Ex Parte Choudhary et al

Patent Trials and Appeals Board

Mar 28, 2019

11691245 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/691,245 03/26/2007
72058 7590 04/01/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Gaurav K. Choudhary
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.
058083-0375229 (B433) 5346
EXAMINER
MUHEBBULLAH, SAJEDA
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAVRA V K. CHOUDHARY and VISHAL K. GUPTA 1
Appeal2017-003093
Application 11/691,245
Technology Center 2100
Before DONALD E. ADAMS, BARBARA A. BENOIT, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
MITCHELL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 8, 10, 11, 13, 15, 16, 18, 20, 23, 25-30, 36-
38, and 51. Final Office Action (Oct. 22, 2015, "Final Act.") 2. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
The Examiner rejected all of the claims as being unpatentable as
obvious over various combinations of prior art. Appellant contests each
ground of rejection asserting that the cited prior art does not teach certain
1 Adobe Systems Incorporated ("Appellant") is the applicant under
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Brief
(March 28, 2016, "Appeal Br.") 1.
2 As Appellant acknowledges, the Examiner objected to claims 50 and 52 as
dependent upon rejected base claim 8, but stated these claims are allowable
if rewritten in independent form. Final Act. 2; Appeal Br. 1.
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Application 11/691,245
features of the claims and also challenges the sufficiency of the rationale to
combine the teachings of the various combinations.
For the reasons explained below, we find that Appellant has failed to
apprise us of Examiner error and sustain the rejections. Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
The Specification is directed to systems, computer program products,
and methods for associating a document with an arrangement of tools so that
when the document is opened, the selected tool configuration is
automatically enabled. Spec. ,r 5. Claims 8, 10, 11, 13, 15, 16, 18, 20, 23,
25-30, 36-38, and 51 are on appeal, and are set forth in the Claims
Appendix of the Appeal Brief. Appeal Br. 25-30.
Claims 8 and 15 are illustrative, and read as follows.
8. A computer-implemented method, comprising:
displaying a selection tool for selecting one of a plurality
of toolbars to be associated with a document, each toolbar
corresponding to a document state specific to a stage of finality
of the document or a user role for the document;
receiving input via said selection tool specifying a
toolbar of the tool bars; and
associating the toolbar with said document by saving data
within the document indicating the corresponding document
state.
15. A computer program product having a tangible,
nontransitory computer readable medium embodying computer
program logic, said computer program product comprising:
code which, when executed by a computing system,
causes the computing system to display a utility for selecting,
from a plurality of tool configurations, a tool configuration to
be associated with a document;
code which, when executed by the computing system,
causes the computing system to receive a selected tool
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configuration and determine a document state corresponding to
the selected tool configuration, wherein the document state is
one or more of a plurality of different document states that the
document can be in at a given time specific to a respective stage
of finality of the document, wherein the stage of finality relates
to at least one of document creation, document editing,
document review, waiting for the document to be filled, or the
document being posted; and
code which, when executed by the computing system,
causes the computing system to create an association between
said document and said selected tool configuration by saving
data within the document identifying the document state
corresponding to the selected tool configuration.
Appeal Br. 25, 26, respectively.
EVIDENCE
The prior art on which the Examiner relies in rejecting the
claims on appeal is:
Shapiro
Olsen
Keohane
US 2005/0075544 Al
US 2006/0212301 Al
US 2008/0104505 Al
REJECTIONS
April 7, 2005
Sept. 21, 2006
May 1, 2008
The Final Office Action includes the following rejections:
1. Claims 8, 10, 11, 13, 15, 16, 18, 20, 27-30, 36, 37, and 51 are
rejected under 35 U.S.C. § I03(a) as unpatentable over Keohane
and Olsen.
2. Claims 23, 25, 26, and 38 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Keohane and Shapiro.
Final Act. 3, 10, respectively.
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ANALYSIS
A. Unpatentability over Keohane and Olsen
1. Independent Claim 8 and its Dependent Claims 3
In the Final Office Action, the Examiner found that Keohane discloses
everything in representative claim 8 except "saving data within the
document indicating the corresponding document state specific to a stage of
finality of the document or a user role for the document." Final Act. 4. The
Examiner relies on Olsen for this teaching. Specifically, the Examiner states
that
Olsen teaches a method of preserving document states within
the UI [User Interface] of the document (Olsen, para.45)
wherein the states are specific to a stage of the document's
lifecycle (Olsen, para.3, 49, Fig. 6; creation of sales order to
fulfillment) and presenting UI settings based on the document's
state (Olsen, para.3, lifecycle; para.51-52,63, UI created based
on operation/state of document's lifecycle).
Final Act. 7.
Appellant challenges this finding asserting that Olsen fails to teach
saving data within a document that indicates a document state specific to a
stage of finality of the document or a user role for the document. Appeal
Br. 6. Appellant argues that Olsen discloses a separate tool, either a UI or a
lifecycle tool, that maintains or stores the state information separate from an
entity, i.e., document. Id. at 6-7 ( citing Olsen ,r,r 45, 52, 63). Appellant
3 We address Appellant's argument concerning whether the combination of
Keohane and Olsen teaches displaying a tool configuration in an initial view
of a document based on the data identifying the document state as required
by dependent claim 11 that depends from claim 8 in the immediately
following section discussing independent claim 15 and its dependent claims.
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makes similar assertions with regard to independent claim 27. See Appeal
Br. 13-15.
The Examiner responds that the UI physically represents the entity
and is part of the entity itself. Examiner's Answer ("Examiner's Ans.") 6
(citing Olsen ,r,r 45, 51, 52, 63). Appellant responds that none of the
Examiner's cited disclosures in Olsen establishes that Olsen's UI is part of
Olsen's entity such that Olsen teaches storing document state data within a
document itself. Reply Brief ("Reply Br.") 5---6. We need not resolve this
issue as to what Olsen teaches regarding saving data within a document as
required by claim 8 because the Examiner also relies on Keohane for this
teaching as well. See Final Act. 6.
The Examiner states that
During the saving of the document the associated tool bar may
be embedded with the document's page format data indicating
the current form/state of the document as determined by the
user[]. It is further noted that Keohane further teaches the
application associates the selected toolbars within the document
section and automatically saves the current toolbar
configuration view, for example, when the document is save.
Id. (citing Keohane ,r,r 22:1-5, 24, 27:4--16, 27) (emphasis omitted). We
agree with the Examiner that Keohane teaches this because Keohane teaches
that the customized toolbar view information "may be embedded within the
page format information of document 220 itself." See Keohane ,r 27. We
also agree with the Examiner that Olsen discloses saving data indicating the
corresponding document state specific to a stage of finality of the document.
Final Act. 7 (citing Olsen ,r,r 45, 3, 49, 51, 52, Fig. 6).
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Thus, the Appellant does not apprise us of error in the Examiner's
finding that the prior art discloses saving data within the document
indicating the corresponding document state that is required by claim 8 and
claims 1 0, 13, 3 6, and 51 that depend from claim 8.
2. Independent Claim 15 and its Dependent Claims; Dependent
Claim 11
In the Final Office Action, the Examiner found that Keohane discloses
everything in representative claim 15 except
wherein the document state is one or more of a plurality of
different document states that the document can be in at a given
time specific to a respective stage of finality of the document,
wherein the stage of finality relates to at least one of document
creation, document editing, document review, waiting for the
document to be filled, or the document being posted and saving
data within the document identifying the document state
corresponding the selected tool configuration.
Final Act. 6-7. The Examiner relies on Olsen for this teaching referencing
Olsen's disclosure of a method of preserving document states specific to a
stage of the document's lifecycle within the UI of the document and of
presenting UI settings based on the document's state. Id. at 7 (citing Olsen
,r,r 3, 45, 49, 51, 52, 63, Fig. 6).
Appellant counters that the Keohane does not teach or suggest
determining a document state corresponding to a tool configuration that has
been selected, where the document state is specific to a given stage of
finality of the document. Appeal Br. 8-9. 4 Specifically, Appellant asserts
4 Appellant also asserts that Olsen also fails to teach this claim feature
because Olsen discloses an entity's state is determined prior to presenting a
particular property rather than determining a document state for a tool
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that "Keohane only discloses determining an association between a given
document section and a toolbar view, not determining a document state
corresponding to a tool configuration that has been selected, where the
document state is specific to a given stage of finality of the document, as
required by claim 15." Id. at 9.
As the Examiner points out, however, Keohane does contemplate a
document that comprises a single section with associated toolbars. See Final
Act. 5---6 (stating that a "user may choose to simply tag the entire document
thereby associating a single toolbar to the entire document wherein the state
is determined by the user's actions on the document, i.e. [i]f the document is
in condition for editing then the corresponding edit toolbar is selected by the
user") ( citing Keohane ,r,r 21, 22) ( emphasis omitted). Keohane discloses
that "the presentation of toolbars can be customized within a document ...
in response to user designation of particular document sections for which a
given set of tool bars is to be displayed." Keohane ,r 22. In delineating one
of these sections, Keohane states, for example, that a document section can
be designated using a single section tag at the end of a section, which could
be the end of the document, and the customized tool bar view for that section
would be presented for any portion of the document preceding the section
tag until another section tag or the beginning of the document is reached.
Keohane ,r 23. Thus, Keohane at least provides a specific embodiment
where the disclosure indicates that the entire document may be marked as a
configuration that has been selected as required by claim 15. Appeal Br. 9.
Because we agree with the Examiner that Keohane teaches this feature, we
need not address Appellant's assertions regarding whether Olsen teaches this
feature also.
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single section. Appellant agrees that Keohane' s disclosure may be read this
broadly. See Reply Br. 3 (agreeing Keohane permits the use of a single
toolbar).
Appellant also takes issue with the Examiner's alleged reliance on
Keohane for disclosing determining a document state corresponding to the
selected tool configuration. Appeal Br. 8-10; Reply 7-10. Appellant states:
"Keohane only discloses determining an association between a given
document section and a toolbar view, not determining a document state
corresponding to a tool configuration that has been selected, where the
document state is specific to a given stage of finality of the document, as
required by claim 15." Appeal Br. 9.
The Examiner, however, does not rely entirely on Keohane for this
teaching stating:
Keohane does not teach wherein the document state is one or
more of a plurality of different document states that the
document can be in at a given time specific to a respective stage
of finality of the document, wherein the stage of finality relates
to at least one of document creation, document editing,
document review, waiting for the document to be filled, or the
document being posted and saving data within the document
identifying the document state corresponding the selected tool
configuration.
Final Act. 6-7. The Examiner does rely on Keohane for determining a
document state corresponding to a tool configuration because "the user
defines which toolbar to utilize according to the condition/state of revision
of the document whether it be in the edit, design or picture state. If the edit
toolbar is selected by the user [then] the document inherently is in the
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editing state (para.22, lines 1-5; para. 24; para 27, lines 4-16)." Examiner
Ans. 15.
The Examiner relies on Olsen for teaching document states specific to
a given stage of finality of the document. For instance, the Examiner states
that "Olsen teaches a method of preserving document states within the
UI ... (Olsen, para.45) wherein the states are specific to a stage of the
document's lifecycle (Olsen, para.3, 49, Fig. 6; creation of sales order to
fulfillment) and presenting UI settings based on the document's state (Olsen,
para.3, lifecycle; para.51-52, 63, UI created based on operation/state of
document's lifecycle)." Final Act. 7; Examiner Ans. 15.
Appellant's initial argument misses the mark as to the Examiner's
reliance on the disclosures of Keohane and Olsen to teach determining a
document state corresponding to the selected tool configuration where the
document state is specific to a given stage of finality of the document.
Appellant first asserts that Keohane does not teach a document state that is
specific to a given stage of finality of the document, and also asserts that
Olsen does not teach determining a document state corresponding to the
selected tool configuration. Appeal Br. 9-10. As explained above, the
Examiner relies on Olsen for teaching a document state that is specific to a
given stage of finality of the document and on Keohane for teaching
determining a document state corresponding to the selected tool
configuration.
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In its Reply, Appellant does address the Examiner's reliance on
Keohane for disclosing determining a document state corresponding to the
selected tool configuration, see Reply Br. 7-10, stating
Keohane discloses a single document state involving all three
of an "edit" toolbar, a "design" toolbar, and a "picture" toolbar.
Thus, Keohane does not necessarily disclose, as alleged by the
Examiner, that "[i]f the edit toolbar is selected by the user than
the document inherently is in the editing state" (as opposed to a
"picture state" or "design state").
Reply Br. 9 ( alteration original).
In resolving this issue, we look to the Specification, which describes
the meaning of "document states" as corresponding to a particular grouping
of toolbars that may be useful for document creation, editing, print
production, and the like. Spec. ,r 2. For instance, in relation to Figure 2B,
an example pull-down menu 213 is provided that lists document states with
different groupings of toolbars relating to those document states. Id. ,r 21.
Specifically, the Specification teaches that
[f]or example, toolbar 1 is a creation toolbar, and it may include
buttons that invoke a variety of actions ( e.g., object insert, text
box insert, crop, etc.) that are usually expected to be of use
during the creation phase of a document. Menu 213, is, of
course, an example, as any technique to show that various tool
configurations correspond to document states is within the
scope of the invention.
Spec. ,r 21.
The Examiner points to Keohane' s teaching that a user may designate
a customized toolbar presentation or view within a document. Final Act. 6
(citing Keohane ,r,r 22: 1-5, 24, 27:4--16). We agree with the Examiner that
Keohane' s customized toolbar views with a collection of toolbars such as an
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edit, design or reviewing, and picture toolbar, as selected by a user evidences
a "document state" in which these toolbars may be useful to the user to edit
the document. An obviousness analysis is not an ipsissimis verbis test.
See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Rather, a prima
facie case of obviousness is established when the prior art itself would
appear to have suggested the claimed subject matter to one of ordinary skill
in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). We agree
with the Examiner that Keohane teaches or suggests determining a document
state corresponding to a selected tool configuration.
The Examiner admits that such a grouping of toolbars as taught by
Keohane does not show a document state specific to a given stage of finality
of the document. See Final Act. 6-7. For this teaching, the Examiner
appropriately relies on Olsen's disclosure of preserving document states
relating to a stage of the document's lifecycle. Id. at 7. As explained above
in relation to our analysis of claim 8, we agree with the Examiner's reliance
on Olsen for this teaching. For example, we agree with the Examiner that
Olson discloses preserving document states specific to a stage in the
document's lifecycle-such as creation of a sales document. See Final Act.
7 (citing, e.g., Olsen ,r,r 3, 49, Fig. 6). Notably, claim 15 recites document
creation as a stage of finality. See App. Br. 26 (claim 15 reciting "wherein
the stage of finality relates to at least one of document creation, document
editing, document review, waiting for the document to be filled, or the
document being posted").
Similar to claim 8 discussed above, the Examiner also relies on
Keohane to teach saving selected tool configuration data that identifies the
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document state within the document as required by claim 15. See Final Act.
6. As we previously found in relation to claim 8, we agree with the
Examiner that Keohane teaches this. Therefore, we agree with the Examiner
that the combination of the Keohane and Olsen teaches or suggests the
claimed subject matter of claim 15.
For dependent claims 11 and 20, that depend from claims 8 and 15,
respectively, Appellant asserts that the combination of Keohane and Olsen
fails to teach or suggest "any features related to an initial view of a
document when the document is opened, let alone displaying such an initial
view of a document with a toolbar or tool configuration corresponding to a
document state identified by data within the document," because Keohane
focuses on document sections versus the entire document. Appeal Br. 12.
The Examiner responds:
Keohane clearly teaches the view of a document with an
associated toolbar automatically presented once the document is
opened (Keohane, para.27, lines 16-20) combined with the state
identified within the document by Olsen (Olsen, para,51-52, 63,
UI maintains the state information to determine which
configuration is displayed). It would have been obvious to
modify Keohane' s method of the application saving the current
toolbar configuration view to include Olsen's teaching of
saving the document's state specific to a stage of finality of the
document in order to automatically show the toolbars
associated with that particular saved document state.
Examiner Ans. 15 ( emphasis omitted).
We have addressed previously in this section that we agree with the
Examiner that Keohane indicates that the entire document may be marked as
a single section with associated toolbars. Therefore, we are not persuaded
by Appellant's argument that Keohane's focus on document sections would
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mean that it does not teach or suggest displaying a selected tool
configuration in an initial view of the document.
Thus, the Appellant does not apprise us of error in the Examiner's
finding that the combined teachings of Keohane and Olsen disclose
determining a document state corresponding to the selected tool
configuration saved within the document where the document state is
specific to a respective stage of finality of the document as required by claim
15 and claims 16, 18, and 37 that depend from claim 15. Also, the Appellant
does not apprise us of error in the Examiner's finding that the combined
teachings of Keohane and Olsen disclose displaying a selected tool
configuration in an initial view of the document based on data identifying
the document state as further required by claim 11 that depends from claim
8, and claim 20 that depends from claim 15.
3. Rationale to Combine
Appellant also argues that the combination of Keohane and Olsen as
described by the Examiner "would change the principle of operation of
Keohane's system and render Keohane's system inoperable for its intended
purpose." Reply Br. 1-2. Appellant concludes that "a system that uses
toolbar-related settings for an entire document, rather than particular
sections of the document, would therefore change Keohane's principle of
operation and thereby render Keohane's system inoperable for its intended
purpose." Appeal Br. 16.
We recognize that Keohane sought to improve previous methods for
customizing the presentation of toolbars within a document that include a
uniform presentation of toolbars "either for all documents of the user ( e.g.,
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based upon a preference recorded in the user's profile) or for all pages of a
particular document created utilizing a particular application program."
Keohane ,r 5 (emphasis added). We disagree with Appellant's
characterization that Keohane' s description of these previous methods shows
that Keohane is disparaging a customized toolbar view for the entire
document versus just a section of that document. Keohane was merely
explaining that because "display area within a GUI is limited, users
generally choose to display fewer than all available toolbars of an
application program at any given time," users may choose default toolbar
views. Keohane ,r 5.
We find that Keohane' s focus is displaying a customized toolbar view
that displays the tools a user needs to perform whatever task is appropriate
for the data that is associated with the customized toolbar view regardless of
the number of different sections delineated in a document that need a
customized toolbar view. See Keohane ,r 29. The Examiner appropriately
relies on this teaching of Keohane in making the rejections at issue here. See
Final Act. 3-6. Therefore, we do not agree with Appellant's conclusion that
even if Keohane' s system could be used to associate a single
toolbar with a single document section, as envisioned by the
Examiner, the proposed combinations are still improper
because the manner by which the association is created has
been changed from a section-specific solution, as in Keohane,
to the disparaged document-based or role-based solutions, as in
the proposed combinations.
Reply Br. 4. Thus, we find that the Examiner did not rely on impermissible
hindsight in making the rejection.
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4. Independent Claim 27 and its Dependent Claims
Appellant relies on similar arguments as addressed above to respond
to the Examiner's rejection of claims 27-30. Appeal Br. 13-15. For the
reasons set forth above, we find that Appellant has failed to apprise us of
Examiner error and sustain the rejection.
For these reasons, we sustain the rejection of claims 8, 10, 11, 13, 15,
16, 18, 20, 27-30, 36, 37, and 51 under 35 U.S.C. § 103 as unpatentable
over Keohane and Olsen.
Unpatentability over Keohane and Shapiro
In the Final Office Action, the Examiner found that Keohane discloses
everything in representative claim 23 except identifying a document state
specific to a user role for the document. Final Act. 11. The Examiner relies
on Shapiro to teach "a method of identifying a document state corresponding
to a user's role included in the document (Shapiro, para. 107-109, role is
included in document as user logs ... ) wherein the arrangement of tools is
based on the user's role (Shapiro, para.110)." Id.
Appellant makes two arguments with respect to this rejection. First,
Appellant asserts that Shapiro does not teach identifying a document state
specific to a user role for the document. Appeal Br. 20. The Examiner
responds that Shapiro teaches such a method because "[t]he particular
document corresponding to the role identified as the user logs into the
application is displayed accordingly wherein the arrangement of tools is
based on the associated role." Examiner Ans. 17 ( citing Shapiro ,r,r 107-
110). Appellant counters that this disclosure to which the Examiner points
"generally teaches restricting certain application functions for a user, but
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lacks any teaching that a document accessed by the user includes data that
controls which functions the user can perform in the document." Reply
Br. 11.
The Examiner, however, relies on Keohane to teach "wherein
determining the arrangement of tools to be displayed comprises accessing
data associated with the document." See Final Act. 10. Specifically, the
Examiner states that Keohane teaches that the user defines which toolbar to
utilize according to the condition or state of revision of the document and
may embed the associated tool bar with the document's page format data
indicating this condition or state of revision of the document. Id. at 10-11
(citing Keohane ,r,r 22: 1-5, 24, 27:4--16). Therefore, the Examiner does not
need to rely upon Shapiro to teach that the document accessed by the user
includes data that controls which functions the user can perform in the
document as Keohane provides this teaching.
As we have previously discussed, we note that the Specification
teaches that "document states" correspond to a particular grouping of
toolbars that may be useful for document creation, editing, print production,
and the like. See Spec. ,r 2. We agree with the Examiner that Shapiro
teaches identifying such a document state or grouping of appropriate
toolbars specific to a user role for the document. Specifically, we find that a
user's role is used to give access to different options or features within an
application using tabs located at the top of the screen, with each tab
permitting access to a specific functionality. Shapiro ,r,r 108, 109.
Providing such access to options or features that are specific to the role of a
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user teaches identifying a document state specific to a user role for the
document.
The second argument that Appellant presents for this rejection is
similar to Appellant's argument concerning the Examiner's rationale to
combine Keohane and Olsen, namely, that combining Keohane and Shapiro
would change Keohane' s principle of operation and make Keohane' s system
inoperable for its intended purpose. Appeal Br. 21-24. Our analysis set
forth above is equally applicable here. Because we do not agree that the
combination of Keohane and Shapiro as described by the Examiner "would
change Keohane' s ... principle of operation and make Keohane' s system
inoperable for its intended purpose," we find that Appellant's argument do
not apprise us of Examiner error, and we find that the Examiner did not rely
on impermissible hindsight in making the rejection. Thus, we sustain the
rejection of claims 23, 25, 26, and 38 under 35 U.S.C. § 103 as unpatentable
over Keohane and Shapiro.
DECISION
We sustain the rejection of claims 8, 10, 11, 13, 15, 16, 18, 20, 27-30,
36, 37, and 51 under 35 U.S.C. § 103.
We also sustain the rejection of claims 23, 25, 26, and 38 under
35 U.S.C. § 103.
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)(l )(iv).
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AFFIRMED
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