Avaya Inc.

Patent Trials and Appeals Board

Oct 30, 2020

2019003537 (P.T.A.B. Oct. 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.
14/721,783 05/26/2015 Rifaat Shekh-Yusef 4366-720-CIP 1303
48500 7590 10/30/2020
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
HUSSAIN, TAUQIR
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RIFAAT SHEKH-YUSEF, GORDON R. BRUNSON,
JOEL M. EZELL, and MILOS PUJIC
____________________

Appeal 2019-003537
Application 14/721,783
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4, 5, 7, 8, 11–16, 18, and 20–24. The Examiner has objected to
claim 3 and 9 and has indicated that claim 3 would be allowable if rewritten
in independent form. See Adv. Act. 1–2 (mailed January 7, 2019).
Appellant has canceled claims 6, 10, 17, and 19. Appeal Br. 2. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Avaya Inc. as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“managing graphical elements of communication devices.” Spec. ¶ 1.
According to the Specification, these graphical elements (i.e., graphical user
interface objects, such as a button, menu, icon, or text field) are referred to
as “widgets.” Spec. ¶ 13. In a disclosed embodiment, a communication
device may download from a network server a widget document that defines
widgets for an application. Spec. ¶¶ 3, 22.
Claims 1, 13, and 20 are independent claims. Claim 1 is
representative (see 37 C.F.R. § 41.37(c)(1)(iv)) and is reproduced below:
1. A method comprising:
getting, via a network and by a communication device, a
widget resource Uniform Resource Identifier (URI) for the
communication device, wherein the widget resource URI
identifies a location on a network device;
in response to getting the widget resource URI for the
communication device, the communication device downloading,
via the network, a context document based on the widget
resource URI, wherein the context document defines a first
widget or a location of a widget document that defines the first
widget, for use in the communication device, wherein the first
widget is used to create a first user interface element in the
communication device that communicates with a corresponding
network application, and wherein the context document has a
resource tree that defines a plurality of network applications that
use a plurality of widgets.

The Examiner’s Rejections
1. Claims 1, 2, 4, 5, 13–16, 20, 21, and 24 stand rejected under
35 U.S.C. § 103 as being unpatentable over Schneider et al. (US
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2012/0233560 A1; Sept. 13, 2012) (“Schneider”); Tam (US 2012/0229473
A1; Sept. 13, 2012); and Mandyam et al. (US 2009/0271778 A1; Oct. 29,
2009) (“Mandyam”). Final Act. 3–8.
2. Claim 22 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Schneider, Tam, Mandyam, and Forstall et al. (US
2007/0266093 A1; Nov. 15, 2007) (“Forstall”). Final Act. 8–9.
3. Claims 7, 8, 11, 12, and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Schneider, Tam, Mandyam, and
Kristjánsson (US 2015/0019991 A1; Jan. 15, 2015). Final Act. 9–12.
4. Claim 23 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Schneider, Tam, Mandyam, Forstall, and Hwang et al.
(US 2007/0150480 A1; June 28, 2007) (“Hwang”). Final Act. 12–14.

ANALYSIS2
Rejections of claims 1, 2, 4, 5, 11–16, and 20–24 under 35 U.S.C. § 103
Appellant argues that Mandyam, as relied on by the Examiner, fails to
teach “wherein the context document has a resource tree that defines a
plurality of network applications that use a plurality of widgets.” Appeal
Br. 6–9; Reply Br. 4–6.
Claim construction is an important step in a patentability
determination. A legal conclusion that a claim is obvious involves a two-
step inquiry wherein first, the claims are properly construed, and second, the

2 Throughout this Decision, we have considered the Appeal Brief, filed
January 25, 2019 (“Appeal Br.”); the Reply Brief, filed April 2, 2019
(“Reply Br.”); the Examiner’s Answer, mailed March 5, 2019 (“Ans.”); and
the Final Office Action, mailed November 2, 2018 (“Final Act.”), from
which this Appeal is taken.
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properly construed claims are compared to the prior art. See Medichem, S.A.
v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003); see also In re Crish, 393
F.3d 1253, 1256 (Fed. Cir. 2004). 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 be 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). We are mindful, however, that limitations are not to
be read into the claims from the Specification. In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993). Because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
We begin our analysis with a review of claim 1. Claim 1 recites a
method for getting a widget resource Uniform Resource Identifier (URI) and
downloading a context document based on the widget resource URI. In
addition, claim 1 has four wherein clauses—the first wherein clause
describing the widget resource URI, two wherein clauses describing the
context document, and one wherein clause stating an intended use for a
widget. We address these wherein clauses seriatim.
Regarding the first wherein clause, claim 1 recites “wherein the
widget resource URI identifies a location on a network device.” Although
not explicit, when considered in light of the Specification, we understand the
identified location is used in the step of downloading a context document
based on the widget resource URI.
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Claim 1 recites “wherein the context document defines a first widget
or a location of a widget document that defines the first widget, for use in
the communication device, wherein the first widget is used to create a first
user interface element in the communication device that communicates with
a corresponding network application.” As presently drafted, claim 1 does
not affirmatively use the first widget (i.e., claim 1 does not recite an
additional step of creating a first user interface). Instead, claim 1 sets forth
an intended use for the content of the context document.
Additionally, claim 1 recites “wherein the context document has a
resource tree that defines a plurality of network applications that use a
plurality of widgets.” This wherein clause merely describes the content of
the context document. This wherein clause does not affect the step of
downloading a context document based on the widget resource URI.
Further, claim 1 does not use a context document having a resource tree that
defines a plurality of network applications that use a plurality of widgets.
“Claim limitations directed to printed matter are not entitled to
patentable weight unless the printed matter is functionally related to the
substrate on which the printed matter is applied.” Praxair Distribution, Inc.
v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018)
(emphasis added). Our reviewing court has also explained that this printed
matter doctrine is not strictly limited to “printed” materials. Mallinckrodt,
890 F.3d at 1032. More specifically, “a claim limitation is directed to
printed matter ‘if it claims the content of information.’” Mallinckrodt,
890 F.3d at 1032 (quoting In re Distefano, 808 F.3d 845, 848 (Fed. Cir.
2015)). The content of non-functional descriptive material is not entitled to
weight in the patentability analysis. Cf. In re Lowry, 32 F.3d 1579, 1583
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(Fed. Cir. 1994) (“Lowry does not claim merely the information content of a
memory”).
“Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(footnote omitted). As a general proposition, we need not give patentable
weight to non-functional descriptive material absent a new and nonobvious
functional relationship between the descriptive material and the substrate.
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of
Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 10.2019, June
2020).
In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008)
(precedential), the Board held that the nature of the information being
manipulated by the computer should not be given patentable weight absent
evidence that the information is functionally related to the process “by
changing the efficiency or accuracy or any other characteristic” of the steps.
See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative)
(holding “wellness-related” data stored in a database and communicated
over a network was non-functional descriptive material as claimed because
the data “does not functionally change” the system).
Here, we determine the wherein clause related to the first widget
simply describes an intended use for the first widget and the wherein clauses
related to the context document merely describes the content of the context
document. In other words, the particular content of the context document
does not affect any step (e.g., the downloading step) or alter any structure
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recited in the claim. Therefore, the content of the context document is non-
functional descriptive material that does not distinguish the claim from the
prior art in terms of patentability.3,4 See Ngai, 367 F.3d at 1339.
Having determined independent claim 1 recites non-functional
descriptive material (as well as intended use limitations), we are mindful to
read the claim as a whole in our analysis. See Gulack, 703 F.2d at 1385
(“[T]he board cannot dissect a claim, excise the printed matter from it, and
declare the remaining portion of the mutilated claim to be unpatentable. The
claim must be read as a whole.”) (footnote omitted).
Based on the foregoing discussion, we construe claim 1 as follows:
1. A method comprising:
getting, via a network and by a communication device, a
widget resource Uniform Resource Identifier (URI) for the
communication device, wherein the widget resource URI
identifies a location on a network device;
in response to getting the widget resource URI for the
communication device, the communication device downloading,
via the network, a context document based on the widget
resource URI, wherein the context document defines [non-
functional descriptive material and intended use], and wherein
the context document has [non-functional descriptive material].

3 The pending claims are distinguishable from those in Lowry in which data
structures stored in memory contained both information used by application
programs and information regarding their physical interrelationships within
a memory. Lowry, 32 F.3d at 1583. Unlike in Lowry, we find the content of
the set of metadata is descriptive and does not relate to the structure of any
claimed element. See Lowry, 32 F.3d at 1583.
4 In addition, “[a]n[ ]intended use or purpose usually will not limit the scope
of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
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In light of our construction of claim 1, Appellant’s arguments are not
persuasive of Examiner error at least because they are directed to the non-
functional descriptive material portion of claim 1, which, as discussed
above, does not patentably distinguish over the prior art. See Ngai, 367 F.3d
at 1339.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 103. For similar reasons, we also sustain the
Examiner’s rejection of independent claims 13 and 20, which were not
argues separately and which also similarly recite non-functional descriptive
material. See Appeal Br. 9; see also 37 C.F.R. § 41.37(c)(1)(iv). In
addition, we sustain the Examiner’s rejections of claims 2, 4, 5, 11, 12, 14–
16, and 21–24, which depend directly or indirectly therefrom and were not
argued separately. See Appeal Br. 9; see also 37 C.F.R. § 41.37(c)(1)(iv).

Rejections of claims 7, 8, and 18 under 35 U.S.C. § 103
Claim 7 depends from claim 1 and recites “wherein the resource tree
identifies a location of a widget document for each of the plurality of
network applications.” Claim 18 recites a commensurate limitation.
Appellant argues Kristjánsson, as relied on by the Examiner, teaches
self-contained applications/URLs in which the URLs are in a link—i.e., part
of a web page and not a context document. Appeal Br. 9–10; Reply Br. 7–8.
Similar to our discussion regarding the wherein clauses related to the
context document in independent claim 1, claim 7 merely recites the content
contained with the resource tree (within the context document). The
particular content of the resource tree does not affect any step (e.g., the
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downloading step of claim 1) or alter any structure recited in the claim.
Therefore, the content of the resource tree is non-functional descriptive
material that does not distinguish the claim from the prior art in terms of
patentability.
In light of our construction of claim 7, Appellant’s arguments are not
persuasive of Examiner error at least because they are directed to the non-
functional descriptive material portion of claim 7, which, as discussed
above, does not patentably distinguish over the prior art. See Ngai, 367 F.3d
at 1339.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 7. For
similar reasons, we also sustain the Examiner’s rejection of claim 18, which
recites a similar limitation and was not argued separately. See Appeal
Br. 10; see also 37 C.F.R. § 41.37(c)(1)(iv). Additionally, we sustain the
Examiner’s rejection of claim 8, which depends from claim 7 and was not
argued separately. See Appeal Br. 9; see also 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1, 2, 4, 5, 7, 8,
11–16, 18, and 20–24 under 35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
13–16, 20,
21, 24
103 Schneider, Tam,
Mandyam
1, 2, 4, 5,
13–16, 20,
21, 24

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22 103 Schneider, Tam,
Mandyam, Forstall
22
7, 8, 11, 12,
18
103 Schneider, Tam,
Mandyam,
Kristjánsson
7, 8, 11,
12, 18

23 103 Schneider, Tam,
Mandyam, Forstall,
Hwang
23
Overall
Outcome
1, 2, 4, 5,
7, 8, 11–
16, 18, 20–
24

TIME PERIOD FOR 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)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED