International Business Machines Corporation

Patent Trials and Appeals Board

Jan 25, 2021

2019005863 (P.T.A.B. Jan. 25, 2021)

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. 15/088,502 04/01/2016 Jonathan Dunne SVL920160003US1_8150-0612 2005 112978 7590 01/25/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER MERCADO VARGAS, ARIEL ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 01/25/2021 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN DUNNE, JAMES P. GALVIN, JR., LIAM HARPUR, and AMY D. TRAVIS Appeal 2019-005863 Application 15/088,502 Technology Center 2100 Before LINZY T. McCARTNEY, MATTHEW J. McNEILL, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 8-10, 12, 13, 15-17, 19, and 20, all of the claims pending in the application.1 Appeal Br. 48-52 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 5. Appeal 2019-005863 Application 15/088,502 2 CLAIMED SUBJECT MATTER The claimed invention generally relates to annotations for presentations in a web conference. Spec. ¶¶ 2-3. Appellant’s method assigns a relevance parameter to each annotation, where the parameter indicates a relevance of the annotation. Id. ¶ 4. The relevance of the annotation is used to determine the location of the annotation. Id. ¶¶ 4-5. Independent claim 8 is illustrative: 8. A system, comprising: a processor programmed to initiate executable operations comprising: receiving a plurality of annotations for a presentation presented in a web conference; and for a first annotation of the plurality of annotations: determining a respective portion of the presentation to which the first annotation pertains by performing natural language processing and semantic analysis on the first annotation and the presentation; determining a level of correlation between the first annotation and the respective portion of the presentation to which the first annotation pertains by applying a regression analysis on results of the natural language processing and semantic analysis; based on the determined level of correlation between the first annotation and the respective portion of the presentation to which the first annotation pertains, assigning to the first annotation a first relevance parameter, wherein the first relevance parameter indicates a relevance of the first annotation to the respective portion of the presentation to which the first annotation pertains; determining that the first relevance parameter has a first value that is higher than a second value of a second relevance parameter assigned to a second annotation of the plurality of annotations; Appeal 2019-005863 Application 15/088,502 3 responsive to determining that the first relevance parameter has the first value that is higher than the second value of the second relevance parameter assigned to the second annotation: assigning, using a processor, based on the first relevance parameter assigned to the first annotation, the first annotation to a first location of a view of the presentation presented in a virtual white board, wherein the first location of the view comprises at least one cell identified by a defined row and a defined column in a defined grid of the virtual white board in which the presentation is presented, wherein the first location of the view to which the first annotation is assigned is different than a second location of the view where the first annotation originally was provided; presenting the first annotation in the virtual white board in the first location of the view to which the first annotation is assigned and reserving the first location exclusively for the first annotation, the reserving the first location exclusively for the first annotation making the first location unavailable for other annotations; and re-locating the second annotation in the virtual white board from another location to the second location of the view where the first annotation originally was provided. REFERENCES Name Reference Date Marshall et al. (“Marshall”) US 2004/0194021 A1 Sept. 30, 2004 Marchisio US 6,862,710 B1 Mar. 1, 2005 Cragun et al. (“Cragun”) US 2005/0091253 A1 Apr. 28, 2005 Tang US 2013/0054636 A1 Feb. 28, 2013 Ball et al. (“Ball”) US 2017/0139921 A1 May 18, 2017 Appeal 2019-005863 Application 15/088,502 4 REJECTIONS2 Claims 8-10, 12, 13, 15-17, 19, and 20 are rejected under 35 U.S.C. § 103 as being obvious over the combination of Tang, Marchisio, Ball, Cragun, and Marshall. OPINION We have reviewed the Examiner’s obviousness rejections in light of Appellant’s contentions that the Examiner has erred.3 Final Act. 12-25; Ans. 5-15; Appeal Br. 36-46; Reply Br. 2-7. We are not persuaded by Appellant’s contention of Examiner error in rejecting claims 8-10, 12, 13, 15-17, 19, and 20 under 35 U.S.C. § 103. 1. Claims 8-10, 13, 15-17, and 20 We begin with claim 8. The first issue raised by Appellant is whether the combination of Tang, Marchisio, Ball, Cragun, and Marshall teaches or suggests the claimed invention. In particular, whether the Examiner is correct in finding that Marshall teaches or suggests the limitation “reserving the first location exclusively for the first annotation making the first location unavailable for other annotations.” Appeal Br. 37-38; Reply Br. 2-3. The Examiner finds Tang to teach a method of receiving annotations for a presentation presented in a web meeting. Final Act. 13-14. The Examiner finds Tang to describe attendees making annotations on a copy of a source document 402. Id. (citing Tang ¶ 49). The Examiner further finds 2 The Examiner has withdrawn rejections based upon double patenting and upon subject matter eligibility. Ans. 3. Accordingly, these rejections are not before us, and we take no position on them. 3 Appellant has withdrawn an argument, presented in the Appeal Brief at pages 36-39, directed to teachings of Tang. Reply Br. 2. Accordingly, this argument is not before us, and we do not address it here. Appeal 2019-005863 Application 15/088,502 5 Tang to describe assigning a relevance parameter to each annotation based upon semantic analysis, where the relevance parameter indicates the relevance of the annotation to the pertinent part of the presentation. Id. The Examiner relies on Tang’s description of associating transcribed recordings (annotations) with one or more portions of source document 402, where each annotation is ranked as to whether the annotation content is strongly relevant to content from a pertinent part of the source document. Id. at 13-14 (citing Tang ¶ 41). The Examiner relies upon Marchisio to teach or suggest determining a level of correlation between the annotation and the pertinent part of the presentation through a correlation analysis. Id. at 15-17. The Examiner relies upon Ball for assigning relevance parameters, such as through text similarity measurements, and locating and relocating annotations to a user in a particular order. Id. at 16-17. The Examiner relies upon Cragun for a defined row-and-column grid for annotations. Id. at 18-19. The Examiner relies upon Marshall for teaching a first user’s high- level annotation displayed in a position adjacent to the contextually relevant portion of the document. Id. at 19-20. The Examiner further relies upon Marshall for teaching the disputed limitation, “reserving the first location exclusively for the first annotation,” by rescaling a high-value annotation to place it more prominently while maintaining the contextual relevance with the associated portion of the document. Id. at 20 (citing Marshall ¶ 55, Fig. 7). The Examiner further states that Marshall teaches that the annotation is “reserved” for a location because another annotation would not be allowed to overlap with or replace the annotation at that location. Ans. 8 (citing Marshall ¶ 43). Appeal 2019-005863 Application 15/088,502 6 Appellant argues that Marshall, at the cited sections, does not explicitly disclose “reserving the first location exclusively for the first annotation making the first location unavailable for other annotations.” Appeal Br. 39-40; Reply Br. 3. We determine the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their construction “in light of the [S]pecification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Neither Appellant nor the Specification defines “reserving the first location exclusively.” See, e.g., Spec. ¶¶ 14-32 (defining various other terms). However, the Specification provides an example of reserving a location for an annotation: Thus, based on the relevance parameters 180, 182, the web conferencing application 112 can rank the annotation 160 higher than the annotation 162. Because the annotation 160 is ranked higher, the web conferencing application 112 can give the annotation 160 higher priority when determining where to re-locate the annotation 160 in the virtual white board 200. For instance, the web conferencing application 112 can determine one or more cells 240 of grid 230, or portions of one or more cells 240, where the annotation 160 is to be moved, and reserve those cells, or the portions of the cells, exclusively for the annotation 160. Accordingly, those cells 240, or portions thereof, reserved for the annotation 160 can be made to be unavailable for other annotations, such as the annotation 162. Spec. ¶ 50. Thus, the Specification describes reserving a location for an annotation as making that location unavailable for other annotations; specifically, the lower-ranking annotation in a comparison of two annotations. The Examiner interprets “reserving the first location exclusively” for an annotation as being met by Marshall’s provision of an Appeal 2019-005863 Application 15/088,502 7 exclusive location for an annotation that may not be replaced or overlapped by another annotation. Final Act. 20. This finding is supported by Marshall, which clearly describes providing unique locations for each of multiple annotations, stating, “any overlapping high value annotations are resolved or separated.” Marshall ¶¶ 42 (addressing annotations from several users), 55 (discussing separation of two annotations). Thus, we agree with the Examiner that Marshall’s teaching of providing an annotation with a location that is separate from “any” other annotations is consistent with the broadest reasonable interpretation, consistent with the Specification, of the “reserving the first location exclusively” limitation. Appellant further argues that Marshall does not inherently disclose that limitation, because “it is not invariable that another high value annotation cannot be re-positioned in the upper right corner of the document on top of or to replace the annotation 420.” Appeal Br. 40; Reply Br. 3. We understand this to be an argument that Marshall’s annotation positioning could be replaced should a higher value annotation be later identified, and that this would not meet the language of the claim. Appellant does not point to any section of Marshall that describes the replacement of annotation 420 with another annotation. To the contrary, Marshall describes separating, to unique locations, multiple annotations that have been attempted to have been placed in the same location by multiple users. Marshall ¶ 42. Thus, we are not persuaded by Appellant’s argument that a hypothetical later placement of an annotation detracts from Marshall’s teaching of reserving a first location exclusively for an annotation and making that location unavailable for other annotations. Appeal 2019-005863 Application 15/088,502 8 Appellant next argues that the Examiner relies solely on hindsight to motivate the combination of Tang and Marshall. Appeal Br. 40-42; Reply Br. 3-5. Specifically, Appellant argues that the Examiner provides no reasoning, other than using the claims as a framework, to assemble the references. Reply Br. 4. For example, with respect to the teachings of Marchisio, Appellant states that the Examiner has taken a statement of Marchisio that expresses the advantages of Marchisio’s invention, and used that statement as a reason to combine teachings of Marchisio with the other applied references. Id. Appellant argues that such teachings would not provide a reasoning to combine Marchisio because Marchisio is directed to a different invention (relating to navigating through a document set) than Appellant’s alleged invention (a presentation presented in a web conference). Id. We are not persuaded. Appellant has not explained why the rationale provided by the Examiner is not a reason to combine the teachings of Marchisio with the other references. It has been noted that, [a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Here, the Examiner has relied upon Marchisio’s stated advantage of improved navigability of documents in a document set to provide motivation for applying Marchisio’s teaching of determining a level of correlation between annotation and a location of a presentation through a regression analysis. Final Act. 16. Appellant does not contest that Marchisio provides Appeal 2019-005863 Application 15/088,502 9 this statement of improvement. Reply Br. 4. Thus, we agree with the Examiner that the applied references, viewed by one of ordinary skill in the art, independently provide a reason to combine the references beyond mere reconstruction of the disclosed and claimed invention. Accordingly, we are not persuaded that the Examiner’s determination is based solely upon knowledge gleaned from Appellant’s disclosure, and therefore are not persuaded that the rejection improperly relies upon hindsight reconstruction. Furthermore, Appellant’s argument does not take into account the “inferences and creative steps that a person of ordinary skill in the art would employ.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The person of ordinary skill is the person of ordinary skill in the art is “a person of ordinary creativity, not an automaton.” Id. at 421. Appellant alleges that the invention of Marchisio is towards a different purpose than that of claim 8. Reply Br. 4. However, the reason for combining references is not limited to the purpose or problem addressed by Appellant, but “any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed . . . a person of ordinary skill often will be able to fit the teachings of multiple patents together like a puzzle.” KSR, 550 U.S. at 402. For that reason also, Appellant’s hindsight argument is not persuasive. For the above reasons, we are not persuaded of error, and affirm the Examiner’s rejection of claim 8. Appellant further argues that dependent claims 9, 10, 13, 15-17, and 20 stand or fall with independent claim 1. Appeal Br. 36. Accordingly, we affirm the rejection of claims 8-10, 13, 15- 17, and 20. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-005863 Application 15/088,502 10 2. Claims 12 and 19 Appellant argues that neither Tang nor Marshall teaches, either individually or in combination, the limitation “determining whether the first relevance parameter exceeds a threshold value” recited in claim 12. Appeal Br. 42-46. Appellant first argues that the Examiner has relied upon Tang’s teaching of an annotation that is identified by a ranking to be “strongly relevant” to content in the working document. Id. at 43-44 (citing Tang ¶ 41). Appellant argues that Tang does not equate “strongly relevant” to a “threshold value.” Id. at 44; Reply Br. 6. Appellant argues that “threshold value” is a precise value, unlike “strongly relevant,” which would vary from case to case because it is based on a ranking dependent from other elements in the ranking. Id. We are not persuaded by Appellant’s argument. The Examiner finds that Tang teaches associations of annotations to portions of the document that have been determined to be strongly relevant to that portion of the document. Final Act. 23 (citing Tang ¶ 41). The Examiner characterizes the determination that a document is “strongly relevant” to be a relevance parameter that exceeds a threshold value, that causes the annotations to be distributed to (associated with a version of) the document. Id. Appellant argues that the claimed threshold value is distinguishable from Tang’s “strongly relevant” indication because the threshold value does not vary from case to case. However, claim 12 requires only “determining whether the first relevance parameter exceeds a threshold value.” Claim 12 does not further define what that threshold value must be, how it is set or calculated, or how it may or may not vary from case to case. Because the Examiner has found Tang to teach a threshold set at a “strongly relevant” value, and Appeal 2019-005863 Application 15/088,502 11 Appellant’s argument against the Examiner’s finding is not commensurate with the scope of claim 12, we are not persuaded by Appellant’s argument. Appellant further argues that Marshall does not disclose a “threshold value” because Marshall instead describes a “ranked importance” that will vary depending on other elements in the ranking. Appeal Br. 45-46. Because we have agreed with the Examiner’s finding that Tang teaches or suggests the “threshold value” limitation, we need not consider whether Marshall also teaches this limitation. Accordingly, we are not persuaded of error in the Examiner’s rejection of claim 12, and we sustain the Examiner’s rejection thereof. Because claim 19 is argued against on the same reasoning (Reply Br. 7), we sustain the Examiner’s rejection thereof, for the reasons expressed above. DECISION For the above-described reasons, we sustain the Examiner’s rejection of claims 8-10, 12, 13, 15-17, 19, and 20 as being obvious over the applied references under 35 U.S.C. § 103. SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8-10, 12, 13, 15- 17, 19, 20 103 Tang, Marchisio, Ball, Cragun, Marshall 8-10, 12, 13, 15- 17, 19, 20 Appeal 2019-005863 Application 15/088,502 12 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). See 37 C.F.R. § 41.50(f). AFFIRMED