Ex Parte Trott

Patent Trial and Appeal Board

Jul 25, 2016

13146941 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/146,941 07 /29/2011
22879 7590 07/27/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Mitchell Trott
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.
82801125 8459
EXAMINER
KHAN, AFTAB N
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITCHELL TROTT
Appeal2014-006172
Application 13/146,941
Technology Center 2400
Before LINZY T. McCARTNEY, MELISSA A. HAAPALA, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-006172
Application 13/146,941
STATEMENT OF THE CASE
The present patent application concerns "collaborative systems and
methods for exchanging information." Spec. 1 :5---6. Claims 1, 6, and 11 are
independent. Claim 1 illustrates the claimed subject matter:
1. A method for establishing an interconnection between a
first client interface and a second client interface, the method
compnsmg:
during a meeting, forming a first audio summary at the
first client interface and a second audio summary at the second
client interface;
during the meeting, submitting the first audio summary
and the second audio summary to a correlating device capable of
comparing the first audio summary to the second audio
summary; and
during the meeting, receiving an indication of success or
failure at the first client interface and the second client interface
from the correlating device for establishing an interconnection
between the first client interface and the second client interface,
based on \~1hether the first audio summar; substantially matches
the second audio summary.
REJECTIONS
Claims 1-10, 12-15, and 18 stand rejected under 35 U.S.C. § 112 i12
as indefinite. 1
Claims 1--4, 6-8, and 11-14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Caspi et al. (US 2004/0114541 Al; June 17, 2004)
("Caspi") and Spataro et al. (US 2010/0192072 Al; July 29, 2010)
("Spataro").
1 The Examiner withdrew the rejection of claim 19 on this ground. Ans. 19.
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Claims 5, 9, 10, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Caspi, Spataro, and Mazotas (US 2007/0130473 Al; June
7, 2007).
Claims 16-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Caspi, Spataro, and Van Wie et al. (US 2012/0159354 Al; June 21,
2012).
ANALYSIS
§ 112 Rejection
The Examiner rejected claims 1, 2, 4---6, 8, 9, and 18 under 35 U.S.C.
§ 112 i-f 2 as indefinite because "the limitations 'the first audio summary
substantially matches the second audio summary' [are] vague and
indefinite." Final Act. 5 (emphasis omitted). The Examiner found the
specification does not provide a standard for determining when the recited
audio summaries "substantially match[]" and that one of ordinary skill in the
art would be "unable [to] distinguish what is a substantial match." See id. at
3, 5; Ans. 20-21. The Examiner also rejected dependent claims 2-5, 7-10,
12-15, and 18 "as having the same deficiencies as the claims they depend
from." Final Act. 5.
Appellant asserts "the Federal Circuit has stated that ' [ c ]laims need
only 'reasonably apprise those skilled in the art' as to their scope to satisfy
the definiteness requirement ... [and] use of modifiers ... like 'generally'
and 'substantially' does not by itself render the claims indefinite." App. Br.
8 (quoting Energy Absorption Sys., Inc. v. Roadway Safety Servs., Inc. 119
F.3d 16 (Fed. Cir. 1997) (unpublished)). Indeed, according to Appellant,
"the Federal Circuit has held that the word 'substantially' is definite." Id. at
8 (citing Verve LLC v. Crane Cams Inc., 311F.3d1116 (Fed. Cir. 2002));
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Application 13/146,941
Reply Br. 2. Moreover, Appellant argues that, in light of selected portions
of the specification, "the limitation 'the first audio summary substantially
matches the second audio summary' does 'reasonably apprise those skilled
in the art' as to the scope of the invention." App. Br. 8; see also id. at 9--10;
Reply Br. 2-3.
We agree with Appellant that claims including modifiers like
"substantially" can, in appropriate circumstances, "particularly point[] out
and distinctly claim[] the subject matter which the inventor ... regards as
the invention" as required by 35 U.S.C. § 112 i-f 2. See, e.g., Verve, LLC v.
Crane Cams, Inc., 311F.3d1116, 1120 (Fed. Cir. 2002) (explaining that
usage of words such as "substantially," when warranted, "may well satisfy
the charge to 'particularly point out and distinctly claim' the invention").
But here, Appellant has not presented persuasive evidence or reasoning to
rebut the Examiner's conclusion that, based on this record, one of skill in the
art would not understand the scope of the disputed limitation.
Appellant has not pointed to anything in the claims that would allow
one of ordinary skill in the art to ascertain when the recited audio summaries
"substantially match[]." See App. Br. 7-11; Reply Br. 2-3. The
specification paragraphs cited by Appellant simply (1) describe audio
summaries, (2) note that "audio summaries can be time stamped to ensure
[the summaries] ... where [sic] collected at substantially the same time,"
and (3) explain that a server determines "which audio summaries are
sufficiently similar to from [sic] the common audio environment" and which
"audio summary substantially matches the audio summary received." Spec.
5:1-8; 5:27---6:6; 13:4--9; see App. Br. 8-10. The cited paragraphs do not
provide a standard for determining when audio summaries are "sufficiently
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Application 13/146,941
similar" or "substantially match[]." Nor do these paragraphs explain how
the server determines which audio summaries are "sufficiently similar" or
"substantially match[]" in a manner that would allow one of skill in the art to
determine the scope of these terms. Appellant has also failed to provide any
persuasive evidence or reasoning demonstrating that, despite the lack of
guidance in the claims and the specification discussed above, one of
ordinary skill in the art would nevertheless understand what it means for the
recited audio summaries to "substantially match[]." See App. Br. 7-11;
Reply Br. 2-3. In light of this, Appellant's arguments have not persuaded us
the Examiner erred.
Appellant presents an additional argument for independent claim 6, its
dependent claims (claims 7-10 and 18), and claims 12-15. Specifically,
Appellant points out these claims do not include the limitation "the first
audio summary substantially matches the second audio summary" and
contends we should therefore reverse the Examiner's rejection of these
claims. App. Br. 7.
We find Appellant's arguments concerning claims 6-10 and 18
unpersuasive. Although claims 6-10 and 18 do not recite "the first audio
summary substantially matches the second audio summary" as recited in
claims 1-5, claims 6-10 and 18 do recite "when the first audio summary and
the second audio summary are substantially the same." Id. at 26-27, 29.
We understand the Examiner to have treated these limitations as effectively
equivalent for the purposes of the indefiniteness rejection. See Final Act. 3,
5; Ans. 20-21. We see no reversible error in this approach. The words
"substantially the same" and "substantially matches" give rise to the same
indefiniteness issues, and Appellant was aware of the basis of the
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Application 13/146,941
Examiner's rejection. Appellant argued in both the Appeal Brief and the
Reply Brief that the words "substantially the same" do not render claims 6-
10 and 18 indefinite for the same reasons Appellant contended the words
"substantially matches" do not render claims 1-5 indefinite. See App. Br.
10; Reply Br. 3. Those arguments are no more persuasive in the context of
claims 6-10 and 18 than they were in claims 1-5. Accordingly, we sustain
the Examiner's rejection of claims 1-10 and 18 under 35 U.S.C. § 112 i12. 2
However, we find Appellant's arguments concerning claims 12-15
persuasive. Claims 12-15 do not recite "the first audio summary
substantially matches the second audio summary" or a similar limitation,
either directly or indirectly. See App. Br. 27-28. Because the Examiner's
indefiniteness rejection of these claims rests on the Examiner's finding that
claim 12-15 include this limitation (or a similar one), see Final Act. 5, we
agree with Appellant that the Examiner erred. We therefore reverse the
Examiner's indefiniteness rejection of claims 12-15.
§ 103 Rejections
Independent claim 1 recites the following limitation:
during the meeting, receiving an indication of success or
failure at the first client interface and the second client interface
from the correlating device for establishing an interconnection
between the first client interface and the second client interface,
based on whether the first audio summary substantially matches
the second audio summary.
2 Claims 16 and 17 depend from claim 1, but the Examiner did not reject
these claims under 35 U.S.C. § 112 i12. If prosecution continues, we leave it
to the Examiner to consider whether the claims should also be rejected under
35 U.S.C. § 112 i12.
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App. Br. 25. Independent claims 6 and 11 recite similar limitations. Id. at
26-27. Appellant argues the Examiner's combination of Caspi and Spataro
fails to teach or suggest this limitation. See App. Br. 12-17; Reply Br. 3-8.
Specifically, Appellant contends these references, in particular Spataro,
discuss collaboration generally but do teach or suggest "receiving an
indication of success ... for establishing an interconnection between the first
client interface and the second client interface, based on whether the first
audio summary substantially matches the second audio summary." See App.
Br. 15-17; Reply Br. 7-8.
We find Appellant's argument persuasive. The Examiner found in the
Final Action that Caspi teaches "whether the first audio summary
substantially matches the second audio summary" but does not teach
"receiving an indication of success or failure for establishing interconnection
between client devices." Final Act. 7. The Examiner also found in the Final
Action that Spataro remedies this deficiency because Spataro "teaches
receiving an indication of success or failure ... from the correlating device
for establishing an interconnection" between the first and second client
interfaces. Id. at 7-8. Based on these findings, the Examiner concluded in
the Final Action that it would have been obvious to modify Caspi's
teachings to "include receiving indication of successful interconnection by
client interface after successfully logging onto the server." Id. at 8. But the
Examiner's findings and ultimate obviousness conclusion in the Final Action
do not address a key portion of the disputed limitation: namely, that
"receiving an indication of success ... for establishing an interconnection"
is ultimately "based on whether the first audio summary substantially
matches the second audio summary." Although the Examiner finds in the
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Answer that Sparato generally "compliments [sic] the Caspi reference[] and
cures any deficiency not expressly disclosed in the Caspi reference," the
Examiner has not provided sufficient evidence or reasoning to establish that
Spataro teaches or suggests this aspect of the disputed limitation. Ans. 24;
see also id. at 25-26, 28. Accordingly, we do not sustain the Examiner's
rejection of independent claims 1, 6, and 11 and their respective dependent
claims.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-10 and 18 under 35 U.S.C. § 112 i-f 2. We reverse the Examiner's
rejection of claims 12-15 under 35 U.S.C. § 112 i-f 2. We also reverse the
Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
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).
AFFIRMED-IN-PART
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