Ex Parte Rice et al

Board of Patent Appeals and Interferences

Jan 25, 2012

10784708 (B.P.A.I. Jan. 25, 2012)

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.
10/784,708 02/23/2004 Robert Rice BWORL.0101 1463
22858 7590 01/25/2012
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
JOHNSON, CARLTON
ART UNIT PAPER NUMBER
2436
MAIL DATE DELIVERY MODE
01/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT RICE and JASON STREIT
____________

Appeal 2009-010919
Application 10/784,708
Technology Center 2400
____________

Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
DEBRA K. STEPHENS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010919
Application 10/784,708

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 2, 4-11, 13-18, and 21-24.
The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
The invention at issue on appeal relates to “electronic document
processing and more specifically to a method for collecting, verifying, and
notarizing documents through a decentralized system, while satisfying
federal and local legal formalities.” (Spec. 1, ll.6-8).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for verifying a document via a distributed
computer network, the method comprising the steps of:
(a) creating an electronic version of the document on a
first client in the computer network, wherein said electronic
document includes an acceptance option for a Consent to
Electronic Records (CER);
(b) storing the electronic document on a server in the
computer network;
(c) retrieving the electronic document using a notary
application via a second client in the computer network;
(d) presenting a signing party with said acceptance option
for said CER;
(e) electronically affixing at least one signing party’s
signature to the electronic document using said notary
application via the second client only if said signing party
accepts the CER;
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(f) electronically affixing a verifying party’s signature
and seal to the electronic document using said notary
application via the second client, wherein said seal is stored
electronically by said notary application, and wherein the
verifying party may be any certified party that has authority by
law to verify and authenticate the signer of a document; and
(g) storing the signed, notarized, electronic document on
said server.

C. REFERENCES
The Examiner relies on the following references as evidence:
Nassiri US 2002/0143711 A1 Oct. 3, 2002

MARTHA A. BRODERICK ET AL.,Electronic Signatures:They're Legal, Now
What?, 11 (5) Internet Research: Networking Applications and Policy, 423-
34 (2001), copyright held by MCB University Press, available at
http://www.ccs.neu.edu/home/tarase/BrodGibTaraseESig.pdf (hereinafter
“Broderick”).

D. REJECTION
Claims 1, 2, 4-11, 13-18, and 21-24 stand rejected under 35 U.S.C.
103 (a) as being unpatentable over Nassiri in view of Broderick. (Ans. 3-8).

PRINCIPLES OF LAW
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).
“[T]he Board reviews the particular finding(s) contested by an
appellant anew in light of all the evidence and argument on that issue.” Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). “Filing a
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Application 10/784,708

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Board appeal does not, unto itself, entitle an appellant to de novo review of
all aspects of a rejection. If an appellant fails to present arguments on a
particular issue - or, more broadly, on a particular rejection - the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection.” Id. (citations omitted).

Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought – the so-called “prima
facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is
on the USPTO “to produce the factual basis for its rejection of an application
under sections 102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016
(CCPA 1967)). The “prima facie case” serves as a procedural mechanism
that shifts the burden of going forward to the applicant, who must produce
evidence and/or argument rebutting the case of unpatentability. See Oetiker,
977 F.2d at 1445; Piasecki, 745 F.2d at 1472.
The Board of Patent Appeals and Interferences’ (Board’s) role on
appeal is to, “review adverse decisions of examiners upon applications for
patents.” 35 U.S.C. § 6(b). An appellant has the opportunity on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
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Application 10/784,708

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of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998), overruled in part on other grounds, KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 422 (2007)).

ANALYSIS
Appellants misidentify the grounds of rejection at page 5 of the
Appeal Brief as only over the Nassiri publication,and Appellants only
present arguments to the reference Nassiri. (Br. 5-10). Accord Ans. 2-3
(noting the correct grounds of rejection under § 103 over Nassiri and
Broderick in the “Grounds of Rejection to be Reviewed on Appeal” section).
Appellants argue there is no mention of “c]onsent to e]lectronic
r]ecords” anywhere in Nassiri, and Appellants do not agree that some type
of consent could be reasonably implied in the operation of the Nassiri
invention. (Br. 9). Appellants further contend that claims 1, 11, and 18 “do
not merely include the use of a CER” (consent to electronic records) but
“explicitly recite that the CER function is incorporated into the electronic
document itself” and that “t]his specific implementation is not suggested
anywhere in Nassiri.” (Br. 9).
Appellants apparently have misinterpreted the Examiner’s grounds of
rejection. The Examiner clearly states that the rejection is over Nassiri in
view of Broderick in the final rejection and in the Answer. (Ans. 3, 5, 6,
10). The Examiner relies upon the teachings of Broderick for the CER
function and the motivation to modify Nassiri. Since Appellants have not
responded to the combination of references, Appellants’ argument
necessarily cannot show error in the Examiner’s showing of obviousness of
independent claims 1, 11, and 18. Furthermore, Appellants did not respond
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to the proper rejection by filing a reply brief. Therefore, we sustain the
rejection of representative claim 1.
With respect to the dependent claims, Appellants additionally state
“b]ecause claims 2, 4-10, 13-17, and 21-24 depend from claims 1, 11 and 8
[sic, 18], respectively, they are distinguished from Ballester and Evans for
the reasons explained above.” (Br. 10). Since neither of these references
has been applied in the any of the office actions in the current prosecution
history, Appellants’ summary argument is not a specific argument for
patentability. Therefore, claims 2, 4-10, 13-17, and 21-24 fall with their
respective independent claims.

CONCLUSION
For the aforementioned reasons, Appellants have not shown error in
the Examiner’s showing of obviousness of independent claim 1.

ORDER
We affirm the obviousness rejections of claims 1, 2, 4-11, 13-18, and
21-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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