Adri Verlaan et al.

Patent Trials and Appeals Board

Sep 13, 2019

13291122 - (D) (P.T.A.B. Sep. 13, 2019)

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.
13/291,122 11/08/2011 Adri Verlaan 334095-US-NP 6211
69316 7590 09/13/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
JUNG, SEUNG WOON
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ADRI VERLAAN, JOHN RONALD BERKELEY,
ETHAN GUR-ESH, OGUZ MUT, KAARE KOEHLER HOEVIK, and
ALEXANDER LEE SMITH
____________________

Appeal 2018-005791
Application 13/291,122
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1–9 and 20. Appellant has cancelled claims 10–19. Appeal Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 Appellant indicates the real party in interest is Microsoft Technology
Licensing, LLC. Appeal Br. 2.
Appeal 2018-005791
Application 13/291,122

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Representative Claim
Representative claim 1 under appeal reads as follows (emphasis,
formatting, and bracketed material added):
1. A method comprising:
[A.] receiving a static markup language web template,
the static markup language web template including
[i.] one or more static markup language
instructions defining a preview of a
configurable control displayable within a static
markup language authoring system and
[ii.] one or more content management system
instructions defining the configurable control,
the one or more content management system
instructions being disabled within the static markup
language web template;
[B.] disabling the one or more static markup language
instructions defining the preview of the configurable
control;
[C.] enabling the one or more content management
system instructions defining the configurable control;
and
[D.] rendering at the web server the static markup
language web template using the one or more enabled
content management system instructions for the
configurable control.
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Application 13/291,122

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References2
Dulepet US 7,316,003 B1 Jan. 1, 2008
Roy US 8,015,487 B2 Sept. 6, 2011
Sweetland US 2009/0019386 A1 Jan. 15, 2009
Rejection on Appeal 3
The Examiner rejected claims 1–9 and 20 under 35 U.S.C. § 103 as
being unpatentable over the combination of Dulepet, Roy, and Sweetland.
All other rejections have been withdrawn. Ans. 3.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS4
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.

A.
The Examiner notes the initial step of the claim includes “[content
management system] instructions disabled within the web template.” Final
Act. 8. The Examiner finds that “Dulepet . . . discloses the editor add[s] a

2 All citations herein to this reference are by reference to the first named
inventor only.
3 For simplicity, we label the rejection under 35 U.S.C. § 103(a), as a
rejection under § 103.
4 The contentions discussed herein as to claim 1 are determinative as to this
rejection. Therefore, except for our ultimate decision, we do not discuss
claims 2–9 and 20 further herein.
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comment code before and after each dynamic code line in the web page
source code at column 8, lines 62-66.” Final Act. 9. Although the Examiner
also speaks to the later claimed function of “disabling the one or more static
markup language instructions defining the preview of the configurable
control” (Final Act. 10 (emphasis omitted)) being shown by Roy, that
disabling is separate from disabling the CMS instructions.
B.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
The Office does not appear to specifically address the disabled
content management system instructions in the web template.
The Office mentions that Dulepet teaches adding a comment
code before and after each dynamic code line, but it is not clear
if the Office is asserting that such disclosure teaches the claim
feature “the one or more content management system
instructions being disabled within the web template.” If the
Office is making such an assertion, then the Appellant
respectfully disagrees and submits that Dulepet’s discussion of
comment tags is not for disabling content management system
instructions but rather for flagging JSP elements for a controller.
See Dulepet at Col. 9, lines 57-61 (“Controller 330 may
determine an association between a dynamic source code
element and its corresponding dynamically generated page
content by identifying a pair of instrumentation comment
lines previously inserted into the web page source code by
pre-processor 340,” emphasis added). As such, the JSP code is
not “disabled” but rather flagged for further processing.
Appeal Br. 10.
C.
The Examiner responds:
[The r]ecited limitation of claim 1 requires received one or more
content management system instructions being disabled
(emphasis added). However, claim language does not contain
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how to disable the one or more content management system
instructions. As stated in the rejection, turning to the
corresponding specification at ¶ [0025], “the one or more CMS
instructions are disabled using a commenting feature of the static
markup language”, which is substantially [the] same to the
disclosure of Dulepet, recites “Preprocessor 340 marks or
instruments dynamic source code statements in the Web page
source code. This may be done by inserting a comment code line
before each dynamic code line, and a comment code line after
each dynamic code line.” (Dulepet, at column 8, lines 62-66).
Ans. 26.
D.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id.
Appellant’s Specification states that
In one implementation, the one or more CMS instructions are
disabled using a commenting feature of the static markup
language, although other disabling options may be employed
(e.g., a disabling property, tag, or flag that indicates to a template
authoring tool that the one or more CMS instructions are
disabled). When disabled, the one or more CMS instructions are
operatively hidden from the static markup language-based
template authoring tool or otherwise suppressed within the static
markup language-based template authoring tool in some way.
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Spec. 25 (emphasis added). We conclude that an artisan would understand
this to describe changing each line of the CMS instructions to be a comment
line using a commenting feature which thus deactivates the instruction.
The Examiner determines that disabling is shown by Dulepet, at
column 8, which states “[marking] may be done by inserting a comment
code line before each dynamic code line, and a comment code line after each
dynamic code line.”
We disagree with the Examiner. Dulepet inserts a comment code line
(i.e., a new code line) before each dynamic code line (i.e., not part of the
dynamic code line). We conclude that an artisan would understand that such
an insertion would mark (i.e., flag) the dynamic code line, but would not
deactivate the instruction. We conclude the Examiner’s analysis fails to
meet the required standard because the rejection does not adequately explain
the Examiner’s findings of fact. Particularly, we agree with Appellant that
Dulepet does not teach the claim 1 limitation of “content management
system instructions being disabled.” We conclude, consistent with
Appellant’s arguments, there is insufficient articulated reasoning to support
the Examiner’s finding that Dulepet teaches this limitation. Therefore, we
further conclude that there is insufficient articulated reasoning to support the
Examiner’s final conclusion that claim 1 would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention.

CONCLUSION
(1) Appellant has established that the Examiner erred in rejecting
claims 1–9 and 20 as being unpatentable under 35 U.S.C. § 103.
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(2) On this record, the Examiner has not shown claims 1–9 and 20 to
be unpatentable.
(3) We reverse the Examiner’s rejection of claims 1–9 and 20.

In summary:
Claims
Rejected
Basis Affirmed Reversed
1–9, 20 § 103 Dulepet, Roy,
Sweetland
1–9, 20

REVERSED