Ex Parte Bennett et al

Board of Patent Appeals and Interferences

Oct 21, 2002

08741459 (B.P.A.I. Oct. 21, 2002)

1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 18

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM E. BENNETT, STEPHEN J. BOIES,
LAURETTA JONES, STEPHEN E. LEVY,
DOUGLAS C. LOVELL, NEIL LUSTIG,
PAUL M. MATCHEN and RICHARD D. THOMPSON
_____________
Appeal No. 2001-0615
Application No. 08/741,459
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH, and BARRETT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-48, all of the
pending claims.
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The invention is directed to a system for electronically developing and
processing a legal document. More particularly, one party to the document selectively
connects a plurality of remote entities to the workstation of that one party and the one
party retains control of the document until the document is executed. At least one of
the remote entities, another party to the document, may further develop the document
for contemplated execution but control of the document remains with the one party until
execution.
Representative independent claim 1 is reproduced as follows:
1. A system for electronically developing and processing a document,
the system comprising:
1) at least one local computer workstation, wherein at least one
such local workstation can electronically capture information input by a
first party for originating and developing the document, said first party
retaining control of said document until execution;
2) at least one remote information bureau computer, wherein at
least one such information bureau computer is connectable to said at
least one local workstation for electronically further developing the
document; and
3) a plurality of remote entities selectively connectable by said
first party to said at least one local computer workstation, at least one
entity of said plurality of remote entities comprising a second party to the
document and having at least one computer connectable to said at least
one local computer workstation for electronically further developing the
document for contemplated execution of the document by said first and
second parties.
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The examiner relies on the following references:
Bly et al. [Bly] 5,008,853 Apr. 16, 1991
Davidson 5,699,527 Dec. 16, 1997
(filed May 01, 1995)
Blumer et al. [Blumer] 5,732,219 Mar. 24, 1998
(filed Mar. 17, 1995)
Claims 1-48 stand rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner offers Blumer in view of Davidson and Bly.
Reference is made to the brief and answer for the respective positions of
appellants and the examiner.
OPINION
The examiner indicates that Blumer discloses a system for electronically
developing and processing a document using a client/server network on the internet,
wherein local workstation computers are connected to an information bureau computer
server wherein a document which has been previously developed by a client
workstation and stored in the server can be retrieved and further developed by one or
more of the client workstations. The examiner further indicates that Davidson discloses
a system for electronically developing and processing a document wherein information
input by a loan applicant is captured on a local computer; the local computer is
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connected to a remote information bureau computer and a document is further
developed by a plurality of remote entities. The examiner relies on Bly for a showing of
methods of collaborative editing of shared documents in a network environment and
also for a showing of presenting a document, or portions thereof, to different users
based on need, level of access, etc.
The examiner concludes that it would have been obvious to connect a plurality of
entities to Blumer and that it would have been obvious that one or more of such remote
entities may be servers connected to their own networks. Additionally, the examiner
finds that it would have been obvious to allow interactive editing of the document as it
was being developed, in view of Bly. Finally, the examiner contends that the skilled
artisan would have been led “to have multiple clients connected to multiple servers in
view of the Applicant’s admitted disclosure by Blumer and Davidson of using multiple
remote entities and their disclosure of connecting to the Internet via modems instead of
direct connections between the client and the server” [answer-page 6].
For their part, appellants argue that the instant claimed invention distinguishes
over the applied art by permitting the second party to further develop the document
while the first party originates and retains control of the document until execution. In
giving the example of two parties to a financial transaction, such as a customer and a
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financial institution, appellants states that the contract is completed, printed and
transmitted to the approving financial institution with the customer retaining control over
the document, and that once the customer has agreed to the financing, a completed
contract is filled out in the system and electronically transmitted to the bank, at which
point a digital signature is captured for transmission to the financial institution. At this
point, the document is executed and the customer relinquishes control of the document
to the financial institution.
Appellants question the examiner’s admission that Davidson discloses that the
document is returned to the first party with alterations/approvals that are made by the
remote entity and that Davidson teaches that the first party may present the document
to other remote entities for further development/approval by the remote entities as
needed, but yet the examiner “somehow and incongruously concludes that the first
party is controlling the development of the document by selecting which remote entity or
entities to which the document is presented” [brief-page 8].
We find no incongruity in concluding that a first party “controls” the development
of a document even though the document is returned to the first party with alterations.
If the first party agrees or disagrees with those alterations and acts accordingly, either
approving or disapproving such alterations, then it still can be said that the first party is
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in “control” of the document. Further, if, in Davidson, the first party may present the
document to other remote entities for further development or approval, then it can still
be reasonably held that the first party is in “control” of the document since that party
presents the document to one of the other entities.
Appellants argue that the cited art “fails to teach, suggest, or make obvious a
plurality of remote entities selectively connectable by the first party” [emphasis in the
original; brief-page 8] and that such art fails to teach, suggest, or make obvious “a first
party originating, developing, and retaining control of a document until that document is
executed” [emphasis in the original-brief-page 8].
In particular, appellants point out that Davidson teaches relinquishment of control
of the document prior to execution at column 5, lines 24-36. However, as pointed out
supra, merely because a document is returned to the first party with alterations or
approvals made by a remote entity, this does not mean that the first party must accept
those alterations or approvals. In this sense, the first party still is very much in “control”
of the document until the document is actually executed. Appellants, in our view, take a
much narrower view of “control” than the instant claim language would require.
Appellants argue that a “key feature” of the instant invention is that at least one
workstation is “selectively connectable” to any of a plurality of remote entities by a first
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party and that none of the applied art teaches or suggests selectively connecting a local
workstation to a plurality of entities selectively by the first party. Specifically, appellants
state that Blumer may indicate many authors may be online on many servers but that
Blumer doesn’t suggest a first user selectively connecting to a plurality of servers; that
Davidson teaches a first party, the loan applicant, transferring personal information from
a PC to a bank server and that while the server may be connected to a computer
network having a plurality of computers 26, the first user does not selectively connect
his PC with the plurality of computers 26 because the loan institution itself chooses if,
and which, of the plurality of computers 26 are used. With regard to Bly, appellants
argue that this reference is silent as to a first user selectively connecting a workstation
to a plurality of remote entities because while Bly teaches a multi-user collaborative
system in which multiple users are connected to a single server, Bly fails to suggest a
single user connecting to a plurality of remote entities, or servers.
For the limitation of a “plurality of remote entities selectively connectable by said
first party,” the examiner relies on Davidson. Since Davidson discloses a first party
sending a document to a remote entity for further development and/or approval of that
document, receiving that document back from the remote entity, and then sending the
document to another remote entity for further development and/or approval, the
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examiner considers this teaching as a description of a first party “selecting” the remote
entity, and the sending/receiving of the document as an inference that a connection is
made.
We have reviewed Davidson and we do not find anything therein that suggests a
plurality of entities that are selectively connectable by the first party (the loan applicant).
Davidson describes a loan applicant providing required information and sending the
application to a computer network of the financial institution but we find no indication
therein that the loan applicant has any choice as to which one of the financial
institution’s computers the applicant is connected. We find nothing in Davidson
regarding the financial institution’s computers being “selectively connectable” by the
loan applicant to the loan applicant’s computer and the examiner, while arguing that
Davidson provides for such a feature, fails to point to any specific portion of Davidson
where the alleged teaching may be found.
Since the examiner has failed to specifically point to anything in the applied
references suggesting the claimed limitation of a “plurality of remote entities selectively
connectable by said first party to at least one local computer workstation,” a limitation of
every independent claim, the examiner has not established a prima facie case of
obviousness, within the meaning of 35 U.S.C. § 103.
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Accordingly, we will not sustain the rejection of claims 1-48 under 35 U.S.C.
§ 103.
The examiner’s decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
eak/vsh
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