Ex Parte Wen et al

Patent Trial and Appeal Board

Jul 24, 2017

12245477 (P.T.A.B. Jul. 24, 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.
12/245,477 10/03/2008 Yandong Wen 323352.01 4057
69316 7590 07/26/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
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 YANDONG WEN, LIANG CHEN, DAVID P. VRONAY,
REBECCA JO SUNDLING, KONG-KAT WONG, and DIFEI TANG
Appeal 2016-0085671
Application 12/245,477
Technology Center 3600
Before JOHN A. EVANS, JOYCE CRAIG, and AARON W. MOORE,
Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1, 3—13, and 21—26, all of the claims
pending in the application. App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2
1 Appellants identify Microsoft Technology Licensing, LLC as the real party
in interest. Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 2, 2015, “App. Br.”), the
Examiner’s Answer (mailed May 13, 2016, “Ans.”), the Non-Final Action
Appeal 2016-008567
Application 12/245,477
STATEMENT OF THE CASE
The claims relate to a technology that uses the unused (free) space
(that is not occupied by text of a text message) to encode metadata into a text
message. See Abstract.
INVENTION
Claims 1, 9, and 21 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. In a mobile communications environment, a method
comprising,
employing at least one processor of a text messaging
device to perform acts comprising,
determining that free space is available in a text message,
and
encoding metadata into the free space for sending with
text of the text message,
the metadata comprising metadata corresponding to an
advertisement and a mood of a sender of the text message.
(mailed June 3, 2015, “Non-Final Act.”), and the Specification (filed
October 3, 2008, “Spec.”) for their respective details.
2
Appeal 2016-008567
Application 12/245,477
Breen
Vuong, et al.
Makhoul, et al.
Dos Santos, et al.
Bappu, et al.
References and Rejections
US 2004/0117735 Al June 17, 2004
US 2009/0055484 Al Filed Aug. 20, 2007
US 2009/0203359 Al Priority Feb. 8, 2008
US 2008/0294741 Al Nov. 27, 2008
US 2008/0227385 Al Filed May 22, 2008
The claims stand rejected as follows:
1. Claims 1, 3—13, and 21—26 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception to statutory subject matter.
Non-Final Act. 3—5.
2. Claims 21—26 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Non-Final Act. 5—6.
3. Claims 1,3, 5—8, and 21—26 stand rejected under 35 U.S.C.
§ 103 as obvious over Makhoul, Bappu, and Vuong. Non-Final Act.
4. Claim 4 stands rejected under 35 U.S.C. § 103 as obvious over
Makhoul, Bappu, Vuong, and Breen. Non-Final Act. 11—12.
5. Claims 1,3, 5—8, and 21—26 stand alternatively rejected under
35 U.S.C. § 103 as obvious over Makhoul, Bappu, and Dos Santos.
Non-Final Act. 12—16.
6. Claim 4 stands alternatively rejected under 35 U.S.C. § 103 as
obvious over Makhoul, Bappu, Dos Santos, and Breen. Non-Final
Act. 16-17.
7-11.
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Appeal 2016-008567
Application 12/245,477
ANALYSIS
We have reviewed the rejections of Claims 1, 3—13, and 21—26 in
light of Appellants’ arguments that the Examiner erred. We have considered
in this decision only those arguments Appellants actually raised in the
Briefs. Any other arguments which Appellants could have made but chose
not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41,37(c)(l)(iv). Upon consideration of the arguments presented in the
Appeal Brief and Reply Brief, we are not persuaded that Appellants identify
reversible error in the prior art rejections, but we agree with Appellants that
the claims recite statutory subject matter under 35 U.S.C. § 101. We provide
the following explanation to highlight and address specific arguments and
findings primarily for emphasis. We consider Appellants’ arguments
seriatim, as they are presented in the Appeal Brief, pages 14—27.
Claims 1,3-13, and 21-26:
Judicial Exception to Statutory Subject Matter
The Supreme Court has established a two-part test to distinguish
patents that claim one of the patent-ineligible exceptions to statutory subject
matter from those that claim patent-eligible applications of those concepts.
Alice Corp. v. CLS Bank Inti, 134 S.Ct. 2347, 2354 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1294,
1296—97 (2012). As directed by the Federal Circuit, we begin with Step 1,
whether the claims are “directed to” a patent-ineligible concept. Rapid
Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir.
2016). “If the answer is no, the inquiry is over, the claim falls within the
ambit of § 101.” Id. at 1047.
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Application 12/245,477
Appellants contend Claim 1 is directed towards a processor of a text­
messaging device to perform acts to, inter alia, encode metadata into a text
message. App. Br. 14.
The Examiner finds the claims relate to the abstract idea of “targeting
an advertisement and including it in a text message.” Ans. 16. The
Examiner finds the claims relate to “an idea of itself,” as the claimed
invention simply automates the idea of selecting for targeting an
advertisement. Id. at 17. We disagree.
We find the claims relate to a device that inputs an electronic text and
combines that text with certain metadata to output an electronic text further
comprising metadata. The claims transform a text devoid of metadata into a
text including metadata. “The machine-or-transformation test is not the sole
test for deciding whether an invention is a patent-eligible ‘process’.” Bilski
v. Kappos, 130 S.Ct. 3218, 3227 (2010). However, the “Court’s precedents
establish that the machine-or-transformation test is a useful and important
clue, an investigative tool, for determining whether some claimed inventions
are [statutory] processes under § 101.” Id. We find the claims are directed
to statutory subject matter.
Claims 21-26: Non-Statutory Subject Matter
Independent Claim 21 recites:
21. A computer storage device, having processor-executable
instructions stored thereon, which when executed by a
computing device, cause the computing device to perform steps
comprising:
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Appeal 2016-008567
Application 12/245,477
determining that character space is available in a text
message; and
encoding metadata into the character space for sending
with a text of the text message,
wherein the metadata comprises an indication of an
advertisement to display and a mood of a sender of the text
message.
The Examiner makes the conclusory assertion3 that “[p]er analysis of the
applicant’s specification, this claim is claiming the equivalent of a computer-
readable medium or computer program product, regardless of the use of the
word ‘device’.” Non-Final Act. 5. The Examiner “states only that the
necessity of the phrase “non-transitory” is not a suggestion of the
examiner’s, but a requirement set forth by the USPTO in the Kappos Memo
of 2010 for any computer-readable medium claim.” Ans. 20—21.
Claim 21 does not recite a “computer-readable medium,” or a
“computer program product.” The Examiner does not find any facts to
support the conclusory assertion that the claims are directed to subject matter
other than that which is recited. Appellants’ disclosure distinguishes the
claimed device from computer-readable media: “[t]he mobile device 800
may include a variety of computer-readable media.” Spec., 143. We find
the Examiner’s interpretation of the claim overly broad and unreasonable, as
it is inconsistent with the Specification.
3 The Examiner refers to “applicant’s specification,” but fails to make any
specific reference thereto required to support a finding of fact. Non-Final
Act. 5.
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Appeal 2016-008567
Application 12/245,477
Claims 1,3,5-8, and 21-26: Obviousness overMakhoul, Bappu,
AND VUONG AND/OR DOS SANTOS
Independent Claim 1 recites, inter alia: “determining that free space is
available in a text message, and encoding metadata into the free space for
sending with text of the text message.”
The Examiner cites Makhoul as teaching inserting data (advertising)
into the free space of the body of a text message. Ans. 21 (citing Makhoul,
130) (“[i]n some embodiments of the present invention, the targeted ads are
inserted within unused space of the messages”); id. (citing Makhoul, 148—
49) (describing how an advertisement is inserted into the body of a
message). The Examiner cites Bappu as teaching encoding specifically
metadata for insertion into a text message. Id. at 22.
Appellants argue that there “is a clear difference between the message
header and the space used for text in a text message.” Br. 20. Appellants
“disagree with the Examiner’s conclusion in that the text message’s unused,
free space refers to the message body and not the header. Id. at 21. We are
not persuaded. We agree with the Examiner’s finding that Makhoul teaches
insertion of data into the body of a text message.
Appellants acknowledge Vuong teaches a mood avatar, but argue,
without proffer of evidence, that such an avatar cannot be encoded into free
space of a text message. Id. Arguments of counsel cannot take the place of
factually supported objective evidence. See In re Huang, 100 F.3d 135, 139-
MO (Fed. Cir. 1996). Attorney argument is not evidence. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974). Nor can it take the place of evidence
lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977).
Lawyer’s arguments and conclusory statements, which are unsupported by
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Application 12/245,477
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). Appellants argue Dos Santos does not
relate to encoding and thus fails to cure the Makhoul-Bappu combination.
Id. at 24. In view of the foregoing discussion, we are not persuaded the
Makhoul-Bappu combination is deficient, as alleged.
Claim 4: Obviousness over Makhoul, Bappu, Vuong,
Dos Santos, and Breen
Appellants do not traverse the Examiner’s finding that Breen teaches
metadata to determine a screen size. See Br. 23. Appellants argue Breen
does not cure Makhoul and Bappu respecting encoding metadata into the
free space of a text message. Id. In view of our foregoing discussion, we
are not persuaded the Examiner errs.
Appellants do not traverse the Examiner’s finding that Dos Santos
teaches evaluation of the mood of a message sender. See Br. 24. Appellants
argue Dos Santos does not cure Makhoul and Bappu respecting encoding
metadata into the free space of a text message. Id. In view of our foregoing
discussion, we are not persuaded the Examiner errs.
DECISION
The rejection of Claims 1, 3—13, and 21—26 under 35 U.S.C. § 101 as
directed to a judicial exception to statutory subject matter is REVERSED.
The rejection of Claims 21—26 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is REVERSED.
The rejection of Claims 1, 3—8, and 21—26 under 35 U.S.C. § 103 is
AFFIRMED.
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Application 12/245,477
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-
4 The Examiner objected to Claims 9—13 as dependent on a rejected base
claim, but indicated they would be allowable if Claim 9 were re-written to
include the limitations of Claims 10 and 11. Non-Final Act. 2.
9