Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Oct 30, 2020

14617791 - (D) (P.T.A.B. Oct. 30, 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.
14/617,791 02/09/2015 Bonny Lau 331013-US-CNT 5471
69316 7590 10/30/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
MA, TIZE
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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 BONNY LAU, SONG ZOU, WEI ZHANG, BRIAN BECK,
JONATHAN GLEASMAN, and PAI-HUNG CHEN
____________________

Appeal 2019-003532
Application 14/617,791
Technology Center 2600
____________________

Before CARL L. SILVERMAN, JAMES W. DEJMEK, and
MICHAEL T. CYGAN, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 21–40. Appellant has canceled claims 1–20. See
Appeal Br. 17. We have jurisdiction over the remaining pending claims
under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d 1420, 1423
(BPAI 1994) (precedential).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Microsoft Technology Licensing, LLC, a wholly owned subsidiary of
Microsoft Corporation, as the real party in interest. Appeal Br. 2.
Appeal 2019-003532
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to the
“coordination of animations across multiple applications.” Spec. ¶ 2. In a
disclosed embodiment, a thumbnail representation of an image may be
included in an email message. Spec. ¶ 48. If a user selects the thumbnail
image for viewing in a picture viewing application, an animation of the
thumbnail representation of the image in the email application is transitioned
to the image as displayed in a picture viewing application. Spec. ¶¶ 48–51.
Figure 5 is illustrative and is reproduced below:

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Figure 5 illustrates a transition animation that bridges multiple
applications. Spec. ¶ 17. According to the Specification, the animation of a
thumbnail representation of an image from an initiator application (e.g., an
email application) to a destination application (e.g., a picture viewing
application) may be a visual enlargement, or a “conversion of image 502,
e.g., an initial graphical representation, to image 512, e.g., a final graphical
representation.” Spec. ¶ 51.
Claim 21 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
21. A computing device for providing animated graphical
transitions between applications, the computing device
comprising:
a memory and a processor, wherein the memory and the
processor are respectively configured to store and execute
computer executable instructions, including instructions for
performing operations including:
receiving a request to transition a context of the computing
device from a first context that is associated with an initiator
application to a second context that is associated with a
destination application other than the initiator application;
coordinating an animated graphical transition from the
initiator application to the destination application based at least
in part on information from the initiator application and on
information from the destination application, wherein the
coordinated animated graphical transition provides an
appearance of originating from a first representation of an
object displayed by the initiator application and ending in an
image of the object displayed by the destination application, and
the coordinated animated graphical transition including a
plurality of frames, the plurality of frames including at least a
first frame containing the image of the object displayed in the
destination application, and a second frame containing the
image of the object displayed in the destination application, the
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image of the object contained in the second frame being smaller
than the image of the object displayed by the destination
application, and the image of the object contained in the first
frame being smaller than the image of the object contained in the
second frame; and
displaying the coordinated animated graphical transition
from the initiator application to the destination application on a
display device associated with the computing device.

The Examiner’s Rejections
1. Claims 21–39 stand rejected under the doctrine of nonstatutory
obviousness-type double patenting over claims 1–12 and 14–18 of U.S.
Patent No. 8,857,900 B2. Non-Final Act. 4–7.
2. Claims 21–25, 27, 29–35, and 37–40 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Chaudhri (US
2010/0231533 A1; Sept. 16, 2010); Glein et al. (US 2006/0031776 A1;
Feb. 9, 2006) (“Glein”); and Yu et al. (US 7,898,542 B1; Mar. 1, 2011)
(“Yu”). Non-Final Act. 8–21.
3. Claims 26 and 36 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Chaudhri, Glein, Yu, and Harrison (US
2009/0144402 A1; June 4, 2009). Non-Final Act. 21–22.
4. Claim 28 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Chaudhri, Glein, Yu, and Kwiatkowski et al. (US
2009/0315897 A1; Dec. 24, 2009) (“Kwiatkowski”). Non-Final Act. 22–23.

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ANALYSIS2
Rejection under doctrine of nonstatutory obviousness-type double patenting
Appellant does not respond to the Examiner’s rejection of claims 21–
39 under the doctrine of nonstatutory obviousness-type double patenting
other than to request that the rejection “be held in abeyance.” Appeal Br. 6.
Appellant has not filed a terminal disclaimer, nor has the Examiner
withdrawn the rejection or agreed to hold the rejection in abeyance. See
Ans. 3, 7.3
To the extent Appellant has not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2015); see also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, . . . the Board may treat any argument with
respect to that ground of rejection as waived.”). Additionally, “[i]f a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner’s answer.” Manual of Patent Examining Procedure
(“MPEP”) § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018).

2 Throughout this Decision, we have considered the Appeal Brief, filed
January 8, 2019 (“Appeal Br.”); the Reply Brief, filed April 3, 2019 (“Reply
Br.”); the Examiner’s Answer, mailed February 12, 2019 (“Ans.”); and the
Non-Final Office Action, mailed August 8, 2018 (“Non-Final Act.”), from
which this Appeal is taken.
3 Nor does USPTO practice does not permit holding the filing of a terminal
disclaimer in abeyance. MPEP § 804(I)(B)(1); 37 C.F.R. § 1.111(b)
(permitting only objections or informalities not necessary for further
consideration of the claims to be held in abeyance).
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Accordingly, we summarily sustain the Examiner’s rejection of claims
21–39 under the doctrine of nonstatutory obviousness-type double patenting.

Rejections under pre-AIA 35 U.S.C. § 103(a)
Claim 21 recites, in relevant part, “wherein the coordinated animated
graphical transition provides an appearance of originating from a first
representation of an object displayed by the initiator application and ending
in an image of the object displayed by the destination application.”
(Emphases added.) Appellant asserts “the object displayed by the initiator
application and the object displayed by the destination application are the
same object.” Appeal Br. 8 (relying on Figure 5 from Appellant’s
application). As such, Appellant argues that Chaudhri, as relied on by the
Examiner, teaches an animated transition between different objects. Appeal
Br. 8–9 (citing Chaudhri, Fig. 5P); Reply Br. 2–4 (citing Chaudhri,
Figs. 5O–5Q). Appellant further argues that neither Glein nor Yu remedies
this alleged deficiency of Chaudhri. Appeal Br. 9–10.
Appellant’s arguments are not persuasive of error because they are not
commensurate with the scope of claim 21. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied
upon for patentability). In particular, contrary to Appellant’s assertions,
claim 21 does not recite an animated graphical transition from an initiator
application to a destination application of the same object. Rather, claim 21
is broader in that it recites an animated graphical transition “from a first
representation of an object displayed by the initiator application and ending
in an image of the object displayed by the destination application.”
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(Emphases added.) Thus, the starting image is a first representation of an
object and the ending image is an image of the object.
In a disclosed embodiment, Chaudhri describes “performing
integrated searches and accessing data associated with a plurality of
applications.” Chaudhri ¶ 137; see also Chaudhri, Figs. 5A–5Y. Chaudhri
teaches that a search result may be ordered based on the application with
which the results are associated. Chaudhri ¶¶ 140–141. Chaudhri further
teaches an animated transition between the search results application and an
application associated with a search result selected by the user. Chaudhri
¶ 141. Figure 5O of Chaudhri is illustrative and is reproduced below:

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Figure 5O of Chaudhri illustrates a portable multifunction device
(100) displaying a plurality of search results (e.g., 5092-1, 5092-2, 5092-3,
5092-4, 5092-5, 5092-6, 5092-7) organized by their associated application
(e.g., 5060, 5062). Chaudhri ¶ 141. In addition, Figure 5O illustrates a user
selection (5094) of search result (5092-2). Chaudhri ¶ 141. Figure 5P of
Chaudhri is reproduced below:

Figure 5P illustrates “an animated transition between the search
results and the first application.” Chaudhri ¶ 141.
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Figure 5Q of Chaudhri is reproduced below:

Figure 5Q of Chaudhri illustrates displaying the selected search result
in the application associated with the selected search result (e.g., an address
book application). Chaudhri ¶ 141.
Thus, as illustrated in Figures 5O through 5Q, Chaudhri teaches a
search engine application displaying a plurality of search results associated
with other applications; a user selecting a search result; and the associated
application launching with the selected result. Consistent with the
Examiner’s mappings (see, e.g., Ans. 3–4), Chaudhri’s search application
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corresponds to the claimed initiator application and Chaudhri’s address book
application corresponds to the claimed destination application. We further
agree with the Examiner (see Ans. 4) that the selected search result (5092-2)
corresponds to the claimed first representation of an object displayed by the
initiator application and the address book entry (5106) corresponds to the
claimed image of the object displayed by the destination application.
Appellant also argues “a skilled artisan would not have been
motivated to modify Chaudhri” with the teachings of Glein and Yu because
Chaudhri does not involve a transition of the same object and would not be
able to achieve a “seamless transition” between the starting and ending
images. Appeal Br. 10–11.
We do not find Appellant’s arguments persuasive of error. As
discussed above, the claims do not require the starting image and ending
image to be the same object. Instead, the starting image is a first
representation of an object. In addition, the claims do not recite that the
transition between the starting and ending images be “seamless.” See Self,
671 F.2d at 1348 (limitations not appearing in the claims cannot be relied
upon for patentability).
Claim 21 also recites, in relevant part:
the plurality of frames including at least a first frame containing
the image of the object displayed in the destination application,
and a second frame containing the image of the object displayed
in the destination application, the image of the object contained
in the second frame being smaller than the image of the object
displayed by the destination application, and the image of the
object contained in the first frame being smaller than the image
of the object contained in the second frame.
Appellant argues that Glein, as relied on by the Examiner, fails to
teach this limitation because the window icon of Glein, considered to be an
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image of an object by the Examiner, is a set of controls for a media player
and not an image of the object. Appeal Br. 12–14.
As the Examiner explains, Glein is relied on to teach an animated
transition comprising multiple frames and size changes of the images from
frame to frame. Ans. 5–6. As discussed above, Chaudhri teaches the
claimed representation of an object and image of the object. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (Non-obviousness cannot be
established by attacking references individually where the ground of
unpatentability is based upon the teachings of a combination of references.).
Moreover, we disagree with Appellant that Glein’s “set of controls”
(see Appeal Br. 12–14) is not an object as claimed. Although we are
mindful not to import limitations from the Specification into the claim (see
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)), we note the
Specification sets forth a non-limiting list of exemplary objects including
lists of information, clip art, and graphics. Spec. ¶ 58. As such, we agree
with the Examiner (see Ans. 5–6) that Glein also teaches the claimed object.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly we sustain the Examiner’s rejection under pre-AIA
35 U.S.C. § 103(a) of independent claim 21. For similar reasons, we also
sustain the Examiner’s rejection of independent claims 29 and 33, which
recite commensurate limitations and were not argued separately with
particularity. See Appeal Br. 14–16 (relying on the same arguments
advanced as those with respect to independent claim 21); see also 37 C.F.R.
§ 41.37(c)(1)(iv). Additionally, we sustain the Examiner’s rejections of
claims 22–28, 30–32, and 34–40, which depend directly or indirectly
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therefrom and were not argued separately with particularity. See Appeal
Br. 14–16; see also 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We summarily affirm the Examiner’s decision rejecting claims 21–39
under the doctrine of nonstatutory obviousness-type double patenting.
We affirm the Examiner’s decision rejecting claims 21–40 under pre-
AIA 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–39 Obviousness-type
Double Patenting
21–39
21–25, 27,
29–35, 37–
40
103(a) Chaudhri, Glein,
Yu
21–25, 27,
29–35, 37–
40

26, 36 103(a) Chaudhri, Glein,
Yu, Harrison
26, 36
28 103(a) Chaudhri, Glein,
Yu, Kwiatkowski
28
Overall
Outcome
21–40

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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