Ex Parte Lesage

Patent Trial and Appeal Board

Jul 21, 2016

11849800 (P.T.A.B. Jul. 21, 2016)

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 ).
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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
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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?
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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
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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
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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
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