Ex Parte Price et alDownload PDFPatent Trial and Appeal BoardOct 23, 201714021753 (P.T.A.B. Oct. 23, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/021,753 09/09/2013 Dana L. Price RSW920130121US1 1010 75949 7590 IBM CORPORATION C/O: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 10/25/2017 EXAMINER BLOOMQUIST, KEITH D ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 10/25/2017 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): patents @ fabianvancott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANA L. PRICE, CRAIG M. TOGNARINA, MICHAEL E. VINCE, and SCOTT ALLEN WILL Appeal 2017-003778 Application 14/021,753 Technology Center 2100 Before ERIC S. FRAHM, CATHERINE SHIANG, and NORMAN H. BEAMER, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—15, which are all the claims pending and rejected in application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2017-003778 Application 14/021,753 STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to transforming a website in order to place the website under dynamic web content management. See generally Spec. 1. Claims 1 and 9 are exemplary: 1. A computer program product for transforming a website for dynamic web content management, comprising: a tangible non-transitory computer readable storage medium, said computer readable storage medium comprising computer readable program code embodied therewith, said computer readable program code comprising program instructions that, when executed, causes a processor to: receive identification of elements of a page of a static website that define a presentation template; receive identification of web content items of the static website that are to be under dynamic web content management; and store said presentation template and said content items in a web content library. 9. A system for transforming a website for dynamic web content management, said system comprising: a presentation template producing engine to produce at least one presentation template based on a webpage for a static website using a conversion tool; an identification engine to identify aspects of said static website that are to be under dynamic web content management; an organizing engine to organize said aspects of said static website in preparation for storing said aspects; a storing engine to store said aspect of said static website with a specific identifier; and a population engine to populate a web content library with web content components, hyperlinks, presentation 2 Appeal 2017-003778 Application 14/021,753 templates, navigation nodes, content items, or combinations thereof. References and Rejections Claims 1—3, 5—7, 9, 10, and 12—15 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Doemling (US 2010/0082441 Al, pub. Apr. 1,2010). Claims 4, 8, and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Doemling. ANALYSIS1 Anticipation Claims 9, 10, and 12—15 We have reviewed the Examiner’s rejection in light of Appellants’ contentions and the evidence of record. We concur with Appellants’ contention that the Examiner erred in finding the cited portions of Doemling disclose “a presentation template producing engine to produce at least one presentation template based on a webpage for a static website using a conversion tool; an identification engine to identify aspects of said static website that are to be under dynamic web content management,” as recited in independent claim 9 (emphases added). See App. Br. 9-12; Reply Br. 3— 5. 1 Appellants raise additional arguments. Because the identified issues are dispositive of the appeal, we do not reach the additional arguments. 3 Appeal 2017-003778 Application 14/021,753 The Examiner initially cites Doemling’s paragraphs 46, 60, and 61 for disclosing the italicized claim limitations, but does not specifically map the recited “presentation template producing engine” and “identification engine.” See Final Act. 6. In response to Appellants’ arguments, the Examiner further cites Doemling’s Figures 9 and 11. See Ans. 9—10. While the cited Doemling’s Figures show two elements (Ans. 9-10), they do not show two engines (“presentation template producing engine” and “identification engine”), as required by claim 9. Absent further explanation from the Examiner, we do not see how the cited Doemling portions disclose the disputed claim limitations. Because the Examiner fails to provide sufficient evidence or explanation to support the anticipation rejection, we are constrained by the record to reverse the Examiner’s rejection of claim 9. We also reverse the Examiner’s anticipation rejection of corresponding dependent claims 10 and 12—15. Claims 1—3 and 5—7 We have reviewed the Examiner’s rejection in light of Appellants’ contentions and the evidence of record. We concur with Appellants’ contention that the Examiner erred in finding the cited portions of Doemling disclose “receive identification of elements of a page of a static website that define a presentation template,” as recited in independent claim 1 (emphasis added). See App. Br. 9-15; Reply Br. 3—9. In the Final Action, the Examiner does not specifically map the italicized limitation, but cites excerpts from Doemling’s different 4 Appeal 2017-003778 Application 14/021,753 embodiments for mapping the above limitation. See Final Act. 4. In the Answer, the Examiner does not specifically respond to Appellants’ arguments with respect to the italicized limitation. In an anticipation rejection, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection ... it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88. Because the Examiner improperly picks and choses teachings from different embodiments to support the anticipation rejection, we reverse the Examiner’s rejection of claim 1. We also reverse the Examiner’s anticipation rejection of corresponding dependent claims 2, 3, and 5—7. Obviousness The Examiner rejects dependent claims 4, 8, and 11 as being obvious over Doemling’s teachings. With respect to the disputed limitations discussed above, the Examiner relies on Doemling in the same manner discussed above in the context of claims 1 and 9, and does not provide any 5 Appeal 2017-003778 Application 14/021,753 additional findings that remedy the deficiencies of the underlying anticipation rejection. See Final Act. 9—10. Accordingly, we reverse the Examiner’s obviousness rejection of claims 4, 8, and 11. DECISION We reverse the Examiner’s decision rejecting claims 1—15. REVERSED 6 Copy with citationCopy as parenthetical citation