Ex Parte Lumley et al

Patent Trial and Appeal Board

May 26, 2016

12550383 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/550,383 08/30/2009
22879 7590 05/31/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
John William Lumley
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.
82258232 1859
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
3649
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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WILLIAM LUMLEY and STEVEN BATTLE
Appeal2014-008854
Application 12/550,383
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
ROBERT E. NAPPI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008854
Application 12/550,383
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Claim 1 under appeal reads as follows (emphasis added):
1. A computer-implemented update-triggered document-defined
workflow process comprising:
interacting with an original version of a source document so as
to trigger a document method included in said original source
document to yield an updated version of said source document; and
in response to said triggering, executing said method so as to
generate a workflow description that calls for creating, deleting, or
modifying or so as to generate a workflow that creates, deletes, or
n 1 odifies a target document other than said source document.
Rejections on Appeal
1. The Examiner rejected claims 1, 4, 5, and 11, as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Stork et al.
(US 2003/0055811 Al; publ. Mar. 20, 2003) and Stephan (US 6,892,357
B2; iss. May 10, 2005). 1
2. The Examiner rejected claims 2, 3, 6---10, and 12-14 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Stork,
Stephan, and Arthursson (US 2009/0254610 Al; publ. Oct. 8, 2009).2
1 As to this rejection, our decision as to the rejection of claim 1 is
determinative. Therefore, except for our ultimate decision, the rejection of
claims 4, 5, and 11, is not discussed further herein.
2 As to this rejection, our decision as to the underlying§ 103(a) rejection of
claim 1 is determinative. Therefore, except for our ultimate decision, the
rejection of these claims is not discussed further herein.
2
Appeal2014-008854
Application 12/550,383
Appellants' Contention3
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[A]s taught at Specification [10]-[11], a (document) method is an
executable component of a document.
App. Br. 8. Further:
Stork does disclose that an original source document can
include a control code that can trigger a method, e.g., an
encryption function or a translation function. However, the
control code is not the method (as it does not contain or specify
any steps) or function; the control code is simply a code that
triggers the method which exists in the refinement network,
which is outside the document.
App. Br. 9.
Id.
[W]hile the Examiner identifies a series of disclosures, none of
them involves a method included in a document.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
Although for the reasons below we find the foundation of Appellants'
above contention to be flawed, we agree with Appellants' overall
conclusion.
3 This contention is determinative as to the rejections on appeal. Therefore,
Appellants' other contentions are not discussed herein.
3
Appeal2014-008854
Application 12/550,383
Contrary to Appellants' argument, our review concludes that a
document method is not required to be an "executable component of a
document" by Appellants' Specification. Although Appellants argue the
Specification so requires, they cite no specific language in support thereof.
Paragraphs 10-11 referenced by Appellants do state that a method "can be
executed," but contain no requirement that they be so, and our review finds
no such limitation elsewhere in the Specification. Rather, we conclude that
the disclosed "document method" is broader than Appellants' argued
construction, and includes the control codes of Stork as concluded by the
Examiner.
However, both Appellants and Examiner overlook that each
independent claim explicitly requires that the method (in the document) be
executed (e.g., "executing said method" claim 1). We read this as requiring
that the document method be further limited to the argued executable
document method. We do not find such method to be disclosed by Stork.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-14 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, claims 1-14 have not been shown to be
unpatentable.
4
Appeal2014-008854
Application 12/550,383
DECISION
The Examiner's rejections of claims 1-14 are reversed.
REVERSED
5