Ex Parte Shaw et al

Patent Trial and Appeal Board

Apr 26, 2017

12039789 (P.T.A.B. Apr. 26, 2017)

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.
12/039,789 02/29/2008 Donna Sue Shaw 322712.01 8185
69316 7590 04/28/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
PILLAI, NAMITHA
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONNA SUE SHAW, GREGORY SCOTT KLABISH, and GAIL
ELAINE SLAPIKOFF
Appeal 2016-007152
Application 12/039,789
Technology Center 2100
Before THU A. DANG, JOHN D. HAMANN, and ALEX S. YAP,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) of the Examiner’s second
non-final rejection of claims 1—7, and 21—32, which are all of the pending
claims. Claims 8—20 were previously canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appeal 2016-007152
Application 12/039,789
A. THE INVENTION
According to Appellants, the invention relates to “collaborative
management of activities occurring during the lifecycle of a meeting” (Spec.
15).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method comprising:
providing an agenda interface configured to allow an
originating meeting participant to generate an agenda for a meeting;
locally storing the agenda in a workspace in a computer
associated with the originating meeting participant, the computer
having a copy of a collaboration program facilitating the workspace;
transmitting a copy of the workspace to computers used by
other meeting participants of the meeting, the transmitted copies of
the workspace being locally stored in the computers used by the other
meeting participants, which individually have a copy of the
collaboration program;
providing a summary interface configured to allow the
originating meeting participant to generate a summary of the meeting;
storing the summary of the meeting in the workspace in the
computer used by the originating meeting participant;
transmitting a copy of the summary of the meeting in the
workplace to the computers used by the other meeting participants of
the meeting;
detecting, by the collaboration program, a change in at least one
of the copies of the summary of the meeting locally stored in the
computers used by the other meeting participants; and
automatically synchronizing, by the collaboration program, the
detected change in the summary of the meeting to the copies of the
workspace locally stored in the computers used by the originating
meeting participant and the other meeting participants.
2
Appeal 2016-007152
Application 12/039,789
C. REJECTION
Claims 1—7 and 21—32 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Oral et al. (US 2008/0162244 Al; pub. July 3, 2008)
(“Oral”).1 * 3
II. ISSUES
The issues before us are whether the Examiner erred in finding that
Oral teaches “detecting, by the collaboration program, a change in at least
one of the copies of the summary of the meeting locally stored in the
computers used by the other meeting participants;” and “automatically
synchronizing, by the collaboration program, the detected change in the
summary of the meeting to the copies of the workspace locally stored in the
computers used by the originating meeting participant and the other meeting
participant.” (Claim 1, emphasis added).
III. ANALYSIS
Appellants contend Oral “does not disclose synchronizing the
reordered agenda between the attendee that reordered the agenda and both
the meeting host and ‘the other meeting participants’” (App. Br. 15). In
particular, Appellants contend, “as clearly set out in Oral’s description, the
reordered agenda is passed back to the meeting host, who can either accept
or reject the reordered agenda” {id.). According to Appellants, “manual
intervention by the Host is needed in order for Oral’s re-ordered agenda be
transmitted to the client devices,” and thus, “Oral’s teaching of sending out
1 In the Answer, the Examiner withdraws the rejection of claims 1—7 and
21—32 under 35 U.S.C. § 112, first paragraph. Ans. 2.
3
Appeal 2016-007152
Application 12/039,789
the re-ordered agendas cannot possibly be read as ‘automatically
synchronizing’ by Oral’s meeting scheduling service 103.” (Reply Br. 2).
After reviewing the record on appeal, we find the preponderance of
evidence supports Appellants’ position. Even though we agree with the
Examiner that “Oral discloses generating a first meeting agenda which reads
on a summary of the meeting,” “the attendee reordering the agenda items at
their client device,” and “the host then sending the other invitees the newly
ordered agenda,” which “results in a change to the local copy stored on the
client device of the other meeting participants” (Ans. 2-4), we do not find,
in the referenced portions of Oral, any teaching of “automatically
synchronizing, by the collaboration program, the detected change in the
summary of the meeting to the copies of the workspace locally stored in the
computers used by the originating meeting participant and the other meeting
participants,” as required by claim 1. In particular, as the Examiner finds,
the host, in Oral, sends the other invitees the newly ordered agenda. Id.
Although “the PTO must give claims their broadest reasonable
construction consistent with the specification[,] . . . claims should always be
read in light of the specification and teachings in the underlying patent.” In
re Suitco Surface, Inc., 603 F.3d 1255, 1259—60 (Fed. Cir. 2010) (internal
citations and quotation omitted). We find one of ordinary skill in the art, in
light of the Specification and plain meaning of the claim language, would
have understood “automatically synchronizing, by the collaboration
program” to encompass the collaboration program, without human
intervention, synchronizing the detected change to computers used by the
originating meeting participant and the other meeting participants. We find
the Examiner construes “automatically synchronizing, by the collaboration
4
Appeal 2016-007152
Application 12/039,789
program” too broadly and unreasonably by construing the phase to include
that “/t]he host determines with the pre-defmed agenda is accepted in
response to which the data is automatically synchronized with the meeting
invitees and the agendas in their local client device.” (Ans. 4, emphasis
added). Nor has the Examiner cited to any portion of the Specification to
reasonably allow for broadening the ordinary meaning of “automatically
synchronizing, by the collaboration program” to include such intervention
by the host.
Although we are mindful that the claimed method recites the
transitional term “comprising” which indicates that the claim is open-ended
and allows for additional steps (Invitrogen Corp. v. Biocrest Mfg., L.P., 327
F.3d 1364, 1368 (Fed. Cir. 2003)), the question is whether the Examiner’s
determination of the scope of claims, though broad, is a reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). (See MPEP § 2111).
Here, the “automatically synchronizing” step requires the automatic
synchronizing of the detected change by the collaboration program “to
computers used by the originating meeting participant and the other meeting
participants.” We find such interpretation of the “automatically
synchronizing, by the collaboration program” to also comprise 1) a human
intervention by the host to accept the change at the computer used by the
host (the originating meeting participant), and then 2) the human
intervention by the host to send the change to the computers used by the
other meeting participants, to be overly broad and unreasonable. That is,
such interpretation would not be the broadest, reasonable interpretation “in
5
Appeal 2016-007152
Application 12/039,789
light of the specification as it would be interpreted by one of ordinary skill in
the art.” See In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d at 1364.
Accordingly, we are persuaded that the Examiner erred in finding Oral
teaches “automatically synchronizing, by the collaboration program, the
detected change in the summary of the meeting to the copies of the
workspace locally stored in the computers used by the originating meeting
participant and the other meeting participant” (claim 1).
On this record, we are constrained to reverse the Examiner’s
35 U.S.C. § 102 rejection of claims 1, claims 21 and 30, reciting similar
limitations, and claims 2—7, 22—29, 31, and 32, depending respectively on
claims 1,21, and 30, over Oral.2 * * * 6
2 Because a rejection of the claims under § 103 is not before us on appeal,
we do not reach and express no opinion as to whether the claims might be
obvious over the teachings and suggestions of the Oral reference, considered
alone, or considered in combination with one or more additional references.
In the event of further prosecution, we invite the Examiner’s attention to
Appellants’ proffered evidence, and leave it to the Examiner to determine
whether these claims should instead be rejected under 35 U.S.C. § 103(a).
In particular, we leave it to the Examiner to determine whether providing a
mechanical or automatic means to replace manual activity to accomplish the
same result would be an obvious improvement. See In re Venner, 262 F.2d
91, 95 (CCPA 1958). We also leave it to the Examiner to determine whether
automatically synchronizing a detected change would have been uniquely
challenging or otherwise beyond the level of skill possessed by ordinarily
skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007). While 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 MPEP § 1213.02.
6
Appeal 2016-007152
Application 12/039,789
V. CONCLUSION AND DECISION
We reverse the Examiner’s rejections of claims 1—7 and 21—32 under
35 U.S.C. § 102(e).
REVERSED
7