Adobe Inc.

Patent Trials and Appeals Board

Mar 29, 2021

2019007026 (P.T.A.B. Mar. 29, 2021)

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.
13/873,401 04/30/2013 Damien Antipa AD01.2909US01 3370
111003 7590 03/29/2021
Adobe / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
EXAMINER
SIDDIQI, EMAD H
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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):
docketing@finchmaloney.com
nmaloney@finchmaloney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAMIEN ANTIPA
Appeal 2019-007026
Application 13/873,401
Technology Center 2400
Before AMBER L. HAGY, DAVID J. CUTITTA II, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 7–26, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Adobe Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2019-007026
Application 13/873,401

2
TECHNOLOGY
The application relates to a drag-and-drop clipboard for HTML
documents. Spec. Title.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with the limitation at
issue emphasized:
1. A computer implemented method for editing a page in a client-
server arrangement, the method comprising:
allocating, by a client computing system, session storage
local to the client computing system for use by a browser;
receiving, by the client computing system, a page served
to the browser from a server computing system with which the
client computing system is in communication;
allocating, by the client computing system, clipboard
storage within the session storage;
receiving, by the client computing system, input
corresponding to either a copy operation or a cut operation, the
input indicating a piece of content presented on the page that is
selected for either the copy operation or the cut operation;
copying, by the client computing system in response to
receiving the input corresponding to either the copy operation or
the cut operation, the selected piece of content to the clipboard
storage within the session storage of the browser;
presenting, by the client computing system, a clipboard
user interface (UI) element on the page; and
in response to the clipboard UI element being moved to
and dropped at a target location, inserting the stored selected
piece of content at the target location.
Appeal 2019-007026
Application 13/873,401

3
REFERENCES
The Examiner relies on the following references as prior art:
Name Reference Date
Dutta US 2008/0256601 A1 Oct. 16, 2008
Hansen US 2014/0304839 A1 Oct. 9, 2014
Kuwata US 7,509,577 B2 Mar. 24, 2009
Margolin US 8,555,187 B2 Oct. 8, 2013
Martin US 2012/0174002 A1 July 5, 2012
REJECTIONS
The Examiner makes the following rejections under 35 U.S.C. § 103:
Claims References Final Act.
1, 7–10, 15–20, 25, 26 Kuwata, Dutta, Margolin, Martin 3–4
11–14, 21–24 Kuwata, Dutta, Margolin, Martin, Hansen 8
ISSUE
Did the Examiner err in finding Dutta teaches or suggests “session
storage,” as recited in claim 1?
ANALYSIS
Claim 1 recites “allocating . . . session storage local to the client
computing system for use by a browser” and “allocating . . . clipboard
storage within the session storage.” Independent claims 10 and 20 recite
commensurate limitations.
Appellant argues that the term “‘session storage’ refers to storage that
a browser deallocates upon closure of a page.” Appeal Br. 9. Appellant
cites to the W3C Web Storage specification and MDN Web Docs Web
Storage API as supporting this interpretation by contrasting the
“sessionStorage” attribute with the “localStorage” attribute. Id. at 11–12.
Appeal 2019-007026
Application 13/873,401

4
The Examiner, however, determines that “there is no support found in
the specification [of the present application] expressly indicating that the
session storage deallocates upon closure of a page.” Ans. 4. According to
the Examiner, the disclosures of the present application “indicate that other
local suitable storage or memory is a functionally similar substitute for the
session storage and not a distinct storage.” Id. (citing Spec. ¶¶ 12, 27). The
Examiner then finds that Dutta discloses a “local memory module” that
constitutes the claimed “session storage.” Ans. 5–6 (citing Dutta ¶¶ 29–30).
The Federal Circuit has held that “the specification is always highly
relevant to the claim construction analysis.” In re Abbott Diabetes Care
Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (quotation omitted). “Usually, it
is dispositive; it is the single best guide to the meaning of a disputed term.”
Id. (quotation omitted). Here, the Specification discloses “the Clipboard
element can be initialized and reads from the local storage (browser session
storage or other local memory).” Spec. ¶ 27. Every other occurrence of
“session storage” in the Specification is phrased (with minor variations) as
“session storage or other suitable local storage.” Id. ¶¶ 9, 12, 13, 22. Thus,
the Specification discloses “session storage” as a type of “local storage.”
To the extent that Appellant’s extrinsic evidence treats
“sessionStorage” and “localStorage” as mutually exclusive, this conflicts
with the intrinsic evidence of the Specification, which expressly states that
“session storage” is a type of “local storage.” Claim 1 similarly requires
“session storage local to the client computing system.” As the Federal
Circuit has said, “extrinsic evidence may not be used to contradict claim
meaning that is unambiguous in light of the intrinsic record.” David Netzer
Consulting Eng’r LLC v. Shell Oil Co., 824 F.3d 989, 997 (Fed. Cir. 2016).
Appeal 2019-007026
Application 13/873,401

5
Thus, we give limited weight to Appellant’s extrinsic evidence.
Nevertheless, we agree with Appellant’s more general point that the
Specification distinguishes between “session storage” and “other suitable
local storage.” See Reply Br. 3. The Examiner’s reliance solely on Dutta’s
local memory alone reads out the word “session.” “It is highly disfavored to
construe terms in a way that renders them void, meaningless, or
superfluous.” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272,
1288 n.10 (Fed. Cir. 2017). Thus, given the current record, the Examiner
may have shown that Dutta teaches or suggests “storage local to the client
computing system,” but has not yet shown how Dutta teaches or suggests
such storage is “session storage.”
Accordingly, we do not sustain the Examiner’s rejections of claims 1
and 7–26.
OUTCOME
The following table summarizes the outcome of each rejection:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)
/Basis Affirmed Reversed
1, 7–10, 15–20,
25, 26
103(a) Kuwata, Dutta,
Margolin, Martin
1, 7–10, 15–20,
25, 26
11–14, 21–24 103(a) Kuwata, Dutta,
Margolin, Martin,
Hansen
11–14, 21–24
Overall Outcome 1, 7–26
REVERSED