Ex Parte Van Wie et al

Patent Trial and Appeal Board

Dec 13, 2018

14056226 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/056,226
28479 7590
EDOUARD GARCIA
Attorney At Law
270 Surrey Place
Los Altos, CA 94022
10/17/2013
12/17/2018
FIRST NAMED INVENTOR
David Van Wie
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.
014/058003 5329
EXAMINER
SPARKS, JONATHAN A
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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):
ed@egpatent.com
ed@edgarcia.com
egpatent@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID VANWIE, PAUL J. BRODY, and
JOSEPH W. JENNINGS 1
Appeal2018-002904
Application 14/056,226
Technology Center 2400
Before JASON V. MORGAN, JON M. JURGOV AN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 21, 23-25, and 70-82, constituting the only claims
on appeal before us. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse. 2
1 Appellant is the applicant and real party in interest, Social
Communications Company. (App. Br. 1 ).
2 Our Decision refers to the Specification ("Spec.") filed October 17, 2013,
2014, the Final Office Action ("Final Act.") mailed November 18, 2016, the
Appeal Brief ("App. Br.") filed May 16, 2017, the Examiner's Answer
("Ans.") mailed November 20, 2017, and the Reply Brief ("Reply Br.") filed
January 22, 2018.
Appeal2018-002904
Application 14/056,226
CLAIMED INVENTION
The claims are directed to virtual conferencing in which real-time
networked connections between a user and other communicants are
established at a virtual location where their presences are indicated. Spec.
,r 159, Fig. 19A. When the user's real-world location coincides with the
real-world location of a communicant, the user's real-time connections are
terminated while maintaining the user's and one or more other
communicants' presences at the virtual location. Spec. ,r 166, Fig. 19B.
Claim 21, reproduced below with the argued limitation shown in emphasis,
is illustrative of the claimed subject matter:
21. A computer-implemented method in a network
communications environment comprising a network service
implemented by at least one server network node and
supporting realtime communications between co-present ones
of a user and one or more other communicants in virtual
locations that define different respective communication
contexts in the network communications environment, the
method comprising by the network service:
based on a request from a first client network node,
logging the first client network node into a particular one of the
virtual locations, wherein the first client network node and a
first communicant are located in a particular real-world
location;
based on a request from a second client network node
located outside the particular real-world location to log a
second communicant into the particular virtual location,
establishing a presence for the second communicant in the
particular virtual location, and administering between the first
and second client network nodes a first realtime communication
connection that enables realtime communications between the
second communicant and communicants who are located in the
particular real-world location;
2
Appeal2018-002904
Application 14/056,226
based on a request from a third client network node
located outside the particular real-world location to log the user
into the particular virtual location, establishing a presence for
the user in the particular virtual location, administering between
the first and third client network nodes a second realtime
communication connection that enables realtime
communications between the user and communicants who are
located in the particular real-world location, and administering
between the second and third client network nodes a third
realtime communication connection that enables realtime
communications between the user and the second
communicant; and
based on a determination that the real-world location
of the user coincides with the particular real-world location,
terminating the second and third realtime communication
connections while maintaining the first realtime
communication connection and maintaining the presences
of the user and the second communicant in the particular
virtual location.
App. Br. 21 (Claims App'x).
REJECTION
Claims 21, 23-25, and 70-82 stand rejected under 35 U.S.C. § I03(a)
based on Kotler (US 2013/0091205 Al, published April 11, 2013), Erb (US
2012/0284325 Al, published November 8, 2012), and Krantz et al. (US
2013/0237240 Al, published September 12, 2013). Final Act. 8-18.
ANALYSIS
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
3
Appeal2018-002904
Application 14/056,226
subject matter pertains."' KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: ( 1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and ( 4) secondary considerations ( objective
indicia ofnonobviousness). Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
Independent Claims 21, 81, and 82
The Examiner relies on Kotler's collaborative work session to teach
most features of the claims. Final Act. 9-18. The Examiner acknowledges,
however, that Kotler fails to disclose the last paragraph of claim 21
( emphasized above), and similar limitations of claims 81 and 82. Final Act.
11, 18. For these limitations, the Examiner relies on Erb as disclosing, based
on a determination that the real-world location of the user coincides with the
particular real-world location of the first communicant, terminating the
second and third real-time communication connections between the user and
the first and second communicants. Id. The stated motivation to combine
Kotler and Erb is to reduce interruptions from the device while a user is in a
meeting/ conference, and to reduce the actions the user needs to take because
Erb's location-based rules are automatic. Id. at 11-12. The Examiner relies
on Krantz to teach maintaining the first real-time communication connection
with the first communicant and maintaining presences of the user and the
second communicant in the particular virtual location, based on a
determination that the real-world location of the user coincides with the real-
world location of the first communicant. Id. at 12 (citing Krantz ,r,r 11, 27,
32). The Examiner states that the suggestion or motivation for the
4
Appeal2018-002904
Application 14/056,226
combination is to allow the virtual collaboration system and all of its
participants to have knowledge of what user/communicants are present in
the virtual location and to maintain their virtual presences regardless of real-
world location. Id. at 13.
In contesting the Examiner's rejection, Appellant argues: (1) Erb fails
to disclose the claimed "terminating ... while maintaining" (App. Br. 9--11;
Reply Br. 5---6); (2) Kotler and Erb teach away from terminating a real-time
communication connection because neither teaches any reason to terminate
an existing connection to a collaborative work session when entering a
conference room and no useful purpose would be served thereby, so one of
skill in the art would have been led away from doing so (App. Br. 12-15);
(3) the combination of Kotler and Erb fails to disclose the argued claim
limitation because Erb's reducing audio distractions caused by a mobile
device's audio alerts does not amount to termination of a connection, and
because Erb's blocking of Kotler's application would disrupt a collaborative
work session (App. Br. 15-17); and (4) Krantz does not make up for the
deficiencies of Kotler and Erb because Krantz' s attendee list does not
indicate anything about the user's ability and willingness to communicate in
a virtual location and merely identifies profiles of people who have
physically entered a meeting place without regard to their virtual or physical
"presences" as defined in the Specification (App. Br. 17-19).
We agree with Appellant's arguments. Erb is directed to regulating
functionality of applications on a mobile computing device while the mobile
device is at an identified location. Erb Abstract. The application may be
"an internet browser, an email program, a game, a word processor program,
a spread sheet program, and the like." Id. ,r 22. Erb states that its program
5
Appeal2018-002904
Application 14/056,226
can enable or disable receiving of text messages, phone calls, and the like
(id.), but the reference does not explain, let alone contemplate, what happens
to an ongoing real-time connection, such as a phone call, when the mobile
device enters the identified location. Also, Erb' s blocking of audio
distractions such as audio alerts (id.) does not terminate a real-time
connection; it merely terminates certain notifications.
The Examiner does not explain how in the proposed combination
presences can be maintained at the virtual location ( which, according to the
Examiner, is either Kotler's collaborative work session or Krantz's attendee
list (Final Act. 8-9)) when Erb' s system has blocked the communication
application from operating on the mobile device based on determining the
mobile device is at a particular real world location. The Examiner's
combination would require initially allowing Erb's mobile computing device
to communicate presence to either Kotler's collaborative work session or
Krantz's attendee list, and then disable real-time communication with
Kotler's collaborative work session or Krantz's attendee list. While Erb
discloses some features may be blocked and others allowed (i-f 34), the
reference does not teach, when a user enters a particular location, allowing a
communication application to indicate an entity's presence before being
terminated.
Moreover, we agree with Appellant's argument that a person of
ordinary skill in the art considering Kotler would have seen no reason or
benefit to disconnecting real-time connections the user has with other
communicants when entering a particular real world location. As Appellant
points out, Kotler teaches remote users may be situated in the same room as
a central computing surface and may not be connected to it. App. Br. 12-14
6
Appeal2018-002904
Application 14/056,226
citing Kotler ,r 7. This suggests a remote user with an existing connection,
when entering the room where a work session is taking place, would
continue using that connection. Given Kotler' s teaching, one of ordinary
skill would be led away from blocking a communication application, as
taught by Erb, because it would disrupt the work session. For this additional
reason, we agree with Appellant a person of ordinary skill in the art would
not have combined the references as proposed.
Furthermore, as Appellant argues (App. Br. 18-19), Krantz's
registration of a mobile device's physical presence on an attendee list at a
meeting place (see, e.g., Krantz Abstract) has not been shown to be
equivalent or similar to "presence" in the claimed invention, which refers to
"the ability and willingness of a networked entity (e.g., a communicant,
service, or device) to communicate, where such willingness affects the
ability to detect and obtain information about the state of the entity on a
network and the ability to connect to the entity" (Spec. ,r 39). In deciding
the question of obviousness, claims must be first construed consistently with
the specification in which they appear. In re Smith Int'!, Inc., 871 F.3d
1375, 1383 (2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) and In re Suitco Swface, 603 F.3d 1255, 1259---60) (Fed. Cir. 2010)).
As Erb' s "presence" has not been shown to have the same or similar
meaning as used in the claimed invention, we do not agree a person of
ordinary skill in the art would have found it obvious to combine the
references to obtain the claimed invention with a reasonable expectation of
success.
"Rejections on obviousness cannot be sustained with mere conclusory
statements; instead, there must be some articulated reasoning with some
7
Appeal2018-002904
Application 14/056,226
rational underpinning to support the legal conclusion of obviousness." KSR,
550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, we find the articulated reasoning and underpinning insufficient to
sustain the obviousness rejection.
Remaining Claims
For the same reasons, we do not sustain the rejections of the
remaining claims which depend from respective independent claims 21, 81,
and 82. 37 C.F.R. § 4I.37(c)(l)(v) (2016).
DECISION
We reverse the rejection of claims 21, 23-25, and 70-82.
REVERSED
8