Ex Parte Geimer et al

Patent Trial and Appeal Board

Jul 28, 2017

13923225 (P.T.A.B. Jul. 28, 2017)

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.
13/923,225 06/20/2013 Matt Geimer 14917.2360US01/339149.01 9807
27488 7590 08/01/2017
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
WOOD, WILLIAM C
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
US PT027488 @ merchantgould .com
u sdocket @ micro soft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATT GEIMER, YI JIN, MARK BREWSTER, HAILEI ZHANG,
SYLVAIN DECHATRE, and SHAWN MCDOWELL
Appeal 2017-004512
Application 13/923,2251
Technology Center 2100
Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the Final
Rejection of claims 1—6, 8—10, 12—14, 16, 17, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Microsoft Technology Licensing, LLC, as the real
party in interest (App. Br. 2).
Appeal 2017-004512
Application 13/923,225
STATEMENT OF THE CASE
The invention is directed to application activation based on whether a
host supports subsets of the Application Programming Interface (API) used
by the application. See Spec. 13. Claim 1 is illustrative and is reproduced
below:
1. A method for application activation using decoupled
versioning, comprising:
loading an application on a computing device a first time;
determining a subset of an Application Programming
Interface (API) that is specified by the application, the API
comprising a plurality of different subsets, each of the plurality
of different subsets being based on a different functionality of
one or more methods included in the API;
determining that a host does not support the specified
subset of the API;
determining not to activate the application because the
host does not support the specified subset of the API;
after determining not to activate the application,
implementing the specified subset;
loading the application on the computing device a second
time;
after implementing the specified subset, determining that
the host supports the specified subset of the API; and
activating the application when the host supports the
specified subset of the API.
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Application 13/923,225
Grouping of Claims
Based on Appellants’ arguments (App. Br. 6—10), we decide the
appeal of claims 1—6, 8—10, 12—14, 16, 17, 19, and 20 on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Examiner’s Rejection2
Claims 1—6, 8—10, 12—14, 16, 17, 19, and 20 stand rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement.
Appellants ’ Contentions
Appellants contend the Examiner erred in rejecting claim 1 under 35
U.S.C. § 112, first paragraph, because:
1. The “Specification explicitly supports loading an application
twice.” App. Br. 7—8. Appellants argue the Specification describes:
[Wjhen an application is not activated it is loaded. It further
provides that when an application is activated it is loaded. As
such, when an application was not previously activated and then,
later, it is activated, it must have been loaded twice—once for the
time when it was not activated and once for the time when it was
activated.
2 Appellants presented argument regarding the objection to the drawings
under 37 C.F.R. § 1.83(a). App. Br. 10—11. However, the objection relates
to petitionable subject matter under 37 C.F.R. § 1.181 and the Patent Trial
and Appeal Board does not have the jurisdiction to review petitionable
matters.
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Appeal 2017-004512
Application 13/923,225
Id. (citing Spec, 42^47 and Fig. 4); Reply Br. 2—3.3
Further, the Examiner is conflating activation with loading, however,
highlighting that an application is not activated a second time does not
support the conclusion that an application is not loaded a second time.
Reply Br. 3^4.
2. Regarding explicit support, the Specification further
describes:
Because not activating the application is determined by loading
the application, because activating the application is determined
by loading the application, and because the Specification
explicitly provides the scenario where the same application does
not work and then begins to work automatically, the
Specification supports that an application is loaded at least twice.
App. Br. 8.
3. The “Specification describes solutions that include loading
the same application twice.” App. Br. 9-10. Appellants argue the
Specification describes “[sjpecific hosts can choose when to
implement a subset of the API set without having to support other
subsets of the API. . . [t]hus, the host will not run an application if the
subset API is not supported, but at some point may determine to
implement the subset API.” App. Br. 9 (citing Abstract); Reply Br. 2—
3. Appellants contend “[rjeading out that an application may be
loaded twice (once when the subset API is not supported and once
when the subset is supported) would replicate one problem that the
3 Appellants cite to Paragraphs 36-41 of Appellants’ Specification (App. Br.
7— 8). However, the paragraph numbers used by Appellants are from this
Application’s printed publication, US 2014/0380341 Al. Support for
Appellants’ citations is found in Paragraphs 42—47 of the Specification filed
June 20, 2013.
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Application 13/923,225
technology may be used to solve.” App. Br. 9.
4. The Examiner misconstrues the Specification’s description
of an application working automatically. App. Br. 10. Appellants
contend the Specification discloses a first scenario “when the
application’s subset API is not supported,” and a second scenario
“after the host implements the subset API, and during this time the
application begins to work automatically.” Id. (citing Spec. 147).
Appellants argue “the use of the word ‘begins,’ implies] that at some
point the application was not working on the host.” Id. Thus,
Appellants contend, the Specification provides “the application is
loaded when the application is not run and when it is run”, i.e., “that
an application may be loaded twice.” Id. (citing Spec. 147 and Fig.
4).
ISSUE
Did the Examiner err in finding the limitation “after determining not
to activate the application, implementing the specified subset; loading the
application on the computing device a second time,” recited in claim 1, lacks
written description support in the Specification as originally filed?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons, as to contentions 1—4, set forth by the Examiner in the Examiner’s
Answer in response to Appellants’Appeal Brief. Ans. 4, 6—8. We concur
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Application 13/923,225
with the conclusions reached by the Examiner. We highlight the following
points.
The Examiner finds the limitations “after determining not to activate
the application, implementing the specified subset; loading the application
on the computing device a second time,” as recited in claim 1, are not
described in the Specification in such a way to reasonably convey to one
skilled in the art that the Appellants, at the time the application was filed,
had possession of the claimed invention. Ans 3^4. See Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Specifically, the Examiner finds claim 1, “as amended, introduce^] new
limitations relating to loading the application a second time after
determining that the host does not support the specified subset of the API,”
but the Specification “does not address the new limitations” and “there is no
drawing in the specification that supports this scenario.” Ans. 4.
We do not agree with Appellants’ contention 1 that, because an
application was not previously activated and then, later, it is activated, it
must have been loaded twice. We agree with the Examiner’s finding that the
Specification is silent regarding any requirement to load a previously non-
activated application a second time in order to active it:
As may be clearly seen in Figure 4, as well as in the noted
language of 1 [0041], activating or not activating the application
is not determined by loading the application, but by determining
subset(s) of API specified by the application at step 420,
determining the supported subsets at step 430 and whether the
needed subsets are supported at step 440. In fact, loading the
application a second time is neither explicitly disclosed nor
suggested anywhere in the specification or drawings.
Ans. 7.
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Application 13/923,225
We are not persuaded of Examiner error by Appellants’ contentions 2
and 4 that an application beginning to work automatically implies that the
application was not working on the host and would be loaded a second time.
Given the broad descriptions in Appellants’ cited sections of the
Specification, we note,
[I]t is “not a question of whether one skilled in the art might be
able to construct the patentee's device from the teachings of the
disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device”. ... A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). See also
AriadPharmaceuticals, Inc. v. EliLilly and Co., 598 F.3d 1336, 1352 (Fed.
Cir. 2010) (“[W]e have repeatedly stated that actual ‘possession’ or
reduction to practice outside of the specification is not enough. Rather,. . .
it is the specification itself that must demonstrate possession.”). Here, we
agree with the Examiner that the Specification does not explicitly disclose
loading the application a second time in order for the application to begin
working automatically after implementing the subset of an API. Ans. 6.
We do not agree with Appellants’ contention 3 that reading out the
limitation of “loading the application ... a second time,” once when the
subset API is not supported and once when the subset is supported,
replicates a problem the claim may solve. Again, the Specification does not
explicitly describe loading the application a second time is required after
implementing, or updating, the subset of the API at some point after the
application failed to activate. As discussed supra, the Specification merely
discloses the application running automatically after implementing the new
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Application 13/923,225
API, which solves the problem of unsupported applications failing to run, as
identified by Appellants (see Spec 11).
For the above reasons we sustain the Examiner’s § 112, first
paragraph, rejection of claim 1. Appellants do not provide arguments for
separate patentability of independent claims 10 and 17, or dependent claims
2—6, 8, 9, 12—14, 16, 19, and 20, which fall with claim 1.
DECISION
The Examiner’s decision to reject claims 1—6, 8—10, 12—14, 16, 17,
19, and 20 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)(l)(iv).
AFFIRMED
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