SMUGMUG, INC.Download PDFPatent Trials and Appeals BoardNov 30, 20202019005560 (P.T.A.B. Nov. 30, 2020) 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. 14/199,712 03/06/2014 Brian STRONG 2011.065946 (SMUG/0022US) 6663 107819 7590 11/30/2020 Polsinelli LLP - SmugMug, Inc. 3 Embarcadero Center Suite 2400 San Francisco, CA 94111 EXAMINER LEVEL, BARBARA M ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 11/30/2020 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): sfpatent@polsinelli.com uspt@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN STRONG Appeal 2019-005560 Application 14/199,712 Technology Center 2100 Before LARRY J. HUME, GENE E. BRANCH, and NABEEL U. KHAN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1, 2, 4–8, 10–14, and 16–18, which are all claims pending in the application. Appellant has canceled claims 3, 9, and 15. See Appeal Br. 17 et seq. (“Claims Appendix”). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as According to Appellant, the present application has been assigned to SMUGMUG, Inc., Appeal Br. 3. Appeal 2019-005560 Application 14/199,712 2 STATEMENT OF THE CASE2 The claims are directed to a method of designing a customizable website. See Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed invention relate to designing a customizable website by using a custom design application. The custom design application generally provides a site master template, a homepage template, a plurality of sub templates, and a 404 error template. The templates may be customized with input provided by a user. The method also provides a manner of customizing a website by utilizing a hierarchical relationship between the templates in order to easily and efficiently custom design a website. Spec. 30 (Abstract). Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphases added to dispositive prior-art limitations): 1. A method of designing a customizable website, comprising: providing a customizable website from a host server comprising a plurality of web page templates adhering to a hierarchical relationship, wherein inferior web page templates inherit content from superior web page templates, further comprising: 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Apr. 8, 2019); Reply Brief (“Reply Br.,” filed July 16, 2019); Examiner’s Answer (“Ans.,” mailed May 16, 2019); Final Office Action (“Final Act.,” mailed Nov. 16, 2018); Transcript of Oral Hearing held Oct. 8, 2020 (“Transcript,” mailed on Oct. 23, 2020); and the original Specification (“Spec.,” filed Mar. 6, 2014) (claiming benefit of US , filed 61/774,360, filed Mar. 7, 2013). Appeal 2019-005560 Application 14/199,712 3 providing a site master template, wherein the site master template is customizable with input received from a user and the site master template is the most superior web page template in the hierarchical relationship; providing a homepage template, wherein the homepage template is customizable with input received from the user and is inferior to the site master template in the hierarchical relationship; and providing a plurality of sub-templates, wherein the plurality of sub-templates are customizable with input received from the user and the plurality of sub-templates are inferior to the site master template in the hierarchical relationship; receiving from a user computer: localized input from the user customizing the content of one or more of the plurality of web page templates; and input from the user determining content inheritance between the plurality of web page templates in response to customization of the hierarchical relationship; and receiving user input to publish the customizable website, the publishing sequentially comprising: applying a layout function provided by the host server to all user customized content upon receipt of user input publishing the customizable website, wherein the layout function is configured to retain a plurality of predetermined proportions by adjusting dimensions of the content embedded within the plurality of web page templates exclusive of input from the user to ensure functionality and aesthetic quality of the customizable website independent of user content customization; and transferring the customizable website from the host server to a content storage unit where the customizable website is viewable by third party users. Appeal 2019-005560 Application 14/199,712 4 REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Wang et al. (“Wang”) US 2003/0225853 A1 Dec. 4, 2003 Shiigi et al. (“Shiigi”) US 2003/0014442 A1 Jan. 16, 2003 Underwood et al. (“Underwood”) US 2008/0109472 A1 May 8, 2008 Pierre et al. (“Pierre”) US 2012/0072436 A1 Mar. 22, 2012 Grizim et al. (“Grizim”) US 2012/0131442 A1 May 24, 2012 REJECTION Claim(s) Rejected3 35 USC § Reference(s)/Basis 1, 2, 4–8, 10–14, 16–18 103(a) Shiigi, Underwood, Wang, Grizim, Pierre CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 9–15; Transcript 2 et seq.) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness rejection of claims 1, 2, 4–8, 10–14, 16–18 on the basis of illustrative claim 1.4 ISSUE Appellant argues (Appeal Br. 9–15; Reply Br. 2–4; Transcript 6–13) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Shiigi, Underwood, Wang, Grizim, and 3 See Final Act. 3. 4 We find that independent claims 7 and 13 recite the dispositive limitations of independent claim 1 in essentially an identical manner. Appeal 2019-005560 Application 14/199,712 5 Pierre is in error. These contentions present us with the following dispositive issue: Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] method of designing a customizable website” that includes, inter alia, the limitation “receiving user input to publish the customizable website, the publishing sequentially comprising . . . applying a layout function provided by the host server to all user customized content upon receipt of user input publishing the customizable website,” as recited in claim 1, and as commensurately recited in each of independent claims 7 and 13?. PRINCIPLES OF LAW Our reviewing court guides, “‘[a] prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art.’” In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)). During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description Appeal 2019-005560 Application 14/199,712 6 contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). ANALYSIS Based upon our review of the record and arguments presented during the Oral Hearing held October 8, 2020, we find a preponderance of the evidence supports particular arguments advanced by Appellant with respect to claims 1, 2, 4–8, 10–14, and 16–18 for the specific reasons discussed below. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows, and again note independent claims 7 and 13 recite the dispositive limitations in essentially identical form. We conclude claim 1 generally recites (see claim 1) a method of designing a customizable website that includes pre-formatted templates to make user interaction easier when developing a website, i.e., “receiving from a user computer . . . localized input from the user customizing the content of one or more of the plurality of web page templates; and input from the user determining content inheritance between the plurality of web page templates in response to customization of the hierarchical relationship.” After the user has completed providing their customized input to the website using templates, and authorized the website for publication, a sequential publication process proceeds under host server control and independent of user control, i.e., “receiving user input to publish the customizable website, the publishing sequentially comprising . . . applying a layout function provided by the host server to all user customized content upon receipt of user input publishing the customizable website.” See claim 1. Appeal 2019-005560 Application 14/199,712 7 The Examiner finds the combination of Shiigi, Underwood, Wang, Grizim, and Pierce teaches or suggests the limitations of claim 1, including the contested dispositive limitations. See Final Act. 3–26. In particular, the Examiner finds Shiigi teaches or suggests the contested dispositive limitation of “the publishing sequentially comprising . . . applying a layout function provided by the host server to all user customized content upon receipt of user input publishing the customizable website,” which we emphasize, as claimed, is recited as being carried out after “receiving user input to publish the customizable website.” Final Act. 19 (citing Shiigi ¶¶ 16, 17, 50, 52, 53, 94). We have reviewed the Examiner’s rejection in its entirety, and consider Appellant’s arguments in the briefs and during the Oral Hearing (see generally Transcript), and note the portions of Shiigi relied upon by the Examiner for teaching the disputed limitation concerning sequential publishing after user publication approval are cited as also teaching or suggesting the user’s original customization of the webpage by providing localized input to a variety of templates and sub-templates, as discussed at pages 3–17 of the Final Action, where the Examiner cites Shiigi at various paragraphs including paragraphs 16, 17, 50, 52, 53, and 94 (relied upon as noted above for teaching the dispositive limitation). We see no teaching or suggestion in the cited portions of Shiigi of a sequential publication process that includes a host server imposed layout function after the user has provided input concerning approval and submission of the webpage for publication. Appeal 2019-005560 Application 14/199,712 8 In turn, Appellant argues none of the other references, Underwood, Wang, Grizim, Pierre, either alone or in combination, teach or suggest “receiving user input to publish the customizable website, the publishing sequentially comprising: applying a layout function provided by the host server to all user customized content upon receipt of user input publishing the customizable website,” as recited in claim 1. See Appeal Br. 11, 12, 15. For example, during Oral Hearing, Appellant’s representative argued: One of the interesting things here, and quite honestly, something that we think is not obvious in view of the prior art is the modification of the customizable website after the user is done modifying the website. For example, in the Grizim reference . . . . in Figure 2, I think is illustrative, and we can see in Figure 2 of the Grizim reference two different flows. First, the upper one on page 2, is all about the user design and layout forwarding the layout data, and then calculating certain rules or inheritance in a hierarchy between various templates so information can flow throughout various linked or mapped pages. And then interestingly, at the very end at Operation 207, the website is published. Now, the lower process flow, I think is a little more germane, but the same principles apply. We can see in Operation 208, either provide instructions; at 209 relative arrangement rules are provided; at 210 we adjust the layout while maintaining rule compliance; at 211 a layout is adjusted and then ultimately at the very end, the website is published. So when Grizim referenced publication is the last step. What we have claimed, because of the sequence, is that upon receipt of input publishing the website, then the layout function is applied without any additional input from the user regarding content customization. Transcript 6:21–7:24 (emphasis added). Appellant’s representative further asserted: So the ultimate[] point here is that [none] of Shiigi, Grizim, or Pierre teach the specific sequence of receiving user Appeal 2019-005560 Application 14/199,712 9 input and then sequentially applying the layout function and all the other limitations that we have recited. None of the references have that specific sequence, and so although we identify them independently to highlight their respective limitations because each of Shiigi, Grizim and Pierre fail to teach that sequence, in combination, none of them can ultimately teach that. There’s no teaching or suggestion in any of the references that have that specific sequence that we are discussing. Essentially what we believe is that this is actually extremely counter-intuitive. If we step back a second, and we provided a user the ability to customize their website -- we actually discussed in this applicant’s published specification in paragraph 49. We say, although the user has complete control over the content included in the website, the layout function applies to improve the overall functionality and esthetic value of the website design after the website is published. So the user who is at that point in time done editing their website, publishes it. Conventionally, the user would think well, I’m done, and I’m ready to publish my website and then no further changes are made. However, the application this layout function improves the esthetics and functionality of the website unbeknownst to the user. The claimed methodology gives the user the perception that they have complete control, and they do of the contents and the proportions of that content. However, the layout function applies upon the receipt of input publishing the application. So in other words, after the user thinks that their website will be published, this application’s layout function can then run to further enhance and improve the ultimate esthetics and functionality of the website. I guess, we’d like to think of it as sort of kind of a blind assist. Transcript 11:14–13:5 (emphasis added). We are persuaded by Appellant’s argument that the combination of Shiigi, Underwood, Wang, Grizim, and Pierre does not teach or suggest the dispositive limitation “receiving user input to publish the customizable website, the publishing sequentially comprising . . . applying a layout function provided by the host server to all user customized content upon Appeal 2019-005560 Application 14/199,712 10 receipt of user input publishing the customizable website,” as recited in claim 1, and as commensurately recited in each of independent claims 7 and 13.5 Accordingly, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner’s reliance on the cited prior art combination to teach or suggest the dispositive limitation of claim 1, such that we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we do not sustain the Examiner’s obviousness rejection of independent claims 1, 7, and 13, and dependent claims 2, 4–6, 8, 10–12, 14, and 16–18 which depend therefrom and stand therewith. See Claim Grouping, supra. CONCLUSION We reverse the Examiner’s rejection of claims 1, 2, 4–8, 10–14, and 16–18 under 35 U.S.C. § 103(a). DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis / References Affirmed Reversed 1, 2, 4–8, 10–14, 16–18 103(a) Obviousness Shiigi, Underwood, Wang, Grizim, Pierre 1, 2, 4–8, 10–14, 16–18 REVERSED 5 Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). Copy with citationCopy as parenthetical citation