Schrichte, Christopher K.

Patent Trials and Appeals Board

Sep 21, 2020

12454561 - (D) (P.T.A.B. Sep. 21, 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.
12/454,561 05/18/2009 Christopher K. Schrichte 062A.0008 .U1(US) 4222
29683 7590 09/21/2020
Harrington & Smith, Attorneys At Law, LLC
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
PACHOL, NICHOLAS C
ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTOPHER K. SCHRICHTE
____________________

Appeal 2019-001641
Application 12/454,5611
Technology Center 2600
____________________

Before THU A. DANG, KRISTEN L. DROESCH, and
MONICA S. ULLAGADDI, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 In a prior Decision (Appeal Number 2015-003086, decided August 15,
2016, hereinafter “Prior Dec.”), we affirmed the Examiner’s rejections of
claims 8–10 under 35 U.S.C. § 102(b) over Quaeler; and of claims 1–7 and
11–20 under 35 U.S.C. § 103(a) over the teachings of Quaeler in further
view of Luther, Official Notice, Carlson, Nakashita, and/or Baylis.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–18, 21, and 22 (Appeal Br. 2), which constitute
all the claims pending in this application.2 Claims 19 and 20 were
previously cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
A. INVENTION
According to Appellant, the invention relates to “creating redacted
documents,” and, more particularly, to “automated redaction.” Spec. ¶ 2.

B. ILLUSTRATIVE CLAIM
Claim 1 is illustrative of the subject matter on Appeal and is
reproduced below:
1. A method comprising:
scanning a plurality of documents by a scanner to form
new respective electronic scanned documents, where the
plurality of documents comprise at least two different forms of
documents which are scanned;
determining the form of each of the plurality of
documents which have been scanned, where the form is
determined based, at least partially, upon the scanning of the
plurality of documents by the scanner; and
based upon an initial opening event of at least one of the
new electronic scanned documents transitioning from a non-
opened state to an open state, redacting a cell in the at least one
new electronic scanned document at a time in which the initial
opening event occurs, where the redacting is based upon the
determined form of the document which was scanned to form

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is TeraDact
Solutions, Inc. Appeal Br. 1.
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the at least one scanned document, to thereby form a scanned
redacted document.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Name Reference Date
Luther US 6,449,065 B1 Sept. 10, 2002
Gavin US 7,428,701 B1 Sept. 23, 2008
Quaeler US 2007/0030528 A1 Feb. 8, 2007
Baylis US 2007/0219966 A1 Sept. 20, 2007
Carlson US 2008/0049271 A1 Feb. 28, 2008
Nakashita US 2008/0180765 A1 July 31, 2008

Claims 1, 2, 4–7, 11, 12, 14, 15, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Quaeler, Luther, and Gavin.
Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Quaeler, Luther, Gavin, and Carlson.
Claims 8–10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Quaeler and Gavin.
Claims 16 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Quaeler, Nakashita, and Gavin.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Quaeler, Luther, Gavin, and Baylis.
II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that the combination of Quaeler, Luther, and Gavin teaches or
suggests “based upon an initial opening event of at least one of the new
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electronic scanned documents transitioning from a non-opened state to an
open state, redacting a cell in the at least one new electronic scanned
document at a time in which the initial opening event occurs.” Claim 1
(emphasis added).
III. ANALYSIS
In deciding Appeal No. 2015-003086 (“Prior Decision or Prior Dec.”),
we affirmed the Examiner’s rejections of claims 8–10 under 35 U.S.C. §
102(b) over the Quaeler; and of claims 1–7 and 11–20 under 35 U.S.C. §
103(a) over the teachings of Quaeler in further view of Luther, Official
Notice, Carlson, Nakashita, and/or Baylis. See Prior Dec. 5–11. In
particular, we agreed with the Examiner that, in Quaeler, “the step of
opening is a basis for the redaction process” because in order to redact an
already “opened” document, “[a]n ‘opening the scanned version’ step must
occur in order for the redacting to automatically occur.” Id. at 6 (alteration
in original) (citing prior Ans. 15).
In the present Appeal, independent claim 1 has been amended to
recite, inter alia, the redacting occurs “based upon an initial opening event
of at least one of the new electronic scanned documents transitioning from a
non-opened state to an open state,” and “at a time in which the initial
opening event occurs.” Claim 1. Independent claims 8 and 16 were
similarly amended. According to Appellant, “the claims as they currently
stand have been amended versus the claims that were pending during Appeal
No. 2015-003086.” Appeal Br. 6. In particular, according to Appellant,
changes to the claims include “the distinguishing feature regarding the
timing or temporal aspect of the redaction,” namely, “that redacting of a
cell in the document is at a time in which an initial opening event
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occurs,” where “the claim defines an initial opening event as when a
document is transitioning from a non-opened sate to an open state.” Id.
Appellant contends that, in rejecting the claim 1, “it appears that the
examiner has been not reviewing the actual language in claim 1,” but instead
“is determining the patentability of claim 1 based upon language which is
not in the claim.” Appeal Br. 7. According to Appellant, “[t]he recited
language of claim 1 requires more than redaction being done on a document
which has already been opened,” but, rather, it requires that the redaction
“be based upon the initial opening event” and “at the time in which the
initial opening event occurs,” whereas “[t]he examiner has been ignoring the
timing/temporal aspect in the claim language.” Id. at 8.
According to Appellant, in the prior Answer, the Examiner has
admitted that “the redaction disclosed in Quaeler et al. merely occurs
‘subsequent’ to the opening of the document.” Appeal Br. 9 (citing prior
Ans. 15). Appellant then contends Gavin similarly teaches that “the
redaction program is loaded and begins running after the user opens the PDF
file containing the document to be redacted.” Id. at 12 (citing Gavin, 3:1–7).
We have considered all of Appellant’s arguments and evidence
presented. We agree with Appellant that the preponderance of the evidence
on this record does not support the Examiner’s legal conclusion that claim 1
would have been obvious over the combination of Quaeler, Luther, and
Gavin.
We disagree with the Examiner that claim 1 “merely requires
redaction to occur on an opened document (i.e. a document that has
transitioned from closed to open).” Final Act. 2–3. Although the Examiner
refers to our Prior Decision to contend that the Board “found that the
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opening process is necessarily a basis for the redaction when redaction
occurs on an opened document” (id. at 3 (citing Prior Dec. 6)), as Appellant
points out, the recited language of claim 1 has been amended to require that
the redaction “be based upon the initial opening event” and “at the time in
which the initial opening event occurs.” Appeal Br. 8. We agree with
Appellant that the Examiner failed to adequately consider “the
timing/temporal aspect in the claim language,” as amended. Appeal Br. 8.
More particularly, we are persuaded that Quaeler and Gavin merely teach or
suggest redacting or triggering redacting after opening the document, as
Appellant contends.
Thus, although the Examiner finds that “Quaeler’s teachings do in fact
disclose performing the redaction based on the opening of the document”
(Ans. 20), and that Gavin discloses that “opening the document immediately
triggers the loading of the redaction program” (id.), we are persuaded by
Appellant’s contentions that Quaeler, Luther, and Gavin fail to teach or
suggest “based upon an initial opening event of at least one of the new
electronic scanned documents transitioning from a non-opened state to an
open state, redacting a cell in the at least one new electronic scanned
document at a time in which the initial opening event occurs,” as recited in
claim 1.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding the combination of Quaeler and Gavin teaches
or suggests the contested limitations of Appellant’s claim 1. The Examiner
does not rely on the teachings of Luther to address the aforementioned
limitations of claim 1. Final Act. 6–7; Ans. 4–7. Independent claim 8
includes limitations of commensurate scope. Dependent claims 2, 4–7, 9–
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12, 14, 15, and 21 depend on claims 1 and 8 respectively, and stand with
their respective independent claims. Accordingly, we do not sustain the
Examiner’s obviousness rejection of claims 1, 2, 4–7, 11, 12, 14, 15, and 21
over Quaeler and Gavin in combination with Luther; and the Examiner’s
obviousness rejection of claims 8–10 over Quaeler and Gavin.
The Examiner does not suggest, and has not established on this
record, that the additional cited references to Carlson, Nakashita, and/or
Baylis overcome the aforementioned deficiencies of Quaeler, Luther, and
Gavin. See Final Act. 12–21. Consequently, we are constrained by the
record before us to find that the Examiner also erred in concluding that: 1)
the combination of Quaeler, Luther, Gavin, and Carlson renders obvious the
subject matter of dependent claims 3 and 13 under 35 U.S.C. § 103(a); 2)
the combination of Quaeler, Nakashita, and Gavin renders obvious the
subject matter of dependent claims 16 and 22 under 35 U.S.C. § 103(a); and
3) the combination of Quaeler, Luther, Gavin, and Baylis renders obvious
the subject matter of dependent claims 17 and 18 under 35 U.S.C. § 103(a).

IV. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1–18, 21, and 22 under 35 U.S.C.
§ 103(a) are reversed.

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
11, 12, 14,
15, 21
103(a) Quaeler, Luther,
Gavin
1, 2, 4–7,
11, 12, 14,
15, 21
3, 13 103(a) Quaeler, Luther,
Gavin, Carlson
3, 13
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8–10 103(a) Quaeler, Gavin 8–10
16, 22 103(a) Quaeler,
Nakashita, Gavin
16, 22
17, 18 103(a) Quaeler, Luther,
Gavin, Baylis
17, 18
Overall
Outcome
1–18, 21,
22

REVERSED