Ex Parte Cath et al

Patent Trial and Appeal Board

Aug 31, 2016

12889920 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/889,920 09/24/2010
72058 7590 09/02/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
AdamCath
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.
58083/392689 (B 1249) 7271
EXAMINER
TITCOMB, WILLIAM D
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM CATH, R. DOUGLAS WINNIE,
BRUCE FRAZER, and MATTHEW CANNIZZARO
Appeal2014-009701
Application 12/889,920
Technology Center 2100
Before JEFFREY A. STEPHENS, CARLL. SILVERMAN, and
STACY B. MARGOLIES, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-24. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The real party in interest is identified as Adobe Systems Incorporated.
(App. Br. 2.)
Appeal2014-009701
Application 12/889,920
Claimed Subject Matter
The claimed invention generally relates to creating electronic content
using creation applications of limited capabilities. (Title.) Claim 1,
reproduced below, is illustrative:
1. A computer-implemented method comprising:
receiving, at an application executing on a device,
electronic content comprising items to be displayed and edited in
a What-You-See-Is-What-You-Get (WYSIWYG) interface of
the application, wherein the application has limited capabilities
for editing an item of the items of the electronic content, wherein
the application has limited capabilities for editing the item
because the item comprises a feature or attribute that the
application is not capable of editing, the feature or attribute
editable in a second application having different editing
capabilities than the application;
opening the electronic content for editing in the
application; and
indicating, in the application, that editing of the item is
restricted.
Rejections
Claims 1-8, 12-18, 20, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rothwein et al. 2 and Shenfield et al. 3 (Final
Act. 5-14. 4)
2 US 7,594,181 B2, issued Sept. 22, 2009.
3 US 7,895,566 B2, issued Feb. 22, 2011.
4 Claims 20-24 are listed in the summary of the Examiner's rejection of
claims 1-8 and 12-18 (Final Act. 5), but substantive rejections for claims 21
and 24 are included only with the rejection of claims 9-11 and 19.
2
Appeal2014-009701
Application 12/889,920
Claims 9--11, 19, 21, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Rothwein, Shenfield, and Gross et al. 5 (Final Act. 14--
17.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (App. Br. 6-16; Reply Br. 1-5). We concur with Appellants'
argument (App. Br. 14) that the Examiner has not sufficiently articulated the
reasons why one of ordinary skill in the art would have combined Rothwein
and Shenfield. 6
In rejecting claim 1, the Examiner finds "Rothwein does not explicitly
disclose that the editing of the item is restricted." (Final Act. 7.) The
Examiner finds Shenfield teaches that editing of the item is restricted by
teaching incoming messages from the system, including a message that the
user cannot change the selection. (Id.) The Examiner then concludes it
would have been obvious to use Shenfield's features with Rothwein's
invention "because it would enable the system to communicate through a
designated message or dialog box or similar concerning access and data
changes." (Id.)
Appellants argue restricted editing, which the Examiner finds is not
explicitly taught in Rothwein, "does not appear to have anything to do with
enabling communication" (App. Br. 14), which the Examiner finds is the
5 US 7,426,694 B2, issued Sept. 16, 2008.
6 Because the rejections of all pending claims rely on the Examiner's
combination of Rothwein and Shenfield, this issue is dispositive as to all
claims on appeal. Accordingly, we need not reach additional issues raised
by Appellants' arguments.
3
Appeal2014-009701
Application 12/889,920
reason one of skill in the art would look to the teachings of Shenfield. We
agree with Appellants that the Final Action has not provided a sufficient
rationale for combining the teachings of Rothwein and Shenfield. (Id.)
Although the Examiner's findings imply one of ordinary skill in the art
would have recognized the benefit of enabling communication to a user
regarding the ability to access and edit items, finding that a message or
dialog box would enable communication does not articulate the underlying
reason for doing so.
In the Answer, the Examiner emphasizes Shenfield's title and
purpose, which may indicate Shenfield is properly considered analogous art
to the claimed invention. (Ans. 24.) A finding that a reference is analogous
art, however, is not sufficient to render the claim obvious. Because the
Examiner does not sufficiently articulate a reason why one of ordinary skill
in the art would have combined the teachings of the references, we do not
sustain the rejection on this record.
In view of the foregoing, we do not sustain the rejection of
independent claims 1, 14, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Rothwein and Shenfield. For the same reasons, we do not
sustain the rejection of dependent claims 2-13, 15-17, 19, and 21-24.
DECISION
We reverse the Examiner's decision to reject claims 1-24.
REVERSED
4