LEAP, LLC

Patent Trials and Appeals Board

Nov 1, 2021

2021001305 (P.T.A.B. Nov. 1, 2021)

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.
15/785,258 10/16/2017 Steven Charles Stencil JR. 55970.3US01_81625 1060
27683 7590 11/01/2021
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/01/2021 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN CHARLES STENCIL JR.,
THOMAS JAMES BURY III, and PATRICK MICHAEL FINGLES

Appeal 2021-001305
Application 15/785,258
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 3–5, 7–10, 12–14, and 16–23. We
have jurisdiction under 35 U.S.C. § 6(b). An oral hearing in this matter was
held on July 22, 2021.
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
LEAP, LLC. Appeal Br. 3.
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ILLUSTRATIVE CLAIM
1. A system configured to generate a digital contract,
comprising:
one or more non-transitory computer-readable memories
storing an application that includes instructions; and
one or more hardware processors coupled to each of the
non-transitory computer-readable memories and configured to
generate a digital contract, the instructions comprising:
selecting a category using a graphical user
interface of the application configured to execute on a
client device;
retrieving a template associated with the category,
wherein the template includes a plurality of options;
retrieving a first data associated with the template;
generating the digital contract by incorporating the
first data into the plurality of options associated with the
template;
formatting the digital contract using parameters of
the client device, wherein the parameters cause the digital
contract to fit on a display screen of the client device;
displaying the digital contract on display screen of
the client device;
receiving input that causes an additional option
from the plurality of options to be added to the digital
contract;
regenerating the digital contract by incorporating
the first data into the plurality of options and a second
data in the additional option;
scanning the digital contract for an option that
receives a signature as input;
initializing a signature window;
receiving the signature as the input; and
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regenerating the entire digital contract, wherein the
regenerating includes the incorporation of the first data
into the plurality of options and the second data in the
additional option, the regenerated digital contract
includes signature in the option, and the option does not
overlay existing data or options displayed in the digital
contract.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hill et al. (“Hill”) US 6,023,714 Feb. 8, 2000
Petrogiannis et al.
(“Petrogiannis”)
US 2002/0091651 A1 July 11, 2002
Berryman et al.
(“Berryman”)
US 7,568,104 B2 July 28, 2009
Wilson US 7,581,176 B2 Aug. 25, 2009
Bailey US 2014/0058964 A1 Feb. 27, 2014
Gentile et al. (“Gentile”) US 2014/0214473 Al July 31, 2014
Arena US 2015/0213397 A1 July 30, 2015
Li et al. (“Li”) US 2016/0139691 A1 May 19, 2016
Hunn US 2018/0005186 A1 Jan. 4, 2018

REJECTIONS
I. Claims 1, 3, 9, 10, 12, 18, 22, and 23 are rejected under
35 U.S.C. § 103 as unpatentable over Bailey, Hill, Berryman, and
Petrogiannis.
II. Claims 4 and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Bailey, Hill, Berryman, Petrogiannis, and Hunn.
III. Claims 5 and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Bailey, Hill, Berryman, Petrogiannis, Arena, and Li.
IV. Claims 7, 8, 16, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Bailey, Hill, Berryman, Petrogiannis, and Gentile.
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V. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable
over Bailey and Hill.
VI. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Bailey, Hill, and Hunn.
VII. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable
over Bailey, Hill, Berryman, Petrogiannis, and Wilson.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Claims 1, 3–5, 7–9, 21, and 22
The Appellant argues that cited references do not teach or suggest the
following features of independent claim 1:
regenerating the entire digital contract, wherein the
regenerating includes the incorporation of the first data into the
plurality of options and the second data in the additional option,
the regenerated digital contract includes signature in the option,
and the option does not overlay existing data or options
displayed in the digital contract.
See Appeal Br. 9–10. In part, the Appellant contends that the cited prior art
does not teach the claimed feature of an “option” that “does not overlay
existing data or options displayed in the digital contract.” Id.
The Examiner maintains that Petrogiannis teaches the identified
limitations of claim 1. Final Act. 11–13 (citing Petrogiannis ¶¶ 30, 35, 37,
38, 71, 72, 82).
The Specification aids in the construction of the term “overlay,”
which is the basis for one of the Appellant’s arguments. The Specification
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refers to certain deficiencies of “conventional contracts,” “which are
typically converted into portable document format (‘pdf’) documents.”
Spec. ¶ 3. The Specification further states:
To modify conventional contracts, users may print the contracts
and manually add text or modify the printed copies.
Alternatively, the users may use software, such as Adobe®.
Adobe® can modify conventional contracts by overlaying
existing text with text, date or signature fields and adding text
to these fields. However, these fields do not create a new copy
of a contract, nor move around existing text.
Id. In addition, the Specification states, “Adobe® can overlay the
unnecessary terms and conditions with an empty text box and mask the
unnecessary text.” Id. ¶ 5. “However,” the Specification continues, “such
conventional contracts are messy and create empty space or extra pages that
may not always be filled by text germane to the contract.” Id. By contrast,
the disclosed application permits an “additional option to be added to the
digital contract,” by “regenerat[ing] the digital contract to include the
additional option,” but the “additional option” “does not overlay existing
data or options displayed in the digital contract.” Id. ¶ 8. “Rather, the
application may regenerate the entire digital contract to include the
additional option in the beginning, middle, etc., of the contract, and
redisplay the digital contract on the graphical user interface of the computing
device.” Id.
In view of the term’s use in the Specification, we understand the
claimed feature of “the option does not overlay existing data or options
displayed in the digital contract” to mean that the identified “option” (which
“includes signature”) does not mask or cover any manifest visible content of
the existing document.
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Petrogiannis describes “a document approval module 22, for actually
applying the signature of the user on the document.” Petrogiannis ¶ 35. A
“special signature file” is used to “perform the signing.” Id. The signature
file includes “user-specific information uniquely identifying the user who is
signing, and is preferably combined with the digital certificate and private
key of the service provider’s eCommerce Server that is controlling the
signing process.” Id. Petrogiannis’ “signature file can also include a
captured electronic image of the user’s signature.” Id. Petrogiannis states:
“Preferably, the document approval module embeds this signature file in the
document, thereby effecting its signing.” Id.
The Examiner finds that Petrogiannis’ “embed[ding]” process satisfies
claim 1’s limitation of “the regenerated digital contract includes signature in
the option, and the option does not overlay existing data or options displayed
in the digital contract.” See Final Act. 11–12; Answer 4–5. However, the
“embed[ding]” operation disclosed in Petrogiannis operates on a document’s
electronic data records, but does not indicate any effect on a document’s
manifest visible appearance. Petrogiannis describes “embed[ding]” as
something that occurs at the code level. See Petrogiannis ¶ 37 (“In the
preferred embodiment, a secure process authentication code uniquely
representing the process log is embedded in the document as signed.” “[T]o
prevent tampering of the document after its signing, a secure document
authentication code uniquely representing the document as signed, such as a
hash of this document, is also embedded therein.”) Although Petrogiannis’
“signature file can also include a captured electronic image of the user’s
signature” (id. ¶ 35), Petrogiannis does not teach that this “electronic image”
is added to the document in a way that does not mask or cover any manifest
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visible content of the existing document. Petrogiannis is silent on this
matter. Therefore, we agree with the Appellant that the Examiner does not
show that Petrogiannis teaches “the regenerated digital contract includes
signature in the option, and the option does not overlay existing data or
options displayed in the digital contract.”
In view of the foregoing, we do not sustain the rejection of
independent claim 1 and its dependent claims (claims 3–5, 7–9, 21, and 22)
under 35 U.S.C. § 103.
Claims 10, 12, 18, and 23
The Appellant argues independent claim 10 and dependent claims 12,
18, and 23 as a group. Appeal Br. 10–11. Claim 10 is selected for analysis
herein. See 37 C.F.R. § 41.37(c)(1)(iv).
The Appellant argues that independent claim 10 stands rejected
erroneously, because the cited references do not teach or suggest the recited
“regenerating the digital contract, wherein the regenerating includes
regenerating the plurality of options in the category of the digital contract,
and the regenerated digital contract includes the signature in the option.”
See Appeal Br. 10–11.
The identified “regenerating the digital contract” limitation, in the
context of claim 10, refers to the predicate steps of “scanning the category in
the digital contract for an option from the plurality of options that receives a
signature as input,” “initializing a signature window,” and “receiving the
signature as the input.” In view of its context in claim 10, we understand the
recited “regenerating the digital contract” limitation to include the act of
forming a revised digital contract document, in view of a specific change to
an option, in the digital contract, by including the signature. The
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Specification reinforces this understanding, for example, in the explanation
provided in the following passage:
The disclosure also provides an application that
regenerates the digital contract based on input. For example,
some input may cause the application to include additional
options into the digital contract. In this case, the application
regenerates the digital contract and incorporates the additional
options into the portion of the digital contract specified by the
option.
Spec. ¶ 32.
The Examiner maintains that Petrogiannis teaches the identified
“regenerating the digital contract” limitation of claim 10. See Final Act. 24–
26 (citing Petrogiannis ¶¶ 30, 35, 37, 38, 71, 72, 82).
As noted above, Petrogiannis teaches “embed[ding]” a “signature file”
(which may “include a captured electronic image of the user’s signature”)
“in the document, thereby effecting its signing.” Petrogiannis ¶ 35. Further,
Petrogiannis teaches a technique “for distributing the electronically signed
document or record to the user, and any other party involved in the signing,”
which “will enable each party to have an identical signed copy.” Id. ¶ 38.
By creating this revised version of the document, which includes the
signature, Petrogiannis teaches the act of forming a revised digital contract
document, in view of a specific change to an option, in the digital contract,
by including the signature. That is, Petrogiannis teaches the identified
“regenerating the digital contract” limitation of claim 10. Therefore, we are
not persuaded by the Appellant’s argument that Petrogiannis fails to teach
this limitation.
The Appellant also argues that the Examiner’s reasoning is deficient,
because “Bailey as modified by Hill and Berryman ‘does not explicitly teach
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the remaining limitations’, and Petrogiannis further fails to teach” the
limitation of claim 10 addressed above. Appeal Br. 11 (quoting Final
Act. 24). This argument is tantamount to the Appellant’s argument that
Petrogiannis fails to teach the “regenerating the digital contract” limitation,
discussed above. For the reasons stated, above, this argument is
unpersuasive.
Therefore, we sustain the Examiner’s rejection of independent claim
10 and dependent claims 12, 18, and 23 under 35 U.S.C. § 103.
Claim 13
Dependent claim 13 recites:
13. The method of claim 10, further comprising:
receiving input that causes an option from the plurality of
options to be removed from the digital contract; and
regenerating a portion of the digital contract, wherein the
regenerated digital contract excludes the option and remaining
options in the plurality of options are laid out in the portion in
place of the removed option.
The Appellant argues that the cited prior art fails to teach or suggest
claim 13’s limitation of “receiving input that causes an option from the
plurality of options to be removed from the digital contract.” See Appeal Br.
12–13.2
The Examiner maintains that the Hunn reference teaches the identified
limitation. Answer 5–6 (citing Hunn ¶¶ 198, 219). See also Final Act. 30–
31 (citing Hunn ¶¶ 178, 198, 219).

2 The Appellant quotes the similar limitation of dependent claim 4, on page
13 of the Appeal Brief. We do not address claim 4, in regard to such
limitation, because claim 4 depends from independent claim 1 — the
rejection of which is not sustained herein, for the reasons discussed above.
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We are not persuaded of error in the Examiner’s mapping the
identified limitation of claim 13 to Hunn.
Hunn discloses techniques for creating and managing contract
documents — including processes for making changes to the document in
multi-party communications, “[d]uring a formation stage,” which “may be
seen as analogous to the negotiation of a traditional natural language legal
contract.” Hunn ¶ 178. Such changes “may involve changing contracts or
clauses (template or otherwise), deleting portions of the contract, adding in
new clauses,” and “changing the contract structure or topology.” Id. ¶ 198.
See also id. ¶ 219 (“These changes may include (but are not limited to):
adding/deleting/editing objects, such as clauses or parts thereof (in code,
natural language or a hybrid); adding/deleting/editing both input and output
resources; updating configurations; reverting changes etc.”) Therefore,
Hunn teaches claim 13’s feature of “caus[ing] an option from the plurality of
options to be removed from the digital contract.”
As to whether Hunn teaches the claimed feature of “receiving input”
that effects the removal of an “option,” per claim 13, Hunn provides a
detailed description of processes for the submission and acceptance of
proposed alterations to a contract document. In particular, Hunn explains:
“In one embodiment, amendments/changes/additions to the contract during
the formation are represented by commit objects.” Hunn ¶ 198. Hunn
continues: “During a formation stage, when changes by a party are
submitted to a contract, a new commit object is created.” Id. ¶ 199. Further,
“[a] commit may be accepted, rejected, or modified by the other parties to
the contract that are in receipt of the commit changeset.” Id. “At the
formation stage, either party may submit a proposed change via a commit,”
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Hunn explains. Id. Hunn also describes techniques for parties to provide
notice (to each other) of proposed “commits” and to accept or reject the
associated changes. Id. ¶¶ 218–19.
In view of Hunn’s disclosures, we are not persuaded that Hunn fails to
teach or suggest claim 13’s “receiving input that causes an option from the
plurality of options to be removed from the digital contract.”
The Appellant also argues that the Examiner “does not properly
explain a reason to modify the cited art to arrive at the combination” of
teachings described in the Final Office Action. Appeal Br. 13 (emphasis
omitted). More specifically, the Appellant argues that it would be “improper
to reason that one of ordinary skill in the art would expect deleting portions
of a computable contract to include the unstated (by the prior art Hunn)
claim feature of ‘receiving input that identifies an option from the plurality
of options’ to be deleted/removed.” Id. In other words, the Appellant
contends that the Examiner’s reasoning is deficient, because Hunn does not
teach the limitation of claim 13 addressed above. For the reasons already
provided, this argument is not persuasive of error in the rejection.
Therefore, we sustain the Examiner’s rejection of claim 13 under
35 U.S.C. § 103.
Claim 14
Dependent claim 14 recites the addition of the following limitations
(to base claim 10): “identifying an option in the plurality of options that
generates a sketch”; “receiving the sketch as an input”; and “regenerating the
digital contract to include the sketch.”
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The Appellant argues that the cited prior art fails to teach or suggest
claim 14’s limitations of “regenerating the digital contract to include the
sketch.” See Appeal Br. 13–17.3
The Examiner maintains that the Bailey reference teaches the
identified limitation. Final Act. 32 (citing Bailey ¶¶ 71, 75, 78). See also
Answer 6–7 (same). In addition, the Examiner relies upon the Arena
reference for teaching claim 14’s recitation of “an option . . . that generates a
sketch” and the Examiner relies upon the Li reference for teaching the
recitation of “receiving the sketch as an input.” See Final Act. 32–34. Thus,
the Examiner relies upon Bailey for disclosing “regenerating the digital
contract,” specifically, rather than any particular teachings of the recited
“sketch.” See id. at 32.
Bailey “relates generally to Statements of Work (SOWs) and, more
particularly, to efficiently creating and managing SOWs.” Bailey ¶ 2.
According to the Appellant, the portions of Bailey (cited by the
Examiner) involve modifying a “template” with content selected by a user,
wherein no “regenerating the digital contract” (per claim 14) occurs,
“because Bailey’s Statement of Work (SOW) is not generated until the final
step . . . of the disclosed method.” Appeal Br. 14–15 (citing Bailey ¶¶ 71,
75, Fig. 2).
Stated otherwise, the Appellant argues that Bailey’s SOW cannot be
regenerated until it has been generated for a first time; the Appellant

3 The Appellant’s arguments address claims 5 and 14; the Appellant
discusses claim 5, as representative of issues pertaining to both claims. See
Appeal Br. 14. We do not address claim 5, herein, because it depends from
independent claim 1 — the rejection of which is not sustained herein, for the
reasons discussed above.
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contends that, because Bailey’s SOW is generated only once, the reference
does not teach “regenerating” the SOW. See Appeal Br. 16 (“[R]egeneration
is recited to occur after generation of the digital contract.”)
However, the Appellant does not address whether the cited prior art
teaches the predicate “generating the digital contract” limitation, which is
recited in base claim 10. The Examiner maps this “generating” limitation
(of claim 10) to various portions of the Bailey reference — other than the
portions cited for teaching the “regenerating” limitation of claim 14. See
Final Act. 17–18 (citing Bailey ¶¶ 41–55). Therefore, there is no
conundrum in the Examiner’s mapping of claim 14’s “regenerating the
digital contract” limitation to Bailey’s teachings in paragraphs 71, 75,
and 78. See id. at 32. See also Answer 6–7. For example, the following
disclosure of populating the SOW, in Bailey’s paragraph 75 (cited by the
Examiner), may constitute the recited “regenerating the digital contract”:
“After receiving the indication or indications of additional content to be
included in the SOW (block 228 [of Fig. 2]), the SOW application 136 may
populate the selected SOW template with the indicated additional content
(block 232).” Bailey ¶ 75. See also Final Act. 32, Answer 7.
In addition, the Appellant’s argument omits, from the discussion in
the Appeal Brief, the Examiner’s mapping (see Final Act. 32) of claim 14’s
“regenerating the digital contract” limitation to Bailey’s paragraph 78, which
states:
[T]he method 200 [shown in Fig. 2] or portions thereof may be
repeated as needed or desired in order to modify the SOW
and/or create additional versions of the SOW. Thus, the
function described by the block 236 may also generate a
further version of the SOW where the function described by the
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block 236 has already generated one or more prior versions of
the SOW, for example.
Bailey ¶ 78 (emphasis added). Therefore, even if some of the cited portions
of Bailey were regarded as merely teaching generating an initial digital
contract (as opposed to the claimed “regenerating the digital contract”),
Bailey’s paragraph 78, nevertheless, teaches “generat[ing] a further version
of the SOW” (id.) — i.e., the recited “regenerating the digital contract” of
claim 14.
In a further argument, the Appellant contends that “any and all
modifications of Bailey to add additional content to the SOW would have
been effected through the modification of Bailey’s templates,” whereas the
identified limitation of claim 14 “does not effect modifications through the
template.” Appeal Br. 16.
This argument is also not persuasive. Claim 14’s base claim
(independent claim 10) recites the use of a “template” to “generat[e] a digital
contract,” by reciting the steps of: “retrieving a template associated with the
category from a memory storage, wherein the template includes a plurality
of options”; “retrieving a first data associated with the template”; and
“generating a digital contract by incorporating the first data into the plurality
of options associated with the template.” Yet, the Appellant does not
identify any basis for the assertion (see Appeal Br. 16) that the recited
“regenerating the digital contract,” of claim 14, may not be accomplished
with Bailey’s templates referenced in paragraphs 71, 75, and 78 thereof.
In any event, the Appellant’s proposed distinction, between Bailey’s
teachings and the claimed subject matter at issue, lacks factual support. The
Appellant argues that “Paragraphs 71 and 75 of Bailey emphasiz[e] user
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selection via an input and modifying the template with said inputted
content.” Appeal Br. 14. But, contrary to the Appellant’s contention, these
portions of Bailey show populating an existing template, rather than
modifying the template. See Bailey ¶ 75 (“After receiving the indication or
indications of additional content to be included in the SOW (block 228), the
SOW application 136 may populate the selected SOW template with the
indicated additional content (block 232).”) The Appellant does not explain
why Bailey’s operation, on this point, might be meaningfully distinguished
from a technique for “regenerating the digital contract” described in the
Appellant’s Specification — e.g., “[t]o regenerate the digital contract 110,
contract generator 208 may perform the steps described in operation 1308
and include the additional option” (Spec. ¶ 93), wherein, “[a]t operation
1308, . . . contract generator 208 incorporates data 506 . . . into template 502
and options 504” (id. ¶ 90). See also, e.g., id. ¶¶ 67–68.
Finally Appellant also argues that the Examiner’s reason to combine
the cited reference teachings — based upon a suggestion in Bailey for the
user to “select an option to input further content that is to be used in the
description of the scope of services in addition to the stored SOW content
that the user selected” (Bailey ¶ 71) — is deficient, because “[i]t is believed
to be improper . . . to deduce reasoning for a combination/modification of
references from the primary reference.” Appeal Br. 17.
The Appellant’s argument regarding the Examiner’s reason for
combining reference teachings is not persuasive of error.
As an initial matter, although the practice may be adopted for
convenience, the “characterization by the examiner of prior art as ‘primary’
and ‘secondary’ is merely a matter of presentation with no legal
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significance.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012).
Moreover, a reason for combining teachings may be properly ascribed to
disclosures in prior art references. WMS Gaming Inc. v. International Game
Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (“The suggestion to combine
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.”)
In view of the foregoing, we sustain the Examiner’s rejection of
claim 14 under 35 U.S.C. § 103.
Claims 16 and 17
Claim 16 adds, to its base claim 10, the following limitations:
“presenting a form that includes a plurality of descriptive materials”;
“selecting at least one descriptive material from the plurality of the
descriptive materials”; and “regenerating the digital contract, wherein the
regenerated digital contract includes the selected at least one descriptive
material.”
The Appellant argues that the cited prior art fails to teach or suggest
claim 16’s limitation of “regenerating the digital contract, wherein the
regenerated digital contract includes the selected at least one descriptive
material”; the Appellant further argues that the Examiner’s reason, for
combining the teachings of the cited prior art teachings, is deficient. See
Appeal Br. 17–20.4

4 The Appellant’s arguments address claims 7 and 16 (along with claims 8
and 17, respectively depending therefrom); the Appellant discusses claim 7,
as representative of issues pertaining to both claims 7 and 16. See Appeal
Br. 18. We do not address claims 7 and 8, herein, because they depend from
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The Appellant’s arguments, for claim 16, are substantially identical to
the arguments presented for claim 14, discussed above. As the Appellant
does, in regard to claim 14 (Appeal Br. 14–15), the Appellant argues that
Bailey does not teach “regenerating” a contract, because Bailey’s SOW is
not generated, for a first time, until the end of the disclosed process. Id.
at 18. In addition, the Appellant argues that Bailey’s use of templates, in
order to add additional content to the SOW, is contrary to the claimed
subject matter at issue in claim 16 (id. at 19) — in precisely the same
manner that the Appellant argues, in regard to claim 14 (see id. at 16). The
Appellant also (id. at 20) reprises, for claim 16, the argument alleging
deficiency in the Examiner’s reason to combine prior-art teachings to show
the obviousness of claim 14, — i.e., that a “primary reference” may not
provide a suggestion to combine/modify the prior art (see id. at 17).
For substantially same reasons provided for claim 14, the Appellant
does not persuade us of error in the rejection of claim 16.
Accordingly, we sustain the Examiner’s rejection of claim 16 (and
claim 17, depending therefrom, for which the Appellant presents no separate
argument) under 35 U.S.C. § 103.
Claim 19
In regard to independent claim 19, the Appellant argues that the cited
prior art fails to teach or suggest the following limitation:
regenerate a portion of the digital contract after the
digital contract was generated based on the received input by
incorporating a second data into the additional option of the
digital contract, wherein the regenerating includes the

independent claim 1 — the rejection of which is not sustained herein, for the
reasons discussed above.
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incorporation of the first data into the plurality of options and
the second data in the additional option.
See Appeal Br. 20–22.
The Examiner maps these claim features to the Bailey reference. See
Final Act. 42–43 (citing Bailey ¶¶ 40, 75, 78).
The Appellant’s arguments, for claim 19, are substantially identical to
arguments presented for claims 14 and 16, discussed above.5 Notably, as in
the Appellant’s arguments regarding claim 14 (see Appeal Br. 14–15), the
Appellant argues that, up until the completion of Bailey’s process, “the
SOW of Bailey has yet to be generated; therefore, the recited regeneration is
impossible.” Id. at 21 (citing Bailey ¶¶ 75, 78, Fig. 2). In addition, the
Appellant argues that, in Bailey, “any and all modifications to add additional
content to the SOW would have been effected through the modification of
templates” (id. at 22), which the Appellant regards as contrary to the
identified features of claim 19 — just as the Appellant argues, in regard to
claim 14 (see id. at 16).
For substantially same reasons provided for claim 14, the Appellant
does not persuade us of error in the rejection of claim 19.
Accordingly, we sustain the Examiner’s rejection of claim 19 under
35 U.S.C. § 103.
Claim 20
Dependent claim 20 stands rejected over a combination of the Bailey,
Hill, and Hunn references. See Final Act. 44–46. Of the limitations added,

5 Unlike the arguments presented for claims 14 and 16, however, the
Appellant does not contend that there is any deficiency in the Examiner’s
reason for combining teachings of the cited references.
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by claim 20, the Examiner relies upon Hunn for teaching the limitation of
“instructions” to “receive input that causes an option to be removed from the
digital contract.” Id. at 45–46 (citing Hunn ¶¶ 178, 198, 219). In addition,
the Examiner relies upon Bailey for teaching “instructions” to “regenerate a
second portion of the digital contract, wherein the regenerated digital
contract excludes the option and remaining options in the plurality of options
are laid out in the second portion in place of the removed option.” Id. at
44–45 (citing Bailey ¶¶ 40, 78).
The Appeal Brief states that the cited references teach neither of the
limitations identified, above. Appeal Br. 22–23. Yet, the Appellant’s
argument concerns only the alleged deficiency of Hunn to teach the
limitation of “instructions” to “receive input that causes an option to be
removed from the digital contract.” Id. at 23. Thus, in regard to claim 20,
the Appellant raises the identical argument presented for claim 13 (see id.
at 12–13), which is addressed above. For the reasons provided, above, this
argument is not persuasive of error in the rejection of claim 20.
The Appellant also argues that the Examiner provided erroneous
reasons for combining the teachings of the cited references, in the rejection
of claim 20. Appeal Br. 23–24.
In one aspect, the Appellant argues:
[O]ne of ordinary skill in the art would not have expected that
deleting portions of a computable contract could be modified by
including the unstated (by the prior art Hunn) claim feature to
“receive input that causes an option to be removed from the
digital contract” even if Hun[n] taught this.
Appeal Br. 23–24. The Appellant advanced the identical argument, in
regard to claim 13. See id. at 13. As we explain, above (regarding
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claim 13), the Appellant’s argument is deficient, because it rests upon the
incorrect presumption that Hunn fails to teach the identified claim feature.
In another aspect, the Appellant argues that the Examiner
“improper[ly] deduce[s] reasoning for a combination/modification of prior
art from the primary reference.” Appeal Br. 24. As discussed above, this
argument — which the Appellant also advances for claims 14 and 16 — is
unpersuasive. A prior art reference is a proper source of a reason to modify
or combine teachings. See WMS Gaming, 184 F.3d at 1355.
Accordingly, we sustain the Examiner’s rejection of claim 20 under
35 U.S.C. § 103.
CONCLUSION
The Examiner’s rejections of claims 10, 12–14, and 16–20 are
affirmed. The Examiner’s rejections of claims 1, 3–5, 7–9, 21, and 22 are
reversed.
More specifically:
The rejection of claims 1, 3, 9, and 22 under 35 U.S.C. § 103 as
unpatentable over Bailey, Hill, Berryman, and Petrogiannis is reversed.
The rejection of claims 10, 12, 18, and 23 are rejected under
35 U.S.C. § 103 as unpatentable over Bailey, Hill, Berryman, and
Petrogiannis is affirmed.
The rejection of claim 4 under 35 U.S.C. § 103 as unpatentable over
Bailey, Hill, Berryman, Petrogiannis, and Hunn is reversed.
The rejection of claim 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Bailey, Hill, Berryman, Petrogiannis, and Hunn is
affirmed.
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The rejection of claim 5 under 35 U.S.C. § 103 as unpatentable over
Bailey, Hill, Berryman, Petrogiannis, Arena, and Li is reversed.
The rejection of claim 14 under 35 U.S.C. § 103 as unpatentable over
Bailey, Hill, Berryman, Petrogiannis, Arena, and Li is affirmed.
The rejection of claims 7 and 8 under 35 U.S.C. § 103 as unpatentable
over Bailey, Hill, Berryman, Petrogiannis, and Gentile is reversed.
The rejection of claims 16, and 17 are rejected under 35 U.S.C. § 103
as unpatentable over Bailey, Hill, Berryman, Petrogiannis, and Gentile is
affirmed.
The rejection of claim 19 under 35 U.S.C. § 103 as unpatentable over
Bailey and Hill is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103 as unpatentable over
Bailey, Hill, and Hunn is affirmed.
The rejection of claim 21 under 35 U.S.C. § 103 as unpatentable over
Bailey, Hill, Berryman, Petrogiannis, and Wilson is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 9, 10,
12, 18, 22,
23
103 Bailey, Hill,
Berryman,
Petrogiannis
10, 12, 18,
23
1, 3, 9, 22
4, 13 103 Bailey, Hill,
Berryman,
Petrogiannis, Hunn
13 4
5, 14 103 Bailey, Hill,
Berryman,
Petrogiannis,
Arena, Li
14 5
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Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 8, 16, 17 103 Bailey, Hill,
Berryman,
Petrogiannis,
Gentile
16, 17 7, 8
19 103 Bailey, Hill 19
20 103 Bailey Hill, Hunn 20
21 103 Bailey, Hill,
Berryman,
Petrogiannis,
Wilson
21
Overall
Outcome
10, 12–14,
16–20, 23
1, 3–5, 7–
9, 21, 22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART