MICROSOFT CORPORATION

Patent Trials and Appeals Board

Feb 3, 2020

14012039 - (D) (P.T.A.B. Feb. 3, 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.
14/012,039 08/28/2013 Robert Emmett Kolba JR. 338742-US-NP 7346
69316 7590 02/03/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
SYED, FARHAN M
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte, ROBERT EMMETT KOLBA JR., DANIEL OLIVER,
MAX GLENN MORRIS, GAURAV ANAND, SANDY WONG,
BENJAMIN DAVID LANGMAID STEWART,
MELITTA LORRAINE GEISTDOERFER ANDERSEN RILEY,
SHAJIB SADHUKHA, and LIWEI CHEN
____________

Appeal 2018-005747
Application 14/012,039
Technology Center 2100
____________

Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
MICHAEL J. ENGLE Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 5–9, 11–16, and 18–20, which constitute all
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). An Oral
Hearing was held January 9, 2020.
We REVERSE.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Microsoft
Technology Licensing, LLC as the real party in interest. Appeal Br. 2.
Appeal 2018-005747
Application 14/012,039
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STATEMENT OF THE CASE
The invention relates to search features in a computing environment
which provide integration among different contexts of search results.
Abstract; Spec. ¶¶ 2, 3; Figs. 3, 4. Claim 1, reproduced below, is exemplary
of the subject matter on appeal (emphases added):
1. A method comprising:
receiving, at a processor device, at least a portion of a
search query by a search service;
searching by the search service at least one index
associated with content accessible through an application based
on the at least one portion of the search query to provide one or
more contextualized search results associated with the content
of the application; and
returning from the search service the one or more
contextual search results responsive to the searching operation,
each contextual search result including a reference to the
content associated with the search result, one or more
application identifiers identifying the application, and one or
more action identifiers identifying an action designated to be
performed by the application on the content referenced by the
search result.

Appeal Br. 21 (Claims App.).

THE REJECTION
Claims 1–3, 5–9, 11–16, and 18–20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marmaros et al. (US 2005/0149500 A1)
(“Marmaros”) in view of Lazaridis et al. (US 2013/0212528 A1)
(“Lazaridis”). Final Act. 6–18.

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REFERENCES
Prior art relied upon by the Examiner:
Name Reference Date
Marmaros et al. US 2005/0149500 A1 July 7, 2005
Lazaridis et al. US 2013/0212528 A1 Aug. 15, 2013

ANALYSIS
Appellant argues, inter alia, that the Examiner errs in finding the
combination of Marmaros and Lazaridis teaches the claim 12 limitations:
each contextual search result including [1] a reference to the
content associated with the search result, [2] one or more
application identifiers identifying the application, and [3] one or
more action identifiers identifying an action designated to be
performed by the application on the content referenced by the
search result.
(also referred to as disputed limitations). Appeal Br. 7–15; Reply Br. 2–4.
In the Final Action, the Examiner finds that Marmaros teaches
disputed limitations (1) and (2). Final Act 6–8 (citing Marmaros ¶¶ 19, 20,
22). The Examiner finds the Marmaros search result includes identifiers
identifying articles based at least in part on user content and that an identifier
may be an URL, a file name, an icon, a path, or anything else that identifies
an article. Id. (citing Marmaros ¶ 19). According to the Examiner:

( . . . The Examiner further notes and as further described in
paragraph [0016] that articles are documents or group of
documents or information that may be returned as set of results
from the search engine.), and one or more action identifier
(e.g. the Examiner notes that the Applicant has defined an action

2 Appellant argues independent claims 1, 7, and 14 as a group, and we
choose claim 1 as representative of the group. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Application 14/012,039
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identifier as a type of metadata data that defines data, see
paragraph [0022]. The Examiner notes that such metadata that
are designated and/or defined to differentiate other types of
metadata are well known in the art and is simply a design choice
made by the Applicant. Similarly, Marmaros, see paragraph
[0034] discloses parameters where the parameters provided by
the user are used to differentiate other types of data and when
accessed by a search engine, is able to index and parse the result
sets, based on the differentiating parameters.).

Id. at 7–8.

The Examiner finds Lazaridis teaches limitation (3):
Lazaridis discloses identifying an action designated to be
performed by the application on the content referenced by
the search result (e.g. Lazaridis, see paragraph [0103],
discloses the display or communication of the search result may
order the items returned as part of the search results, where in
some embodiments, the matching modules may be followed by
actions, where each matching module followed immediately by
its associated action. The Examiner interprets the identified
action as action associated with the matching results.).

Id. at 8.
The Examiner concludes it would have been obvious to one of
ordinary skill in the art to include the claimed feature with the motivation to
enhance the user’s expectation of using search features. Id. at 8–9.
In the Appeal Brief, Appellant argues that Marmaros does not teach
both a reference to the content and an application identifier identifying the
application because the claimed article identifier cannot map to both a
reference to content and an application identifier identifying the application.
Appeal Br. 7–8 (citing Marmaros ¶ 20). According to Appellant,
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Marmaros’s “result set . . . that may be associated with a client application
is not similar to an ‘application identifier’ that specifically ‘identifies the
application’ and is included in a returned contextual search result.” Id.
at 8 (additional emphases added). Appellant argues Marmaros does not
teach that the ‘“associations’ to client applications are actually returned as
part of a search result.” Id. Therefore, Appellant argues that “Marmaros’s
‘articles’ and ‘article identifiers’ do not provide sufficient basis for teaching
‘reference to content’ and ‘an application identifier identifying the
application’” as recited in disputed limitations (1) and (2). Id.
Regarding disputed limitation (3), Appellant argues the Examiner errs
by disregarding functionality provided by the action identifier and recited in
the claims: “identifying an action designated to be performed.” Id. at 9.
Appellant disputes the Examiner’s finding that the recited identifiers are
“well-known in the art” and the use of an action identifiers is a “design
choice” and argues the Examiner does not meet the required burden to
support these findings. Id. at 9–11 (citing MPEP § 2144.03; K/S HIMPP v.
Hear-Wear Techs., LLC, 751 F.3d 1362 (Fed Cir. 2014)).
Appellant argues the Examiner errs in finding Lazaridis teaches
disputed limitation (3) because Lazaridis does not teach “identifying an
action designated to be performed by the application on the content
referenced by the search result.” Appeal Br. 11–12 (citing Final Act, 8–9;
Lazaridis ¶ 103, Fig. 8). According to Appellant, “Lazaridis discloses the
return of an action that a module (e.g., an application) can perform
completely independent of any specific content associated with a search
result” and this is not “an action designated to be performed by the
application on the content referenced by the search result.” Id. at 12, 13.
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In the Answer, the Examiner refers to Marmaros and Lazardis. Ans.
4–6. Regarding disputed limitation (3), the Examiner refers to Lazardis:
Lazaridis, see Figure 8, paragraphs [0091-0094], which further
illustrates ‘alarm,’ which is a reference associated to the
contextual search, where the search result includes Date and
Time and Contacts (see items 808 and 812), as illustrations of
one or more application identifier, identifying the application
‘Date and Time’ and ‘Contacts.’

Id. at 5, 4 (same).

Lazaridis further describes action identifiers, see paragraph
[0089], which discloses a device may have one or more input
mechanism, such as a specific key or button that consistently
launches the search feature, regardless of the GUI context. For
example, see Lazardis, paragraphs [0101-0105], discloses
examples of action identifiers, such as answering or receiving
voice calls, as actions that may be performed when the search
results are displayed on the device display screen. See further
paragraph [0065], which discloses the name of the module or
action in a set of search results, where the keywords associated
with the module or action and using for matching against search
queries. Finally, Lazaridis, see Figure 8, paragraphs [0091-
0094], which further illustrates ‘alarm,’ which is a reference
associated to the contextual search, where the search result
includes Date and Time and Contacts (see items 808 and 812),
as illustrations of one or more application identifier, identifying
the application ‘Date and Time’ and ‘Contacts.’

Id. at 5.

In the Reply Brief, Appellant reiterates arguments presented in the
Appeal Brief and argues that Lazaridis’s search results that include a Date
and Time icon cannot map to the “application identifier” because the
Examiner identifies no Lazaridis application that performs or is capable to
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Application 14/012,039
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perform an action on content referenced by the search result. Reply Br. 4
(citing Final Act. 3–4). According to Appellant:
As discussed in the Appeal Brief (pages 13-14), the independent
claims recite the language “action designated to be performed by
the application on the content referenced by the search result,”
(emphasis added). The search results disclosed in Lazaridis
(FIG. 8) are merely icons for “modules” (“Date and Time”) or an
operation performable by a module (“Set My Alarm”).
However, the Lazaridis operation (“Set My Alarm”) is not
performed on any “content” referenced by the returned search
result. Accordingly, the “Date and Time” and “Contacts”
modules cannot be the disclosed “one or more application
identifiers identifying the application” because the Lazaridis
modules are not disclosed or suggested as performing actions on
content referenced by the search result as generally recited in the
claims (e.g., “one or more action identifiers identifying an action
designated to be performed by the application on the content
referenced by the search result”).

Id. at 4–5.
We are persuaded by Appellant’s arguments because, on the record
before us, the Examiner presents insufficient evidence that the combination
of Marmaros and Lazaridis teaches the disputed limitations.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would have been interpreted by one of ordinary skill in the art. In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). While we
interpret claims broadly but reasonably in light of the Specification, we
nonetheless must not import limitations from the Specification into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our
reviewing court states that “the words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
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Application 14/012,039
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1312 (Fed. Cir. 2005) (en banc) (citations omitted). However, the broadest
reasonable interpretation differs from the broadest possible interpretation.
In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct
inquiry in giving a claim term its broadest reasonable interpretation in light
of the specification is “an interpretation that corresponds with what and how
the inventor describes his invention in the specification, i.e., an
interpretation that is ‘consistent with the specification.’” Id. at 1382–83
(quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Here, Lazaridis does not teach the disputed limitation (3) “[each
contextual search result including a reference to] one or more action
identifiers identifying an action designated to be performed by the
application on the content referenced by the search result.” Although
Lazaridis refers to a Date and Time Application (“App”) in Figure 5, there is
no teaching cited in Lazaridis that this application identifies an action
designated to be performed by this application. Instead, a separate search
result “Set My Alarm” is displayed and identified as an “Action.” See
Lazaridis, Fig. 8, element 810; Fig. 5, Type. Additionally, although
Lazaridis’s “Set My Alarm” may be associated with the Date and Time
Application, Lazaridis’s “Set My Alarm” is not designated to be performed
by the application on the content referenced by the search result.
Our interpretation of disputed limitation (3) is consistent with the
Specification. See, e.g., Spec. ¶¶ 28, 29, 33 37, 64; Figs. 1, 2.
In view of the above, we do not sustain the rejection of claim 1,
independent claims 7 and 14, and dependent claims 2, 3, 5, 6, 8, 9, 11–13,
15, 16, and 18–20. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
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(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious . . . .”).
Because our decision with regard to the disputed limitation is
dispositive of the rejections, we do not address additional arguments raised
by Appellant.

DECISION

Claims
Rejected
35 U.S.C.
§
References Affirmed Reversed
1–3, 5–9, 11–
16, 18–20
103(a) Marmaros,
Lazaridis
1–3, 5–9, 11–
16, 18–20

REVERSED