11426105 - (D) (P.T.A.B. Jun. 27, 2013)

Ex Parte Kordun

Patent Trials and Appeals BoardJun 27, 2013

11426105 - (D) (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEXANDER KORDUN ____________ Appeal 2010-011930 Application 11/426,105 Technology Center 2100 ____________ Before CARL W.WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-15 and 21-25. Claims 16-20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention is directed to a method of quoting content from a post in a discussion forum. See Specification 19, Abstract. Appeal 2010-011930 Application 11/426,105 2 Claim 1 is illustrative, with key disputed limitations emphasized: Claim 1: A method of quoting content from a post in a discussion forum comprising: selecting content within a source post of a first page of the discussion forum provided by a server; performing a drag operation wherein a representation of the selected content is dragged in coordination with motion of an onscreen pointer; responsive to the drag operation, storing, within the server, a state of the first page of the discussion forum comprising the source post, wherein the state specifies which portions of the first page are visible; during the drag operation, loading and displaying at least a second page of the discussion forum responsive to a user selection of a page navigation control that causes a different page than is currently displayed to be loaded, wherein the page navigation control is selected during the drag operation; when the drag operation terminates and the onscreen pointer is not located over an open reply form of the discussion forum, reloading the first page, recalling the state of the first page of the discussion forum from the server, and changing the view to display the first page in the recalled state; and when the drag operation terminates with the onscreen pointer being located over an open reply form on the at least a second page of the discussion forum, inserting a copy of the selected content within the open reply form in the discussion forum upon termination of the drag operation. Appeal 2010-011930 Application 11/426,105 3 The Examiner relies on the following as evidence of unpatentability: Windl US 2002/0196271 A1 Dec. 26, 2002 Freach US 6,710,788 B1 Mar. 23, 2004 Bales US 2007/0113194 A1 May 17, 2007 (Filed Mar. 9, 2006) THE REJECTIONS 1. The Examiner rejected claims 1-10 and 21-25 under 35 U.S.C. §103(a) as unpatentable over Bales and Windl. Ans. 4-8.1 2. The Examiner rejected claims 11-14 under 35 U.S.C. §103(a) as unpatentable over Bales and Freach. Ans. 8-10. 3. The Examiner rejected claim 15 under 35 U.S.C. §103(a) as unpatentable over Bales, Freach, and Windl. Ans. 10-11. ISSUE Based upon our review of the record, the arguments proffered by Appellant and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under § 103, has the Examiner erred by finding that Bales discloses “responsive to the drag operation, storing, within the server, a state of the first page of the discussion forum comprising the source post, wherein the state specifies which portions of the first page are visible” as generally set forth within independent claims 1, 12, and 21? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s 1 Throughout this opinion, we refer to the Appeal Brief filed April 8, 2010; and, the Examiner’s Answer mailed June 11, 2010. Appeal 2010-011930 Application 11/426,105 4 contentions in the Appeal Brief (App. Br. 8-11) that the Examiner has erred. We agree with Appellant’s conclusions. Appellant argues that the Examiner erred in relying upon paragraphs [0160] and [0168] of Bales to disclose “responsive to the drag operation, storing, within the server, a state of the first page of the discussion forum comprising the source post, wherein the state specifies which portions of the first page are visible” as set forth in independent claim 1. Br. 9. Appellant points out that the relied upon section of Bales recites “when a community member drops the draggable resource onto a drop zone, a dynamic content call can be made to a remote server, for updating the drop zone area of the user interface with an HTML fragment.” Id. Consequently, Appellant argues that, at best, Bales discloses that a remote server can update the drop zone area of the active page to show that a hyperlink has been inserted. Id. The Examiner finds that communication with a remote server for “updating the drop zone area of the user interface” (Bales, paragraph [0168]) necessarily requires the remote server to have the current, or previous “state” of the user interface stored. Ans. 12. We are not persuaded by the Examiner’s position. All that is actually required by the language of Bales is that the remote server know the current or previous “state” of the drop zone, which does not specify “which portions of the first page are visible” as required by claim 1. Therefore we find that the Examiner erred in rejecting independent claim 1, as well as independent claims 12 and 21, which recite commensurate limitations.2 2 We recognize that Appellant’s arguments present additional issues. Some of the arguments presented by the additional issues are not persuasive; Appeal 2010-011930 Application 11/426,105 5 CONCLUSION The Examiner erred in rejecting claims 1-15 and 21-25 under § 1033. ORDER The Examiner’s decision rejecting claims 1-15 and 21-25 is reversed. REVERSED llw nonetheless we are persuaded of error by the issue stated above and as such we do not reach the additional issues as the issue stated above is dispositive of the appeal. 3 We note Appellant submitted no arguments regarding the rejection by the Examiner of claim 15 under 35 U.S.C. §103(a) as unpatentable over Bales, Freach, and Windl. We assume such omission was inadvertent; however, as we have reversed the Examiner’s rejection of claim 12, from which claim 15 depends, and as the citation of Windl does not cure the error we found in that rejection, we also reverse the Examiner’s rejection of claim 15.