Ex Parte Bourdev

Board of Patent Appeals and Interferences

Jan 25, 2010

10912802 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LUBOMIR D. BOURDEV
____________
Appeal 2009-002120
Application 10/912,8021
Technology Center 2100
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Decided: January 25, 2010
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Before LEE E. BARRETT, LANCE LEONARD BARRY, and
JAMES R. HUGHES, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-16. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We reverse.

1 Filed August 6, 2004, titled "Reviewing and Editing Word
Processing Documents." The real party in interest is Adobe Systems
Incorporated.
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STATEMENT OF THE CASE
The invention
The invention relates to methods and systems implementing
techniques for reviewing and editing word processing documents.
Comments 1 and 2 about a word processing document are received and can
be independently assigned to first and second editors. Fig. 1A.

Illustrative claim
Claim 1 is reproduced below for illustration:
1. A method comprising:
receiving from a reviewer a plurality of comments about a word
processing document, the comments including a first and second
comment;
associating the comments with the word processing document;
assigning the comments to a plurality of editors, including
assigning the first comment to a first editor and assigning the second
comment to a second editor; and
presenting at least one of the first comment to the first editor
and the second comment to the second editor.

The references

Beizer US 2002/0059325 A1 May 16, 2002
(filed Aug. 19, 1998)
Barnes US 2006/0184452 A1 Aug. 17, 2006
(filed Oct. 14, 2003)

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The rejections
Claims 1-5, 8-13, and 16 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Beizer.
Claims 6, 7, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Beizer and Barnes.

Grouping of claims
Appellant separately argues the patentability of independent claim 1
and dependent claims 2, 5, and 7. Independent claim 9 is stated to
correspond to claim 1, claim 2 is stated to correspond to claim 10, claim 6 is
stated to correspond to claim 13, and claim 7 is stated to correspond to
claim 15 and to be patentable for the same reasons.

FINDINGS OF FACT
Beizer relates to a structured "WorkFolder" for organizing electronic
documents. ¶ [0002]. The WorkFolder is implemented as a specialized data
object that can be organized, configured, and accessed by the user. ¶ [0013].
The WorkFolder is shown in Figure 1. The WorkFolder contains a
Contents node 12 which serves as a base to which structural elements of the
WorkFolder are linked. ¶ [0030]. There are three primary elements that can
be linked to the Contents node: Documents 28, Placeholders 24, and
Sections 26. ¶ [0030].
A Document element 28 is either an attached document or a link to a
document which is external to the WorkFolder. ¶ [0031].
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A Placeholder element 24 is a slot that has been reserved for one or
more specific documents not yet created or received. ¶ [0034]. A
Placeholder structure is shown in Figure 2. The Placeholder can contain a
Comment element 44 which may be used to provide additional freeform
information regarding the placeholder. ¶ [0038].
A Section element 12 serves as an anchor point for additional
Placeholders and Documents. ¶ [0039].
The Workfolder may also contain a Task data element 14 "that
contains tasks defining the set of steps required to complete a unit of work,
each of which can be assigned to a user and have a deadline." ¶ [0040]. The
Task element may contain a comment field. ¶ [0041].
The Workfolder may also contain a History data element 16, which
contains a log of additions, modifications, and deletions made to any other
data element within that Workfolder. ¶ [0042]. "It should be noted that
because the Workfolder 10 is independent of the software used to create and
modify documents stored in or linked by the Workfolder 10, the history of
changes to documents would not generally include details about the
substance of changes to documents." ¶ [0042].

PRINCIPLE OF LAW
"Anticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim." Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).

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ISSUE
Has Appellant shown that the Examiner erred in finding that Beizer
anticipates the subject matter of representative claim 1?

ANALYSIS
Initially, we conclude that independent claim 9 is commensurate in
scope with independent claim 1 and take claim 1 as a representative claim.
The Examiner finds that Beizer's "WorkFolder" is a container that
holds word processing documents. It is not clear whether the rejection finds
that the "word processing document" corresponds to the WorkFolder or to
the documents in the WorkFolder, but apparently the rejection relies on the
WorkFolder itself as the document. The Examiner finds that the
WorkFolder's "Placeholder" element contains a "Comment" element which
corresponds to the claimed "associating the comments with the word
processing document." The Examiner also finds that the WorkFolder's
"Tasks" element has attributes that include a task assignee and a comment
field, where the assigning of a task having a comment field to a task assignee
corresponds to "assigning the comments to a plurality of editors" and
"presenting at least one of the first comment to the first editor and the second
comment to the second editor." Final Office Action (FOA) 3-4.
Appellant presents several arguments why Beizer's WorkFolder does
not teach "receiving from a reviewer a plurality of comments about a word
processing document, the comments including a first and second comment"
or "associating the comments with the word processing document."
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First, it is argued that a WorkFolder is used to organize documents
and is not equivalent to a word processing document. Br. 6 and 7. The
Examiner states that "a WorkFolder is a container, that can be used to hold
word processing documents, and provides access to the word processing
documents to multiple users." Ans. 7.
The Examiner does not respond to the argument. A WorkFolder is a
structured data object, not a document. Documents may be embedded in or
linked to a WorkFolder (¶ [0032]), but these are evidently not what is relied
upon because elements such as Placeholders and Tasks refer to the
WorkFolder not these documents. Thus, we have a threshold problem with
the rejection. Beizer is not described as a system or method for commenting
on documents or assigning comments on a document to editors. Beizer
describes organization for documents, not an annotation system or method.
Second, it is argued that Beizer describes (¶ ¶ [0040-0041]) that a task
entry tracks work related to a WorkFolder and thus a Task data element is
not equivalent to a comment about a word processing document. Br. 6, 7. It
is argued that the comment field associated with a task is a comment about a
task in the Workfolder not about a word processing document. Br. 7.
Moreover, it is argued, Beizer does not describe or suggest that a comment
in the Task element represents a comment received from a reviewer. Br. 7.
The Examiner does not address Appellant's arguments about the
comments in the Task element. As Appellant notes, Beizer describes that
the comment field in the Task element relates to steps required to complete a
unit of work (¶ [0040]). Although one of these tasks could possibly relate to
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the documents, this is not described by Beizer as required for an anticipation
rejection. Accordingly, the comment with the Task element does not meet
the claimed "comment" limitation.
Third, it is argued that Beizer describes the Placeholder as a slot for a
document (¶ [0034]) and therefore it is not equivalent to a word processing
document. Br. 8. It is argued that the Comment element associated with a
Placeholder element is described as "used to provide additional free-form
information regarding the placeholder" (¶ [0038]) and "[t]hus, the comment
element corresponding to a placeholder is not equivalent to a comment about
a word processing document." Br. 8. That is, the comment in a Placeholder
relates to the Placeholder slot and the comment associated with a Task data
element relates to tasks, not a word processing document. Br. 8. The
Examiner responds that the Placeholders may include comments and
"therefore Place Holders within the WorkFolder are comments about the
word processing document." Ans. 8. The Examiner also states that "[a]ny
comments contained in a Place Holder will therefore be related to the
WorkFolder and the word processing document contained or linked to the
WorkFolder." Ans. 9.
The Examiner has not shown that the comment in a Placeholder
element is about a word processing document. It is not sufficient that there
are documents associated with the WorkFolder. We agree with Appellant
that Beizer defines Placeholders as slots for documents and expressly
describes that comments are information regarding the Placeholder
(¶ [0038]), not about a document. Since no document is yet in the slot for
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the Placeholder, any comment is not going to be about that document. Nor
would the comment for a Placeholder be about documents that are already
present. Accordingly, the comment associated with the Placeholder element
does not meet the claimed "comment" limitation.
Fourth, Appellant also argues that Beizer does not describe the
limitation of "assigning the [plurality of] comments to a plurality of editors."
Br. 9-12. Since Beizer does not describe "a plurality of comments about a
word processing document," Beizer does not describe assigning the
comments to an editor or anyone who might broadly be considered an editor.

CONCLUSION
Appellant has shown that the Examiner erred in finding that Beizer
anticipates the subject matter of representative claim 1. The rejections of
claims 1-16 are reversed.

REVERSED

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