Ex Parte Goodwin et al

Patent Trial and Appeal Board

Mar 24, 2014

10715804 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARGARET GOODWIN and MARK A. ALCAZAR
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Appeal 2011-006570
Application 10/715,804
Technology Center 2100
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Before BRIAN J. McNAMARA, GEORGIANNA W. BRADEN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON APPEAL

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This is an appeal1 under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 4, and 6-13.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to an “Application Model” that has
characteristics of Web applications (e.g., HTML pages) and traditional
desktop applications (e.g., programs in executable code installed directly to a
local computer). Spec. 1, ll. 7-18; 2, ll. 22-24. The “Application Model”
provides a framework secure application and simplifies the development, the
deployment, and the maintenance of client applications. Spec. 2, l. 25-3, l.
1. The “Application Model” includes three elements: an Application
Framework, a Navigation Framework, and an Application Lifecycle
Management. Spec. 4, ll. 14-16; Fig. 1.
Exemplary Claim
Independent claim 1 is representative of the invention, and is
reproduced below:
1. A computer-readable storage medium having stored thereon an
application framework for developing an application,
comprising:

an application object that isolates the application from other
applications or external resources, raises startup and shutdown

1 Appellants represent that the Real Party-in-Interest is Microsoft
Corporation. App. Br. 3.
2 Claims 2, 3, and 5 were cancelled and are not on appeal. App. Br. 3.
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events for the application, and manages application windows
and resources;

navigation components that provide navigation functionality by
sharing a global state across a plurality of pages, journaling,
journal extensibility, and structured navigation;

application lifecycle management components that define how
the application is deployed, installed, activated, updated, rolled
back, and removed from a computing system;

a secure execution environment that defines a default set of
permissions for the application during execution of the
application in the secure execution environment, and if the
application requires permissions in addition to the default set of
permissions, requiring installation of the application;

a component that defines a mechanism that allows the
application to access common window properties of a hosting
environment in a like manner regardless of whether the hosting
environment is a browser or a standalone window environment;
and

a manifest that specifies a first subset of components of the
application as required, a second subset of components of the
application as on-demand, and a third subset of components of
the application as online, with the first, second, and third
subsets of components of the application differing, wherein the
second subset of components being drizzle-downloaded in the
background as a user interacts with the application, wherein
when a specific component of the second subset of components
is requested, the specific component takes precedence over
remaining components of the second subset of components and
is downloaded on-demand while the remaining
components are drizzle-downloaded in the background.
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Examiner’s Rejections
1. Claims 1, 4, and 6-12 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Kraenzel et al. (US 6,742,026 B1, iss. May 25, 2004)
(“Kraenzel) in view of Li et al. (US 2003/0101445 A1, pub. May 29, 2003)
(“Li”). Ans. 4.

2. Claim 13 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Kraenzel in view of Li and Gamo (US 2004/0107291, pub. Jun. 3, 2004).
Ans. 9.
ANALYSIS
Appealed Ground of Rejection
§ 103(a) Rejection of Claims 1, 4, 6-13
We are persuaded by Appellants’ arguments (App. Br. 10-11; Reply
Br. 15-16) that the combination of Kraenzel and Li does not teach or suggest
the disputed limitation “the second subset of components being drizzle
downloaded in the background as a user interacts with the application,
wherein when a specific component of the second subset of components is
requested, the specific component takes precedence over remaining
components of the second subset of components and is downloaded on-
demand while the remaining components are drizzle-downloaded in the
background,” as recited in Appellants’ claim 1.
The Examiner finds that, in the absence of an explicit definition of
“drizzle-downloading” in the Specification,3 those of ordinary skill in the art
would have understood that “drizzle-downloading” describes a download

3 The Examiner notes that the term “drizzle-downloading” is mentioned only
once in the Specification at pg. 9, ll. 13-23, but is not defined.
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process in which processing power not currently being used by the running
application is allotted for downloading the various components in the
background. Ans. 14. More specifically, according to the Examiner, those
of ordinary skill in the art would have understood that “drizzle-
downloading” does not require two components to be downloaded
simultaneously but using different proportions of the available bandwidth, as
the Appellants appear to argue. Id. The Examiner then finds that the term
“in the background” refers to the “background” of the user application and
not the background of the download with the higher precedence. Ans. 14,
citing Spec., pg. 9, ll. 13-14, “As the user interacts with the application 210,
the resources . . . are drizzle-download [sic] in the background.”
Furthermore, the Examiner finds that the term “takes precedence”
would have been understood as broadly synonymous with “comes
first.” Ans. 14. The Examiner reasons that when one download “takes
precedence” over another, that download “comes first” or before the other
download and not at the same time. Id. According to the Examiner, to
adequately support the Appellants’ asserted interpretation, the Specification
would need to provide, at least, some discussion of the relative proportions
of bandwidth use which constitute “taking precedence.” Id. Instead, the
Examiner finds that the term is left broad and is reasonably understood to
include situations where the download of one component is suspended to
allow a second, higher precedence, component to be downloaded. Id.
The Examiner finds that Li discloses the disputed claim limitation
under such an interpretation. Ans. 15. The Examiner reasons that although
Li does not use the term “on-demand,” it should be clear that Li’s
components are immediately downloaded when a user “demands” them.
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Ans. 15-16, citing Li ¶ 0060 “operation 242 where the requested module is
downloaded”; ¶ 0048 “modules are downloaded and installed when
needed.” According to the Examiner, the fact that the components or
modules in Li may be (drizzle) downloaded ahead of the request conforms to
what is disclosed in the Specification and, thus, is not distinct from the scope
recited by the claim. Ans. 16, citing Spec. pg. 9, ll. 13-23 “the resources
designated as On Demand are drizzle-download in the background.”
Accordingly, the Examiner concludes that Li discloses that “the current
download is suspended in operation 240 [and in] operation 242 the requested
module is downloaded.” Ans. 15, citing Li ¶ 0060.
However, Appellants’ claim 1 recites “the specific component takes
precedence over remaining components . . . and is downloaded on-demand
while the remaining components are drizzle-downloaded in the
background.” (Emphasis added). In the context of the claim and in light of
the Specification, we construe the term “while” to require contemporaneous
downloading of the specific component and the remaining components.
Appellants contend that such contemporaneous downloading on-demand of
a specific component “while the remaining components are drizzle-
downloaded in the background” is not the same as suspending a download.
Reply Br. 15 (emphasis in original). We agree.
We find that Li does not reasonably disclose the contemporaneous
downloading of components. Rather, Li asserts that “if the module
requested is not the module being downloaded . . .the current download is
suspended.” See Li ¶ 0060. More specifically, the downloading of a
component (module M3) is suspended such that another component (module
M4) may be downloaded without competing with M3 for bandwidth. Id. Li
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does not describe the module M4 being downloaded on demand
contemporaneously with module M3 being downloaded in the background.
Accordingly, Li does not teach or suggest at least the above recitation of
Appellants’ claim 1.
According to Appellants, Kraenzel fails to compensate for this
shortcoming. App. Br. 14-15. Appellants contend that Kraenzel merely
describes that “Lotus iNotes Sync Manager is integrated into the Windows
desktop and lets the user manage multiple offline subscriptions” and
“[s]ynchronz[es] the online and offline versions of the application with each
other.” App. Br. 14-15, citing Kraenzel col. 39, ll. 34, and ll. 36-
43. However, Appellant contends that Kraenzel makes no mention of the
application having three subsets of components of the application
categorized as required, on-demand, and online, much less that the on-
demand components are drizzle-downloaded in the background as the user
interacts with the application. App. Br. 15. We agree.
Therefore, we are not persuaded that Li and Kraenzel teach or suggest
the disputed limitation “the second subset of components being drizzle
downloaded in the background as a user interacts with the application,
wherein when a specific component of the second subset of components is
requested, the specific component takes precedence over remaining
components of the second subset of components and is downloaded on-
demand while the remaining components are drizzle-downloaded in the
background,” as recited in independent claim 1. Thus, we do not agree with
the Examiner that the combination of Li and Kraenzel renders claim 1
obvious.
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Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103 (a). Claims 4 and 6-13 recite similar limitations to
those discussed with respect to independent claim 1. Therefore, we do not
sustain the rejection of claims 4 and 6-13 under 35 U.S.C. § 103 (a).
New Ground of Rejection
§ 101Rejection of Claims 1, 4, 6-13
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
against claims 1, 4, and 6-13 under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
The claims, as currently written, recite a “computer-readable storage
medium.” Giving the claims the broadest reasonable construction in light of
the Specification, we find that the claims encompass data being disposed on
transitory propagating signals. A signal does not fit within at least one of the
four statutory subject matter categories under 35 U.S.C. § 101. See In re
Nuijten, 500 F. 3d 1346, 1357 (Fed. Cir. 2007).
The Specification defines “computer readable media” as including
both storage media and communication media. Spec. 33, ll. 9-10. However,
the Specification is silent as to what the term “computer-readable storage
medium” encompasses, and it fails to limit the term to exclude signals,
carrier waves, etc. In the U.S. Patent & Trademark Office, Subject Matter
Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) (hereinafter Subject Matter Eligibility of Computer-
Readable Media), the Office states that “[t]he broadest reasonable
interpretation of a claim drawn to a computer readable medium (also called
machine readable medium and other such variations) typically covers forms
of non-transitory tangible media and transitory propagating signals per se in
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view of the ordinary and customary meaning of computer readable media,
particularly when the specification is silent.” We find that the addition of
the word “storage” to computer readable medium does not preclude
transitory propagating signals. See In re Mewherter et al., 2013 WL
3291360 (PTAB May 8, 2013)(precedential) (finding a machine readable
storage medium nonstatutory under 35 U.S.C. § 101). Therefore, claims 1,
4, 6-13 encompass subject matter that does not fit within any of the four
statutory categories of subject matter, and we exercise our discretion in
entering a new ground of rejection against the claims under 35 U.S.C. § 101.

DECISION
The Examiner’s decision to reject claims 1, 4, and 6-13 is reversed.
We enter a new ground of rejection on claims 1, 4, and 6-13.
The decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that, “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” 37 C.F.R.
§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM
THE DATE OF THIS DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED; 37 C.F.R. § 41.50(b)

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