Ex Parte Mulcahy et alDownload PDFPatent Trial and Appeal BoardOct 30, 201713795622 (P.T.A.B. Oct. 30, 2017) Copy Citation 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. 13/795,622 03/12/2013 Kathleen Patricia Mulcahy 337640.01/MFCP. 175442 1374 45809 7590 11/01/2017 SHOOK, HARDY & BACON L.L.P. (MICROSOFT TECHNOLOGY LICENSING, LLC) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 EXAMINER BAIG, SAHAR A ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 11/01/2017 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM usdocket@ micro soft .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KATHLEEN PATRICIA MULCAHY, SHIRAZ CUP ALA, JOHN DARREN ELLIOTT, WYATT DOUGLAS JACKSON, HANSEN LIOU, ALAIN P. MAILLOT, NEIL WARREN BLACK, and JOSHUA C. ZANA1 Appeal 2017-005847 Application 13/795,622 Technology Center 2400 Before MAHSHID D. SAADAT, THU A. DANG, and JOHN P. PINKERTON, 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, 4—15, and 17—24, which are the only claims pending in application. Claims 2, 3, and 16 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify Microsoft Technology licensing, LLC, a subsidiary of Microsoft Corporation, as the real party in interest. App. Br. 3. Appeal 2017-005847 Application 13/795,622 STATEMENT OF THE CASE Introduction Appellants generally describe the disclosed invention as follows: Embodiments of the invention provide a companion application that allows users to discover secondary content that supplements primary content that the user is enjoying and to run the secondary content within the application. Examples of primary content include, games, television shows, movies, and music. In one embodiment, a companion application runs on both the primary device, which is the device generating the primary content, and on the companion device. The companion application helps the user discover available secondary content. In addition to discovering secondary content that may be relevant to the user, the companion application includes an application- run environment in which secondary content applications may run. Abstract.2 Claims 1 and 15 are exemplary and reproduced below (with the disputed limitations emphasized)'. 1. A method of generating a companion experience on a companion device, the method comprising: receiving, on a companion device, state information describing a video game being output for display by a primary device, wherein the state information identifies the video game and a game level for the video game; identifying, by the companion device, one or more companion applications that provide a companion experience related to the game level within the video game; and 2 Our Decision refers to the Final Action mailed Sept. 25, 2015 (“Final Act.”); Appellants’ Appeal Brief filed June 13, 2016 (“Br.”); the Examiner’s Answer mailed Nov. 3, 2016 (“Ans.”); and the original Specification filed Mar. 12, 2013 (“Spec.”). 2 Appeal 2017-005847 Application 13/795,622 outputting, on the companion device, for display on the companion device, which is separate from the primary device, a selection interface that allows a user to select a companion application from the one or more companion applications. 15. A computing system comprising: a processor; and computer storage memory having computer-executable instructions stored thereon which, when executed by the processor, implement a method generating a companion experience, the method comprising: receiving, at a companion device, state information describing a video game title and a progress made within the video game title, the video game title being output by a primary device; communicating, at the companion device, the state information to a companion application running on a companion device that is separate from the primary device; receiving a secondary content from the companion application that is generated using the state information and is related to the primary content; and outputting the secondary content for display on the companion device. Br. 24, 26—27 (Claims App’x). Rejections on Appeal Claims 1, 4—12, 15, 17, 18, and 21 stand rejected under 35 U.S.C. § 102 (a) as being anticipated by Takeda et al. (US 2012/0026166 Al; published Feb. 2, 2012) (“Takeda”). Claims 13, 14, 23, and 24 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over Takeda and Mowrey et al. (US 2012/0174155 Al; published July 5, 2012) (“Mowrey”). 3 Appeal 2017-005847 Application 13/795,622 Claims 19 and 20 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over Takeda and Jeffrey et al. (US 2013/0007201 Al; published Jan. 3, 2013) (“Jeffrey”). Claim 22 stands rejected under 35 U.S.C. § 103 (a) as being unpatentable over Takeda and Sibilsky et al. (US 2012/0162536 Al; published June 28, 2012) (“Sibilsky”). ANALYSIS Rejection of Claims 1, 4—12, 15, 17, 18, and 21 under § 102 (a) Claims L 4—12, and 21 Regarding independent claims 1 and 8, Appellants contend Takeda does not disclose “a selection interface that allows a user to select a companion application from the one or more companion applications,” as recited in claim 1 and similarly recited in claim 8. Br. 11—13, 17. The Examiner finds Takeda discloses that the movable display MD can be used to display “other types of information such as for example . . . menu selections.” Ans. 11 (citing Takeda | 87). The Examiner also finds Takeda discloses that the MD “shows status such as for example selection of weapons.” Id. (citing Takeda Fig. 6C, 165). Thus, the Examiner finds “Takeda discloses ‘a selection interface (menu selections in [0087])] that allows a user to select a companion application [weapon selection [0065]) from the one or more companion applications.’” Id.; see also id. at 12—13 (citing Takeda 1 64) (the Examiner finds that displaying dashboard information, such as fuel level, “is equivalent to identifying . . . one or more companion applications (dashboard information)”). 4 Appeal 2017-005847 Application 13/795,622 We are persuaded by Appellants’ arguments the Examiner erred. Appellants argue claim 1 specifies the content of the “selection interface” is “one or more companion applications” that “might be of interest [to] the user based on the specific game and game level the user is playing.” Br. 12. Regarding the claimed “companion applications,” we note Appellants’ Specification states “the companion application includes an application-run environment in which secondary content applications may run” and may include “applications using HTML” and “may also include a series of APIs that allow the secondary content to access some of the companion device’s resources.” Spec. 1 6. Appellants also argue, and we agree “that the Takeda reference does not mention companion applications” and, although the “other information” that Takeda mentions could be displayed on the MD “could be provided by a companion application in theory, the Takeda reference does not describe the information as actually being provided by a companion application.” App. Br. 13. Thus, we find the Examiner has failed to show by a preponderance of the evidence that Takeda expressly or inherently discloses the disputed limitation of claims 1 and 8. Accordingly, we do not sustain the Examiner’s rejection of claims 1 and 8, and dependent claims 4—7, 9—12, and 21, for anticipation under § 102 (a). Clams 15, 17, and 18 Appellants contend that, for the reasons discussed regarding claim 1, Takeda fails to describe “receiving, at a companion device, state information describing a video game title and a progress made within the video game title, the video game title being output by a primary device,” as recited in claim 15. Br. 18; see also id. at 14—16. In particular, Appellants argue 5 Appeal 2017-005847 Application 13/795,622 Takeda is silent regarding “state information” and, because a single graphics source is described in Takeda for content on both the SD and MD, “there is no need to communicate state data between devices.” Id. at 14—15. Thus, according to Appellants, “the transfer of state data is not taught implicitly either.” Id. at 14. We are not persuaded by Appellants’ arguments. Instead, we agree with the Examiner that Takeda discloses “state information” identifying the video game and game level because Takeda describes that the MD can be used to display, for example, the “score (for a game).” Final Act. 3^4 (citing Takeda 1 87). In this regard, the Examiner finds, and we agree, Takeda’s disclosure of “a game” discloses “the video game title,” and Takeda’s disclosure of the “score” for a game is the “game level.” See id.', see also Ans. 14. The Examiner also finds, and we agree, that Takeda discloses state information being communicated from the SD to the MD. Ans. 13—14 (citing Takeda Tflf 115—121). Thus, we agree with the Examiner’s finding that Takeda discloses the disputed limitation of claim 15. Accordingly, we affirm the Examiner’s rejection of claim 15, and dependent claims 17 and 18, which are not substantively, separately argued. See Br. 18—19. Rejections of Claims 13, 14, 19, 20, and 22—24 under § 103 (a) Dependent claims 13, 14, 19, 20, and 22—24 are variously rejected under 35 U.S.C. § 103 (a) based on the combination of Takeda with Mowery, Jeffrey, or Sibilsky. Regarding claims 13 and 14, which depend from claim 8, and claims 23 and 24, which depend directly or indirectly from claim 1, we do not sustain the Examiner’s rejection under § 103 (a) because the Examiner relies on Takeda in the same manner discussed above in the context of these 6 Appeal 2017-005847 Application 13/795,622 dependent claims and does not rely on the additional reference in any manner that remedies the deficiencies of the underlying anticipation rejection with respect to claims 1 and 8. Regarding claims 19, 20, and 22, which depend from claim 15, Appellants argue these claims are patentable because the secondary references Jeffrey and Sibilsky do not overcome the deficiencies of Takeda with respect to the disputed limitation of claim 15. See Br. 20—22. We are not persuaded by this argument because, for the reasons discussed supra regarding the anticipation rejection of claim 15, there are no deficiencies of Takeda with respect to the disputed limitation of claim 15. Thus, we affirm the Examiner’s rejection of claims 19, 20, and 22 under § 103 (a). DECISION We affirm the Examiner’s rejection of claim 15 under § 102 (a) and the rejection of claims 19, 20, and 22 under § 103 (a). We reverse the Examiner's rejection of claims 1, 4—12, 17, 18, and 21 under § 102 (a) and the rejection of claims 13, 14, 23, and 24 under § 103 (a). 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-IN-PART 7 Copy with citationCopy as parenthetical citation