Ex Parte Plesnicher

Patent Trial and Appeal Board

Feb 25, 2019

13691620 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/691,620 11/30/2012
72058 7590 02/27/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Nathan Plesnicher
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.
58083-843994 (2472US01) 9551
EXAMINER
NGUYEN, CHAU T
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN PLESNICHER
Appeal2018-002030
Application 13/691,620
Technology Center 2100
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and
SCOTT B. HOWARD, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-002030
Application 13/691,620
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10 and 13-22. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The claims are directed to a methods and systems for creating custom
digital publications. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
providing a user interface at an application builder, the
application builder being executed by a processor, the user
interface displaying a digital publication application shell and an
editing canvas, wherein:
the application builder produces a digital publication
application based on the digital publication application shell, the
digital publication application shell specifies standard
functionality or appearance features for the digital publication
application, the digital publication application shell includes an
application programming interface (API) that exposes functions
for custom features that can be added or modified, and
the editing canvas includes user interface elements for
adding or modifying the custom features via the API of the
digital publication application shell;
receiving selections via the user interface elements
specifying one or more custom features for inclusion or
modification in the digital publication application shell, the one
or more custom features corresponding to custom feature code
comprising one or more function calls that reference the
functions exposed by the API;
1 Appellant indicates that Adobe Systems Incorporated is the real party in
interest. (App. Br. 1.)
2
Appeal2018-002030
Application 13/691,620
producing the digital publication application based at least
in part on the digital publication application shell and the custom
feature code by embedding the custom feature code within code
from the digital publication application shell, wherein the digital
publication application comprises at least some of the standard
functionality or appearance features specified by the digital
publication application shell and the one or more custom features
specified by the custom feature code.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Reynar et al.
Hudson et al.
US 7,356,537 B2
US 2013/0124980 Al
REJECTION
The Examiner made the following rejections:
Apr. 8, 2008
May 16, 2013
Claims 1-10 and 13-22 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Reynar in view of Hudson.
ANALYSIS
With respect to independent claims 1, 17, and 20, Appellant provides
similar arguments for each of the claims because they contain similar claim
language. (App. Br. 4). We select independent claim 1 as the illustrative
claim and will address Appellant's arguments thereto.
Appellant contends that each of the independent claims "require
producing a publication application based on (i) a shell including an API and
(ii) custom feature code that references functions exposed by the shell's
APL" (App. Br. 4--8; Reply Br. 2). Appellant contends that Reynar's
3
Appeal2018-002030
Application 13/691,620
"smart document" cannot be the shell and also the publication application
produced from the shell, the cited Reynar disclosures fail to teach these
claim features. Appellant further contends Hudson is not cited as curing
Reynar's deficiency. (App. Br. 6). Appellant further argues that the
Examiner has relied upon the Hudson reference for the combination of the
custom code, but Hudson is relied upon with regards to teaching a "file"
rather than an "application." (App. Br. 6).
The Examiner finds that the Reynar reference teaches a digital
publication application in columns 3--4 and 9--10 referring to the templates
to create a document or smart document. (Ans. 23-24). Although we agree
with the Examiner that the Reynar reference teaches creating a document or
smart document, the document is not an "application" as required by the
language of independent claim 1. Nor has the Examiner identified how
either the Hudson or Reynar references teach or suggest an "application" as
required by the language of independent claim 1.
In response to Appellant's arguments that the "references lack a
publication application produced from a shell and custom feature code,
where the publication application includes custom features specified by the
custom feature code," the Examiner relies upon the same teachings in
columns 3--4 and 9--10 of Reynar. (Ans. 24--25, emphasis omitted).
Additionally and alternatively, the Examiner relies upon paragraphs 133-
134 of the Hudson reference which discloses generating a template ( digital
publication application shell) from the current layout of the digital
publication ( digital publication application) for later use or convert the
digital publication from the current layout to a different, previously saved
template layout (paragraph [0134]). (Ans. 25-26). (See also Hudson ,r ,r
138, 145, 232, 235, 250).
4
Appeal2018-002030
Application 13/691,620
Appellant further contends that the Examiner has failed to establish a
prima facie case of obviousness. (App. Br. 10). Appellant further argues
that the Examiner's rationale for combining the disclosures fail to establish
the obviousness of the claims, and that the Examiner has relied upon
impermissible hindsight reconstruction. (App. Br. 11-13).
The Examiner maintains that some suggestion or motivation for the
combination was provided and that the Examiner has only relied upon
permissible hindsight. (Ans. 28-30).
While we agree with the Examiner that a suggestion or motivation has
been provided for the combination, we cannot agree with the Examiner that
the combination shows all the elements of the claimed invention in the
proffered combination, as discussed above. As a result, we cannot sustain
the Examiner's obviousness rejection of illustrative independent claim 1 and
independent claims of 17 and 20 and dependent claims 2-10, 13-16, 18, 19,
and 21-22 similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 1-10 and 13-22 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-10 and 13-22.
REVERSED
5