Ex Parte 7,035,830 B1 et alDownload PDFPatent Trial and Appeal BoardJan 31, 201895002063 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 95/002,063 08/01/2012 7,035,830 B1 30672.003 8726 63936 7590 01/31/2018 WILSON DANIEL SWAYZE, JR. 3804 CLEARWATER CT. PLANO, TX 75025 EXAMINER DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/31/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ IMAGE-X LLC Patent Owner and Appellant v. TYBERA DEVELOPMENTGROUP, INC. Requester and Respondent _______ Appeal 2017-011285 Reexamination Control No. 95/002,063 Patent No. US 7,035,830 B1 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, MARC S. HOFF, and JENNIFER L. McKEOWN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner Image-X LLC appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1–36 as set forth in the Right of Appeal Notice (RAN) mailed January 29, 2016. Patent Owner filed a brief (“PO App. Br.”) on June 8, 2016. Requester Tybera Development Group, Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 2 Inc. filed a respondent brief (“Req. Br.”) on July 8, 2016. The Examiner mailed an Examiner’s Answer (“Ans.”) on June 7, 2017 which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm. The ’830 Patent issued to Shaikh on April 25, 2006. The ’830 Patent concerns a document filing method and system. A user interface display is connected to a server in communication with at least one remove compute engine. The server is adapted to receive and display an electronic copy of a document submitted from a remote location for filing with the user of the server. An electronic stamping apparatus is adapted to impart an electronic stamp on the submitted document responsive to a user input through the user interface. A database in electronic communication with the server is adapted to store the document after it is electronically stamped. The electronic stamp can indicate that the document is accepted or rejected. Access to the server may be limited to at least one authorized user uniquely identified to the server prior to use of the electronic stamp. See Abstract. Claim 1, which is illustrative of the appealed subject matter, reads as follows: 1. A document filing method comprising the steps of: using a user interface display connected to a server in electronic communication with at least one remote compute engine having URL capability, the server receiving and displaying an electronic copy of a document being submitted from a remote location for filing with the user of the server; electronically stamping the electronic copy of the document being submitted for filing responsive to a user input through the user interface; Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 3 storing in a database the document after the electronic stamp is imparted to the document; providing an electronic communication transmitting an electronic copy of the document having the electronic stamp imparted to the electronic copy of the document to the submitter of the document for filing providing, as a security measure, that the electronic stamping step can only be done utilizing software running on a secure server system with access for the purpose of such electronic stamping limited to at least one authorized user uniquely identified to the server prior to performing the electronic stamping step. The Examiner relies upon the following references in rejecting the claims: Ginter et al. (US 6,185,683 B1, issued Feb. 6, 2001) (“Ginter”) LegaLFile™ System Overview, http://web.archive.org/web/19980525183633/http://www.legalfi le.com/Coorporate/SystemOverview.cfm (1998) (“legaLFile”) Digital File Stamp, http://web.archive.org/web/1998020520195 5/http://www.nmcourt.fed.us/ dcdocs/reference.html (“Digital File Stamp”) McMillan et al. “A Guidebook for Electronic Court Filing,” West Group, Inc. (1998) (“Guidebook”) Walker, Electronic Court Documents, “An Assessment of Judicial Electronic Document and Data Interchange Technology,” National Center for State Courts (1999) (“ECD”) Electronic Case Files In The Federal Courts: “A Preliminary Examination of Goals, Issues, and the Road Ahead, Discussion Draft,” Administrative Office of the United States Courts (1997) (“Electronic Case Files”) Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 4 Apple, State-Federal Judicial Observer “Electronic Filing Comes to State and Federal Courts” Special Technology Issue 12 (1996) (“State-Federal Judicial Observer”) Egar, “Electronic Filing,” Fourth National Court Technology Conference (CTC4) (1994) (“Electronic Filing”) Georgia State University, “Electronic Court Filing White Paper: Issues in Developing an Electronic Court Filing System” (GSU Issues Paper”) (“GSU Issues Paper”). The claims stand rejected as detailed below (see PO App. Br. 8–9). The following rejections are made under 35 U.S.C. § 103(a).1 References Claims legaLFile System Overview (“legaLFile”) and Admitted Prior Art (“APA”) 1, 2, 4–8, 11, 12, 14–16, 19, 20, and 22–24 legaLFile and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26 legaLFile, Ginter, and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26 legaLFile, Ginter, Digital File Stamp, and APA 9, 10, 17, 18, 25, and 26 The Guidebook for Electronic Court Filing (“Guidebook”) and APA 1, 2, 4–8, 11, 12, 14–16, 19, 20, 22–24, and 27-36 Guidebook and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26 Guidebook, APA, and Ginter 3, 9, 10, 13, 17, 18, 21, 25, and 26 Guidebook, APA, and Digital File Stamp 9, 10, 17, 18, 25, and 26 Electronic Court Documents: An Assessment of Judicial Electronic Document and Data Interchange Technology (“ECD”) and APA 1, 2, 4–8, 11, 12, 14-16, 19, 20, 22–24, and 27–36 ECD and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26 1 See RAN pp. 19, 33, 36, 38, 40. Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 5 ECD, Ginter, and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26 ECD, Digital File Stamp, and APA 9, 10, 17, 18, 25, and 26 Electronic Case Files, State- Federal Judicial Observer, and APA 1–36 Electronic Filing, GSU Issues Paper, and APA 1–36 Claims 1–11 and 25–36 stand rejected under 35 U.S.C. § 112(a), or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Claims 11 and 19 stand rejected under 35 U.S.C. § 112(b), or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. ISSUES Patent Owner argues that legaLFile, the Guidebook, ECD, Electronic Case Files, and Electronic Files, individually, do not disclose all the limitations of the claimed invention. See PO App. Br. 5–21. Patent Owner further contends that Ginter, Digital File Stamp, State- Federal Judicial Observer, and GSU Issues Paper, individually, also do not disclose all the limitations of the claimed invention. Id. Patent Owner asserts that each of the amended or new limitations rejected by the Examiner is supported by the specification of the ‘830 Patent. PO App. Br. 22–23. Last, Patent Owner argues that claims 11 and 19 are not indefinite under 35 U.S.C. § 112, second paragraph. PO App. Br. 24. The arguments made by Patent Owner and Requester present us with the following issues: Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 6 1. Did the Examiner err in rejecting the claims over legaLFile in combination with one or more of APA, Ginter, and Digital File Stamp? 2. Did the Examiner err in rejecting the claims over the Guidebook in combination with one or more of APA, Ginter, and Digital File Stamp? 3. Did the Examiner err in rejecting the claims over ECD in combination with one or more of APA, Ginter, and Digital File Stamp? 4. Did the Examiner err in rejecting the claims over Electronic Case Files, State-Federal Judicial Observer, and APA? 5. Did the Examiner err in rejecting the claims over Electronic Filing, GSU Issues Paper, and APA? 6. Did the Examiner err in rejecting the claims as lacking written description support in the ’830 Patent? 7. Did the Examiner err in rejecting claims 11 and 19 as being indefinite under § 112, second paragraph? PRINCIPLES OF LAW An argument that merely points out what a claim recites is unpersuasive. 37 C.F.R. § 41.37(c)(1)(vii). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test of obviousness is not whether the features of a secondary reference may be bodily incorporated into the Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 7 structure of the primary reference, nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. at 425. ANALYSIS REJECTIONS INVOLVING LEGALFILE AND APA Patent Owner’s arguments concerning the rejection of claims 1, 2, 4– 8, 11, 12, 14–16, 19, 20, and 22–24 exclusively concern limitations of the claims allegedly not disclosed by LegaLFile alone. See PO App. Br. 11–14. One cannot, however, show nonobviousness by attacking references individually where the rejections are based on combinations of references. Keller, 642 F.2d at 425. For example, it is precisely to meet the various “independent of the firewall” limitations of independent claims 1, 11, and 19 that the Examiner cited to Patent Owner’s admission that a server independent of a firewall is known in the art. ACP 18–19, citing ’830 Patent col. 4:32–37. Patent Owner makes no attempt to contest the propriety of the Examiner’s combination of legaLFile and APA. Patent Owner has not explained why the Examiner’s citation of admitted prior art fails to supply the teaching alleged by Patent Owner, and conceded by the Examiner, to be missing from legaLFile. Patent Owner has also not persuasively argued why it would not have been obvious to modify legaLFile in view of the admitted prior art. Accordingly, we sustain the Examiner’s § 103(a) rejection of independent claims 1, 11, and 19 over legaLFile and APA. Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 8 Patent Owner alleges, without further explanation, that “[n]one of the applied references discloses or suggest the claim matter recited in claims 3, 13, 21, and 22.” PO App. Br. 11. A naked recitation that corresponding elements are not found in the prior art is not persuasive to show Examiner error. See Lovin, 652 F.3d at 1357. Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 3, 13, 21, and 22 over legaLFile and APA. Patent Owner’s remarks concerning claims 27–36 are not germane to rejections involving legaLFile, as claims 27–36 do not stand rejected over any combination including legaLFile. See PO App. Br. 11–12. Patent Owner’s mere recitations of the limitations of dependent claims 2, 4-8, 12, 14-16, 20, and 22-24 do not amount to persuasive argument that the Examiner erred. See PO App. Br. 13–14 and Lovin, 652 F.3d at 1357. Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 2, 4–8, 12, 14–16, 20, and 22–24 over legaLFile and APA. Patent Owner makes no distinct argument for the patentability of claims 3, 9, 10, 17, 18, 25, and 26 over legaLFile and APA. Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 17, 18, 25, and 26 over legaLFile and APA. Patent Owner’s argument that Ginter does not disclose or suggest the “independent of the firewall” limitations of independent claims 1, 11, and 19 is not persuasive. PO App. Br. 14. The Examiner relied on APA to disclose those limitations. Patent Owner’s remarks concerning the applicability of Ginter to claims 27–36 is not germane to the rejection under appeal, because claims 27–36 do not stand rejected over any combination involving Ginter. See PO App. Br. 15. In the absence of persuasive argument by Patent Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 9 Owner, then, we sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26 (all dependent from one of claims 1, 11, and 19) over legaLFile, APA, and Ginter. Patent Owner’s argument that Digital File Stamp does not disclose or suggest the “independent of the firewall” limitations of independent claims 1, 11, and 19 is not persuasive. PO App. Br. 16. The Examiner relied on APA to disclose those limitations. Patent Owner’s remarks concerning the applicability of Ginter to claims 27–36 is not germane to the rejection under appeal, because claims 27–36 do not stand rejected over any combination involving Ginter. See PO App. Br. 16–17. In the absence of persuasive argument by Patent Owner, then, we sustain the Examiner’s § 103(a) rejection of claims 9, 10, 17, 18, 25, and 26 (all dependent from one of claims 1, 11, and 19) over legaLFile, APA, and Digital File Stamp. REJECTIONS INVOLVING THE GUIDEBOOK AND APA Patent Owner’s arguments concerning rejections that include the Guidebook for Electronic Court Filing (“Guidebook”) parallel those made concerning the legaLFile reference, and are unpersuasive for the same reasons. Patent Owner’s argument that the Guidebook does not disclose the “independent of the firewall” limitations in independent claims 1, 11, and 19 amount to an unpersuasive attack on an individual reference where the rejection is based upon a combination. PO App. Br. 17; See Keller, 642 F.2d at 425. Patent Owner does not attempt to give reasons why the Examiner’s combination of the Guidebook and APA fails to disclose or suggest the claimed invention, or why the Examiner’s combination might not be legally Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 10 appropriate. Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 1, 11, and 19 over the Guidebook and APA. Patent Owner’s mere recitation of the limitations of claims 27–36 is not persuasive to show that the Examiner erred. PO App. Br. 17. Such recitation fails to satisfy the requirements of 37 CFR § 41.37(c)(1)(vii). See Lovin, 652 F.3d at 1357. Because Patent Owner makes no persuasive argument that the Examiner erred, we sustain the Examiner’s § 103(a) rejection of claims 1, 2, 4–8, 11, 12, 14–16, 19, 20, 22–24, and 27-36 over Guidebook and APA. As Patent Owner makes no separate argument, we also sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26 over Guidebook and APA. Patent Owner presents no separate argument concerning the Examiner’s rejection over the Guidebook, APA, and Ginter. Therefore, we sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26 over Guidebook, APA, and Ginter. Patent Owner presents no separate argument concerning the Examiner’s rejection over the Guidebook, APA, and Digital File Stamp. Therefore, we sustain the Examiner’s § 103(a) rejection of claims 9, 10, 17, 18, 25, and 26 over Guidebook, APA, and Digital File Stamp. REJECTIONS INVOLVING ECD AND APA Patent Owner’s arguments concerning rejections that include The Electronic Court Documents: An Assessment of Judicial Electronic Document and Data Interchange Technology (“ECD”) parallel those made Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 11 concerning the legaLFile reference, and are unpersuasive for the same reasons. Patent Owner’s argument that ECD does not disclose the “independent of the firewall” limitations in independent claims 1, 11, and 19 amount to an unpersuasive attack on an individual reference where the rejection is based upon a combination. PO App. Br. 18; See Keller, 642 F.2d at 425. Patent Owner does not attempt to give reasons why the Examiner’s combination of the Guidebook and APA fails to disclose or suggest the claimed invention, or why the Examiner’s combination might not be legally appropriate. Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 1, 11, and 19 over ECD and APA. Patent Owner’s mere recitation of the limitations of claims 27–36 is not persuasive to show that the Examiner erred. PO App. Br. 18. Such recitation fails to satisfy the requirements of 37 CFR § 41.37(c)(1)(vii). See Lovin, 652 F.3d at 1357. Because Patent Owner makes no persuasive argument that the Examiner erred, we sustain the Examiner’s § 103(a) rejection of claims 1, 2, 4–8, 11, 12, 14–16, 19, 20, 22–24, and 27–36 over ECD and APA. As Patent Owner makes no separate argument, we also sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26 over ECD and APA. Patent Owner presents no separate argument concerning the Examiner’s rejection over ECD, APA, and Ginter. Therefore, we sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26 over ECD, APA, and Ginter. Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 12 Patent Owner presents no separate argument concerning the Examiner’s rejection over the Guidebook, APA, and Digital File Stamp. Therefore, we sustain the Examiner’s § 103(a) rejection of claims 9, 10, 17, 18, 25, and 26 over Guidebook, APA, and Digital File Stamp. REJECTION OVER ELECTRONIC CASE FILES Patent Owner’s arguments concerning the rejection of claims 1–36 are entirely comprised of attacks on the individual references: Electronic Case Files, State-Federal Judicial Observer, or GSU Issues Paper. See PO App. Br. 18–20. One cannot, however, show nonobviousness by attacking references individually where the rejections are based on combinations of references. Keller, 642 F.2d at 425. Patent Owner makes no attempt to contest the propriety of the Examiner’s combination of Electronic Case Files, State-Federal Judicial Observer, and APA. Patent Owner has not explained why the Examiner’s citation of admitted prior art2 fails to supply the teaching alleged by Patent Owner, and conceded by the Examiner, to be missing from Electronic Case Files. Patent Owner has also not persuasively argued why it would not have been obvious to modify Electronic Case Files in view of the admitted prior art. Patent Owner’s mere recitation of the limitations of claims 27–36 is not persuasive to show that the Examiner erred. PO App. Br. 18–19. Such recitation fails to satisfy the requirements of 37 CFR § 41.37(c)(1)(vii). See Lovin, 652 F.3d at 1357. 2 ACP at 43–44. Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 13 Patent Owner’s various statements that State-Federal Judicial Observer does not disclose or suggest limitations of claims 1, 11, 19, or 27– 36, are not persuasive to show that the Examiner erred. PO App. Br. 20. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Keller, 642 F.2d at 425. Due to Patent Owner’s failure to set forth a persuasive argument that the Examiner erred, we sustain the Examiner’s § 103(a) rejection of independent claims 1–36 over Electronic Case Files, State-Federal Judicial Observer, and APA. REJECTION OVER ELECTRONIC FILING Patent Owner’s arguments concerning the rejection of claims 1–36 are entirely comprised of attacks on the individual references: Electronic Filing, GSU Issues Paper, or Applicant’s admitted Prior Art (APA). See PO App. Br. 19–21. One cannot, however, show nonobviousness by attacking references individually where the rejections are based on combinations of references. Keller, 642 F.2d at 425. Patent Owner makes no attempt to contest the propriety of the Examiner’s combination of Electronic Filing, GSU Issues Paper, and APA. Patent Owner has also not persuasively argued why it would not have been obvious to modify Electronic Filing in view of GSU Issues Paper and APA. Patent Owner’s various statements that GSU Issues Paper, individually, or APA, individually, does not disclose or suggest limitations of claims 1, 11, 19, or 27–36, are not persuasive to show that the Examiner erred. PO App. Br. 19-21. One cannot show nonobviousness by attacking references Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 14 individually where the rejections are based on combinations of references. Keller, 642 F.2d at 425. Patent Owner has not set forth a persuasive argument that the Examiner erred in rejecting claims 1–36 over the combination of Electronic Filing, GSU Issues Paper, and APA. We sustain the Examiner’s § 103(a) rejection. REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH LOCAL SERVER, REMOTE SERVER Patent Owner argues that the specification supports the claimed “local server” and “remote server.” PO App. Br. 5. Patent Owner relies on the ’830 Patent’s description that “[t]he present invention can be owned and operated directly by the governmental agency in question . . . either maintained locally at the specific agency site or otherwise within the agency, or remotely at the provider’s site.” ’830 Patent, col. 2:36–41. We are not persuaded by Patent Owner’s argument. Instead, we agree with Requester that the terms “local” and “remote” are not used in the ’830 Patent to modify the term “server.” Resp. Br. 9; see RAN 4. The section cited by Patent Owner uses the terms “locally” and “remotely” but makes no mention of a server. We further agree with Requester that Figure 1 of the ’830 Patent does not define “local” or “remote” with sufficient clarity to satisfy the written description requirement. RAN 4. As a result, we agree with the Examiner that the terms “local server” and “remote server” constitute new matter not supported by the original Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 15 specification. We sustain the Examiner’s rejection of claims 1 and 35 under 35 U.S.C. § 112, first paragraph. “INDEPENDENT OF THE FIREWALL” Patent Owner argues that the ’830 Patent specification supports the claim phrase “independent of the firewall,” because disclosure that server 12 may be “protected behind a firewall” means that the server is independent of the firewall. PO App. Br. 5–6. We do not find Patent Owner’s argument to be persuasive. The ’830 Patent does not contain an express definition of “independent of a firewall” as meaning “protected behind a firewall.” See Resp. Br. 10. Further, we agree with Requester that “independent” may have a number of meaning, but that the person having ordinary skill in the art would not equate “independent of” with “behind.” Id. THE ELECTRONIC STAMP Patent Owner argues that the recitations in new claims 29, 30, and 31 that the received electronic copy of the electronic stamp is in a “spreadsheet format,” “word processing format,” or “image format” are not new matter because issued claim 15 recites that “the received electronic copy of the document is in one or more of multiple formats, including the a spread sheet format, an image format, and a word processing format.” PO App. Br. 6. Patent Owner’s argument is not persuasive because original claim only provides support for “the received electronic copy of the document.” It does not provide support for “the received electronic copy of the electronic stamp.” Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 16 TRANSMITTED OVER A CLOUD Patent Owner argues that the limitation “transmitted over a cloud” in new claim 33 is not new matter because element 16 of Figure 1 provides support for the claimed cloud. We are not persuaded, because element 16 represents the public switched telephone network (PSTN), rather than cloud computing. Figure 1 is reproduced below: Figure 1 of the ‘830 Patent is a block diagram of the system according to the invention. See ’830 Patent, 2:10–11. “Network 16” is disclosed as one of several alternatives, including an intranet, an internet, an extranet, or any other network communications system including, at least in part, the Public Switched Telephone Network (“PSTN”). See ’830 Patent 3:5–15. There is no disclosure of cloud computing, or “on-demand computing,” as the term would be understood by the person having ordinary skill in the art. See RAN 8. Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 17 ELECTRONIC STAMP ACTS AS AN ENVELOPE FOR DIFFERENT TYPES OF INFORMATION Claim 25 of the ’830 Patent recites “wherein the electronic stamp includes the document envelope the data envelope and the content of the document.” Claim 26 of the ’830 Patent recites “wherein the electronic stamp displays the document envelope, the data envelope and the content of the document.” The Examiner rejects the claims under § 112, first paragraph, concluding that “it is unclear as to how a stamp can display or include a document envelope, a data envelope or the content of the document.” ACP 6. Whether a claim particularly points out and distinctly claims the subject matter sought to be patented is an issue covered by § 112, second paragraph, however. The Examiner has not explained why this claim language lacks written description support or constitutes new matter. Accordingly, we do not sustain the Examiner’s § 112, first paragraph rejection on this basis. § 112, FIRST PARAGRAPH, CONCLUSION Because each independent claim has been amended to contain language subject to a new matter rejection (“independent of the firewall”), we sustain the Examiner’s § 112, first paragraph rejection of claims 1–36, i.e., independent claims 1, 11, and 19 and all claims dependent therefrom. REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH Claims 11 and 19 recite “limiting the electronic stamp means for imparting the electronic stamp to the electronic copy of the document . . . to Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 18 running on the server means only, without upload to any compute engine” (emphasis added). The Examiner rejected these claims as being indefinite, relying on Patent Owner’s statement that “uploading is transferring files from the local computer (government computer, such as a court computer) to a remote computer (such as a remote attorney office computer).” ACP at 7, quoting PO Response filed June 9, 2015 at 15. The Examiner found this use of “uploading” to be indefinite because the specification does not define the term as being limited to this embodiment. ACP at 7. We are not persuaded by Patent Owner’s argument that the rejection is improper because “[t]he examiner cannot base a rejection under 35 USC section 112 based upon the remarks of the applicant.” Rather, we agree with the Examiner that relying “on one computer being local and another computer being remote merely depends on the perspective, as either could be labeled alternately according to the circumstances.” ACP at 7. Thus, it is unclear whether the server is located at an attorney’s office, or is part of the infrastructure of a court system. See RAN 14. Because we are not persuaded that the Examiner erred, we sustain the rejection of claims 11 and 19 as being indefinite under 35 U.S.C. § 112, second paragraph. CONCLUSIONS 1. The Examiner did not err in rejecting the claims over legaLFile in combination with one or more of APA, Ginter, and Digital File Stamp. 2. The Examiner did not err in rejecting the claims over the Guidebook in combination with one or more of APA, Ginter, and Digital File Stamp. Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 19 3. The Examiner did not err in rejecting the claims over ECD in combination with one or more of APA, Ginter, and Digital File Stamp. 4. The Examiner did not err in rejecting the claims over Electronic Case Files, State-Federal Judicial Observer, and APA. 5. The Examiner did not err in rejecting the claims over Electronic Filing, GSU Issues Paper, and APA. 6. The Examiner did not err in rejecting the claims as lacking written description support in the ’830 Patent. 7. The Examiner did not err in rejecting claims 11 and 19 as being indefinite under § 112, second paragraph. ORDER The Examiner’s decision to reject claims 1–36 is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2017-011285 Reexamination Control 95/002,063 Patent No. 7,035,830 B1 20 PATENT OWNER: WILSON DANIEL SWAYZE, JR. 3804 CLEARWATER CT. PLANO, TX 75025 THIRD PARTY REQUESTER: DURHAM, JONES & PINEGAR INTELLECTUAL PROPERTY LAW GROUP 111 EAST BRAODWAY SUITE 900 SALT LAKE CITY, UT 84110 Copy with citationCopy as parenthetical citation