Ex Parte LUMLEY et al

Patent Trial and Appeal Board

Mar 12, 2019

11926362 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/926,362 10/29/2007 John William LUMLEY
145169 7590 03/14/2019
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC)
379 Lytton Avenue
Palo Alto, CA 94301
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
36MK-255052 4403
EXAMINER
NGUYEN, CHAU T
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
svpatents@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WILLIAM LUMLEY, ROGER BRIAN GIMSON,
and ROBERT THOMAS REES
Appeal2017-004884 1
Application 11/926,3622
Technology Center 2100
Before JEFFREY N. FREDMAN, KENNETH G. SCHOPPER, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-5, 7, and 9-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed July 14,
2016), the Reply Brief ("Reply Br.," filed Jan. 30, 2017), the Examiner's
Answer ("Ans.," mailed Nov. 29, 2016), and the Final Office Action ("Final
Act.," mailed Feb. 11, 2016).
2 According to Appellants, the real party in interest is Hewlett Packard
Enterprise Development LP, which is a "wholly-owned affiliate of Hewlett
Packard Enterprise" and has Enterprise DC Holdings LLC as its "general or
managing partner." Appeal Br. 1.
Appeal2017-004884
Application 11/926,362
BACKGROUND
According to Appellants, "[t]he invention relates to a method of
identifying an extractable portion of a source machine-readable document."
Spec. ,r 2.
CLAIMS
Claims 1, 7, and 9 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A method performed by a system comprising a processor,
compnsmg:
inserting, in a machine-readable template document, a first
reference to a first extractable portion having first underlying
data, the machine-readable template document including an
editable portion associated with an editable portion definition,
the editable portion definition including information of an edit
control applicable to the editable portion;
inserting, in an input machine-readable document, a
second reference to a second extractable portion having second
underlying data;
defining an output machine-readable document as a
plurality of inputs comprising the machine-readable template
document and the input machine-readable document, and as
processing to be performed on the inputs to generate the output
machine-readable document, the first reference to the first
extractable portion in the machine-readable template document
and the second reference to the second extractable portion in the
input machine-readable document unaltered by the processing;
generating the output machine-readable document by
performing the processing on the machine-readable template
document and the input machine-readable document with respect
to current versions of the first underlying data and the second
underlying data, the generated output machine-readable
document comprising a portion that upon user selection causes
display of the edit control identified by the editable portion
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Application 11/926,362
definition, the displayed edit control activatable to modify the
generated output machine-readable document; and
storing the generated output machine-readable document
and a timestamp indicating a time at which the output machine-
readable document was generated.
Appeal Br. (Claims App. i).
REJECTION3
The Examiner rejects claims 1-5, 7, and 9-22 under 35 U.S.C. § I03(a)
as unpatentable over Saikaly4 in view ofFoy. 5
DISCUSSION
Claims 1, 2, 4, 5, 7, 9, 10, 12-15, and 17-22
Appellants group claims 1, 2, 4, 5, 7, 9, 10, 12-15, and 17-22 together
as a single group. See Appeal Br. 6-12. We select claim 1 as representative
of this group, and claims 2, 4, 5, 7, 9, 10, 12-15, and 17-22 fall with claim
1.
With respect to claim 1, the Examiner finds that Saikaly discloses a
method as claimed except that Saikaly "does not disclose storing the output
machine-readable document [with] a timestamp indicating a time at which
the output machine-readable document was generated." Final Act. 2--4. The
Examiner finds that Foy teaches a system and method for creating and
delivering documents, including creating templates that are stored on a host
3 We note that the rejection and issues raised here are distinct from those
previously decided in an appeal with respect to this application such that we
do not address our prior decision herein. See Patent Trial and Appeal Board
Decision (Appeal 2012-007397, mailed Dec. 22, 2014).
4 Saikaly, US 7,734,995, Bl (iss. June 8, 2010).
5 Foy et al., US 2002/0046235 Al (pub. Apr. 18, 2002).
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Application 11/926,362
server with a time stamp. Id. at 5. The Examiner concludes that it would
have been obvious to modify Saikaly to use time stamps, as taught by Foy,
to keep track of the time at which a template was created. Id.
More specifically, in relevant part, the Examiner finds that Saikaly
discloses a machine readable template document including editable portions
associated with an editable portion definition as claimed. The Examiner
finds that Saikaly teaches:
receiving link fragments and component fragments for assembly
into a template, wherein the component fragments comprise
editable portions of a document; col. 5, lines 10-16: a form
fragment 202 may define a form component or a form link,
wherein the form component is a section of a document that
contains content that can be edited by a form editor).
Id. at 3. The Examiner further finds Saikaly teaches "user interface 302
includes components that provide a mechanism for a user to select
documents, formsets, templates, form fragments, and other items for editing,
rendering and/or distribution" such that Saikaly teaches a document in which
an edit control identified by an editable portion definition is displayed and
the displayed edit control is activatable to modify the document, as required
by the claim. Id. at 4 ( citing Saikaly Fig. 3; col. 6, 11. 3-29).
We agree with and adopt the Examiner's findings and conclusions
with respect to the rejection of claim 1. See Final Act. 2-5; see also Ans.
10-16. As discussed below, we are not persuaded by Appellants' arguments
of reversible error by the Examiner.
First, Appellants argue that the cited portions of Saikaly at columns 1
and 5 do not teach an editable portion definition including information for an
edit control as claimed. Appeal Br. 8. Appellants assert that although
Saikaly's component fragments include editable portions, Saikaly does not
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Application 11/926,362
teach that the editable portions are associated with editable portion
definitions including edit control information. Id. Further, Appellants assert
that Saikaly teaches only an off the shelf form editor, and Saikaly does not
teach an editable portion definition that includes information of the form
editor, i.e., Appellants assert that Saikaly does not teach the use of an
editable portion definition with edit control information that is caused to be
displayed upon user selection of an output document. Id. at 9.
Next, Appellants argue that the cited portions of Saikaly at Figure 3
and column 6 do not teach display of an edit control that is activatable as
required by the claim. Appeal Br. 9-10. Appellants assert that Saikal y' s
"control elements of the user interface would be statically defined by the
machine code that provides the user interface." Id. at 10. Appellants assert
that statically defined control elements are not edit controls as required by
the claim. Id.
Finally, Appellants argue that Saikaly' s "template definition" or
"fragment definition" do not constitute "editable portion definitions" as
claimed. Appeal Br. 10. Appellants assert that Saikaly's template definition
includes only the template name and a template GUID, and that "[t]here is
absolutely no indication that the template name or the template GUID
constitutes 'information of an edit control applicable to the editable
portion."' Id. at 10-11. Further, Appellants assert that Saikaly's fragment
definition includes a subform name and a subform GUID and "[t]here is
nothing to indicate that the subform name or subform GUID constitutes
information of an edit control ... as claimed." Id. at 11.
We are not persuaded by Appellants' arguments at least for the
reasons provided by the Examiner in the Answer. Specifically, we agree
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with the Examiner that Saikaly discloses editable portions in the form of
form fragments and editable portion definitions in the form of fragment
definitions. Saikaly discloses that a form fragment may define a form
component that "is a section of a document that contains content that can be
edited by a form editor." Saikaly col. 5, 11. 10-16. We agree with the
Examiner that this relates to an editable portion of a document template.
Saikaly also discloses that the fragment definition includes a reference to
"subform GUID" that "maps back to a content management location," i.e.,
the location of the editable portion of the document template. Id. at col. 4, 1.
60-col. 5, 1. 9. Thus, Saikaly discloses an editable portion that is associated
with an editable portion definition, as required by the claim. Further,
because the form components include information that can be edited by a
form editor, we find that the form components necessarily include
information related to edit control and are necessarily activatable as a
necessarily requirement of being editable. We note that the claim does not
require that the editable portion definition include the edit control itself, 6
rather the claim requires only that the editable portion definition includes
"information of an edit control applicable to the editable portion."
We also find that Saikaly teaches, or at least suggests, a machine-
readable document that includes portions that display edit controls upon user
selections. As noted by the Examiner, Saikaly discloses that the user
6 In the Reply Brief, Appellants argue that "information of an edit control"
may be "a drop-down menu for different sizes or colors for the editable
portion." Reply Br. 5. Although a drop-down menu may be a type of edit
control, without further explanation, we are not persuaded that "information
of an edit control" must include information regarding the specific type of
control.
6
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interface allows the user to select fragments "for editing, rendering and/or
distribution." Saikaly col. 6, 11. 10-14; see also Ans. 15. Saikaly also
discloses that a user may select to assemble a document for the purpose of
modifying it, in which "case, the form fragments are assembled and made
ready for editing in a document processing application." Saikaly col. 10, 11.
19-23; col. 11, 11. 7-14. Saikaly further discloses that a document may be
assembled with "color cue[ s ]" indicting "which portions may be edited and
which portions may not be edited." Id. at col. 11, 11. 18-22. Thus, we find
that Saikaly teaches a user selecting whether the document will include
displayed color cues to identify editable portions, i.e. this selection is a
process by which display of edit controls are achieved. Even if these
displayed color cues are not considered "displayed edit control[s]," we
determine that one of ordinary skill in the art would find display of edit
controls obvious at least in order to identify which form component has been
selected for editing, e.g., by providing a blinking cursor within the selected
form component.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. Accordingly, we sustain the rejection of claim 1. We also
sustain the rejection of claims 2, 4, 5, 7, 9, 10, 12-15, and 17-22, which fall
with claim 1, as noted above.
Claims 3 and 11
Claim 3 depends from claim 1 and further requires, inter alia,
"determining whether the output machine-readable document is up-to-date
based on the timestamp as compared to whether the first underlying data or
the second underlying data has been changed since the output machine-
readable document was generated." Appeal Br. (Claims App. ii).
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The Examiner indicates that Saikaly discloses a determining step as
claimed. See Final Act. 6 ( citing Saikaly col. 11, 1. 7---col. 12, 1. 40).
Further, in response to Appellants' arguments, the Examiner states:
Saikaly discloses component fragments may be appended
directly onto the new template, and for link fragments, the
component fragments referenced by the link may be obtained and
inserted into the new template, wherein the latest version of a
fragment may be appended to the new template, and the template
is up-to-date with the latest version of the component fragments
(col. 10, lines 8-34 and col. 12, lines 20-39). Although, Saikaly
does not teach "determining whether the output machine-
readable document is up-to-date based on the timestamp as
compared to whether the first underlying data or the second
underlying data has been changed since the output machine-
readable document was generated", one of ordinary skill in the
art would interpret that there must be some kind of comparison
step between the old component fragments and the new
component fragments in order to determine which component
fragments are newer or up-to-date. Therefore, one of ordinary
skill in the art would have incorporated the association of a time
stamp in creating a document of Foy with generating new version
of a document of Saikaly for the purpose of creating an up-to-
date version of the created document.
Ans. 17-18 ( emphasis omitted).
We are not persuaded by Appellants' arguments that neither Foy nor
Saikaly indicate using a time stamp in a determination step as claimed. See
Appeal Br. 12-13. In particular, Appellants provide only arguments against
Foy and Saikaly individually, but the rejection, as clarified in the Answer, is
over the combination of the art. Further, we agree with the Examiner's
unrebutted conclusion in the Answer that there is some comparison
occurring to determine the latest version of a form fragment and that it
would have been obvious to make a determination as claimed for the
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Application 11/926,362
purpose of creating an up-to-date version of a document. Accordingly, we
sustain the rejection of claims 3 and 11.
Claim 16
Claim 16 depends from claim 1 and requires that "the editable portion
definition comprises information of a location of the editable portion, and
wherein a location of the portion ... is user selectable to cause display of the
edit control." Appeal Br. (Claims App. v). In the Answer, the Examiner
finds that Saikaly discloses that the form fragments include data regarding
individual portions of a document or a portion of a page on a form and that
the subform GUID is a unique identifier that maps back to a content
management location. Ans. 18-19 ( citing Saikaly col. 4, 1. 42---col. 5, 1. 17).
We agree with the Examiner's unrebutted findings. 7 Saikaly specifically
discloses that the subform GUID is a "unique identifier attribute that maps
back to a content management location." Saikaly col. 5, 11. 7-8. Because
the subform GUID is part of the fragment definition, i.e., Saikaly' s editable
portion definition, Saikaly's fragment definition necessarily includes
location information for the editable portion, which would associate the
editable portion definition with the display of the edit control at the
identified location. Thus, we sustain the rejection of claim 16.
7 Appellants present arguments only with respect to the Examiner's original
citations and do not address the Examiner's additional findings in the
Answer. See Appeal Br. 14--15; see also Reply Br. 4--6.
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CONCLUSION
We AFFIRM the rejection of claims 1-5, 7, and 9-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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