Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Nov 12, 2020

2019004512 (P.T.A.B. Nov. 12, 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.
15/087,321 03/31/2016 Aman Kansal 337759-US-CNT 8449
69316 7590 11/12/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
KASRAIAN, ALLAHYAR
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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 AMAN KANSAL, MOHAMED MUSTHAG,
DEEPAK GANESAN, TODD MYTKOWICZ, and
KATHRYN STUART MCKINLEY
Appeal 2019-004512
Application 15/087,321
Technology Center 2600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
ROBERT E. NAPPI, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18, 21, and 22. See Final Act. 1.
Claims 19 and 20 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 2.
Appeal 2019-004512
Application 15/087,321
2
CLAIMED SUBJECT MATTER
The claims are directed to delivering notifications to a user. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of delivering a notification via a user device,
comprising:
receiving the notification at the user device;
responsive to receipt of the notification at the user device,
initializing analysis of an attention state of a user by the user
device, wherein the receipt of the notification causes the user
device to initiate the analysis of the attention state of the user
prior to delivery of the notification to the user via the user device;
based on the analysis of the attention state of the user and
a type of the notification, detecting an opportune time period to
deliver the notification; and
delivering the notification via the user device during the
opportune time period.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yariv US 2012/0295645 A1 Nov. 22, 2012
Prihodko US 2013/0046612 A1 Feb. 21, 2013

REJECTION2
Claims 1–18, 21, and 22 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Yariv in view of Prihodko. Final Act. 8.

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–18, 21, 22 103(a) Yariv, Prihodko

2 The rejection under 35 U.S.C. § 101 was withdrawn by the Examiner.
Ans. 3.
Appeal 2019-004512
Application 15/087,321
3
OPINION
35 U.S.C. § 103(a)
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)).
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“A rejection based on section 103 clearly must rest on a factual basis.
. . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis.” Id.
“Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
Appeal 2019-004512
Application 15/087,321
4
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior art so that
the claimed invention is rendered obvious.” Fritch, 972 F.2 at 1266 (citing
In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).
Here, we cannot agree with the Examiner that a preponderance of the
evidence supports the Examiner’s factual findings and conclusion of
obviousness.
With respect to illustrative independent claim 1, Appellant argues that
the Examiner’s reliance upon paragraphs 44 and 65 of the Prihodko
reference is in error because the Prihodko reference does not teach or
suggest the receipt of the notification causes the user device to initiate the
analysis of the attention state of the user prior to delivery of the notification
to the user via the user device. Reply Br. 2; see also Appeal Br. 23–25.
The Examiner finds that “the attention assurance client software 250
[of Prihodko] is executed (i.e. claimed initiating) based on the presence of
the advertising message (i.e. claimed the receipt of the notification)” and “if
user attention cannot be assured (i.e. analysis of the attention state of the
user), then presentation of the ad can be paused until such user attention is
detected.” Ans. 4 (emphasis omitted).
Appellant argues that the Examiner is reading out the claimed
requirement that “the receipt of the notification causes the user device to
initiate the analysis of the attention state of the user prior to delivery of the
notification to the user via the user device.” Reply Br. 2–3.
Appellant further argues that the Examiner’s claim interpretation and
application of the prior art teachings is in error. Reply Br. 3. Appellant
contends that the Examiner has misinterpreted the claim limitation to be:
Appeal 2019-004512
Application 15/087,321
5
analysis of the attention state of the user occurs after delivery
during presentation of the notification to the user. Executing
attention assurance client software while an advertising message
is presented (to determine whether to pause presentation of the
ad as contended by the Examiner) is not equivalent to receipt of
a notification causing initiation of such analysis prior to delivery
of the notification to the user via the user device.
Reply Br. 3.
We agree with the Appellant that the Examiner has not made the
requisite showing supported by a preponderance of evidence, that the
Prihodko reference in combination with the Yariv reference teaches or
suggests the claimed “receipt of a notification causing initiation of such
analysis prior to delivery of the notification to the user via the user device.”
As a result, we cannot sustain the Examiner’s obviousness rejection of
illustrative independent claim 1 and independent claims 14 and 21 which
contain similar limitations and their respective dependent claims 2–13, 15–
18, and 22.

CONCLUSION
The Examiner’s decision to reject claims 1–18, 21, and 22 is
REVERSED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18, 21, 22 103(a) Yariv, Prihodko 1–18, 21, 22

REVERSED