Obviousness

Obviousness Analysis of U.S. Patent 5,115,326

This analysis evaluates the claims of U.S. Patent 5,115,326 for obviousness under 35 U.S.C. § 103, considering the state of the art prior to the patent's filing date of June 26, 1990. The analysis is based on the previously identified prior art references: U.S. Patents 4,893,330 (St-Amand), 4,754,426 (Tashima), 4,654,724 (Kurihara), and 4,837,834 (O-Otake).

A person having ordinary skill in the art (PHOSITA) at the time of this invention would have been familiar with computer networking (including LANs and early E-mail systems), facsimile technology, and machine-readable optical codes such as bar codes.

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Analysis of Independent Claims 1 and 9

Claim 1: A method for a fax server to automatically route a fax message by inspecting a bar-coded destination address on the first page and sending the message to that network address.

Claim 9: A method for a user to send a document from a fax machine to a network recipient by creating and sending a cover page with the recipient's network address encoded in a bar code.

Obviousness Combination: U.S. Patent 4,893,330 (St-Amand) in view of U.S. Patent 4,837,834 (O-Otake).

Rationale:

1. Starting Point (St-Amand '330): The St-Amand patent discloses the foundational system: a central "facsimile-mail processing center" (functionally equivalent to the '326 patent's "fax server") that receives a fax via the telephone network and routes it to a subscriber's E-mail address. This establishes the entire fax-to-E-mail gateway concept. However, St-Amand's method for providing the destination address is inefficient; the user must call in and enter the address using DTMF tones after sending the fax. A PHOSITA would recognize this two-step process as cumbersome, slow, and prone to user error.

2. The Problem to Be Solved: The clear problem with the St-Amand system is the need for a more integrated and user-friendly method of specifying the E-mail destination. The ideal solution would be to provide the address along with the document in a single, unified transmission.

3. The Obvious Solution (O-Otake '834): The O-Otake patent provides a direct and obvious solution to this problem. O-Otake explicitly teaches the use of a bar code, scanned by a facsimile machine, to encode a destination address. While O-Otake specifies encoding a telephone number, the principle of using a bar code to represent a destination address for a fax transmission is clearly taught.

4. Motivation to Combine: A PHOSITA, tasked with improving the St-Amand fax-to-E-mail system, would be motivated by the desire for efficiency and reliability to replace the DTMF-entry step. Looking to the state of the art for fax addressing, they would encounter the O-Otake patent, which demonstrates that bar codes are a known and viable method for this exact purpose. The motivation to combine would be to replace an inefficient input method (DTMF) with a more efficient, integrated one (bar code). Applying O-Otake's bar code addressing method to St-Amand's fax-to-E-mail system would have been a predictable design choice. The substitution of an E-mail address for a telephone number within the bar code would be a mere adaptation of the content being encoded, not an inventive step, as the St-Amand system was already designed to handle E-mail addresses.

Conclusion for Claims 1 and 9: The combination of St-Amand and O-Otake teaches all the elements of claims 1 and 9. It would have been obvious to a PHOSITA to use the bar code addressing method of O-Otake to improve the fax-to-E-mail system of St-Amand, thereby arriving at the claimed invention.

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Analysis of Independent Claim 7

Claim 7: A method for requesting information via fax using a bar-coded message, which is then interpreted by a fax server that automatically takes action.

Obviousness Combination: The system derived from St-Amand '330 and O-Otake '834, further in view of U.S. Patent 4,754,426 (Tashima) and the general knowledge of automated form processing.

Rationale:

1. Starting Point (St-Amand + O-Otake): The combination above establishes a system where a fax server can receive a fax and intelligently interpret a bar code on it.

2. The Obvious Extension: Once such a system exists, a PHOSITA would consider other potential uses for the bar-coded data channel beyond simple addressing. The Tashima patent teaches that machine-readable codes on a faxed document can be used not just for addressing but also as "commands."

3. Motivation to Combine: The motivation would be automation and efficiency. A "request for information" is a type of command. A PHOSITA would recognize that if the server can already read a bar code, it can be programmed to take different actions based on the content of that bar code. Using the bar code to trigger an automated information-retrieval and response process (like the "bingo card" example in the '326 patent) would be a logical and predictable extension of the technology. This would automate a routine task, reduce manual labor, and provide faster service. The concept of using machine-readable marks on a form to trigger a specific data processing action was already well-established in the art of optical mark recognition (OMR). Applying this concept to the newly-established fax-based bar code reading system would have been an obvious next step.

Conclusion for Claim 7: It would have been obvious to extend the functionality of the fax server (derived from St-Amand and O-Otake) from simply routing messages to processing commands, as suggested by Tashima, to automate information requests.

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Analysis of Independent Claim 5

Claim 5: A method for determining document orientation by using an asymmetrical bar code and attempting to read it from two opposing directions.

Obviousness Combination: The system derived from St-Amand '330 and O-Otake '834, in view of the general knowledge in the art of bar code scanning technology prior to 1990.

Rationale:

1. Starting Point and Problem: When implementing the bar code reading system of St-Amand and O-Otake, a PHOSITA would immediately confront the foreseeable and common user error of feeding a document into the fax machine upside down. This would cause the bar code scan to fail. Solving this problem would be a necessary step to make the system robust and commercially viable.

2. The Known Solution in the Art: The art of bar code technology prior to 1990 already contained the solution. Many widely used 1D bar code symbologies, such as the UPC, were designed with features to ensure readability regardless of scan direction (bi-directionality). This was often achieved through the use of distinct start and stop characters or other asymmetrical features within the code structure. The UPC, for example, used differing start/stop patterns for the left and right halves of the symbol. Scanning a barcode from both left-to-right and right-to-left to ensure a successful read was a standard technique in scanner design.

3. Motivation to Apply: A PHOSITA, facing the problem of incorrect page orientation, would be motivated to look at how this problem was solved in the field of dedicated bar code scanners. They would find that bi-directional scanning and the use of asymmetrical codes were known methods to ensure scanning robustness. Applying this known technique from the field of bar code reading to the context of a fax server application would be an obvious and logical step. The motivation is clear: to increase the reliability and user-friendliness of the system by automatically correcting a common user error. Once the orientation is determined from the successful scan direction, the final step of electronically reorienting the digital image of the fax is a trivial data manipulation task for a computer system.

Conclusion for Claim 5: The method of using an asymmetrical bar code and bi-directional scanning to determine orientation was a known technique in the broader art of bar code scanning. It would have been obvious to a PHOSITA to apply this known technique to solve the foreseeable problem of upside-down documents in the context of a fax-to-network server.