Ex Parte Herberger et al

Patent Trial and Appeal Board

Jun 2, 2016

12048985 (P.T.A.B. Jun. 2, 2016)

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.
12/048,985 03/14/2008 Tilman Herberger 66481/08-215 5938
22206 7590 06/02/2016
FELLERS SNIDER BLANKENSHIP
BAILEY & TIPPENS
THE KENNEDY BUILDING
321 SOUTH BOSTON SUITE 800
TULSA, OK 74103-3318
EXAMINER
BRAHMACHARI, MANDRITA
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
06/02/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TILMAN HERBERGER and TITUS TOST
____________

Appeal 2014-008936
Application 12/048,985
Technology Center 2100
____________

Before NORMAN H. BEAMER, JOHN D. HAMANN, and
STACY B. MARGOLIES, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) the Examiner’s Final
Rejection of claims 1–19. We have jurisdiction over the pending rejected
claims under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Sharea, Ltd. as the real party in interest. (App. Br. 2.)
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THE INVENTION
Appellants’ disclosed and claimed invention is directed to content
sharing over the Internet. (Abstract.) Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of sharing digital content between a plurality
of different computers, comprising the steps of:
(a) establishing a first network connection between a first
computer of said plurality of different computers and a
remote server;
(b) displaying a first desktop on a first display device, said first
display device being in electronic communication with
said first computer;
(c) manually drawing by a user a first geometric object within
said first desktop;
(d) displaying said first geometric object within said first
desktop;
(e) assigning at least one first access rule to said first geometric
object;
(f) transmitting data representative of said first geometric object
and said at least one first access rule to said remote
server;
(g) manually drawing by a user a second geometric object
separate from said first geometric object within said first
desktop, wherein said first geometric object and said
second geometric object do not overlap and wherein said
first geometric object and said second geometric object
are concurrently displayed;
(h) displaying said second geometric object within said first
desktop;
(i) assigning at least one second access rule to said second
geometric object;
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(j) transmitting data representative of said second geometric
object and said at least one second access rule to said
remote server;
(k) manually adjusting a position of said first geometric object
to overlap with said second geometric object, thereby
creating at least one overlap region;
(l) simultaneously displaying on said desktop said first
geometric object, said second geometric object, and said
overlap region;
(m) automatically determining at least one overlap access rule
associated with said at least one overlap region using at
least said at least one first access rule and said at least
one second access rule;
(n) positioning a computer file icon to lie within either said first
geometric object or said second geometric object, said
computer file icon being associated with a computer file;
(o) determining a location of said computer file icon within said
first or second geometric object;
(p) transmitting to said remote server data representative of said
computer file and said computer file icon position within
either said first geometric object or said second
geometric object;
(q) establishing a second network connection between a second
computer of said plurality of computers and said remote
server;
(r) seeking to transfer said computer file from said first
computer to said second computer;
(s) determining whether to allow transfer of said computer file
from said first computer to said second computer
depending on said location of said computer file icon
within said first or second geometric object, wherein
(s1) if said computer file is positioned within said overlap
region, permitting transfer of said computer file
according to said at least one overlap access rule,
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(s2) if said computer file is positioned within said first
geometric object but outside of said overlap
region, permitting transfer of said computer file
according to said at least one first access rule,
(s3) if said computer file is positioned within said second
geometric object but outside of said overlap
region, permitting transfer of said computer file
according to said at least one second access rule;
and,
(t) transferring said computer file from said first computer to
said second computer if so permitted.

REJECTION
The Examiner rejected claims 1–19 under 35 U.S.C. § 103(a) as being
unpatentable over Bier et al. (US 7,127,501 B1, issued Oct. 24, 2006) and
Zotov et al. (US 8,196,055 B2, issued June 5, 2012). (Final Act. 3–26.)

ISSUE ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
dispositive issue:2
Whether the combination of Beir and Zotov teaches or suggests the
independent claim 1 limitations:
(k) manually adjusting a position of said first geometric object
to overlap with said second geometric object, thereby
creating at least one overlap region, [and]

2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Mar. 07, 2014); the Reply
Brief (filed Aug. 18, 2014); the Final Office Action (mailed May 7, 2013);
and the Examiner’s Answer (mailed June 18, 2014) for the respective
details.
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(m) automatically determining at least one overlap access rule
associated with said at least one overlap region using at
least said at least one first access rule and said at least
one second access rule;”
and the similar limitations recited in independent claims 9 and 12. (App. Br.
12–21.)

ANALYSIS
In finding Beir and Zotov teach or suggest the limitations (labelled
“(k)” and “(m)”) at issue, the Examiner relies on the disclosure in Beir of an
“eRoom page” on a display screen that includes a page element and a
shortcut list, and has an associated edit command “which allows certain
users to edit eRoom pages,” and a settings command “which permits settings
for the display and management of eRooms to be changed.” (Final Act. 5–6,
Ans. 27–28; Beir Fig. 4, col. 4, ll. 13–33, col. 5, ll. 8–14, 30–36, 53–61.)
Specifically, for element “(k)”, the Examiner finds Beir discloses:
The user can manually adjust the panes within the browser
application to cause the position of the leftmost boundary of the
page element 402 used to display said first eRoom region 60
shaped like a rectangular geometric object to overlap with the
area currently displaying said second shortcut list region 410
shaped like a rectangular geometric object, thereby creating at
least one overlap region. . . . (i.e., the “edit” control 448 and
the settings control 450 enable the user to change the display of
the eRoom so that an area within said eRoom can overlap with
and be associated with multiple items).
(Ans. 27.)
For element (m), the Examiner finds:
eRoom discussions can have various properties that can be used
to automatically determine at least one rule for accessing and
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displaying the page element 402 used to display said first
eRoom region and said second shortcut list region 410 that are
associated with said at least one overlap region created by
manually adjusting the panes of the browser application . . .
(i.e. the template files are used to create access rules for the
page element 402 used to display said first eRoom region and
said second shortcut list region 410).
(Ans. 28.)
Appellants argue the portions of Beir on which the Examiner relies do
not support the above-quoted characterizations by the Examiner of what Beir
discloses. (App. Br. 14–15, 17–19.) For example, Appellants argue Bier’s
discussion of the “edit” and “settings” commands does not “allow a user to
create an overlap region as that concept is taught by the instant invention and
required in every claim.” (App. Br 14.) Generally, Appellants discuss the
disclosures of Bier and Zotov in detail, and argue nothing in those references
supports a finding of a teaching or suggestion of the subject matter of the
claim elements at issue. (App. Br. 14–21.)
We are persuaded by Appellants’ arguments. The Examiner has not
cited any portion of Beir or Zotov that teaches or suggests the claim
limitations at issue, nor does the Examiner otherwise soundly articulate a
basis for the rejections insofar as claim limitations (k) and (m) are
concerned. Therefore, on the record before us, we are constrained to find
the Examiner errs in rejecting independent claims 1, 9, and 12.

CONCLUSION
For the reasons stated above, we do not sustain the obviousness
rejection of independent claims 1, 9, and 12 over Beir and Zotov. We also
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do not sustain the obviousness rejections of claims 2–8, 10, 11, and 13–19,
which claims depend from claims 1, 9, or 12.

DECISION
The Examiner’s rejection of claims 1–19 is reversed.

REVERSED