Ex Parte Zukowski et al

Patent Trial and Appeal Board

Jun 29, 2016

11846109 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111846,109 08/28/2007 Deborra J. Zukowski
919 7590 07/01/2016
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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.
G-303-01 9837
EXAMINER
STORK, KYLER
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBORRA J. ZUKO\VSKL ERIC C. FRIEDRICH,
ARTHUR J. PARKOS) CHAO CHEN) JEAN-HIRAl\1 COFFY,
JOHN F. BRAUN, and RICHi\RD W. HEIDEN
Appeal2013-006394
Application 11/846, 109 1
Technology Center 2100
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
SA WERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-25 of U.S. Patent Application No. 11/846,109 ("the '109
application"). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify Pitney Bowes Inc. as the real party in interest. Br. 3.
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Application 11/846,109
STATEMENT OF THE CASE
Claims 1-25 are pending and stand rejected as follows:
Claims 1-11, 13, and 24 under 35 U.S.C. § 103(a) for obviousness
over Ferlitsch2 in view of Mansfield3;
Claims 12 and 14 under 35 U.S.C. § 103(a) for obviousness over
Ferlitsch and Mansfield in view of Washio4 ;
Claims 15-18, 20, and 23 under 35 U.S.C. § 103(a) for obviousness
over Ferlitsch and Mansfield in view of Matsumoto5;
Claims 19 and 21under35 U.S.C. § 103(a) for obviousness over
Ferlitsch, Mansfield, and Matsumoto in view of Biswas6;
Claim 20 under 35 U.S.C. § 103(a) for obviousness over Ferlitsch,
Mansfield, and Matsumoto in view of RM7;
Claim 22 under 35 U.S.C. § 103(a) for obviousness over Ferlitsch,
Mansfield, Matsumoto, and Biswas, in view of Tomkow8; and
2 Andrew Rodney Ferlitsch, U.S. Publication No. 2008/0163364 Al
(published July 3, 2008) ("Ferlitsch").
3 Phillip Andrew Mansfield and Michael Robert Levy, U.S. Publication No.
2008/0276168 Al (published Nov. 6, 2008) ("Mansfield").
4 Satoshi Washio, et al., U.S. Publication No. 2005/0181819 Al (published
Aug. 18, 2005) ("Washio").
5 Takashi Matsumoto, U.S. Patent No. 5,897,643 (issued Apr. 27, 1999)
("Matsumoto").
6 Kaushik P. Biswas, et al., U.S. Patent No. 7,227,872 B2 (issued June 5,
2007) ("Biswas").
7 "RM," http://compute.cnr.berkeley.edu/cgi-bin/man-cgi?ml (last visited
Feb. 16, 2011).
8 Terrence A. Tomkow, U.S. Publication No. 2004/0221014 (published Nov.
4, 2004) ("Tomkow").
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Application 11/846,109
Claim 25 under 35 U.S.C. § 103(a) for obviousness over Ferlitsch and
Mansfield in view of Wada9.
We choose independent claim 1 as representative. Claim 1 provides:
1. A computer implemented multimodal document
management system, comprising:
a context manager for managing multimodal documents
executing on a computer connected to a messaging system,
wherein each multimodal document includes at least one
physical media element associated with the multimodal
document and at least one virtual media element associated
with the multimodal document;
a virtual media content management system for
managing the at least one virtual media element, said virtual
media content management system coupled to said context
manager using the messaging system;
a physical media content management system for
managing the at least one physical media element, said physical
media content management system coupled to said context
manager using the messaging system; and,
said context manager operable to issue authorized
multimodal document management instructions to said virtual
media content management system using the messaging system
and to said physical media content management system,
wherein the at least one physical media element consists of a
document and the at least one virtual media element consists of
at least one of an audio element and a video element.
Br. 18.
9 Hiroyuki Wada, U.S. Publication No. 2007/0168870 Al (published July
19, 2007) ("Wada").
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LEGAL STANDARD
A claimed invention is unpatentable if the differences between it and
the prior art are "such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art." 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject
matter would have been obvious, the Board follows guidance in Graham v.
John Deere Co., 383 U.S. 1 (1966) andKSRint'l Co. v. Teleflex, Inc., 550
U.S. 398 (2007). The Supreme Court has cautioned that a claim that does
nothing more than rearrange old elements must be carefully scrutinized for
obviousness. KSR, 550 U.S. at 416.
DISCUSSION
The Claimed Invention
The claimed invention is directed to "systems and methods for
managing multimodal documents including the shredding of multimodal
documents through the deletion of virtual media and the destruction of
physical media." Spec. i-f 002. Although document management and
deletion systems existed in the prior art, the Specification explains that the
disclosed system "manages the removal of such documents from the
environment where appropriate with no or limited user intervention required
to locate and delete physical and electronic content related to the document."
Spec. i-f 0003.
The Specification describes "multimodal documents" as including "all
forms and types of information," such as "virtual media" (e.g., electronic
documents, e-mails, metadata, electronic videos, electronic audio, and
software) and "physical media" (e.g., printed documents, DVDs, videotapes,
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CDs, audiotapes, physical models, photographs, and software disks). Spec.
ii 0024.
As claimed, each multimodal document includes at least one virtual
media element and at least one physical media element. Br. 18 (claim 1 ).
The Specification provides as an example of a multimodal document an
electronic copy of an engineering drawing (virtual media element) and a
physical copy of that drawing (physical media element). Spec. if 0024.
With reference to Fig. 2 of the Specification, a multimodal document-
management system comprises a "context manager" 4 responsible for
managing the tracking and shredding of multimodal documents. Fig. 2; see
Spec. iii! 0032, 0038, and 0042. The context manager is coupled to a
"messaging system" 16, Fig. 2, and interacts with a "virtual media content
management system" 6 and a "physical media content management system"
8, Fig. 1, through the messaging system. See Spec. if 0030.
The context manager interacts with both types of content management
systems through the messaging system. Spec. if 0030. The context manager
can send instructions "to both identify and compile the content of
information files for multimodal documents, to issue shredding instructions
and to track the completion of the various shredding operations." Id. at
ii 0031.
The Claims and Prior Art Considered
Board rule 37 C.F.R. § 41.37 governs the briefing requirements with
respect to claims in ex parte appeals. That rule provides:
[T]he failure of appellant to separately argue claims
which appellant has grouped together shall constitute a waiver
of any argument that the Board must consider the patentability
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of any grouped claim separately. . . . A statement which merely
points out what a claim recites will not be considered an
argument for separate patentability of the claim.
37 C.F.R. § 41.37(c)(l)(iv). The Federal Circuit held in In re Lovin, 652
F.3d 1349, 1356 (Fed. Cir. 2011), that the Board may reasonably interpret
Rule 41.37 "to require applicants to articulate more substantive arguments if
they wish for individual claims to be treated separately."
Here, Appellants have grouped the claims into seven different groups
according to the Examiner's rejections as follows:
(1) Claims 1-11, 13, and 24 10 (Br. 9-12);
(2) Claims 12 and 14 (Br. 12-13);
(3) Claims 15-18, 20, and 23 (Br. 13-14);
(4) Claims 19 and 21 (Br. 14--15);
( 5) Claim 20 (Br. 15-16);
( 6) Claim 22 (Br. 16); and
(7) Claim 25 (Br. 16-17).
But Appellants make substantive arguments in accordance with Rule 41.37
and Lovin only for groups (1), (5), and (7). Thus, we will only address
representative claim 1, claim 20, and claim 25, as well as the prior-art
references Appellants argue in those sections, i.e., Ferlitsch, Mansfield,
"RM," and Biswas. In each remaining group, Appellants either merely
reiterate that the claims are patentable, see Br. 12-13 (group (2)); Br. 14--15
(group (4)); Br. 16-17 (group (7)), or merely recite a claim limitation and
assert that the prior art does not teach that limitation, see Br. 13-14 (group
(3)). Lovin specifically rejected these types of argument, calling "a mere
recitation of the claim elements and a naked assertion that the corresponding
10 Appellants erroneously include claim 25 in this group. See Br. 9.
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elements were not found in the prior art" insufficient under Rule 41.37. 652
F.3d at 1357. Thus, Appellants have waived any arguments based on
groups (2}-(4) and (6).
Representative Claim 1
We agree with, and adopt, the Examiner's fact-findings and
conclusion that the subject matter of claim 1 would have been obvious based
on a combination of Ferlitsch and Mansfield. Final Act. 2--4. 11
On appeal, the Board "reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon." Ex parte Frye, 94 USPQ2d 1072, 1075-76
(BP AI 2010) (Precedential). Appellants first argue that the prior-art
references "are not properly combined" because Mansfield is not analogous
art. Br. 10. 12 Prior art is analogous if (l) ''the art is from the same field of
endeavor, regardless of the problem addressed," or (2) '"if the reference is
not within the field of the inventor's endeavor, ... the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).
We agree with the Examiner that Mansfield is directed to the same
field of endeavor as the subject matter disclosed in the '109 application.
11 Office Action mailed June 27, 2012.
12 We note that Appellants state that "here, the cited references expressly
teach away from the combination urged by the examiner and thus the
combination is improper." Br. 10. But Appellants do not identify the
references that teach away from the claimed invention or explain how or
why they teach away. Thus, this argument is waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Ans. 3. The Specification refers to the paii.icular field of the invention as
"systems and methods for managing multimodal documents including the
shredding of multimodal documents through the deletion of virtual media
and the destluction of physical media." Spec. ,-r 002 (emphasis added). As
the Examiner pointed out, Mansfield is also directed to the deletion of virtual
media. Ans. 3 (citing rvfansfield ,-r 45). Speci fica11y, 1\tfansfield discloses
"delet[ing] a still image or video from memory." l\!1ansfield il 45. Thus,
1\tfansfield is analogous art because it discloses a means for achieving the
same function recited in the 'I 09 application: deleting a virtual element. See
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (stating that the "field of
endeavor" test for analogous art "requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention").
Appellants asse1i that l\!fansfield is not analogous art because it "is
directed to user interface control with a click wheel." Br. 10. But the user-
interface control of the system disclosed in the '109 application is merely
described as "an input system 2," and is not limited to any particular
interface. Spec. ,-r 0030. And in any event, 1\tfansfidd also describes other
input control devices 116, see Fig. l, such as a touchscreen, touchpad,
mouse, or other pointing device, and therefore is not solely limited to a click
wheel. rviansfield irir 21----22 & 33----34.
But even if Mansfield is not in the same field, it is reasonably
pertinent to the management of multimodal documents including audio or
video elements. A reference is "reasonably pertinent if ... it is one which,
because of the matter with which it deals, logically would have commended
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itself to an inventor's attention in considering his problem." Clay, 966 F.2d
at 659. Here, 1\1ansfield is reasonably pertinent because it deals with the
deletion of virtual media. Put differentlv. an ordinarilv-skilled artisan
.; ~ .;
seeking to delete virtual media would have been motivated to consider .___,
Mansfield, given that it discloses one of the same purposes disclosed in the
'109 application: to delete virtual media from a rnernory. See id. We further
note that the desire to delete virtual media from memory is not a problem
unique to a system for managing multimodal documents, but instead relates
to most, if not all, computer-based systems and devices. For these reasons,
Mansfield is also reasonably pertinent prior art. See, e.g., In re Paulsen, 30
F.3d 1475, 1481-82 (Fed. Cir. 1994) (affirming rejection of a laptop
computer hinge as obvious over hinged cabinets, piano lids, etc., because the
"problem is not unique to portable computers").
Next, Appellants assert that the Examiner provided "an improper
conclusory statement" about the motivation to combine Ferlitsch and
Mansfield. Br. 11----12. The Examiner reasoned that "[i]t would have been
obvious to one of ordinary skill in the art at the time of the applicant's
invention to have combined Mansfield with Ferlitsch, since it would have
aHowed a user to apply the shredding techniques of Ferlitsch to audio/video
data of rv1ansfie1d, thereby allowing a user to delete audio/video data from a
system." Final Act. 4. Appellants argue that the skilled artisan would not
have combined J\1ansfield with Ferlitsch because "a system of l'Viansfield
would allow files to be deleted in a way that is more proper for its IPOD
functionality.'' Br. 11. This argument is not persuasive because the
Examiner does not rely on l'V1ansfie1d to teach the deletion process but
instead relies on l'V1ansfield merely to teach that virtual elements may include
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video and audio data, and that these types of data may be deleted from
memorv. Ans. 4 .
.;
A preponderance of the evidence suppmis the Examiner's position.
Mansfield discloses several applications stored in memory 102, including a
music player application 144 and an imaging application 142, each
application having corresponding audio data and image data. rvfansfie1d
iril 28, 37; see also Fig. 1. As a person skilled in the art would understand,
both audio data and image data may be deleted from memory. To this end,
Mansfield specifically teaches software for memory management, id. at
~ 38, and teaches the deletion of virtual elements in the form of video
(including streaming video) and still images, id. at ii 45. For these reasons,
we agree with the Examiner that a skilled artisan would have combined
rvfansfie1d with Fer1itsch, giving "a user with the advantage of freeing
memory by removing virtual media, such as audio/video data, which is no
longer needed/wanted." Ans. 4. ,___
Appellants next argue that, even if the prior-art references are
combined, the combination lacks certain elements of claim 1. Br. 11-12.
First, Appellants argue that the references do not teach "said context
manager operable to issue authorized multimodal document managernent
instructions. Br. 11. \Ve disagree, and first note that Ferlitsch states that the
tracking server may "store ... authorized document/file manipulations--------
e.g., copy/replicate, delete, and move," thus signifying that the instn1ctions
to manipulate a document must be authorized. Ferlitsch ~ 54 (emphasis
added).
l\1oreover, as the Examiner explained throughout prosecution, the
tracking server perfonns various authentication steps "prior to aUowing a
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user to perform management of documents." Ans. 4. For example, the
tracking server may authorize the processing module or printing module of
the copier to perform "controlled hardcopy reproduction." Ferlitsch iril 33,
37, & Fig. 1; see also Final Act. 3-4. Similarly, with respect to softcopy
reproduction, the tracking server requires the receipt of a unique storage
identifier from the target storage medium (via the reproducing device),
because the reproducing device may only output the softcopy to an
authenticated storage medium. The tracking server dete1mines the
legitimacy of the storage identifier and "issue[s] an authorized
communication to the reproducing device that may then output the softcopy
to the identified storage medium.'' Ferlitsch iii! 41-42 & Fig. 2; see also
Final Act. 3-4; Ans. 4. In Figure 7, for example, the tracking server's
authentication process is illustrated as "authenticate 730." Ferlitsch iii! 61-
65 & Fig. 7; see also Ans. 4.
Next, Appellants assert that J\1ansfield fails to describe "a virtual
media element that is associated with a physical media element of g
multimodal document.'' Br. 12. But as explained above, the Examiner did
not rely on 1\rfansfield to teach this limitation because Ferlitsch teaches
rnultimodal documents relating to hardcopies and associated softcopies.
Ans. 4----5. Instead, the Examiner relied on rv1ansfie1d to teach that it would
have been obvious to an ordinarily-skilled aii.isan to have included video and
audio elements as the virtual "softcopies" of Ferlitsch. Ans. 5. Appellants
do not contest that Mansfield teaches video and audio files. See Br. 12.
Finally, Appellants assert that FerHtsch does not "describe or suggest
a multimodal document at all." Br. 12. We disagree. Again, the
Specification defines a muHirnodal document as consisting of, for example,
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an electronic copy of a document (virtual media element) and a physical
copy of that document (physical media element). Spec. i-f 0024. Ferlitsch
teaches hardcopies and associated softcopies. Ans. 4----5; see also Ferlitsch
if 32 (explaining that a printout of a softcopy is considered a hardcopy).
Thus, F erlitsch teaches "multi modal documents" as defined in the
Specification.
For these reasons, we reject Appellants' arguments that the
combination of references fails to teach the contested limitations of
representative claim 1.
Claim 20
The Examiner relied on the "RM" reference to teach the "rm" or
"remove directory entries" command. Final Off. Act. 15-16. Again, we
agree with, and adopt, the Examiner's fact-findings and conclusion that
claim 20 would have been obvious over a combination of Ferlitsch,
Mansfield, Matsumoto, and RM. Final Act. 16-17.
On appeal, Appellants assert that RM merely "describes ... deleting a
file from a file system command prompt, and such description does not meet
the limitation of removing each element from the list upon receiving
confirmation of the shred." Br. 16 (emphasis added). Appellants
misapprehend the Examiner's use of the RM reference. The Examiner relied
on RM to teach "disabling an element response trigger and removing each
element from the list ... where the element response trigger is triggered by a
failure to receive the response." As the Examiner explained, Ferlitsch
teaches sending a message to the requester that the shred request was
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successful. 13 Final Act. 16. Thus, the Examiner did not rely on RM to teach
the entirety of the limitation at issue, as Appellants argue. Ans. 7-8. In any
event, to the extent that Appellants also argue that RM does not describe
"removing each element from the list," RM teaches removing a listed file
with the rm command. See RM 1 ("The rm utility removes the directory
entry specified by eachfzle argument."). And, by default, the rm command
prompts a user before deleting a file. Id. ("This is a prompt for
confirmation. If the answer begins with y (for yes), the file is deleted,
otherwise the file remains."). Thus, we see no error in the Examiner's
reliance on RM.
Claim 22
Finally, we agree with, and adopt, the Examiner's fact-findings and
conclusion that claim 22 would have been obvious over a combination of
Ferlitsch, Mansfield, Matsumoto, Biswas, and Tomkow. Final Act. 17.
Appellants argue that claim 22 is not unpatentable because the Biswas
reference "is not analogous art dealing exclusively with managing data
traffic flows in networks." Br. 16. We note that Appellants did not raise
this argument with respect to the claims of group (4) (i.e., claims 19 and 21),
which were also rejected over Biswas in combination with other references.
See Br. 14--15. Nevertheless, we find that Biswas is analogous art for the
same reasons that Mansfield is analogous art-that is, Biswas also relates to
the deletion of virtual media. Ans. 8-9; see also Biswas (col. 8, 11. 40-52).
Other than attempting to narrowly define the field of endeavor, Appellants
13 We note that Appellants do not challenge this finding. See Br. 15-16.
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present no other argument explaining the irrelevance of Biswas. Thus, we
see no error in the Examiner's reliance on Biswas.
SUMMARY
We affirm the rejection of claims 1-25 under 35 U.S.C. § 103(a) on
appeal.
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).
AFFIRMED
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