Ex Parte Durojaiye et al

Patent Trial and Appeal BoardMar 29, 2017

13962489 (P.T.A.B. Mar. 29, 2017)

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. 13/962,489 08/08/2013 Olumuyiwa M. Durojaiye 322640-US-CNT 1604 69316 7590 03/31/2017 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER WONG, TITUS ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): u sdocket @ micro soft .com chriochs @microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLUMUYIWA M. DUROJAIYE, SUMIT MEHROTRA, XIAO TU, MANOJ K. BISWAS, and STEVEN P. DODGE Appeal 2017-000875 Application 13/962,4891 Technology Center 2100 Before JUSTIN BUSCH, NORMAN H. BEAMER, and JOHN. D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 4—6, 8, 9, 17, 18, and 20-26. Claims 11 and 13—16 have been allowed. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Microsoft Technology Licensing, LLC. App. Br. 3. Appeal 2017-000875 Application 13/962,489 THE CLAIMED INVENTION Appellants’ claimed invention relates to a local operating system obtaining device drivers from third parties for detected hardware available on a host computing system. See Abstract; Spec. Tflf 3, 28, 45. Claim 1 is illustrative of the subject matter of the appeal and is reproduced below. 1. A method comprising: detecting, by a bus driver within a local operating system, a digitizer on a host computing system; sending a bus signature that makes the local operating system aware of the digitizer detected on the host computing system, the bus signature being sent from the bus driver within the local operating system; the sending causing the local operating system to obtain a device driver for the local operating system from a third party update service, the device driver configured to control touch data captured by the digitizer for the local operating system; receiving a data packet comprising touch data from the digitizer; and injecting, with the obtained device driver, the received data packet into an input stack of the local operating system. REJECTION2 ON APPEAL The Examiner rejected claims 1, 4—6, 8, 9, 17, 18, and 20-26 under 35 U.S.C. § 102(e) as being anticipated by Li et al. (US 2008/0320500 Al; published Dec. 25, 2008) (hereinafter “Li”). ISSUE 2 We understand that the obvious type double patenting rejection of claims 1, 4, 6, 8, 9, 11, 13—18, and 20—26 (Jan. 5, 2016 Final Office Action (“Final Act.”) 3) is not before us in light of Appellants’ filing of a terminal disclaimer on June 1, 2016 (App. Br. 11) and the Examiner’s statement regarding the grounds of rejection applicable to the appeal (Ans. 2). 2 Appeal 2017-000875 Application 13/962,489 The dispositive issue for this appeal is whether Li discloses “the sending causing the local operating system to obtain a device driver for the local operating system from a third party update service,” as recited in claim 1 and similarly recited in claim 17. (Emphasis added). ANALYSIS Appellants argue the Examiner erred in finding Li discloses the disputed limitation. App. Br. 11—14; Reply Br. 5—8. Specifically, Appellants argue Li instead discloses that the device drivers (e.g., a virtual mouse driver or a virtual keyboard driver) already are present on a remote machine (i.e., the local operating system). App. Br. 12—13 (citing Li || 5, 30; Lig. 2). Appellants argue Li, thus, does not disclose that the drivers “are obtained from a third party update service.” See id. Appellants also contend the Examiner’s reasoning (i.e., “it is implied that a third party provides device driver for its own hardware so that it could operate as it was designed”) is insufficient. App. Br. 14 (citing final Act. 5); Reply Br. 7—8. The Examiner finds Li discloses the disputed limitation. Ans. 2—5; final Act. 4—5. Specifically, the Examiner finds the device drivers are “loaded by the operating system . . . [and are] inherently provided by a third party (such as manufacturers or engineers of the device(s) so that it can operate in the system).” See Ans. 5 (citing Li || 32, 36; Lig. 4). We are persuaded by Appellants’ arguments. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout 3 Appeal 2017-000875 Application 13/962,489 Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (emphasis added). We agree with Appellants that Li’s device drivers are not necessarily obtained from a third party update service or third party provider. See Li || 32, 36; Fig. 4. For example, Li’s drivers could already be present on the remote device or could be obtained from the host machine. See id. Moreover, the Examiner’s finding turns on the likelihood that the device drivers, at least initially, were obtained from third parties (e.g., device manufacturers). The breadth of this finding (i.e., allowing the drivers to be obtained previously and indirectly) is contrary to the Specification and the claim language (i.e., the sending of the bus signature causing the device drivers to be obtained from a third party). See App. Br. 20. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 17, or claims 4—6, 8, 9, 18, and 20-26, which depend, directly or indirectly, from one of these independent claims. DECISION We reverse the Examiner’s decision rejecting claims 1, 4—6, 8, 9, 17, 18, and 20-26. REVERSED 4