CHEN, YING et al.

Patent Trials and Appeals Board

Mar 2, 2020

13873930 - (D) (P.T.A.B. Mar. 2, 2020)

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.
13/873,930 04/30/2013 YING CHEN CAM920120025US2_8134-0156 8452
73109 7590 03/02/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
MUHEBBULLAH, SAJEDA
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte YING CHEN, JOEL DUQUENE,
JAMES P. EBERWEIN, and DONG K. LIEU1
_____________

Appeal 2019-000445
Application 13/873,930
Technology Center 2100
______________

Before JOHN A. EVANS, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Jurisdiction.
Claims 21–35 stand rejected, are appealed, and are the subject of our
decision under 35 U.S.C. § 134(a). Appeal Br. 2. Claims 1–20 have been
cancelled. Id. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2017). The Appeal Brief identifies the IBM
Corporation as the real party in interest. Appeal Br. 1.
Appeal 2019-000445
Application 13/873,930
2

Related Appeals.
Appellant is unaware of any related appeals or interferences. Appeal
Br. 2.
Summary of the Invention.
The invention is directed to a method of establishing a screen-sharing
session. See Abstract.
Claims.
Claims 21, 26, and 31 are independent.2
Claim 21 is illustrative of the invention and is reproduced below with
formatting added for clarity:
21. A computer-implemented method within a participating
device, comprising:
initially presenting, by the participating device and to a
user of the participating device, content generated by a
presenting device;
prompting the user to select one of a plurality of sub-
portions, automatically determined from application hierarchy,
of the content;
receiving, from the user and by the participating device, a
selection of a sub-portion of the content from the plurality of
sub-portions;

2 Independent Claim 26 recites, inter alia, “[a] participating device,
comprising: a hardware processor configured to initiate the following
executable operations.” Claim 26 proceeds to recite steps of the claimed
executable method. Claims 27–30 depend from Claim 26, but recite, inter
alia, “[t]he system of claim 26, wherein.” Thus, the dependent claims do not
recite the same statutory class of invention as is recited by the independent
claim from which they depend. Should prosecution continue, the Examiner
may wish to consider requiring correction.
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Application 13/873,930
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identifying a boundary of the sub-portion of the content;
transmitting, in response to the selection and to a
computer associated with the presenting device, the boundary;
receiving, from the computer associated with the
presenting device, only the sub-portion of the content and not
unselected sub-portions of the content; and
subsequent presenting, by the participating device and to
the user, only the sub-portion of the content and not the
unselected sub-portions of the content, wherein
the plurality of sub-portions are concurrently presented
by the participating device during the initially presenting.

REJECTIONS3 AT ISSUE4
References.
Name Publication Number Date
Pasetto US 8,606,952 B2 Dec. 10, 2013
DeGrazia US 2009/0217177 A1 Aug. 27, 2009
Dinka US 2011/0191695 A1 Aug. 4, 2011

3 The Application is being examined under the pre-AIA first to invent
provisions. Final Act. 2.
4 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”)
filed May 14, 2018; the Reply Brief (“Reply Br.”) filed October 24, 2018;
the Final Office Action (“Final Act.”) mailed December 14, 2017; the
Examiner’s Answer (“Ans.”) mailed September 10, 2018; and the
Specification (“Spec.”) filed April 30, 2013.
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Application 13/873,930
4

Rejections.
1. Claims 21–24, 26–29, and 31–34 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Pasetto and Dinka.
Final Act. 3–6.
2. Claims 25, 30, and 35 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Pasetto, Dinka, and DeGrazia.
Final Act. 6.

ANALYSIS
Overview.
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s obviousness rejections of the Claims.

CLAIMS 21–35: OBVIOUSNESS OVER PASETTO, DINKA, AND DEGRAZIA.
Appellant argues all claims as a group in view of the limitations of
Claim 21. See Appeal Br. 8, 13. Therefore, we decide the appeal of the
§ 103(a) rejections on the basis of illustrative 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).
Claim 21 recites, inter alia, “prompting the user to select one of a
plurality of sub-portions, automatically determined from application
hierarchy, of the content.”
The Examiner finds Dinka, but not Pasetto, teaches a method of
sharing portions of a screen wherein the sub-portion is automatically
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Application 13/873,930
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determined dependent on the position of an overlay frame that automatically
selects the underlying frame once released and prompts the user to share the
portion. Final Act. 4–5 (citing Dinka ¶ 43, i.e., “show this” button prompts
user to share). The Examiner finds the claimed “application hierarchy” is
the “‘parent/child window relationship’ as discussed in Applicants’
specification.” Final Act. 2 (citing Spec. ¶ 26) (“For example, when context
menu 144 is presented within frame 142, choosing selection option 140 can
automatically select the frame 142 as selected content based on mouse
focus.”).
Appellant contends Dinka teaches positioning of a mouse cursor over
a window causes that window to be selected, but Dinka fails to teach “a
plurality of sub-portions, [is] automatically determined from [an] application
hierarchy,” as claimed. Appeal Br. 9. Specifically, Appellant argues “it is
the position of the cursor over the window (i.e., sub-portion) that determines
that the window is to be selected,” but an “application hierarchy” is not used.
Id.
Appellant contends the Examiner makes no finding that either Dinka
or Pasetto teaches prompting the user to select one of a plurality of sub-
portions. Id. at 10.
In response to Appellant’s contention that neither Dinka nor Pasetto
teaches prompting the user, the Examiner makes no finding that the prior art
teaches prompting, rather, the Examiner finds prompting is taught in
Appellant’s Specification. Ans. 7 (“Furthermore, the Examiner would like
to point out the prompting is taught in Applicant’s specification in Para.
[0032].”).
As the MPEP recognizes, any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning. But so long as
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Application 13/873,930
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it takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made, and does not include
knowledge gleaned only from the applicant’s disclosure, such a
reconstruction is proper. MPEP § 2145(X)(A) (quoting In re McLaughlin,
443 F.2d 1392 (CCPA 1971)). However, the only finding the Examiner
makes relative to the claimed prompting the user refers to Appellant’s
Specification, but not the prior art. In view thereof, we are constrained by
the Record to find the prior art fails to teach each claimed limitation. Thus,
we decline to sustain the rejections of Claims 21–35.

CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–24, 26–
29, 31–34
103(a) Pasetto, Dinka 21–24, 26–
26, 31–34
25, 30, 35 103(a) Pasetto, Dinka,
DeGrazia
25, 30, 35
Overall
Outcome
21–35

REVERSED