Microsoft Technology Licensing, LLC

Patent Trials and Appeals BoardNov 2, 2021

2020002563 (P.T.A.B. Nov. 2, 2021)

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. 15/431,998 02/14/2017 Ginger Elizabeth Tien 14917.1913USC1/333764USC1 4334 69316 7590 11/02/2021 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER HERSHLEY, MARK E ART UNIT PAPER NUMBER 2164 NOTIFICATION DATE DELIVERY MODE 11/02/2021 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): chriochs@microsoft.com ljohnson@microsoft.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GINGER ELIZABETH TIEN, MICHAEL ANTHONY AFFRONTI, RIKINKUMAR SHAH, and CHRISTINA MARIE MEYER ____________________ Appeal 2020-002563 Application 15/431,998 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 1 Our Decision refers to Appellant’s Appeal Brief filed August 14, 2019 (“Appeal Br.”); Appellant’s Reply Brief filed February 11, 2020 (“Reply Br.”); Examiner’s Answer mailed December 11, 2019 (“Ans.”); the Final Action mailed December 31, 2018 (“Final Act.”), and the Specification filed April 4, 2017 (“Spec.”). Appeal 2020-002563 Application 15/431,998 2 Appellant2 seeks our review3 under 35 U.S.C. § 134(a) from the final rejection of Claims 21–40, all pending claims. Appeal Br. 19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE INVENTION. The claims relate to an aggregate display of contact data from internal and external sources. See Abstract. Claims 21, 28, and 35 are independent. Appeal Br. 18. An understanding of the invention can be derived from a reading of Claim 21 which is reproduced below with some formatting added: 21. A method for aggregating contact data of a user, comprising: receiving, from the user over a network, a user-defined request associated with the user to obtain contact data associated with a contact of the user from a plurality of sources; obtaining contact data associated with the contact from the plurality of sources; processing the contact data to generate an aggregated collection of contact data, wherein processing the contact data further comprises: 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies Microsoft Technology Licensing, LLC of Redmond, Washington, as the real party in interest. Appeal Br. 3. 3 We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2020). Appeal 2020-002563 Application 15/431,998 3 receiving, from the user over the network, a user- defined preference order associated with the user for the plurality of sources; and providing the aggregated collection of contact data for presentation in ranked order according to the user- defined preference order; associating, with at least one contact data in the aggregated collection of contact data, a link that provides access to the at least one contact data at the source of the contact data; and transmitting, to the user over the network, the aggregated collection of contact data for the contact. Prior Art Name4 Reference Date Blants US 6,732,080 B1 May 4, 2004 Tien US 9,600,804 B2 Mar. 21, 2017 Weitzman US 2004/0225525 A1 Nov. 11, 2004 Naono US 2008/0219427 A1 Sept. 11, 2008 Smith US 2010/0306185 A1 Dec. 2, 2010 Polis US 2011/0256889 A1 Oct. 20, 2011 Carwile, Jr. US 2012/0226527 A1 Sept. 6, 2012 REJECTIONS5 AT ISSUE. 1. Claims 21–40 stand rejected under the ground of nonstatutory double patenting over Claims 1 and 4 of Tien. Final Act. 5–6. 2. Claims 21, 22, 27–29, and 34–36 stand rejected under 35 U.S.C. § 103(a) as obvious over Weitzman and Naono. Final Act. 7–11. 4 All citations herein to the references are by reference to the first named inventor/author only. 5 The present application is being examined under the pre-AIA first to invent provisions. Final Act. 2. Appeal 2020-002563 Application 15/431,998 4 3. Claims 23–25, 30–32, and 37–39 stand rejected under 35 U.S.C. § 103(a) as obvious over Weitzman, Naono, and Smith. Final Act. 11–12. 4. Claims 26, 33, and 40 stand rejected under 35 U.S.C. § 103(a) as obvious over Weitzman, Naono, Smith, and Blants. Final Act. 13–14. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellant actually raised in the Briefs. After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are persuaded that Appellant identifies reversible error. We add the following primarily for emphasis. CLAIMS 21–40: DOUBLE PATENTING. Appellant does not request review of the non-statutory obviousness type double patenting rejection over Tien, US 9,600,804. See Final Rej. 5; see generally Appeal Br. We therefore summarily affirm this rejection. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board.”). The failure to appeal is a forfeiture under Ex parte Frye, 2010 WL 889747 *4 (BPAI Appeal 2020-002563 Application 15/431,998 5 2010) (precedential) (“If an appellant fails to present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection”). CLAIMS 21, 22, 27–29, AND 34–36: OBVIOUSNESS OVER WEITZMAN AND NAONO. Appellant contends: “Based at least on the foregoing, Appellants submit claim 21-40 are not obvious based on the combination of Weitzman and Naono. Appellants therefore request the withdrawal of the rejections and the allowance of the claims.” Reply Br. 10. Appellant designates Claim 21 as representative. See Appeal Br. 15 (“the combination of Weitzman and Naono does not render independent claim 21 obvious because the combined references do not teach or suggest every element in the claim. Since independent claim 28 recites related elements, Appellants further submit claim 28 is not obvious based on the combined references”) see also Appeal Br. 16 (“Appellants’ arguments with respect to claim 21 apply to these claim elements [of independent Claim 35] as well. The combination of Weitzman and Naono does not teach or suggest these aspects of the claim.”). Therefore, we decide the appeal of the § 103(a) rejections on the basis of representative Claim 21 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). The user. Independent claim 21 recites, inter alia, “receiving, from the user over a network, a user-defined request associated with the user to obtain Appeal 2020-002563 Application 15/431,998 6 contact data associated with a contact of the user from a plurality of sources” and “receiving, from the user over the network, a user-defined preference order associated with the user for the plurality of sources.” Emphasis added. The Examiner finds Weitzman teaches obtaining and aggregating contact data. Final Act. 8. The Examiner also finds Weitzman fails to teach a user-defined request and a user-defined preference order associated with the user. Id. The Examiner finds Naono teaches receiving from the user a user-defined request and priority order. Final Act. 9. Appellant contends, in Claim 21, the various recitations of “the user” refer to the same user. Appeal Br. 8. Appellant argues Naono teaches “communication partners B, C, and D send their contact information and their priority order for the contact information to the terminal of User A. Appeal Br. 8–9 (citing Naono ¶¶ 32, 53; Fig. 3A, Step, S303). The Examiner does not respond to Appellant’s arguments presented at pages 8 and 9 of the Appeal Br. See Ans. 3 (“Response to Argument Applicant presents the following argument in the second paragraph of page 10:”). Independent Claim 21 recites, inter alia, “[a] method for aggregating contact data of a user, comprising: receiving, from the user over a network, a user-defined request.” (Emphasis added). Where, as here, a claim term (e.g., user) first appears with the indefinite article “a” and later appears with a definite article, such as “the,” the Federal Circuit has found that the terms share an “antecedent basis” relationship and apply an “initial assumption” that the latter occurrence carries the same meaning as the former. See Microprocessor Enhancement Corp. v. Tex. Instrs. Inc., 520 F.3d 1367, Appeal 2020-002563 Application 15/431,998 7 1375 (Fed. Cir. 2008) (agreeing with a “district court’s initial assumption that a single ‘claim term should be construed consistently with its appearance in other places in the same claim . . .’”) (citation omitted). .” Best practice dictates it is important that it is important that a new item mentioned for the first time in the claim not be first mentioned as an element operated upon or cooperated with by a previous element described in the same clause. A new element or step is introduced with an indefinite article “a” or “an.” (Some plural items have no introductory article “a” and are introduced by the plural noun itself. But, from the context, the silent introductory indefinite article can be inferred.). On the other hand, when a previously identified element or step is repeated, it is introduced by a definite article “the” or “said.” See Robert C. Faber, Faber on Mechanics of Patent Claim Drafting § 2:2, at 2-2 (6th ed. 2009). Applying this guidance here, we find the various recitations of “user” in Claim 21 refer to the same “user.” Although the various recitations of Claim 21 refer to the same user, the Examiner synthesizes the actions of Naono’s Users A, B, C, and D to teach actions that are claimed as being performed by the single, claimed user. The Examiner finds: “user requests communications in a priority order from the various sources. . . and User A searches and received contact data from the partner database.” Final Act. 9 (citing Naono ¶ 54). Thus, the Examiner maps the claimed “user” onto “User A” disclosed by Naono. However, as argued by Appellant (see Appeal Br. 8), Naono further discloses: the above-mentioned additional information is sent from Users B, C and D and is stored in User A’s terminal. This information indicates the priority level of the communication services by which each user of the information terminal which Appeal 2020-002563 Application 15/431,998 8 transmitted these items of information would like to communicate with User A. Naono ¶ 54 (cited by the Examiner). Thus, Naono discloses User A generates the request, but User B (or C or D) indicates the priority level. This disclosure is contrary to the claims which require that the same user generates the request and indicates the priority level. In view of the foregoing, we decline to sustain the rejection of Claims 21, 22, 27–29, and 34–36 under 35 U.S.C. § 103(a). CLAIMS 23–25, 30–32, AND 37–39: OBVIOUSNESS OVER WEITZMAN, NAONO, AND SMITH. The Examiner does not apply Smith to teach the limitations discussed above. See generally Answer. In view of the foregoing, we decline to sustain the rejection of Claims 23–25, 30–32, and 37–39 under 35 U.S.C. § 103(a). CLAIMS 26, 33, AND 40: OBVIOUSNESS OVER WEITZMAN, NAONO, SMITH, AND BLANTS. The Examiner does not apply Smith or Blants to teach the limitations discussed above. See generally Answer. In view of the foregoing, we decline to sustain the rejection of Claims 26, 33, or 40 under 35 U.S.C. § 103(a). Appeal 2020-002563 Application 15/431,998 9 DECISION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–40 Nonstatutory Double Patenting Tien 21–40 21, 22, 27– 29, 34–36 103(a) Weitzman, Naono 21, 22, 27–29, 34–36 23–25, 30– 32, 37–39 103(a) Weitzman, Naono, Smith 23–25, 30–32, 37–39 26, 33, 40 103(a) Weitzman, Naono, Smith Blants 26, 33, 40 Overall Outcome 21–40 FINALITY AND RESPONSE Because we have sustained at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision to reject all claims on appeal. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED