Ex Parte Rasmussen et al

Patent Trials and Appeals Board

May 1, 2019

11786005 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/786,005 04/10/2007
69316 7590 05/03/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
David J. Rasmussen
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.
319365.01 6612
EXAMINER
TAPP, AMELIA L
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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 DAVID J. RASMUSSEN, ALEX J. SIMMONS,
CHRISTOPHER H. PRATLEY, OLYA VESELOVA,
PEYUSH BANSAL, DAVID GARBER, IGOR KOFMAN,
DONOVAN LANGE, and EMILY PITLER
Appeal2018-007279
Application 11/786,005 1
Technology Center 2100
Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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--4, 7-11, 14--18, and21-25. Claims 5, 6, 12, 13, 19,
and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants' Brief ("App. Br.") identifies Microsoft Technology Licensing,
LLC as the real party in interest. App. Br. 2.
Appeal2018-007279
Application 11/786,005
CLAIMED SUBJECT MATTER
The claims are directed to techniques to display associated
information between application programs. Spec., Title. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method, comprising:
creating a note with a first application program;
generating a context reference for a document open in a
second application program different from the first application
program, the context reference to comprise state information
configured to replicate a graphical user interface (GUI)
environment of the document as recorded when the note was
originally authored, the state information comprising a size and
a position for at least one open GUI window in the GUI
environment when the note was created;
storing the note in a location separate from a source of the
document;
associating the context reference with the note, the note
being presented alongside a selectable icon that when clicked or
selected opens the document such that a position and a size of a
GUI window is to be the same as in the state information; and
when the note is subsequently requested and the context
reference is activated via the selectable icon, retrieving the
document from the source of the document, launching the second
application, and displaying the document in the second
application with a document view of a location within the
document based on the context reference.
App. Br. 38 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
O'Rourke
Rivette
Madan
Hilerio
us 5,349,658
US 6,877,137 Bl
US 2005/0091578 Al
US 2011/0307883 Al
2
Sept. 20, 1994
Apr. 5, 2005
Apr. 28, 2005
Dec. 15, 2011
Appeal2018-007279
Application 11/786,005
REJECTIONS
Claims 1--4, 7-11, 14--18, and 21-25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Madan, Rivette, O'Rourke, and Hilerio.
Final Act. 2-23.
ISSUES
First Issue: Has the Examiner erred in finding Rivette teaches "state
information," as recited in claim 1?
Second Issue: Has the Examiner erred in finding O 'Rourke teaches or
suggests "information configured to replicate a graphical user interface
( GUI) environment of the document as recorded when the note was
originally authored," as recited in claim 1?
Third Issue: Has the Examiner erred in finding Hilerio teaches or
suggests "state information comprising a size and a position for at least one
open GUI window in the GUI environment when the note was created," as
recited in claim 1?
Fourth Issue: Has the Examiner erred in finding Madan and Hilerio
teach or suggest a "note being presented alongside a selectable icon that
when clicked or selected opens the document such that a position and a size
of a GUI window is to be the same as in the state information," as recited in
claim 1?
Fifth Issue: Has the Examiner set forth sufficient rationale for
combining the references?
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Application 11/786,005
ANALYSIS
First Issue
Claim 1 recites the limitation "generating a context reference for a
document open in a second application program different from the first
application program, the context reference to comprise state information."
In rejecting claim 1, the Examiner finds Madan teaches "generating a
context reference for a document open in a second application program
different from the first application program," Final Act. 3 (citing Madan
,r,r 40-42 and 55), but that it does not teach that the "context reference to
comprise state information." Id. ("Madan does not expressly teach the
context reference to comprise state information.") The Examiner introduces
Rivette, finding that it teaches the use of context references which comprise
state information. Final Act. 3--4 ( citing Rivette claims 1, 2, 7-9; Figs. 22,
44, 45; col. 24, 11. 23-29, col. 25, 11. 22-36, col. 39, 1. 29-col. 40, 1. 33).
Appellants argue "Rivette does not teach or suggest anything similar
to state information as recited in claim 1." App. Br. 27. More specifically,
Appellants contend "Rivette may display the specific portions of the
document but Rivette does not store any state information regarding these
portions." Id. Appellants further argue that, even if Rivette teaches the use
of state information, the state information offered by Rivette is not the same
as that required by the claim and is, in fact, "quite limited," and "is not
equivalent to or even similar to state information configured to replicate an
environment of the document as recorded when the note was originally
authored." Id.
We are not persuaded by Appellants' argument. As explained by the
Examiner, Rivette is relied upon only to teach the limitation "the context
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Application 11/786,005
reference to comprise state information." Ans. 20 ( emphasis omitted). Put
differently, Rivette is used to show that it was known in the art to include
state information within a context reference associated with a note. We
agree with the Examiner that Rivette's linking of sub-notes to specific
portions of webpages (see Rivette col. 24, 11. 3-28) is encompassed by the
recited "state information" because associating the links to those specific
portions of the webpages allows for revisiting the specific portion of the
page that was selected when the note was created. Moreover, we are not
persuaded by Appellants' contention that Rivette fails to describe any state
information that is "configured to replicate an environment of the document
as recorded when the note was originally authored." The Examiner relies on
0 'Rourke, and not Rivette, as teaching this limitation.
Second Issue
As noted above, the Examiner relies on O 'Rourke as teaching the use
of state information "configured to replicate a graphical user interface ( GUI)
environment of the document as recorded when the note was originally
authored." Final Act. 4 (citing O'Rourke col. 6, 11. 29-43; col. 7, 11. 15-24).
The Examiner finds that O 'Rourke "teaches creating snapshots associated
with each of the documents in a project, where the snapshot is a condensed
image of the actual computer screen, in the document window, at the time
that the document was last closed, or at the time that the application program
was closed with the document opened." Id.
Appellants argue O 'Rourke is deficient because its snapshots are of
the document, and not of a computer screen. App. Br. 28. Appellants
further argue O 'Rourke's snapshot "does not assist in or contribute in any
way the replication of the elements of O'Rourke's GUI." Id. Appellants
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also argue that O 'Rourke's snapshot does not record the entire GUI, but only
the portion of the GUI including the document. Id. at 29. Appellants further
argue O 'Rourke's "condensed image does not include or provide
information comprising a size and a position for at least one open GUI
window in the GUI environment when the note was created." Reply Br. 29.
We do not find these arguments persuasive. We note that the
Examiner relies on O 'Rourke only to show it was known in the art that state
information (i.e., the appearance of a document at the time it is closed) could
replicate the GUI environment of the document. The Examiner does not rely
on O'Rourke to teach size and positioning information. Rather, the
Examiner cites Hilerio as teaching that state information can include size
and positioning information for a GUI environment, and that Madan and
Rivette are relied upon as teaching that such an environment includes a note
creation environment.
With respect to Appellants' argument that O 'Rourke teaches only
replicating a document and not a snapshot of the entire computer screen,
Appellants' Specification makes clear that the GUI environment relates to
the program window of the document itself, and not to the broader GUI
desktop. See, e.g., Spec. ,r 6 ("The context information may further include
GUI information/or the GUI window used to display the target document
when the note was originally taken, such as position of a GUI window, size
of a GUI window, a scroll position of a GUI window.").
We also agree with the Examiner's response which notes that "claim 1
of O'Rourke expressly teaches 'snapshot means for automatically recording
in the memory a snapshot graphically representative of a screen produced by
the application during execution of the application program' and therefore
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teaches recording the application screen and not the document itself without
the application screen." Ans. 22. We also are not persuaded by Appellants'
contention that O 'Rourke does not contribute to replication of the elements
of its GUI. As explained by the Examiner, 0 'Rourke teaches that the
snapshots "provide an extremely convenient way for retrieving a given
document based upon its appearance, rather than upon a brief and often
cryptic document or file name." Id. (citing O'Rourke col. 6, 11. 39--42). In
this way, O'Rourke teaches a document's appearance at the time of the
snapshot is useful as context for retrieving the document at a later time.
Finally, as we explained above, we also are not persuaded by Appellants'
argument that O 'Rourke's condensed image lacks size and position
information because the Examiner relies on Hilerio and not O 'Rourke as
teaching this particular portion of the claim.
Third Issue
Claim 1 also recites the limitation "the state information comprising a
size and a position for at least one open GUI window in the GUI
environment when the note was created." App. Br. 38 (Claims Appendix).
The Examiner finds that this limitation is obvious in view of Hilerio' s use of
"task sessions to save state information associated with a web application to
the system, including window positioning, window sizes, and history and the
like." Final Act. 4 (citing Hilerio ,r,r 177-186).
Appellants argue the Examiner has erred because Hilerio does not
relate to saving state information "when [a] note was created" because "[ t ]he
saving/storage of state information in Hilerio does not relate to notes in any
[discernible] manner." App. Br. 30 ( emphasis omitted).
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We are not persuaded by this argument. Hilerio demonstrates that it
was known in the art to save state information including window size in
positioning information. Hilerio does not explicitly disclose storing state
information when a note is created. Rather, it describes doing so in
connection with the creation of a task. However, the standard for
determining whether a claim is obvious is "an expansive and flexible
approach." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,415 (2007).
Although not identical to the creation of a note, the task sessions described
by Hilerio render obvious the recited "notes" because, like the recited
"notes," the task sessions allow a user to reference information within the
target document using information stored outside of the target document.
As explained by the Examiner, "[ w ]hen a work is available in one
field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one." Ans. 24 ( citing
KSR, 550 U.S. at 417). Here, we agree with the Examiner that it would have
been obvious to apply Hilerio' s storing of state information in the context of
a notes application, as taught by Madan. Id. at 418 ("[T]he [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ").
Fourth Issue
Claim 1 also recites the limitation that "the note being presented
alongside a selectable icon that when clicked or selected opens the document
such that a position and a size of a GUI window is to be the same as in the
state information." App. Br. 38 (Claims Appendix). The Examiner relies on
the combined teachings of Madan and Hilerio for this limitation. Final Act.
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5 ( citing Madan ,r,r 42, 57----62 and Hilerio ,r,r 92, 99, 177-186). More
specifically, the Examiner finds that "Hilerio teaches opening an application
with the task bar icon or from a Uump list], and teaches re-opening a web
application to restore or re-hydrate the state information for the web
application." Ans. 25.
Appellants again challenge the relevance of Hilerio, arguing that
because it does not explicitly disclose the use of notes it cannot render the
disputed limitation obvious. However, as we discussed above, applying
Hilerio 's teachings in the context of a notes application would have been
obvious in light of the teachings of Madan. Accordingly, we are not
persuaded by this argument.
Fifth Issue
The Examiner provides the following rationale for combining the
cited references:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to have combined the electronic
sticky notes taught by Madan with the system for linking notes
to web pages taught by Rivette, and the snapshots and project
taught by O'Rourke, and the methods of saving application state
information taught by Hilerio, since Madan disclosed that the
electronic sticky note includes a content surface which may
receive and display a variety of types of annotation content
including files and rich text, icons to launch the files, as well as
tool controls (par. 0038-39), and since Rivette disclosed
electronic notes with the additional features of linking to web
pages in different applications, and O'Rourke disclosed
snapshots of different application program screens, it would have
been obvious to combine the disclosed elements, according to the
disclosed programming techniques, in order to achieve
predictable results (KSR). Further, it would have been obvious
to one of ordinary skill in the art at the time of the invention to
have combined O 'Rourke with Madan, Rivette, and Hilerio
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because O'Rourke recognized that there was a need in the art for
a technique for permitting visual cataloging of documents that
could be used for all documents, regardless of their internal
format ( col. 1, 1. 2-8), and therefore could have provided this
benefit to Madan, Rivette, and Hilerio.
Final Act. 6-7. The Examiner further explains:
[T]he references directed saving and reproducing GUI state
(O'Rourke, Hilerio) are combined with prior art directed to note
applications (Madan) because they recite graphical user interface
elements and techniques such as displaying windows and saving
window state, which enable the display of text and graphics and
therefore would enable the display of a note. The references
disclose a note application program (Madan, Rivette), saving and
reproducing a window state, and displaying a preview window
(Hilerio ), a snapshot to save the state of an application GUI
(O'Rourke), and the combination of references discloses each
and every element of claim 1.
Ans. 28-29.
Appellants challenge the Examiner's rationale for combining the
references. App. Br. 32-35. Appellants argue the Examiner's rationale is
flawed because a person of ordinary skill in the art would not have known
how to substitute a preview window ( as taught by Hilerio) into a notes
application (as taught by Madan and Rivette). App. Br. 34. Appellants also
contend "those skilled in the art ( with or without the benefit of the cited
references) would be unable to implement the snapshot technology in
0 'Rourke into technology configured to replicate a graphical user interface
( GUI) environment of the document as recorded when the note was
originally authored." App. Br. 34. However, Appellants do not explain
what the level of skill in the art is, nor do they provide any description of the
capabilities necessary to combine the references this skilled artisan would
have lacked. Moreover, to the extent Appellants argument is based on a
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failure of the prior art to enable the prior art combination or the claimed
invention, we do not agree. First, our reviewing court has held that "[ u ]nder
§ 103, a reference need not be enabled; it qualifies as a prior art, regardless,
for whatever is disclosed therein." Amgen Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003). Second, even if such an
enablement requirement existed, a prior art patent is presumed to be
enabling, and the burden lies with the Applicant to show that it is not. Id. at
1355. Appellants have not provided sufficient argument or evidence to rebut
this presumption.
Contrary to Appellants' assertions, the Examiner provides a detailed
explanation for why an ordinarily skilled artisan would have combined the
references, and finds specifically the claimed invention amounts to only
predictable use of prior art elements according to their established functions.
See KSR, 550 U.S. at 417. Although Appellants assert this combination
relies on hindsight, they offer no specific explanation for how this is so. In
sum, we determine the Examiner's rationale for combining the cited
references is reasonable, consistent with controlling law, and supported by
sufficient rational underpinnings drawn from evidence in the record. See
KSR, 550 U.S. at 418 ("[T]here must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
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DECISION
We affirm the Examiner's rejection of claims 1--4, 7-11, 14--18, and
21-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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