Ex Parte Shutt

Patent Trial and Appeal Board

Feb 27, 2017

13225179 (P.T.A.B. Feb. 27, 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.
13/225,179 09/02/2011 Michael J. Shutt 20103/09000-CON2 1998
27530 7590
Nelson Mullins Riley & Scarborough LLP
IP Department
100 North Tryon Street
42nd Floor
Charlotte, NC 28202-4000
EXAMINER
MOBIN, HASANUL
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. SHUTT
Appeal 2016-003166
Application 13/225,1791
Technology Center 2100
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—7, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Advectis, Inc., a subsidiary
of Xerox Corporation. App. Br. 1.
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Application 13/225,179
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to managing documents at an electronic
document repository and, specifically, managing permissions and versions
of a shared document. Abstract; Spec. Tflf 3—5, 8. Claims 1, 4, 5, and 6 are
independent. Claim 1 is illustrative of the invention and the subject matter
of the appeal, and reads as follows (with the disputed limitations
emphasized):
1. A system for managing documents at an electronic data
repository, wherein the documents relate to a transaction
involving parties remote from each other and having different
roles in the transaction, the system comprising:
an electronic data repository comprising computer-
readable database hardware and documents in electronic format
and that is accessible by a plurality of said parties that are remote
from the repository; and
a computer-readable device from which is executable a
computer program that receives a said document in electronic
format from a first party of the plurality of the parties,
stores the received document in the repository,
provides one or more of the parties of the plurality of
parties access rights to the received document, wherein access
rights providable to the one or more parties via the computer
program include an ability to view the received document but do
not include an ability to revise the received document in the
repository or to delete the received document from the
repository,
prohibits all of the parties having access rights to the
received document from modifying the received document in the
repository once the received document is stored in the repository,
and
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while any party of the one or more parties is provided
access rights to the received documents, prohibits all parties
having access rights to the received document from deleting the
received document from the repository.
App. Br. 20 (Claims App.).
The Rejections on Appeal
Claims 1 and 4—7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bacha et al. (US 6,839,843 Bl; Jan. 4, 2005) (“Bacha”)
and Dougherty et al. (US 2002/0169650 Al; Nov. 14, 2002) (“Dougherty”).
Final Act. 4—22.
Claims 2 and 3 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bacha, Dougherty, and Wang et al. (US 6,742,028 Bl;
May 25, 2004) (“Wang”). Final Act. 22—24.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). On the record before us, we are not persuaded the
Examiner erred. We adopt as our own the findings and reasons set forth in
the rejections from which the appeal is taken and in the Examiner’s Answer,
and provide the following for emphasis.
Rejection of Claims 1 and 4—7
Appellant argues independent claims 1 and 4—7 as a group, and we
choose claim 1 as representative of the group. See 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant argues the Examiner erred in finding the prior
art teaches (i) “access rights . . . include an ability to view the received
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document but. . . not... an ability to revise the received document in the
repository or to delete the received document,” and (ii) “prohibits all of the
parties having access rights to the received document from modifying the
received document in the repository once the received document is stored,”
as recited in claim 1. App. Br. 6 (emphasis added); Reply Br. 5—17. The
Examiner finds all of the foregoing limitations taught in Bacha. Ans. 3—6.
We are not persuaded of error in the Examiner’s findings.
As the Examiner finds, Bacha teaches a document originator “can
assign access” rights, which include a “read” (i.e., view) privilege. Bacha
col. 3,11. 62—67 (emphasis added); Ans. 3. The read privilege permits a user
to retrieve the document but the user “cannot make changes to [i.e., revise or
delete] the document on deposit [in the repository].” Bacha col. 3,11. 65—67.
As the Examiner further finds, Bacha also includes an “electronic
notarization” step that teaches further security for the document in the
database or repository. Ans. 6—7; Bacha col. 6,1. 55—col. 7,1. 8.
Specifically, notarization “prevents the user from replacing [i.e., deleting] or
modifying the original document [stored in] in the document repository.”
Bacha col. 7,11. 4—7; see also Bacha col. 8,1. 65—col. 9,1. 9 (describing
“immutability of document access control”).
We are unpersuaded of error in the Examiner’s finding that the
foregoing passages of Bacha teach the disputed limitations. Ans. 3—5.
Accordingly, we sustain the rejection of claims 1 and 4—7 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Bacha and Dougherty.
Rejection of Claims 2 and 3
Appellant argues the Examiner erred in finding the prior art teaches
“responsively to the last-mentioned party, the program defines types of
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documents that are needed to complete a first said document set
corresponding to the last mentioned party,” and “the program notifies the
last-mentioned party when all the needed types of documents are stored in
the repository in the first document set,” as recited in dependent claim 2.
App. Br. 13—15. Appellant further argues the Examiner erred in finding a
rationale to combine Wang with Bacha and Dougherty. App. Br. 15. We
are not persuaded by Appellant’s arguments.
As the Examiner finds, Wang teaches a content management system
for refreshing the contents of client computers “as required from the
database.” Final Act. 23; Wang Abstract, col. 3,11. 19—26. A content map is
generated, and the “System Transmits [a] Request List of Content Back to
[the] Appropriate PC Client.” Wang col. 11,11. 29—30; see also col. 9,1.
57— col. 10,1. 55. The system then makes a comparison to “identify]
missing content elements [i.e., documents needed to complete the set],”
constructs a “request list” that is sent to the client, and updates a “Master
Map” of content. Id. at col. 11,11. 33—38. According to the Examiner,
modifying Bacha with Wang’s teaching of content mapping, updating, and
notification system teaches the disputed limitations, and we discern no error
in this finding. Final Act. 23. Appellant’s Brief does not appear to dispute
the Examiner’s findings and conclusion except to argue the combinability of
the references. App. Br. 13—14. Specifically, Appellant identifies no
particular error in the Examiner’s finding of the claim limitations taught in
Bacha, Dougherty and Wang, but rather argues “the proposed modification
[of Bacha-Dougherty with Wang] itself would not have been obvious”
because Wang “as no applicability” to the technology in Bacha. App. Br.
14; see also Reply Br. 18.
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We, however, discern no error in the Examiner’s combination of
references. As the Examiner finds, the Bacha, Dougherty, and Wang
references and Appellant’s claimed invention all are in the same field of
managing shared documents or content. Ans. 9; Final Act. 23—24. Each of
these references (Bacha, Dougherty, and Wang) is concerned with the
common purpose or goal of preventing unauthorized or accidental
modification or deletion of content in a document management system. See
id.; see also Wang col. 3,11. 12—27; Dougherty || 10, 180-181, 195; Bacha
col. 3,11. 60-67, col. 6,1. 55—col. 7,1. 8. The Examiner’s modification of
Bacha is not, therefore, based on “hindsight” as Appellant alleges, App. Br.
15, but rather on the recognition that one of ordinary skill would look to
other references sharing the same “purpose,” “objectives,” or “goal.”
Innovention Toys LLCv. MCA Entertainment Inc., 637 F.3d 1314, 1322—23
(Fed. Cir. 2011). Moreover, Appellant has not provided persuasive evidence
or argument to show incorporating Wang’s content management principles
into those taught in the Bacha-Dougherty combination would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007)).
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 2. Appellant’s arguments regarding claim 3 are redundant to claim 2.
App. Br. 16—18, and we are not persuaded of error for the reasons set forth
above. We, therefore, sustain the Examiner’s rejection of claims 2 and 3
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bacha, Dougherty,
and Wang.
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DECISION
We affirm the Examiner’s rejections of claims 1—7.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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