Ex Parte Constantinou

Patent Trial and Appeal Board

Feb 24, 2017

13690002 (P.T.A.B. Feb. 24, 2017)

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.
EVM-108US 5954
EXAMINER
MRABI, HASSAN
ART UNIT PAPER NUMBER
2144
MAIL DATE DELIVERY MODE
13/690,002 11/30/2012
54004 7590 02/24/2017
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH, MA 01581
Phil CONSTANTINOU
02/24/2017 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
Ex parte PHIL CONSTANTINOU1
Appeal 2016-007714
Application 13/690,002
Technology Center 2100
Before BRUCE R. WINSOR, IRVIN E. BRANCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4—15, and 17—26, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Appellant’s Brief (“App. Br.”) identifies the real party in interest as
Evemote Corporation. App. Br. 2.
Appeal 2016-007714
Application 13/690,002
CLAIMED SUBJECT MATTER
The claims are directed to routing and accessing content provided by
an authoring application. See Spec. Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of sharing modifications of a document among
a plurality of authors, comprising:
publishing the document using a service that is accessible
by at least some of the authors; and
propagating modifications by a first one of the authors to
other ones of the authors by sending change information using
email to the other one of the authors, wherein the change
information includes a pointer to the document, an indication of
the modifications, and an identification of the first one of the
authors and wherein the change information does not include
the document.
App. Br. 11 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Popkin US 2007/0005694 A1 Jan. 4, 2007
Christiansen US 2010/0262659 A1 Oct. 14,2010
REJECTIONS
Claims 1, 2, 4, 9-15, 17, and 19—26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Christiansen. Final Act. 3.
Claims 5—8 and 18—21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Christiansen and Popkin. Final Act. 7.
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Appeal 2016-007714
Application 13/690,002
ISSUE FOR DECISION
Does Christiansen disclose “sending change information using email
to the other one of the authors” as recited in independent claims 1 and 14?
ANALYSIS
In rejecting independent claims 1 and 14, the Examiner finds
Christiansen discloses each and every limitation recited in the claims.
Relevant to this appeal, the Examiner finds Christiansen discloses
“propagating modifications by a first one of the authors to other ones of the
authors by sending change information using email to the other one of the
authors . . . Final Act. 4 (citing Fig. 6, H 51, 62, 69, 74—75, 83, 105).
Appellant contends the Examiner erred because:
Christiansen only discloses using a conventional server (116) to
make the annotations available via an annotation database
(120). The annotations (changes) are not “sent” in Christiansen
(by email or any other mechanism), but instead are just
provided in the annotation database (120).
App. Br. 6.
We agree with Appellant. The system described in Christiansen does
not disclose “sending change information using email” as recited in the
independent claims and, therefore, does not meet the strict identity test for
anticipation. See Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292,
1296 (Fed. Cir. 2002) (“strict identity required of the test for novelty”).
Although the portions of Christiansen cited by the Examiner disclose
the propagation of modifications among different users, it does so using a
shared annotations database, and not using email as recited in the claims.
The Examiner finds ‘Ttlhe system is using modules that are similar to email
module” (Ans. 6), and that Christiansen’s reply messages are “[jjust like an
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Application 13/690,002
email application.” Ans. 15 (emphasis omitted). Similarity, however, is not
enough to satisfy the strict requirements for anticipation under Section 102.
Trintec Indus., Inc., 295 F.3d at 1294.
Accordingly, we agree with Appellant that Christian fails to disclose
each and every element recited in independent claims 1 and 14, and we do
not sustain these rejections. For the same reasons, we also do not sustain the
rejections of claims 2—15 and 17—26.
NEW GROUND OF REJECTION
We enter a new ground of rejection under 37 C.F.R. § 41.50(b).
We reject independent claims 1 and 14 under 35 U.S.C. § 103(a) as
being obvious over Christiansen and Meisels et al. (US 2012/0278401 Al;
published Nov. 1, 20122) (“Meisels”), previously made of record in the
Form 892 issued concurrently with the Final Office Action that is the subject
of this appeal. We adopt the Examiner’s findings regarding Christiansen
with respect to claims 1 and 14, except with respect to the limitation of
“sending change information using email” as described above.
In the same field of endeavor, Meisels teaches the use of a change
manager which is “configured to determine and place document changes
within a body of an electronic message that is sent to reviewers that are
collaborating on the document.” Meisels 124. Figure 3 of Meisels, shown
below, discloses the electronic message identifying the document changes
2 Meisels presumptively qualifies as prior art under 35 U.S.C. § 102(e) by
virtue of its filing date of Apr. 28, 2011, which predates the earliest claimed
priority of December 28, 2011 sought by Appellant.
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Appeal 2016-007714
Application 13/690,002
(314) and the author making the changes (311) is sent in a browser-based
email client with a link (322) to the document:
-300
Meisels Figure 3 depicts an example of email with change
information.
It would have been obvious to a person of ordinary skill in the art at
the time of invention to employ Meisels email distribution of document
changes as a substitute (or supplement) for Christiansen’s sharing of
document changes via access to the annotation database. Doing so would
have amounted to a simple substitution of one known element (sharing
information over a network via a database interface) for another (sharing
information over a network via email) to obtain predictable results. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims
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Appeal 2016-007714
Application 13/690,002
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”).
We leave it to the Examiner in the first instance to determine whether
the remaining claims are also rendered obvious in light of the new ground
set forth above. We also leave to the Examiner to consider whether any
claims are anticipated or rendered obvious by Meisels separately from
Christiansen.
CONCLUSION
The Examiner’s rejection of claims 1, 2, 4, 9—15, 17, and 19-26 under
35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 5—8 and 18—21 under 35 U.S.C.
§ 103(a) is reversed.
Claims 1 and 14 are newly rejected under 35 U.S.C. § 103(a) as being
obvious over Christiansen and Meisels.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution
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Appeal 2016-007714
Application 13/690,002
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED
37 C.F.R, $ 41.50(b)
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