
See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28
(Fed. Cir. 1997).
With the above discussion in mind, our own independent
review of the disclosure of Irons reveals that, in actuality, all
of the limitations of claim 1 are present in the disclosure of
Irons. As illustrated in the flow chart of Irons’ Figure 7,
along with the accompanying description beginning at column 12,
lines 18 of Irons, a document is scanned and a user interface tag
is located (775), the data represented in the tag is decoded and
associated with a service and a user identity (780), and the
specified service, i.e., electronic archiving or filing, is
performed (785) on the image representative of the document. We
fail to see why the operation of archiving or filing, as
specified in the location indicated on the user tag, is not a
“service,” at least as broadly set forth in appealed claim 1.1
In view of the above discussion and analysis of the
disclosure of the Irons reference, it is our opinion that,
1 We make the observation that Appellants’ own arguments during
prosecution of the instant application appear to support the interpretation of
the filing or archiving operations described in Irons as the performance of a
“service” on the scanned document image. At page 4 of the amendment filed
April 30, 2002 (Amendment “A,” Paper No. 8), Appellants state “[t]he Applicant
[sic, Applicants] respectfully submits [sic, submit] that in Irons the service
being performed is the indexing and filing of scanned documents themselves.”
7
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