David Coblentz et al.

Patent Trials and Appeals Board

Mar 25, 2020

12184129 - (D) (P.T.A.B. Mar. 25, 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.
12/184,129 07/31/2008 David Coblentz 058083-0857810 (B775) 6779
72058 7590 03/25/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID COBLENTZ and ANNIE CARNIE
____________________

Appeal 2018-006994
Application 12/184,129
Technology Center 3600
____________________

Before ERIC S. FRAHM, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1‒4, 6–9, 11, 13, 14, and 16‒20. Claims 5, 10, 12,
and 15 have been canceled. See Appeal Br. 4. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Adobe Systems Incorporated as the
real party in interest. Appeal Br. 4.
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Application 12/184,129

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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to the management and control of a
graphical user interface (GUI). See Spec. ¶¶ 11‒12. In particular, the
application discloses controlling a GUI based on the digital rights
management (DRM) associated with third-party add-ins that modify the
GUI.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising: performing by a computer:

during operation of a graphical user interface, regulating
operation of a primary component object model add-in for an
electronic document and a secondary component object model
add-in, wherein said regulating comprises subjugating, based on
the primary component object model add-in governing digital
rights management of the electronic document, the second
component object model add-in to the primary component
model add-in, wherein subjugating the secondary component
object model comprises:
determining that a resource associated with the secondary
component object model add-in extends the graphical user
interface;
in response to determining that the resource associated
with the secondary component object model add-in extends the
graphical user interface, determining that the resource alters a
pre-existing functional operation that is executable within the
graphical user interface, the pre-existing functional operation
comprising a command in the graphical user interface;
in response to determining that the resource associated
with the secondary component object model add-in extends the
graphical user interface, determining that the command
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comprises a limited operation to which the digital rights
management governed by the primary component object model
add-in pertains; and
in response to determining that the command comprises
the limited operation, applying a remedial action that
comprises at least one of denying the command, disabling a
document to which the command is targeted, or disabling the
secondary component object model add-in.
Appeal Br. 21‒22, Claims Appendix (emphases added).

The Examiner’s Rejections2
Claims 1‒4, 6‒9, 11, 13, 14, and 16‒20 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 3‒5.
Claims 1‒4, 6‒9, 11, 13, 14, and 16‒20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dhanjal (US 2007/0055936 A1; Mar. 8,
2007) in view of Raley (US 2002/0108050 A1; Aug. 8, 2002). Final
Act. 6‒11.
ANALYSIS
Written Description
Claims 1–4, 6–9, 11, 13, 14, and 16–20
The Examiner rejects claim 1 for failing to comply with the written
description requirement, finding the Specification does not adequately

2 In the Final Action, the Examiner rejected claims 13 and 19 under
35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 5‒6.
However, the Examiner noted that the rejection was overcome in the
Advisory Action mailed January 12, 2018, after the filing of the Appeal
Brief. Advisory Act. 2. Accordingly, this rejection is not before us.
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convey to an ordinarily skilled artisan that the inventors had possession of
the limitations “determining that a resource associated with the secondary
component object model add-in extends the graphical user interface” and “in
response to determining that the resource associated with the secondary
component object model add-in extends the graphical user interface,
determining that the resource alters a preexisting functional operation that is
executable within the graphical user interface.” See Final Act. 3‒4, Ans. 6‒
7.
Appellant argues the Examiner erred because paragraphs 14, 17, 23,
and 25 of the Specification adequately support these limitations. See Appeal
Br. 16‒17, Reply Br. 4‒5. In particular, Appellant argues the Specification
discloses determining that an add-in modifies a GUI based on an
examination of the XML resources. See Appeal Br. 17 (citing Spec. ¶ 23).
Appellant argues the Specification discloses that an add-in modifies a GUI
by changing functions of the GUI. See id. (citing Spec. ¶ 14). Appellant also
argues the Specification discloses that an add-in could alter a previous
modification to a GUI. See id. (citing Spec. ¶ 17). Finally, Appellant argues
a determination can be made whether one or more commands of a COM
add-in comprise a limited operation. See id. at 17‒18 (citing Spec. ¶ 25).
Appellant also argues these paragraphs refer to control of both a primary
COM and a secondary COM, which are capable of extending a GUI. See
Reply Br. 4–5.
Appellant has persuaded us of Examiner error. As argued by
Appellant, the Specification discloses that add-ins may modify existing
functionality in a GUI, which supports the disputed limitation “determining
that the resource alters a preexisting functional operation that is executable
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within the graphical user interface.” See Appeal Br. 16‒17 (citing Spec.
¶¶ 14, 17, 23, 25). The Specification discloses one or more add-ins may alter
preexisting functionality, thus disclosing that this functionality may be
performed by a primary or secondary add-in. See Spec. ¶ 14. Thus, the
Specification provides sufficient support for the disputed limitations in claim
1.
For these reasons, we do not sustain the Examiner’s written
description rejection of independent claim 1. We also do not sustain the
written description rejection of independent claims 11 and 17, which recite
commensurate limitations. We do not sustain the written description
rejection of dependent claims 2–4, 6, 7, 9, 13, 14, 16, and 18–20 for the
same reasons.
Claim 8
The Examiner separately rejects claim 8 for failing to comply with the
written description requirement, finding the Specification does not
adequately convey to an ordinarily skilled artisan that the inventors had
possession of the limitation:
wherein subjugating the secondary component object model
further comprises: parsing an additional resource associated
with the secondary component object model add-in;
determining that the additional resource extends the graphical
user interface and alters a pre-existing functional operation that
is executable within the graphical user interface, the preexisting
functional operation comprising an additional command in the
graphical user interface; in response to determining that the
additional resource extends the graphical user interface,
determining that the additional command does not comprise a
limited operation to which the governed digital rights
management pertains; and in response to determining that the
additional command does not comprise a limited operation,
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passing the additional command to an operating system for
execution.
See Final Act. 4–5.
The Examiner finds the Specification discloses passing a command to
the operating system for execution, where the command is not a limited
operation, and that, alternatively, a command associated with a secondary
COM add-in may be overridden, disabling the associated COM add-in when
the command is a limited operation. Id. (citing Spec. ¶¶ 26‒27). The
Examiner concludes that these combined teachings fail to adequately support
the above limitations. Id.
Appellant argues the Examiner erred by failing to consider the entirety
of the Specification. See Reply Br. 5. The Specification describes, “a
determination may be made of one or more commands associated with at
least one of the COM add-ins that extend a GUI. At block 118 a
determination may be made whether the one or more commands comprise a
limited operation.” Spec. ¶ 25. Appellant argues the Specification discloses
determining whether one or more commands include a limited operation and
does not limit this procedure to a one-time operation or a single command.
See Reply Br. 5 (citing Spec. ¶ 25).
Appellant has persuaded us of Examiner error. The Specification
provides sufficient support for the limitations in claim 8, at least in the
combined teachings of paragraphs 25‒27. In particular, the Specification
discloses that a determination is made as to whether a COM add-in extends a
GUI, and an XML resource is parsed to determine whether the command is
directed toward a limited operation. Spec. ¶ 25. If no limited operation
exists, then the command is passed to the operating system. Id. ¶ 26.

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For these reasons, we do not sustain the Examiner’s written
description rejection of dependent claim 8.
Obviousness
Claim 1 recites “in response to determining that the resource
associated with the secondary component object model add-in extends the
graphical user interface, determining that the command comprises a limited
operation to which the digital rights management governed by the primary
component object model add-in pertains.” Claim 1 further recites “in
response to determining that the command comprises the limited operation,
applying a remedial action that comprises at least one of denying the
command, disabling a document to which the command is targeted, or
disabling the secondary component object model add-in.”
The Examiner finds the combination of Dhanjal and Raley teaches or
suggests these limitations. See Final Act. 6‒11, Ans. 3‒5. In particular, the
Examiner finds Dhanjal discloses a primary component object module add-
in and a secondary component object module add-in that alters the primary
add-in. See Ans. 3‒4. The Examiner finds Raley discloses that DRM
governs modifications to the interface. See id. at 4. The Examiner finds the
combination of these teachings discloses the enforcement of usage rights for
digital content. See id.
Appellant argues the Examiner erred because an ordinarily skilled
artisan would not have been motivated to combine the references as
proposed by the Examiner. See Appeal Br. 12‒13, Reply Br. 2. Appellant
has persuaded us of Examiner error. The Examiner finds and ordinarily
skilled artisan would have been motivated to combine Dhanjal with Raley
“in order to enforce usage right for digital contents.” See Final Act. 8.
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However, the Examiner’s finding is not supported by any rational
underpinnings regarding how the combined teachings of Dhanjal and Raley
disclose the language of claim 1. In particular, the Examiner fails to provide
the necessary rational underpinnings for applying the digital right
management teachings of Raley to the primary component object model
add-in. Rather, Dhanjal discloses that a third-party COM add-ins can modify
a user interface based on the XML file of one or more add-ins (see Dhanjal
¶ 39), while Raley teaches that a host GUI can disable commands based on
the DRM of the host program (see Raley ¶ 74). However, neither reference
teaches applying the DRM from a primary add-in to determine whether to
apply a remedial action to a secondary add-in. Thus, the proposed
modification of Dhanjal in view of Raley requires additional changes that
are not explained by the Examiner, nor does the Examiner provide adequate
rationale for such changes.
For these reasons, we do not sustain the Examiner’s obviousness
rejection of independent claim 1.3 We also do not sustain the obviousness
rejection of independent claims 11 and 17, which recite commensurate
subject matter, or dependent claims 2‒4, 6‒9, 13, 14, 16, and 18‒20.

3 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.
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Application 12/184,129

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CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1‒4, 6‒9, 11,
13, 14, 16‒20
112, first
paragraph
Written
Description
1‒4, 6‒9, 11,
13, 14, 16‒20
1‒4, 6‒9, 11,
13, 14, 16‒20
103 Dhanjal,
Raley
1‒4, 6‒9, 11,
13, 14, 16‒20
Overall
Outcome
1‒4, 6‒9, 11,
13, 14, 16‒20

REVERSED