Ex Parte Hilerio et al

Patent Trial and Appeal Board

Jan 16, 2018

13398321 (P.T.A.B. Jan. 16, 2018)

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.
13/398,321 02/16/2012 Israel Hilerio 335652-US-NP 3278
69316 7590 01/18/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
MILLER, VIVA L
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
u sdocket @ micro soft .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, DAVID VAUGHN WINKLER,
DANIEL R. THORNTON, MATTHEW R. COX,
KAREN ELIZABETH PARKER ANDERSON, JESSE D. MCGATHA, and
ADRIAN ROBERT BATEMAN
Appeal 2017-009405
Application 13/398,3211
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellants is Microsoft Technology
Licensing, LLC. App. Br. 3.
Appeal 2017-009405
Application 13/398,321
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention relates generally to
installable applications that are to be used on a local client machine and that
utilize an application cache manifest file that resides remotely to define
various resources that are to be updated and available offline after the
installed application has been deployed on the local client machine. Spec.
111.2
Claims 1 and 9 are representative and read as follows (with the
disputed limitation emphasized)'.
1. A computer-implemented method comprising:
initiating installation of an application on a local
computing device, the application comprising an application that
is not a web browser;
downloading resources associated with an application
manifest for the application;
ascertaining existence of an updated remote application
cache manifest for the application;
identifying in the updated remote application cache
manifest resources for the application that have been updated;
initiating a download independent of user interaction and
downloading, from the remote application cache manifest for the
application that is not a web browser, one or more of the
resources that have been updated including limiting the types of
resources to be downloaded from the remote application cache
2 Our Decision refers to the Final Office Action (mailed May 31, 2016,
“Final Act.”), Appellants’ Appeal Brief (filed Oct. 31, 2016, “App. Br.”) and
Reply Brief (filed Jun. 21, 2017, (“Reply Br.”), the Examiner’s Answer
(mailed Apr. 21, 2017, “Ans.”), and the original Specification (filed Feb. 16,
2012, “Spec.”).
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Application 13/398,321
manifest by excluding at least one of the resources based on the
at least one resource including executable code; and
using the downloaded resources to execute the application
on the local computing device.
9. One or more computer-readable storage media
embodying computer readable instructions, which, when
executed by a system, cause the system to perform operations
comprising:
obtaining and reading an installable application package
that includes an application manifest, the application manifest
being utilized to download resources that are utilized by an
associated application, the associated application not running in
a web browser;
storing the downloaded resources in an application cache
for use in online and offline scenarios;
utilizing the application cache to retrieve the resources that
are to be utilized by the installed application;
checking for a remotely-located updated application
manifest;
identifying in the remotely-located updated application
manifest one or more updated resources for the application;
initiating a download independent of user interaction and
downloading, from the remotely-located updated application
manifest for the application not running in a web browser, the
one or more updated resources including limiting the types of
resources to be downloaded from the remotely-located updated
application manifest by excluding at least one resource based on
the at least one resource including executable code;
updating the application cache with the downloaded one
or more updated resources; and
enabling use of the downloaded one or more updated
resources for execution of the application.
App. Br. 29, 31—32 (App.).
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Application 13/398,321
Rejections on Appeal
Claims 9-15 stand rejected under 35U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ito et al. (US 2012/0254352 Al; published Oct. 4, 2012)
(“Ito”), in view of Bloch et al. (US 2007/0083486 Al; published Apr. 12,
2007) (“Bloch”), further in view of Lubbers et al., “Pro HTML5
Programming” (Apress, 2nd ed. 2011) (“Lubbers”), and further in view of
Elgressy et al. (US 2001/0049795 Al; published Dec. 6, 2001) (“Elgressy”).
ANALYSIS
Rejection of Claims 9—15 under § 101
Appellants argue the claimed “computer-readable storage medium” is
directed to statutory subject matter under 35 U.S.C. § 101 because
Appellants’ specification expressly disclaims non-statutory subject matter
from computer-readable storage media. See App. Br. 13—14.
This argument is persuasive. We agree with Appellants that
Appellants’ Specification defines “computer-readable storage media” as
excluding a signal per se, as Appellants’ Specification discloses that a
computer-readable medium is configured as either a signal bearing medium
(e.g., signal per se) or as a computer-readable storage medium, which is not
a signal bearing medium. See Spec. 122. Accordingly, on this record, we
do not sustain the Examiner’s rejection of claims 9—15 as being directed to
non-statutory subject matter under 35 U.S.C. § 101.
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Rejection of Claims 1—20 under § 103(a)
Appellants argue the combination of cited references fails to teach or
suggest, “initiating a download independent of user interaction and
downloading, from the remote application cache manifest for the application
that is not a web browser, one or more of the resources that have been
updated including limiting the types of resources to be downloaded from the
remote application cache manifest by excluding at least one of the resources
based on the at least one resource including executable code,” as recited in
independent claim 1, and similarly recited in independent claims 9 and 16.
See App. Br. 14. As argued by Appellants, the Examiner’s reliance on four
references for the aforementioned claim limitation presents an unworkable
combination that would be logically difficult to create based on legally
permissible motivations to combine. See App. Br. 15—16. Appellants
further argue the Examiner’s rationale for combining the references simply
restates what the references are relied on to reject elements of the claims,
and thus, the Examiner merely summarizes the claimed subject matter in an
attempt to formulate a motivation to combine the references. See App.
Br. 17-18.
We are not persuaded of reversible error. The Supreme Court has
rejected the rigid requirement of demonstrating a teaching, suggestion, or
motivation in the references to show obviousness. See KSR Int’l Co., v.
Teleflex Co., 550 U.S. 398, 415—16 (2007); see also In re Ethicon, Inc., 844
F.3d 1344, 1350 (Fed. Cir. 2017) (“KSR directs that an explicit teaching,
suggestion, or motivation in the references is not necessary to support a
conclusion of obviousness.”). Instead, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
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no more than yield predictable results.” KSR, 550 U.S. at 416. Further, the
criterion for an obviousness rejection is not the number of references, but
what they would have meant to a person of ordinary skill in the field of the
invention. See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). When the
references are all in the same or analogous fields, knowledge thereof by the
hypothetical person of ordinary skill is presumed, and the test is whether the
teachings of the prior art, taken as a whole, would have made obvious the
claimed invention. See id.
We agree with the Examiner’s finding that Ito teaches a web browser
that detects a manifest file, transmits a manifest acquisition request to a web
server in accordance with the manifest file, and receives the manifest file in
an application package of a web application, and that Ito teaches a push
server that detects an update of the web application and performs a push
transmission by transmitting an updated storage destination address related
to a resource of the web application. See Final Act. 8—9 (citing Ito H 41,
75). We further agree with the Examiner that Lubbers teaches a remote
manifest file, and that replacing Ito’s manifest file with Lubber’s remote
manifest file is merely a combination of familiar elements according to
known methods that yields no more than predictable results, and thus, would
have been obvious to one of ordinary skill in the art. See Final Act. 10—11
(citing Lubbers 301—302). Further, we agree with the Examiner Bloch
teaches a software application that can access information offline and online
(i.e., an application that is not a web browser), and that replacing Ito’s web
application with Bloch’s software application is also a combination of
familiar elements according to known methods that yields no more than
predictable results, and thus, would have been obvious to one of ordinary
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skill in the art. See Final Act. 11—12 (citing Bloch || 32, 96). We also agree
Elgressy teaches suppressing executable objects, and that the modification of
Ito’s system to suppress executable objects when downloading resources of
the web application is also a combination of familiar elements according to
known methods that yields no more than predictable results, and thus, would
have been obvious to one of ordinary skill in the art. See Final Act. 12—13
(citing Elgressy 1 50).
Accordingly, we agree with the Examiner’s finding that the
combination of cited references teaches or suggests “initiating a download
independent of user interaction and downloading, from the remote
application cache manifest for the application that is not a web browser, one
or more of the resources that have been updated including limiting the types
of resources to be downloaded from the remote application cache manifest
by excluding at least one of the resources based on the at least one resource
including executable code,” as recited in claim 1, and similarly recited in
claims 9 and 16. See Final Act. 8—13; see also Ans. 4—11. Thus, we sustain
the Examiner’s rejection of claims 1, 9 and 16 for obviousness under
35 U.S.C. § 103(a). We also sustain the Examiner’s rejection of claims 2—8,
10-15, and 17—20, which depend from one of claims 1, 9, and 16, and which
are not argued separately.
DECISION
We reverse the Examiner’s decision rejecting claims 9—15 under
35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 103(a).
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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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