Ex Parte SoegtropDownload PDFPatent Trial and Appeal BoardApr 22, 201411567362 (P.T.A.B. Apr. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/567,362 12/06/2006 Michael Soegtrop Soegtrop 1 7490 74402 7590 04/22/2014 IP Legal Services 1500 East Lancaster Avenue, Suite 100 P.O. Box 1027 Paoli, PA 19301 EXAMINER ROBINSON, GRETA LEE ART UNIT PAPER NUMBER 2169 MAIL DATE DELIVERY MODE 04/22/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MICHAEL SӦGTROP _____________ Appeal 2011-010287 Application 11/567,362 Technology Center 2100 ______________ Before, DENISE M. POTHIER, DAVID M. KOHUT, and ANDREW J. DILLON, Administrative Patent Judges. KOHUT, 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 1-3 and 5-17.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims. 1 Claims 4 and 18-19 were previously cancelled. Appeal 2011-010287 Application 11/567,362 2 INVENTION The invention is directed to a method and computer-readable storage media comprising program code for managing electronic documents. Claim 1 is illustrative of the invention and is reproduced below: 1. An electronic document management method comprising: generating, by a processor, a plurality of file hash results with a first hash function for a corresponding plurality of electronic documents; generating, by the processor, a hash list file comprising the plurality of file hash results and a plurality of corresponding locations in memory of the plurality of electronic documents; utilizing an electronic time stamping authority to obtain a digital time stamp of the hash list file; and storing, in memory, the hash list file and the digital time stamp for a later verification step. REFERENCES Campbell US 6,917,948 B2 July 12, 2005 Lowrance US 2005/0234908 A1 Oct. 20, 2005 Mayer US 2008/0104408 A1 May 1, 2008 REJECTIONS AT ISSUE Claims 1-3 and 5-14 are rejected under § 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps. Ans. 4-5. Claims 1-3, 5, 6, 10, 13, and 14 are rejected under § 35 U.S.C. 103(a) as being unpatentable over the combination of Campbell and Mayer. Ans. 5-7. Appeal 2011-010287 Application 11/567,362 3 Claims 7-9, 11, 12, and 15-17 are rejected under § 35 U.S.C. 103(a) as being unpatentable over the combination of Campbell, Mayer, and Lowrance. Ans. 8-11. ISSUE Did the Examiner err in finding that the “verification step” is essential for performing the method of independent claim 1? Did the Examiner err in finding that Campbell teaches or suggests “generating… a hash list file comprising the plurality of file hash results” and obtaining “a digital time stamp of the hash list file,” as recited in independent claims 1 and 15? ANALYSIS A. Rejection of Claims 1-3 and 5-14 under 35 U.S.C. § 112, Second Paragraph Independent claim 1 recites a “later verification step.” Claims 2, 3 and 5-14 are dependent on claim 1. The Examiner finds that figure 1 (item 300), figure 2 (item 130), figure 4, and figure 7 (item 212) of Appellant’s Specification disclose the verification step as essential for performing the method of claim 1. The Examiner further finds that claim 1 is indefinite because it fails to positively recite the performance of the verification step and therefore fails to recite essential subject matter. Ans. 11. We disagree. First, the Examiner has not provided, nor do we find, sufficient evidence in Appellant’s Specification that the claim, as written, lacks an essential step that would prevent operation of the method. At most, the Appeal 2011-010287 Application 11/567,362 4 portions of the Specification cited by the Examiner as requiring the verification step as part of the process merely describes the verification step. Second, we agree with Appellant that none of the other steps of claim 1 depend in any way on the performance of the verification step. App. Br. 10; Reply Br. 2. Third, the recitation “for a later verification step” is merely an intended use limitation and does not require an active step of verifying. For the reasons stated supra, we reverse the Examiner’s rejection of claims 1-3 and 5-14 under § 35 U.S.C. 112, second paragraph. B. Rejection of Claims 1-3 and 5-17 under 35 U.S.C. § 103(a) Independent claim 1 requires generating a hash file list that includes a plurality of hash results and using the electronic time stamping authority to obtain a time stamp of the hash file list. Independent claim 15 has similar requirements. Claims 2-3, 5-14, and 16-17 are dependent upon either claim 1 or claim 15, respectively. Appellant argues that Campbell does not teach or suggest generating a hash list file that includes a plurality of hash results and obtaining a time stamp of the hash list file. App. Br. 10-11; Reply Br. 2. We agree. The Examiner finds that Campbell’s steps of generating an “electronic postmark” comprising a “hash file” and obtaining a “time and date stamp” are equivalent to the claimed steps of generating a hash list file including a plurality of file hashes and obtaining a time stamp of the hash list file, respectively. Ans. 6, 12-13. However, we agree with Appellant (App. Br. 17-18; Reply Br. 2) that Campbell’s electronic postmark cannot be equivalent to the “hash list file” of claims 1 and 15, because Campbell’s electronic postmark contains only one hash file rather than multiple hash Appeal 2011-010287 Application 11/567,362 5 files, as required by claims 1 and 15. See Campbell, col. 4, ll. 40-56. Furthermore, we agree with Appellant (App. Br. 17-18) that Campbell’s time and date stamp cannot be equivalent to the “time stamp” of claims 1 and 15, because Campbell’s time and date stamp corresponds to one hash file instead of a hash file list that includes a plurality of hash files, as required by the claims. See Campbell, col. 4, ll. 40-56. Lastly, while the Examiner discusses Mayer in the context of teaching generating a plurality of file hash results (Ans. 6), neither Mayer nor Lowrance was cited to teach or suggest the generating a hash file list comprising the file hash results or using the electronic time stamping authority to obtain a digital time stamp of the hash list file steps. At this point, we will not engage in any inquiry as to whether Mayer or Lowrance cures the noted deficiencies. For the reasons stated supra, we reverse the Examiner’s rejection of claims 1-3 and 5-17 under 35 U.S.C. § 103(a). CONCLUSION The Examiner erred in finding that the “verification step” is essential for performing the method of independent claim 1. The Examiner erred in finding that Campbell teaches or suggests “generating… a hash list file comprising the plurality of file hash results” and obtaining “a digital time stamp of the hash list file,” as recited in independent claims 1 and 15. SUMMARY Appeal 2011-010287 Application 11/567,362 6 The Examiner’s decision to reject claims 1-3 and 5-14 under § 35 U.S.C. 112, second paragraph is reversed. The Examiner’s decision to reject claims 1-3 and 5-17 under § 35 U.S.C. 103(a) is also reversed. REVERSED tj Copy with citationCopy as parenthetical citation