Ex Parte Hilerio et al

Patent Trial and Appeal Board

Apr 13, 2018

12977668 (P.T.A.B. Apr. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/977,668 12/23/2010
69316 7590 04/17/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Israel Hilerio
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
331750-US-NP 9774
EXAMINER
NGUYEN, TUAN S
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
04/17/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISRAEL HILERIO, ALEXANDER H. MALEK,
BRUCE A. MORGAN, JOHN E. DA VIS,
JUSTIN MARTIN POSEY, KINNARY M. JANGLA,
PHU HOANG LE, DAVID J. RUBINO, and
MARAB.PATTON
Appeal2017-001881
Application 12/977,668
Technology Center 2100
Before JOSEPH L. DIXON, MARC S. HOFF, and
KRISTEN L. DROESCH, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-001881
Application 12/977,668
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-9 and 11-21. Claim 10 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN PART.
The claims are directed to a surfacing content including content
accessed from jump list tasks and items. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer-implemented method comprising:
starting, on a client device, a web application that is
pinned on the client device, the web application including
a web application mode browser configured to render
content within the web application, wherein the web
application is implemented independent of a web browser
application;
ascertaining a site-specified conveyance with which to
present content on the client device, the site-specified
conveyance defined by a site associated with the content;
and
presenting content within the web application using the
site-specified conveyance, the site-specified conveyance
defining how the content is to be surfaced at the client
device.
1 Appellants indicate that Microsoft Technology Licensing, LLC is the real
party in interest. (App. Br. 3).
2
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Application 12/977,668
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rail US 2006/0047663 Al
Slotznick et al. US 2007/0211071 Al
(hereinafter "Slotznick")
Berger et al. US 2008/0301562 Al
(hereinafter "Berger")
Pamsgaard et al. US 2009/0125331 Al
(hereinafter "Pamsgaard")
Abernethy, Jr. et al. US 2009/0125833 Al
(hereinafter "Abernethy")
REJECTIONS
The Examiner made the following rejections:
Mar. 2, 2006
Sept. 13, 2007
Dec. 4, 2008
May 14, 2009
May 14, 2009
Claims 1-9, 11, and 21 stand rejected under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written description
requirement.
Claims 1-7, 12, 16-19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Abernethy in view of Slotznick.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abernethy as modified by Slotznick as applied to claim 1
above, and further in view of Rail.
Claims 9, 11, 13, 14 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abernethy as modified by Slotznick as applied to
claims 1 and 12 above, and further in view of Berger.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abernethy as modified by Slotznick as applied to claim 12
above, and further in view of Pamsgaard.
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Application 12/977,668
ANALYSIS
35 US.C. § 112 (pre-AJA), first paragraph,
written description requirement
The Examiner contends that independent claim 1 recites:
"starting, on a client device, a web application that is pinned on
the client device ... , the web application implemented
independent of a web browser application[.]" However, the
[S]pecification defines Web application mode browser 111
can be implemented as a standalone component. Alternatively
[],the web application mode browser 111 can be implemented
as part of applications 108 and/or browser 110"
("Specification", [0038]) and silent about the "web application
is implemented independent of a web browser application" as
claimed. Thus, the web application associated with the claimed
feature is not supported.
(Final Act. 2-3).
Appellants agree with the Examiner's statement regarding para. 3 8 of
the Specification, but Appellants additionally contend that para. 42 of the
Specification teaches "[ w ]hen accessing links inside developer-specified
boundaries, content can be rendered and consumed within a web
application window, or some other conveyance, such as those defined by a
site or developer, that is rendered by the web application mode browser as
part of an associated web application." (App. Br. 13). Appellants further
contend "[a]s illustrated in Fig. 1, and as discussed throughout Appellant[s']
[S]pecification, both an application 108, such as a web application, and the
web application mode browser 111 may be implemented independent of a
web browser application 110." (App. Br. 14).
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Application 12/977,668
In the Examiner's Answer, the Examiner repeats the portions of
paragraphs 38 and 42 and concludes that:
Thus, the web application mode browser is part of the
web application 108 and as a pared down version of the web
browser 110. Logically, the web application 108 somehow is
implemented related to the web browser 110 via the
relationship with the web application mode browser 111.
Therefore, the web application 108 is implemented dependent
of a web browser 110.
In addition, nowhere or else in the specification indicates
the web application 108 is implemented independent of a web
browser application 110 as claimed.
(Ans. 4 (emphasis omitted)).
Appellants present the same line of argument and support in the Reply
Brief regarding the web application mode browser. (Reply Br. 6-9). We
agree with Appellants that the originally filed Specification evidences
possession of the claimed subject matter, and that the Examiner has not
shown that Appellants' Specification lacks written description support for
the subject matter claimed in independent claim 1 and its respective
dependent claims. 2
35 us.c. § 103
Claim 1
With respect to claims 1-7, 9, and 21, Appellants argue the claims
together. Therefore, we select independent claim 1 as the illustrative claim
2 We note the Examiner did not include the dependent claims in the listing
of rejected claims with the written description rejection.
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Application 12/977,668
for the group. With respect to illustrative independent claim 1, the Examiner
contends that:
However, Slotznick teaches:
the web application including a web application mode
browser configured to render content within the web
application ("Slotznick", Fig. 11. Slotznick describes
the Point and Read web application where user can
browse to the "Next page" to render the content within
the web application);
ascertaining a site-specified conveyance with
which to present content on the client device, the site-
specified conveyance defined by a site associated with
the content ("Slotznick", Figs. 7, 11, 12, [0159].
Slotznick describes a PeterRabbit web reader page is
determined and defined by webreaderl.js hosting by
"www.simtalk.com").
presenting content within the web application
using the site-specified conveyance, the site-specified
conveyance defining how the content is to be surfaced
at the client device ("Slotznick"[] Figs. 7, 11, 12,
[O 159]. Slotznick describes the Peter Rabbit web reader
web site," ... /PeterRabbit/pr3.htm, .. ./pr4.htm, etc.[,]"
content being presented in different forms, location and
size defined in the JavaScript).
Therefore, it would have been obvious to one
having the ordinary skill in the art at the time of
invention was made to modify the teaching of
Abernethy with the teachings of Slotznick to specify the
layout, content, link for the enriched web page.
(Final Act. 4--5).
Appellants describe the operation of the Slotznick reference with
regards to the text-to-speech generation and the parsing and modification of
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Application 12/977,668
the webpage performed by the browser implemented on a user's client
computer. Appellants further describe an alternative embodiment
comprising offloading the parsing and modification of the website to a portal
website which is accessed by the client computer's browser. App. Br. 17.
Appellants contend that neither implementation teaches the steps of
ascertaining and presenting "[b ]ecause Slotznick only describes displaying a
modified web page in a browser and does not describe presenting content
within a web application that is 'implemented independent of a web browser
application."' (App. Br. 17-18).
With regards to the obviousness rejections and the claimed "the web
application implemented independent of a web browser application[,]" the
Examiner further maintains that "[Appellants'] arguments are persuasive if
the subject matter feature 'the web application implemented independent
of a web browser application' is supported by the Specification. However,
it is not supported as the [E]xaminer'[s] response in first argument above."
(Ans. 5). Consequently, because we agree with Appellants that the
Specification supports the claim limitation, we agree with Appellants that
the Examiner does not provide any substantive response to Appellants'
argument to show how the combination teaches or suggests the claimed
limitation.
With respect to the third through fifth obviousness rejections, the
Examiner does not identify how the Rail, Berger, or Pamsgaard references
remedy the deficiency noted above with respect to the obviousness rejection
of independent claim 1. 3 (Final Act. 10-13). Therefore, we cannot sustain
3 Additionally, the Examiner does not respond to these arguments.
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the rejection of dependent claims 8, 9, 11, 13-15, and 20 based upon
obviousness.
Claim 12
With respect to claims 12 and 16-19, Appellants argue the claims
together. Therefore, we select claim 12 as the representative claim for the
group and will address Appellants' arguments thereto.
37 C.F.R. § 41.37(c)(l)(iv).
With respect to representative independent claim 12, the Examiner
relies upon the Slotnick reference to teach the ascertaining and presenting
steps. The Examiner maintains that
Slotznick describes the original web page
"/PeterRabbit/pr3.htm" having links "Next Page" and "Back to
Library Home Page" as the jumplist to navigate and present the
content of another site-specified conveyance ("Slotznick[,]"
Figs. 7, 11, 12, [O 159]. Slotznick describes a Peter Rabbit web
reader page "/PeterRabbit/pr4.htm" is determined in response to
the MouseOver interaction on the "Next page" link that is
defined by webreaderl .js hosting by www.simtalk.com).
(Ans. 8).
Appellants contend that "Slotznick's text-to-speech embodiment
describes displaying a web page only after it has been modified by software
that is not associated with the web page and therefore fails to teach or
suggest claim 12 's 'presenting content within a web 5 application using the
site-specified conveyance."' (Reply Br. 10). Appellants further contend:
Appellant[ s] thus respectfully traverses the Examiner's
assertion that Slotznick's text-to-speech embodiment produces
a "text-to-speech enable web page [that] is identical to the
visual appearance of the original site-specified web page"
(Examiner's Answer, page 6). Accordingly, for at least this
reason and the reasons set forth in the Appeal Brief,
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Appellant[ s] respectfully submits that the combination of Ahem
and Slotznick fails to teach or suggest, and has not been shown
to teach or suggest, each and every feature of claim 12.
Further, Appellant[ s] respectfully submit[] that
Slotznick's discussion of a web page "having links 'Next Page'
and 'Back to Library Home Page"' is not the same as the
"jumplist" recited in claim 12 (See Examiner's Answer, page 5).
Additionally, Appellant[ s] ha[ ve] reviewed Slotznick in its
entirety and submits that Slotznick does not include a
discussion that teaches or even remotely suggests "interaction
with a jumplist[,"] as recited in claim 12. Thus, it is virtually
impossible for Slotznick to teach or suggest "ascertaining,
responsive to interaction with a jump list, a site-specified
conveyance with which to present content on a client device[,]"
as recited in claim 12 (emphasis added). This subject matter is
simply missing from the references of record. Appellant[ s]
respectfully submit that, by failing to specifically address this
language in rejecting claim 12, the Examiner has not fully
examined this claim and has failed to establish a prima facie
case of obviousness.
(Reply Br. 11-12).
We find that Appellants have not identified any specific definition or
limited context from the Specification for the claimed 'jumplist" or
"conveyance." Moreover, we find that Appellants' Specification discloses:
Content can be surfaced through a variety of content
conveyances. For example, content can be surfaced using a tab,
pop-up window, browser window, an in-place navigation, or at
different levels, such as within a page, such as within a frame or
other element. Further, content can be caused to be surfaced
using different surfacing mechanisms such as those that employ
declarative approaches such as markup like HTML markup
and/or script-based approaches, such as through the use of
Javascript.
(Spec. i-fi-15, 30). Additionally, we find the Specification discloses:
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Application 12/977,668
A jump list can be thought of as a list that constitutes a set of
relevant tasks or content that is presented to the user. Through
jump lists, websites can promote a distillation of relevant and
useful information to users. Jump lists are related to the
capabilities or functionalities of a particular web application.
For example, a jump list for an e-mail application might include
tasks that give the user the ability to open a contact, create a
new e-mail message, and the like. In some instances, jump lists
can include a list of relevant and most-often used commands
and data.
(Spec. if 64).
We find, from the relevant examples listed in Appellants'
Specification, the Examiner's proffered reliance upon the "next page"
function of the Slotznick reference to be a reasonable interpretation as a
most often-used command. Consequently, we find that Appellants'
argument does not show error in the Examiner's factual findings or
conclusion of obviousness of representative independent claim 12.
With respect to dependent claims 13-20, Appellants do not present
separate arguments for patentability and rely upon the arguments advanced
with respect to representative independent claim 12. (App. Br. 28). We do
not consider arguments that Appellants could have made but chose not to
make in the Briefs, and we deem any such arguments waived. 3 7 C.F .R.
§ 41.37(c)(l)(iv). As a result, we group these claims as falling with their
respective parent claim 12. 4
4 "Notwithstanding any other provision of this paragraph, the failure of
[A ]ppellant to separately argue claims which [A ]ppellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately." 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv). In addition, when Appellants do not separately argue the
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Application 12/977,668
CONCLUSIONS
The Examiner erred in rejecting claims 1-9, 11, and 21under35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
The Examiner erred in rejecting claims 1-9, 11, and 21 based upon
obviousness under 35 U.S.C. § 103(a); but the Examiner did not err in
rejecting claims 12-20 based upon obviousness under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-9, 11, and 21under35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement; we reverse the
Examiner's obviousness rejection of claims 1-9, 11, and 21under35 U.S.C.
§ 103; but we affirm the Examiner's obviousness rejection of claims 12-20
under 35 U.S.C. § 103.
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-IN-PART
patentability of dependent claims, the claims stand or fall with the claims
from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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