Ex Parte Lee

Patent Trial and Appeal Board

Apr 21, 2017

13614544 (P.T.A.B. Apr. 21, 2017)

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.
13/614,544 09/13/2012 Eugene M. Lee 113708.129_CON2 2496
23400 7590 04/25/2017
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
EXAMINER
CORRIELUS, JEAN M
RESTON, VA 20191 ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
mailbox@poszlaw.com
dposz@poszlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal 2016-006584
Application 13/614,544
Technology Center 2100
Before CARLA M. KRIVAK, JON M. JURGOVAN, and
AMBER L. HAGY, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006584
Application 13/614,544
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) from a final
rejection of claims 54—80. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.1
CLAIMED INVENTION
The claims are directed to editing a shared document including
document data and annotation data. (Spec. Abstract.) Claim 54, reproduced
below with argued limitation shown in italics, is illustrative of the claimed
subject matter:
54. A computer-implemented method of editing a shared
document, the method being executed on a computer and
comprising:
receiving, in a computer processor, a request for a version
for one of a shared document and annotation data, as a requested
version;
determining, in the computer processor, a version of an
other of the shared document and annotation data, as a
determined version corresponding to the requested version;
retrieving, in the computer processor, the requested
version and the determined version from a document data storage
as document data and from an annotation storage as annotation
data;
providing, in the computer, for display, a marked-up
document that has the annotation data embedded into the
document data at section-dependent, display-independent
locations of the shared document, the shared document having
plural sections each having a user-selectable length, the plural
sections including a section-dependent section into which the
annotation data is embedded;
1 Our Decision refers to the Specification (“Spec.”) filed Sept. 13, 2012, the
Final Office Action (“Final Act.”) mailed Mar. 18, 2015, the Appeal Brief
(“App. Br.”) filed Nov. 10, 2015, the Examiner’s Answer (“Ans.”) mailed
April 20, 2016, and the Reply Brief (“Reply Br.”) filed June 17, 2016.
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Application 13/614,544
inputting, in the computer in response to a user, edits to
the marked-up document, in association with the section-
dependent, display-independent location of the shared document;
extracting, in the computer processor, annotation data and
document data from the marked-up document, and determining
the section-dependent display-independent location of the
annotation data within the shared document as edited;
storing, in the computer processor, the extracted
annotation data that is unedited as a same version in the
annotation data storage and said document data with edits to the
document data as a next version in the document data storage
for later retrieval, wherein
the annotation data indicates the section-dependent,
display-independent location within said document data in the
document data storage into which the annotation data is applied,
and at least one version of the shared document to which the
annotation data is applied, and
the edits to the document data of one of the plural
sections of the shared document (i) cause subsequent sections of
the shared document to be positioned differently in the display
and (ii) the section-dependent, display-independent locations
indicated in the annotation data that is unedited still correctly
indicate locations of the annotation data of the subsequent
sections of the shared document, for which the subsequent
sections are positioned differently in the display.
REJECTIONS
Claims 54—80 were subject to a provisional non-statutory double
patenting rejection over US Application No. 13/614,544, filed Sept. 13,
2012. (Final Act. 4—5.) This rejection was withdrawn (Ans. 12—13) and is
thus not before us on appeal.
Claims 54—80 stand rejected under 35 U.S.C. § 103(a) based on
Rivette (US 6,877,137 Bl, issued April 5, 2005), Eintracht
(US 6,687,878 Bl, issued Feb. 3, 2004), and Moody (US 5,890,177, issued
Mar. 30, 1999). (Final Act. 6—13.)
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Appeal 2016-006584
Application 13/614,544
ANALYSIS
Appellant argues the cited combination of Rivette, Eintracht, and
Moody fails to disclose the limitation of claim 54 reciting “storing. . . the
extracted annotation data that is unedited as a same version in the
annotation data storage and said document data with edits to the document
data as a next version in the document data storage for later retrieval.'1'’
(App. Br. 12—13.) Specifically, Appellant argues
None of the cited references have a teaching that the unedited
annotation data should be stored as the same version in the
annotation data storage, whereas the edited document data is
stored as the next version.
We agree with Appellant’s argument.
In the Final Office Action, the Examiner relies on Eintracht (3:15—36,
7:55—65) to disclose this limitation of claim 54. (Final Act. 8.)
Furthermore, in the Answer, the Examiner relies on expanded teachings of
Eintracht (Abstract, 2:44—62, 3:30-36, 4:35—37) as well as Moody (Fig. 3,
5:50—66, 6:58—65, 7:12—20) to disclose this feature. The Examiner finds
Eintracht’s synchronization process transmits unedited annotations
generated by the user from the notes client to the notes server. (Ans. 14.)
We disagree with the Examiner’s finding.
Eintracht discloses “synchronization means for updating the notes
server with any notes events processed by the notes clients and for updating
the notes client with the results of synchronization updates previously
performed by other notes clients since the last synchronization event.”
(3:31—36.) Eintracht defines a “note event” as a “message related to a note
that did not exist at the time of the last synchronization with the Notes
Server, or a note that was modified or deleted since that time.” (6:13—15.)
There is no mention in this definition that a “note event” could be a message
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Appeal 2016-006584
Application 13/614,544
that a note was not modified. Eintracht also states “[t]he note buffer
contains only the notes that were changed since the time of the previous
synchronization event.” (16:3—4.) From these teachings, we conclude the
cited parts of Eintracht do not disclose the claimed feature because
Eintracht’s notes are not extracted and then stored as unedited notes under
the same version, as would be required for correspondence with the claimed
feature.
Further, we agree with Appellant’s argument that Moody fails to cure
Eintracht’s deficiency. (Reply Br. 5—7.) Moody mentions consolidation of
edited original paragraphs and edited copies of paragraphs of a document to
produce a final document. (Moody Fig. 3, 5:50-66, 6:58—65, 7:12—20).
Thus, as Appellant notes, Moody does not mention extracted annotations
that are stored unedited as the same version in the annotation data storage.
(Reply Br. 6.) Moreover, as Appellant correctly observes (Reply Br. 6—7),
the Examiner has not explained how Moody’s consolidated markup
document or final document can be read as both the document data of the
next version and annotation data of the same version, as required by the
claimed feature.
Appellant argues that similar limitations of independent claim 54 are
present in independent claims 63 and 72 so that these claims distinguish over
the cited combination of references for the same reasons. (App. Br. 21.) We
agree with Appellant’s argument and do not sustain the rejection of
independent claims 54, 63, or 72, or the claims dependent therefrom.
As our Decision on this basis is dispositive of all issues in this case,
we do not reach Appellant’s remaining arguments.
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DECISION
We reverse the rejection of claims 54—80 under 35 U.S.C. § 103(a).
REVERSED
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