Ex Parte Koch

Board of Patent Appeals and Interferences

Dec 9, 2010

10470930 (B.P.A.I. Dec. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARTWIG KOCH
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Appeal 2009-006855
Application 10/470,930
Technology Center 2400
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Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 (a) from the Examiner’s final
rejection of claims 11 through 20. Claims 1 through 10 have been canceled.
We have jurisdiction under 35 U.S.C. § 6 (b).
We reverse.

INVENTION AND REPRESENTATIVE CLAIM
Claim 11 itself is best representative of the disclosed and claimed
invention:
11. A method of displaying an Internet object, comprising:
transmitting the Internet object along with its source code;
generating filter data before the Internet object is displayed by a
display device;
checking for consistency of elements of the source code with the filter
data; and
displaying the Internet object as a function of the checking for
consistency.

PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
anticipation and unpatentability:
Nye US 2002/0156917 A1 Oct. 24, 2002
(Filed: Jan. 10, 2002)

Lopke US 6,553,310 B1 Apr. 22, 2003
(Filed: Nov. 14, 2000)

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Heilbron US 7,155,489 B1 Dec. 26, 2006
(Filed: Jun. 28, 2000)

Independent claims 11 and 19 and their respective dependent claims
13, 14, and 20 stand rejected under 35 U.S.C. §102(e) as being anticipated
by Nye. All remaining claims on appeal stand rejected under 35 U.S.C. §
103(a). As evidence of obviousness as to claims 15, 17, and 18, the
Examiner relies upon Nye in view of Lopke. The Examiner considers claim
12 obvious in view of Nye and Heilbron. Lastly, claim 16 stands rejected in
view of Nye, Lopke, and Heilbron.

ANALYSIS
Page 4 of the principal Brief indicates that the present application is a
national stage of a PCT application, which in turn is based upon priority to a
German application for which the certified copy has been placed into the
file. Furthermore, a certified English language translation of this priority
document was also submitted to perfect the foreign priority date. As such,
the effective filing date of this application is January 31, 2001.
On the other hand, the Nye patent publication relied upon by the
Examiner has a filing date of January 10, 2002. This publication is based
upon several provisional applications including the '025 provisional
application filed on January 11, 2001. In response to arguments at pages 4
and 5 of the principal Brief on appeal, contending that Nye as utilized by the
Examiner is not entitled to a date under 35 U.S.C. § 102 earlier than January
31, 2001, the effective priority date of the present application, the responsive
arguments portion of the Answer at page 11 contends that this '025
provisional application does appear to provide a basis for the Examiner-
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relied upon material to anticipate the claims on appeal in the first stated
rejection before us. These views of the Examiner appear to be identical to
those set forth in the Advisory Action mailed on April 30, 2008.
Appellant asserts that there is no apparent correspondence between
the noted portions of the present publication of Nye to the noted portions of
the provisional application' 025 on which the Examiner relies. On the other
hand, at page 11 of the Answer the Examiner merely asserts that it does
appear to provide a basis for the alleged features, by identifying certain
portions of the '025 provisional application. Significantly, the Answer does
not formally rely upon this material as evidence to support the Examiner’s
position but merely makes reference to it.
Therefore, we are constrained to conclude that the Examiner has not
established a prima facie case of anticipation since the initial burden is upon
the Examiner. The gratuitous cross allegations leave us with no other
conclusion. The Examiner’s noted portions relied upon in the '025
provisional application at the bottom of page 11 of the Answer are not
reproduced in the Answer and not formally relied upon as evidence by the
Examiner at the same time that they are contested by Appellant in the
principal Brief as a basis for correlating the alleged features within the
rejection under 35 U.S.C. §102 before us. Thus, the Examiner has presented
us with mere allegations of anticipation rather than the actual documentary
evidence itself along with an explanation and analysis with respect to the
noted portions relied upon by the Examiner so that we may independently
confirm or not confirm the Examiner’s positions.

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CONCLUSION AND DECISION
Since Appellant has shown that the Examiner erred in the rejection
before us under 35 U.S.C. § 102, this rejection of claims 11, 13, 14, 19, and
20 on appeal on this statutory basis is reversed. As such, the remaining
rejections before us under 35 U.S.C. § 103 must also be reversed.
Therefore, all rejections before us are reversed.

REVERSED

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