Ex Parte Freiman

Patent Trial and Appeal Board

Feb 6, 2014

12429289 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL J. FREIMAN
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Appeal 2011-010434
Application 12/429,289
Technology Center 2100
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Before DONALD E. ADAMS, ERICA A. FRANKLIN, and ULRIKE W.
JENKS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 3, 5, and 6
(App. Br. 4). Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The claims are directed to methods of employing an electronically
manipulative object that are usable in a plurality of different electronic
documents, the object comprising at least one electronically stored property
that includes an associated rule that affects the object or the electronic

1 The Real Party in Interest is Colorquick, L.L.C. (App. Br. 4.)
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document that the object is used in, the at least one property and associated
rule being elements of the object, the object being manipulated in a manner
that would violate the rule or in a manner that would not violate the rule, and
wherein the object and the at least one property and associated rule exists
outside of an electronic document that the object is used in, the rule
associated with the at least one property being enforced in the plurality of
different electronic documents. Independent claims 1 and 5 are
representative and are reproduced in the Claims Appendix of Appellant’s
Brief.
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Templeman2 and Lee.3
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Templeman, Lee, and Guttman.4,5
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Templeman’s “invention relates generally to systems and methods
for controlling and displaying information using computers” (Templeman,
col. 1, ll. 10-12).

2 Templeman, US 5,845,303, issued December 1, 1998.
3 Lee et al., US 2007/0078672 A1, published April 5, 2007.
4 Guttman et al., US 6,173,286 B1, January 9, 2001.
5 Examiner’s statement of the rejection included canceled claim 7 (see Ans.
7; Cf. App. Br. 19). Canceled claim 7 was not included in our deliberations.
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FF 2. Templeman’s
[S]ystem uses information about the input data to determine a
display format for the data . . .[, wherein,] [t]he system . . .
associates the input data with an appropriate display frame and
flows [or places] the data into [a virtual area defined as] the
frame. . .. The result is a system which allows the dynamic
presentation of information on any host system, from desktop
computers to personal digital assistants.
(Id. at col. 3, ll. 15-21 and 41-43.)
FF 3. Templeman’s “[d]isplay frames are organized into forms called
‘metaforms’ . . . [that] are layouts or forms which have defined formats,
including a number of frames into which specific type(s) of data may be
input” (id. at col. 3, ll. 30-31 and col. 5, ll. 14-16; see generally App. Br. 7-
8; Ans. 4-6; see also Templeman, col. 8, ll. 23-27 (“In defining a metaform,
the frames are first defined using a base grid. The base grid, or page grid,
provides a regular division of the overall display area. Frames are
established and defined to present a specific presentation of data, such as the
newsletter metaform”)).
FF 4. Templeman suggests that “[m]etaforms may be customized” and that
“[a] variety of metaforms may be established for use in . . . [Templeman’s]
invention” wherein “the specific metaform to be used with a particular set of
data may either be selected by the user or be determined by software”
(Templeman, col. 5, ll. 27-49; see generally App. Br. 7-8; Ans. 4-7; see also
Templeman, col. 11, ll. 53-66; Ans. 6-7).
FF 5. Examiner finds that Templeman fails to suggest “importing a copy of
[a metaform] into an electronic document from outside of the electronic
document” and relies on Lee to suggest that it was known in the art that
copies of an object (e.g., template), stored in a database outside of an
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electronic document, can be imported into an electronic document (Ans. 7,
see generally Ans. 4-7).
FF 6. Examiner relies on Lee to suggest that it was known in the art that
copies of an object (e.g., template), stored in a database outside of an
electronic document, can be imported into an electronic document (id. at 7
and 14 (“the templates imported are from a database (stored on a server);
therefore, outside of the blank document); see generally Lee, Abstract; App.
Br. 10).
FF 7. Examiner finds that the combination of Templeman and Lee makes
obvious the subject matter of Appellant’s claim 5 with the exception of
suggesting that an indication of a violation is displayed “if the object is
manipulated in a manner that would violate the rule” associated with at least
one property of the object (Ans. 7-8).
FF 8. Examiner relies on Guttman to suggest the placement of “items . . .
onto a layout wherein a conflict check occurs to determine if there is any
mismatch in attributes and requirements of the item” wherein an error
indicator, e.g., stop sign, is displayed “overlaying the item . . . whose
attribute has been violated” (id. at 8).
ANALYSIS
Based on the combination of Templeman and Lee, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to modify “Templeman with Lee . . . since it would
have provided the benefit of a more desirable method of enabling users to
create customized documents” (Ans. 7). Stated differently, based on the
combination of Templeman and Lee it would have been prima facie obvious
to a person of ordinary skill in this art to store metaforms outside of the
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electronic document to be retrieved, as needed, by Templeman’s
applications software or the user and placed into an electronic document.
We are not persuaded.
Appellant’s independent claims 1 and 5 require the import of an
object, that exists outside of an electronic document, into an electronic
document (see Appellant’s Claims 1 and 5). As Examiner recognizes,
Templeman fails to suggest that metaforms may be placed into an electronic
document (FF 5). Instead, Examiner relies on Lee to suggest that those of
ordinary skill in this art would have recognized that, at the time of
Appellant’s claimed invention, templates, existing outside of an electronic
document, could be inserted into an electronic document (FF 6; Ans. 14 (Lee
“discloses the ability to import a corresponding template (a form usable
object) into a blank document”)).
Therefore, the dispositive issue on this record is whether some nexus
exists between Templeman’s “metaforms” and Lee’s “templates” (i.e.
objects) to support a conclusion that, at the time of Appellant’s claimed
invention, a person of ordinary skill in this art would have recognized that
Templeman’s “metaforms” can be treated like Lee’s “templates”.
Examiner’s rationale is instructive in resolving this issue. According to
Examiner:
1) “Templeman disclose[s] the use of a metaform (a form of template
since it’s basically a blank document that was customized with
added content) [that] includes properties with associated rules . . .
to create customized document (Ans. 21 (emphasis added)).
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2) Lee “discloses the use of creating customizable documents by
incorporating existing templates into blank documents” (id.
(emphasis added)).
Stated differently, Templeman suggests a metaform that defines the
properties for a particular electronic document, while Lee suggests templates
(i.e. objects) that are incorporated into an electronic document, e.g., an
electronic document defined by the properties set forth in Templeman’s
metaform (see FF 1-6).
Examiner’s rational supports a conclusion that Templeman and Lee
are related in the sense that Lee’s template, or object, may be placed into, or
otherwise operate in, an electronic document defined by Templeman’s
metaform. Examiner fails, however, to establish an evidentiary basis on this
record to support a conclusion that Templeman’s metaform, which defines
the properties of an electronic document, could be placed, like Lee’s
template, into an existing electronic document from outside of the existing
electronic document as required by Appellant’s independent claims 1 and 5.
As Examiner recognizes, Templeman fails to suggest “importing a copy of
[a metaform] into an electronic document from outside of the electronic
document,” but instead defines the electronic document itself (FF 5;
Ans. 21).
In sum, Examiner failed to establish an evidentiary basis on this
record to support a conclusion that the combination of Templeman and Lee
suggest Appellant’s claimed invention. Examiner’s reliance on Guttman to
suggest the visual display of an error message “if the object is manipulated
in a manner that would violate the rule” associated with at least one property
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of the object, fails to make up for the foregoing deficiency in the
combination of Templeman and Lee (see FF 7-8).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Templeman and Lee is reversed.
The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Templeman, Lee, and Guttman is
reversed.

REVERSED

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