Ex Parte Dzienis

Board of Patent Appeals and Interferences

May 29, 2012

10177953 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALIAKSEI DZIENIS
____________

Appeal 2010-002951
Application 10/177,953
Technology Center 2100
____________

Before DEBRA K. STEPHENS, MICHAEL R. ZECHER, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
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This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 13, 15-19, and 21. Claims 1-12, 14, and 20 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to the field of computer automated
document and file management systems for automatically converting a
plurality of document files in various native formats to a single common
format. See generally Spec. page 1.
Claim 13 is illustrative with key disputed limitations emphasized:
13. A method for converting data files into a common
format comprising:
(a) providing plural data processing devices coupled via a
network each having a target directory storing data files of
plural data types, including a first source device having a target
directory storing at least plural data files of a first data type, and
a first processing device having a local memory;
(b) determining which of said data files to convert,
wherein said plural data files of the first data type are among
the data files so determined, and automatically copying the
plural files of the target directory of the first source device to
said local memory;
(c) automatically opening and preprocessing the plural
files, including modifying at least a first file of the plural files to
edit and format the files, with an instance of a first application
program running on the first processing device and operable for
reading and modifying files of the first data type;
(d) automatically converting the preprocessed plural files
from the first data type to a predetermined common data
format, including converting said first file into a converted first
file, wherein modifying said first file comprises modifying said
first file so that a different image content results after the step of
converting the first file into the converted first file;
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(e) copying the converted plural files to a destination
memory via the network; and
(f) providing a second processing device with a local
second memory, the target directory storing additional plural
data files of a second type, the additional plural files copied to
the first memory and automatically opened and preprocessed
with an instance of a second application program operable for
reading and modifying files of the second data type to edit and
format the files, automatically converting further comprising
converting the preprocessed plural files from the second data
type to the predetermined common data format simultaneously
as the plural files of the first data type are converted.

THE REJECTIONS
Claims 13 and 15-19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kirkeby (US 6,914,693 B1, July 5, 2005) and Mitchell (US
6,983,331 B1, Jan. 3, 2006).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as obvious over
Kirkeby, Mitchell, and Al-Hussein (US 5,761,344, June 2, 1998).

CLAIMS 13 and 15-19
In concluding that representative claim 13 would have been obvious,
the Examiner finds that Kirkeby discloses every recited feature of the claim,
except for preprocessing of the files. The Examiner cites Mitchell as
teaching this feature. Ans. 5.
Appellant argues that “the combination of Kirkeby and Mitchell fails
to teach or suggest all of the claimed limitations.” Br. 8-11. Specifically,
Appellant argues that Mitchell fails to teach “preprocessing the plural files,
including modifying at least a first file of the plural files to edit and format
the files” (Br. 8-9). Appellant also asserts that the Examiner does not
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provide a sufficient rationale for combining Kirkeby with Mitchell. Br. 10-
11.
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
finding that Kirkeby and Mitchell disclose “preprocessing”. Appellant did
not explicitly defined the term “pre-processing” in the Specification. Thus,
the claims are given their broadest reasonable construction in light of the
disclosure. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Construing the claim terms broadly, the Examiner (Ans. 5) finds
that one of skill in the art would understand that “preprocessing” is disclosed
in Mitchell at column 2, lines 49-64 which teaches “proxy servers with
content manipulators to pre-process existing documents to reduce, convert
and/or compress the content before sending it to a small device” (emphasis
added). The Examiner also finds that Mitchell defines “preprocessing” as
“changing dimensions, scaling, text/font editing, etc.” Ans. 11 (citing
Mitchell at column 14, lines 13-30). The Examiner further finds that the
modifications in Mitchell include “manipulation of the content.” Ans. 11.
Appellant does not point to anything in the claims or Specification or
present persuasive evidence or argument that precludes this interpretation.
See Br. 8-11. Appellant contends that the “files are preprocessed to be
modified prior to being converted to a common data format.” Br. 8
(emphasis omitted). The Examiner finds the reducing, converting and/or
compressing the content before sending as disclosed in Mitchell teaches
“preprocessing the plural files, including modifying at least a first file of the
plural files to edit and format the files” as the reducing, converting, and/or
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compressing modifies the file thus editing and formatting the file (Ans. 11).
We agree with the Examiner.
We are not persuaded by Appellant’s contentions on page 10 of the
Brief that the modifications of data content taught in Mitchell would “only
occur after the conversion of a document by Kirkeby’s computer 20 into a
TIFF format” (emphasis omitted).
We also find that the limitation “prior to conversion” is not recited in
exemplary claim 13 and thus, Appellant is arguing terms not in the claim.
Finally, we are not persuaded by Appellant’s argument that the
Examiner uses hindsight reasoning (Br. 10). The relevant inquiry is whether
the claimed subject matter would have been obvious to those of ordinary
skill in the art in light of the combined teachings of the references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner has articulated
reasoning with a rational underpinning to support the legal conclusion of
obviousness (Ans. 14-15). Further, Kirkeby’s suggestion of using file
opening applications with Mitchell’s pre-processing content files, such that
the files could be converted to a format better suitable for the requesting
device,would be a predictable use of prior art elements according to their
established functions. See KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). We therefore disagree with Appellants that the Examiner used
hindsight reasoning in combining Kirkeby and Mitchell.
With regard to the additional recitation in claim 19 of preprocessing
operations “selected from the group consisting of unhiding selected hidden
fields, unprotecting protected data, disabling automatic field updating codes,
and autofitting rows and columns to a desired format,” we agree with the
Examiner’s findings that “autofitting rows and columns to a desired format”
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is taught by the combination of Kirkeby’s “spreadsheet file opening
applications” and Mitchell’s pre-processing of the files before conversion by
“auto fitting the spreadsheet to a desired format” (Ans. 8 (citing Mitchell at
column 2, lines 49-64)).
For these reasons, Appellant has not shown error in the obviousness
rejections of representative claim 13 and claims 15-19, which were not
argued separately.

CLAIM 21
We also sustain the Examiner’s rejection of claim 21 under 35 U.S.C.
§ 103(a) as obvious over Kirkeby, Mitchell, and Al-Hussein. Ans. 9, 15.
The Examiner cites Al-Hussein as teaching the searchable text file
feature as recited in dependent claim 21. Ans. 15. Appellant relies on the
same arguments previously presented for representative claim 13 to
demonstrate that Kirkeby and Mitchell collectively fail to teach the other
limitations of claim 21. As discussed above, we do not find these arguments
persuasive.

CONCLUSION
The Examiner did not err in rejecting claims 13, 15-19, and 21 under
§ 103(a).

DECISION
The Examiner’s decision rejecting claims 13, 15-19, and 21is
affirmed.
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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).

AFFIRMED

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