Ex Parte Lai et al

Patent Trial and Appeal Board

Feb 4, 2016

11609100 (P.T.A.B. Feb. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/609,100 12/11/2006
69316 7590 02/08/2016
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
William Y. Lai
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.
303478.02 1542
EXAMINER
CHOI, YUK TING
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
02/08/2016 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):
stevensp@microsoft.com
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM Y. LAI and JAGADEESH KALKI
Appeal2013-007939
Application 11/609,100
Technology Center 2100
Before LINZY T. McCARTNEY, JEFFREY A. STEPHENS, and
CHRISTA P. ZADO, Administrative Patent Judges.
ZADO, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 file this appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-16 and 18-20.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Microsoft Corp. as the real party in interest. App.
Br. 2.
2 Claim 17 is canceled. App. Br. 22 ("Claims Appendix").
Appeal2013-007939
Application 11/609,100
STATEMENT OF THE CASE3
Claim 8 is illustrative (emphasis added):
8. A method for processing a notification, said method
compnsmg:
receiving, by a computing device from a content provider, a
data packet that represents a notification and that includes routing
information that includes a broadcast alias that is associated with a
list of recipients, the computing device coupled to the content
provider via a data communication network;
parsing the received data packet;
validating the content provider identified by the parsed data
packet, the validated content provider having been previously digitally
signed and certified by some entity;
accessing, by the computing device, the list of recipients
associated with the broadcast alias obtained from the parsed data
packet; and
delivering, by the computing device in response to the
receiving, the parsing, the validating, and the accessing, the received
data packet to a plurality of recipients indicated by the accessed list of
recipients associated with the broadcast alias obtained from the parsed
data packet.
Johnson
Okada
Srinivasan
Rhodes
Goudie
REFERENCES
us 5,640,504
US 2002/0012327 Al
US 2002/0038455 Al
US 2002/0049902 Al
US 2002/0129213 Al
June 17, 1997
Jan. 31, 2002
Mar. 28, 2002
Apr. 25, 2002
Sept. 12, 2002
3 Rather than repeat the arguments here, we refer to the Appeal Brief and
Reply Brief for the positions of Appellants and the Final Office Action and
Answer for the positions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2013-007939
Application 11/609,100
Abel
Nonaka
US 2002/0133477 Al
US 2003/0046238 Al
THE REJECTIONS
Sept. 19, 2002
Mar. 6, 2003
Claims 18-20 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 1, 3, 4, 7, 8, 12-16, 18, and 20 stand rejected under§ 103(a)
as unpatentable over Abel, Johnson, and Nonaka.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Abel, Johnson, Nonaka, and Okada.
Claims 5, 11, and 19 stand rejected under§ 103(a) as unpatentable
over Abel, Johnson, Nonaka, and Srinivasan.
Claim 6 stands rejected under§ 103(a) as unpatentable over Abel,
Johnson, Nonaka, and Rhodes.
Claims 9 and 10 stand rejected under§ 103(a) as unpatentable over
ii,bel, Johnson, Nonaka, and Goudie.
ANALYSIS
§ 101 -Non-Statutory Subject Matter
We agree with Appellants that the Examiner erred in concluding
claims 18-20 are directed to non-statutory subject matter under § 101.
The Examiner finds the term "computer storage device" recited in
claims 18-20 encompasses non-statutory media, in particular "a
communication medium that covers signals and carrier waves." Ans. 4--5.
This finding stems from the Examiner's interpretation of "computer storage
device" as "computer readable media." See id. at 4. The Examiner
concludes the Specification makes clear the term "computer readable media"
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Appeal2013-007939
Application 11/609,100
encompasses the term "communication media," which in tum encompasses
modulated data signals such as carrier waves. Id. at 4--5 (citing Spec. i-f 54).
Appellants' Specification describes "computer readable media" as
comprising "computer storage media and communication media."
Specification i-f 54. The Specification describes "computer storage media"
as "media implemented in any method or technology for storage of
information" (emphasis added) and "communication media" as embodying
data in modulated signals. Id. Non-limiting examples of "computer storage
media" include storage devices, including "magnetic storage devices" (Spec.
i-f 54), "mass storage devices" (Spec. i-f 57), and "memory storage devices"
(Spec. i-f 65). Therefore, the Specification describes various storage devices
used in computers as being "computer storage media." The Specification
does not describe computer storage devices as "communication media." We
find, therefore, the Examiner's interpretation of "computer storage device"
as "computer readable media" is not supported by the Specification.
Because the Examiner's premise is in error, the Examiner has not shown
"computer storage device" is broad enough to encompass signals and carrier
waves.
We, therefore, are persuaded the Examiner erred in concluding
claim 18, and claims 19 and 20 depending therefrom, are directed to non-
statutory subject matter under § 101.
§ 103 - Obviousness
Appellants argue, and we agree, the Examiner has not shown Abel,
alone or in combination with Johnson, teaches or suggests "receiving, by a
computing device from a content provider, a data packet that represents a
notification and that includes routing information that includes a broadcast
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Appeal2013-007939
Application 11/609,100
alias that is associated with a list of recipients" (disputed limitation), as
recited in independent claim 8, and similarly recited in independent claims 1
and 18. App. Br. 10-14; Reply Br. 5-10.
The Examiner maps Abel's BROADCAST ALERT to the claimed
"data packet." Ans. 5. Appellants correctly point out the Examiner must
show the BROADCAST ALERT both represents a notification and includes
routing information that includes a broadcast alias associated with a
recipient list, or that such would have been obvious to a skilled artisan. App.
Br. 10, 14.
Abel discloses that the BROADCAST ALERT includes a data field
called INTEREST ITEMS that identifies items of interest to users. Abel
i-fi-f 38, 53. The INTEREST ITEMS are used to generate a NOTICE LIST
reflecting all user's whose USER PROFILE entries match the INTEREST
ITEMS. Id. i152. The Examiner does not identify a broadcast alias in
Abel's BROADCAST ALERT, but instead finds the ALERT "contains ...
content to generate a broadcast alias." Ans. 6. We find, however, that
containing content to generate a broadcast alias is insufficient. The claim
language requires the data packet include the broadcast alias. The Examiner
further finds that "[ s ]ince the broadcast alert contains the alert content as
well as the notification list," Abel teaches a broadcast alias. Id. The
Examiner has not explained, however, how the notification list is a broadcast
alias, rather than the claimed list of recipients. Moreover, the Examiner has
not shown Abel's BROADCAST ALERT contains the NOTIFICATION
LIST. See Abel i-f 53 (describing the contents of a BROADCAST ALERT,
but not including the NOTIFICATION LIST), i1 54 (describing using the
NOTIFICATION LIST to distribute the BROADCAST ALERT, but not
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Application 11/609,100
indicating the NOTIFICATION LIST is included in the BROADCAST
ALERT).
Accordingly, we are persuaded the Examiner incorrectly found Abel
teaches or suggests the disputed limitation of claim 8, and similarly recited
limitation in claims 1 and 18.
We, therefore, do not sustain the Examiner's rejection under§ 103 of
independent claims 1, 8, and 18, and claims 2-7, 9-16, 19, and 20 depending
therefrom.
DECISION
The Examiner's decision rejecting claims 1-16 and 18-20 is reversed.
REVERSED
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