Ex Parte Dubinsky et al

Patent Trial and Appeal Board

Jun 15, 2015

11482133 (P.T.A.B. Jun. 15, 2015)

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.
11/482,133 07/06/2006 Andrew M. Dubinsky 07446-00002 4836
94611 7590 06/15/2015
CRAIG JOSEPH COX
BELL NUNNALLY & MARTIN LLP
3232 MCKINNEY AVENUE
SUITE 1400
DALLAS, TX 75204
EXAMINER
DEBROW, JAMES J
ART UNIT PAPER NUMBER
2144
MAIL DATE DELIVERY MODE
06/15/2015 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 ANDREW M. DUBINSKY, WESLEY A. THOMAS,
and ILYA ANDREYEV
____________

Appeal 2012-010716
Application 11/482,133
Technology Center 2100
____________

Before JOHN G. NEW, CARL L. SILVERMAN, and
MELISSA A. HAAPALA, Administrative Patent Judges.

HAAPALA, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection in accordance with
37 C.F.R. § 41.50(b).

Appeal 2012-010716
Application 11/482,133

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EXEMPLARY CLAIM
Appellants’ invention is directed to creating legally binding electronic
documents. Reply Br. 5. Claim 1 is exemplary of the subject matter on
appeal:
1. A method of displaying for a user a representation of a
executable document formatted for printing, the method
comprising:
transforming a document into a print representation in a
non-scalable graphic image format;
rasterizing the print representation to create a display
representation in the non-scalable graphic image format;
displaying the display representation to the user for
signing;
capturing an electronic signature on the display
representation;
populating the electronic signature to the print
representation; and
printing the print representation, the print representation
matching the format of the display representation, including the
electronic signature, displayed to the user.

REJECTIONS ON APPEAL
Claims 1–3, 10–12, 18, and 19 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Powers (US 6,446,115 B2; issued Sept. 3,
2002). Ans. 3–10.
Claims 4–9, 13–17, and 20 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over the combination of Powers and Rakowicz et al. (US
2005/0177389 A1; published Aug. 11, 2005). Ans. 10–20.
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ISSUE
Appellants’ contentions present us with the following issue:1 Did the
Examiner err in finding Powers discloses “capturing an electronic signature
on the display representation,” as recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in consideration of
Appellants’ contentions. Appellants have persuaded us the Examiner’s
rejections of claims 1–20 are in error. We enter a new ground of rejection
under 35 U.S.C. § 101 for independent claims 1, 10, and 18.
Claim 1 recites “capturing an electronic signature on the display
representation.” The Examiner finds Powers discloses the disputed
limitation because “Powers discloses an electronic image document which
contains a signature is stored . . . to produce faxes and other color printouts”
and thus “implicitly discloses capturing an electronic signature on the
display representation.” Ans. 4 (citing Powers 8:3–33). The Examiner
further finds “Powers also discloses . . . a screen image showing a proof
copy of a letter for review by the sender.” Ans. 18 (citing Powers 19:49–
52).
Appellants contend Powers does not disclose capturing the signature
on the display representation as Powers “merely takes the scan of the
selected signature from its database and applies it to selected area on the
correspondence” (Appeal Br. 11) and “Powers displays the document to the
user already including the electronic signature” (Reply Br. 6). Thus,
Appellants argue because the proof “already includes the electronic

1 We do not reach the additional contentions presented by Appellants
because the identified issue is dispositive of the appeal.
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Application 11/482,133

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signature it cannot have been displayed to the user for signing in the form of
the display representation where the electronic signature is then captured on
the display representation.” Reply Br. 6.
We agree with Appellants that the portions cited by the Examiner
disclose displaying a proof copy of a letter that already includes the sender’s
signature. Powers 19:49–52. The Examiner has not established the
electronic signature is captured on the display representation. Therefore,
Appellants have persuaded us of error in the rejection of claim 1.
Accordingly, we do not sustain the 35 U.S.C. § 102(b) rejection of: (1)
claim 1; (2) independent claims 10 and 18, which similarly recite the display
representation is capable of being electronically signed by an electronic
signature application, and which were rejected on the same basis as the
disputed limitation of claim 1; and (3) claims 3, 11, 12, and 19, which
depend from one of claims 1, 10, and 18.
Further, the Examiner did not find Rakowicz teaches the disputed
limitation. Therefore, we also do not sustain the 35 U.S.C. § 103(a)
rejection of dependent claims 4–9, 13–17, and 20. 2

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1, 10, and 18 under 35 U.S.C. § 101 as being directed to non-statutory

2 Should there be further prosecution of this application, our decision does
not preclude the Examiner from relying on Powers and Rakowicz, alone or
in combination, to enter new grounds of rejection for the claims.
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subject matter. 3 We find these claims are ineligible for patent protection
because they are directed to an abstract idea.
The decision in Alice Corp. Pty. Ltd. v. CLS Bank lnt’l, 134 S.Ct.
2347 (2014) is controlling. We analyze the claims using a two part-analysis:
1) Determine whether the claim is directed to an abstract idea; and 2) if an
abstract idea is present in the claim, determine whether any element, or
combination of elements, in the claim is sufficient to ensure the claim
amounts to significantly more than the abstract idea itself. See Alice Corp.,
134 S.Ct at 2350.
Under the first step of the analysis, we find claims 1, 10, and 18 are
directed to an abstract idea because they are directed to the fundamental
process of creating an executable document by presenting a document to a
user for signing and obtaining the signature. In particular, as acknowledged
by Appellants’, the claim recitations “follow[s] the traditional path of
executing legally binding documents where a contracting party is shown a
final version of the contract and then signs the contract to indicate the
acceptance of the terms.” See Reply Br. 5.
Under the second step of the analysis, we find claims 1, 10, and 18 do
not have any additional elements that amount to significantly more than the
abstract idea of creating an executable document. The additional steps in
the claims require no more than the conventional steps of transforming a
document into a graphic image format (such as the previously existing

3 We leave it to the Examiner to review the subject matter eligibility of
dependent claims 2–9, 11–17, 19, and 20 in view of our findings and
conclusions in the new grounds herein. Our decision not to enter new
grounds of rejection should not be considered an indication regarding the
appropriateness of allowance for these claims.
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Portable Network Graphics format recited in claim 2; see also Spec ¶ 21),
creating a display representation in the graphic image format, adding data
(“populating”) to the electronic document, and printing the document.
“[S]imply appending conventional steps, specified at a high level of
generality, to laws of nature, natural phenomena, and abstract ideas cannot
make those laws, phenomena, and ideas patentable.” Mayo Collaborative
Services v. Prometheus Labs, Inc., 132 S.Ct 1289, 1300 (2012); see also
Alice Corp., 134 S.Ct at 2359–60 (purely conventional functions performed
by the computer are not enough to transform an abstract idea into a patent-
eligible invention).
Thus, under the two-part analysis, we conclude claims 1, 10, and 18 are
directed to an abstract idea and accordingly directed to non-statutory subject
matter. We have entered the new grounds only for the independent claims
and leave it to the Examiner to evaluate the patentability of the other claims
in view of these references alone or in combination with other newly found
or previously cited references.

DECISION
The Examiner’s rejections of claims 1–20 are reversed.
We enter a new ground of rejection for claims 1, 10, and 18 under
35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds 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)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)
ACP