Joseph M. Joy et al.

Patent Trials and Appeals Board

Jan 23, 2020

13429093 - (D) (P.T.A.B. Jan. 23, 2020)

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.
13/429,093 03/23/2012 Joseph M. Joy 334553-US-NP
(1777.972US1
2043
144365 7590 01/23/2020
Schwegman Lundberg & Woessner, P.A.
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
ALRIYASHI, ABDULKADER MOHAMED
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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):
SLW@blackhillsip.com
usdocket@microsoft.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. JOY, NARENDRANATH DATHA,
TANUJA ABHAY JOSHI, SRIRAM K. RAJAMANI, and
ERIC J. STOLLNITZ
Appeal 2018-008215
Application 13/429,093
Technology Center 2400
Before ERIC S. FRAHM, LINZY T. McCARTNEY, and
MICHAEL T. CYGAN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1, 4–8, and 23–36. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Microsoft Technology
Licensing, LLC. Appeal Brief 3, filed April 26, 2018 (“Appeal Br.”).
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BACKGROUND
This patent application concerns “[t]echniques for manipulation of
user experience state.” Specification ¶ 3, March 23, 2012 (“Spec.”). Claim 1
illustrates the claimed subject matter:
1. A computer-implemented method, comprising:
detecting a change to a logical state of content, the change
to the logical state occurring in response to a scripted event
associated with the content, and the scripted event being
generated independent of a user input;
generating at least one state sliver that includes state
information about the change to the logical state of the content;
generating a processed state sliver by applying at least one
transformation rule to the at least one state sliver, the at least one
transformation rule including a function for mapping the content
to different content of an external entity, the content having a
first dimensionality and the different content having a second
dimensionality;
emitting a state stream that includes the processed state
sliver for receipt by the external entity; and
causing the external entity to affect a change to the
different content in response to emitting the state stream.
Appeal Br. 44.

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REJECTIONS
Claims 35 U.S.C. § References
1, 4, 5, 25–29, 34 103(a) Ruths,2 Heusermann3
6, 30 103(a) Ruths, Heusermann, Abt4
7, 8, 31 103(a) Ruths, Heusermann, Pegg5
23, 32 103(a) Ruths, Heusermann, Pabla6
24, 33 103(a) Ruths, Heusermann, Gordon7
35, 36 103(a) Abt, Heusermann, Brattain8
DISCUSSION
Claim 1
“Generating a Processed State Sliver”
Claim 1 recites “generating a processed state sliver by applying at
least one transformation rule to the at least one state sliver, the at least one
transformation rule including a function for mapping the content to different
content of an external entity, the content having a first dimensionality and
the different content having a second dimensionality.” Appeal Br. 44.
Appellant argues that Ruths does not teach or suggest this limitation because
Ruths discloses “collaborative data resource representations [that] are
identical to one another” and therefore “cannot be cited . . . to teach both
‘the content’ and ‘the different content’ recited in claim 1.” Appeal Br. 16.
Appellant also contends that Ruths does not “even remotely suggest ‘the
content having a first dimensionality and the different content having a

2 Ruths et al. (US 2003/0009603 A1; January 9, 2003).
3 Heusermann et al. (US 2013/0151264 A1; June 13, 2013).
4 Abt Jr. et al. (US 2011/0055329 A1; March 3, 2011).
5 Pegg (US 8,275,816 B1; September 25, 2012).
6 Pabla et al. (US 7,908,325 B1; March 15, 2011).
7 Gordon et al. (US 2007/0288164 A1; December 13, 2007).
8 Brattain et al. (US 2012/0117170 A1; May 10, 2012).
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second dimensionality’” as required by claim 1. Appeal Br. 16. According to
Appellant, the Examiner found that Ruths discloses “2D dimensionality for
both contents” but “[t]he claimed ‘first dimensionality’ and ‘second
dimensionality’ must correspond to different things, not to the same thing.”
Reply Brief 5, filed August 9, 2018 (“Reply Br.”).
We find these arguments unpersuasive. For the recited “content” and
“different content,” Ruths discloses that a participant device can change a
local representation of a collaborative data resource and a collaborative
platform can synchronize that change with representations of that resource
on other participant devices. See, e.g., Ruths ¶ 74, cited in Final Act. 3.
Thus, Ruths teaches “content” (the changed collaborative data resource) and
“different content” (the representations of the collaborative data resource on
other devices before the platform has synchronized the change).
As for the recited “content having a first dimensionality and the
different content having a second dimensionality,” this limitation requires
different instances of dimensionality, not different numbers of dimensions
for the first and second dimensionalities as suggested by Appellant. See, e.g.,
3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371
(Fed. Cir. 2003) (“The use of the terms ‘first’ and ‘second’ is a common
patent-law convention to distinguish between repeated instances of an
element or limitation.”). The term “first dimensionality” refers to the
dimensionality of the content and the term “second dimensionality” refers to
the dimensionality of the different content. But claim 1 does not explicitly
require that first and second dimensionalities have different numbers of
dimensions, for example, that the first dimensionality is three dimensional
and the second dimensionality is one dimensional. In this respect, claim 1
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differs sharply from some of its dependent claims, which explicitly recite
that the dimensionalities of the content and the different content have
different numbers of dimensions. See, e.g., Appeal Br. 46 (claim 23 reciting
“wherein the dimensionality of the content is a two dimensional space and
dimensionality of the different content is a one dimensional space”).
Accordingly, the broadest reasonable interpretation of “the content
having a first dimensionality and the different content having a second
dimensionality” encompasses the content and the different content having
dimensionalities with the same number of dimensions. As found by the
Examiner, Ruths teaches that the content and the different content have
dimensionalities with the same number of dimensions. See, e.g., Ans. 14
(finding that Ruths discloses content and different content that have “2D
dimensionality”). We thus find this argument unpersuasive.
Appellant also asserts in a single sentence that the combination of
Ruths and Heusermann “is not capable of mapping content having a first
dimensionality to different content having a second dimensionality.” Appeal
Br. 13 (emphasis omitted). But Appellant has provided no persuasive
evidence or reasoning to support this assertion. See Appeal Br. 13. We
therefore find this argument unpersuasive.
In the Reply Brief, Appellant argues for the first time that paragraph
74 of Ruths does not teach the “processed state sliver” and the “at least one
transformation rule” recited in the “generating a processed state sliver”
limitation. See Reply Br. 3–5. Appellant contends that paragraph 19 of the
written description defines the term “state sliver” and asserts that although
“Ruths generally discloses that ‘the application event may be translated into
a collaborative data interaction,’ Ruths does not disclose ‘generating a
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processed state sliver’ as recited in claim 1.” Reply Br. 4. Appellant also
argues that “it is not clear . . . what, if anything” in Ruths corresponds to the
claimed transformation rule and argues that “Ruths does not disclose any
transformation rules.” Reply Br. 5.
We find these arguments unpersuasive. First, Appellant forfeited these
arguments by failing to raise them in the Appeal Brief. In the Final Office
Action, the Examiner relied on paragraph 74 of Ruths for these elements and
specifically pointed to the step of translating an application into a
collaborative data interaction disclosed in an accompanying drawing. See
Final Act. 3 (citing Ruths ¶¶ 74, 81, Fig. 7A, item 84 (step of “[t]ranslat[ing]
application event into collaborative data interaction”)). Yet Appellant waited
until the Reply Brief to raise these arguments and did not present good cause
for failing to raise them earlier. Appellant therefore forfeited these
arguments. See, e.g., 37 C.F.R. §§ 41.37(c)(1)(iv) (“Except as provided for
in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in
the appeal brief will be refused consideration by the Board for purposes of
the present appeal.”), 41.41(b)(2) (explaining that, subject to certain
exceptions, “[a]ny argument raised in the reply brief which was not raised in
the appeal brief . . . will not be considered by the Board for purposes of the
present appeal, unless good cause is shown”).
Second, even if Appellant had timely raised these arguments, we
would have found them unpersuasive. As to the recited “processed state
sliver,” contrary to Appellant’s arguments, paragraph 19 of the written
description does not define the term “state sliver.” Paragraph 19 simply
explains that “state slivers” are data constructs that, “[i]n at least some
embodiments,” “can define” and “can provide” certain things. Spec. ¶ 19.
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More important, even if this paragraph provided a definition of “state
slivers,” Appellant has not clearly identified what that definition is or
sufficiently explained why Ruths’s translated collaborative data interaction
fails to satisfy it. Appellant states only that “[w]hile Ruths generally
discloses that ‘the application event may be translated into a collaborative
data interaction,’ Ruths does not disclose ‘generating a processed state
sliver.’” Reply Br. 4. This inadequately supported argument has not
persuaded us that the Examiner erred.
For the recited “at least one transformation rule,” Ruths discloses that
“an adapter that has received the event notification may translate or map the
event into a corresponding interaction for the collaborative data resource.”
Ruths ¶ 74. Ruths explains that “[a]n adapter may be configured to translate
events for a specific application and/or for a specific type of collaborative
data resource. Thus, different adapters may be provided for different
applications and/or different collaborative resources.” Ruths ¶ 73. These
disclosures teach one of ordinary skill in the art that the disclosed adapters
use different algorithms or procedures (that is, translation rules) to translate
events. We thus agree with the Examiner that Ruths teaches “at least one
transformation rule.”
“Emitting a State Stream” and “Causing the External Entity”
Claim 1 also recites “emitting a state stream that includes the
processed state sliver for receipt by the external entity” and “causing the
external entity to affect a change to the different content in response to
emitting the state stream.” Appeal Br. 44.
In the Appeal Brief, Appellant generally asserts that the cited art does
not teach these limitations, but the only specific arguments Appellant raises
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are that Ruths does not teach “the content” and “the different content” and
“the content having a first dimensionality and the different content having a
second dimensionality.” See Appeal Br. 13–17. In the Reply Brief,
Appellant for the first time presents specific arguments for these limitations.
For the “emitting” limitation, Appellant contends that “Ruths does not
disclose exactly what the ‘notification of a collaborative data event’
includes” and thus “Ruths includes no teachings or suggestions that
correspond to the claimed ‘state stream’ and ‘processed state sliver.’” See
Reply Br. 6. And for the “causing” limitation, Appellant argues that
although Ruths teaches invoking an application event (or events) so “that
‘the change made to the collaborative resource will be reflected in the
application,’” Ruths does not teach “causing the external entity to affect a
change to the different content in response to emitting the state stream.”
Reply Br. 6 (emphasis modified).
Appellant forfeited these arguments by failing to raise them in the
Appeal Brief. In the Final Office Action, the Examiner relied on Ruths’s
disclosures of receiving notification of a collaborative data event and
invoking an application event within an application, respectively, for the
disputed “emitting” and “causing” limitations. See Final Act. 3–4 (citing
Ruths Fig. 7B, item 88 (step of “[r]eceiv[ing] notification of collaborative
data event”), item 92 (step of “[i]nvok[ing] application event within
application”)). But instead of explicitly challenging these findings in the
Appeal Brief, Appellant waited until the Reply Brief to do so and did not
explain why there was good cause for the delay. Appellant therefore
forfeited these arguments. See, e.g., 37 C.F.R. §§ 41.37(c)(1)(iv),
41.41(b)(2).
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In any case, had Appellant timely made these arguments, we would
have found them unpersuasive. Starting with the “emitting” limitation, Ruths
discloses sending state information or messages indicating a desired change
to other devices so that the devices can modify their representation of a
collaborative resource accordingly. See, e.g., Ruths ¶¶ 51, 66, 75, 86–87,
100. For instance, Ruths discloses “[a] mechanism for binding the
application to the collaborative environment may receive notification of a
collaborative data event, as indicated at 88. For example, a collaborative
platform on the participant may receive a communication or command from
a remote participant indicating a change to a collaborative data resource.”
Ruths ¶ 75 (emphasis added). This teaches that the notifications of a
collaborative data event include modifications to a collaborative data
resource. Thus, for at least this reason, we see no merit in Appellant’s
argument that “Ruths does not disclose exactly what the ‘notification of a
collaborative data event’ includes” and thus does not teach the “emitting”
limitation. Reply Br. 6.
Finally, Appellant’s argument about the “causing” limitation rests on
Appellant’s belief that Ruths does not disclose different content. See Reply
Br. 6. But as explained above, Ruths teaches “different content,” namely, the
representations of the collaborative data resource on other devices before the
platform has synchronized a change to the resource. See, e.g., Ruths ¶ 74.
We therefore find this argument unpersuasive.
For at least the above reasons, we sustain the Examiner’s rejection of
claim 1.
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Claim 23
Claim 23 recites “[t]he method of claim 1, wherein the dimensionality
of the content is a two dimensional space and dimensionality of the different
content is a one dimensional space.” Appeal Br. 46. Appellant contends that
Pabla does not teach or suggest this limitation because “Pabla merely
describes that a collaboration framework may store information describing
input events.” Appeal Br. 20. According to Appellant, “Pabla does not
include a description or mention of a dimensional space for an input event,
or for any information derived from an input event” and therefore “cannot
serve as basis to teach or suggest [the] subject matter of claim 23.” Appeal
Br. 21. Appellant also contends that the Examiner’s combination of Ruths
and Heusermann does not remedy this deficiency. See Appeal Br. 18–19.
We find these arguments unpersuasive. The Examiner found that the
combination of Ruths and Heusermann teaches “wherein the dimensionality
of the content is a two dimensional space” but does not teach the
“dimensionality of the different content is a one dimensional space.” See
Final Act. 8; Ans. 17. The Examiner found that Pabla teaches the
“dimensionality of the different content is a one dimensional space” because
the written description teaches that a one-dimensional space includes
timelines and Pabla discloses an event log that is similar to a timeline. See
Ans. 16–18. The Examiner concluded that it would have been obvious to
modify the combination of Ruths and Heusermann with the teachings of
Pabla to arrive at the claimed invention. See Final Act. 8–9; Ans. 16–18.
Appellant’s arguments against subsets of the Examiner’s combination of
Ruths, Heusermann, and Pabla have not persuaded us that the Examiner
erred because these arguments do not address the rejection made by the
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Examiner. Cf. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”).
Appellant also asserts that the combination of Ruths, Heusermann,
and Pabla “is unable to affect a change to different content having a second
dimensionality in a one dimensional space in response to detecting a change
to a logical state of content having a first dimensionality in a two
dimensional space.” Appeal Br. 18 (emphasis omitted). Not only has
Appellant provided no persuasive evidence or reasoning to support this
assertion, see Appeal Br. 18, but also claim 23 does not recite affecting a
change to different content in response to detecting a change to a logical
state of content having a first dimensionality in a two dimensional space.
Claim 23, by virtue of its dependence from claim 1, requires affecting a
change to the different content “in response to emitting the state stream.”
Appeal Br. 44, 46. We thus find this argument unpersuasive.
For at least the above reasons, we sustain the Examiner’s rejection of
claim 23.
Claim 24
Claim 24 recites “[t]he method of claim 1, wherein the content is a
navigable map and the different content is one of a video, an image, audio, a
text document, or an interactive game.” Appeal Br. 46. Appellant argues that
the Examiner has not shown that Gordon teaches the limitations recited in
claim 24 through its dependency from claim 1 when “the content” and “the
different content” are limited in the manner recited in claim 24. See Appeal
Br. 24–25.
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We find this argument unpersuasive. The Examiner did not rely on
Gordon for the limitations recited in claim 1 (and incorporated into claim 24
through its dependency from claim 1). The Examiner found that a
combination of Ruths and Heusermann teaches the limitations recited in
claim 1 and that this combination teaches that the different content is an
image as recited by claim 24. See Final Act. 3–4, 9. The Examiner found
that this combination does not teach the interactive map content recited in
claim 24 but found that Gordon remedies this deficiency. See Final Act. 9–
10. The Examiner concluded that a combination of the teachings of Ruths,
Heusermann, and Gordon would have made the subject matter recited in
claim 24 obvious. See Final Act. 9–10. Appellant’s arguments about Gordon
alone have not persuaded us that the Examiner erred. See Keller, 642 F.2d at
426.
Appellant also argues in passing that the combination of Ruths,
Heusermann, and Gordon “has not been shown to teach or suggest affecting
a change to a video, an image, audio, a text document, or an interactive
game in response to detecting a change to a logical state of a navigable
map.” Appeal Br. 22 (emphasis omitted). Appellant has provided no
persuasive evidence or reasoning to support this argument. In any event,
claim 24 (by its dependency from claim 1) requires causing a change in this
content in response to emitting a state stream, not detecting a change to a
logical state of a navigable map. See Appeal Br. 44, 46. We therefore find
this argument unpersuasive.
For at least the above reasons, we sustain the Examiner’s rejection of
claim 24.
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Claim 35
Claim 35 recites “determining a difference between a current logical
state of the content and a previous logical state of the content in response to
detecting the scripted event” and “causing the external entity to affect a
change to different content by emitting the processed sliver for receipt by the
external entity.” Appeal Br. 49. Appellant argues that Abt does not teach
these limitation because “Abt’s collaborative environment is only described
with respect to multiple users sharing the same content” and therefore “is
unable to affect a change to different content in response to determining a
difference between a current logical state of content and a previous logical
state of the content.” Appeal Br. 42 (emphasis modified).
We find this argument unpersuasive. Abt discloses comparing current
and previous versions of content (“the content”) to identify modifications
and sending the identified modifications to a collaboration unit. See Abt
¶¶ 41–42, cited in Final Act. 10. The collaboration unit in turn sends the
modifications to a client that reproduces the modifications on local content
(“the different content”). See Abt ¶ 45, cited in Final Act. 11. Thus, contrary
to Appellant’s argument, Abt discloses causing a change to different content
in response to determining a difference between a current logical state of
content and a previous logical state of the content.
For at least the above reasons, we sustain the Examiner’s rejection of
claim 35.
Remaining Claims
For claims 4–8, 25–34, and 36, Appellant relies on the unpersuasive
arguments addressed above. We therefore sustain the Examiner’s rejections
of these claims.
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CONCLUSION
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 4, 5, 25–
29, 34 103(a) Ruths, Heusermann
1, 4, 5, 25–
29, 34
6, 30 103(a) Ruths, Heusermann, Abt 6, 30
7, 8, 31 103(a) Ruths, Heusermann, Pegg 7, 8, 31
23, 32 103(a) Ruths, Heusermann, Pabla 23, 32
24, 33 103(a) Ruths, Heusermann, Gordon 24, 33
35, 36 103(a) Abt, Heusermann, Brattain 35, 36
Overall
Outcome
1, 4–8, 23–
36

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED