Brian Scott. Moudy et al.

Patent Trials and Appeals Board

Sep 11, 2019

14187853 - (D) (P.T.A.B. Sep. 11, 2019)

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.
14/187,853 02/24/2014 Brian Scott Moudy 324445.06 1193
69316 7590 09/11/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
LONG, ANDREA NATAE
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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 BRIAN SCOTT MOUDY, AARTHI NATARAJAN,
GEEVEN SINGH, and AMY WAI-YEE IP
____________________

Appeal 2018-009126
Application 14/187,853
Technology Center 2100
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–20, which are all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 This Decision uses the following abbreviations: “Spec.” for the original
specification, filed February 24, 2014, which claims the benefit of U.S.
patent application 12/200,356, filed August 28, 3008; “Final Act.” for the
Final Office Action, mailed August 10, 2017; “App. Br.” for Appellants’
Appeal Brief, filed May 10, 2018; “Ans.” for Examiner’s Answer, mailed
July 27, 2018; and “Reply Br.” for Appellants’ Reply Brief, filed September
26, 2018.
2 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 2.
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BACKGROUND
Appellants’ disclosed embodiments and claimed invention relate to a
user interface for an instant messaging application that collapses display of a
conversation window into a contacts window. Spec. ¶¶ 8–10.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method executed at a computing device, the method
comprising:
displaying a conversation window of an instant messaging
application on a display of the computing device, the conversation
window comprising a message transmitted between the computing
device and a second computing device, wherein the computing device
is operated by a user and the second computing device is operated by
a contact of the user;
receiving a request to remove the conversation window from
the display;
responsive to receiving the request, removing the conversation
window from the display; and
responsive to removing the conversation window from the
display, displaying a graphical indicator on the display, the graphical
indicator displayed in a contacts window of the instant messaging
application, the graphical indicator indicating that the conversation
window comprised the message prior to the conversation window
being removed from the display.
App. Br. 16 (Claims App’x) (emphasis added).
THE REJECTIONS
R1. Claims 1, 3–12, and 14–20 stand rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Fulmer (US 2006/0036703 A1, published
February 16, 2006), Forlenza (US 2007/0094360 A1, published April 26,
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2007), and Kaminsky (US 2007/0288580 A1, published December 13,
2007). Final Act. 2–13.
R2. Claims 2 and 13 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Fulmer, Forlenza, Kaminsky, and Fernandez (US
2004/0228531 A1, published November 18, 2004). Final Act. 14–15.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We have considered all of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection R1 of Claims 1, 3–12, and 14–20
Appellants argue claims 1, 3–12, and 14–20 together as a group. See
App. Br. 8–15. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to claim 1. Independent claims 12
and 20 and dependent claims 3–11 and 14–19 stand or fall with claim 1.
Claim 1 recites: “responsive to removing the conversation window
from the display, displaying a graphical indicator on the display, the
graphical indicator displayed in a contacts window of the instant messaging
application.” App. Br. 16 (Claims App’x) (emphasis added) (referred to in
this Decision as the “indicator limitation”). The Examiner pointed to
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Fulmer, Forlenza, and Kaminsky as teaching different aspects of the
indicator limitation. Final Act. 3–5, 15–17. Appellants argue the proposed
Fulmer-Forlenza-Kaminsky combination does not teach or suggest this
limitation (App. Br. 9–12), and Appellants contend the Examiner’s rejection
lacks rational underpinning and relies on improper hindsight (id. at 12–14).
For the reasons explained below, we are not persuaded of Examiner error.
In the Final Office Action, the Examiner found: Fulmer teaches
removing a conversation window from a display by either minimizing or
closing that window (Final Act. 3 (citing Fulmer ¶¶ 44–46)); Forlenza
teaches minimizing a conversation window to an icon that displays the
contact’s name (id. at 3–4, 15 (citing Forlenza ¶¶ 4–5)); and Kaminsky
teaches displaying a status icon in a contacts window (id. at 4 (citing
Kaminsky, Fig. 3, ¶ 43)).
The Examiner determined that, based on these teachings, it would
have been obvious to combine Fulmer, Forlenza, and Kaminsky to display
an indicator in a contacts window when a conversation is minimized or
closed. Id. at 4–5. The Examiner explained that the proposed combination
would provide “a visual indication of a minimized conversation window in a
location that does not take up additional screen display space while also
visually associating the minimized window with [the appropriate] contact.”
Id.; see id. at 17 (finding Forlenza is directed to efficient use of “screen real
estate”). The Examiner found the combination “does not change the
functionality of selecting the graphical indicator to view the
window/message.” Id. at 4. The Examiner further explained that, while
Kaminsky’s indicator is specifically displayed in response to a new message,
“one skilled in the art could reasonably present the graphical indicator in
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response to a minimize trigger” as taught by Forlenza. Id.; see id. at 16
(“What can be pulled from the references by one skilled in the art is the use
of graphical indicators/icons to show the status of a message.”).
Appellants argue the proposed Fulmer-Forlenza-Kaminsky
combination does not teach or suggest the indicator limitation. App. Br. 9–
12. In particular, Appellants contend that “[t]he Examiner concedes” that
Fulmer “fails to suggest” the indicator limitation.3 Id. at 9. Appellants then
note that Forlenza’s icon is “shown in the task bar” rather than “in a contacts
window,” as would be required by the claim (id. at 10), and Kaminsky’s
indicator denotes the presence of a “new message” rather than a minimized
window (id. at 12). From this, Appellants argue the proposed modification
of Fulmer with Forlenza and Kaminsky would include Forlenza’s
“minimization feature” and would use Kaminsky’s icon only for new
messages. Id.
The Examiner responds that a person of ordinary skill in the art would
have found it obvious to modify Fulmer’s menu 40, which “show[s]
participants in active conversations,” to include an indication of a minimized
conversation, as taught by Forlenza and Kaminsky. Ans. 15–16. The
Examiner further finds that Forlenza generally teaches displaying an icon in
response to removing the conversation window (id. at 16–17), and
Kaminsky teaches placement of “the graphical indicator . . . in the contacts

3 Appellants do not provide a citation in support of this assertion. See App.
Br. 9. The Examiner found that “Fulmer does not explicitly teach” the
indicator limitation (Final Act. 3), but did not state that this limitation is not
suggested by Fulmer.
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window,” which is “similar to how Fulmer’s contact window display[s]
participants of active conversations” (id. at 17).
In the Reply Brief, Appellants contend “there is no suggestion in any
of the cited references of record that graphics are set forth in a contacts
window in response to a user closing or minimizing a conversation
window.” Reply Br. 4; see App. Br. 12. Appellants also contend “the
Examiner is picking and choosing portions of the cited references for the
purpose of mapping the portions of the cited references to the claim features,
which is improper.” Reply Br. 5.
Appellants’ arguments do not persuade us of Examiner error.
Appellants argue that none of the references teach or suggest displaying a
graphical indicator in a contacts window in response to minimizing a
conversation window. However, this attacks the references individually,
rather than addressing the rejection as articulated, which relied on the
combined teachings of the prior art. Consequently, this argument does not
persuade us of error. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”)).
The Examiner found Fulmer discloses minimizing a conversation
window, Forlenza teaches displaying an icon to indicate a minimized
conversation window, and Kaminsky teaches locating such an icon in a
contacts window. Final Act. 3–5, 15–17; Ans. 15–17. We see no error in
these findings. Fulmer ¶¶ 44–46, Figs. 3–4; Forlenza ¶¶ 4–5; Kaminsky,
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Fig. 3, ¶ 43. The Examiner explained that a person skilled in the art would
have been motivated to put Forlenza’s icon in Fulmer’s contact window, as
taught by Kaminsky, because this arrangement would visually associate the
conversation with the appropriate contact while conserving display space.
Final Act. 4–5, 16; Ans. 15–17. The Examiner also found the proposed
combination is within the skillset of a person of ordinary skill in the art.
Final Act. 4, 6. Appellants identify no errors or inaccuracies in this
rationale, do not contend the Examiner’s proposals are beyond the level of
skill of one of ordinary skill in the art, and do not point to any evidence of
record that the proposed combination would yield undesirable,
unpredictable, or unexpected results. Accordingly, we are not persuaded of
error in the Examiner’s conclusion that the indicator limitation is obvious in
light of the references.4
We are similarly unpersuaded by Appellants’ arguments that the
Examiner’s rejection lacks rational underpinning. See App. Br. 12–14.
Appellants submit the Examiner proposes a modification of Fulmer that
minimizes conversation windows to a task bar (as in Forlenza) and then
further modifies the combination to remove the task bar and instead display

4 Moreover, we further find that Fulmer suggests the proposed combination.
In particular, although Fulmer does not explicitly describe what happens
after conversation window 60 is minimized, it does state that minimizing
window 60 “shifts focus” to menu 40. Fulmer ¶ 50. In addition, Fulmer’s
menu 40 (i.e., the claimed “contacts window”) includes a list of contacts 51
and an area specifically displaying “participants in an active conversation
52,” and Fulmer states that “only the menu 40 is displayed” when “more
than one active conversation exists.” Id. at ¶¶ 41, 43, Fig. 3. Thus, Fulmer’s
contact window identifies the active conversations, and Fulmer suggests that
this also identifies active conversations that were minimized.
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an indication in a contacts window (as in Kaminsky). Id. at 13. However,
Appellants’ argument is premised on an assumption—that Forlenza’s
teaching is limited to displaying an icon in a taskbar in response to
minimizing a conversation window—and we disagree that a person of
ordinary skill in the art would read Forlenza so narrowly. In particular,
Forlenza states that a window may be minimized to the task bar (Forlenza
¶ 5, Fig. 1), but the reference also discloses minimizing a conversation
window to a different window separate from the task bar (id. at ¶ 29, Fig. 6A
(cited by App. Br. 7–8)). In addition, the Examiner found that Forlenza
generally teaches displaying an icon in response to removing a conversation
window from a display. See Ans. 16. Appellants do not provide argument
or evidence to support their contention that a person of ordinary skill in the
art would read Forlenza to require this icon to be placed in the taskbar. See
Lear Siegler Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)
(The ordinary artisan is not “compelled to adopt every single aspect of [a
reference’s] teaching without the exercise of independent judgment.”).
Accordingly, we are not persuaded that the Examiner’s rationale is in error.
Appellants next contend the Examiner used “hindsight” because the
cited references do not discuss the advantages of efficiently using screen real
estate. App. Br. 14. However, the Examiner found that “[t]he issue of
screen real estate for user interfaces is a well-known problem in the art,” as
shown in Forlenza. Ans. 19; see also Final. Act. 17. Appellants do not
respond to this finding (see App. Br. 14; see generally Reply Br.), and we
perceive no error in it (e.g., Forlenza ¶ 5 (minimized windows use only “a
small portion of the display”)). Accordingly, Appellants’ hindsight
argument is not persuasive because Appellants do not identify any
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knowledge supposedly gleaned from the Specification that was not
otherwise within the level of ordinary skill at the time of the invention. See
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Finally, in the Reply Brief, Appellants present a new argument,
contending the references do not teach or suggest closing a conversation
window, as required by independent claim 20 and dependent claims 5
and 17. Reply Br. 4–5. This argument addresses the rejection as originally
provided in the Final Office Action, rather than positions raised in the
Answer. Because Appellants have not shown good cause for failing to
provide these arguments in the Appeal Brief, Appellants’ argument is
untimely and need not be considered. See 37 C.F.R. § 41.41(b)(2) (“Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer . . . will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.”).
Further, even if our reviewing court were to consider these arguments
to be timely, we would not be persuaded of error. Appellants’ argument is
premised on the assumption that minimizing a conversation window “is not
germane” to closing a conversation window (Reply Br. 4); however,
Appellants fail to provide any support for this assertion. For example,
Appellants fail to explain why minimizing a conversation window, such that
it is no longer displayed, does not qualify as “closing the conversation
window” under the broadest reasonable interpretation of that phrase,5 and

5 During prosecution, claims must be given their broadest reasonable
interpretation in light of the specification as it would be interpreted by one of
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Appellants do not clarify the alleged differences between “removing the
conversation window” (as required by claim 1) and “closing the
conversation window” (as required by independent claim 20). See Spec.
¶ 35 (describing “window minimizer component 202” responsive to
indication that “the conversation window [should] be closed or minimized”).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 3–12 and 14–20, which fall
therewith.
Obviousness Rejection R2 of Claims 2 and 13
The Examiner rejects claims 2 and 13 over a combination of Fulmer,
Forlenza, Kaminsky, and Fernandez. Final Act. 14–15. For these claims,
Appellants rely on the arguments presented for claim 1. App. Br. 15. These
arguments however, are not persuasive for the reasons discussed above.
Consequently, we find Appellants’ arguments do not show error in the
Examiner’s factual findings and the conclusion of obviousness of claims 2
and 13.

ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
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DECISION
We affirm the Examiner’s decision rejecting claims 1–20.
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