Ex Parte Yan et al

Patent Trial and Appeal Board

Feb 14, 2018

12629061 (P.T.A.B. Feb. 14, 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.
12/629,061 12/02/2009 Xin Yan 327892.01 7116
69316 7590 02/16/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
TILLERY, RASHAWN N
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
02/16/2018 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 XIN YAN, JOSEPH S. BINDER,
MALIK BILAL WAHEED, and SUDHANSHU KULKARNI
Appeal 2016-001956
Application 12/629,061
Technology Center 2100
Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001956
Application 12/629,061
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1, 6—12, 14—18, 20, 21, and 23—27. Claims 2—5, 13, 19, and 22 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to an updateable running application. Spec.,
Title. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method, comprising:
compiling an initial computer application development
project into a compiled computer application, the initial
application development project being different from the
compiled application;
running the compiled application after the compiling into the
compiled application;
loading initial user interface definitions for the application
into memory;
while continuing to run the compiled application, performing
the following:
executing the application to use the initial user interface
definitions in the memory to present an initial user
interface for the application;
the running application receiving user input at the running
application, the user input requesting one or more
updates to the initial user interface definitions, and the
user input received at the running application being the
same as the user input requesting the one or more
updates to the initial user interface definitions; and
in response to the user input, making the one or more
updates to the initial user interface definitions in the
memory to produce updated user interface definitions
1 Appellants identify Microsoft Technology Licensing, LLC, as the real
party in interest (App. Br. 3).
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in the memory, and executing the application to use the
updated user interface definitions in the memory to
present an updated user interface for the application,
the one or more updates being made from the running
application;
communicating the one or more updates from the running
application to a development tool running in a different process
from the application; and
updating the initial application development project to
produce an updated application development project that reflects
the one or more updates to the initial user interface definitions.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Zaika
Booth
Yaseen
Dura
US 2004/0056894 A1
US 7,000,220 B1
US 2007/0226637 A1
US 2013/0167123 A1
Mar. 25, 2004
Feb. 14, 2006
Sept. 27, 2007
June 27, 2013
REJECTIONS
The Examiner made the following rejections:
Claims 1, 6—8, 10—12, 14—18, 20, 21, and 23—27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Dura, Zaika, and Booth.
Final Act. 2—9.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dura, Zaika, Booth, and Yaseen. Final Act. 9-10.
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APPELLANTS’ CONTENTIONS
1. Appellants contend the combination of Dura and Booth is improper
because:
a. Booth teaches away from Dura’s system in which
i. compiling is performed during application development
in contrast to Booth’s avoidance of a compiling step
(App. Br. 13—20; Reply Br. 4—5), and
ii. both an application development project and a runtime
application are compiled from a project in contrast to
Booth’s single application for both designing and running
an application (App. Br. 15—17, 20-21; Reply Br. 5—7);
and
b. There is no evidence of a reason for the applied combination of
references (Reply Br. 7—8).
2. Appellants contend Booth’s avoidance of a compiling step teaches
away from the claimed dual structure of compiling both (a) an initial
application development project into an initial application as required
by independent claim 1, and (b) an updated application project as
required by claim 21. App. Br. 22—23; Reply Br. 8—9.
3. Appellants contend Booth’s avoidance of a compiling step teaches
away from compiling source code into object code as required by
claim 25. App. Br. 23—24; Reply Br. 9.
ANALYSIS
Appellants’ contentions are unpersuasive of reversible Examiner error.
We adopt as our own (1) the findings and reasons set forth by the Examiner
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in the action from which this appeal is taken (Final Act. 2—12) and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 2-4) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Claim 1
The Combination of Dura and Booth —
Teaching Away by Booth
In connection with contention 1 (a)(i) Appellants argue Booth’s
“touting [of] its combined run/design mode environment as being
advantageous precisely because it allows for development without
compiling” teaches away from combining Booth in a method that includes
compiling as taught or suggested by the combination of Dura and Zaika.
App. Br. 13 (emphasis added). According to Appellants, because Booth
teaches away from compiling, one of ordinary skill in the art would not
modify the combination of Dura and Zaika to incorporate the features of
Booth relied upon in the rejection (see Final Act. 5—6 (addressing the steps
of receiving user input at the running application, communicating updates,
and updating)) in an effort to arrive at the claimed invention. App. Br. 13—
14.
The Examiner responds, finding Booth’s avoidance of compiling
during program development is consistent with Appellants’ reasons for
compiling prior to and after program development. Ans. 2—3. The Examiner
directs attention to paragraph 3 of the Specification disclosing a problem of
needing to compile a running application after each update resulting in a
slowdown of program development, a problem solved by “allowing] an
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application’s user interface to be updated while the [compiled] application is
running.” Ans. 2. According to the Examiner, by providing a development
process that avoids compiling a running application after each user update,
Booth’s teaching is consistent with the claimed invention in that changes to
the running application can be made without recompiling. Ans. 2—3. The
Examiner further finds Booth does not teach away from compiling an initial
application. Ans. 2. According to the Examiner
it would not have been unreasonable[2] for a person having
ordinary skill in the art at the time of the invention to glean the
advantages of including Booth’s teachings of updating a running
application in Dura’s system for compiling an initial application
development project into a compiled application. One would
have been motivated to do so in an effort to allow an
application’s user interface to be updated while the application is
running, which may speed up the development process.
Ans. 3. Appellants reply, arguing Booth avoids compiling during the entire
development process including during the initial creation of the software.
Reply Br. 4. Appellants argue “Booth teaches away from compiling during
development, and Booth explicitly teaches that this development includes
the initial creation of the software.” Id.
We are not persuaded by Appellants’ assertions that the prior art
teaches away from the combination. “Obviousness may be defeated if the
prior art indicates that the invention would not have worked for its intended
purpose or otherwise teaches away from the invention.” Meiresonne v.
Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (citing DePuy Spine, Inc.
2 Although the Examiner’s statement is in the negative, for purposes of this
decision, we consider the statement as equivalent to an affirmative finding
that “it would have been reasonable for a person having ordinary skill in the
art at the time of the invention to . . . .”
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v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009)).
The prior art teaches away “when a person of ordinary skill, upon reading
the reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken” in the claim. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731,
738 (Fed. Cir. 2013). However, a reference that “merely expresses a general
preference for an alternative invention but does not criticize, discredit, or
otherwise discourage investigation into” the claimed invention does not
teach away. Id.
As found by the Examiner, Booth discloses a system that speeds
development by allowing a user to update a running program using a
development system that accepts and implements changes. “In a first aspect
of the invention, a software development environment includes combined
run mode and design mode functions and code which allow a user to
seamlessly toggle between run mode and design mode without compiling or
otherwise converting the software application.” Booth, Abstract. Thus,
Booth discloses a method that allows updating a running application without
recompiling by providing a development environment. Similarly,
Appellants’ method allows updating a running application by incorporating
an updating capability into a compiled version of the application to avoid
recompiling to effectuate updates. Therefore, we agree with the Examiner in
finding that Booth’s disclosure of avoiding the need to compile to implement
an update suggests, rather than teaches away from, the claimed invention.
Furthermore, nothing in Booth specifically or persuasively disparages
compiling an application, either while an application is running or as part of
an initial creation of the application. Even if a person of ordinary skill
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understood that compiling, in general, requires additional time and
resources, we are not persuaded that this amounts to a teaching away from
the combination. “[C]ase law does not require that a particular combination
must be the preferred, or the most desirable, combination described in the
prior art in order to provide [the] motivation [or reason] for the current
invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). To teach
away, prior art must “criticize, discredit, or otherwise discourage the
solution claimed.” Id. at 1201. Mere disclosure of alternative embodiments
is not a teaching away. Id. Appellants do not identify any teaching in Booth
that so disparages compiling an application as to affirmatively discourage its
use as claimed.
We are also unpersuaded by Appellants’ argument that Booth teaches
away from “compiling from a development project that is also to be updated
to reflect updates to the application” because it “would be contrary to
Booth’s teaching . . . away from maintaining and modifying both an
application development project from which the developed application is
compiled and the compiled application itself during development.” Reply
Br. 5. As an initial matter, this argument is waived as untimely because it
was presented for the first time in Appellants’ Reply Brief.3 Furthermore,
3 “Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”
37 C.F.R. § 41.41(b)(2); see also Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPA1 2010) (explaining that arguments and evidence not presented
timely in the principal brief, will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the principal brief); see also Ex parte Borden, 93
USPQ2d 1473, 1474 (BPA1 2010) (informative) (“Nor is the reply brief an
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we again find any preferences disclosed or suggested by Booth’s
embodiments do not rise to the level of disparagement of alternative
methods including the claimed running of a compiled application
incorporating an updatable user interface. Teaching an alternative method
does not teach away from the use of a claimed method. In re Dunn, 349 F.2d
433, 438 (CCPA 1965); see also Ex parte Shuping, No. 2008-0394, 2008 WL
336222, at *2 (BPAI Feb. 5, 2008) (“[TJeaching a way is not teaching
away.” (citation omitted)).
In connection with contention 1 (a)(ii) the Examiner finds Booth’s
client that sends notice to a software application server of a modification
teaches or suggests “communicating the one or more updates from the
running application to a development tool running in a different process
from the application” as recited by claim 1. Final Act. 5 (emphasis added).
Appellants argue, because Booth “has the same application for run mode and
design mode,” the reference teaches away from Appellants’ “claims [which]
explicitly recite the distinction between the different application
development project and compiled runtime application.” App. Br. 13. The
Examiner responds by finding, in contrast to the embodiment of Booth
argued by Appellants, Booth additionally discloses an embodiment including
a software application server distinct from a development application server.
Ans. 3. Appellants reply, arguing, in connection with the referenced
embodiment, “Booth makes it clear that the run and design modes are still
combined in a single unified application.” Reply Br. 6.
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
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Appellants’ argument is not persuasive of Examiner error. Appellants
fail to provide sufficient evidence or reasoning to persuade us that Booth so
disparages having an application under development and an associated
development tool running in different processes as to constitute a teaching
away of the argued limitation. Rather than teaching away, Booth’s client
and separate software application server teach or suggest partitioning
software into different processes. Appellants fail to provide sufficient
evidence or explanation distinguishing the different processes claimed from
the processes of Booth’s client and software application server. In
particular, one skilled in the art at the time of the invention would have
understood a “process” to mean “[a] program or part of a program; a
coherent sequence of steps undertaken by a program.”4 Thus, under a broad
but reasonable interpretation of a process, we agree with the Examiner in
finding Booth teaches or suggests a first program (i.e., the claimed
application), running in a different process than a second program (i.e., the
development tool of claim 1).
The Combination of Dura and Booth —
Reason for Combining
Appellants’ contention 1(b) asserts the Examiner’s reasoning for
combining references is insufficient for lack of “evidence of any such
motivation in the cited references” (Reply Br. 8). This argument is raised
for the first time in the Reply Brief and, as such, is untimely and waived. 37
C.F.R. § 41.41(b)(2). Although Appellants argue the combination is
improper in the Appeal Brief (App. Br. 17), that argument is premised upon
Booth teaching away from the asserted combination rather than the
4 Microsoft Computer Dictionary 423 (5th ed. 2002).
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Examiner failing to articulate a reason based on motivation disclosed by the
references themselves as argued for the first time in the Reply Brief.
Furthermore, even if timely presented, the argument that the Examiner
has failed to provide a reason to combine the references is unpersuasive.
The Federal Circuit has “[held] that while an analysis of obviousness always
depends on evidence that supports the required Graham factual findings, it
also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009); see also Nat’l Steel Car, Ltd. v.
Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (“It has
long been the law that the motivation to combine need not be found in prior
art references, but equally can be found ‘in the knowledge generally
available to one of ordinary skill in the art.”’ (quoting In re Jones, 958 F.2d
347, 351 (Fed. Cir. 1992))). The Court further instructs that
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Herein the
Examiner concludes that “[i]t would have been obvious ... to include
Booth’s teachings in the modified Dura’s user interface in an effort to [save]
time and conserve resources by combining the run mode and the design
mode so that software may be developed and run simultaneously without the
need for intermediate conversions or compiling.” Final Act. 5—6. The
Examiner further finds motivation to combine Booth and Dura because
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doing so would “allow an application’s user interface to be updated while
the application is running, which may speed up the development process.”
Ans. 3. Furthermore, having distinct processes for the application and
development tool is one of a finite number of predictable solutions that
includes the alternative solution wherein the tool and application run as a
single process. Therefore, in the absence of sufficient evidence or argument
to the contrary, we find the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness.
For the reasons discussed above, we sustain the rejection of
independent claim 1 and, for the same reasons, the rejection of independent
claims 11 and 165 under 35 U.S.C. § 103(a) together with the rejections of
dependent claims 6—10, 12, 14, 15, 17, 18, 20, 23, 24, 26, and 27 which are
not argued separately with particularity.
Claim 21
Although Appellants contend separate argument is presented in
support of the patentability of claim 21 (App. Br. 22—23), Appellants’
argument is nonetheless based on the premises that “Booth teaches away
from ... a dual structure during application development” as required by
claim 1 (App. Br. 22) and that Booth “teach[es] away from having an
updateable running application as in the claims” (App. Br. 23). As discussed
above, Appellants fail to provide sufficient evidence or argument to persuade
us that Booth so disparages the asserted combination as to teach away from
5 Appellants’ contentions of error in connection with independent claims 11
and 16 (App. Br. 24—28) are repetitive of those presented in connection with
independent claim 1 and are unpersuasive for the reasons discussed in
connection with the rejection of claim 1.
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making the claimed combination. Accordingly, we sustain the rejection of
claim 21 under 35 U.S.C. § 103(a).
Claims 25
Appellants’ arguments in connection with claim 25 are likewise
unpersuasive of Examiner error for lack of sufficient evidence or argument
to persuade us that Booth so disparages the asserted combination as to
constitute a teaching away from making the claimed combination.
Accordingly, we sustain the rejection of claim 25 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s decision to reject claims 1, 6—12, 14—18,
20, 21, and 23-27 under 35 U.S.C. § 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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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