Ex Parte Cummins

Patent Trial and Appeal Board

Aug 24, 2016

12184732 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/184,732 08/01/2008 Fred A. Cummins
56436 7590 08/26/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82257539 7947
EXAMINER
TRAN, TRI MINH
ART UNIT PAPER NUMBER
2494
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRED A. CUMMINS
Appeal2015-001793
Application 12/184,732
Technology Center 2400
Before CARL W. WHITEHEAD JR., BRUCE R. WINSOR, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection, mailed Mar. 12, 2014 ("Non-Final Act."), of claims 1-
9 and 11-20, which are all of the pending claims. 1 We have jurisdiction
over these claims under 35 U.S.C. § 6(b ).
We affirm.
1 Non-Final Act. 2.
Appeal2015-001793
Application 12/184,732
Introduction
According to Appellant, the invention "relates to verifying an
electronic document." (Spec. i-f 1.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A method of verifying an electronic document, the method
compnsmg:
generating a display document based on a content
document and a transformation document separate from the
content document, the content document comprising content
data, the transformation document comprising format data, the
display document comprising information adapted to generate a
graphical representation of the content data formatted according
to the format data;
generating a digital signature using the content data from
the content document and the format data from the
transformation document by:
modifYing the content document to include an
identification of the transformation document; and
generating the digital signature based on the
modified content document; and
storing the digital signature.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
LeBrun et al.
Lusen et al.
Schering
us 6,043,819
US 2003/0103071 Al
US 2009/0158145 Al
2
Mar. 28, 2000
June 5, 2003
June 18, 2009
Appeal2015-001793
Application 12/184,732
REJECTIONS
Claims 1---6, 9, and 11-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lusen and LeBrun. (Non-Final Act. 3-10.)
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lusen, LeBrun, and Schering. (Non-Final Act. 10-11.)
ISSUE
Whether the Examiner erred in finding the combination of Lusen and
LeBrun teaches or suggests:
generating a digital signature using the content data from
the content document and the format data from the
transformation document by:
modifying the content document to include an
identification of the transformation document; and
generating the digital signature based on the
modified content document[,]
as recited in independent claim 1, and commensurately recited in
independent claims 13 and 17.2
2 Separate patentability is not argued for independent claims 2---6, 9, or 11-
20, which are rejected on the same grounds as claim 1. (App. Br. 10, 15-
17.) Separate patentability is also not argued for claims 7 and 8, which are
rejected over the same references as claim 1 (Lusen and LeBrun) plus an
additional reference (Schering). (App. Br. 18.) Except for our ultimate
decision, the Examiner's rejections of claims 2-9 and 11-20 are not
discussed further herein.
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Application 12/184,732
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner has erred. We disagree with Appellant's
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 3-
11) and (2) the reasons set forth by the Examiner in the Examiner's Answer
in response to Appellant's Appeal Brief. (Ans. 5-18.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis. 3
The Examiner finds Lusen teaches the first and last limitations of
claim 1, but finds Lusen does not teach the disputed limitation of claim 1,
which recites "generating a digital signature ... by: modifying the content
document to include an identification of the transformation document; and
generating the digital signature based on the modified content document
.... " (Non-Final Act. 4.) As to that limitation, the Examiner relies on
LeBrun, finding LeBrun teaches the following:
[I]t is well known in the art [of] document processing that "[with]
the introduction of optical readers, some flexibility was
introduced into the system by first labeling each document with
a unique identification which identifies the format of the
document and allows the system to accommodate different
fi " orms ...
(Id. at 4--5 (citing LeBrun 1 :66-2:4) (italicized emphasis added).) The
Examiner further finds, from this disclosure in LeBrun, "one of ordinary
skill in the art could have provided labeling each (display) document with
3 Only those arguments made by Appellant have been considered in this
decision. Arguments Appellant did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/184,732
a unique identification which identifies the format of the document
based on the templates that Lusen used to convert the document." (Id. at 5.)
Appellant's arguments do not persuade us of Examiner error.
Appellant first argues "[ n ]either of the references have described the
generation of a digital signature using the 'content data from the content
document and the format data from the transformation document.' ... "
(App. Br. 12 (emphasis added); see also App. Br. 13.) Appellant repeat this
argument several times in their briefing, including in the Reply Brief: "The
Office Action and the subsequent Answer ... fail to show where, within any
reference, a signature is generated based on the content data and format
data." (Reply Br. 7 (italicized emphasis added).) The argument is not
persuasive because it is not commensurate with the scope of the claims. See
In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail
from the outset because ... they are not based on limitations appearing in
the claims."). In particular, claim 1 does not, as Appellant contends, recite
the step of "generating a digital signature using the content data from the
content document and the format data from the transformation document"
per se. (See App. Br. 12; Reply Br. 7 .) Rather, the language in claim 1 is
immediately followed by the term "by" and the recitation of two steps that,
per use of the term "by," are thus identified as the operative steps for
"generating a digital signature": "modifying the content document to include
an identification of the transformation document; and generating the digital
signature based on the modified content document." (App. Br. 19 (Claims
App'x).)
In addition, Appellant's Specification contains no disclosure that
compels us to interpret claim 1 to require generating a digital signature in the
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manner Appellant argues. It is well settled the terms of a claim must be
given the broadest reasonable interpretation, consistent with Appellant's
Specification, as they would be interpreted by one of ordinary skill in this
art. In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997); In re Zletz, 893
F.2d 319, 321-22 (Fed. Cir. 1989). Appellant's Specification teaches several
different embodiments, stating that the digital signature "may be generated
based on all or part of the content document, the transformation document,
and/or an identifier of the transformation document." (Spec. i-f 48 (emphasis
added).) The Specification further states: "In some cases, the content
document is modified to include an identification of the transformation
document, and the digital signature is generated based on the modified
content document." (Id.) This is the embodiment that is recited in claim 1.
Appellant's interpretation, however, is unduly narrow because it additionally
requires the digital signature to be based on data from both the content
document and the transformation document, which is contrary to the
language of claim 1 as noted above. Thus, Appellant's arguments, which are
premised on one disclosed but unclaimed embodiment, are not persuasive
because they would require us to read unclaimed features from the
Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004).
Appellant further argues the Examiner's findings are in error because
"[t]here is no suggestion that either reference also implement[s] the content
data of the document itself to generate the digital signature." (App. Br. 14.)
We disagree. As the Examiner finds, and we agree:
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Application 12/184,732
Lusen discloses an invention of document processing whereby
documents can include multiple languages formats, font options,
annotations, and signatures for authenticity. Lusen further
describes the use of templates to format documents by different
rendering engines 211 to produce/format the output for
displaying the documents accordingly to various output devices
(see Fig. 1 to 3a-e and paragraphs [0025]-[0043]). Note that
templates are format documents which are used to transform the
documents, which may be in raw or native text mode as discussed
in background section at par. [0007]-[0008]). Lusen further
discloses a signature is applied to the formatted document which
includes the hash of the entire document, which is used for
validating that the document has not been changed (para.
[0043]). Therefore, Lusen discloses modifying the content
document . .. and generating the digital signature based on the
modified content document.
(Ans. 3--4.)
As noted supra, the Examiner relies on LeBrun to supply the teaching
or suggestion of adding to each document a "unique identification which
identifies the format of the document .... " (Non-Final Act. 5.) Appellant
acknowledges this disclosure in LeBrun (App. Br. 14), but argues LeBrun is
deficient because: "[LeBrun] does not teach or suggest that the numbering of
these documents include any identification information regarding a 'memory
location of the transformation document 104a, a pointer to a memory
location, a uniform resource locator, a name of the transformation document
104a, and/ or another type of identifier."' (Reply Br. 8 (citing Spec. i-f 16).)
This argument is unpersuasive because, like Appellant's argument addressed
above, it relies on unclaimed elements-the claim does not recite any of
these elements identified by Appellant as purportedly missing from LeBrun.
See In re Self, 671 F.2d at 1348.
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Application 12/184,732
Appellant also argues LeBrun is deficient because "the digital
signature (i.e., serial number of LeBrun cannot be generated 'based on the
modified content document' because no such modified content document
was created." (App. Br. 14.) This argument ignores that the Examiner relies
on Lusen, not LeBrun for teaching the content document. (Non-Final Act.
3--4; Ans. 3--4.) The Examiner relies on the combination of Lusen and
LeBrun for teaching or suggesting modifying a content document to include
identification of the transformation document. (Non-Final Act. 4--5; Ans. 4.)
With regard to the Examiner's combining the teachings of Lusen and
LeBrun, Appellant argues the Examiner relies on impermissible "hindsight"
and "is using Appellant's claims as a roadmap." (App. Br. 12; Reply Br. 6-
8.) We disagree the Examiner has engaged in improper hindsight
reconstruction or has erred in combining the teachings of the cited
references. We recognize the Examiner must articulate "reasoning with
some rational underpinning to support the legal conclusion of obviousness."
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). However, contrary to
Appellant's arguments (App. Br. 13; Reply Br. 8), the Examiner's reasoning
need not appear in, or be suggested by, one or more of the references on
which the Examiner relies upon. Instead, a reason to combine teachings
from the prior art "may be found in explicit or implicit teachings within the
references themselves, from the ordinary knowledge of those skilled in the
art, or from the nature of the problem to be solved." WMS Gaming Inc. v.
Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet,
149 F.3d 1350, 1355 (Fed. Cir. 1998)). "Under the correct [obviousness]
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
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the elements in the manner claimed." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007).
We conclude the Examiner provides a sufficient showing in the
rejection from which this appeal is taken. Specifically, the Examiner finds,
and we agree:
[O]ne of ordinary skill in the art could have provided labeling
each (display) document with a unique identification which
identifies the format of the document based on the templates that
Lusen used to convert the document. Therefore, it would have
been obvious to one of ordinary skill in the art to modify the
teachings of Lusen with the invention of LeBrun such that the
method further performs generating a digital signature using the
content data from the content document and the transformation
document by:
modifYing the content document to include an
identification of the transformation document and generating the
digital signature based on the modified content document, and
storing the digital signature. One would have been motivated to
do so to create a process of presenting document in various
formats to users with a means of identifying the format of the
document for rendering purposes.
(Non-Final Act. 5.)
Appellants have not provided persuasive evidence or line of reasoning
explaining why such rationale is erroneous or why a person of ordinary skill
in the art would not have reached the conclusions reached by the Examiner.
See DyStar Textilfarben GmbH & Co. Deutschland KG v. CH. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) ("[T]he proper question is
whether the ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.").
We further note, as the Supreme Court explained in KSR, a proper
obviousness analysis "need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR, 550 U.S. at 418. In a similar vein, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Rather, the skilled
artisan is presumed to "be able to fit the teachings of multiple patents
together like pieces of a puzzle" because the skilled artisan is "a person of
ordinary creativity, not an automaton." KSR, 550 U.S. at 420-21. Here,
Appellant has not demonstrated that the Examiner's proffered combination
would have been "uniquely challenging or difficult for one of ordinary skill
in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citingKSR, 550 U.S. at 418).
DECISION
For the above reasons, the Examiner's rejections of claims 1-9 and
11-20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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