Ex Parte Zeigler et al

Patent Trial and Appeal Board

Sep 15, 2016

11936940 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111936,940 11108/2007
47973 7590 09/19/2016
WORKMAN NYDEGGER/MICROSOFT
60 EAST SOUTH TEMPLE
SUITE 1000
SALT LAKE CITY, UT 84111
FIRST NAMED INVENTOR
Andrew Zeigler
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.
13768.2807 1759
EXAMINER
JIANG, HAIMEI
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
Docketing@wnlaw.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW ZEIGLER and JENNIFER C. TRAHAN
Appeal2015-005184
Application 11/93 6,940
Technology Center 2100
Before ALLEN R. MacDONALD, JON M. JURGOV AN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005184
Application 11/93 6,940
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-17 and 19-23. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
bracketing added).
1. A system comprising:
[(A)] one or more computer-readable storage media;
[(B)] a web browser embodied on the one or more computer-
readable storage media;
[(C)] a delete module embodied on the one or more computer-
readable storage media, the delete module being associated with the
web browser and being configured to:
[(i)] receive input to conduct a delete operation;
[(ii)] during a browsing session, ascertain whether a user
has an implied interest to retain an item targeted by the delete
operation that is implied from a user action other than user
selection of the item for retention, wherein the delete module
ascertains that a user has an implied interest to retain an item
based in part on whether the user recently browsed, using the
web browser, to the item and without additional user interaction
with the item;
[(iii)] delete the item if the user does not have an implied
interest in the item, but retain items that the user has selectively
defined are not to be deleted when a delete operation is
conducted; and
[(iv)] retain both the item if the user has an implied
interest in the item and the items that the user has selectively
defined are not to be deleted when a delete operation is
conducted; and
[(D)] a user interface module embodied on the one or more
computer-readable storage media, the user interface module being
associated with the web browser and being configured to enable a user
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Application 11/93 6,940
to selectively define the items that are not to be deleted when a delete
operation is conducted.
Rejections
The Examiner rejected claims 1-3, 6, 8-10, 13-16, and 19-23 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Kaply et
al. (US 2002/0191020 Al, Dec. 19 2002), Moody et al. (US 2005/0144157
Al, June 30, 2005), and Melton et al. (US 2008/0046840 Al, Feb. 21,
2008). 1
The Examiner rejected claims 4, 5, 7, 11, 12, and 17, under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kaply, Moody,
Melton, and Hom (US 2006/0218245 Al, Sep. 28, 2006). 2
Appellants' Contention3
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
In particular, claim 1 [claims] that the implied interest is "based
in part on whether the user recently browsed, using the web
browser, to the item and without additional user interaction
with the item." ... Consequently, deletion of a file via the
mechanism described in Kaply fails to provide a basis for the
1 Separate patentability is not argued for claims 2, 3, 6, 8-10, 13-16, and
19-23. Although separate headings are provided for numerous of these
claims, the discussions therein merely repeat or reference the arguments
directed to claim 1. Except for our ultimate decision, these claims are not
discussed further herein.
2 Our decision as to claim 1 is determinative as to the rejection of claims 4,
5, 7, 11, 12, and 17. Therefore, except for our ultimate decision, these
claims are not discussed further herein.
3 This contention is determinative as to the rejections on appeal. Therefore,
Appellants' other contentions are not discussed herein.
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Appeal2015-005184
Application 11/93 6,940
feature to "delete the item if the user does not have an implied
interest in the item" as claimed.
App. Br. 13, emphasis added.
Melton fail[ s] to cure the deficiencies of Kaply described
above.
App. Br. 13.
Issue on Appeal
Did the Examiner err in rejecting claims 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief) that the Examiner has erred.
As to Appellants' above contention regarding an implied interest in an
item based in part on whether the user recently browsed to the item, we
agree with Appellants.
The requirement for an analysis supporting a§ 103 rejection is that
the Examiner show "the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007)(quoting 35 U.S.C. § 103) (emphasis added); id. at 418
("[T]he 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.").
The Examiner is correct in finding "Melton discloses that the system
automatically saves the most recently visited web pages by tracking the
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Application 11/93 6,940
user's interaction with the web page. [0003] of Melton." Final Act. 5. Then
the Examiner presents a statement that that it would have been obvious "to
modify the browsing history management system taught by Kaply to include
deleting method taught by Moody and method of retaining most recently
browsed items taught by Melton with the motivation being to allow the user
to keep intended items without interact with them." Final Act. 5. We agree
with the Examiner's reasoning as to Kaply and Moody (here and at pages 3-
4 of the Final Action). However, we disagree as to Melton. The Examiner
fails to articulate sufficient reasoning as to why an artisan would view
Melton's recently visited web pages as an implied interest to retain an item.
Rather, as to Melton's connection to Kaply and Moody, we find the
Examiner's statement to be conclusory.
We conclude that, as to the claimed implied interest "based in part on
whether the user recently browsed to the item," there is insufficient
articulated reasoning to support the Examiner's final conclusion that claim 1
would have been obvious to one of ordinary skill in the art at the time of
Appellants' invention.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-17 and 19-23 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
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Application 11/93 6,940
DECISION
The Examiner's rejections of claims 1-17 and 19-23 are reversed.
REVERSED
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