Bernstein, Michael S. et al.

Patent Trials and Appeals Board

Dec 18, 2019

12241292 - (D) (P.T.A.B. Dec. 18, 2019)

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.
12/241,292 09/30/2008 Michael S. Bernstein 13768.3665 6852
47973 7590 12/18/2019
WORKMAN NYDEGGER/MICROSOFT
60 EAST SOUTH TEMPLE
SUITE 1000
SALT LAKE CITY, UT 84111
EXAMINER
SHAW, BRIAN F
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL S. BERNSTEIN, BRENDAN MCKEON, MASAHIKO
KANEKO, and VIDHYA SRIRAM
____________

Appeal 2018-002809
Application 12/241,292
Technology Center 2400
____________

Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
ALEX S. YAP, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21–35 and 37–41, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was
held on October 24, 2019.
We AFFIRM.

1 Throughout this Decision, we use the word “Appellant” to refer to “appli-
cant” as defined in 37 C.F.R. § 1.42(a) (2017). Appellant identifies
Microsoft, Inc. as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The invention relates to a remote automation system that allows
application accessibility information to be used remotely. Abstract; Spec. ¶
5, Figs. 3–5. Claim 21, reproduced below, is exemplary of the subject
matter on appeal (emphasis added):
21. A method of configuring a device having a processor and
executing applications to present the applications to users of
client computers, the method comprising:
executing on the processor instructions that:
for respective user interface elements of a user interface
of respective applications executing on the device, query the
application for:
at least one presentation property of the user
interface element, and
at least one event invokable on the user interface
element; and responsive to receiving, from a client
computer presenting a computing environment to the
user, a request to present a selected application having a
user interface comprising at least one user interface ele-
ment:
for the respective user interface elements of the
user interface of the selected application, send the at
least one presentation property and the at least one
event that is invokable on the user interface element to
the client computer: and
responsive to receiving from the client computer a
request to invoke an event on a selected user interface
element of the user interface of the selected application,
send to the application a request to invoke the event on
the selected user interface element.
Appeal Br. 32 (Claims Appendix).

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THE REJECTIONS
Claims 21–35 and 37–41 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Final Act. 2–3.
Claims 21–35 and 37–41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Engber et al. (US 7,448,042 B1; iss. Nov. 4, 2008)
(“Engber”) in view of AAPA (Applicant Admitted Prior Art as disclosed in
as-filed background section of original disclosure). Final Act. 4–20.

ANALYSIS
The § 112 Rejections
Regarding independent claim 21, the Examiner refers to the recita-
tions “executing applications . . . ,” “the applications . . . ,” and “respective
applications . . .” and determines it is unclear if all recitations of
“application” are referring to the same application or to a least two different
applications. Final Act. 2–3. The Examiner also separately rejects claims
22–28 and 30–35 for lack of clarity. Id. at 3.
Appellant argues the term “respective” describes the relationship of
the applications. Appeal Br. 22–23. In the Answer, the Examiner explains
that Appellant’s arguments does not address the lack of clarity. Ans. 3–4.
In the Reply Brief, Appellant argues the Examiner’s determination is
conclusory and does not address Appellant’s arguments. Reply Br. 4–7.
We are not persuaded by Appellant’s arguments. “[A] claim is
indefinite when it contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). The Examiner identified
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a lack of clarity regarding “the applications” and Appellant has not persua-
sively shown error. Therefore, we sustain the rejection of claim 21, and the
rejection of dependent claims 22–35.
Regarding independent claim 37, the Examiner refers to the recitation
“upon receiving . . . information describing a user interface,” and determines
that the claim does not indicate what action is performed upon receiving the
information. Final Act. 3. In the Appeal Brief, Appellant refers to the
recitation “present, on the display . . .” as the action that is performed.
Appeal Br. 23. In the Answer, the Examiner asserts that the “present” reci-
tation does not clarify the action performed upon receiving the information.
Ans. 3–4. In the Reply Brief, Appellant argues “at least one presentation
property” and “at least one event” indicate what is being received and
“present on the display” is the verb identifying the action performed. Reply
Br. 8–9.
We are persuaded by Appellant’s arguments because the claim sets
forth the claimed subject matter with a reasonable degree of clarity and one
of ordinary skill in the art would understand the claim with sufficient
definiteness. Therefore, we do not sustain the rejection of claim 37, and de-
pendent claims 38 and 40.
Dependent claim 39 is separately rejected for the recitation “the
application” wherein the Examiner determines it is not clear if “the
application” is the same application of claim 39, line 3, or claim 37, line 2,
or some other application. Final Act. 3. The Examiner’s determination is
reasonable and not rebutted by Appellant. Therefore, we sustain the rejec-
tion of claim 39.

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Regarding independent claim 41, Appellant argues the Examiner errs
in determining the recited “user interface transmitter” cannot “query the
application.” Appeal Br. 24–25; Final Act. 3; Ans. 4; Reply Br. 10–12. We
are persuaded by Appellant’s arguments that the Examiner presents insuffi-
cient evidence that the use of the term “transmitter” excludes other
functions, such as “querying applications” for the data to be sent.
Therefore, we do not sustain the rejection of claim 41.
The § 103 Rejections
The Examiner finds that Engber teaches the limitations of independent
claim 212, except for the client computer, and relies on the teaching of the
AAPA of the Specification, paragraph one, for the client computer. Appeal
Br. 4–14. The Examiner finds
[a]t the time of the invention it would have been obvious to one
of ordinary skill in the art to modify the user interface teachings
of the prior art of record with the user interface teachings of
AAPA to realize the instant limitations. Since each individual
element and its function are shown in the prior art, albeit shown
in separate references, the difference between the claimed
subject matter and the prior art rests not on any individual
element or function but in the very combination itself[,] that is in
the substitution of the client computer of the secondary refer-
ence(s) for the device of the primary reference. Thus, the simple
substitution of one known element for another producing a pre-
dictable result renders the claim obvious. As a result, the com-
bined teachings suggest the client computer of AAPA requesting
to invoke specific events as well as exchanging information
about invokable events on the user interface elements with the
accessibility server of Engber.
Id. at 14.

2 Appellant groups claims 21, 37, and 41, all of which recite limitations com-
mensurate in scope, together for argument, and we choose claim 21 as repre-
sentative. 37 C.F.R. § 41.37(c)(iv).
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Appellant argues that Engber provides techniques for allowing a first
application to interact with a second application – particularly for the
purpose of enabling accessibility applications, such as screen reader
applications, to interact with an application, but nothing in Engber involves
remoting the user interface from a first device to a second device. Appeal
Br. 25. According to Appellant, the entirety of Engber involves a single
device executing both applications, as well as the accessibility server and the
accessibility client that serve as the interface therebetween. Id. Appellant
argues the Specification Background provides a generic description of a
conventional terminal services architecture; a discussion of an API for con-
ventional screen reader application (which may include, e.g., the API pro-
vided in the Engber reference); and a discussion of technical limitations that
exist in the use of an accessibility API in the context of a remote interface,
but, the Background section suggests no solution to the problems of using an
accessibility UI in the context of multiple devices communicating via a
terminal services architecture. Id. at 29.
According to Appellant, “one of ordinary skill in the art would
conclude that the scenario described in the Background section – i.e., a
terminal server device executing an application, and accessibility hardware
or software presented on the terminal client device – cannot be used with an
architecture such as provided in Engber, which presumes that the
applications can communicate through an accessibility server/accessibility
client API.” Id. at 29. Appellant argues the Examiner applies hindsight by
presuming that the problem identified only in the Background section may
be solved using techniques that are presented only in the portions following
the Background section. Id.
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In the Answer, the Examiner explains
Engber is relied upon to teach the claimed techniques in a
client/server system (reads on the accessibility server receiving a
request from the client accessibility program to display aspects
of a server application on the client device, see Engber claim 10,
11, col. 5 lines 8–23, lines 40–49, col. 13 lines 12–23, col. 16
lines 39–57, col. 18 line 47 – col. 19 line 6) and AAPA is relied
upon for explicit disclosure of distinct client and server devices
in a similar system (see AAPA para 0001–0002 and see Engber
col. 5 lines 54–65). The combined teachings motivate one of
ordinary skill in the art to utilize the client/server teachings of
Engber in the explicit client device and server device of AAPA
motivated by implementing known in the art hardware to
accomplish the explicit teachings found in Engber.
Ans. 4.

Regarding remoting the user interface from a first device to a second
device, the Examiner notes that, although this language is not found in the
claim,
[t]he Examiner relies upon the combination of applied references
to address this limitation. As a result, the prior art of record
suggests remoting (reads on the accessibility server receiving a
request from the client accessibility program to display aspects
of a server application on the client device, see . . . , the user
interface (reads on attributes of the user interface element, see
Engber claims 1 and 10) from a first device (reads on a remote
device, see AAPA para 0001) to a second device (reads on the
users of the client assistive technology, see Engber col. 5 lines
8–53 and AAPA para 0001). Engber is relied upon to teach
assistive technology to remote the user interface from a server to
a client without any computer/network configuration limitation
(see Engber col. 5 lines 54–65) and AAPA is relied upon to teach
the specific generic language of a client device and server device
in an assistive technology framework (see AAPA para 0001–
0002).
Ans. 5.
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Regarding Appellant’s assertion that the entirety of Engber involves a
single device executing both applications, the Examiner finds
Engber explicitly states the invention of Engber is not intended
to be limited by any particular architecture or manner of
interconnecting the computing components, and network
computers and other data processing systems may also be used
with the present invention (see Engber col. 5 lines 54–65). The
Examiner asserts this disclosure in Engber would cause one of
ordinary skill in the art to conclude that any computing/network-
ing architecture would be applicable to Engber's disclosure. The
Examiner further relies upon AAPA to specifically disclose
generic language of a client device and server device in an
assistive technology framework (see AAPA para 0001–0002).
Accordingly, since each individual element and its function are
shown in the prior art, albeit shown in separate references, the
difference between the claimed subject matter and the prior art
rests not on any individual element of function but in the very
combination itself – that is in the substitution of the client device
and server device in an assistive technology framework (see
AAPA para 0001–0002) of the secondary reference for the
client/server framework not intended to be limited by any
particular architecture or manner of interconnecting the
computing components, and network computers and other data
processing (see Engber col. 5 lines 54–65) of the primary
reference. Thus, the simple substitution of known element for
another producing the predictable result of a networked client
device and server device in an assistive technology framework
renders the claim obvious.
Id. at 5–6.
Regarding Appellant’s assertion that nothing in Engber suggests the
use of presented techniques between a first application executing on a
terminal server device and a second application executing on a terminal
client device,
the Examiner . . . relies upon the combination of applied
references to suggest this limitation (reads on the accessibility
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server receiving a request from the client accessibility program
to display aspects of a server application on the client device, see
Engber claim 10, 11, col. 5 lines 8–23, lines 40–49, col. 13 lines
12– 23, col. 16 lines 39–57, col. 18 line 47 – col. 19 line 6 and
AAPA para 0001–0002).
Id. at 6.
Regarding hindsight, the Examiner explains the rejection “relies only
on the portions of the background section that are clearly not Appellant’s
invention and merely detail the current state of the art at the time of the
invention.” Id. at 6–7.
In the Reply Brief, Appellant argues Engber and the present application
are directed to different technical fields wherein Engber is “centrally directed
to the interaction of a client application with a target application, via a server
application that enables the interaction” and “the present disclosure is directed
to techniques for remoting a user interface for presentation to a user of a
remote device.” Reply Br. 14.
Appellant argues the Answer conflates the distinct uses of the terms
“client” and “server” in Engber and the present disclosure. Id. at 15.
According to Appellant, the Engber server refers to a process on a device that
provides a service on the same device, whereas the present disclosure involves
a server computer that executes applications that are presented as remote
interfaces on client computers. Id.
Appellant also argues the Answer presents no meaningful reply to the
teaching-away aspects of the present disclosure. Id. at 16. According to
Appellant, the Background section identifies problems in remote presentation,
and only the Application identifies that the problems can be solved and the
solutions. Id. 16–18. (citing Spec. ¶¶ 1, 14, 22, 32, 35, 36, 41).
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Appellant argues the most straightforward combination of Engber and
the Background portion of the present disclosure provides a different solution
than that provided in claims 21, 37, and 41. Id. at 19–20. According to
Appellant, if combined, “the techniques of Engber would operate within the
server device to permit applications to interact, and the visual output of such
interaction-as a bitmap, video stream, etc.-would be transmitted to the remote
device for presentation.” Id. at 19. Appellant argues this combination would
exhibit all the deficiencies noted in the Background section. Id. at 19–20.
We are not persuaded by Appellant’s arguments and agree, instead,
with the findings and conclusion of the Examiner. Appellant does not
persuasively rebut the Examiner’s findings and conclusion that Engber
teaches the claim 21 limitations, except for the use of a remote computer.
Moreover, we agree with the Examiner’s findings that Engber’s teachings
are not limited to a single system, and Engber does not teach away from
the use of a remote computer. See also, Engber, Fig. 8, which describes
requesting attributes and receiving attributes. Appellant’s arguments
regarding problems identified in the Background does not negate the Exam-
iner’s finding the combination of Engber’s single system and the AAPA
(Spec. ¶ 1) of remote systems. Appellant does not persuasively identify spe-
cific limitations in claim 1 that are not taught or suggested by the combi-
nation of Engber and the AAPA.
We note much of Appellant’s arguments are unsupported by factual
evidence. Mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
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699, 705 (Fed. Cir. 1984); Ex parte Belinne, Appeal 2009-004693, 2009 WL
2477843, at *3–4 (BPAI Aug. 10, 2009) (informative).
Appellant also argues an unreasonably narrow teaching of the Engber
and AAPA, and an overly demanding standard of obviousness. However,
we note
[t]he test for obviousness is not whether the features of a sec-
ondary reference may be bodily incorporated into the structure
of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Ra-
ther, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.
Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner provides sufficient evidence as required for
obviousness. As stated by the Supreme Court, the Examiner’s obviousness
rejection must be based on:
[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness. . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 420–21.
Based upon the teachings of the references and the fact that each
claimed element was well known in the art, we agree with the Examiner
because the combination of familiar elements according to known methods
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is likely to be obvious when it does no more than yield predictable results.
Id. at 415–16. We note Appellant presents no persuasive arguments that the
results are unpredictable. Moreover, as discussed supra, the Examiner
additionally provided reasons why one of ordinary skill in the art would
combine the references in the manner suggested.
In view of the above, we sustain the rejection of claim 21, and
independent claims 37 and 41 as these claims are argued together with claim
21. We also sustain the rejection of dependent claims 22–35 and 38–40 as
these claims are not argued separately. See 37 C.F.R. § 41.37(c)(1)(iv

DECISION

Claims Rejected Basis Affirmed Reversed
21–35, 37–41 35 U.S.C. § 112,
second paragraph

21–35, 39 37, 38, 40
41

21–35, 37–41 35 U.S.C. § 103(a) 21–35, 37–41
Overall Outcome 21–35 and 37–
41

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