11230775 (P.T.A.B. May. 19, 2016)

Ex Parte Schaffel et al

Patent Trial and Appeal BoardMay 19, 2016

11230775 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111230,775 0912012005 121363 7590 05/23/2016 Shook, Hardy & Bacon L.L.P. (Adobe Systems Incorporated) Intellectual Property Department 2555 Grand Blvd Kansas City, MO 64108 FIRST NAMED INVENTOR Robert Schaffel 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. 2055.014US1 4329 EXAMINER HAQ,NAEEMU ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 05/23/2016 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 ROBERT SCHAFFEL, MICHAEL JAMROSY, and DANIEL C. BROTSKY Appeal2014-001314 Application 11/230,775 Technology Center 3600 Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1-19, 21-23, and 28-32 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF THE DECISION We REVERSE. Appeal2014-001314 Application 11/230,775 THE INVENTION The Appellants' claimed invention is directed to digital asset management methods (Spec., para. 1 ). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computer-implemented method comprising: receiving one or more instructions to create an alternates group of assets in which the first asset is designated as an alternate of a second asset and the second asset is designated as an alternate of the first asset; and in response to receiving the one or more instructions and using a processor, creating the alternates group of assets in which the first asset is designated as an alternate of the second asset and the second asset is designated as an alternate of the first asset, the creating of the alternates group including storing, as metadata of the first asset, alternate designation information that includes an indication that the first asset belongs to the alternates group and is an alternate of the second asset, an indication that the second asset belongs to the alternates group and is an alternate of the first asset, and an alternates group identifier that identifies the alternates group in which the first asset is designated as an alternate of the second asset and the second asset is designated as an alternate of the first asset. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Carau Sr. US 2003/0210335 Al Nov. 13, 2003 Bryant US 2004/0201691 Al Oct. 14, 2004 Wilkins US 6,904,185 Bl June 7, 2005 Hintermeister US 2005/0172219 Al Aug. 4, 2005 Cooper US 7,099,040 Bl Aug. 29, 2006 Beilinson US 7,441,182 B2 Oct. 21, 2008 Duke WO 2004/01558 A2 Feb. 19,2004 2 Appeal2014-001314 Application 11/230,775 The following rejections are before us for review: 1. Claims 1, 5-7, 10, 11, 14, 16, 17, 19, 22, 28, 31, and 32 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Duke, Carau, Sr., and Bryant. 2. Claims 2 and 21 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Duke, Carau Sr., Bryant and Wilkins. 3. Claims 3, 4, 15, 29, and 30 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Duke, Carau Sr., and Bryant. 4. Claim 8 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Duke, Carau, Sr., Bryant, and Cooper. 5. Claims 9, 18, and 23 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Duke, Carau, Sr., Bryant and Hintermeister. 6. Claim 12 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Duke, Carau, Sr., Bryant, and Beilinson. 7. Ciaim 13 is rejected under 35 U.S.C. Â§ 103(a) as unpatentabie over Duke, Carau, Sr., and Bryant. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence 1. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2014-001314 Application 11/230,775 ANALYSIS The Appellants argue that the rejection of claim 1 is improper because the cited prior art fails to disclose the claim limitation for: creating the alternates group of assets in which the first asset is designated as an alternate of the second asset and the second asset is designated as an alternate of the first asset. (App. Br. 12). The Appellants provide remarks in this regard in the Appeal Brief at pages 12-17 and in the Reply Brief at pages 2-7. In contrast, the Examiner has determined that the cited claim limitation is shown by Duke at column 11, lines 16-18, column 19, lines 1- 14, and Figure 8 at elements 706, 708, 710, 712, and 714; and Carau at the Abstract, paragraphs 7 and 8, and Figure 6 at elements 604 and 608 (Ans. 5). We agree with the Appellants. We begin with claim construction and note that Specification makes a distinction between the terms "version" and "alternates" and their respective modules 300 and 302. In the Specification at paragraph 32, an asset version is described as a representation of an asset's state at a particular time. Each asset version may represent a revised or unrevised representation of the previous version of the asset (Spec. para. 32). Paragraph 34 gives an example of a photograph that is revised to create a "second version." Figure 4 shows a linear progression of versions from A. I to A.2, and then to A.3. In the Specification at paragraph 36, a distinction is made between "versions" and "alternates." Here, it is stated that "[i]n contrast to version management module 302, an alternates module 304 is to facilitate designation and tracking of 'alternates' of assets (e.g. assets that are associated with a project)." Paragraph 3 8 describes that the storage of an "alternate designation information creates an alternate relationship between 4 Appeal2014-001314 Application 11/230,775 first asset file and second asset file." Paragraphs 43 and 44 provide a description of Figure 5 in which the user would like to make the final version A.3 an alternate of A. I, and creates a new asset B510 with the same content of the original version 502. Here, the system also specifically "designates" that assets 500 and 600 (each which serve as an "asset group") are alternates. Thus, the Specification has made a distinction between a "version" and a designated "alternate". The Specification at paragraphs 39 and 40 also describes terms for both "alternates" and an "alternates group." Claim 1, at issue, refers to the latter as "alternates group." Here, turning to claim 1, the claim limitation at issue refers to the "alternates group" and requires: "creating the alternates group of assets in which the first asset is designated as an alternate of the second asset and the second asset is designated as an alternate of the first asset." But the citations to the prior art for Duke and Carau, Jr. disclose creating new "versions" of documents, such as edits to textual, graphical, or image content of a PDF document (see Duke 11: 16-20, 19: 1-14, Fig. 8), or images, such as edits to an original captured image on a digital camera (see Carau Abstract, paras. 7- 8), not "alternates" that have been specifically "designated" to create the "alternates group," as claimed. For these reasons, the rejection of claim 1 and its dependent claims is not sustained. The remaining independent claims 14, 19, 2 8, 3 1, and 3 2 contain a similar claim limitation to that addressed above and the rejection of these claims and the dependent claims is not sustained for the same reasons given above. 5 Appeal2014-001314 Application 11/230,775 CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. DECISION The Examiner's rejection of claims 1-19, 21-23, and 28-32 is reversed. REVERSED 6