Ex Parte Kacmarcik et al

Patent Trials and Appeals Board

Jan 30, 2019

14145236 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/145,236 12/31/2013 Gary Kacmarcik
104433 7590 02/01/2019
Byrne Poh LLP/Google LLC
11 Broadway Ste 760
New York, NY 10004
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0058-691001 7142
EXAMINER
CHEN,YU
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
info@byrnepoh.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY KACMARCIK, JAMES WEATHERALL,
STEPHEN JOHN KONIG, ALEX P AKHUNOV,
and SERGEY YUREVICH ULANOV
Appeal2017-010376
Application 14/145,236
Technology Center 2600
Before ALLEN R MacDONALD, KARA L. SZPONDOWSKI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-7, 9, 10, 12-22, and 24--26, constituting all claims
pending in the current application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal2017-010376
Application 14/145,236
STATEMENT OF THE CASE
Appellants' invention is directed to displaying a program window of a
cloud-based or network-based application running in the cloud on a personal
computing device. Spec. ,r 2. Claim 1, reproduced below with the disputed
limitations in italics, is illustrative of the claimed subject matter:
1. A method, comprising:
receiving, on a local computing device, a video stream
including a remote desktop including an open cloud-application
window corresponding to a network-hosted application, the
remote desktop encoded as image frames in a video stream;
decoding the image frames in the video stream of the
remote desktop;
displaying the remote desktop on a local desktop of the
local computing device so that:
at least a portion of a natively-operating
application on the local desktop is visible through a
transparent portion of the remote desktop, wherein the
natively-operating application is executing natively on
the local computing device, and
the open cloud-application window has an
appearance of the natively-operating application;
detecting, at a location within the transparent portion of
the remote desktop, a user-input action directed to the natively-
operating application; and
passing the user-input action through the transparent
portion of the remote desktop to the natively-operating
application.
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Application 14/145,236
REJECTIONS
Claims 1-7, 9, 10, 12-22, and 24--26 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Schmieder et al. (US
2015/0121243 Al; published Apr. 30, 2015 ("Schmieder")) and
CertifiedCIO (YouTUBE, Windows Server 2012 RemoteApp on Windows 7
Walk-through, https ://www. you tube. com/watch ?v=v NS i QnRmo3 Y (last
visited Jan. 18, 2019) ("CertifiedCIO")).
ANALYSIS
Issue: Did the Examiner err in finding the combination of Schmieder
and CertifiedCIO teaches or suggests "detecting, at a location within the
transparent portion of the remote desktop, a user-input action directed to the
natively-operating application" and "passing the user-input action through
the transparent portion of the remote desktop to the natively-operating
application," as recited in independent claim 1 and commensurately recited
in independent claims 10 and 16.
The Examiner relies on the combination of Schmieder and
CertifiedCIO to teach or suggest the disputed limitations. Final Act. 8-11;
Ans. 2-12. Specifically, the Examiner finds that although Schmieder does
not explicitly teach the disputed limitations, Schmieder discloses that "item
117B shown in background [of Figure IB] is on the transparent portion of
the remote desktop," and "one of ordinary skill in the art can expect this
local application (item 117B) to accept user-input action." Final Act. 9. The
Examiner relies upon Schmieder's disclosure that "'anything that is not
rendered by the window itself will end up being transparent on the client."'
Final Act. 9 (citing Schmieder ,r 46); see also Ans. 2-3. The Examiner finds
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Application 14/145,236
"CertifiedCIO discloses a mouse click action is passing through a
transparent area, directed to the local application window and bring[ing] the
local application window to the front." Ans. 3; see also Final Act. 9-10.
The Examiner finds "the mouse click action of CertifiedCIO is toward a
transparent portion of surface as described in Schmieder." Ans. 5; see also
Ans. 11. As to the combination of the two references, the Examiner finds it
was "well known that a user could click on different windows area and
select a particular window." Ans. 6; see also Ans. 10. The Examiner further
finds "[t]he suggestion/motivation would have been in order to have a
seamless integration of the remote application program with the desktop of
the local computer." Final Act. 11 (citing Schmieder ,r 18). The Examiner
further finds "these two arts are combined and in fact easily understood by
one of ordinary skill in the art that these two features are in Microsoft
RemoteApp product." Ans. 5-6.
Appellants contend the Examiner improperly finds Schmieder' s local
application window box 117B in Figure lB is on a transparent portion of the
remote desktop so that the local application may accept user-input action.
App. Br. 8. According to Appellants, although Schmieder discloses that the
surface onto which a remote application window box is rendered "'may also
include a padding of a particular size"' and "this padding may be
transparent,"" ... nowhere does the Final Office Action provide a passage of
Schmieder that teaches detecting any user-input actions within this padding
that are directed to a natively-operating application." App. Br. 8-9 (citing
Schmieder ,r,r 27, 42, 43, 46). Appellants further argue "[n]owhere does
Schmieder teach or suggest passing, for example, a mouse click through the
padding (i.e., the narrow shaded area on top of the remote application
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Appeal2017-010376
Application 14/145,236
window box 117 A) to the local application window box 117B." App.
Br. 11. Likewise, Appellants argue CertifiedCIO does not "make any
mention of a transparent region of a remote desktop" or "any transparent
portion of a remote desktop in which a mouse click may be detected." App.
Br. 13; see also App. Br. 14. Appellants further argue the Examiner's
reasoning is based on improper hindsight in that "Schmieder provides no
motivation to use the padding as asserted in the Final Office Action"
because "the purpose of the padding in Schmieder is entirely different" in
that it "assists with caching, but also allows the compression of data with
algorithms and facilities that requires a specific alignment for encoding and
decoding" and "enables the rendered window to be resized ... without
requiring the surface to be destroyed, recreated and transmitted to the client
computing device." App. Br. 10 (citing Schmieder ,r 57); see also App. Br.
11-12.
We are persuaded by Appellants' arguments. Schmieder describes
rendering a remote application window having transparency characteristics,
such as the border of the window is transparent or semi-transparent.
Schmieder ,r,r 18, 23, 44, Fig. lB. Schmieder describes "anything that is not
rendered by the window itself will end up being transparent on the client."
Schmieder ,r 46. Therefore, Schmieder teaches a transparent border area of a
remote application window. However, we agree with Appellants that
Schmieder does not describe a user input action on that transparent border
area. See also Ans. 7 ("Schmieder does not explicitly teach a user input.").
CertifiedCIO is a video walk-through of Windows Server 2012
RemoteApp on Windows 7. The Examiner relies on CertifiedCIO's video
from 8:42 to 8:45, which depicts a remote application window in the
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Application 14/145,236
foreground on the left side of the display and a local application window in
the background on the right side of the display. Ans. 7. The mouse clicks
on the local application window, bringing it to the forefront. Therefore,
CertifiedCIO teaches a user input on a local application window. However,
although the Examiner finds "CertifiedCIO discloses a mouse click action is
passing through a transparent area," (Ans. 3; Final Act. 9-10), we do not
see, and the Examiner does not explain, where CertifiedCIO discloses that
the mouse click action is passing through a transparent area of the remote
application window. Rather, the evidence of record shows CertifiedCIO
merely discloses a user input on a local application window to bring it to the
forefront.
Considering the combination of the two references, we find the
Examiner's rationale for combining the references deficient and unclear.
Although the Examiner relies in part on both references mentioning the
RemoteApp product (Ans. 11) and the RemoteApp product teaching the two
disputed limitations (Ans. 5---6) (and indeed, CertifiedCIO is a walkthrough
of the RemoteApp product), as noted above, the evidence of record does not
show that the RemoteApp product teaches the mouse click action is detected
on and passed through a transparent area of the remote application window,
as claimed.
Moreover, the Examiner's finding that one of ordinary skill in the art
would have been motivated "in order to have a seamless integration of the
remote application program with the desktop of the local computer" does not
sufficiently explain why one of ordinary skill in the art would have
combined Schmieder's transparent border with CertifiedCIO's user input.
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (Stating that
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Application 14/145,236
"[r]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness" (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).).
Although we appreciate that the individual findings relied upon from
Schmieder and CertifiedCIO appear to teach a remote application window
with a transparent border characteristics, and a user input on a local
application window, respectively, we note that a claim "composed of several
[features] is not proved obvious merely by demonstrating that each [feature]
was, independently, known in the prior art." KSR, 550 U.S. at 418. Rather,
a sustainable obviousness rejection further needs to explain the reasoning by
which those findings support the Examiner's conclusion of obviousness.
Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir.
2009). In this case, the rejection fails to meet this required standard.
Accordingly, on this record, we do not sustain the Examiner's
35 U.S.C. § 103 rejection of independent claims 1, 10, and 16, and for the
same reasons, dependent claims 2-7, 9, 12-15, 17-22, and 24--26.
DECISION
We reverse the Examiner's 35 U.S.C. § 103(a) rejection of claims 1-
7, 9, 10, 12-22, and 24--26.
REVERSED
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