Robin James. Adams

Patent Trials and Appeals Board

Dec 19, 2019

14337456 - (D) (P.T.A.B. Dec. 19, 2019)

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.
14/337,456 07/22/2014 Robin James Adams 4275US01 1726
108982 7590 12/19/2019
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
CAMPBELL, JR., WARREN
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN JAMES ADAMS
Appeal 2019-000111
Application 14/337,456
Technology Center 2100
Before DEBRA K. STEPHENS, JASON V. MORGAN, and
GREGG I. ANDERSON, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Adobe Inc., appeals from
the Examiner’s decision to reject claims 1–7, 9, 12–15, 17–22, 24, and 25
(Final Act. 1). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Adobe
Systems, Inc. (Appeal Br. 2).
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Application 14/337,456

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CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to an appending new
content to open content. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-implemented method, comprising:
displaying, in a window, content having one or more
hyperlinks associated with additional content;
receiving a first user input corresponding to a selection of
a hyperlink embedded in the content that is displayed in the
window;
responsive to receiving the first user input corresponding
to the selection of the hyperlink embedded in the content that is
displayed in the window, adding the additional content
associated with the selected hyperlink to the displayed content in
the window without automatically navigating to the additional
content, the content and the additional content being displayable
together as a single content chain;
generating a list of items including a first item
corresponding to the content in the single content chain and a
second item corresponding to the additional content in the single
content chain; and
responsive to receiving a second user input, modifying the
single content chain and the list of items, the second user input
corresponding to a selection to remove at least one of the content
or the additional content in the single content chain, the
modifying including removing the first item or the second item
from the list of items based on the second user input.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rowe US 8,156,428 B1 Apr. 10, 2012
Goodger US 8,762,879 B1 June 24, 2014
Jang US 2010/0093325 A1 Apr. 15, 2010
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Application 14/337,456

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REJECTIONS
Claims 1–4, 6, 7, 9, 12–15, 18–20, 22, and 25 are rejected under 35
U.S.C. § 103 as being unpatentable over Rowe and Jang (Final Act. 2–24);
and
Claims 5, 17, 21, and 24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Rowe, Jang, and Goodger (id. at 24–30).

OPINION
35 U.S.C. § 103(a): Claims 1–4, 6, 7, 9, 12–15, 18–20, 22, and 25
Appellant contends their invention as recited in claims 1–4, 6, 7, 9,
12–15, 18–20, 22, and 25, is not obvious over Rowe and Jang (see Appeal
Br.).2 In particular, Appellant argues independent claims 1, 7, and 14 (id. at
1–16). With respect to claim 1, Appellant argues:
(i) the Examiner has not shown the combination of Rowe and Jang
teaches:
responsive to receiving a second user input, modifying the single
content chain and the list of items, the second user input
corresponding to a selection to remove at least one of the content
or the additional content in the single content chain, the
modifying including removing the first item or the second item
from the list of items based on the second user input,
as recited in claim 1 (Appeal Br. 6–9) and

2 Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant did not make in the Briefs have not
been considered and are deemed to be waived (see 37 C.F.R.
§ 41.37(c)(1)(iv)).
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Application 14/337,456

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(ii) the Examiner “impermissibl[y relied] on Appellant’s disclosure to
interpret a feature not shown by a cited reference as a basis to substantiate a
rejection” (id. at 9–10).
(i) “responsive to receiving”
The Examiner relies on Jang to teach this limitation, and in particular,
Jang paragraphs 98 and 100 (Final Act. 4–5):
In the meantime, if a plurality of web pages are merged
into a single web page, a plurality of thumbnail images
respectively corresponding to the web pages may be displayed
on the display module 151. Then, if one of the thumbnail images
is chosen, the controller 180 may display the web page
corresponding to the chosen thumbnail image on the entire
display module 151. In addition, if the thumbnail images are
rearranged, the controller 180 may rearrange the web pages
included in the single web page accordingly.
. . . .
If the user touches one of the group of thumbnail images
710, as indicated by reference numeral 720, and then drags the
touched thumbnail image 710 into the arrangement zone 750, as
indicated by reference numeral 730, the dragged thumbnail
image 710 may be displayed in the arrangement zone 750. In
this manner, a number of thumbnail images 710 may be
displayed and arranged in the arrangement zone 750. Thereafter,
if the user chooses to merge the web pages respectively
corresponding to the thumbnail images 710 in the arrangement
zone 750, a web page obtained by merging the corresponding
web pages may be displayed
(Jang ¶¶ 98, 100). The Examiner further determines Jang teaches
“rearrangement of web pages and their thumbnails within an arrangement
zone” (Final Act. 32). According to the Examiner, “[t]o include web pages
in the chain[,] thumbnails are placed in the arrangement zone from the list of
thumbnails. To remove web pages from the chain[, an ordinarily skilled
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artisan would have found it obvious to] remove the web page thumbnail
from the arrangement zone” (id.).
Appellant contends the Examiner “misapplied Jang” and specifically,
“Jang only describes that a user selected thumbnail can be rearranged and
the merged web pages are rearranged according to the rearrangement of the
list of thumbnails” but does not explicitly describe “rearranging the list of
thumbnail images includ[ing] removing and/or closing a web page” (Appeal
Br. 8–9; Reply Br. 5). Thus, Appellant asserts Jang fails to teach the
disputed limitation (id.).
The Examiner responds “[r]earranging thumbnails to rearrange the
merged webpages [ ] suggest[s] removing webpages because there are
arrangements that would include some but not all of the original
arrangement of webpages” (Ans. 33).
We agree with the Examiner’s findings. As noted by the Examiner,
the question “is not merely what the references expressly teach but what
they would have suggested to one of ordinary skill in the art at the time the
invention was made” (Ans. 33 (quoting Merck & Co., Inc. v. Biocraft
Laboratories, Inc. 874 F.2d 804 (Fed. Cir. 1989))). A skilled artisan is “a
person of ordinary creativity, not an automaton” (see KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007)). Here, we determine that Jang’s
teaching of rearranging thumbnails to rearrange merged webpages teaches or
at least suggests removing webpages. Jang teaches that “thumbnail images”
may be “chosen from the group of thumbnail images 710 are arranged may
be provided below the group of thumbnail images 710” (Jang ¶ 99
(emphasis added)). A user command that involves a choice would suggest
to an ordinarily skilled artisan, that the choice may include deleting the
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thumbnail from the arrangement. Indeed, we determine an ordinarily skilled
artisan, looking at Jang’s teaching of rearranging in conjunction with the
disclosure in Figure 10, would understand “rearranging” to include
removing webpages.3
(ii) impermissibly relied on Appellant’s disclosure
Appellant next argues the Examiner “relies on the disclosure of the
subject application to interpret a plausible feature of Jang as a basis to
substantiate a rejection of the subject application” (Appeal Br. 10).

3 Appellant argues the Examiner’s quote of case law and further explanation
(Ans. 33) introduces a new ground of rejection. Our review of the record
indicates that Appellant did not file a petition under 37 C.F.R. § 1.181(a)
within two months from the mailing of the Examiner’s Answer requesting
that a ground of rejection set forth in the Answer be designated as a new
ground of rejection:
If appellant believes that an examiner’s answer contains a
new ground of rejection not identified as such, appellant may file
a petition under 37 CFR 1.181(a) within two months from the
mailing of the examiner’s answer requesting that a ground of
rejection set forth in the answer be designated as a new ground
of rejection. Any such petition must set forth a detailed
explanation as to why the ground of rejection set forth in the
answer constitutes a new ground of rejection. Any allegation that
an examiner’s answer contains a new ground of rejection not
identified as such is waived if not timely raised (i.e., by filing the
petition within two months of the answer) by way of a petition
under 37 CFR 1.181(a).
MPEP § 1207.03(IV)(emphasis added).
Therefore, Appellant has waived the allegation that the Examiner’s Answer
contains a new ground of rejection because Appellant did not file a petition
under 37 C.F.R. § 1.181(a) within two months from the mailing of the
Examiner’s Answer.
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According to Appellant, “there is no teaching whatsoever in Jang to ‘remove
a web page from the chain’” and thus, the Examiner is “[m]erely concluding,
without sufficient support, that a feature of a reference represents that which
is positively recited by Appellant” which “is not a proper basis to
substantiate a rejection” (id.). For the reasons set forth above, we are not
persuaded an ordinarily skilled artisan upon reading Jang, would understand
“rearranging” to include “removing the first item or the second item from
the list of items,” as recited in claim 1.
For the first time in the Reply Brief, Appellant argues the Examiner
has failed to show “it would have been obvious to combine teachings in
[Jang and Rowe] together to arrive at the claimed invention” (Reply Br. 6).
Appellant had an opportunity to raise the arguments in the Appeal Brief, and
has provided this record with no such showing of good cause for not doing
so. In the absence of a showing of good cause by Appellant, the new
arguments by Appellant are thus deemed waived (see 37 C.F.R.
§ 41.41(b)(2); see also Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469
F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its
opening brief . . . is waived.”) (Internal citations and quotation marks
omitted)).
(iii) Conclusion
Accordingly, we are not persuaded the combination of Rowe and Jang
fails to teach or suggest:
responsive to receiving a second user input, modifying the single
content chain and the list of items, the second user input
corresponding to a selection to remove at least one of the content
or the additional content in the single content chain, the
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modifying including removing the first item or the second item
from the list of items based on the second user input,
as recited in claim 1.

Claims 7 and 14:
Appellant argues nothing in Jang mentions
modify[ing] the open document chain and the list of items
responsive to a user input that initiates removal of one of the
documents in the document chain, the list of items being
modified by removing at least one of the items from the list of
items that corresponds to the removal of the one document from
the document chain,
as recited in claim 7 (Appeal Br. 11) and as similarly recited in claim 14 (id.
at 14). Appellant again contends Jang has “no explicit description or
mention . . . that rearranging the list of thumbnail images includes removing
and/or closing a web page” (id. at 12, 15).
Appellant additionally again argues the Examiner relies on the subject
application’s disclosure and concludes, without sufficient support, that a
feature of a reference represents the recited limitation (id. at 13). Thus,
according to Appellant, the Examiner’s conclusion “is not a proper basis to
substantiate a rejection” (id. at 12, 16).
As set forth above, we are not persuaded Jang fails to teach or suggest
modifying by “removing at least one of the items from the list of items,” as
recited in claim 7 and as similarly recited in claim 14.

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Conclusion:
We are not persuaded the Examiner erred in finding the combination
of Rowe and Jang teaches, suggests, or otherwise renders obvious the
limitations as recited in independent claims 1, 7, and 14. Claims 2–4, 6, 9,
12, 13, 15, 18–20, 22, and 25 are not separately argued (Appeal Br. 17).
Therefore, we sustain the rejection of claims 1–4, 6, 7, 9, 12–15, 18–20, 22,
and 25 under 35 U.S.C. § 103(a) for obviousness over Rowe and Jang.

35 U.S.C. § 103(a): Claims 5, 17, 21, and 24
Appellant contends their invention as recited in claims 5, 17, 21, and
24, is not obvious over Rowe, Jang, and Goodger based on their dependence
from independent claims 1, 7, and 14, respectively (Appeal Br. 17). Based
on our findings and conclusions set forth above with respect to independent
claims 1, 7, and 14, we are not persuaded the Examiner erred in finding the
combination of Rowe, Jang, and Goodger teaches or suggests claims 5, 17,
21, and 24, not separately argued (Appeal Br. 17). Therefore, we sustain the
rejection of claims 5, 17, 21, and 24 under 35 U.S.C. § 103(a) for
obviousness over Rowe, Jang, and Goodger.
DECISION
The Examiner’s rejections are AFFIRMED.
More specifically:
The Examiner’s rejection of claims 1–4, 6, 7, 9, 12–15, 18–20, 22,
and 25 under 35 U.S.C. § 103 as being unpatentable over Rowe and Jang is
affirmed; and
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The Examiner’s rejection of claims 5, 17, 21, and 24 under 35 U.S.C.
§ 103 as being unpatentable over Rowe, Jang, and Goodger is affirmed.
DECISION SUMMARY
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
1–4, 6, 7, 9,
12–15, 18–
20, 22, 25
103(a) Rowe, Jang 1–4, 6, 7, 9,
12–15, 18–
20, 22, 25

5, 17, 21, 24 103(a) Rowe, Jang,
Goodger
5, 17, 21, 24
Overall
Outcome
1–7, 9, 12–
15, 17–22,
24, 25

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (see 37 C.F.R.
§ 1.136(a)(1)(iv)).
AFFIRMED