Ex Parte Lalmalani et alDownload PDFPatent Trial and Appeal BoardJan 9, 201713653306 (P.T.A.B. Jan. 9, 2017) Copy Citation 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. 13/653,306 10/16/2012 Rahul Jaikrishin Lalmalani 13768.2826.1 7496 47973 7590 01/11/2017 WORKMAN NYDEGGER/MICROSOFT 60 EAST SOUTH TEMPLE SUITE 1000 SALT LAKE CITY, UT 84111 EXAMINER LEVY, AMY M ART UNIT PAPER NUMBER 2179 NOTIFICATION DATE DELIVERY MODE 01/11/2017 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): Docketing @ wnlaw. com u sdocket @ micro soft .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAHUL JAIKRISHIN LALMALANI, JANE T. KIM, JENNIFER C. TRAHAN, MARCUS A. LEWIS, MARY- LYNNE WILLIAMS, LINDSEY R. BARCHECK, WARREN G. STEVENS, SARAH J. BOWERS, and MIRKO MANDIC Appeal 2016-000725 Application 13/653,3061 Technology Center 2100 Before STEPHEN C. SIU, TERRENCE W. McMILLIN, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7, 9-22, 24-27, 29, and 30, which are all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Microsoft Corporation. App. Br. 3. 2 Claims 8, 23, and 28 have been canceled. App. Br. 33, 37, 38 (Claims App’x). Appeal 2016-000725 Application 13/653,306 STATEMENT OF THE CASE Introduction Appellants’ application relates to enabling a web browser to promote the availability of an installable application that is associated with a website to which the web browser has navigated. Spec. ^ 4. Claim 1 is illustrative of the appealed subject matter and reads as follows with the disputed limitations italicized'. 1. A method comprising: navigating, via a web browser having a web browser user interface, to a website having content, the web browser being configured to display a user interface instrumentality associated with the website, the user interface instrumentality being displayed in a location and having a first viewable appearance configured to be presented when the website does not have an installable application and a second different viewable appearance in the location when the website has an installable application, the second viewable appearance being user- selectable; ascertaining, via the web browser, whether the website has any information associated with an installable application that can be used to enable consumption of at least some of the content of the website, the web browser being configured to provide contextual information to the installable application so that the content of the website can be consumed by either the web browser or the installable application; responsive to ascertaining said information, ascertaining, via the web browser, whether the installable application has been installed; responsive to the installable application not being installed, displaying, via the web browser, the second different viewable appearance of the user interface instrumentality in the form of an application store button sufficient to enable a user to navigate to an application store to acquire the installable 2 Appeal 2016-000725 Application 13/653,306 application; responsive to the installable application being installed, displaying a switching user interface in the web browser, the switching user interface being configured to enable the user to opt to switch from the web browser to the installed application so that at least some of the website content can be consumed by the installed application, the contextual information being associated with a state of the web browser's current navigation; and responsive to receiving an option to switch from the web browser to the installed application, visually replacing the web browser user interface with a user interface of the installed application through which at least some of the content of the website can be consumed. The Examiner’s Rejections Claims 9-15, 21, 22, 24-27, 29, and 30 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter.3 Final Act. 6-7. Claims 1-7, 9-22, 24-27, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hawkins (US 2010/0058191 Al; Mar. 4, 2010), Chatterjee et al. (US 2009/0055749 Al; Feb. 26, 2009), and Kim et al. (US 2008/0201367 Al; Aug. 21, 2008). Final Act. 8-19. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ contentions. Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is 3 In the Final Office Action, the Examiner also rejected claims 16-20 under 35 U.S.C. § 101. See Final Act. 6. However, the Examiner withdrew this rejection in the Answer. See Am>. 15. 3 Appeal 2016-000725 Application 13/653,306 taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following additional points. Patentable Subject Matter Appellants argue the Examiner erred in rejecting claims 9-15, 21, 22, 24-27, 29, and 30 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. App. Br. 9; Reply Br. 5-6. In particular, Appellants argue the Examiner erred in construing the independent claims directed to a “computer readable storage medium” to cover transitory signals because “nothing in [the Specification] indicates that the phrase ‘computer readable storage medium’ is intended to cover anything other than statutory subject matter.” App. Br. 9. Appellants argue the Examiner has not identified any portion of the Specification that indicates the claims should cover transitory signals. Appellants have not persuaded us of Examiner error. As a matter of claim construction, we apply the broadest reasonable interpretation of claim terms, consistent with the Specification, as would be understood by one of ordinary skill in the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). The Examiner finds, and we agree, the Specification does not define the term “computer readable storage medium” to mean anything other than its ordinary meaning. Ans. 16. If the Specification is silent regarding the meaning of “computer usable storage medium” that term is properly construed to include both non-transitory and transitory signals. Ex Parte Mewherter, Appeal 2012-007692, 2013 WL 4477509, at *7 (PTAB 2013) 4 Appeal 2016-000725 Application 13/653,306 (precedential). Transitory signals are unpatentable as non-statutory subject matter under § 101. See In reNuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Accordingly, we agree with the Examiner that independent claims 9 and 24 claim unpatentable subject matter. We, therefore, sustain the rejection of independent claims 9 and 24, as well as dependent claims 10- 15,21,22, 25-27, 29, and 30. Obviousness Appellants argue the Examiner erred in rejecting claim 1 as obvious over Hawkins, Chatterjee, and Kim. App. Br. 11-18; Reply Br. 6-10. In particular, Appellants argue neither Hawkins, Chatterjee, nor Kim teaches or suggests “responsive to the installable application being installed, displaying a switching user interface in the web browser . . .” as recited in claim 1. App. Br. 14-18. Appellants argue Hawkins “clearly describes” that its “web browser” and “alternative application center” (the claimed “switching user interface”) are “separate and distinct from one another.” App. Br. 14. Appellants argue Figure 1A of Hawkins shows the web browser 102 and alternative application control center 104 are separate components in the computer system 101. App. Br. 16. Appellants argue Chatterjee does not cure the deficiencies of Hawkins because Chatterjee teaches web applications as separate web browser add ons and these web applications are not directed to enabling a user “to opt to switch from the web browser to the installed application so that at least some of the website content can be consumed by the installed application.” App. Br. 17. Appellants have not persuaded us of Examiner error. The Examiner finds, and we agree, Hawkins teaches an alternative application control 5 Appeal 2016-000725 Application 13/653,306 center 104 that is “configured to enable the user to opt to switch from the web browser to the installed application so that at least some of the website content can be consumed by the installed application.” Ans. 18 (citing Hawkins, Fig. 4A, Fig. 4B, 11, 53). The Examiner finds Hawkins does not expressly disclose that the alternative application control center 104 is displayed in the browser, but finds Hawkins suggests this arrangement to an ordinarily skilled artisan in Figures 3 and 4B. Ans. 18-20. Specifically, the Examiner finds Hawkins depicts the alternative application control center 104 in the top left comer of Figure 4B, showing the user interface with outlines of rectangles at its top. Ans. 19-20. The Examiner compares this user interface to the browser depicted in Figure 3 and finds these figures would have at least suggested to an ordinarily skilled artisan that the alternative application control center could be implemented in the browser because of the similarities in the pictures. Ans. 20. Appellants have not persuasively rebutted the Examiner’s findings. Appellants argue Hawkins does not expressly disclose the alternative application control center 104 is implemented in the browser (Reply Br. 5), but the Examiner does not find such an express disclosure (Ans. 18-20). Instead, the Examiner finds, and we agree, Hawkins at least suggests to an ordinarily skilled artisan that the alternative application control center 104 is part of the browser 102. Ans. 18-20. Appellants’ argument with respect to Chatterjee is also unpersuasive. Appellants argue Chatterjee does not teach or suggest the disputed limitation because the web applications in Chatterjee are not directed to enabling a user “to opt to switch from the web browser to the installed application so that at 6 Appeal 2016-000725 Application 13/653,306 least some of the website content can be consumed by the installed application.” App. Br. 17. However, the Examiner has not relied on Chatterjee for this limitation. See Ans. 21-22. Instead, the Examiner relies on Hawkins for this limitation, and relies on Chatterjee only for expressly teaching a switching user interface for installed applications in the web browser (a limitation the Examiner finds Hawkins suggests as well). Ans. 21-22. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425-26 (CCPA 1981). Accordingly, we are not persuaded the Examiner erred in rejecting claim 1. Appellants argue the patentability of independent claims 9, 16, and 24 for the same reasons as claim 1. See App. Br. 18-29. We, therefore, sustain the rejections of claims 9, 16, and 24 for the same reasons. We also sustain the rejections of dependent claims 2-7, 10-15, 17-22, 25-27, 29, and 30, which were not argued separately from their respective independent claims. See App. Br. 22, 26, 29-30. DECISION We affirm the decision of the Examiner to reject claims 1-7, 9-22, 24-27, 29, and 30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation