Ex Parte Pittenger et al

Patent Trial and Appeal Board

Jul 28, 2016

12021158 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/021, 158 01/28/2008
121363 7590 08/01/2016
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
Jason T. Pittenger
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.
B627/ADBS.208846 3394
EXAMINER
JIANG, HAIMEI
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
kspringer@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON T. PITTENGER and NIGEL PEGG
Appeal2015-004129
Application 12/021, 15 81
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Adobe Systems Inc.
App. Br. 2.
Appeal2015-004129
Application 12/021, 15 8
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to "rights
application within document-based conferencing." Title.
Exemplary Claims
Claims 1 and 7, reproduced below, are representative of the subject
matter on appeal (emphasis and labeling added to contested limitations):
1. A computerized method comprising:
on a client computing device including a local copy of a
document, [L 1] retrieving a collaboration server identifier and
a document identifier from the local copy of the document, the
document including collaboration session permission data
stored therein;
connecting to a collaboration session on the collaboration
server using the collaboration server identifier and the
document identifier;
receiving a designation of a collaboration session
permission of a further collaboration session participant, the
collaboration session permission affecting an action that can be
performed by collaboration session participants each viewing a
respective local copy of the document;
[L2] storing the collaboration session permission within
the collaboration session permission data stored in the local
copy of the document; and
transmitting a representation of the collaboration session
permission to the further collaboration session participant.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 21, 2014); Examiner's Answer ("Ans.," mailed Apr. 25, 2014); Final
Office Action ("Final Act.," mailed July 8, 2013); and the original
Specification ("Spec.," filed Jan. 28, 2008).
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Application 12/021, 15 8
7. A computerized method comprising:
accessing a local copy of a document, the document local
to a client computing device performing the computerized
method;
[L3] extracting, from the local copy of the document, a
Uniform Resource Identifier of a collaboration server, a
document identifier of the local copy of the document, and
permission data;
connecting to a collaboration session on the collaboration
server using the Uniform Resource identifier and the document
identifier;
receiving conferencing data from the collaboration
server, the conferencing data including permissions data
designating permissions with regard to actions that may be
performed with regard to the local copy of the document;
[L4] storing, in the local copy of the document, the
permissions data received from the collaboration server; and
implementing the permissions data extracted from the
local copy of the document and received from the collaboration
server.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Pravetz
Roy et al. ("Roy")
Teplov et al. ("Teplov")
US 6,205,549 B 1
US 7,149,776 Bl
US 2007/0214423 Al
Minium, Jr. et al. ("Minium") US 7,827,565 B2
Bibliowicz et al. ("Bibliowicz") US 8,024,661 B2
3
Mar. 20, 2001
Dec. 12, 2006
Sept. 13, 2007
Nov. 2, 2010
Sept. 20, 2011
Appeal2015-004129
Application 12/021, 15 8
Rejections on Appeal
RI. Claims 1-6 and 13-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Teplov, Bibliowicz, Minium,
and Pravetz. Ans. 1-2.
R2. Claims 7-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Roy, Teplov, Bibliowicz, and Pravetz.
Ans. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 8-10), we decide the
appeal of Rejection RI of claims 1-6 and 13-18 on the basis of
representative independent claim 1; and we decide the appeal of Rejection
R2 of claims 7-12 on the basis of representative independent claim 7.
ISSUES AND ANALYSIS
In reaching this dec1s10n, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in their Brief so
that any such arguments are waived. 37 C.F.R. § 41.37(c)(l)(iv).
We do not agree with Appellants' arguments with respect to
claims 1-18, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellants' arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
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Appeal2015-004129
Application 12/021, 15 8
However, we highlight and address specific findings and arguments
regarding claims 1 and 7 for emphasis as follows.
1. Rejection RI of Claim 1
Issue 1
Appellants argue (App. Br. 8-10) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Teplov,
Bibliowicz, Minium, and Pravetz is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of L 1 "retrieving a
collaboration server identifier and a document identifier from the local copy
of the document, the document including collaboration session permission
data stored therein," and L2 "storing the collaboration session permission
within the collaboration session permission data stored in the local copy of
the document," as recited in claim 1?
Analysis
Appellants contend:
[A ]lthough there is permissions data stored in the document of
Pravetz, there is no description of this data having anything to
do with a collaboration session or collaboration permission.
Additionally, Pravetz fails to provide any teaching or
suggestion of modifying, receiving any updates to, or otherwise
"storing the collaboration session permission within the
collaboration session permission data stored in the local copy of
the document" as claimed.
App. Br. 9.
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Application 12/021, 15 8
We are unpersuaded by Appellants' arguments because Appellants are
arguing the references separately. The Examiner relies on Teplov, not
Pravetz, for teaching or suggesting the recitation in limitation L2 of
"collaboration session permission." Ans. 2. We further note Appellants'
Specification does not explicitly define the claim term "collaboration session
permission data."
During patent examination, a claim is given its broadest reasonable
construction "in light of the specification as it would be interpreted by one of
ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). See Spec. i-fi-189-90.
We agree with the Examiner's finding regarding Pravetz (Ans. 3)
because, as a matter of claim construction, under a broad but reasonable
interpretation, Pravetz's providing secured access to document data 113
contained in PDF file 110 to recipients listed in recipient list 115 teaches or
at least suggests the recitations in disputed limitation L l of "the document
including collaboration session permission data stored therein," and L2 of
"storing the collaboration session permission within the collaboration
session permission data stored in the local copy of the document," as recited
in claim 1. We note Appellants do not rebut the Examiner's factual findings
and legal conclusions, as there is no Reply Brief of record.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the legal conclusion of
obviousness. Therefore, we sustain the Examiner's obviousness rejection of
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Application 12/021, 15 8
independent claim 1, and claims 2---6 and 13-18 which fall therewith. See
Claim Grouping, supra.
2. Rejection R2 of Claim 7
Issue 2
Appellants argue (App. Br. 10) the Examiner's rejection of claim 7
under 35 U.S.C. § 103(a) as being obvious over the combination of Roy,
Teplov, Bibliowicz, and Pravetz is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of L3 "extracting,
from the local copy of the document, a Uniform Resource Identifier of a
collaboration server, a document identifier of the local copy of the
document, and permission data;" and L4 "storing, in a local copy of the
document, the permissions data received from the collaboration server," as
recited in claim 7?
Analysis
Appellants contend:
Appellants respectfully submit that these elements for which
Pravetz is asserted are similar to the elements of patentable
claim 1 recited above and shown to be missing from Pravetz.
Appellants therefore respectfully submit that independent claim
7 and claims 8-12 that depend therefrom are equally distinct
over Pravetz for at least the same reasons as discussed above
with regard to patentable independent claim 1.
App. Br. 10.
We agree with the Examiner's finding that Pravetz's storing of an
encapsulated permission key within the local PDF document with a recipient
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Application I 2/02 I, I 5 8
list for accessing the PDF document teaches or at least suggests limitations
L3 and L4, as recited in claim 7. Final Act. I3-I4.
We note the dispositive issue presented with respect to Rejection R2
of claim 7 is essentially the same as that presented with respect to Rejection
RI of claim I in Issue 1, supra. We find the Examiner has rebutted
Appellants' arguments in the Answer regarding claim I by a preponderance
of the evidence. Ans. 2-3. Accordingly, we also sustain the Examiner's
§ I03 Rejection R2 of claim 7, and claims 8-I2 which fall therewith. See
Claim Grouping, supra.
CONCLUSIONS
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims I-I8 under 35 U.S.C. § I03(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims I-I8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § I. I 3 6( a )(1 )(iv).
AFFIRMED
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