Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Nov 2, 2021

2020002563 (P.T.A.B. Nov. 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.
15/431,998 02/14/2017 Ginger Elizabeth Tien 14917.1913USC1/333764USC1 4334
69316 7590 11/02/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
HERSHLEY, MARK E
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
11/02/2021 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
ljohnson@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 GINGER ELIZABETH TIEN, MICHAEL ANTHONY
AFFRONTI, RIKINKUMAR SHAH, and CHRISTINA MARIE MEYER

____________________

Appeal 2020-002563
Application 15/431,998
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1

1 Our Decision refers to Appellant’s Appeal Brief filed August 14, 2019
(“Appeal Br.”); Appellant’s Reply Brief filed February 11, 2020 (“Reply
Br.”); Examiner’s Answer mailed December 11, 2019 (“Ans.”); the Final
Action mailed December 31, 2018 (“Final Act.”), and the Specification filed
April 4, 2017 (“Spec.”).
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Application 15/431,998

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Appellant2 seeks our review3 under 35 U.S.C. § 134(a) from the final
rejection of Claims 21–40, all pending claims. Appeal Br. 19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
INVENTION.
The claims relate to an aggregate display of contact data from internal
and external sources. See Abstract. Claims 21, 28, and 35 are independent.
Appeal Br. 18. An understanding of the invention can be derived from a
reading of Claim 21 which is reproduced below with some formatting added:
21. A method for aggregating contact data of a user,
comprising:
receiving, from the user over a network, a user-defined
request associated with the user to obtain contact data
associated with a contact of the user from a plurality of sources;
obtaining contact data associated with the contact from
the plurality of sources;
processing the contact data to generate an aggregated
collection of contact data, wherein processing the contact data
further comprises:

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies Microsoft Technology
Licensing, LLC of Redmond, Washington, as the real party in interest.
Appeal Br. 3.
3 We have considered in this decision only those arguments Appellant
actually raised in the Briefs. Any other arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be forfeited.
See 37 C.F.R. § 41.37(c)(1)(iv) (2020).
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receiving, from the user over the network, a user-
defined preference order associated with the user for the
plurality of sources; and
providing the aggregated collection of contact data
for presentation in ranked order according to the user-
defined preference order;
associating, with at least one contact data in the
aggregated collection of contact data, a link that provides access
to the at least one contact data at the source of the contact data;
and
transmitting, to the user over the network, the aggregated
collection of contact data for the contact.

Prior Art
Name4 Reference Date
Blants US 6,732,080 B1 May 4, 2004
Tien  US 9,600,804 B2  Mar. 21, 2017 
Weitzman US 2004/0225525 A1 Nov. 11, 2004
Naono US 2008/0219427 A1 Sept. 11, 2008
Smith US 2010/0306185 A1 Dec. 2, 2010
Polis US 2011/0256889 A1 Oct. 20, 2011
Carwile, Jr. US 2012/0226527 A1 Sept. 6, 2012

REJECTIONS5 AT ISSUE.
1. Claims 21–40 stand rejected under the ground of nonstatutory double
patenting over Claims 1 and 4 of Tien. Final Act. 5–6.
2. Claims 21, 22, 27–29, and 34–36 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Weitzman and Naono. Final Act. 7–11.

4 All citations herein to the references are by reference to the first named
inventor/author only.
5 The present application is being examined under the pre-AIA first to invent
provisions. Final Act. 2.
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3. Claims 23–25, 30–32, and 37–39 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Weitzman, Naono, and Smith. Final Act.
11–12.
4. Claims 26, 33, and 40 stand rejected under 35 U.S.C. § 103(a) as
obvious over Weitzman, Naono, Smith, and Blants. Final Act. 13–14.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). We have considered in this
decision only those arguments Appellant actually raised in the Briefs. After
considering the evidence presented in this Appeal and each of Appellant’s
arguments, we are persuaded that Appellant identifies reversible error. We
add the following primarily for emphasis.

CLAIMS 21–40: DOUBLE PATENTING.
Appellant does not request review of the non-statutory obviousness
type double patenting rejection over Tien, US 9,600,804. See Final Rej. 5;
see generally Appeal Br. We therefore summarily affirm this rejection. See
MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of
rejection stated by the examiner is not addressed in the appellant's brief, that
ground of rejection will be summarily sustained by the Board.”). The failure
to appeal is a forfeiture under Ex parte Frye, 2010 WL 889747 *4 (BPAI
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2010) (precedential) (“If an appellant fails to present arguments on a
particular issue—or, more broadly, on a particular rejection—the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection”).

CLAIMS 21, 22, 27–29, AND 34–36:
OBVIOUSNESS OVER WEITZMAN AND NAONO.
Appellant contends: “Based at least on the foregoing, Appellants
submit claim 21-40 are not obvious based on the combination of Weitzman
and Naono. Appellants therefore request the withdrawal of the rejections
and the allowance of the claims.” Reply Br. 10. Appellant designates Claim
21 as representative. See Appeal Br. 15 (“the combination of Weitzman and
Naono does not render independent claim 21 obvious because the combined
references do not teach or suggest every element in the claim. Since
independent claim 28 recites related elements, Appellants further submit
claim 28 is not obvious based on the combined references”) see also Appeal
Br. 16 (“Appellants’ arguments with respect to claim 21 apply to these claim
elements [of independent Claim 35] as well. The combination of Weitzman
and Naono does not teach or suggest these aspects of the claim.”).
Therefore, we decide the appeal of the § 103(a) rejections on the basis of
representative Claim 21 and refer to the rejected claims collectively herein
as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324,
1325 (Fed. Cir. 1986).
The user.
Independent claim 21 recites, inter alia, “receiving, from the user
over a network, a user-defined request associated with the user to obtain
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contact data associated with a contact of the user from a plurality of
sources” and “receiving, from the user over the network, a user-defined
preference order associated with the user for the plurality of sources.”
Emphasis added.
The Examiner finds Weitzman teaches obtaining and aggregating
contact data. Final Act. 8. The Examiner also finds Weitzman fails to teach
a user-defined request and a user-defined preference order associated with
the user. Id. The Examiner finds Naono teaches receiving from the user a
user-defined request and priority order. Final Act. 9.
Appellant contends, in Claim 21, the various recitations of “the user”
refer to the same user. Appeal Br. 8. Appellant argues Naono teaches
“communication partners B, C, and D send their contact information and
their priority order for the contact information to the terminal of User A.
Appeal Br. 8–9 (citing Naono ¶¶ 32, 53; Fig. 3A, Step, S303).
The Examiner does not respond to Appellant’s arguments presented at
pages 8 and 9 of the Appeal Br. See Ans. 3 (“Response to Argument
Applicant presents the following argument in the second paragraph of
page 10:”).
Independent Claim 21 recites, inter alia, “[a] method for aggregating
contact data of a user, comprising: receiving, from the user over a network, a
user-defined request.” (Emphasis added). Where, as here, a claim term (e.g.,
user) first appears with the indefinite article “a” and later appears with a
definite article, such as “the,” the Federal Circuit has found that the terms
share an “antecedent basis” relationship and apply an “initial assumption”
that the latter occurrence carries the same meaning as the former. See
Microprocessor Enhancement Corp. v. Tex. Instrs. Inc., 520 F.3d 1367,
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1375 (Fed. Cir. 2008) (agreeing with a “district court’s initial assumption
that a single ‘claim term should be construed consistently with its
appearance in other places in the same claim . . .’”) (citation omitted). .”
Best practice dictates it is important that it is important that a new item
mentioned for the first time in the claim not be first mentioned as an element
operated upon or cooperated with by a previous element described in the
same clause. A new element or step is introduced with an indefinite article
“a” or “an.” (Some plural items have no introductory article “a” and are
introduced by the plural noun itself. But, from the context, the silent
introductory indefinite article can be inferred.). On the other hand, when a
previously identified element or step is repeated, it is introduced by a
definite article “the” or “said.” See Robert C. Faber, Faber on Mechanics of
Patent Claim Drafting § 2:2, at 2-2 (6th ed. 2009).
Applying this guidance here, we find the various recitations of “user”
in Claim 21 refer to the same “user.” Although the various recitations of
Claim 21 refer to the same user, the Examiner synthesizes the actions of
Naono’s Users A, B, C, and D to teach actions that are claimed as being
performed by the single, claimed user. The Examiner finds: “user requests
communications in a priority order from the various sources. . . and
User A searches and received contact data from the partner database.”
Final Act. 9 (citing Naono ¶ 54). Thus, the Examiner maps the claimed
“user” onto “User A” disclosed by Naono. However, as argued by
Appellant (see Appeal Br. 8), Naono further discloses:
the above-mentioned additional information is sent from Users
B, C and D and is stored in User A’s terminal. This
information indicates the priority level of the communication
services by which each user of the information terminal which
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transmitted these items of information would like to
communicate with User A.
Naono ¶ 54 (cited by the Examiner). Thus, Naono discloses User A
generates the request, but User B (or C or D) indicates the priority level.
This disclosure is contrary to the claims which require that the same user
generates the request and indicates the priority level.
In view of the foregoing, we decline to sustain the rejection of Claims
21, 22, 27–29, and 34–36 under 35 U.S.C. § 103(a).

CLAIMS 23–25, 30–32, AND 37–39:
OBVIOUSNESS OVER WEITZMAN, NAONO, AND SMITH.
The Examiner does not apply Smith to teach the limitations discussed
above. See generally Answer.
In view of the foregoing, we decline to sustain the rejection of Claims
23–25, 30–32, and 37–39 under 35 U.S.C. § 103(a).

CLAIMS 26, 33, AND 40:
OBVIOUSNESS OVER WEITZMAN, NAONO, SMITH, AND BLANTS.
The Examiner does not apply Smith or Blants to teach the limitations
discussed above. See generally Answer.
In view of the foregoing, we decline to sustain the rejection of Claims
26, 33, or 40 under 35 U.S.C. § 103(a).

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DECISION
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–40 Nonstatutory Double
Patenting Tien
21–40
21, 22, 27–
29, 34–36
103(a) Weitzman, Naono 21, 22,
27–29,
34–36
23–25, 30–
32, 37–39
103(a) Weitzman, Naono,
Smith
23–25,
30–32,
37–39
26, 33, 40 103(a) Weitzman, Naono,
Smith Blants
26, 33, 40
Overall
Outcome
21–40

FINALITY AND RESPONSE
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision to reject
all claims on appeal. See 37 C.F.R. § 41.50(a)(1).
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