Ex Parte Mayer

Patent Trials and Appeals Board

Jan 16, 2015

11923272 - (D) (P.T.A.B. Jan. 16, 2015)

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