Today we see the issue of proper notice coming from an appeal by Microsoft (Appeal 2020-001840, Application 15/199,647) related to implementing a customizable compact overlay window in a graphical user interface (GUI). Claim 1 on appeal is reproduced below:

1. A computing system for implementing a customizable compact overlay window in a display, the computing system comprising:
at least one processor; and
at least one storage device having stored thereon computer executable instructions which, when executed by the at least one processor, causes the computing system to perform the
following:
[A.] identify, at the computing system, a first application installed on the computing system in the form of a first set of executable code;
[B.] cause the first application to operate within a first application window on the display of the computing system;
[C.] identify, at the computing system, a second application installed on the computing system in the form of a second set of executable code that is separate from the first set of executable code, wherein the first application and the second application are different applications;
[D.] cause the second application to operate on the display of the computing system;
[E.] based on causing the second application to operate on the display of the computing system, receive, from the second set of executable code corresponding to the second application operating at the computing system, one or more customization parameters that define how the second application window is to be configured as a compact overlay window;
. . .
[K.] based on receiving the second user input, respond according to a configuration of the computing system.

One issue on appeal was element E. The Examiner cited Silver (US 2014/0195675) as showing the features, explaining that a streaming system that provided a GUI with sub-windows (such as iTunes, a video, gaming or email applications) had one or more customization parameters that define how the first application (i.e. iTunes) is to be configured or what it will look like, in the compact overlay windows of the figures. Microsoft argued that the claimed compact overlay window is required to be customized according to a parameter that is received from the same set of executable code that defines the applications displayed within their respective windows. Thus, because Silver describes a singular GUI presented at a user system, the content (including any sub-windows within the GUI) is generated at a remote service and merely streamed to the user system. Microsoft’s position therefore was that the configuration/customization of any of the Silver sub-windows cannot be occurring based on receiving a customization parameter from an application installed at the user system, as claimed.

While Microsoft’s argument was clearly correct on the substance, Microsoft also argued that the examiner’s rejections did not give proper notice in two important ways. Sometimes, when an examiner wants to take short-cuts with rejections, they either cite to large blocks of text for a particular limitation, or they lump many claim limitations together when citing to disclosure in the cited art. Here, the examiner did both - grouping at least five distinct elements of the claims together and rejecting them together by reference to “Figs. 13A-13F and paragraphs 41-144 and152-162”, essentially the entire disclosure of Silver.

As we have discussed in previous posts, the Examiner carries the initial burden of proving non-patentability by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). As the PTAB noted in this appeal, the Examiner carries this initial burden to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope. This is the so-called “prima facie case.” When the examiner relies too much on speculative citations to large blocks of text where the applicant must then go hunting through and guessing as to how the claims are mapped to the prior art, this notice requirement has not been met. And here, the PTAB agreed that this examiner’s rejection was insufficient in providing proper notice.

As to Appellant’s “notice” argument, we agree. The Examiner’s analysis is heavily based on citations to large blocks of paragraphs without sufficient further explanation. Although parts of the Examiner’s rejection reasonably cite to some small blocks of paragraphs (e.g., 1–4 paragraphs) in the prior art references, in critical parts of the rejection, the Examiner merely recites the particular language of claim 1 and cites to lengthy blocks of 10+ and 100+ paragraphs. . . .
In many cases, further articulation by the Examiner may not be required as the cited paragraphs clearly speak for themselves. However, we do not find that to be the case in the lengthy block citations of the rejection before us.
Without more, the Examiner’s reasoning fails to constitute sufficient articulated reasoning. Thus, (1) the Examiner’s findings of fact as to the “customization parameters” is based on error; and (2) the Examiner’s repeated reliance on citations to lengthy blocks of 10+ and 100+ paragraphs without sufficient further explanation does not provide the required notice to Applicant.
We conclude, consistent with Appellant’s arguments, that there is insufficient articulated reasoning to support the Examiner’s finding that Silver discloses “customization parameters” as required by claim 1. Also, we conclude, consistent with Appellant’s arguments, that the Examiner’s rejection does not provide the required notice. Therefore, we conclude that there is insufficient articulated reasoning to support the Examiner’s final conclusion that claim 1 would have been obvious to one of ordinary skill in the art.

This appears to be an egregious case of an examiner falling far short of the notice requirement, where the rejection was also particularly weak. The PTAB is often much more forgiving in cases where the examiner provides just a little more clarity in citations and/or where the prior art more clearly discloses the claimed elements. So, it is generally prudent to raise the notice issue in cases like this one where the examiner has no real basis for the rejection and lazily cites entire references for groups of claimed elements.