Ex Parte Tsykora

Board of Patent Appeals and Interferences

Sep 21, 2009

10288749 (B.P.A.I. Sep. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANATOLIY V. TSYKORA
____________________

Appeal 2009-002909
Application 10/288,749
Technology Center 2100
____________________

Decided: September 21, 2009
____________________

Before JAMES D. THOMAS, LEE E. BARRETT, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 1, 6-
9, 15, 20, 22, 24, 26-33, and 36-43 under 35 U.S.C. § 134(a) (2002). Claims
2-5, 10-14, 16-19, 21, 23, 25, 34, and 35 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2009-002909
Application 10/288,749

A. INVENTION
According to Appellant, the invention relates to the automated
conversion of electronic files (Spec. ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 10 is exemplary and is reproduced below:
10. A system for managing contemporaneous conversions of
a plurality of files uploaded to the system by a plurality of users
from a plurality of user computers, the system comprising

a memory,

a web server adapted to receive a file uploaded by a user
over a computer network, store the received file in the memory,
receive a converted version of the file from the memory, and
transmit the converted version to the user computer for
displaying to the user,

a conversion task distribution manager having a request
queue containing a request entry for each received file for
which conversion has not been completed and a task queue
containing at least one conversion task entry for each request
entry in the request queue,

a plurality of file format conversion applications, and
a plurality of graphical processors, each graphical
processor being operatively connected to the distribution
manager, the memory, and a conversion application and
adapted to receive a conversion task from the distribution
manager, retrieve the file associated with the conversion task
from the memory, control a conversion application to create a
converted version of the file, and store the converted version in
the memory.

2
Appeal 2009-002909
Application 10/288,749

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Leavy US 5,608,651 Mar. 04, 1997
Fredell US 2001/0028364 A1 Oct. 11, 2001
Crouch US 6,292,842 B1 Sep. 18, 2001
Robertazzi US 6,370,560 B1 Apr. 09, 2002
Laverty US 6,429,947 B1 Aug. 06, 2002
Blair US 2002/0120792 A1 Aug. 29, 2002
Jeran US 2003/0234942 A1 Dec. 25, 2003

Claims 1, 6-8, 20, 24, 26, 28-32, 36, and 37 stand rejected under 35
U.S.C. § 103(a) over Laverty in view of Blair.
Claims 9, 15, and 38-42 stand rejected under 35 U.S.C. § 103(a) over
Laverty in view of Blair and Jeran.
Claim 22 stands rejected under 35 U.S.C. § 103(a) over Laverty in
view of Blair and Fredell.
Claim 27 stands rejected under 35 U.S.C. § 103(a) over Laverty in
view of Blair and Robertazzi.
Claim 33 stands rejected under 35 U.S.C. § 103(a) over Laverty in
view of Blair and Crouch.
Claim 43 stands rejected under 35 U.S.C. § 103(a) over Laverty in
view of Blair and Leavy.

II. ISSUES
Has Appellant shown that the Examiner erred in holding that Laverty
in view of Blair teaches or would have suggested “a web server adapted to
receive a file uploaded by a user over a computer network, store the received
file in the memory, receive a converted version of the file from the memory,
3
Appeal 2009-002909
Application 10/288,749

and transmit the converted version to the user computer for displaying to the
user” and “a conversion task distribution manager having a request queue
containing a request entry for each received file for which conversion has
not been completed and a task queue containing at least one conversion task
entry for each request entry in the request queue” (claim 1)? In particular,
the issues turn one whether Laverty teaches or would have suggested 1)
receiving “a file uploaded by a user” and receiving “a converted version of
the file” and 2) a manager having “a request queue containing a request
entry for each received file for which conversion has not been completed
and a task queue” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Laverty
1. Laverty discloses an Internet-based ordering system which provides a
custom web site for a customer and the customer enters the data (col.
10, ll. 62-67).
2. The website transmits the entered data to the system which generates
a Print Ready File (col. 11, ll. 1-3).
3. The Print Ready File (PRF) is sent to a viewer program which reads
the PRF and creates a Portable Document Format (PDF) file, and this
PDF file is then sent to the customer via the Internet and is viewed on
the computer screen of the customer (col. 11, ll. 5-10; Fig. 3).
4. The preview is displayed as in PDF, GIF, or like formats (col. 11, ll.
10-15).
4
Appeal 2009-002909
Application 10/288,749

5. The order data for the customer is saved to a back-end database, and
the PRF is saved on a server (col. 11, ll. 24-25).
6. If the PRF is accepted by the user, the PRF is sent for further
processing operations (col. 12, ll. 40-42; Fig. 4), wherein the job may
be shifted and queued (col. 17, ll. 13-22).
Blair
7. Blair discloses processing and uploading files to a document
management system (Abstract).

IV. PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

5
Appeal 2009-002909
Application 10/288,749

V. ANALYSIS
35 U.S.C. § 103(a)
Claims 1, 6-8, 20, 24, 26, 28-32, 36, and 37
Laverty discloses receiving data from a user over a computer network
(FF 1), storing the received data in memory (FF 5), receiving a Print Ready
File (PRF) generated from the data (FF 2), storing the PRF (FF 5), creating a
Portable Document Format (PDF) file from the PRF (FF 3), and transmitting
the PDF file to the user computer for displaying to the user (Id.). We find
Laverty to teach a server adapted to receive data entered by a user over a
computer network, store the data in the memory, receive a PRF file
generated from the data from the memory, and transmit the PDF file created
from the PRF to the user computer for displaying to the user.
Furthermore, in Laverty the PRF is sent for further processing
operations, wherein the job may be shifted and queued (FF 6). The file to be
displayed is in PDF, but may be in GIF or like formats (FF 4). Thus, we
find Laverty to also teach a task distribution manager having queues and a
plurality of file format conversion applications.
However, Appellant contends that “Laverty does not teach or suggest
‘a web server adapted to receive a file uploaded by a user over a computer
network, store the received file in the memory, receive a converted version
of the file from the memory, and transmit the converted version to the user
computer for displaying to the user’” (Br. 10). In particular, Appellant
argues that “the user input data is merely data that is used in combination
with other information . . . to generate a completely new file called a Print
Ready File (PRF) 412” (Id.) and that “the data input by the user and
6
Appeal 2009-002909
Application 10/288,749

uploaded to the web site 408 is never itself converted into any other format”
(Id.).
Appellant also contends that “Laverty also does not teach or suggest
‘a conversion task distribution manager having a request queue containing a
request entry for each received file for which conversion has not been
completed and a task queue containing at least one conversion task entry for
each request entry in the request queue’” (Br. 11). In particular, Appellant
argues that “[t]here is no mention of such a queue nor is there any element in
any Laverty figure representing such a queue” (Id.) and that the referenced
figure in Laverty “does not depict a queue of all pending jobs, but rather
depicts an illustrative transient condition showing jobs that are only
temporarily at machine 600 awaiting distribution to another part of the
system” (Id.).
In response, the Examiner explains that “[w]hile Laverty does not
teach that the data is uploaded within a file, this limitation is taught by Blair”
(Ans. 17), wherein “Laverty also teaches receiving converted data, such as
generating a preview file of a PRF, or Print Ready File, which contains data
converted to a print ready format” (Ans. 17-18). The Examiner also finds
that “Laverty teaches a ‘Master Farmer’, equating to a distribution manager,
in that it processes and schedules tasks or jobs from the client system” (Ans.
18).
Accordingly, the issues we address on appeal are whether Laverty in
view of Blair teaches or would have suggested “a web server adapted to
receive a file uploaded by a user over a computer network, store the received
file in the memory, receive a converted version of the file from the memory,
and transmit the converted version to the user computer for displaying to the
7
Appeal 2009-002909
Application 10/288,749

user” and “a conversion task distribution manager having a request queue
containing a request entry for each received file for which conversion has
not been completed and a task queue containing at least one conversion task
entry for each request entry in the request queue” (claim 1).
In particular, we first address whether Laverty teaches or would have
suggested receiving “a file uploaded by a user” and receiving “a converted
version of the file” (claim 1).
After reviewing the record on appeal, we agree with Appellant. In
particular, Laverty discloses that the user enters data (FF 1) and a PRF is
generated from the data (FF 2). Although the Examiner finds that Laverty
“teaches receiving converted data” (Ans. 17-18), we find that a file
generated from the data is not “a converted version” of a file, as required by
claim 1. That is, in Laverty, a form is displayed at the user computer for the
user to input data, but we agree with Appellant that the form is “never itself
converted into any other format” (Br. 10).
Though Laverty discloses a “server” adapted to receive data entered
by a user over a computer network, store the data in the memory, receive a
file from the memory, and transmit a file to the user computer for displaying
to the user (FF 1-3 and 5), contrary to the requirements of claim 1, a form is
displayed at the user computer for the user to input data, but the form itself
is not converted into another version.
We also find that Laverty discloses creating a Portable Document
Format (PDF) file from the PRF (FF 3), and transmitting the PDF file to the
user computer for displaying to the user (Id.). Thus, even if the Examiner
finds that Laverty teaches receiving converted data by “generating a preview
file of a PRF, or Print Ready File, which contains data converted to a print
8
Appeal 2009-002909
Application 10/288,749

ready format” (Ans. 17-18), such PRF is not transmitted “to the user
computer for displaying to the user” as required by claim 1. That is, it is the
PDF file of Laverty that is displayed to the user, not the PRF as the
Examiner finds.
We also address whether Laverty teaches or would have suggested a
manager having “a request queue containing a request entry for each
received file for which conversion has not been completed and a task queue”
(claim 1).
Laverty merely discloses that the PRF is sent for further processing
operations, wherein the job may be shifted and queued (FF 6). Although
the Examiner finds that Laverty teaches “a distribution manager, in that it
processes and schedules tasks or jobs from the client system” (Ans. 18), we
find that the task manager to which the PRF is sent for further processing
operation does not contain “a request queue containing a request entry for
each received file for which conversion has not been completed” (emphasis
added), as required by claim 1. That is, in Laverty, the PRF is already
generated before the job is to be processed and queued, and thus, conversion
has already been completed.
Though Laverty discloses a “task distribution manager” having
queues (FF 6), contrary to the task distribution manager of claim 1, there is
no “a request queue containing a request entry for each received file for
which conversion has not been completed” (emphasis added) in that of
Laverty.
We also find that Blair does not cure these deficiencies of Laverty.
Blair merely discloses processing and uploading files to a document
management system (FF 7). Although the Examiner relies on Blair to teach
9
Appeal 2009-002909
Application 10/288,749

that “the data is uploaded within a file” (Ans. 17), Blair does not teach the
limitations of claim 1 missing from Laverty. Thus, even if combined, we
conclude that claim 1 would not have been obvious over Laverty in view of
Blair. As such, we will reverse the rejection of representative claim 1 and
claims 6-8, 20, 24, 26, 28-32, 36, and 37 falling therewith over Laverty in
view of Blair.
Claims 9, 15, 22, 27, 33, and 38-43
We also find that Jeran, Fredell, Robertazzi, Crouch, and Leavy do
not cure these deficiencies of Laverty and Blair. As such, we will also
reverse the rejection of claims 9, 15, and 38-42 over the teachings of Laverty
in view of Blair and Jeran; will reverse the rejection of claim 22 over the
teachings of Laverty in view of Blair and Fredell; will reverse the rejection
of claim 27 over the teachings of Laverty in view of Blair and Robertazzi;
will reverse the rejection of claim 33 over the teachings of Laverty in view
of Blair and Crouch; and will reverse the rejection of claim 43 over the
teachings of Laverty in view of Blair and Leavy.

VI. CONCLUSION
Appellant has shown that the Examiner erred in holding claims 1, 6-8,
20, 24, 26, 28-32, 36, and 37 unpatentable over the teachings of Laverty in
view of Blair under 35 U.S.C. § 103(a).
Appellant has shown that the Examiner erred in holding claims 9, 15,
and 38-42 unpatentable over the teachings of Laverty in view of Blair and
Jeran under 35 U.S.C. § 103(a).
10
Appeal 2009-002909
Application 10/288,749

Appellant has shown that the Examiner erred in holding claim 22
unpatentable over the teachings of Laverty in view of Blair and Fredell
under 35 U.S.C. § 103(a).
Appellant has shown that the Examiner erred in holding claim 27
unpatentable over the teachings of Laverty in view of Blair and Robertazzi
under 35 U.S.C. § 103(a).
Appellant has shown that the Examiner erred in holding claim 33
unpatentable over the teachings of Laverty in view of Blair and Crouch
under 35 U.S.C. § 103(a).
Appellant has shown that the Examiner erred in holding claim 43
unpatentable over the teachings of Laverty in view of Blair and Leavy under
35 U.S.C. § 103(a).

VII. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1, 6-9,
15, 20, 22, 24, 26-33, and 36-43 is reversed.

REVERSED

peb

VISTA PRINT USA, INC.
ATTN: PATENT COUNSEL
95 HAYDEN AVENUE
LEXINGTON, MA 02421
11