Ex Parte Cherkasov

Board of Patent Appeals and Interferences

May 15, 2012

11783911 (B.P.A.I. May. 15, 2012)

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.
11/783,911 04/13/2007 Aleksey G. Cherkasov MHK 155.006 9581
7590 05/15/2012
Lawrence Harbin
500 Ninth Street SE
Washington, DC 20003
EXAMINER
STORK, KYLE R
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
05/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALEKSEY G. CHERKASOV
____________________

Appeal 2010-0034411
Application 11/783,911
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is ImageRight, Inc. (App. Br. 1.)

Appeal 2010-003441
Application 11/783,911

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. (App. Br. 2.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system for uniformly rendering on
different computer platforms a standard format image of an annotated
document file. (Spec. ¶ [ [0010].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A computer-implemented method of uniformly rendering
electronic annotations of a document file across differing
computer platforms, said method comprising:

producing an annotation for a document file,

generating an image of the annotation in a standard
image format utilized by said computer platforms,

storing in a memory the document file and associated
image of said annotation, and

accessing the memory to obtain the document file and
associated annotation image in order to render an image
representation of the document file overlaid with said
annotation image.

Appeal 2010-003441
Application 11/783,911

3
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Gounares US Patent App. Pub. No.: 2003/0217336 A1 Nov. 20, 2003

Rejection on Appeal
The Examiner rejects claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Gounares.
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the principal Brief, pages 4-7.
Representative Claim 1
Dispositive Issue : Has Appellant shown that the Examiner erred in
finding that Gounares’ disclosure describes rendering an electronic
annotation of a document file across different computer platforms, as recited
claim 1.

Appellant argues that the Examiner erred in finding that Gounares
anticipates claim 1 because the cited reference does not describe the disputed
limitations emphasized above. According to Appellant, Gounares discloses
transferring an image between applications running in parallel on a computer
in a single computer platform, whereas the claim requires such transfer of
the annotated document across computers running on different platforms.
(App. Br. 4-6.) In response, the Examiner finds that Gounares’ disclosure
Appeal 2010-003441
Application 11/783,911

4
of annotating in electronic ink a document rendered within a networked
environment describes the disputed limitations. (Ans. 6-7.)
On the record before us, we agree with the Examiner’s findings and
ultimate determination of anticipation. In particular, Gounares discloses that
the computer onto which the annotated document is rendered can be part of
enterprise-wide computer networks such as the Internet thereby rendering
the electronic document on various browsers. (¶¶ [ 0019-0021].) We
therefore find that Gounares’ disclosure of rending the annotated document
on various Internet browsers adequately describes that the document is
rendered on different browsers. It follows that Appellant has not shown
error in the Examiner’s rejection of claim 1.
Claims 2-20 not argued separately fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s rejection of claims 1-20 as set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh