Ex Parte Vela

Patent Trials and Appeals Board

Nov 13, 2018

12869204 - (D) (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/869,204 08/26/2010 Mark Vela
41030 7590 11/15/2018
LOZA & LOZA, LLP/Xerox
305 North 2nd Avenue #127
Upland, CA 91786
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.
20100417-US-NP 7413
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
docketing@lozaip.com
klopez@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK VELA
Appeal2017-006285
Application 12/869,204
Technology Center 3600
Before ST. JOHN COURTENAY III, CARLL. SILVERMAN, and
JOHN P. PINKERTON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Embodiments of Appellant's invention are "generally related to
workflow management systems and methods. Embodiments also relate in
1 According to Appellant, the real party in interest is Xerox Corporation,
which is the assignee of the present application. App. Br. 2.
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Application 12/869,204
general to the field of computers and similar technologies, and in particular
to software utilized in this field. In addition, embodiments relate to the
visual representation of a modified document." Spec. ,r 1.
Exemplary Claim
1. A document workflow method, comprising:
[L 1] providing a worliflow management application for
receiving and modifying a document for printing;
integrating a logic that interprets a workflow associated
with said document for printing with a rendering logic;
[L2] visually displaying said document for printing
incorporating a plurality of changes;
[L3] realizing said plurality of changes by a rendering
code associated with said rendering logic;
providing a what you see is what you get visual display of
said plurality of changes realized by said rendering code;
integrating said rendering logic with a workfl ow logic;
translating said plurality of changes associated with said
document for printing to a workflow process step represented in
an extensible markup language format;
creating a final document by executing said workflow
process step with respect to said document through a workflow
engme:
[L4] transmitting said final document to an external
production output device over a wireless communication
channel for final production wherein said final document
transmitted to said external production output is substantially
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identical to the what you see is what you get visual display
provided by said worliflow management application; and
rendering said final document as a hard copy document with
said production output device.
App. Br. 44 (Claims Appendix) (Contested limitation emphasized).
Rejections
A. Claims 1-20 are rejected under 35 U.S.C. § 101, as being directed
to a judicial exception, without significantly more. Final Act. 2.
B. Claims 1-5, 7-12, 14--18, and 20 are rejected under pre-AIA
§ I03(a) as being obvious over the combined teachings and
suggestions ofWaldorf(US 8,302,074 Bl, issued Oct. 30, 2012),
Perry (US 2004/0261017 Al, published Dec. 23, 2004), and
further in view of Sangroniz et al. (US 2004/0193465 A 1,
published Sept. 30, 2004) (hereinafter "Sangroniz"). Final Act. 8.
C. Claims 6, 13, and 19 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over the combined teachings and
suggestions of Waldorf, Perry, Sangroniz, and Official Notice.
Final Act. 17.
Issues on Appeal
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more?
Did the Examiner err in rejecting claims 1-20 under pre-AIA
35 U.S.C. § I03(a), as being obvious over the cited combinations of
references?
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ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection A under 35 USC§ 101
Mayo/Alice Analysis
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
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not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409
U.S. at 67). Moreover, if a method can be performed by human thought
alone, or by a human using pen and paper, it is merely an abstract idea and is
not patent-eligible under § 101. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78).
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 1-20 are directed to a judicial exception, i.e., an
abstract idea:
Claims 1-20 are directed to an abstract idea of creating and
outputting a document, specifically, the invention, as recited in
independent claim 1 [that] relates to receiving and modifying a
document, integrating logic, displaying a document, realizing
changes, providing a WYSIWYG display, translating said
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plurality of changes to an XML language, creating a final
document, transmitting the document, and rendering the final
document, and independent claims 8 and 15 include similar
limitations which amounts to merely: (i) a fundamental
economic/business practice, (ii) a method of organizing human
activities, and (iii) an idea of itself
Final Act. 3 ( original emphasis omitted and emphasis added). 2
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
the additional elements or combination of elements in the
claims other than the abstract idea per se amount[] to no more
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well understood,
routine, and conventional activities previously known to the
industry. The Examiner asserts that the claimed invention
fails to further improve upon the technology since the claimed
invention does not improve on the general purpose computer of
paragraphs [0018], [0021], and [0024] of the published
specification, which state, for example, in [0024 ], that the
"invention may be embodied on a variety of different
computing platforms, including Macintosh ... ".
Final Act. 5-6 ( original emphasis omitted and emphasis added). 3
2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
3 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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For the aforementioned reasons, the Examiner concludes that all
claims 1-20 on appeal are not patent-eligible under 35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellant contends:
the claimed method of integrating logic that interprets a
workflow associated with rendering logic and displaying that
document accordingly is not a fundamental economic practice.
The claim describes the interconnection of computer code
associated with processing a print job and rendering logic to
provide a view of a document before it is rendered as a
hardcopy.
App. Br. 11 ( emphasis added).
Appellant also contends:
While the Examiner does correctly identify a number of cases
that establish what ideas constitute "organizing human
activity," Appellant's claims cannot be analogized to any of
these examples. Appellant's claims are directed to method and
systems for merging logic that interprets a workflow with
rendering logic to provide a more accurate representation of a
document (a "what you see is what you get" version) before the
document is rendered. This fundamentally has nothing to do
with "interpersonal and intrapersonal activities, such as
managing relationships or transactions between people, social
activities, and human behavior; satisfying or avoiding a legal
obligation; advertising, marketing, and sales activities or
behaviors; and managing human mental activity."
App. Br. 12 (emphasis added).
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In the Answer, the Examiner disagrees, and further explains the basis
for the rejection:
The Examiner respectfully disagrees that the claims are not
directed to a fundamental economic practice. Reviewing the
claims reveals several steps that culminate in the creation and
output of a document. There are few things more fundamental
to day-to-day transactions of business than creating and
outputting documents (whether electronic or paper). Orders are
usually conducted via documents, receipts are given, and
tracking of inventory and other business aspects is performed
via documents.
Ans. 2 (emphasis added).
Regarding the disputed method of organizing human activity, the
Examiner explains:
Appellant argues that the claims have "nothing to do" with
organizing human activity. [The] Examiner respectfully
disagrees, for all the reasons mentioned in the Final Office
Action and the After Final, and provides further examples of
analogous cases. Cases that have been found to be certain
methods of organizing human activity that have dealt with
documents include Ameranth4 (generating menus on a
computer) and Int. Ventures v. Symantec5 (receiving, screening,
4 The Examiner is referring to Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229
(Fed. Cir. 2016) (holding that the subject claim directed to "[a]n information
management and synchronous communications system for generating and
transmitting menus" was patent-ineligible because it "claims no more than
the use of existing handwriting and voice capture technologies using a
computer system." Id. at 1234, 1245.
5 The Examiner is referring to Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307 (Fed. Cir. 2016) (holding that the subject claim
directed to "[a] post office for receiving and redistributing email messages
on a computer network" was patent-ineligible because it was not directed to
a specific improvement to computer functionality. Id. at 1316.
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and distributing email). Both of these cases are similar to the
instant case which is directed to generating documents (which
is broader than menus or email) and outputting them.
Ans. 4.
Based upon our review of the record, we find persuasive Appellant's
contentions in the Briefs that claims 1-20 are not directed to a patent-
ineligible judicial exception, i.e., an abstract idea.
At the outset, we find no language in claims 1-20 that pertains to
financial or economic activities. We find the Examiner's broad general
statement that links Appellant's claims with business practices would be
equally applicable to patent-eligible typewriters, printers, and copying
machines: "There are few things more fundamental to day-to-day
transactions of business than creating and outputting documents ( whether
electronic or paper)." Ans. 2.
The Examiner's reasoning is flawed and unsupported by applicable
case law. Therefore, we agree with Appellant's contention that "printing a
what you see is what you get [(WYSIWYG)] document is not 'a
fundamental economic practice long prevalent in our system of commerce."'
App. Br. 11.
We find equally unavailing the Examiner's alternative theory that
Appellant's claims are directed to a patent-ineligible method of organizing
human activity:
The claims, which are directed to document workflow, are also
considered to be certain methods of organizing human activity
as the claims include concepts relating to managing
relationships or transactions between people, in that they relate
to processing document information, similarly to Dealertrack,
which related to processing loan information.
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Final Act. 5. 6
We note loans are fundamental economic practices between
individuals and/or businesses. The Examiner's reasoning (id.) is misplaced,
because that is not the subject matter of Appellant's claims.
Therefore, we find Appellant's rebuttal persuasive:
While the Examiner does correctly identify a number of cases
that establish what ideas constitute "organizing human
activity," Appellant's claims cannot he analogized to any of
these examples. Appellant's claims are directed to method
and systems for merging logic that interprets a workflow with
rendering logic to provide a more accurate representation of a
document (a "what you see is what you get" version) before the
document is rendered. This fundamentally has nothing to do
with "interpersonal and intrapersonal activities, such as
managing relationships or transactions between people, social
activities, and human behavior; satisfying or avoiding a legal
obligation; advertising, marketing, and sales activities or
behaviors; and managing human mental activity."
App. Br. 12.
Nor do we find the Examiner has shown Appellant's claims are
directed to a patent-ineligible idea of itself or a mathematical algorithm. If
Appellant's claims are not directed to a patent-ineligible concept, our
inquiry ends. See Visual Memory, 867 F.3d at 1262. Because Appellant's
arguments apply similarly to independent claims 8 and 15, we are
6 The Examiner is referring to the pre-Alice Federal Circuit opinion:
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1319 (Fed. Cir. 2012) (the
subject claim 7 of the '841 patent directed to "[a] computer based method of
operating a credit application and routing system" that selectively received
credit application data, obtained credit report data, and forwarded the credit
application data, was held to be patent ineligible by the court) (original
emphasis omitted and emphasis added).
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constrained on this record to reverse the Examiner's rejection A under
35 U.S.C. § 101 of all claims 1-20 on appeal.
Rejection B of Independent Claim 1 under 3 5 US. C. § 103 (a)
Issues: Under pre-AIA 35 U.S.C. § I03(a), did the Examiner err by
finding the cited combination of Waldorf, Perry, and Sangroniz would have
taught or suggested the contested limitations LI, L2, L3, and L4:
[L 1] providing a worliflow management application for
receiving and modifying a document for printing;
[L2] visually displaying said document for printing
incorporating a plurality of changes;
[L3] realizing said plurality of changes by a rendering
code associated with said rendering logic;
providing a what you see is what you get visual display of
said plurality of changes realized by said rendering code;
[L4] transmitting said final document to an external
production output device over a wireless communication
channel for final production wherein said final document
transmitted to said external production output is substantially
identical to the what you see is what you get visual display
provided by said worliflow management application[,]
within the meaning of representative claim 1 ?7 ( emphasis added).
7 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec. ,r 34 ("It will be
appreciated that variations of the above-disclosed and other features
and functions, or alternatives thereof, may be desirably combined into many
other different systems or applications. Also that various presently
unforeseen or unanticipated alternatives, modifications, variations or
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Contested Limitation LI (Claim 1)
[L 1] providing a worliflow management application for
receiving and modifying a document for printing;
Appellant contends: "Waldorf does not teach or suggest providing a
workflow management application for receiving and modifying a document
... while ... Sangroniz teaches document printing, the present part of the
rejection fails to consider the prior art reference or the claimed features as a
whole." App. Br. 27. In support, Appellant contends:
Id.
More specifically, the cited material fails to teach or
suggest that an application receives a document in any capacity,
or that an application modifies a document. Instead, the
reference describes "a new page layout providing a blank
canvas" or "an existing page layout within for editing an
existing webpage" and suggests the process allows for "adding
a GUI component to a web page." Adding a GUI component to
a web page does not teach or suggest modifying a document
before it is printed.
Regarding the contested "workflow management application for
receiving and modifying a document" ( claim 1 ), we tum to Appellant's
Specification for context. We find the Specification broadly describes a
"workflow management application" using exemplary, non-limiting
language: "A workflow management module can be configured to provide
support for editing and annotating the document by a user and a result of the
respective operations can be visually represented in a user interface." Spec.
improvements therein may be subsequently made by those skilled in the art
which are also intended to be encompassed by the following claims.").
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Given the aforementioned lack of a limiting definition, we are not
persuaded that the Examiner's reading of the disputed "workflow
management application" on the "page layout designer" of Waldorf is in
error. See Ans. 8, citing Waldorf, col. 6, 11. 26-37. As explained by the
Examiner, a web page is a type of document:
Waldorf discloses this feature in col. 6, lines 26-37. Waldorf
provides a "page layout designer" which is an application.
Examiner notes that the description of the application as a
"workflow management" application is merely descriptive and
not a positive claim limitation which further limits the claim.
However, the page flow aspect of Waldorf is considered to
provide the workflow aspect of applicant's invention. Further,
a web page is a document. A document is a piece of matter,
whether printed or electronic, that conveys information. A web
page is an electronic conveyor of information and is therefore,
a document. Examiner further notes that, although not
disclosed explicitly in Waldorf, most web documents have the
ability to be printed through a browser.
Ans. 8 (emphasis added).
Based upon our review of the record, we are not persuaded the
Examiner's claim interpretation is overly broad, unreasonable, or
inconsistent with the Specification, because the Examiner repeatedly refers
to descriptions of exemplary, non-limiting embodiments found in the
Specification. Ans. 8, et seq. Because "applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
For a prima facie case of obviousness, the reference need not
recognize the same problem solved by the Appellant (In re Kemps, 97 F.3d
1427, 1430 (Fed. Cir. 1996)), because "neither the particular motivation nor
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the avowed purpose" of the [Appellant] controls" in an obviousness analysis.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007). The reason or
motivation to modify the reference may often suggest what the inventor has
done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by Appellant. See In re Kahn, 441 F .3d 977,
987 (Fed. Cir. 2006) (motivation question arises in the context of the general
problem confronting the inventor rather than the specific problem solved by
the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need
not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.").
To the extent that Appellant argues (App. Br. 11) that Waldorf is non-
analogous art, a reference is analogous art to the claimed invention if: (1)
the reference is from the same field of endeavor as the claimed invention
( even if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor ( even if it is not in the same
field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In order for a reference to be "reasonably pertinent"
to the problem, it "logically would have commended itself to an inventor's
attention in considering his problem." ICON Health, 496 F.3d at 1379--80
(quoting In re Clay, 966 F.2d 656,659 (Fed. Cir. 1992)).
Appellant contends that "Appellant's claim[ s have] nothing to do with
adding a graphical user interface component to a webpage." App. Br. 11.
However, it is not necessary that the prior art suggest the combination
to achieve the same advantage or result discovered by Appellant, as
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discussed above. Kahn, 441 F .3d at 987. Moreover, we find the invention
in Waldorf that relates to "[ s ]ystems and methods for graphical user
interfaces and for presenting content to a user of a graphical user interface"
(Waldorf, Abstract), would have logically commended itself to modifying a
webpage (i.e., a type of electronic document), in which the webpage content
can be printed as a hardcopy document (in accordance with the teachings of
Sangroniz (i-f 25), with predictable results. (Claim 1 ). See ICON Health,
496 F.3d at 1379--80; see also KSR, 550 U.S. at 401 ("[A] combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results."). Therefore, we find Waldorf
is reasonably pertinent to the problem faced by the inventor.
Appellant also contends:
The Final rejection fails to include the words "for printing."
However, when the claim is read as a whole it is clear that the
reference does not teach or suggest anything related to the
claim. Indeed, the whole point of the claim is that
electronically rendered documents that will be printed often do
not look the same as the ultimately printed document.
App. Br. 29.
However, we emphasize the Examiner's obviousness rejection Bis
based on the combined teachings and suggestions of Waldorf, Perry, and
Sangroniz. Sangroniz (i-f 25) ( emphasis omitted) expressly discloses:
"Once the complete job ticket 159 is produced, then it is provided to
appropriate printing systems 166 or workflow control systems, etc., to effect
the printing of the document associated therewith in the respective print
environment."
We do not agree that the Examiner's proposed modification of
Waldorf/Perry with Sangroniz would change the principle of operation of
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the Waldorf/Perry base combination, as urged by Appellant (App. Br. 30),
because electronic documents can be printed with predictable results.
Accordingly, we find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding contested limitation LI of representative claim 1.
Contested Limitation L2 (Claim 1)
[L2] visually displaying said document for printing
incorporating a plurality of changes;
Appellant contends:
Additionally, Waldorf fails to teach or suggest, "visually
displaying a document for printing" by incorporating a plurality
of changes. The Final rejection fails to include the words
"for printing." However, when the claim is read as a whole it is
clear that the reference does not teach or suggest anything
related to the claim. Indeed, the whole point of the claim is that
electronically rendered documents that will be printed often do
not look the same as the ultimately printed document.
App. Br. 29.
In response, the Examiner further explains the basis for the rejection:
[The] Examiner notes that other cited art discloses the ''for
printing" portion of the claim. Examiner further notes that ''for
printing" is intended use, does not affect the steps of the claims,
and therefore, receives little patentable weight.
Ans. 10 ( emphasis added).
Our reviewing court guides: "An intended use or purpose usually will
not limit the scope of the claim because such statements usually do no more
than define a context in which the invention operates." Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
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(Fed. Cir. 2003). Although "[s]uch statements often ... appear in the
claim's preamble," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
However, in this case, we conclude a step of printing is positively
recited in the last recited step of claim 1: "rendering said final document as
a hard copy document with said production output device."
Nevertheless, we emphasize again that the Examiner's obviousness
rejection Bis based on the combined teachings and suggestions of Waldorf,
Perry, and Sangroniz. The Examiner relies, in pertinent part, on Sangroniz
(i-f 25) ( emphasis omitted), that we find expressly discloses the "for printing"
aspect of the documents modified by Waldorf/Perry base combination:
"Once the complete job ticket 159 is produced, then it is provided to
appropriate printing systems 166 or workflow control systems, etc., to effect
the printing of the document associated therewith in the respective print
environment."
Although Appellant contends "[t]he Waldorf reference does not
describe any production output device capable of 'rendering said final
document as a hard copy document"' (App. Br. 29), we find Appellant is
arguing the references separately, because the Examiner finds:
"Sangroniz teaches where the final document is rendered as a hard copy
document; and wherein the document is for printing (Sangroniz [0025]
[0033] and Fig. 2." (Final Act. 12). 8 Appellant has not persuasively
addressed the Examiner's specific findings. Id.
8 See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references).
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Accordingly, on this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding contested limitation L2 of
representative claim 1.
Contested Limitation L3 (Claim 1)
[L3] realizing said plurality of changes by a rendering
code associated with said rendering logic;
providing a what you see is what you get visual display of
said plurality of changes realized by said rendering code;
Appellant contends:
The Appellant further disagrees that the cited material
teaches or suggests anything related to the claimed rendering
code. In particular, the Appellant respectfully asserts that the
Final Office Action does not identify any element in the
combined prior art, which teaches or suggests the claimed
rendering code. This deficiency is the result of the
fundamentally different nature of the inventions. The reference
does not describe a "rendering code" because it is not ultimately
geared toward rending anything. Instead it is, by the
Examiner's admission, an invention for developing a web page.
By contrast, the present claims are explicitly meant to evaluate
rendering code to provide a WYSIWYG view of the document
before it is rendered according to the workflow.
App. Br. 32.
In response, the Examiner disagrees, and further explains the basis for
the rejection: "Waldorf discloses this in col. 5, lines 14-20. The page flow
engine provides the logic that interprets a workflow (see above and Final
QA), and an associated code is used when the web page is executed
(Waldorf col. 5, lines 14-20)." Ans. 11.
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We find a preponderance of the evidence supports the Examiner's
findings. Id. Waldorf expressly describes in col. 5, 11. 28-30: "In one
implementation, the page layout designer includes a web editor using a
'what you see is what you get' ('WYSIWYG') architecture."
Buttressing the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness, we observe Perry similarly describes: "A
Web designer will usually use one of the WYSIWYG (What You See Is
What You Get) Web designing packages that are on the market, and these do
not expose the designer to the underlying code." Perry ,r 92. At paragraph
93, Perry additionally discloses an XSL "renderForm.xsl" stylesheet that
contains XSL instructions for formatting (i.e., transforming to render) the
same Web page:
The code for producing the same Web page 32
using a preferred embodiment of the present
invention is now discussed. The Web page 32
shown in FIG. 10 can be generated by the
following workflow document which comprises an
XML instruction 28 to make a call to a database,
and an associated XSL-T formatting instruction
30:

II XML instruction 28

// XSL formatting instruction 30

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( original emphasis omitted emphasis added). 9
We emphasize again that the Examiner relies, in pertinent part, on
Sangroniz (i-f 25), that expressly discloses the rendering "for printing." Final
Act. 12.
Moreover, "'the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made."' Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also
MPEP § 2123.
Applying this reasoning here, we find a preponderance of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness regarding contested limitation L3 of
representative claim 1.
Contested Limitation L4 (Claim 1)
[L4] transmitting said final document to an external production
output device over a wireless communication channel for final production
wherein said final document transmitted to said external production output
9 An obviousness inquiry is not limited to the prior art's preferred
embodiment. See, e.g., Pfizer, 480 F.3d at 1370. Moreover, "[c]ombining
two embodiments disclosed adjacent to each other in a prior art patent does
not require a leap of inventiveness." Boston Scientific Scimed, Inc. v. Cordis
Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). "[I]n a section 103 inquiry, 'the
fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered."' Merck, 874 F.2d at 807 (quoting In re Lamberti, 545
F.2d at 750).
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is substantially identical to the what you see is what you get visual display
provided by said worliflow management application;
The Examiner finds Waldorf, in combination with Perry and
Sangroniz, teaches contested limitation L4, relying in pertinent part of
Waldorf, at col. 5, 11. 14--30 and col. 11, 11. 1-34, in which the cited portion
of column 5 teaches WYSIWYG technology, and the cited portion of
column 11 teaches wireless communication, as follows:
[Waldorf teaches] rendering said final document. .. with said
production output device (Waldorf col. 4, lines 16-67 Through
the deployment of web pages that are developed with the page
layout designer and page flow designer tools, the business
analyst can provide enterprise-wide, internal and external
access to web applications across networks such as an intranet,
or the Internet[ col. 4, lines 53-67]).
Final Act. 10-11.
Appellant contends:
the cited material in Perry explicitly states that the response
document is returned to the client for display. By contrast, the
Appellant's claims explicitly state that the document is sent to
an external production output device for final production. The
Appellant respectfully asserts that no skilled artisan would
equate the cited transmission back to the client device, with the
claimed method where documents are sent to a rendering device
(i.e. a printer) for final production. No explanation of why this
argument has not been found persuasive has been provided.
App. Br. 33.
In response, the Examiner further explains the basis for the rejection,
and discusses the secondary Perry reference:
Applicant further argues that the claim limitations state that the
document is sent to "an external production output device for
final production" and that this is not disclosed by the prior art.
Examiner respectfully disagrees. This is disclosed by Perry.
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Examiner notes that broadest reasonable interpretation must be
used. The claims do not limit the production device to a
printer. A display, as is cited in the prior art, also functions as
an external production output device for final production as
claimed.
Ans. 11.
Appellant disagrees, and further responds in the Reply Brief, arguing:
the claimed final production output device represents a device
for rendering a hard copy of the document. This is evidenced
by the following claim feature, which describes "rendering said
final document as a hard copy document with said production
output device." Neither the Waldorf nor Perry references
describe any production output device capable of "rendering
said final document as a hard copy document." Thus, the fact
that the Waldorf/Perry combination discloses a display is not
sufficient to establish the obviousness of the claimed
production output device because the production output device
is described and claimed as capable of rendering the final
document as a hard copy document.
Reply Br. 14.
We disagree with Appellant that "[n]either the Waldorf nor Perry
references describe any production output device capable of 'rendering said
final document as a hard copy document.'" Id. We emphasize again that the
Examiner relies, in pertinent part, on Sangroniz (i-f 25), that expressly
discloses the rendering "for printing." Final Act. 12. Moreover, Appellant
admits that a printer is a rendering device. See App. Br. 33: "documents are
sent to a rendering device (i.e. a printer) for final production."
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding contested limitation L4 of
representative claim 1.
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Accordingly, for at least the aforementioned reasons, we sustain the
Examiner's rejection B under§ 103(a) of representative independent
claim 1.
Claims 5, 8-12, 14-18, and 20 rejected under§ 103 Rejection B
The remaining claims also rejected under rejection B, and not argued
separately below (i.e., grouped claims 5, 8-12, 14--18, and 20), fall with
representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
Dependent Claim 2 rejected under§ 103 Rejection B
Claim 2 recites: "The method of claim 1 further comprising
modifying said document for printing upon receiving said document for
printing."
Appellant notes the Examiner's reliance on Waldorf (col. 6, 11. 26-37)
and Sangroniz (i1i125, 33, and Fig. 2) to support the rejection. App. Br. 34.
Appellant contends that Waldorf s "idea that a web designer can change the
appearance of a webpage as described in the reference does not teach or
suggest modifying an electronic document before that document is printed
wherein that document will be printed as described in the claims." Id.
Appellant also contends "neither Waldorf nor Sangroniz have anything to do
with the integration of workflow and rendering logic to provide a what you
see is what you get version of a document before it is printed, allowing the
user to verify the way the document will look before it is converted to a
hardcopy document." App. Br. 34--35 (emphasis added).
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In response, the Examiner further explains the basis for the rejection:
"the broadest reasonable interpretation is used when reading the claims, and
that, as above, a webpage qualifies as a document ( and may be printed as a
hard copy if desired)." Ans. 13.
Waldorf teaches or suggests the claimed WYSIWYG feature: "The
page layout designer can provide a collection of pre-built GUI components
for use by the user in designing web pages. In one implementation, the page
layout designer includes a web editor using a 'what you see is what you get'
('WYSIWYG') architecture." Col. 5, 11. 26-30.
Perry also teaches or suggests the claimed WYSIWYG feature: "A
Web designer will usually use one of the WYSIWYG (What You See Is
What You Get) Web designing packages that are on the market." ,r 9.
We find Waldorf teaches modifying an electronic document: "The
page layout designer can provide the user with a canvas for laying out or
modifying web page components." Col. 5, 11. 34--36. As noted above, the
Examiner relies, in pertinent part, on Sangroniz (i-f 25), that expressly
discloses the rendering "for printing." Final Act. 12.
Moreover, we find the Examiner's proffered combination of familiar
elements would have merely produced a predictable result. KSR, 550 U.S. at
401 ("[A] combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.").
For at least these reasons, we find a preponderance of the evidence supports
the Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding rejection B of dependent claim 2.
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Dependent Claim 3 rejected under§ 103 Rejection B
Claim 3 recites: "The method of claim 1 further comprising
configuring a workflow management module to provide support for editing
and annotating said document for printing by a user providing a what you
see is what you get experience."
The Examiner finds Waldorf col. 5, lines 1-30 teaches a WYSIWYG
experience, in which the user is a web page designer and the page layout
designer includes a web editor that provides a WYSIWYG architecture.
Final Act. 13.
Appellant contends:
the Waldorf reference describes means for editing the content
of a webpage. Designing a webpage flow process is not
equivalent to annotating a document for printing as claimed.
Furthermore, the Appellant respectfully asserts that the cited
material offers nothing equivalent to the claimed worliflow
management module to provide support for editing and
annotating a document in any capacity.
App. Br. 35 ( emphasis added).
As previously noted, we find the Specification broadly describes a
"workflow management application" using exemplary, non-limiting
language: "A workflow management module can be configured to provide
support for editing and annotating the document by a user and a result of the
respective operations can be visually represented in a user interface." Spec.
,r 9 (emphasis added). As also previously noted, we find Waldorf teaches or
suggests the claimed WYSIWYG feature. Col. 5, 11. 26-30. Perry (i-f 92)
also teaches or suggests the claimed WYSIWYG feature.
We agree with the Examiner' response (Ans. 13) that Appellant's
arguments are grounded on the erroneous premise that the claimed
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"documents" exclude web pages. We conclude a broad but reasonable
interpretation of the claim term "document" is appropriate in light of
Appellant's description in the Specification:
WYSIWYG, is an acronym for "What You See Is What You
Get", an approach that is utilized in computing and data
processing to describe content displayed during editing that
appears very similar to a final output, which may be, for
example, a rendered document, a web page, a slide presentation
or even a lighting for a theatrical event, etc. WYSIWYG
implies a user interface that permits a user to view something
very similar to the end result while the document is being
created. A typical WYSIWYG application can
provide a high-quality rendered output and/or a high-quality
onscreen output and allow the user to visualize what the
document may look like when rendered.
Spec. ,r 26 ( emphasis added).
Buttressing the Examiner's findings, we note Perry teaches creating
workflow documents, albeit for a different purpose than that claimed by
Appellant 1°:
The present invention also extends to a method of
designing a dynamic response document such as a Web
page, the method comprising creating a workflow document
including a plurality of workflow tasks, wherein the creating
step comprises specifying a plurality of first type of workflow
instructions for retrieving data and a plurality of second
type of corresponding workflow instructions for converting
the retrieved data into a corresponding plurality of commonly
understood format language fragments.
Perry i159.
10 [NJ either the particular motivation nor the avowed purpose" of the
[Appellant] controls" in an obviousness analysis. KSR, 550 U.S. at 419.
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For at least these reasons, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding rejection B of dependent claim 3.
Dependent Claim 4 rejected under§ 103 Rejection B
Claim 4 recites: "The method of claim 1 further comprising
modifying said workflow via said rendering code associated with said
rendering logic."
The Examiner finds: "Waldorf, as modified by Perry, discloses
modifying said workflow via said rendering code associated with said
rendering logic (Perry [0015]-[0020][0054] A pre-written workflow
document calls an XML instruction that dynamically generates a new
workflow document which contains an XSL formatting instruction for the
user's particular browser[0054])." (Final Act. 14) (emphasis omitted).
However, Appellant contends:
the claim describes modifying a workflow via rendering code
associated with a rendering logic. The cited material makes no
mention of a rendering logic in any capacity; much less that the
rendering logic is related to a rending code. Thus, the
Appellant respectfully asserts that the reference fails to make
obvious a rendering code and rendering logic as claimed.
App. Br. 36.
In response, the Examiner further explains the basis for the rejection:
"it is inherent when generating a web page that it is rendered. This requires
rendering code." Ans. 14.
We additionally note Perry (i-f 18) teaches "[t]he construction ofa
document written in a markup language (such as a Web page, for example)
can thus be reduced to the assembly, execution and then conversion
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rendering of multiple worliflow tasks." (Emphasis added). As discussed
above regarding limitation L3 of claim 1, Perry (i-f 93) also discloses
rendering code for producing (i.e., rendering) a Web page.
We find the evidence cited by the Examiner (Final Act. 14) is
sufficient to show that "the natural result flowing from the operation as
taught would result in the performance of the questioned function." PAR
Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194--95 (Fed. Cir. 2014)
(internal citation omitted).
For at least these reasons, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding rejection B of dependent claim 4.
Dependent Claim 7 rejected under§ 103 Rejection B
Claim 7 recites: "The method of claim 3 further comprising
configuring said workflow management module to provide at least one tool
for transmitting said document for printing and an associated ticket to said
production output device for final production."
Appellant admits that Sangroniz teaches a job ticket:
The Appellant respectfully acknowledges that the
Sangroniz reference includes reference to a 'job ticket" or
"complete job ticket".
App. Br. 39.
However, Appellant argues:
claim 7 describes a workflow management module that
provides a tool for transmitting a document and associated
ticket. The Appellant respectfully asserts that the combined
prior art does not teach or suggest, and no citation has been
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Id.
provided to support, a teaching or suggestion of a tool for
transmitting a document and a ticket as claimed.
We note the Examiner relies on Waldorf for teaching or suggesting
the transmitting feature, citing "Waldorf col. 4, lines 49-67 and col. 5, lines
1-30":
Through the deployment of web pages that are developed with
the page layout designer and page flow designer tools, the
business analyst can provide enterprise-wide, internal and
external access to web applications across networks such as an
intranet, or the Internet[ col. 4, lines 49-67] where the at least
one tool for transmitting the document to the client computer
10 is the [I]nternet 14 as used in the deployment of the web
pages by Waldorf s system and where Examiner notes that the
[I]nternet is capable of transmitting an associated ticket as
well[.]
Final Act. 14--15 ( original emphasis omitted and emphasis added).
An obviousness inquiry is not limited to the prior art's preferred
embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370
(Fed. Cir. 2007).
Here, we again find the Examiner's proffered combination of familiar
elements would have merely produced a predictable result. KSR, 550 U.S. at
401 ("[A] combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.").
For at least these reasons, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding rejection B of dependent claim 7.
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Remaining Claims 6, 13, and 19 rejected under§ 103 Rejection C
Dependent claim 6 is representative of this group of claims: "The
method of claim 5 further comprising configuring said user interface to
display a visual control for inputting control values comprising a starting
number of a Bates range, for editing said document for printing."
(Emphasis added).
The Examiner took Official Notice in the Final Action regarding the
claimed Bates range:
[The] Examiner takes Official Notice that providing a visual
control for inputting a starting number was well known at the
time of invention to persons of ordinary skill in the art. For
example, Microsoft Office Word, one of the most widely used
word processing applications, has provided the ability to select
a starting number for numbering pages of a document since at
least Word 2003.
Final Act. 18.
Appellant notes the Examiner's reliance on Official Notice:
The Examiner took Official Notice that providing a
visual control for inputting a starting number was well known
at the time of invention to persons of ordinary skill in the art.
The Final Office Action argued for example, Microsoft Office
Word, one of the most widely used word processing
applications, has provided the ability to select a starting number
for numbering pages of a document since at least Word 2003.
App. Br. 41.
Appellant contends:
The Appellant respectfully asserts that the specific claim
language describes "a starting number of a Bates range." The
"Bates range" is not an intended use of the starting number.
Instead, the Bates range is its own stand-alone feature of the
claim, which describes the character of the starting number.
The Examiner "interpretation" of a Bates number as "providing
page numbers for a document" is incorrect. Bates numbering is
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more accurately described as a method of indexing documents
wherein a number and or identifier are provided for a series of
independent documents where the index continues through the
separate documents.
The Examiner has admittedly failed to make reference to
anything which teaches or suggests the use of Bates numbering
in any capacity, relying instead on the assertion that the Bates
range is an intended use.
App. Br. 42.
To traverse the Examiner's taking of Official Notice, Appellant "must
specifically point out the supposed errors in the examiner's action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art." See MPEP § 2144.03 (emphasis
added). An adequate traverse of the Examiner's taking of Official Notice
must contain adequate information or argument to create on its face a
reasonable doubt regarding the circumstances justifying the Examiner's
notice of what is well known to one of ordinary skill in the art. In re Boon,
439 F.2d 724, 728 (CCPA 1971).
Here, Appellant has not stated why the noticed fact is not considered
to be common knowledge or well-known in the art. Nor do we find a
definition in Appellant's Specification for the claim language: "a starting
number of a Bates range." The Specification (i-f 29) merely mentions:
"Further, the interface 3 80 may provide for a dialog box or other visual
control for inputting control values for the edit or annotation such as the
starting number of a Bates range."
Buttressing the Examiner's taking of Official Notice (Final Act. 18),
we note US Patent 484,389 ("CONSECUTIVE NUMBERING
MACHINE"), Serial No. 349,452, to inventor Edwin G. Bates of New York,
NY, issued on October 18, 1892, describes subject matter that lapsed into the
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public domain well over a century ago: "machines for printing consecutive
numbers, designed particularly to be set up with type in a printer's form and
to advance the number printed by it at each impression." Page 1 of US
patent 484,389 description, column 1, lines 9--13. (Emphasis added). 11
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding the contested "Bates range" numbering
limitation of representative claim 6. Grouped claims 13 and 19 (not argued
separately and also rejected under rejection C) fall with claim 6. See
37 C.F.R. § 4I.37(c)(l)(iv). Accordingly, we sustain rejection C of claims
6, 13, and 19.
Reply Brief
To the extent Appellant may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
The Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more.
The Examiner did not err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a), as being obvious over the cited combinations of references.
11 A downloadable PDF copy of US Patent 484,389, to inventor Edwin G.
Bates of New York, NY, issued on October 18, 1892, is available on Google
Patents.
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DECISION
We reverse the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-20 under pre-
AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
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. § 4I.50(f).
AFFIRMED
33