Ex Parte Choban et al

Patent Trial and Appeal Board

Sep 28, 2016

13153864 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/153,864 06/06/2011 GARY M. CHOBAN
3705 7590 09/30/2016
ECKERT SEAMANS CHERIN & MELLOTT, LLC
600 GRANT STREET
44THFLOOR
PITTSBURGH, PA 15219
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
289146-00002-3-2-1 9881
EXAMINER
CHEUNG, MARY DA ZHI WANG
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
ipmail@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY M. CHOBAN and DAVID CHOBAN
Appeal2014-007631
Application 13/153,864
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 34--43. We AFFIRM. In doing so, we
enter a NEW GROUND of rejection with respect to dependent claim 43.
1 The Appellants identify Nuventive LLC as the real party in interest.
(Appeal Br. 1 ).
Appeal2014-007631
Application 13/153,864
THE CLAIMED INVENTION
Appellants claim a method for sharing information. (Spec. 1, 11. 12-
14). Claim 34 is illustrative of the claimed subject matter:
34. A computer implemented method for sharing personal
information through an electronic communication network
between a user and one or more reviewers, said method
comprising the steps of:
providing a first computer having a computer executable
code and a plurality of user computer files stored thereon, said
user computer files being a master portfolio stored on said first
computer, said computer executable code structured to associate
selected user computer files to be associated with portfolio
folders and to allow selective access to said portfolio folders;
establishing accounts for said users and said reviewers;
allowing said user access to said computer executable
code through said electronic communication network;
allowing said user to select which reviewer may access
said portfolio folders;
allowing said one or more reviewers access to said
computer executable code through said electronic
communication network;
providing a second computer in electronic communication
with said first computer, said second computer structured to
access said information in a portfolio folder to which said user
has permitted access; and
allowing said one or more reviewers to view said selected
portfolio folders according to said user provided selective access.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Alpert et al. us 6,092,081 July 18, 2000
("Alpert")
Charlotte Danielson and Leslye Abru tyn, An Introduction to Using
Portfolios in the Classroom, Association for Supervision and
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Application 13/153,864
Curriculum Development, Alexandria, VA, 1977 (hereinafter
"Danielson").
REJECTIONS
The following rejection is before us for review.
The Examiner rejected claims 34--43 under 35 U.S.C. § 103(a) as
unpatentable over Alpert and Danielson.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes "computer executable code 60 then allows
the user 20 to upload a plurality of computer files 24 thereby creating
106 a master portfolio 70. The computer executable code 60 then
allows the user 20 to select 108 individual computer files 24 to be in
selected portfolio folders 72A, 72B, 72C." (Spec. 11, 11. 26-29).
2. Alpert discloses a master portfolio and portfolio folders to "include:
student assignments, work product (letters, forms, text, patent
applications), and documents resulting from a search of a document
database." (Alpert, col. 4, 11. 26-29).
3. Danielson discloses selecting user computer files to be associated with
portfolio folders, in that "[s]ince the student selects her or his own best
works, the audience for a display portfolio is that student and the other
important individuals, such as parents and older siblings, to whom the
student chooses to show the portfolio." (Ch. 1, p. 2).
4. The Specification describes "file tags 25 which act as an identification
and tracking means." (Spec. 11, 11. 7-8).
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5. Alpert discloses computer workstations using operating systems such as
OS/2, Microsoft Windows, or Macintosh System 7 .5. (Alpert, col. 3, 11.
39--44).
6. Alpert discloses server computers using operating systems such as
Windows NT, OS/2, or AIX, IBM's version of UNIX. (Alpert, col. 3,
11. 56----60).
7. Alpert discloses in background the well-known use of digital
representations of work and portfolios. (Alpert, col. 1, 11. 18-19).
8. Alpert discloses in background the use of "scanned and computer
generated documents." (Alpert, col. 1, 11. 29-33).
9. Alpert discloses "individuals that are responsible for generating
documents or one or more portfolios of documents 135 that are to be
evaluated by the evaluators." (Alpert, col. 4, 11. 20-23).
10. Alpert discloses "[c]omments 260 are used by any user of the system to
communicate impressions of the documents 135 and are often used to
establish a dialog between the evaluator and the author." (Alpert, col. 4,
11. 55-58).
ANALYSIS
Claims 34 and 36--40
The rejection is affirmed as to claim 34. Appellants do not provide a
substantive argument as to the separate patentability of claims 36--40 that
depend from claim 34, which is the sole independent claim among those
claims. Therefore, we address only claim 34, and claims 36--40 fall with
claim 34. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appellants argue "Alpert fails to make any suggestion that the system
includes a 'master portfolio' from which files are selected to be associated
with a different, smaller 'portfolio folders."' (Appeal Br. 8; see also Reply
Br. 2--4). We are not persuaded by Appellants' argument.
We construe a "master portfolio" to be a plurality of files, as is
consistent with the Appellants' Specification, which describes the system
"allows the user 20 to upload a plurality of computer files 24 thereby
creating 106 a master portfolio 70." (FF 1 ). Based on this construction, we
find that Alpert discloses a "master portfolio" at its "document database,"
and portfolio folders in the form of documents resulting from a search of the
"document database." (FF 2). In addition, we find that Danielson discloses
a "master portfolio" in the full population of a student's works, and a
"portfolio folder" in the form of those "best works" selected by a student.
(FF 3). Both Alpert and Danielson, thus, meet the claim language of a
"master portfolio" and "portfolio folder."
Appellants next argue that "Alpert fails to disclose 'selective access to
said portfolio folders."' (Appeal Br. 9). We are not persuaded by
Appellants' argument, because Danielson discloses the student/user to select
"to whom the student chooses to show the portfolio," thus, meeting the
claim language. (FF 3).
We are also not persuaded by Appellants' arguments that "the
Examiner has not made the findings associated with any specific Rationale."
(Appeal Br. 11). Our review of the record below suggests otherwise. The
Examiner found "Alpert does not specifically teach allowing said user to
select which reviewer may access said portfolio folders. However,
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Application 13/153,864
Danielson teaches this matter .... " (Final Act. 5). The Examiner then
concluded:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to allow the user in Alpert's
teaching to include the feature of select which reviewer may
access the portfolio folders as taught by Danielson so that
creating controls of the user's his or her own portfolio.
(Id.) The Examiner, thus, found what is missing from Alpert, how it differs
from the claims, and that Danielson discloses the missing element. The
Examiner further reasoned that substituting Danielson's method of having a
user/student select who reviews the portfolio, for the method of selecting
disclosed by Alpert, would be obvious, with the rationale being to let the
user/student control the review of their own portfolio. The Examiner has,
thus, made adequately the required findings supported by "articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval inKSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Claim 35
Dependent claim 35 recites "having said computer executable code
allow said user to tag each said user computer file with an identification
means."
Appellants argue "Alpert does not disclose 'tags,' as that term should
be interpreted in view of the present specification." (Appeal Br. 11-15; see
also Reply Br. 7-9). We are not persuaded by Appellants' argument.
The Specification describes that tags are used for identification. We,
thus, construe "tag each said user computer file with an identification" as an
act of identifying a file. Examiner finds "it is implicit that the document has
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been tagged with an identification." (Final Act. 5) (emphasis omitted). We
agree with the Examiner. The ordinary artisan would understand from
Alpert's disclosure of documents in these computers would involve files
recognized by the operating system using file names associated with each
file and folder by users. The file names for digital files are, thus, normally
used for identification, thus, meeting the claim language.
Claim 41
Dependent claim 41 recites "having said computer executable code
allow said user to tag each said user portfolio folder with an identification
means."
Appellants argue that in Alpert the student does not tag a folder,
because this is done by the reviewer, referring to the addition of comments
by reviewers. (Appeal Br. 15-17; see also Reply Br. 7-9). We are not
persuaded by Appellants. As with claim 35, the ordinary artisan would
recognize that in the operating systems disclosed in Alpert, the user names
each folder, into which documents may be placed in the native file systems
that are part of each operating system. (FF 5, 6). Thus, in Alpert, each user
tags each portfolio folder with an identification, as claimed.
Claim 42
Dependent claim 42 recites "wherein said user computer files includes
files created by said computer executable code."
Appellants argue the cited portion of Alpert does not disclose creating
files by the computer. (Appeal Br. 17-18). We are not persuaded by
Appellants' arguments, because Alpert discloses the well-known use of
digital representations of works from scanning and computer generation.
(FF 7, 8). The ordinary artisan would recognize that Alpert's disclosure of
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users generating files, thus, would involve files created by computer code, as
claimed. (FF 9).
Claim 43
Dependent claim 43 recites "allowing the user to create a reflection
related to a computer file."
Appellants argue "Alpert only discloses that a teacher, or other
reviewer, may add a comment to the files." (Appeal Br. 18; see also Reply
Br. 9-10). We are not persuaded by Appellants' arguments. Although
Alpert only explicitly discusses annotating files by reviewers, and not
creators, Alpert discloses that any user may add comments, and that the
comments are "used to establish a dialog between the evaluator and the
author." (FF 10). The ordinary artisan would recognize that a dialog is a
two-way communication, such that it would be a small leap to permit an
author to add reflections to the file as part of a dialog with reviewers. See
KSR, 550 U.S. at 418. (In making the obviousness determination one "can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.") Since our rationale in applying the
references differs from that of the Examiner, our affirmance is designated as
a new rejection. 37 C.F.R. § 41.50(b).
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 34--43 under 35 U.S.C.
§ 103(a).
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Application 13/153,864
DECISION
For the above reasons, the Examiner's rejection of claims 34--43 is
affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37
C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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