Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jun 24, 2021

2020005468 (P.T.A.B. Jun. 24, 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.
15/608,777 05/30/2017 Gregory M. SMITH 402013-US-
NP (362723.01)
5915
69316 7590 06/24/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
ZHANG, YINGCHUAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/24/2021 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
jkarr@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 GREGORY M. SMITH, HEATHER GRANTHAM BRODIE,
CHAD GIBSON, JONATHAN J. CARUANA, HAMZE M. KALACHE,
GERSH PAYZER, SAMANTHA E. VIM, and
CHRISTOPHER M. MCALLEN
____________

Appeal 2020-005468
Application 15/608,777
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Feb. 28, 2020, hereinafter “Final
Act.”) rejecting claims 1–8, 10–18, 20, 22, and 23.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Microsoft Technology Licensing, LLC is identified as the
real party in interest in Appellant’s Appeal Brief (filed Apr. 30, 2020,
hereinafter “Appeal Br.”). Appeal Br. 2.
2 Claims 9, 19, and 21 are canceled. Appeal Br. 24, 26 (Claims App.).
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SUMMARY OF DECISION
We AFFIRM IN PART.

INVENTION
Appellant’s invention relates to technology allowing a spectator
“viewing a stream of live game play to ‘jump in’ and join the game and/or
take over for an existing player without having to obtain a physical copy of
the game to execute on and/or broadcast from a local processing device.”
Spec. para. 30.
Claims 1, 7, and 14 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A broadcasting device comprising:
a broadcasting agent stored in memory and
executable by a processor to broadcast an application
data stream to a spectating device, the application data
stream being generated by an application that is locally-
executing on the broadcasting device;
an input driver stored in memory and executable
by the processor to convey user inputs received from a
locally-present controller to an application programming
interface (API) of the application to affect first control
actions to content within the broadcast application data
stream; and
a virtual input controller stored in memory and
executable by the processor to:
receive, during broadcast of the application
data stream, a request from the spectating device
for remote participation in the broadcast
application data stream;
translate state data received from the
spectating device from a protocol incompatible
with the input driver to a protocol compatible with
the input driver;
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request a broadcast application identifier for
a currently-broadcasting application from the
broadcasting agent; and
initialize a communication channel between
the spectating device and the input driver using the
broadcast application identifier obtained from the
broadcasting agent; and
provide the translated state data to the input
driver along the initialized communication channel
to affect second control actions to content within
the broadcast application data stream, the state data
being received, translated and provided to the input
driver without executing a secondary instance of
the application.

Appeal Br. 22 (Claims App.).

REJECTIONS

I. The Examiner rejects claims 7, 8, and 10–13 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
II. The Examiner rejects claims 1–8, 10–18, 20, 22, and 23 under
35 U.S.C. § 103 as being unpatentable over Bruzzo3 and Ross.4

ANALYSIS
Rejection I
Appellant has not presented arguments for the patentability of claims
8 and 10–13 apart from independent claim 7. Therefore, in accordance with
37 C.F.R. § 41.37(c)(1)(iv), we select claim 7 as the representative claim to

3 Bruzzo et al., US 2018/0001216 Al, published Jan. 4, 2018.
4 Ross et al., US 2014/0007086 Al, published Jan. 2, 2014.
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decide the appeal of the rejection of these claims, with claims 8 and 10–13
standing or falling with claim 7.
The Examiner finds that the limitation of “memory devices,” as
recited in independent claim 7, “does not fall within one of the four
categories of patent eligible subject matter and thus is not patent eligible.”
Final Act. 2. According to the Examiner, “[a] claim drawn to a computer
readable storage medium, under the broadest reasonable interpretation,
typically covers forms of transitory, propagating signals per se,” which “do
not fall within one of the four statutory categories of invention.” Id. (citing
In re Nuijten, 500 F.3d 1346, 1356–57 (Fed. Cir. 2007)). The Examiner
explains that because “[a] memory device, per se, does not imply any
structure or non-transitory nature,” “it is not clear that the claimed ‘memory
device’ is the same as the ‘tangible article of manufacture’ that the Federal
Circuit found eligible.” Id. at 11 (underlining omitted).
Appellant argues that “‘[m]emory’ and ‘memory devices’ have been
widely accepted by courts as ‘article[s] of manufacture’ that are statutorily
patentable.” Appeal Br. 6 (citing In Re Lowry, 32 F.3d 1579 (Fed.
Cir. 1994) and In Re Beauregard, 53 F.3d 1584 (Fed. Cir. 1995)). Appellant
explains that Lowry stands for the proposition “that a memory containing a
data structure should be considered patentable subject matter,” and in
Beauregard, “the court clarified that ‘computer programs embodied in a
tangible medium, such as floppy diskettes, are patentable subject matter
under 35 U.S.C. §101.’” Id. at 7 (underlining omitted). Appellant further
notes that “although Nuijten held that a ‘signal’ may encompass a transitory
signal, Nuijten did not make any such statement with regard to a memory
device.” Id. As such, according to Appellant, the claimed “memory device”
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constitutes “a tangible article of manufacture,” and, thus, “qualifies as
statutory subject matter under 35 U.S.C. §101.” Id.
Appellant’s Specification states that, “processing device 400 may
include a variety of tangible computer-readable media and intangible
computer-readable communication signals.” Spec. para. 68 (emphasis
added). The Specification further describes “intangible computer-readable
communication signals” as “computer readable instructions, data structures,
program modules or other data resident in a modulated data signal, such as a
carrier wave or other signal transport mechanism.” Id (emphasis added).
The Specification also describes “an article of manufacture” as
“compris[ing] a tangible storage medium to store logic.” Id. at para. 69
(emphasis added).
As such, in light of Appellant’s Specification, the Examiner is correct
that because “‘intangible computer-readable communication signals’ . . .
[are] not excluded from ‘memory device[s]’,” the limitation “memory
devices” of independent claim 7 encompasses transitory signals. Examiner’s
Answer (dated June 12, 2020, hereinafter “Ans.”) 12. In particular, we agree
with the Examiner that under the broadest reasonable interpretation,
consistent with Appellant’s Specification, the limitation “memory devices”
of independent claim 7 encompasses subject matter that falls within a
statutory category (tangible computer-readable media) and subject matter
that does not (intangible computer-readable communication signals). Id.
Accordingly, because the Specification limits “[a]n article of
manufacture” to “a tangible storage medium,” whereas independent claim 7
encompasses both tangible storage media and intangible communication
signals, Appellant’s reliance on Lowry and Beauregard is misplaced.
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Rather, we agree with the Examiner that the instant situation is more similar
to Mentor Graphics v. EVE-USA, Inc., 851 F.3d 1275, 1294 (Fed. Cir. 2017)
in which “claims present[ed] a scenario where there are multiple covered
embodiments, and not all covered embodiments are patent-eligible.”
Ans. 12. Here, the Court explained that “when a claim covers ‘both
statutory and non-statutory embodiments, it is not eligible for patenting.’”
Id. at 1295 (citing MPEP § 2106 (9th ed. Mar. 2014)). Hence, we do not
agree with Appellant “that a ‘memory device’ is patent eligible even if it
includes a combination of ‘tangible computer-readable storage media and
intangible computer-readable communication signals’.” Reply Brief (filed
July 21, 2020, hereinafter “Reply Br.”) 3 (citing Spec. para. 68) (emphasis
added). Moreover, Appellant’s arguments that an “interpretation of a
‘memory device’ (e.g., processing device 400) as consisting exclusively of
intangible computer-readable communication signals is unreasonably broad”
and “renders the term ‘device’ without meaning” are not commensurate with
the Examiner’s construction of claim 7 discussed supra. See id (emphasis
added).
In conclusion, for the foregoing reasons, independent claim 7 is
directed to non-statutory subject matter. See Nuijten, 500 F.3d at 1357–58
(“A transitory, propagating signal like Nuitjen’s is not a ‘process, machine,
manufacture, or composition of matter.’ . . . [T]hus, such a signal cannot be
patentable subject matter.”). Therefore, we sustain the rejection under 35
U.S.C. § 101 of independent claim 7, and its dependent claims 8 and 10–13,
as being directed to non-statutory subject matter.

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Rejection II
Each of independent claims 1, 7, and 14 recites, inter alia, an “input
driver” receiving first input from a locally present controller and second
input from a remote spectating device to affect control actions in a single
application “without executing a secondary instance of the application.” See
Appeal Br. 22–25 (Claims App.).
The Examiner finds that Bruzzo discloses an input driver receiving
first input from a locally present controller to affect control actions in a
single application as Bruzzo’s user computing system 410 for locally-
executing game application 420 is computing device 14 having user I/O 34
for sending and receiving commands between processing unit 20 and game
controllers. Final Act. 3–4 (citing Bruzzo, paras. 37, 52, 107, Figs. 2, 4).
The Examiner further finds that Bruzzo also discloses receiving second input
from a spectating device to affect control actions in a single application
“without executing a secondary instance of the application.” Id. at 4–5. In
particular, the Examiner notes that using Bruzzo’s invite control
button 1122, a user may join a game instance already in play, wherein the
game application loaded onto interactive game application service 1020 is
viewed and controlled by the user from viewer computing system 1006 that
is not configured to execute game application 420 locally. Id. at 5 (citing
Bruzzo, paras. 112, 117, 125, Fig. 11).
Appellant argues that although paragraph 125 of Bruzzo discloses
“that a viewer computing system may be invited to ‘join an instance of the
broadcaster’ . . . a thorough reading of the full paragraph indicates that
joining the ‘instance of the broadcaster is achieved by ‘launching [a
secondary] instance of the game application.’” Appeal Br. 12. Relying on
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Bruzzo’s Figures 12A and 12B, Appellant notes that “co-player game play is
achieved by way of an exchange of state data through two different co-
executing instances of the application.” Id. Thus, according to Appellant,
Bruzzo does not disclose receiving inputs from a locally-present controller
and a remote spectating device to affect control actions of a single
application “without executing a secondary instance of the application.” Id.
The Examiner responds that because Bruzzo discloses an embodiment
in which “‘viewer computing system 1006 may not be configured to execute
a game application 420 to execute locally on the system,’” Bruzzo discloses
an embodiment in which a user employs invite control 1122 to join a game
instance already in play “without executing a “secondary instance” of the
application.” Ans. 14.
Bruzzo discloses a broadcasting system 1002 including, inter alia,
viewer system 1004 configured to locally-execute game application 420 and
remote viewer system 1006 that may not be configured locally-execute game
application 420. See Bruzzo, paras. 115, 116 (“The viewer computing
system 1004 can include software and/or hardware configured to execute a
game application 420.”), 117 (“[T]he viewer computing system 1006 may
not be configured to execute a game application 420 to execute locally on
the system.”), Fig. 10. In such a case, when game application 420 is not
stored locally on viewer computing system 1006, Bruzzo discloses that the
user may access the game application via game application service 1020 or
by downloading game application 420. Id. at para. 124. In particular,
Bruzzo discloses that client 1022 of viewer system 1006 communicates with
game application service 1020 to provide user input “to control operation” of
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game application 420 and “to output the execution of the game application
[420].” Id. at para. 119 (emphasis added).
As such, in contrast to the Examiner’s position, Bruzzo’s gaming
application 420 is executed twice; that is, first, locally by viewer
system 1004 and second, remotely, by game application service 1020. Such
an interpretation of Bruzzo is consistent with Bruzzo’s further teaching of
invite control 1122, which permits a user to join a game instance already in
play, as having “embedded instructions to load the game application
associated with the video stream [game].” Id. at para. 124 (emphasis added).
Bruzzo specifies that joining the game requires invite control 1122 “to
launch an instance of the game application.” Id. at para. 125 (emphasis
added).
In conclusion, for the foregoing reasons, we agree with Appellant that
“Bruzzo requires parallel instances of the gaming application for
multiplayer game play hosted on a user device.” Reply Br. 6 (emphasis
added). That is, Bruzzo’s gaming application 420 is executed twice; locally,
by viewer system 1004, and remotely, by game application service 1020.
The Examiner does not employ the disclosure of Ross to remedy the
deficiency of Bruzzo discussed supra. See Final Act. 5–7. Therefore, we do
not sustain the rejection under 35 U.S.C. § 103 of independent claims 1, 7,
and 14, and their respective dependent claims 2–6, 8, 10–13, 15–18, 20, 22,
and 23, as unpatentable over Bruzzo and Ross.

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CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 8, 10–13 101 Eligibility 7, 8, 10–13
1–8, 10–18,
20, 22, 23
103 Bruzzo, Ross 1–8, 10–18,
20, 22, 23
Overall
Outcome
7, 8, 10–13 1–6, 14–18,
20, 22, 23

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 IN PART