MICROSOFT TECHNOLOGY LICENSING, LLC

Patent Trials and Appeals Board

Apr 15, 2021

2020000410 (P.T.A.B. Apr. 15, 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.
14/927,827 10/30/2015 Vignesh Sachidanandam 358580-US-NP 6978
143198 7590 04/15/2021
MICHAEL BEST & FRIEDRICH LLP (MS)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
FAN, JOHN
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIGNESH SACHIDANANDAM,
GARY CALDWELL, GAUTAM KEDIA,
HIROSHI TSUKAHARA,
NED BEARER FRIEND, and
ZACHARY KAHN
Appeal 2020-000410
Application 14/927,827
Technology Center 2400
Before JOHNNY A. KUMAR, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CRAIG, 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 rejecting claims 1 and 3–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Microsoft Technology Licensing, LLC
as the real party in interest. Appeal Br. 2.
Appeal 2020-000410
Application 14/927,827

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We reverse.
CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to a
communication interface for wearable devices. Spec. ¶ 6. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A wearable computing device to provide prioritized and
categorized presentation of communications, the wearable
computing device comprising:
a communication interface configured to communicate
wirelessly with one or more other computing devices;
a memory; and
one or more processors coupled to the memory and the
communication interface, the one or more processors executing
a communication application in conjunction with instructions
stored in the memory, wherein the one or more processors are
configured to:
analyze attributes of a communication and a history of
interactions of a recipient of the communication;
determine one or more actions associated with the
communication based on the analysis;
dynamically select and adjust a content for one or more
cards to be displayed on the wearable computing device based
on the determined one or more actions;
determine a likelihood of recipient interaction with each
of the one or more cards based on a context of the recipient and
the history of interactions of the recipient;
dynamically select and adjust an order of the one or more
cards to be displayed on the wearable computing device based
on the determined likelihood of recipient interaction with each
of the one or more cards; and
display the ordered one or more cards on the wearable
computing device.
Appeal Br. 12 (Claims App.).
Appeal 2020-000410
Application 14/927,827

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REJECTIONS
Claims 1, 3–8, 10–12, and 18–20 stand rejected under 35 U.S.C. § 103
as unpatentable over the combination of Eichstaedt et al. (US 6,218,958 B1,
issued Apr.17, 2001) (“Eichstaedt”), Horvitz (US 8,161,165 B2, issued Apr.
17, 2012), and Greenberg et al. (US 2016/0103577 A1, published Apr. 14,
2016) (“Greenberg”). Final Act. 6–24.
Claims 9 and 13–17 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Eichstaedt, Horvitz, Greenberg, and
Weast et al. (US 2013/0106603 A1, published May 2, 2013) (“Weast”).
Final Act. 24–28.
ANALYSIS
Appellant contends the cited portions of Eichstaedt, Horvitz, and
Greenberg do not teach or suggest (a) determining a likelihood of recipient
interaction with one or more cards, and (b) dynamically selecting and
adjusting an order of the one or more cards to be displayed based on the
likelihood of recipient interaction, as claim 1 requires. Appeal Br. 6. In
particular, Appellant reviews the paragraphs of Greenberg relied on by the
Examiner (id. at 6–11) and argues that “Greenberg makes no mention
whatsoever of tracking how a user interacts with cards and reordering the
cards for a particular user based on historical interactions by the user” (id. at
7).
We are persuaded that the Examiner erred in finding that the
combination of Eichstaedt, Horvitz, and Greenberg teaches or suggests the
disputed limitations of claim 1. The Examiner relied on numerous portions
of Greenberg, including the Abstract and paragraphs 2, 14, 67, 68, 73, 87,
96, 99, 101, 103, 106, 115, 227, 314, 467, 468. Ans. 5–8. The Examiner also
Appeal 2020-000410
Application 14/927,827

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cited portions of Eichstaedt (Abstract) and Horvitz (Abstract, cols. 9:33–34,
10:23–32, 12:38–44). Ans. 9. The Examiner, however, has not explained
sufficiently how the cited portions of the references teach or suggest the
disputed limitations “determine a likelihood of recipient interaction with
each of the one or more cards based on a context of the recipient and the
history of interactions of the recipient” and “dynamically select and adjust
an order of the one or more cards to be displayed on the wearable computing
device based on the determined likelihood of recipient interaction with each
of the one or more cards,” as recited in claim 1. For example, Greenberg
teaches that wrap packages of cards may be shared or distributed through
various electronic means, such as email, messaging, or social media. See
Greenberg ¶¶ 103, 468. The Examiner found that these paragraphs of
Greenberg teach determining a likelihood of recipient interaction, as recited
in claim 1, but, on the record before us, we do not agree with the Examiner.
Accordingly, we reverse the Examiner’s § 103 rejection of
independent claim 1, as well as the Examiner’s § 103 rejection of
independent claims 10 and 18, which recite similar limitations. See Appeal
Br. 11. We also reverse the Examiner’s § 103 rejections of dependent claims
3–9, 11–17, 19, and 20, which stand with the independent claims from
which they depend.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1 and 3–20.

Appeal 2020-000410
Application 14/927,827

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–8, 10–12,
18–20
103 Eichstaedt, Horvitz,
Greenberg
1, 3–8, 10–12,
18–20
9, 13–17 103 Eichstaedt, Horvitz,
Greenberg, Weast
9, 13–17
Overall
Outcome:
1, 3–20

REVERSED