Ex Parte WorrallDownload PDFPatent Trial and Appeal BoardNov 30, 201612879301 (P.T.A.B. Nov. 30, 2016) 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. 12/879,301 09/10/2010 Eric Worrall GGSL-1-024.1 6703 122997 7590 11/30/2016 RF.R Plie.nts/T owe frraham Tones; EXAMINER 701 Fifth Avenue, RIES, LAURIE ANNE Suite 4800 Seattle, WA 98104 ART UNIT PAPER NUMBER 2176 MAIL DATE DELIVERY MODE 11/30/2016 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 Ex parte ERIC WORRALL Appeal 2015-004405 Application 12/879,3011 Technology Center 2100 Before KRISTEN L. DROESCH, LARRY J. HUME, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED INVENTION Appellant’s claimed invention relates to presenting documents by providing a single file comprising a plurality of documents, an identifier for each of the documents, and an indicator for each of the documents indicating in which section the document belongs and a locator to indicate a position of 1 According to Appellant, the real party in interest is Global Graphics Software Limited. App. Br. 2. Appeal 2015-004405 Application 12/879,301 that document in that section. See Abstract. Claim 1 is illustrative of the subject matter of the appeal and is reproduced below: 1. A method of presenting documents, the method comprising: providing a single file comprising a plurality of documents, a plurality of predefined sections, and metadata, the metadata comprising an identifier for each of the plurality of documents, an indicator for each of the plurality of documents to indicate in which one of the plurality of predefined sections that document belongs, and a locator for each of the plurality of documents to indicate a position of that document in the predefined section in which the document belongs, wherein each document has been created individually and added to the single file and wherein each of the predefined sections is configured and arranged for receiving two or more of the documents; displaying a graphical interface that appears as a notebook binder with a plurality of tabs, each tab corresponding to a one of the plurality of sections, wherein the graphical interface displays a binder application that includes functionality of a native application in which at least one of the documents was generated; and displaying a portion of at least one of the plurality of documents on a graphical page of the notebook binder of the graphical interface. REJECTIONS ON APPEAL (1) The Examiner rejected claims 1, 3—14, and 16—18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Mori et al. (US 2005/0246631 Al; published Nov. 3, 2005) (hereinafter “Mori”), Carr et al. (WO 92/08199; published May 14, 1992) (hereinafter “Carr”), and Koppolu et al. (US 7,114,128 B2; issued Sept. 26, 2006) (hereinafter “Koppolu”), collectively referred to hereinafter as “the combination.” (2) The Examiner rejected claims 2 and 15 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Mori, Carr, 2 Appeal 2015-004405 Application 12/879,301 Koppolu, and Fitzpatrick et al. (US 5,392,387; issued Feb. 21, 1995) (hereinafter “Fitzpatrick”). (3) The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Mori, Carr, Koppolu, and Hamilton, II et al. (US 2009/0083623 Al; published Mar. 26, 2009) (hereinafter “Hamilton”). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s contentions the Examiner erred. In reaching our decision, we consider all evidence presented and all arguments made by Appellant. We disagree with Appellant’s arguments, and we incorporate herein and adopt as our own the findings, conclusions, and reasons set forth by the Examiner in (1) the March 17, 2014 Final Office Action (“Final Act.” 2—23), (2) the June 12, 2014 Advisory Action (“Adv. Act.” 2), and (3) the January 2, 2015 Examiner’s Answer (“Ans.” 2—30). We highlight and address, however, specific findings and arguments below for emphasis. (1) Single file having metadata Appellant argues the combination of Mori, Carr, and Koppolu fails to teach or suggest a single file comprising a plurality of documents . . . [and] metadata comprising an identifier for each of the plurality of documents, an indicator for each of the plurality of documents to indicate in which one of the plurality of predefined sections that document belongs, and a locator for each of the plurality of documents to indicate a position of that document in the predefined section in which the document belongs, 3 Appeal 2015-004405 Application 12/879,301 as recited in claims 1,12, and 17. App. Br. 8, 11 (emphasis added); Reply Br. 2. Appellant argues one of ordinary skill in the art would have understood Mori’s electronic book file is a single document with its chapters being “merely portions of that document,” rather than each chapter being a separate document, as the Examiner finds. App. Br. 11 (citing Final Act. 3 4). Appellant also argues the Examiner incorrectly finds Mori’s chapters are both “the recited sections and the recited documents” rather than different entities as in claim 1 — further sections have two or more documents. See id. The Examiner finds, and we agree, the combination, and Mori in particular, teaches or suggests “a single file comprising a plurality of documents.” See Ans. 24, 26—27; Adv. Act. 2. The Examiner finds, and we agree, Mori teaches or suggests “combining output data generated by various application programs (plurality of documents) into one electronic document [(single file)] called ... a book file.” See Ans. 24 (citing Mori || 1, 11, 69); Adv. Act. 2; see also Ans. 26 (citing Spec. 121 (finding the Specification discloses an analogous procedure for creating a single binder file)). The Examiner also finds, and we agree, Mori teaches “importing files to a newly created ‘book file’ [and, thus, teaches] a single file with multiple documents.” Id. (citing Mori | 106). Furthermore, Appellant argues Mori “does not teach or suggest metadata that includes the recited . . . indicator[] and locator for each of the documents provided in the single file.” App. Br. 8 (citing Final Act. 3 4). As to the “indicator” metadata, Appellant argues the Examiner’s finding that Mori’s chapter information indicates pages for each chapter is incorrect 4 Appeal 2015-004405 Application 12/879,301 because “the number of pages in a chapter” does not indicate in which section that document belongs. See Reply Br. 3 (citing Ans. 24). As to the “locator” metadata, Appellant argues the Examiner’s finding that Mori’s page layout position teaches the locator is incorrect because the page layout position does not indicate the position of that document in the file, but rather a position on a displayed page. See Reply Br. 3^4 (citing Ans. 24). As to the metadata, the Examiner finds Mori teaches or suggests, inter alia, the disputed indicator and locator in accordance with the claim language. See Ans. 24; Adv. Act. 2. The Examiner finds Mori teaches or suggests the format for the book file “includes chapters (i.e. predefined sections), and information relating those chapters and pages (i.e. metadata).” Ans. 24 (citing Mori Fig. 3). The Examiner also finds Mori further teaches or suggests the metadata includes link information (i.e., document identifiers) and chapter information indicating pages for each chapter. Id. (citing Mori || 84—88). The Examiner also finds Mori “provides an example in which the page data link, for each chapter, stores link information of four logical pages (so that each section can receive two or more documents).” Id. (citing Mori | 88). We agree with the Examiner that the combination of Mori, Carr, and Koppolu teaches or suggests the disputed limitation. We find Mori teaches or suggests, inter alia, indicator metadata for each of the plurality of documents (e.g., “each page output from an application program”) to indicate in which one of the plurality of predefined sections (i.e., chapters) that document belongs. See Mori Fig. 3 (teaching or suggesting the book file format, including, inter alia, linked, ordered lists of documents in chapters and pages in the chapters); 1 84 (teaching a book, chapter, page 5 Appeal 2015-004405 Application 12/879,301 format), | 85 (calling the book file a generalized document), | 86 (“The chapter information list 404 holds as a list a set of chapters which form a [book file].”), 1 87 (“The page information list 408 holds as a list a set of document pages which form each chapter.”). We also find Mori teaches or suggests locator metadata for each of the documents (e.g., “page output from an application program”) to indicate a position of that document in the chapter in which the document belongs. See, e.g., Mori Figs. 3 (showing, inter alia, sub-layer page information list links and page data links to page data list), 9 (showing an ordered display of chapters and pages); ^fl[ 84— 89, 105 (“The tree portion 901 [representing a book structure] displays chapters contained in the book and pages contained in each chapter so as to present a tree structure as shown in FIG. 3.. . . The display order reflects the book structure.”). Our above reasoning and findings also apply to arguments Appellant makes with respect to claims 8, 13, and 18. (2) Combining Mori, Carr, and Koppolu Appellant argues one of ordinary skill in the art would not combine Mori, Carr, and Koppolu’s teachings. App. Br. 10-12; Reply Br. 8. Specifically, Appellant argues: [T]here is no teaching or suggestion in any of the references to modify the electronic book file of Mori to have the features relied upon from Carr and Koppolu. Mori is directed to forming an electronic book file which can then be printed as the physical book using a bookbinding application. The arrangements of Carr and Koppolu are not directed to printing books like those of Mori. The arrangement of Carr and Koppolu are directed to collecting disparate documents of different types for display to a user on graphical user interface. App. Br. 12. 6 Appeal 2015-004405 Application 12/879,301 Appellant also argues the Examiner is merely ‘“picking and choosing’” elements of the cited references without sufficient justification and that “[t]he features of Carr and Koppolu that are relied upon to reject the claims are not suitable for the book printing process of Mori. . . [and] such modifications would change the principle of operation and functions of the book printing process of Mori.” App. Br. 12. Appellant also argues “[t]here is no motivation to modify Mori to use the multi-file applications of Carr and Koppolu” — in Mori only a single file is presented. App. Br. 11, 13; see also Reply Br. 8. Furthermore, Appellant argues the Examiner, in the Answer, “overgeneralize [s] the content of the cited references by identifying all of the references as directed toward ‘document processing.’” See Reply Br. 9. Appellant then argues “[s]uch a categorization is overbroad and fails to account for the very different and distinct purposes driving the applications and systems disclosed in Mori, Carr, and Koppolu.” See id. The Examiner finds the references are properly combined. See Ans. 25—26; Adv. Act. 2. The Examiner finds Mori, Carr, and Koppolu are each directed toward document processing, and “a person of ordinary skill in the art would know to manipulate files and directories or information on a single file in order to use the look and feel of Carr’s GUI to display data on Mori’s single book file.” Ans. 25; see also Final Act. 6 (citing Carr 4, 11. 20-25) (“ft would have been obvious to one of ordinary skill in the art to combine the teachings of Mori with Carr because (i) for the purpose of providing ‘notebook metaphor [that] presents a virtual object [in] which everyone is familiar with and case use: a book.’”); Adv. Act. 2 (citing Can- Abstract, Fig. 46; Koppolu col. 4,11. 20-25). 7 Appeal 2015-004405 Application 12/879,301 The Examiner further finds “Mori discloses a user interface for opening and editing the book file. Therefore, it would have been obvious to one of the ordinary skill... to incorporate the teachings of Carr and Koppolu to Mori’s teachings[, including] ... to open and display Mori’s book file in an interface that appears as a notebook binder with a plurality of’ section tabs. Ans. 25—26; Adv. Act. 2; see also Final Act. 6. We find the Examiner did not err in combining Mori, Carr, and Koppolu, and we adopt the Examiner’s findings as our own. We find the Examiner provides “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” — using the look and feel of a book, which is familiar to everyone. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); Final Act. 6. Furthermore, we are unpersuaded by Appellant’s arguments regarding the alleged lack of an explicit motivation in the references. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). We also are not persuaded that combining Mori, Carr, and Koppolu renders Mori’s electronic document processing system unsatisfactory for its intended purpose. See Mori H 11, 84—89, 105—106 (teaching displaying a graphical user interface in accordance with the structure of the book file); Figs. 3, 9 (teaching the user interface display in accordance with the book file’s structure). We also are unpersuaded by Appellant’s argument that the references serve different purposes. See In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”); cf. In re Linter, 458 F.2d 1013, 1016 8 Appeal 2015-004405 Application 12/879,301 (CCPA 1972) (finding it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious). (3) Identification of a source document Appellant argues the combination of Mori, Carr, and Koppolu fails to teach or suggest “providing, in the metadata of the single file, an identification of a source document for each of the plurality of documents,” as recited in claim 10. App. Br. 14. Specifically, Appellant argues Mori’s book file format link information (i.e., document identifier), upon which the Examiner relies, teaches a link to the data for a page within the single file, not a source document. Reply Br. 12 (citing Ans. 28 (citing Mori || 84—88; Fig- 3)). The Examiner finds, as above, Mori teaches combining output data generated by various application programs (i.e., plurality of documents) into one electronic book file. Ans. 28 (citing Mori H 1, 11, 69). The Examiner also finds, as above, Mori teaches or suggests a book file format that includes metadata for chapter and page information, including link information (document identifier) and chapter information that indicates pages for each chapter (indicator). See id. (citing Mori Fig. 3; 84—88). We find the combination, and Mori in particular, teaches or suggests the disputed limitation. We agree with the Examiner that the metadata associated with the book file (which comprises a plurality of documents) includes a document identifier. See Mori Fig. 3; Tflf 84—88. For example, we find the metadata includes document identifier information 401 (which includes document control information 402 and chapter list link information). Mori Fig. 3; | 84. Mori teaches this document identifier 9 Appeal 2015-004405 Application 12/879,301 information can include “the path name in the file system of a document file” — which is an identification of the source document under the broadest reasonable interpretation of the claim language. Mori 1 84. Accordingly, we sustain the Examiner’s rejection of claim 10. (4) Metadata for a date the document was created Appellant argues the combination, and Mori in particular, fails to teach or suggest “a date for each of the plurality of documents corresponding to a date on which the document was created, added to the single file, or updated within the single file,” as recited in claim 11. App. Br. 15. Specifically, Appellant argues Mori instead teaches “including within a file the date that the file was created. In particular, Mori discloses generating single or multi-page PDF files from the book file and providing a date for the creating of the PDF file.” Id. (citing Mori H 267—68). Appellant argues [t]he dates recited in claim 11, however, are . . . rather directed to the date that a particular document within the single file was created, added, or updated[,]. . . and is not generally the same date as when the single file was created.” Id. The Examiner finds, and we agree, “Mori teaches [or suggests] providing a date for each of the plurality of documents corresponding to a date on which the document was created, added to the single file, or updated within the single file.” Final Act. 18 (citing Mori Fig. 10; H 267—68) (emphasis omitted); see also Ans. 29. For example, Mori teaches for an import process to create the single book file having the documents to be imported scanned and named with the date they were created. See Mori 11267—68. Further, as above for claim 10, we find Mori teaches that the name of the file can be stored as metadata. Mori 1 84. Thus, Mori teaches, 10 Appeal 2015-004405 Application 12/879,301 or at least suggests, providing metadata of the single book file for each of the plurality of documents (imported pages) that corresponds to the date the imported pages were created (i.e., scanned) under the broadest reasonable interpretation of “created.” We also note that Mori would have suggested to one of ordinary skill that the filename of the scanned page also corresponds to the date that the pages (documents) were added to the single file because Mori teaches or suggests a unified importation process occurring at a similar, sequential time. See Mori || 261—69. We disagree with Appellant that Mori teaches an export process (i.e., generating single or multi-page PDF files from the book file) and dates for exported pages, when looking at the cites passages in context. See id. CONCLUSION Based on our findings above, we sustain the Examiner’s rejection of claims 1, 8, 10-13, 17, and 18. We also sustain the Examiner’s rejections of remaining claims 2—7, 9, 14—16, 19, and 20 on appeal based on our above reasoning, as well as to the extent that Appellant did not provide separate arguments for their patentability. DECISION We affirm the Examiner’s rejections of claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation