VMware, Inc.

Patent Trials and Appeals Board

Mar 2, 2022

2021000040 (P.T.A.B. Mar. 2, 2022)

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. 14/629,353 02/23/2015 Salim AbiEzzi C074 6345 151795 7590 03/02/2022 FISH & RICHARDSON P.C. (VMware) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER BLAUFELD, JUSTIN R ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): PATDOCTC@fr.com ipadmin@vmware.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte SALIM ABIEZZI and OSTEN KIT COLBERT _______________ Appeal 2021-000040 Application 14/629,353 Technology Center 2100 _______________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 3-5, 8-12, 14, 15, 17-21, and 24-29. Appellant has canceled claims 2, 6, 7, 13, 16, 22, and 23. See Amdt. 2-8 (filed Oct. 31, 2019). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b) We affirm. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies VMware, Inc. as the real party in interest. Appeal Br. 1. Appeal 2021-000040 Application 14/629,353 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to “remoting application user interfaces from user devices to other displays.” Spec. ¶ 1. In a disclosed embodiment, a remote application system provides user interfaces generated by an application to a display device via a user device (separate from both the remote application system and the display device) that includes a user interface proxy. See, e.g., Spec. ¶¶ 39-43, Fig. 2. In operation, a display device may transmit a user request to a user device. Spec. ¶ 61. The user request may include information that characterizes the display device, such as device type (e.g., television or vehicle-mounted display), input style (e.g., touch input, mouse input, or keyboard input), size of the display, display resolution, and display device mode (e.g., laptop or tablet mode). Spec. ¶¶ 51, 61. According to the Specification, a display device class is associated with one or more of the display device type criteria or characteristics. Spec. ¶ 52. “[T]he system determines a display device class for which the display device satisfies each of the criteria, e.g., the display device type criteria, the display size criteria, or the input style criteria, based on the identifying information for the display device.” Spec. ¶ 63. The remote application system then “causes the application to generate a user interface by executing the user interface code path corresponding to the appropriate display device class.” Spec. ¶ 64. Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. A method comprising: Appeal 2021-000040 Application 14/629,353 3 receiving, at a user device and from a display device over a first data communication network, a user request to access a first application, the display device being a different device in data communication with the user device; determining, by a user interface proxy of the user device, whether the first application is executed by the user device or by a remote application system different from the user device; in response to determining that the first application is executed by the remote application system, transmitting, by the user device and to the remote application system over a second data communication network, the user request that (i) includes data identifying one or more display properties and one or more input capabilities of the display device and (ii) causes, in response to receiving the request, the remote application system to: classify the display device into a display device class based on the one or more display properties and the one or more input capabilities of the display device; and cause the first application to generate a user interface for the display device by executing a user interface code path for the display device class into which the display device has been classified, wherein the first application includes a respective user interface code path for each of a plurality of display device classes, and wherein each user interface code path includes code that, when executed by the first application, causes the first application to generate a user interface that is specific to display devices corresponding to the display device class; receiving, by the user device and from the remote application system over the second data communication network, the generated user interface; and providing, by the user device and to the display device over the first data communication network, the user interface for presentation on a display of the display device in response to the user request. Appeal 2021-000040 Application 14/629,353 4 The Examiner’s Rejections2 1. Claims 1, 3-5, 8-10, 12, 14, 15, 17, 18, 20, 21, 24-27, and 29 stand rejected under 35 U.S.C. § 103 as being unpatentable over Momchilov et al. (US 2011/0138295 A1; June 9, 2011) (“Momchilov”); Hong et al. (US 2015/0062183 A1; Mar. 5, 2015) (“Hong”); and Dabrowski et al. (US 2014/0325374 A1; Oct. 30, 2014) (“Dabrowski”). Final Act. 8-31. 2. Claims 11 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Momchilov, Hong, Dabrowski, and Nakano (US 2014/0355189 A1; Dec. 4, 2014). Final Act. 31-33. 3. Claim 28 stands rejected under 35 U.S.C. § 103 as being unpatentable over Momchilov, Hong, Dabrowski, and Winston (US 2014/0316990 A1; Oct. 23, 2014). Final Act. 33-34. ANALYSIS3 Claims 1, 3-5, 8-11, 20, 21, 24-26, 28, and 29 We begin our analysis noting that claim construction is an important step in a patentability determination. A legal conclusion that a claim is obvious involves a two-step inquiry wherein first, the claims are properly construed, and second, the properly construed claims are compared to the 2 In the Final Rejection, the Examiner had rejected claims 1, 3-5, 8-12, 14, 15, 17-21, and 24-29 under both 35 U.S.C. § 112(a) and (b). See Final Act. 4-7. Subsequently, the Examiner withdrew these rejections. See Adv. Act. 2 (mailed November 25, 2019). 3 Throughout this Decision, we have considered the Appeal Brief, filed April 27, 2020 (“Appeal Br.”); the Reply Brief, filed October 1, 2020 (“Reply Br.”); the Examiner’s Answer, mailed August 6, 2020 (“Ans.”); and the Final Office Action, mailed August 30, 2019 (“Final Act.”), from which this Appeal is taken. Appeal 2021-000040 Application 14/629,353 5 prior art. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003); see also In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Conditional steps employed in a method claim need not be found in the prior art if, under the broadest reasonable construction, the method need not invoke the steps. Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *3-6 (PTAB April 28, 2016) (concluding the broadest reasonable interpretation of a claim encompassed situations in which conditional method steps “need not be reached”) (precedential). Independent claim 1 recites a method for presenting a user interface generated for a display device. More particularly, claim 1 recites, inter alia, “determining, by a user interface proxy of the user device, whether the first application is executed by the user device or by a remote application system different from the user device.” If the first application is being executed by the remote application system, then the user device sends to the remote application system a request including data regarding the characteristics of the display device on which a user interface is to be displayed. Further, if the first application is being executed by the remote application system, and in response to the request from the user device, the remote application system will classify the display device into a display device class and will also “cause the first application to generate a user interface for the display device by executing a user interface code path for the display device class into which the display device has been classified.” Claim 1. The generated user interface is transmitted by the remote application system to the user device, which then provides the generated user interface to the display device. Appeal 2021-000040 Application 14/629,353 6 Thus, as a matter of claim construction, we conclude that the limitations of claim 1 recited after the step of “determining, by a user interface proxy of the user device, whether the first application is executed by the user device or by a remote application system different from the user device” are conditional-that is they are conditioned on a determination that the first application is executed by a remote application system. More to the point, if the first application were executed by the user device, for example, the remaining steps would not be performed. Because the broadest reasonable interpretation of the claim does not require performing the conditional method steps recited after the step of determining whether the first application is executed by the user device or by a remote application system, the Examiner does not need to present evidence of obviousness for these steps. See Schulhauser, 2016 WL 6277792, at *4 (“The Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim.”); see also Ex parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4-5 (BPAI Jan. 27, 2011).4 4 See also Applera Corp.-Applied Biosystems Grp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court’s interpretation of a method claim as including a step that need not be practiced if the condition for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). Appeal 2021-000040 Application 14/629,353 7 Appellant’s arguments regarding the teachings of the prior art and the Examiner’s proffered motivation to combine the references (i.e., Hong and Dabrowski) are directed to the conditional steps of claim 1, discussed above. See Appeal Br. 5-9; Reply Br. 2-5. In particular, we disagree with Appellant (see Reply Br. 2) that the claims “recite a positive determination that the ‘first application is executed by the remote application.’” Rather, the claims determine “whether the first application is executed by the user device or by a remote application system different from the user device.” See claim 1. That is, the result of the determination may be that the first application is being executed by the user device. It is only if the determination is made that the first application is executed by a remote application system that the remaining steps are performed. Thus, because Appellant’s arguments are directed to conditional limitations, they are not persuasive of Examiner error. See Schulhauser, 2016 WL 6277792, at *4. To the extent that Appellant asserts the Examiner’s construction that the claims recite conditional limitations constitutes an undesignated new ground of rejection (see Reply Br. 2), that is a petitionable matter not properly before the Board. See 37 C.F.R. § 41.40(a) (“Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director”); see also Manual of Patent Examining Procedure (MPEP) § 706.01 (9th ed. Rev. 10.2019, June 2020) (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). Appeal 2021-000040 Application 14/629,353 8 For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 1. In addition, we sustain the Examiner’s rejections of claims 3-5, 8- 11, 21, 24-26, and 28, which depend directly or indirectly therefrom and were not argued separately. See Appeal Br. 9; see also 37 C.F.R. § 41.37(c)(1)(iv). Independent method claims 20 and 29 similarly recite condition limitations. Appellant relies on the arguments advanced with respect to claim 1 to rebut the Examiner’s rejection of independent claims 20 and 29. For similar reasons to those discussed with respect to claim 1, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claims 20 and 29. Claims 12, 14, 15, and 17-19 Independent claim 12 is a system claim. Distinct from the methods of independent claims 1, 20 and 29, the claimed system must be capable of performing all of the recited limitations. Appellant relies on the arguments advanced with respect to claim 1 to rebut the Examiner’s rejection of independent claim 12. See Appeal Br. 9. Appellant asserts that neither Hong nor Dabrowski teaches a first application generating a user interface by executing a user interface code path for the display device class into which the display device has been classified. Appeal Br. 5-8; Reply Br. 2-4. In particular, Appellant argues that rather than describing an application executing a user interface code path to generate a user interface specific to a display device class, Hong describes an application that loads a resource corresponding to a resolution Appeal 2021-000040 Application 14/629,353 9 parameter (i.e., Dots per Inch, DPI). Appeal Br. 5-6; Reply Br. 3. Moreover, Appellant argues that because Hong relates to changing the size of an object displayed on a single device, Hong does not contemplate “‘display device classes’ for multiple devices or devices that have different input capabilities.” Appeal Br. 6-7. In addition, Appellant argues Dabrowski describes that user interface content is generated by a user interface server selecting templates to populate with content rather than a first application generating a user interface by executing a user interface code path. Appeal Br. 8; Reply Br. 3-4. In support of the claimed user interface code path, Appellant identifies paragraphs 20, 40, 41, and 63 of the Specification. See Appeal Br. 3. Paragraph 20 provides a general summary of the claimed invention and describes the user interface code path “can generate a user interface that is specific to display devices of the corresponding display device class.” Spec. ¶ 20. Similarly, paragraphs 40 and 41 describe that when executed, the user interface code path “generates a user interface that is specific to a respective class of display devices and/or specific to a particular mode . . . of the display device.” Spec. ¶¶ 40-41. Paragraph 63 describes that user interface code path is associated with a display device class. Spec. ¶ 63. The Examiner provides a comprehensive response, identifying the elements of Hong that teach the claimed limitations. See Ans. 8-10. More specifically, Hong, as relied on by the Examiner (see Final Act. 11-13; Ans. 8-10) describes four types of display in relation to DPI (dots per inch): LDPI (low dots per inch); MDPI (medium dots per inch); HDPI (high dots per inch); and EHDPI (extra high dots per inch). Hong ¶ 65. Hong describes a resource storage unit may include folders corresponding to each Appeal 2021-000040 Application 14/629,353 10 of the DPI settings (i.e., LDPI, MDPI, HDPI, and EHDPI). Hong ¶ 78. Hong describes that the folders store the necessary files to create activity data (i.e., a user interface). Hong ¶ 78. Thus, when an application requests an adjustment to the screen magnification, Hong describes loading the desired resource corresponding to a chosen DPI and creating the activity data (i.e., user interface). Hong ¶ 78. We agree with the Examiner’s findings that Hong’s description of the four different types of displays teaches the claimed display device classes (e.g., a class having a low DPI count, a medium DPI count, high DPI count, and extra high DPI count). The corresponding folders on the resource storage unit teach the claimed user interface code paths corresponding to a display device class. Further, consistent with the level of Appellant’s disclosure of user interface code paths, we agree that the “necessary files” stored in the resource folders are loaded and executed to generate a user interface corresponding to the identified display device class. Thus, we find that Hong teaches or reasonably suggests an application generates a user interface by executing a user interface code path for the display device class into which the display device has been classified, as recited in claim 12. Regarding Dabrowski, although the Examiner’s findings are somewhat cumulative, the Examiner’s relies on Dabrowski for the limited teaching of providing information regarding the input capabilities of a display device. See Final Act. 14 (citing Dabrowski ¶ 66). Dabrowski discloses, inter alia, that devices may be classified based on information contained in a request for user interface content. Dabrowski ¶ 66. The request may include information regarding touch capabilities (i.e., Appeal 2021-000040 Application 14/629,353 11 input capabilities) of the display device. Dabrowski ¶ 66. Thus, the Examiner’s findings are supported by a preponderance of evidence. Regarding the Examiner’s proffered combination of Hong and Dabrowski, Appellant asserts the Examiner “has not provided a reason” to modify Hong’s request to change the magnification of an object to further include the input capabilities of the display device. Appeal Br. 9; Reply Br. 4-5. As an initial matter, we note that the Examiner has set forth a reason as to why one of ordinary skill in the art would have been motivated to combine Dabrowksi’s teaching of providing input capability information regarding the display device. See Final Act. 15. Further, we note that the proposed combination is “to combine Dabrowski with Momchilov and Hong.” Final Act. 15 (emphasis added). That is, the proposed combination is not limited only to Hong’s teaching of adjusting the magnification of an object on a display device, but also the system of Momchilov. Appellant’s arguments are unpersuasive of Examiner error because they are not responsive to the Examiner’s proposed combination, which includes Momchilov’s system of detecting user interaction with a taskbar group. See Final Act. 9 (citing Momchilov ¶ 81). For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 12. For similar reasons, we also sustain the Examiner’s rejections of claims 14, 15, and 17-19, which depend directly or indirectly therefrom and were not argued separately. See Appeal Br. 9; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-000040 Application 14/629,353 12 Claim 27 Claim 27 depends from dependent claim 26, which depends directly from claim 1. For purposes of this Appeal, we treat the additional limitations recited by claims 26 and 27 as not part of the conditional limitations of claim 1, discussed above. Claim 27 recites in relevant part “receiving, by the display device, data identifying the set of applications that are capable of generating different user interfaces for different display devices that have different display and input capabilities comprises the display device identifying the set of applications on the user device.” Appellant asserts that Momchilov, as relied on by the Examiner, fails to teach a display device identifying the set of applications that have the claimed capabilities on the user device. Appeal Br. 9-11; Reply Br. 5-6. More particularly, Appellant argues “claim 27 requires that the ‘display device’ identify, on the ‘user device,’ ‘a set of applications that include user interface codes paths and that are capable of generating different user interfaces for different display devices that have different display and input capabilities.’” Reply Br. 5. Appellant asserts that Figure 4A of Momchilov, as relied on by the Examiner, “does not teach or suggest a ‘display device’ making the claimed identification at a ‘user device.’” Reply Br. 5. To the extent Appellant is arguing claim 27 requires the identification be made on the user device (as part of the display device receiving data), we disagree with such a construction. Claim 26 recites that in response to establishing communication between the user device and the display device, the display device receives data identifying a set of applications that, inter alia, are capable of Appeal 2021-000040 Application 14/629,353 13 generating different user interfaces for different display devices. The set of applications includes at least one local application, executed by the user device, and one remote application, executed by a remote application system. Further, for each application, the display device presents a selectable user interface element to request access to the application. Claim 27 recites the narrowing limitation that the receiving, by the display device, data identifying the claimed set of applications comprises the display device identifying the set of application on the user device. That is, the display device receives data allowing it to identify the applications that are executing on the user device. As identified by the Examiner (see Final Act. 30-31; Ans. 12-13), we agree that Momchilov describes displaying a taskbar including applications that are being executed on a user device as well as those being executed remotely. See Momchilov ¶ 102, Fig. 4A. Thus, Momchilov at least reasonably suggests that the display device receives data allowing it to identify the applications that are executing on the user device. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of claim 27. CONCLUSION We affirm the Examiner’s decision rejecting claims 1, 3-5, 8-12, 14, 15, 17-21, and 24-29 under 35 U.S.C. § 103. Appeal 2021-000040 Application 14/629,353 14 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-5, 8- 10, 12, 14, 15, 17, 18, 20, 21, 24- 27, 29 103 Momchilov, Hong, Dabrowski 1, 3-5, 8- 10, 12, 14, 15, 17, 18, 20, 21, 24- 27, 29 11, 19 103 Momchilov, Hong, Dabrowski, Nakano 11, 19 28 103 Momchilov, Hong, Dabrowski, Winston 28 Overall Outcome 1, 3-5, 8- 12, 14, 15, 17-21, 24- 29 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