Ex Parte Petrogiannis et al

Patent Trial and Appeal Board

Sep 19, 2012

10022559 (P.T.A.B. Sep. 19, 2012)

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.
10/022,559 12/14/2001 Tommy Petrogiannis 09680.0188USU1 3770
23552 7590 09/19/2012
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
POWERS, WILLIAM S
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
09/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMMY PETROGIANNIS, MICHAEL LAURIE,
FRANCOIS LEBLANC, and BENOIT GOUDREAULT-EMOND
____________

Appeal 2011-001753
Application 10/022,559
Technology Center 2400
____________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-12, 14, 17-36, 38, 41-59, and 63-68. (App. Br. 4.) We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to electronic document signing. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A web-based method for applying a legally enforceable
signature of a user on an electronic document located on a
server, the signing of said document occurring in a web
environment, said method comprising the steps of:

a) having the user access the web environment through a
web browser from a secure electronic system, said secure
system having verified the identity of the user;

b) having the user sign the electronic document in said
web environment, said signing comprising modules on the
server performing the substeps of:

i) presenting the user with a web-based
representation of the document in said web browser;

ii) presenting the user with legal information
related to said signing, and getting agreement from the
user of said legal information in said web browser; and

iii) upon agreement of the legal information from
the user, applying said signature of the user on said
document on the server;

c) on the server, generating a process log of the signing
of step b), said process log comprising a record of substeps b) i)
to b) iii) as executed and allowing the reconstruction of the
web-based representation of the document and of the legal
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information as presented to the user through said web browser,
and securely associating said process log with the document as
signed, said securely associating comprising the substeps of:

i) generating a secure process authentication code
uniquely representing said process log, said secure
process authentication code being a hash of said process
log; and

ii) embedding said process authentication code in
said document as signed, thereby securely associating
said process log and document; and

d) making the document as signed available to the user.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Houser

Ferguson

Romney

Smithies

Teare

Belanger

Davis
US 5,606,609

US 5,649,186

US 6,085,322

US 6,091,835

US 6,151,624

US 2001/0014839 A1

US 7,209,571 B2
Feb. 25, 1997

July 15, 1997

July 4, 2000

July 18, 2000

Nov. 21, 2000

Aug. 16, 2001
(filed Nov. 14, 1997)

Apr. 24, 2007
(filed Apr. 20, 2001)

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REJECTIONS
Claims 1, 2, 4-6, 8-12, 14, 17, 22-27, 29, 30, 32-36, 38, 41, 46-50, 52-
55, 57-59, 63, 67, and 68 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Belanger, Smithies, Davis, and Romney. (Ans. 3-16.)
Claims 3, 31, and 51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Belanger, Smithies, Davis, Romney, and Ferguson. (Ans.
16-17.)
Claims 7, 28, and 56 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Belanger, Smithies, Davis, Romney, and Teare. (Ans. 17-
18.)
Claims 18-21, 42-45, and 64-66 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Belanger, Smithies, Davis, Romney, and
Houser. (Ans. 18-20.)

ANALYSIS
Appellants contend that Smithies fails to disclose substeps b) i) – b)
iii) and step c) of representative claim 1 (App. Br. 13-16). Appellants
further contend that in claim 1 “the interaction with the user is recorded
indirectly,” and thus “allows the process log to provide evidence of the
signing ceremony without the need to interact directly with the user’s
computer system, such as through an interface program like the Java applet
of the web embodiment of Smithies” (App. Br. 16). We disagree.
Regarding substep b) i), Appellants argue:
In Smithies, the presentation of web pages to the affirming
party is one process performed by one system while the signing
ceremony is a different process performed by a different
system. The information relating to the form to sign is
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presented to the affirming party by the Web Server in Smithies,
see column 42, line 22. However, the interactions with the
affirming party that make up the signing ceremony are managed
by the transcript generator module. See column 42, lines 32-36
of Smithies.

(App. Br. 13). However, Smithies discloses:
i. Affirming Network Executed Documents, Transactions or
Events

In this embodiment the transcript generator module 10 is
resident upon and operated on a World Wide Web server and
the client application 12 for the affirming party is an electronic
commerce program which operates for a client on the Web site
of the server.

(Smithies, col. 41, l. 62-col. 42, l. 1). As shown here, Smithies’ transcript
generator module is located on the Web server. Further, claim 1 does
preclude different operations of the method from being performed by
different modules on the same server. Rather, step b) recites the “signing
comprising modules on the server,” and step c) recites “on the server,
generating a process log of the signing of step b),” without specifying
whether any of steps or substeps are performed by the same or different
modules. Thus, Appellants’ argument that Smithies’ transcript generator
module is a different system from the Web server (App. Br. 13) is not
persuasive.
Regarding substep b) ii), Appellants argue:
The Examiner relies on Smithies at column 34, lines 8-17, to
argue that the step is known in the prior art. Although this
passage refers to the presenting of information related to a legal
issue, legal accountability to an affirming party, the passage
does not teach or suggest that this should be done through a
web browser. Moreover, the passage does not teach or suggest
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that the user’s interaction with the web browser would be used
to obtain the agreement with legal information.

(App. Br. 13). We agree with the Examiner (Ans. 22-23) and find that one
of ordinary skill in the art, considering the teachings of Smithies as a whole,
would have understood that the step of presenting legal information in
Smithies’ system (see Smithies, col. 34, ll. 8-18) would have been included
in Smithies’ network embodiment titled “Affirming Network Executed
Documents” (see Smithies, col. 41, ll. 62-63). Smithies further suggests this
by disclosing that “to further show the wide range of uses the present
invention can have, additional descriptions of systems incorporating the
teachings of the present inventions are presented below for application in:
1) a networked system for electronic commerce (such as over the Internet)
. . . .” (Smithies, col. 41, ll. 53-58) (emphases added). Additionally,
Smithies’ discloses that, in the network embodiment,
[The] transcript generator module 10 will download a compact
interface program, such as a Java-based applet to the affirming
party’s browser. The interface program then assists with the
transcript generator module 10 to present displays and prompts
to the affirming party and to report his or her interaction with
the browser during the affirmation process. In such scenario,
the Web server transmits an HTML (Hypertext Mark-up
Language) form, together with the interface program to the
affirming party’s browser.

(Smithies, col. 42, ll. 9-17) (emphasis added). Thus, as Smithies’ method of
presenting displays and prompts to the affirming party in the network
embodiment is through the party’s browser, one of ordinary skill in the art
would have understood that the presentation of legal information would also
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be through the browser. Appellants’ argument that Smithies fails to disclose
substep b) ii) (App. Br. 13-14) is therefore unpersuasive.
Regarding substep b) iii), Appellants argue:
The Office Action cites column 34 line 61 – column 35 line 49
of Smithies to show that this step is known. However, the cited
passage does not discuss or mention in any way the actual
application of the signature on the document. Moreover, the
cited passage does not discuss or teach that the document
resides on a server.

(App. Br. 14). However, Smithies discloses:
The client application 12 is any application that functions to
create (or retrieve from archive storage) a record of a document,
transaction or statement, or executes processing to perform an
event, to be signed or affirmed. Such applications include
software, such as word processing programs . . . or spreadsheet
programs . . . which have been customized to permit affirming
parties to attach electronic signatures to and affirm the
documents they create. The client application 12 may also be
an application that enables affirming parties to execute
transactions across networks such as the Internet.

(Smithies, col. 12, ll. 4-16) (emphasis added). As cited here, Smithies
discloses using a client application 12 for attaching an electronic signature to
a document. As cited above regarding substep b) i), Smithies discloses that
the client application 12 resides on the Web server in the network
embodiment. We agree with the Examiner (see Ans. 4-5, 23-24) and find
that it would have been obvious to one of ordinary skill in the art,
considering Smithies as a whole and in combination with Belanger, for the
document to reside on the server with the client application that attaches an
electronic signature to the document. Appellants do not specifically address
the Examiner’s reliance on Belanger in combination with Smithies for
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disclosing substep b) iii) (see App. Br. 14). Appellants’ argument that
Smithies fails to disclose substep b) iii) is therefore unpersuasive.
Regarding step c), Appellants argue:
[C]lose scrutiny shows that column 42, lines 32-52 of Smithies
states that the transcript object stores all the interactions
between the affirming party in a small window generated by the
interface program invoked by the transcript generator module.
However, these interactions cannot include the web-based
representation of the document being affirmed as presented to
the user, since this document is never presented in the window
in question. The presenting of the document “the form” being
affirmed actually performed by the website embodying the
client application and not by the transcript generator module.
See Smithies, column 42, lines 22-30. The transcript generator
module cannot keep a record of the step of “presenting the user
with a web-based representation of the document in said web
browser” as the transcript generator module is not involved in
this step and does not possess the relevant information.

(App. Br. 15). This argument is not commensurate in scope with claim 1
because claim 1 does not recite any requirement for the signing step b) and
process log generating step c) to be performed in the same window.
Nevertheless, Smithies discloses: “In the exemplary embodiment, a time
stamp of each input of the affirming party, such as keystroke or mouse event
information, will be recorded in the transcript. Thus, a detailed record of the
affirming party’s interaction with the system, including any error correction,
will be recorded” (Smithies, col. 13, ll. 46-51). Further, as discussed above,
Smithies discloses that the transcript can record a Web-based affirmation
(see Smithies, col. 41, l. 39-col. 42, l. 8). Specifically, Smithies discloses:
The interface program then assists with the transcript generator
module 10 to present displays and prompts to the affirming
party and to report his or her interaction with the browser
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during the affirmation process. In such a scenario, the Web
server transmits an HTML (Hypertext Mark-up Language)
form, together with the interface program to the affirming
party’s browser.

(Smithies, col. 42, ll. 11-17). Based on this disclosure, one of ordinary skill
in the art would have understood that the transcript generator module’s
“detailed record of the affirming party’s interaction with the system” would
include the presentation of the HTML form to the affirming party in
Smithies’ network embodiment. Appellants’ argument that Smithies fails to
disclose step c) is therefore not persuasive.
Regarding Appellants’ argument that claim 1 records user interaction
indirectly, and thus does not require interacting directly with the user’s
computer (App. Br. 16), and Appellants’ other arguments asserting general
advantages of the present invention (see App. Br. 16-17), we agree with the
Examiner (Ans. 25-26) that representative claim 1 does not recite these
features. Rather, claim 1 recites “on the server, generating a process log of
the signing of step b), said process log comprising a record of substeps b) i)
to b) iii) as executed and allowing the reconstruction of the web-based
representation of the document and of the legal information as presented to
the user through said web browser.” Notably, there is no recitation of how
the process log is generated, particularly, whether there is only indirect
interaction with the user computer.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-12, 14, 17-36, 38, 41-59, and 63-68 not separately
argued.

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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-12, 14, 17-36, 38, 41-
59, and 63-68 under 35 U.S.C. § 103(a).

DECISION
For the above reasons, we affirm the rejections of claims 1-12, 14, 17-
36, 38, 41-59, and 63-68.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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