Ex Parte LeVee et al

Patent Trial and Appeal Board

Dec 27, 2018

13118163 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/118,163 05/27/2011 Brian S. Le Vee
141746 7590 12/31/2018
ARENT FOX LLP& Microsoft Technology Licensing, LLC
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
037834.00191/333122-US-NP 9043
EXAMINER
THERIAULT, STEVENB
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
patentdocket@arentfox.com
USDocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte BRAINS. LEVEE, JESSE CLAY SATTERFIELD,
CHAIT ANY A DEV SAREEN, JENNIFER NAN, PA TRICE L. MINER,
ALICE P. STEINGLASS, TSZ YAN WONG,
THERESA B. PITTAPPILL Y, and RAYMOND J. CHEN
Appeal2018-002379
Application 13/118, 163
Technology Center 2100
Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge MacDONALD.
Opinion Concurring filed by Administrative Patent Judge CURCURI.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellant indicates the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 3.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-17 and 19-21. Appellants have cancelled claim 18. App.
Br. 44. We have jurisdiction under 35 U.S.C. § 6(b). REVERSED.
Representative Claim
Representative claim 1 under appeal reads as follows ( emphasis,
formatting, and bracketed material added):
1. A method implemented by one or more computing devices,
the method comprising[:]
[A.] displaying a start screen of an immersive shell
including
[ i.] a first tile that is representative of an
application and that is selectable to launch
execution of the application and
[ii.] a second tile that is representative of a desktop
shell of an operating system that is
selectable to launch execution of the desktop
shell,
the desktop shell configured to support access to
one or more windowed representations of
applications;
[B.] responsive to receipt of an input that indicates
selection of the second tile, launching execution
of the desktop shell of the operating system within
the immersive shell; and
[C.] responsive to receipt of an input that indicates
selection of the first tile, launching execution of
the application such that the application is
executed, within the immersive shell and outside
the desktop shell, and displayed without framing
the application with a window.
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Evans et al.
Smuga et al.
Lagassey
References2
US 2004/0192440 Al Sept. 30, 2004
US 2010/0248787 Al Sept. 30, 2010
US 8,595,642 Bl Nov. 26, 2013
Rejection on Appeal
The Examiner rejected claims 1-17 and 19-21 under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Evans, Smuga, and
Lagassey. 3
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
A.
The Examiner determines:
Evans teaches the method implemented by one or more
computing devices, the method comprising
• Displaying a start screen of an immersive shell (See
Evans figures 6, 9 and 16, para 35) including a first
tile that is representative of an application and that
2 All citations herein to these references are by reference to the first named
inventor only.
3 The contentions discussed herein as to claim 1 are determinative as to this
rejection. Appellants' other contentions are not discussed in detail herein.
Therefore, except for our ultimate decision, we do not discuss claims 2-17
and 19-21 further herein.
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is selectable to launch execution of the application
(see Para 36-47 tiles and figure 1 b, launch app tiles
and figure 17) and a second tile that is
representative of a desktop shell that is selectable
to launch execution of the desktop shell, the
desktop shell configured to support access to one or
more windowed representations of applications (see
Evans figures 6, 16-17, first tile can be the chat
window, second tile can be games, etc. with
multiple tiles that can be displayed). Evans teaches
the shell can be an operating system shell that
displays a desktop shell as well as an additional
shell (see Para 64-75, 98-99 110-112, see also Para
162).
Final Act. 4 ( emphasis added).
B.
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Appellant respectfully asserts that at least because of the
"ordinary and customary meaning given to 'desktop shell' by
those of ordinary skill in the art at the time of the invention," the
Examiner has not shown that the cited documents teach or
suggest "launching execution of [a] desktop shell of [an]
operating system within [an] immersive shell," as claim 1 recites.
App. Br. 18.
C.
The Examiner responds:
The Brief, contain Appellants definition of a "desktop
shell" and "immersive shell" (page 20 middle). As one can see
from the specification and drawings, Appellants state a "desktop
shell" is an element of an operating system that provides
navigation through a file system using windows that contain
icons and folders [see Spec. 27] or as depicted in the drawings as
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graphical elements configured m a display that perform the
equivalent function.
Ans. 6.
The following definitions in the prior art show that a "shell" is a
known component in the art of graphical user interfaces. A
"shell" as defined in the prior art from extrinsic sources such as:
Microsoft Computer Dictionary, Microsoft Press Mar. 15, 2002;
1) shell 1 n. A piece of software, usually a separate program, that
provides direct communication between the user and the
operating system. Examples of shells are Macintosh Finder and
the MS-DOS command interface program COMMAND.COM.
2) desktop n. An on-screen work area that uses icons and menus
to simulate the top of a desk. A desktop is characteristic of the
Apple Macintosh and of windowing programs such as Microsoft
Windows. Its intent is to make a computer easier to use by
enabling users to move pictures of objects and to start and stop
tasks in much the same way as they would if they were working
on a physical desktop.
Ans. 6-7.
D.
Appellants further argue:
Consistent with the Office Action, the Answer, at page 6,
incorrectly provides definitions of the terms "desktop shell" and
"immersive shell" based on one-line phrases used within
Appellant's [sic] specification.
Reply Br. 6.
Further, the "desktop shell" described by the newly cited
references do not teach or suggest the ... features of independent
claim 1. For example, the Microsoft Computer Dictionary states
that a shell "provides direct communication between the user and
the operating system," and a desktop is "[a]n on-screen work area
that uses icons and menus to simulate the top of a desk."
(Answer, p. 7.) Based on this definition, the desktop shell is an
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on-screen work area that provides direct communication between
the user and the operating system.
Reply Br. 8.
E.
As articulated by the Federal Circuit, the Examiner's burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) ("preponderance of the
evidence is the standard that must be met by the PTO in making rejections").
"A rejection based on section 103 clearly must rest on a factual basis[.]" In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not ...
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis." Id.
We conclude the Examiner's analysis fails to meet this standard
because the rejections do not adequately explain the Examiner's findings of
fact. Particularly, the findings that the prior art discloses the argued "an
immersive shell including ... a second tile that is representative of a desktop
shell of an operating system that is selectable to launch execution of the
desktop shell" and "launching execution of the desktop shell of the operating
system within the immersive shell" of claim 1, based upon the prior art
disclosures of Evans, Smuga, and Lagassey.
First, we disagree with the Examiner's determination that "Appellants
state a 'desktop shell' is an element of an operating system that provides
navigation through a file system using windows that contain icons and
folders." Ans. 6. Rather, Appellants state "[t]he operating system may also
support a desktop shell that is configured for navigation through a
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hierarchical file system using windows that contain folders, icons, and so
on." Spec. 27. We determine that Appellants' Specification does not equate
a desktop shell to a file navigation system using windows as the Examiner
does, but rather recites that a desktop shell may be configured to include a
file navigation system using windows. We deem the Examiner's analysis to
be analogous to finding that a rubber tire is an automobile merely because an
Appellant states that an automobile may include a rubber tire. We know of
no legal support for such reasoning.
Second, we agree with the Examiner's citation of the Microsoft
Computer Dictionary definition of "shell." Ans. 7. However, we disagree
with the Examiner's determination that the definition supports the
Examiner's rejection. As Appellants point out, the Microsoft Computer
Dictionary definition of "shell" requires "direct communication between the
user and the operating system." Reply Br. 8. Our review of the Examiner's
reasoning does not find a showing of the required direct communication.
We conclude, consistent with Appellants' arguments, there is
insufficient articulated reasoning to support the Examiner's findings as to
the "desktop shell." Therefore, we conclude that there is insufficient
articulated reasoning to support the Examiner's final conclusion that claim 1
would have been obvious to one of ordinary skill in the art at the time of
Appellants' invention.
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-17 and 19-21 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, the Examiner has not shown claims 1-17 and 19-
21 to be unpatentable.
DECISION
We reverse the Examiner's rejections of claims 1-17 and 19-21.
REVERSED
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CURCURI, Administrative Patent Judge, CONCURRING:
While I agree with the majority's ultimate conclusion that the
Examiner erred in rejecting claims 1-17 and 19-21 as being unpatentable
under 35 U.S.C. § 103(a), I do not agree with the way the majority reaches
its ultimate conclusion.
In particular, the majority determines the following:
We determine that Appellants' Specification does not equate a
desktop shell to a file navigation system using windows as the
Examiner does, but rather recites that a desktop shell may be
configured to include a file navigation system using windows.
We deem the Examiner's analysis to be analogous to finding that
a rubber tire is an automobile merely because an Appellant states
that an automobile may include a rubber tire. We know of no
legal support for such reasoning.
Maj. Op. 7.
I disagree. Appellants' Specification discloses the following:
The operating system may also support a desktop shell that
is configured for navigation through a hierarchical file system
using windows that contain folders, icons, and so on. In this
example, the desktop shell is accessible within the immersive
shell similar to how other applications are accessed in the
immersive shell. Thus, the functionality of the desktop shell may
be made readily accessible via the immersive shell to provide a
user with a variety of different techniques to navigate through
applications and files of the computing device.
Spec. ,r 27.
The Specification makes it clear that what it refers to as a "desktop
shell" is a shell "configured for navigation through a hierarchical file system
using windows that contain folders, icons, and so on." Spec. ,r 27. I would
construe "desktop shell" as a shell configured for navigation through a
hierarchical file system using windows that contain folders and icons. This
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construction is consistent with the Specification. See Spec. ,r 27. This
construction is also consistent with the plain meaning of "shell" in a
computer context, which is "[a] piece of software, usually a separate
program, that provides direct communication between the user and the
operating system." MICROSOFT COMPUTER DICTIONARY 478 (5th ed. 2002).
In particular, the majority adopts the Microsoft Computer
Dictionary's definition of "shell" and further determines the following: "Our
review of the Examiner's reasoning does not find a showing of the required
direct communication." Maj. Op. 7.
I believe a different analysis is required to reach the ultimate
conclusion that the Examiner erred.
The Examiner finds Evans teaches the key disputed limitation of
"launching execution of the desktop shell of the operating system within the
immersive shell" recited in claim 1. Final Act. 4--5 ( citing Evans ,r,r 64--7 5,
98, 99, 110-112, 162) ("Evans at least displays an area where the user can
interact with an application in a display area or immersive shell and interact
with the operating system in another display area or desktop shell."); see
also Ans. 9 (citing Evans ,r,r 75, 98) ("Evans' operating system shell is the
immersive shell that executes applications such as a desktop shell.").
Regarding the key disputed limitation, among other arguments,
Appellants present the following principal argument:
The Examiner has not shown that Evans teaches or
suggests "launching execution of the desktop [ 602, of Evans]
within [an] immersi ve shell," as claim 1 recites, nor has the
Examiner shown that some element of Evans could be combined,
substituted, or otherwise used in an obvious way to "launch ...
execution of [a] desktop shell of [an] operating system within
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[an] immersive shell," as claim 1 recites. For example, compare
Figure 2 of the instant application and Figure 6 of Evans.
App. Br. 24; see also Reply Br. 9--10 ("Evans fails to describe or suggest
that the operating system shell 910 'executes' or 'launches' another shell.").
Evans, for example, discloses the following:
FIG. 6 is a screen shot of an exemplary application-centric
user interface 624 presented as part of a user interface 600 for an
operating system shell. In the example, an operating system shell
presents the application-centric portion of the user interface 624
in a window on the desktop 602, along with a pane 642 and an
activatable item 652.
Evans ,r 65.
Given my construction, I agree with Appellants' principal argument
that Evans does not teach the key disputed limitation. In particular, I agree
that Evans does not teach "launching execution of the desktop shell of the
operating system within the immersive shell" recited in claim 1 because in
Evans, to the extent there is a desktop or desktop shell, I do readily see its
launching within an immersive shell. In reaching this conclusion, I
emphasize that claim 1 recites "the desktop shell configured to support
access to one or more windowed representations of applications." Thus, to
the extent Evans' s desktop 602 may be an immersive shell, and to the extent
window 632 or window 634 may be configured for navigation through a
hierarchical file system using windows that contain folders and icons, I do
not readily see an explanation on the record of how or why window 632 or
window 634 would further be configured to support access to one or more
windowed representations of applications as required by claim 1.
For these reasons, I concur.
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