Ex Parte Badge et al

Patent Trial and Appeal Board

Oct 23, 2018

13771415 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/771,415 02/20/2013
93379 7590 10/25/2018
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
FIRST NAMED INVENTOR
Gaurav Moreshwar 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.
648.0113 3083
EXAMINER
MALINOWSKI, WALTER J
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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 MORESHWAR BADGE,
DEEP SUBHASH PAI, RAMAN ADLAKHA, and
APRAJITA LAL
Appeal2018-000519
Application 13/771,415 1
Technology Center 2400
Before LARRY J. HUME, CATHERINE SHIANG, and
JOHN D. HAMANN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Avaya, Inc. App.
Br. 2.
Appeal2018-000519
Application 13/771,415
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
"systems and methods for implementing privacy control in a co-browsing
environment." Spec. ,r 3.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A method of operating a co-browsing system,
compnsmg:
receiving an instruction, in a co-browsing server
comprising a processing system and communication interface,
to initiate a co-browsing session for a website with a first client
and a second client;
during the co-browsing session:
presenting a page of the website at the first
client, wherein the first client overlays indicators
of possible user selectable privacy levels for each
of a plurality of elements displayed in the page as
determined by one of the co-browsing server or the
first client, wherein input is received from a user of
the first client that identifies first privacy settings
for the plurality of elements via the indicators,
wherein a default privacy level is used in the first
privacy settings for any of the plurality of elements
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 3, 2017); Reply Brief ("Reply Br.," filed Oct. 23, 2017); Examiner's
Answer ("Ans.," mailed Aug. 22, 2017); Final Office Action ("Final Act.,"
mailed June 1, 2016); and the original Specification ("Spec.," filed
Feb. 20, 2013).
2
Appeal2018-000519
Application 13/771,415
for which the user input does not indicate a privacy
level;
receiving the first privacy settings from the
first client, wherein the first privacy settings
indicate how the plurality of elements should be
presented at the second client;
presenting the page at the first client while
displaying an indication of the first privacy
settings; and
presenting the page at the second client,
wherein each element of the plurality of elements
is presented in accordance with the first privacy
settings.
5. [T]he method of claim 1, wherein the indicators
are overlaid at positions nearby each element of the plurality of
elements for which the indicators are to apply.
10. [T]he method of claim 1, further comprising:
rendering the website in the co-browsing server to
generate a rendered image of the page;
generating a first copy of the rendered image and a
second copy of the rendered image;
applying the privacy settings to the second copy of the
rendered image;
transferring the first copy of the rendered image to the
first client and the second copy of the rendered image to the
second client;
wherein presenting the page at the first client comprises
displaying the first copy of the rendered image at the first
client; and
wherein presenting the page at the second client
comprises displaying the second copy of the rendered image at
the second client.
3
Appeal2018-000519
Application 13/771,415
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Sharon et al. ("Sharon") US 2011/0083101 Al Apr. 7, 2011
Guttman et al. ("Guttman") US 2011/0191676 Al Aug. 4, 2011
Nurmi US 2011/0202968 Al Aug. 18, 2011
Rizk US 2011/0258316 Al Oct. 20, 2011
Amrhein et al. ("Amrhein") US 2012/0110472 Al May 3, 2012
Lessin et al. ("Lessin") US 2014/0040367 Al Feb. 6,2014
Roy et al. ("Roy") US 2014/0207872 Al July 24, 2014
Rejections on Appeal
RI. Claims 1, 2, 5, 11, 12, and 15 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Amrhein and Rizk.
Final Act. 2.
R2. Claims 3 and 13 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Amrhein, Rizk, and Nurmi.
Final Act. 9.
R3. Claims 4 and 14 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Amrhein, Rizk, and Guttman.
Final Act. 11.
R4. Claims 6, 7, 16, and 17 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over the combination of Amrhein, Rizk, and Sharon.
Final Act. 13.
4
Appeal2018-000519
Application 13/771,415
R5. Claims 8 and 18 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Amrhein, Rizk, and Lessin.
Final Act. 14.
R6. Claims 9, 10, 19, and 20 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Amrhein, Rizk, and
Roy. Final Act. 15.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7-11), we decide the
appeal of obviousness Rejection RI of claims 1, 2, 11, 12, and 15 on the
basis of representative claim 1. We decide Rejection RI of separately
argued claim 5 below. We decide the appeal of obviousness Rejection R6 of
claims 9, 10, 19, and 20 on the basis of representative claim 10.
Remaining claims 3, 4, 6-8, 13, 14, 16-18 in Rejections R2 through
R5, not argued separately, stand or fall with the respective independent
claim from which they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
5
Appeal2018-000519
Application 13/771,415
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claims 1, 5, and 10
for emphasis as follows.
1. § 103 Rejection RI of Claims 1, 2, 11, 12, and 15
Issue 1
Appellants argue (App. Br. 7-8; Reply Br. 2-3) the Examiner's
rejection of claim 1 under 35 U.S.C. § I03(a) as being obvious over the
combination of Amrhein and Rizk is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method of operating a co-browsing system" that includes,
inter alia, the step of, during a co-browsing session, "presenting a page of
the website at the first client, wherein the first client overlays indicators of
possible user selectable privacy levels for each of a plurality of elements
displayed in the page as determined by one of the co-browsing server or the
first client," as recited in claim 1? (Emphasis added).
Analysis
Appellants contend "Rizk merely discloses a system and method for
managing what members of various privilege levels can view in a social
6
Appeal2018-000519
Application 13/771,415
network [ and specifically] discloses a view of a privacy and privileges
settings page 1310." App. Br. 7 (citing Rizk, Fig. 13). "Each element of
page 1310 that allows for user selections is part of page 1310 itself and is
not overlaid on page 1310 in any manner, as required by claim 1." Id.
"[O]ne cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references." In re Keller, 642 F.2d 413,426 (CCPA 1981). "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art." Id. at 425.
As a matter of claim construction, the Examiner concludes:
The word "overlay" is defined as "to lay or spread over or
upon"; "to cover or decorate the surface of, and "to embellish
superficially". In paragraph 0025, Amrhein calls annotation 217
an overlay. The overlay is not covering anything else in the
figure other than the background of the website. In Rizk, in
FIG. 13, the yes/ no options are overlays as they too cover the
background. Both FIG. 13 of Rizk and FIG. 2 provide an
example of an overlay that is nearby an element; thus, Amrhein
in view of Rizk disclose the indicators are overlaid at positions
nearby each element of the plurality of elements for which the
indicators are to apply.
Ans. 8.
The Examiner finds, "Amrhein, in paragraph 0028, discloses an
annotation placeholder 214 that appears to the right and in proximity to
content 226." Ans. 2. "Amrhein discloses that a privacy setting in the form
of an annotation visibility setting may appear within frame 216 of FIG. 2
indicating which participants can view the annotation and which participants
7
Appeal2018-000519
Application 13/771,415
cannot. In the example of FIG. 2 of Amrhein, privacy is provided to Mark
and not to Ryan." Ans. 2-3 (citing Amrhein ,r 30).
The Examiner also determined "Rizk explicitly cures the deficiencies
in the claim by providing user input for a plurality of elements in figure 13
where each privilege level corresponding to an element (last name, birth
year, etc) has a user selectable option/indicator (yes/no)." Ans. 3.
The Examiner relies upon the broadest reasonable interpretation
standard in rejecting the claims under§ 103,4 and thereby
interprets indicators as encompassing the yes/no buttons in
FIG. 13. Amrhein discloses a plurality of elements (item 226 of
figure 2) with overlaying indicators of a possible selectable
privacy (item 216 & 218 of figure 2). Rizk explicitly cures the
deficiencies in the claim by providing user input for a plurality
of elements in figure 13 where each privilege level
corresponding to an element (last name, birth year, etc) has a
user selectable option/indicator (yes/no). The user selectable
options (yes/no) are indicators as stated above and are overlaid
over the background. The combination of Amrhein in view of
Rizk disclose the claim elements "the first client overlays
indicators of possible user selectable privacy levels for each of
a plurality of elements displayed in the page".
Ans. 5 ( emphasis added).
4 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).
8
Appeal2018-000519
Application 13/771,415
Thus, under the broadest reasonable interpretation standard, we agree
with the Examiner's finding cited above that the combination of Amrhein
and Rizk teaches or suggests "during the co-browsing session ... presenting
a page of the website at the first client, wherein the first client overlays
indicators of possible user selectable privacy levels for each of a plurality of
elements displayed in the page," as recited in claim 1.
Appellants further argue:
Assuming ... the [Examiner] properly analogizes
collaboration software with a social network, the teachings of
Rizk would still need to apply to the cobrowsing aspect of that
collaboration software to be relevant to the limitations of
claim 1. With that in mind, there is no teaching to suggest that
the settings of Rizk could or would be presented in a manner
similar to the cobrowsing annotations disclosed by Amrhein.
For instance, the privilege settings in Rizk allow for members
of different privilege groups to essentially view two different
versions of a social media page ( e.g. one page will have more or
less information to show than another). A cobrowsed page on
the other hand is by definition the same page and such settings
would apply to both cobrowsed pages depending upon privilege
level. Thus, while Rizk allows a user to provide settings, those
settings would not apply to only one client on a cobrowsing
session, as required by claim 1.
App. Br. 7-8.
We find Appellants' contention does not persuade us of error on the
part of the Examiner because Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
9
Appeal2018-000519
Application 13/771,415
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We specifically note Appellants' challenge to the references
individually is not convincing of error in the Examiner's position because all
of the features of the secondary reference need not be bodily incorporated
into the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see Keller, 642 F.2d at 425). Furthermore, the
artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2, 11, 12, and 15 that fall therewith. See Claim
Grouping, supra.
2. § 103 Rejection RI ofClaim 5
Issue 2
Appellants argue (App. Br. 8-9) the Examiner's rejection of claim 5
under 35 U.S.C. § I03(a) as being obvious over the combination of Amrhein
and Rizk is in error. These contentions present us with the following issue:
10
Appeal2018-000519
Application 13/771,415
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, "wherein the indicators are overlaid at
positions nearby each element of the plurality of elements for which the
indicators are to apply," as recited in claim 5?
Analysis
Appellants contend "the indicators displayed in page 1310 are not
displayed nearby the elements of a web page to which they apply because no
such elements are displayed for which the indicators could be displayed
nearby. Rather, page 1310 merely indicates to which elements the settings
will apply (i.e. last name, birth year, etc.), not the elements themselves."
App. Br. 8. " [As] previously noted [ with respect to claim 1], the settings
indicators of page 1310 are part of page 1310 itself and not overlaid on a
page having the applicable elements. Thus, page 1310 cannot disclose
indicators overlaid nearby each element, as required by claim 5." Id.
Appellants further allege:
[T]he indicators in Figure 6 [ of Appellants' drawings] are
shown nearby each element of the webpage for which the
indicators are to apply ( e.g., the email address field, the street
address field, etc.), as required by claim 5. In contrast ... the
settings of page 1310 in Rizk merely describe the field to which
each setting will apply. For example, the "last name private"
setting of page 1310 simply indicates whether the last name
field on some other page of the social network will be private.
App. Br. 8.
In response to Appellants' contentions, and with reference to Rizk,
Figure 13, the Examiner finds:
11
Appeal2018-000519
Application 13/771,415
An element is exemplified by "Last name private?",
shown in page view 1310 in Rizk. Nearby this element, to the
right, are illustrated privacy settings: overlaid low, low-
medium, medium, medium-high, high, and full, as described in
paragraph O 114 of Rizk. "Birth year private?" is a second
element in page view 1310. The plurality of elements list in the
column headed as Privilege Levels clarifies primary reference
Amrhein which shows an element 226 with an indicator 216
that is overlaid at a position nearby for which the indicator
applies.
Ans. 11 ( emphasis added). The Examiner further determines:
The word "overlay" is defined as "to lay or spread over or
upon"; "to cover or decorate the surface of, and "to embellish
superficially". Both FIG. 13 of Rizk and FIG. 2 of Amrhein
provide an example of an overlay that is nearby an element.
Furthermore, the claim fails to disclose how the indicators are
overlaid or what the indicators are overlaid upon. In the case of
each of Amrhein and Rizk, indicators are overlain upon the
background. Thus, the combination of Amrhein and Rizk
discloses the indicators are overlaid at positions nearby each
element of the plurality of elements for which the indicators are
to apply.
Ans. 13 (emphasis added).
Based upon the findings above, on this record, and the teachings and
suggestions of an "overlay" "nearby" an element, above, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 5, nor do we
find error in the Examiner's resulting legal conclusion of obviousness. 5
5 The Examiner's motivational statement, with which we agree, is, "[a]t the
time the invention was made, it would have been obvious to a person having
ordinary skill in the art to modify Amrhein with Rizk's teachings given the
benefits of managing relationships with independent multi-dimensional
12
Appeal2018-000519
Application 13/771,415
Therefore, we sustain the Examiner's obviousness rejection of dependent
claim 5.
3. § 103 Rejection R6 of Claims 9, 10, 19, and 20
Issue 2
Appellants argue (App. Br.10-11; Reply Br. 3--4) the Examiner's
rejection of claim 10 under 35 U.S.C. § 103(a) as being obvious over the
combination of Amrhein, Rizk, and Roy is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1 that further includes, inter alia, the steps
of "rendering the website in the co-browsing server to generate a rendered
image of the page" and "transferring the first copy of the rendered image to
the first client and the second copy of the rendered image to the second
client" as recited in claim 1 O?
Analysis
Appellants contend:
Dependent claim 10 recites that the website is rendered in
the co-browsing server and the rendered image is transferred to
the first client and the second client. In other words, instead of
the first client and the second client rendering the website
themselves, the co-browsing system renders the website and
provides the first and second clients with the already rendered
website.
App. Br. 10. Appellants further argue "Roy does not disclose anything
about where online content 115 from web server 110 is rendered" and
grouping, individualized privileges and interactive feedback in a social
network." Final Act. 9 ( citing Rizk ,r 3 ).
13
Appeal2018-000519
Application 13/771,415
therefore "fails to disclose the rendering of the website in the co-browsing
server and transferring the rendered image to the first and second client, as
required by claim 10." Id. ( emphasis omitted).
In response, the Examiner finds:
The word "render" is non-exhaustively defined as "to
submit or present for consideration, payment, or the like," "to
give or make available," "to give what is due or proper," and "to
represent in a verbal or artistic form, depict." It is noted that
Roy discloses rendering the website in the co-browsing server
and the processing system configured to render the website in
the co-browsing server.
Roy discloses rendering the website in the co-browsing
server to generate a rendered image of the page and the
processing system configured to render the website in the co-
browsing server to generate a rendered image of the page as
illustrated in FIG. 1 where online content 115 is shown on web
server 110. A first copy of the rendered image is illustrated by
online content 115 on computer system 120. A second copy of
the rendered image is illustrated by modified online content 125
shown in FIG. 1 of Roy.
Paragraphs 0013, 0048, 0059, 0060, and 0062 of Roy
provide examples of disclosures of co-browsing online content
between servers, even remotely located ones as disclosed in
paragraph 0048.
Ans. 16.
Under the broadest reasonable interpretation standard, we agree with
the Examiner's finding cited above that the combination of Amrhein, Rizk,
and Roy teaches or suggests the contested limitation of claim 10.
We agree with the Examiner because we find Roy Figure 1 and
related disclosure teaches or suggests rendering the website in the co-
14
Appeal2018-000519
Application 13/771,415
browsing server and transferring copies of the rendered image to clients as
required by claim 1 0.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 10, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 10, and grouped claims 9, 19, and 20, which fall therewith. See Claim
Grouping, supra.
4. Rejections R2-R5 of Claims 3, 4, 6-8, 13, 14, 16-18
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R5 of claims 3, 4, 6-8, 13, 14, 16-18
under§ 103 (see App. Br. 9-10), we sustain the Examiner's rejection of
these claims. Arguments not made are waived. 6
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2--4) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
6 Appellants merely argue the claims depend from otherwise allowable
independent claims 1 and 11. App. Br. 9-10.
15
Appeal2018-000519
Application 13/771,415
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R6 of claims 1-20 under 35 U.S.C. § I03(a) over the cited prior art
combinations of record, and we do not sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
16