Ex Parte Malone et al

Board of Patent Appeals and Interferences

Jun 8, 2009

10679028 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL R. MALONE, ALEXANDER K. SCHOWTKA,
and ROBERT DULANEY
____________

Appeal 2008-004754
Application 10/679,028
Technology Center 2100
____________

Decided:1 June 8, 2009
____________

Before JAMES D. THOMAS, LANCE LEONARD BARRY,
and JAY P. LUCAS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-004754
Application 10/679,028

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-11, and 13. We have jurisdiction under 35 U.S.C.
§ 6(b).

We Affirm.

INVENTION
Appellants’ invention relates to automated electronic document design
systems and methods for designing and modifying product templates. When
a user initiates a product design session, a product template is presented for
user editing and a product description identifier is assigned to the product
being designed. Document templates are assembled from individual
composite elements. The individual identifiers of the component elements
that make up the template being viewed by the user are associated with the
description identifier. Tools are provided to allow a user to change one or
more of the composite elements of the template. When a user changes an
element, the identifier of the newly selected element is associated with the
description identifier. Component elements of one template can be
individually used, as appropriate, to prepare customized templates for
another part of the same document or for different documents.
(Abst., Spec., 18).

Appeal 2008-004754
Application 10/679,028

3
REPRESENTATIVE CLAIMS
Claims 1 and 8 further illustrate the invention, and are reproduced
below:
1. A computer-implemented method comprising

receiving a user request to initiate a product design session using a
selected template,

in response to the request, associating a product description identifier
with a plurality of component element identifiers, each component element
identifier identifying a component element of the selected template,

displaying the selected template to the user,

providing one or more tools allowing the user to change at least one
component element of the template,

in response to each user change of a component element, associating
the element identifier of the new component element with the product
description identifier and modifying the displayed template to reflect the
change,

using at least some of the element identifiers associated with the
product description identifier as element identifiers of a different template,
and

displaying the different template to the user.

8. A computer-implemented method comprising

receiving a user request to initiate a product design session using a
selected template,
Appeal 2008-004754
Application 10/679,028

4
in response to the request, associating a product description identifier
with a plurality of component element identifiers, each component element
identifier identifying a component element of the selected template,

displaying the selected to the user,

displaying to the user identifiers associated with one or more earlier
products associated with the user, and

in response to user selection of one of the earlier product identifiers,
associating at least one of the component element identifiers of the selected
earlier product with the product description identifier and modifying the
displayed template to reflect the change.

PRIOR ART AND EXAMINER’S REJECTION
The Examiner relies upon the following references as evidence of
unpatentability:
Friedman US 2003/0208556 A1 Nov. 6, 2003
(filed Oct. 18, 1999)

Fuwa US 2005/0102151 A1 May 12, 2005
(filed Dec. 25, 2001)

All claims on appeal, claims 1, 3-11, and 13, stand rejected under
35 U.S.C. § 103. As evidence of obviousness, the Examiner relies upon
Friedman in view of Fuwa.

Appeal 2008-004754
Application 10/679,028

5
Claim Groupings
According to page 10 of the principal Brief on appeal, Appellants rely
for a patentability of independent claim 11 upon those arguments presented
for independent claim 1, and for patentability of independent claim 13 based
upon arguments presented for independent claim 8. No dependent claim on
appeal is argued before us.

ISSUE
Have Appellants shown that the Examiner erred in concluding that the
combination of Friedman and Fuwa teaches the subject matter of
representative independent claims 1 and 8 on appeal?

FINDINGS OF FACT
1. We reproduce the following paragraphs from Appellants discussion
of the admitted prior art at Specification pages 1 and 2:
[0003] To provide an alternative to the above approaches, printing
service providers, taking advantage of the capabilities of the Web and
modem Web browsers, provide document design services for user's
desiring to create customized documents from any computer with
Web access at whatever time and place is convenient to the user.
These service providers typically provide their customers with the
ability to access the service provider's web site, view product
templates, and enter information to create a customized markup
language document. In a typical Web-based system, editing is usually
limited to allowing the user to add, modify and position text and
perhaps upload images for incorporation into the product design.

Appeal 2008-004754
Application 10/679,028

6
[0004] Pre-designed document templates that can be individually
selected and downloaded to assist the user in creating a personalized
document in the user's browser are known in the art. Some service
providers offer templates having similar designs for a range of
products so that an individual or business can design and order
different products, such as business cards, letterhead, brochures,
presentation folders, and return address labels, that share a common
look and style. For each type of product, a number of different
templates with various images and design features are provided to
offer the user a range of design choices.

[0006] When the user selects a desired template, the information
required to render the template is downloaded to the user's computer
system along with downloaded software tools that can be employed
by the user to create a personalized electronic document. For a two-
sided product, such as a folded card, the templates for the front and
the inside of the card are usually provided separately with the front
being provided for editing first.

2. Fuwa teaches an overall system in Figure 1 which includes a
template database 9b, a product information database 9c, a customer
management database 9e, an order management database 9f, and a handling
product database 9g. The image data creating portion 8 in Figure 1 shows a
preview creating portion 81 and a normal image creating portion 82. Figure
12 and paragraphs [0083-0084] indicate the user’s ability to select from a
plurality of different products and to select any template for customization.
3. In association with a flowchart Figure 13, a user in Fuwa may
desire a preview image for customization of a template selected in Figure
12/15. Figure 14 shows a user or customer information image associated
Appeal 2008-004754
Application 10/679,028

7
with the template selected as well as the nature of the variable element
identifier selected by the user along with address-type information.
Beginning at least with paragraph [0120] through the end of the patent
publication, it is made clear that the user has the ability to preview images
selected for ordering.

ANALYSIS
At the outset, we note that the principal Brief on appeal does not argue
that the references are not properly combinable within 35 U.S.C. 103.
Therefore, we do not cite any governing case law relevant to this statutory
section. The thrust of Appellants’ arguments is that the combined teachings
do not teach the subject matter claimed. We disagree with this view.
Representative independent claims 1 and 8, for example, relate to a
“computer-implemented method” which does not necessarily require the
steps in the body of these claims to be performed by a computer. The actual
recitations of the steps themselves alleged not to be present are permitted to
be exercised by the user’s normal usage of the computerized order taking
systems of Friedman and Fuwa.
Page 6 of the principal Brief admits that three of four alleged features
found by the Examiner in Friedman are taught in this reference but disputes
the fourth feature. This latter feature relates to the association of an element
identifier of a new component element with a product description identifier
and the modification of a display template to reflect the change. Appellants
Appeal 2008-004754
Application 10/679,028

8
also admit that this modification feature is in Friedman but only generally
contests that the association capability is not taught in this reference. The
Examiner properly notes at the top page 15 of the Answer that the
Appellants’ arguments are not specific and no rationale is offered as to why
Appellants believe the Examiner is in error. Moreover, from our
perspective, Appellants do not contest what the Examiner relies upon in
Friedman for the feature.
From our perspective as well, the user is free to associate any element
identifiers such as a color or font chosen for any product with any other
product and to perform a modification or change of any selected product or
identifier within the same or different orders, and the same or different
products and their different templates. This relates to the operability by a
customer of both Friedman’s and Fuwa’s systems.
The bottom of page 6 begins of the Brief discussion where Appellants
dispute what the Examiner realizes upon Fuwa. The first disputed feature
relates to the association of the product description identifier with a plurality
of component element identifiers where these component identifiers identify
component elements of a selected template. This argument is much like the
feature already addressed with respect to Friedman. Still, the user within
Fuwa is clearly permitted to perform any association of any product or any
template associated with a given product or any different product, including
component identifiers such as color or font etc. We do not regard the
Examiner’s view that a product description identifier is expansive and
Appeal 2008-004754
Application 10/679,028

9
arbitrary as correlated to categories of products. Nor do we regard as
expansive and arbitrary the Examiner’s correlation of a product component
element identifier to categories of products as argued at the bottom of page 7
of the principal Brief and at pages 1 and 2 of the Reply Brief. Appellants, in
effect, are inviting us to read from the Specification into the claims features
that are not recited in the claims, and to give patentable weight to labels
attached to data or data structures that are not tangible elements. Based
upon the nature of the disclosed and claimed invention, and in view of the
applied prior art, the Examiner’s views are not considered to be overly
expansive but broad and reasonable.
The second feature alleged not to be in Fuwa is the nature of the
recitation of different templates and the ability of using at least some of the
element identifiers associated with a product description identifiers as
element identifiers of a different template. Again, the association or use is
clearly within the ability of the user to choose among different products,
which encompass the claimed different templates, where both references and
their collective teachings indicate the ability to present to the customer
choices of different templates for different products or for the same product.
These features as well as the displaying of a different template to a
user are clearly known in the art as evidenced by findings of fact 2 and 3 at
least as associated with Fuwa.
The association feature argued at pages 8-10 of the principal Brief
related to claim 8 essentially has been addressed by our discussion earlier in
Appeal 2008-004754
Application 10/679,028

10
this opinion as to the feature of association recited in independent claim 1.
Finding of fact 3 clearly indicates to the reader that Fuwa teaches the ability
of displaying to the user ordered products.
In contrast to the assertions made at pages 4 and 5 of the Reply Brief,
Fuwa does teach displaying to the user identifiers associated with the
broadly recited earlier products associated with the user. The ability of
Fuwa’s system to retain information about past orders, as recognized at the
middle of page 4 of the Reply Brief, includes the ability, based upon the
password of the user, to call up past orders. Additionally, the association of
the broadly recited earlier products associated with the user includes the
same or different product within the same time frame of an order being made
by the customer. As noted earlier, within Fuwa and Friedman, the user is
free to broadly associate features such as color and font as component
element identifiers of different products within the same order or the same
product with different features within the same order, with one of the orders
done earlier in time. The user is free to associate the same or different fonts
or colors among the same or different orders.
The features argued not to be in the combination of Friedman and
Fuwa appear to have been admitted to be in the prior art according to
Appellants’ admissions set forth in certain paragraphs within finding of fact
1. The ability to have different products share a common look and style, as
noted in paragraph [0004] of the admitted prior art, fall within this finding,
Appeal 2008-004754
Application 10/679,028

11
and applies to the use of different templates and the same or different
choices of various images and design features available to the customer.
Paragraph [0006] reproduced in finding of fact 1 indicates that the
user may select a desired template to which is automatically downloaded
software “tools” that the user may utilize to create a personalized electronic
document, thereby permitting an association of a selected template with
certain tools and user changes that may be effected by the use of these tools.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in concluding that
the combination of Friedman and Fuwa teaches the argued features among
representative independent claims 1 and 8 on appeal.

DECISION
The Examiner’s rejection under 35 U.S.C. § 103 of all claims on
appeal, claims 1, 3-11, and 13, is Affirmed. All claims are unpatentable.

Appeal 2008-004754
Application 10/679,028

12
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).

AFFIMRED

rwk

VISTA PRINT USA, INC.
ATTN: PATENT COUNSEL
95 HAYDEN AVENUE
LEXINGTON, MA 02421