Ex Parte Badge et al

Patent Trials and Appeals Board

Mar 26, 2019

14576089 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/576,089 12/18/2014
93379 7590
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
03/28/2019
FIRST NAMED INVENTOR
Gaurav Badge
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
648.0128 4295
EXAMINER
POPHAM, JEFFREY D
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
sarah@setterroche.com
pair_avaya@firsttofile.com
uspto@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAVRA V BADGE, RAMANUJAN S. KASHI, and
BISW AJYOTI PAL
Appeal2018-006214
Application 14/576,089 1
Technology Center 2400
Before KARA L. SZPONDOWSKI, JOHN R. KENNY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants' Brief ("App. Br.") identifies Avaya Inc. as the real party in
interest. App. Br. 2.
Appeal2018-006214
Application 14/576,089
CLAIMED SUBJECT MATTER
The claims are directed to an enhanced privacy and agent control in a
co-browsing session. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A non-transitory computer readable storage medium
having instructions stored thereon that, when executed by a co-
browsing system, direct the co-browsing system to perform a
method of facilitating control in a co-browsing session, the
method comprising:
establishing a co-browsing session for a website with a
first client device and a second client device, wherein the co-
browsing session is capable of accepting input from users at both
the first client device and the second client device to control the
website;
receiving first permission from the first client device
allowing input from the second client device to be presented on
the website at the first client device;
after receiving the first permission, receiving first input
from the second client device; and
applying an indication of the first input to the website for
presentation at the first client device.
App. Br. 11 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yang
Roy
US 2014/0164934 Al
US 2015/0067181 Al
2
June 12, 2014
Mar. 5, 2015
Appeal2018-006214
Application 14/576,089
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 12-15.
Claims 1-5, 8-15, and 18-20 stand rejected under 35 U.S.C.
§ 102(a)(2) as being anticipated by Yang. Final Act. 15-20.
Claims 6, 7, 16, and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Yang and Roy. Final Act. 20-23.
ISSUES
First Issue: Has the Examiner erred in finding Yang discloses
"wherein the co-browsing session is capable of accepting input from users at
both the first client device and the second client device to control the
website," as recited in claim 1?
Second Issue: Has the Examiner erred in concluding the claims are
indefinite?
ANALYSIS
First Issue
In rejecting claim 1, the Examiner finds that the limitation "wherein
the co-browsing session is capable of accepting input from users at both the
first client device and the second client device to control the website," is
disclosed by Yang. Final Act. 16 (citing Yang ,r,r 36-39, 41, 46, 47, 50, 53,
and 54). The Examiner finds Yang discloses a collaborative information
sharing system which provides a co-browsing session between two users at
3
Appeal2018-006214
Application 14/576,089
separate client devices, which allows inputs from both users and that those
inputs control a website. Final Act. 16.
Appellants argue Yang is deficient in two respects. First, Appellants
argue Yang is deficient because the communications session disclosed is not
a co-browsing session. App. Br. 7. Instead, Appellants argue, Yang
"explicitly teach[ es] that no co-browsing session is established" and "merely
discloses an information sharing system that, in part, allows images to be
captured of a website so that the website can be shared among computers
'instead of capturing or sharing the window as is performed for example
with co-browsing."' App. Br. 7 ( quoting Yang ,r 10). Second, Appellants
argue that even if the session disclosed in Yang could be considered a co-
browsing session, "Yang does not disclose that an information sharing
session allows for any type of control over a website captured in such an
image." App. Br. 7. We agree with Appellants.
Anticipation is a test of strict identity. Trintec Indus., Inc. v. Top-
U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). That is, to meet the
strict identity test for anticipation, all elements must be disclosed in exactly
the same way as they are arranged or combined in the claim. Therasense,
Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010).
Here, Yang discloses a "collaborative information sharing system"
which allows a user to capture an image in a shared space on their desktop
which allows other remote users to be able to concurrently view the image.
Yang ,r 36. When using Yang's system, "[i]f a first user wishes to point out
a particular area of interest for example, the system is configured to accept a
first input associated with a first location in the shared space associated with
the first computer." Yang ,r 3 6. Yang further discloses that the
4
Appeal2018-006214
Application 14/576,089
collaborative information sharing system "may also receive a second input
associated with a second location in the shared space associated with a
second computer that is associated with a second user." Yang ,r 3 6.
However, nowhere does Yang disclose that the operation of a website is
controlled via input from users at the first and second client devices. Rather,
because Yang discloses only presenting an image of a website within the
shared space, rather than the website itself, the user inputs have no impact on
the content or operation of the website, and instead only modify the
appearance of an image. 2 Modifying the appearance of an image of a
website is not exactly the same as controlling the website, and as we noted
above, anticipation is a strict identity test. Accordingly, Yang does not
identically disclose the invention as recited in claim 1, and we do not sustain
the rejection under 35 U.S.C. § 102(a)(2).
Second Issue
The Examiner rejects the claims as indefinite, concluding that the
meaning of "co-browsing session" is unclear because the construction
advanced by Appellants is inconsistent with examples of "co-browsing"
provided in the Specification. The Examiner notes that Appellants'
arguments to overcome Yang assert that displaying images of a website in a
shared space is not "co-browsing." Ans. 3--4. The Examiner further notes
that the Specification describes the "co-browsing system" as being one
2 The Examiner posits that the limitation that "the co-browsing session is
capable of accepting input from users at both the first client device and the
second client device to control the website" is merely an intended use and
not entitled to patentable weight. Ans. 6. We disagree because this
limitation recites a characteristic of the co-browsing session itself, and not
merely an intended use.
5
Appeal2018-006214
Application 14/576,089
which, in some embodiments, "renders the website and transfers a rendered
image of the website to client devices 101 and 102 for display." Final
Act. 13 (quoting Spec. ,r 30). According to the Examiner, on the one hand
Appellants maintain that displaying images is not co-browsing, but on the
other hand, the Specification indicates that it is-which makes the meaning
of "co-browsing session" unclear.
Appellants argue the Examiner incorrectly interprets the cited passage
in the Specification because it makes clear that even though a "rendered
image of a website may be transferred to client devices," it also makes clear
that the "rendered image allows a user at a client device to interact with the
website, such as by typing information into the website." App. Br. 7 ( citing
Spec. ,r 30). Because Yang provides no mechanism for interacting with the
website, Appellants assert that their argument that Yang does not disclose
co-browsing is "not in conflict with the disclosure of the present
application." App. Br. 7. We agree.
"[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.'" Ex parte McAward, No.
2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir.
2014)).
Here, the Examiner concludes the phrase "co-browsing session" is
unclear. When read in light of the Specification, however, we conclude the
phrase "co-browsing session" is readily understood as a communications
session during which multiple devices view interactions with a website. See,
e.g., Spec. ,r 2 ("Co-browsing systems exist that allow multiple devices to
6
Appeal2018-006214
Application 14/576,089
view interactions with a website across the multiple devices."); Spec. ,r 28
("co-browsing system 103 allows both client devices to present the same
website at each of client devices 101 and 102"); Spec. ,r 30 ("Client devices
101 and 102 exchange communication with co-browsing system 103 to
synchronize website interactions across client devices 101 and 102."). We
also agree with Appellants that their assertions regarding Yang do not
conflict with the disclosure in paragraph 30 of the Specification because, as
Appellants correctly argue, Yang does not provide a way for multiple users
to interact with the website itself. Their argument is consistent with the
repeated statements in the Specification indicating that website interaction
capability is a requirement of any "co-browsing session." As such, we are
persuaded the Examiner has erred in rejecting the claims as indefinite, and
we do not sustain the rejection under 35 U.S.C. § 112(b).
Summary
Because Yang does not identically disclose the invention recited in
claim 1, we are constrained by the record before us to reverse the rejection
under 35 U.S.C. § 102. For the same reason, we also reverse the§ 102
rejection of independent claim 11 as well as dependent claims 2-5, 8-10,
12-15, and 18-20. We also do not sustain the rejections of dependent
claims 6, 7, 16, and 17 under 35 U.S.C. § 103(a), as the Examiner does not
find Roy remedies the identified deficiency in Yang with respect to the
independent claims. Because we agree with Appellants the meaning of "co-
browsing session" is clear, we also do not sustain the indefiniteness rejection
of claims 1-20 under 35 U.S.C. § 112(b ).
7
Appeal2018-006214
Application 14/576,089
DECISION
We reverse the Examiner's rejections of claims 1-20.
REVERSED
8