Microsoft Corporation

Patent Trials and Appeals Board

May 4, 2020

2019003188 (P.T.A.B. May. 4, 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.
14/089,663 11/25/2013 Mikhail Shatalin 330581-US-CNT 7676
69316 7590 05/04/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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 MIKHAIL SHATALIN, GUNJAN A. SHAH,
SHAWN T. OSTER, JOHNATHAN D. SHELLER,
ASHARAF A. MITCHAIL, AKHILESH KAZA and ALAN C.T. LIU
____________________

Appeal 2019-003188
Application 14/089,663
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JAMES W. DEJMEK, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 20. 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) (2018). According to Appellant, Microsoft Technology
Licensing, LLC, is the real party in interest. Appeal Br. 2.
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INVENTION
Appellant’s invention is directed to an information display system that
“separates rendering of information from receiving that information so that
the rendering portion can be quickly displayed to the user and the data can
arrive as it is available to provide further detail.” Spec. Abstract. Claim 1 is
illustrative of the invention and is reproduced below.

1. A computing device for displaying a user interface,
the computing device comprising:
a memory configured to store instructions; and
a processor configured to execute the stored instructions,
wherein execution of the stored instructions causes
the computing device to:
send information retrieval requests to one or more
remote devices requesting information
items;
prior to receiving the requested information items,
render a display that includes multiple
interface elements, the interface elements of
the multiple interface elements each
including a placeholder for a respective one
of the requested information items;
receive at least one of the requested information
items;
determine which of the multiple interface elements
is associated with the at least one received
information item;
bind the at least one received information item to
the determined interface element; and
update at least one of the placeholders in the
display, the updated display including the at
least one received information item.

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EXAMINER’S REJECTIONS2
The Examiner rejected claims 8 through 14 under pre-AIA 35 U.S.C.
§ 112, as being indefinite. Final Act. 3–4.
The Examiner rejected claims 1 and 15 under pre-AIA 35 U.S.C.
§ 102 as being anticipated by Baumgartner (US 2010/0153997 A1). Final
Act. 4–6.
The Examiner rejected claims 2 through 6, 8 through 11, 13, 14, and
16 through 19 under pre-AIA 35 U.S.C. § 103 as being unpatentable over
Baumgartner and Matsuura (US 2006/0129636 A1). Final Act. 6–11.
The Examiner rejected claims 7, 12, and 20 under pre-AIA 35 U.S.C.
§ 103 as being unpatentable over Baumgartner, Matsuura, and Bala (US
2003/0018644 A1). Final Act. 11–12.

Prior PTAB Decision
Appeal 2017-004541, Application No. 14/089,663, PTAB Decision
mailed October 30, 2017. Examiner affirmed.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of claims 8–14 under 35 U.S.C. § 112, second

2 Throughout this Decision, we refer to the Appeal Brief filed November 21,
2018 (“Appeal Br.”); Reply Brief, filed March 13, 2019 (Reply Br.); Final
Office Action mailed April 25, 2018 (“Final Act.”); and the Examiner’s
Answer mailed January 28, 2019 (“Ans.”).
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paragraph. However, Appellant’s arguments have not persuaded us of error
in the Examiner’s rejections under 35 U.S.C. § 102 and 35 U.S.C. § 103.

Indefiniteness rejection of claims 8 through 14
The Examiner rejected independent claim 8 and dependent claims 9
through 14 as the claim 8 limitation “the rendered user interface including
a placeholder for the at least one user interface item that has yet to be
received by the computing device” is not clear. Final Act 3–4. The
Examiner reasons the “limitation is a mere description of a placeholder not
yet received a user interface item. Said description is not a technical feature
because no operation or function or the like associated with said ‘empty’
placeholder, for example, is this placeholder displayed as a ‘black hole?’ Is
this ‘empty’ placeholder displayed with a label ‘vacant’?” Id.
Appellant argues the Examiner is “confusing breadth with claim
indefiniteness.” Answer 6. Appellant cites the MPEP § 2173.04 as
identifying that “a broad claim in not indefinite merely because it
encompasses a wide scope of subject matter provided the scope is clearly
defined.” Answer 7.
We agree with the Appellant. Whether the placeholder is a “black
hole” or a display with a label “vacant” is a question of scope. Appellant’s
Specification discusses the placeholder as something that is in a display in
place of an item of a fixed size. Specification ¶ 33. Thus, we consider the
recitation of an empty placeholder in claim 8 to be merely a broad term and
not indefinite. Accordingly, we do not sustain the Examiner’s rejection of
independent claim 8 and dependent claims 9 through 14 under 35 U.S.C.
§ 112, second paragraph.
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Anticipation rejection of independent claims 1 and 15
Appellant argues the Examiner’s rejection is in error as Baumgartner
does not disclose the limitation directed to “prior to receiving the requested
information items, render a display that include multiple interface elements,
the interface elements of the multiple interfaces each including a placeholder
for a respective one of the requested information items” as is recited in
representative claim 1. Appeal Br. 8–13; Reply Br. 3–4. Appellant argues
that the display of Figure 26 in Baumgartner, which the Examiner relies
upon to teach this limitation, is rendered after receiving the requested
display, not before as is required by claim 1. Appeal Br. 9. Further,
Appellant argues that Baumgartner screen 338, in Figure 26, does not
include a placeholder for the requested information as recited in the claim.
Appeal Br. 9–10. Additionally, Appellant asserts that an alternative
rationale where the user of the Figure 26 display is selecting COMEDY 350
from screen 338 of FIG. 26, does not meet the claim. Appeal Br. 10.
Appellant argues:
in Baumgartner, when the user requests an interface element on
screen 338, such as selecting COMEDY 350 from screen 338 of
FIG. 26, the icons representing different comedy movies are
displayed after receiving the requested information times[sic].
In other words, the information/icons about the comedy movies
are received by the interactive television application before
being displayed.

Appeal Br. 10–11.
The Examiner’s rejection cites to Baumgartner, paragraph 167 and
Figure 26, which depicts screen 338 as including vendor specific interface
elements, as support for the finding that Baumgartner discloses the disputed
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limitation. Final Act. 5. Further, in response to Appellant’s arguments the
Examiner states:
The argued feature of claim 1, “prior to receiving the
requested information items, render a display that includes
multiple interface elements, the interface elements of the
multiple interface elements each including a placeholder for a
respective one of the requested information items”, is construed
as “a display that includes multiple interface elements, the
interface elements of the multiple interface elements each
including a placeholder for a respective one of the requested
information items” because “prior to receiving” means no
receiving operation is performed. In other words, nothing
happened.
Accordingly, the argued feature is disclosed in the cited
prior art, Baumgartner Figure 26. When a display receives
requested information, the display gets updated, i.e., as argued
“after receiving” requested information, as depicted in Figure
26 of Baumgartner. Before the display update, the display is a
display with multiple interface elements without an update.
After the display update, the display is a display with multiple
updated interface elements. Both are disclosed in Baumgartner
Answer 11.
We are not persuaded of error in the Examiner’s findings by
Appellant’s arguments. Initially, we note that representative claim 1 recites
prior to receiving the requested information, render a display that includes
multiple interface elements and that each of the interface elements includes a
placeholder. Notably, the claim recites displaying the interface elements
before receiving the requested information, but does not recite the temporal
relation to making the request, i.e. the claim is broad enough to encompass
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the display being rendered prior to receiving the request.3 Also as discussed
above with respect to the rejection under U.S.C. § 112, a placeholder is
something that is in a display in place of an item of a fixed size. Based upon
this interpretation, the discussion of the user selecting the “COMEDY 350”
in Fig. 26 and then being presented an icon representative of different
comedy movies, as discussed by Appellant on page 10 of the Appeal Brief,
demonstrates that Baumgartner discloses the disputed claim limitation.
Specifically, Baumgartner discloses that the user selectable interface
elements are fixed in size and position, and as such remain unchanged
between screens. Baumgartner ¶ 174. Further, Baumgartner disuses that the
screen 338 may be one of multiple screens, and depicts in Figure 26 several
interactive icons, including one with the text “COMEDY” (item 350 Fig.
26). When this icon is selected, the Figure 27 display is presented, which as
identified by Appellant, includes icons representing comedy movies (items
388, 390, 392, 394 Fig 27). Baumgartner ¶ 175. Note, however, the icons
for the movies in Figure 27 are in the same size and locations as the
interactive icons in in Figure 26, thus the interactive icons of Figure 26 can
be considered placeholders (something that is in a display in place of an item
of a fixed size) for the icons representing comedy movies (the requested
information) (i.e. before the requested information is received — the text

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Because “applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).

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“FEATURED MOVIE”, and “ACTION” in Fig 26 is a placeholder for
“MOVIE 1” and “MOVIE 3” in Fig 27). Accordingly, Appellant’s
arguments have not persuaded us the Examiner erred in finding Baumgartner
discloses the disputed limitation of representative claim 1 and we sustain the
Examiner’s anticipation rejection of claims 1 and 15, grouped together.

Obviousness rejections of independent claim 8 and dependent claims
2 through 6, 9 through 11, 13, 14, and 16 through 19
Appellant argues that rejection of independent claim 8 is in error as it
recites limitation similar to those discussed with respect to claim 1 and that
the teachings of Matsuura do not remedy the deficiencies noted in the
rejection based upon Baumgartner. Appeal Br. 13.

We are not persuaded of error in the Examiner’s obviousness
rejection. As discussed above with respect to claim 1, Appellant’s augments
have not persuaded us the Examiner erred in finding that Baumgartner
discloses presenting a display of user interface elements including a
placeholder for an item that has not been received. Claim 8 is similar to
claim 1 in that it recites that the placeholder is displayed before an item is
received. Similar to our discussion above with respect to claim 1, we find
that Baumgartner teaches this feature in the flow of interfaces from Figure
26 to Figure 27. As such Appellant’s arguments have not persuaded us of
error and we sustain the Examiner’s rejection of independent claim 8.

With respect to the obviousness rejections of dependent claims 2
through 6, 9 through 11, 13, 14, and 16 through 19, Appellant argues that the
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rejection of these claims is in error for the same reason as independent
claims 1, 8 and 15. Appeal Br. 15. As discussed above, Appellant’s
arguments have not persuaded us of error in the Examiner’s rejections of
independent claims 1, 8 or 15. Accordingly, we sustain the Examiner’s
obviousness rejections of dependent claims 2 through 6, 9 through 11, 13,
14, and 16 through 19 for the same reasons discussed with respect to
independent claims 1, 8 and 15.

CONCLUSIONS
We reverse the Examiner’s rejection under pre-AIA 35 U.S.C. § 112,
of claims 8–14.
We affirm the Examiner’s rejection under pre-AIA 35 U.S.C. § 102,
of claims 1 and 15
We affirm the Examiner’s rejections under pre-AIA 35 U.S.C. § 103,
of claims 2–14 and 16–20.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–14 112 Indefinite 8–14
1, 15 102 Baumgartner 1, 15
2–6, 8–11,
13, 14, 16–19
103 Baumgartner,
Matsuura
2–6,
8–11, 13,
14, 16–
19

7, 12, 20 Baumgartner,
Matsuura, Bala
7, 12, 20
Overall
Outcome
1–20

FINALITY AND 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)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED