UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/049, 192 03/14/2008
72058 7590 06/24/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Randall Edmunds
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.
58083-375307 (B676) 6371
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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@kilpatrickstockton.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL EDMUNDS, MITSUKO YONEY AMA,
and CHRISTOPHER BANK
Appeal 2014-003443
Application 12/049,192 1
Technology Center 2100
Before JOHN A. EVANS, JOHN A. HUDALLA, and KAMRAN IlVANI,
Administrative Patent Judges.
HUDALLA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1---6, 9, 12-26, and 28-32. Claims 7, 8, 10, 11, and 27 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affrrm-in-part.
1 According to Appellants, the real party in interest is Adobe Systems
Incorporated. App. Br. 4.
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Application 12/049, 192
THE INVENTION
Appellants' invention is directed to managing related files in a
software development environment. Spec. ,-r 17. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method comprising:
discovering, by a software development tool executed by
a processor, a plurality of related files for generating an output
presentation document, wherein discovering the plurality of
related files comprises:
receiving at least one main file comprising
executable code for generating the output presentation
document, wherein the executable code includes
references to each of the plurality of related files,
wherein at least some of the plurality of related files
comprise additional executable code for generating the
output presentation document;
automatically identifying the plurality of related
files from the references in the executable code of the at
least one main file;
presenting, by the software development tooi a
development interface comprising:
a design view interface comprising a preview of
the output presentation document generated from
executing the at least one main file and the plurality of
related files,
a common graphical interface separate from the
design view interface, wherein the common graphical
interface comprises a plurality of visual indicators,
wherein each visual indicator is associated with a
respective related file of the plurality of related files, and
a code view interface configured to selectively
present the executable code of the at least one main file
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and to selectively present at least some respective
additional executable code of a selected related file in
response to a selection of at least one of the plurality of
visual indicators corresponding to the selected related
file·
'
wherein the design view interface, the common
graphical interface, and the code view interface are
simultaneously presented within the development
interface and;
responsive to a selection of at least one visual indicator
of the plurality of visual indicators, presenting, by the software
development tooi content of at least one related file of the
plurality of related files in the code view interface, wherein the
content comprises executable source code of the at least one
related file.
App. Br. 26-27 (Claims App.).
THE EXAMINER'S REJECTIONS
Claims 1---6, 12-14, and 29-32 stand rejected under 35 U.S.C. § 112,
frrst paragraph, as failing to comply with the written description
requirement. Final Act. 2.
Claims 1---6, 9, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hiew (US 2005/0229154 Al, Oct. 13, 2005), Suzuki (US
2005/0120292 Al, June 2, 2005), and Cheryl D. Wise, Foundations of
Microsoft Expression Web: The Basics and Beyond, 1-23 (May 2007)
(hereinafter "Wise"). Final Act. 3-15.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hiew, Suzuki, Wise, and Zak Ruvalcaba, Managing
Website Content Using Contribute (ch. 13), in Macromedia Dreamweaver 8
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Application 12/049, 192
Unleashed, 424--30 (Oct. 2005) (hereinafter "Macromedia"). Final Act. 16-
19.
Claims 29-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hiew, Suzuki, Wise, Berstis (US 6,182,122 Bl, Jan. 30, 2001), and Zak
Ruvalcaba, Integrating with Fireworks and Photoshop (ch. 18), 639-55 &
Integrating with Flash (ch. 19), 670-79, in AdobeDreamweaver CS3
Unleashed (Oct. 2007) (hereinafter "Adobe"). Final Act. 20-27.
Claims 15-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hiew, Berstis, and Zak Ruvalcaba, The Dreamweaver CS3 Inteiface
(ch. 1), 3-7 & Integrating with Fireworks and Photoshop (ch. 18), 639-55,
in Adobe Dreamweaver CS3 Unleashed (Oct. 2007) (hereinafter "Adobe").
Final Act. 28-35.
Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hiew, Berstis, Adobe, and Macromedia. Final Act. 35-
39.
Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hiew, Berstis, and Adobe. Final Act. 40-44.
ISSUES
Does the Examiner err in fmding claim 1 lacks adequate written
description in Appellants' Specification?
Does the Examiner err in fmding the combination of Hiew, Suzuki,
and Wise teaches or suggests (1) "a design view interface comprising a
preview of the output presentation document generated from executing the at
least one main file and the plurality of related files"; and (2) "the design
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Application 12/049, 192
view interface [and] the common graphical interface ... are simultaneously
presented within the development interface," as recited in claim 1?
Does the Examiner provide adequate reasons for the combination of
Hiew, Suzuki, and Wise in the rejection of claim 1?
Does the Examiner err in fmding the combination of Hiew, Berstis
and Adobe teaches or suggests "responsive to a selection in the common
graphical interface of a visual indicator corresponding to at least one file of
the subset, executing, by the software development tool, a non-textual
content editor for editing the non-textual content," as recited in claim 15?
Does the Examiner err in fmding the combination of Hiew, Suzuki,
Wise, Berstis, and Adobeteaches or suggests "excluding, by the software
development tooi the second subset comprising the non-textual content
from the common graphical interface," as recited in claim 29?
ANALYSIS
A. Written Description Rejection of Claims 1-6, 12-14, and 29-32
The Examiner fmds claim 1 does not comply with the written
description requirement of§ 112, frrst paragraph, because "[t]here is no
evidence in [the] specification to point out" the limitation "a common
graphical interface separate from the design view interface." Final Act. 2.
The Examiner fmds that tabs 103A-D in Figure IA and toolbar 22 in Figure
2C, which the Examiner maps to the "common graphical interface," are not
separate from the design view "because both are components of software
development tool and associate[ d] with each other." Final Act. 2; Ans. 5.
Citing paragraphs 35 and 37 of the Specification, Appellants argue
that "visual indication (e.g., tabs, list, etc.) 103A-103D" are "separate from
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Application I2/049, I92
the design view interface (i.e., the design view I02 described at paragraph
[0037])." App. Br. 9. Appellants also cite the Examiner's annotated version
of Figure IA, which is reproduced below.
Ans. 5. In this annotated version ofFigure IA, the Examiner points out the
recited common graphical interface and the design view. Id. Appellants
contend that, in this annotated figure, "[t]he common graphical interface is
clearly depicted as being kept apart from the design view I 02 by the
intervening codeview IOI." Reply Br. 7-8.
We are persuaded by Appellants' arguments. The Examiner's
annotated version of Figure IA highlights that design view I 02 is separated
from tabs I03A-D, which comprise the "common graphical interface."
Ans. 5; Spec. ,-r 35. This is further supported by paragraphs 35 and 37 of the
Specification, which describe tabs I 03A-D as being a separate portion of
software development tool I2 from design view I02. See Spec. ,-r,-r 35, 37.
Accordingly, we are persuaded that the recitation "a common graphical
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interface separate from the design view interface" fmds support in the
Specification in compliance with § 112, frrst paragraph. Forthis reason, we
do not sustain the Examiner's rejection of claim 1 under § 112, frrst
paragraph. We also do not sustain the written description rejections of
claims 2---6, 9, 12-14, and 29-32, which are based on the same analysis. See
Final Act. 2.
B. Obviousness Rejections of Claims 1-6, 9, and 12-14
In the obviousness rejection of claim 1, the Examiner cites Wise for
teaching simultaneous presentation of a design view interface and a common
graphical interface. Final Act. 10 (citing Wise 20-21, Fig. 1-15).
Specifically, the Examiner maps Wise's document tabs to the recited
common graphical interface with a "plurality of visual indicators." Id. at 7
(citing Wise 20, Fig. 1-12). The Examiner maps Wise's "design view
interface comprising a preview of the output presentation document
generated from executing the at least one main file and the plurality of
related files" to the recited design view of claim 1. Id. (citing Wise 20-21,
Fig. 1-14).
The Examiner further explains the basis of the rejection with reference
to an annotated version of Figure 1-15 ofWise, which is reproduced below.
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Application 12/049, 192
E~nn:~.·1-.~i&-- f }~'f ng Sfl!i/ fi'f:t:~ivF~r.~~,·9u ~·- .f~pri-?·1::::.:'.·tu u)'ft.~d~8tJ k~f.:? yr.~~{ .?-"ee ~?·9f {~ ~)j_:~:h~ .fJN:tf de~ {gff
af. du:: ~~~~JH~~ tl~;:c?ee,
Ans. 9. In this annotated version ofFigure 1-15, the Examiner maps the
Wise's tabbed document "index.html'' to a "main file" and "fewd.css"to one
of the "related files." Id. Delving into the text within Figure 1-15, the
Examiner fmds the following:
When index.html file is selected, source code of the index.html
file is shown in code view. Note that in code view area,
includes atworld.png (i.e. imagefile) and at
includes the content of index.html.
Cascading Style Sheet (css)is not new in the art. CSS is used
to create a unifl:ied] look for the website.
When index.html is selected, Design view shows the content of
index.html (i.e. main file) and atworld.png (i.e. related file), the
look and style of index.html is formatted based on fewd.css file
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(i.e. related files) as a preview of 3 files: index.html,
atworld.png, and fewd.css[.]
Id. at 10.
Appellants contend the Examiner's obviousness combination does not
teach or suggest simultaneously presenting "a preview of an output
presentation document generated from executing a main file and multiple
related files and a set of visual indicators associated with the related files."
App. Br. 13. Specifically, Appellants focus on the word "executing" and
contend the Examiner cites "no evidence that the design view depicted in
Hiew [sic, Wise2] Fig. 1-15 involves executing the 'fewd.css' file." Reply
Br. 10 (citing Ans. 9-10). Appellants also contend that, "[a]t best, [Wise]
Fig. 1-15 depicts a design view generated by executing the 'index.html' file
(which references the 'atworld.png' file) and presenting data from the
'atworld.png' image file rather than 'executing' the 'atworld.png' image
file." Id. As such, Appellants attempt to distinguish executing an HTML
file from "simply presenting data." Id.
We are not persuaded by Appellants' arguments. The Examiner
establishes Wise teaches that document tabs (i.e., the "common graphical
interface ... [which] comprises a plurality of visual indicators") and the
design view (i.e., "a preview of the output presentation document") are
simultaneously presented in Wise's split view. Final Act. 10 (citing Wise
20-21, Fig. 1-15). Appellants acknowledge that Wise's Figure 1-15 depicts
a design view generated by, at least, execution of a main file, "index.html."
2 In the quoted section of the Reply Brief, Appellants mistakenly and
repeatedly reference Hiew when the context makes plain that Appellants
intended to reference Wise.
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Reply Br. 10; see also Ans. 9-10 (setting forth the Examiner's fmdings
regarding "index.html''). Therefore, the only remaining issue is whether the
files mapped by the Examiner to the recited "related files," namely
"atworld.png" and "fewd.css," are "executed" to generate the design view,
in accordancewith claim 1.
To decide this issue, we consider the broadestreasonable
interpretation of"executing" in the limitation "a preview of the output
presentation document generated from executing the at least one main file
and the plurality of related files" from claim 1. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). At the outset, we observe
that Appellants' Specification does not appear to set forth a lexicographic
defmition of "executing," and Appellants do not present arguments in
support of a lexicographic defmition. Instead, Appellants would have us
construe "executing" to exclude the act of presenting data from an image
ftle, such that dispiaying the "atworid.png" image ftle as part of a iarger web
page (i.e., "a preview of the output presentation document") would not
qualify as "executing" a "related file[]." Reply Br. 10.
Appellants' Specification states the following regarding the design
view interface's use of main file 16A and related files 16B-16D:
[D]evelopment tool 12 is operable to present one or more user
interfaces with which a user (e.g., designer) may interact to
author a document, such as the source files 16A-16D, that
defmes an output presentation document (e.g., web page), such
as output presentation document 104, to be generated when
read/interpreted by a browser, such as browser 18. In this
example, development tool 12 presents a code view interface
101 and a design view (or "display view") interface 102.
Development tool 12 may employ technology similar to that
employed by browsers to read a code document (e.g., of code
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view 101) and display in design view 102 the corresponding
page that is generated from such code. Accordingly, such
design view 102 may provide developers the ability to view and
edit a web page in a visual mode in which the underlying
source code (e.g., HTML code, XML code, CSS code, etc.) has
been rendered, as if on a web browser.
Spec. ,-r 31 (emphases added). Accordingly, generating an output
presentation document for the design view is associated with the function of
a browser interpreting and rendering source files for a web page. See id.
Based on this description, we determine the broadestreasonable
interpretation of"executing" includes interpreting and rendering.
In view of our interpretation, we agree with the Examiner that Wise's
displaying of"atworld.png,"which is an act of rendering an image, teaches
"executing" a "related file[]." See Ans. 10. The Examiner's fmding is
further supported by the following statement regarding the use of image files
in an output presentation document from the Background section of the
Specification:
[T]he main HTML file for a web page may be authored to
defme certain content and/or reference one or more other
related files that provide certain content (e.g., image files) that
is desired to be presented in an output presentation document
that is to be generated when the web page is interpreted by an
interpreter program (such as a client browser).
Spec. ,-r 9. Regarding the Examiner's fmding that Wise's design view is
"formatted based on fewd.css file," Ans. 10, such formatting is an act of
interpreting that also is within the purview of the recited "executing." The
Examiner's fmding regarding "fewd.css"is further supported by the
Background section of the Specification, which states "style sheets, such as
cascading style sheet ('CSS'), are commonly employed to help readers of
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web pages (e.g., browsers) to defme visual layout ofa web page's content,
such as colors, fonts, layout, and other aspects of document presentation."
Spec. ,-r 9. Accordingly, we are not persuaded by Appellants' arguments
related to "executing."
Appellants also contend the Examiner has not provided adequate
reasons for combining the Examiner's groupings of cited references. See
App. Br. 15; Reply Br. 5. Specifically, claims 1---6, 9, and 12 stand rejected
based on the Examiner's three-way obviousness combination between Hiew,
Suzuki, and Wise, whereas claims 13 and 14 stand rejected based on the
Examiner's four-way obviousness combination ofHiew, Suzuki, Wise, and
Macromedia. See Final Act. 3-19. Although Appellants acknowledge that
the Examiner has provided reasons for individually combining Hiew with
each ofthe other cited references, see App. Br. 14--15 (quoting Final Act. 7,
11-12, 18); Reply Br. 5 (quoting Ans. 12-14), Appellants argue the
Examiner has failed to provide a rationaie for collectiveiy combining the
three or four references together as groups. App. Br. 15; Reply Br. 5.
We observe that Appellants do not attack the propriety of the
Examiner's rationale for combining Hiew with each of the other references;
rather, Appellants' argument only pertains to the overall combinations.
Considering that the Examiner's rejections are all rooted in Hiew' s
"Integrated Development Environment" as being analogous to the recited
"software development tool" of the rejected claims, see Final Act. 3--4
(quoting Hiew ,-r,-r 7, 42, 49), we do not fmd error in the Examiner's decision
to key the rationale for the combinations to the basic teachings of Hiew. The
Examiner's rationale reflects that, "in many cases[,] a person of ordinary
skill will be able to fit the teachings of multiple [references] together like
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pieces of a puzzle." KSRint'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
In the absence of any substantive argument from Appellants as to why an
ordinarily skilled artisan would not have combined the "pieces of a puzzle"
in the way posited by the Examiner, we are not persuaded of error in the
Examiner's rationale.
For these reasons, we sustain the Examiner's obviousness rejections
of claim 1, and of claims 2---6, 9, and 12-14, not argued separately with
particularity. See App. Br. 14--15; Reply Br. 5, 11.
C. Obviousness Rejections of Claims 15-26, 28, and 30-32
Claim 15 recites "responsive to a selection in the common graphical
interface of a visual indicator corresponding to at least one file of the subset,
executing, by the software development tooi a non-textual content editor for
editing the non-textual content." App. Br. 29. The Examiner cites Adobe
for teaching the selection of tabs as visual indicators for selecting source
files, Final Act. 30; Ans. 15, 17 (both citing Adobe?)), and the use ofanon-
textual content editor for editing images as source files. Final Act. 31 (citing
Adobe649-50); Ans. 16, 18 (citing Adobe642). The Examiner fmds Adobe
teaches that a user selects an appropriate tab and then executes a graphic
editor. Ans. 16-19.
Appellants argue Adobe does not teach "that an external editor for
editing an image is launched responsive to a selection of one of the tabs."
App. Br. 16 (citing Adobe 7). According to Appellants, "an external editor
for editing an image is launched responsive to a selection of an 'Edit' button
rather than a selection of one of the tabs." Id. (citing Adobe 7, 642--43). As
such, Appellants characterize Adobe as teaching ''first selecting a tab for
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non-textual content, and then performing a separate, independent action to
execute a graphic editor for editing the non-textual content." Reply Br. 3.
We are persuaded by Appellants' arguments. The Examiner's
citations to Adobe establish two independent teachings: (1) that source files
can be selected with tabs, see Adobe 7; and (2) that images can be edited
directly in a software development tool. See id. at 642, 649-50. None of the
Examiner's citations establishes that editing is accomplished "responsive to
a selection" of a tab, however, as is recited in claim 1. Furthermore, we
agree with Appellants that Adobe teaches a separate action of clicking an
"Edit" button to launch an image editor that is not associated with selecting a
tab. App. Br. 16 (citing Adobe 642--43); Reply Br. 3 (citing Adobe 640-42).
The Examiner neither cites a teaching linking these two actions nor provides
a rationale as to why linking the two actions would have been obvious. In
fact, the Examiner seemingly acknowledges the separateness of the
teachings in the Answer. See Ans. 17 (citing Adobe for teaching that "[a]
user must select a tab for [a] file contain[ing] non-textual content frrst, and
then edit the non-textual content"). For these reasons, we do not sustain the
Examiner's rejection of claim 15. We also do not sustain the rejections of
claims 16-26, 28, and 30-32, which all recite substantially the same
"responsive to" limitation as claim 15 and are rejected on substantially the
same bases.
D. Obviousness Rejection of Claim 2 9
Claim 29 depends from claim 1 and further recites:
determining, by the software development tool, that a frrst
subset of the plurality of related files comprises textual content
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and a second subset of the plurality of related files compnses
non-textual content;
excluding, by the software development tooi the second
subset comprising the non-textual content from the common
graphical interface.
App. Br. 32 (Claims App.). In the obviousness rejection of claim 29, the
Examiner cites Bers tis for teaching determining frrst and second subsets of
related files based on textual and non-textual content. Final Act. 20-21
(citing Berstis 9:65-10:5, 10:17--47). The Examiner fmds Berstis teaches a
"chosen file is parsed to retrieve related or linked files ... [that] are in
textual file format such as html files and/or in non-textual file format such as
graphic or sound files." Ans. 23. In addition, the Examiner cites Adobe for
teaching the "excluding" step. Final Act. 21-22 (citing Adobe introduction,
642--45). The Examiner fmds Adobe's image editing function allows a user
to select an image in a software development tool (e.g., Dreamweaver) and
then be taken to an image editing environment outside the software
development tool. Id.; Ans. 23.
Appellants argue Berstis's "[r]etrieving an HTML file together with
graphics, sound, and motion video files referenced therein unless a size
constraint on a referenced file would be violated is not the same as or
suggestive of' the "excluding" step. App. Br. 19 (citing Berstis 10:31-55).
Appellants further argue that Adobe's "Edit" button function that launches
an external image editor does not teach or suggest the "excluding" step. Id.
(citing Adobe 642--43).
The word "exclude" does not appear in Appellants' Specification.
The only example in the Specification where content is subdivided into
textual and non-textual subsets appears in paragraph 55 of the Specification,
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which describes "load[ing] the non-textual content into an appropriate editor
for editing, such as an image editor (e.g., ADOBE PHOTOSHOP, etc.)for
editing image files." Spec. ,-r 55. In this sense, the non-textual image
content is "excluded" from a software development tool (e.g.,
Dreamweaver) when it is edited in the image editor (e.g., Photoshop). See
id. This is exactly what is taught by Ado be, which describes launching
Photoshop forediting images. See Adobe643. Adobe also teaches
"retum[ing] to Dreamweaver" from Photo shop when editing is complete,
which further supports the notion that the image had been excluded when it
was in the image editor. Id. at 645. Therefore, because Adobe teaches at
least as much as Appellants' Specification regarding the recited "excluding,"
we are not persuaded by Appellants' arguments.
Appellants additionally argue that combining "Berstis and Adobe
would change the principle of operation ofBerstis and render Berstis
inoperabie for its intended purpose." App. Br. 21. Specifically, Appellants
highlight that Berstis "discloses that when retrieving Web site information
for caching, complete pages are preferably retrieved rather than partial pages
(e.g., ignoring sound files) unless size constraints would be violated (e.g.,
the page includes unusually large motion video files)." App. Br. 19.
Therefore, Appellants contend that this teaching is incompatible with
"excluding" non-textual files, as recited in claim 29. See id. We are not
persuaded by this argument, however, because Berstis itself teaches
excluding "unusually large motion video files" from a retrieved web page, as
Appellants acknowledge. See id. at 19 (citing Berstis 10:31-55). Forthese
reasons, we sustain the Examiner's rejection of claim 29.
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DECISION
The Examiner's rejection of claims 1---6, 12-14, and 29-32 under
35 U.S.C. § 112, frrst paragraph, is reversed.
The Examiner's rejections of claims 1-6, 9, 12-14, and 29 under
35 U.S.C. § 103(a) are affmned.
The Examiner's rejections of claims 15-26, 28, and 30-32 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F .R. § 1.136(a)(l ).
AFFIRMED-IN-PART
17
