SMUGMUG, INC.

Patent Trials and Appeals Board

Nov 30, 2020

2019005560 (P.T.A.B. Nov. 30, 2020)

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.
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Application 14/199,712

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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).
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Application 14/199,712

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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.
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Application 14/199,712

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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.
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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
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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.
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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.
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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
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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
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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”).