Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Sep 22, 2021

2020004318 (P.T.A.B. Sep. 22, 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.
15/348,503 11/10/2016 Lenin Ravindranath Sivalingam MST-0470/335270-
US-CNT
7103
141674 7590 09/22/2021
Faegre Drinker Biddle & Reath LLP (Microsoft)
1500 K Street, N.W.
Suite 1100
Washington, DC 20005
EXAMINER
LUU, CUONG V
ART UNIT PAPER NUMBER
2192
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
patentdocketingdvr@faegredrinker.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LENIN RAVINDRANATH SIVALINGAM,
JITENDRA PADHYE, IAN OBERMILLER, RATUL MAHAJAN,
SHARAD AGARWAL, RONNIE IRA CHAIKEN,
SHAHIN SHAYANDEH, CHRISTOPHER M. MOORE, and
SIRIUS KUTTIYAN

Appeal 2020-004318
Application 15/348,503
Technology Center 2100

Before MAHSHID D. SAADAT, MARC S. HOFF, and
JOYCE CRAIG, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 2–10, 12–16, 18–20, and 22, which
constitute all the claims pending in this application. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2019). Appellant identifies Microsoft Technology Licensing, LLC as
the real party in interest. Appeal Br. 2.
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Application 15/348,503

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CLAIMED SUBJECT MATTER
The claims are directed to dynamically providing application analytic
information. Spec. ¶ 5. Claim 2, reproduced below, is illustrative of the
claimed subject matter:
2. A method executable by a processor for binary
rewriting of application files, comprising:
unpacking an application file comprising application
code;
inserting an application analytic agent into the
application file;
performing a binary rewriting of the application file to
insert specified application analytic code, the specified
application analytic code to detect application analytic
information comprising page navigation information;
repacking the application file to obtain a new application
file comprising the application code and the application analytic
code; and
executing, via the processor, the new application file to
detect the page navigation information, the page navigation
information comprising pages viewed by a user upon exiting
the new application file.
Appeal Br. 21 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Tiwary et al. (“Tiwary”) US 2003/0163608 A1 Aug. 28, 2003
Pettigrew US 2005/0027756 A1 Feb. 3, 2005
Klawon US 2005/0120045 A1 June 2, 2005
Ruiz et al. (“Ruiz”) US 2007/0162274 A1 July 12, 2007
Balestrieri et al. (“Balestrieri”) US 2011/0185231 A1 July 28, 2011

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REJECTIONS
Claims 2, 3, and 8–10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ruiz, Tiwary, and Klawon. Final Act. 4–10.
Claims 4, 12, 15, 16, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ruiz, Tiwary, Klawon, and Balestrieri. Final Act. 10–
17.
Claims 5–7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ruiz, Tiwary, Klawon, and Pettigrew. Final Act. 17–18.
Claims 13, 14, and 18–20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ruiz, Tiwary, Klawon, Balestrieri, and Pettigrew. Final
Act. 19–26.
ANALYSIS
We begin our analysis with claim construction of the term “exiting the
application file,” as recited in claim 2. Appellant contends that the phrase
“exiting an application” is “commonly known and used to refer to
terminating all windows or processes of an application in PC or Windows
computing environments.” Reply Br. 2. The Examiner concludes that
“exiting the application file” means the user simply stops using or
interacting with the application. Ans. 27.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be 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); see also In re Smith
Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (noting that such
interpretation is one “that corresponds with what and how the inventor
describes his invention in the specification, i.e., an interpretation that is
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4
‘consistent with the specification”’). In the absence of an express definition
of a claim term in the Specification or a clear disclaimer of scope, the claim
term is interpreted as broadly as the ordinary usage of the term by one of
ordinary skill in the art would permit. See In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); see also In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
As the Examiner points out, the term “exit” appears only once in
Appellant’s Specification. Ans. 26–27 (citing Spec. ¶ 80). Paragraph 80 uses
language similar to that used in claim 2, namely “information about which
pages are being used when users exit the application.” Spec. ¶ 80. Appellant
fails to identity any express definition of the claim term “exiting” in the
Specification that requires the claimed “exiting” to require “terminating all
windows or processes of an application.”
Appellant has not persuaded us that the ordinary meaning of the claim
term “exiting the new application file,” applied by the Examiner, which
merely requires the user to stop using or interacting with the application, is
inconsistent with the Specification. Nor has Appellant persuaded us that the
Examiner’s interpretation of “exiting the new application file” is overly
broad or unreasonable. “[T]he specification ‘is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.”’ Phillips v. AWH Corp., 415 F.3d
1303, 1315 (en banc) (quoting Vitrionics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (1996)). Extrinsic evidence may be useful, but it is unlikely
to result in a reliable interpretation of patent claim scope unless considered
in the context of the intrinsic evidence. Id. at 1319.

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Further addressing the issue of claim construction raised by Appellant,
we note that claim 2 does not require an affirmative step of exiting the new
application file or even detecting pages viewed by a user upon exiting the
new application file. See Ans. 35. Rather, the phrase “the page navigation
information comprising pages viewed by a user upon exiting the new
application file” describes the content of “the page navigation information”
that “the new application file” is executed to detect, as recited in claim 2.
Here, Appellant attempts to distinguish the recited method based on the
content of the page navigation information.
On this claim construction issue, we are bound by the Board’s
precedential decision, Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential) (“[T]he nature of the information being manipulated does not
lend patentability to an otherwise unpatentable computer-implemented
product or process.”).2 In Nehls (88 USPQ2d at 1888), the Board held that
the nature of the information being manipulated by the computer should not
be given patentable weight absent evidence that such information is
functionally related to the process “by changing the efficiency or accuracy or
any other characteristic” of the steps. See Ex parte Curry, 84 USPQ2d 1272,

2 The Board may adopt a claim construction of a disputed term that neither
party proposes. See, e.g., Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods.
IP Ltd., 890 F.3d 1024, 1034 (Fed. Cir. 2018) (rejecting argument that Board
violated patent owner’s “procedural rights by adopting a claim construction
that neither party proposed”); Western-Geco LLC v. ION Geophysical Corp.,
889 F.3d 1308, 1328 (Fed. Cir. 2018) (“The Board is not bound to adopt
either party’s preferred articulated construction of a disputed claim term.”).
Parties are aware that the Board may stray from disputed, proposed
constructions. See Western- Geco, 889 F.3d at 1328 (“Having put it at issue,
Western-Geco was well aware that the Board could alter its construction in
the final written decision.”).
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1274 (BPAI 2005) (informative) aff’d, No. 2006-1003 (Fed. Cir. June 12,
2006) (Rule 36) (holding “wellness-related” data stored in a database and
communicated over a network was non-functional descriptive material as
claimed because the data “does not functionally change” the system).
With respect to claim 2, we determine that the clause “the page
navigation information comprising pages viewed by a user upon exiting the
new application file” merely describes the content of the page navigation
information. That particular content does not affect any method step or alter
the structure of the computing devices recited in the claim. In particular, the
content of the information to be detected does not affect the recited process
of “executing, via the processor, the new application file,” as recited in claim
2. Therefore, the content of the transmitted information is nonfunctional
descriptive material that does not distinguish the claim from the prior art in
terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative), aff’d, 191 F. App’x 959 (Fed. Cir. 2006) (“[N]onfunctional
descriptive material cannot lend patentability to an invention that would
have otherwise been taught by the prior art.”); Curry, 84 USPQ2d at 1274
(“Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious.”). As explained in In re Lowry, we
need not give patentable weight to descriptive material absent a new and
unobvious functional relationship between the descriptive material and the
substrate. See In re Lowry, 32 F.3d 1579, 1582–83 (Fed. Cir. 1994)
(discussing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)); see also
King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
(“[T]he relevant question is whether ‘there exists any new and unobvious
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functional relationship between the printed matter and the substrate.”’)
(citations omitted).
Equivalently, material is printed matter if it is “claimed for what it
communicates.” In re Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015). The
disputed limitation of claim 2 merely characterizes the specific content of
page navigation information that the new application file is executed to
detect. Thus, the disputed claim limitation is directed to printed matter. See
id. at 848 (A claim limitation is directed to printed matter “if it claims the
content of information.”).
If a claim in a patent application claims printed matter, “one must then
determine if the matter is functionally or structurally related to the associated
physical substrate, and only if the answer is ‘no’ is the printed matter owed
no patentable weight.” Distefano, 808 F.3d at 851. In the instant claim, the
claimed content of the page navigation information is not specifically related
to the structure of the page navigation information, or explicitly used in the
claim, such as by the processor, to perform any function. Rather, the content
of the information is not functionally distinct from any other information
that is to be detected. Accordingly, we find the disputed claim limitation
constitutes nonfunctional descriptive material and printed matter not
functionally related to the associated substrate, which are not entitled to
patentable weight. The content of the information in the present claim is
analogous to the data in Curry, where the type of data was found to be
nonfunctional descriptive material in that it “does not functionally change
either the data storage system or communication system used in the method
of [the] claim.” Ex parte Curry, 84 USPQ2d at 1274.
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Because the content of the page navigation information specified by
the disputed limitations constitutes nonfunctional descriptive material, the
particular type of page navigation information (i.e., pages viewed by a user
upon exiting the application file) recited in claim 2 is not entitled to
patentable weight. Accordingly, Appellant’s arguments are not
commensurate in scope with claim 2. The final step of claim 2 merely
requires executing, via the processor, the new application file to detect the
page navigation information.
Even so, as explained by the Examiner, Klawon teaches the recited
“application analytic information comprising page navigation information,”
“the new application file to detect the page navigation information,” and
“the page navigation information comprising pages viewed by a user upon
exiting the new application file.” Ans. 27–28 (citing Klawon ¶¶ 29, 61–65).
For example, Klawon teaches storing, updating, and analyzing what pages
the user visited and when the user visited them. See Klawon ¶ 29. This is
sufficient to at least suggest “page navigation information comprising pages
viewed by a user” at any point in time, including “upon exiting the new
application file,” as recited in claim 2.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Ruiz, Tiwary, and Klawon teaches or
suggests the disputed limitations of claim 2.
Accordingly, we affirm the Examiner’s obviousness rejection of
independent claim 2 and dependent claims 3 and 8–10, argued as a group
with claim 2. See Appeal Br. 6. Appellant makes similar arguments for
claims 4, 12, 15, and 16 (Appeal Br. 12), claims 5–7 (id. at 16), and claims
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9
13, 14, and 18–20 (id. at 19). We, therefore, affirm the Examiner’s
obviousness rejection of those claims as well.
Dependent claim 22 depends from claim 12 and further recites
“wherein the page navigation information comprises an average amount of
time each page within the new application file is viewed.” See Appeal Br. 25
(Claims App.). Appellant argues that “Klawon does not describe any new
application file, much less determining an average amount of time that each
page within the new application file is viewed.” Id. at 15.
Appellant attacks Klawon individually, even though the Examiner
relied on the combination of Ruiz, Tiwary, and Klawon in rejecting claim
22. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller,
642 F.2d 413, 425 (CCPA 1981)) (“The test for obviousness is what the
combined teachings of the references would have suggested to those having
ordinary skill in the art.”). Here, the Examiner relied on Tiwary, not Klawon,
as teaching “the new application file,” as recited in claim 12. Final Act. 13.
The Examiner further found that Klawon teaches page navigation
information comprising “an average amount of time each page within the
new application file is viewed.” Final Act 16–17; Ans. 30 (citing Klawon
¶¶ 64, 370–72). Appellant has not persuasively rebutted the Examiner’s
findings.
Moreover, similar to “the page navigation information comprising
pages viewed by a user upon exiting the new application file,” discussed
above in the context of claim 2, we conclude that the claimed “wherein the
page navigation information comprises an average amount of time each page
within the new application file is viewed” is directed to nonfunctional
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descriptive material that should not be given patentable weight during
examination.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Ruiz, Tiwary, Klawon, and Balestrieri
teaches or suggests the disputed limitations of claim 22.
Accordingly, we sustain the Examiner’s obviousness rejection of
dependent claim 22.
CONCLUSION
We affirm the Examiner’s decision rejecting claims 2–10, 12–16, 18–
20, and 22.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 3, 8–10 103(a) Ruiz, Tiwary,
Klawon
2, 3, 8–10
4, 12, 15,
16, 22
103(a) Ruiz, Tiwary,
Klawon, Balestrieri
4, 12, 15,
16, 22

5–7 103(a) Ruiz, Tiwary,
Klawon, Pettigrew
5–7
13, 14, 18–
20
103(a) Ruiz, Tiwary,
Klawon,
Balestrieri,
Pettigrew
13, 14, 18–
20

Overall
Outcome
2–10, 12–
16, 18–20,
22

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11
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED