Ex Parte Plesnicher

Patent Trial and Appeal BoardFeb 25, 2019

13691620 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/691,620 11/30/2012 72058 7590 02/27/2019 Kilpatrick Townsend & Stockton LLP Adobe Systems, Inc. 58083 Mailstop: IP Docketing - 22 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309-4530 FIRST NAMED INVENTOR Nathan Plesnicher 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. 58083-843994 (2472US01) 9551 EXAMINER NGUYEN, CHAU T ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 02/27/2019 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 NATHAN PLESNICHER Appeal2018-002030 Application 13/691,620 Technology Center 2100 Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and SCOTT B. HOWARD, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-002030 Application 13/691,620 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-10 and 13-22. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. The claims are directed to a methods and systems for creating custom digital publications. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: providing a user interface at an application builder, the application builder being executed by a processor, the user interface displaying a digital publication application shell and an editing canvas, wherein: the application builder produces a digital publication application based on the digital publication application shell, the digital publication application shell specifies standard functionality or appearance features for the digital publication application, the digital publication application shell includes an application programming interface (API) that exposes functions for custom features that can be added or modified, and the editing canvas includes user interface elements for adding or modifying the custom features via the API of the digital publication application shell; receiving selections via the user interface elements specifying one or more custom features for inclusion or modification in the digital publication application shell, the one or more custom features corresponding to custom feature code comprising one or more function calls that reference the functions exposed by the API; 1 Appellant indicates that Adobe Systems Incorporated is the real party in interest. (App. Br. 1.) 2 Appeal2018-002030 Application 13/691,620 producing the digital publication application based at least in part on the digital publication application shell and the custom feature code by embedding the custom feature code within code from the digital publication application shell, wherein the digital publication application comprises at least some of the standard functionality or appearance features specified by the digital publication application shell and the one or more custom features specified by the custom feature code. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Reynar et al. Hudson et al. US 7,356,537 B2 US 2013/0124980 Al REJECTION The Examiner made the following rejections: Apr. 8, 2008 May 16, 2013 Claims 1-10 and 13-22 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Reynar in view of Hudson. ANALYSIS With respect to independent claims 1, 17, and 20, Appellant provides similar arguments for each of the claims because they contain similar claim language. (App. Br. 4). We select independent claim 1 as the illustrative claim and will address Appellant's arguments thereto. Appellant contends that each of the independent claims "require producing a publication application based on (i) a shell including an API and (ii) custom feature code that references functions exposed by the shell's APL" (App. Br. 4--8; Reply Br. 2). Appellant contends that Reynar's 3 Appeal2018-002030 Application 13/691,620 "smart document" cannot be the shell and also the publication application produced from the shell, the cited Reynar disclosures fail to teach these claim features. Appellant further contends Hudson is not cited as curing Reynar's deficiency. (App. Br. 6). Appellant further argues that the Examiner has relied upon the Hudson reference for the combination of the custom code, but Hudson is relied upon with regards to teaching a "file" rather than an "application." (App. Br. 6). The Examiner finds that the Reynar reference teaches a digital publication application in columns 3--4 and 9--10 referring to the templates to create a document or smart document. (Ans. 23-24). Although we agree with the Examiner that the Reynar reference teaches creating a document or smart document, the document is not an "application" as required by the language of independent claim 1. Nor has the Examiner identified how either the Hudson or Reynar references teach or suggest an "application" as required by the language of independent claim 1. In response to Appellant's arguments that the "references lack a publication application produced from a shell and custom feature code, where the publication application includes custom features specified by the custom feature code," the Examiner relies upon the same teachings in columns 3--4 and 9--10 of Reynar. (Ans. 24--25, emphasis omitted). Additionally and alternatively, the Examiner relies upon paragraphs 133- 134 of the Hudson reference which discloses generating a template ( digital publication application shell) from the current layout of the digital publication ( digital publication application) for later use or convert the digital publication from the current layout to a different, previously saved template layout (paragraph [0134]). (Ans. 25-26). (See also Hudson ,r ,r 138, 145, 232, 235, 250). 4 Appeal2018-002030 Application 13/691,620 Appellant further contends that the Examiner has failed to establish a prima facie case of obviousness. (App. Br. 10). Appellant further argues that the Examiner's rationale for combining the disclosures fail to establish the obviousness of the claims, and that the Examiner has relied upon impermissible hindsight reconstruction. (App. Br. 11-13). The Examiner maintains that some suggestion or motivation for the combination was provided and that the Examiner has only relied upon permissible hindsight. (Ans. 28-30). While we agree with the Examiner that a suggestion or motivation has been provided for the combination, we cannot agree with the Examiner that the combination shows all the elements of the claimed invention in the proffered combination, as discussed above. As a result, we cannot sustain the Examiner's obviousness rejection of illustrative independent claim 1 and independent claims of 17 and 20 and dependent claims 2-10, 13-16, 18, 19, and 21-22 similar reasons. CONCLUSION The Examiner erred in rejecting claims 1-10 and 13-22 based upon obviousness under 35 U.S.C. Â§ 103. DECISION For the above reasons, we reverse the Examiner's rejection of claims 1-10 and 13-22. REVERSED 5