Ex Parte 7,035,830 B1 et al

Patent Trial and Appeal Board

Jan 31, 2018

95002063 (P.T.A.B. Jan. 31, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,063 08/01/2012 7,035,830 B1 30672.003 8726
63936 7590 01/31/2018
WILSON DANIEL SWAYZE, JR.
3804 CLEARWATER CT.
PLANO, TX 75025
EXAMINER
DESAI, RACHNA SINGH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

IMAGE-X LLC
Patent Owner and Appellant

v.

TYBERA DEVELOPMENTGROUP, INC.
Requester and Respondent

_______

Appeal 2017-011285
Reexamination Control No. 95/002,063
Patent No. US 7,035,830 B1
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and JENNIFER L.
McKEOWN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner Image-X LLC appeals under 35 U.S.C. §§ 134(b) and
315(a) (2002) from the rejection of claims 1–36 as set forth in the Right of
Appeal Notice (RAN) mailed January 29, 2016. Patent Owner filed a brief
(“PO App. Br.”) on June 8, 2016. Requester Tybera Development Group,
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Inc. filed a respondent brief (“Req. Br.”) on July 8, 2016. The Examiner
mailed an Examiner’s Answer (“Ans.”) on June 7, 2017 which incorporated
the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and
315.
We affirm.
The ’830 Patent issued to Shaikh on April 25, 2006. The ’830 Patent
concerns a document filing method and system. A user interface display is
connected to a server in communication with at least one remove compute
engine. The server is adapted to receive and display an electronic copy of a
document submitted from a remote location for filing with the user of the
server. An electronic stamping apparatus is adapted to impart an electronic
stamp on the submitted document responsive to a user input through the user
interface. A database in electronic communication with the server is adapted
to store the document after it is electronically stamped. The electronic stamp
can indicate that the document is accepted or rejected. Access to the server
may be limited to at least one authorized user uniquely identified to the
server prior to use of the electronic stamp. See Abstract.
Claim 1, which is illustrative of the appealed subject matter, reads as
follows:
1. A document filing method comprising the steps of:
using a user interface display connected to a server in electronic
communication with at least one remote compute engine having
URL capability, the server receiving and displaying an
electronic copy of a document being submitted from a remote
location for filing with the user of the server;
electronically stamping the electronic copy of the document
being submitted for filing responsive to a user input through the
user interface;
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storing in a database the document after the electronic stamp is
imparted to the document;
providing an electronic communication transmitting an
electronic copy of the document having the electronic stamp
imparted to the electronic copy of the document to the
submitter of the document for filing providing, as a security
measure, that the electronic stamping step can only be done
utilizing software running on a secure server system with access
for the purpose of such electronic stamping limited to at least
one authorized user uniquely identified to the server prior to
performing the electronic stamping step.

The Examiner relies upon the following references in rejecting the
claims:
Ginter et al. (US 6,185,683 B1, issued Feb. 6, 2001) (“Ginter”)

LegaLFile™ System Overview,
http://web.archive.org/web/19980525183633/http://www.legalfi
le.com/Coorporate/SystemOverview.cfm (1998) (“legaLFile”)

Digital File Stamp, http://web.archive.org/web/1998020520195
5/http://www.nmcourt.fed.us/ dcdocs/reference.html (“Digital
File Stamp”)

McMillan et al. “A Guidebook for Electronic Court Filing,”
West Group, Inc. (1998) (“Guidebook”)

Walker, Electronic Court Documents, “An Assessment of
Judicial Electronic Document and Data Interchange
Technology,” National Center for State Courts (1999) (“ECD”)

Electronic Case Files In The Federal Courts: “A Preliminary
Examination of Goals, Issues, and the Road Ahead, Discussion
Draft,” Administrative Office of the United States Courts
(1997) (“Electronic Case Files”)

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Apple, State-Federal Judicial Observer “Electronic Filing
Comes to State and Federal Courts” Special Technology Issue
12 (1996) (“State-Federal Judicial Observer”)

Egar, “Electronic Filing,” Fourth National Court Technology
Conference (CTC4) (1994) (“Electronic Filing”)

Georgia State University, “Electronic Court Filing White Paper:
Issues in Developing an Electronic Court Filing System” (GSU
Issues Paper”) (“GSU Issues Paper”).

The claims stand rejected as detailed below (see PO App. Br. 8–9).
The following rejections are made under 35 U.S.C. § 103(a).1

References Claims
legaLFile System Overview
(“legaLFile”) and Admitted Prior
Art (“APA”)
1, 2, 4–8, 11, 12, 14–16, 19, 20,
and 22–24
legaLFile and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26
legaLFile, Ginter, and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26
legaLFile, Ginter, Digital File
Stamp, and APA
9, 10, 17, 18, 25, and 26
The Guidebook for Electronic
Court Filing (“Guidebook”) and
APA
1, 2, 4–8, 11, 12, 14–16, 19, 20,
22–24, and 27-36
Guidebook and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26
Guidebook, APA, and Ginter 3, 9, 10, 13, 17, 18, 21, 25, and 26
Guidebook, APA, and Digital
File Stamp
9, 10, 17, 18, 25, and 26
Electronic Court Documents: An
Assessment of Judicial Electronic
Document and Data Interchange
Technology (“ECD”) and APA
1, 2, 4–8, 11, 12, 14-16, 19, 20,
22–24, and 27–36
ECD and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26

1 See RAN pp. 19, 33, 36, 38, 40.
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ECD, Ginter, and APA 3, 9, 10, 13, 17, 18, 21, 25, and 26
ECD, Digital File Stamp, and
APA
9, 10, 17, 18, 25, and 26
Electronic Case Files, State-
Federal Judicial Observer, and
APA
1–36
Electronic Filing, GSU Issues
Paper, and APA
1–36

Claims 1–11 and 25–36 stand rejected under 35 U.S.C. § 112(a), or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
Claims 11 and 19 stand rejected under 35 U.S.C. § 112(b), or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.

ISSUES
Patent Owner argues that legaLFile, the Guidebook, ECD, Electronic
Case Files, and Electronic Files, individually, do not disclose all the
limitations of the claimed invention. See PO App. Br. 5–21.
Patent Owner further contends that Ginter, Digital File Stamp, State-
Federal Judicial Observer, and GSU Issues Paper, individually, also do not
disclose all the limitations of the claimed invention. Id.
Patent Owner asserts that each of the amended or new limitations
rejected by the Examiner is supported by the specification of the ‘830 Patent.
PO App. Br. 22–23. Last, Patent Owner argues that claims 11 and 19 are not
indefinite under 35 U.S.C. § 112, second paragraph. PO App. Br. 24.
The arguments made by Patent Owner and Requester present us with
the following issues:
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1. Did the Examiner err in rejecting the claims over legaLFile in
combination with one or more of APA, Ginter, and Digital File Stamp?
2. Did the Examiner err in rejecting the claims over the Guidebook in
combination with one or more of APA, Ginter, and Digital File Stamp?
3. Did the Examiner err in rejecting the claims over ECD in
combination with one or more of APA, Ginter, and Digital File Stamp?
4. Did the Examiner err in rejecting the claims over Electronic Case
Files, State-Federal Judicial Observer, and APA?
5. Did the Examiner err in rejecting the claims over Electronic Filing,
GSU Issues Paper, and APA?
6. Did the Examiner err in rejecting the claims as lacking written
description support in the ’830 Patent?
7. Did the Examiner err in rejecting claims 11 and 19 as being
indefinite under § 112, second paragraph?
PRINCIPLES OF LAW
An argument that merely points out what a claim recites is
unpersuasive. 37 C.F.R. § 41.37(c)(1)(vii). Accord In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). “The test of obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
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structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. at 425.

ANALYSIS
REJECTIONS INVOLVING LEGALFILE AND APA
Patent Owner’s arguments concerning the rejection of claims 1, 2, 4–
8, 11, 12, 14–16, 19, 20, and 22–24 exclusively concern limitations of the
claims allegedly not disclosed by LegaLFile alone. See PO App. Br. 11–14.
One cannot, however, show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
Keller, 642 F.2d at 425.
For example, it is precisely to meet the various “independent of the
firewall” limitations of independent claims 1, 11, and 19 that the Examiner
cited to Patent Owner’s admission that a server independent of a firewall is
known in the art. ACP 18–19, citing ’830 Patent col. 4:32–37.
Patent Owner makes no attempt to contest the propriety of the
Examiner’s combination of legaLFile and APA. Patent Owner has not
explained why the Examiner’s citation of admitted prior art fails to supply
the teaching alleged by Patent Owner, and conceded by the Examiner, to be
missing from legaLFile. Patent Owner has also not persuasively argued why
it would not have been obvious to modify legaLFile in view of the admitted
prior art. Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claims 1, 11, and 19 over legaLFile and APA.
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Patent Owner alleges, without further explanation, that “[n]one of the
applied references discloses or suggest the claim matter recited in claims 3,
13, 21, and 22.” PO App. Br. 11. A naked recitation that corresponding
elements are not found in the prior art is not persuasive to show Examiner
error. See Lovin, 652 F.3d at 1357. Accordingly, we sustain the Examiner’s
§ 103(a) rejection of claims 3, 13, 21, and 22 over legaLFile and APA.
Patent Owner’s remarks concerning claims 27–36 are not germane to
rejections involving legaLFile, as claims 27–36 do not stand rejected over
any combination including legaLFile. See PO App. Br. 11–12.
Patent Owner’s mere recitations of the limitations of dependent claims
2, 4-8, 12, 14-16, 20, and 22-24 do not amount to persuasive argument that
the Examiner erred. See PO App. Br. 13–14 and Lovin, 652 F.3d at 1357.
Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 2, 4–8,
12, 14–16, 20, and 22–24 over legaLFile and APA.
Patent Owner makes no distinct argument for the patentability of
claims 3, 9, 10, 17, 18, 25, and 26 over legaLFile and APA. Accordingly,
we sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 17, 18, 25,
and 26 over legaLFile and APA.
Patent Owner’s argument that Ginter does not disclose or suggest the
“independent of the firewall” limitations of independent claims 1, 11, and 19
is not persuasive. PO App. Br. 14. The Examiner relied on APA to disclose
those limitations. Patent Owner’s remarks concerning the applicability of
Ginter to claims 27–36 is not germane to the rejection under appeal, because
claims 27–36 do not stand rejected over any combination involving Ginter.
See PO App. Br. 15. In the absence of persuasive argument by Patent
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Owner, then, we sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10,
13, 17, 18, 21, 25, and 26 (all dependent from one of claims 1, 11, and 19)
over legaLFile, APA, and Ginter.
Patent Owner’s argument that Digital File Stamp does not disclose or
suggest the “independent of the firewall” limitations of independent claims
1, 11, and 19 is not persuasive. PO App. Br. 16. The Examiner relied on
APA to disclose those limitations. Patent Owner’s remarks concerning the
applicability of Ginter to claims 27–36 is not germane to the rejection under
appeal, because claims 27–36 do not stand rejected over any combination
involving Ginter. See PO App. Br. 16–17. In the absence of persuasive
argument by Patent Owner, then, we sustain the Examiner’s § 103(a)
rejection of claims 9, 10, 17, 18, 25, and 26 (all dependent from one of
claims 1, 11, and 19) over legaLFile, APA, and Digital File Stamp.
REJECTIONS INVOLVING THE GUIDEBOOK AND APA
Patent Owner’s arguments concerning rejections that include the
Guidebook for Electronic Court Filing (“Guidebook”) parallel those made
concerning the legaLFile reference, and are unpersuasive for the same
reasons.
Patent Owner’s argument that the Guidebook does not disclose the
“independent of the firewall” limitations in independent claims 1, 11, and 19
amount to an unpersuasive attack on an individual reference where the
rejection is based upon a combination. PO App. Br. 17; See Keller, 642 F.2d
at 425. Patent Owner does not attempt to give reasons why the Examiner’s
combination of the Guidebook and APA fails to disclose or suggest the
claimed invention, or why the Examiner’s combination might not be legally
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appropriate. Accordingly, we sustain the Examiner’s § 103(a) rejection of
claims 1, 11, and 19 over the Guidebook and APA.
Patent Owner’s mere recitation of the limitations of claims 27–36 is
not persuasive to show that the Examiner erred. PO App. Br. 17. Such
recitation fails to satisfy the requirements of 37 CFR § 41.37(c)(1)(vii). See
Lovin, 652 F.3d at 1357.
Because Patent Owner makes no persuasive argument that the
Examiner erred, we sustain the Examiner’s § 103(a) rejection of claims 1, 2,
4–8, 11, 12, 14–16, 19, 20, 22–24, and 27-36 over Guidebook and APA. As
Patent Owner makes no separate argument, we also sustain the Examiner’s
§ 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26 over
Guidebook and APA.
Patent Owner presents no separate argument concerning the
Examiner’s rejection over the Guidebook, APA, and Ginter. Therefore, we
sustain the Examiner’s § 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21,
25, and 26 over Guidebook, APA, and Ginter.
Patent Owner presents no separate argument concerning the
Examiner’s rejection over the Guidebook, APA, and Digital File Stamp.
Therefore, we sustain the Examiner’s § 103(a) rejection of claims 9, 10, 17,
18, 25, and 26 over Guidebook, APA, and Digital File Stamp.
REJECTIONS INVOLVING ECD AND APA
Patent Owner’s arguments concerning rejections that include The
Electronic Court Documents: An Assessment of Judicial Electronic
Document and Data Interchange Technology (“ECD”) parallel those made
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concerning the legaLFile reference, and are unpersuasive for the same
reasons.
Patent Owner’s argument that ECD does not disclose the
“independent of the firewall” limitations in independent claims 1, 11, and 19
amount to an unpersuasive attack on an individual reference where the
rejection is based upon a combination. PO App. Br. 18; See Keller, 642 F.2d
at 425. Patent Owner does not attempt to give reasons why the Examiner’s
combination of the Guidebook and APA fails to disclose or suggest the
claimed invention, or why the Examiner’s combination might not be legally
appropriate. Accordingly, we sustain the Examiner’s § 103(a) rejection of
claims 1, 11, and 19 over ECD and APA.
Patent Owner’s mere recitation of the limitations of claims 27–36 is
not persuasive to show that the Examiner erred. PO App. Br. 18. Such
recitation fails to satisfy the requirements of 37 CFR § 41.37(c)(1)(vii). See
Lovin, 652 F.3d at 1357.
Because Patent Owner makes no persuasive argument that the
Examiner erred, we sustain the Examiner’s § 103(a) rejection of claims 1, 2,
4–8, 11, 12, 14–16, 19, 20, 22–24, and 27–36 over ECD and APA. As
Patent Owner makes no separate argument, we also sustain the Examiner’s
§ 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26 over ECD
and APA.
Patent Owner presents no separate argument concerning the
Examiner’s rejection over ECD, APA, and Ginter. Therefore, we sustain the
Examiner’s § 103(a) rejection of claims 3, 9, 10, 13, 17, 18, 21, 25, and 26
over ECD, APA, and Ginter.
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Patent Owner presents no separate argument concerning the
Examiner’s rejection over the Guidebook, APA, and Digital File Stamp.
Therefore, we sustain the Examiner’s § 103(a) rejection of claims 9, 10, 17,
18, 25, and 26 over Guidebook, APA, and Digital File Stamp.
REJECTION OVER ELECTRONIC CASE FILES
Patent Owner’s arguments concerning the rejection of claims 1–36 are
entirely comprised of attacks on the individual references: Electronic Case
Files, State-Federal Judicial Observer, or GSU Issues Paper. See PO App.
Br. 18–20. One cannot, however, show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. Keller, 642 F.2d at 425.
Patent Owner makes no attempt to contest the propriety of the
Examiner’s combination of Electronic Case Files, State-Federal Judicial
Observer, and APA. Patent Owner has not explained why the Examiner’s
citation of admitted prior art2 fails to supply the teaching alleged by Patent
Owner, and conceded by the Examiner, to be missing from Electronic Case
Files. Patent Owner has also not persuasively argued why it would not have
been obvious to modify Electronic Case Files in view of the admitted prior
art.
Patent Owner’s mere recitation of the limitations of claims 27–36 is
not persuasive to show that the Examiner erred. PO App. Br. 18–19. Such
recitation fails to satisfy the requirements of 37 CFR § 41.37(c)(1)(vii). See
Lovin, 652 F.3d at 1357.

2 ACP at 43–44.
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Patent Owner’s various statements that State-Federal Judicial
Observer does not disclose or suggest limitations of claims 1, 11, 19, or 27–
36, are not persuasive to show that the Examiner erred. PO App. Br. 20.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. Keller, 642
F.2d at 425.
Due to Patent Owner’s failure to set forth a persuasive argument that
the Examiner erred, we sustain the Examiner’s § 103(a) rejection of
independent claims 1–36 over Electronic Case Files, State-Federal Judicial
Observer, and APA.
REJECTION OVER ELECTRONIC FILING
Patent Owner’s arguments concerning the rejection of claims 1–36 are
entirely comprised of attacks on the individual references: Electronic Filing,
GSU Issues Paper, or Applicant’s admitted Prior Art (APA). See PO App.
Br. 19–21. One cannot, however, show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. Keller, 642 F.2d at 425.
Patent Owner makes no attempt to contest the propriety of the
Examiner’s combination of Electronic Filing, GSU Issues Paper, and APA.
Patent Owner has also not persuasively argued why it would not have been
obvious to modify Electronic Filing in view of GSU Issues Paper and APA.
Patent Owner’s various statements that GSU Issues Paper, individually, or
APA, individually, does not disclose or suggest limitations of claims 1, 11,
19, or 27–36, are not persuasive to show that the Examiner erred. PO App.
Br. 19-21. One cannot show nonobviousness by attacking references
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individually where the rejections are based on combinations of references.
Keller, 642 F.2d at 425.
Patent Owner has not set forth a persuasive argument that the
Examiner erred in rejecting claims 1–36 over the combination of Electronic
Filing, GSU Issues Paper, and APA. We sustain the Examiner’s § 103(a)
rejection.

REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
LOCAL SERVER, REMOTE SERVER
Patent Owner argues that the specification supports the claimed “local
server” and “remote server.” PO App. Br. 5. Patent Owner relies on the
’830 Patent’s description that “[t]he present invention can be owned and
operated directly by the governmental agency in question . . . either
maintained locally at the specific agency site or otherwise within the agency,
or remotely at the provider’s site.” ’830 Patent, col. 2:36–41. We are not
persuaded by Patent Owner’s argument. Instead, we agree with Requester
that the terms “local” and “remote” are not used in the ’830 Patent to modify
the term “server.” Resp. Br. 9; see RAN 4. The section cited by Patent
Owner uses the terms “locally” and “remotely” but makes no mention of a
server. We further agree with Requester that Figure 1 of the ’830 Patent
does not define “local” or “remote” with sufficient clarity to satisfy the
written description requirement. RAN 4.
As a result, we agree with the Examiner that the terms “local server”
and “remote server” constitute new matter not supported by the original
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specification. We sustain the Examiner’s rejection of claims 1 and 35 under
35 U.S.C. § 112, first paragraph.
“INDEPENDENT OF THE FIREWALL”
Patent Owner argues that the ’830 Patent specification supports the
claim phrase “independent of the firewall,” because disclosure that server 12
may be “protected behind a firewall” means that the server is independent of
the firewall. PO App. Br. 5–6.
We do not find Patent Owner’s argument to be persuasive. The ’830
Patent does not contain an express definition of “independent of a firewall”
as meaning “protected behind a firewall.” See Resp. Br. 10. Further, we
agree with Requester that “independent” may have a number of meaning,
but that the person having ordinary skill in the art would not equate
“independent of” with “behind.” Id.
THE ELECTRONIC STAMP
Patent Owner argues that the recitations in new claims 29, 30, and 31
that the received electronic copy of the electronic stamp is in a “spreadsheet
format,” “word processing format,” or “image format” are not new matter
because issued claim 15 recites that “the received electronic copy of the
document is in one or more of multiple formats, including the a spread sheet
format, an image format, and a word processing format.” PO App. Br. 6.
Patent Owner’s argument is not persuasive because original claim
only provides support for “the received electronic copy of the document.” It
does not provide support for “the received electronic copy of the electronic
stamp.”

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TRANSMITTED OVER A CLOUD
Patent Owner argues that the limitation “transmitted over a cloud” in
new claim 33 is not new matter because element 16 of Figure 1 provides
support for the claimed cloud. We are not persuaded, because element 16
represents the public switched telephone network (PSTN), rather than cloud
computing. Figure 1 is reproduced below:

Figure 1 of the ‘830 Patent is a block diagram of the system according to the
invention. See ’830 Patent, 2:10–11. “Network 16” is disclosed as one of
several alternatives, including an intranet, an internet, an extranet, or any
other network communications system including, at least in part, the Public
Switched Telephone Network (“PSTN”). See ’830 Patent 3:5–15. There is
no disclosure of cloud computing, or “on-demand computing,” as the term
would be understood by the person having ordinary skill in the art. See
RAN 8.
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ELECTRONIC STAMP ACTS AS AN ENVELOPE FOR DIFFERENT TYPES OF
INFORMATION
Claim 25 of the ’830 Patent recites “wherein the electronic stamp
includes the document envelope the data envelope and the content of the
document.” Claim 26 of the ’830 Patent recites “wherein the electronic
stamp displays the document envelope, the data envelope and the content of
the document.”
The Examiner rejects the claims under § 112, first paragraph,
concluding that “it is unclear as to how a stamp can display or include a
document envelope, a data envelope or the content of the document.” ACP
6. Whether a claim particularly points out and distinctly claims the subject
matter sought to be patented is an issue covered by § 112, second paragraph,
however. The Examiner has not explained why this claim language lacks
written description support or constitutes new matter.
Accordingly, we do not sustain the Examiner’s § 112, first paragraph
rejection on this basis.
§ 112, FIRST PARAGRAPH, CONCLUSION
Because each independent claim has been amended to contain
language subject to a new matter rejection (“independent of the firewall”),
we sustain the Examiner’s § 112, first paragraph rejection of claims 1–36,
i.e., independent claims 1, 11, and 19 and all claims dependent therefrom.

REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
Claims 11 and 19 recite “limiting the electronic stamp means for
imparting the electronic stamp to the electronic copy of the document . . . to
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running on the server means only, without upload to any compute engine”
(emphasis added). The Examiner rejected these claims as being indefinite,
relying on Patent Owner’s statement that “uploading is transferring files
from the local computer (government computer, such as a court computer) to
a remote computer (such as a remote attorney office computer).” ACP at 7,
quoting PO Response filed June 9, 2015 at 15. The Examiner found this use
of “uploading” to be indefinite because the specification does not define the
term as being limited to this embodiment. ACP at 7.
We are not persuaded by Patent Owner’s argument that the rejection
is improper because “[t]he examiner cannot base a rejection under 35 USC
section 112 based upon the remarks of the applicant.” Rather, we agree with
the Examiner that relying “on one computer being local and another
computer being remote merely depends on the perspective, as either could
be labeled alternately according to the circumstances.” ACP at 7. Thus, it is
unclear whether the server is located at an attorney’s office, or is part of the
infrastructure of a court system. See RAN 14.
Because we are not persuaded that the Examiner erred, we sustain the
rejection of claims 11 and 19 as being indefinite under 35 U.S.C. § 112,
second paragraph.
CONCLUSIONS
1. The Examiner did not err in rejecting the claims over legaLFile in
combination with one or more of APA, Ginter, and Digital File Stamp.
2. The Examiner did not err in rejecting the claims over the
Guidebook in combination with one or more of APA, Ginter, and Digital
File Stamp.
Appeal 2017-011285
Reexamination Control 95/002,063
Patent No. 7,035,830 B1

19
3. The Examiner did not err in rejecting the claims over ECD in
combination with one or more of APA, Ginter, and Digital File Stamp.
4. The Examiner did not err in rejecting the claims over Electronic
Case Files, State-Federal Judicial Observer, and APA.
5. The Examiner did not err in rejecting the claims over Electronic
Filing, GSU Issues Paper, and APA.
6. The Examiner did not err in rejecting the claims as lacking written
description support in the ’830 Patent.
7. The Examiner did not err in rejecting claims 11 and 19 as being
indefinite under § 112, second paragraph.
ORDER
The Examiner’s decision to reject claims 1–36 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Appeal 2017-011285
Reexamination Control 95/002,063
Patent No. 7,035,830 B1

20
PATENT OWNER:
WILSON DANIEL SWAYZE, JR.
3804 CLEARWATER CT.
PLANO, TX 75025

THIRD PARTY REQUESTER:

DURHAM, JONES & PINEGAR
INTELLECTUAL PROPERTY LAW GROUP
111 EAST BRAODWAY SUITE 900
SALT LAKE CITY, UT 84110