Ex Parte Alles et al

Patent Trial and Appeal Board

Jul 26, 2017

10187221 (P.T.A.B. Jul. 26, 2017)

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.
10/187,221 06/28/2002 David Alles 167497-US-NP 6711
69316 7590 07/28/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
BLAIR, DOUGLAS B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALLES and GEORGE M. MOORE1
Appeal 2017-000296
Application 10/187,221
Technology Center 2400
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—5, 41, 43, 49—52, and 65—68, which constitute all
the claims pending in this application. Claims 6-40, 42, 44-48, and 53—64
are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Microsoft Technology Licensing, LLC as the real party
in interest. App. Br. 3.
Appeal 2017-000296
Application 10/187,221
STATEMENT OF THE CASE
Appellants’ generally describe the disclosed invention as follows:
A system, method and related data structures for
discovering and describing computing resources available at
various computing devices, and for exposing those resources as
services that are addressable by software applications. The data
describing the resources is arranged according to an identity-
based schema. The computing resources may include, for
example, storage capacity, bandwidth, processing power, input
methods and mechanism, and rendering methods. The method
and system are identity-based, whereby a user (with an identity
has access to the distributed resources commensurate with that
identity.
Abstract.2
Claim 1 is illustrative and reads as follows (with the disputed
limitations emphasized)'.
1. A method comprising:
discovering, at a first computing device, a resource located at a
second computing device;
communicating a request to the second computing device to
employ the resource located at the second computing device;
communicating identity information to the second computing
device to enable the second computing device to determine whether
the first computing device has access to the resource based on the
identity information;
2 Our Decision refers to the Final Office Action mailed May 22, 2015
(“Final Act.”), Appellants’ Appeal Brief filed Feb. 15, 2016 (“App. Br.”),
the Examiner’s Answer mailed June 21, 2016 (“Ans.”), and the original
Specification filed June 28, 2002 (“Spec.”).
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Application 10/187,221
receiving data from the second computing device when the
second computing device approves access to the resource by the first
computing device, the data including resource information associated
with the resource at the second computing device formatted according
to a resource-based schema understood by the first computing device,
the resource-based schema being organized by resource and including
information about the second computing device that corresponds to
respective resources;
interpreting the data to access the resource located at the second
computing device; and
executing a process, at the first device, using the resource of the
second computing device.
Rejections on Appeal
Claims 1—5, 41, 43, 49—52, and 65—68 stand rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
Claims 1—5, 41, 43, 49—52, and 65—68 stand rejected under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicants regard as the
invention.
ANALYSIS
Rejection under § 112, first paragraph
The Examiner finds that Appellants’ Specification does not disclose
“a scenario where data formatted according to a resource based schema
would be returned to a first computing device requesting a particular
resource at a second computing device,” as recited in claims 1 and 41. Final
Act. 6—7. The Examiner finds Appellants’ Specification “states that a
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Application 10/187,221
‘schema-based response’ is returned at step 608 of Figure 6,” but “there is
no evidence that the appellant’s disclosure contemplated that this ‘schema-
based’ response corresponds to a ‘resource-based schema’ as disclosed by
the appellants] because the ‘resource-based schema’ is returned in a
completely different context than the context of Figure 6.” Ans. 14—15.
We are persuaded by Appellants’ arguments that the Examiner erred.
See Br. 11—14. In particular, Appellants’ argue, and we agree, the
Specification provides a non-limiting example of a resource-based schema
used to exchange resource information regarding a user’s devices. Id. at 13
(citing tables set forth on pages 23 and 24 of the Specification). In that
regard, the Specification states “[t]he following tables set forth some
example schemas that may be used (e.g., with XML-formatted data) to
exchange resource (storage and processing power) information regarding
a user’s devices.” See Spec. 23,11. 6—9. Appellants also argue, and we
agree, the discussion of Figure 6 in the Specification supports the disputed
limitation because it states “[s]tep 608 represents returning a response to the
requesting entity, preferably the schema-based response that provides the
resource capability data to the requesting entity.” See Spec. 29,11. 1^4.
Although the tables set forth on pages 23 and 24 are described in the context
of what the Examiner refers to as the “discovery” embodiment, we find the
description of the schema-based response of step 608 of Figure 6 as “‘the’
schema-based response that provides the resource capability data to the
requesting entity” reasonably conveys to those skill in the art that the
resource-based schema set forth in the tables may also be used in what the
Examiner refers to as the “peer-to-peer” embodiment of claims 1 and 41.
Accordingly, we find the Specification reasonably conveys to those skilled
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in the art that the inventors had possession of the subject matter of claims 1
and 41 as of the filing date. SeeAriad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc).
Thus, we do not sustain the Examiner’s rejection of claims 1 and 41,
and dependent claims 2—5, 43, 49—52, and 65—68, which are not separately
argued, under § 112, first paragraph.
Rejection under § 112, second paragraph3
The Examiner finds there is insufficient antecedent basis for the
limitation “the resource” in the second-to-last and last limitations of claim 1.
Final Act. 8. In particular, the Examiner finds it is unclear whether this
limitation refers to “the resource” discovered in the first limitation or “the
respective resources” referred to in the claim. Id. The Examiner also finds
there is insufficient antecedent basis for the limitation “the resource” in the
second-to-last and last limitations of claim 41. Final Act. 9. In particular,
the Examiner finds it is unclear whether this limitation refers to “the
resource” requested in the first limitation or “the respective resources”
referred to in the claim. Id.
We are persuaded by Appellants’ arguments that the Examiner erred.
Appellants argue, and we agree, claim 1 recites “discovering . . . a resource
3 The Examiner rejected claim 1 under § 112, second paragraph, for
insufficient antecedent basis for the limitation “the second computing device
that corresponds to respective resources.” Final Act. 8. The Examiner
rejected claim 41 under § 112, second paragraph, because “it is unclear what
‘respective’ refers to in the phrase ‘information about the second computing
device in relation to respective resources.’” Id. at 9. In view of Appellants’
arguments in the Appeal Brief, the Examiner has withdrawn these rejections.
Ans. 20—21.
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located at a second computing device” that provides antecedent basis for
“interpreting the data to access the resource located at the second
computing device” and “executing a process, at the first device, using the
resource of the second computing device,” (emphasis added) as recited in
claim 1.” Br. 16. Appellants also argue, and we agree, the limitation “a
resource located at the second computing device” in the first element of
claim 41 provides antecedent basis for “the resource” in the second-to-last
and last limitations of claim 41. Id. at 17. Accordingly, we do not sustain
the Examiner’s rejection of claims 1 and 41, and dependent claims 2—5, 43,
49—52, and 65—68, which are not separately argued, under § 112, second
paragraph.
DECISION
We reverse the Examiner’s rejection of claims 1—5, 41, 43, 49—52, and
65—68 under 35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s rejection of claims 1—5, 41, 43, 49—52, and
65—68 under 35 U.S.C. § 112, second paragraph.
REVERSED
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