Ex Parte Perelman et alDownload PDFPatent Trial and Appeal BoardMay 27, 201613360364 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/360,364 01127/2012 Roberto Perelman 111003 7590 06/01/2016 Adobe I Finch & Maloney PLLC 50 Commercial Street Manchester, NH 03101 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. AD01.P464Cl 7305 EXAMINER DUONG,OANH ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): docketing@finchmaloney.com nmaloney@finchmaloney.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBER TO PERELMAN and SCOTT E. PETERSEN Appeal2014-009280 Application 13/360,364 Technology Center 2400 Before MAHSHID D. SAADAT, MELISSA A. HAAPALA, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-36, which constitute all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention relates to client-side modification of an electronic document, such as a Forms Data Format (PDF) document, to accommodate new data in the document, in a client-server environment. See 1 Appellants identify assignee Adobe Systems Incorporated as the real party in interest. App. Br. 1. Appeal2014-009280 Application 13/360,364 Spec. 1, 4. Claims 1, 7, 13, 19, 25, and 31 are independent. Exemplary claim 1 is reproduced below, with the disputed limitations in italics: 1. A method comprising: receiving, at a computer system, a request from a client to obtain data that is to be imported into an electronic document at the client, the electronic document having a predetermined format that defines an appearance of the electronic document that is independent of a device used to present the electronic document; producing, at the computer system, data corresponding to the client request; generating, by the computer system, instructions to modify the electronic document, the generated instructions specifYing one or more operations to modifY the electronic document's predetermined format at the client so as to accommodate importation of the produced data into the electronic document, the generated instructions to be performed at the client to effect the one or more operations; and transmitting the produced data and the generated instructions to the client. App. Br. 15 (emphasis added). THE REJECTIONS ON APPEAL Claims 1-21, 23-27, 29-33, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over D' Arlach et al. (US 6,026,433; Feb. 15, 2000) and Levine et al. (US 6,714,963 Bl; Mar. 30, 2004). Final Act. 4--8. 2 Appeal2014-009280 Application 13/360,364 Claims 22, 28, and 34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over D' Arlach, Levine, and Lee et al. (US 6,839,707 B2; Jan. 4, 2005). Final Act. 8.2 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). On this record, we are not persuaded the Examiner erred, and we adopt as our own the findings and reasons set forth in the rejections from which this appeal is taken and in the Examiner's Answer. We provide the following to highlight and address specific arguments. Claims 1, 7, and 13 Appellants argue the combination of D 'Arlach and Levine, relied upon by the Examiner in rejecting claims 1, 7, and 13, fails to teach two limitations common to these claims: (1) "instructions specifying one or more operations to modify the electronic document's predetermined format at the client," and (2) "so as to accommodate importation of the produced data into the electronic document." App. Br. 10-11. Although Appellants concede D' Arlach discloses a "predetermined format," id. at 10, Appellants assert D' Arlach lacks instructions specifying operations to "modifY this predetermined format in any context," including modifying it to 2 The Examiner has withdrawn a nonstatutory obviousness-type double patenting rejection of claims 1-36, in light of Appellants' terminal disclaimer. Ans. 6; App. Br. 5-6. 3 Appeal2014-009280 Application 13/360,364 "accommodate importation of the produced data." Id. (emphasis added). Levine does not remedy these shortcomings, according to Appellants, because Levine "is completely unconcerned with importation of 'produced data' into an electronic document." Id. at 12. The Examiner responds that the disputed limitations are found in D' Arlach's description and illustration of web page frame modification, using customizable web site templates. Ans. 7 (citing D 'Arlach Fig. 7, col. 7, 11. 57----67, col. 8, 11. 36-43); Final Act. 4. The Examiner "additionally" cites3 Levine's disclosure of "instructions" to "modify a page," Ans. 8-9, Levine col. 2, 11. 29-39, 41, and asserts it would have been obvious to one of ordinary skill to apply Levine's "instructions" to the teachings of D 'Arlach, thereby realizing the claimed invention. Ans. 5. We agree. We begin, as did the Examiner, with Figure 7 of D' Arlach, which is reproduced below. 3 The Examiner's Answer implies that D 'Arlach alone supports the obviousness rejection (i.e., one of ordinary skill would understand D' Arlach's disclosed "modifications" necessarily involve computer "instructions" and "operations"). Ans. 7-8. The Final Office Action, however, relied upon the combination of D' Arlach and Levine, so that is the basis for the rejection we address herein. 4 Appeal2014-009280 Application 13/360,364 FIGURE? 7fi5 Figure 7 is a web page as displayed on a user's screen (client), consisting of "top frame 702," "left-hand frame 704," and "right-hand frame 706." D'Arlach col. 7, 11. 56-62. Initially, according to the disclosure in D'Arlach, the "right-hand frame 706 is used to display the editing and site maintenance tools and forms [not shown in Figure 7]" (predetermined format) on the web page (the electronic document). Id. at col. 7, 11. 66-67; Ans. 7; Final Act. 4. When the user clicks "Corporate" template in the left-hand frame, the predetermined format that defines the appearance of the right-hand frame of the page is then modified to "display the Corporate styles" as illustrated in Figure 7 (modifying the electronic document's predetermined format). 4 D'Arlach col. 8, 11. 39--41; Ans. 7. The modification occurs on the user's 4 Appellants' Specification does not refer to "predetermined format," but defines "predetermined final format" as "a specific visual appearance for the electronic document when displayed or printed." Spec. i-f 8, 13, 16. As noted above, Appellants concede the web page illustrated in Figure 7 discloses a "predetermined format" of an electronic document. App. Br. 10. 5 Appeal2014-009280 Application 13/360,364 machine (at the client), see, e.g., D' Arlach col. 4, 11. 39--43, col. 7, 11. 45--46, 55-56, and incorporates the new corporate style thumbnail images among other data (accommodate importation of the produced data), Id. at Fig. 7. Ans. 7-8. Thus, we agree with the Examiner's finding in D'Arlach the claim element "modify the electronic document's predetermined format at the client so as to accommodate importation of produced data into the electronic document." According to the Examiner, the only disputed claim element omitted from the foregoing description in D' Arlach is "instructions specifying one or more operation[ s ]" for accomplishing the recited modification. Final Act. 4; see also fn. 3, supra. The Examiner finds this element in Levine. Ans. 8; Final Act. 5; Levine col. 4, 11. 33-39 ("modification of the page [operations on an electronic document] can be performed by the browser" in response to "descriptors [instructions] embedded in the Web site/page."). Based on a review ofD' Arlach and Levine, the record supports the Examiner's finding. See id. Appellants' argument that "Levine is completely unconcerned with the importation of 'produced data' into an electronic document," App. Br. 12, is unpersuasive because the Examiner does not rely upon Levine for the "importation of produced data" limitation. Appellants argue, alternatively, that the Examiner failed to articulate a rationale for combining D' Arlach and Levine. App. Br. 6. Appellants, however, provide no explanation or support for this argument beyond its mere assertion, which is insufficient to persuade us of error. See 37 C.F.R. § 41.37(c)(4). Moreover, the Examiner did articulate a rationale for the combination, namely, "to improve the accessibility of web sites and pages (i.e., Levine, abstract)." Final Act. 5. 6 Appeal2014-009280 Application 13/360,364 We, therefore, sustain the rejection of claims 1, 7, and 13 under 35 U.S.C. § 103(a) as unpatentable over D' Arlach and Levine. Claims 19, 25, and 31 Appellants group independent claims 19, 25, and 31 with claim 1, arguing the disputed limitations are the same, and are patentable for the same reasons. App. Br. 10.5 Because Appellants do not argue these claims separately, see 37 C.F.R. § 41.37(c)(4), we sustain the rejection under 35 U.S.C. § 103(a) as unpatentable over D' Arlach and Levine, for the reasons described above. Claims 2, 3, 8, 9, 14, and 15 Appellants argue the prior art lacks a "tag that indicates an order" as recited in dependent claim 2, and "[wherein] the at least one tag is a before tag, an after tag, or a document tag," as recited in dependent claim 3. App. Br. 13. Dependent claims 8, 9, 14, and 15 also include one or both of the foregoing limitations. Id. The Examiner finds the "tag" limitations in Levine, which describes tags indicating where (e.g., spatial order) in a document particular fields or data are to be displayed or imported. Ans. 8-9; Final Act. 5---6 (citing Levine col. 2, 11. 41--43, col. 4, 11. 54---64, col. 4, 11. 29- 38). Appellants contend the Examiner erred because the claim limitations require the tag indicate "a temporal order." Reply Br. 4. 5 Appellants argue this grouping despite claims 19, 25, and 31 omitting the disputed term "modify the electronic document's predetermined format" and replacing it with "modify a page description of the electronic document." App. Br. 15, 19 (emphasis added). 7 Appeal2014-009280 Application 13/360,364 We do not find support in the record for Appellants' argument. Claim 3 plainly recites that the tag may be a "document tag" in the alternative to the temporal "before tag" or "after tag." App. Br. 15. The claim itself further defines a document tag as indicating "that at least a portion of the generated instructions are to be inserted" into the document. Id.; see also Spec. 9-10. The "at least one tag" in claim 3, therefore, may simply indicate insertion of certain instructions in a document, not necessarily a temporal order. Moreover, claim 2 merely recites an "order," not a "temporal order." Appellants do not cite to any portion of the Specification as limiting these disputed elements, and we find no support for importing the temporal limitation Appellants assert. We, therefore, sustain the rejection of claims 2, 3, 8, 9, 14, and 15 under 35 U.S.C. § 103(a) as unpatentable over D'Arlach and Levine. The Remaining Claims The remaining claims, all of which are dependent, were not argued separately from their base claims 1, 7, 13, 19, 25, or 31. Because Appellants' contentions did not persuade us of error in the Examiner's rejection of the base claims, we sustain the 35 U.S.C. § 103(a) rejections of the remaining claims. DECISION We affirm the Examiner's decision to reject claims 1-36. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l)(iv) (2013). 8 Appeal2014-009280 Application 13/360,364 AFFIRMED 9 Copy with citationCopy as parenthetical citation