WORKSHARE, LTD.

Patent Trials and Appeals Board

Mar 30, 2020

13830023 - (D) (P.T.A.B. Mar. 30, 2020)

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.
13/830,023 03/14/2013 Robin Glover 15261.0009-00000 4761
22852 7590 03/30/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
LUDWIG, MATTHEW J
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
03/30/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBIN GLOVER
____________

Appeal 2019-001460
Application 13/830,023
Technology Center 2100
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–17 and 20–28, which constitute all pending
claims. Claims App. 1–11. Appellant has canceled claims 18 and 19. Id. at
7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Workshare, Ltd. as the real party in interest.
Appeal Br. 1.
2 Rather than repeat each of Appellant’s arguments and the Examiner’s
findings, we refer to relevant portions of the Appeal Brief (filed May 23,
2018, “Appeal Br.”), the Reply Brief (filed December 5, 2018, “Reply Br.”),
the Examiner’s Answer (mailed October 5, 2018, “Ans.”), and the Final
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STATEMENT OF THE CASE
“[T]he present invention relates to methods and systems for detecting
changes and/or differences between an original document and a modified
version of the document, especially where . . . the two versions of the
document are encoded in different formats of document representation.”
Spec. ¶ 1.
Invention
Claims 1, 8, 15, 20, and 21 are independent. Claim 1 is illustrative
and is reproduced below.
1. A method for tracking locations of content in a
document, said document comprised of content and said
document being embodied by a first and second version and a
first machine readable representation of the result of a
comparison between the two versions, each representation an
individual data file, comprising:
generating for each of the first and second versions of the
document, a corresponding first and second data structure
embodying a corresponding first and second hierarchical
representation of the content of the respective version of the
document comprising at least one node, said node
corresponding to a content data object comprising the
respective version of the document and referring to a location in
the respective version of the document and referring to at least
one other node;
generating a third data structure representing a
hierarchical representation of the content comprising the first
machine readable representation of the result of a comparison,
comprising at least one node, said node corresponding to a
content data object comprising the machine readable

Office Action (mailed September 25, 2017, “Final”). We also refer herein to
the Corrected Claims Appendix (filed June 8, 2018, “Claims App.”) and the
Specification (filed March 14, 2013, “Spec.”).
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representation of the result of a comparison and referring to a
location in the first machine readable representation of the
result of a comparison;
for at least one piece of content present in the first
version, generating a fourth data structure representing a
mapping of data representing the location of such content in the
first version to data representing the location of the content in
the second version by determining a mapping from the data
representing the location of the content in the first version to
data representing a location of the content in the first machine
readable representation of the result of a comparison and
determining a mapping from the data representing the location
of the content in the first machine readable representation of the
result of a comparison to data representing the location of the
content in the second version.
Claims App. 1–2.
References and Rejections
The Examiner rejected Claims 1, 8, 15, 20, and 21 under 35 U.S.C.
§ 101 as being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Final 3–4.
The Examiner rejected Claims 1–28 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention. Id. at 4–6.
The Examiner rejected Claims 1, 2, 4, 6–17, 20–22, and 25–28 under
pre-AIA 35 U.S.C. § 102(b) as being anticipated by Massand (US 7,818,678
B2; Oct. 19, 2010). Id. at 6–12.
The Examiner rejected Claims 3, 5, 14, 23, and 24 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Massand and Abe et al. (US
2010/0146382 A1; June 10, 2010). Id. at 13–14.

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ANALYSIS
CLAIMS 1, 8, 15, 20, AND 21: ELIGIBILITY
In the Final Office Action, the Examiner rejected claims 1, 8, 15, 20,
and 21 under 35 U.S.C. § 101 as being directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more. Final 3–4. There, the Examiner provided a detailed
analysis in rejecting independent claim 1. Id. For independent claims 8, 15,
20, and 21, the Examiner determined that “the claims recite similar language
and limitations to those found in independent claim 1” and, “[t]herefore, the
claims are rejected under similar rationale.” Id. at 4. In the Answer, the
Examiner restates the § 101 rejection of claims 1, 8, 15, 20, and 21, but then
explicitly withdraws the § 101 rejection of claim 1. Ans. 11. In the
Response to Arguments section of the Answer, the Examiner does not
respond to any of Appellant’s arguments with respect to § 101. See id. at
12–16.
For the avoidance of doubt, we treat the Examiner’s § 101 rejection of
claim 1 as withdrawn, and we reverse pro forma the Examiner’s § 101
rejection of claims 8, 15, 20, and 21, which had been rejected “under similar
rationale.”
CLAIMS 1–28: INDEFINITENESS.
1. Claims 18 and 19
In the Final Office Action, the Examiner rejected claims 18 and 19
under 35 U.S.C. § 112, second paragraph, as being indefinite. See Final 4–6.
Appellant, however, had previously canceled claims 18 and 19. See
Response to Non-Final Office Action 7, 12 (filed August 10, 2015).
Accordingly, the rejection of claims 18 and 19 under this ground is moot.
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2. Claims 1–17 and 20–28
Under 35 U.S.C. § 112, second paragraph, the test for definiteness is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a
claim is unclear if, when given its broadest reasonable interpretation, it is
“ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention,” In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014), or if it “is amenable to two or more plausible claim
constructions,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
The Examiner determines that claims 1–17 and 20–28 are indefinite
under 35 U.S.C. § 112, second paragraph, because the following elements of
claim 1 are allegedly unclear: (1) the phrase “each representation an
individual data file,” (2) the “node” limitations, and (3) the “generating a
fourth data structure” limitation. Final 4–6; Ans. 12–14.
First, the Examiner asserts the phrase “each representation an
individual data file” is unclear because “[t]he claim states ‘a first machine
readable representation’ but that is the only representation within the claim.”
Final 5. In response, Appellant cites the Specification’s disclosure that
“[t]he system also stores versions of the document as separate data files” as
evidence that “the claim is rather clear: the two versions and the comparison
representation may be three data files.” Appeal Br. 16. In other words,
Appellant asserts that “each representation” refers to a representation of the
first version, a representation of the second version, and the first machine
readable representation. We find this interpretation to be reasonable, and the
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Examiner does not provide a rebuttal, let alone a persuasive one, in the
Answer. See generally Ans. 12–14.
Second, the Examiner asserts that “said node corresponding to a
content data object comprising the respective version of the document and
referring to a location in the respective version of the document and
referring to at least one other node” is unclear and “not the same thing as”
the Specification’s disclosure that “the document hierarchy may be
represented as a list of nodes, each entry having its own list of elements.”
Final 5 (citing Spec. ¶ 34); see also Ans. 13. The Examiner’s assertions are
unpersuasive. One of ordinary skill in the art would readily understand the
limitation at issue to mean that the hierarchical representation of the version
of the document has a node that refers both to a particular location in the
version and to at least one other node (such as any child nodes). See Appeal
Br. 14; Reply Br. 1–2. This is consistent with the Specification, which
describes an example node element as follows: “[versionXnodenum,
content, location, childnodenum(1) . . . childnodenum(n)].” Spec. ¶ 34.
Third, the Examiner asserts that the term “data” and phrases “such
content” and “the location” are unclear when recited as follows: “generating
a fourth data structure representing a mapping of data representing the
location of such content in the first version to data representing the location
of the content in the second version.” Final 5–6; Ans. 13–14. We disagree.
One of ordinary skill in the art would understand that the phrase “such
content” refers to “at least one piece of content present in the first version”
recited just beforehand. As Appellant argues, there is no rule against using
the term “such” instead of “said” so long as it “conveys to ‘one of ordinary
skill in the art’ the same thing,” which it does here. Appeal Br. 16. And, as
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Appellant further argues, one of ordinary skill in the art would understand
that “‘data’ are data items stored in the fourth data structure that represent
the corresponding locations to the same content.” Id. We also agree with
Appellant that the recitations of “the location” are clear because “all three
uses of ‘location’ have antecedent basis in the claim and specification.”
Reply Br. 5–6. As Appellant explains, “[a]ntecedent basis for the two
‘locations’ is earlier in the claim: ‘a location in the respective version of the
document’, which are claimed as ‘the first and second versions of the
document’” whereas “[t]he third ‘location’ is the claim element ‘a location
of the content in the first machine readable representation of the result of a
comparison[]’, that is, the redline version.” Id. at 6.
Fourth, the Examiner asserts that “it is unclear how the description of
a node in the first, second, and third data structures are used in the mapping
and generating of the fourth data structure,” that “[t]he use of data and
content within the last limitation fails to accurately define what is being
mapped,” and that “[t]he use of ‘the location’ as it is currently stated
throughout the last limitation . . . . fails to provide one of ordinary skill in the
art with a clear understanding of any type of direct result of the mapping.”
Ans. 13–14. But “it is the function of the specification, not the claims, to set
forth the ‘practical limits of operation’ of an invention.” In re Johnson, 558
F.2d 1008, 1017 (CCPA 1977) (citing In re Rainer, 305 F.2d 505, 509
(CCPA 1962)). In other words, contrary to the Examiner’s assertions,
“[o]ne does not look to claims to find out how to practice the invention they
define, but to the specification.” Id. (citing Roberts, 470 F.2d at 1403; In re
Fuetterer, 319 F.2d 259 (CCPA 1963)). Thus, the alleged absence in the
claim of additional, specific steps detailing how the nodes, data, content, and
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location are used in the mapping and generating of a fourth data structure is
no defect. In any event, we agree with Appellant that the claim and the
Specification adequately describe this process. See Reply Br. 3–5 (citing
Spec. ¶ 34).
In view of the foregoing, we decline to sustain the Examiner’s
rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as being
indefinite. We likewise decline to sustain the Examiner’s § 112, second
paragraph, rejection of claims 2–17 and 20–28, which recite similar
limitations for which the Examiner makes the same deficient findings and
conclusions as with the rejection of claim 1.
CLAIMS 1–17 and 20–28: ANTICIPATION AND OBVIOUSNESS.
The Examiner rejects claims 1, 2, 4, 6–17, 20–22, and 25–28 as being
anticipated by Massand. Final 6–12. Massand discloses a document review
and revision system that allows for real time collaboration between an owner
of a document and a group of reviewers who may suggest changes to the
document. See, e.g., Massand, 3:7–17, Figs. 3–5. In Massand, a
hierarchical relationship exists between the owner (e.g., author) of the
document and the reviewers. See, e.g., id. at 5:65–15, Fig. 4. A secondary
data file may be used to store a reviewer’s identity, the suggested changes to
the document, the respective locations of the changes, the reviewer’s
comments, and the date and time of each change. See, e.g., id. at 6:45–7:11,
Figs. 9, 10. The secondary data file may be associated with the document or
a copy thereof (e.g., master data file), and with at least one of the reviewers.
Id. at 3:13–14, 6:16–19, 7:13–15. The text of the document and the
suggested changes of the secondary data file may be shown in separate
windows or in a single document editing window. Id. at 6:45–61.
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Claim 1 recites, in relevant part,
generating for each of the first and second versions of the
document, a corresponding first and second data structure
embodying a corresponding first and second hierarchical
representation of the content of the respective version of the
document comprising at least one node, said node
corresponding to a content data object comprising the
respective version of the document and referring to a location in
the respective version of the document and referring to at least
one other node.
The Examiner finds Massand satisfies this limitation with its
disclosure of “a collaborative editing system wherein multiple reviewers
receive versions (copies) of the master document/data file.” Final 7. The
Examiner explains that in Massand:
Reviewers edit specific locations within each of a first and
second version of the master document/file. First and second
data structures are formed wherein each structure is hierarchical
since each edit is timestamp[ed,] thus forming a hierarchical
representation of the content based on time. The nodes referring
to a location in the respective version that are included in the
representation are disclosed within the reference through the
specific comments generated by the user that indexed as nodes
representing specific locations within the document. The
changes generated and submitted by each reviewer are
maintained through their own respective secondary data file.
Id. (citing Massand 5:1–8:67, Figs. 7–9).
Appellant argues, “Massand does not disclose the claim elements
‘hierarchical representation of the content of the respective version of the
document’ or a ‘node’ that is ‘referring to at least one other node.” Appeal
Br. 17. Appellant explains that Massand’s disclosure of a hierarchical
relationship between owner and reviewers “is not a disclosure of a
hierarchical data structure representation of the content of a document as
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claimed” because “[a] ‘reviewer’ is not a piece of ‘content.’” Id. at 22.
Appellant adds that “one of ordinary skill in the art would not consider a
data structure ‘hierarchical’ because there are time stamps in one column of
the table.” Id. Appellant further explains that, “[a]ssuming . . . each row in
Massand’s [Figure 9] table is comparable to a ‘node’ in Appellant’s claims,
nothing in Massand suggests that any row is comprised of a reference to
another row,” and “the Examiner fails to explain how ‘hierarchical in time’
is the same as the claim element ‘referring to at least one other node.’” Id. at
17.
In response to Appellant’s arguments, the Examiner additionally finds
that “the reference to Massand provides a description of a structured
document such as an HTML, TXT, DOC, which inherently provides a
hierarchy of structured elements,” such that “the copies that are sent to each
user would further contain hierarchically structured elements.” Ans. 14
(citing Massand 3:1–67, 7:1–8:67, Fig. 9). The Examiner explains that in
Massand:
The secondary files are created from the master document
copies. Thus, a first and second user would have a version of
the master document. Further, the node correspond[s] to a
content data object comprising the respective version of the
document and referring to a location in the respective version of
the document and referring to at least one other node is taught
through the contents of the secondary file. . . . [A] specific set
of changes made through the secondary file. . . . include[s] a
specific document version, location, and refer[s] to [] at least
one other node through the second paragraph change within the
secondary file.
Id. at 14–15 (citing Massand 7:1–8:67, Fig. 9). Appellant responds that
“Massand does not use the word ‘hierarchical’ in the description of any data
structure representing a document version” and that no factual basis or
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technical reasoning was provided by the Examiner to reasonably support the
Examiner’s inherency argument. Reply Br. 7, 12.
We agree with Appellant that the Examiner erred in finding Massand
discloses a “first and second hierarchical representation of the content of the
respective version of the document . . . comprising at least one node . . .
referring to at least one other node.” First, the Examiner asserts that
Massand’s use of structured HTML, TXT, and DOC documents inherently
provides a hierarchy of structured elements, but the Examiner does not
provide any factual basis or technical reasoning to reasonably support this
finding. Second, even if one of the document types used in Massand were to
provide a hierarchy of structured elements, claim 1 does not recite “a
hierarchy of structured elements”; it recites a “hierarchical representation of
the content of the respective version of the document comprising at least one
node . . . referring to at least one other node.” Third, while Massand teaches
a hierarchical relationship between owner and reviewers, as well as temporal
relationship between suggested changes in the secondary data file, we find
no evidence that Massand teaches a hierarchical representation of the
document, master data file, or secondary data file, such that the
representation comprises a node and refers to at least one other node.
Fourth, even though the secondary data file may be associated with the
document or master data file, the Examiner’s findings lack evidence that
such association corresponds to one node of a hierarchical representation
referring to another node. In sum, the Examiner has not adequately shown
that Massand discloses a “first and second hierarchical representation of the
content of the respective version . . . comprising at least one node . . .
referring to at least one other node.”
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Accordingly, constrained by this record, we decline to sustain the
Examiner’s rejection under 35 U.S.C. § 102(b) of independent claim 1. We
also decline to sustain the § 102(b) rejection of independent claims 8, 15, 20,
and 21, which recite similar limitations for which the Examiner relies on the
same deficient findings as with the rejection of claim 1. We likewise decline
to sustain the Examiner’s § 102(b) rejections of dependent claims 2, 4, 6, 7,
9–14, 16, 17, 22, and 25–28, for which the Examiner presents no additional
findings that cure the deficiencies in the rejection of independent claims 1, 8,
15, 20, or 21. For similar reasons, we decline to sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of dependent claims 3, 5, 14, 23, and 24,
for which the Examiner does not present any specific findings (for example
in Massand or Abe) or any obviousness rationale that cure the deficiencies
discussed above.

CONCLUSION
We REVERSE pro forma the rejection of claims 8, 15, 20, and 21
under 35 U.S.C. § 101.
We do not reach the Examiner’s rejection of claims 18 and 19 under
35 U.S.C. § 112, second paragraph, because the rejection is moot.
We REVERSE the rejection of claims 1–17 and 20–28 under
35 U.S.C. § 112, second paragraph.
We REVERSE the rejection of claims 1, 2, 4, 6–17, 20–22, and 25–28
under 35 U.S.C. § 102(b).
We REVERSE the rejection of claims 3, 5, 14, 23, and 24 under
35 U.S.C. § 103(a).
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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 15, 20, 21 101 Eligbility 8, 15, 20, 21
1–17, 20–28 112, second
paragraph
Indefiniteness 1–17, 20–28
1, 2, 4, 6–17,
20–22, 25–28
102(b) Massand 1, 2, 4, 6–17,
20–22, 25–28
3, 5, 14, 23, 24 103(a) Massand, Abe 3, 5, 14, 23,
24
Overall
Outcome
1–17, 20–28

REVERSED