Ex Parte Herbach et al

Patent Trial and Appeal Board

Jul 2, 2013

10699520 (P.T.A.B. Jul. 2, 2013)

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.
10/699,520 10/31/2003 Jonathan D. Herbach AD01.P571 4224
111003 7590 07/02/2013
Adobe / Finch & Maloney PLLC
50 Phillippe Cote Street
Manchester, NH 03101
EXAMINER
LE, CHAU D
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
07/02/2013 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 JONATHAN D. HERBACH, JAMES DONAHUE,
and WILLIAM M. SHAPIRO
____________________

Appeal 2011-000027
Application 10/699,520
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, MIRIAM L. QUINN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
2, 3, 6–10, 12–18, 20, 22, 24–33, 35, 37–41, and 47–56. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claims
The invention relates to distributed document version control
(Spec. ¶1). Claims 2 and 16 are illustrative and are reproduced below with
the disputed limitations emphasized:
2. A method comprising:
receiving a request from a client, at a server comprising a
computer system including a hardware processor, to take an
action with respect to a distributed electronic document retained
locally at the client;
identifying, at the server and in response to the request,
information associated with the distributed electronic
document, the associated information comprising user-
dependent association information indicating a second
electronic document different from the distributed electronic
document; and
imparting information concerning the second electronic
document to force the action to be taken with respect to the
second electronic document;
wherein imparting the second document information
comprises relating the second document information from the
server to the client, the second electronic document indicated
by the user-dependent association information being
dependent on an identified user at the client.

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16. A method comprising:
opening, at a client comprising a computer including a
hardware processor, a locally retained distributed document;
contacting a document control server identified from the
distributed document; and
forcing use, at the client, of a second document in place
of the distributed document, with respect to at least one
document action, based on information received from the
document control server;
wherein the second document comprises a later version
of the distributed document, and forcing use comprises
transparently closing the distributed document and opening
the second document.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bierbrauer
McGee
Pitzel
US 2002/0078081 A1
US 6,694,434 B1
US 7,062,765 B1
Jun. 20, 2002
Feb. 17, 2004
Jun. 13, 2006

Rejections
The Examiner made the following rejections:
Claims 2, 3, 6–8, 12–15, 24–27, 30, 39–41, 47–53, and 56 stand
rejected under 35 U.S.C § 103(a) as unpatentable over McGee and Pitzel
(Ans. 3–14).1
Claims 16–18, 20, 22, 31–33, 35, 37, and 38 stand rejected under 35
U.S.C § 103(a) as unpatentable over McGee (Ans. 14–16).

1 The summary statement in the Answer (Ans. 3) erroneously includes
claims 16–18, 20, 22, 31–33, 35, and 37 as rejected on this basis. This is
harmless error.
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Claims 9, 10, 28, 29, 54, and 55 stand rejected under 35 U.S.C. §
103(a) as unpatentable over McGee, Pitzel, and Bierbrauer (Ans. 16–17).

ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief and
Reply Brief, and have reviewed the Examiner’s response to Appellants’
arguments.

Claims 2, 3, 6–8, 12–15, 24–27, 30, 39–41, 47–53, and 56
Appellants treat claim 2 as representative of this group of claims
(App. Br. 7–9). 37 C.F.R. § 41.37(c)(1)(vii). Their contentions (App. Br. 7–
9; Rep. Br. 1–3) present us with the issue of whether the Examiner erred in
finding Pitzel discloses “the second electronic document indicated by the
user-dependent association information being dependent on an identified
user at the client,” as recited in claim 2.
Appellants contend that “Pitzel does not draw a distinction between
the client computer and the ‘user,’” and argue certain examples in which,
they assert, “the ‘user identification number’ in Pitzel corresponds to the
client ‘user’ computer, not an identified user at the client computer” (App.
Br. 9). While Pitzel discloses that “[t]he user identification field 320
contains a unique identifier that uniquely identifies the client computer”
(Pitzel, col. 6, ll. 66–67, emphasis added), it also states that the “user
identification number . . . is associated with the user” (id., col. 9, ll. 4–5). In
addition, claim 40 of Pitzel recites that “the client conditions include a user
identification number that is associated with the user” (emphasis added),
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thereby distinguishing from the “client computing device” recited in claim
39, from which it depends.
We are therefore not persuaded that the Examiner has erred and
accordingly sustain the rejections of claims 2, 3, 6–8, 12–15, 24–27, 30, 39–
41, 47–53, and 56 under 35 U.S.C. § 103(a).

Claims 8, 48, and 53
Appellants’ contentions (App. Br. 9–10; Rep. Br. 3) present us with
the issue of whether the Examiner erred in finding that McGee discloses
“wherein the document-permissions information specifies access
permissions at a level of granularity smaller than the distributed electronic
document within the distributed document,” as recited in each of claims 8,
48, and 53.
The Examiner relies on McGee’s disclosure of calling applications
that are only allowed to execute at certain times of the day and/or on certain
devices, noting that such restrictions are within the application itself and at a
smaller granularity (Ans. 19). We disagree with Appellants’ assertion that
“[t]he plain meaning of this [limitation] is that the document-permissions
information specifies access permissions to sub-portions of the document
(e.g., controlling access to specific page(s), paragraph(s) and/or word(s) in
the document” (Rep. Br. 3). The disputed claim language is amenable to a
broader reasonable interpretation, and we are therefore unpersuaded that the
Examiner has erred.
We accordingly sustain the rejections of claims 8, 48, and 53 under 35
U.S.C. § 103(a).

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Claims 16–18, 20, 22, 31–33, 35, 37, and 38
The rejections of this set of claims rely on Official Notice that “in [a]
Windows application to perform an upgrade, the old version of the
application is closed, upgraded, then the new version is subsequently opened
automatically” (Ans. 15).
Appellants’ contentions (App. Br. 10–12; Rep. Br. 4–5) present us
with the issue of whether the Examiner erred in finding that this noticed fact
renders the limitation of “forcing use comprises transparently closing the
distributed document and opening the second document” obvious in
combination with the other limitations recited in independent claims 16 and
31 over McGee.
Appellants assert that “the word ‘transparently’ must be assigned
meaning, namely that the closing of the distributed document and the
opening the second document are done without the user being aware of this
forced use of the second document” (App. Br. 11). While Appellants note
that the Specification discloses at p. 39, ll. 17–23 that the forced use may
“potentially” occur without the knowledge of the user (Rep. Br. 4), this
disclosure is not clearly related to use of the word “transparently,” which is
amenable to a broader reasonable interpretation. We are therefore not
persuaded that the Examiner has erred.
We accordingly sustain the rejections of claims 16–18, 20, 22, 31–33,
35, 37, and 38 under 35 U.S.C. § 103(a).

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Claims 20 and 35
Appellants’ contention (App. Br. 12; Rep. Br. 5) presents us with the
issue of whether the Examiner erred in finding that McGee discloses
“transparently overwriting the distributed document with the second
document,” as recited in claims 20 and 35.
Appellants contend that the portions of McGee “say nothing about
overwriting” and that upgrading to a new version of a program does not
implicitly include “transparently” overwriting a distributed document (App.
Br. 12). We agree with the Examiner that “to one of ordinary skill in the art,
upgrading [includes] replacing the old version, and consequently, files are
overwritten when replaced” (Ans. 20). Appellants again argue for a narrow
interpretation of “transparently” (App. Br. 12) that we find is not
commensurate with the broadest reasonable interpretation of the term in
light of the specification. We are therefore not persuaded that the Examiner
has erred.
We accordingly sustain the rejections of claims 20 and 35 under 35
U.S.C. § 103(a).

Claims 9, 10, 28, 29, 54, and 55
Appellants’ contentions (App. Br. 12–13; Rep. Br. 6–7) present us
with the issue of whether the limitation “wherein the distributed electronic
document is a stub document identified as outdated when originally sent for
distribution,” as recited in claims 9, 28, and 54, defines a patentable
distinction.
The distinction argued by Appellants relies on the informational
content of the electronic document and does not functionally change the
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system used in the claimed method. As such, the disputed limitation recites
nonfunctional descriptive material that is not entitled to weight in the
patentability analysis. See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36)
(“wellness-related” data in databases and communicated on distributed
network did not functionally change either the data storage system or the
communication system used in the claimed method). “[N]onfunctional
descriptive material cannot lend patentability to an invention that would
otherwise have been [invalidated] by the prior art.” Ex parte Mathias, 84
USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959
(Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)).
See also Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI 2008)
(precedential) (discussing nonfunctional descriptive material).
We therefore disagree that the Examiner has erred, and accordingly
sustain the rejections of claims 9, 10, 28, 29, 54, and 55.

Claims 10, 29, and 55
Appellants’ contention (App. Br. 13–14; Rep. Br. 7–8) presents us
with the issue of whether the Examiner erred in finding Pitzel discloses
“wherein obtaining the second electronic document further comprises
generating at least a portion of the second electronic document based on the
identified user,” as recited in claims 10 and 29. Claim 55 recites a similar
limitation.
Appellants’ contention is similar to contentions made for claim 2. For
the reasons we express supra, we are not persuaded that the Examiner has
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erred, and accordingly sustain the rejections of claims 10, 29, and 55 under
35 U.S.C. §103(a).

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 2, 3, 6–10, 12–18, 20, 22, 24–33, 35, 37–41, and 47–56
under 35 U.S.C. § 103(a)

DECISION
The Examiner’s decision rejecting claims 2, 3, 6–10, 12–18, 20, 22,
24–33, 35, 37–41, and 47–56 is affirmed.
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

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