Arthursson, Daniel et al.

Patent Trials and Appeals Board

Nov 24, 2020

2019005082 (P.T.A.B. Nov. 24, 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.
14/754,512 06/29/2015 Daniel Arthursson XCER154023 1546
26389 7590 11/24/2020
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
EXAMINER
OBISESAN, AUGUSTINE KUNLE
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL ARTHURSSON and MARCUS BRISTAV
____________________

Appeal 2019-005082
Application 14/754,512
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejections of (i) claims 1 and 13 for non-statutory
obviousness-type double patenting; and (ii) claims 1–20 under 35 U.S.C.
§ 103(a) as being unpatentable as obvious.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). According to
Appellant, Xcerion Aktiebolag the real party in interest (Appeal Br. 3).
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INVENTION
Appellant’s invention, titled “NETWORK OPERATING SYSTEM”
(Title), “is directed to a network operating system that provides more
effective ways of leveraging the connectivity of computer networks” (Spec.
2:30–32) using “an XML virtual machine . . . that accepts high-level
application code written in an XML programming language as input” (Spec.
2:30–3:1) in such a manner that “[m]ulti-instance applications, with each
instance potentially supporting multiple views, may be created and
executed” (Spec. 3:6–7). Appellant discloses and claims a “nontransitory
computer-readable medium” with instructions to operate “one or more
processors of a client computing device” (claim 1) and “[a] client computing
device configured to open an application package containing an
application’s process and view logic” (claim 13), that provide “a generalized
collaboration environment where network communications are readily
integrated into applications and other aspects of the user experience” (Spec.
2:22–24) to permit “leveraging the connectivity of computer networks”
(Spec. 2:27–28). Appellant discloses that this is especially useful in a cloud
environment where an increasing number of services are being made
available from the network (see Spec. 2:2–28). Independent method claim 1
is illustrative of the invention and is reproduced below, with bracketed
information and emphasis added to disputed portions of the claim.
1. A nontransitory computer-readable medium having
computer-executable instructions stored thereon that, in
response to execution by one or more processors of a client
computing device, cause the computing device to open an
application package containing an application’s process and
view logic, by:
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obtaining resources of an application being opened as
specified in a corresponding application package on the client
computing device, the application defined in the application
package having separately defined process and view logic;
instantiating an instance object that associates process
and view objects to a particular application instance and
tracks a runtime state of the application during execution, and
wherein potentially multiple instances of the application
execute concurrently on the client computing device;
[A1] re-creating a previous runtime state of the
application within the instance object using data provided
with the application package indicating the previous runtime
state, [A2] wherein the previous runtime state was affected by
a user interaction; and
executing the application’s process and view logic
relative to the appropriate application instance including
using the instance object to provide context of the runtime
state in executing application logic
(Appeal Br. 20, Claims Appendix).

EXAMINER’S REJECTIONS
(1) The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as
being directed to a judicial exception such as an abstract idea, without
significantly more (see Final Act. 2–3). Because the Examiner has
withdrawn this rejection in the Answer (see Ans. 3), as recognized by
Appellant (see Reply Br. 10), we do not reach the merits or otherwise review
this rejection in our decision, and we will not address Appellant’s arguments
(see Appeal Br. 9–15; Reply Br. 9–10) directed thereto.
(2) The Examiner rejected claims 1 and 13 under the judicially created
doctrine of non-statutory, obviousness-type double patenting over claim 1 of
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Arthursson et al. (US 8,239,511 B2; issued Aug. 7, 2012) (hereinafter,
“Arthursson”)2 (Final Act. 3–6).
(3) The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as
being unpatentable over Hofhansl et al. (US 2008/0201701 A1; published
Aug. 21, 2008) (hereinafter, “Hofhansl”), Wolff et al. (US 2005/0114871
A1; published May 26, 2005) (hereinafter, “Wolff”), and Quingping et al.
(WO 02/097616 A1; published Dec. 5, 2002) (hereinafter, “Quingping”)
(Final Act. 7–15).

ISSUE
Based on Appellant’s arguments in the Briefs (Appeal Br. 15–19;
Reply Br. 10–13), only one principal issue is before us on appeal:
Has Appellant timely shown the Examiner erred in rejecting claims 1–
20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Hofhansl, Wolff, and Quingping because Wolff and Quingping, and thus the
combination of Hofhansl, Wolff, and Quingping, fail to teach or suggest

2 Appellant’s briefs fail to present any arguments with regard to the non-
statutory, obviousness-type double patenting rejection of claims 1 and 13,
other than to state that Appellant intends to file a terminal disclaimer (see
generally Appeal Br. 19). Furthermore, we note no terminal disclaimer has
been filed or is currently in the record in the instant application. Therefore,
Appellant has not shown that the Examiner erred in rejecting claims 1 and
13 under the judicially created doctrine of non-statutory, obviousness-type
double patenting. See 37 C.F.R. § 41.37(c)(1)(iv). As a result, there is no
issue presented on appeal with regard to this rejection, and we summarily
affirm and do not address it further in our analysis.
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limitations A1 and A2, as recited in representative claim 1 (see claim 1
(emphases added))?3

ANALYSIS
We have reviewed Appellant’s arguments in the briefs (see Appeal
Br. 15–19; Reply Br. 9–13), the Examiner’s obviousness rejection (Final
Act. 7–15), the Advisory Action mailed March 30, 2018 (p. 2), and the
Examiner’s response to Appellant’s arguments (Ans. 3–4). Appellant’s
arguments, asserting the Examiner’s obviousness rejection is in error
(Appeal Br. 15–19), are unpersuasive. The dispositive issue presented by
these arguments is whether or not the Examiner erred in finding the
combination of Wolff and Quingping teaches or suggests limitations A1 and
A2, as recited in representative claim 1 (see claim 1).
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references).
With regard to representative claim 1, Appellant’s contentions
(Appeal Br. 4–7; Reply Br. 2) that Wolff and Quingping individually fail to

3 With regard to the obviousness rejection based on Hofhansl, Wolff, and
Quingping, Appellant presents arguments as to independent claims 1 and 13,
and relies on those arguments for the patentability of claims 2–12 and 14–20
which depend respectively therefrom (see generally Appeal Br. 9–15).
Appellant’s arguments in this regard are drawn to limitations A1 and A2,
recited in claim 1, and commensurately recited in claim 13. Based on
Appellant’s arguments, we select claim 1 as representative of claims 1–20
rejected over Hofhansl, Wolff, and Quingping.
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disclose or suggest both limitations A1 and A2, as recited in representative
claim 1, are not persuasive in light of the Examiner’s’ application of a
combination of the teachings and suggestions of Wolff and Quingping, as
well as the fact that the Examiner relies on Wolff for limitation A1 and
Quingping for limitation A2. In other words, the Examiner does not rely on
either Wolff or Quingping individually as teaching both A1 and A2, but
relies on the combination of Wolff and Quingping as teaching or suggesting
A1 and A2 together.
We emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also
MPEP § 2123.
The Examiner finds, and Appellant does not dispute, that (i) Wolff
teaches the re-creation of limitation A1 recited in claim 1 (see Final Act. 9
citing Wolff ¶ 36; Advisory Action 2 citing Wolff ¶¶ 8, 12, 18, 36, 38; Ans.
4 citing Wolff ¶¶ 12, 36) and (ii) Quingping teaches that a previous runtime
state was affected by a user interaction as recited in limitation A2 of claim 1
(see Final Act. 10 citing Quingping 7:17–18; Ans. 4 citing Quingping 7:14–
20). Furthermore, we agree with the Examiner’s findings that Hofhansl,
Wolff, and Quingping are all in an analogous art (see generally Final Act. 8–
10), because both Wolff (see Wolff ¶¶ 12, 38; Fig. 1) and Quingping (see
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Quingping Abstract; 7:8–28) both optimize start-up in a run-time
environment.
Appellant’s argument that “the allegations of the [Final] Office Action
and the Advisory Action regarding the teachings of Wolff and Quingping
constituted factual errors” (Appeal Br. 17) since “these references do not
actually disclose or suggest the claim features” (Appeal Br. 18), is
conclusory and therefore unpersuasive. Such conclusory assertions without
supporting explanation or analysis particularly pointing out errors in the
Examiner’s reasoning fall well short of persuasively rebutting the
Examiner's prima facie case of obviousness. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Appellant has not presented substantive
arguments and supporting evidence persuasive of Examiner error. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”);
37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”).
In this light, Appellant’s arguments that Wolff and Quingping fail to
disclose, teach, or suggest limitations A1 and A2 (see Appeal Br. 15–18;
Reply Br. 11–13), are not persuasive, and have not persuaded us of error in
the Examiner’s rejection of claim 1, as well as claims 2–20 grouped
therewith, under 35 U.S.C. § 103(a).
Regarding Appellant’s new arguments as to motivation and teaching
away found at pages 11 through 13 of the Reply Brief, we note that an
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appeal “does not, unto itself, entitle an appellant to de novo review of all
aspects of a rejection.” Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Rather, an appealed rejection is reviewed for error identified
by the appellant. See also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.” (citing Frye)).
An appellant may attempt to overcome an examiner’s
obviousness rejection on appeal to the Board by submitting
arguments and/or evidence to show that the examiner made an
error in either (1) an underlying finding of fact upon which the
final conclusion of obviousness was based, or (2) the reasoning
used to reach the legal conclusion of obviousness.
Frye, 94 USPQ2d at 1075.
“Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived” and will not be considered absent a
showing of good cause why the arguments could not have been presented in
the Appeal Brief. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative); see also Optivus Tech., Inc. v. Ion Beam Applications S.A.,
469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in
its opening brief . . . is waived.”) (alterations in original).
As a result, any new arguments in the Reply Brief not presented in the
Appeal Brief will not be considered absent a showing of good cause why the
arguments could not have been presented in the Appeal Brief. See Ex parte
Borden, 93 USPQ2d at 1477. An argument presented for the first time in a
Request but not advanced in the Appeal Brief or appropriately furnished in a
Reply Brief (when one has been submitted) is not properly before the Board,
at least in part, because the Examiner is not afforded a timely opportunity to
respond and the Board is deprived of any such response that may have been
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supplied by the Examiner to the belatedly presented new argument. See In
re Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986).
Appellant, at pages 11 through 13 of the Reply Brief, made arguments
that (i) Wolff teaches away from the claimed invention, namely initializing
after the system has entered an interactive mode, because Wolff relies on the
state of application before user interaction (see Reply Br. 11–12); and (ii)
there is no motivation to combine Wolff because Wolff contemplates the
lack of user interaction in an initialization state (see Reply Br. 12–13).
These arguments were not raised in the Appeal Brief, and have been
forfeited. Consequently, issues from these arguments are raised for the first
time in the Reply Brief, and, therefore, are deemed to be forfeited. See
Optivus Tech., 469 F.3d at 989 (“[A]n issue not raised by an appellant in its
opening brief . . . is waived.”) (alterations in original); In re Watts, 354 F.3d
1362, 1368 (Fed. Cir. 2004) (“Because the appellant failed to argue his
current interpretation of the prior art below . . . we hold that the appellant
has waived [this] argument.”); In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
(Fed. Cir. 2012) (“We agree with the PTO that Baxter waived its arguments
regarding the [means for] limitation in claim 30 by failing to timely raise
them before the Board.”); Nuvo Pharm. (Ireland) Designated Activity Co. v.
Dr. Reddy’s Labs. Inc., 923 F.3d 1368, 1378 (Fed. Cir. 2019) (concluding
that “Nuvo’s argument was not raised below and thus is forfeited” and citing
in support of this proposition TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356,
1363 (Fed. Cir. 2017), which utilized the term “waive[r]”); see also Fuji
Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1375 n.4 (Fed. Cir.
2005) (Arguments first raised in the reply brief and not properly raised in the
opening brief are not addressed.).
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In view of the foregoing, Appellant has not shown the Examiner erred
in rejecting representative claim 1, as well as claims 2–20, grouped
therewith, under 35 U.S.C. § 103(a) over Hofhansl, Wolff, and Quingping.

CONCLUSIONS
(1) Appellant has not presented any arguments as to the merits of the
non-statutory, obviousness-type double patenting rejection over claims 1 and
13 over claim 1 of Arthursson. Because Appellant presents no arguments
directed to the non-statutory, obviousness-type double patenting rejection,
this rejection is summarily affirmed. Manual of Patent Examining
Procedure § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018) (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”); see also 37 C.F.R. § 41.31(c) (“An
appeal, when taken, is presumed to be taken from the rejection of all claims
under rejection unless cancelled by an amendment filed by the applicant and
entered by the Office.”); 37 C.F.R. § 41.37(c)(iv) (“[A]ny arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.”). Therefore, the rejection of
claims 1 and 13 under the judicially created doctrine of non-statutory,
obviousness-type double patenting is sustained because Appellant has not
presented any arguments as to this rejection or otherwise shown the rejection
to be in error.
(2) Appellant has not shown the Examiner erred in rejecting claims 1–
20 under 35 U.S.C. § 103(a) over Hofhansl, Wolff, and Quingping.
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Thus, we affirm the Examiner’s (i) obviousness-type double patenting
rejection of claims 1 and 13; and (ii) obviousness rejection of claims 1–20
under 35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 13 Non-statutory Double
Patenting
1, 13
1–20 103(a) Hofhansl, Wolf,
Quingping
1–20
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED