Ex Parte Oakeson et al

Board of Patent Appeals and Interferences

Apr 20, 2010

10405835 (B.P.A.I. Apr. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH L. OAKESON,
ROGER SCOTT TWEDE, and
SHELL STERLING SIMPSON
____________________

Appeal 2009-004713
Application 10/405,835
Technology Center 2100
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Decided: April 20, 2010
____________________

Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a non-final
rejection of claims 1-43. We have jurisdiction under 35 U.S.C. § 6(b)
(2008).
We AFFIRM.
Introduction
According to Appellants, the invention is a system and method for
establishing and managing a workflow for pre-production processing of an
electronic document (Spec. 1, [0001]). More specifically, the invention
relates to (1) creating a composition that includes a series of directions for
retrieving elements from data stores and (2) assembling those elements into
a document (See Spec., Abstract). Further, one of the directions, of the
composition, is edited by adding data that identifies an imaging service that
is responsible for manipulating a particular element when the composition is
processed (See Spec., Abstract).

STATEMENT OF THE CASE
Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A method for pre-production processing of an
electronic document, comprising:

creating a composition comprising a series of directions
for retrieving one or more elements from one or more data
stores and assembling those elements into a document; and

adding a direction identifying an imaging service
responsible for manipulating a particular element when the
composition is processed.

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27. In a computer network, a system for pre-
production processing of an electronic document, the system
comprising:

an imaging repository operable to manage one or more
elements and a composition comprising a series of directions
for retrieving one or more of the elements and assembling those
elements into a document;

a composition editor operable to communicate with the
imaging repository to create and or edit a composition;

a manipulator operable to communicate with the imaging
repository to edit a composition adding directions that the
manipulator is responsible for manipulating a specified element
when the composition is processed.

Prior Art
Tanaka 5,671,429 Sep. 23, 1997
Tonkin 6,134,568 Oct. 17, 2000

Rejections
Claims 1-43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tonkin and Tanaka.

GROUPING OF CLAIMS
(1) Appellants argue claims 1-26 and 41-43 as a group on the basis of
claim 1 (App. Br. 9-18). We select independent claim 1 as the
representative claim. We therefore treat claims 2-26 and 41-43 as standing
or falling with representative claim 1.
(2) Appellants argue claims 27-40 as a group on the basis of claim 27
(id. at 13-17). We select independent claim 27 as the representative claim.
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We therefore treat claims 28-40 as standing or falling with representative
claim 27.
We accept Appellants’ grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE 1
35 U.S.C. § 103(a): claims 1-26 and 41-43
With regard to independent claims 1, 6, 10, 14, 19, 23 and 41,
Appellants contend their invention is not obvious over Tonkin and Tanaka
because Tanaka does not disclose recited limitations (see App. Br. 10-13).
Issue 1: Under §103, are the limitations argued by Appellants
regarding claims 1-26 directed to nonfunctional descriptive material?

We note that functional descriptive material consists of data structures
or computer programs which impart functionality when employed as a
computer component. In contrast, nonfunctional descriptive material refers
to data content that does not exhibit a functional interrelationship with the
substrate and does not affect the way the computing processes are
performed. See MPEP § 2106.01 (“‘Nonfunctional descriptive material’
includes but is not limited to music, literary works, and a compilation or
mere arrangement of data.”). In a precedential decision, an expanded panel
recently held that elements that do not affect the claimed process are
nonfunctional material and are merely descriptive. See Ex parte Nehls, 88
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USPQ2d 1883, 1887-88 (BPAI 2008) (precedential) available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf.1
Here, we find the recited “direction identifying an imaging service
responsible for manipulating a particular element when the composition is
processed" constitutes nonfunctional descriptive material, as the “direction”
information is not positively recited in claim 1 as implementing (i.e.,
executing) or otherwise affecting any computer or machine-implemented
function. Thus, the recited “direction[s]” of representative claim 1 are
simply data that does not exhibit any functional interrelationship with the
step of “creating a composition” nor does such direction(s) data affect the
way the computing processes of “creating” and “adding” are performed.
Therefore, we accord no patentable weight in our analysis to the
argued and claimed "direction identifying an imaging service responsible for
manipulating a particular element when the composition is processed,” as
recited in representative claim 1 and similarly recited in independent claims
6, 10, 14, 19, and 23. Accordingly, we sustain the Examiner’s rejection of
representative claim 1 and independent claims 6, 10, 14, 19, 23, and 41
because we find Appellants’ arguments for patentability are predicated on
nonfunctional descriptive material.

1 See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative)
(aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006)).

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ISSUE 2
35 U.S.C. § 103(a): claims 27-40
Appellants contend that the Examiner admits Tonkin fails to teach or
suggest "adding to a composition a direction …," but then asserts that
Tonkin teaches a "manipulator operable to communicate with the imaging
repository to edit a composition adding directions …" (App. Br. 13-14).
Appellants argue the Examiner is inconsistent when he “admits that Tonkin
fails to teach a method step, and then asserts that Tonkin teaches a
component capable of implementing that method step” (id. at 14).
Appellants further argue that (1) Tonkin fails to identify an imaging
service that is responsible for manipulating any component and (2) Tanaka
does not disclose a "manipulator operable to communicate with the imaging
repository to edit a composition adding directions that the manipulator is
responsible for manipulating a specified element when the composition is
processed" (id.).
The Examiner cites Tonkin (i.e., col. 7, line 57- col. 8, line 40; col. 13,
lines 26-64; 60 in Fig.l) and finds Tonkin teaches the manipulator of claim
27 (Ans. 19) Specifically, the Examiner finds Tonkin teaches (1) a button to
edit a component, which is used to manipulate the document components
and a (2) processing facility (i.e., server) that has a stored database with
information regarding the capabilities and geographic location of each of the
production location (id.). Thus, the Examiner finds Tonkin teaches "a
manipulator operable to communicate with the imaging repository to edit a
composition adding directions that the manipulator is responsible for
manipulating a specified element when the composition is processed" (id.).
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Further, the Examiner finds Appellants argue claim 27 on substantially the
same basis as presented for claim 1 (Ans. 35).

Issue 2: Have Appellants shown the Examiner erred in finding that
the prior art teaches or suggests “a manipulator operable to communicate
with the imaging repository to edit a composition adding directions that the
manipulator is responsible for manipulating a specified element when the
composition is processed?”

ANALYSIS
Appellants: (1) merely recite the limitation of claim 27; (2) allege that
the limitation is not taught or suggested by Tonkin or Tanaka, taken alone or
in combination; (3) allege that the Examiner is inconsistent in his findings;
and (3) fail to respond to the specifics of the Examiner’s rejection (see App.
Br. 13-14, see also Final Rej. 18-19 and Ans. 19).
We note that a statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
See 37 C.F.R. § 41.37(c)(1)(vii). Moreover, mere attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); 37
C.F.R. § 1.111(b); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8
(BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf
Thus, Appellants have not traversed the Examiner’s specific findings
and ultimate legal conclusion of obviousness. Further, Appellants have not
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presented any evidence or argument to rebut the Examiner’s specific
findings regarding Tonkin's teaching of a manipulator. Accordingly, we find
the Examiner did not err in finding Tonkin teaches “a manipulator operable
to communicate with the imaging repository to edit a composition adding
directions that the manipulator is responsible for manipulating a specified
element when the composition is processed,” as recited in representative
independent claim 27, and similarly recited in independent claims 31, 35, 39,
and 40.

CONCLUSIONS
The Examiner did not err in concluding that claims 1-26 and 41-43 are
obvious over Tonkin and Tanaka because Appellants’ arguments regarding
independent claims 1, 6, 10, 14, 19, 23, and 41 (from which claims 2-5, 7-9,
11-13, 15-18, 20-22, 24-26, 42, and 43 respectively depend) are predicated
on nonfunctional descriptive material.
The Examiner did not err in concluding that claims 27, 31, 35, 39, and
40 are obvious over Tonkin and Tanaka. Since claims 28-30 depend from
claim 27, claims 32-34 depend from claim 31, and claims 36-38 depend
from claim 35, these dependent claims (not argued separately) fall with their
respective independent claim.

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DECISION
The Examiner’s rejection of claims 1-43 under 35 U.S.C. § 103(a) 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) (2009).

AFFIRMED

Vsh

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