Ex Parte LesageDownload PDFPatent Trial and Appeal BoardJul 21, 201611849800 (P.T.A.B. Jul. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111849,800 0910412007 121363 7590 07/25/2016 Shook, Hardy & Bacon L.L.P. (Adobe Systems Incorporated) Intellectual Property Department 2555 Grand Blvd Kansas City, MO 64108 FIRST NAMED INVENTOR Daniel Lesage 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. B526/ADBS.208921 6335 EXAMINER HOLLAND, SHERYLL ART UNIT PAPER NUMBER 2161 NOTIFICATION DATE DELIVERY MODE 07/25/2016 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM kspringer@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL LESAGE Appeal2014-009426 Application 11/849 ,800 Technology Center 2100 Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and DAVID J. CUTITTA II, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. STATEMENT OF THE INVENTION According to Appellant, the claims are directed to a form template refactoring, i.e., updating a current set of data (Abstract; Spec. i-f 21 ). Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-009426 Application 11/849 ,800 1. A method comprising: receiving an alternative form component for a starting form component included in each of a set of form templates of a plurality of form templates; based on receiving a command to update the starting form component, performing a pattern matching across the plurality of form templates to identify the set of form templates in the plurality of form templates; and using one or more processors, refactoring each form template of the set of form templates as identified by the pattern matching, the refactoring including changing each form template of the set to reference the alternative form component instead of the starting form component. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sridhar Rivers-Moore et al. US 2003/0221162 Al US 2005/0183006 Al REJECTIONS Nov. 27, 2003 Aug. 18, 2005 Claims 6---21 stand rejected under 35 U.S.C. § 101 because the claims are directed to non-statutory subject matter (Final Act. 4--5). Claims 1-21 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Rivers-Moore and Sridhar (id. at 5-21 ). 2 Appeal2014-009426 Application 11/849 ,800 ISSUES 35 U.S.C. § 101: Claims 6--21 The issue presented by Appellant's arguments is: Issue 1: Has the Examiner erred in concluding the invention as recited is directed to non-statutory subject matter? ANALYSIS Independent claim 6 recites "[a] machine-readable medium" and independent claims 12 and 16 recite "a nonvolatile machine-readable medium." In response to the Examiner's rejection, Appellant argues the Examiner mischaracterizes claim 6 as reciting a computer readable medium when claim 6 actually recites a machine-readable medium (Br. 9). Appellant further argues the Examiner has ignored that "[t]he plain and ordinary meaning of nonvolatile does not include transitory signals, which are inherently volatile" (id. at 9-10). We are not persuaded by Appellant's arguments. With respect to claims 6-11, as set forth by the Examiner, Appellant's Specification describes "machine-readable medium" broadly (Spec. i-f 56; Ans. 20). Thus, taking a broad, but reasonable, interpretation of "machine-readable medium," in light of the Specification, we determine the term encompasses both transitory and non-transitory media. Indeed, Appellant's Specification does not expressly limit a "machine-readable medium" to non-transitory medium. With respect to claims 12-21, we are similarly unpersuaded. Appellant's Specification does not define explicitly the term "non-volatile 3 Appeal2014-009426 Application 11/849 ,800 machine-readable medium." Although Appellant's Specification provides examples of volatile and/or non-volatile media, we note the examples are open ended (see Spec. i-f 56 "e.g., ... etc.). Appellant argues the plain and ordinary meaning of nonvolatile does not include transitory signals as such a signal would be inherently volatile; however, the Appellant has not proffered sufficient evidence or arguments to persuade us of this. Thus, taking a broad, but reasonable interpretation in light of the Specification, we are not persuaded either the Specification or the claims limit the recited invention to non-transitory machine-readable medium. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential). Accordingly, we are not persuaded the invention as recited in claims 6-21 are directed to statutory subject matter. Therefore, we sustain the rejection of claims 6-21under35 U.S.C. § 101 as being directed to non- statutory subject matter. 35 U.S.C. § 103(a): Claims 1-21 Appellant asserts the invention as recited in claim 1 is not obvious over Rivers-Moore and Sridhar (App. Br. 11-18). The issue presented by the arguments is: Issue 2: Has the Examiner erred in finding the combination of Rivers-Moore and Sridhar teaches or suggests "receiving an alternative form component for a starting form component included in each of a set of form templates of a plurality of form templates" and "changing each form template of the set to reference the alternative form component instead of the starting form component," as recited in claim 1? 4 Appeal2014-009426 Application 11/849 ,800 ANALYSIS Appellant argues Rivers-Moore does not disclose or suggest multiple electronic-form templates 132 and thus, does not disclose components referenced in multiple electronic-form templates 132 (Br. 13). According to Appellant, the broadest reasonable interpretation of a form template with respect to Rivers-Moore, is the electronic form template 122 and the broadest reasonable interpretation of a form component with respect to Rivers-Moore, are components 302 et seq. (id.). Appellant contends the Examiner variously finds components 302 et seq. are the form templates and form components; field labeled "String" are "templates" and "template components" forming the "form template set" (id. at 13-14). Initially, as a matter of claim construction, we determine the following. Appellant has defined the term "form template" as "any file, data structure, or other electronic artifact specifying a collection of descriptions of user interface affordance that may be presented in conjunction with one another so as to elicit user input" (Spec. i-f 17). The term "form component" is not defined explicitly in Appellant's Specification; however, Appellant's Specification does disclose that a form component may be a template by providing examples of form components - "subform templates, form fragment templates, code fragment templates, fields, etc." (id. i-f 25). The terms "subform template" and "form fragment template" are both defined as "a part of a form template that represents a logical grouping of form elements" and the term "code fragment template" is defined as a part of a form template that includes code" (id. i-fi-1 18-20). The Examiner finds, and we agree, Rivers-Moore's hierarchy 108 representing the XML schema that defines the electronic form, teaches "a set 5 Appeal2014-009426 Application 11/849 ,800 of form templates" (Final Act. 5; Ans. 21-22). The Examiner finds Rivers- Moore' s components teach the recited "form templates" and we agree (id.). The Examiner finds Rivers-Moore teaches an existing template component "string5" may be changed from a starting form component to an alternative form component (Final Act. 5; Ans. 21-22). We also agree with the Examiner that Rivers-Moore teaches that when an existing component is altered, the template is altered to reflect that alteration (Ans. 21-22; Rivers- Moore i-fi-1 61, 86-90). The Examiner, however, has not set forth with specificity what element of Rivers-Moore teaches the recited "alternative form component" and "starting form component." Although we agree Rivers-Moore describes that if the designer chooses the text box data-entry field (a form template), the design application can provide multiple pop-up menus of options for the designer (Ans. 22; Rivers-Moore i196). In an example relied upon by the Examiner, the date picker data-entry field is selected to replace the text box (Ans. 22; Rivers-Moore i196). However, the Examiner has found these components of Rivers-Moore to teach the recited form templates. We do not agree, that based on the recitation of the claims, the form template and the recited components can both be taught by Rivers- Moore' s components. Although Appellant states in the Appeal Brief "[t]his is not to assert that form components cannot have properties of or be "templates," we nonetheless determine that Rivers-Moore's components may not be the recited alternative and starting form components as well as the form templates. It follows, Appellant has persuaded us the combination of Rivers- Moore and Sridhar fails to teach or suggest the disputed limitations as recited in independent claim 1 and commensurately recited in independent 6 Appeal2014-009426 Application 11/849 ,800 claims 6, 12, and 16. Dependent claims 2-5, 7-11, 13-15, and 17-21 stand with their respective independent claims. Accordingly, we are constrained to reverse the rejection of claims 1-21under35 U.S.C. § 103(a) for obviousness over Rivers-Moore and Sridhar. DECISION The Examiner's rejection of claims 6-21under35 U.S.C. § 101 as being directed to non-statutory matter is affirmed. The Examiner's rejection of claims 1-21under35 U.S.C. § 103(a) as being unpatentable over Rivers-Moore and Sridhar is reversed. AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation