Ex Parte MarshDownload PDFPatent Trial and Appeal BoardMar 24, 201612151706 (P.T.A.B. Mar. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/151,706 05/08/2008 23589 7590 03/28/2016 Hovey Williams LLP 10801 Mastin Blvd., Suite 1000 Overland Park, KS 66210 FIRST NAMED INVENTOR Robert E. Marsh 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. 43247 2291 EXAMINER HOFFLER, RAHEEM ART UNIT PAPER NUMBER 2155 NOTIFICATION DATE DELIVERY MODE 03/28/2016 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): patents@hoveywilliams.com amalik@hoveywilliams.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT E. MARSH Appeal2014-004461 Application 12/151, 7 06 Technology Center 2100 Before CAROLYN D. THOMAS, JASON V. MORGAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 3-8, 10-14, and 16-22. Claims 2, 9, and 15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal2014-004461 Application 12/151, 7 06 STATEMENT OF THE CASE Appellant's invention is directed to a method and computer-readable media for creating verified business transaction documents. (Spec. 2). Claims 1 and 8, reproduced below, are representative of the claimed subject matter: 1. A method for creating a business transaction document with a verification code, the method comprising: receiving authentication requests from one or more users to access a database for storing electronic document versions; authenticating one or more users to control access to the database; receiving a plurality of versions of an electronic document from a plurality of authenticated users for storage in the database; associating a version identifier with each electronic document version received into the database; storing the electronic document versions and the associated version identifiers in the database; receiving a selection from an authenticated user to select one version from the plurality of versions of the electronic document for finalization; creating a non-alterable final document equivalent to the selected document version with a verification code added to the selected document version; and storing the non-alterable final document in the database. 8. One or more physical computer-readable media having computer-executable instructions embodied thereon for performing a 2 Appeal2014-004461 Application 12/151, 7 06 method of creating a business transaction document with a verification code, the method comprising: receiving authentication requests from one or more users to access a database for storing electronic document versions; authenticating one or more users to control access to the database; receiving a plurality of versions of an electronic document into the database from a plurality of authenticated users for storage in a database; associating a version identifier with each electronic document version received into the database; storing the electronic document versions and the associated version identifiers in the database; receiving a selection from an authenticated user to select one version from the plurality of versions of the electronic document for finalization; adding verification code to the selected document version wherein the verification code appears on a printed copy of the document; creating a non-alterable final document equivalent to the selected document version with a verification code added to the selected document version; storing the non-alterable final document in the database; and preventing receipt of additional document versions after the non-alterable final document has been stored in the database. 3 Appeal2014-004461 Application 12/151, 7 06 REJECTIONS Claims 1, 3-8, 10-14, and 16-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Friesenhahn et al. (US 2007 /0260648 Al; published Nov. 8, 2007) and Dias et al. (US 2008/ 0005667 Al; published Jan. 3, 2008). ANALYSIS After consideration of each of Appellant's arguments, we agree with the Examiner. We refer to and adopt the Examiner's findings and conclusions as set forth in the Examiner's Answer and in the action from which this appeal was taken. (Ans. 4; Final Act. 2-13). Our discussions here will be limited to the following points of emphasis. Issue 1: Did the Examiner err in finding the combination of Friesenhahn and Dias teaches or suggests "receiving a plurality of versions of an electronic document from a plurality of authenticated users for storage in the database," as recited in independent claims 1 and 8, and commensurately recited in independent claim 18? Appellant contends Friesenhahn does not teach receiving a plurality of versions of a document from a plurality of authenticated users because Friesenhahn teaches that only the author (rather than a reviewer or the general public) of a document can modify, edit, and submit the document. (App. Br. 16-18; Reply Br. 5). According to Appellants, Friesenhahn only allows a plurality of users to view the drafts of the documents, not to modify and create multiple versions of the document. (App. Br. 17; Reply Br. 5). 4 Appeal2014-004461 Application 12/151, 7 06 Moreover, Appellant contends Friesenhahn designates only one author. (Reply Br. 5). We are not persuaded by Appellant's arguments. Friesenhahn describes storage of rnultlple versions of documents. (Friesenhahn ~ii 53, 57, 58). Friesenhahn teaches restricting access to the different versions of documents through the use of permissions based on the document version and the user's specified audience, such as author, reviewer and/or the general public. (Friesenhahn i-fi-147, 51, 53). Friesenhahn further teaches that certain document versions may be accessed by multiple audiences. (Friesenhahn i1 51 ). We agree with the Examiner that such disclosures teach, or at least suggest, the disputed limitation. (See Final Act. 3, citing Friesenhahn i-fi-153, 54, 57, 58; Final Act. 12, citing Friesenhahn i-fi-147, 51). Moreover, we are not persuaded by Appellant's argument that Friesenhahn teaches away from Appellant's invention because paragraph 40 of Freisenhahn states "[i]n other circumstances, a wider audience may be able to view the draft, such as the author's supervisors, while only the author may be able to make changes to the draft" (App. Br. 16, citing Friesenhahn i140; Reply Br. 6, 7). Friesenhahn's disclosure in paragraph 40 does not rise to the level of teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (teaching away requires a reference to criticize, discredit, or otherwise discourage the claimed solution). Moreover, we are not persuaded Friesenhahn's documents and versions are limited to a single author; rather, we agree with the Examiner that Friesenhahn at least suggests a reviewer may also have the ability to make corrections or alterations to the document. (See Ans. 4; Final Act. 12, citing Friesenhahn i-fi-147, 51). See KSR int 'l C'o. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (The obviousness "analysis need 5 Appeal2014-004461 Application 12/151, 7 06 not seek out precise teachings directed to the specific matter of the challenged claim, for a comi can take account of the inferences and creative steps that a person of ordinary skill in the art would ernploy.~'). Accordingly, we are not persuaded the Examiner erred in finding Friesenhahn teaches or suggests the disputed limitation. Issue 2: Did the Examiner err in finding the combination of Friesenhahn and Dias teaches or suggests "associating a version identifier with each electronic document version received into the database," as recited in independent claims 1 and 8, and commensurately recited in independent claim 18? Appellant contends Dias does not disclose the disputed limitation because Dias merely discloses the creation of a single electronic document in accordance with user-specified parameters. (App. Br. 19; Reply Br. 7, 8). We are not persuaded by Appellant's arguments. Appellant is attacking Dias in isolation for lacking a teaching the Examiner relied on the combination of Friesenhahn and Dias to show. It is well established that nonobviousness cannot be established by attacking references individually when the rejection is based on a combination of prior art references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). Appellant's arguments do not take into account the Examiner's reliance on Friesenhahn to receive and store multiple versions of electronic documents, (See Final Act. 3, citing Friesenhahn i-fi-16, 53, 54, 57, 58, Fig. 4), and are thus unavailing to persuade us of Examiner error. 6 Appeal2014-004461 Application 12/151, 7 06 Accordingly, we are not persuaded the Examiner erred in finding the combination of Friesenhahn and Dias teaches or suggests the disputed limitation. Issue 3: Did the Examiner err in finding the combination of Friesenhahn and Dias teaches or suggests "receiving a selection from an authenticated user to select one version from the plurality of versions of the electronic document for finalization," as recited in independent claims 1 and 8, and commensurately recited in independent claim 18? Appellant contends Friesenhahn does not disclose selecting one version from a plurality of versions to be finalized because Friesenhahn discloses a hierarchy whereby only a level 1 document can be turned into a level 2 document, and only a level 2 document can be turned into a level 3 document (i.e., a finalized document). (App. Br. 18). Therefore, according to Appellant, there is no selection from the plurality of versions because only the most recent version or the level 2 version may be finalized. (App. Br. 19; Reply Br. 8). We are not persuaded by Appellant's arguments. As discussed supra, Friesenhahn describes storage of multiple versions of documents. (Friesenhahn 41~ 53, 57, 58). As depicted in Figure 5, different versions of a document may be assigned to different hierarchical levels. (See Friesenhahn i-fi-153, 40-44). Appellant's argument is unpersuasive because it is incommensurate with the scope of the claim language. Regardless of the level at which a document version resides, the claim language only requires that the user select one version from the plurality of versions. Moreover, selecting the most recent version of the document to be finalized is 7 Appeal2014-004461 Application 12/151, 7 06 consistent with Appellant's Specification which describes "this invention allows the parties to designate a single version (typically the most recent version) of the document as the 'final' version." (Spec. 3, lines 1, 2). Moreover, paragraph 43 of Freisenhahn describes requiring supervisor approval to transition from a minor version to a major version, which at least suggests an authenticated user selecting one version from the plurality of versions of the electronic document for finalization. Accordingly, we are not persuaded the Examiner erred in finding the Friesenhahn teaches or suggests the disputed limitation. Issue 4: Did the Examiner err in finding the combination of Friesenhahn and Dias teaches or suggests "preventing receipt of additional document versions after the non-alterable final document has been stored in the database," as recited in independent claim 8 and dependent claim 17? The Examiner relies on paragraph 28 of Dias to teach or suggest the disputed limitation, which states " [the finalized document] is much more difficult to modify further (e.g., further modifications are substantially prevented)." (Final Act. 6). The Examiner finds "[by] preventing modification of the finalized document, no other versions of the final draft of a document can be saved, which would prevent a varying version from being created." (Advisory Act.). Appellant contends Dias does not disclose the disputed limitation because Dias discloses preventing modifications of the finalized document rather than preventing "adding additional documents (e.g., different versions of the document saved under different file names) to a database or folder." (App. Br. 20, citing Dias i-f 28). Specifically, Appellant argues "while saving 8 Appeal2014-004461 Application 12/151, 7 06 a document as a PDF may prevent modifications or alterations to that specific PDF file, it does not prevent a varying version of the document from being created and saved as a separate file in the database." (App. Br. 21 ). Thus, according to Appellant, "preventing modifications to one document in the database does not inherently prevent receipt of additional document versions by the database." (Id.) The claim language requires "preventing receipt of additional document versions after the non-alterable final document has been stored in the database." However, the claim language does not require preventing receipt of additional document versions relating only to the non-alterable final document. Rather, the language as written requires preventing receipt of additional document versions of any electronic document after the non- alterable final document has been stored in the database. "Construing claims broadly during prosecution is not unfair to the applicant ... because the applicant has the opportunity to amend the claims to obtain more precise claim coverage." See In re American Academy of Science Tech Center, 3 67 F.3d 1359, 1364 (Fed. Cir. 2004). By stating "no other versions of the final draft of a document can be saved, which would prevent a varying version from being created" the Examiner's interpretation of the limitation incorrectly limits the term to receipt of additional document versions of the non-alterable final document. Even so, we disagree with the Examiner's findings. The citations to Dias relied on by the Examiner describe that modifications to the final document are substantially prevented. We agree with Appellant that preventing modifications to one document does not prevent receipt of 9 Appeal2014-004461 Application 12/151, 7 06 additional document versions, whether of the non-alterable final document or any other electronic document. Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a) rejection of independent claim 8 and dependent claim 1 7. For the same reason, we do not sustain the Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 10-14, and 19, which include a similar limitation. Issue 5: Did the Examiner err in finding the combination of Friesenhahn and Dias teaches or suggests "a code segment for receiving a second alterable electronic document which is an edited version of the first alterable electronic document as edited by the second one of the authenticated users," as recited in independent claim 18? Appellant presents similar arguments as with respect to Issue 1, discussed supra. Specifically, Appellant argues that in Friesenhahn "the author provides and/or edits the various versions, while other users merely view the versions and/or approve them (as in the case of a supervisor)." (App. Br. 22). For the same reasons as set forth above with respect to Issue 1, we are not persuaded by Appellant's arguments. Accordingly, we are not persuaded the Examiner erred in finding the Friesenhahn teaches or suggests the disputed limitation. 10 Appeal2014-004461 Application 12/151, 7 06 DECISION For the above reasons, we affirm the Examiner's 35 U.S.C. § 103(a) rejection of claims 1, 3-7, 16, 18, and 20-22. We reverse the Examiner's 35 U.S.C. § 103(a) rejection of claims 8, 10-14, 17, and 19. 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-IN-PART lv 11 Copy with citationCopy as parenthetical citation