Microsoft Corporation

Patent Trials and Appeals Board

Jul 26, 2021

2020000271 (P.T.A.B. Jul. 26, 2021)

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.
14/492,512 09/22/2014 Jonathan S. Kaufthal 341526-US-NP/170101-613 4125
145266 7590 07/26/2021
NovoTechIP International PLLC
1717 Pennsylvania Ave. NW
Suite #1025
Washington, DC 20006
EXAMINER
TRAN, TAN H
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
07/26/2021 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):
akhlaghi@novotechip.com
docketing@novotechip.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN S. KAUFTHAL, MAYA RODRIG, AMANI
AHMED DYE, EREZ KIKIN-GIL, and CHARLES SCOTT WALKER
____________________

Appeal 2020-000271
Application 14/492,512
Technology Center 2100
____________________

Before JOHN A. JEFFERY, KRISTEN L. DROESCH, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1

1 Our Decision refers to Appellant’s Appeal Brief filed April 22, 2019
(“Appeal Br.”); Appellant’s Reply Brief filed October 15, 2019 (“Reply
Br.”); Examiner’s Answer mailed August 13, 2019 (“Ans.”); the Final
Rejection mailed August 10, 2018 (“Final Act.”), and the Specification filed
September 22, 2014 (“Spec.”).
Appeal 2020-000271
Application 14/492,512

2
Appellant2 seeks our review3 under 35 U.S.C. § 134(a) from the final
rejection of Claims 1, 3, and 5–22, all pending claims. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
INVENTION
The claims relate to methods for displaying multiple parts of a
document in different languages. See Abstract.
Claims 1, 19, and 20 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which
is reproduced below with some formatting added:
1. A method for providing progressive functionality access,
the method comprising:
in a computer-generated application user interface,
providing an array of functionality commands for application to
a content item being generated or edited in the application user
interface;
in response to receiving a selection of a particular
functionality command in the array of functionality commands,
and in response to a determination that a logical subset of

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies Microsoft Technology
Licensing, LLC of Redmond, Washington, as the real party in interest.
Appeal Br. 3.
3 We have considered in this decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2020-000271
Application 14/492,512

3
functionalities is available under the selected functionality
command, providing an array of the logical subset of
functionalities in the application user interface for application to
the content item; and
in response to receiving the selection of the particular
functionality command in the array of functionality commands,
and in response to a determination that a logical subset of
functionalities is not available under the selected functionality
command, automatically providing in the application user
interface a contextual functionalities pane that includes one or
more functionalities for application to the content item, wherein
the contextual functionalities pane is displayed simultaneously
with the array of functionality commands.

PRIOR ART

Name4 Reference Date
Satterfield US 2006/0036964 A1 Feb. 16, 2006
Shaw US 2012/0159375 A1 June 21, 2012
Kotler US 2013/0019175 A1 Jan. 17, 2013
Faithe Wempen, PowerPoint 2013 Bible (4th Ed.) (March 2013)

REJECTIONS5 AT ISSUE
1. Claims 1, 3, 5, 6, 8–10, 12, 13, and 16–22 stand rejected under
35 U.S.C. § 103(a) as obvious over Satterfield and Wempen. Final
Act. 3–16.

4 All citations herein to the references are by reference to the first named
inventor/author only.

5 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act. 2.
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Application 14/492,512

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2. Claims 7, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Satterfield, Wempen, and Kotler. Final Act. 16–19.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over
Satterfield, Wempen, and Shaw. Final Act. 19.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We find Appellant’s arguments
persuasive with respect to the rejections under § 103.

CLAIMS 1, 3, 5, 6, 8–10, 12, 13, AND 16–22:
OBVIOUSNESS OVER SATTERFIELD AND WEMPEN
A. Claims 1, 3, 5, 6, 8–10, 12, 13, and 16–18.
Appellant states, because: “the combination of Satterfield and
Wempen does not render independent claim 1 obvious, dependent claims 3,
5, 6, 8-10, 12, 13, and 16-18 are also not obvious in view of the combined
references.” Appeal Br. 10. In view of Appellant’s statement, we decide the
appeal of these rejections on the basis of Claim 1 and refer to the rejected
claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); see also
In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002) (“[T]he Board is free
to select a single claim from each group of claims subject to a common
ground of rejection as representative of all claims in that group and to decide
the appeal of that rejection based solely on the selected representative claim”
in the absence of a clear statement asserting separate patentability of the
claims.).
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Application 14/492,512

5
Claim 1 recites, inter alia, “in response to receiving the selection of
the particular functionality command in the array of functionality
commands, and in response to a determination that a logical subset of
functionalities is not available under the selected functionality command,
automatically providing in the application user interface a contextual
functionalities pane that includes one or more functionalities for application
to the content item.”
The Examiner finds this limitation is not taught by Satterfield. Final
Act. 4–5. The Examiner finds Wempen teaches the claimed “automatically
providing” limitation. Final Act. 5 (“[in] [F]igs. 1.13 [and] 1.17, a pane is
provided along the right side of the screen after the user activates the dialog
box launcher icon showing additional functionalities.”) (emphasis added).
Appellant contends: “Wempen expressly states a user can open
a dialog box related to that group by selecting the icon.” Appeal Br. 8.
Appellant argues a user’s ability to open a dialog box fails to teach
“automatically providing in the application user interface a contextual
functionalities pane,” as claimed. Appeal Br. 8–9. Appellant further argues
Figure 1.13 does not show a pane along the right side of a screen. Id.
The Examiner finds that Figures 1.13 and 1.17 of Wempen show that
if a command is not available under the array of functionalities then the
system will provide the dialog box launcher where the system is provided
additional commands via the contextual pane or dialog box. Ans. 21.
The Examiner fails to cite any text that affirmatively discloses this
finding. Neither cited Figure is either dynamic, or multi-paneled. Neither
Figure depicts a first state, prior to a determination of the availability of a
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Application 14/492,512

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command, and a second state wherein additional commands have been made
available.
The Examiner further finds: “For example, if a user [] clicked on the
dialog box launcher in the ‘size’ group of [F]ig. 1.17, a contextual pane is
displayed along the right side of the screen.” Ans. 21.
However, this finding fails to appreciate that a user clicking on a
dialog box fails to teach “automatically providing,” as claimed. In view of
the foregoing, we find the prior art fails to teach at least one claimed
limitation. We, therefore, decline to sustain the rejection of Claims 1, 3, 5,
6, 8–10, 12, 13, and 16–18.
B. Independent Claim 19.
Appellant contends that “[n]either Satterfield nor Wempen, either
individually or in combination, teach or suggest ‘in response to a selection of
the particular functionality command in the array of functionality
commands, automatically providing a contextual functionalities pane that is
displayed simultaneously with the array of functionality commands in the
application user interface when the logical subset of functionalities is not
available,’” as claimed (emphasis added). Appeal Br. 11.
Independent Claim 1 recites, inter alia, a similar limitation, i.e., “in
response to a determination that a logical subset of functionalities is not
available under the selected functionality command, automatically providing
in the application user interface a contextual functionalities pane.” In
contrast, Claim 19 recites “when the logical subset of functionalities is not
available” which imposes a condition such that if or when the logical subset
of functionalities is available, the limitations immediately preceding the
when-clause need not be performed (i.e., “automatically providing a
Appeal 2020-000271
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contextual functionalities pane that is displayed simultaneously with the
array of functionality commands in the application user interface”). See Ex
parte Schulhauser, Appeal 2013-007847, slip op. 7 (PTAB, April 28, 2016)
(precedential) (“Given the language recited in the remaining steps of claim
1, the remaining steps only need to be reached if the determining step is
reached.”). Thus, we find Appellant’s arguments in this regard are not
persuasive because the “when-clause” limitations need not be found in the
prior art.
Independent Claim 19 also recites, inter alia, “in response to a
selection of an area of the application user interface used to provide a
contextual pane, providing the contextual pane that includes at least one of
one or more additional functionality commands or one or more
functionalities.” We note that this limitation is not conditional to a “when-
clause.”
The Examiner finds Satterfield does not teach this limitation. Final
Act. 11. Referring to Figures 1.13 and 1.17, the Examiner finds Wempen
teaches “a user activates the dialog box launcher icon in the logical grouping
of functionality commands of the Shape Styles option.” Id. (Emphasis
omitted.)
Independently of the “when-clause” limitation, Appellant argues
Claim 19 operates such that a user selects an area of the application user
interface used to provide the contextual pane, and in response, the contextual
pane is provided. Appeal Br. 11. Appellant argues in contrast, Wempen
provides the dialog box launcher and/or the dialog box are provided in
response to selecting a small icon located in the bottom-right corner of a
group in the ribbon interface. Id.
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The Examiner disputes Appellant’s contentions and finds the
contextual pane or dialog box is provided in response to a selection of an
area of the dialog box launcher located in the command ribbon portion of the
application GUI. Ans. 21.
The Answer effectively supports Appellant’s contention that Wempen
teaches the dialog box launcher and/or the dialog box are provided in
response to selecting an icon located in the ribbon interface, but not in the
area used to provide the contextual pane. Appeal Br. 11. Thus, we find the
prior art fails to teach at least one claimed limitation.6 We, therefore,
decline to sustain the rejection of Claim 19.
C. Independent Claim 20.
Appellant notes independent Claim 20 recites, inter alia, “if no logical
subset of functionalities is available, then forgoing a provision of the logical
subset of functionalities and providing in the application user interface a
contextual functionalities pane that includes one or more functionalities
available under the selected functionality command.” Appeal Br. 12.
(Emphasis added). Appellant contends their Claim 1 arguments equally
apply here. Id.
As discussed above in connection with Claim 19, under Ex parte
Schulhauser, Appellant’s arguments that the prior art fails to teach the
subject matter of a conditional limitation, such as introduced by an if-clause,
are not persuasive.
Independently of the “if-clause” limitation, Appellant argues Claim 20
operates such that a user selects an area of the application user interface used

6 This limitation is in addition to the “when-clause” limitation that we found
above did not have to be taught by the prior art.
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to provide the contextual pane, and in response, the contextual pane is
provided. Appeal Br. 12. Appellant argues in contrast, Wempen provides
the dialog box launcher and/or the dialog box are provided in response to
selecting a small icon located in the bottom-right corner of a group in the
ribbon interface. Id.
The Examiner disputes Appellant’s contentions and finds the
contextual pane or dialog box is provided in response to a selection of an
area of the dialog box launcher located in the command ribbon portion of the
application GUI. Ans. 22.
As discussed above in connection with Claim 19, the Answer
effectively supports Appellant’s contention. We, therefore, decline to
sustain the rejection of Claim 20.
CLAIMS 7, 14, AND 15: OBVIOUSNESS OVER SATTERFIELD, WEMPEN, AND
KOTLER
The Examiner does not apply Kotler to teach the limitations of the
independent Claims disputed above. See Answer. We, therefore, decline to
sustain the rejection of dependent Claims 7, 14, and 15.
CLAIM 11: OBVIOUSNESS OVER SATTERFIELD, WEMPEN, AND SHAW
The Examiner does not apply Shaw to teach the limitations of the
independent Claims disputed above. See Answer. We, therefore, decline to
sustain the rejection of dependent Claim 11.

DECISION
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
Appeal 2020-000271
Application 14/492,512

10
1, 3, 5, 6,
8–10, 12,
13, 16–22
103 Satterfield, Wempen 1, 3, 5, 6,
8–10, 12,
13, 16–22
7, 14, 15 103 Satterfield, Wempen,
Kotler
7, 14, 15
11 103 Satterfield, Wempen,
Shaw
11
Overall
Outcome
1, 3, 5–22

REVERSED