Ex Parte Pravetz et al

Patent Trial and Appeal Board

May 24, 2016

11479849 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111479,849 0613012006
121363 7590 05/26/2016
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
James D. Pravetz
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.
B248/ ADBS.209596 8840
EXAMINER
ZUBER!, MOHAMMED H
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
kspringer@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES D. PRA VETZ, RICHARD COHN, and
WILLIAM IE
Appeal2014-008365
Application 11/479,849
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FF'LLA:..Hl\1, ~4dministrati-ve Patent Jitdge.
DECISION ON APPEAL
Appeal2014-008365
Application 11/479,849
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The invention relates to rendering active content within an electronic
document in a stable and environmentally independent format (Spec. i-f 7).
Claims 1 and 8, reproduced below, are illustrative of the claimed subject
matter:
1. A method comprising:
acquiring active content for rendering, the active content
including a nondeterministic portion and a deterministic portion;
determining the nondeterministic portion is rendered with
a first visual appearance by a first renderer and is rendered with
a second visual appearance by a second renderer;
determining the deterministic portion is rendered with a
single visual appearance by the first and second renderers; and
rendering a representation of the active content that
includes the deterministic portion.
8. A method comprising:
receiving a request to view a stable form of an active
document from a content viewer, the active document including
variable sub-content and deterministic sub-content;
determining the variable sub-content is rendered with a
plurality of visual appearances by a plurality of renderers;
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Application 11/479,849
determining the deterministic sub-content is rendered with
a single visual appearance by the plurality of renderers;
generating the stable form of the active document by
rendering the active document with the deterministic sub-content
and without the variable sub-content; and
presenting the stable form of the active document within
the content viewer.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Liu
Anwar
Gounares
Bajaj
Cox
Shur
US 8,145,908 Bl
US 2001/0044797 Al
US 2003/0028561 Al
US 2003/0221105 Al
US 2004/0158717 Al
US 2005/0268221 Al
REJECTIONS
The Examiner made the following rejections:
Mar. 27, 2012
Nov. 22, 2001
Feb. 6,2003
Nov. 27, 2003
Aug. 12, 2004
Dec. 1, 2005
Claims 1, 4--6, 8-10, 12, 13, 16-22 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by Cox.
Claims 2, 3, 7, 15, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cox, Liu, and Shur.
Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox and Shur.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox and Liu.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox and Anwar.
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Application 11/479,849
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox and Gounares.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox and Bajaj.
ANALYSIS
Claims 1-7 and 13-27
Appellants contend Cox fails to disclose "determining the
nondeterministic portion is rendered with a first visual appearance by a first
renderer and is rendered with a second visual appearance by a second
renderer," as recited in claim 1 (Br. 11-12). Appellants also contend the
Examiner failed to interpret the claim 1 terms "a first renderer" and "a
second renderer" according to the broadest reasonable interpretation
consistent with the Specification (Br. 13-14). We disagree with Appellants.
According to Appellants, "[ u ]pon reading and understanding the as-
filed Application, a person of ordinary skill in the art would understand the
recitation of 'renderer' to mean 'a processing context within which a given
piece of content is rendered"' (Br. 13). Appellants further assert "that a
'first renderer' is different from a 'second renderer' when 'it uses a different
version of a same service, a different service altogether, a different version
of a same OS, a different OS altogether, or a different device or media" (Br.
14) (citing Spec. i-f 18). We agree with Appellant that a "renderer" is a
processing context in which content is rendered. However, we disagree that
two renderers are only different if they use different services, operating
systems, or devices. Rather, the Specification lists these differences merely
as examples of different processing contexts (see Spec. i-f 18). The
Specification also provides "the target environment [which Appellants
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Application 11/479,849
equate with the claimed renderers (Br. 13 n.23)] may be broadly stated as a
context associated with rendering the content that can be specific to the
target environment and to the content that is outside or external to the
content entirely" (Spec. i-f 18). Accordingly, we find that the content-i.e.,
the data-within a processing context is part of the "renderer," and thus two
renderers, are also different if the data associated therewith is different.
With this construction, we find Cox discloses the claim 1 limitation
"determining the nondeterministic portion is rendered with a first visual
appearance by a first renderer and is rendered with a second visual
appearance by a second renderer."
Cox discloses that the displayed form of an electronic document with
active content may appear differently from one invocation of the document
to the next (Cox, i-fi-18-10). For example, there may be an electronic contract
between two parties with an agreed amount of consideration to be calculated
by a spreadsheet application macro based on certain parameters that may
change without knowledge of the parties (Cox, i112). In another example,
an electronic document may contain active content that requires input data
from the computing environment or operating system such as "a numerical
value or a time/date query result" (Cox, i-f 35). Thus, upon invocation the
electronic document can appear differently than in a previous invocation
because the active content receives different input data (Cox, i-f 37).
In order to ensure consistent display of an electronic document, Cox's
invention invokes the electronic document and stores input data called by the
electronic document's active content so that upon subsequent invocation the
active content is provided with the stored input data, rather than fresh input
data from the computing environment (Cox, i-f 16). Accordingly, "[t]he
document and its embedded executable instructions may be re-executed by
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Application 11/479,849
one or more of the parties or a third party to recreate the condition of the
document (output) at the time it was originally signed by the parties" (Cox,
i-f 28). That is, "[r]ather than providing the inputs to the active content from
the operating system or application's environment, the inputs are taken from
the log file containing a copy of the inputs originally used at the time of
original signing of the document" (id.).
We agree with the Examiner (see Final Act. 3; Ans. 18-19) and find
Cox's different computing environments of an electronic document from one
invocation of the document to the next (see Cox, i-fi-112, 35-37) meet the
limitations in claim 1 of "a first renderer" and "a second renderer," where
the non-deterministic portion of the active content is rendered differently by
the first and second renderers. That is, but for Cox's inventive feature of
using stored input data for the different computing environments, Cox's
electronic document is rendered differently in two different invocations due
to different data input to the active content by the different computing
environments (see Cox, i1i1 12, 35-37). Accordingly, Cox discloses the
claim 1 limitation "the nondeterministic portion is rendered with a first
visual appearance by a first renderer and is rendered with a second visual
appearance by a second renderer."
We are, therefore, not persuaded the Examiner erred in rejecting claim
1, and claims 4---6, 13, 16-23, and 25 not specifically argued separately.
Although claims 2, 3, 7, 14, 15, 24, 26, and 27 are nominally argued
separately, Appellants do not present any new arguments in addition to those
discussed above (see Br. 15-17). Accordingly, for the reasons above, we
also sustain the Examiner's rejection of claims 2, 3, 7, 14, 15, 24, 26, and27.
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Application 11/479,849
Claims 8-12
Appellants contend Cox fails to disclose "generating the stable form
of the active document by rendering the active document with the
deterministic sub-content and without the variable sub-content," as recited in
claim 8 (Br. 12-13). Specifically, Appellants argue:
[T]he content that initially appears different upon subsequent
invocations of the document, is ultimately included in the final
rendered document, but with consistent input data such that the
content no longer varies. In other words, according to Cox, the
variable content is always included .... This is in contrast to the
language of claim 8, in which "the stable form of the active
document ... [is rendered] with the deterministic sub-content
and without the variable sub-content.
(Br. 13). We agree with Appellants.
As discussed above, Cox discloses rendering an electronic document
containing active content by retrieving stored input data as opposed to input
data from the current computing environment (see Cox, i-fi-135-37). Thus,
Cox renders active content-i.e., content that would otherwise vary from
one rendering to the next-in such a way that it does not actually vary, in
contrast to claim 8 where the variable sub-content is not rendered at all. We
are, therefore, constrained by the record to find the Examiner erred in
rejecting independent claim 8, and dependent claims 9-12 for similar
reasons.
CONCLUSION
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 8-
12, but did not err in rejecting claims 1-7 and 13-27.
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Application 11/479,849
DECISION
For the above reasons, the Examiner's rejection of claims 8-12 is
reversed, and the Examiner's rejection of claims 1-7 and 13-27 is affirmed.
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 )(iv).
AFFIRMED-IN-PART
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