RingCentral, Inc.

Patent Trials and Appeals Board

Mar 22, 2022

2021001473 (P.T.A.B. Mar. 22, 2022)

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. 16/058,186 08/08/2018 Christopher van Rensburg 103-00002-000-US 8256 136877 7590 03/22/2022 RIMON LAW - RINGCENTRAL 2445 Faber Place Suite 250 Palo Alto, CA 94303 EXAMINER FAN, HUA ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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.Rimonlaw@Clarivate.com SVDocketing@Rimonlaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHER VAN RENSBURG ____________________ Appeal 2021-001473 Application 16/058,186 Technology Center 2400 ____________________ Before ERIC S. FRAHM, CATHERINE SHIANG, and JASON J. CHUNG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-7, which are the claims pending on appeal. Claims 8-20 have been withdrawn from further consideration as being drawn to a non-elected invention (see Non-Final Act. Nov. 7, 2018, p. 2; see also Final Act. 2). We have jurisdiction 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. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a) (2017). According to Appellant, RingCentral, Inc. is the real party in interest (Appeal Br. 2). Appeal 2021-001473 Application 16/058,186 2 INVENTION Appellant’s invention, entitled “Collaborative Communications Environment With Participant Flexibility” (see Title) (emphases omitted), “relates generally to the field of computer supported collaborative communications environments between a number of participants [i.e., chat rooms/sessions]” (Spec. ¶ 1). More specifically, Appellant’s invention “relates to systems and methods for automatically selecting participants of online chat conversations in collaborative communications environments through means other than a contact list” (Spec. ¶ 1). Appellant’s disclosed and claimed invention pertains to online chat rooms/sessions between “various entities and/or individual participants within the same organization and/or different organizations” (Spec. ¶ 2; see also claim 1), for discussing “topics, projects, initiatives, etc.” (Spec. ¶ 2). Appellant recognizes that “[m]anaging the participants for online chat is challenging and time consuming for the chat organizer, especially in big organizations” (Spec. ¶ 2), and “changes to the participants of online, e.g., online chat etc., are made, the institutional knowledge is often lost” (Spec. ¶ 2). As a result, Appellant discloses and claims a method of automatically selecting chat room participants within an organization based on multiple inputs to establish a chat room having at least a subset of the selected participants (see claim 1; Spec. ¶¶ 14, 24, 28; Abstract). Independent claim 1 is illustrative of the invention and are reproduced below. 1. A method comprising: [A] receiving a first electronic user input from a first device, wherein the first electronic user input comprises a logical rules, a query, or a subject matter, and wherein the first electronic Appeal 2021-001473 Application 16/058,186 3 user input is different from communications within an online chat room; [B] receiving a second electronic user input corresponding to a degree of flexibility via a graphical user interface (GUI) of the first device, wherein the degree of flexibility is an indication of desired conciseness of the first electronic user input; [C] identifying participants within an organization based on the received first electronic user input and further based on the degree of flexibility; and [D] creating an online chat room that includes at least a subset of the identified participants. Appeal Br. 14, Claims Appendix (emphases and bracketed lettering added). EXAMINER’S REJECTIONS (1) The Examiner rejected claims 1-6 under 35 U.S.C. § 103 as being unpatentable over Grove, II (US 2015/0172227 A1; published June 18, 2015) (hereinafter, “Grove”) and Chakra et al. (US 2009/0307045 A1; published Dec. 10, 2009) (hereinafter, “Chakra”). Final Act. 3-6. (2) The Examiner rejected claim 7 under 35 U.S.C. § 103 as being unpatentable over Grove, Chakra, and Gropper (US 6,883,000 B1; issued Apr. 19, 2005). Final Act. 6-7. ANALYSIS We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 6- 13; Reply Br. 2-8), the Examiner’s rejection (Final Act. 3-7), and the Examiner’s response to Appellant’s arguments (Ans. 3-7). Appellant’s arguments that the Examiner has misinterpreted the claimed “indication of desired conciseness” (claim 1, limitation B; see Appeal Br. 6-10; Reply Br. Appeal 2021-001473 Application 16/058,186 4 2) have persuaded us of error in the Examiner’s rejection of all of the disputed claims under 35 U.S.C. § 103. Appellant’s arguments present the dispositive issue of whether or not the Examiner erred in finding Grove, and thus the combination of Grove and Chakra, teaches or suggests that “the degree of flexibility is an indication of desired conciseness of the first electronic user input [e.g., a logical rule, a query, or a subject matter as set forth in limitation A of claim 1]” recited in independent claim 1. The Examiner’s conclusion of obviousness is based on the interpretation that Grove’s voting input (see Grove ¶¶ 30, 31) teaches the claimed indication of desired conciseness and operates in combination with the teachings of Chakra (see Chakra ¶ 17, user-specified rule used to determine user with similar profiles, organization positions, or users in the same research group) to somehow produce the claimed invention (see Final Act. 3-5; Ans. 3-6; Advisory Act. 2). During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “[T]he ‘broadest reasonable interpretation’ must ‘take into account the context of the entire patent.’” KEYnetik, Inc. v. Samsung Elecs. Co., Ltd., 837 F. App’x 786, 791 n.2 (Fed. Cir. 2020) Appeal 2021-001473 Application 16/058,186 5 (quoting Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020) (quoting Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019))). Paragraph 35 of Appellant’s Specification describes (i) the operations shown in the graphical user interface 100C shown in Figure 1C, including the receipt of first electronic input (e.g., a subject 107 representing the subject matter of the online chat/session), and second electronic input (e.g., a desired flexibility 109 associated with the subject matter); and (ii) that “broadening the desired flexibility scale 109, hence increasing it, results in expansion of the subject matter and as a result more results (i.e. participants). On the other hand, narrowing the desired flexibility scale 109, hence decreasing it, results in a more concise identification of the participants, thereby producing fewer results” (Spec. ¶ 35). In this manner, Appellant’s invention discloses that “the system makes a decision regarding the parameters to consider when the flexibility scale is changed from broad to narrow and vice versa” (Spec. ¶ 35). The claims define the boundaries of the exclusive rights granted under 35 U.S.C. § 154, providing notice of the claim scope to the public. “[C]laim construction must begin with the words of the claims themselves.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006) (citation omitted). In other words, “the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); see Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L., 497, 499 (1990) (“To coin a phrase, the name of the game is the claim.”). Appeal 2021-001473 Application 16/058,186 6 In this case, claim 1, as supported by paragraph 35 and as shown in Figure 1C, makes clear that the recited “indication of desired conciseness” is an electronic user input received by the graphical user interface of the first device that provides a degree of flexibility, “wherein the degree of flexibility is an indication of desired conciseness of the first electronic user input” (claim 1, limitation B), and “wherein the first electronic user input comprises a logical rules, a query, or a subject matter” and “is different from communications within an online chat room” (claim 1, limitation A). In addition, the indication of desired conciseness received in the step of limitation B is used in combination with the first electronic input received in the step of limitation A to “identify[] participants within an organization” (claim 1, limitation C). Although Grove describes selecting chat participants based on user attributes 412 (see ¶ 26) and user ratings 432 based on user profiles 434 (see ¶ 27), or based on whether a user’s input is useful, such as by a determined relevant worth of a user’s input (see ¶ 30), and such selections serve to “narrow[] down the range of participants” as stated by the Examiner (Advisory Act. 2), Grove’s voting input serves to evaluate the importance/relevance of the user’s input, and not “the first electronic user input” as claimed, where the first electronic user input is “different from communications within an online chat room” as required by limitation A of claim 1. In other words, Grove’s voting input (see ¶ 31) is not an indication of desired conciseness of the first electronic input (i.e., the subject or subject matter of the chat) required by limitations A and B of claim 1, but is instead an indication of “if the user is offering helpful input to the chat session or is Appeal 2021-001473 Application 16/058,186 7 being counterproductive (e.g., submitting jokes, generating spam, annoying the participants, overtaking the chat session, etc.)” (¶ 30) (emphases added). Thus, on the record before us, the Examiner has erred in determining that Grove’s voting input is an indication of desired conciseness of the subject matter (i.e., the recited subject shown as input 107 in Appellant’s Fig. 1C) as claimed, and as supported by Appellant’s description “indication of desired conciseness” found in paragraph 35 of the Specification (see also Fig. 1C). Finally, on this record, although Appellant does not argue this explicitly, we note that the Examiner has not shown adequately how/why the various inputs of the cited portions of Grove and/or Chakra meet the recitation in claim 1 of receiving two different inputs, and then “identifying participants within an organization based on” those two inputs as set forth in limitation C of claim 1. Neither Grove, Chakra, or their combination teaches or suggests “identifying participants within an organization based on” (claim 1, limitation C) the received first and second electronic user inputs as recited in claim 1. As a result, Appellant’s arguments that (i) “the cited combination cannot possibly teach or suggest the claimed features” (Appeal Br. 7); (ii) “Grove alone or in combination with Chak[]ra fails to render independent Claim 1 obvious, under 35 U.S.C. § 103” (Appeal Br. 10); and (iii) based on an improper reading of the context of the first and second electronic inputs “the Examiner has erred with respect to independent claim [1] and the rejection must be reversed” (Reply Br. 5), are all persuasive. In view of the foregoing, Appellant’s arguments that Grove’s voting input, received from other users and used for determining the relevant worth of a user’s input, does not meet the language of limitation B found in claim 1 (see Appeal Br. 6-7; Reply Br. 2), and therefore cannot be combined with Appeal 2021-001473 Application 16/058,186 8 the other applied references to perform the claimed methods, are persuasive. Because Appellant’s arguments have persuaded us of error in the Examiner’s rejection of independent claim 1, and claims 2-7 which ultimately depend thereupon, we do not sustain the Examiner’s rejections of claims 1-7 relying on the base combination of Grove and Chakra as teaching the recited indication of desired conciseness. CONCLUSION2 We reverse the Examiner’s rejections of claims 1-7 under 35 U.S.C. § 103. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6 103 Grove, Chakra 1-6 7 103 Grove, Chakra, Gropper 7 Overall Outcome 1-7 REVERSED 2 We leave it the Examiner in the event of further prosecution, including any review prior to allowance, to consider a rejection under 35 U.S.C. § 101 under the Director’s 2019 Revised Guidance for claims 1-7 on appeal. Specifically, the Examiner should consider whether (i) the receiving steps A and B constitute data collection/gathering; and (ii) the identifying and creating steps C and D are abstract ideas such as mental processes and/or well-understood, routine, and conventional in the field. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th ed. Rev. 10.2019, rev. June 2020).