Ex Parte Grieb et al

Patent Trials and Appeals Board

Apr 24, 2019

13690964 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/690,964 11/30/2012
69316 7590 04/26/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Doreen N. Grieb
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
337138.01 8089
EXAMINER
MRABI, HASSAN
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
04/26/2019 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIGONG CHEN 1
Appeal2018-002937
Application 13/690,964
Technology Center 2100
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
RAMA G. ELLURU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, all the pending claims in the
present application (see Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We REVERSE.
The present invention relates generally to collection environments
(see Spec., Abstract).
1 Appellant names MICROSOFT TECHNOLOGY LICENSING, LLC as the
real party in interest (App. Br. 3).
Appeal2018-002937
Application 13/690,964
Claim 17 is illustrative:
17. A method of operating a collection environment, the
method comprising:
initiating presentation of the collection environment, the
collection environment comprising a presentation recording having a
plurality of presentation sections and a written paragraph having a
plurality of written sections;
initiating identification of which written section of the
plurality of written sections corresponds to a user input directed to the
written paragraph and which presentation section of the plurality of
presentation sections corresponds to the written section;
initiating display of a function menu including a plurality
of media functions in response to another user input directed to the
written section;
initiating receipt of a selection of a media function from
the plurality of media functions; and
initiating application of the selected media function to the
written section and the corresponding presentation section in the
presentation recording such that the applied media function
manipulates both the written section and the corresponding
presentation section in a similar manner.
Appellant appeals the following rejections:
RI. Claims 1 and 8-17 are rejected under 35 U.S.C. § I02(b) as being
anticipated by Rehm (US 2006/00753447 Al, Apr. 6, 2006);
R2. Claims 2--4, 6, 7, and 18-20 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Rehm and Fitzsimmons (US
2012/0321062 Al, Dec. 20, 2012);
R3. Claim 5 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Rehm, Fitzsimmons, and Katis (US 2010/0125791 Al,
May 20, 2010).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
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Appeal2018-002937
Application 13/690,964
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
ANALYSIS
Rejection under§ 102(b)
Appellant contends "none of [the] citations [in Rehm], teach or
disclose, for example, application of the selected media function to the
written section and the corresponding presentation section in the
presentation recording such that the applied media function manipulates both
... in a similar manner" (App. Br. 8). For example, Appellant contends that,
in Rehm, "initiating playback of the recording (i.e.[,] the applied media
function) is not disclosed as [also] manipulating the written section[,]
[i]nstead only the recording" (id. at 9). In other words, Appellant contends
that Rehm's selected media function only manipulates either the written
section or the presentation section, but not both. We agree with Appellant.
First, we note, as a matter of claim construction, representative
claim 17 recites, inter alia, "initiating application of the selected media
function to the written section and the corresponding presentation section ...
such that ... manipulates both ... in a similar manner" (see claim 17)
( emphasis added). Thus, claim 17 requires that an application of the
selected function manipulates both the written section and the presentation
recording in a similar manner (see Spec. ,r,r 71-72), i.e., a single application
of the function similarly manipulating both sections.
In contrast, the Examiner merely directs our attention to various
functionalities described in Rehm, i.e., removing, deleting, and highlighting,
that can be applied to the notes and the recording (see Ans. 14; see also Ans.
6) and how Rehm links notes with recordings (id.).
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Appeal2018-002937
Application 13/690,964
For example, Rehm discloses "[a] computerized notetaking system
that records audio and links notes to the audio" (Abstract; see also ,r 35);
"[t]he audio control area 52 controls the playback of [the] background audio
... [and] there are controls for the main audio playback" (i-f 34); and "[t]he
text of the paragraph ... may be deleted, edited or retyped" (i-f 39).
However, Rehm merely discloses individual functions for either the notes or
the recording (see ,r,r 36, 39), i.e., such as play, pause, delete, edit. What is
missing from the Examiner's findings is an application of a selected
function, such as delete, that manipulates (i.e., deletes) both the notes and
the recording upon application of that specific function. At best, Rehm
discloses that the delete function can be applied in separate selection
instances to either delete text or audio.
Thus, we disagree with the Examiner's finding that Rehm discloses
the aforementioned limitation, as recited in each of the independent claims 1,
11, and 1 7. The Examiner has not relied upon any of the other references of
record to teach this feature. Because we agree with at least one of the
arguments advanced by Appellant, we need not reach the merits of
Appellant's other arguments. Accordingly, we will not sustain the
Examiner's anticipation and/or obviousness rejections of claims 1-20.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
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