Ex Parte Rogers et al

Patent Trial and Appeal Board

Feb 21, 2017

13655379 (P.T.A.B. Feb. 21, 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.
13/655,379 10/18/2012 Justin E. Rogers 13768.2776.1 4396
47973 7590 02/23/2017
WORKMAN NYDEGGER/MICROSOFT
60 EAST SOUTH TEMPLE
SUITE 1000
SALT LAKE CITY, UT 84111
EXAMINER
NGUYEN, CHAU T
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
Docketing @ wnlaw. 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 JUSTIN E. ROGERS, NATHAN J.E. FURTWANGLER,
VENKATRAMAN V. KUDALLUR, EVGENY N. VESELOV,
AMRITAM SARCAR, and CHRISTIAN STOCKWELL
Appeal 2016-005305
Application 13/655,3791
Technology Center 2100
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Non-Final
Rejection of claims 1—20, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). See Ex parte
Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We affirm.
1 Appellants identify Microsoft Corporation as the real party in interest.
App. Br. 3.
Appeal 2016-005305
Application 13/655,379
THE INVENTION
The disclosed and claimed invention is directed to “utilizing the
display refresh notifications to drive layout processing within a web
browser's layout pipeline.” Abstract.
Claim 1, reproduced below, is representative of the claimed subject
1. One or more computer readable storage memories
embodying computer readable instructions which, when
executed, implement a web platform comprising:
a layout pipeline comprising:
a view controller component configured to cause a
refresh operation to be performed in which a device screen
is refreshed in part by issuing a refresh notification within
the layout pipeline; and
a layout component configured to perform layout
processing sufficient to enable web content to be rendered
on the device screen, the layout component being
configured to delay the layout processing until the refresh
notification is received from the view controller
component effective to enable the device screen to be
refreshed.
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
matter:
REFERENCES
Alderson
Gale
Liang
Burckart
US 2004/0201618 A1 Oct. 14, 2004
US 2008/0120368 A1 May 22, 2008
US 2009/0313640 A1 Dec. 17, 2009
US 2010/0250706 A1 Sept. 30, 2010
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REJECTIONS
Claims 1—20 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1—20 of co-pending
Application No. 13,229,696. Non-Final Act. 3^4.
Claims 13—16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Gale in view of Liang. Non-Final Act. 4—9.
Claims 1—7 and 17—20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Gale in view of Alderson and Burckart.
Non-Final Act. 9—17.
Claims 8—12 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Gale in view of Alderson, Burckart, and Liang.
Non-Final Act. 17—23.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1—20, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Non-
Final Act. 3—23), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellants’ arguments (Ans. 23—33). We
incorporate such findings, reasons, and rebuttals herein by reference unless
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Application 13/655,379
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.2
Double Patenting Rejection
Subsequent to the filing of the Appeal Brief, Application
13/229,696—the basis of the provisional obviousness type double patenting
rejection—was abandoned on October 21, 2015 for failure to respond to an
office action. Therefore, we dismiss this rejection as moot.
Claims 1—7
Appellants argue the Examiner erred in rejecting claim 1 because Gale
does not teach or suggest a view controller that causes a refresh operation
“in part by issuing a refresh notification within the layout pipeline” or a
“layout component being configured to delay the layout processing until the
refresh notification is received from the view controller component effective
to enable the device screen to be refreshed,” as recited in claim 1. App. Br.
25.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed Sept. 3, 2015);
the Reply Brief (filed Apr. 22, 2016); the Non-Final Office Action (mailed
Apr. 10, 2015); and the Examiner’s Answer (mailed Feb. 26, 2016) for the
respective details.
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matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because the Examiner relies on Alderson and Burckart
for those limitations (Non-Final Act. 11—13), we are not persuaded by
Appellants’ argument, which are directed to Gale, that the Examiner erred.
Appellants also argue the Examiner erred in finding Alderson teaches
“the layout component being configured to delay layout processing until a
refresh notification is received from the view controller component,” as
recited in claim 1. App. Br. 25—26. Specifically, Appellants contend
Alderson teaches storing updates in a queue which is emptied at
predetermined time intervals. App. Br. 25—26. Appellants further contend
that “[ajfter this occurs, the browser then updates the screen display.” App.
Br. 26. According to Appellants, this does not correspond to the disputed
limitation. Id. Appellants further argue that Alderson does not use the term
“refresh notification.” Id.
The Examiner finds although Gale teaches a layout component, it
does not teach “the layout component being configured to delay layout
processing until a refresh notification is received from the view controller
component.” Non-Final Act. 10—11 (emphasis omitted). The Examiner
further finds Alderson teaches storing a plurality of data items and sending
them as a batch for processing at a predetermined time. Id. at 11—12. The
Examiner further finds it would have been obvious to “combine the
teachings of Alderson with Gale to include the layout component being
configured to delay layout processing until a refresh notification is received
from the view controller component for the purpose of providing resulting in
a more efficient updating procedure.” Id. at 12 (emphasis omitted).
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Because Appellants’ arguments are directed to Alderson individually
and not the combination of teachings of both Alderson and Gale relied on by
the Examiner, we are not persuaded that the Examiner erred. See Merck,
800 F.2d at 1097; Keller, 642 F.2d at 425.
Moreover, there is no requirement in an obviousness analysis for the
prior art to “contain a description of the subject matter of the appealed claim
in ipsissimis verbis.'’'’ In re May, 574 F.2d 1082, 1090 (CCPA 1978).
Accordingly, the absence of the phrase “refresh notification” in Alderson
does not persuade us the Examiner erred.
Appellants also argue the Examiner erred in finding a reason to
combine Gale and Alderson. App. Br. 26. According to Appellants,
although the Examiner finds a person of ordinary skill in the art would
combine the teachings in order to provide a more efficient updating
procedure, the Examiner makes no findings as to why that is so. Id.
In the Answer, the Examiner makes additional findings regarding the
reason to combine the references: “The motivation for doing so is that
Alderson provides sending the data items to the browser as a batch allows
the browser to perform a single updating procedure to update the screen,
rather than having to repeatedly update the screen every time a single data
item arrives.” Ans. 24.
Appellants do not address this additional reasoning in the Reply Brief.
See Reply Br. 2—6. Because Appellants do not address the Examiner’s
finding as to why a person of ordinary skill in the art would combine the
references, we are not persuaded of error based on Appellants’ argument that
do not adequately address the rejection on appeal. Instead, we determine
that Examiner’s finding provides a “rational underpinning to support the
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legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
In the Reply Brief, Appellants argue the Examiner erred in finding
Burckart teaches or suggests “a device screen is refreshed in part by issuing
a refresh notification within the layout pipeline,” as recited in claim 1.
Reply Br. 4—5.
However, Appellants did not raise this argument in the Appeal Brief.
See App. Br. 22—27. Instead, the only reference to Burckart was the
Appellants’ statement that “[w]ith respect to the deficiencies of Gale and
Alderson, Burckart is not seen to add anything of significance.” App. Br.
27. Because Appellants’ argument was presented for the first time in the
reply brief, it has been waived See 37 C.F.R. §41.41 (b)(2).
Accordingly, we sustain the Examiner’s rejection of representative
claim 1, along with the rejection of grouped dependent claims 2—7, which
are not argued separately.3 See 37 C.F.R. § 41.37(c)(l)(iv).
3 In the event of further prosecution, including any review for allowance,
because claims 1—7 are not limited to non-transitory computer readable
storage, we leave it to the Examiner to consider the question of whether the
claims are patent-eligible under 35 U.S.C. § 101. See In re Nuijten, 500
F.3d 1346, 1356—57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013) (precedential); David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. & Trademark Office 212
(Feb. 23, 2010). Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See MPEP § 1213.02.
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Claims 8—12
Appellants argue the Examiner erred in finding Gale teaches or
suggests “a refresh notification associated with refreshing a device screen,”
as recited in claim 8. App. Br. 28. More specifically, Appellants argue
“[t]he section cited to by the Office as teaching this feature instead discusses
‘that the first XHTML document should be refreshed’. As previously
discussed, in no way does refreshing a document teach or suggest
‘refreshing a device screen’ as recited in this claim.” Id. (emphasis omitted).
The Examiner finds Gale teaches “receiving, from a view controller
component, a refresh notification associated with refreshing a device
screen.” Non-Final Act. 17 (citing Gale 142).
Our reviewing court guides that “the question under 35 USC 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804,
807-08 (Fed. Cir. 1989) (citation omitted). Moreover, “[ejvery patent
application and reference relies to some extent upon knowledge of persons
skilled in the art to complement that [which is] disclosed . . . .” In re Bode,
550 F.2d 656, 660 (CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543
(CCPA 1973)). Those persons “must be presumed to know something”
about the art “apart from what the references disclose.” In re Jacoby, 309
F.2d 513, 516 (CCPA 1962). Additionally, the skilled artisan is “[a] person
of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
Furthermore, as discussed earlier, there is no requirement in an obviousness
analysis for the prior art to “contain a description of the subject matter of the
appealed claim in ipsissimis verbis.'” May, 574 F.2d at 1090.
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Applying this reasoning here, we are not persuaded by Appellants’
argument the Examiner erred. Gale teaches refreshing a document displayed
on a screen at a specified time period. Gale 142. Therefore, we find a
preponderance of the evidence supports the Examiner’s finding that Gale,
when combined with the other cited references, would have suggested to a
person of ordinary skill in the art, receiving, from a view controller
component, a refresh notification associated with refreshing a device
screen.4
Appellants’ remaining arguments regarding claim 8 are substantially
identical to the arguments raised regarding claim 1. See App. Br. 28—30;
Reply Br. 6—7. Accordingly, for the same reasons discussed above, we are
not persuaded by Appellants’ arguments that the Examiner erred.
Therefore, we sustain the Examiner’s rejection of representative claim
8, along with the rejection of grouped dependent claims 9—12, which are not
separately argued. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 13—16
Appellants argue the Examiner erred in finding Gale teaches or
suggests “the display refresh notifications being associated with refreshing
the device screen,” as recited in claim 13. App. Br. 31. Specifically,
Appellants argue “Figure 2 clearly shows the requestor 225 sending the
request to the server 220 which ... in no way” teaches the disputed
limitation. Id.
4 Because we find Gale paragraph 42 teaches or suggests this limitation, we
need not address Appellants’ arguments that the Examiner’s alternate
findings regarding this limitation are erroneous.
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The Examiner finds Gale teaches “the web platform being configured
to utilize display refresh notifications to drive layout processing within a
layout pipeline of the web platform, the display refresh notification being
associated with refreshing the device screen.” Non-Final Act. 5 (citing Gale
25—27, 42, Fig. 2); see also Ans. 32 (citing Gale H 7, 20, 25—21, 42, Fig.
2).
Appellants do not address the Examiner’s findings based on the text
of Gale and, instead, focus only on the teaching and suggestions associated
with Figure 2. Because Appellants have not fully addressed the Examiner’s
specific findings, we are not persuaded the Examiner erred. Arguments not
made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). See also Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“the Board will not, as
a general matter, unilaterally review those uncontested aspects of the
rejection”). Moreover, for the reasons discussed above for claim 8—which
discuss substantially the same limitation—we find that the Examiner did not
err.
Additionally, in reply, Appellants argue the Examiner’s finding is
insufficient because it does not use the phrase “refresh notifications to drive
layout processing.” Reply Br. 9.
We find this argument unpersuasive. First, to the extent use of that
phrase is relevant, that phrase is used in the findings in the Non-Final
Action. See Non-Final Act. 5. Second, there is no requirement in an
obviousness analysis for the prior art to “contain a description of the subject
matter of the appealed claim in ipsissimis verbis.'” May, 574 F.2d at 1090. It
is therefore of no moment that the Examiner did not find the literal claim
term in the prior art.
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Accordingly, we sustain the Examiner’s rejection of representative
claim 13, along with the rejection of grouped dependent claims 14—16,
which are not separately argued. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 17—20
With respect to rejection of dependent claims 17—20, Appellants
merely assert the additional cited Alderson and Burckart references do not
cure the purported shortcomings of Gale, as applied against claim 13.
Appellants urge the Examiner failed to make a prima facie case of
obviousness for these claims. App. Br. 32. However, we find no
deficiencies with Gale, for the reasons discussed above regarding the
rejection of claim 13. Because we find the rejection of claim 13 is supported
by a preponderance of the evidence, for the reasons discussed above, we
sustain the rejection of claims 17—20.
DECISION
We affirm the Examiner’s decision rejecting claims 1—20 as
unpatentable under pre-AIA 35 U.S.C. § 103(a).
We dismiss as moot the Examiner’s provisional obviousness-type
non-statutory double patenting rejection of claims 1—20
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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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). See
37 C.F.R. §41.50(f).
AFFIRMED
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