Ex Parte Lalmalani et al

Patent Trial and Appeal Board

Jan 9, 2017

13653306 (P.T.A.B. Jan. 9, 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.
13/653,306 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
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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.
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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)
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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
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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
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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
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