Ex Parte Skidgel

Patent Trial and Appeal Board

Dec 21, 2016

13008151 (P.T.A.B. Dec. 21, 2016)

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.
13/008,151 01/18/2011 JOHN SKIDGEL 58083/412941 (M131C1) 8220
72058 7590 12/23/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
WIENER, ERIC A
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
ipefiling @ kilpatrickstockton .com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SKIDGEL1
Appeal 2016-000943
Application 13/008,151
Technology Center 2100
Before DEBRA K. STEPHENS, JOHN F. HORVATH, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 32—452, all pending claims of the application. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Adobe Systems, Inc.
See Appeal Brief 2.
2 Claims 1—31 have been cancelled. Claim 36 is marked as pending and
cancelled and so we have assumed the indication that the claim is cancelled
is in error. See App. Br. 16 (Claims App’x).
Appeal 2016-000943
Application 13/008,151
STATEMENT OF THE CASE
According to Appellant, the application relates to an application
having a graphical user interface that allows a user to reposition graphical
content of a first window to fit within a second window having a different
size. Spec. 13—15.3 A fold preview function of the application “may
allow a designer to instantaneously adjust and simultaneously preview
various fold indications of a page without requiring a separate viewing
window.” Spec. 15. Claims 32, 38, and 41 are independent. Claim 32 is
representative and is reproduced below:
32. A computer implemented method comprising:
displaying graphical content in a window in an application
development environment, the window displayed with a first graphical
indication annotating a first boundary corresponding to a first viewing
window size and a second graphical indication annotating a second
boundary corresponding to a second viewing window size, wherein the
first viewing window size is different from the second viewing window
size such that the first boundary encompasses a first portion of the
graphical content and the second boundary encompasses a second
portion of the graphical content; and
activating a fold preview, wherein activating the fold preview
comprises repositioning the graphical content of the window to fit
within a width of the first window size or a width of the second window
size, and wherein the first and second boundaries remain unchanged.
App. Br. 15 (Claims App’x).
3 Throughout this Opinion, we refer to: (1) Appellant’s Specification filed
Jan. 18, 2011 (Spec.); (2) the Final Office Action (Final Act.) mailed Oct.
21, 2014; (3) the Appeal Brief (Appeal Br.) filed Apr. 9, 2015; (4) the
Examiner’s Answer (Ans.) mailed Aug. 28, 2015; and (5) the Reply Brief
(Reply Br.) filed Oct. 27, 2015.
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Application 13/008,151
REFERENCES
The art relied upon by the Examiner in rejecting the claims on appeal:
Bolnick et al. (“Bolnick”) US 5,838,317 Nov. 17, 1998
Ilsar US 6,694,487 B1 Feb. 17,2004
Plut US 2007/0041045 Al Feb. 24,2005
REJECTIONS
Claims 32—34 and 36-45 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Plut and Bolnick. Final Act. 2—6.
Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Plut, Bolnick, and Ilsar. Final Act. 6—7.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellant. We have not considered other possible issues
that have not been raised by Appellant and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
1. Whether the Examiner errs in finding that the combination of Plut
and Bolnick teaches or suggests “displaying graphical content in a window
in an application development environment,” as recited in claim 32.
2. Whether the Examiner errs in finding that the combination of Plut
and Bolnick teaches or suggests “activating a fold preview, wherein
activating the fold preview comprises repositioning the graphical content of
the window to fit within a width of the first window size or a width of the
second window size, and wherein the first and second boundaries remain
unchanged,” as recited in claim 32.
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Application 13/008,151
3. Whether the Examiner errs in finding that the combination of Plut,
Bolnick, and Ilsar teaches or suggests “wherein said window comprises a
web page,” as recited in claim 35.
ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s arguments that the Examiner has erred. We disagree with
Appellant’s conclusions and we adopt as our own: (1) the findings and
reasons set forth by the Examiner in the Office Action from which this
appeal is taken (Final Act. 2—7) and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 7—
19). We concur with the conclusions reached by the Examiner, and we
highlight the following for emphasis and completeness.
The Examiner finds Plut suggests “displaying graphical content in a
window in an application development environment,” as recited in claim 32.
Final Act. 3 (citing Plut | 68).
Appellant argues Plut does not suggest an application development
environment because “[a] person of ordinary skill in the art would have
understood, and the Background section of Appellant’s application makes
clear, that an application development environment is a[n] authoring tool
that allow[s] a developer to create web pages, websites, interactive
applications, etc.” Appeal Br. 8 (citing Spec. 12).
Appellant, in essence, argues the Examiner’s interpretation of the term
“application development environment,” as recited in claim 32, is
unreasonably broad. Appellant, however, fails to establish the Examiner’s
interpretation is not the broadest reasonable interpretation, consistent with
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Appellant’s Specification. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Under a broadest reasonable interpretation, the
words of the claim must be given their plain meaning unless the plain
meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d
1371, 1372 (Fed. Cir. 2004). The plain meaning of a term is the ordinary
and customary meaning given to the term by those of ordinary skill in the art
at the time of the invention. In re Suitco Surface, Inc., 603 F.3d 1255, 1259-
60 (Fed. Cir. 2010). The presumption that a term is given its ordinary and
customary meaning may be rebutted by Appellant clearly setting forth a
different definition of the term in the specification. In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Here, we agree with the Examiner that “one of
ordinary skill in the art would have realized an ‘application development
environment’ is an application, itself’ (Ans. 8) that can provide a
development environment. Appellant fails to demonstrate that “application
development environment” has been explicitly defined in Appellant’s
Specification or described in a way that is inconsistent with the Examiner’s
interpretation; therefore, we determine the Examiner’s interpretation of the
term “application development environment” is not shown to be erroneous.
In light of this interpretation, we agree with the Examiner’s finding that the
claimed “application development environment,” given a reasonable
interpretation in light of the Specification, encompasses an application for
providing a development environment, as described in Plut, in addition to an
environment for development of applications, as Appellant asserts. Ans. 8—9
(citing Plut 168).
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As noted by Appellant, the Examiner cites to Plut’s maximum image
size 12 as suggesting the claimed limitation “a first graphical indication
annotating a first boundary corresponding to a first viewing window size.”
Appeal Br. 8—9 (citing Final Act. 3). Appellant argues
Plut’s “maximum image size 12” is therefore the maximum size
that the application program’s background could take within the
display. Unlike the claimed “first boundary,” which is
displayed within the recited window in the application
development environment, Pluf s “maximum image size” is not
and cannot be a boundary displayed within the application
program’s background itself. Rather, Pluf s “maximum image
size 12” is defined by the outer perimeter of the application
program’s background.
Appeal Br. 9.
The Examiner finds, and we agree, that the claimed term “‘graphical
indication’ is not explicitly defined by Appellant’s Specification or claims as
being limited to any sort of specific graphical indication.” Ans. 9.
Appellant, therefore, fails to establish “graphical indication” has been
explicitly defined or otherwise described, in Appellant’s Specification in a
way that is inconsistent with the Examiner’s interpretation and that the
Examiner’s interpretation is not the broadest reasonable interpretation
consistent with Appellant’s Specification. See In re Am. Acad, of Sci. Tech
Ctr., 367 at 1364.
Furthermore, we agree with the Examiner’s finding that:
[o]ne of ordinary skill in the art would have realized that a
“maximum image size,” as disclosed by Plut in at least [0038],
sufficiently corresponds to a maximum “viewing window size,”
regardless of whether the “maximum image size” is at least
partially determined by the maximum limits of the hardware.
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Ans. 9.
Accordingly, we are not persuaded the Examiner’s errs in finding that
Plut’s maximum screen size suggests “a first graphical indication annotating
a first boundary corresponding to a first viewing window size,” as recited in
claim 1.
The Examiner cites to reduced size perimeter 14 of Pluf s application
program’s background as suggesting the claimed limitation “second
graphical indication annotating a second boundary corresponding to a
second viewing window size.” Final Act. 3.
Appellant argues “this ‘perimeter 14 . . . acts as a border for the
background size and shape’ (Plut, [0034]) and is therefore not displayed
within the background.” Appeal Br. 9, emphasis added.
Appellant’s argument is not commensurate with the scope of the claim
because claim 32 does not require the “second graphical indication” to be
“displayed within the background.” Appeal Br. 15 (Claims App’x).
We, thus, find Appellant’s argument unpersuasive.
Appellant further argues Plut does not teach or suggest “first and
second graphical indications corresponding to first and second viewing
window sizes that are displayed with a window,” as claimed, because in Plut
“the application program’s background is either displayed in its ‘maximum
image size 12’ or in a reduced size specified by the user” (perimeter 14) and
therefore, “cannot be displayed at the same time.” Appeal. Br. 9—10.
We are not persuaded by Appellant’s argument. Rather, we agree
with the Examiner’s finding that:
The “visual information outside perimeter 14” that is converted
to “an off state, zero, or black” sufficiently serves as a “graphical
indication” by the fact that it [] graphically indicates a distinction
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between the boundary of the perimeter and the boundary of the
“visual information outside perimeter 14” that is converted to “an
off state, zero, or black.”
Ans. 12. Accordingly, we find Appellant’s argument unpersuasive.
Next, Appellant argues “the independent claims also require that ‘the
first viewing window size is different from the second viewing window size
such that the first boundary encompasses a first portion of the graphical
content and the second boundary encompasses a second portion of the
graphical content,’” whereas, in contrast, “Plut is concerned with resizing an
application program’s entire background, which means that the entire
contents of the background are also resized.” Appeal Br. 10.
Because we agree with the Examiner’s finding that claim 32 does not
require the first portion of the graphical content to be different from the
second portion of the graphical content (Ans. 12), we find Appellant’s
argument to be unpersuasive. As set forth by the Examiner, although the
claim requires the first and second window sizes to be different, it does not
require the first and second portions of displayed graphic content to be
different. Id. Consequently, we agree with the Examiner’s finding that
if the first portion of graphical content is the same portion of
graphical content as the second portion of graphical content, then
if the first portion of graphical content is encompassed within the
perimeter second viewing window size, then the second portion
of graphical content (that is the same as the first portion of
graphical content) will be encompassed within the maximum
first viewing window size.
Id. at 12—13.
Finally, Appellant argues the Examiner’s interpretation of the term
“fold preview” in claim 32 is unreasonably broad. Appeal Br. 10. Appellant
points to paragraph 5 of their Specification as support that the Examiner
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Application 13/008,151
should have instead, interpreted the term to mean “a visual indication that
may ‘allow a designer to instantaneously adjust and simultaneously preview
various fold indications of a page without requiring a separate viewing
window.’” Appeal Br. 10-11. This paragraph, however, does not explicitly
define the term “fold preview.” For example, paragraph 5 recites “[t]he fold
preview of the present invention may allow a designer to instantaneously
adjust and simultaneously preview various fold indications of a page without
requiring a separate viewing window.” (Spec. 1 5, emphasis added).
Appellant, therefore, fails to establish “fold preview” has been
explicitly defined in Appellant’s Specification or described in a way that is
inconsistent with the Examiner’s interpretation and that the Examiner’s
interpretation is not the broadest reasonable interpretation, consistent with
Appellant’s Specification. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d at
1364.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 32. We also sustain the Examiner’s rejections of independent
claims 38 and 41, which are argued with independent claim 32, for similar
reasons. Dependent claims 33, 34, 36, 37, 39, 40, and 42^45 are not argued
separately and fall with their respective independent claims.
Claim 35
The Examiner finds Ilsar teaches “wherein said window comprises a
web page,” as recited in dependent claim 35. Final Act. 6—7; Ans. 18—19.
Appellant argues Ilsar teaches away from the claimed feature,
“wherein the first and second boundaries remain unchanged,” because
“[according to Ilsar, page layout and zoom ratios are changed within the
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print preview screen by changing the size of the grid boundaries that are
initially displayed in the print preview screen.” Appeal Br. 13.
We disagree. Even if a prior art reference discloses a different
solution to a similar problem, it does not teach away from the claimed
subject matter unless the prior art reference also criticizes, discredits, or
otherwise discourages the solution claimed. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Appellant argues that Ilsar changes the size of the
grid boundaries rather than maintaining the boundaries unchanged. Appeal
Br. 13. Appellant does not proffer sufficient evidence or argument,
however, that Ilsar criticizes, discredits, or otherwise discourages the
claimed solution. Thus, even according to Appellant’s view of Ilsar, Ilsar
merely discloses a different solution to a similar problem. Teaching an
alternative method does not teach away from the use of a claimed method.
In re Dunn, 349 F.2d 433, 438 (CCPA 1965); see also Ex parte Shaping,
No. 2008-00394, 2008 WF 336222, at *2 (BPAI 2008) (“[Teaching a way
is not teaching away.”) (Citation omitted).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 35.
DECISION
We affirm the Examiner’s decision rejecting claims 32—45 under
35 U.S.C. § 103(a).
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)(iv).
AFFIRMED
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