Ex Parte Wessling et al

Patent Trial and Appeal Board

Mar 22, 2018

12950828 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/950,828 11/19/2010
144365 7590 03/26/2018
Schwegman Lundberg & Woessner, P.A.
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Cynthia D. Wessling
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.
330574-US-NP
(1777.252US 1
CONFIRMATION NO.
8536
EXAMINER
TANK,ANDREWL
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYNTHIA D. WESSLING, STEVEN WILLIAM MACBETH,
DANNY LANGE, and ZHAOWEI CHARLIE JIANG
Appeal2017-010780
Application 12/950,828 1
Technology Center 2100
Before THU A. DANG, MONICA S. ULLAGADDI, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-13, 15, 16, and 18-22, which constitute all
claims pending in the application. App. Br. 12. Claims 14 and 17 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Microsoft Technology Licensing, LLC as the real party
in interest. App. Br. 3.
Appeal2017-010780
Application 12/950,828
STATEMENT OF THE CASE
The Claimed Invention
Appellants' claimed invention relates to integrating "application
features" (e.g., software plug-ins or add-ons) with the "productivity
applications" (such as word processing or spreadsheet programs) on which
they run, and in particular, providing a user interface displaying a
"storefront" that includes such "application features." Spec. i-fi-f l-3.
According to the Specification, when a user selects an application feature
from the storefront, it is integrated into its corresponding productivity
application, and may be executed within the productivity application. Id.
"Security boundaries" determine an application feature's ability to access
other data (such as a user's personal information), and may or may not be
applied to each particular application feature being executed, as determined
by security policies governing the system. Spec. i-fi-132, 50.
Claim 1 is representative of the invention and the subject matter of the
appeal, and reads as follows (with disputed limitations emphasized):
1. A computer-implemented method comprising:
under control of one or more processors configured with
executable instructions:
presenting a user interface of a productivity application,
the user interface of the productivity application including an
application storefront of an application feature store;
the application storefront displaying one or more controls
corresponding to one or more application features available for
selection;
receiving a selection of one of the controls corresponding
to an application feature available within the application feature
store;
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Appeal2017-010780
Application 12/950,828
in response to receiving the selection, integrating the
selected application feature into the productivity application;
determining that the productivity application comprises
one or more security boundaries;
executing the selected application feature within the
productivity application, while enforcing the one or more
security boundaries to prevent the selected application feature
from accessing features or data protected by the one or more
security boundaries; and
executing another application feature within the
productivity application without enforcing the one or more
security boundaries.
App. Br. 23 (Claims App.).
Prior Art
The Examiner relies upon the following prior art:
Kraemer et al.
Mirrashidi et al.
Volkert
US 2006/0174319 Al
US 2010/0235254 Al
US 8,364,694 B2
The Rejections on Appeal
Aug. 3, 2006
Sept. 16, 2010
Jan.29,2013
Claims 1-13, 15, 16, 18, 21, and22 stand rejected underpre-AIA
35 U.S.C. § 103(a) as unpatentable over Mirrashidi et al. ("Mirrashidi") and
Kraemer et al. ("Kraemer"). Final Act. 4--13.
Claims 19 and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mirrashidi, Kraemer, and Volkert. Final Act. 13-15.
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Appeal2017-010780
Application 12/950,828
ANALYSIS
We have reviewed the Examiner's rejections in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner's rejections.
Appellants argue the Examiner erred in finding the prior art teaches or
suggests the two "executing" limitations recited in claim 1. 2 App. Br. 15-
18; Reply Br. 2--4. Specifically, Appellants contend claim 1 recites
"executing" two different "application features" (i.e., the "selected
application feature" and "another application feature"), with the two
different application features having different security implications as
recited in claim 1. Id. Appellants contend Mirrashidi teaches or suggests
nothing about security boundaries or policies. Id. Appellants further argue
Kraemer only distinguishes between security during installation of an
application and "non-installation" operation of a device, which is not the
same as different levels of security for features in an application during
execution of the application. Id. We are persuaded by Appellants'
arguments.
The Examiner relies on Kraemer as teaching or suggesting the
"security boundaries" recited in claim 1. Ans. 4--7. As the Examiner finds,
Kraemer teaches security policies for "different states of [a] computer
system" such as "boot-up, runtime, installation, shutdown, and a
compromised state." Kraemer i-f 12; Appeal Br. 14--15; Ans. 4--5. Kraemer
further teaches "enforc[ing]" different security policies for an "installation
2 Appellants argue independent claims 1, 10, and 16, which recite limitations
commensurate in scope, as a group. App. Br. 13-19. We choose claim 1 as
representative of the group. 37 C.F.R. § 41.37(c)(4).
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Appeal2017-010780
Application 12/950,828
operation" and a "non-installation operation." Kraemer i-f 15 ("security
agent enforces a non-installation security policy during non-installation
operation of the [] device"); id. i-f 17 ("[i]n response to detection of the
installation operation, the security agent enforces an installation security
policy"); Appeal Br. 14--16; Ans. 4--6. The Examiner finds that "installation
of a new program ... is considered an execution," and therefore Kraemer
teaches "executing ... while enforcing the one or more security boundaries"
limitation of claim 1. 3
The Examiner does not explain, however, why a person of ordinary
skill in the art would understand "installation" of a program (application) to
be "executing" that program. Kraemer, in contrast, explicitly distinguishes
between program installation and execution. Kraemer i-fi-1 1, 4; Reply Br. 2-
3. Nor does the Examiner explain why "executing" in claim 1 should be
construed as encompassing an installation, particularly given that claim 1
distinguishes between "integrating" an application feature into a productivity
application and "executing" the application feature. App. Br. 23.
Moreover, the Examiner's findings on this record do not account for
the two different "executing" limitations of claim 1. Namely, claim 1 recites
(i) executing the "selected application feature" while "enforcing the one or
more security boundaries," and (ii) executing "another application feature"
"without enforcing the one or more security boundaries." App. Br. 23.
3 Appellants do not dispute the Examiner's finding that Mirrashidi teaches
"application feature[ s ]" executed within a productivity application. Final
Act. 4--5. Thus, although the Examiner relies on the combination of
Kraemer with Mirrashidi as teaching the disputed limitations (e.g.,
"executing the selected application feature within the productivity
application, while enforcing the one or more security boundaries ... "), it is
Kraemer's teaching that is at issue in this appeal.
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Appeal2017-010780
Application 12/950,828
(emphases added). The Examiner finds Kraemer's "installation operation"
enforces an "installation security policy," and a "non-enforcement
operation" does not enforce the installation security policy (because such
operation instead enforces a "non-installation security policy."). Ans. 7;
Kraemer iii! 15, 17. The Examiner, however, does not explain how the
distinction between security policies for different operating states (in
Kraemer) teaches or suggests different features running on the same
application with only one such feature enforcing a particular security policy
(boundary), as recited in claim 1. Furthermore, although Mirrashidi
(generally) teaches application features running on an application, the record
includes no explanation or finding as to how the combination of Kraemer
with Mirrashidi would teach or suggest the disputed limitations of claim 1.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's obviousness rejection of independent claims 1, 10, and 16. For
the same reasons, we also do not sustain the obviousness rejections of the
remaining claims, all of which are dependent and thus include the disputed
limitations.
DECISION
We reverse the Examiner's decision rejecting claims 1-13, 15, 16, and
18-22.
REVERSED
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