Ex Parte Arst et alDownload PDFPatent Trial and Appeal BoardSep 1, 201613087720 (P.T.A.B. Sep. 1, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/087,720 04/15/2011 Kevin M. Arst 32566 7590 09/06/2016 PA TENT LAW GROUP LLP PO Box 61839 Sunnyvale, CA 94088 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PGM-PlOl-lD 6856 EXAMINER ALMAN!, MOHSEN ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 09/06/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): sandy@patentlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN M. ARST, and PETER G. MIKHAIL Appeal2015-001893 Application 13/087,720 Technology Center 2100 Before THU A. DANG, ERIC S. FRAHM, and MONICA S. ULLAGADDI, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-13 and 15-25. Claim 14 was previously canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2015-001893 Application 13/087,720 A. INVENTION According to Appellants, the invention relates to "document management, and more specifically to a system using flags or markers to denote noteworthy portions within documents" (Spec. i-f 2). B. EXEMPLARY CLAIMS Claims 1 and 4 are exemplary: 1. A method of organizing material by topic for quick reference, the method comprising: displaying an electronic document to a user; accepting flagging information from the user for a plurality of flags, each flag denoting one or more points of interest within the electronic document, the flagging information for a flag individually comprising: a location of the flag in the electronic document; one or more identifying characteristics that uniquely identify the flag or a series of flags; and a topic of the electronic document at or near the specified location; embedding metadata of the flagging information into the electronic document; and creating a graphical representation of the one or more identifying characteristics that uniquely identify each flag or series of flags within the electronic document at or near the specified location, the flag being based upon the metadata, the graphical representation comprising a visual representation unique to the flag or the series of flags and visually distinct from other flags or series of flags. 4. The method of claim 3, wherein the list is organized by topics and sub topics of the electronic document at or near respective locations in the electronic document. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lopresti Gupta us 5,832,474 US 6,484,156 Bl 2 Nov. 3, 1998 Nov. 19, 2002 Appeal2015-001893 Application 13/087,720 Allam Zaher Kashi Dev Sareen US 2004/0139400 Al US 2005/0091027 Al US 2005/0289452 Al US 2007 /0156643 Al July 15, 2004 Apr. 28, 2005 Dec. 29, 2005 July 5, 2007 Claims 1-3, 5, 19, 24, and 25 stand rejected under 35 U.S.C. § 102( e) as anticipated by Dev Sareen. Claims 4, 6, and 20-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dev Sareen and Gupta. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Dev Sareen and Kashi. Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dev Sareen and Lopresti. Claims 11 and 15-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dev Sareen, Lopresti, and Gupta. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dev Sareen, Lopresti, Gupta, and i\~llam. Claims 1---6, 19-23, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zaher and Gupta. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Zaher, Gupta, and Kashi. Claims 8-11 and 15-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zaher, Gupta, and Lopresti. Claims 12, 13, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zaher, Gupta, Lopresti, and Allam. II. ISSUES The principal issues before us are whether the Examiner erred in finding that: 3 Appeal2015-001893 Application 13/087,720 1) Dev Sareen is prior art to the claimed invention, in view of Appellants' 131 Declaration; 2) The combination of Dev Sareen and Gupta would have taught or suggested creating a list of each unique flag type, "wherein the list is organized by topics and sub topics" (claim 4); and 3) The combination of Zaher and Gupta would have taught or suggested "creating a graphical representation" of "identifying characteristics that uniquely identify each flag or series of flags," wherein the graphical representation comprises "a visual representation unique to the flag or the series of flags and visually distinct from other flags or series of flags" (claim 1 ). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Gupta 1. Gupta discloses accessing annotations across multiple target media streams, wherein Figure 6 is reproduced below: 4 Appeal2015-001893 Application 13/087,720 Figure 6 shows a hierarchical annotation storage structure, wherein each leaf node in the first level 216 represents an annotation collection, each node in the second level 218 represents a group identifier, and the third level 220 includes a higher level group identifier 227 (col. 10, 11. 46-67). As an example, the higher level group identifier 227 represents a professor, each of group identifiers 221 and 222 represents a different class taught by that professor, and each node 223-226 represents an annotation collection for a particular lecture of the class 221-222 (col. 11, 11. 12-30). Zaher 2. Zaher discloses storing digital annotation, wherein an annotation class typically includes a unique digital annotation identification ("unique ID") and relationships expressing how anchors and content relate to one another (i-fi-f 31-32; Fig. lB). Digital annotation includes any form of digital metadata added to a document such as a digital "sticky note", text comment, a snippet, inking in the margin, a margin-bar, highlights over existing content, symbols, underlines, and the like (i-fi-f 26, 53). If the digital annotation was a highlight, the annotation content may include color and shape of the digital annotation (i-f 60), whereas for unlined annotation, the annotation content contains information as to what color the underline is and how thick it is drawn (i-f 67). IV. ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal2015-001893 Application 13/087,720 Appellants contend that "the probative weight of the declarations and exhibits together, in their entirety, show that Applicant conceived the claimed invention in the present application by December 28, 2005" and "diligently reduced to practice the claimed invention by March 13, 2006" (App. Br. 8). In particular, Appellants contend that there is "corroborating evidence that the electronic embodiment(s) were conceived prior to the January 6, 2006 filing date of the Dev Sareen reference" in the form of "a December 28, 2005 email from Mikhail to Arst" as set forth in the exhibits submitted (App. Br. 7). Although Appellants concede "some claim limitations are not supported by the exhibits," Appellants contend "they are either supported by the declarations or they are details that need no further elaboration to one of ordinary skill in the art" (App. Br. 8). Appellants also contend "Dev Sareen fails to teach the limitations of the pending claims," in particular dependent claim 4, wherein neither Dev Sareen nor Gupta "discloses a list of flags organized by topics and subtopics" (App. Br. 10). In particular, Appellants contend "[a] professor identifier 227 and a class group identifier 221, 222 are not a topic and a subtopic of an annotation to a lecture because they do not identify the subject matter of any particular material in the lecture being marked by the annotation" (App. Br. 13). Appellants also contend "one of ordinary skill in the art would not modify Dev Sareen with the hierarchical annotation storage structure of Gupta" because "Dev Sareen does not have the problem faced by Gupta" (App. Br. 18). As for the alternative rejection of the claims over Zaher and Gupta, while Appellants concede "Zaher discloses an annotation content may specify color and other characteristics of a digital annotation," Appellants 6 Appeal2015-001893 Application 13/087,720 contend Zaher does not disclose or suggest "different colors and characteristics are specified for individual digital annotations of the same type or the same color and characteristics are specified for all the digital annotations of the same type" (App. Br. 21 ). Appellants then contend "Gupta does not cure Zaher's deficiency" and that "one of ordinary skill in the art would not modify Zaher with the hierarchical annotation storage structure of Gupta because Zaher does not have the problem faced by Gupta" (id.). We disagree with Appellants' contentions regarding the Examiner's rejections of the claims. Based on the record before us, we find no error with the Examiner's conclusion that Dev Sareen is effective prior art, that the claims are anticipated by Dev Sareen and/or obvious over Dev Sareen and Gupta and/or other references, and in the alternative that the claims would have been obvious over the combined teachings of Zaher and Gupta (and other references). 131 Declaration Appellants submitted "Confidential Disclosure of Document Flagging System," July 16, 2005, by Kevin M. Arst detailing the present invention (Exhibit 2). However, as the Examiner points out, the Disclosure "was all about Post-it Style document Flagging" without any reference to electronic embodiments (id.; Final Act. 15). Accordingly, the Examiner rejected the claims over Dev Sareen, which has a filing date of January 5, 2006 (Final Act. 5), which is prior to the March 13, 2006 filing date of the provisional application of the present invention. Although Appellants submit revised declarations, stating that "the electronic embodiment(s) were discussed at the July 12, 205" (App. Br. 7), 7 Appeal2015-001893 Application 13/087,720 the Examiner finds and we agree "[n]o evidence has been provided to show that Applicants conceived the claimed invention by December 28, 2005 and diligently reduced to practice the claimed invention by March 13, 2006" (Ans. 10). As the Examiner points out, the December 28, 2005 email "only points to a vague idea of implementing an application electronically" (id.; Exhibit A). In particular, the email merely states "There are additional things I have thought of regarding the folding over of the tabs for copying and an electronic implementation," and although "there is an attached set of claims" with the email, the Examiner finds "Appellant[s] never submitted the attachment as evidence" (Ans. 4). Appellants' revised 131 Declarations on January 25, 2014 consist of vague and general statements in the broadest terms that the inventors met on July 12, 2005, wherein "Both the physical and electronic embodiments/implementations were discussed including the material related to aspects of electronic flagging that is reflected in [the provisional application filed on March 13, 2006]" (January 25, 2014 Declarations of Kevin Arst and Peter Mikhail). However, these statements amount essentially to mere pleading, unsupported by proof or showing of facts. In re Borkowski, 505 F.2d 713, 718 (CCPA 1974); In re Harry, 333 F.2d 920 (CCPA 1964). As Appellants concede, "some claim limitations are not supported by the exhibits" (App. Br. 8). We agree with the Examiner that: [T]he evidences submitted by Appellants are not demonstrative or a complete disclosure of processing an electronic document, embedding metadata of the flagging information into the electronic document, creating a graphical representation of the flag in the electronic document, organizing a list of flags in the 8 Appeal2015-001893 Application 13/087,720 electronic document by topics and sub topics, etc., as disclosed in Claims 1-13 and 15-25. (Ans. 10, emphasis omitted). Based on this record, we agree with the Examiner that Appellants fail to establish facts sufficient to show conception of the method of the claims prior to the effective date January 5, 2006 of the prior art to Dev Sareen. See 37 C.F.R. § 1.131(b). 35 U.S.C. § 102 over Dev Sareen Because Appellants are unable to swear behind the Dev Sareen reference, the Dev Sareen reference stands as prior art. Appellants then merely contend "Dev Sareen fails to teach the limitations of the pending claims" without providing any further argument (App. Br. 10). Thus, Appellants have failed to demonstrate error in the Examiner's rejection of 1- 3, 5, 19, 24, and 25 as anticipated by Dev Sareen. Accordingly, for the foregoing reasons, we summarily sustain the Examiner's 35 U.S.C. § 102(e) rejection of claims 1-3, 5, 19, 24, and 25 over Dev Sareen. 35 U.S.C. § 103 over Dev Sareen and Gupta As for claim 4, although Appellants contend, in Gupta, "[a] professor identifier 227 and a class group identifier 221, 222 are not a topic and a subtopic of an annotation to a lecture because they do not identify the subject matter of any particular material in the lecture being marked by the annotation" (App. Br. 13), such contention is not commensurate with the scope of the claims. In particular, claim 4 does not require a "topic" and a "subtopic" to "identify the subject matter of any particular material in the lecture being marked by the annotation" (id.). Instead, claim 4 merely requires that the "list" of each unique flag type "is organized by topics and 9 Appeal2015-001893 Application 13/087,720 sub topics of the electronic document at or near respective locations in the electronic document" (claim 4). Nevertheless, we find no error with the Examiner's reliance on Gupta for disclosing and suggesting organizing annotations by topics and subtopics (FF 1 ). In particular, we agree with the Examiner's finding "a professor identifier gives information about all documents annotated by the professor identifier," "the class group identifier gives information about particular annotated portion in the document identified by the professor identifier" while "a particular portion identifier gives information about a particular annotated portion with the particular annotated portion identified by class identifier which is within all documents annotated by the professor identifier" (Ans. 17-18). That is, as the Examiner finds, in Gupta, "a particular annotated lecture or subject matter can be identified in the heretical structure by category 'professor', subcategory 'class' and further subcategory the annotated lecture" wherein "by reference the group identifier 221, the annotation for each lecture corresponding to the class represented by identifier 221 can be accessed," "by referencing the group identifier 222, the annotations for each lecture corresponding to the class represented by identifier 222 can be accessed" while "by referencing group identifier 227, all annotations for all of the classes taught by the professor represented by group identifier 227 can be accessed" (Ans. 19, emphasis omitted). Furthermore, the test for obviousness is what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). That is, although Appellants contend "neither [Dev Sareen nor Gupta] discloses a list of flags 10 Appeal2015-001893 Application 13/087,720 organized by topics and subtopics" (App. Br. 10, emphasis added), the Examiner rejects the claims as being obvious over the combination of Dev Sareen and Gupta (Final Act. 7-8). We find no error with the Examiner's reliance on Dev Sareen for disclosing and suggesting "list of flags ... organized at or near respective locations in the electronic document" and Gupta for disclosing and suggesting "a list of annotations organized by topics and sub topics" (Final Act. 8). Although Appellants contend "one of ordinary skill in the art would not modify Dev Sareen with the hierarchical annotation storage structure of Gupta" (App. Br. 18), we agree with the Examiner that both Dev Sareen and Gupta are from the same field of endeavor of "annotating electronic documents and retrieving annotations and annotated material effectively" (Ans. 22). The Supreme Court guides that the conclusion of obviousness can be based on the background knowledge possessed by a person having ordinary skill in the art. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan is "[a] person of ordinary creativity, not an automaton." Id. at 421. We agree with the Examiner that it would have been well within the skill of one skilled in the art to combine Dev Sareen' s disclosure of a "list of flags ... organized at or near respective locations in the electronic document" with Gupta's disclosure and suggestion of organizing "a list of annotations ... by topics and sub topics" (Final Act. 8). That is, we agree Appellants' invention is simply a modification of familiar prior art teachings (as taught or suggested by the cited references) that would have realized a predictable result. See KSR, 550 U.S. at 421. 11 Appeal2015-001893 Application 13/087,720 On this record, we are unconvinced of Examiner error in the rejection of claim 4 and claim 6 depending therefrom and falling therewith (App. Br. 19) over Dev Sareen and Gupta. Appellants contend claim 11 (and similar claim 20) "recites similar limitations as claim 4" and thus do not provide substantive arguments separate from claim 4 (App. Br. 20). Accordingly, we also affirm the rejections of claim 20 over Dev Sareen and Gupta; of claim 11 over Dev Sareen, Lopresti, and Gupta; and of claims 12, 13, and 15-18 depending from claim 11 but not substantively argued separately therefrom (id.). Appellants do not provide arguments for claims 7-9, and 21-23, and thus, we also affirm the rejections of claims 21-23 over Dev Sareen and Gupta; of claim 7 over Dev Sareen and Kashi; and of claims 8 and 9 over Dev Sareen and Lopresti. 35 U.S.C. § 103 over Zahner and Gupta Although Appellants contend Zaher does not disclose or suggest "different colors and characteristics are specified for individual digital annotations of the same type or the same color and characteristics are specified for all the digital annotations of the same type" (App. Br. 21), such contention is also not commensurate with the scope of the claims. In particular, claim 1 does not require "different" colors/characteristics specified for annotations "of the same type" or "same" color/ characteristics specified for "all" digital annotations "of the same type" (id.). Instead, claim 1 merely requires "a visual representation unique to the flag or series of flags and visually distinct from other flags or series of flags" " (claim 1 ). We agree with the Examiner "Claim [ 1] simply requires, ... at least two flags are visually distinguishable in a document" (Ans. 25). 12 Appeal2015-001893 Application 13/087,720 We find no error with the Examiner's reliance on Zaher for disclosing and suggesting visual representation unique to an annotation that is distinct from other annotations (FF 2). In particular, we agree with the Examiner's finding Zaher discloses and suggests "digital annotations or flags such as margin bar, highlight, underline and bookmark [that] are distinguishable from each other" (Ans. 26). Although Appellants contend "one of ordinary skill in the art would not modify Zaher with the hierarchical annotation storage structure of Gupta" (App. Br. 21 ), we agree with the Examiner that both Zaher and Gupta are from the same field of endeavor, wherein "Zaher explicitly teaches annotating electronic documents by a user" while "Gupta explicitly teaches annotating educational electronic documents" (Ans. 27). We agree with the Examiner that it would have been well within the skill of one skilled in the art "include a title or a topic in the structure of annotation [as disclosed and suggested by Gupta] in Zaher" so that "users in Zaher are able to add comments to an annotation" wherein "organizing these comments as title or topic of the annotations would provide an alternative way to organize the annotated contents" (id.). That is, we agree Appellants' invention is simply a modification of familiar prior art teachings (as taught or suggested by the cited references) that would have realized a predictable result. See KSR, 550 U.S. at 421. On this record, we are unconvinced of Examiner error in the rejection of claim 1 and claims 2---6 depending therefrom and falling therewith (App. Br. 23) over Zaher and Gupta. Appellants contend claim 10 (and similar claim 19) "recites similar limitations as claim 1" and thus do not provide substantive arguments separate from claim 1 (App. Br. 24). Accordingly, 13 Appeal2015-001893 Application 13/087,720 we also affirm the rejections of claim 19 and claims 20-23 and 25 depending therefrom and falling therewith (App. Br. 25) over Zaher and Gupta; of claim 10 and claims 11 and 15-18 depending therefrom and falling therewith (App. Br. 24) over Zaher, Gupta and Lopresti; and of claims 12, 13, and 24 depending respectively from claims 10 and 19 over Zaher, Gupta, Lopresti and Allam (id.). Appellants do not provide arguments for claims 7- 9, accordingly, we also affirm the rejections of claim over Zaher, Gupta, and Kashi; and of claims 8 and 9 over Zaher, Gupta, and Lopresti. V. CONCLUSION AND DECISION We affirm the Examiner's rejections of 1-3, 5, 19, 24, and 25 stand rejected under 35 U.S.C. § 102(e), and of claims 1-13 and 15-25 under 35 U.S.C. § 103(a). 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 14 Copy with citationCopy as parenthetical citation