Ex Parte Panay et al

Patent Trial and Appeal Board

Jan 31, 2018

13492232 (P.T.A.B. Jan. 31, 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.
13/492,232 06/08/2012 Panos C. Panay 336742.01 1610
69316 7590 02/02/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
BORROMEO, JUANITO C
ART UNIT PAPER NUMBER
2184
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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 PANOS C. PANAY, SHARON DRASNIN, MICHAEL D.
MCCORMACK, JOHN E. INMAN, STEVE SEIXEIRO, ANTHONY
CHRISTIAN REED, RALF GROENE, and JEFFREY JAY JOHNSON1
Appeal 2017-007222
Application 13/492,232
Technology Center 2100
Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and
JAMES R. HUGHES, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 2, and 4-21. Claim 3 has been
canceled. App. Br. 5.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Microsoft Corporation.
App. Br. 3.
2 We refer to Appellants’ Specification (“Spec.”) filed June 8, 2012; Appeal
Brief (“App. Br.”) filed Oct. 25, 2016; and Reply Brief (“Reply Br.”) filed
Apr. 10, 2017. We also refer to the Examiner’s Answer (“Ans.”) mailed
Feb. 9, 2017; and Final Office Action (Final Rejection) (“Final Act.”)
mailed May 25, 2016.
Appeal 2017-007222
Application 13/492,232
Appellants ’ Invention
The invention at issue on appeal generally concerns dynamically
adapting a user interface and, more specifically, apparatuses (devices) and
methods for dynamically adapting a user interface utilizing physical
characteristic data. The apparatus includes a housing having physical
characteristics viewable by a user and a memory disposed within the housing
storing data directly identifying the physical characteristics. The apparatus
communicates with a computing device such that the computing device
dynamically adapts a displayed user interface to mimic the physical
characteristics of the housing. (Spec. 2-6; Abstract.)
Illustrative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. An apparatus comprising:
a connection portion configured to be removably
physically and communicatively connected with a computing
device;
a housing physically connected to the connection portion
and providing an outer surface having one or more physical
characteristics that are viewable by a user, the housing
communicatively connected to the connection portion; and
memory disposed within the housing and configured to
communicate data to the computing device via the connection
portion, the data directly identifying the one or more physical
characteristics to enable the computing device to dynamically
adapt a user interface displayable by a display device of the
computing device to mimic the one or more physical
characteristics of the housing described by the data.
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Appeal 2017-007222
Application 13/492,232
Rejections on Appeal3
1. The Examiner rejects claims 1, 2, 5, 9-12, and 21 under
35 U.S.C. § 102(b) as anticipated by Glaser (US 7,007,238 B2, issued Feb.
28, 2006).
2. The Examiner rejects claims 4, 6-8, and 13-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Glaser and Rothkopf (US 2012/0194448
Al, published Aug. 2, 2012 (filed Aug. 11, 2011).
ISSUE
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in finding Glaser discloses,
memory disposed within the housing and configured to
communicate data to the computing device via the connection
portion, the data directly identifying the one or more physical
characteristics to enable the computing device to dynamically
adapt a user interface displayable by a display device of the
computing device to mimic the one or more physical
characteristics of the housing described by the data
(Claim 1, emphasis added) as recited in Appellants’ claim 1?
3 The Examiner includes claim 3 in the anticipation rejection. Claim 3 was
previously canceled. See App. Br. 5. We have removed claim 3 from the
statement of rejection for clarity and consistency of the record. The
Examiner also improperly mixes the anticipation and obviousness
rejections—the Examiner rejects independent claims 8 and 16 as obvious,
but includes dependent claims 9-12 and 21 in the anticipation rejection. We
address independent claims 8 and 16 and the respective dependent claims
(including 9-12 and 21) in our discussion of the obviousness rejection
{infra).
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Appeal 2017-007222
Application 13/492,232
ANALYSIS
The Anticipation Rejection
The Examiner rejects independent claim 1 as being anticipated by
Glaser. See Final Act. 2-3; Ans. 2—4. Appellants contend that Glaser does
not disclose the disputed features of claim 1. See App. Br. 11-14; Reply Br.
5-6. Specifically, Appellants contend, inter alia, the Examiner’s
interpretation of Glaser in view of Appellants’ Specification is overbroad
(see App. Br. 12-14) and “Glaser fails to describe ‘data directly identifying
the one or more physical characteristics’ as recited in claim 1” (App. Br. 12-
13).
We agree with Appellants that the Examiner’s interpretation of
Glaser, in view of Appellants’ Specification, is overbroad and the Examiner
does not point to an explicit disclosure in Glaser of data communicated from
a (peripheral) device that directly identifies physical characteristics of the
device, as set forth in Appellants’ claim 1. In particular, the Examiner
maintains “Applicants’] [Specification does not explicitly describe the
term ‘data directly identifying the one or more physical characteristics’. As
such, the term . . . can be broadly construed to be a unique identifier directly
identifying a physical characteristic of a peripheral device” (Ans. 3). As
pointed out by Appellants (see App. Br. 12-14), however, Appellants’
Specification distinguishes indirect identification from direct identification
and defines the terminology “directly identifying.” As the Specification
explains, “[t]he data 402 may be configured to describe physical
characteristics of the device 104. This may be performed indirectly, such as
to identify the device 104 itself (e.g., model number), or directly, such as to
identify the physical characteristics of the device 104” (Spec. ^ 39).
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Appeal 2017-007222
Application 13/492,232
The Examiner simply points to portions of Glaser that describe a
mouse (peripheral device) with a unique identifier stored in the mouse,
which is utilized to change the appearance of a graphical user interface
(GUI). See Final Act. 2-3; Ans. 3—4 (citing Glaser, col. 2,11. 65-68; col. 3,
11. 34-39; Figs. 1, 4, 5). Glaser explains that the unique identifier is matched
to a theme (to be displayed in the GUI) stored in the microprocessor
(computing device) by comparing the unique identifier in a look-up table.
See Glaser, col. 5,11. 35-39; col. 6,11. 44-59. Therefore, we agree with
Appellants that the identification described in Glaser is more akin to
Appellants’ “indirect” identification (see Spec. ^ 39), and Glaser does not
explicitly describe “directly” identifying physical characteristics of a device.
The Examiner further weakens the anticipation rejection explaining that
HID-defmed devices (described in Appellants’ Specification) are known in
the art and uniquely identify physical characteristics of such a device. See
Ans. 3. Not only does the Examiner fail to provide any citation supporting
this finding, Glaser does not mention HID descriptor tables as Appellants
indicate (see Reply Br. 5-6). Thus, we agree with Appellants that the
Examiner has not adequately explained how the disclosure of Glaser meets
the disputed limitations of claim 1.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding that the Glaser anticipates Appellants’
claim 1. Dependent claims 2 and 5 depend from and fall with claim 1.
The Obviousness Rejections
The Examiner rejects independent claims 8 and 16 as being obvious in
view of Glaser and Rothkopf. See Final Act. 5-8. As discussed {supra)
with respect to claim 1, the Examiner does not provide support for finding
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Appeal 2017-007222
Application 13/492,232
that HID-defmed devices are known in the art and uniquely identify physical
characteristics of HID-defmed devices. Nor does the Examiner point to any
suggestion of HID descriptor tables in Glaser {supra). Further, the Examiner
does not discuss Glaser or Rothkopf with respect to the teaching or
suggestion of direct identification (or description—see claim 8) of physical
characteristics. See Final Act. 5-8. Accordingly, the Examiner has not
established on this record that Glaser teaches or suggests the disputed
limitation of claim 1 (discussed supra) or that the additionally cited
Rothkopf reference overcomes or cures the aforementioned deficiency of
Glaser. Also, the Examiner does not address claims 4 and 6-21 in the
Answer. Independent claims 8 and 16 include limitations commensurate in
scope to the disputed limitation of claim 1 (discussed supra). Dependent
claims 4, 6, 7, 9-15 and 17-21 depend from claims 1, 8, and 16,
respectively. Accordingly, we do not sustain the Examiner’s obviousness
rejections of claims 4 and 6-21.
CONCLUSION
Appellants have shown the Examiner erred in rejecting claims 1, 2,
and 5 under 35 U.S.C. § 102(b).
Appellants have shown the Examiner erred in rejecting claims 4 and
6-21 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1, 2, and 4-21.
REVERSED
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