Ex Parte Herbach et al

Patent Trial and Appeal Board

Nov 26, 2013

11191568 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/191,568 07/27/2005 Jonathan D. Herbach AD01.P646 6435
111003 7590 11/27/2013
Adobe / Finch & Maloney PLLC
50 Phillippe Cote Street
Manchester, NH 03101
EXAMINER
NGUYEN, THU N
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
11/27/2013 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 JONATHAN D. HERBACH and GARY GILCHRIST
____________________

Appeal 2011-004564
Application 11/191,568
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, MIRIAM L. QUINN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The claimed subject matter relates to distributed document version
control (Spec. ¶ 2).
Claim 1 is illustrative and is reproduced below with a disputed
limitation emphasized:
1. A computer-implemented method comprising:
receiving information, in a distributed document control
system, specifying a locally saved copy of a first electronic
document;
determining, in response to the received information,
whether the first electronic document should supersede a
second electronic document in the distributed document control
system; and
storing, based on an outcome of the determining,
information in the distributed document control system that
links the first electronic document with the second electronic
document in a superior-subordinate relationship such that
when an action is requested with respect to the second
electronic document, the distributed document control system
forces an action to be taken with respect to the first electronic
document;
where the receiving, the determining, and the storing are
performed by one or more computers programmed to perform
these operations.

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References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Larose
Levergood
US 2002/0087876 A1
US 2006/0095526 A1
Jul. 24, 2002
May 4, 2006

Rejections
The Examiner made the following rejections:
Claims 1, 3, 4, 6, 8, 10, 12, and 16–18 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Larose (Ans. 3–7).
Claims 2, 5, 7, 9, 11, 13–15, and 19–21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Larose and Levergood (Ans. 8–13).

ANALYSIS
Claims 1, 3, 4, 6, 8, 10, 17, and 18
Appellants’ contentions present us with the issue of whether the
Examiner erred in finding that the step of
storing, based on an outcome of the determining, information in the
distributed document control system that links the first electronic
document with the second electronic document in a superior-
subordinate relationship such that when an action is requested with
respect to the second electronic document, the distributed document
control system forces an action to be taken with respect to the first
electronic document,

as recited in independent claim 1 and as similarly recited in independent
claim 17, is disclosed by Larose.
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Appellants specifically contend that the claim language requires that
a link is established between the first electronic document and the
second electronic document, in response to receipt of information
specifying a locally saved copy of a first electronic document, such
that when an action is requested with respect to the second electronic
document, an action is forced to be taken with respect to the first
electronic document

(App. Br. 7, emphasis by Appellants).
Larose describes a system for providing security for programs
installed in a computer in which an original program is divided into versions
of increasing functionality, with each version installed on the user’s
computer (Larose ¶ 45). Upon initiation of execution of the lowest-
functioning version by the user, security-related attributes of the user’s
computer are inspected (such as to detect the presence of a smart-card
reader), with execution of the second version being initiated in place of the
first version if the security-related attributes support the increased
functionality of the second version (id. ¶¶ 88, 89).
The Examiner finds the limitation disclosed by this substitution of
execution of the second version in place of the first version, with the second
version “superior” to the first version because it supersedes the first version
(Ans. 14). The Examiner further asserts that “[t]he determination to
install/open/execute the second version [of Larose] occurs after the request
for [the] first version [of Larose] is received,” and that a “superior-
subordinate relationship link information must be stored before the
DLL/inspection function can retrieve that information to decide to redirect
(i.e., force an action) the user to the second version” (Ans. 14–15). We
agree with this reasoning. We specifically agree that Larose discloses
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storing information that links first and second electronic documents in a
superior-subordinate relationship such that an action is forced to be taken
with respect to the first electronic document when an action is requested
with respect to the second electronic document.
Appellants respond that if the superior-subordinate relationship link
information is stored before the inspection function determines that the user
should be redirected to the superior version, such storing cannot be “based
on an outcome of the determining” as required by the claims (see Reply Br.
3–4). We are not persuaded by this argument.
As taught by Larose, multiple versions of the software are
downloaded to a local computer (Larose ¶ 66). Executable files use binding
functions so that when an executable image is starting up, the appropriate
binding function is used to ensure that executable images can only be
executed on properly qualified computer environments (id. ¶ 78). When a
user double-clicks on an icon that represents the executable file for the first
version of the software (corresponding to the “second electronic document”
recited in the claims), the binding functions are used to spawn loading of the
executable file for the second version (corresponding to the “first electronic
document” recited in the claims), allowing execution of the first version to
die (id. ¶¶ 85–89). The system thus forces an action to be taken with respect
to the second version (i.e., with respect to the “first electronic document”)
“based on an outcome” of determining whether the second version should
supersede the first version (i.e., the “second electronic document”).
Appellants also contend that the limitation of claims 4 and 18 that
requires storing a duplicate copy of the first electronic document, based on
the outcome of the determining, in “a repository of the distributed document
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control system” (App. Br. 13–14). We are not persuaded by this argument
because it does not afford “repository” the broadest reasonable construction
consistent with the Specification. See In re Amer. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
Similarly, we are not persuaded by Appellants’ argument directed at
claim 8 (App. Br. 14) that Larose does not disclose “comparing document
contents of the first electronic document and the second electronic
document” because it does not afford the term “contents” its broadest
reasonable construction consistent with the Specification.
We accordingly sustain the rejections of claims 1, 3, 4, 6, 8, 10, 17,
and 18.

Claims 12 and 16
Appellants’ contentions present us with the issue of whether the
Examiner erred in finding that the limitation
based on an outcome of the comparing, storing information in the
distributed document control system that lines the first electronic
document with the second electronic document in a superior-
subordinate relationship such that when an action is requested with
respect to the second electronic document, the distributed document
control system forces an action to be taken with respect to the first
electronic document

as recited in independent claim 12, is disclosed by Larose.
Appellants’ arguments parallel those made for claims 1 and 8 (see
App. Br. 14–16). For reasons similar to those discussed above, we also
sustain the rejections of claims 12 and 16.

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Claims 2, 5, 7, 9, 11, 13–15, and 19–21
Appellants’ contentions present us with the issue of whether the
Examiner erred in combining the teachings of Larose and Levergood in
finding claims 2, 5, 7, 9, 11, 13–15, and 19–21 unpatentable under 35 U.S.C.
§ 103(a).
As Appellants note, rejections based on obviousness grounds require
some articulated reasoning with a rational underpinning to support the legal
conclusion of obviousness (App. Br. 19). See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR International Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007)). But Appellants have identified insufficient
deficiency with the Examiner’s reasoning that “it would have been obvious
to one of ordinary skill in the art at the time the invention was made to
incorporate the features as disclosed in Levergood into [the] Larose system
to prevent intruders of the outside world from accessing the user’s LAN”
(Ans. 16). The mere fact that the Examiner relied on the same reasoning for
combining the teachings when addressing different claim elements is not
error.
We accordingly sustain the rejections of claims 2, 5, 7, 9, 11, 13–15,
and 19–21.

DECISION
The Examiner’s decision rejecting claims 1–21 is 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)(1)(iv).

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AFFIRMED

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