Ex Parte Grinberg

Board of Patent Appeals and Interferences

Jun 27, 2012

10734550 (B.P.A.I. Jun. 27, 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.
10/734,550 12/11/2003 Oded Grinberg 2003P00615US01
(S20.023)
2429
52025 7590 06/28/2012
SAP AG c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
PATEL, DHAIRYA A
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
06/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ODED GRINBERG
____________________

Appeal 2009-010920
Application 10/734,550
Technology Center 2400
____________________

Before ALLEN R MacDONALD, KRISTEN L. DROESCH, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010920
Application 10/734,550
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Introduction
The claims are directed to techniques for previewing content package
files through a portal interface before importing the content to the portal
computer. Spec. 2 ¶7. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for generating a preview of a content package
file, the method comprising:
retrieving references to first level content files from the
content package file, wherein the first level content files are
separate files from the content package file;
extracting content from the first level content files;
replacing references to the first level content files in the
content package file with the content extracted from the first
level content files to create a combined file;
removing the references from the combined file; and
creating a preview of at least a portion of the content package
file based on the content in the combined file, wherein
information rendered by the preview displays at least some of
the content extracted from the first level content files and
content from the content package file, wherein the preview
displays a version of the content package modified with the
content from the combined file, wherein the preview occurs
prior to generating a modified content package file from the
combined file.

Appeal 2009-010920
Application 10/734,550
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Krause
Laverty
Hull
US 6,160,554
US 6,771,384
US 6,772,338
Dec. 12, 2000
Aug. 3, 2004
(filed Jan. 10, 2000)
Aug. 3, 2004
(filed Oct. 26, 1999)
Basin
Lovvik
US 2002/0120639 A1
US 2003/0140065 A1
Aug. 29, 2002
Jul. 24, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 1-7 and 10-16 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Basin in view of Krause and Laverty. Ans. 3.
Claims 7 and 17 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Basin in view of Krause and Laverty and Lovvik. Ans. 3.
Claims 8 and 9 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Basin in view of Krause and Laverty and Lovvik and in
further view of Hull. Ans. 3.
Claim 18 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Basin in view of Krause and Hull. Ans. 3.
Claims 19-24 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Basin, Lovvik, Krause and Laverty. Ans. 4.
Claims 25 and 26 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Basin and Laverty. Ans. 4.
Claims 27 and 28 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Basin, Laverty and Hull. Ans. 4.

Appeal 2009-010920
Application 10/734,550
4
OPINION
Issues
Did the Examiner err in finding that Basin discloses the “combined
file” as claimed and finding that the filenames in Basin are equivalent to the
“references to first level content files” in the claim?
Did the Examiner err in finding that Basin discloses “creating a
preview of at least a portion of the content package file based on the content
in the combined file, wherein information rendered by the preview displays
at least some of the content extracted from the first level content files and
content from the content package file” as required in representative claim 1.
Analysis
With respect to independent claims 1, 11, 19 and 25, we reviewed the
Examiner’s rejections in light of Appellant’s contention that the Examiner
erred in finding that Basin teaches the previewing limitation of claim 1. We
agree with Appellant.
Claim 1 requires a preview of at least some of the content extracted
from the first level content files and content from the content package file.
The Examiner found that Basin teaches this limitation because the zip file,
which is the combined file of claim 1, “contains content extracted from the
‘pkzip25.exe’ or ‘pkzigtb.bmp’” and shows entries for executable files or
folders in Figure 9 of Basin. Ans. 24. The Examiner deemed these
executable files as the “‘preview’ of the files under ‘Pkzip25.exe’” disclosed
in Basin. Ans. 24.
Appellant contends that representation of a file folder or of nested
files under a folder is not equivalent to “creating a preview” using a “portion
of the content package file based on the content in a combined file.” Reply
3 (emphasis omitted). In sum, Appellant argues that Basin does not display
Appeal 2009-010920
Application 10/734,550
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a preview based on the content of the “combined file” or “content from a
first level content file and a content package file as recited in claim 1.”
Reply 3. We agree that Basin does not disclose a preview as claimed.
There is no indication in Basin that the preview as displayed is based
on content extracted from the first level content files or based on a combined
file. The Examiner cites the entire zip file as the “combined file” and the
filenames as the “references” with the files and folders as content. Ans. 23.
The Examiner also found that the information displayed in Basin is the file
or folder name and an indication (using the plus symbols in Figure 9) that
additional content in the form of executable files and folders is viewable.
Ans. 24. This view of the files in Basin, however, does not depend on the
content extracted from the files and folders in the zip file. The Examiner has
not identified where the files and folders indicated in the zip file shown in
Basin are dependent on “some of the content extracted from the first level
content files” as claimed. We find that the identified view of zip files in
Basin does not disclose the full scope of the preview limitation of claim 1.
Based on the above reasons, we reverse the Examiner’s rejection of
claim 1. This rejection forms the basis of the rejection for independent
claims 11, 19, and 25 and dependent claims 2-10, 12-18, 20-24 and 26-28.
Accordingly, we reverse the rejection of those claims as well. Because the
preview limitation appears in all claims, we need not reach the remaining
issue raised by Appellant.

CONCLUSIONS OF LAW
The Examiner erred in finding that Basin disclosed the preview
limitation of claims 1, 11, 19 and 25, and dependent claims 2-10, 12-18,
20-24 and 26-28.
Appeal 2009-010920
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DECISION
For the above reasons, the Examiner’s rejection of claims 1-28 is
reversed.

REVERSED

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