Ex Parte Borzello et al

Patent Trial and Appeal Board

Jan 4, 2018

13831886 (P.T.A.B. Jan. 4, 2018)

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.
13/831,886 03/15/2013 Eric M. Borzello 338011.01 8305
69316 7590 01/08/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
CHIUSANO, ANDREW TSUTOMU
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
01/08/2018 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 ERIC M. BORZELLO, RICHARD ANTHONY CARUANA,
ERIC JOEL HORVITZ, ASHISH KAPOOR, KATHLEEN R. KELLY, and
CHARLES MARCUS REID III
(Additional Applicant: Microsoft Corporation)
Appeal 2017-003797
Application 13/83 1,88b1
Technology Center 2100
Before MATTHEW R. CLEMENTS, NORMAN H. BEAMER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—18 and 20. Claim 19 is cancelled. We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Microsoft Technology Licensing, LLC as the Real
Party in Interest. (App. Br. 1.)
Appeal 2017-003797
Application 13/831,886
THE INVENTION
Appellants’ disclosed and claimed invention is directed to surfacing
(i.e., display) of predicted commands within a user interface. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject matter
on appeal:
1. A method for surfacing commands within a user interface
of a productivity application, comprising:
receiving user specific data for an active user of a
productivity application;
receiving community data;
generating a combined command-to-command transition
table using one or more command log views of the user specific
data and the community data;
selecting predicted commands from the combined
command-to-command transition table; and
displaying predicted commands.
REJECTIONS
The Examiner rejected claims 1, 2, 6—9, and 15—18 under 35 U.S.C.
§ 102(b) as being anticipated by Fitzmaurice (US 2010/0107141 Al, pub.
Apr. 29, 2010). (Final Act. 2—5.)
The Examiner rejected claims 3, 12, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Fitzmaurice and Perrow (US 7,284,009 B2,
issued Oct. 16, 2007). (Final Act. 6—8.)
The Examiner rejected claims 4 and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Fitzmaurice and Harte (US 2012/0047454 Al, pub.
Feb. 23, 2012). (Final Act. 8-9.)
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Application 13/831,886
The Examiner rejected claims 5 and 14 under 35 U.S.C. § 103(a) as
being unpatentable over Fitzmaurice and Matejka et al, Community
Commands: Command Recommendations for Software Applications,
UIST’09 (2009). (Final Act. 9-10.)
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Fitzmaurice and Shivaji-Rao et al. (US 2008/0228685 Al,
pub. Sep. 18,2008). (Final Act. 10.)
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Fitzmaurice and Boehler et al. (US 2011/0126154 Al,
pub. May 26, 2011). (Final Act. 10—11.)
The Examiner rejected claims 9—15 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. (Final Act. 11—12.)
ISSUES ON APPEAF
Appellants’ arguments in the Appeal Brief present the following
dispositive issues:2
Issue One: Whether the Examiner erred in finding Fitzmaurice
discloses the independent claim 1 limitations, “generating a combined
command-to-command transition table using one or more command log
views of the user specific data and the community data,” and “selecting
predicted commands from the combined command-to-command transition
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed May 27, 2016) (herein,
“App. Br.”); the Reply Brief (filed Dec. 19, 2016) (herein, “Reply Br.”); the
Final Office Action (mailed Oct. 22, 2015) (herein, “Final Act.”); and the
Examiner’s Answer (mailed Oct. 20, 2016) (herein, “Ans.”) for the
respective details.
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Appeal 2017-003797
Application 13/831,886
table,” and the commensurate limitations of independent claims 9 and 16.
(App. Br. 3-7.)
Issue Two: Whether the Examiner erred in rejecting claims 9—15 as
being directed to non-statutory subject matter. (App. Br. 8—9.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. We disagree with Appellants’
arguments directed to the anticipation and obviousness rejections, and we
adopt as our own (1) the pertinent findings and reasons set forth by the
Examiner in the Action from which this appeal is taken (Final Act. 2—11)
and (2) the corresponding findings and reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. (Ans. 3—
5.) We concur with the applicable conclusions reached by the Examiner,
and emphasize the following. However, as discussed below, we agree with
Appellants that the Examiner’s rejection pursuant to 35 U.S.C. § 101 is in
error.
Issue One
Appellants argue the Examiner errs in rejecting the independent
claims as anticipated by Fitzmaurice because that reference does not disclose
“generating a combined command-to-command transition table using [a
user’s command history and a community command history].” (App. Br. 4.)
Appellants’ Specification does not define “command-to-command transition
table,” but provides an example:
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Appeal 2017-003797
Application 13/831,886
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(Spec. 1 56.) This table illustrates a command-to-command transition table,
in which the rows represent an executed command and each column
represents an occurrence rate for a given command to be the next command
after the executed command. (Spec. H 55—56.) For example, if the last
executed command was C2, then C4 is the highest probability next action
based on the occurrence rate in that row. (Spec. 158.)
For the limitations at issue, the Examiner relies on a “community-
frequency table” illustrated as Figure 2C in Fitzmaurice:
234
- User ID
224
Command
Name
226
Previous
Command
228
Frequency
230
Design
Context
m
i
- 1
5 5 f
FIGURE 2C
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Appeal 2017-003797
Application 13/831,886
Figure 2C illustrates a community-frequency table for storing frequency
information, with each entry 234 in the table storing, for a given user 224 in
a given design context 232, the frequency 230 that the command 226 is
preceded by the command 228. (Final Act. 2—3; Fitzmaurice Fig. 2C, ]Hf 15,
38.) For any given command that a user executes, a “recommendation
engine” uses the community-frequency table to compute the most likely one
or more commands that would follow that command, given the frequency of
that command sequence as indicated by the stored statistics. (Fitzmaurice,
Figs. 4A, 4B, 149.) The community-frequency table is based on the
command use information of multiple users in a community of users.
(Fitzmaurice 23, 34, 36-42.) For any given user, the pertinent
community is based on “pre-configured preferences associated with the
designer [i.e., user] indicating] other designers or groups of designers in the
community whose frequency information is of interest to the designer.”
(Fitzmaurice 143.)
Appellants argue the Examiner errs because:
Instead of combining the user specific data and the community
data from various command log views as claimed, Fitzmaurice
separately computes the frequency percentage associated with
each of the different commands from a user's records and from a
community record of other designers or groups of designers that
are related to the user (see Fitzmaurice at paragraphs [0049] and
[0052]). Recommended commands are then separately selected
from these two datasets to provide user recommendation lists
based on user data, recommendation lists based on community
data (of a set of users), and recommendation lists based on
particular expert data (see Fitzmaurice Figures 4A and 4B and
corresponding text).
(App. Br. 3 4.) However, as discussed above, the community-frequency
table disclosed in Fitzmaurice does in fact combine the command use
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Appeal 2017-003797
Application 13/831,886
information of all users in the community of users to compute the frequency
percentage associated with each command. (Fitzmaurice 23, 34, 36-43.)
Appellants focus on the fact that the claims require combining “user specific
data and community data,” where the claimed “user” is one particular user in
a group of users and the claimed “community” is made up of the remaining
users in the community. The community-frequency table of Fitzmaurice
satisfies this requirement because it contains the combined information of all
users in the community, which of necessity includes any given particular
user that, from the vantage point of the claims, would be the source of “user
specific data.”
Appellants’ reliance on the fact that recommended commands are
separately selected, via the user interfaces depicted at Figures 4A and 4B of
Fitzmaurice, from user-specific data and community data, is not persuasive
of Examiner error. (App. Br. 4; see also Reply Br. 7.) The “community
recommendation list view” of Figure 4B of Fitzmaurice is generated from
data copied from the above discussed community-frequency table.
(Fitzmaurice Fig. 4B, || 43—45, 53, 59-60.) Under a broad but reasonable
interpretation, this discloses “selecting predicted commands from the
combined command-to-command transition table.” Contrary to Appellants’
argument, the claims do not require selecting predicted commands based on
the user specific data in the combined command-to-command transition
table; selection based on only community data from the combined
command-to-command transition table meets the claim requirements. As
Appellants admit:
Since the claim uses the transitional term of “comprising”, the
claim does not preclude displaying only community-data-
derived commands. However, the claim does require at least the
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Application 13/831,886
displaying of a command selected from the combined command-
to-command transition table.
(Reply Br. 7.)
Accordingly, we sustain the Examiner’s anticipation rejections of
independent claims 1, 9, and 16.
Issue Two
Independent claim 9 is directed to “A computer readable storage
medium having instructions stored thereon that, when executed by a
processor, perform a method comprising. . . .” (App. Br. 12.) The Examiner
rejects claim 9, and the claims depending therefrom, as encompassing
“transitory embodiments.” (Final Act. 11—12.) Appellants rely on Ex parte
Mewherter, 107 USPQ2d 1857 (PTAB 2013), and in particular on the
holding that “machine readable storage medium” would not necessarily
encompass transitory embodiments if there is express intent in applicant’s
specification to limit that phrase to non-transitory media. 107 USPQ2d at
1862, n.5. In particular, Appellants rely on the statement in the
Specification, “‘Computer-readable storage media’ do not consist of carrier
waves or propagating signals.” (Spec. 1161.)
The Examiner concludes:
The applicant’s definition thus only excludes electrical signals
and not all transitory embodiments. As an example, a sound
wave is not an electrical quantity, nor is it a radio signal, but it is
a transitory embodiment of a computer-readable media.
(Ans. 5.) We do not agree with the Examiner’s conclusion. A sound wave,
for example, reasonably falls within the Specification’s exclusion of
“propagating signals.” Therefore, we do not sustain the Examiners
rejections pursuant to 35 U.S.C. § 101.
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Application 13/831,886
CONCLUSION
For the reasons stated above, we sustain the Examiner’s anticipation
rejections of independent claims 1, 9, and 16 over Fitzmaurice.
We also sustain the anticipation rejections of claims 2, 6—8, 15, 17,
and 18 over Fitzmaurice, and the obviousness rejections of claims 3, 12, and
20 over Fitzmaurice and Perrow, of claims 4 and 13 over Fitzmaurice and
Harte, of claims 5 and 14 over Fitzmaurice and Matejka, of claim 10 over
Fitzmaurice and Shivaji-Rao, and of claim 11 over Fitzmaurice and Boehler,
which rejections are not argued separately with particularity.
Also for the reasons stated above, we do not sustain the Examiner’s
rejections of claims 9-15 as being directed to non-statutory subject matter.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner’s decision rejecting claims 1—18 and 20.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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