Ex Parte Goodwin et alDownload PDFPatent Trial and Appeal BoardMar 24, 201410715804 (P.T.A.B. Mar. 24, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARGARET GOODWIN and MARK A. ALCAZAR ___________ Appeal 2011-006570 Application 10/715,804 Technology Center 2100 ____________ Before BRIAN J. McNAMARA, GEORGIANNA W. BRADEN, and PATRICK M. BOUCHER, Administrative Patent Judges. BRADEN, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-006570 Application 10/715,804 2 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. Appeal 2011-006570 Application 10/715,804 3 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. Appeal 2011-006570 Application 10/715,804 4 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. Appeal 2011-006570 Application 10/715,804 5 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. Appeal 2011-006570 Application 10/715,804 6 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 Appeal 2011-006570 Application 10/715,804 7 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. Appeal 2011-006570 Application 10/715,804 8 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 Appeal 2011-006570 Application 10/715,804 9 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. Appeal 2011-006570 Application 10/715,804 10 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) Klh Copy with citationCopy as parenthetical citation