Ex Parte Naick et al

Patent Trial and Appeal Board

Nov 13, 2017

11847460 (P.T.A.B. Nov. 13, 2017)

United States Patent and Trademark Office
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.
11/847,460 08/30/2007 Indran Naick AUS920070546US1 2169
124677 7590 11/15/2017
Russell No- PT T C 6TRM ATTSR
EXAMINER
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
TILLERY, RASHAWN N
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INDRAN NAICK and JEFFREY K. WILSON
Appeal 2016-008637
Application 11/847,460
Technology Center 2100
Before JOHN G. NEW, LINZY T. McCARTNEY, and
KIMBERLY McGRAW, Administrative Patent Judges
NEW, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008637
Application 11/847,460
PROCEDURAL HISTORY
The Examiner’s prior Final Rejection of claims 1, 3—8, and 10—20 of
Appellants’ application was previously appealed to the Board as Appeal No.
2012—011115. The Board affirmed the Examiner’s rejection of the claims
on June 17, 2015 (the “Decision”). Following the Board’s affirmance,
Appellants amended the claims and resumed prosecution. Appellants now
appeal to the Board from the Examiner’s Final Rejection of the amended
claims, dated March 3, 2016.
SUMMARY OF THE PRESENT APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3—8, and 10-20.1 Specifically,
claims 1, 3, 4, 8, 10, 11, 13—16, and 18—20 stand rejected as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of van
Rietschote et al. (US 7,725,507 Bl, May 25, 2010) (“van Rietschote”),
McKee et al. (US 2005/0091667 Al, April 28, 2005) (“McKee”), Centerwall
et al. (US 6,636,240 Bl, October 21, 2003) (“Centerwall”), and Parry et al.
(US 2005/0231746 Al, Oct. 20, 2005) (“Parry”).
Claims 5,12, and 17 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of van Rietschote, McKee,
Centerwall, Parry, and Mooney et al. (US 6,980,331 Bl, December 27,
2005) (“Mooney”).
1 Claims 2 and 9 are canceled. App. Br. 2.
2
Appeal 2016-008637
Application 11/847,460
Claim 7 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of van Rietschote, McKee, Centerwall,
Parry, and Kashi (US 2006/0010379 Al, January 12, 2006) (“Kashi”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a technique for associating user-
defined tasks with electronic files, including associating a custom control
with an electronic folder. The custom control corresponds to a user-defined
task and the electronic folder includes multiple electronic files grouped
according to a defined relationship. The user-defined task is then executed
on at least one of the multiple electronic files when the custom control,
which does not correspond to a system control, is selected. Abstract.
REPRESENTATIVE CLAIM
Claims 1, 8, and 15 are the only independent claims on appeal. Claim
1 is representative of the claims on appeal and recites:
1. A method of associating user defined tasks with electronic
files, comprising:
creating, using a data processing system, an electronic
folder using a system control;
creating, using the data processing system, a user
selectable custom control;
associating, using the data processing system, the user
selectable custom control with the electronic folder, wherein the
custom control corresponds to a user defined task that is
3
Appeal 2016-008637
Application 11/847,460
associated with a specific application and the electronic folder
includes multiple electronic files grouped according to a defined
relationship and belonging to a same category;
internally inspecting, using the data processing system, in
response to selection of the custom control by a user, one of the
multiple electronic files to retrieve content from the inspected
one of the multiple electronic files; and
executing, using the data processing system and utilizing
the retrieved content, the user defined task on at least one of the
multiple electronic files in response to the selection of the custom
control by the user, wherein the custom control is independent of
the system control and at least some of the multiple electronic
files have different extensions, and wherein the user defined task
includes multiple tasks associated with the custom control, where
a first one of the multiple tasks transforms the at least one of the
multiple electronic files to a different format and a second one of
the multiple tasks transfers the transformed ones of the at least
one of the multiple electronic files in response to the selection of
the custom control by the user.
App. Br. 21.2
2 Claim 1 of Appellants’ prior appeal recites:
1. A method of associating user defined tasks with
electronic files, comprising:
associating a user selectable custom control with an
electronic folder, wherein the custom control corresponds to a
user defined task that is associated with a specific application and
the electronic folder includes multiple electronic files grouped
according to a defined relationship and belonging to a same
category;
internally inspecting, in response to selection of the
custom control by a user, one of the multiple electronic files to
4
Appeal 2016-008637
Application 11/847,460
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner’s reasoning and conclusion
that the claims are obvious over the cited prior art references. We address
Appellants’ arguments below.
As an initial matter, we observe that Appellants repeat their
arguments, presented in their prior appeal, that: (1) van Rietschote’s
“special behavior,” while user defined, is not user initiated by selecting a
custom control and that dynamic directories are created by entering an
appropriate command or parameters accompanying a command into a
command line interface, as recited in claim 1 (App. Br. 16); (2) van
Rietschote’s disclosure that creating a dynamic directory by entering a
command or parameters accompanying a command into a command line
interface neither teaches nor suggests a custom control that is user selectable
(id.); (3) van Rietschote, when read in context, does not teach or suggest
internally inspecting electronic files, but merely discloses examining a list of
files or files names (id.); (4) the custom controls taught by McKee, while
user selectable, are not user defined and do not correspond to a user defined
retrieve content from the inspected one of the multiple electronic
files; and
executing, utilizing the retrieved content, the user defined
task on at least one of the multiple electronic files in response to
the selection of the custom control by the user, wherein the
custom control is independent of a system control and at least
some of the multiple electronic files have different extensions,
and wherein the user defined task includes multiple tasks.
See Decision 3.
5
Appeal 2016-008637
Application 11/847,460
task that is executed on a file (id. at 17).
All of these arguments were previously considered by the Board in
our prior Decision and were determined to be not persuasive. See Decision
3—5, 7—9. As such, we are not persuaded by Appellants’ arguments for the
same reasons stated in our prior Decision. Id.
Furthermore, all of these arguments address limitations of the claims
that have not been substantively amended by Appellants; nor do Appellants
argue that any amendment to their claims subsequent to the Decision have
overcome the Board’s findings or conclusions in its prior Decision. In other
words, Appellants do not contend, expressly or implicitly, and we do not
see, that the amendments to their claims are sufficient to somehow overcome
the Examiner’s rejection, which was previously appealed to this Board and
affirmed: Appellants merely repeat their prior arguments. Nor did
Appellants file a timely Request for Rehearing of the Board’s Decision
rejecting these arguments (see 37 C.F.R. § 41.52). Consequently, because
this issue presented in the second appeal is identical to the one decided in the
first action; (2) the issue was actually argued in the first action; (3)
resolution of the issue was essential to a final judgment in the first action;
and (4) the plaintiff had a full and fair opportunity to litigate the issue in the
first action, the principle of res judicata applies, and Appellants may not re­
argue the final Decision by the Board upon these issues in the present
appeal. See Ex parte Anttila, Appeal No. 2011-006071, at 4, May 1, 2013;
see also Ex parte Macauley, Appeal No, 2015-000373, at 9-10, February 10,
2017 (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)); see also
37 C.F.R. § 41.2 (Board decisions in a panel proceeding are considered final
when the decision disposes of all issues with regard to the party seeking
6
Appeal 2016-008637
Application 11/847,460
judicial review, and does not indicate that further action is required). We
consequently conclude that these issues are precluded and we do not
consider Appellants’ arguments with respect to these issues.
Moreover, even if Appellants’ arguments were to be considered, they
are not persuasive of Examiner error for the reasons set forth in the
Examiner’s Answer and our Previous Decision.3
Issue 1
Appellants also argue that van Rietschote, McKee, and Centerwall fail
to teach or suggest the limitations that were added to the independent claims
following our Decision. App. Br. 16—17. For example claim 1 was
amended to include:
[Wjhere a first one of the multiple tasks transforms the at least
one of the multiple electronic files to a different format and a
second one of the multiple tasks transfers the transformed ones
of the at least one of the multiple electronic files in response to
the selection of the custom control by the user.
Similar language was added to independent claims 8 and 15. Appellants’
argument is not persuasive as the Examiner also relies upon Parry as
teaching this limitation of the claim. See Final Act. 6—8. “[0]ne cannot
show non-obviousness by attacking references individually where ... the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (C.C.P.A. 1981). We are consequently not persuaded by these
arguments.
3 We herein incorporate by reference our findings and conclusions as set
forth in our Decision at 5—10.
7
Appeal 2016-008637
Application 11/847,460
Issue 2
Appellants argue that, at most, Parry teaches scanning a physical
object to produce a scanned image, transforming the scanned image into a
data format, e.g., a PDF, and then creating and sending an electronic
message (to email addresses that are manually entered by a user or manually
selected from a list by a user) that includes the scanned image as an
attachment. App. Br. 18. Appellants contend that all of these processes
require multiple acts by a user and are not achieved by a single selection of a
user selectable custom control. Id.
The Examiner finds that Parry teaches that a first one of the multiple
tasks transforms the at least one of the multiple electronic files to a different
format (encrypting an electronic file (e.g., the document composition
process digitizes the scanned object data and converts it into an encrypted
data format)). Final Act. 7 (citing Parry 1 66). The Examiner further finds
that Parry teaches a second one of the multiple tasks transfers at least one of
the multiple electronic files in response to the selection of the custom control
by the user, then automatically emailing that electronic file to a desired
recipient, i.e., made into a document that can be attached to an e-mail
message addressed to the e-mail address. Id. (citing Parry fflj 78, 4).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to combine the teachings of van Rietschote, McKee,
and Centerwall allowing a user to define custom tasks independent of system
controls for electronic folders containing groups of specially related files,
one of those custom tasks being to automatically extract e-mail addresses
from files in a folder and e-mail a file to those extracted addresses, with the
teachings of Parry of encrypting files that are to be emailed. Final Act. 7.
8
Appeal 2016-008637
Application 11/847,460
The Examiner also concludes that a person of ordinary skill would have
recognized that e-mails and their attached files, such as those produced by
Centerwall’s task, are commonly encrypted. Id.
We agree with the Examiner’s findings and reasoning and adopt it as
our own. Parry teaches:
Once the document composition process has digitized the
scanned object data with the insertion fields as discussed above,
the composed documents can be ... sent in an attached file to an
e-mail message that is transmitted to an e-mail address(es)
specified by the user. ... Moreover, the image composer 217 of
memory 206 can provide the digital transmitter device 102 with
the capability of performing a variety of document composition
routines for a plurality of data formats. These data formats
include an American Standard Code for Information Interchange
(ASCII) formatted data format, a word processor format, a
spread sheet data format, a Portable Document Format (PDF)
data format, a slide show software data format such as the Power
Point® software data format from Microsoft Corporation of
Redmond Wash., USA, a graphic image file format (GIFF) data
format, a tagged image file format (TIFF) data format, a Joint
Photographic Experts Group (JPEG) data format, a bit-map data
format, an optical character recognition (OCR) data format,
and/or other forms of encoded data, including, e.g., encrypted
data, etc.
Parry | 66. Parry thus teaches “transforming] the at least one of the
multiple electronic files to a different format” (including encrypting it) and
“transferring the transformed ones of the at least one of the multiple
electronic files” via email. See, e.g., Spec. 121 (“The contact may then be
automatically contacted by telephone using a VoIP application or by email
using an email application. As another example, the task may correspond to
multiple tasks, such as creating a PDF file of a selected file and emailing the
PDF file to a desired recipient”).
9
Appeal 2016-008637
Application 11/847,460
Appellants contend that Perry teaches that all of the above actions,
and particularly the email transfer actions, require multiple actions by an
individual, and are not therefore achieved by a single selection of a user
selectable control as required by the independent claims. We disagree.
Parry teaches that the change in formatting can be performed by an
automatic action. See Parry | 66 (stating that “image composer 217 of
memory 206 can provide the digital transmitter device 102 with the
capability of performing a variety of document composition routines for a
plurality of data formats”). Additionally, Centerwall teaches: “creating] a
new distribution list from, a plurality of E-mail addresses dynamically
generated from a plurality of documents selected by a user from a list of
received E-mail documents in a browser window or other view which is able
to access an E-mail facility.” Centerwall Abstr. We therefore are not
persuaded by Appellants argument that the cited art does not teach the
disputed limitations as required by the independent claims. We further agree
with the Examiner that a person of ordinary skill in the art would have
realized that the encryption format change and preparation for email taught
by Parry could be combined with the generation of email address from a
dynamically-generated distribution list of email addresses via a selectable
custom control as taught by Centerwall so that the contents of those files are
secure from unauthorized viewers. We consequently affirm the Examiner’s
rejection of independent claims 1,8, and 15. We further affirm the
Examiner’s rejections of dependent claims 3—7, 10-14, and 16—20, which
were not argued separately. App. Br. 19.
10
Appeal 2016-008637
Application 11/847,460
DECISION
The Examiner’s rejection of claims 1, 3—8 and 10-20 as unpatentable
under 35 U.S.C. § 103(a) 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)(l)(iv) (2010).
AFFIRMED
11