Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Mar 16, 2022

2021001004 (P.T.A.B. Mar. 16, 2022)

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. 15/160,628 05/20/2016 Lukas Barton 359428-US-NP (1777.A21US1 8973 144365 7590 03/16/2022 Schwegman Lundberg & Woessner, P.A. P.O. Box 2938 Minneapolis, MN 55402 EXAMINER WOLDEMARIAM, AYELE F ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): SLW@blackhillsip.com usdocket@microsoft.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte LUKAS BARTON, DAN MIHAI DINU, IRYNA KULAKOVA, and OLEH BABYAK1 ________________ Appeal 2021-001004 Application 15/160,628 Technology Center 2400 ________________ Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and JEREMY J. CURCURI, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-11, 13-19, and 21-23 which constitute all of the pending claims. Appeal Br. 11-18. We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts a limited de novo review of 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). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Microsoft Technology Licensing, LLC as the real party in interest. Appeal Brief 3, filed July 27, 2020 (“Appeal Br.”). Appeal 2021-001004 Application 15/160,628 2 CLAIMED SUBJECT MATTER Appellant describes the presently claimed subject matter as follows: There is provided a method comprising: transmitting, by a user terminal, to a state server a request for state change information of a service provided by the user terminal; receiving, by the user terminal, an indication of said state change information from the state server; and using, by the user terminal, said received indication to determine whether or not to suppress a polling relating to said service of a master server. Spec., Abstr. Independent claim 1, reproduced below, illustrates the subject matter of the appealed claims: 1. A method comprising: transmitting, by a user terminal to a state server, a request for a state of a service provided by a master server to the user terminal, the state server being separate from the master server; receiving, by the user terminal from the state server, the state of the service; comparing the received state of the service to a stored state of the service to generate an indication that there is a state change for the service or that there is no state change for the service; and selectively suppressing, by the user terminal, a polling of the master server for state information for the service based on the indication that there is no state change for the service. STATEMENT OF THE REJECTIONS2 Claims 1-11, 13-19, and 21-23 stand rejected under 35 U.S.C. § 103 as being unpatentable over Karlsen (US 2009/0144359 A1; published 2 The Examiner initially rejected claims 1, 13, and 21 under 35 U.S.C. § 112(a) for failing to comply with the written-description requirement. Appeal 2021-001004 Application 15/160,628 3 June 4, 2009), Grah (US 2008/0247320 A1; published Oct. 9, 2008), and Koike (US 6,742,181 B1; issued May 25, 2004). Final Act. 3-8. DETERMINATIONS AND CONTENTIONS The Examiner finds that Karlsen discloses most of the limitations of independent claim 1, but does not disclose transmitting, by a user terminal to a state server, a request for a state of a service provided by a master server to the user. Final Act. 3-4. The Examiner finds that Grah teaches this limitation and that motivation existed to incorporate this functionality into Karlsen’s system in order to increase the capability of notifying an updating of information in Karlsen’s system. Id. at 4 (citing Grah ¶¶ 20, 102). The Examiner further finds that Karlsen also does not explicitly disclose comparing the received state of the service to a stored state of the service to generate an indication of whether there is a state change for the service. Final Act. 4. The Examiner finds that Koike teaches this language. Id. (citing Koike, col. 9, ll. 26-27). And the Examiner determines that one of ordinary skill would have been motivated to use this functionality in Karlsen’s system “in order to improve efficiency of notifying an updating information of Karlsen system.” Id. at 4-5. Appellant argues, inter alia, that independent claims 1, 13, and 21 all require that the user terminal receive the state of the service from the state server, and “it must be the user terminal that is ‘comparing the received state of the service to a stored state of the service.’” Appeal Br. 14 (emphasis added). Appellant argues that the passage of Koike upon which the Final Act. 2-3. But the Examiner subsequently withdrew this rejection. Examiner’s Answer 3, mailed September 28, 2020 (“Ans.”). Appeal 2021-001004 Application 15/160,628 4 Examiner relies “describe[s] a ‘resident agent 20 [that] reads out data stored in the database 16 using the data readout function of the business program 15, stores a current status of the data, and compares the current status with the previous status of the data.” Id. (citing Koike col. 9, ll. 26- 27). Appellant argues, “the resident agent corresponds either to the master server or the state server of the subject application. It does not correspond to the user terminal.” Id. at 15. According to Appellant, “Koike discloses nothing beyond Karlsen[,] which discloses that the web server, either directly or through the push server, notifies the UE when there is a state change.” Id. ANALYSIS “Before considering the rejections . . ., we must first [determine the scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). We, therefore, first address the meaning of the claim term “a state of a service,” as recited in independent claims 1, 13, and 21. Appellant’s Specification uses this term “state” inconsistently, sometimes referring to the contents of memory locations that store information relating to a computer program and other times referring to a unique value that represents this stored content state. See, e.g., Spec. 2 (emphasis added): At any point in the execution of a computer program, the computer program has data stored as variables, which represents storage location in memory. The contents of these memory locations at a given point in the program’s execution is known as the state of the computer program/service, and may be represented by a unique value. Appeal 2021-001004 Application 15/160,628 5 As used in the context of the present claims, we understand “a request for a state of service provided by a master server to the user terminal” to mean a request for a unique value or identifier that represents the contents of the data stored in a computer’s memory. See, e.g., Spec. 33 (“the received state information may comprises a current state identifier, such as an entity tag (ETag) as used in HTTP.”). Turning to the merits of the arguments, we agree with Appellant that the independent claims require that the user terminal is the component that “compar[es] the received state of the service to a stored state of the service to generate an indication that there is a state change for the service or that there is no state change for the service,” as claimed. Appeal Br. 14, 20. We also agree with Appellant that the passage of Koike, upon which the Examiner relies, does not teach or suggest that a user terminal perform the claimed comparison of the received state to a stored state. Koike col. 9, ll. 26-27. Rather, Koike teaches that the resident agent 20 performs the comparison between the current and former status of the data. Id. Koike further indicates that the resident agent 20 is located in the business- dependent processing unit 21, which is not located at the user terminal. See, e.g., Koike col. 7, ll. 3-23; Fig. 1. Furthermore, the Examiner does not set forth any reasoning or explanation of why it would be reasonable to interpret Koike as teaching or suggesting that the claimed comparison is performed in a user terminal. See Final Act. 4-5; Examiner’s Answer 11-12, mailed Sept. 28, 2020. For the foregoing reasons, Appellant persuades us of error in the Examiner’s obviousness rejection of independent claims 1, 13, and 21. Appeal 2021-001004 Application 15/160,628 6 Accordingly, we reverse the Examiner’s rejection of these claims and of claims 2-11, 14-19, 22, and 23, which depend from these independent claims. DECISION SUMMARY In summary: REVERSED Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1-11, 13-19, 21-23 103 Karlsen, Grah, Koike 1-11, 13- 19, 21-23