Ex Parte Wenn et al

Patent Trial and Appeal Board

May 7, 2013

11695418 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN C. WENN, DANIEL W. MANCHALA,
and LEONID ORLOV
____________

Appeal 2010-012114
Application 11/695,418
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
Appellants’ invention generally relates to a document management
system that tracks document usage according to the user’s position (e.g.,
Appeal 2010-012114
Application 11/695,418

2
department, group, etc.) on the organizational chart. See generally Spec.
¶ 0002. Claim 1 is illustrative:
1. A document repository management (DRM) system for
an institution having a defined organization, the DRM system
comprising:
an input device for receiving a document access request;
an electronically readable organization chart and organizational
chart information including information identifying individuals on
said organization chart;
an electronic document repository containing accessible
documents;
a controller that:
controls requested access to each document of said
accessible documents in said electronic document repository; and
maps to said electronically readable organization chart
and said organizational chart information, each said requested access
to said each document of said accessible documents; and
a display device that displays a document usage summary chart
history based on historical tracking of actual usage and treatment of
each document by individuals and groups on said organization chart.

THE REJECTIONS
1. The Examiner rejected claims 1, 6-10, 13, 16, 27, 28, and 30 under
35 U.S.C. § 103(a) as unpatentable over Nagral (US 6,260,044 B1; issued
July 10, 2001) in view of McIntosh (US 6,185,576 B1; issued Feb. 6, 2001).
Ans. 4-8.1

1 Throughout this opinion, we refer to (1) the Appeal Brief filed Nov. 16,
2009 (“App. Br.”); and (2) the Examiner’s Answer mailed June 1, 2010
(“Ans.”).
Appeal 2010-012114
Application 11/695,418

3
2. The Examiner rejected claims 2, 12, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Nagral, McIntosh, and Meier (US
2002/0083079 A1; published June 27, 2002). Ans. 9-10.
3. The Examiner rejected claims 3-52, 11, 14, 15, 17-20, and 26 under
35 U.S.C. § 103(a) as unpatentable over Nagral, McIntosh, and Antoshenkov
(US 5,379,422; issued Jan. 3, 1995). Ans. 10-16.
4. The Examiner rejected claims 21-25 under 35 U.S.C. § 103(a) as
unpatentable over Nagral, McIntosh, and Mendelevitch (US 2003/0130993
A1; published July 10, 2003). Ans. 16-18.

THE OBVIOUSNESS REJECTION OVER NAGRAL AND MCINTOSH
The Examiner finds that Nagral discloses every recited element of
representative claim 1 except for (1) an electronically readable organization
chart and organizational chart information including information identifying
individuals on said organization chart; (2) a control that maps to said
electronically readable organization chart and said organizational chart
information, each said requested access to said each document of said
accessible documents; and (3) a report containing usage summary chart
history based on historical tracking of actual usage and treatment of each
document by individuals and groups on said organization chart. Ans. 4. The
Examiner cites McIntosh as teaching these features in concluding that the
claim would have been obvious. Ans. 4-5.

2 While claim 5 was rejected based on Nagral and McIntosh, claim 4, from
which claim 5 depends, was rejected based on Nagral, McIntosh, and
Antoshenkov. We however find such error harmless and include claim 5
with the appropriate rejection.
Appeal 2010-012114
Application 11/695,418

4
Appellants argue that (1) McIntosh’s “Uniform Subject Classification
System” is not equivalent to the claimed “electronically readable
organization chart”; (2) McIntosh does not teach or suggest that a “requested
access” is mapped based on that classification system; and (3) McIntosh
does not teach or suggest a “document usage summary chart history”
because McIntosh does not track document usage. App. Br. 11-15.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Nagral and McIntosh collectively would have taught or suggested:
(1) an “electronically readable organization chart”;
(2) a “controller that: . . . maps to said electronically readable
organization chart and said organizational chart information, each said
requested access to said each document of said accessible documents”; and
(3) a “display device that displays a document usage summary chart
history based on historical tracking of actual usage and treatment of each
document by individuals and groups on said organization chart”?

ANALYSIS
Although the term “electronically readable organization chart” is not
defined in the Specification, Appellants describe examples of an
organization chart in “electronically readable form,” as an “LDAP directory,
Exchange server mailing lists, etc.” Spec. ¶ 0024. “One important
requirement is that the requestor’s information including ID found in the
access log must be directly mapable to the individual’s node or position on
the electronic organization chart.” Id. As the Examiner points out, albeit
Appeal 2010-012114
Application 11/695,418

5
with respect to a different claim element, McIntosh’s database includes
several tables through which a requestor’s information, including ID, is
associated with a position in the organization. Ans. 4-5, 19.
Specifically, each user stored in the User table is identified by a
unique ID in the “User Identification .userid” field and is associated with an
organization in the “Organization identification” field. Ans. 5; McIntosh,
Fig. 13G. The value in the Organization identification field uniquely
identifies an organization in the Organization table. Ans. 5; McIntosh, Fig.
13B. Each organization stored in the Organization table is also associated
with a Parent Organization (“Parent Org. Id., Org. Id.”). Ans. 5; McIntosh,
Fig. 13B. As a result, each user’s information, including ID, is associated
with a position in the organization. We are therefore unpersuaded of error in
the Examiner’s reliance on McIntosh’s database in connection with the
electronically readable organization chart, for McIntosh discloses that the
each user is associated with a position in the organization.
Nor are we persuaded of error in the Examiner’s reliance on
McIntosh’s database for teaching “a controller that: . . . maps to said
electronically readable organization chart and said organizational chart
information, each said requested access to said each document of said
accessible documents.” While it is not entirely clear how this aspect of
McIntosh would be combined with the service layer of Nagral, which the
Examiner relies upon to teach the other aspect of the controller (Ans. 4),
Appellants do not argue that the two references cannot be combined.
Appellants argue instead that McIntosh does not teach or suggest mapping a
requested access “based on” (1) the organization classification of McIntosh;
Appeal 2010-012114
Application 11/695,418

6
(2) the classification of the document retrieved; or (3) user access requests
for classified documents. App. Br. 13-14.
However, Appellants’ arguments are not commensurate with the
claim language. Claim 1 requires only that the requested access be mapped
to the electronically readable organization chart; the mapping need not be
“based on” the electronically readable organization chart. The question
remains whether the Examiner erred in finding that McIntosh “maps” a
“requested access” to the organization chart. The term “maps” is not defined
in the Specification. However, Figure 4 is “a flow chart of the document
usage mapping aspect” of the invention and provides us an understanding of
the claim terminology. Spec. ¶ 0011. At step 56, the system performs
“MAP DOC. CODE TO O-CHART AND NODE.” Fig. 4. This step is
described in more detail:
As shown at 50-54, upon receiving and verifying the requestor
information as above, the system at 56 locates the organization
chart (O-chart) and maps the request transaction to the
document code (DOC. Code) and to the particular position or
(Node) on the O-chart where the requestor is located. The
position and title of the Node and person are recorded.
Spec. ¶ 0019 (emphasis added).
To satisfy this limitation in the Final Rejection, the Examiner relies
upon the “Last Changed By” field of the “Inventory” table in McIntosh’s
database. Ans. 5. As the Examiner points out, each document (i.e., entry in
the “Inventory” table) in McIntosh’s database includes a “Last Changed By”
field through which the last change to the document is associated with a
user. Ans. 5; McIntosh, Fig. 13I. While this field relates to a “change”
rather than an “access,” we find nothing in the Specification to preclude a
change from being the claimed “access.” Furthermore, as we explained
Appeal 2010-012114
Application 11/695,418

7
above, the user is associated with a position in the organization through the
User and Organization tables. Ans. 4-5. Because the position of the user
who last changed the document is recorded, albeit indirectly, with each
document, we are not persuaded of error in the Examiner’s finding that the
“Last Changed By” field of McIntosh “maps” a document access (i.e.,
change) to a user’s position in an organization.
In the Response to Arguments, the Examiner alternatively relies
instead upon McIntosh’s “Inventory Request” (Ans. 19-20). McIntosh’s
“Inventory Request” is electronic, and can arguably be a request to retrieve a
document. McIntosh, col. 41, ll. 15-16; see also McIntosh, col. 22, ll. 54-58.
That is, the request for an inventory item involves accessing a database and
files within a database to formulate the request and thus can arguably
involve requested access to a “document” that relates to the inventory items.
Also, recorded with each Inventory Request is a “User identification” field.
McIntosh, col. 41, ll. 6-10. As we explained above, the user is associated
with a position in the organization through the User and Organization tables.
Ans. 4-5. Because the user’s position is recorded, albeit indirectly, with the
Inventory Request, we are not persuaded of error in the Examiner’s finding
that McIntosh’s “Inventory Request” maps a document “access” (e.g.,
retrieval) to a user’s position in an organization.
Turning now to the “display device” element of claim 1, however, we
find the Examiner’s reliance on McIntosh to be problematic. The Examiner
relies upon McIntosh’s teaching to “identify[] and track[] documents used
by an enterprise throughout their life cycles” and McIntosh’s Inventory
Request. Ans. 5 (citing col. 4, ll. 23-29). However, as Appellants point out,
the cited portion of McIntosh does not teach or suggest that such identifying
Appeal 2010-012114
Application 11/695,418

8
and tracking involves a “document usage summary chart history” or that an
Inventory Request is, or can be, used to generate a “document usage
summary chart history.” App. Br. 14-15. Column 4 of McIntosh merely
recites a generic teaching that the system can be used to “identify and track
documents used by an enterprise throughout their life cycle to provide an
efficient and easy to use mechanism to ensure that document retention
requirements are complied with while enabling the orderly destruction of
documents once their retention requirements have been satisfied.”
McIntosh, col. 4, ll. 23-29. Yet, McIntosh fails to discuss or teach
specifically that the such document usage would be a summary chart history
based on historical tracking of actual usage and treatment of each document
by individuals and groups on the organization chart as recited.
Similarly, columns 40 and 41 of McIntosh merely disclose the
attributes of the Inventory Request table in the database. As discussed
above, each Inventory Request identifies a document (“Inventory
Identification”), a user (“User Identification”), and an access (“Request Type
Code”). Even assuming, without deciding, that it would be possible to
analyze all of the Inventory Requests for a particular document to create a
document usage summary chart history based on actual usage and treatment
of that document, we find nothing in McIntosh that teaches or suggests
doing so.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claim 27, which recites commensurate
limitations; and (3) dependent claims 6-10, 13, 16, 28, and 30 for similar
reasons.

Appeal 2010-012114
Application 11/695,418

9
THE OTHER OBVIOUSNESS REJECTIONS
Since the Examiner has not shown that Meier, Antoshenkov, or
Mendelevitch cures the deficiencies noted above, we will not sustain the
obviousness rejections of claims 2-5, 11, 12, 14, 15, 17-26, and 29 (Ans. 9-
16) for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 1-30 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-30 is reversed.

REVERSED

babc