Ex Parte Ellwanger et al

Board of Patent Appeals and Interferences

Jun 24, 2009

10389275 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHELLE MARIE ELLWANGER, DAVID SCOTT HORTON,
ROBERT ALAN STIER, and GLEN DAVID WORDEKEMPER
__________

Appeal 2008-004805
Application 10/389,275
Technology Center 2100
__________

Decided:1 June 25, 2009
__________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-004805
Application 10/389,275

2
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-3, 5-13, 15-19, 21-26, 28-32, 34, and 35.
Claims 4, 14, 20, 27, 33, and 36 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention relates to methods and systems for monitoring
document-production processes (Spec. 1, ll. 7-9).
Independent claim 1 is illustrative:
1. A method for providing monitoring information for a document-
production process performed on behalf of a client organization to produce a
plurality of documents, the client organization having a plurality of
customers and each of the plurality of documents being produced for
delivery to one of the customers, the method comprising:

receiving a query requesting status information for production of an
identified one or more of the plurality of documents with a production-
monitoring computer;

retrieving status data from a queriable data store in accordance with
the query with the production-monitoring computer, wherein:

the queriable data store includes status data received
periodically for the plurality of documents from each of a plurality of
distinct sources;

each of the distinct sources is configured to provide information
related to one of a plurality of subprocesses of the document-production
process;

Appeal 2008-004805
Application 10/389,275

3
a first of the plurality of subprocesses comprises a document
printing or imprinting subprocess in which each of the plurality of
documents is printed or imprinted;

a second of the plurality of subprocesses comprises a delivery
preparation subprocess in which each of the plurality of documents is
assembled with other documentary information into a package suitable for
acceptance by a delivery service; and

a third of the plurality of subprocesses comprises a delivery
subprocess in which the package is delivered to the one of the customers, the
delivery subprocess being implemented by a service that provides tracking
information identifying a current location of the package; and

transmitting the retrieved status data from the production-monitoring
computer as a response to the query.

References
The Examiner relies upon the following references as evidence in
support of the rejections:
Schell US 6,684,213 Jan. 27, 2004
Holtz US 2004/0128265 Jul. 1, 2004
O’Neal US 6,639, 975 Oct. 28, 2003
Rejections
Claims 1, 2, 5, 9, 11, 12, 15, 19, 21, 24, 25, 28, 30, 31, and 34 are
rejected under 35 § U.S.C. 103(a) as being unpatentable over Schell and
Holtz.
Claims 3, 6-8, 10, 13, 16-18, 22, 23, 26, 29, 32, and 35 are rejected
under 35 § U.S.C. 103(a) as being unpatentable over Schell, Holtz and
O’Neal.
Appeal 2008-004805
Application 10/389,275

4
ISSUE #1
Appellants argue that Schell does not disclose “receiving a query
requesting status information of an identified one or more of the plurality of
documents with a production-monitoring computer” (App. Br. 7).
Did Appellants show that the Examiner erred in finding that Schell
teaches or suggests receiving a query requesting status information of an
identified one or more of a plurality of documents with a production-
monitoring computer?
ISSUE #2
Appellants argue that “no adequate reason has been identified why a
person of ordinary skill in the art would be prompted to combine the
teachings of [Schell and Holtz]” (App. Br. 9).
Did Appellants show that the Examiner erred in finding that it would
have been obvious to one of ordinary skill in the art to combine the
teachings of Schell and Holtz?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. The Specification teaches that “the term ‘document’ is intended
to be construed broadly as referring to any item that comprises textual
information” (¶ [0018]).
2. Schell teaches that “[t]he user selects an order on the web
server. The web server then gets the information from the database
Appeal 2008-004805
Application 10/389,275

5
which has collected the information from the Legacy systems. The
web server sends the information on the order back to the user on a
single screen, which presents the information in a user-friendly
interface that is easily managed, as shown in FIG. 11” (col. 10, ll. 63-
67; col. 11, ll. 1, 2; fig. 11).
3. Schell shows that the information on the order sent back to the
user on a single screen comprises textual information (fig. 11).
4. Schell teaches that “[w]hen a user logs on to the [web server in
Schell], he sees a screen with a list of work orders, such as that shown
in FIG. 10. FIG. 10 shows a list of work orders, with numerous
characteristics for each order such as escalate level 1002, order
number 1004, due date 1006, SO [Service Order] status 1008, TIRKS
[Trunk Integrated Record Keeping System] status 1010, service code
1012, group holding 1014, time to next escalation 1016, next ICD
[Intermediate Critical Date] 1018, interval 1020, and ready for ZFOC
[Firm Order Commitment condition] 1022” (col. 10, ll. 51-58; fig.
10).
PRINCIPLES OF LAW
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17,
18 (1966).
Appeal 2008-004805
Application 10/389,275

6
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
ANALYSIS
Issue 1
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1 alone with respect to issue #1. See 37
C.F.R. § 41.37(c)(1)(vii).
The Specification discloses that a “document” includes any item that
comprises textual information (FF 1). Because the service order information
of Schell comprises textual information (FF 3), we agree with the Examiner
that the service order information of Schell constitutes a “document.”
Schell also discloses that a server sends the textual service order
information (i.e., a “plurality of documents”) to a user in response to a user
query (FF 2, 3). The web server produces the service order information with
associated status information and, hence, monitors production of the service
order information (i.e., as a display to the user on a single screen (FF2) with
associated status information) as a production-monitoring computer (FF 4).
Appellants argue that “even if the customer service orders of Schell
are construed to be documents, Schell is not at all concerned with
monitoring the production of the service orders” (App. Br. 7; Reply Br. 2, 3)
and that “[a]t no time does Schell intimate in any way that the production of
the service order itself is being monitored” (App. Br. 7). However,
Appellants have not proffered evidence or arguments to show error in the
Appeal 2008-004805
Application 10/389,275

7
Examiner’s contention that “this limitation is not recited in [the] claims”
(Ans. 12). Without identification of evidence, this argument fails to show
error in the Examiner’s rejections.
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 103(a) rejections of claims
1, and of claims 2, 3, 5-13, 15-19, 21-26, 28-32, 34, and 35, which fall
therewith, with respect to this issue.

Issue 2
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1 alone with respect to issue #2. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellants have not shown that the Examiner erred in finding that it
would have been obvious to one of ordinary skill in the art to combine the
teachings of Schell and Holtz. While the Examiner finds that it would have
been obvious to one of ordinary skill in the art to combine Schell and Holtz
“to monitor the location of each package throughout various stages of the
article handling and delivery process” (Ans. 7), Appellants merely assert that
“no adequate reason has been identified why a person of ordinary skill in the
art would be prompted to combine the teachings of [Schell and Holtz]”
(App. Br. 9). We find Appellants’ argument unpersuasive because
Appellants have not provided evidence or arguments demonstrating why the
Appeal 2008-004805
Application 10/389,275

8
Examiner’s reasoning for combining Schell and Holtz is supposedly
inadequate.
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 103(a) rejections of claims
1, and of claims 2, 3, 5-13, 15-19, 21-26, 28-32, 34, and 35, which fall
therewith, with respect to this issue.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have failed to demonstrate that the Examiner erred in:
1. finding that Schell teaches or suggests receiving a query requesting
status information of an identified one or more of a plurality of documents
with a production-monitoring computer and
2. finding that it would have been obvious to one of ordinary skill in
the art to combine the teachings of Schell and Holtz.
DECISION
We affirm the Examiner’s decision rejecting claims 1-3, 5-13, 15-19,
21-26, 28-32, 34, and 35.

AFFIRMED

PEB

Appeal 2008-004805
Application 10/389,275

9

TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO CA 94111-3834