Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Aug 16, 2021

2020001840 (P.T.A.B. Aug. 16, 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.
15/199,647 06/30/2016 Nils Sundelin 13768.3002 9650
47973 7590 08/16/2021
WORKMAN NYDEGGER/MICROSOFT
60 EAST SOUTH TEMPLE
SUITE 1000
SALT LAKE CITY, UT 84111
EXAMINER
LHYMN, SARAH
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
08/16/2021 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):
Docketing@wnlaw.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NILS SUNDELIN, BRET ANDERSON, SAMUEL GEORGE
GATES, RICHARD FANG, MIRON VRANJES, CHRISTOPHER DOAN,
and ABHISHEK MALANI
____________________

Appeal 2020-001840
Application 15/199,647
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, AMBER L. HAGY, and
MICHAEL J. ENGLE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-001840
Application 15/199,647

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection of claims 1–9 and 11–21. Final Act. 1. Claim 10 has been
canceled. Appeal Br. 28. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Claim 1 (reproduced in-part below) is illustrative of the claimed
subject matter (emphasis, formatting, and bracketed material added):
1. A computing system for implementing a customizable
compact overlay window in a display, the computing system
comprising:
at least one processor; and
at least one storage device having stored thereon computer-
executable instructions which, when executed by the at least
one processor, causes the computing system to perform the
following:
[A.] identify, at the computing system, a first application
installed on the computing system in the form of a first set
of executable code;
[B.] cause the first application to operate within a first
application window on the display of the computing
system;
[C.] identify, at the computing system, a second application
installed on the computing system in the form of a second
set of executable code that is separate from the first set of
executable code, wherein the first application and the
second application are different applications;

1 Appellant identifies the real party in interest as Microsoft Technology
Licensing, LLC. Appeal Br. 3.
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[D.] cause the second application to operate on the display of
the computing system;
[E.] based on causing the second application to operate on the
display of the computing system, receive, from the
second set of executable code corresponding to the
second application operating at the computing system,
one or more customization parameters that define how
the second application window is to be configured as a
compact overlay window;
. . .
[K.] based on receiving the second user input, respond
according to a configuration of the computing system.

REFERENCES
The Examiner relies on the following references:2
Name Reference Date
Delpuch US 2004/0139480 A1 July 15, 2004
Silver US 2014/0195675 A1 July 10, 2014
Hall US 2014/0259079 A1 Sept. 11, 2014

“Employee E-mail Suite”; E-Mail Earnings Statements E-Mail W-2
Statements; User Guide for Microsoft Dynamics GP Version 2010 (2011)
(pp. 1–63) (“EES”).
REJECTIONS
A.
The Examiner rejects claims 1–5, 7–9, 11–16, and 18–21 under
35 U.S.C. § 103 as being unpatentable over the combination of Silver and
EES. Final Act. 5–28.

2 Citations are by reference to the first named inventor only.
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We select claim 1 as the representative claim for this rejection. The
contentions discussed herein as to claim 1 are dispositive as to this rejection.
Therefore, except for our ultimate decision, we do not address the merit of
the § 103 rejection of claims 2–5, 7–9, 11–16, and 18–21 further herein.
B.
The Examiner rejects claim 6 under 35 U.S.C. § 103 as being
unpatentable over the combination of Silver, EES, and Delpuch. Final
Act. 29.
The Examiner rejects claim 17 under 35 U.S.C. § 103 as being
unpatentable over the combination of Silver, EES, and Hall. Final Act. 30–
31.
The contentions discussed herein as to claim 1 are dispositive as to
these rejections. Therefore, except for our ultimate decision, we do not
address the merits of the § 103 rejections of claims 6 and 17 further herein.
C.
The Examiner also rejected claims 1 and 18 under 35 U.S.C. § 112(b)
as being indefinite. Final Act. 3–5.
We treat the rejections under 35 U.S.C. § 112(b) as having been
withdrawn due to Examiner’s entry of Appellant’s amendment filed after the
Final Action. July 15, 2019 Advisory Act. 1. Therefore, the merits of the
§ 112(b) rejections are no longer before us.
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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are dispositive as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
A. § 103
A.1. Rejection
For step E of claim 1, the Examiner provides the following:
Silver teaches: . . .
based on causing the second application to operate on
the display of the computing system, receive, from the second
set of executable code corresponding to the second application
operating at the computing system, one or more customization
parameters that define how the second application window is
to be configured as a compact overlay window (see e.g. Figs.
12A-13F and related descriptions. When one of these
applications (i.e. a first application), such as iTunes, a video,
gaming or email application is run, one or more customization
parameters that define how the first application (i.e. iTunes) is to
be configured or what it will look like, in the compact overlay
windows of the figures) (see also paras. 51–56 and discussion
below re: EES reference);
Final Act. 5–7.
A.2. Appellant’s Arguments
A.2.a. Customization Parameters Argument
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
Silver also fails to disclose the specific “customization
parameters” that are claimed. For instance, as claimed, not only
are the two distinct application windows required to be presented
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simultaneously and include different applications, but the
compact overlay window is also required to be customized
according to a parameter that is received from the same set of
executable code that defines the applications displayed within
their respective windows.
Silver describes a singular GUI presented at a user system.
The content (including any sub-windows within the GUI) are
generated at a remote service and are merely streamed to the user
system. As such, the configuration/customization of any of the
Silver sub-windows clearly cannot be occurring based on
receiving a customization parameter from an application
installed at the user system, as claimed.
The Office also cites to EES. Notably, within the rejection
the Office does not cite with specificity to any specific disclosure
for the NPL but rather merely indicates “See EES, Table of
Contents, for listing of sections that describe customization,
settings, and use of this email application software.”
Appeal Br. 21–22.
A.2.b. Notice Argument
Also, Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103 because:
The rejections are overly broad for providing appropriate
notice to the elements of the cited art being applied to the
elements of the claims. For example, with respect to claim 1, at
page 7 and 8 of the Final Office Action, the Office groups at least
five distinct elements of the claims together and rejects them
together by reference to “Figs. 13A-13F and paras. 41-144 and
152-162, essentially the entire disclosure of Silver describes
this.” Certainly, the citation of over 100 paragraphs, and then
the citation of the entire document is not what was intended by
the Supreme Court’s guidance to determine the scope and
content of the prior art and ascertain the differences between the
claimed invention and the prior art. The citation to the table of
contents of a 63-page document (see Final Office Action at 9) is
deficient for the same reasons.
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Appeal Br. 22 (Emphasis added).
A.3. Examiner’s Response
A.3.a. Customization Parameters Response
As to Appellant’s “customization parameters” argument, the
Examiner responds:
Appellant’s arguments at Section II(B and D) require the
same interpretation by the Board. That the system of Appellant’s
independent claims cannot possibly be interpreted to be a system
comprising one or more processors distributed over a network
environment, with a combination of devices. Without this
improperly narrow interpretation of Appellant’s claims
(basically excluding any computing “system” as one of ordinary
skill in the art would have understood), Silver in view of the
secondary reference teaches and renders obvious Appellant’s
independent claims.
However, such an interpretation by the Board, that
Appellant’s claimed “computing system” cannot possibly
include a system comprising one or more processors distributed
over a network environment, with a combination of devices (as
per Silver), would be contrary to Appellant’s explicit definition
of “computing system” as set forth in Appellant’s application as
filed. That is to say, please see Appellant’s specification as filed,
paragraph [0021].
Ans. 7–8.
A.3.b. Notice Response
As to Appellant’s “notice” argument, the Examiner responds:
[T]he examiner rejects Appellant’s arguments at Section II(C) as
alleging that the Final Rejection allegedly did not provide proper
notice of the Rejection. To be sure, this Silver reference was
used in mult[i]ple prior office actions, and at no point during
prosecution did Appellant raise any questions that the Silver
reference and its application to the claims did not provide proper
notice of the Rejection.
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Ans. 7 (emphasis added).
A.4. Case Law
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id.
The Examiner has the initial burden to set forth the basis
for any rejection so as to put the patent applicant on notice of
the reasons why the applicant is not entitled to a patent on the
claim scope that he seeks — the so-called “prima facie case.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof
is on the USPTO “to produce the factual basis for its rejection of
an application under sections 102 and 103”). (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)). As the Federal
Circuit has observed, “[t]he term ‘prima facie case’ refers only
to the initial examination step.” Oetiker, 977 F.2d at 1445; see
also Oetiker, 977 F.2d at 1449 (“The process of patent
examination is an interactive one.”) (Plager, J., concurring). The
“prima facie case” serves as a procedural mechanism that shifts
the burden of going forward to the applicant, who must produce
evidence and/or argument rebutting the case of unpatentability.
See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(emphasis added).
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A.5. Panel’s Conclusions
As to Appellant’s “customization parameters” argument, we agree.
We conclude the Examiner’s articulated reasoning fails to meet the required
standard because the Examiner’s determination that Silver discloses
“customization parameters” (Final Act. 7–8) is not properly supported. Our
review of Silver and EES does not find “receiv[ing], from the second set of
executable code corresponding to the second application operating at the
computing system, one or more customization parameters that define how
the second application window is to be configured as a compact overlay
window” (Step E of claim 1 (emphasis added)). Also, we find Examiner’s
response (above at section A.3.a.) to Appellant’s “customization parameters”
argument (above at section A.2.a.) to be unrelated to that argument. At best
the response is a non-sequitur and does not respond to Appellant’s argument.
As to Appellant’s “notice” argument, we agree. The Examiner’s
analysis is heavily based on citations to large blocks of paragraphs without
sufficient further explanation. Although parts of the Examiner’s rejection
reasonably cite to some small blocks of paragraphs (e.g., 1–4 paragraphs) in
the prior art references, in critical parts of the rejection, the Examiner merely
recites the particular language of claim 1 and cites to lengthy blocks of 10+
and 100+ paragraphs.
Figs. 12A-13F, there can be a second application window
displaying a second application (paras. 41-56, such as an email
application as a second application, iTunes being the first) that is
installed on the system (see e.g. paras. 41-55 and 152-153).
Final Act. 7.
[S]ee Figs. 13A-13F and paras. 41-144 and 152-162, essentially
the entire disclosure of Silver describes this.
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Final Act. 8.
See EES, Table of Contents, for listing of sections that describe
customization, settings, and use of this email application
software.
Final Act. 9. In many cases, further articulation by the Examiner may not be
required as the cited paragraphs clearly speak for themselves. However, we
do not find that to be the case in the lengthy block citations of the rejection
before us.
Without more, the Examiner’s reasoning fails to constitute sufficient
articulated reasoning. Thus, (1) the Examiner’s findings of fact as to the
“customization parameters” is based on error; and (2) the Examiner’s
repeated reliance on citations to lengthy blocks of 10+ and 100+ paragraphs
without sufficient further explanation does not provide the required notice to
Applicant.
We conclude, consistent with Appellant’s arguments, that there is
insufficient articulated reasoning to support the Examiner’s finding that
Silver discloses “customization parameters” as required by claim 1. Also,
we conclude, consistent with Appellant’s arguments, that the Examiner’s
rejection does not provide the required notice. Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner’s final
conclusion that claim 1 would have been obvious to one of ordinary skill in
the art.
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CONCLUSION
Appellant has demonstrated the Examiner erred in rejecting claims 1–
9 and 11–21 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 1–9 and 11–21 as being
unpatentable under 35 U.S.C. § 103 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–9,
11–16, 18–21
103 Silver, EES 1–5, 7–9,
11–16, 18–21
6 103 Silver, EES,
Delpuch
6
17 103 Silver, EES, Hall 17
Overall
Outcome
1–9, 11–21

REVERSED