Ex Parte Gonser

Patent Trial and Appeal Board

May 26, 2016

12038728 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/038,728 02/27/2008 Thomas H. Gonser
21186 7590 05/31/2016
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
4323.007US 1 6177
EXAMINER
GARMON, BRIAN
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS H. GONSER
Appeal2014--007466
Application 12/038,728
Technology Center 2100
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
MELISSA HAAPALA, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-12 and 14--20, which are all the claims pending in the
application. Claim 13 is withdrawn. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
Invention
The claimed invention on appeal is directed to "Systems and methods
for tagging digital documents .... " (Spec. i-f3.)
Appeal2014--007466
Application 12/038,728
Illustrative Claim
1. A method for creating digitally tagged documents
compnsmg:
in a computing system,
[L 1] creating a data template for a digital document, the
data template being separate from the digital document and
defining intended signing events and wodiflow for signing the
digital document, the wodiflow defining an order in which
parties are to sign the digital document;
[L2] assigning signature locations and data fields, the
signature locations and data fields being part of the data
template, each signature location specifYing a horizontal and
vertical pixel location on the digital document, thereby directing
a party to sign the digital document at the pixel location on the
digital document; and
associating the data template with the digital document.
(Emphasis added regarding the contested limitations, labeled as L 1 and L2).
Rejections
A. Claims 1--4, 6-10, 12, and 18-20 are rejected under 35 U.S.C. §
103(a) as being obvious over the combined teachings and suggestions of
Berringer et al. (US 2004/0181756 Al; published September 16, 2004)
("Berringer"), Brown et al. (US 6,671,805 B 1; issued December 30, 2003)
("Brown"), and Soltis et al. (US 2006/0174199 Al; published August 3,
2006) ("Soltis").
B. Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Berringer, Brown,
Soltis, and Estrada et al. (US 6,728,762 Bl; issued April 27, 2004)
("Estrada").
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Application 12/038,728
C. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Berringer, Brown,
Soltis, and Suarez (US 2008/0016357 Al; published January 17, 2008).
D. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Berringer, Brown,
Soltis, and Bradley et al. (US 2002/0194219 Al; published December 19,
2002) ("Bradley").
Contentions
Regarding rejection A of claim 1, Appellant focuses the argument
particularly on the portion of contested limitation L 1 shown in bold below:
With respect to the specific claim language, each of the
independent claims recite "creating a data template for a digital
document, the data template being separate from the digital
document, " or similar. The Examiner asserts that Berringer
teaches this aspect. (Office Action, p. 3, citing Berringer, para.
56) Berringer describes an electronic document 200 that "is
often implemented as a template where the signature blocks ...
and other data is already present in the template. ii (Para. 56) As
an initial matter, Berringer's electronic document 200 itself
cannot be equated with the recited "data template." In particular,
Berringer's approach to implementing an electronic document as
a template does not require that the template is "separate from
the digital document" as claimed. Rather, Berringer describes a
template that is just a document that includes empty fields:
"[T]hese elements [e.g., signature blocks] only need to be
populated by the recorder or other person/entity .... In addition,
the signature block is already part of the document and is not
appended to the document for each signature." (Id., emphasis
added) A document that is a template with empty fields is not the
same thing as the claimed "data template being separate from the
digital document." In short, Berringer's template and document
appear to be one and the same, rather than "separate" as required
by the claims.
(App. Br. 5.)
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Appeal2014--007466
Application 12/038,728
The Examiner disagrees, and further explains the basis for the
rejection:
Berringer expressly discloses a template for creating a digital
document that contains "signature blocks ... , the routing
information 201, and other data is already present in the
template" (Page 5, Paragraph 56). In other words the template is
a document with information, signature locations and workflow
information. The template is then customized into a "digital
document" by adding additional information and/ or signature
blocks. Since Berringer discloses a template that is accessed and
then adapted to the current needs of the user, the template must
be separate from the document.
(Ans. 8-9; emphasis added.)
Issue
Under § 103, did the Examiner err by finding the cited combination of
Berringer, Brown and Soltis would have taught or suggested contested
limitation L 1, "creating a data template for a digital document, the data
template being sevarate from the digital document and defining intended
signing events and worlflow for signing the digital document, the worlflow
defining an order in which parties are to sign the digital document," within
the meaning of representative claim 1? (Emphasis added.) 1
Analysis
Contested limitation L 1 of independent claim 1 recites, in pertinent
part, the creation of "a data template for a digital document, the data
template being separate from the digital document .... " (Emphasis added).
The Examiner cites to Berringer in support of the rejection, specifically
1 We need not reach contested limitation L2 to decide this appeal.
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Application 12/038,728
citing to paragraph 56 in the Final Rejection (3), and paragraphs 56 and 57
in the "Response to Argument" section of the Answer. (Ans. 19-20).
Paragraph 56 of Berringer expressly describes: "More generally, the
electronic document 200 is often implemented as a template where the
signature blocks (including the notary signature block and the recorder
signature block), the routing information 201, and other data is already
present in the template." (Emphasis added). Paragraph 57 of Berringer
further describes: "Alternatively, the electronic document 200 can be
implemented as a template to which signature blocks are added as needed."
(Emphasis added).
Although the cited paragraphs (56, 57) in Berringer refer to an
electronic document implemented as a template to which signature blocks
may be added as needed, we find neither of the cited portions of Berringer
teaches or suggests the data template being separate from the electronic (i.e.,
digital) document. Paragraphs 56 and 57 Berringer refer to Figure 2B,
which depicts an electronic document 200 containing, inter alia, signature
block 206. Beringer describes "the signature block is already part of the
document" and only needs "to be populated by the recorder or other
person/entity." (i-f 56).
Because Berringer' s signature blocks are part of the template, and the
template is described as being part of the document itself (i-fi-156-57), we find
a preponderance of the evidence supports Appellant's contention that
Berringer does not teach or suggest "creating a data template for a digital
document, the data template being separate from the digital document," as
recited in independent claims 1 and 7. (App. Br. 5; claim 1.) Thus, the
evidence of record does not support the Examiner's findings.
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Application 12/038,728
To the extent the Examiner has made a finding of inherency ("the
template must be separate from the document" -Ans. 19), the Examiner
has not provided any supporting factual evidence or technical reasoning
explaining how "the natural result flowing from the operation as taught
would result in the performance of the questioned function," PAR Pharm.,
Inc. v TWI Pharms., Inc., 773 F.3d 1186, 1194--95 (Fed. Cir. 2014) (internal
citation omitted), as required to show inherency under § 103.
Therefore, we find a preponderance of the evidence supports
Appellant's contention (App. Br. 5) that there is no teaching or suggestion in
Berringer of "creating a data template for a digital document, the data
template being separate from the digital document," as recited in
independent claims 1 and 7. (Emphasis added). Nor has the Examiner
shown how the Brown and Soltis secondary references overcome the
aforementioned deficiencies with Berringer.
Therefore, we reverse the Examiner's § 103 rejection A of independent
claims 1 and 7, over the combination of Berringer, Brown and Soltis. For
the same reasons, we also reverse the Examiner's rejection A of associated
dependent claims 2--4, 6, 8-10, 12, and 18-20.
Regarding rejections B-D, the Examiner has not shown how the
additionally cited secondary references overcome the aforementioned
deficiency regarding the base combination of Ben-inger, Brown, and Soltis,
as discussed above regarding n.~iection A. i\cconHngly, we reverse
rejections B-D under§ 103 of all remaining dependent claims on appeal.
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Application 12/038,728
Conclusion
On this record, and by a preponderance of the evidence, we are
persuaded the Examiner erred in rejecting claims 1-12 and 14--20 under
§ 103, for at least the reasons argued on pages 5---6 of the Brief, as further
discussed above.
DECISION
We reverse the Examiner's rejection of claims 1-12 and 14--20 under
§ 103(a).
REVERSED
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