Ex Parte Marsh

Patent Trial and Appeal Board

Mar 24, 2016

12151706 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/151,706 05/08/2008
23589 7590 03/28/2016
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
FIRST NAMED INVENTOR
Robert E. Marsh
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.
43247 2291
EXAMINER
HOFFLER, RAHEEM
ART UNIT PAPER NUMBER
2155
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
patents@hoveywilliams.com
amalik@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. MARSH
Appeal2014-004461
Application 12/151, 7 06
Technology Center 2100
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-8, 10-14, and 16-22. Claims 2, 9, and 15
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal2014-004461
Application 12/151, 7 06
STATEMENT OF THE CASE
Appellant's invention is directed to a method and computer-readable
media for creating verified business transaction documents. (Spec. 2).
Claims 1 and 8, reproduced below, are representative of the claimed subject
matter:
1. A method for creating a business transaction document with a
verification code, the method comprising:
receiving authentication requests from one or more users to
access a database for storing electronic document versions;
authenticating one or more users to control access to the
database;
receiving a plurality of versions of an electronic document from
a plurality of authenticated users for storage in the database;
associating a version identifier with each electronic document
version received into the database;
storing the electronic document versions and the associated
version identifiers in the database;
receiving a selection from an authenticated user to select one
version from the plurality of versions of the electronic document for
finalization;
creating a non-alterable final document equivalent to the
selected document version with a verification code added to the
selected document version; and
storing the non-alterable final document in the database.
8. One or more physical computer-readable media having
computer-executable instructions embodied thereon for performing a
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method of creating a business transaction document with a
verification code, the method comprising:
receiving authentication requests from one or more users to
access a database for storing electronic document versions;
authenticating one or more users to control access to the
database;
receiving a plurality of versions of an electronic document into
the database from a plurality of authenticated users for storage in a
database;
associating a version identifier with each electronic document
version received into the database;
storing the electronic document versions and the associated
version identifiers in the database;
receiving a selection from an authenticated user to select one
version from the plurality of versions of the electronic document for
finalization;
adding verification code to the selected document version
wherein the verification code appears on a printed copy of the
document;
creating a non-alterable final document equivalent to the
selected document version with a verification code added to the
selected document version;
storing the non-alterable final document in the database; and
preventing receipt of additional document versions after the
non-alterable final document has been stored in the database.
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Application 12/151, 7 06
REJECTIONS
Claims 1, 3-8, 10-14, and 16-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Friesenhahn et al.
(US 2007 /0260648 Al; published Nov. 8, 2007) and Dias et al. (US 2008/
0005667 Al; published Jan. 3, 2008).
ANALYSIS
After consideration of each of Appellant's arguments, we agree with
the Examiner. We refer to and adopt the Examiner's findings and
conclusions as set forth in the Examiner's Answer and in the action from
which this appeal was taken. (Ans. 4; Final Act. 2-13). Our discussions
here will be limited to the following points of emphasis.
Issue 1: Did the Examiner err in finding the combination of
Friesenhahn and Dias teaches or suggests "receiving a plurality of versions
of an electronic document from a plurality of authenticated users for storage
in the database," as recited in independent claims 1 and 8, and
commensurately recited in independent claim 18?
Appellant contends Friesenhahn does not teach receiving a plurality of
versions of a document from a plurality of authenticated users because
Friesenhahn teaches that only the author (rather than a reviewer or the
general public) of a document can modify, edit, and submit the document.
(App. Br. 16-18; Reply Br. 5). According to Appellants, Friesenhahn only
allows a plurality of users to view the drafts of the documents, not to modify
and create multiple versions of the document. (App. Br. 17; Reply Br. 5).
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Application 12/151, 7 06
Moreover, Appellant contends Friesenhahn designates only one author.
(Reply Br. 5).
We are not persuaded by Appellant's arguments. Friesenhahn
describes storage of rnultlple versions of documents. (Friesenhahn ~ii 53,
57, 58). Friesenhahn teaches restricting access to the different versions of
documents through the use of permissions based on the document version
and the user's specified audience, such as author, reviewer and/or the
general public. (Friesenhahn i-fi-147, 51, 53). Friesenhahn further teaches
that certain document versions may be accessed by multiple audiences.
(Friesenhahn i1 51 ). We agree with the Examiner that such disclosures teach,
or at least suggest, the disputed limitation. (See Final Act. 3, citing
Friesenhahn i-fi-153, 54, 57, 58; Final Act. 12, citing Friesenhahn i-fi-147, 51).
Moreover, we are not persuaded by Appellant's argument that
Friesenhahn teaches away from Appellant's invention because paragraph 40
of Freisenhahn states "[i]n other circumstances, a wider audience may be
able to view the draft, such as the author's supervisors, while only the author
may be able to make changes to the draft" (App. Br. 16, citing Friesenhahn
i140; Reply Br. 6, 7). Friesenhahn's disclosure in paragraph 40 does not rise
to the level of teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (teaching away requires a reference to criticize, discredit, or
otherwise discourage the claimed solution). Moreover, we are not persuaded
Friesenhahn's documents and versions are limited to a single author; rather,
we agree with the Examiner that Friesenhahn at least suggests a reviewer
may also have the ability to make corrections or alterations to the document.
(See Ans. 4; Final Act. 12, citing Friesenhahn i-fi-147, 51). See KSR int 'l C'o.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (The obviousness "analysis need
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Application 12/151, 7 06
not seek out precise teachings directed to the specific matter of the
challenged claim, for a comi can take account of the inferences and creative
steps that a person of ordinary skill in the art would ernploy.~').
Accordingly, we are not persuaded the Examiner erred in finding
Friesenhahn teaches or suggests the disputed limitation.
Issue 2: Did the Examiner err in finding the combination of
Friesenhahn and Dias teaches or suggests "associating a version identifier
with each electronic document version received into the database," as recited
in independent claims 1 and 8, and commensurately recited in independent
claim 18?
Appellant contends Dias does not disclose the disputed limitation
because Dias merely discloses the creation of a single electronic document
in accordance with user-specified parameters. (App. Br. 19; Reply Br. 7, 8).
We are not persuaded by Appellant's arguments. Appellant is
attacking Dias in isolation for lacking a teaching the Examiner relied on the
combination of Friesenhahn and Dias to show. It is well established that
nonobviousness cannot be established by attacking references individually
when the rejection is based on a combination of prior art references. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
Appellant's arguments do not take into account the Examiner's reliance on
Friesenhahn to receive and store multiple versions of electronic documents,
(See Final Act. 3, citing Friesenhahn i-fi-16, 53, 54, 57, 58, Fig. 4), and are
thus unavailing to persuade us of Examiner error.
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Accordingly, we are not persuaded the Examiner erred in finding the
combination of Friesenhahn and Dias teaches or suggests the disputed
limitation.
Issue 3: Did the Examiner err in finding the combination of
Friesenhahn and Dias teaches or suggests "receiving a selection from an
authenticated user to select one version from the plurality of versions of the
electronic document for finalization," as recited in independent claims 1 and
8, and commensurately recited in independent claim 18?
Appellant contends Friesenhahn does not disclose selecting one
version from a plurality of versions to be finalized because Friesenhahn
discloses a hierarchy whereby only a level 1 document can be turned into a
level 2 document, and only a level 2 document can be turned into a level 3
document (i.e., a finalized document). (App. Br. 18). Therefore, according
to Appellant, there is no selection from the plurality of versions because only
the most recent version or the level 2 version may be finalized. (App. Br.
19; Reply Br. 8).
We are not persuaded by Appellant's arguments. As discussed supra,
Friesenhahn describes storage of multiple versions of documents.
(Friesenhahn 41~ 53, 57, 58). As depicted in Figure 5, different versions of a
document may be assigned to different hierarchical levels. (See Friesenhahn
i-fi-153, 40-44). Appellant's argument is unpersuasive because it is
incommensurate with the scope of the claim language. Regardless of the
level at which a document version resides, the claim language only requires
that the user select one version from the plurality of versions. Moreover,
selecting the most recent version of the document to be finalized is
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Application 12/151, 7 06
consistent with Appellant's Specification which describes "this invention
allows the parties to designate a single version (typically the most recent
version) of the document as the 'final' version." (Spec. 3, lines 1, 2).
Moreover, paragraph 43 of Freisenhahn describes requiring supervisor
approval to transition from a minor version to a major version, which at least
suggests an authenticated user selecting one version from the plurality of
versions of the electronic document for finalization.
Accordingly, we are not persuaded the Examiner erred in finding the
Friesenhahn teaches or suggests the disputed limitation.
Issue 4: Did the Examiner err in finding the combination of
Friesenhahn and Dias teaches or suggests "preventing receipt of additional
document versions after the non-alterable final document has been stored in
the database," as recited in independent claim 8 and dependent claim 17?
The Examiner relies on paragraph 28 of Dias to teach or suggest the
disputed limitation, which states " [the finalized document] is much more
difficult to modify further (e.g., further modifications are substantially
prevented)." (Final Act. 6). The Examiner finds "[by] preventing
modification of the finalized document, no other versions of the final draft of
a document can be saved, which would prevent a varying version from being
created." (Advisory Act.).
Appellant contends Dias does not disclose the disputed limitation
because Dias discloses preventing modifications of the finalized document
rather than preventing "adding additional documents (e.g., different versions
of the document saved under different file names) to a database or folder."
(App. Br. 20, citing Dias i-f 28). Specifically, Appellant argues "while saving
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Application 12/151, 7 06
a document as a PDF may prevent modifications or alterations to that
specific PDF file, it does not prevent a varying version of the document from
being created and saved as a separate file in the database." (App. Br. 21 ).
Thus, according to Appellant, "preventing modifications to one document
in the database does not inherently prevent receipt of additional document
versions by the database." (Id.)
The claim language requires "preventing receipt of additional
document versions after the non-alterable final document has been stored in
the database." However, the claim language does not require preventing
receipt of additional document versions relating only to the non-alterable
final document. Rather, the language as written requires preventing receipt
of additional document versions of any electronic document after the non-
alterable final document has been stored in the database. "Construing claims
broadly during prosecution is not unfair to the applicant ... because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage." See In re American Academy of Science Tech Center, 3 67
F.3d 1359, 1364 (Fed. Cir. 2004). By stating "no other versions of the final
draft of a document can be saved, which would prevent a varying version
from being created" the Examiner's interpretation of the limitation
incorrectly limits the term to receipt of additional document versions of the
non-alterable final document.
Even so, we disagree with the Examiner's findings. The citations to
Dias relied on by the Examiner describe that modifications to the final
document are substantially prevented. We agree with Appellant that
preventing modifications to one document does not prevent receipt of
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Application 12/151, 7 06
additional document versions, whether of the non-alterable final document
or any other electronic document.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of independent claim 8 and dependent claim 1 7. For the same
reason, we do not sustain the Examiner's 35 U.S.C. § 103(a) rejection of
dependent claims 10-14, and 19, which include a similar limitation.
Issue 5: Did the Examiner err in finding the combination of
Friesenhahn and Dias teaches or suggests "a code segment for receiving a
second alterable electronic document which is an edited version of the first
alterable electronic document as edited by the second one of the
authenticated users," as recited in independent claim 18?
Appellant presents similar arguments as with respect to Issue 1,
discussed supra. Specifically, Appellant argues that in Friesenhahn "the
author provides and/or edits the various versions, while other users merely
view the versions and/or approve them (as in the case of a supervisor)."
(App. Br. 22). For the same reasons as set forth above with respect to Issue
1, we are not persuaded by Appellant's arguments.
Accordingly, we are not persuaded the Examiner erred in finding the
Friesenhahn teaches or suggests the disputed limitation.
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Application 12/151, 7 06
DECISION
For the above reasons, we affirm the Examiner's 35 U.S.C. § 103(a)
rejection of claims 1, 3-7, 16, 18, and 20-22.
We reverse the Examiner's 35 U.S.C. § 103(a) rejection of claims 8,
10-14, 17, and 19.
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-IN-PART
lv
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