Ex Parte Osofsky et al

Patent Trial and Appeal Board

Dec 26, 2012

11191332 (P.T.A.B. Dec. 26, 2012)

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.
11/191,332 07/28/2005 David Osofsky LOT920040052US3_087 5148
51835 7590 12/27/2012
IBM LOTUS & RATIONAL SW
c/o GUERIN & RODRIGUEZ
5 MOUNT ROYAL AVENUE
MOUNT ROYAL OFFICE PARK
MARLBOROUGH, MA 01752
EXAMINER
CHAU, DUNG K
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
12/27/2012 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 DAVID OSOFSKY and DAVID W. NIXON
____________

Appeal 2010-007715
Application 11/191,332
Technology Center 2100
____________

Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, , and
JEFFREY S. SMITH , Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007715
Application 11/191,332

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 4-11, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
Claim 1. A system for providing computer files based on an
application program for viewing by an end-user comprising:

a client computer system for generating the computer files to be
viewed by the end user, wherein the client computer system is configured to
provide appropriate non-executable support files that provide for viewing the
computer files; and

a server computer system for receiving the computer files and the
appropriate non-executable support files, wherein the server computer
executes the computer files-with the appropriate non-executable support
files such that the end user can properly view the provided computer files
irrespective of whether or not the server computer system or a computer
system of the end user include the application program;

wherein the client computer system further comprises a render and
upload component that arranges the computer files for transmission to the
server computer system and the render and upload component is configured
to arrange the computer files for transfer to the server computer system in a
directory structure substantially similar to a directory structure on the client
computer system.

Prior Art
Pinto US 2003/0046348 A1 Mar. 6, 2003
Budge US 6,564,248 B1 May 13, 2003
Saika US 2005/0131902 A1 June 16, 2005

Appeal 2010-007715
Application 11/191,332

3
Examiner’s Rejections
Claims 1, 4-7, and 9-11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pinto and Saika.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pinto, Saika, and Budge.

ANALYSIS
The Examiner finds that Pinto teaches “the end user can properly view
the provided computer files irrespective of whether or not the server
computer system or a computer system of the end user include the
application program” as recited in claim 1. Ans. 3-4, 9-10. Appellants
contend that contrary to claim 1, Figure 2 of Pinto places a plug-in on the
client for viewing a file using an embed tag. Br. 6-7.
Paragraph 26 of Appellants’ Specification discloses using a plug-in to
handle a file created by a specific application. The term “executes the
computer files with the appropriate non-executable support files such that
the end user can properly view the provided computer files irrespective of
whether or not the server computer system or a computer system of the end
user include the application program,” when read in light of Appellants’
Specification, encompasses the non-executable file including the embed tag
for the plug-in as taught by Pinto.
Appellants contend that Saika does not teach “a directory structure
substantially similar to a directory structure on the client computer system”
as recited in claim 1. Ans. 8-9. Appellants’ contention is inconsistent with
the teaching of Saika, which shows a directory structure in Figure 4(b)
including folder c with sub-directories d3, d4, and d5, that is “substantially
Appeal 2010-007715
Application 11/191,332

4
similar” to the directory structure of folder c on the client side shown in
Figure 4(a).
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
have not presented arguments for separate patentability of claims 4-11 which
fall with claim 1.

DECISION
The rejection of claims 1, 4-7, and 9-11 under 35 U.S.C. § 103(a) as
being unpatentable over Pinto and Saika is affirmed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Pinto, Saika, and Budge is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

kis