Ex Parte Hwang et al

Patent Trial and Appeal Board

Sep 4, 2018

13297287 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/297,287 11/16/2011
69316 7590 09/06/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Jennifer Hui-ni Hwang
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.
333968.01 1034
EXAMINER
SONG, DAEHO D
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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 JENNIFER HUI-NI HWANG, MATTHEW ECKSTEIN, and SAM
FRANKLIN WILLIAMS, III
Appeal 2018-002679
Application 13/297,287 1
Technology Center 2100
Before JOHN A. JEFFERY, DENISE M. POTHIER, and CARLL.
SILVERMAN, Administrative Patent Judges.
SILVERMAN, 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 pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
The invention relates to enhancing features within program
applications in which a user associated with a productivity application is
1 The real party in interest is identified as Microsoft Technology Licensing.
LLC. App. Br. 1.
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Application 13/297,287
identified and a service application associated with the user is identified.
Abstract, Spec. ,r,r 1-5, Fig. 2. Claim 1, reproduced below, is exemplary of
the subject matter on appeal ( emphasis added):
1. A method of operating enhanced productivity
applications, the method comprising:
identifying a user associated with a productivity
application used to generate content;
identifying at least a first social network service with
which the user is associated and a second social network service
with which the user is not associated;
enabling a service feature within a feature menu of the
productivity application, wherein the service feature
corresponds to the first social network service and allows the
user to peiform a function on the content related to the first
social network service; and,
disabling at least one other service feature within the
feature menu of the productivity application, wherein the other
service feature corresponds to the second social network
service.
App. Br. 9 (Claims Appendix).
THE REJECTION
Claims 1-20 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ferguson et al. (US 2002/0065849 Al; pub. May 30,
2002) ("Ferguson"); Michelstein et al. (US 2010/0331064 Al; pub.
December, 30, 2010) ("Michelstein"), and Brown et al. (US 2012/0227087
Al; pub. September 6, 2012) ("Brown"). Final Act. 3-8
ANALYSIS
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Application 13/297,287
Appellants argue the Examiner errs in finding the combination of
Ferguson, Michelstein, and Brown teaches the claim 1 limitations:
enabling a service feature within a feature menu of the
productivity application, wherein the service feature
corresponds to the first social network service and allows the
user to perform a function on the content related to the first
social network service; and,
disabling at least one other service feature within the
feature menu of the productivity application, wherein the other
service feature corresponds to the second social network
service.
App. Br. 5---6; Reply Br. 2--4, ( emphases added).
Appellants argue claim 1 is directed to enabling and disabling service
features based on the social network services a user is associated with,
whereas Ferguson's applications are integrated into productivity documents
and, therefore, embedded in the documents themselves and are not features
in a feature menu of a productivity application. App. Br. 5 ( citing Ferguson
,r 46, Abstract). Appellants argue Michelstein teaches incorporating game
play elements into a productivity application, but does not teach "any service
features within feature menus of the applications, much less service feature
associated with a social network service." Id. at 5---6. Appellants argue the
Examiner errs in finding Michelstein's button 860 in Figure 8, which allows
the user to connect to a social networking site, is equivalent to a feature
within a feature menu that allows the user to perform a function on the
content. Id. at 6 ( citing Michelstein Fig. 8, element 860, Final Act. 5).
According to Appellants, "[ a ]lthough Michelstein discusses features, the
features discussed are natively associated with the productivity application,
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not features that are associated with the social network service" and "the
features discussed in Michelstein do not allow the user to perform a function
related to the social network service on the content generated by the user, as
recited in claim 1." Id.
Regarding the limitation "disabling at least one other service feature
within the feature menu of the productivity application, wherein the other
service feature corresponds to the second social network service" in claim 1,
Appellants argue the Examiner errs in finding Brown teaches this feature,
because Brown, like Ferguson and Michelstein, does not teach enabling or
disabling a service feature in a feature menu of a productivity application
that is associated with a social network. Id. Instead, according to
Appellants, Brown teaches authenticating social networks services and
preventing a service connection if security requirements are not
authenticated, but preventing a service connection is not equivalent to
disabling a service. Id. ( citing Brown ,r 18). Appellants further argue
"Brown discusses improving user login to multiple social network services
with which the user is associated with" and "[t]herefore, even if disabling a
connection to a social network service could be equated with disabling a
service associated the social network service, Brown fails to teach or suggest
disabling a service feature that corresponds to a social network service with
which the user is not associated." Id.
Appellants argue, without particularity, none of the cited references
teaches dependent claim 13. Id.
In the Answer, the Examiner finds Ferguson teaches network-based
services accessed within a productivity application and Michelstein states
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"Feature manager 26 is configured to incorporate elements of game play into
productivity application 24 to assist in motivating user to learn how to use
features of the application." Ans. 3 (citing Ferguson ,r 16; Michelstein ,r 27).
The Examiner finds Michelstein teaches
Ans. 4.
Feature manager 26 is also configured to link help content
that is associated with the productivity application with the
features that are currently being used by the user such that
the help content for the feature that is currently being used
is available to the user with a single selection. Feature
Manager 26 is configured to incorporate the use of a social
networking site 29 such that a user's peers may be obtained
for competition and provide updates to the user and the
user's peers as to accomplishments using the productivity
application" ([0027]) ( emphasis added). In other words,
the feature manager is able to a service feature within a
feature menu of a productivity application, such as "Help"
menu of a productivity application, and configured to
incorporate the service feature into a social
networking service so as to perform functions on the
content related to the social networking service, such as
sharing game scores among peers on a social network.
Regarding "disabling at least one other service feature within the
feature menu ... ," the Examiner finds Brown states "[t]hese security
features prevent the application from directly contacting another social
network service to take advantage of the API functionality of that service
(emphasis added)." Id. at 4--5 (citing Brown ,r 20). The Examiner finds
"[i]n other words, Brown expressly teaches that while a first service of
application is enabled to perform a function related to a first social network
service, a second service of application is disabled to perform a function
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related to a second social network service by means of validating the
authentication information. Id. at 5 (citing Brown ,r 43).
Regarding dependent claim 13, which recites "the service
feature allowing user to source images from the social network services for
insertion into a productivity application," the Examiner finds Ferguson
expressly teaches that the productivity application allows user to embed
network-enabling objects into the productivity application, such as inserting
selected web pages into the productivity application. Id. at 5 (citing
Ferguson ,r,r 45, 85).
In the Reply Brief, Appellants argue Michelstein fails to teach that the
service feature allows the user to perform a function on the content
generated by the user in the productivity application. Reply Br. 2.
Appellants also argue "[p ]reventing complete access to the social
networking service is not equivalent to disabling a service feature in a
productivity application." Id. at 2-3. Appellants further argue Brown
discusses disabling the social networking application's access to a social
networking service not the productivity application's access. Id. at 3.
We are persuaded by Appellants' arguments because, on the record
before us, the Examiner presents insufficient evidence that the combination
of the cited references teaches the claim 1 limitations as required for
obviousness.
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on:
"[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." . . . [H]owever,
the analysis need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn,
441 F.3d 977,988 (Fed. Cir. 2006)).
Here, although the combination of the cited references teaches using
productivity applications in cooperation with service applications, the
evidence is insufficient to teach or suggest the step of "enabling a service
feature within a feature menu of the productivity application" in claim 1. In
particular, the record does not present sufficient evidence that a person of
ordinary skill would apply the general teaching of Ferguson, Michelstein,
and Brown to result in this limitation. Also, although Brown teaches
preventing access to a social services network, the record does not present
sufficient evidence to demonstrate that one of ordinary skill in the art would
have applied this social service network preclusion to result in "disabling at
least one other service feature within the feature menu of the productivity
application, wherein the other service feature corresponds to the second
social network service. " In particular, on the record before us, we agree
with Appellants' arguments that Brown's "[p]reventing complete access to
the social networking service is not equivalent to disabling a service feature
in a productivity application" and "Brown discusses disabling the social
networking application's access to a social networking service not the
productivity application's access." See Reply Br. 3.
In view of the above, we do not sustain the rejection of claim 1, and
independent claims 8 and 14 which are of commensurate scope with claim 1.
We also do not sustain the rejection of dependent claims 2-7, 9-13, and 15-
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20. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent
claims are nonobvious if the independent claims from which they depend are
b . ") nono v10us .....
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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