Ex Parte St. Pierre et al

Patent Trial and Appeal Board

Feb 15, 2017

13205848 (P.T.A.B. Feb. 15, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/205,848 08/09/2011 Gregory S. St. Pierre 58083-817497 (B1375) 2668
72058 7590 02/17/2017
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
JUNG, SEUNG WOON
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
02/17/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY S. ST. PIERRE and ROBERT WALTON
Appeal 2016-005974
Application 13/205,848
Technology Center 2100
Before THU A. DANG, STEPHEN C. SIU, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b). We reverse
the Examiner’s (i) written description rejection under 35 U.S.C. § 112(a);
and (ii) obviousness rejections under 35 U.S.C. § 103(a).
Disclosed Invention and Exemplary Claim
Claims 1,21, and 22 are independent, and recite a computer-
implemented method (claim 1), system (claim 21), and non-transitory
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computer-readable medium having program code (claim 22) for receiving
packaged content (Fig. 1,13) including (i) a manifest (Fig. 1,15; Spec.
112); and (ii) assets (Fig. 1, 14; Spec. 110), where the manifest specifies
different navigation paradigms1 for different assets. Packaged content can
either be paper-based (see Spec. 13), or electronic (see Spec. 14), and can
consist of “magazines, newspapers, books” (Spec. 13) that can include
chapters, articles, ads, and/or webpages (see Spec. H 3 4).
Appellants define the terms “manifest,” “asset,” and “stack” in the
Specification as follows:
The term “asset ” refers herein to an individual content
item that may or may not have been separately created from
other content items. An asset may itself comprise subparts such
as sections, images, text blocks, tables, etc. Exemplary assets
include, but are not limited to, text content, image content,
video content, sound content, other content types, and
combinations thereof.
Spec. 110 (emphases added).
The term “manifest ” refers herein to information
included in packased content about vackased assets and/or
how such content is used. A manifest may identify the one or
more assets of packaged content, identify stacks of assets,
provide metadata about the one or more assets and/or stacks,
1 Appellants describe an exemplary “navigation paradigm” as being “a 2D-
navigational paradigm [that] causes left and right gestures on a touch screen
to navigate from stack to stack and up and down gestures on the touch
screen to navigate within the contents of the particular stack.” Spec. 120.
Because “[t]he navigation feature provided by a given gesture or other
command may differ depending upon the particular assets, stacks, and/or
other context of the content consumption environment,” “[o]ther commands
and paradigms may additionally or alternatively be employed.” Spec. 121.
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and/or provide information used to view and/or navigate the
packaged content in a content consumption environment.
Spec. 112 (emphases added).
The term “stack” refers herein to one or more of the assets that
are defined, for example by a manifest, as being logically
related to one another. Exemplary stacks include, but are not
limited to, articles, chapters, documents, document sections,
web pages, web page portions, and other bodies of related text,
images, video, sounds, and other content. Stacks of different
kinds may be included in a content package ....
Spec. Ill (emphases added).
In light of the definitions of the terms “packaged content,” “manifest,”
“asset,” and “stack,” supra, one gains a better understanding of the invention
upon reading claim l.2 Exemplary claim 1 under appeal, with emphases
added to disputed portions of the claim, read as follows:
1. A computer-implemented method comprising:
receiving, at a computer device, packaged content,
wherein the packaged content comprises a manifest and assets,
wherein the manifest specifies different navigation
paradigms for different assets such that a same user navigation
command is interpreted to specify a first navigation when
interacting with a first asset and interpreted to specify a
different navigation when interacting with a second asset',
identifying stacks based at least in part on the manifest,
each stack comprising one or more of the assets that are
logically related to one another, wherein navigation amongst
and within the stacks is specified by the manifest; and
presenting, via a processor of the computer device, the
packaged content in a content consumption environment based
2 Paragraph 17 of the Specification also provides an exemplary real-world
example of how the invention could be used.
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at least in part upon the manifest wherein presenting
the packaged content includes displaying a plurality of stacks,
the plurality of stacks configured to be viewed and navigated in
the content consumption environment.
The Examiner’s Rejections
(1) The Examiner rejected independent claims 1,21, and 22 under 35
U.S.C. § 112(a), for failing to comply with the written description
requirement. Final Act. 2—3; Ans. 2—3.
(2) The Examiner rejected claims 1—4, 8—10, 14, 19, and 21—23 under
35 U.S.C. § 103(a) over the combination of Shar (US 2012/0137200 Al;
published May 21, 2012, filed Oct. 26, 2011, and based on a provisional
application filed Oct. 26, 2010) and Artin (US 2012/0131427 Al; published
May 24, 2012, filed Oct. 26, 2011, and based on a provisional application
filed Oct. 26, 2010). Final Act. 3—10; Ans. 3—6.
(3) The Examiner rejected claims 5—7, 11—13, 15—18, 20, and 24
under 35 U.S.C. § 103(a) over the combination of Shar, Artin, and various
other tertiary references. Final Act. 11—24.
Principal Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 7—18)
and the Reply Brief (Reply Br. 2—7), as well as the Examiner’s findings,
conclusions, and response to Appellants’ arguments (Final Act. 2—24; Ans.
2—6), the following two principal issues are presented on appeal:
(1) Did the Examiner err in rejecting independent claims 1,21, and 22
under 35 U.S.C. § 112(a), for failing to comply with the written description
requirements?
(2) Did the Examiner err in rejecting claims 1—24 as being obvious
because the base combination of Shar and Artin fails to teach or suggest
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“wherein the manifest specifies different navigation paradigms for different
assets such that a same user navigation command is interpreted to specify a
first navigation when interacting with a first asset and interpreted to specify
a different navigation when interacting with a second asset,” as recited in
independent claim 1, and as similarly recited in remaining independent
claims 21 and 22?
(3) Did the Examiner err in rejecting claims 1—24 as being obvious
over the base combination of Shar and Artin because either one, or both, of
Shar and Artin are not antedating references due to a lack of written
description support of the provisional applications used to support these
references?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 4—8) in light
of Appellants’ arguments in the briefs (App. Br. 7—18; Reply Br. 2—7) that
the Examiner has erred, as well as the Examiner’s response to Appellants’
arguments in the Appeal Brief (Final Act. 2—24; Ans. 2—6). We agree with
Appellants’ arguments as to the (i) written description rejection; and (ii)
obviousness rejections.
Rejection Under 35 U.S.C. § 1 12(a)
Independent claims 1,21, and 22 each recite “wherein the manifest
specifies different navigation paradigms for different assets such that a same
user navigation command is interpreted to specify a first navigation when
interacting with a first asset and interpreted to specify a different
navigation when interacting with a second asset.” The Examiner finds that
paragraph 21 of Appellants’ Specification fails to support
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“a same user navigation command” specifying two different navigations
when interacting with different assets, and instead only supports using two
different user navigation commands (Final Act. 3; Ans. 2—3). The Examiner
further finds that paragraph 20 of Appellants’ Specification also supports
this interpretation, and that one of ordinary skill in the art would understand
that paragraphs 20 and 21 both describe using a same 2D-navigational
paradigm (see Ans. 2—3).
Appellants argue, and we agree, that paragraphs 20, 21, 28, and 29, all
taken together, support the recited limitation at issue, namely that a same
user command specifies two different navigations when interacting with
different assets (App. Br. 8—10; Reply Br. 2 4). Although paragraphs 20
and 21 describe using an exemplary 2D-navigational paradigm, the last line
of paragraph 21 states “[o]ther commands and paradigms may additionally
or alternatively be employed”. Further, paragraph 21 states that “[t]he
navigation feature provided by a given gesture or other command may differ
depending upon the particular assets’ '' (Spec. 121 (emphasis added)),
paragraph 28 describes “stack-to-stack navigation” using left/right swipe
gestures/commands, and paragraph 29 describes 2D-navigation “in which
left/right commands navigate from stack to stack, [and] such a command
may also navigate to advertisements” (Spec. 128 (emphasis added)).
Finally, paragraph 29 states that “navigation may be specified as controlled
by up/down gestures that allow consecutive pages to be accessed,” and “[i]n
the case of smooth-scrolling content, a similar or different navigation
gesture may be used” (Spec. 129 (emphasis added)).
There is no requirement that the disclosure contain “either examples
or an actual reduction to practice;” rather, the critical inquiry is whether the
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patentee has provided a description that “in a definite way identifies the
claimed invention” in sufficient detail that a person of ordinary skill would
understand that the inventor was in possession of it at the time of filing.
AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010);
Koito Mfg. Co., Ltd. v. Turn-Key-Tech., LLC, 381 F.3d 1142, 1154 (Fed. Cir.
2004). That assessment “requires an objective inquiry into the four comers
of the specification.” Ariad, 598 F.3d at 1351.
In light of our review of the originally filed Specification as discussed
supra, we concur with Appellants’ contentions (App. Br. 8—10; Reply Br. 2—
4) that the Examiner erred in rejecting claims 1,21, and 22 under 35 U.S.C.
§ 112(a) because claims 1,21, and 22 are fully supported and enabled by the
Specification as originally filed. Specifically, paragraphs 21, 28, and 29,
taken with the remainder of the Specification as originally filed, convey with
reasonable clarity to those skilled in the art that, as of the filing data sought,
he or she was in possession of the invention. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991) (emphasis omitted.)
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
21, and 22 under 35 U.S.C. § 112(a).
Rejections Under 35 U.S.C. § 103(a)
Independent claims 1,21, and 22 each recite a manifest specifying
different navigation paradigms for different assets such that a same user
navigation command is interpreted to specify different navigations when
interacting with different assets. We agree with Appellants’ arguments
(App. Br. 10—12) that sections of Shar and Artin cited by the Examiner do
not teach or suggest this feature. Specifically, we agree with Appellants’
contention (Reply Br. 4—5) that the cited sections of Artin fail to disclose
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first and second assets corresponding to two different navigations that are
specified by the same user navigation command. Although Artin discloses a
manifest (| 33) and assets (1 52), as well as a swipe gesture (see 116) that is
the equivalent of the recited “user navigation command,” this same
command (i.e., a swipe gesture) is not disclosed as being capable of
providing two different types of navigation when interacting with different
assets as recited in Appellants’ claims 1,21, and 22. And, although Artin
also discloses that in certain circumstance the swipe gesture or navigation
command can be disabled (see 119), this does not constitute a different type
of navigation. In fact, as set forth in the cited sections, Artin simply
discloses one type of navigation (e.g., a swipe gesture) that is either turned
on or off (see H 16, 19). Thus, the cited sections of Artin fail to disclose
that a navigation feature provided by a given gesture or other command may
differ depending upon the particular assets as claimed.
Accordingly, the Examiner erred in rejecting claims 1—24 as being
obvious because the base combination of Shar and Artin fails to teach or
suggest “wherein the manifest specifies different navigation paradigms for
different assets such that a same user navigation command is interpreted to
specify a first navigation when interacting with a first asset and interpreted
to specify a different navigation when interacting with a second asset,” as
recited in independent claim 1, and as similarly recited in remaining
independent claims 21 and 22.
In view of the foregoing, and because neither Shar nor Artin antedate
Appellants’ application as explained infra, we do not sustain the Examiner’s
obviousness rejections of claims 1—24.
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Examiner’s Reliance upon Shar and Artin as Prior Art
The instant application on appeal was originally filed on August 9,
2011, and claims benefit of U.S. Provisional Application No. 61/454,663,
which was filed on March 21,2011.
Shar was filed on October 26, 2011, and published on May 31, 2012.
In order for Shar to be prior art to Appellants’ application, Shar must rely on
the benefit of its provisional application filed on October 26, 2010.
Artin was also filed on October 26, 2011, and published on May 24,
2012. In order for Artin to be prior art to Appellants’ application, Artin
must rely on the benefit of its provisional application which was also filed
on October 26, 2010.
In order for either Shar or Artin to claim benefit of their October 26,
2010 provisional filing dates so as to overcome Appellants’ filing date
and/or provisional date (both occurring in 2011), under 35 U.S.C. § 119(e),
the written description and drawing(s) (if any) of the provisional
applications must adequately support and enable the subject matter claimed
in the patent application publications that claim the benefit of the provisional
applications. See New RailheadMfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d
1290, 1294 (Fed. Cir. 2002); see also MPEP § 201.11(I)(A).
Shar’s provisional application (see pages 1—8 of U.S. Provisional
Application No. 61/406,975) does not provide written description support
for the package content, manifest, asset, and stack features relied upon in
obviousness rejections before us. Additionally, Artin’s provisional
application does not provide written description support for the features
relied upon in the obviousness rejections before us. Specifically, Artin’s
paragraphs 8, 33, 52, and 54 (relied upon the Examiner in the obviousness
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rejections of claims 1—24) are not supported by pages 1—11 of U.S.
Provisional Application No. 61/407,004. Lastly, the Examiner does not
present findings or reasoning showing that the cited portions of Shar 4,
17, 19, 22-24, 27, 35, 36, 41; Figs. 3, 4) and Artin (H 8, 33, 52, 54) are
supported by the requisite written description support in the corresponding
provisional applications.
As a result, neither Shar nor Artin are prior art as to the claims of the
instant application on appeal, and neither of these references can serve as
evidence to be applied against Appellants’ claims. Because the “prior art”
evidence applied by the Examiner to establish a prima facie case of
obviousness is lacking as to the effective/priority dates of both of the
references relied upon in the base combination before us, we cannot sustain
the Examiner’s obviousness rejections.
CONCLUSIONS
The Examiner erred in rejecting claims 1,21, and 22 under U.S.C.
§ 112(a) for failing to comply with the written description requirement.
The Examiner also erred in rejecting claims 1—24 as being obvious
under 35 U.S.C. § 103(a) over the base combination of Shar and Artin
because (i) Artin fails to teach or suggest “wherein the manifest specifies
different navigation paradigms for different assets such that a same user
navigation command is interpreted to specify a first navigation when
interacting with a first asset and interpreted to specify a different
navigation when interacting with a second asset,” as recited in independent
claim 1, and as similarly recited in remaining independent claims 21 and 22;
and (ii) neither Shar nor Artin are antedating references.
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DECISION
The Examiner’s written description and obviousness rejections are
reversed.
REVERSED
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