SYSTEMWARE, INC.

Patent Trials and Appeals Board

Apr 2, 2021

2019004777 (P.T.A.B. Apr. 2, 2021)

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.
13/864,983 04/17/2013 Frankie A. Basso ASYST.0138 7605
22858 7590 04/02/2021
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
SHIH, HAOSHIAN
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
eofficeaction@appcoll.com
patents@CCLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANKIE A. BASSO and ANDREA CHIAPPE
Appeal 2019-004777
Application 13/864,983
Technology Center 2100
Before CATHERINE SHIANG, JOYCE CRAIG, and SCOTT E. BAIN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 8–20. Claims 1–7 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Systemware,, Inc. Appeal Br. 3.
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Application 13/864,983

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BACKGROUND
The Claimed Invention
The invention relates to electronic document management, and
specifically, to a “device agnostic” system and method for “multi-user
interaction with electronic documents.” Spec. ¶ 5.
Claims 8 and 16 are independent. Claim 8 is illustrative of the
invention and the subject matter in dispute, and is reproduced below:
8. A system for providing device-agnostic collaborative
electronic document content interaction between each of a
plurality of users, each user having a communication device, said
system comprising:
an electronic document database comprising a plurality
of electronic documents, wherein each electronic document is
reviewable by at least one of the plurality of users and each
electronic document has a permission level, wherein each
electronic document is mapped via intelligent indexing to create
intelligent indexing maps;
a permissions database associating at least one
permission level for each of the plurality of users to comment
on and/or correct an electronic document;
a collaboration workspace displayable with each
electronic document of the electronic document database
accessible to a user, wherein the user can access the electronic
document if the permission level of the user equals or is greater
than the permission level of the electronic document;
one or more computing devices configured to:
using the intelligent indexing maps, retrieve at least one
electronic document as a document image file from the
electronic document database if the at least one permission
level of the user indicates that the user is allowed to retrieve the
at least one electronic document and if the at least one
permission level of the user equals or is greater than the
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permission level of the at least one electronic document to form
a document image;
present said documents image to the user through the
user's communication device in the collaboration workspace;
allow the user to select an area of said document image in
the collaboration workspace as a point of interest;
facilitate at least one interaction of the user with other
users over one or more points of interest within said document
image in the collaboration, wherein the at least one interaction
comprises a plurality of interaction messages containing text,
audio, or video information, wherein the at least one interaction
appears as a thumbnail within said document image;
associate the plurality of interaction messages with the
one or more points of interests;
update the document image if at least one interaction
messages changes the content of the electronic document to
include the at least one interaction message at the associated
points of interest in the collaboration workspace as the
thumbnail;
coordinate concurrent display, within the collaboration
workspace, of the at least one interaction message as the
thumbnail within said document image and as a list of
interaction messages, wherein the list of interaction messages is
displayed within the collaboration workspace separately from
said document image; and
store the interaction messages as document metadata
associated with said document image file.

Appeal Br. 16–17 (Claims App.).

References
The references relied upon by the Examiner are:
Appeal 2019-004777
Application 13/864,983

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Name Reference Date
Estrada et al.
(“Estrada”)
US 2003/0142126 A1 July 31, 2003
Fedoseyeva et al.
(“Fedoseyeva”)
US 2012/0210252 A1 Aug. 16, 2012
Eintracht et al.
(“Eintracht”)
US 6,687,878 B1 Feb. 3, 2004

The Rejections on Appeal
Claims 8–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Estrada, Fedoseyeva, and Eintracht. Final Act. 2–18.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments that Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). For the reasons discussed below, Appellant has not
persuaded us of error. We adopt as our own the findings and reasons set
forth in the rejections and in the Examiner’s Answer. We provide the
following for highlighting and emphasis.
Appellant argues the Examiner erred in finding the prior art teaches or
suggests “stor[ing] the interaction messages as document metadata
associated with said document image file,” as recited in independent claim 8.
Appeal Br. 6–7. Specifically, Appellant argues that two of the references
(Estrada and Eintracht) “do not contain the word metadata” and the third
reference (Fedoseyeva) fails to disclose “that interaction messages are stored
as document metadata associated with said document image file.” Appeal
Br. 6. Appellant further argues the Examiner erred in combining the
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references. Id. at 7–9; Reply Br. 3–4. We, however, are unpersuaded of
error.
As the Examiner finds, Fedoseyeva discloses using “metadata” to
“associate[e] stream locations, comments, tags, authorization, and other data
aspects to respective videos.” Ans. 3 (citing Fedoseyeva Fig. 5). Further, as
the Examiner finds, although Estrada does not use the label “metadata,”
Estrada discloses using “descriptive data of data, or attributes of data,”
including “user identification and associated document access controls,” all
of which one of ordinary skill in the art would have understood as metadata.
Ans. 4 (citing Estrada ¶¶ 183, 212, Fig. 11). Neither claim 8 nor Appellant’s
Specification limit “metadata” to exclude the type of data disclosed in
Estrada. Spec. ¶ 24; Ans. 3; In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (claim terms given their “their broadest
reasonable interpretation consistent with the specification”).
Similar to Appellant’s broad use of the term “metadata,” see supra,
Appellant’s Specification defines “interaction message” broadly as messages
“containing text, audio, or video information.” Spec. ¶ 11; In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d at 1364. As the Examiner finds, the references
teach the use of “interaction messages” in collaborative editing of a
document. Ans. 4. The Examiner finds, and we agree:
Estrada teaches in the field of collaboration spaces, wherein
users may edit and/or modify the same document or a plurality
of documents (Para 183), at selected points in the document
(Paras 214-215), and/or add text and graphics to a document
(Figure 23), and data notes (Abstract). Fedoseyeva teaches
collaboratively editing a video by marking annotations within a
video amongst a plurality of users (Para 182, Figure 5), and an
ordered listing of interaction messages by a plurality of users
for the video are shown in Figure 31. Eintracht teaches digital
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stick notes for a plurality of users to annotate a document
asynchronously with respect to each other (Abstract), wherein
the notes are indexed according to metadata for later retrieval in
association with the corresponding document (column 10, Lines
56-65).

Id.
Appellant’s arguments also do not persuade us of error because,
essentially, Appellant’s arguments focus on the references individually
rather than the combination cited by the Examiner. Appeal Br. 5–6; In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”); Id.
(each reference must be read “not in isolation, but for what it fairly teaches
in combination with the [cited] prior art as a whole.”).
Finally, we discern no error in the Examiner’s rationale in combining
the references. All three references (like Appellant’s claimed invention) are
directed to collaborative annotation or editing of content, and the Examiner
identifies specific suggestions to combine within the references themselves.
Final Act. 6–7 (citing Fedoseyeva ¶ 62, Eintracht 2:1–5). For example, the
Examiner finds it would have been obvious to one of ordinary skill to:
modify the points of interest within a document as disclosed by
Estrada to include interaction messages within the document
image and stored as document metadata associated with the
image file as taught by Fedoseyeva. One of ordinary skill in the
art would be motivated to do so to provide the ability to make
use of multiple observations of a task, as well as multiple
criteria to evaluate the observed task performance, resulting in
increased flexibility and improved ability to evaluate the
performance of the task.

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Ans. 6; Fedoseyeva ¶ 62. Appellant does not identify any error in this
finding. Similarly, the Examiner finds, and we agree, that Eintracht suggests
the combination of references “to provide the ability for multiparty
collaboration based on the asynchronous exchange of annotations over a
network without the requirement that all parties wishing to collaborate be
simultaneously logged on to a server.” Ans. 7.
Accordingly, we are unpersuaded of error regarding the Examiner’s
rejection of claim 8. Appellant’s arguments regarding the remaining claims
do not persuade us of error for the same reasons as discussed above (and in
the Examiner’s Answer). We, therefore, sustain the obviousness rejection of
claims 8–20.
CONCLUSION
For the foregoing reasons, we affirm the Examiner’s decision
rejecting claims 8–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8–20 103(a) Estrada,
Fedoseyeva,
Eintracht
8–20

AFFIRMED