Ex Parte Wiechers

Board of Patent Appeals and Interferences

Jun 19, 2007

09747219 (B.P.A.I. Jun. 19, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEJANDRO WIECHERS
____________

Appeal 2007-1120
Application 09/747,219
Technology Center 2100
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Decided: June 19, 2007
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Before KENNETH W. HAIRSTON, HOWARD B. BLANKENSHIP, and
ALLEN R. MACDONALD, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 4, 7 to 9, 11, 12, 14, and 21 to 26. We have jurisdiction under
35 U.S.C. § 6(b).
Appellant has invented a system and method of coding an electronic
file. After a received electronic file is stored in memory, it is assigned a
Appeal 2007-1120
Application 09/747,219

classification code based on classification information and it is assigned an
inventory code based on whether the electronic file already exists in the
system. Based on both the classification code and the inventory code, the
electronic file is assigned an identification code. Thereafter, the electronic
file is edited to include the identification code (Figure 1; Specification 3
and 4).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A system for coding an electronic file, comprising:
a reference repository, wherein the reference repository receives the
electronic file and characteristic information associated with the electronic
file from a communications network and stores the characteristic
information in a memory;

an indexing unit linked with the reference repository, wherein the
indexing unit assigns a classification code to the electronic file based on the
characteristic information, assigns an inventory code to the electronic file
based on whether the electronic file already exists in the system, and
compiles an identification code for the electronic file from the classification
code and the inventory code; and

an editing unit linked with the reference repository and the indexing
unit, wherein the editing unit inserts the identification code to the electronic
file.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Van Huben US 6,327,594 B1 Dec. 4, 2001
(filed Jan. 29, 1999)
Seder US 6,522,770 B1 Feb. 18, 2003
(filed Aug. 1, 2000)

The Examiner rejected claims 1, 3, 4, 7, 8, 21, 22, and 25 under 35
U.S.C. § 102(e) based upon the teachings of Seder. The Examiner rejected
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Appeal 2007-1120
Application 09/747,219

claims 9, 11, 12, 14, 23, 24, and 26 under 35 U.S.C. § 103(a) based upon the
teachings of Seder and Van Huben.
Appellant contends that Seder describes a system wherein a machine-
readable indicia added to a printed document can be used to retrieve an
electronic version of the printed document (Br. 6). Appellant additionally
contends that the Seder system neither teaches nor suggests coding an
electronic file in the manner set forth in the claims on appeal (Br. 6).
We reverse.
ISSUES
Does Seder encode and edit an electronic file with classification
information and inventory information?
FINDINGS OF FACT
Appellant describes a system 10 for coding an electronic file (Fig. 1).
The system includes a reference repository 33 that receives an electronic file
and characteristic information associated with the electronic file from a
communications network 20, and stores the characteristic information in
memory (Specification 5 and 6). An indexing unit 100’ linked with the
reference repository 33 assigns a classification code to the electronic file
based on the characteristic information, and assigns an inventory code to the
electronic file based on whether the electronic file already exists in the
system (Specification 7). An identification code for the electronic file is
derived based on the classification code and the inventory code
(Specification 8). Thereafter, an editing unit 200’ inserts the identification
code to the electronic file (Specification 8).
Seder describes a system in which an encoded mark on a printed
document is scanned to thereby retrieve an electronic version of the printed
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Appeal 2007-1120
Application 09/747,219

document that may be displayed and edited (Abstract; col. 1, ll. 52 to 56;
col. 2, ll. 11 to 18; col. 4, ll. 8 to 14). The encoded mark includes
characteristic information (e.g., the author1 of the printed document) (col. 1,
l. 36; col. 2, l. 61). The encoded mark in Seder also indexes data (col. 2, ll.
56 to 59; col. 6, ll. 29 to 44), and stores the latest revision number of the
electronic version of the printed document (col. 7, ll. 59 to 66). Seder is
silent as to assigning “an inventory code” to an electronic file undergoing
encoding “based on whether the electronic file already exists in the system”
or is “a copy of an existing electronic file.”
Van Huben was cited by the Examiner for a description of software
procedures that are “library-specific” (Answer 8).
PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). The Examiner’s articulated reasoning in the rejection must
possess a rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006).

1 Appellant’s disclosure lists an author as characteristic information
(Specification 6).
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Appeal 2007-1120
Application 09/747,219

ANALYSIS
We agree with Appellant that Seder does not teach encoding an
electronic file with an identification code that is based on both a
classification code and an inventory code.
CONCLUSIONS OF LAW
Anticipation has not been established by the Examiner because Seder
does not disclose each and every limitation of the claimed invention set forth
in claims 1, 3, 4, 7, 8, 21, 22, and 25.
Obviousness has not been established by the Examiner because the
applied references to Seder and Van Huben neither teach nor would have
suggested to one of ordinary skill in the art the subject matter set forth in
claims 9, 11, 12, 14, 23, 24, and 26.
DECISION
The anticipation rejection of claims 1, 3, 4, 7, 8, 21, 22, and 25 is
reversed. The obviousness rejection of claims 9, 11, 12, 14, 23, 24, and 26
is reversed.
REVERSED

tdl/ce

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