Jeremy Stevens et al.

Patent Trials and Appeals Board

Aug 21, 2020

2020000269 (P.T.A.B. Aug. 21, 2020)

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.
12/942,118 11/09/2010 Jeremy Max Stevens 14917.1588US01/330609.01 1069
27488 7590 08/21/2020
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
CHAUDHURI, ANITA
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
08/21/2020 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):
USPTO27488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEREMY MAX STEVENS, ROBERT ROLNICK, and
ZHENJUN ZHU (ALEX)
____________________

Appeal 2020-000269
Application 12/942,1181
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
JUSTIN BUSCH, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 32–37, 39–46, and 48–51. Claims 1–31, 38, and 47 have

1 In the instant application, Appellant’s Petition Under Rule 41.3 to the
Chief Administrative Patent Judge filed July 13, 2020 (“Fast Track Appeals
Pilot Program”), was granted in the Decision on Petition mailed July 15,
2020.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). According to
Appellant, Microsoft Technology Licensing, LLC is the real party in interest
(see Appeal Br. 3).
Appeal 2020-000269
Application 12/942,118

2
been canceled (see Appeal Br. 25, 26, 29) (Claims Appendix). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

INVENTION
Appellant’s invention, entitled “PARTIAL LOADING AND
EDITING OF DOCUMENTS FROM A SERVER” (Title), is directed to an
apparatus and “method for accessing a document at a client computer”
(Spec. ¶ 3), and to “systems and methods for partial loading and editing of
documents stored on a server computer” (Spec. ¶ 15). Appellant recognized
that “[w]hen accessing a document on a client computer across a network,
time delays may occur due to transmission distances, document length and
other factors” (Spec. ¶2). Therefore, Appellant devised a system and
method for partial loading or editing of only certain portions of a document
being accessed from a server by a client device (see Figs. 5, 6; Spec. ¶¶ 4, 5,
15–17, 44–63; see also Appeal Br. 31 (Evidence Appendix, “Drawing of
Claim 1 Document Portions”)). Independent method claim 32 is illustrative
of the invention and is reproduced below, with bracketed lettering and
emphases added to disputed portions of the claim.
32. A method for partially loading a document on a client
for conserving client resources by loading portions of the
document, the method comprising:
sending a first request to a server computer to open a first
portion of the document, wherein the first portion of the
document includes less than an entire portion of the
document, and wherein the first request includes a parameter
specifying a size of a display on a client computer;
Appeal 2020-000269
Application 12/942,118

3
[A1] receiving the first portion of the document from the
server computer, [A2] along with an indication whether more
of the document is available;
[B] rendering a second portion of the first portion of the
document on the client display, the second portion comprising a
subset of the first portion;
scrolling to a second part of the first portion of the
document, wherein the second part of the first portion of the
document follows the second portion of the document; and
in response to scrolling to the second part of the first
portion of the document:
rendering the second part of the first portion of the
document on the display;
sending a second request to the server computer to
receive a third portion of the document from the server
computer, wherein the third portion of the document
follows the first portion of the document; and
receiving the third portion of the document from
the server computer.

Appeal Br. 25, Claims Appendix (emphases and bracketed lettering
added).

EXAMINER’S REJECTION
The Examiner rejected claims 32–37, 39–46, and 48–51 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Goodwin
et al. (US 2008/0079972 A1; published April 3, 2008) (hereinafter,
“Goodwin”), Jacobs (US 2006/0031760 A1; published Feb. 9, 2006), and
Cunningham et al. (US 6,754,621 B1; published June 22, 2004) (hereinafter,
“Cunningham”). Non-Final Act. 2–6.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 6–
Appeal 2020-000269
Application 12/942,118

4
23; Reply Br. 3–11), the Examiner’s rejection (Final Act. 2–6), and the
Examiner’s response to Appellant’s arguments (Ans. 3–10). Appellant’s
arguments have persuaded us of error in the Examiner’s rejection of all of
the disputed claims under 35 U.S.C. § 103(a).
Appellant presents several arguments asserting the Examiner’s
rejections of independent claims 32, 42, and 51, each relying upon the
combination of Goodwin, Jacobs, and Cunningham, is in error (see Appeal
Br. 8–13; Reply Br. 3–6). The dispositive issue presented by these
arguments is whether the Examiner erred in finding Cunningham teaches or
suggests limitation A2, and thus also erred in finding the combination of
Goodwin, Jacobs, and Cunningham teaches or suggests limitation A1 and
A2 of independent claim 32, and the commensurately recited limitations in
remaining independent claims 42 and 51.3
The Examiner’s conclusion of obviousness is based on the finding that
claims 32, 42, and 51, and specifically limitation A2 recited in claim 32 and
the similarly recited limitations in claims 42 and 51, is disclosed by
Cunningham (see Non-Final Act. 4). Limitation A2 of claim 1, and the
commensurate limitations of claims 42 and 51, requires that “an indication
whether more of the document is available” (claim 32, limitation A2) be
received at a client device “along with” a “first portion of the document”

3 We recognize that Appellant’s arguments present additional issues,
namely, whether (i) Goodwin teaches or suggests limitation B recited in
claim 32 and commensurately recited in remaining independent claims 42
and 51; and (ii) there is sufficient motivation for the combination of
references. Because we are persuaded of error by the issue presented as to
limitations A1 and A2, we do not reach the additional issues regarding
limitation B and the motivation to combine, as the issue with respect to
limitations A1 and A2 is dispositive of the appeal.
Appeal 2020-000269
Application 12/942,118

5
(claim 32, limitation A2).
The Examiner finds that “Cunningham discloses specifying an
indication whether more of the document is available (column 7, line[s] 27-
31, line[s] 42-45)” (Non-Final Act. 4; see also Ans. 5 (making the same
finding)), and reasons that it would have been obvious, in order to better
partially load a document on a client while conserving client resources, to
modify Goodwin’s partial loading method with Cunningham’s indication
that more of a document is available (see Non-Final Act. 4–5), because
“knowing in advance [that more of a document is available] is useful
information for an efficient communication between the server and client.
One of ordinary skill would do so to maintain the connection [Cunningham:
column 7, line[s] 33-37]” (Non-Final Act. 5).
Column 7 of Cunningham, relied on by the Examiner as teaching or
suggesting limitation A2, reads as follows:
Appendix A contains exemplary code for the communication
server 61 to transmit to signal to the client 11 that the document
is to be a very large document.

Column 7, lines 27–31 (emphasis added). Column 7 further discloses:
It should be noted that the virtual connection or pseudo web
browser message pathway is conventionally kept open by the
client web browser expecting to receive the remaining large
document, mux.html.

Column 7, lines 42–45.
Appellant argues, and we agree, that “the Office Action’s reliance on
Cunningham is misplaced because this reference fails to remedy the
deficiencies of the Goodwin reference” (Appeal Br. 11). Specifically,
Appellant’s contentions in this regard are persuasive:
Appeal 2020-000269
Application 12/942,118

6
The cited portion of Cunningham merely discloses the sending of
a signal from the server to the client that the server is set to
transmit a large document. The reason for sending the signal is
“so that the web browser connection is maintained throughout
the transmission or communication session.” Applicant
respectfully submits that the sending of such a warning signal has
nothing whatsoever to do with the recited receiving of a first
portion of a document along with an indication whether more of
the document is available.

Appeal Br. 11 (emphasis added). Indeed, a signal that a document is a very
large document is not the same as “an indication whether more of the
document is available” (see e.g., claim 32, limitation A2), as set forth in
claims 32, 42, and 51. As a result, Appellant has sufficiently shown that the
Examiner erred in finding Cunningham teaches or suggests limitation A2,
and therefore erred in finding the combination of Goodwin and Cunningham
teaches or suggests the ordered combination of limitations A1 and A2.
Therefore, Appellant has shown the Examiner’s rejection based on the
combination of Goodwin, Jacobs, and Cunningham to be in error.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 32, 42, and 51, and the claims which depend
thereupon. Accordingly, we do not sustain the Examiner’s rejections of
independent clams 32, 42, and 51, or dependent claims 33–37 and 43–50,
based upon the combination of Goodwin, Jacobs, and Cunningham.

Appeal 2020-000269
Application 12/942,118

7
CONCLUSION
We reverse the Examiner’s rejection of claims 32–37, 39–46, and 48–
51 under 35 U.S.C. § 103(a).

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
32–37, 39–46,
48–51
103(a) Goodwin, Jacobs,
Cunningham
32–37, 39–
46, 48–51

REVERSED