Ex Parte Bhogal et al

Patent Trial and Appeal Board

Oct 27, 2016

11847719 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111847,719 08/30/2007 Kulvir Singh Bhogal
63056 7590 10/31/2016
MOLLBORN PATENTS, INC
2840 COLBY DRIVE
BOULDER, CO 80305
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.
SVL920070086US l/IBMP032 2591
EXAMINER
BURKE, TIONNA M
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
MOLLBORN@MOLLBORN.COM
eofficeaction@appcoll.com
admin@mollborn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUL VIR SINGH BHOGAL, ROBERT ROSS PETERSON, and
LISA ANNE SEACAT 1
Appeal2015-005333
Application 11/84 7, 719
Technology Center 2100
Before ERIC S. FRAHM, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 30-58. Claims 1-29 have been canceled. See Appellants'
Amendment (filed October 16, 2012). We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify International Business Machines Inc. as the real party
in interest. App. Br. 2.
Appeal2015-005333
Application 11/84 7, 719
STATEMENT OF THE CASE
Introduction
Appellants' claimed invention is directed to "presenting media to a
group of users in an online environment." Spec. ,-r 1. In a disclosed
embodiment, an electronic copy of a presentation is stored locally on a
presenter's presentation device as well as stored locally on one of the
participants' presentation device. Spec. ,-r 4. As the presenter advances
slides in the presentation, the slides displayed on the participants'
presentation devices are also advanced. Spec. ,-r 4. According to the
Specification, the claimed invention requires only a small amount of
information (compared to the information contained in each slide) to be sent
over a computer network, thereby preserving bandwidth. Spec. ,-r 5.
Claims 30 and 58 are exemplary of the subject matter on appeal and
are reproduced below with the disputed limitations emphasized in italics:
30. A computer-implemented method for synchronizing a media
presentation, the method comprising:
storing electronic copies of the entire media presentation on
presentation devices of two or more participants prior to beginning the
media presentation, wherein each presentation device is operable to
communicate with the other presentation devices through a
communications network;
displaying the electronic copies of the media presentation on the
participants' presentation devices;
using a menu on any of the presentation devices to select, by any
of the participants, at least one participant among the participants to be
a presenter of the media presentation;
in response to an activity performed by the selected at least one
presenter on the at least one presenter's copy of the media presentation,
transmitting data corresponding to the activity from the presenter's
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presentation device, through the network, to the presentation devices of
the participants who selected the at least one presenter; and
changing, in accordance with the transmitted data, the
appearance of the electronic copies of the media presentation on the
presentation devices of the participants who selected the at least one
presenter.
58. A presentation device, comprising:
- a memory operable to receive and store an electronic copy of a
media presentation prior to the beginning of the media presentation;
- a display unit operable to display the electronic copy of the
media presentation on a user interface, wherein the user interface
further includes a menu for selecting among two or more participants
having electronic copies of the media presentation, a participant to be
a presenter of the media presentation;
- a network interface operable to:
communicate with other presentation devices having
electronic copies of the same media presentation through a
communications network, and
receive data corresponding to an activity performed by the
presenter on the presenter's copy of the media presentation; and
- a processor operable to, in response to the network interface
receiving data corresponding to the activity performed by the presenter,
change, in accordance with the transmitted data, the appearance of the
electronic copy of the media presentation on the display unit.
The Examiner's Rejections2
1. Claims 30-33, 35, 36, 43--47, 49, 50, 57, and 58 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Craig (US 6,654,785
Bl; Nov. 25, 2003); Vernon et al. (US 2004/0252185 Al; Dec. 16, 2004)
2 The Examiner has withdrawn the rejection of claims 44--57 under 35
U.S.C. § 101. See Adv. Act. 2 (mailed November 22, 2013).
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Application 11/84 7, 719
("Vernon"); and Watanabe (US 7,191,214 B2; Mar. 13, 2007). Final Act. 3-
11.
2. Claims 34, 42, 48, and 56 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Craig, Vernon, Watanabe, and Woolf et
al. (US 7,373,590 B2; May 13, 2008) ("Woolf'). Final Act. 11-13.
3. Claims 37--40 and 51-54 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Craig, Vernon, Watanabe, and Lentz
(US 7,373,608 B2; May 13, 2008). Final Act. 13-17.
4. Claims 41 and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Craig, Vernon, Watanabe, and Lin (US
2004/02054 77 A 1; Oct. 14, 2004 ). Final Act. 17-19.
Issues on Appeal
1. Did the Examiner err in finding Watanabe teaches or suggests
"storing electronic copies of the entire media presentation on presentation
devices of two or more participants prior to beginning the media
presentation, wherein each presentation device is operable to communicate
with the other presentation devices through a communications network," as
recited in claim 30?3
2. Did the Examiner err in finding the combination of cited
references teaches or suggests the disputed limitations recited in claim 58?
3 Because we find this issue dispositive, we do not address other issues
raised by Appellants related to claims 30-57.
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Application 11/84 7, 719
Claims 30--57
ANALYSIS4
In rejecting claim 30, the Examiner finds, inter alia, Watanabe
teaches "storing electronic copies of the entire media presentation on
presentation devices of two or more participants prior to beginning the
media presentation, wherein each presentation device is operable to
communicate with the other presentation devices through a communications
network." Final Act. 6 (citing Watanabe claims 2 and 5). However, in
responding to prior arguments by Appellants, the Examiner explains Craig
teaches "distributing copies of the presentation prior to the start of the
presentation to individual remote locations" (citing Craig, col. 2, 11. 11-17)
and Vernon teaches having a "document for the presentation stored on the
local computer" (citing Vernon i-f 50). Final Act. 19-20. The Examiner
further explains neither Craig nor Vernon teaches storing the distributed
presentation on each of the participants' devices. Final Act. 20. The
Examiner finds "Watanabe teaches storing a file corresponding to the
conference and when the participant tries to access the file, the judging unit
determines accessibility based on the user. The file and access to the file is
[sic] determined prior to the start of the conference." Final Act. 20 (citing
Watanabe claims 2 and 5). The Examiner determines the combined
teachings of Craig, Vernon, and Watanabe teaches "storing the distributed
presentation on each participant's device." Final Act. 20.
4 Throughout this Decision, we have considered the Appeal Brief, filed
January 7, 2014 ("App. Br."); the Reply Brief, filed May 27, 2014 ("Reply
Br."); the Examiner's Answer, mailed on April 1, 2014 ("Ans."); and the
Final Office Action ("Final Act."), mailed on August 7, 2013, from which
this Appeal is taken.
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Appellants contend the Examiner erred because "Watanabe does not
disclose that files 'corresponding to' the conference are electronic copies of
the entire media presentation ... [or] that these files are stored 'on the
presentation devices of two or more participants."' App. Br. 14.
Specifically, Appellants assert Watanabe teaches storing the files
corresponding to the conference in memory of the host PC. App. Br. 14;
Reply Br. 25 (citing Watanabe, col. 7, 11. 18-30). Appellants argue the host
PC of Watanabe is not equivalent to presentations devices of two or more
participants, as required by claim 30. Reply Br. 2. Further, Appellants
contend "Watanabe describes what happens when a user tries to access files
after the conference is finished, not 'prior to beginning the media
presentation,' which is recited in claim 30." Reply Br. 2.
Additionally, Appellants argue the Examiner erred in finding Craig's
"individual remote locations" are the same as the claimed "presentation
devices of two or more participants." App. Br. 14. Appellants assert Craig's
use of individual remote locations implies a spatial dispersion only and does
not relate to presentation devices of two or more participants. App. Br. 14.
Further, Appellants contend the Examiner has not provided sufficient
explanation as to how Craig's distribution of copies of a presentation to
individual remote locations, Vernon's storage of a document on a user's
device, and Watanabe's storage of a file corresponding to a conference could
be combined to teach the disputed limitation. App. Br. 15.
We find Appellants' arguments persuasive of Examiner error. In
particular, the memory unit of Watanabe, as relied upon by the Examiner, is
5 The Reply Brief does not have page numbers. For reference purposes, we
designate the title page of the Reply Brief as page 1.
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part of a conference apparatus (see Watanabe claims 1, 2, and 5).
Watanabe teaches the memory unit stores files that were accessed during the
conference, or that correspond to the conference. Watanabe, col. 7, 11. 18-
20, claim 2. We agree with Appellants that Watanabe's claimed conference
apparatus relates to the conference host device, as opposed to the
participants' devices. Additionally, Watanabe teaches "if someone
subsequently attempts to access those files [(i.e., files that were accessed
during a conference)], a host PC 108 grants or refuses a permission to access
the files depending on whether the person was a participant in the
conference." Watanabe, col. 7, 11. 20-23 (emphases added). Thus, we
disagree with the Examiner that access to the files is determined prior to the
conference. Further, we agree with Appellants that the Examiner has not
provided sufficient reasoning to support the conclusion of obviousness based
on the teachings of Craig, V em on, and Watanabe with respect to this
disputed limitation.
For the reasons discussed supra and based on the record before us, we
are constrained to reverse the Examiner's rejection of independent claim 3 0
and independent claim 44, which recites similar limitations. Further, we do
not sustain the Examiner's rejections of claims 31--43 and 45-57, which
depend therefrom.
Claim 58
Independent claim 58 is directed to a presentation device comprising,
inter alia, "memory operable to receive and store an electronic copy of a
media presentation prior to the beginning of the media presentation."
Emphasis added. Further, claim 58 recites a user interface that "includes a
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menu for selecting among two or more participants having electronic copies
of the media presentation."
Appellants advance the same arguments against the Examiner's
rejection of claim 58 as were advanced for claim 30, discussed supra. See
App. Br. 19.
We are unpersuaded by Appellants' arguments, as directed to claim
58, because they are not commensurate with the scope of claim 58. See In re
Self, 671F.2d1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability).
Claim 58 differs from independent claims 30 and 44 because, at least,
claim 58 is directed to a "presentation device" comprising memory operable
to store a copy of the media presentation. Claim 58 does not distinguish
whether the claimed presentation device is the host's (i.e., presenter's)
device or a participant's device. Additionally, claim 58 recites only that the
memory of the presentation device is operable to store a copy of the media
presentation prior to the beginning of the media presentation. Watanabe
teaches a conference apparatus (i.e., a presentation device) comprising, inter
alia, memory operable to store a copy of the media presentation. See
Watanabe, col. 7, 11. 18-20, claim 2. Appellants do not provide sufficient
argument or evidence why the memory of Watanabe, which is operable to
store the media presentation after the conference (as asserted by Appellants,
see Reply Br. 2) would not be operable to store a copy of the media
presentation prior to the conference.
For the reasons discussed supra, we are not persuaded by Appellants'
arguments of Examiner error. Accordingly, we sustain the Examiner's
rejection of claim 58.
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DECISION
We reverse the Examiner's decision to reject claims 30-57.
We affirm the Examiner's decision to reject claim 58.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
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