Ex Parte Parker et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10273214 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RICHARD G. PARKER and GRAHAM RUTHERFORD
____________________

Appeal 2008-2649
Application 10/273,2141
Technology Center 2100
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Decided: January 22, 2009
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Before LANCE LEONARD BARRY, ALLEN R. MACDONALD, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 24 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed October 17, 2002. The real party in interest is Lockheed
Martin Corporation.

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Appellants’ invention relates to a method and system for tracking the
approvals for the dissemination of a document. In the words of the
Appellants:
The present invention therefore provides an automated method,
system and program product for automated document export
control.

In accordance with the present invention, a user, by entering
one or more user inputs into a data processing system, builds and
submits an electronic document export request specifying a document
for which export authorization is requested, an identity of an export
control reviewer, and an indication of an export control policy under
which export of the document is permitted. In response to submission
of the electronic document export request, the data processing system
automatically notifies the export control reviewer of the electronic
document export request and permits the export control reviewer to
electronically access, review and annotate the electronic document
export request. Then, in response to the export control reviewer
annotating the electronic document export request as approved, the
electronic document export request is electronically archived, and
approval of the export request is electronically indicated to the user. In
this manner, paper copies and physical handling of the document
export request can be advantageously eliminated.

(Spec. 3, ll. 3-24).
Claim 1 is exemplary:
1. A computer-based method of controlling dissemination of a
document, said method comprising:
in response to one or more user inputs into a data processing system,
building and submitting an electronic document export request specifying a
document for which export authorization is requested, an identity of an
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export control reviewer, and an indication of an export control policy under
which export of the document is permitted;
in response to submission of the electronic document export request,
the data processing system automatically notifying the export control
reviewer of the electronic document export request and permitting the export
control reviewer to electronically access, review and annotate the electronic
document export request; and
in response to the export control reviewer annotating the electronic
document export request as approved, electronically archiving the electronic
document export request and electronically indicating to a user that export of
the document has been approved.

PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gagne 2002/0184119 A1 Dec. 5, 2002
REJECTION
Claims 1 to 24 stand rejected under 35 U.S.C. § 102(e) for being
anticipated by Gagne.
Appellants contend that the claimed subject matter is not anticipated
by Gagne for failure of the reference to teach claimed limitations. The
Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
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this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102. The issue turns on whether
Gagne teaches the method and system for dissemination of a document with
the limitations as claimed.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a computer based method, system and
computer program (method) for tracking required policy approvals for
the dissemination of documents, especially those for which export
licenses are required. (Spec. 2, ll. 2-6). Instead of the old hard copy
records, Appellants use an automated system to fill out an export request
electronic document. (Id. at 3, ll. 1-6). The export request may specify
the document for which authorization is requested, an identity of an
export control reviewer, and an indication of the policy controlling the
exporting of the document. (Id. at 3, ll. 12-13). Upon being approved by
the export control reviewer, the electronic request is archived (Fig. 2, step
#82) and the requestor is notified. (Fig. 2, step 84).
2. The reference Gagne discloses and patents a system and method for
tracking the request for shipping goods and materials in an automated
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environment (¶ [0002]), especially those subject to export controls,
finance controls, hazardous material controls and otherwise sensitive
materials (¶ [0033]). A shipping request is electronically generated,
which includes a description of the goods or materials, the approval
managers who can approve or disapprove the dissemination of the
materials, and the export and other controls (policies) that are relevant to
the materials (¶¶ [0033], [0037]). The request is sent to the reviewing
manager (¶ [0038]) and upon approval the requester is notified (¶
[0041]), and the document is archived (¶ [0040]).
PRINCIPLES OF LAW
“In reviewing the examiner’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999) “In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.” (Id.) (internal
citations omitted).
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ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. § 102. The prima facie case is presented on pages 3 to 8 of
the Examiner’s Answer. In opposition, Appellants present a number of
arguments.
Arguments with respect to the rejection
of claims 1 to 24
under 35 U.S.C. § 102

Appellants first contend that the problems addressed by the
Appellants and the reference are disparate. (App. Br. 17, top). The
Appellants argue that they are “concerned [with] controlling dissemination
of a document subject to export authorization policies or procedures through
an automated request and approval process.” (Id.). In contrast, the problems
addressed by Gagne are described by the Appellants as “Gagne’s problem
concerned a perceived need to enhance product shipment by automating
processing of a shipping request or shipping instructions”. (Id.).
For a rejection under 35 U.S.C. § 102, the issue is as follows: “[a]
single prior art reference that discloses, either expressly or inherently, each
limitation of a claim invalidates that claim by anticipation.” Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005). Thus the
alleged dichotomy of problems being addressed is of no consequence if the
limitations of the claim are anticipated by Gagne. We do not find error in the
Examiner’s rejection on this point.
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Appellants next argue that Gagne does not “disclose, teach, or suggest
‘…building and submitting an electronic document export request, much
less such a request specifying: . . . .”. (App. Br. 17, bottom). As noted above
in FF #2, Gagne is directed to the construction of an electronic shipping
request for “goods or materials”. (¶ [0050]). Appellants argue that “goods or
materials” do not include a document (App. Br. 18, middle) but they have
not provided any authoritative, objective evidence for that contention. Nor
have the Appellants demonstrated any specific definition of “goods or
materials” in the reference, or in the common usage of the term, that would
disqualify documents from being considered “goods or materials”. In fact,
Appellants argument acknowledges that documents are a type of export
material when arguing that it is just not the type of material in Gagne (App.
Br. 18, bottom). Further, Appellants specification at pages 1-2
acknowledges that it is known in the art that documents are an item subject
to export controls. We find that materials in the approval process of the
reference would be recognized by an artisan to be inclusive of the known
documents in the approval process as claimed.. We thus do not find error in
the Examiner’s rejection on this ground.
Appellants next argue that the Shipping Request of Gagne fails to
disclose an Export Control Policy under which the shipping is permitted
(App. Br. 19, top); or the identity of the Export Control Reviewer to
authorized the shipping (id. at 20, top); or an electronic copy of the
document to be Exported (id. at 21, bottom). On pages 10 and 11 of the
Examiner’s Answer the Examiner presents the exact paragraphs in the
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Gagne reference in which the cited teachings are present. We thus do not
find error in the Examiner’s rejection on any of these grounds.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 24 under 35 U.S.C. §
102(e).
DECISION
The Examiner's rejection of claims 1 to 24 under 35 U.S.C. § 102 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

msc

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