Winn, John et al.

Patent Trials and Appeals Board

Dec 30, 2020

2019005368 (P.T.A.B. Dec. 30, 2020)

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.
13/360,594 01/27/2012 John Winn 14917.2764USI1/334728.01 4969
27488 7590 12/30/2020
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
FIGUEROA, KEVIN W
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
12/30/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO27488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WINN, FERNANDO GARCIA, TORE SUNDELIN, and
JAMES EDELEN
Appeal 2019-005368
Application 13/360,594
Technology Center 2100
Before MICHAEL J. STRAUSS, JAMES B. ARPIN, and
SCOTT RAEVSKY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 7–13, 17, and 20–30. See Final

1 We refer to the Specification, filed January 27, 2012 as amended on
February 7, 2014 (“Spec.”); Final Office Action, mailed July 26, 2018
(“Final Act.”); Appeal Brief, filed November 26, 2018 as amended January
18, 2019 (“Appeal Br.”); Examiner’s Answer, mailed May 6, 2019 (“Ans.”);
and Reply Brief, filed July 8, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Microsoft Technology Licensing, LLC.
Appeal Br. 3.
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Application 13/360,594
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Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to generating an action-oriented user
experience based on prediction of user response actions to received data.
Spec., Title. Claim 1, reproduced below, is illustrative:
1. A computer-implemented method for generating an action-
oriented experience comprising:
monitoring responses by a first device of a user to
incoming data, the incoming data characterized by at least one
feature of a plurality of features;
generating a predicted action response based on a pattern
of actions, wherein the pattern of actions includes at least one
action executed on the first device of the user in response to
incoming data having the at least one feature, and wherein the
predicted action response comprises one of:
categorizing the incoming data, moving the incoming data
to a particular file folder, promptly replying to the incoming data,
deleting the incoming data, creating a meeting appointment
regarding the incoming data or creating a task for the incoming
data;
receiving new incoming data at a second device of the
user, the new incoming data having the at least one feature, the
second device of a different type from the first device; and
in response to receiving the new incoming data at the
second device, sending a notification to at least the second device
including a selectable icon for performing the predicted action
response at the second device.
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Application 13/360,594
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REFERENCES
The Examiner relies on the following references:
Name Reference Date
Albertson US 2008/0172261 A1 July 17, 2008
Amoroso US 2010/0153325 A1 June 17, 2010
Wang US 2011/0029616 A1 Feb. 3, 2011
REJECTIONS
Claims 1, 7–12, 17, and 20–30 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Amoroso and Wang.
Final Act. 4–17.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Amoroso, Wang, and Albertson. Id. at 17–18.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Arguments not made are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken and (2) the Examiner’s Answer in response to
Appellant’s Appeal Brief, and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
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Examiner’s Findings and Appellant’s Contentions of Error
The Examiner finds Amoroso’s e-mail system that recommends
actions for incoming messages based on past user behavior teaches the
majority of limitations recited by the independent claims except for (i) the
specific predicted action responses listed in the alternative as enumerated in
the “wherein” clause of the generating step of claim 1 and (ii) the second
device being a different type than that of the first device. Final Act. 7–9.
The Examiner finds Wang’s system that responds to messages received from
a range of communication devices and service (e.g., email, fax, phone, texts,
MMS, TV, or other devices) teaches (i) at least one of the predicted action
responses enumerated by claim 1 and (ii) the first and second devices being
different types. Id. at 9.
Appellant contends neither Amoroso nor Wang teaches “analyz[ing]
historical email behavior for a first device of a user to offer a notification
regarding a predicted response for a second device of the user.” Appeal
Br. 15. According to Appellant, although “the Office Action relies on Wang
to supply a ‘second device,’ . . . Wang’s second device is a ‘sending device’
of another user, not a second device of the same user.” Id. (emphasis
omitted). Appellant further argues Wang’s auto-reply or out-of-office email
messages to a user device are responsive to incoming messages received
from a range of sending devices of other users, such that Wang fails to
disclose a second device of the same user as required by claim 1. Id. at 15–
16. Finally, Appellant contends “Albertson [does not] compensate for the
deficiencies of Amoroso and Wang.” Id. at 16.
The Examiner responds, contesting Appellant’s argument that
Amoroso fails to analyze historical email behavior of a first device to offer a
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response for a second device. Ans. 4–5. The Examiner explains that
Amoroso “teach[es] generating a predicted action response based on a
pattern of actions” including “a first and second device which are distinct
from each other.” Id. The Examiner further explains “that the Wang
reference is cited for specifically teaching the actions cited by the claim.”
Id. at 5. Addressing the first and second devices, the Examiner finds
Independent claim 1 (and subsequent independent claims) recites
monitoring responses by a first device of a user to incoming data.
The Office Action cites [Amoroso’s] figure 4 and [0007].
Reference will be made to figure 3, of which figure 4 is a flow
diagram of. [0048] states “The in box 70 also has an observation
program 78 which is capable of observing all actions which the
user is taking with the received messages”. Thus this inbox is
considered the first device which is monitoring responses of a
user to incoming data. The second device as cited by the Office
Action is the exchange server. This incoming data is received and
processed at the second device, the exchange server and
corresponding components such as the data[-]mining server 62
and mail classification unit 54. This device is “of the user” in
the sense that it corresponds to a specific user when they receive
an item. The client side and server are different entities and thus
meet the limitations of the first device being different from the
second device. Data is naturally received at the native inbox of
the user. This same data is also received in the exchange server,
which is different from the user’s client side applications as
shown in figure 3.
Id. The Examiner further finds Wang also teaches the two devices of
claim 1:
Examiner argues that as stated above, it is shown how Amoroso
teaches two different devices. Wang however was cited as
additionally teaching this in the alternative. The cited portion of
Wang in the Office Action states that the receiving device can be
any number of devices and is a generic term for a communication
device. Thus a user is able to receive incoming data by way of a
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computer, phone, fax, text message, etc. This citation is
supplemental to the Amoroso reference.
Id. at 6.
Responding to Appellant’s contention that Albertson fails to remedy
the argued deficiencies of Amoroso and Wang, the Examiner notes the
reference “is not cited for any independent claims but rather for teaching a
specific limitation of a dependent claim.” Id.
Appellant replies, contending the Examiner’s mapping of
(i) Amoroso’s inbox to the claimed first device of a user and (ii) Amoroso’s
exchange server to the claimed second device of a user fails to satisfy the
limitations recited by claim 1. Reply Br. 3. Appellant argues, although the
recited steps of providing a predicted response may be performed by a client
specific device such as a server, “the claims are directed to the ‘client
device’ embodiment . . . based on the explicit claim language, ‘a first device
of a user’ and ‘a second device of the user.’” Id. at 4 (emphasis omitted).
Appellant directs attention to the Specification, describing that
The first device (e.g., client device 701) may include, for
example, a personal computer; and the second device (e.g., client
devices 730-1 . . . 730-N) may include, for example, a mobile
phone, laptop, desktop, tablet computing device, TV, home
automation system or appliance, car, heads-up display, music
player, game console, security system, video monitor or display,
etc.
Id. (citing Spec. ¶ 67).
As a first allegation of error, Appellant argues Amoroso inbox fails to
teach the first device of claim 1 because “an ‘inbox’ is not a ‘device’ – client
server, or otherwise.” Id. at 6. Second, “according to the Examiner's
construction, the first device (e.g., [Amoroso’s] ‘inbox’) is hosted on the
second device (e.g., ‘exchange server’).” Id. Third, Appellant argues
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Amoroso’s exchange server “hosts inboxes of multiple users and is not
confined to a single user. Thus, the exchange server cannot be considered a
device ‘of the user,’ as claimed.” Id. at 7. Finally, Appellant contends the
Examiner errs in relying on Wang for an alternative teaching of the first and
second devices of a user, arguing “the mere availability of different types of
user devices does not teach or suggest evaluating a pattern of actions on a
first device of the user and providing a notification for performing a
predicted action on a second device of the user.” Id. (emphasis omitted).
Analysis
Appellant’s contentions are unpersuasive of reversible Examiner
error. Appellant provides insufficient evidence or argument to persuade us
that the claimed first and second devices of a user are distinguishable over
and, therefore, are not taught or suggested by Amoroso’s inbox and
exchange server, respectively. See Ans. 5. Amoroso discloses the disputed
inbox as follows:
The client-side message inbox 70 receives the categorized mail
74 and reads the predicted classification attribute. That is, the
inbox has a processor 76 containing a program which is capable
of reading the XML document. The inbox also has a personal
assistant client 72 that presents the XML document containing
the recommended action to a user 73. The user 73 then may
confirm or reject the recommended action through the use of a
confirmation component associated with the personal assistant
client 72. If a recommended action is confirmed, the processor
76 may have an associated task manager that may carry out the
recommended action or the task manager may be its own network
device.
Amoroso ¶ 47. Appellant’s Specification does not provide a definition for a
device, only providing non-limiting examples of devices including personal
computers, mobile telephones, laptops, desktops, tablets, and others. In
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contrast, one definition provides the meaning of a “device” as “[a] generic
term for a computer subsystem.”3 Thus, Amoroso’s inbox including a
processor is properly characterized as and teaches a device.
Furthermore, we decline to limit a broadest reasonable interpretation
of a device, including the argued first device or a user and second device of
the user to the specific examples of devices recited in the Specification. See
Reply Br. 4. Although we interpret claim limitations consistent with the
specification, we do not import limitations from the specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). In particular, when construing
claim terminology during prosecution before the Office, claims are to be
given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
have been interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant . . . because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id.
We also are unpersuaded Amoroso’s client side inbox 70, including
processor 76, is the same device as Amoroso’s server side Exchange Server
40 that includes edge transport server 44 and hub transport server 46. As
depicted in Amoroso’s Figure 3, inbox 70 and Exchange Server 40 are show
as separate systems or elements. We find insufficient evidence indicating
that inbox 70 is provided on the same platform as exchange server 40.

3 MICROSOFT COMPUTER DICTIONARY 155 (5th ed. 2002).
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Furthermore, even if inbox 70 were hosted on the same platform as the
exchange server, each reasonably would be considered a separate computer
subsystem and, according to the definition of device provided above, are
reasonably considered to be separate devices.
Appellant’s argument that Amoroso’s exchange server cannot be
considered a device of the user because it hosts inboxes of multiple users is
also unpersuasive. Reply Br. 7. Appellant does not identify any definition
of the argued device of a/the user that would limit the device to use by a
single user to the exclusion of others. Instead, we agree with the Examiner
in finding Amoroso’s exchange server is a device that “is ‘of the user’ in the
sense that it corresponds to a specific user when they receive an item.” Ans.
5.
For the reasons discussed above, we are not persuaded that the
Examiner errs in finding Amoroso teaches or suggests the disputed
limitations. Therefore, we do not address whether Wang in the alternative
also teaches or suggests these limitations. Furthermore, as the Examiner
does not apply Albertson in the formulation of the argued rejection of claim
1, we do not address Appellant’s contentions in connection with that
reference. Accordingly, we sustain the rejection of independent claim 1 and,
similarly, the rejection of independent claims 11, 17, and 29,4 which are
argued on the same basis as claim 1. We further sustain the rejections of

4 Although Appellant’s Appeal Brief does not explicitly indicate that
independent claim 29 is considered patentable for at least the same of similar
reasons as independent claim 1, Appellant indicates such in the Reply Brief
at page 10.
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dependent claims 7–10, 12, 13, 20–28, and 30, which are not argued
separately with particularity.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 7–12, 17, and 20–30
under 35 U.S.C. § 103(a) over the combined teachings of Amoroso and
Wang.
We affirm the Examiner’s rejection of claim 13 under U.S.C. § 103(a)
over the combined teachings of Amoroso, Wang, and Albertson.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7–12, 17,
20–30
103(a) Amoroso, Wang 1, 7–12, 17,
20–30

13 103(a) Amoroso, Wang,
Albertson
13
Overall
Outcome
1, 7–13, 17,
20–30

RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED