DocuSign, Inc.

Patent Trials and Appeals Board

Feb 17, 2021

2019004886 (P.T.A.B. Feb. 17, 2021)

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.
14/610,979 01/30/2015 Inbar Gazit 36292-44622/US 8871
758 7590 02/17/2021
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
EXAMINER
HUYNH, CONG LAC T
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
02/17/2021 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte INBAR GAZIT, JOE CARTANO,
JENSON YAN, LAHINI ARUNACHALAM, and
TAMARA SOLORZANO TEJEDA
____________________

Appeal 2019-004886
Application 14/610,979
Technology Center 2100
____________________

Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–6 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a system for obtaining an electronic
signature. According to the Specification, the drawback of existing
approaches is that a user must interact with an electronic signature service to

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as DocuSign,
Inc. Appeal Br. 3.
Appeal 2019-004886
Application 14/610,979
2
set up and initiate a signing ceremony after the user prepares a document
with a word processor, which document cannot be edited once it is uploaded
to the electronic signature service. Spec. ¶ 3. The Specification describes
Appellant’s invention as a system for obtaining electronic signatures via
word processing applications. Id. ¶ 10. The Specification discloses a “code
module” or “markup module” that executes within a word processing
application to facilitate a document for electronic signature by transmitting
the document, including added signature tag markers, together with recipient
information, to a digital transaction service (DTS) that prepares a non-
editable version without signature tag markers. Id.
Independent claims 1 and 21, reproduced below, are illustrative
(disputed limitations are italicized).
1. A system for obtaining an electronic signature, the
system comprising:
a digital transaction service;
a client device executing a word processing application
that is editing a first document, wherein the client device is
configured to:
load a code module received from the digital transaction
service into the word processing application;
in the word processing application using an interface
provided by the code module, add a signature tag marker at a
location in the first document;
collect recipient information that identifies a first signer
via the code module executing within the word processing
application; and
transmit the first document and the recipient information
from the client device to the digital transaction service; and
wherein the digital transaction service is configured to:
Appeal 2019-004886
Application 14/610,979
3
receive the first document from the client device, wherein
the first document includes the signature tag marker that was
added to the first document by the word processing application;
receive recipient information from the client device; and
obtain an electronic signature from the first signer by:
preparing a second document that is a non-editable
version of the first document and that does not include the
signature tag marker;
associating a signing tag with a location on the second
document that corresponds to the location in the first document;
and
transmitting a request to the first signer to sign the
second document via the signing tag.
21. A system for obtaining an electronic signature, the
system comprising:
a digital transaction service including a computing device
communicatively coupled to a network for communication with
one or more client computing devices, the computing device
configured to:
transmit a code module to a first client device in
response to a request received from a word processing
application executing on the first client device;
receive a first document from the first client device,
where the first document includes:
a signature tag marker at a location, the signature tag
marker inserted in the document by the code module; and
recipient information that identifies a first signer inserted
in the document by the code module;
extract the recipient information from the first document;
obtain an electronic signature from the first signer by:
preparing a second document that is a non-editable
version of the first document and that does not include the
signature tag marker;
Appeal 2019-004886
Application 14/610,979
4
associating a signing tag with a location on the second
document that corresponds to the location in the first document;
and
transmitting a request to the first signer to sign the
second document via the signing tag.
Appeal Br. 24, 25–26 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Name Reference Date
Veluchamy US 2008/0235577 A1 Sept. 25,2008
Peirson US 2009/0025087 A1 Jan. 22, 2009
REJECTIONS
The Examiner maintains the following rejection:
Claims 35 U.S.C. § References
1–6, 21 103(a) Peirson, Veluchamy

ANALYSIS
Regarding independent claims 1 and 21, the Examiner finds Peirson
discloses a system for obtaining an electronic signature including a client
device executing a word processing application and, in the word processing
application, using an interface, adding a signature tag marker at a location in
the first document, collecting recipient information that identifies a first
signer via a code module executing within the word processing application,
and transmitting the first document and recipient information from the client
device to a digital transaction service. Final Act. 2–3 (citing Peirson ¶¶ 26–
30, Figs. 1, 4–9). The Examiner finds Peirson does not explicitly disclose
loading a code module received from a digital transaction service, but
Appeal 2019-004886
Application 14/610,979
5
determines that it would have been obvious to combine Veluchamy’s code
module functionalities into Peirson’s system to provide a user with a system
capable of embedding signatures into a written document. Id. at 3–4 (citing
Veluchamy ¶¶ 35–42). The Examiner relies on Peirson’s Figures 1 and 4–9
for the limitations recited in dependent claims 2–6. Id. at 4.
Appellant provides separate arguments for each rejected claim.
Independent Claim 1
Appellant contends the Examiner erred in rejecting claim 1 because
Veluchamy does not teach or suggest the recited “loading a code module
into a word processing application” nor loading a code module “received
from a digital transaction service.” Appeal Br. 12. Appellant asserts
Veluchamy discloses using software modules to perform manipulations of
an electronic document, but does not disclose “load[ing] a code module
received from a digital transaction service into a word processing
application” as recited. Id. Appellant acknowledges that Peirson shows user
interfaces associated with applying an electronic signature to a document. Id.
at 12–13 (citing Peirson ¶¶ 7–15). However, Appellant asserts that Peirson
does not teach the word processing application limitation executing on a
client device as required by claim 1, but, rather, a document manager
providing document creation capabilities in a system remote from a client
device. Id. at 13. Appellant argues the combination, at best, discloses
Veluchamy’s modules executing within Peirson’s document manager (a
cloud-based application) and accessed via web pages by a client device. Id.
We find Appellant’s arguments persuasive of reversible error.
The rejection is based on the Examiner’s broad claim interpretation
that the required usage of modules does not impart any limitation beyond
Appeal 2019-004886
Application 14/610,979
6
their functionality. Ans. 5–6. The Examiner finds the modules accessed and
used in Veluchamy and Pierson perform the claimed functionalities. Ans. 6.
These functionalities include a module that allows tags to be placed in
locations within a document, interfaces for receiving recipient information,
and a secure document signer module. Id. at 5–7; Veluchamy 28–29, 36–42,
Figs. 4a–5.
Although the Specification provides the modules “may be executed in
various ways” including “as a Web page,” Appellant provides support in the
Specification for distinguishing executing a module from loading a module.
Spec. ¶ 19; Reply Br. 1. Appellant directs us to the Specification’s
paragraphs 18 and 19 for disclosing dynamic receiving and loading of a code
module into a word processing application to perform an electronic signature
function. Id. at 2. Appellant also directs us to Figure 1 of Appellant’s
application as support for interpreting the recited digital transaction service
as “a computing system separate from a client device” rather than the broad
interpretation that the Examiner applies to the term. Id. at 2–3. Figure 1 is
reproduced below.
Appeal 2019-004886
Application 14/610,979
7

Figure 1 above is a block diagram of a user operating a word processing
application to prepare a document for electronic signature via a digital
transaction service. Spec. ¶ 5. According to Appellant, Figure 1 shows the
digital transaction service is a computing system separate from a sender
client device or signer client device and asserts that the cited references do
not disclose dynamically loading a code module or a code module received
from a separate computing system. Reply Br. 3–4.
We are persuaded that the preponderance of the evidence cited in this
Appeal record supports Appellant’s position. Accordingly, we reverse the
rejection of claim 1.
Dependent Claims 2–6
Claims 2–6 each depend from claim 1. In the Appeal Brief, Appellant
contends the Examiner erred in rejecting dependent claims 2–6 because
Peirson does not teach or suggest a word processing application executing
on a client device as discussed above in connection with claim 1. Appeal Br.
15–20. Because the Examiner’s rejections of claims 2–6 do not cure the
Appeal 2019-004886
Application 14/610,979
8
deficiencies discussed above in connection with claim 1, we likewise reverse
the rejections of claims 2–6 for the same reasons.
Independent Claim 21
The Examiner’s rejection of claim 21 is based on the same findings
for the rejection of claim 1. Final Act. 2–4. As discussed above in
connection with claim 1, the Examiner finds Veluchamy and Pierson’s usage
of modules to be loading as the applications are accessing and using various
modules to perform functionalities. Ans. 6.
In the Appeal Brief, Appellant contends the Examiner erred because
neither cited reference discloses “transmits a code module to a client device
in response to a request received from a word processing application
executing on the client device” as recited in claim 21. Appeal Br. 21. In the
Reply Brief, Appellant explains that the term “transmits a code module” as
recited in claim 21 is akin to claim 1’s “loading” of a code module,
therefore, this term distinguishes the claimed process from one of mere
execution of the code module. Reply Br. 1–2.
As discussed above with respect to claim 1, Appellant directs us to the
Specification’s paragraphs 18 and 19 for disclosing dynamic receiving and
loading of a code module into a word processing application to perform an
electronic signature function. Reply Br. 2. Appellant also directs us to Figure
1 in the application which shows the digital transaction service is a
computing system separate from a sender client device or signer client
device and asserts that the cited references do not disclose dynamically
loading a code module or a code module received from a separate computing
system. Id. at 3–4.
Appeal 2019-004886
Application 14/610,979
9
Appellant’s arguments are persuasive of error for essentially the same
reasons discussed above in connection with claim 1. Accordingly, we
reverse the rejection of claim 21.

For the above reasons and those provided in the Appeal Brief and the
Reply Brief, we reverse the Examiner’s § 103 rejection of claims 1–6 and
21.
CONCLUSION
The Examiner erred in rejecting claims 1–6 and 21.
DECISION
For the above reasons, we REVERSE the Examiner’s rejection of
claims 1–6 and 21.
In summary:
Claims
Rejected
35 U.S.C.
§  References Affirmed Reversed
1–6, 21 103(a)  Peirson, Veluchamy 1–6, 21

REVERSED