Ex Parte Gross

Board of Patent Appeals and Interferences

Jun 5, 2009

09920591 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CURTIS T. GROSS
____________________

Appeal 2008-005156
Application 09/920,5911
Technology Center 2400
____________________

Decided2: June 5, 2009
____________________

Before JAMES D. THOMAS, JAY P. LUCAS, and JOHN A. JEFFERY,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed July 31, 2001. The real party in interest is Hewlett-
Packard Development Co.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail date (paper delivery) or Notification Date (electronic Delivery).
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STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 23 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claim 24 is cancelled.
Appellant’s invention relates to an adapter for providing access for a
plurality of users, for example, at a meeting to a shared image projection
device, so that any of the users may display or modify the image projected
on the screen. In the words of the Appellant:
Since many meeting participants attend face-to-face meetings
with their computers (e-g., a laptop computer), it would be desirable if
these meeting participants could share information with the ease
provided by applications such as NETMEETING®, yet still maintain
the conventional flow of a face-to-face meeting.

To assist in achieving such a result, the inventor has devised an
adapter for providing network access to a shared image projection
device. The adapter may comprise a network interface for connecting
to a network and receiving network data from a network device over
the network. A client, operatively associated with the network
interface, receives data from the network interface and produces a
data signal. A video display driver, operatively associated with the
client, receives the data signal and produces video data for the shared
image projection device.

Also disclosed is a method for providing network access to a
shared image projection device that, according to one embodiment,
comprises the steps of: connecting the shared image projection device
to a network via a network adapter; receiving network data at the
network adapter, the network data being received from another device
which is connected to the network; and outputting video data from the
network adapter to the shared image projection device, in response to
the network data, whereby the network data is then displayed via the
shared image projection device.

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(Spec. 3, ll. 4-22).

Claim 1 is exemplary:
1. An adapter for providing network 'access to a shared image
projection device, comprising:
a network interface for connecting to a network and receiving
network data from a network device over the network;
a client, operative1y associated with the network interface, said
client receiving data from the network interface and producing a data
signal; and
a video display driver, operatively associated with the client, for
providing video data to the shared image projection device, said video
display driver receiving the data signal produced by the client and
producing said video data.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ludwig U.S. 6,237,025 B1 May 22, 2001
DeNicola U.S. 6,288,753 B1 Sep. 11, 2001

REJECTIONS
The Examiner rejects the claims as follows:
Claims 1 to 5, 10, 11, and 13 to 23 stand rejected under 35 U.S.C.
§ 102(e) for being anticipated by DeNicola.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) for being
obvious over DeNicola in view of Ludwig.
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Correction of the Rejections
We first note that the Examiner failed to formally express the
rejection of claims 6, 7, and 12. (Answer 3, bottom). When discussed in the
explanation of the rejection (Answer 9, middle to 10, bottom) under the
heading of 35 U.S.C. § 102, claims 6, 7, and 12 were found to be “obvious
to one of the ordinary skill in the art,” clearly invoking the standard under 35
U.S.C. § 103(a) for a rejection over DeNicola in view of “Official Notice.”
(Answer 10, middle). Meanwhile, the Appellant, looking at the title of the
rejection, cites claims 6, 7, and 12 as being rejected under 35 U.S.C. § 102.
(App. Br. 7, middle) and discusses those claims under the heading of that
statute, but with arguments (directed at the parent claims) equally applicable
to a rejection under 35 U.S.C. § 103 (see App. Br. 8-9 (claims 6 and 7), and
9-10 (claim 12)).
As the Appellant and the Examiner clearly and fully argued these
claims on the merits, and in the interest of judicial economy, we will take the
expedient of rephrasing the rejections consistent with the arguments
presented by both parties, and find that the following rejections expressed
the intent of the Examiner and Appellant:
R1: Claims 1 to 5, 10, 11, and 13 to 23 stand rejected under 35
U.S.C. § 102(e) for being anticipated by DeNicola.
R2: Claims 6, 7, and 12 stand rejected under 35 U.S.C. § 103(a) for
being obvious over DeNicola in view of Official Notice.
R3: Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) for
being obvious over DeNicola in view of Ludwig.

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Groups of Claims:
Claims will be discussed in the order of the arguments presented by
the Appellant.
Appellant contends that the claimed subject matter is not anticipated
by DeNicola, or rendered obvious by DeNicola in combination with Ludwig,
for failure of the references to teach or suggest all of the claimed limitations.
The Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of the Appellant or the Examiner,
we make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
We affirm the rejections.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. §§ 102(e) and 103(a). The issue turns
on whether the DeNicola reference teaches a client producing data signals as
claimed, in the context of the other limitations of the claims.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant invented an adapter for permitting participants at a meeting or
elsewhere to share control of and contribute content to an image
projection device used at the meeting. (Spec 6, ll. 3-9). The adapter
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may be part of the image projection device, and comprises a network
interface, connected to a client that produces data signals, and a video
display driver that creates video for the projector from the data signals.
(Spec 6, ll. 10-25).
2. Figure 1 of Appellant’s invention is reproduced below:

Figure 1 shows the main elements of Appellant’s invention.
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3. DeNicola presents a large interactive distance learning system that
presents students with the audio and video of a teacher delivering the
lesson, supported by numerous subsidiary screens with which the student
takes tests, gets background material and responds to the teacher.
(Abstract).
4. Figure 3 of DeNicola is presented below:

Figure 3 shows the user screen of the training system of DeNicola.

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999). “In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.” Id. (internal
citations omitted).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as
recited in the claim, it cannot be said to prove prior invention of
the thing claimed and, thus, cannot anticipate under 35 U.S.C. §
102.
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Net MoneyIN, Inc. v. VeriSign, 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added).
Our reviewing court has held in a number of decisions that a United
States patent speaks for all it discloses as of its filing date, even when used
in combination with other references. In re Zenitz, 333 F.2d 924, 926
(CCPA 1964) (internal citations omitted).
However, although elements must be arranged as required by the
claim, “this is not an ipsissimis verbis test,” i.e., identity of terminology is
not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellant’s claims
under 35 U.S.C. §§ 102 and 103. The prima facie case is presented on pages
3 to 11 of the Examiner’s Answer. In opposition, Appellant presents a
number of arguments.
Arguments with respect to the rejection
of claims 1 to 5, 10, 11, and 13 to 23
under 35 U.S.C. § 102(e) [R1]

Appellant contends that Examiner erred in rejecting the noted claims
under 35 U.S.C. § 102(e). Appellant states that the Examiner has read the
“client” element of the representative claim 1 on “students (i.e. people) that
access a virtual university of the Web server,” which is improper of itself,
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and further does not provide for “a client . . . producing a data signal” as
claimed. (App. Br. 8-9).
On clarification, the Examiner states that he is basing his rejection on
the “remote learning location” subsystem 24, as illustrated in Fig. 2.3
(Answer 12, bottom to 13, top). This subsystem provides the students at a
remote location from the teacher’s studio with a network interface to the
Internet through terminal 66, using a browser program as a client, which
produces a video signal to drive the big display screen on which the students
interact with the virtual class. (See FF 3 and 4). “Thus, such
videoconference multicasting allows the students to interact with the teacher
and other installations during the course of lecture.” (DeNicola, col. 9, ll.
14-16). We are, on consideration, persuaded that the reference does disclose
each element of the claim, and do not find error on this point.
Appellant further argues that “[n]owhere does this section of
DeNicola teach or suggest connecting a shared image projection device to a
network via a network adapter.” (App. Br. 10, top). With the interpretation
of the adapter to be the equipment as described in the remote learning
location 24, we do not agree with Appellant’s argument. Student
workstation 66 is clearly connected to the Internet 68 to receive its data, and
presents it on video screen 64 to the students. (Fig. 2).

3 Appellant complains that the Examiner has shifted his interpretation of the
client element of the claim from the students to the student’s workstation.
(Reply Br. 3). We do not agree, as the Final Rejection clearly referred to
“students interaction with the Web site”, which encompasses the whole
subsystem 24. (Final Rejection mailed Apr. 20, 2005, at 2, bottom).
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With regard to claim 11, Appellant contends that the claimed elements
are only described piecemeal, and are not connected as claimed. (App. Br.
10, bottom). We cannot agree, as the subsystem 24, previously described,
constitutes a functional whole, performing the connecting, receiving and
outputting steps as disclosed.
With regard to claim 17, Appellant argues that the reference fails to
teach the claimed element of the adapter. (App. Br. 11, middle). As the
claimed adapter contains the same subcomponents as recited above, and as
described concerning the dotted box surrounding remote learning location 24
(DeNicola, Fig. 2; col. 9, ll. 3-15), we are not persuaded that the Appellant
has found error in the rejection.
With regard to claims 2, 15, and 20, the Appellant argues that
DeNicola does not teach an adapter comprising computer readable storage
media storing system configuration data allowing the adapter to be
identified. (App. Br. 11, bottom). In DeNicola, a student logs in to the
system using a username, which results in test information being sent to the
student at that terminal. (Col. 16, ll. 33-46). The Examiner bases his
anticipation of the noted claims on this stored configuration information,
identifying the workstation. (Answer 13, bottom). We do not find error in
the use of this teaching.
Finally, with regard to claim 10, Appellant contends that DeNicola
does not teach or suggest that the adapter comprises the shared image
projection device. (App. Br. 12, middle). In the description of item 24, the
remote learning location, the shared image projection device 64 is clearly
shown within the confines of the training site equipment 24. (DeNicola, Fig.
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2). We agree with the Examiner that this satisfies the terms of the claim as
written.

Arguments with respect to the rejection
of claims 6, 7, and 12
under 35 U.S.C. § 103(a) [R2]

As noted in the Rejections section above, claims 6, 7, and 12 are
deemed to be rejected under 35 U.S.C. § 103 for being obvious over
DeNicola in view of Official Notice. Appellant has included his arguments
for the noted claims in the arguments discussed above for rejection R1. (See
App. Br. 8-9). The specific limitations of the noted claims were not argued,
but rather the arguments of the representative claims 1 and 11 were
presented. In the discussion above, we did not find convincing evidence of
Examiner error in the rejection of the representative independent claims.
Thus claims 6, 7, and 12 will stand or fall with the indicated
representative claims; in this case, they fall.

Arguments with respect to the rejection
of claims 8 and 9
under 35 U.S.C. § 103 [R3]

Examiner has rejected claims 8 and 9 for being obvious over
DeNicola in view of Ludwig. Appellant has only argued with respect to this
rejection that Ludwig fails to cure the deficiencies of DeNicola. (App. Br.
13, bottom).
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As we have not found such deficiencies, we will support the rejection
of claims 8 and 9 under 35 U.S.C. § 103.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner has not erred in rejecting claims 1 to 23 as expressed in R1, R2
and R3.
DECISION
R1: The rejection of claims 1 to 5, 10, 11, and 13 to 23 under 35
U.S.C. § 102(e) for being anticipated by DeNicola is affirmed.
R2: The rejection of claims 6, 7, and 12 under 35 U.S.C. § 103(a)
for being obvious over DeNicola in view of Official Notice is affirmed.
R3: The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) for
being obvious over DeNicola in view of Ludwig is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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