Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Mar 1, 2021

2019006345 (P.T.A.B. Mar. 1, 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.
15/205,404 07/08/2016 Raman Narayanan 322875-US-CNT 6286
69316 7590 03/01/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
03/01/2021 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):
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 RAMAN NARAYANAN, MING LIU, and PARESH S SUTHAR
Appeal 2019-006345
Application 15/205,404
Technology Center 2100
Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21–40, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 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. 5.
Appeal 2019-006345
Application 15/205,404

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TECHNOLOGY
The application relates to copying and pasting operations. In
particular, “data copied to a clipboard and formatted using a variety of
formats may be provided or accessed by a destination application as part of a
paste operation even when the destination application may not natively
provide the ability to access all of the data formats that might exist on a
clipboard.” Spec. Abstract.
ILLUSTRATIVE CLAIM
Independent claim 21 and dependent claim 39 are illustrative and
reproduced below with the limitations at issue emphasized:
21. A method for enabling information exchange between a first
application and a second application using a clipboard, the
method comprising:
in response to a copy operation initiated by a user while
using the first application, generating structured clipboard data
comprising a content type attribute representing a type of at least
one data item and a uniform resource attribute containing a
reference to a location of the at least one data item and storing
the structured clipboard data in the clipboard; and
in response to a paste operation initiated by the user while
using the second application: automatically processing the
structured clipboard data in the clipboard to determine whether
the second application is capable of handling text only or whether
the second application is capable of handling richer data, and
if the second application is capable of handling text
only, invoking a function to provide the structured
clipboard data in the clipboard as text only and executing
the paste operation by pasting the text, or
if the second application is capable of handling
richer data, automatically processing the structured
clipboard data in the clipboard, including: processing the
type of the at least one data item based on the content type
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attribute representing the type of the at least one data item,
retrieving the at least one data item based on the uniform
resource attribute containing the reference to the location
and executing the paste operation by pasting the at least
one data item retrieved using the uniform resource
attribute.
39. The method of claim 36 further comprising generating an
authentication attribute representing a type of authentication
technique that may be used to access the data items in the
plurality of data.
REFERENCES
The Examiner relies on the following references as prior art:
Name Reference Date
Bates US 6,944,821 B1 Sept. 13, 2005
Chen US 2005/0091603 A1 Apr. 28, 2005
Cheng US 2009/0157741 A1 June 18, 2009
Holtzman US 2008/0162947 A1 July 3, 2008
REJECTIONS
The Examiner makes the following rejections under 35 U.S.C. § 103:
Claims References Final Act.
21–27 Chen, Cheng 3
28–38 Chen, Cheng, Bates 7
39, 40 Chen, Cheng,2 Bates, Holtzman 16–18
ISSUES
1. Did the Examiner err in finding the combination of Chen and
Cheng teaches or suggests “retrieving the at least one data item based on the
uniform resource attribute containing the reference to the location and

2 Although Cheng is not listed in the introductory paragraph (Final Act. 16),
Cheng is addressed in the body of the rejection (id. at 17–18) and required
for the rejection of claim 36, from which claims 39 and 40 depend. See also
Appeal Br. 14 (listing Cheng for this rejection).
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executing the paste operation by pasting the at least one data item retrieved
using the uniform resource attribute,” as recited in claim 21?
2. Did the Examiner err in finding reason to combine with Cheng
for claims 21–38 and with Bates for claims 28–38?
3. Did the Examiner err in finding a reasonable expectation for
success in combining with Cheng for claims 21–38 and with Bates for
claims 28–38?
4. Did the Examiner err in finding Holtzman teaches or suggests
“generating an authentication attribute representing a type of authentication
technique that may be used to access the data items in the plurality of data,”
as recited in claim 39?
ANALYSIS
Claims 21–27
Independent claim 21 recites “retrieving the at least one data item
based on the uniform resource attribute containing the reference to the
location and executing the paste operation by pasting the at least one data
item retrieved using the uniform resource attribute.”
Appellant argues that “the Examiner rewrites claim 21 as requiring
two distinct and unconnected operations” of “executing” and “retrieving.”
Appeal Br. 15. Appellant further argues that “Cheng fails to teach or
suggest ‘retrieving the at least one data item based on the uniform resource
attribute containing the reference to the location and executing the paste
operation by pasting the at least one data item retrieved using the uniform
resource attribute.’” Id. at 16.
However, although Appellant quotes and summarizes Cheng,
Appellant fails to explain why Cheng is different than the claim language.
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See Appeal Br. 15–22. For example, Appellant notes that “Cheng describes
a solution as shown in FIG. 2” in which “in response to a copy request, data
object 214 is backed up before format-filtering is performed” and “in
response to a paste request, data object 214 is format-filtered and then both
the backed up data object 214 (the original version of data object 214) and
the filtered data object 214' are simultaneously written to the second file
222.” Id. at 18 (citing Cheng ¶¶ 25–26, Fig. 2). Further, Appellant notes
that “with reference to FIG. 3 . . . , Cheng describes that ‘to implement the
copy/paste mechanism . . . as shown in FIG. 2,’ a map relationship between
the data objects and the original data objects needs to [b]e maintained” and
“an ID field” is used to track and lookup desired objects. Id. at 18–19 (citing
Cheng ¶¶ 30–32, Fig. 3).
Absent further explanation from Appellant, retrieving data object 214
and filtered data object 214' based on an ID field (or other identifier) and
pasting those two retrieved data objects to the second application 222 in
second application 220 teaches or suggests retrieving at least one data item
based on a uniform resource attribute containing a reference to a location
and executing a paste operation by pasting the at least one data item
retrieved using the uniform resource attribute. See also Cheng Fig. 5;
Ans. 4–5. Appellant’s mere assertion that the prior art does not teach a
particular limitation with no meaningful explanation is unpersuasive. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). And we need not consider
arguments or limitations not raised by Appellant. E.g., In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”); Ex parte Frye, 94
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USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue . . . the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection.”).
Appellant also argues that the Examiner’s reason to combine with
Cheng is “conclusory” and “does not provide reasoned analysis and
evidentiary support.” Appeal Br. 23–25. Appellant further argues that
“[t]he Examiner provides no evidence that a skilled artisan would have a
reasonable expectation of success at arriving at the claimed subject matter”
and “does not explain how the modified method of Chen was supposed to
work in light of the teachings of Cheng such that the copy and paste
operations will become more efficient.” Id. at 26.
The Examiner finds that “it would have been obvious . . . to modify
the method disclosed by Chen to include retrieving data object from a
referenced location for the purpose of efficient copy and paste of objects
within different programs, as taught by Cheng.” Final Act. 5. The Examiner
further finds that it would have been “rational,” “beneficial,” and
“successful” to modify Chen to include Cheng’s teaching “because it allows
the user to copy a data object and not just content itself” (i.e., the entire
original data object rather than just a subset of filtered content). Ans. 5–6.
We are not persuaded of Examiner error. The Examiner’s proposed
reason for the combination (i.e., copying the entire object rather than just a
subset of content) is the primary purpose of Cheng. E.g., Cheng ¶ 8 (“To
overcome the deficiencies in the prior art, the present invention provides an
improved data copy/paste method and an apparatus thereof, which can
reserve the original content of a transferred data object in the process of
transferring data between files through the copy/paste operation, thereby
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keeping data consistency and integrity.”), Abstract (“The present invention
provides a solution of transferring a data object between files through
copy/paste, in which not only the filtered data object[,] which is adapted to
the format and/or function of a destination file[,] is explicitly written to the
destination file, but also the original data object information is implicitly
written to the destination file, and the map relationship between them is
established, so that the whole original information of the transferred data
object is reserved during the transfer between files.”). Both Chen and Cheng
are directed to copy-and-paste operations and even assigned to the same
assignee. Thus, the Examiner is using Cheng to improve Chen’s copy-and-
paste operation and accomplish the exact goal set forth in Cheng, and
Appellant gives insufficient substantive reason why a person of ordinary
skill would not have had reason to combine these references or would not
have expected the combination to succeed.
Accordingly, we sustain the Examiner’s rejection of claim 21, and its
dependent claims 22–27, which Appellant argues are patentable for similar
reasons. See Appeal Br. 27; 37 C.F.R. § 41.37(c)(1)(iv).
Claims 28–38
For independent claims 28 and 36, Appellant repeats the same
arguments regarding Cheng discussed above for claim 21 and makes similar
arguments against Bates. Appeal Br. 27–38. We are not persuaded of error
for the same or similar reasons to those discussed above.
To the extent Appellant argues Bates fails to cure the deficiencies of
Chen and Cheng, we are not persuaded that the combination of Chen and
Cheng is deficient for the reasons above. Appeal Br. 27–30.
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To the extent Appellant argues that the Examiner’s reason to combine
with Bates is conclusory or that there was not a reasonable expectation of
success, the Examiner proposes the combination with Bates in order to
extract “additional metadata from the source” of a copy operation so that a
subsequent paste operation can also include “a citation.” Ans. 10–11.
Similar to the combination with Cheng discussed above, Bates is expressly
directed to copy-and-paste operations, the Examiner’s reason for the
combination (i.e., extracting additional data during a copy in order to
provide a citation during a paste) matches the primary purpose of Bates, and
Bates even has the same assignee as Chen and Cheng. E.g., Bates Title
(“COPY/PASTE MECHANISM AND PASTE BUFFER THAT
INCLUDES SOURCE INFORMATION FOR COPIED DATA”), 2:61–67
(“[A]n annotated paste buffer copies not only the information to be copied,
but information relating to the source of the copied information as well.
This additional information in the annotated paste buffer can then be used
when the information is pasted into a document to create an automatic
citation to the source of the information.”).
Accordingly, we sustain the Examiner’s rejection of independent
claims 28 and 36, and their dependent claims 27–35, 37, and 38, which
Appellant argues are patentable for similar reasons. See Appeal Br. 35–38;
37 C.F.R. § 41.37(c)(1)(iv).
Claims 39 and 40
Dependent claim 39 recites “generating an authentication attribute
representing a type of authentication technique that may be used to access
the data items in the plurality of data.”
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Appellant argues that “Holtzman describes authentication and key
exchange between the cards such that the target card can be authenticated,”
but does not disclose the claimed “generating” step. Appeal Br. 40–41.
The Examiner finds “Holtzman teaches an authentication attribute so
that . . . no unauthorized data is copied or that data to be copied is cop[i]ed
securely.” Final Act. 17 (citing Holtzman claim 1).
Although we agree with the Examiner that Holtzman may teach an
authentication attribute, we agree with Appellant that the Examiner has not
shown how Holtzman teaches or suggests such an authentication attribute
represents a type of authentication technique.
Accordingly, absent further explanation from the Examiner, we do not
sustain the Examiner’s rejection of claim 39 and its dependent claim 40.
OUTCOME
The following table summarizes the outcome of each rejection:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
21–27 103(a) Chen, Cheng 21–27
28–38 103(a) Chen, Cheng, Bates 28–38
39, 40 103(a) Chen, Cheng, Bates, Holtzman 39, 40
Overall
Outcome
21–38 39, 40
TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
AFFIRMED-IN-PART