Kebron Dejene

Patent Trials and Appeals Board

Jul 2, 2020

2019006871 (P.T.A.B. Jul. 2, 2020)

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.
14/168,371 01/30/2014 Kebron G. Dejene KDEJENE.001US 6126
86671 7590 07/02/2020
Nwamu, P.C.
Patent and Trademark Law
7751 Carondelet Ave
Suite 405
Clayton, MO 63105
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
eofficeaction@appcoll.com
fidel@nwamu.com
ip.mail@nwamu.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEBRON G. DEJENE
Appeal 2019-006871
Application 14/168,371
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 11–31. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor, Kebron
Dejene. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
According to the Appellant, the “present invention relates generally to
communication systems and methods and more specifically to
communication systems and methods for executing agreements.” Spec. ¶ 3.
The Specification describes that in agreements between two parties,
“one or more parties can claim that they never executed or signed the
agreement in question. If this happens, the non-repudiating party must
attempt to prove that the repudiating party did sign the agreement.” Id. ¶ 5.
In order to address efforts a non-repudiating party must undertake if
the other party attempts to repudiate (id. ¶¶ 6–7), the invention “generates an
identifier, namely, a numeric or alphanumeric number, uniquely associated
with said document,” and then “captures consecutive video frames of the
user verbalizing the identifier that is uniquely associated with the
document.” Id. ¶ 11.
The claims recite that a “representation” of the frames may be
embedded in the document. In addition, “the consecutive video frames are
stored as a video file and then stored with the document.” Spec. ¶ 71. Thus,
a representation of “consecutive video frames” are embedded within an
electronic document that is the agreement, and the agreement document is
linked to a separately-stored and playable video file also containing
consecutive video frames of the signer verbalizing the identifier of the
agreement. The video frames can be played back with audio.2

2 The Specification indicates that “initiation or interaction with the specific
signature block . . . on the document initiates playback of the consecutive
video files captured.” Spec. ¶ 79 (emphasis added). Based on this, we
construe that direct playback of video and audio is performed from the
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In order to counter a repudiation, the “non-repudiating party can
simply initiate playback of the consecutive video frames of the repudiating
party to display the captured consecutive video frames of the repudiating
party.” Id. ¶ 13. For example, a party to the agreement “can simply attach
the executed document and the consecutive video file to an email” to another
person. Id. ¶ 103. The Specification describes the significance of an
“identifier,” in that “[i]n one embodiment, identifiers are based on a hash of
the document that provides a unique identifier that can only be produced by
the document.” Id. ¶ 46. Thus, “parties cannot repudiate the fact that they
executed the agreement document since consecutive video frames of each
party vocalizing or verbalizing their acceptance of the document based on
the unique identifier for the document.” Id. ¶ 82.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, at a computer, an electronic document
configured to have data forming at least one or more video-
embeddable or video-associable signature areas or blocks;
using said client computer to generate an electronic
document dependent identifier that is dependent upon data in
said electronic document configured to have text forming the at
least one or more video-embeddable or video-associable
signature area blocks;
accepting signals from a user input device of said client
computer to capture consecutive video frames of a user statement
including the electronic document dependent identifier;
storing by said client computer, said consecutive video
frames in a video file and associating said video file with the
electronic document;

separate video file, not the playback of the frames, or representation,
embedded in the document.
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integrating or embedding the consecutive video frames or
a representation thereof in the at least one or more video-
embeddable or video-associable signature areas or blocks as the
signature of the electronic document; and
upon user selection or interaction with the representation
thereof in the at least one or more video-embeddable or video-
associable signature areas or blocks of the electronic document,
initiating playback of said video file including said consecutive
video frames displaying the user statement including said
electronic document dependent identifier.
REJECTIONS
The Examiner provisionally rejected claims 1–9, 11–13, 16–18, 24–
28, and 30 on the ground of non-statutory double patenting over claims 1, 4,
6, 11, and 13–19 of Application 14/803,031 (now US 10,701,305 B2, issued
June 30, 2020).
The Examiner rejects claims 1–8 and 11 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
The Examiner rejects claims 1, 2, 9, 11–23, and 25 under 35 U.S.C.
§ 112(b) as indefinite.
The Examiner rejects claims 1–9 and 11–31 under 35 U.S.C. § 101 as
directed to a judicial exception to patentable subject matter, without
“something more” in the form of an “inventive concept.”
The Examiner rejects claims 1–9 and 11–21 under 35 U.S.C. § 103 as
unpatentable over Smithies3 (US 2002/0031209 A1, published Mar. 14,
2002), Udani, (US 2012/0323796 A1, published Dec. 20, 2012), Pandey
(US 8,209,598 B1, issued June 26, 2012), and Carney (US 2010/0037062
A1, published Feb. 11, 2010)

3 We refer to each patent publication only by the first named inventor.
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The Examiner rejects claim 22 under 35 U.S.C. § 103 as unpatentable
over Smithies, Udani, Pandey (US 8,209,598 B1, issued Jun. 26, 2012),
Carney (US 2010/0037062 A1, published Feb. 11, 2010), and Bendik (US
2002/0002563 A1, published Jan. 3, 2002).
The Examiner rejects claim 23 under 35 U.S.C. § 103 as unpatentable
over Smithies (US 2002/0031209 A1, published Mar. 14, 2002), Udani (US
2012/0323796 A1, published Dec. 20, 2012), Pandey, Carney, and Deyo
(US 2008/0140679 A1, published June 12, 2008).
The Examiner rejects claims 24 and 25 under 35 U.S.C. § 103 as
unpatentable over Smithies, Udani, Pandey, Carney, and Wang (US
2004/0143841 A1, published July 22, 2004).
The Examiner rejects claims 26–31 under 35 U.S.C. § 103 as
unpatentable over Udani, Smithies, Pandey, Carney, and Wang.

Claim(s) 35 U.S.C. § Basis/Reference(s)
1–9, 11–13, 16–18,
24–28, 30
Double Patenting
1–8, 11 112(a) Written Description
1, 2, 9, 11–23, 25 112(b) Indefinite
1–9, 11–31 101 Ineligibility
1–9, 11–21 103 Smithies, Udani, Pandey, Carney
22 103 Smithies, Udani, Pandey, Carney,
Bendik
23 103 Smithies, Udani, Pandey, Carney, Deyo
24, 25 103 Smithies, Udani, Pandey, Carney, Wang
26–31 103 Udani, Smithies, Pandey, Carney, Wang
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OPINION
Double Patenting Rejection
The Appellant does not advance any argument specific to the double-
patenting rejection, instead stating, “Appellant will execute a terminal
disclaimer if necessary.” Appeal Br. 9.
We thus summarily sustain this rejection.

Written Description Rejection of Claims 1–8 and 11
Claim 1 recites a limitation to “generate an electronic document
dependent identifier that is dependent upon data in said electronic
document.” Independent claims 3 and 6 recite substantially identical
language. Claim 11, which depends from independent system claim 9,
recites “an identifier generation module that generates the electronic
document dependent identifier.” Original claim 1 recited “using said client
computer to generate an identifier, namely, a numeric or alphanumeric
number, uniquely associated with said document.”
The Examiner finds “the specification does not disclose a sufficient
number of species of steps or algorithms to generate a document dependent
identifier to show that Applicant had possession of at least the disclosed
generate functions, let alone the entire genus of functions encompassed by
the claim.” Non-Final Act. 17; see also Answer 6.
The Appellant argues the Specification supports possession of the
claim limitations, specifically at paragraphs 45 and 46 (Appeal Br. 10), and
in Figure 2, steps 706–12 (Reply Br. 6).
We agree with the Appellant.
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The Specification describes that “Identifier generation module 216
can be software or hardware that generates identifiers associated with
agreements in accordance with the present invention. In one embodiment,
identifiers are based on a hash of the document that provides a unique
identifier that can only be produced by the document.” Spec. ¶ 46.
These three independent claims thus broadly claim creating an
identifier dependent upon data in an electronic document, which the
Specification describes can be performed using a hash function.
The issue here concerns amendments of the claims, where the
language changed from generating an identifier “uniquely associated” with a
document, into generating an identifier dependent upon data in the electronic
document. The Examiner is essentially arguing that the Appellant did not
have possession of any method of generating this identifier based on
document data that would be encompassed within the broad claim language,
other than a hash function, which the Examiner asserts is not enough to
demonstrate possession of the “genus” of generating an identifier dependent
on data in the electronic document. Non-Final Act. 17.
However, our reviewing court explains:
A claim will not be invalidated on section 112 grounds simply
because the embodiments of the specification do not contain
examples explicitly covering the full scope of the claim
language. That is because the patent specification is written for
a person of skill in the art, and such a person comes to the
patent with the knowledge of what has come before. Placed in
that context, it is unnecessary to spell out every detail of the
invention in the specification; only enough must be included to
convince a person of skill in the art that the inventor possessed
the invention and to enable such a person to make and use the
invention without undue experimentation.
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LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir.
2005) (citations omitted).
The Examiner has not provided an explanation of why the ordinary
artisan, seeing the description of a “hash of a document,” would not
understand that the Appellant had possession of generating an identifier that
is dependent on data in the document. Instead, the Examiner argues:
That one of skill may have understood that a hash function is
used, that does not explain what hash function the appellant
used if the appellant indeed used a hash function, or if the
appellant did not use a hash function then what other function,
steps, or algorithm were used. There is no explanation of how
the electronic document and all of the possible media elements
of the document (e.g., text, images, video) are treated as input
to an algorithm, or even a hash function, that generates an
electronic document dependent identifier.
Answer 7.
The prior art of record, however, relied upon by the Examiner,
provides an indication of the understanding of the ordinary artisan. For
example, Carney discloses a checksum based on a document’s contents.
Carney ¶ 4 (“Some known methods of protecting digital documents include
calculating a checksum or signature of a digital document and providing the
checksum or signature to a receiver of the digital document.”). Carney also
discloses “calculating . . . a hash value (i.e., a value calculated from contents
of the HTML document).” Id. ¶ 17.
The evidence of record, therefore, provides support that the ordinary
artisan would understand that the Specification’s description of a hash value
supports the broad supports the broad claim language, and is not limited to
only methods that are specifically “a hash value.” Because the evidence
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indicates the ordinary artisan would understand the Appellant had possession
of the broad generation of a document identifier dependent on data in the
document, we do not sustain the rejection under 35 U.S.C. § 112(a).

Indefiniteness Rejection
Rather than advance arguments as to the indefiniteness rejection, the
Appellant “requests the Board to hold this rejection in abeyance pending
determination of the substantive rejections.” Appeal Br. 10. We find
untimely the Appellant’s arguments in the Reply Brief directed to
indefiniteness. Reply Br. 7–8. We note that these are new arguments by
Appellant for the first time in the Reply Brief and they are not in response to
a new argument raised by the Examiner in the Answer. See 37 C.F.R.
§ 41.41(b)(2). The Reply Brief is not an opportunity to make arguments that
could have been made during prosecution, but were not. Nor is the Reply
Brief an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.
See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative).
We therefore consider these arguments raised for the first time in the Reply
Brief to be waived.
Thus, we sustain the rejection under 35 U.S.C. § 112(b) of claims 1, 2,
9, 11–23, and 25.

Ineligible Subject Matter Rejection
The Examiner identifies an abstract idea in the independent claims as
follows:
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capture . . . a user statement including the . . . document
dependent identifier;
upon user selection or interaction with the representation
thereof in . . . signature areas or blocks of the . . . document,
[and] displaying the user statement including said . . . document
dependent identifier.
Non-Final Act. 28–29. The Examiner determines “[t]hese steps describe a
process of memorializing and executing a contract, which is similar to
concepts identified as abstract ideas by the courts,” and that “these concepts
relate to prudent or routine actions undertaken in the regular course of
business transactions to manage risks.” Id. at 29. The Examiner finds “the
problem to which the invention is directed arises from human behavior, i.e.,
contract repudiation, rather than from technology.” Id. at 30.
In analyzing the claims under Prong Two and Step 2B of the
Guidance (84 Fed. Reg. 50 (2019)), the Examiner finds the following
“additional elements” are “well-understood, routine, and conventional”
elements:
[A] A method comprising:
[B] receiving, at a computer, an electronic document configured
to have data forming at least one or more video-embeddable or
video-associable signature areas or blocks;
[C] using said client computer to generate an electronic
document dependent identifier that is dependent upon data in
said electronic document configured to have text forming the at
least one or more video-embeddable or video-associable
signature areas or blocks;
[D] accepting signals from a user input device of said client
computer to capture consecutive video frames of a user
statement including the electronic document dependent
identifier;
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[E] storing, by said client computer, said consecutive video
frames in a video file and associating said video file with the
electronic document;
[F] integrating or embedding the consecutive video frames or a
representation thereof in the at least one or more video-
embeddable or video-associable signature areas or blocks as the
signature of the electronic document; and
[G] upon user selection or interaction with the representation
thereof in the at least one or more video-embeddable or video-
associable signature areas or blocks of the electronic document,
initiating playback of said video file including said consecutive
video frames displaying the user statement including said
electronic document dependent identifier.
Non-Final Act. 31–35.
As to limitation [B] the Examiner explains:
The Federal Circuit in Electric Power Group found that reciting
a particular source or content of information does not by itself
differentiate an abstract idea from an ordinary mental process.
Although a person could not capture, store, associate, embed, or
integrate consecutive frames in a video file by mental activity,
there is nothing significant or meaningful about the functions
performed on the video file by the computer because they are,
as discussed above, well-understood, routine, and conventional
functions that a generic computer can perform on data.
Non-Final Act. 34. However, we do not discern any evidence, from the
Examiner’s statements, that it is well-understood, routine, and conventional
for a word processing document to have “video-embeddable or video-
associable signature areas or blocks” of a document, as recited in limitation
[B].
As to limitation [F], the Examiner finds: “Integrating or embedding
video and other media files into an electronic document is widely prevalent
and in common use in the relevant field, as shown by numerous references
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to this function in the prior art of record.” Id. (citing “Sherman (cl:37-48);
McCurdy (0014, 39); Pulier (0027, passim); Huynh (0169); Wynn (0037);
Ternasky (0016); Karman (0020, 21, 24); Pandy (c6:20-54, c9:9-c10:2);
Palm (0002); Allawi (0003); Burge (0061, 86)”). The Examiner then quotes
from “Pulier, 0005”: “Not only are there numerous references, but they state
that ‘[i]t is quite common today to have a video clip integrated into a
document object.’” Id.
The Examiner’s reliance on Pulier (US 2002/0083091 Al, published
June 27, 2002) is unconvincing. The cited paragraph, in background,
describes web page technology:
It is quite common today to have a video clip integrated into a
document object, such as a web page. These document objects,
however, typically display the video in a separate window
associated with a particular media player, and make no attempt
to integrate the video images into the background or other parts
of the document object.
Pulier ¶ 5. The Examiner has not demonstrated that the claimed “electronic
document” can be construed to encompass web pages or a document object.
More importantly, this one reference alone is insufficient to establish
that the operation is well-understood, routine, and conventional in the
computing arts. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018) (“Whether a particular technology is well-understood, routine, and
conventional goes beyond what was simply known in the prior art. The
mere fact that something is disclosed in a piece of prior art, for example,
does not mean it was well-understood, routine, and conventional.”). Also,
the Examiner has not explained how the other references, cited only by a
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single name each, demonstrate that the “additional element” claim
limitations are all well-understood, routine, and conventional.
For this reason, the Examiner has erred in establishing a prima facie
case of ineligibility under Step 2B of the Guidance. We thus do not sustain
the rejection of claims under 35 U.S.C. § 101.
We note that we have not made a determination of whether the claims
recite a judicial exception, or whether the claims integrate a judicial
exception into a “practical application,” such as by improving the
authentication of electronic documents.

Obviousness Rejection of Claims 1–9 and 11–21
The Appellant asserts the “Examiner relies on Figure 6 of Smithies to
disclose “an agreement or an ‘electronic’ document,” but that “Figure 6 of
Smithies does not disclose the agreement or an electronic document of any
kind.” Appeal Br. 22–23 (citing Non-Final Act. 51 ¶ 3); see also Appeal
Br. 23–24 (“erroneous characterization of Smithies as providing an identifier
for the agreement and Smithies does not provide such identifier.”).
We are not persuaded by the Appellant’s arguments, because they
attack a reference the Examiner did not rely on for the claimed limitations.
The Examiner finds:
Smithies does not expressly disclose (in italics) receiving, at a
computer, an electronic document configured to have data
forming at least one or more video-embeddable or video-
associable signature areas or blocks; using said client computer
to generate an electronic document dependent identifier that is
dependent upon data in said electronic document.
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Non-Final Act. 52. The Examiner further finds “Udani . . . specifically
teaches” these claim limitations, at paragraphs 165–68. Id. at 53.
We are thus not persuaded by the Appellant’s arguments, because
although the Examiner indicates that Smithies suggests certain claim
features, the rejection relies on the explicit disclosure of those limitations in
Udani, not Smithies. For this reason, we sustain the rejection of claims 1–9
and 11–21 as obvious.

Rejections of Claims 22–25
The Appellant argues that none of Bendik, Deyo, or Wang “cure the
deficiencies of Smithies, Udani, Pandey and Carney.” As we concluded
above, the Appellant has not demonstrated any shortcomings in the rejection
based on Smithies, Udani, Pandey, and Carney. Therefore, we sustain the
rejections of claims 22–25 as obvious.

Rejection of Claims 26–31
We are not persuaded by the Appellant’s arguments that the Examiner
“conflates” Smithies with the Smithies patent 6,091,835 described in
background in Smithies, that relying on paragraphs 11 and 46 of Smithies is
incorrect because the two paragraphs describe “different systems,” and that
“Smithies ’209 and Smithies ’835 are not properly combined.” Appeal
Br. 27–28.
In the rejection of claim 26 (Non-Final Act. 101–12), when
establishing a motivation to modify Udani with “the user reading the
identifier of a contract itself as part of the recorded media, as taught by
Smithies,” the Examiner finds reasons the combination would be
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advantageous in both paragraphs 11 and 46 of Smithies. Id. 106–107.
Paragraph 11 describes the Smithies ’835 patent, and the Examiner draws
from it that “linking the identity of the affirming party to the matter in the
electronic document” would be advantageous. Id. Paragraph 46 describes
the invention of Smithies, and the Examiner draws from it that “combining
the forensic admissibility, independent archival nature, and possibility for
instant notification of assent improves the utility and practicability of the
recorded media approach.” Id.
The Examiner thus does not “conflate” the two Smithies references, or
combine them, but merely draws two different reasons, from two different
parts of Smithies, for the combination of a feature with the Udani system.
This does not demonstrate error on the part of the Examiner.
We find untimely the Appellant’s argument that “the Examiner has
not identified reasons that would have prompted a person of ordinary skill in
the relevant field to combine the prior art elements in the manner claimed,”
such as “the combination of Carney.” Reply Br. 9.
We note that these new arguments were raised by Appellant for the
first time in the Reply Brief, and they are not in response to a new issue
brought up by the Examiner in the Answer. Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). We therefore consider this
argument, raised for the first time in the Reply Brief, has been waived.
For these reasons, we sustain the rejection of claims 26–31 as
obvious.
CONCLUSION
The Examiner’s rejections are AFFIRMED. More specifically, the
indefiniteness, double patenting, and obviousness rejections are affirmed,
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and the written description and subject matter ineligibility rejections are
reversed.
DECISION SUMMARY
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–8, 11 112(a) Written
Description
1–8, 11
1, 2, 9, 11–
23, 25
112(b) Indefinite 1–2, 9, 11–
23, 25

1–9, 11–31 101 Ineligibility 1–9, 11–31
9, 11–13,
16–18, 24–
28 30
Double Patenting 9, 11–13, 16–
18, 24–28, 30

1–9, 11–21 103 Smithies, Udani,
Pandey, Carney
1–9, 11–21
22 103 Smithies, Udani,
Pandey,
Carney, Bendik
22
23 103 Smithies, Udani,
Pandey, Carney,
Deyo
23
24–31 103 Smithies, Udani,
Pandey, Carney,
Wang
24–31
Overall Outcome 1–9, 11–31

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED