Ex Parte Zettel et al

Board of Patent Appeals and Interferences

Oct 24, 2007

09681573 (B.P.A.I. Oct. 24, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IGNATIUS M. ZETTEL and KEVIN R. CLAYTON
____________

Appeal 2007-1361
Application 09/681,573
Technology Center 2100
____________

Decided: October 24, 2007
____________

Before ANITA PELLMAN GROSS, LANCE LEONARD BARRY,
and JAY P. LUCAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-29. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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A. INVENTION
The invention at issue on appeal "publishes," i.e., disseminates,
electronic documents to a document management system ("DMS") in
various formats. (Specification ¶ 0001.) To print a document, software
applications temporarily route control of the document to a printing program
called a "printer driver." Regardless of which application is seeking to print,
the printer driver displays the same screens. Besides enabling a user to
select a printer, the screens sometimes allow a user to select output
parameters. For example, he may specify a range of pages or a number of
copies to print. (Id. ¶ 0002.)

A user may need to convert an electronic document from its native
format to another format for access by another user. For example, an
individual seeking access to a document created using a "[personal
computer- ("PC-")] based word processing application" may use a "non-PC-
based word processing application." (Id. ¶ 0003.)

Accordingly, upon receipt of an instruction to publish an electronic
document, the Appellants' printer driver retrieves the document and displays
a graphical user interface ("GUI") that allows a user to select a publication
format, e.g., the portable document format ("PDF"). Upon receipt of such a
selection, the driver may convert the document into the selected format. The
driver then transmits the converted document to a system for publication
thereof. (Id. ¶¶ 0003, 0010, 0012.)

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B. ILLUSTRATIVE CLAIMS
Claims 1 and 5, which further illustrate the invention, follow:
1. A method to electronically publish media to a document
management system comprising the steps of:
accessing an electronic data file;
receiving a publication instruction from a document
creation application to publish the accessed data file;
initializing a publication enabler capable of converting a
data file into at least one publication format in response to the
publication instruction, wherein the publication enabler is
independent of the document creation application used to create
the electronic data file;
selecting a publication format via the publication enabler;
if necessary for publication to the document management
system, converting the accessed data file directly into another
publication format; and
publishing the data file in at least one publication format
to a document management system.

5. The method of claim 1 wherein the step of publishing further
comprises the step of transmitting the data file and a plurality of
document parameters to the document management system,
wherein the data file and plurality of document parameters are
configured to enable the document management system to
automatically assign a coded filename, a storage location, and a
file identifier to the data file.

C. REJECTIONS
Claims 1-11, 13-15, 25, 27, and 29 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Academic Technology Services, Adobe PDF for
Electronic Publishing ("ATS") and U.S. Patent Application Publication
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No. 2002/0002563 ("Bendik"). Claims 12 and 16-23 stand rejected under
§ 103(a) as obvious over ATS; Bendik; and U.S. Patent No. 6,336,124
("Alam"). Claim 24 stands rejected under § 103(a) as obvious over ATS;
Bendik; Alam; and U.S. Patent No. 6,370,567 ("Ouchi"). Claim 26 stands
rejected under § 103(a) as obvious over ATS; Bendik; and U.S. Patent No.
6,009,442 ("Chen"). Claim 28 stands rejected under § 103(a) as obvious
over ATS, Bendik, and Ouchi.

II. CLAIMS 1-4, 7, AND 25-29
"When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately." 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).1

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

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Here, the Appellants argue claims 1-4 and 7, which are subject to the
same ground of rejection, as a group. (Br.2 8-12). We select claim 1 as the
sole claim on which to decide the appeal of the group. With this
representation in mind, rather than reiterate the positions of the parties in
toto, we focus on the issues therebetween.

A. PUBLICATION FORMAT
The Examiner finds, "By allowing conversion to a PDF, the limitation
of selecting a publication format via a publication enabler, which is only
required to be capable of converting a data file into at least one publication
format in response to a publication instruction is met." (Answer 17.) The
Appellants argue, "PDFWriter, as disclosed in ATS, does not make any
publication format choice available to a user for selection thereof." (Br. 11.)
Therefore, the issue is whether ATS selects at least one format for
dissemination.

"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933, 69 USPQ2d 1283, 1286 (Fed.Cir. 2003) (internal
citations omitted).

2 We rely on and refer to the Appeal Brief of Oct. 18, 2006 in lieu of the
briefs of June 16, 2006 and March 9, 2006 because the latter briefs were
defective. These latter briefs were not considered in deciding this appeal.
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1. Claim Construction
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004)
(quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d
1057, 1059 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989)).

Here, contrary to the Appellants' argument, claim 1 does not require
making a publication format choice available to a user for selection thereof.
The claim instead recites in pertinent part the following limitations:
"a publication enabler capable of converting a data file into at least one
publication format in response to the publication instruction . . . selecting a
publication format via the publication enabler. . . ." A definition of
"publish" is "disseminate." Webster's Ninth New Collegiate Dictionary 952
(1985). Giving the representative claim the broadest, reasonable
construction, the limitations merely require selecting at least one format for
dissemination.

In contrast, claim 25 recites in pertinent part the following limitations:
"a processing unit programmed to call the GUI on demand and enable a user
selection of one or more publication formats. . . ." (Emphasis added.)
Giving the independent claim the broadest, reasonable construction, the
limitations require that a user selects at least one format for dissemination.
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2. Obviousness Analysis
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59 USPQ2d 1693, 1696
(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d
1614, 1616 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d
1782, 1784 (Fed. Cir. 1995)). "In rejecting claims under 35 U.S.C. § 103,
the examiner bears the initial burden of presenting a prima facie case of
obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the art.'"
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976)).

Here, regarding claim 1, the Appellants recognize, "ATS teaches
creating PDF files from an existing electronic document using Adobe
PDFWriter. . . ." (Br. 8) In the reference's own words, "PDFWriter . . .
allows you to 'print' your document to a PDF file similar to the way you
would print your document on a printer." (ATS, p. 3.) The Appellants also
recognize that "the Adobe PDFWriter of ATS . . . creates files of one format
- a PDF." (Br. 11.) Because the Adobe PDFWriter coverts documents into
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PDF, and we agree with the Examiner that "PDF is the at least one
publication format" (Answer 17) required by the claim, we further agree
with him that PDFWriter (always) selects the PDF for dissemination. We
have another issue, however, to address regarding claim 1-4 and 7.

Regarding claim 25, selection by PDFWriter, however, is different
from selection by a user. The Examiner does not allege, let alone show, that
the addition of Bendik, Chen, or Ouchi cures the aforementioned deficiency
of ATS. Absent a teaching or suggestion that a user selects at least one
format for dissemination, we are unpersuaded of a prima facie case.
Therefore, we reverse the rejection of claim 25 and of claims 26-29, which
depend therefrom.

B. REASON TO COMBINE ATS AND BENDIK
The Examiner makes the following finding.
It would have been obvious to one of ordinary skill in the art at
the time of the applicant's invention to have combined ATS
publication with Bendik's DMS, since it would have allowed a
user to use the advantages of a DMS, namely, easily sharing
documents within a workgroup without requiring knowledge of
the DOS filename or the physical location of the document
(Bendik: paragraph 0003).

(Answer 16.) The Appellants "believe[ ] that the Examiner has not properly
shown how it would be obvious to one skilled in the art to combine art that
contains such opposite teachings." (Reply Br. 2.) Therefore, the issue is
whether the Examiner has identified a reason that would have prompted a
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person of ordinary skill in the relevant field to combine a DMS with ATS'
teaching of creating documents in the PDF.

1. Claim Construction
Claim 1 recites in pertinent part the following limitations:
"a publication enabler capable of converting a data file into at least one
publication format in response to the publication instruction . . . selecting a
publication format via the publication enabler. . . ." Giving the
representative claim the broadest, reasonable construction, the limitations
require disseminating a formatted data file to a DMS.

2. Obviousness Analysis
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re
Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)).
"[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does." KSR Int'l v. Teleflex Inc., 127 S.Ct.
1727, 1741, 82 USPQ2d 1385, 1396 (2007). A reason to combine teachings
from the prior art "may be found in explicit or implicit teachings within the
references themselves, from the ordinary knowledge of those skilled in the
art, or from the nature of the problem to be solved." WMS Gaming, Inc. v.
Int'l Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
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1999) (citing In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998)).

Here, ATS discloses creating documents in the PDF as
aforementioned. For its part, Bendik discloses, "Document management
systems automate document management on computer networks and
facilitate location and sharing of documents in workgroups without requiring
knowledge of, for example, the [Disk Operating System] filename or
physical location of a document." (¶ 0003.) The latter reference explains,
"A document management system may also provide system administration
functions by establishing criteria that are used to, for example, determine
storage location and/or determine document archival actions. Furthermore,
security criteria can be assigned to limit unauthorized access to documents."
(Id.)

Bendik adds, "Document management systems typically store critical
information required to access a document in a document 'profile.'"
(¶ 0004.) "The profile information is stored in a database and is used to
retrieve the document via a search or query without the user having to
remember, for example, the DOS filename and storage location (for
example, server.backslash.volume:directory.backslash.filename). Profiling
thus provides quick access to documents." (Id.)

We agree with the Examiner that facilitating the location and sharing
of documents, providing system administration functions, limiting
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unauthorized access, or providing quick access to documents would have
prompted a person of ordinary skill in the relevant field to combine a DMS
with ATS' teaching of creating documents in the PDF. Such a combination,
moreover, would have suggested disseminating a formatted data file to a
DMS. Therefore, we affirm the rejection of claim 1 and of claims 2-4 and 7,
which fall therewith.

III. CLAIMS 5 AND 6
When the patentability of dependent claims is not argued separately,
the claims stand or fall with the claims from which they depend. In re King,
801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker,
702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Here, the Appellants do
not separately argue the patentability of claim 6, which depends from and is
subject to the same ground of rejection as claim 5. We select claim 5 as the
sole claim on which to decide the appeal of the two claims.

The Examiner makes the following findings.
ATS further discloses the method wherein the step of
publishing further comprises the step of transmitting the data
file to a system wherein the data file are configured to allow the
system to automatically assign a coded filename, a storage
location, and a file identifier to the data file (page 5, number 7:
Here, the file is saved to the hard drive in a document
management system under a filename).
(Answer 5.) The Appellants argue, "claim 5 calls for, in part, transmitting
the data file to the document management system. That is, the accessed data
file, from which the data file in at least one publication format is published,
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is itself transmitted to the DMS." (Reply Br. 4.) They further argue, "ATS
discloses saving the converted PDF document to a location specified by a
user, but ATS is silent on the accessed data file from which the PDF is
created." (Id.)

A. CLAIM CONSTRUCTION
"Claims in dependent form shall be construed to include all the
limitations of the claim incorporated by reference into the dependent claim."
37 C.F.R. § 1.75. Here, dependent claim 5 recites in pertinent part the
following limitations: "[t]he method of claim 1 wherein the step of
publishing further comprises the step of transmitting the data file. . . ."
For its part, claim 1 recites in pertinent part the following limitations:
"publishing the data file in at least one publication format to a document
management system." Construing claim 5 in view of claim 1, the dependent
claim requires transmitting the formatted data file to the DMS. Contrary to
the Appellants' argument, the dependent claim does not require transmitting
the unformatted data.

B. OBVIOUSNESS ANALYSIS
As found regarding claims 1-4, 7, and 25-29, teachings within the
references themselves would have prompted a person of ordinary skill to
combine a DMS with ATS' teaching of PDFWriter so as to disseminate a
formatted data file to a DMS. We also find that such a combination would
have transmitted the formatted data file to the DMS. Therefore, we affirm
the rejection of claim 5 and of claim 6, which falls therewith.
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IV. CLAIMS 8-11 AND 13-15
Here, the Appellants argue claims 8-11 and 13-15, which are subject
to the same ground of rejection, as a group. (Br. 12-13.) We select claim 8
as the sole claim on which to decide the appeal of the group.

The Examiner finds, "Bendik discloses conforming data to a
document management system with parameters (paragraph 0049)." (Answer
8.) The Appellants argue, "Instead of creating a PDF document according
external rules, PDFWriter creates a PDF file according to its own rules."
(Br. 13.) Therefore, the issue is whether the combined teachings of ATS and
Bendik would have suggested disseminating electronic media to a DMS in
accordance with the latter's rules for storage.

A. CLAIM CONSTRUCTION
Claim 8 recites in pertinent part the following limitations: "publish the
content of the electronic media directly into the at least one publication
format in accordance with the received media control instruction and storage
rules of the document management system. . . ." Giving the representative
claim the broadest, reasonable construction, the limitations merely require
disseminating electronic media to a DMS in accordance with the DMS' rules
for storage.

B. OBVIOUSNESS ANALYSIS
"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
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combination of references." In re Merck & Co., 800 F.2d 1091, 1097,
231 USPQ 375, 380 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981)). In determining obviousness,
furthermore, a reference "must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole." Id. The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) (citing Keller, 642 F.2d at 425,
208 USPQ at 881).

Here, the Appellants' argument attacks ATS individually.
The Examiner, however, bases his rejection on combined teachings of ATS
and Bendik. As found regarding claims 1-4, 7, and 25-29, teachings within
the references themselves would have prompted a person of ordinary skill to
combine a DMS with ATS' teaching of PDFWriter so as to disseminate a
formatted data file to a DMS. Such a data file comprises electronic media.

Bendik adds that "system variables of the document management
system of the present invention are preferably set . . . during installation of
the system." (¶ 0049.) These system variables are used to define rules for
storage in the DMS. More specifically, "the installation process includes
answering a few queries or requests for information to set up system
parameters through variables that define, for example, the location of
document files and templates." (Id.) "The answer to a first query preferably
defines how an organization desires to store its documents. . . ." (Id.) "The
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answer to a second query preferably defines the path where 'public'
document contents 20 are to be stored in file system 120. The answer to a
third query preferably defines a mapped drive to identify the path of the
document storage." (Id.)

Because the combined teachings of ATS and Bendik generally would
have suggested disseminating electronic media to a DMS, and Bendik
discloses defining rules for storage in the DMS, we find that the combined
teachings of the references specifically would have suggested disseminating
the electronic media to the DMS in accordance with the latter's rules for
storage. Therefore, we affirm the rejection of claim 8 and of claims 9-11
and 13-15, which fall therewith.

V. CLAIM 12
The Examiner admits, "ATS fails to specifically disclose . . . rout[ing]
the electronic data file to a converter configured to substantially
simultaneously convert the electronic data file into at least two of a number
of publication formats." (Answer 11.) He asserts, however, "Alam discloses
. . . rout[ing] the electronic data file to a converter configured to
substantially simultaneously convert the electronic data file into at least two
of a number of publication formats (Figure 6: Here, a PDF and an Output
Format Document are publication formats.)" (Id.) The Appellants argue
that "all the elements of the present claims are not present in the references."
(Br. 15.) Therefore, the issue is whether Alam simultaneously transforms
the content of electronic media into more than one format.
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A. CLAIM CONSTRUCTION
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir.
1994) (citing In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04
(Fed. Cir. 1983)).

Here, claim 12 recites in pertinent part the following limitations: "the
computer is further caused to receive more than one media control
instruction and simultaneously transform the content of the electronic media
into more than one format." Contrary to the Examiner's characterization, the
limitations do not permit the transform to be substantially simultaneous.
Instead, the claim requires simultaneously transforming the content of the
electronic media into more than one format.

B. OBVIOUSNESS ANALYSIS
Figure 6 of Alam, on which the Examiner relies, "illustrat[es]
conversion of data representing a document to portable document format, to
an intermediate format, and finally to a different output format. . . ." (Col. 3,
ll. 16-18.) Although the reference transforms a "text and/or image
document 518" (col. 6, l. 34) into "a PDF document 626" (id. l. 37),
"an intermediate format document 530" (id. l. 42), and "an output format
document 534" (id. 44-45), the transformations are not simultaneous.
Instead, the Figure shows that the three transformations are serial.

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The Examiner does not allege, let alone show, that the addition of
Bendik or Ouchi cures the aforementioned deficiency of Alam. Absent a
teaching or suggestion of simultaneously transforming the content of the
electronic media into more than one format, we are unpersuaded of a prima
facie case. Therefore, we reverse the rejection of claim 12.

VI. CLAIMS 16-23
Here, the Appellants argue claims 16-23, which are subject to the
same ground of rejection, as a group. (Br. 16-17.) We select claim 16 as the
sole claim on which to decide the appeal of the group.

The Examiner finds that ATS discloses "converting data directly from
one format into a publication format (page 3, number 1- page 5, number 7)"
(Answer 11) and "transmit[ing] the converted data to at least one publication
system capable of publishing the data file into a publication format (page 5,
number 7)." (Id.) The Appellants argue that "the Adobe PDFWriter
generates a PDF document, but ATS fails to disclose a converter together
with at least one publication system." (Br. 17.) Therefore, the issue is
whether the combined teachings of ATS and Bendik would have suggested
a converter and a DMS, one or both constituting a system for disseminating.

A. CLAIM CONSTRUCTION
"Claims must be read in view of the specification, of which they are a
part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34
USPQ2d 1321, 1329 (Fed. Cir. 1995) (en banc).
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Here, claim 16 recites in pertinent part the following limitations:
(D) route the electronic data file to a converter
configured to convert the electronic data file directly into at
least one of a number of publication formats compatible with a
document management system; and
(E) transmit the at least one converted data file to at least
one publication system capable of publishing the converted data
file in the at least one publication format to the document
management system.
Although the Appellants indicate that these limitations correspond to
Paragraphs 9, 12, and 32 of their Specification (Br. 5-6), they fail to map the
the claimed "converter," "publication system," and "document management
system" to specific items described therein.3

Furthermore, the following omissions of key elements have stymied
our attempt to map the claimed "converter," "publication system," and
"document management system" to specific items described in the
paragraphs cited by the Appellants. The first paragraph cited thereby
discloses "publishing electronic documents to a document management
system" (Specification ¶0009); the last paragraph, a "document management
system's generation of document parameters. . . ." (Id. ¶0032.) Neither
paragraph, however, mentions a "converter," "converting," or a "publication
system."

3 Such a mapping "is [always] considered important to enable the Board to
more quickly determine where the claimed subject matter is described in the
application." M.P.E.P. § 1206.
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The other paragraph cited by the Appellants describes "convert[ing]
the electronic data file into at least one of a number of publication formats. .
. ." (Id. ¶ 0012.) Although the paragraph explains that "a processor . . .
transmit[s] the converted data file to at least one publication system," it
mentions no "document management system."

These paragraphs indicate that the claimed "converter" and "document
management system" are separate elements. As best as we can tell from the
Specification, however, the claimed "publication system," is merely a part
of, a function of, or another name for the "converter" or the "document
management system." As found regarding claims 1-4, 7, and 25-29, a
definition of "publish" is "disseminate." Reading the representative claim in
view of the Specification, the limitations require a converter and a DMS, one
or both constituting a system for disseminating.

B. OBVIOUSNESS ANALYSIS
The Appellants' argument attacks ATS individually. As mentioned
regarding claims 8-11 and 13-15, however, the Examiner bases his rejection
on combined teachings of ATS and Bendik. Because the Adobe PDFWriter
coverts documents into PDF, we agree with the Examiner that PDFWriter
constitutes a converter. For its part, Bendik discloses a DMS. Teachings
within the references themselves would have prompted a person of ordinary
skill to combine a DMS with ATS' teaching of PDFWriter so as to
disseminate a formatted data file to a DMS. In such a combination,
moreover, either the PDFWriter, or the DMS, or both, constitutes a system
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for disseminating. Therefore, we affirm the rejection of claim 16 and of
claims 17-23, which fall therewith.

VII. CLAIM 24
The Examiner admits, "ATS, Bendik, and Alam fail to specifically
disclose displaying a listing of document approving supervisors." (Answer
14.) He likewise admits that Ouchi fails to display a list of supervisors (id.),
but alleges that the latter reference "discloses displaying a list of addresses in
response to a user instruction (Figure 12; column 10, lines 63-66: The setting
of the BRANCH INDICATOR is a user instruction)." (Id.) The Appellants
argue, "Ouchi fails to teach or suggest that any of the addresses in the
distribution list are displayed." (Br. 18) Therefore, the issue is whether
Ouchi would have suggested displaying a list of supervisors who approve
documents.

A. CLAIM CONSTRUCTION
Claim 24 recites in pertinent part the following limitations: "displays a
listing of document approving supervisors." In other words, the limitations
require displaying a list of supervisors who approve documents.

B. OBVIOUSNESS ANALYSIS
Figure 12 of Ouchi "illustrates a route that specifies that a set of e-
mails are to be sent to a distribution list if the user at e-mail address B sets
the BRANCH INDICATOR=N." (Col. 10, ll. 63-66.) Despite his
allegation, the Examiner has not shown that the reference displays any of the
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addresses in the distribution list, let alone a list of supervisors who approve
documents. Absent a teaching or suggestion of displaying a list of
supervisors who approve documents, we are unpersuaded of a prima facie
case. Therefore, we reverse the rejection of claim 24.

VIII. ORDER
In summary, the rejections of claims 1-11 and 13-23 are affirmed.
The rejections of claims 12 and 24-29, however, are reversed.

"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us
nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362,
1367, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the
applicant challenging a decision not be permitted to raise arguments on
appeal that were not presented to the Board.")

Appeal 2007-1361
Application 09/681,573

22
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (GEMS)
136 S WISCONSIN ST
PORT WASHINGTON, WI 53074