Ex Parte Ponce et al

Board of Patent Appeals and Interferences

Sep 13, 2010

10096122 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAFAEL ANTONIO MARTINEZ PONCE
and ALEJANDRO WIECHERS
____________

Appeal 2009-007543
Application 10/096,122
Technology Center 2100
____________

Before JOHN A. JEFFERY, LANCE LEONARD BARRY, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants invented a system for producing customized documents
that modifies the format of an “intelligent template” by adjusting the
template’s variable data fields that accommodate user data. See generally
Spec. 1, 9; Fig. 4. Claim 1 is illustrative with the key disputed limitation
emphasized:
1. A method of producing a customized document, the method
comprising:

designing at least one intelligent template for the customized
document;

enabling use of the at least one intelligent template, including
maintaining a database including the at least one intelligent template;

retrieving an intelligent template for the customized document from
the database including the at least one intelligent template; and

customizing the intelligent template for the customized document,
including modifying a format of the intelligent template for the customized
document to create an intelligent document,

wherein the intelligent template includes at least one variable data
field, and wherein modifying the format of the intelligent template includes
adjusting the at least one variable data field to accommodate data of a user.

The Examiner relies on the following as evidence of unpatentability:
Bridgeland WO 01/011491 A1 Feb. 15, 2001

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THE REJECTION
The Examiner rejected claims 1-28 under 35 U.S.C. § 102(b) as
anticipated by Bridgeland. Ans. 4-11.2

CONTENTIONS
Regarding representative claim 1, the Examiner finds that
Bridgeland’s system customizes documents via an “intelligent template”
which is said to contain “variable data fields” in Figure 8 that are “adjusted”
to accommodate user data via associated dropdown menus. Ans. 4-6, 13.
Appellants argue that Bridgeland does not adjust a variable data field
as claimed, but rather adjusts the associated data for the fields (i.e., via
enlarging or reducing its size). App. Br. 5-7; Reply Br. 2-4 (emphasis
added). That is, Bridgeland’s data is said to be adjusted—not the fields
themselves. Id. Appellants add that Bridgeland’s Figure 8 merely presents
fields for user information, but there is no choosing and locating data with
the system as the Examiner asserts. Reply Br. 4. The issue before us, then,
is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that modifying the format of Bridgeland’s intelligent template includes
adjusting at least one variable data field to accommodate user data?

2 Throughout this opinion, we refer to (1) the Appeal Brief filed June 26,
2008; (2) the Examiner’s Answer mailed October 6, 2008; and (3) the Reply
Brief filed December 8, 2008.
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FINDINGS OF FACT (FF)
1. Bridgeland’s system interactively and automatically designs
products with graphic images and artistic layouts (e.g., stationery, business
cards, etc.) for customers online according to specified user preferences.
Based on the customer’s input and preferences, the system (1) presents the
customer with a reconfigurable design template, and (2) solicits feedback on
this proposed design, including customer revisions. Bridgeland, Abstract;
1:6-17; 12:10–14:7; Fig. 1.
2. Figures 2 through 12 illustrate exemplary screens that Bridgeland’s
design system presents to a user. After selecting a particular preliminary
design in Figure 7, the user personalizes the product by entering user-
specific information as shown in Figure 8. To this end, fields are provided
for (1) the user’s name; (2) title; (3) company name; (4) a separate message;
(5) address; (6) telephone and fax numbers; (7) email address; and (8) web
address. The information provided in these fields is then incorporated into
the selected design. Bridgeland, 18:22–24:13; Figs. 2-12.
3. In Figure 8, Bridgeland provides four boxes labelled “Phone:”;
“Fax:”; “Email:” and “Web:” adjacent corresponding data entry boxes with
the same text provided in those boxes. These boxes to the left of these data
entry boxes each have associated downward-facing arrows located in a
shaded section as illustrated in the enlarged detail section of Bridgeland’s
Figure 8 below:

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Enlarged Detail Section of Bridgeland’s Figure 8 Illustrating Four
Boxes With Downward Facing Arrows Located Adjacent to
Corresponding Data Entry Boxes

4. Bridgeland’s Figure 5 includes a dropdown menu 510 enabling the
user to select a business category from a list of categories. Bridgeland,
19:18–20:12; Fig. 5. This menu includes a box labelled “Architect” with an
associated downward-facing arrow located in a shaded section as illustrated
in the enlarged detail section of Bridgeland’s Figure 5 below:

Enlarged Detail Section of Bridgeland’s Figure 5 Illustrating Dropdown
Menu 510 With Downward Facing Arrow Located Adjacent to
Corresponding Box

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 1 which calls for, in pertinent
part, adjusting at least one variable data field to accommodate user data.
Although the Examiner submits three alternative positions in this regard (see
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Ans. 12-13),3 we need only address the second one based on Bridgeland’s
dropdown menus in Figure 8 (Ans. 13), for we find that position persuasive
and therefore dispositive of this appeal.
In Bridgeland, the user customizes documents via a reconfigurable
design template, including entering user-specific information in fields that is
then incorporated into the selected design. FF 1-2. Notably, four of these
fields have associated dropdown menus as evidenced by the downward-
facing arrows located in shaded sections adjacent the data entry boxes. See
FF 3. Although Bridgeland does not explicitly label these graphical
selection elements as dropdown menus in the text of the reference,
Bridgeland nevertheless labels a similar selection element with a downward-
facing arrow as a dropdown menu in Figure 5. Compare FF 4 with FF 3.
We therefore agree with the Examiner (Ans. 13) that the selection elements
in Figure 8 are dropdown menus. See FF 3.
Since the dropdown menus in Bridgeland’s Figure 8 would enable the
user to select various attributes associated with these “variable data fields,”
the associated dropdown menus therefore adjust these variable data fields to
accommodate user data as claimed. See id. That the last four fields in
Figure 8 not only appear in the dropdown menus, but also the associated
data entry boxes (id.) only further reinforces the notion that the fields
themselves are adjustable via the dropdown menus.

3 The Examiner’s three alternative positions are: (1) the user can “adjust” the
template’s fields in Bridgeland by reconfiguring the template; (2) the
dropdown boxes in Bridgeland’s Figure 8 allow the user to adjust fields; and
(3) changing the size and rotating text in template fields not only changes the
text, but also the field itself; therefore, the field is “adjusted.” Ans. 12-13.
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-28 which fall therewith.4

CONCLUSION
The Examiner did not err in rejecting claims 1-28 under § 102.

ORDER
The Examiner’s decision rejecting claims 1-28 is affirmed.

4 Although Appellants nominally argue claims 4-7, 9, and 10 separately
(Reply Br. 5), these arguments were raised for the first time in the Reply
Brief. Compare App. Br. 7 with Reply Br. 5. Since these newly-raised
arguments are technically waived, we decline to address them here. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.”).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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