Ex Parte Aslam et al

Patent Trial and Appeal Board

Nov 13, 2017

13161518 (P.T.A.B. Nov. 13, 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.
13/161,518 06/16/2011 Muhammad Bilal Aslam 332843.01 5603
69316 7590 11/15/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
GUILL, RUSSELL L
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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 MUHAMMAD BILAL ASLAM, CRYSTAL L. HOYER,
VISHAL R. JOSHI, TIMOTHY MICHAEL McBRIDE,
and
WILLIAM E. HIEBERT
Appeal 2016-006776
Application 13/161,518
Technology Center 2100
Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
JEREMY J. CURCURI, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—10, 12—18, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is Microsoft Technology Licensing, LLC. (App.
Br. 2).
Appeal 2016-006776
Application 13/161,518
STATEMENT OF THE CASE
Appellants’ invention is directed to “to mobile emulator integration”
(Spec. 13). Particularly,
an appropriate emulator is installed, if needed, and executed to
emulate the mobile device, a browser is launched within the emulator,
and the browser is instructed to load a Web page. After a
development session ends, the emulator may be uninstalled. In
another approach a browser emulator is provided with an identifier of
the mobile device. The browser emulator finds characteristics of the
mobile device and emulates a browser appropriate for the mobile
device (id.).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A method implemented at least in part by a computer, the method
comprising:
receiving, at a component of an integrated development environment,
an identifier of a mobile device;
determining whether an emulator for emulating the mobile device is
already installed on the integrated development environment;
if the emulator is not already installed, installing the emulator on the
integrated development environment;
executing the emulator;
instructing the emulator to launch a browser to use for the mobile
device, the browser used to browse Web sites, and to load within the
browser a Web page developed via the integrated development environment;
and
using the integrated development environment, debugging the Web
page by communicating with the browser launched by the emulator to
perform debugging actions including running code to a particular point and
stepping through code.
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Appeal 2016-006776
Application 13/161,518
REFERENCES and REJECTIONS
The Examiner rejected claims 18 and 20 under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
The Examiner rejected claims 1, 2, 5—10, and 12—17 under 35 U.S.C.
§ 103(a) based upon the teachings of Billman (US 8,072,926 Bl; Dec. 6,
2011), MSDN, “How to: Work with Emulators and BrowsersMicrosoft
Press (2011) (hereinafter “MSDN”), and Andy Wigley and Peter Roxburgh,
“Building .NET Applications for Mobile Devices,” Microsoft Press (2002)
(hereinafter “Wigley”).
The Examiner rejected claims 3 and 4, under 35 U.S.C. § 103(a) based
upon the teachings of Billman, MSDN, Wigley, and Allen, “Basic
Debugging Features In Visual Studio 2005V available at
http://odetocode.com/articles/425.aspx (hereinafter “Allen”).
The Examiner rejected claim 18 under 35 U.S.C. § 103(a) based upon
the teachings of Billman, MSDN, Allen, and Esposito, “Programming
Microsoft ASP.NET,” Microsoft Press (2003) (hereinafter “Esposito”).
The Examiner rejected claim 20 under 35 U.S.C. § 103(a) based upon
the teachings of Billman, MSDN, Allen, Esposito, and DeLuca (US
8,326,370 B2; Dec. 4, 2012).
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner concludes claims 18 and 20 as directed to non-statutory
subject matter as the recited “computer storage memory” can include
“signals,” which are non-statutory (Final Act. 2—3).
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Appeal 2016-006776
Application 13/161,518
Appellants’ arguments that ‘“signals’ are not included within the
definition of ‘computer storage media’” and “interpreting ‘computer storage
memory’ to include ‘carrier wave or transmission media’ would not be
reasonable” are unpersuasive (App. Br. 8, 9).
Appellants’ claims recite a “computer storage memory,” which is not
claimed as non-transitory, and Appellants’ disclosure does not expressly and
unambiguously limit that medium to solely non-transitory forms via a
definition or similar limiting language. There is no clear and unambiguous
disclaimer in the originally filed Specification stating the computer storage
media is not encoded on a carrier wave, which is a transitory signal and thus
non-statutory subject matter. Appellants’ Specification merely mentions
different examples of a computer storage media that include “any other
medium which can be used to store the desired information and which can
be accessed by the computer” (Spec. 118; see In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007).). We refer Appellants to the February 23, 2010,
“Subject Matter Eligibility of Computer Readable Media,” 1351 Off. Gaz.
Pat. Office 212 (Feb. 23, 2010), policy statement by then USPTO Director
David J. Kappos, as published in the Official Gazette of the United States
Patent and Trademark Office (USPTO).
Therefore, in light of the above, the claimed computer storage media
encompasses transitory forms which is ineligible under § 101.2 We,
therefore, sustain the Examiner’s rejection of claims 18 and 20 under
2 See U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility
Under 35 USC § 101: August 2012 Update (pp. 11—14), available at
http ://www.uspto.go v/patents/law/ exam/10 l_training_aug2012 .pdf (noting
that while the recitation “non-transitory” is a viable option for overcoming
the presumption that those media encompass signals or carrier waves,
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Appeal 2016-006776
Application 13/161,518
35 U.S.C. § 101.
Rejection under 35 U.S.C. §103
Appellants contend the Examiner’s proposed modification of Billman
with Wigley and MSDN is in error because the combination would change
the principle of operation of Billman (App. Br. 12). Appellants assert
Billman’s disclosure that the activity is not “co-browsing” teaches away
from launching a browser because Billman does not disclose launching a
browser; rather it “discloses an emulator mimicking the user interface of a
website provided to a mobile device” (App. Br. 13—14). We do not agree.
We first note Appellants are arguing the references separately and not
as a combination considering the references for what they teach and suggest.
Appellants contend modifying the mimicked user interface of Billman to
launch a browser for a mobile device would change the operation of Billman
(App. Br. 10-11). Appellants’ arguments are unpersuasive because it is well
settled that “a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations
omitted). Nor is the test for obviousness whether a secondary reference’s
features can be bodily incorporated into the structure of the primary
reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants’
Specification recites “An emulator may be used to mimic hardware and/or
software of a device” (Spec. 140). Billman’s column 4, lines 24—28
discloses this feature (see Final Act. 15; Ans. 11). Further, the Examiner
does not rely on Billman for explicitly reciting launching a browser; rather
merely indicating that such media are “physical” or tangible” will not
overcome such presumption).
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Application 13/161,518
the Examiner relies on MSDN and Wigley for teaching or suggesting this
contested claim limitation (Final Act. 15). Appellants merely provide
attorney argument stating Billman does not disclose launching a browser,
but have not addressed the Examiner’s findings with respect to MSDN and
Wigley, relied on for teaching launching a browser (App, Br. 13—15). We
also agree with the Examiner’s findings that Billman fairly suggests the
emulator loads a Web page into a browser, or at a minimum, “behaves in a
fashion that appears identical to loading the web page into a browser” (Ans.
12). We also agree, although Billman discloses ‘“not co-browsing’” both
parties can still see the same Web page along with any data entries made by
a user, thus, Billman’s principle of operation is not changed, as Appellants
assert (id.).
We also do not agree the Examiner did not provide a prima facie case
of obviousness by providing “mere conclusory statements” (App. Br. 14).
The Examiner has persuasively argued, with a rationale supported by
evidence drawn from the record, that claim 1 is obvious over the
combination of Billman, MSDN, and Wigley, which arguments Appellants
do not address (Final Act. 15—16). Additionally, Appellants’ teaching away
argument merely cites column 4, lines 34—38, and states Billman teaches
away from launching a browser. “‘A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. ’” In
re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citation omitted). Appellants
have failed to present any argument or evidence that Billman, or any of the
cited references, criticizes or even discourages the proposed combination.
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Thus, for the above reasons, we sustain the Examiner’s rejection of
independent claim 1 and dependent claims 2—8 argued therewith (App. Br.
15). We also sustain the Examiner’s rejection of independent claim 9,
argued for substantially the same reasons, and dependent claims 10 and 12—
17 argued therewith (App. Br. 15—17).
Appellants contend claim 18 is not obvious over the combination of
Billman, MSDN, Allen, and Esposito (App. Br. 18). Appellants, for the
most part, provide the same arguments regarding Billman asserted against
claim 1, further stating Billman does not disclose emulating a browser using
a rendering engine and a screen size to load a Web page (App. Br. 20). We
do not agree.
The Examiner relies on column 4, lines 28—35 of Billman to teach the
contested claim limitation “emulating the browser via the browser emulator
by using the rendering engine and the screen size to load a Web page
indicated by a development platform” (Final Act. 30). Appellants address
Billman’s column 4, lines 24—28, lines 34—38, and lines 9-12, but do not
address the Examiner’s finding that Billman’s column 4, lines 28—35 teaches
the disputed limitation. Thus, Appellants have not responded to the
Examiner’s reasonable findings regarding this limitation not found in claim
1. Appellants Reply Brief does not provide any additional argument or
evidence to support their contention. Thus, we sustain the Examiner’s
rejection of independent claim 18 and dependent claim 20, argued therewith
(App. Br. 21).
DECISION
The Examiner’s decision rejecting claims 18 and 20 under 35 U.S.C.
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§ 101 is affirmed.
The Examiner’s decision rejecting claims 1—10, 12—18, and 20 under
35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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