Ex Parte Hadley et alDownload PDFPatent Trial and Appeal BoardSep 16, 201613414940 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/414,940 03/08/2012 128836 7590 09/20/2016 Womble Carlyle Sandridge & Rice LLP Attn: IP Docketing P.O. Box 7037 Atlanta, GA 30357-0037 FIRST NAMED INVENTOR Brent L. Hadley 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. B86918 1030US.l (0008.4) 8217 EXAMINER GARMON, BRIAN ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 09/20/2016 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): ipdocketing@wcsr.com patentadmin@Boeing.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRENT L. HADLEY and PA TRICK J. EAMES Appeal2015-006666 Application 13/414,940 Technology Center 2100 Before JAMES R. HUGHES, SCOTT B. HOW ARD, and MATTHEW J. McNEILL, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 1-22, which constitute all of the claims pending in this application. Although the action appealed from is a Non-Final Rejection, because the application has been twice rejected we have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134. Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential). We affirm. 1 Appellants identify The Boeing Company as the real party in interest. App. Br. 1. Appeal2015-006666 Application 13/414,940 THE INVENTION The disclosed and claimed invention is directed to a panoptic visualization document collection. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for implementation of a panoptic visualization document collection system, the apparatus comprising a processor and a memory storing executable instructions that in response to execution by the processor cause the apparatus to implement at least: a document parser configured to receive and disassemble one or more electronic documents into a plurality of constituent document components each of which includes respective media content, the documents being disassembled according to a predetermined type of the documents; a colligater coupled to the document parser and configured to colligate the document components, including for each of one or more document components of the plurality, the colligater being configured to: identify one or more lirJ<:s bet\'l/een the document component and one or more other document components of the plurality, the one or more links being identified according to one or more of the documents, type of documents, or media content of the document component and one or more other document components; and in metadata according to some metadata schema and associated with the document component, provide structured infomlation identifying the one or more links between the document component and one or more other document components, and including a unique identifier for each of the one or more other document components, wherein the colligater is further configured to communicate the document components and metadata as a panoptic visualization document collection; and 2 Appeal2015-006666 Application 13/414,940 a page storage and a metadata storage configured to receive and store the document components and metadata, respectively. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Horvitz US 2004/0267701 Al Dec. 30, 2004 Boose US 7 ,246,328 B2 July 1 7, 2007 Gerhard US 2009/0317020 Al Dec. 24, 2009 REJECTIONS Claims 1---6, 8-13, 15-20, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Horvitz in view of Boose. Non-Final Act. 3-18. Claims 7, 14, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Horvitz in view of Boose and Gerhard. Non-Final Act. 18-19. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. We are not persuaded by Appellants' arguments regarding claims 1-22. Claims 1, 8, 15, and 22 Whether The Prior Art Discloses The Claimed Metadata Appellants argue the Examiner erred in finding Boose teaches metadata identifying "links between the document component and one or 3 Appeal2015-006666 Application 13/414,940 more other document components" and "a unique identifier for each of the one or more other document components," as recited in claim 1. App. Br. 8; Reply Br. 2--4. More specifically, Appellants argue Boose only teaches that "an original drawing sheet may be reviewed, as a legacy graphic file 22, to identify objects in the drawing sheet, which objects may then be contained in a reference object file. Boose also discloses that a source sheet may be linked to a target sheet." App Br. 8. Appellants also argue even if Boose teaches a unique identifier, it is not "the claimd [sic, claimed] invention in which the structured information in the metadata includes a unique identifier of other document component(s) (alleged to correspond to Boose's drawing sheets)." Id. The Examiner finds "Boose explicitly discloses creating links between electronic files based on the media content of the file." Non-Final Act. 5 (citing Boose 7:25--41). The Examiner further finds Boose teaches creating a metadata file that includes information about those links in extensible markup language. Id. (citing Boose 10:8-22). Additionally, the Examiner finds Boose teaches an object id to identify objects with a unique identifier and that it would have been obvious to one of ordinary skill in the art at the time of the invention to combine a unique identifier for the links to the teachings of Horvitz and Boose in order to prevent the problems associated with having conflicting identifiers. Id.; Ans. 18, 19. We are not persuaded by Appellants arguments that the Examiner erred. Instead, we agree with and adopt the Examiner's findings. Boose teaches a method for "performing automated linking between sheets of a drawing set." Boose 7:26--42. Boose further teaches a file that "contains all the reference designators, off-sheet references, elements, components, and 4 Appeal2015-006666 Application 13/414,940 packets of information identified by the reference recognizer 24 and the features added by the reference object generator 26, as described below." Boose 10:8-22 (emphasis omitted). Based on the broadest reasonable interpretation of metadata, that file contains metadata and the links discussed above. Finally, although Boose does not explicitly disclose using a unique identifier "for each of the one or more other document components," as recited in claim 1, Boose teaches using unique identifiers (Boose 11 :9--45) and would have at least suggested to a person of ordinary skill in the art using that unique identifier for the other document components to avoid problems associated with using the same identifier for multiple objects. Whether The Obvious To Try Rationale Was Conclusory Appellants argue the Examiner erred in finding an ordinarily skilled artisan would have found it obvious to try modifying Horvitz and Boose. App. Br. 8-9. Although Appellants acknowledge that claims can be obvious under§ 103(a) if it would have been "obvious to try" the proposed combination, Appellants argue the Examiner improperly relied on conclusory statements without an articulated reasoning. Id. Appellants also argue in the Reply Brief that the Examiner's finding in the Answer providing a more detailed reason should be treated as a new ground of rejection. Reply Br. 4. Appellants further argue that even if the modification proposed by the Examiner were made, it would not result in the claimed invention. We are not persuaded by Appellants' arguments that the Examiner erred. In the Answer, the Examiner expanded upon the finding of why a 5 Appeal2015-006666 Application 13/414,940 person of ordinary skill in the art would modify the Horvitz/Boose combination to include unique identifiers: The use of an unique identifier to reference a document would have been obvious to try because conflicting identifiers or variables has generally been a problem in the computer science field well before the time of the current invention. In other words, are generally links or variables unique at least to their scope. In other words, if identifiers for a group of variables is generate in the form of names, a predictable solution would be to create unique or different names for each variable. Accordingly it would been obvious to try "unique identifiers" for document components. Ans. 19. The Examiner's finding of a reason to modify the teachings of the references is supported by "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Additionally, we do not address Appellants' contention that the Examiner's finding of a reason to modify should have been designated a new ground of rejection. Any request to designate the Answer a new ground of rejection "must be by way of petition to the Director," and any failure to do so within two months and before the filing of the Reply Brief "will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection." 37 C.F.R. § 41.40(a). The time for filing such a petition has passed and the request is waived. Finally, to the extent Appellants' argument that the modification relied on by the Examiner does not teach the claimed invention (Reply Br. 4) is commensurate with the argument raised in the Appeal Brief, we previously found that argument unpersuasive. To the extent Appellants raise 6 Appeal2015-006666 Application 13/414,940 a new argument in the Reply Brie±: because it was presented for the first time in the reply brief, it has been waived. Optivus Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (informative opinion) (absent a showing of good cause, the Board is not required to address an argument newly presented in the reply brief that could have been presented in the principal brief on appeal); 37 C.F.R. §41.41(b )(2) (same). Whether There Was A Rationale For Modification Of The Prior Art Appellants argue that a person of ordinary skill in the art would not have combined Boose and Horvitz because "Boose' s system alone purports to solve the cited need, and without any combination with Horvitz" and "Horvitz appears to already address the same drawbacks addressed by Boose (i.e., searching and browsing large amounts of information to identify items of interest), which suggests that one skilled in the art would not have been led to Boose." App. Br. 9 We are not persuaded by Appellants' arguments that the Examiner erred. Contrary to Appellants' arguments, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), the Supreme Court held that "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." 550 U.S. at 417. Moreover, we agree with the Examiner that a person of ordinary skill in the art would have modified Horvtiz with the teaching of Boose because "Boose discloses a need 'for a system that efficiently creates the intelligent graphic linking between 7 Appeal2015-006666 Application 13/414,940 common elements depicted on different drawing sheets,'" and the combination of the teachings of the references would "create a more efficient linking system." Ans. 20 (citing Boose 2:65---67). The fact that Horvitz may have provided a solution does not mean that the person of ordinary skill in the art would not consider better or different alternatives. According! y, we sustain the Examiner's rejection of claim 1, along with the rejections of claims 8 and 15, which are argued on the same grounds, and claim 22, which is not separately argued. Claims 2-5, 9-12, and 16--19 Appellants argue the Examiner erred in finding Horvitz teaches the additional limitations of the dependent claims because the Examiner noted Horvitz does not teach links: Dependent Claims 2-5 recite various specific manners according to which link( s) between a document component and other document component( s) are identified. For each of these claims, the Examiner cites Horvitz as disclosing the recited features. Appellants note that the Examiner already concedes that Horvitz does not disclose identifying links according to independent Claim 1 (and similarly independent Claims 8 and 15). Office Action of Sep. 30, 2014, pp. 5, 7 and 9-10. Appellants respectfully submit that if Horvitz does not disclose identifying links as per the independent claims, Horvitz cannot reasonably disclose the specific manners of identifying littles as per Claims 2-5. App. Br. 10. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly 8 Appeal2015-006666 Application 13/414,940 suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCP A 1981 ). Because Appellants arguments are directed to Horvitz individually and not the combined teachings of the references-specifically the combination of Horvitz and Boose as discussed with regard to claim 1- we are not persuaded by Appellants arguments that the Examiner erred. Accordingly, we sustain the Examiner's rejection of claims 2-5, 9-12, and 16-19. Clams 6, 13, and 20 Appellants argue the Examiner erred in finding Horvitz and Boose teach or suggest the additional limitations of claims 6, 13, and 20. App. Br. 10-11. Specifically, Appellants argue paragraph 28 of Horvitz does not contain the additional limitations recited in the claims. Id. Appellants also argue the Examiner did not address the rejection in the Examiner's Answer. The Examiner finds that paragraph 3 6 of Horvitz teaches the additional limitation of claims 6, 13, and 20. Non-Final Act. 12, 14, 16-17. We are not persuaded of error because Appellants' argument does not address the reasoning relied on by the Examiner (Non-Final Act. 12, 14, and 16-17) and, thus, does not adequately address the rejection on appeal. Specifically, although the Examiner relies on paragraph 36 of Horvitz (id.), Appellants do not address that paragraph. Instead, Appellants only address paragraph 28. App. Br. 10-11. Nor are we persuaded that the Examiner's failure to specifically respond to Appellants' argument in the Answer is relevant to whether or not 9 Appeal2015-006666 Application 13/414,940 the Examiner erred in rejecting the claims in the Non-Final Action. Appellants cite to MPEP 707.07([) (Reply Br. 7), which discusses the contents of Office Actions. That is not applicable to the Examiner's Answer in Appeal. Instead, the relevant sections of the MPEP states: If there is a complete and thorough development of the issues at the time of final rejection, it is possible to save time in preparing the examiner's answer required by 37 CPR 41.39 by copying a rejection from a prior Office action and then pasting the copied rejection into the answer. MPEP 1207 .2. Although the Examiner can add further explanation if necessary, it is not required. Id. The Examiner's Answer included a copy of the rejection of the claims. See Ans. 10, 12, 14--15. No more is required. Accordingly, we sustain the Examiner's rejection of claims 6, 13, and 20. Claims 7, 14, and 21 With respect to dependent claims 7, 14, and 21, Appellants merely contend that because the additional reference used in the rejection of those claims (Gerhard) do not cure the shortcomings of the other references applied against claim 1, the Examiner failed to make a prima facie case of obviousness for these claims. App. Br. 11. Because we determine that the rejection of claim 1 is not erroneous for the reasons discussed above, we sustain the rejections of these claims. 10 Appeal2015-006666 Application 13/414,940 DECISION For the above reasons, we affirm the Examiner's decisions rejecting claims 1-22. 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 11 Copy with citationCopy as parenthetical citation