Microsoft Corporation

Patent Trials and Appeals Board

May 5, 2020

14210109 - (D) (P.T.A.B. May. 5, 2020)

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.
14/210,109 03/13/2014 Amit K. Sinha 340222.01 8461
69316 7590 05/05/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
LEE, JUSTIN S
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
05/05/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIT K. SINHA, KAVITHA BALASUBRAMANIAN,
DAVID KOZLOWSKI, MICHAEL I. BOYSENKO, and
STEPHEN THOMAS WELLS
Appeal 2019-001257
Application 14/210,109
Technology Center 2100
Before JASON V. MORGAN, ERIC B. CHEN, and
JOHN F. HORVATH, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–20, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 1.
Appeal 2019-001257
Application 14/210,109
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CLAIMED SUBJECT MATTER
The invention is directed toward:
a service application that supports a user interface to a service
[and that] receives data communicated by the service and
identifies at least a service item to present in at least one of
various views rendered in the user interface. The service
application then identifies with which of the views to associate
the service item and stores the service item in association with
an identified view or views.
Spec. ¶ 7.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. One or more computer readable storage media having
program instructions stored thereon comprising a service
application for facilitating a user interface to a service that,
when executed by a processing system, directs the processing
system to at least:
present a view of a plurality of views in the user interface
to the service;
identify, from data communicated by the service, at least
a service item to present in at least one other view of the
plurality of views;
identify with which of the plurality of views to associate
the service item;
prior to the user navigating to the other view, translate a
format of the service item into a presentation format in which
the service item is displayed when the other view is rendered in
the user interface; and
prior to the user navigating to the other view, store the
service item in the presentation format in association with at
least the other view of the plurality of views identified for
association with the service item.
Appeal 2019-001257
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REJECTIONS
Claims 1 and 10 stand rejected under 35 U.S.C. § 112 for failing to
comply with the written description requirement. Final Act. 2–3.
Claims 1–6, 9–15, 18, and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Baude and Wilkin. Final Act. 4–16.
Claims 7, 8, 16, and 17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Baude, Wilkin, and Clark. Final Act. 16–18.
Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Baude, Wilkin, and Manjoo. Final Act. 18–20.
OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. Except as further discussed below,
we disagree with Appellant’s contentions, and adopt as our own the findings
and reasons set forth by the Examiner in the Final Action and Examiner’s
Answer. We highlight the following for emphasis.
REJECTIONS UNDER 35 U.S.C. § 112
The Examiner rejects claims 1 and 10 as failing to comply with the
written description requirement. See Final Act. 2–3. Specifically, the
Examiner finds the Specification fails to show Appellant was in possession
of an invention in which the format of a service item (claim 1) or email
(claim 10) is translated into and stored in the presentation format of another
application view “prior to the user navigating to the other view.” Id.
Although Appellant does not formally contest the rejection,
Appellant’s Summary of Claimed Subject Matter identifies paragraph 25 as
support for the subject matter of claim 1 and paragraphs 25 and 73 as
support for the subject matter of claim 10. See Appeal Br. 2–4.
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Application 14/210,109
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We agree with Appellant that paragraphs 25 and 73 support
“translating” and “storing” service items or emails prior to navigating to
other application views as recited claims 1 and 10. The Specification
discloses that “translating a service item to a presentation format may occur
prior to storing the service item” so that the service item is ready to be
“render[ed] in a user interface in the event that a corresponding view is
selected by a user.” Spec. ¶ 25 (emphases added). The Specification further
discloses that the “service item” may be an email. Id. ¶ 73. Although these
passages do not literally state that emails and service items are translated
into and stored in the presentation formation of another view “prior to the
user navigating to the other view,” they fairly convey to a person skilled in
the art that that is when the translating and storing is done. See In re Alton,
76 F.3d 1168, 1175 (Fed. Cir. 1996) (“If . . . the specification contains a
description of the claimed invention, albeit not in ipsis verbis (in the
identical words),” then to establish unpatentability for lack of written
description “the examiner . . . must provide reasons why one of ordinary
skill in the art would not consider the description sufficient.”).
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 10 under 35 U.S.C. § 112 for lack of written description.
REJECTIONS UNDER 35 U.S.C. § 103
The Examiner rejects claims 1–6, 9–15, 18, and 19 as unpatentable
over Baude and Wilkin, claims 7, 8, 16, and 17 as unpatentable over Baude,
Wilkin, and Clark, and claim 20 as unpatentable over Baude, Wilkin, and
Manjoo. Final Act. 4–20.
Appellant argues the Examiner has erred because “neither Baude nor
Wilkin, either alone or in combination, teaches or suggests all the limitations
Appeal 2019-001257
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recited in claim 1.” Appeal Br. 7. Specifically, Appellant argues that
neither Baude nor Wilkin teaches or suggests “storing a service item in its
presentation format prior to a user navigating to a view containing said
service item.” Id. at 5.
The Examiner finds Baude teaches an email application that presents
different views of emails received from an email server (e.g., expanded and
collapsed folder views), and that this disclosure teaches “present[ing] a view
of a plurality of views in [a] user interface to [a] service,” “identify[ing] . . .
at least a service item to present in at least one other view of the plurality of
views,” and “identify[ing] with which of the plurality of views to associate
the service item.” See Final Act. 4–6 (citing Baude ¶¶ 25, 33, Figs. 1, 3,
7A–B). That is, the Examiner finds Figure 3 of Baude discloses presenting a
first email service view (i.e., one in which the “Baileys” folder is not
expanded), receiving messages 1–3 from an email server, and identifying
messages 1–3 as service items to present in a second or “other” email service
view as shown in Figure 7A (i.e., one in which the “Baileys” folder is
expanded). Id. The Examiner further finds that Figure 7A of Baude
discloses that messages 1–3 are associated with the expanded folder view
shown in Figure 7A because they can be displayed in that view. Id.
The Examiner further finds that Baude’s email application can be
modified based on Wilkin’s teaching that email applications can receive web
feed articles, convert the articles from RSS (Real Simple Syndication)
format into an email application format, filter the articles into an RSS folder
that is different from the incoming email folder, and store the articles in the
RSS folder. Id. at 7 (citing, e.g., Wilkin Figs. 3, 7). The Examiner finds that
when Baude’s email application is so modified, it teaches “prior to the user
navigating to the other view [expanded RSS folder], translat[ing] a format of
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the service item [RSS format] into a presentation format in which the service
item is displayed [email application format] when the other view is rendered
in the user interface; and . . . stor[ing] the service item in the presentation
format in association with at least the other view.” Id. at 6 (citing, e.g.,
Wilkins ¶¶ 8, 10). That is, the Examiner finds Buade’s modified email
application can receive RSS articles when viewing emails in the “inbox” of
the email application, convert the received articles from RSS format to email
application format, and store the articles in an RSS folder for subsequent
display when the user expands the RSS folder as shown in Figure 7 of
Wilkin. Id. at 6–7.
Appellant admits that Wilkin teaches converting RSS messages from
an RSS format to an email application format, but argues that “doing so is
not the same as translating an email (i.e., service item) into its presentation
format.” Appeal Br. 6. Appellant further argues that claim 1 “does not
convert one item into another item, but rather translates a format of a service
item into a presentation format in which the service item is displayed.” Id.
We are not persuaded by Appellant’s arguments.
We first note the Specification does not limit the term “service item”
to an email, and does not prohibit interpreting Wilkin’s RSS article as a
“service item.” See Spec. ¶ 36 (disclosing an “email, calendar item, blog
post, news clip, and an instant message are non-limiting examples of a
service item.”) (emphasis added). We further note the Specification does not
draw the same distinction between “translating” and “converting” that
Appellant now seeks to draw in its Appeal Brief. Id. ¶ 39 (disclosing
“service application 102 may also translate or convert service item 105”)
(emphasis added). This disclosure in Appellant’s Specification is consistent
with the Examiner’s finding regarding the plain and ordinary meaning of
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Application 14/210,109
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“converting” and “translating.” See Ans. 8–9. Specifically, the Examiner
finds, and we agree, that “there is not much of a difference in meaning
between ‘converting’ and ‘translating’” because the Merriam-Webster
dictionary defines “converting” to mean “changing from one form, state, etc.
to another” and defines “translating” to mean “changing something from one
form to another.” Id. Therefore, we agree with the Examiner that
converting an RSS article from RSS format to email application format reads
on “translat[ing] a format of the service item into a presentation format in
which the service item is displayed” as recited in claim 1.
Moreover, we agree with the Examiner that Figure 3 of Wilkin
teaches translating the RSS article (step 315) from RSS format to email
application format prior to filtering (step 330) and storing (step 335) the
article in a designated RSS folder, such as the “Apple Hot” folder 504
shown in Figure 7. See Ans. 7, 9 (citing Wilkin ¶¶ 31, 39, 41, 42, 52, Figs.
3, 5, 7). We further agree with the Examiner that Wilkin teaches performing
these translating and storing steps “prior to the user navigating to the other
view” because the “[u]ser can . . . provide input in the email application to
navigate to the ‘Apple Hot’ 504 folder view after the conversion/storing of
[the] service item is performed.” Id. at 9.
Accordingly, for the reasons discussed above, we affirm the
Examiner’s rejection of claim 1 as unpatentable over the combination of
Baude and Wilkin. Appellant does not separately argue for the patentability
of claims 2–20. See Appeal Br. 7. Therefore, we affirm the Examiner’s
rejection of claims 2–20 for the same reasons.
Appeal 2019-001257
Application 14/210,109
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CONCLUSION
The Examiner’s rejection of claims 1 and 10 under 35 U.S.C. § 112
for failing to comply with the written description requirement is not
sustained.
The Examiner’s rejection of claims 1–6, 9–15, 18, and 19 under
35 U.S.C. § 103 as unpatentable over Baude and Wilkin is sustained.
The Examiner’s rejection of claims 7, 8, 16, and 17 under 35 U.S.C.
§ 103 as unpatentable over Baude, Wilkin, and Clark is sustained.
The Examiner’s rejection of claim 20 under 35 U.S.C. § 103 as
unpatentable over Baude, Wilkin, and Manjoo is sustained.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § References/ Basis Affirmed Reversed
1, 10 112 Written
Description
1, 10
1–6, 9–15,
18, 19
103 Baude, Wilkin 1–6, 9–15,
18, 19

7, 8, 16, 17 103 Baude, Wilkin,
Clark
7, 8, 16, 17
20 103 Baude, Wilkin,
Manjoo
20
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED