Ex Parte Howell et alDownload PDFPatent Trial and Appeal BoardAug 27, 201812477460 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/477,460 06/03/2009 27488 7590 08/29/2018 MERCHANT & GOULD (MICROSOFT) P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 FIRST NAMED INVENTOR Gareth A. Howell 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 14917.1285US01/326980.0l 7477 EXAMINER HASTY, NICHOLAS ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): USPT027 488@merchantgould.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARETH A. HOWELL, CHRISTOPHER J. BROWN, SUGANDHA S. KAPOOR, DONOVAN P. LANGE, and ZHENJUN ZHU Appeal2018-000195 Application 12/4 77,460 Technology Center 2100 Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and AMBER L. HAGY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Non-Final Rejection of claims 1, 2, 6, 8-13, and 15-25, which are all of the pending claims. 2 We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellants identify Microsoft Technology Licensing, LLC, as the real party in interest. (Br. 2.) 2 Appellants canceled claims 3-5, 7, and 14. (Claims App'x 46, 48; see also Non-Final Act. 2; Br. 5.) Appeal2018-000195 Application 12/477,460 STATEMENT OF THE CASE Introduction According to Appellants, the invention provides embodiments "utilizing server pre-processing to deploy static renditions of electronic documents in a computer network." (Abst.) Exemplary Claim Claims 1, 9, and 16 are independent. Claim 1, reproduced below with the disputed limitations italicized, is exemplary of the claimed subject matter: 1. A method of utilizing server pre-processing to deploy static renditions of electronic documents in a computer network, compnsmg: initiating publication of an electronic document stored on a client computer in the computer network by: determining that a current demand for the electronic document has increased a network traffic load above a threshold; and responsive to the determination that the current demand for the electronic document has increased the network traffic load above the threshold, initiating the publication of the electronic document on the client computer instead of publishing by sending the electronic document for hosting by a second server computer in the computer network; during publication of the electronic document, creating at a first server computer: a static rendition of the electronic document, the static rendition of the electronic document being created by converting an editable rendition of the electronic document to an uneditable rendition of the electronic document during pre-processing operations on the first server computer, the pre- 2 Appeal2018-000195 Application 12/477,460 processing operations compnsmg continuing a publication process for a revised dynamic version of the electronic document; and a viewing application for viewing the static rendition of the electronic document on the client computer in the computer network, wherein creating a viewing application for viewing the static rendition of the electronic document on the client computer comprises configuring the viewing application to embed a viewer to view the static rendition of the electronic document as an object in a web page hosted by a website; and storing the static rendition of the electronic document and the viewing application on the second server computer for delivery to the client computer. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Dozier White et al. ("White") Slater et al. ("Slater") Flamini et al. ("Flamini") Cheng Cha us 5,870,552 US 2002/0128935 Al US 2004/0010588 Al US 2004/0125130 Al US 2005/0223084 Al US 2008/0189294 Al Rejections Feb.9, 1999 Sept. 12, 2002 Jan. 15,2004 July 1, 2004 Oct. 6, 2005 Aug. 7,2008 Claims 1, 2, 6, 8-13, 15, and 22-25 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Dozier, White, Cheng, Flamini, and Slater. (Non-Final Act. 7-19.) Claims 16-21 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Dozier, Cheng, Flamini, and Cha. (Non-Final Act. 2-7.). 3 Appeal2018-000195 Application 12/477,460 Issue 3 Based on Appellants' arguments, the dispositive issue on appeal is whether the Examiner erred in finding the combination of Dozier and Cheng teaches or suggests during publication of the electronic document, creating at a first server computer: a static rendition of the electronic document, the static rendition of the electronic document being created by converting an editable rendition of the electronic document to an uneditable rendition of the electronic document[,] as recited in independent claim 1 and commensurately recited in independent claims 9 and 16. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner erred. We concur with Appellants' contention that the Examiner erred in finding the combination of Dozier and Cheng teaches or suggests "creating ... a static rendition of the electronic document ... by converting an editable rendition ... to an uneditable rendition ... , " as recited in independent claims 1, 9, and 16. In rejecting the claims, the Examiner finds Dozier discloses "creating . . . a static rendition of the electronic document." (Non-Final Act. 8 ( claim 1) (citing Dozier 6:45--47); see also id. at 12-13 (claim 9); id. at 3--4 (claim 16).) As Appellants point out, however, this finding is incorrect because 3 Appellants' contentions present additional issues. Because the identified issue is dispositive of Appellants' arguments on appeal, we do not reach the additional issues. 4 Appeal2018-000195 Application 12/477,460 Dozier discloses enabling "users to access, edit, and store documents distributed throughout a WAN ... as if all steps occurred locally on a private computer." (Br. 23 (citing Dozier 5:1-6:6) (emphasis added).) In other words, the cited portions of Dozier disclose only editable documents, and Examiner cites nothing in Dozier that discloses converting an editable document to an uneditable document, as required by the claims. The Examiner later concedes this point, finding "Dozier et al. does not explicitly disclose the static rendition of the electronic document being created by converting an editable rendition of the electronic document to an uneditable rendition of the electronic document during pre-processing operations on the first server computer." (Non-Final Act. 9.) The Examiner then finds Cheng contains this teaching. (Id. ( citing Cheng ,r 21 ).) We disagree. As Appellants contend, and we agree: Cheng is directed to converting dynamic web pages into static webpages for easier display on wireless devices. Cheng, at Abstract. For example, Cheng recites, "an inspection module 52 reads the requested web page 30 and detects the presence of any dynamic content or scripts embedded in the requested page ... to generate multiple static web pages from the dynamic content embedded in the requested web page 30.["] Cheng, para. 21. While Cheng discloses changing a dynamic webpage into a static webpage for easier display, the dynamic webpage as utilized in Cheng refers to a webpage designed such that its content presentation, and the actual content itself, varies depending on the actions taken by the user for accessing the content. Cheng, at para. 4. As such, while the content of the web page may vary based on user interaction, the user cannot edit the web page itself or the embedded changeable content. Cheng, at para. 4. In contrast, the user can only change the user's interaction with the web page as disclosed in Cheng. As such, the webpage is always uneditable by the user. (Br. 25 (citing Cheng ,r 4) (emphasis added).) 5 Appeal2018-000195 Application 12/477,460 In response, the Examiner states, "Applicant does not explicitly define 'editable' or 'uneditable'." (Ans. 2.) Therefore, according to the Examiner, the "broadest reasonable interpretation [of] 'editable' includes a dynamic webpage that can be altered by a user, and 'uneditable' includes a static webpage that cannot be altered by a user." (Id. (emphasis added).) We agree that an electronic document may include a webpage, but we disagree that an "editable" webpage includes a dynamic webpage that a user only interacts with and cannot edit, as disclosed by Cheng. The ordinary meaning of the term "edit," in the context of computers, is "to modify or add to ( data or text)."4 The Examiner does not point to any disclosure in Cheng that allows a user to modify or add to a dynamic webpage. Rather, dynamic webpages, as disclosed by Cheng, are ones that allow users "a measure of interactivity with content stored on and accessible through the Web," such as by use of "hyperlinks embedded in documents leading to other, related documents." (Cheng ,r 3 (emphasis added).) A user's clicking a hyperlink in a dynamic webpage, however, does not modify or add to that webpage, and thus does not result in "editing" that page. Therefore, to the extent that the Examiner's findings regarding Cheng are premised on construing "editable" as including a dynamic webpage that allows interactivity, without being modified by a user, we conclude the Examiner's construction is unreasonably broad. In that regard, we note the Examiner does not cite to any disclosure in the Specification that uses the term "editable" to encompass a document that allows interaction as opposed to one that, as consistently described in the specification, allows modification. (E.g., Spec. ,r 19 ( describing "dynamic (i.e., editable) 4 See www.dictionary.com (edit). 6 Appeal2018-000195 Application 12/477,460 renditions of electronic documents such as dynamic note-taking application documents").) As Appellants further contend, and we agree, the Examiner's findings regarding the remaining cited references do not remedy the deficiency of the Examiner's findings regarding Cheng vis-a-vis the disputed limitation discussed above. (See Br. 24--28.) That is, the Examiner does not cite to any of the remaining references used in the rejection of any of the claims as disclosing creating static documents by converting editable versions to uneditable versions. (See Non-Final Act. 9--10, 4--5; Ans. 2-3.) For the foregoing reasons, we are persuaded by Appellants' arguments that the Examiner has failed to support a finding that the prior art teaches or suggests "creating ... a static rendition of the electronic document ... by converting an editable rendition ... to an uneditable rendition ... ," as recited in Appellants' claims. Accordingly, we will not sustain the Examiner's rejection of independent claims 1, 9, or 16, or the rejections of the dependent claims. DECISION For the above reasons, the Examiner's decision to reject claims 1, 2, 6, 8-13, and 15-25 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation