Ex Parte MayerDownload PDFPatent Trial and Appeal BoardJan 16, 201511923272 (P.T.A.B. Jan. 16, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DARCY MAYER ___________ Appeal 2012-010450 Application 11/923,272 Technology Center 2100 ____________ Before JEFFREY S. SMITH, STANLEY M. WEINBERG, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals 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). We affirm. Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (“Br.”) filed January 12, 2012, and the Answer (“Ans.”) mailed April 18, 2012, for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Brief. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-010450 Application 11/923,272 2 STATEMENT OF THE CASE Introduction Appellant’s invention relates to a notary document processing and storage system. Spec. 1, ll. 8–10. Claim 3, which is illustrative of the invention, reads as follows: 3. A computer implemented method for processing and managing documents, comprising: obtaining a first electronic document; receiving user input representing annotations to the first electronic document; generating a second electronic document containing a content of the first electronic document and the annotations; generating document management information associated with the second electronic document, the document management information including at least a document ID; processing the second electronic document, including directly applying the document ID on at least some pages of the second electronic document by a computer, to generate a processed second electronic document in a read-only format, the processing step being exclusively carried out by the computer; storing the processed second electronic document in association with the document management information; and retrieving the stored second electronic document based on the document management information. The Rejections The Examiner rejected claims 3, 4, 13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Hajmiragha (US 6,289,460 B1, Sept. 11, 2001), Wood (US 6,925,599 B2, Aug. 2, 2005), and Suominen (US 7,194,618 B1, Mar. 20, 2007). Ans. 5–8. Appeal 2012-010450 Application 11/923,272 3 The Examiner rejected claims 1, 2, and 5–12 under 35 U.S.C. § 103(a) as being unpatentable over Hajmiragha, Wood, Panchbudhe (US 7,680,843 B1, Mar. 16, 2010), and Suominen. Ans. 9–13. ISSUE AND ANALYSIS1 Based on Appellant’s arguments, the principal and dispositive issue of whether the Examiner erred in rejecting exemplary claim 3 turns on whether the teachings of the combination of the references would have taught or suggested the claimed subject matter (Br. 6–12). In particular, Appellant contends that the Examiner erred in rejecting the claims as obvious over Hajmiragha, Wood, and Suominen because Wood teaches away from the claimed invention. Br. 10–11. We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. In rejecting independent claim 3 over the combination of Hajmiragha, Wood, and Suominen, the Examiner finds (Ans. 5–6) that Hajmiragha discloses all the claimed features, except for “including directly applying the document ID on at least some pages of the second electronic document by a computer, to generate a processed second electronic document in a read-only 1 Separate patentability is not argued for claims 4, 13, and 14. Except for our ultimate decision, claims 4, 13, and 14 are not discussed further herein. Appeal 2012-010450 Application 11/923,272 4 format.” The Examiner relies on Wood and Suominen for this limitation (Ans. 6–8). In particular, the Examiner properly identifies the relevant teachings in Hajmiragha, Wood, and Suominen and states how each claimed element is met by those teachings (see Ans. 5–25). The Examiner finds: Hajmiragha teaches a document management system that allows individuals to annotate/comment and sign documents electronically (see Hajmiragha, col 5, lines 41-46) and further includes document identification information such as a document name (see col 8, line 57). . . . Wood taught that document management information is displayed on document pages including electronic documents through a process of printing the document and scanning the document back into the electronic system which is combined with Hajmiragha in order to have document management information on the electronic document where Wood teaches an input method to input a variety of paper documents into the computer system of Hajmiragha that involves a well-known device that scans the paper documents to create an electronic version of the paper document. Suominen further modifies the teachings of Hajmiragha in view of Wood so that the documents that require the metadata to be displayed via a hardcopy printing process such as medical forms are printed via an electronic copy instead of printing a physical copy of a document and scanning it back into the system. The Examiner notes that the printing and scanning of the document is in reference to Hajmiragha’s system and not strictly Wood’s system as alleged by the appellant. Hajmiragha’s system is an electronic system that has document management information and Wood modified Hajmiragha so that the system can receive documents that were printed as input to the document management system (note that the document ID is associated with these documents and further note that no unexpected result occurs through the display of the document ID on the document) and Suominen modifies the combination so that the system can print an electronic copy of Appeal 2012-010450 Application 11/923,272 5 the document which will be scanned/uploaded into the document management system of Hajmiragha as input to the archiving system. As shown, Suominen complements the teachings of Hajmiragha in view of Wood. Ans. 19–20. We agree with the Examiner because Appellant’s citation to specific sections of Hajmiragha, Wood, and Suominen amounts to challenging the references individually and thus, is not convincing of error in the Examiner’s position. That is, all of the features of the structure in the secondary reference need not be bodily incorporated into the primary reference, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). In that regard, the Supreme Court has indicated: [It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. . . . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). As such, we agree with the Examiner that it would have been obvious that Hajmiragha and Suominen could be adjusted Appeal 2012-010450 Application 11/923,272 6 to accommodate the teachings of Wood. As correctly cited by the Examiner, it would have been obvious to one of ordinary skill to incorporate the concepts of Wood into Hajmiragha and Suominen without incorporating every feature of the Wood principle into Hajmiragha and Suominen. The Appellant further contends that that it would not have been obvious to combine Hajmiragha and Wood further with Suominen since applying the teaching of Suominen would destroy the operability of the Hajmiragha modified by Wood system. Br. 11. The Examiner responds that: In this case, the knowledge for combining the references is found both in the Wood reference and the general knowledge available to one of ordinary skill in the art. . . . Wood modifies the input process of inputting/creating electronic documents in the computer system of Hajmiragha’s by scanning the printed documents that have the document ID information on their pages into the computer system of Hajmiragha’s. . . . Suominen modifies this system so that the printed documents can be electronically printed and then those documents can be inputted into Hajmiragha’s system. Ans. 22–23. We observe no Reply Brief is of record to rebut such findings including the Examiner’s responses to Appellant’s arguments about the disputed feature. Therefore, in the absence of persuasive rebuttal evidence or argument to persuade us otherwise, we adopt the Examiner’s findings and underlying reasoning, which are incorporated herein by reference. Regarding claims 1, 2, and 5–12, Appellant argues Panchbudhe does not cure the alleged deficiencies of Hajmiragha, Wood, and Suominen. Br. 12. As discussed above, we find no such deficiencies in Hajmiragha, Wood, and Suominen to remedy. Appeal 2012-010450 Application 11/923,272 7 For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejections of claims 1–14 are sustained. DECISION The decision of the Examiner rejecting claims 1–14 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). AFFIRMED msc Copy with citationCopy as parenthetical citation