Ex Parte Nydam et al

Patent Trial and Appeal Board

Feb 4, 2016

11500863 (P.T.A.B. Feb. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111500,863 08/07/2006
72058 7590 02/08/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Ronald Nydam
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.
58083-855509 (B032Nl) 5325
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/08/2016 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):
ipefiling@kilpatrickstockton.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIT GUPTA, SCOTT A. GRANT,
RONALD NYDAM, and PANKAJ GUPTA
Appeal2013-009848
Application 11/500,863
Technology Center 3700
Before LINDA E. HORNER, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 9--21, 30-42, 48-54, and 62-71. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2013-009848
Application 11/500,863
THE INVENTION
Appellants' invention relates generally to systems and methods for
creating and editing content. Spec. i-f 21. Claim 9, reproduced below, is
illustrative of the subject matter on appeal.
9. A method for having content reviewed, comprising:
using a processor to generate a signature comprising a set
of signature values for content to be reviewed, wherein each of
the set of signature values is related to a time based flow of the
content and each signature value comprises a time value based
on a timeline;
exporting the content to a review file;
sending the review file to one or more reviewers without
requiring a server to manage the reviewing of the content; and
receiving an annotation file from at least one of the one or
more reviewers, wherein:
the content is annotated with an annotation;
the annotation is associated with a corresponding
signature value, wherein the corresponding signature value is
one of the set of signature values that corresponds to the
occurrence of the annotation with respect to the time based
flow of the content; and
the annotation is stored in the annotation file along with
the corresponding signature value.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 9--11, 16, 18, 19, 21, 30-32, 37, 39, 40, 42, and 48-50 are
rejected under 35 U.S.C. 103(a) as being unpatentable over Diamond (US
2006/0282762 Al, pub. Dec. 14, 2006) and Gupta (US 2007/0011206 Al,
pub. Jan. 11, 2007).
- 2 -
Appeal2013-009848
Application 11/500,863
2. Claims 12-15, 17, 33-36, 38, 51-54, and 62-71 are rejected under
35 U.S.C. 103(a) as being unpatentable over Diamond, Gupta, and Farmer
(US 2006/0282776 Al, pub. Dec. 14, 2006).
3. Claims 20 and 41 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Diamond, Gupta, and Bargeron (US 2004/0240562 Al,
pub. Dec. 2, 2004).
OPINION
Unpatentability of
Claims 9-11, 16, 18, 19, 21, 30-32, 37, 39, 40, 42, and 48-50
over Diamond and Gupta
Claim 9
The Examiner finds that Diamond discloses the claimed invention
except for the limitation directed to generating a signature. Final Action 3.
The Examiner relies on Gupta as disclosing this limitation. Id. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to combine the teachings of Diamond
and Gupta to achieve the claimed invention. Id. According to the Examiner,
a person of ordinary skill in the art would have provided a time value based
on a timeline for a signature to better define an annotation. Id. at 3--4.
Appellants traverse the Examiner's rejection by arguing that the
proposed combination lacks the negative limitation in claim 9, namely,
sending the review file to one or more reviewers without
requiring a server to manage the reviewing of the content.
Appeal Br. 9 (emphasis added). Appellants argue that both Diamond and
Gupta require a server to manage the reviewing of the content. Id.
Appellants argue that Diamond relates to a collaborative document review
system where a document is simultaneously accessible by more than one
- 3 -
Appeal2013-009848
Application 11/500,863
reviewer. Id. Appellants characterize Diamond as having a document that is
created and uploaded to a web site or URL address where each reviewer can
review and annotate the review copy simultaneously. Id. at 10. Appellants
contend that the annotations are written to a database on the webserver. Id.
Appellants characterize Diamond as requiring "the server to manage the
review." Id.
Similarly, Appellants argue that Gupta describes the use of an
annotation server that manages the reviewing of the content. Id. at 10-11.
Appellants argue that Gupta uses annotation server 10 to control the storage
of annotations and their provision to client computers 15. Id. at 11.
Appellants argue that Gupta's annotation server 10 manages the annotation
content store 1 7. Id.
In response, the Examiner states that a server does not manage the
reviewing of content. Ans. 3. The Examiner states that the reviewers of
Diamond manage the review after downloading the files from the server. Id.
The Examiner characterizes Diamond as using a server to store and retrieve
files, but that the server does not review or manage the review of documents.
Id. at 3--4. The Examiner points to Appellants' Specification as disclosing
the use of media server 114 as a storage location from which one or more
reviewers download or stream the content to be reviewed on the local
machines of reviewers without requiring media server 114 to be involved in
controlling the review of the content. Id. at 4. The Examiner does not
recognize any difference between Appellants' Specification or claims and
- 4 -
Appeal2013-009848
Application 11/500,863
the disclosure of Diamond. Id. (citing a comparison between Figure l of
Diamond and Appellants' Figure 1). 1
In reply, Appellants argue that the Examiner's argument is directed to
an embodiment disclosed in the Specification that is not reflected by the
claim limitations recited in claim 9. Reply Br. 3--4.
The instant dispute between the Examiner and Appellants turns on
what it means for a server "to manage" the reviewing of content.
Essentially, the Examiner takes the position that servers do not manage the
review of content, only people (reviewers) do. Ans. 3. As we understand
Appellants' argument, "to manage the reviewing" at a server means that the
server stores the file that is under review and that the server communicates
with reviewers at client computers to receive and store annotations to the file
that is under review. In that sense, to "manage" means to store the file and
allow revisions to be made to the file on the server. The Specification states:
[N]etwork 112 is a transmission medium over which the review
file is transmitted from content creator/ editor 110 to one or more
reviewers 116-120 without requiring network 112 to be involved
in controlling the review of the content of the review file by
reviewers 116-120.
Spec. i-f 22 (emphasis added); see also Spec. i-fi-128-29. The Specification
supports Appellants' construction of the "to manage" phrase in claim 9.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
1 The Examiner also states that Appellants "focus on the server-based
embodiment [of Diamond] as opposed to the web-based environment."
Ans. 3. However, the Examiner does not explain how document review is
performed in Diamond without a server managing the review.
- 5 -
Appeal2013-009848
Application 11/500,863
However, even under the broadest reasonable inte1vretation, a constn1ction
"cannot be divorced from the specification and the record evidence." In re
NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). The Examiner's
construction of the "to manage" limitation is not reasonable in light of the
Specification.
Diamond discloses a server based collaborative document review.
Diamond i-f 22. In Diamond, client software is not required as the
annotations to the document are written to a database in a server. Id. i-f 24
("[T]he server 110 obtains the original document 140 from the origin server
and serves up the review document or version 150 to the reviewers 120").
Similarly, Gupta discloses a system with an annotation server and a client
computer. Gupta i-f 3 8. Annotation commands are formulated at a client
computer and then forwarded to the annotation server. Id.
We are persuaded that Appellants have successfully rebutted the
Examiner's prima facie case and distinguished the subject matter of Claim 9
over the prior art. Accordingly, we do not sustain the rejection of claim 9 or
of claims 10-15 that depend therefrom.
Claims 16-21, 3rJ--42, 48-54, and 62-71
Claims 16, 30, 37, and 48 are independent claims. Claims App. As
with claim 9 discussed above, each claim contains a negative limitation
directed to sending the review file "without requiring a server to manage the
reviewing of the content." Id. Thus, for essentially the same reasons
discussed above with respect to claim 9, we do not sustain the rejection of
claims 16, 30, 37, and 48, neither do we sustain the rejection of claims 17-
21, 31-36, 38--42, 49-54, and 62-71 that depend therefrom.
- 6 -
Appeal2013-009848
Application 11/500,863
DECISION
The decision of the Examiner to reject claims 9--21, 30-42, 48-54,
and 62-71 is reversed.
REVERSED
- 7 -