Ex Parte Shapiro

Patent Trial and Appeal Board

Aug 26, 2016

13253010 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/253,010 10/04/2011
108982 7590 08/30/2016
Wolfe-SBMC
116 W. Pacific A venue
Suite 300
Spokane, WA 99201
FIRST NAMED INVENTOR
William Shapiro
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.
Bl406 9756
EXAMINER
HO,RUAYL
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM SHAPIRO
Appeal2015-003894
Application 13/253,010
Technology Center 2100
Before LINZY T. McCARTNEY, SCOTT B. HOWARD, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 32-52, which are all the claims pending in this
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is Adobe Systems
Incorporated. Br. 3.
2 Claims 1-31 have been canceled. Br. 5.
Appeal2015-003894
Application 13/253,010
STATEMENT OF THE CASE
Introduction
Appellant's application relates to personalized themes for websites.
Abstract. Claim 32 is illustrative of the appealed subject matter and reads as
follows:
32. A method comprising:
receiving, at a computing device and from a webserver, a
website;
displaying, at the computing device, a personalized
website theme of the website, the personalized website theme
including at least an image, the personalized website theme
different than a publicly-viewable standard theme of the website,
the website containing a prompt for identifying data; [the
"displaying" step]
receiving, at the computing device, the identifying data;
[the "receiving" step]
sending, from the computing device and to the webserver,
a request for access to a restricted access part of the website, the
request including the identifying data;
receiving, at the computing device and from the
web server, the restricted access part of the website; and
displaying, at the computing device, the restricted access
part of the website.
The Examiner's Rejection
Claims 35, 39, and 47 stand rejected under pre-AIA 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 2-
3.
Claims 32-52 stand rejected under pre-AIA 35 U.S.C. § 102(e) as
anticipated by Cohen (US 2012/0216297 Al; Aug. 23, 2012). Ans. 3-7.
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ANALYSIS
Anticipation - Claim 3 2
Appellant argues the Examiner erred in rejecting claim 32 because
Cohen does not disclose receiving identifying data subsequent to displaying
the personalized website. Br. 11-12. In particular, Appellant argues Cohen
discloses that access to the personalized website is displayed responsive to
verification of the user's identification and password. Id. at 11. Appellant
argues that the identifying data is, therefore, provided before displaying the
personalized website instead of after the displaying step. Id. at 11-12.
The Examiner responds that the claim does not recite any temporal
limitations regarding the order of the steps. Ans. 10.
"Although a method claim necessarily recites the steps of the method
in a particular order, as a general rule the claim is not limited to performance
of the steps in the order recited, unless the claim explicitly or implicitly
requires a specific order." Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512
F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v.
Compuserve Inc., 256 F.3d 1323, 1342--43 (Fed.Cir.2001)). Appellant
argues that the "displaying" step necessarily must occur before the
"receiving" step. Br. 11-12. However, the claims do not explicitly or
implicitly require such a specific order. While the "displaying" step recites
displaying a prompt for identifying data and the "receiving" step receives the
identifying data, neither step requires that the displayed prompt receive the
identifying data. Receipt of the identifying data, therefore, could occur
independent of and before the prompt is displayed. Accordingly, absent an
explicit or implicit limitation requiring the "displaying" step to occur before
the "receiving" step, we are not persuaded the Examiner erred in finding
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Application 13/253,010
Cohen discloses the "displaying" and "receiving" steps by disclosing the
"receiving" step prior to the "displaying" step.
Appellant further argues the Examiner erred because "Cohen is also
silent as to the personalized website location containing an image." Br. 12.
We disagree. As found by the Examiner, Cohen discloses a personalized
website that includes selectable "icons," which an ordinarily skilled artisan
would understand comprise an image. Ans. 10 (citing Cohen i-f 206); see
also Cohen i-f 83. The Examiner finds, and we agree, that Cohen further
discloses the website may include an enlarged view with a picture,
photograph, or drawing. Cohen i-f 215. Accordingly, we are not persuaded
that the Examiner erred in finding Cohen teaches a personalized website
containing an "image," as claimed.
Anticipation - Claim 3 6
Claim 36 recites "[a] method as described in claim 35, wherein the
personalized website theme is stored locally on the computing device."
Appellant argues the Examiner erred in rejecting claim 3 6 because the cited
portions of Cohen do not reference a personalized website location and
Cohen does not disclose the recited limitation. Br. 12-13.
The Examiner finds the cited portions of Cohen disclose a local
storage feature while other portions of Cohen disclose a personalized
website theme. Ans. 11.
Appellant has persuaded us that the Examiner erred in rejecting claim
36 under 35 U.S.C. § 102(e) as anticipated by Cohen. In an anticipation
rejection, "it is not enough that the prior art reference ... includes multiple,
distinct teachings that [an ordinary] artisan might somehow combine to
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achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008). Cohen discloses a personalized website
(Cohen i-f 111) and a local storage feature that allows a user to "download[]
data, programs, program updates, or other information" (Cohen i-f 69).
However, the Examiner has not established that Cohen's local storage
feature, which is used to store content displayed on the website, is used to
store the personalized website theme. Accordingly, on the record before us,
Appellant has persuaded us that the Examiner erred in rejecting claim 36 as
anticipated by Cohen.
Anticipation - Claim 3 7
Claim 37 recites "[a] method as described in claim 35, wherein the
personalized website theme is received by the computing device from a
database other than the webserver." Appellant argues the Examiner erred in
rejecting claim 37 because Cohen's database layer 28 and database storage
devices 29 are part of data management system 16, which the Examiner
relies upon as the "webserver" in claim 32. Br. 13-14.
The Examiner responds that Appellant's argument focuses on
paragraphs 49 and 53 instead of paragraph 56, which is cited for claim 37.
Ans. 11.
Appellant has persuaded us that the Examiner erred in rejecting claim
37 as anticipated by Cohen. The Examiner relies upon data management
system 16 as the claimed webserver. Ans. 3--4 (citing Cohen i-f 83). As
argued by Appellant, the database storage device 29 is part of the database
layer 28, which is part of data management system 16. Cohen i-f 56.
Accordingly, we agree with Appellant that the database cited by the
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Examiner is part of Cohen's webserver. We, therefore, do not sustain the
rejection of claim 37 as anticipated by Cohen.
Anticipation - Claim 3 9
Claim 39 recites "[a] method as described in claim 32, wherein the
personalized website theme is displayed prior to receiving the identifying
data." Appellant argues the Examiner erred in rejecting claim 39 because
Cohen discloses providing healthcare users access to a personalized website
after successful verification of the user's identification information and
password. Br. 15 (citing Cohen i-f 116). Appellant also argues the cited
sections relate to a website for healthcare users instead of consumer users.
Id.
The Examiner responds that Appellant cites paragraph 116, which is
not cited in the rejection of claim 39. Ans. 12. The Examiner also responds
that every claimed feature is present in the invention regardless of the type
of user to which the website is directed. Id.
Appellant has persuaded us that the Examiner erred. As noted by
Appellant, Cohen discloses providing healthcare users access to a
personalized website after receiving identifying data from the user. Cohen
i-f 116. Contrary to the Examiner's assertion, Appellant's citation to
paragraph 117 is responsive to the Examiner's findings because this
paragraph further explains the system one paragraph after the portion cited
by the Examiner. Accordingly, on the record before us we do not sustain the
rejection of claim 39.
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Application 13/253,010
Anticipation - Claim 42
In the Final Action, the Examiner rejects claim 42 using the same
rationale as claim 32. Final Act. 7. Appellant argues claims 32 and 42
recite different claim language and, therefore, the rationale for claim 32 is
insufficient to show how Cohen discloses all of the features of claim 42. Br.
15-16. The Examiner responds that the claims are substantially similar and
the same rationale applies to each. Ans. 12-13.
Claim 32 recites a method for exchanging information between a
computing device and a webserver primarily from the perspective of the
computing device. Claim 42 recites a method for exchanging information
between a computing device and a webserver primarily from the perspective
of the webserver. Although the perspectives in claims 32 and 42 are
different, the limitations are otherwise substantially similar because both
claims recite a personalized website theme different from a publicly-
viewable theme and a request for access to a restricted access part of the
website.
One substantive difference is that claim 42 recites an image that is
associated with the personalized website theme and not with the publicly-
viewable website theme, while claim 32 recites a personalized website
theme including at least an image. However, the Examiner's findings
regarding Cohen for claim 32 also show that this limitation is disclosed, and
Appellant has not identified persuasive evidence in the record to rebut these
findings. Accordingly, Appellant has not persuaded us that the Examiner
erred in rejecting claim 4 2.
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Anticipation - Claim 46
Like claim 42, in the Final Action the Examiner rejects claim 46 for
the same reasons as claim 32. Final Act. 8. However, claim 46 recites a
"graphical user interface containing selectable representations of a plurality
of personalized website themes" and this limitation is not recited in claim
32.
Appellant argues the Examiner has failed to establish that Cohen
teaches this limitation. Br. 18. The Examiner responds in the Answer by
finding that Cohen teaches a graphical user interface. Ans. 13. The
Examiner's finding, however, does not address the "plurality of personalized
website themes" limitation. Id. Because the Examiner has failed to
establish that Cohen teaches a "graphical user interface containing selectable
representations of a plurality of personalized website themes," we are
constrained by the record to reverse the rejection of claim 46, and claims
47-52, which depend therefrom.
Indefiniteness- Claims 35 and 47
The Examiner rejected claim 35 under 35 U.S.C. § 112, second
paragraph, as indefinite because the limitation "website is not received from
the webserver" is a "non-feature" and it is "unclear where the website is
received from." Ans. 2. The Examiner rejects claim 47 for the same
reasons. Id.
Appellant argues the Examiner erred in rejecting claim 3 5 as
indefinite. Br. 23. In particular, Appellant argues the Examiner inaccurately
reproduced the language of claim 35, which recites "wherein the
personalized website theme of the website is not received from the
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webserver." Id. Appellant argues the personalized website theme may be
received by the computing device from any appropriate source other than the
website, such as the computing device itself, which may store the theme as
recited in claim 36. Id. The Examiner responds that the limitation "is
simply not a functional language" and, therefore, "it renders the claim
indefinite." Ans. 8.
Appellant has persuaded us that the Examiner erred in rejecting claim
3 5 as indefinite. The claim limitation "wherein the personalized website
theme of the website is not received from the webserver" is a negative
limitation that requires that the computing device receive the personalized
website theme from a source other than the web server. We disagree with the
Examiner's finding that this limitation is "non-functional" merely because it
does not affirmatively recite from where the personalized website theme
may be received. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1329 (Fed. Cir. 2003) (construing a negative claim limitation as
restricting the source of a compound recited in the claim). Accordingly, we
do not sustain the Examiner's rejection of claim 35 under 35 U.S.C. § 112,
second paragraph, as indefinite. We also do not sustain the rejection of
claim 47 under 35 U.S.C. § 112, second paragraph for the same reasons.
Indefiniteness - Claim 3 9
The Examiner rejects claim 39 under 35 U.S.C. § 112, second
paragraph, as indefinite because, according to the Examiner, claim 32 recites
identifying data is required before the personalized website can be displayed,
but claim 39 (which depends from claim 32) recites the personalized website
is displayed prior to receiving the identifying data. Ans. 2-3. The Examiner
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rejects the claim as indefinite because it is "unclear if the 'personalized
website theme' is part of the 'secured' personalized website information."
Id.
Appellant argues the Examiner erred in rejecting claim 39 as
indefinite because claim 32 does not require identifying data before the
personalized website data can be displayed. Br. 24. For reasons similar to
those set forth above for claim 32, Appellant has persuaded us that the
Examiner erred in imposing an order on the steps of the method recited in
claim 32. Claim 39 recites that the personalized website theme is displayed
prior to receiving the identifying data. Nothing in this claim limitation
contradicts the method steps recited in claim 32, which may be performed in
the order required by claim 39. Accordingly, we do not sustain the
indefiniteness rejection of claim 39.
CONCLUSIONS
On the record before us and in view of the analysis above, we are not
persuaded by Appellant's contentions that the Examiner erred in rejecting
claim 32 as anticipated by Cohen. Therefore, we sustain the rejection of
claim 32 under 35 U.S.C. § 102(b) as anticipated by Cohen. We also sustain
the rejection of claims 33-35, 38, 40, and 41, which were not argued
separately. Br. 12, 14, 15.
On the record before us and in view of the analysis above, Appellant
has persuaded us that the Examiner erred in rejecting claims 36, 37, and 39
as anticipated by Cohen. Therefore, we do not sustain the rejection of
claims 36, 37, and 39 under 35 U.S.C. § 102(e) as anticipated by Cohen. We
also do not sustain the rejection of claim 45 for the same reasons as claim
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36. See Br. 16; compare Br. 28 (Claims App'x) and Br. 30 (Claims App'x).
On the record before us and in view of the analysis above, we are not
persuaded by Appellant's contentions that the Examiner erred in rejecting
claim 42 as anticipated by Cohen. Therefore, we sustain the rejection of
claim 42 under 35 U.S.C. § 102(b) as anticipated by Cohen. We also sustain
the rejection of claims 43 and 44, which were not argued separately. Br. 16.
On the record before us and in view of the analysis above, Appellant
has persuaded us that the Examiner erred in rejecting claim 46 as anticipated
by Cohen. Therefore, we do not sustain the rejection of claim 46 under 35
U.S.C. § 102(e) as anticipated by Cohen. We also do not sustain the
rejections of claims 47-52, which depend from claim 46. Br. 30, 31 (Claims
App'x).
On the record before us and in view of the analysis above, Appellant
has persuaded us that the Examiner erred in rejecting claims 35, 39, and 47
under 35 U.S.C. § 112, second paragraph, as indefinite. Accordingly, we do
not sustain the indefiniteness rejection of claims 35, 39, and 47.
DECISION
We affirm the decision of the Examiner to reject claims 32-35, 38,
and 40--44.
We reverse the decision of the Examiner to reject claims 36, 37, 39,
and 45-52.
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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