2019006451 (P.T.A.B. Mar. 2, 2021)

MICROSOFT CORPORATION

Patent Trials and Appeals BoardMar 2, 2021

2019006451 (P.T.A.B. Mar. 2, 2021)

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. 13/672,707 11/09/2012 Keyur Rahul Patel 337172.01 4891 69316 7590 03/02/2021 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER LEE, JUSTIN S ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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 KEYUR RAHUL PATEL and DANIEL CHAPMAN BATTAGIN Appeal 2019-006451 Application 13/672,707 Technology Center 2100 Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and IRVIN E. BRANCH, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 22–41, which are all pending claims (Non-Final Act. 2). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use “Appellant” to reference the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Microsoft Technology Licensing, LLC.” Appeal Br. 2. Appeal 2019-006451 Application 13/672,707 2 STATEMENT OF THE CASE Appellant’s Invention Appellant describes the invention as follows: Methods and systems are provided for procuring functions, including Web service functions, for use in a spreadsheet application. A Web service function manifest can be managed by a function marketplace. A client device running a spreadsheet application can request available functions from the function marketplace. Information about available functions can be received by the client device. A selection of a function can be made in order to receive the manifest associated with the selected function. A local copy of the manifest may be stored for repeated invocation. Spec., Abst. Claim 22, reproduced below, is illustrative of argued subject matter. 22. A method to provide custom spreadsheet application functions from a function marketplace, comprising: receiving, at a server, a request from a spreadsheet application for one or more available functions at the function marketplace, the functions comprising at least one Web service function associated with a Web service; providing information indicating available functions; receiving a selection of one of the available functions; and providing a manifest of the selected one of the available functions, wherein the manifest of the selected one of the available functions is enabled to be incorporated as a built-in function of the spreadsheet application to enable functionality of the selected one of the available functions from within the spreadsheet application. Appeal Br., Claims Appendix. Appeal 2019-006451 Application 13/672,707 3 Prior Art Appsverse’2012 “Calculator for iPad & Spreadsheet App Pro.” June 12, 2012, available online at https://itunes.apple.com/us/ app/calculator-for-ipad-free-spreadsheetapp- pro/id736780223?mt=8 Holland Charlie Holland, “Chapter 12: Excel Services (Share Point 2010 Web App The Complete Reference),” McGraw-Hill (ISBN<<0071744568/9780071744560>>) March 10, 2011 Calc’2010 Apache OpenOffice Calc Project, Add-In wizard wikipage, March 28, 2010, available at https:// wiki.openoffice.org/wiki/Calc/Addln/Project_ Type Rejection Claims 22–41 are rejected under 35 U.S.C. § 103(a) as unpatentable over Appsverse, Holland, and Calc’2010. Non-Final Act. 3–43. OPINION All of Appellant’s arguments stand on the contention that claim 22’s function (“one or more available functions”) is downloaded by the spreadsheet application.2 Appeal Br. 9–14; Reply Br. 4–5; see also 37 C.F.R. § 41.37(c)(1)(iv) (claim 1 is representative). Because this contention is not commensurate with claim 22’s scope, we sustain the rejection. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”). 2 This is a dispositive issue. We therefore do not address other contentions; e.g., whether the claimed function can be reasonably construed as a spreadsheet workbook. Appeal 2019-006451 Application 13/672,707 4 We are unpersuaded of Examiner error because claim 22 does not require downloading of the function by the spreadsheet application. We agree with the Examiner (Ans. 57) that the claimed function can be a cloud-computing function (i.e., requested by a client, performed on a server, and sending the results to the client). Claim 22 recites, in the preamble, a “method to provide custom spreadsheet application functions from a function marketplace” (emphasis added). Plain meanings of “provide” include “to make available; furnish” (e.g., “to provide employees with various benefits”); “to supply or equip” (e.g., “to provide the army with new fighter planes”); and “to afford or yield.” PROVIDE. Dictionary.com (https://www.dictionary.com/browse/ provide?s=t). Thus, the preamble bespeaks any fulfillment of a function. Claim 22 recites “the functions compris[e] at least one Web service function associated with a Web service” (emphasis added). This claim recitation encompasses a cloud-computing function performed over the Internet. See Ans. 4 (“web . . . functions via Sharepoint”). Claim 22 recites “selection of one of the available functions.” This claim recitation encompasses a cloud-computing function selected by a client. See id. at 5 (“requests for a Chart 1” (citing Holland 11)); Holland 11 (“enter the . . . URL . . . specif[ying] that you want Chart 1”). Claim 22 recites “providing a manifest of the selected . . . function[], wherein the manifest . . . incorporated as a built-in function of the spreadsheet application to enable functionality of the selected . . . function[] from within the spreadsheet application” (emphasis added). The Specification shows that an art-recognized meaning of “manifest” is metadata describing and “used . . . to execute” a function. Spec. ¶ 48. The Appeal 2019-006451 Application 13/672,707 5 Specification provides a “summary” (section title) example whereby a spreadsheet application uses “manifest files describing a Web service” (Spec. ¶ 5) to “call[] a . . . web function” (id. ¶ 4) and the user prompts this process “in a same manner [as] entering a traditional spreadsheet function” (id.). Thus, the claim recitations indicated above encompasses a cloud-computing function whereby a client spreadsheet-application incorporates a manifest that enables the application to call the function in response to a client-user input entered “in a same manner [as] entering a traditional spreadsheet function” (id.). In re Papst Licensing Digital Camera Patent Litig., 778 F.3d 1255, 1270 (Fed. Cir. 2015) (“We do not generally construe the claims of a patent to exclude a preferred embodiment.”); but see also In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification[.]”). The manifest is embodied, expressed, etc., in a manner similar to a traditional spreadsheet function and, in that regard, “incorporated as a built-in function of the spreadsheet application to enable Appeal 2019-006451 Application 13/672,707 6 functionality of the selected . . . function[] from within the spreadsheet application” (claim 1). Thus, claim 22 does not require the application to, as argued, download the respective function. As a result, we affirm the Examiner’s decision to reject claims 22–41. DECISION SUMMARY Claims Rejected 35 U.S.C. References Affirmed Reversed 22–41 103 Appsverse, Holland, Calc’2010 22–41 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED