Robin James. AdamsDownload PDFPatent Trials and Appeals BoardDec 19, 201914337456 - (D) (P.T.A.B. Dec. 19, 2019) 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. 14/337,456 07/22/2014 Robin James Adams 4275US01 1726 108982 7590 12/19/2019 SBMC 116 W. Pacific Avenue Suite 200 Spokane, WA 99201 EXAMINER CAMPBELL, JR., WARREN ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 12/19/2019 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): docket@sbmc-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBIN JAMES ADAMS Appeal 2019-000111 Application 14/337,456 Technology Center 2100 Before DEBRA K. STEPHENS, JASON V. MORGAN, and GREGG I. ANDERSON, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 Adobe Inc., appeals from the Examiner’s decision to reject claims 1–7, 9, 12–15, 17–22, 24, and 25 (Final Act. 1). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Adobe Systems, Inc. (Appeal Br. 2). Appeal 2019-000111 Application 14/337,456 2 CLAIMED SUBJECT MATTER According to Appellant, the claims are directed to an appending new content to open content. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method, comprising: displaying, in a window, content having one or more hyperlinks associated with additional content; receiving a first user input corresponding to a selection of a hyperlink embedded in the content that is displayed in the window; responsive to receiving the first user input corresponding to the selection of the hyperlink embedded in the content that is displayed in the window, adding the additional content associated with the selected hyperlink to the displayed content in the window without automatically navigating to the additional content, the content and the additional content being displayable together as a single content chain; generating a list of items including a first item corresponding to the content in the single content chain and a second item corresponding to the additional content in the single content chain; and responsive to receiving a second user input, modifying the single content chain and the list of items, the second user input corresponding to a selection to remove at least one of the content or the additional content in the single content chain, the modifying including removing the first item or the second item from the list of items based on the second user input. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rowe US 8,156,428 B1 Apr. 10, 2012 Goodger US 8,762,879 B1 June 24, 2014 Jang US 2010/0093325 A1 Apr. 15, 2010 Appeal 2019-000111 Application 14/337,456 3 REJECTIONS Claims 1–4, 6, 7, 9, 12–15, 18–20, 22, and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Rowe and Jang (Final Act. 2–24); and Claims 5, 17, 21, and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Rowe, Jang, and Goodger (id. at 24–30). OPINION 35 U.S.C. § 103(a): Claims 1–4, 6, 7, 9, 12–15, 18–20, 22, and 25 Appellant contends their invention as recited in claims 1–4, 6, 7, 9, 12–15, 18–20, 22, and 25, is not obvious over Rowe and Jang (see Appeal Br.).2 In particular, Appellant argues independent claims 1, 7, and 14 (id. at 1–16). With respect to claim 1, Appellant argues: (i) the Examiner has not shown the combination of Rowe and Jang teaches: responsive to receiving a second user input, modifying the single content chain and the list of items, the second user input corresponding to a selection to remove at least one of the content or the additional content in the single content chain, the modifying including removing the first item or the second item from the list of items based on the second user input, as recited in claim 1 (Appeal Br. 6–9) and 2 Only those arguments actually made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(iv)). Appeal 2019-000111 Application 14/337,456 4 (ii) the Examiner “impermissibl[y relied] on Appellant’s disclosure to interpret a feature not shown by a cited reference as a basis to substantiate a rejection” (id. at 9–10). (i) “responsive to receiving” The Examiner relies on Jang to teach this limitation, and in particular, Jang paragraphs 98 and 100 (Final Act. 4–5): In the meantime, if a plurality of web pages are merged into a single web page, a plurality of thumbnail images respectively corresponding to the web pages may be displayed on the display module 151. Then, if one of the thumbnail images is chosen, the controller 180 may display the web page corresponding to the chosen thumbnail image on the entire display module 151. In addition, if the thumbnail images are rearranged, the controller 180 may rearrange the web pages included in the single web page accordingly. . . . . If the user touches one of the group of thumbnail images 710, as indicated by reference numeral 720, and then drags the touched thumbnail image 710 into the arrangement zone 750, as indicated by reference numeral 730, the dragged thumbnail image 710 may be displayed in the arrangement zone 750. In this manner, a number of thumbnail images 710 may be displayed and arranged in the arrangement zone 750. Thereafter, if the user chooses to merge the web pages respectively corresponding to the thumbnail images 710 in the arrangement zone 750, a web page obtained by merging the corresponding web pages may be displayed (Jang ¶¶ 98, 100). The Examiner further determines Jang teaches “rearrangement of web pages and their thumbnails within an arrangement zone” (Final Act. 32). According to the Examiner, “[t]o include web pages in the chain[,] thumbnails are placed in the arrangement zone from the list of thumbnails. To remove web pages from the chain[, an ordinarily skilled Appeal 2019-000111 Application 14/337,456 5 artisan would have found it obvious to] remove the web page thumbnail from the arrangement zone” (id.). Appellant contends the Examiner “misapplied Jang” and specifically, “Jang only describes that a user selected thumbnail can be rearranged and the merged web pages are rearranged according to the rearrangement of the list of thumbnails” but does not explicitly describe “rearranging the list of thumbnail images includ[ing] removing and/or closing a web page” (Appeal Br. 8–9; Reply Br. 5). Thus, Appellant asserts Jang fails to teach the disputed limitation (id.). The Examiner responds “[r]earranging thumbnails to rearrange the merged webpages [ ] suggest[s] removing webpages because there are arrangements that would include some but not all of the original arrangement of webpages” (Ans. 33). We agree with the Examiner’s findings. As noted by the Examiner, the question “is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made” (Ans. 33 (quoting Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804 (Fed. Cir. 1989))). A skilled artisan is “a person of ordinary creativity, not an automaton” (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). Here, we determine that Jang’s teaching of rearranging thumbnails to rearrange merged webpages teaches or at least suggests removing webpages. Jang teaches that “thumbnail images” may be “chosen from the group of thumbnail images 710 are arranged may be provided below the group of thumbnail images 710” (Jang ¶ 99 (emphasis added)). A user command that involves a choice would suggest to an ordinarily skilled artisan, that the choice may include deleting the Appeal 2019-000111 Application 14/337,456 6 thumbnail from the arrangement. Indeed, we determine an ordinarily skilled artisan, looking at Jang’s teaching of rearranging in conjunction with the disclosure in Figure 10, would understand “rearranging” to include removing webpages.3 (ii) impermissibly relied on Appellant’s disclosure Appellant next argues the Examiner “relies on the disclosure of the subject application to interpret a plausible feature of Jang as a basis to substantiate a rejection of the subject application” (Appeal Br. 10). 3 Appellant argues the Examiner’s quote of case law and further explanation (Ans. 33) introduces a new ground of rejection. Our review of the record indicates that Appellant did not file a petition under 37 C.F.R. § 1.181(a) within two months from the mailing of the Examiner’s Answer requesting that a ground of rejection set forth in the Answer be designated as a new ground of rejection: If appellant believes that an examiner’s answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CFR 1.181(a) within two months from the mailing of the examiner’s answer requesting that a ground of rejection set forth in the answer be designated as a new ground of rejection. Any such petition must set forth a detailed explanation as to why the ground of rejection set forth in the answer constitutes a new ground of rejection. Any allegation that an examiner’s answer contains a new ground of rejection not identified as such is waived if not timely raised (i.e., by filing the petition within two months of the answer) by way of a petition under 37 CFR 1.181(a). MPEP § 1207.03(IV)(emphasis added). Therefore, Appellant has waived the allegation that the Examiner’s Answer contains a new ground of rejection because Appellant did not file a petition under 37 C.F.R. § 1.181(a) within two months from the mailing of the Examiner’s Answer. Appeal 2019-000111 Application 14/337,456 7 According to Appellant, “there is no teaching whatsoever in Jang to ‘remove a web page from the chain’” and thus, the Examiner is “[m]erely concluding, without sufficient support, that a feature of a reference represents that which is positively recited by Appellant” which “is not a proper basis to substantiate a rejection” (id.). For the reasons set forth above, we are not persuaded an ordinarily skilled artisan upon reading Jang, would understand “rearranging” to include “removing the first item or the second item from the list of items,” as recited in claim 1. For the first time in the Reply Brief, Appellant argues the Examiner has failed to show “it would have been obvious to combine teachings in [Jang and Rowe] together to arrive at the claimed invention” (Reply Br. 6). Appellant had an opportunity to raise the arguments in the Appeal Brief, and has provided this record with no such showing of good cause for not doing so. In the absence of a showing of good cause by Appellant, the new arguments by Appellant are thus deemed waived (see 37 C.F.R. § 41.41(b)(2); see also Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (Internal citations and quotation marks omitted)). (iii) Conclusion Accordingly, we are not persuaded the combination of Rowe and Jang fails to teach or suggest: responsive to receiving a second user input, modifying the single content chain and the list of items, the second user input corresponding to a selection to remove at least one of the content or the additional content in the single content chain, the Appeal 2019-000111 Application 14/337,456 8 modifying including removing the first item or the second item from the list of items based on the second user input, as recited in claim 1. Claims 7 and 14: Appellant argues nothing in Jang mentions modify[ing] the open document chain and the list of items responsive to a user input that initiates removal of one of the documents in the document chain, the list of items being modified by removing at least one of the items from the list of items that corresponds to the removal of the one document from the document chain, as recited in claim 7 (Appeal Br. 11) and as similarly recited in claim 14 (id. at 14). Appellant again contends Jang has “no explicit description or mention . . . that rearranging the list of thumbnail images includes removing and/or closing a web page” (id. at 12, 15). Appellant additionally again argues the Examiner relies on the subject application’s disclosure and concludes, without sufficient support, that a feature of a reference represents the recited limitation (id. at 13). Thus, according to Appellant, the Examiner’s conclusion “is not a proper basis to substantiate a rejection” (id. at 12, 16). As set forth above, we are not persuaded Jang fails to teach or suggest modifying by “removing at least one of the items from the list of items,” as recited in claim 7 and as similarly recited in claim 14. Appeal 2019-000111 Application 14/337,456 9 Conclusion: We are not persuaded the Examiner erred in finding the combination of Rowe and Jang teaches, suggests, or otherwise renders obvious the limitations as recited in independent claims 1, 7, and 14. Claims 2–4, 6, 9, 12, 13, 15, 18–20, 22, and 25 are not separately argued (Appeal Br. 17). Therefore, we sustain the rejection of claims 1–4, 6, 7, 9, 12–15, 18–20, 22, and 25 under 35 U.S.C. § 103(a) for obviousness over Rowe and Jang. 35 U.S.C. § 103(a): Claims 5, 17, 21, and 24 Appellant contends their invention as recited in claims 5, 17, 21, and 24, is not obvious over Rowe, Jang, and Goodger based on their dependence from independent claims 1, 7, and 14, respectively (Appeal Br. 17). Based on our findings and conclusions set forth above with respect to independent claims 1, 7, and 14, we are not persuaded the Examiner erred in finding the combination of Rowe, Jang, and Goodger teaches or suggests claims 5, 17, 21, and 24, not separately argued (Appeal Br. 17). Therefore, we sustain the rejection of claims 5, 17, 21, and 24 under 35 U.S.C. § 103(a) for obviousness over Rowe, Jang, and Goodger. DECISION The Examiner’s rejections are AFFIRMED. More specifically: The Examiner’s rejection of claims 1–4, 6, 7, 9, 12–15, 18–20, 22, and 25 under 35 U.S.C. § 103 as being unpatentable over Rowe and Jang is affirmed; and Appeal 2019-000111 Application 14/337,456 10 The Examiner’s rejection of claims 5, 17, 21, and 24 under 35 U.S.C. § 103 as being unpatentable over Rowe, Jang, and Goodger is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–4, 6, 7, 9, 12–15, 18– 20, 22, 25 103(a) Rowe, Jang 1–4, 6, 7, 9, 12–15, 18– 20, 22, 25 5, 17, 21, 24 103(a) Rowe, Jang, Goodger 5, 17, 21, 24 Overall Outcome 1–7, 9, 12– 15, 17–22, 24, 25 FINALITY AND RESPONSE 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)(1)(iv)). AFFIRMED Copy with citationCopy as parenthetical citation