Ex Parte Rizk et al

Patent Trial and Appeal Board

Mar 13, 2018

11201178 (P.T.A.B. Mar. 13, 2018)

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.
11/201,178 08/11/2005 Thomas A. Rizk 063540- 8001 .U S02 5773
25096 7590 03/15/2018
PFRKTNN TOTF TIP- NFA General
EXAMINER
PATENT-SEA HUYNH, THU V
P.O. BOX 1247
SEATTLE, WA 98111 -1247 ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS A. RIZK and SCOTT R. JEFFERY
Appeal 2016-0020201
Application 11/201,1782
Technology Center 2100
Before LARRY J. HUME, SCOTT B. HOWARD, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of claims 28—66. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
May 14, 2015); Reply Brief (“Reply Br.,” Dec. 7, 2015); Examiner’s
Answer (“Ans.,” mailed Oct. 7, 2015); Non-Final Action (“Non-Final Act.,”
mailed Aug. 15, 2014); and the Specification (“Spec.,” filed Aug. 11, 2005).
2 According to Appellants, the real party in interest is TractManager, Inc.
App. Br. 2. We note that the Appeal Brief lacks page numbering, and hence
we number the pages therein sequentially, as guided by the Appeal Brief’s
Table of Contents which indicates page numbers for tabulated sections.
App. Br. i.
Appeal 2016-002020
Application 11/201,178
THE CLAIMED INVENTION
Appellants’ claimed invention relates to “converting a paper
documentation into a digital version of the paper document that is
searchable, manageable, and remotely accessible.” Spec. 12. Claim 28 is
illustrative of subject matter on appeal and is reproduced below.
28. A method in a computing system for controlling access to
document records and document summary pages associated
with digital versions of paper contracts associated with a
corporate entity, the method comprising:
maintaining, by a computing system, an organization-
specific database having corporate entities and authorized users;
receiving, by the computing system, scanned images of
paper contracts;
processing, by the computing system, each scanned
image of a paper contract to generate a searchable text file
corresponding to text contained in the scanned image;
using the organization-specific database, generating, by
the computing system, a graphical interface allowing for the
selection of a corporate entity and an authorized user from a
plurality of presented corporate entities and authorized users;
receiving, by the computing system, an indication of at
least one corporate entity and at least one authorized user
associated with each paper contract;
generating, by the computing system, a document record
for each paper contract, the document record associating the
scanned image of a paper contract with the searchable text file
associated with the scanned image of the paper contract, the
indication of the at least one corporate entity and at least one
authorized user associated with the paper contract;
generating, by the computing system, a document
summary page for each paper contract having fields populated
with summarized terms of the paper contract;
setting, by the computing system, an access level
associated with each paper contract; and
limiting, by the computing system, the access of the at
least one authorized user to information associated with a
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Application 11/201,178
document record and to a document summary page based on the
access level of the corresponding paper contract.
REJECTIONS ON APPEAL3
(1) The Examiner rejected claims 52—63 and 66 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
(2) The Examiner rejected claims 28—32, 34, 37—46, 48—59, and
61—66 under 35 U.S.C. § 103(a) as being unpatentable over Yoda (US
2005/0024679 Al; published Feb. 3, 2005), Costin (US 7,031,960 Bl; filed
Oct. 31, 2000 and issued Apr. 18, 2006), Hartman (US 6,718,340 Bl; issued
Apr. 6, 2004), Uchida (US 7,401,125 Bl; filed Oct. 10, 2000 and issued July
15, 2008), and Zucknovich (US 5,940,843; issued Aug. 17, 1999).
(3) The Examiner rejected claims 33 and 36 under 35 U.S.C.
§ 103(a) as being unpatentable over Yoda, Costin, Hartman, Uchida,
Zucknovich, and Taylor (US 6,209,004 Bl; issued Mar. 27, 2001).
(4) The Examiner rejected claims 35, 47, and 60 under 35 U.S.C.
§ 103(a) as being unpatentable over Yoda, Costin, Hartman, Uchida,
Zucknovich, and Krueger (US 7,216,233 Bl; filed Aug. 14, 2000 and issued
May 8, 2007).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions the Examiner erred. We address specific findings and
arguments below.
(1) f101 rejection
Appellants “request that the Section 101 rejection be held in abeyance
until the Board decides the issue of patentability of the pending claims under
3 The application underlying this appeal was filed on August 11, 2005.
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Application 11/201,178
Section 103(a).” App. Br. 5. Because there is no entered amendment
addressing this rejection, the rejection is before us. 37 C.F.R. § 41.31(c).
Accordingly, we summarily affirm this rejection. Arguments not made are
waived.
(2) §103 rejections
Appellants argue the combination of Yoda, Costin, Hartman, Uchida,
and Zucknovich fails to teach or suggest “receiving ... an indication of at
least one corporate entity . . . associated with each paper contract,” as recited
in independent claims 28, 40, and 52. App. Br. 9-11; Reply Br. 2—3. More
specifically, Appellants argue Yoda’s “business daily report” folder (the
folder is associated with a button for storing scanned documents to the
folder) fails to teach or suggest an associated corporate entity for each paper
contract, in accordance with the claims. App. Br. 10-11 (citing Yoda
Figs. 5, 10, 11,1146-49). According to Appellants, “[a]t best, the report
[folder] specifies the name and location of where the scanned document is
stored.” App. Br. 11 (citing Yoda Figs. 10, 11, H 46-49).
The Examiner finds that the combination, and Yoda in particular,
teaches the disputed limitation. Ans. 13—14; Non-Final Act. 5. More
specifically, the Examiner finds Yoda teaches that a user can prepare
instruction buttons for use in inputting documents for scanning and storage.
Ans. 14 (citing Yoda Fig. 3); see also Yoda 144. For example, an
instruction button can be prepared for selected documents to be stored in a
“Business Daily Report” (i.e., a type of a report) destination folder. Ans. 14
(citing Yoda H 56—59, Fig. 10). The Examiner concludes the claimed
“‘corporate entity’ can be interpreted as [a] ‘business object’ or ‘business
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Application 11/201,178
report.’” Ans. 14. Based on this interpretation, the Examiner finds Yoda
teaches the disputed limitation. Id.
We agree with Appellants that the Examiner errs with respect to the
disputed limitation. The Examiner incorrectly interprets “corporate entity”
to cover “business reports” (e.g., Yoda’s Business Daily Reports), which
unreasonably broadens the ordinary meaning of “corporate entity.” The
Examiner fails to explain the basis for this interpretation, including failing to
cite to anything in the Specification supporting this unreasonably broad
interpretation of “corporate entity.” Cf. In re Suitco Surface, Inc., 603 F.3d
1255, 1259-60 (Fed. Cir. 2010) (finding that although “the PTO must give
claims their broadest reasonable construction consistent with the
specification^ . . . claims should always be read in light of the specification
and teachings in the underlying patent”) (citation omitted). Accordingly, the
Examiner fails to show that Yoda teaches or suggests the disputed limitation.
See Yoda 56—59, Figs. 3, 5, 10.
We note that the claims require that the indication of a corporate
entity is derived from selecting “from a plurality of presented corporate
entities.” App. Br. 21, 24, 27. Thus, even assuming arguendo that Yoda’s
Business Daily Reports folder must teach an indication of at least one
corporate entity and storing a document in that folder indicates an
association, which the Examiner does not address, the cited portions of Yoda
fail to address separate Business Daily Reports folders for separate
corporate entities. Yoda H 56—59, Figs. 3, 5, 10. Rather, at best, Yoda
teaches having separate Business Daily Reports folders for separate users.
Id.
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Accordingly, we do not sustain the Examiner’s § 103 rejection of
independent claims 28, 40, and 52, as well as claims 29-32, 34, 37—39, 41—
46, 48—51, 53—59, and 61—66 as they each depend from one of the
independent claims. We also do not sustain the Examiner’s § 103 rejections
of (i) claims 33 and 36 and (ii) claims 35, 47, and 60, as they each depend
from one of the independent claims and the Examiner also relies on Yoda’s
above teachings for the disputed limitation for these rejections.
DECISION
We affirm the Examiner’s decision rejecting claims 52—63 and 66
under § 101.
We reverse the Examiner’s decision rejecting claims 28—66 under
§103.
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). See
37 C.F.R. §41.50(f).
AFFIRMED-IN-PART
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